Toward a functional definition of publication in copyright law

Minnesota Law Review

Volumn 92, Issue 6, 2008, Pages 1724-1795

  Cotter, Thomas F ^a  

^a UNIVERSITY OF MINNESOTA LAW SCHOOL   (United States)

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EID: 49049101111     PISSN: 00265535     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Review

References (288)

1. See, e.g., Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 661-66 (1834); Martha Graham Sch. & Dance Found., Inc. v. Martha Graham Ctr. of Contemporary Dance, Inc., 380 F.3d 624, 632-33 & n.14 (2d Cir. 2004); Nat'l Comics Publ'ns, Inc. v. Fawcett Publ'ns, Inc., 191 F.2d 594, 597-98 (2d Cir. 1951); 1 WILLIAM F. PATRY, PATRY ON COPYRIGHT § 1:21 (2007);
2. Craig Joyce, "A Curious Chapter in the History of Judicature": Wheaton v. Peters and the Rest of the Story (of Copyright in the New Republic), 42 HOUS. L. REV. 325, 381-82, 388-89 (2005). Arguably, this duty to affix notice applied only to copies published in the United States and not to copies published elsewhere. See infra note 106 (discussing Twin Books Corp. v. Walt Disney Co., 83 F.3d 1162, 1166 (9th Cir. 1996)).
3. See infra text accompanying notes 26-29.
4. See infra text accompanying notes 30-31.
5. See Estate of Martin Luther King, Jr., Inc. v. CBS, Inc., 194 F.3d 1211, 1213-14 (11th Cir. 1999).
6. See Penguin Books U.S.A., Inc. v. New Christian Church of Full Endeavor, Ltd., 288 F. Supp. 2d 544, 555 (S.D.N.Y. 2003).
7. See Martha Graham, 380 F.3d at 630-31.
8. See Brown v. Latin Am. Music Co., 498 F.3d 18, 20 (1st Cir. 2007).
9. See Open Source Yoga Unity v. Choudhury, No. C 03-3182 PJH, 2005 WL 756558, at *1 (N.D. Cal. Apr. 1, 2005).
10. See Milton H. Greene Archives, Inc. v. BPI Commc'ns, Inc., 378 F. Supp. 2d 1189, 1196-97 (CD. Cal. 2005).
11. See generally infra Part I.
12. See Copyright Act of 1976, Pub. L. No. 94-553, § 101, 90 Stat. 2541, 2543 (codified as amended at 17 U.S.C. § 101 (2000 & Supp. V 2007)) (defining publication); id. § 301(a), 90 Stat. at 2572 (codified as amended at 17 U.S.C. § 301(a) (2000)) (providing the Copyright Act's date of effectiveness); Leon R. Yankwich, Some Observations on "Publication" in the Law of Copyright, 5 BULL. COPYRIGHT SOC'Y U.S.A. 329, 330 (1958) (observing that, as of 1958, "none of the American statutes have defined publication").
13. See Estate of Martin Luther King, Jr., Inc. v. CBS, Inc., 194 F.3d 1211, 1214-20 (11th Cir. 1999); id. at 1220-27 (Cook, J., concurring in part and dissenting in part); id. at 1227 (Roney, J., dissenting).
14. See Getaped.com, Inc. v. Cangemi, 188 F. Supp. 2d 398, 401-02 (S.D.N.Y. 2002).
15. 193 F.2d 744 (9th Cir. 1952).
16. Id. at 746-47.
17. See generally infra Part II.4.
18. See, e.g., Caliga v. Inter Ocean Newspaper Co., 215 U.S. 182, 188 (1909); Martha Graham Sch. & Dance Found., Inc. v. Martha Graham Ctr. of Contemporary Dance, Inc., 380 F.3d 624, 632-33 (2d Cir. 2004); Nat'l Comics Publ'ns, Inc. v. Fawcett Publ'ns, Inc., 191 F.2d 594, 598 (2d Cir. 1951). Under the 1909 Copyright Act, authors could secure federal statutory copyright protection for unpublished works, see Copyright Act of 1909, ch. 320, § 11, 35 Stat. 1075, 1078 (repealed 1976) ("[C]opyright may also be had of the works of an author of which copies are not reproduced for sale, by the deposit, with claim of copyright, of one complete copy of such work . . . ."); Elizabeth Townsend Gard, January 1, 2003: The Birth of the Unpublished Public Domain and Its International Implications, 24 CARDOZO ARTS & ENT. L.J. 687, 695-96 (2006);
19. R. Anthony Reese, Public but Private: Copyright's New Unpublished Public Domain, 85 TEX. L. REV. 585, 588 n.8 (2007), but the practice of obtaining federal statutory copyright for unpublished works nevertheless appears to have been uncommon.
20. See Thompson v. Hubbard, 131 U.S. 123, 149-50 (1889); Callaghan v. Myers, 128 U.S. 617, 651-52 (1888). Under the current version of the Copyright Act, copyright notice with respect to copies consists of "(1) the symbol © (the letter C in a circle), or the word 'Copyright', or the abbreviation 'Copr.'; and (2) the year of first publication of the work; . . . and (3) the name of the owner of copyright in the work." 17 U.S.C. § 401(b) (2000). The rules are the same for phonorecords, except that the notice consists of the letter P (rather than C) in a circle. See id. § 402(b) (2000). "Copies" are defined as "material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device." Id. § 101 (2000 & Supp. V 2007). Moreover, "[t]he term 'copies' includes the material object, other than a phonorecord, in which the work is first fixed." Id. Thus, under U.S. copyright law, there are, literally, no originals, only copies (or phonorecords). " Phonorecords" are defined as material objects in which sounds, other than those accompanying a motion picture or other audiovisual work, are fixed by any method now known or later developed, and from which the sounds can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term "phonorecords" includes the material object in which the sounds are first fixed. Id.
21. See Natl Comics, 191 F.2d at 599.
22. See Copyright Act of 1976, Pub. L. No. 94-553, § 302, 90 Stat. 2541, 2572-73 (codified as amended at 17 U.S.C. § 302 (2000)).
23. See id. §§ 301(a), 302(a), 90 Stat, at 2572 (codified as amended at 17 U.S.C. §§ 301(a), 302(a) (2000)).
24. See id. § 301(b)(1), 90 Stat. at 2572 (codified as amended at 17 U.S.C. § 301(b)(1) (2000)); United States v. Rodriguez Ramirez, 291 F. Supp. 2d 266, 269 n.2 (S.D.N.Y. 2003). State common-law copyright also may still subsist in sound recordings that were fixed prior to 1972. See Capitol Records, Inc. v. Naxos of Am., Inc., 830 N.E.2d 250, 262-64 (N.Y. 2005).
25. Copyright Act of 1976 § 405(a)(1), 90 Stat. at 2578 (codified as amended at 17 U.S.C. § 405(a)(1) (2000)).
26. Id. § 405(a)(2), 90 Stat. at 2578 (codified as amended at 17 U.S.C. § 405(a)(2)).
27. Id. § 405(a)(3), 90 Stat. at 2578 (codified as amended at 17 U.S.C. § 405(a)(3)).
28. See Berne Convention Implementation Act of 1988, Pub. L. No. 100-568, 102 Stat. 2853.
29. See Berne Convention for the Protection of Literary and Artistic Works art. 5(1), July 24, 1971, 1161 U.N.T.S. 31 [hereinafter Berne Convention].
30. Id. art. 5(2).
31. Berne Convention Implementation Act § 7(a), 102 Stat. at 2857 (codified as amended at 17 U.S.C. §§ 401(a), 402(a) (2000)).
32. See infra text accompanying notes 98-103.
33. See supra text accompanying notes 4-9.
34. 17 U.S.C. § 401(d) (2000); see also id. § 402(d) (2000). It seems doubtful, however, that the "interposition of a defense based on innocent infringement" could mitigate actual, as opposed to statutory, damages, with respect to a work published on or after March 1, 1989; there is nothing in the Copyright Act that would appear to permit this. See 2 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT § 7.02[C][3] (2007).
35. See 17 U.S.C. § 405(b) (2000).
36. See supra notes 17-19 and accompanying text.
37. See Copyright Act of 1909, ch. 320, § 23, 35 Stat. 1075, 1080 (repealed 1976). Authors were still required to file claims to the renewal term, however, until 1992, when renewal became automatic. See Copyright Renewal Act of 1992, Pub. L. No. 102-307, § 102(2), 106 Stat. 264, 264-65. Thus, prior to 1992, failure to file a claim to the renewal term still resulted in the work falling into the public domain at the end of the first twenty-eight-year term.
38. See H.R. REP. NO. 94-1476, at 134 n.1 (1976) (citing Pub. L. Nos. 87-668, 89-142, 90-141, 90-416, 91-147, 91-555, 92-170, 92-566, and 93-573), as reprinted in 1976 U.S.C.CA.N. 5659, 5750 n.1.
39. See JULIE E. COHEN ET AL., COPYRIGHT IN A GLOBAL INFORMATION ECONOMY 154-56 (2d ed. 2006) (discussing the evolution of U.S. copyright law).
40. In 1998, Congress extended the copyright term for all works that had not yet fallen into the public domain by another twenty years. Sonny Bono Copyright Term Extension Act, Pub. L. No. 105-298, 112 Stat. 2827 (1998) (codified as amended in scattered sections of 17 U.S.C). Thus, as of January 1, 1978, works that were in their first term of copyright were eligible for a second term of forty-seven (later extended to sixty-seven) years, provided that the owner timely claimed the renewal term. See 17 U.S.C. § 304(a)(1)(B)-(C) (2000). For works already in their second term of copyright as of January 1, 1978, Congress extended the renewal term by nineteen, later thirty-nine, years, for a grand total of ninety-five years from the date copyright was originally secured. See id. § 304(b) (2000).
41. As noted above, prior to January 1, 1978, unpublished works enjoyed a potentially perpetual state common-law copyright. Upon publication, however, those works were thrust into the public domain unless the owner included the copyright notice on all published copies. See supra notes 17-18 and accompanying text. As of January 1, 1978, all original and fixed works were accorded federal copyright protection from the moment of creation. Works already in existence as of that date, but not yet copyrighted or in the public domain, were accorded a federal copyright as of January 1, 1978, that would subsist for the life of the author plus fifty (later extended to seventy) years or to December 31, 2002 (i.e., a minimum twenty-five-year federal copyright term), whichever expired later. See 17 U.S.C. § 303 (2000). Publication before December 31, 2002, extended the copyright term for another twenty-five (later extended to forty-five) years, until December 31, 2047. See id.
42. See 17 U.S.C. § 302(a) (2000).
43. See id. § 302(c) (2000). A work made for hire is any work made by an employee within the scope of his employment, or any of nine types of specially commissioned works if the parties agreed in writing that the work was to be a work for hire. See id. § 101 (2000 & Supp. V 2007). The act deems the author of a work made for hire to be the employer or commissioning party. See id. § 201(b) (2000). Note also that two types of specially commissioned works that can constitute works made for hire, namely supplementary works and instructional texts, are defined such that only works "prepared for publication" can so qualify. See id. § 101.
44. See, e.g., Council Directive 93/98/EEC, art. 1(3), 1993 O.J. (L 290) 9, 11 (EC) (stating that the term of protection for anonymous or pseudonymous works "shall run for seventy years after the work is lawfully made available to the public").
45. 17 U.S.C. § 302(e) (2000).
46. The statute provides for a registry in which persons claiming an interest in a copyright may record the author's death or a statement that he is still alive. See id. § 302(d) (2000). After 95 years from the date of publication, or 120 years from the date of creation, whichever expires first, an author will be presumed dead for the past 70 years, if the Copyright Office certifies that its § 302(d) registry discloses nothing to indicate that the author is still alive or has died within the last 70 years. See id. § 302(e).
47. See Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).
48. See 17 U.S.C. § 504(b))-(c) (2000 & Supp. V 2007); Woodhaven Homes & Realty, Inc. v. Hotz, 396 F.3d 822, 824 (7th Cir. 2005).
49. See 17 U.S.C. § 201(d)(1)-(2) (2000).
50. Id. § 204(a) (2000). A purported transfer that does not comply with the writing requirement is deemed to be a license - that is, a nonexclusive permission to use. See I.A.E., Inc. v. Shaver, 74 F.3d 768, 775 (7th Cir. 1996) (describing a nonexclusive license as the negative implication of the statutory written requirement for copyright transfer). Transfers of common-law copyrights, by contrast, do not have to be memorialized in writing. Martha Graham Sch. & Dance Found., Inc. v. Martha Graham Ctr. of Contemporary Dance, Inc., 380 F.3d 624, 643 (2d Cir. 2004). Whether a work was published without copyright notice therefore can determine not only whether the copyright remains in existence, but also whether a purported oral transfer of the copyright was effective. See id. at 643-45.
51. See 17 U.S.C. § 408(a) (2000) ("[R]egistration is not a condition of copyright protection.").
52. Id. § 411(a) (2000 & Supp. V 2007). There are four exceptions to this rule. First, the registration requirement only applies to "United States works." Id.; see infra notes 82-91 and accompanying text. Second, if the Copyright Office refuses to register the work, the purported copyright owner may file suit nonetheless, as long as she serves notice upon the Register of Copyright. 17 U.S.C. § 411(a). Third, authors claiming violations of their moral rights, in violation of Copyright Act § 106A(a), are also exempted from the registration requirement. Id.; see id. § 106A(a) (2000). Fourth, in a small class of cases involving works consisting of sounds, images, or both, that are first fixed in a tangible medium of expression simultaneously with their transmission, the copyright owner may file suit if she (1) "serves notice upon the infringer, not less than 48 hours before such fixation, identifying the work and the specific time and source of its first transmission, and declaring an intention to secure copyright in the work;" and (2) registers the copyright within three months of its first transmission. See id. § 411(b) (2000); see also id. § 101 (2000 & Supp. V 2007). For a discussion of § 411(a), see 2 NIMMER & NIMMER, supra note 32, § 7.16[B] [3]. A recent amendment to the Copyright Act permits the preregistration of certain works intended for commercial distribution but not yet published. See 17 U.S.C. § 408(f) (Supp. V 2007); see also infra note 62.
53. 17 U.S.C. § 410(c) (2000). The evidentiary weight accorded to a certificate or registration issuing more than five years after first publication is within the discretion of the district court. Id. Having registered the copyright, the owner also may record the registration with the U.S. Customs Service. 19 C.F.R. § 133.31 (2007). Recordation of a work in the name of a person seeking exclusion of imported goods, on the ground that the importation would violate 17 U.S.C. § 602, can provide evidence that the copyright is valid and would be infringed by the unauthorized importation. See 17 U.S.C. § 603(b) (2000) (describing what proof may be required to exclude such importation); see also 19 C.F.R. § 133.43 (2007) (detailing the procedure to be employed when a copyright owner suspects the importation of infringing copies).
54. See supra notes 35, 38.
55. 17 U.S.C. § 304(a)(1)(B)-(C) (2000) (clarifying who is entitled to the renewal term).
56. Id. § 304(a)(3) (stating that such an application is not required for an extension).
57. Id. § 304(a)(2)(A)(i)-(ii).
58. Id. No claims to the renewal term made on or after January 1, 2006, will have this effect, however, because any works that were within their first term of copyright as of January 1, 1978, necessarily are in their second term, if any, as of January 1, 2006 - i.e., twenty-eight years from the last possible date on which the first-term copyright was initially secured. See Registration of Claims to Copyright - Renewals, 72 Fed. Reg. 16,306-07 (proposed Apr. 4, 2007) (to be codified at 37 C.F.R. pt. 202) (describing that after 1992 renewal could "vest without registration"). Questions nevertheless will arise into the foreseeable future concerning whether persons entitled to file claims to renewal terms prior to January 1, 2006, in order to obtain the statutory benefits mentioned above, properly did so.
59. 17 U.S.C. § 304(a)(4)(B).
60. See id. § 304(a)(4)(A). Otherwise, the derivative work author's continued exploitation of the derivative work during the renewal term for the underlying work would infringe the copyright in the underlying work. See Venegas-Hernandez v. Peer, Nos. Civ. 01-1215(JAF), 01-2186(JAF), 2004 WL 3686337, at *24 (D.P.R. May 19, 2004), rev'd on other grounds, 424 F.3d 50 (1st Cir. 2005).
61. 17 U.S.C. § 305 (2000) ("All terms of copyrights provided by sections 302 through 304 run to the end of the calendar year[, i.e., December 31,] in which they would otherwise expire."); see supra text accompanying notes 34-40.
62. 17 U.S.C. § 504(c)(1) (2000 & Supp. V 2007). In the event of a willful infringement, the court may increase an award of statutory damages up to $150,000 for each work infringed. Id. § 504(c)(2). If the court finds that the infringement was innocent, it may reduce an award of statutory damages to as little as $200 for each work infringed. Id. Publication is relevant to this last-cited provision, insofar as the presence of copyright notice "on the published copy or copies to which a defendant in a copyright infringement suit had access" results in no weight being given to the "defendant's interposition of a defense based on innocent infringement in mitigation of actual or statutory damages." Id. § 401(d) (2000) (emphasis added); see also id. § 402(d) (2000) (stating the same rule for published phonorecords); id. § 405(b) (2000) (stating that innocent infringers will not be held liable for actual or statutory damages if they are able to prove that they were misled by a copy or phonorecord that did not have an attached copyright notice before the effective date of the Berne Convention Implementation Act of 1988). An exception to this rule, which exception can result in the remission of statutory damages altogether, occurs when the defendant had reasonable (but erroneous) grounds for believing her use was a fair use; this exception is available, however, only if, inter alia, the defendant is employed by a nonprofit educational institution, library, archive, or public broadcasting entity. Id. § 504(c)(2).
63. See 17 U.S.C. § 505 (2000) ("Except as otherwise provided by this title, the court may also award a reasonable attorney's fee to the prevailing party as part of the costs."); see also Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 (1994) (holding that, in copyright cases, courts should award attorneys' fees in an even-handed manner, and that fee awards are discretionary, not automatic).
64. 17 U.S.C. § 412 (2000 & Supp. V 2007). There are a few exceptions to this rule. First, authors claiming violations of their moral rights under § 106A(a) may recover statutory damages and attorneys' fees without having registered. See id. Second, a recent amendment to the Copyright Act provides for the preregistration of certain works intended for commercial distribution but not yet published and which fall into a class of works that the Register of Copyright determines has a history of infringement prior to authorized commercial distribution. See id. § 408(f)(1)-(2) (Supp. V 2007).
65. H.R. REP. NO. 94-1476, at 158 (1976), as reprinted in 1976 U.S.C.C.A.N. 5659, 5774.
66. Id.
67. Although it can take a few months to obtain a registration, see U.S. Copyright Office, Registering a Work, http://www.copyright.gov/help/faq/ faq-register.html (last visited Apr. 27, 2008), once granted, the effective date of the registration is the date "an application, deposit, and fee . . . have all been received in the Copyright Office," 17 U.S.C. § 410(d) (2000).
68. See Getaped.com, Inc. v. Cangemi, 188 F. Supp. 2d 398, 402 (S.D.N.Y. 2002); see also Zito v. Steeplechase Films, Inc., 267 F. Supp. 2d 1022, 1025-26 (N.D. Cal. 2003) (holding that no statutory damages or attorneys' fees were recoverable, where infringement occurred prior to publication and more than three months before registration, and that infringement itself does not constitute publication, because publication must be authorized by the copyright owner).
69. See, e.g., On Davis v. Gap, Inc., 246 F.3d 152, 161 (2d Cir. 2001) (suggesting that the plaintiff may have been entitled to actual damages totaling only $50).
70. 17 U.S.C. § 304(c)(5) (2000 & Supp. V 2007).
71. See id. § 304(c)(3). The logic of this rule is that authors have a better equitable claim than do their assignees to the windfall benefit of the nineteen-year extension of copyright protection afforded to works still under copyright protection as of January 1, 1978. William F. Patry, The Copyright Term Extension Act of 1995: Or How Publishers Managed to Steal the Bread from Authors, 14 CARDOZO ARTS & ENT. L.J. 611, 690-91 (1996). The rule does not apply to works made for hire, however, or to transfers effected by will. See 17 U.S.C. § 304(c). Note also that, when Congress enacted the Sonny Bono Copyright Term Extension Act in 1998, it provided that the author or owner of a termination right that had expired without being exercised would have a second chance to exercise that right during the five-year period beginning seventy-five years from the date on which copyright was secured. See id. § 304(d) (2000).
72. See supra text accompanying notes 36-41.
73. 17 U.S.C. § 203(a)(5) (2000).
74. Id. § 203(a)(3). Like the § 304(c) termination right, the § 203 termination right does not apply to works made for hire or to transfers effected by will. See id. § 203(a). The logic of the § 203 rule is to provide authors with a chance to benefit from any increase in the value of their works during that thirty-five-year period. Walthal v. Rusk, 172 F.3d 481, 484 (7th Cir. 1999).
75. See 17 U.S.C. § 107 (2000); Thomas F. Cotter, Fair Use and Copyright Overenforcement 6-17 (Univ. of Minn. Law Sch. Legal Studies Research Paper Series, Research Paper No. 06-96, 2006), available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=951839.
76. See 17 U.S.C. § 107.
77. See Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 564, 569 (1985) (holding that a work's status as an unpublished work militates against the unauthorized use being a fair use); Pierre Levai, Toward a Fair Use Standard, 103 HARV. L. REV. 1105, 1120 (1990).
78. See New Era Publishers Int'l, ApS v. Henry Holt & Co., Inc., 873 F.2d 576, 583 (2d Cir. 1989); Salinger v. Random House, Inc., 811 F.2d 90, 97 (2d Cir. 1987). But see Wright v. Warner Books, Inc., 953 F.2d 731, 737-38 (2d Cir. 1991) (concluding that this factor was not dispositive).
79. 17 U.S.C. § 107.
80. See Wright, 953 F.2d at 737; Sandoval v. New Line Cinema Corp., 973 F. Supp. 409, 413 (S.D.N.Y. 1997), aff'd, 147 F.3d 215 (2d Cir. 1998); see also Barton Beebe, An Empirical Study of U.S. Copyright Fair Use Opinions, 1978-2005, 156 U. PA. L. REV. 549, 612-15 (2008) (discussing the inquiry surrounding a work's publication status).
81. See Harper & Row, 471 U.S. at 554 (setting forth a privacy rationale);
82. cf. Rebecca Tushnet, My Fair Ladies: Sex, Gender, and Fair Use in Copyright, 15 AM. U. J. GENDER SOC. POL'Y & L. 273, 291-94 (2007) (critiquing the privacy rationale).
83. See Harper & Row, 471 U.S. at 554-55 (discussing the importance of an author's control of the timing of publication).
84. See 17 U.S.C. § 108(b) (2000) (permitting libraries and archives to reproduce and distribute "three copies or phonorecords of an unpublished work duplicated solely for purposes of preservation and security or for deposit for research use in another library or archives," subject to certain conditions); id. § 108(c) (2000) (permitting libraries and archives to reproduce "three copies or phonorecords of a published work . . . that is damaged, deteriorating, lost, or stolen, or if the existing format in which the work is stored has become obsolete," subject to certain conditions); id. § 108(h) (2000) (permitting libraries and archives to copy, distribute, display, or perform a published work "for purposes of preservation, scholarship, or research," during the last twenty years of copyright protection, subject to certain conditions); id. § 108(i) (2000 & Supp. V 2007) (stating the limitations of the preceding three exceptions); id. § 110(9) (2000 & Supp. V 2007) (permitting the unauthorized "performance on a single occasion of a dramatic literary work published at least ten years before the date of the performance, by or in the course of a transmission specifically designed for and primarily directed to blind or other handicapped persons," subject to certain conditions); id. § 118(b) (2000 & Supp. V 2007) (permitting "owners of copyright in published nondramatic musical works and published pictorial, graphic, and sculptural works and any public broadcasting entities" to negotiate for compulsory license fees for certain uses by public broadcasters, subject to certain conditions); id. § 121(a) (2000) (permitting the reproduction and distribution of "copies or phonorecords of . . . previously published, nondramatic literary work[s] . . . in specialized formats exclusively for use by blind or other persons with disabilities," subject to certain conditions); id. § 1201(g)(2) (2000) (permitting circumvention of technological measures "as applied to a copy, phonorecord, performance, or display of a published work in the course of an act of good faith encryption research," subject to certain conditions).
85. See 17 U.S.C. § 407(a)-(b) (2000) (requiring the copyright owner or owner of the exclusive right of publication, within three months of publication of a work in the United States, to deposit "in the Copyright Office for the use or disposition of the Library of Congress" two complete copies or phonorecords of the best edition of the work). The statute permits the Copyright Office to exempt certain classes of works from this requirement. See id. § 407(c) (2000). Among the works the Copyright Office exempts are stationery, greeting cards, tests, 3-D sculptural works, works only reproducible on dolls or in jewelry, certain catalogs, architectural blueprints, and lectures published individually. See 37 C.F.R. § 202.19(c) (2007). Note that deposit is also required in order to register one's copyright, 17 U.S.C. § 408(b) (2000), subject to certain exceptions, id. § 408(c) (2000), and that copies deposited for the Library of Congress may satisfy this requirement, id. §408(b).
86. See 17 U.S.C. § 407(d) (2000).
87. Id. § 411(a) (2000 & Supp. V 2007); see also supra note 62 (discussing two of the three exceptions to this rule).
88. 17 U.S.C. § 101 (2000 & Supp. V 2007).
89. Id.
90. Id. The statute further defines the Geneva Phonograms Convention as "the Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms, concluded at Geneva, Switzerland, on October 29, 1971"; the Berne Convention as "the Convention for the Protection of Literary and Artistic Works, signed at Berne, Switzerland, on September 9, 1886, and all acts, protocols, and revisions thereto"; the World Intellectual Property Organization (WIPO) Copyright Treaty (WCT) as "the WIPO Copyright Treaty concluded at Geneva, Switzerland, on December 20, 1996"; and the WIPO Performances and Phonograms Treaty (WPPT) as "the WIPO Performances and Phonograms Treaty concluded at Geneva, Switzerland, on December 20, 1996." Id. The World Trade Organization (WTO) Agreement has "the meaning[] given . . . in paragraph[] (9) . . . of section 2 of the Uruguay Round Agreements Act," id., namely "the Agreement Establishing the World Trade Organization entered into on April 15, 1994," Uruguay Round Agreements Act, Pub. L. No. 103-465, § 2(9), 108 Stat. 4809, 4814 (1994) (codified as amended at 19 U.S.C. § 3501 (2000 & Supp. III 2005)). The WTO Agreement therefore includes the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs). See Marrakesh Agreement Establishing the World Trade Organization art. 4, § 5, Apr. 15, 1994, 1867 U.N.T.S. 157; Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, 108 Stat. 4809, 1869 U.N.T.S. 299 [hereinafter TRIPs Agreement]. The Copyright Act does not define the Universal Copyright Convention (UCC). See 17 U.S.C. § 101.
91. 17 U.S.C. § 101.
92. Id.
93. See Berne Convention, supra note 27, art. 5(4). I say "more or less" because the word "published" does not necessarily have the same meaning under the Berne Convention as it does under U.S. domestic law. See infra note 103.
94. See supra notes 28-29 and accompanying text.
95. See 17 U.S.C. § 104(a) (2000).
96. Id. § 104(b)(1) (2000).
97. Id. § 104(b)(2)-(5). Note that "a work that is published in the United States or a treaty party within 30 days after publication in a foreign nation that is not a treaty party shall be considered to be first published in the United States or such treaty party, as the case may be." Id. § 104(b). This provision is consistent with Berne Convention article 5(4)(b), which provides that the country of origin for works "published simultaneously in a country outside the Union and in a country of the Union" shall be the Union country. Berne Convention, supra note 27, art. 5(4)(b). Article 3(4) states that "[a] work shall be considered as having been published simultaneously in several countries if it has been published in two or more countries within thirty days of its first publication." Id. art. 3(4). Finally, a published work can be subject to U.S. copyright protection if the work comes within the scope of a presidential proclamation as specified in the statute. See 17 U.S.C. § 104(b)(6). Apropos of "an architectural work that is embodied in a building . . . located in the United States or a treaty party," id. § 104(b)(4), protection for architectural works applies to any architectural work that, on the date of the enactment of [the Architectural Works Copyright Protection Act], is unconstructed and embodied in unpublished plans or drawings, except that protection for such architectural work under title 17, United States Code, by virtue of the amendments made by this title, shall terminate on December 31, 2002, unless the work is constructed by that date, Architectural Works Copyright Protection Act, Pub. L. No. 101-650, 104 Stat. 5089, 5134 (1990) (codified as amended in scattered sections of 17 U.S.C.) (emphasis added). The fact and date of publication of plans or drawings therefore may continue to play a role in determining the protectability of some architectural works.
98. See supra note 87.
99. Saddam Hussein reportedly published at least four novels during his lifetime. See Jo Tatchell, Saddam the Romancier, PROSPECT, July 2004, at 72, 72, available at http://www.prospect-magazine.co.uk/pdfarticle.php?id=6171. Assuming that the original, Arabic-language versions of these works were originally published in Iraq, their U.S. copyright status would depend upon whether they were simultaneously published in some other country with which the United States enjoys copyright treaty relations.
100. COHEN ET AL., supra note 37, at 151.
101. See 17 U.S.C. § 104A(a), (h)(3), (h)(6) (2000 & Supp. V 2007).
102. Id. § 104A(h)(6)(D). According to the statute, unpublished works also are subject to copyright restoration. See id. § 104A(h)(8)(B). There appear to be only a few situations in which this provision might apply, however. See 3 NIMMER & NIMMER, supra note 32, § 9A.04[A] [2] n.31.
103. See 17 U.S.C. § 104A(h)(6)(B).
104. See id. § 104A(h)(8)(C).
105. See id. § 104A(h)(3).
106. Note that the Berne Convention's definition of "publication" differs from the U.S. Copyright Act by expressly adopting as a criterion the availability of such copies as "to satisfy the reasonable requirements of the public, having regard to the nature of the work." Compare Berne Convention, supra note 27, art. 3(3), with 17 U.S.C. § 101 (2000 & Supp. V 2007). Like the U.S. Copyright Act, however, the Berne Convention takes the position that performance, broadcasting, and display do not constitute publication. Compare Berne Convention, supra note 27, art. 3(3), with 17 U.S.C. § 101.
107. 17 U.S.C. § 104A(h)(2)(A).
108. Cf. COHEN ET AL., supra note 37, at 155-56 (explicating the contours of copyright duration).
109. The modern trend appears to support the rule that foreign publication without copyright notice does not result in forfeiture of the U.S. copyright. See Twin Books Corp. v. Walt Disney Co., 83 F.3d 1162, 1166-67 (9th Cir. 1996); Société Civile Succession Richard Guino v. Beseder, Inc., 414 F. Supp. 2d 944, 948-50 (D. Ariz. 2006). As the Nimmer treatise notes, however, the issue has never been definitively resolved. See 2 NIMMER & NIMMER, supra note 32, § 7.12[D][2][a]. The court in Twin Books also held that the U.S. copyright term would begin on the date of first publication with notice, whether U.S. or foreign. See Twin Books, 83 F.3d at 1168. The district court in Beseder, however, as well as the Nimmer treatise, have sharply criticized this aspect of the Twin Books ruling. See Beseder, 414 F. Supp. 2d at 949-51; 1 NIMMER & NIMMER, supra note 32, § 4.01[C][1].
110. See 17 U.S.C. § 104A(h)(6)(D), (h)(8).
111. Both the United States and Canada are members of the 1971 Paris Act of the Berne Convention. See WIPO, Contracting Parties, Berne Convention, http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=15 (last visited Apr. 27, 2008). Under the Berne Convention, a work is "considered as having been published simultaneously in several countries if it has been published in two or more countries within thirty days of its first publication." Berne Convention, supra note 27, art. 3(4). Article 5(4)(a) of the Berne Convention provides that "[t]he country of origin shall be considered to be[,] . . . in the case of works published simultaneously in several countries of the union which grant different terms of protection, the country whose legislation grants the shortest term of protection." Id. art. 5(4)(a). At present, the term of protection in Canada consists of the life of the author plus fifty years, and therefore is shorter than the standard term of protection in the United States. Copyright Act, R.S.C., ch. C-42, § 6 (1985), amended by 1993 S.C., ch. 44, § 58 (Can.).
112. See supra text accompanying notes 26-28. The United States could, but it does not, limit Author B to the life-plus-fifty copyright term to which she is entitled in Canada. See Berne Convention, supra note 27, art. 7(8); see also TRIPs Agreement, supra note 87, art. 3(1) (permitting member states to continue applying this provision of the Berne Convention).
113. That appears to be the correct result, although the Copyright Act is not as clear as it should be on this point. As noted above, with respect to published works, a United States work is a work first published in the United States, or "simultaneously in the United States and another treaty party . . . whose law grants a term of copyright protection that is the same as or longer than the term provided in the United States." 17 U.S.C. § 101 (2000 & Supp. V 2007). The word "simultaneously" is not defined in the current version of the Copyright Act. Cf. U.S. COPYRIGHT OFFICE, COPYRIGHT LAW OF THE UNITED STATES AND RELATED LAWS CONTAINED IN TITLE 17 OF THE U.S. CODE app. L (2007), available at http://www.copyright.gov/title17/92appl.pdf (noting without explanation that "[t]he WIPO Copyright and Performances Phonograms Treaties Implementation Act of 1998 deleted the definition of 'Berne Convention work' from" Copyright Act section 101, but that under the deleted definition a work was considered simultaneously published in a Berne and a non-Berne member nation if "its dates of publication are within 30 days of one another"). Assuming that the word "simultaneously" has the same meaning in the Copyright Act as it has in the Berne Convention, however, the work at issue in the hypothetical above, despite having been chronologically and
114. See 17 U.S.C § 411(a) (2000 & Supp. V 2007). The United States would require Author B to register the work in a timely fashion if she wanted to obtain statutory damages or attorneys' fees. See id. § 412 (2000 & Supp. V 2007). It would in most cases require her to deposit two published copies for the Library of Congress, see id. § 407(a) (2000), and it would permit a defendant to assert innocent infringement in mitigation of statutory damages if the published copies to which the defendant had access did not bear copyright notice, see id. §§ 401(d), 402(d) (2000). The United States considers such rules as not targeting the "enjoyment and . . . exercise" of copyright rights and therefore not in violation of the Berne Convention. See La Resolana Architects, P.A. v. Clay Realtors Angel Fire, 416 F.3d 1195, 1205-06 (10th Cir. 2005).
115. Berne Convention, supra note 27, art. 5(4)(c).
116. See 17 U.S.C. § 101 (defining an unpublished work as a "United States work" only if "all the authors of the work are nationals, domiciliaries, or habitual residents of the United States").
117. See id. § 411(a). Although some courts allow copyright plaintiffs to file suit concurrently with the filing of an application to register their copyrights, see, e.g., Prunte v. Universal Music Group, 484 F. Supp. 2d 32, 39-40 (D.D.C. 2007), or to register the copyright and then file "an amended complaint including an allegation that the copyrighted work is registered," Zito v. Steeplechase Films, Inc., 267 F. Supp. 2d 1022, 1025 (N.D. Cal. 2003), many require literal compliance with the rule, see, e.g., La Resolana Architects, 416 F.3d at 1200-01; Jennette v. United States, 77 Fed. Cl. 126, 131 (2007).
118. See infra Part II.B.5.
119. Berne Convention, supra note 27, art. 3(3).
120. Id. The UCC similarly defines publication as "the reproduction in tangible form and the general distribution to the public of copies of a work from which it can be read or otherwise visually perceived." Universal Copyright Convention as Revised at Paris on 24 July 1971 art. VI, July 24, 1971, 25 U.S.T. 1341, 943 U.N.T.S. 178.
121. See RayMing Chang, "Publication" Does Not Really Mean Publication: The Need to Amend the Definition of Publication in the Copyright Act, 33 AIP-LA Q.J. 225, 226 (2005);
122. see also MIHÁLY FICSOR, THE LAW OF COPYRIGHT AND THE INTERNET 207 (2002) (noting possible reluctance on the part of some nations to equate digital transmissions with distributions of tangible copies).
123. See 1 SAM RICKETSON & JANE C. GINSBURG, INTERNATIONAL COPYRIGHT AND NEIGHBOURING RIGHTS § 6.52 n.160 (2d ed. 2006) (noting this possibility); see also infra notes 196-203 and accompanying text.
124. See 1 RICKETSON & GINSBURG, supra note 119, § 6.52 (arguing that making a work available for download over a publicly accessible website effects a publication of the work); see also supra text accompanying note 103.
125. See infra note 122 and accompanying text; see also 1 RICKETSON & GINSBURG, supra note 119, §§ 6.59-.64 (arguing in favor of a new rule, one equating country of origin with the country of the author's nationality or residence in cases involving digital transmissions); Paul Edward Geller, Conflicts of Laws in Copyright Cases: Infringement and Ownership Issues, 51 J. COPYRIGHT SOC'Y U.S.A. 315, 363 n.217 (2004).
126. In this case, the work is not a United States work and its country of origin for Berne Convention purposes would be the Berne Convention country with the shortest term of protection in the entire world, whatever that is.
127. The 1909 Act defined the term "date of publication" as follows: [I]n the interpretation and construction of this Act "the date of publication" shall in the case of a work of which copies are reproduced for sale or distribution be held to be the earliest date when copies of the first authorized edition were placed on sale, sold, or publicly distributed by the proprietor of the copyright or under his authority . . . . Copyright Act of 1909, ch. 320, § 26, 35 Stat. 1075, 1087 (repealed 1976).
128. Melville B. Nimmer, Copyright Publication, 56 COLUM. L. REV. 185, 187 (1956) (footnotes omitted).
129. Id.
130. Id. at 197.
131. See 1 NIMMER & NIMMER, supra note 32, § 4.04; see also id. § 4.07[A] (repeating the "sine qua non" language quoted above).
132. See, e.g., Shoptalk, Ltd. v. Concorde-New Horizons Corp., 168 F.3d 586, 590 (2d Cir. 1999); Dolman v. Agee, 157 F.3d 708, 713 (9th Cir. 1998); Brown v. Tabb, 714 F.2d 1088, 1091 (11th Cir. 1983).
133. 17 U.S.C. § 101 (2000 & Supp. V 2007). To "perform" a work means to recite, render, play, dance, or act it, either directly or by means of any device or process or, in the case of a motion picture or other audiovisual work, to show its images in any sequence or to make the sounds accompanying it audible. . . . . To perform or display a work "publicly" means - (1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or (2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times. Id. "To 'display' a work means to show a copy of it, either directly or by means of a film, slide, television image, or any other device or process or, in the case of a motion picture or other audiovisual work, to show individual images non-sequentially." Id.
134. Id. § 106(3) (2000 & Supp. V 2007). The definition of publication may not be entirely contiguous with the right of distribution, however. Some offers to distribute copies may constitute publications under section 101, but the better view is probably that they do not constitute distributions. See London-Sire Records, Inc. v. Doe 1, No. 04cv12434-NG, 2008 WL 887491, at *9-10 (D. Mass. Mar. 31, 2008); The Patry Copyright Blog, http://williampatry.blogspot.com/2008/04/recent-making- available-cases.html (Apr. 3, 2008, 22:29 EST) (discussing London-Sire Records, Elektra Entertainment Group, Inc. v. Barker, No. 05-CV-7340 (KMK), 2008 WL 857527 (S.D.N.Y. Mar. 31, 2008), and Atlantic Recording Corp. v. Brennan, 534 F. Supp. 2d 278 (D. Conn. 2008)).
135. See, e.g., Harris Custom Builders, Inc. v. Hoffmeyer, 92 F.3d 517, 520-21 (7th Cir. 1996); Sanga Music, Inc. v. EMI Blackwood Music, Inc., 55 F.3d 756, 758-59 (2d Cir. 1995); Zito v. Steeplechase Films, Inc., 267 F. Supp. 2d 1022, 1026 (N.D. Cal. 2003).
136. See 1 NIMMER & NIMMER, supra note 32, § 4.12 (noting "surprisingly little case authority on the question").
137. See, e.g., Shoptalk, 168 F.3d at 591-93; Batjac Prods. Inc. v. Goodtimes Home Video Corp., 160 F.3d 1223, 1233-36 (9th Cir. 1998); Harris Custom Builders, 92 F.3d at 520.
138. See 1 NIMMER & NIMMER, supra note 32, § 4.05[B][4]; Benjamin Kaplan, Publication in Copyright Law: The Question of Phonograph Records, 103 U. PA. L. REV. 469, 472 & n.20 (1955). Sound recordings themselves were not subject to federal copyright protection until 1972. See Sound Recording Act of 1971, Pub. L. No. 92-140, § 3, 85 Stat. 391, 392 (codified as amended in scattered sections of 17 U.S.C).
139. See, e.g., La Cienega Music Co. v. ZZ Top, 44 F.3d 813, 815 (9th Cir. 1995).
140. See Act of Nov. 13, 1997, Pub. L. No. 105-80, § 11, 111 Stat. 1529, 1534 (codified as amended at 17 U.S.C. § 303(b) (2000)) ("The distribution before January 1, 1978, of a phonorecord shall not for any purpose constitute a publication of the musical work embodied therein.").
141. 239 F.2d 740, 743 (2d Cir. 1956).
142. See id.; Hirshon v. United Artists Corp., 243 F.2d 640, 644-45 (D.C. Cir. 1957).
143. See, e.g., Roy Exp. Co. Establishment of Vaduz, Liech. v. Columbia Broad. Sys., 672 F.2d 1095, 1102-03 (2d Cir. 1982); Am. Vitagraph, Inc. v. Levy, 659 F.2d 1023, 1027 (9th Cir. 1981). The Nimmer treatise, however, argues that, despite the application of Judge Frank's distinction between investive and divestive publications in cases such as the preceding ones, in general that distinction has rarely been a decisive factor. See 1 NIMMER & NIMMER, supra note 32, § 4.13[C].
144. See, e.g., Ferris v. Frohman, 223 U.S. 424, 435-37 (1912); Am. Tobacco Co. v. Werckmeister, 207 U.S. 284, 299-300 (1907); John G. Danielson, Inc. v. Winchester-Conant Props., Inc., 322 F.3d 26, 37 (1st Cir. 2003); Am. Vitagraph, 659 F.2d at 1027; Nutt v. Nat'l Inst. Inc. for the Improvement of Memory, 31 F.2d 236, 238 (2d Cir. 1929); McCarthy & Fischer, Inc. v. White, 259 F. 364, 365 (S.D.N.Y. 1919); Tompkins v. Halleck, 133 Mass. 32, 36 (1882); Palmer v. De Witt, 47 N.Y. 532, 543-44 (1872). But see, e.g., Morton v. Raphael, 79 N.E.2d 522, 523-24 (Ill. App. Ct. 1948); Keene v. Kimball, 82 Mass. (16 Gray) 545, 549 (1860); Z Bar Net, Inc. v. Helena Television, Inc., 125 U.S.P.Q. (BNA) 595, 598 (Mont. Dist. Ct. 1960); but see also Blanc v. Lantz, 83 U.S.P.Q. (BNA) 137, 138 (Cal. Super. Ct. 1949) (citing Loew's Inc. v. Superior Court, 115 P.2d 983, 985-86 (Cal. 1941)) (noting division of authority). As Nimmer and others noted, however, by the mid-1950s, most U.S. courts had repudiated this view. See Nimmer, supra note 124, at 194-95;
145. Herman F. Selvin, Should Performance Dedicate?, 42 CAL. L. REV. 40, 51 (1954). Cases nevertheless have continued to arise on the issue of whether the deposit of a copy or copies in a public library or archive or in a governmental office constitutes publication. Merely depositing a copy with a library, for purposes of permitting on-premises inspection, probably is not a publication. See Kramer v. Newman, 749 F. Supp. 542, 551 (S.D.N.Y. 1990); Frederick Chusid & Co. v. Marshall Leeman & Co., 326 F. Supp. 1043, 1064 (S.D.N.Y. 1971). But see Ladd v. Oxnard, 75 F. 703, 730-31 (C.C. Mass. 1896); Jewelers' Mercantile Agency, Ltd. v. Jewelers' Weekly Publ'g Co., 49 N.E. 872, 875-76 (N.Y. 1889). Similarly, although some courts held that deposit of a work with the Copyright Office or the Library of Congress could be an investive publication, see, e.g., Cardinal Film Corp. v. Beck, 248 F. 368, 368 (S.D.N.Y. 1918), most held that it would not constitute a divestive publication, see, e.g., Patterson v. Century Prods., Inc., 93 F.2d 489, 490-91 (2d Cir. 1937). And although many courts have come around to the view that merely depositing architectural plans with a public agency is not a publication, see, e.g., John G. Danielson, Inc. v. Winchester-Conant Props., Inc., 322 F.3d 26, 37 (1st Cir. 2003), there is a substantial minority view, see, e.g., DeSilva Constr. Co. v. Herrald, 213 F. Supp. 184, 198 (M.D. Fla. 1962). A few courts also have held or suggested that the construction or public exhibition of a building constitutes publication of the underlying plans, see, e.g., Read v. Turner, 48 Cal. Rptr. 919, 924 (Dist. Ct. App. 1966), but others appear to have rejected this rule as well, see, e.g., Donald Frederick Evans & Assocs., Inc., v. Cont'l Homes, Inc., 785 F.2d 897, 901 n.7 (11th Cir. 1986).
146. See 1 NIMMER & NIMMER, supra note 32, §§ 4.03, 4.07[A]; Kaplan, supra note 134, at 470.
147. See Blanc v. Lantz, 83 U.S.P.Q. (BNA) 137, 139-40 (Cal. Super. Ct. 1949); 1 NIMMER & NIMMER, supra note 32, § 4.08[B]; Selvin, supra note 140, at 40-41.
148. Fixation as such was not, technically, a requirement for federal copyright protection until 1978, but publication appears to have implied the existence of at least one tangible copy that could be distributed to the general public. See Douglas Lichtman, Copyright as a Rule of Evidence, 52 DUKE L.J. 683, 719-21 (2003). Presumably, there could not be a federal copyright interest if there was no writing. See U.S. CONST. art. I, § 8, cl. 8.
149. See Copyright Act of 1909, ch. 320, § 12, 35 Stat. 1075, 1078 (repealed 1976). Prior to 1909, however, even this protection was not available for unpublished works. See Kaplan, supra note 134, at 476-77; Selvin, supra note 140, at 44.
150. See 1 NIMMER & NIMMER, supra note 32, §4.08[B]; Kaplan, supra note 134, at 478-79.
151. See Scherr v. Universal Match Corp., 417 F.2d 497, 503 (2d Cir. 1969) (Friendly, J., dissenting). Under [17 U.S.C. § 12], if the article sought to be copyrighted is a work of art, all that needs to be done at the outset to secure copyright is to supply a photograph, which [plaintiffs] did. The deposit of copies is required only "where the work is later reproduced in copies for sale," and it is the copies that must bear the copyright notice. Hence, so long as [plaintiffs] did not "publish" the statue or authorize the publication of copies of it, they were under no obligation to affix the notice at all. Such a position is essential if artists are to be spared the dilemma of either defacing the work of art with a plainly visible notice or losing copyright protection. Id. Affixation on the back of the work of art, however, may have sufficed even under the 1909 Act. See Coventry Ware, Inc. v. Reliance Picture Frame Co., 288 F.2d 193, 194-95 (2d Cir. 1961). Current Copyright Office regulations permit authors to include copyright notice on the back or on a frame of a pictorial work. See 37 C.F.R. § 201.20(i)(1) (2007).
152. See 37 C.F.R. §§ 202.19(c)(6), 202.20(c)(2)(xi)(B)(5) (2007) (exempting three-dimensional sculptural works from the deposit requirement); id. §§ 202.19(d)(2)(iv), 202.20(c)(2)(iv) (permitting deposit of photographs of pictorial or graphic works existing in limited numbers).
153. See Kaplan, supra note 134, at 479 n.49 (citing John Schulman, Author's Rights, in 7 COPYRIGHT PROBLEMS ANALYZED 19, 23-25 (1952)).
154. Of course, the rule could be underinclusive, because there was not (and still is not) any rule that those copies survive to the date of litigation. See Lichtman, supra note 143, at 732-34.
155. See 1 NIMMER & NIMMER, supra note 32, § 4.08[B].
156. 207 U.S. 284, 300 (1907) (citing JOHN HERBERT SLATER, THE LAW RELATING TO COPYRIGHT AND TRADE MARKS, TREATED MORE PARTICULARLY WITH REFERENCE TO INFRINGEMENT 92 (London, Stevens and Sons 1884)).
157. See 320 F. Supp. 1303, 1305 (N.D. Ill. 1970).
158. See id. at 1305-06.
159. Id. at 1307.
160. See id. at 1311.
161. Id. at 1313; see also Burke v. Nat'l Broad. Co., 598 F.2d 688, 691 (1st Cir. 1979) ("Publication may be found if the circumstances suggest that the public was free to copy a work on exhibit, but a prohibition against copying can be 'tacitly understood' or implied." (citing Am. Tobacco Co. v. Werckmeister, 207 U.S. 284, 300 (1909))); Patterson v. Century Prods., 93 F.2d 489, 492 (2d Cir. 1937); Carns v. Keefe Bros., 242 F. 745, 746 (D. Mont. 1917).
162. See 1 NIMMER & NIMMER, supra note 32, § 4.09 n.7.
163. 194 F.3d 1211 (11th Cir. 1999).
164. See id. at 1213.
165. See id.
166. See id.
167. See id. CBS also moved for summary judgment on First Amendment, fair use, and implied license grounds, but the district court did not reach these issues. See id. at 1220 n.1 (Cook, J., concurring in part and dissenting in part); Estate of Martin Luther King, Jr., Inc. v. CBS, Inc., 13 F. Supp. 2d 1347, 1349 (N.D. Ga. 1998), rev'd, 194 F.3d 1211 (11th Cir. 1999).
168. Estate of King, 13 F. Supp. 2d at 1352 (quoting Silverman v. CBS, Inc., 632 F. Supp. 1344, 1353 (S.D.N.Y. 1986)).
169. Id. at 1352-53; see also id. at 1354 ("[W]hile performance itself may not be sufficient to constitute publication, performance coupled with such wide and unlimited reproduction and dissemination as occurred concomitant to Dr. King's speech during the March on Washington can be seen only as a general publication which thrust the speech into the public domain."). CBS also cited evidence that (1) Dr. King had made copies of the speech available to the press on the morning of August 5, 1963, in advance of its public performance and (2) the Southern Christian Leadership Conference (SCLC) had published the speech, in its entirety, in its September 1963 newsletter. See id. at 1353 n.5. The district court disregarded this evidence, however, noting that there was a genuine issue of material fact as to whether the speech King actually delivered was reflected in the advance copies (the King Estate argued that much of the speech as delivered was extemporaneous), and whether the publication by the SCLC was authorized by Dr. King himself. See id.
170. See King v. Mister Maestro, Inc., 224 F. Supp. 101, 108 (S.D.N.Y 1963). In Mister Maestro, the defendants were selling phonograph recordings of King's August 1963 public performance of the "I Have a Dream" speech. King registered his claim to copyright and filed suit. The district court concluded that the speech had not been the subject of a general publication, reasoning that King's delivery of an advance text of the speech was given to the press only. See id. at 107. The King Estate filed its claim to the renewal term in 1991. See Estate of King, 194 F.3d at 1214 n.2.
171. See Estate of King, 194 F.3d at 1227 (Roney, J., dissenting).
172. Id. at 1215 (majority opinion).
173. Id. at 1216-17.
174. Id. at 1216.
175. See id. at 1218-20.
176. See id. at 1220-26 (Cook, J., concurring in part and dissenting in part). Compare the outcome of this case with Public Affairs Associates, Inc. v. Rickover, 284 F.2d 262, 270 (D.C. Cir. 1960), vacated on other grounds, 369 U.S. 111 (1962) (per curiam), in which the court (by a 2-1 majority) held that Admiral Rickover's distribution "not only to the press but also to people generally who desired copies through interest in the subjects of the addresses" constituted a general publication. See also Cont'l Cas. Co. v. Beardsley, 253 F.2d 702, 706 (2d Cir. 1958) (concluding that general publication occurred through distribution to prospective customers); 1 NIMMER & NIMMER, supra note 32, § 4.13 [A][3] (criticizing the Estate of King result on the ground that "distribution preparatory to ultimate distribution to the public constitutes general publication"); The Patry Copyright Blog, http://williampatry.blogspot.com/2006/01/martin-luther-king-jr.html (Jan. 17, 2006, 09:42 EST).
177. See 193 F.2d 744, 746-47 (9th Cir. 1952). This definition of "limited publication" is actually first set forth in the district court opinion, authored by Judge Leon Yankwich. See White v. Kimmell, 94 F. Supp. 502, 505 (S.D. Cal. 1950), rev'd, 193 F.2d 744. Judge Yankwich derived the definition from U.S. and U.K. case law dating back over a century. See White, 94 F. Supp. at 505 n.7; Yankwich, supra note 11, at 333-36.
178. See, e.g., John G. Danielson, Inc. v. Winchester-Conant Props., Inc., 322 F.3d 26, 36 (1st Cir. 2003); Brown v. Tabb, 714 F.2d 1088, 1091 (11th Cir. 1983); Cont'l Cas. Co. v. Beardsley, 253 F.2d 702, 706-07 (2d Cir. 1958); William A. Graham Co. v. Haughey, 430 F. Supp. 2d 458, 470 (E.D. Pa. 2006); Milton H. Greene Archives, Inc. v. BPI Commc'ns, Inc., 378 F. Supp. 2d 1189, 1198 (C.D. Cal. 2005); Penguin Books U.S.A., Inc. v. New Christian Church of Full Endeavor, Ltd., 288 F. Supp. 2d 544, 555 (S.D.N.Y. 2003); see also Data Cash Sys., Inc. v. JS&A Group, Inc., 628 F.2d 1038, 1042-43 (7th Cir. 1980) (concluding that "a 'limited publication' is really in the eyes of the law no publication at all").
179. See Kramer v. Newman, 749 F. Supp. 542, 550 (S.D.N.Y. 1990); 1 NIMMER & NIMMER, supra note 32, § 4.13[A][3].
180. See Schatt v. Curtis Mgmt. Group, Inc., 764 F. Supp. 902, 908 (S.D.N.Y. 1991) (quoting with approval 1 NIMMER & NIMMER, supra note 32, § 4.04, that, "[i]f an author grants to another the right to publish his work, the grant does not in and of itself constitute a publication unless and until the grantee exercises that right. Furthermore, publication does not result from mere delivery of the manuscript of a work to a publisher, even if delivery is made for the purpose of having the work printed so that it may become available to the public"); Wright v. Warner Books, Inc., 748 F. Supp. 105, 110 (S.D.N.Y. 1990), aff'd, 953 F.2d 731 (2d Cir. 1991); see also Nucor Corp. v. Tenn. Forging Steel Serv., Inc., 476 F.2d 386, 390-91 (8th Cir. 1973) ("[A] distribution of plans to potential contractors and subcontractors for bidding purposes does not constitute general publication."); Hirshon v. United Artists Corp., 243 F.2d 640, 645 (D.C. Cir. 1957) (citing Falk v. Gast Lithograph & Engraving Co., 54 F. 890, 893 (2d Cir. 1893)) (stating that "the sending of samples to dealers for the purpose of enabling them to give orders" is not a general publication).
181. See Data Cash Sys., 628 F.2d at 1043 (stating that, in Advisers, Inc. v. Wiesen-Hart, Inc., 238 F.2d 706 (6th Cir. 1956) (per curiam), "the date of publication was the date of distribution of a book to retailers, not four months later when the retailers actually distributed the books to the public").
182. See William A. Graham Co., 430 F. Supp. 2d at 470 (citing Penguin Books U.S.A., 288 F. Supp. 2d at 555, and Schatt, 764 F. Supp. at 911 & n.12); see also Schatt, 764 F. Supp. at 911 n.12 (rejecting the argument that copies "must have been made available to all comers and not only to a class in order for the dissemination of the photographs to have been a general publication" and finding that distribution constitutes a general publication "to the extent the recipients [are] permitted to pass the manuscript on to selected others").
183. William A. Graham Co., 430 F. Supp. 2d at 471.
184. See White v. Kimmell, 193 F.2d 744, 745 (9th Cir. 1952).
185. See id. at 745-48.
186. See id. at 745-46.
187. See id. at 745-48.
188. See 288 F. Supp. 2d 544, 554-58 (S.D.N.Y. 2003).
189. 714 F.2d 1088, 1091-92 (11th Cir. 1983).
190. See id. (stating that the "limited purpose" element was not met because each recipient "was completely free to use the jingle for his own commercial benefit, and to broadcast the work as broadly as he wished," and that the "limited group" element was not met because the evidence showed "that the jingle was available to any automotive dealer doing business in a market not yet exposed to the jingle who would pay the price").
191. See 284 F.2d 262, 270-71 (D.C Cir. 1960), vacated on other grounds, 369 U.S. 111 (1962) (per curiam).
192. See 253 F.2d 702, 706 (2d Cir. 1958) (concluding that the plaintiff had effected a general publication by distributing forms to prospective customers, absent proof that the recipients were bound by a condition that the forms not be shown to others and given that any interested person could have obtained a copy); see also Lish v. Harper's Magazine Found., 807 F. Supp. 1090, 1102 (S.D.N.Y. 1993). In Lish, the court held that, for purposes of fair use analysis, an author's letter to students in his writing seminar was confidential and therefore unpublished. Id. at 1101-02. The court noted that, under the 1976 Act, "publication" means, inter alia, "distribution . . . to the public," and it cited the legislative history of the 1976 Copyright Act as defining "the public" as "persons 'under no explicit or implicit restrictions with respect to disclosure of its contents."' See id. (citing H.R. REP. NO. 94-1476, at 138 (1976), as reprinted in 1976 U.S.C.C.A.N. 5659, 5754). It concluded that publication therefore "turns on the question whether there were 'implicit restrictions' on further distribution or disclosure of the document's contents," and that in the case at hand there were such restrictions. See id. at 1102.
193. See 944 F.2d 1446, 1449 (9th Cir. 1991). In 1941, the Academy obtained a federal copyright registration for the statuette as an unpublished work. See id.
194. See id. at 1452-54. As for limited purpose, the court rejected the argument that the Academy promoted the Oscar "for its own commercial benefit," despite the fact that "the film industry may benefit incidentally from the Oscar's promotion." Id. at 1453.
195. See 243 F.2d 640, 645 (D.C. Cir. 1957). The Second Circuit in Continental Casualty Co. distinguished Hirshon on the ground that its significance, like American Visuals Corp. v. Holland, 239 F.2d 740 (2d Cir. 1956), lay "in the recognition that 'publication' may more readily be found if the issue is whether the copyright statute has been complied with than if forfeiture of common law rights is involved." See Cont'l Cas. Co., 253 F.2d at 707. But while Hirshon does cite American Visuals with approval for this proposition, the issue in Hirshon, which the court answered in the negative, was whether the plaintiff had made a divestive publication. See Hirshon, 243 F.2d at 645-46. On the other hand, other courts have agreed that merely making copies available as samples or in catalogues or ads is not a publication. See Hub Floral Corp. v. Royal Brass Corp., 454 F.2d 1226, 1229 (2d Cir. 1972) ("It has long been settled that the taking of orders through employment of samples, catalogs, or advertisements of a work does not amount to publication of the work." (citations omitted)); Dowdey v. Phoenix Films, Inc., 199 U.S.P.Q. (BNA) 579, 584 (S.D.N.Y. 1978). But cf. Rexnord, Inc. v. Modern Handling Sys., Inc., 379 F. Supp. 1190, 1197 (D. Del. 1974) (finding that promotional distribution, absent conditions on "use . . . or further communication" of the materials, constitutes publication).
196. See Academy, 944 F.2d at 1453; Hirshon, 243 F.2d at 645. In Academy, the only known sale of an Oscar occurred pursuant to an estate sale. See 944 F.2d at 1449.
197. See 749 F.2d 527, 528-29 (9th Cir. 1984).
198. The court did mention that "the reduced size of the photograph, its reproduction on a business card, and its limited distribution also support the jury's verdict" of no general publication. Id. at 529.
199. See Academy, 944 F.2d at 1454.
200. See 598 F.2d 688, 693 (1st Cir. 1979).
201. See 17 U.S.C. § 101 (2000 & Supp. V 2007) (defining "transmit" as "to communicate . . . by any device or process whereby images or sounds are received beyond the place from which they are sent").
202. See id. (defining "display," "perform," and "publicly").
203. See MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511, 518 (9th Cir. 1993) (referring to the transfer of computer software into a computer's RAM as effecting a "'copying' for purposes of copyright law"); Marobie-FL, Inc. v. Nat'l Ass'n of Fire Equip. Distribs. & Nw. Nexus, Inc., 983 F. Supp. 1167, 1177-78 (N.D. Ill. 1997) (finding that the copying of clip art images into the RAM of users' computers creates a "copy" of the material under the Copyright Act).
204. 17 U.S.C. § 106(3) (2000 & Supp. V 2007).
205. Id. § 101.
206. In Hotaling v. Church of Jesus Christ of Latter-Day Saints, 118 F.3d 199, 203 (4th Cir. 1997), the court appears to hold that a library's act of merely making an infringing work available to the public for on-site inspection constituted an unauthorized distribution, stating that, [w]hen a public library adds a work to its collection, lists the work in its index or catalog system, and makes the work available to the borrowing or browsing public, it has completed all the steps necessary for distribution to the public. At that point, members of the public can visit the library and use the work. In dissent, Judge Kenneth K. Hall noted that, under section 106 of the Copyright Act, the copyright owner has the exclusive right to "distribute copies . . . of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending." Id. at 205 (Hall, J., dissenting) (quoting 17 U.S.C. § 106(3)). Judge Hall was unwilling to conclude that a library "lend[s] a work each time a patron consults it," and noted in addition that there was no evidence that anyone had even "used or looked at an infringing copy during the limitations period." Id. Other cases, however, take a narrower view. See, e.g., Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1162-63 (9th Cir. 2007) Giolding that in-linking does not constitute distribution); see also supra note 130 (citing other relevant cases).
207. See Chang, supra note 118, at 238.
208. See United States v. Am. Soc'y of Composers, Authors & Publishers, 485 F. Supp. 2d 438, 442-44 (S.D.N.Y. 2007) (holding that, while streaming constitutes a public performance, downloading constitutes a reproduction of a musical work); Chang, supra note 118, at 239.
209. 188 F. Supp. 2d 398 (S.D.N.Y. 2002).
210. Id. at 401.
211. Id. at 400.
212. See id. at 401.
213. Id. at 402 (footnote omitted).
214. See 1 NIMMER & NIMMER, supra note 32, § 4.07[B].
215. See BRUCE P. KELLER & JEFFERY P. CUNARD, COPYRIGHT LAW: A PRACTITIONER'S GUIDE § 6:1.2 n.94 (2007) (stating that Getaped is difficult to reconcile with the principle that public display of a work is not publication);
216. ROGER E. SCHECHTER & JOHN R. THOMAS, INTELLECTUAL PROPERTY: THE LAW OF COPYRIGHTS, PATENTS AND TRADEMARKS 81 (2003) ("It is clear . . . that under the statutory language now in effect there has been no distribution of copies or phonorecords . . . to the public and hence no publication when a work is disseminated electronically."); Chang, supra note 118, at 236 (agreeing with Schechter and Thomas); Gard, supra note 17, at 699 (questioning whether a work posted on the Internet with copying protection would be considered published under the Getaped rule).
217. See U.S. COPYRIGHT OFFICE, CIRCULAR 65: COPYRIGHT REGISTRATION FOR AUTOMATED DATABASES 2 (2006) ("It is unclear whether online availability for the user constitutes publication of the work under the copyright law.");
218. U.S. COPYRIGHT OFFICE, CIRCULAR 66: COPYRIGHT REGISTRATION FOR ONLINE WORKS 3 (2006) [hereinafter ONLINE CIRCULAR] ("The definition of 'publication' in the U.S. copyright law does not specifically address online transmission.").
219. 17 U.S.C. § 101 (2000 & Supp. V 2007).
220. See supra text accompanying notes 123-28.
221. See Aerospace Servs. Int'l v. LPA Group, Inc., 57 F.3d 1002, 1003-04 (11th Cir. 1995) (per curiam); Logicom Inclusive, Inc. v. W.P. Stewart & Co., 72 U.S.P.Q.2d (BNA) 1632, 1638 (S.D.N.Y. 2004); Bouchat v. Champion Prods., Inc., 327 F. Supp. 2d 537, 549-51 (D. Md. 2003).
222. See White v. Kimmell, 193 F.2d 744, 746-47 (9th Cir. 1952).
223. See Brown v. Tabb, 714 F.2d 1088, 1091 (11th Cir. 1983) (stating that the distribution of jingles to three broadcasters was not made to a limited group because the works were available to anyone who wanted them); Roy Exp. Co. Establishment of Vaduz, Liech. v. Columbia Broad. Sys., Inc., 672 F.2d 1095, 1102 n.14 (2d Cir. 1982) ("[A]vailability for public sale constitutes publication, even if actual sales are minimal."); Cont'l Cas. Co. v. Beardsley, 253 F.2d 702, 706-07 (2d Cir. 1958); William A. Graham Co. v. Haughey, 430 F. Supp. 2d 458, 470 (E.D. Pa. 2006) (noting that the distribution of proposals to "selected clients" was not made to a limited group); Milton H. Greene Archives, Inc. v. BPI Commc'ns, Inc., 378 F. Supp. 2d 1189, 1198 (C.D. Cal. 2005) (observing that the distribution of photographs to studios to promote motion pictures was not made to a limited group).
224. See, e.g., Brewer v. Hustler Magazine, Inc., 749 F.2d 527, 528-29 (9th Cir. 1984) (holding that the plaintiff's distribution of two hundred business cards bearing a small reproduction of the subject photograph to persons in the advertising industry was made to a limited group); Hub Floral Corp. v. Royal Brass Corp., 454 F.2d 1226, 1229 (2d Cir. 1972) ("It has long been settled that the taking of orders through employment of samples, catalogs, or advertisements of a work does not amount to publication of the work."); Hirshon v. United Artists Corp., 243 F.2d 640, 645 (D.C. Cir. 1957) Giolding that the distribution of $2000 worth of songs to broadcasting stations and professional musicians for "plugging" purposes constituted a limited publication).
225. See, e.g., Brewer, 749 F.2d at 528-29 Giolding that the distribution of business cards was for the "very narrow purpose [of] obtaining employment"); Hirshon, 243 F.2d at 645; Milton H. Greene Archives, 378 F. Supp. 2d at 1199. But see William A. Graham Co., 430 F. Supp. 2d at 470 (noting that distribution for pecuniary gain was not made for a limited purpose); Cont'l Cas. Co., 253 F.2d at 706-07.
226. See Burke v. Nat'l Broad. Co., 598 F.2d 688, 693 (1st Cir. 1979).
227. As far as I can tell, neither White v. Kimmell, nor any court citing White v. Kimmell's definition of "limited publication," has ever clarified what exactly the word "diffusion" means in this context. The district court in White v. Kimmell, however, quoted extensively from Keene v. Wheatley, 14 F. Cas. 180 (C.C.E.D. Pa. 1861) (No. 7644), a case that appears to use the term "diffusion" more or less as a synonym for "communication." See White, 94 F. Supp. 502, 505-06 (S.D. Cal. 1950), rev'd, 193 F.2d 744 (9th Cir. 1952); Keene, 14 F. Cas. at 199. The Oxford English Dictionary defines "diffusion" to mean, in this context, "[s]preading abroad, dispersion, dissemination (of abstract things, as knowledge)." 3 OXFORD ENGLISH DICTIONARY 346 (1933).
228. See Pushman v. N.Y. Graphic Soc'y, Inc., 39 N.E.2d 249, 251 (N.Y. 1942) (holding that an absolute and unconditional sale of a work of art transfers the (common-law or statutory) copyright to that work, unless the artist expressly reserves the copyright).
229. See, e.g., Geisel v. Poynter Prods., Inc., 295 F. Supp. 331, 343-44 (S.D.N.Y. 1968) (holding that Dr. Seuss's sale of cartoons to a publisher included the transfer of his common-law copyright therein, and citing other cases involving paintings, drawings, and articles appearing in periodicals); Grandma Moses Props., Inc. v. This Week Magazine, 117 F. Supp. 348, 350 (S.D.N.Y. 1953). Pushman itself is ambiguous regarding its reach. On the one hand, the Pushman court cited with approval Parton v. Prang, 18 F. Cas. 1273 (C.C.D. Mass. 1872) (No. 10,784), in which the court stated that, if the sale was an absolute and unconditional one, and the article was absolutely and unconditionally delivered to the purchaser, the whole property in the manuscript or picture passes to the purchaser, including the right of publication, unless the same is protected by copyright, in which case the rule is different. See Pushman, 39 N.E.2d at 250 (quoting Parton, 18 F. Cas. at 1278) (emphasis added). Parton itself, however, involved copies of a painting, as did another case cited in both Parton and Pushman: Turner v. Robinson, (1860) 10 Ir. Ch. R. 121, 143 (Rolls C). See Pushman, 39 N.E.2d at 250; Parton, 18 F. Cas. at 1278. On the other hand, the Pushman court also noted dicta from Stephens v. Cady, 55 U.S. (14 How.) 528, 531 (1852), a case involving maps, that copyright "will not pass with the manuscript unless included by express words in the transfer." See Pushman, 39 N.E.2d at 251 (emphasis added).
230. As for federal law, see 17 U.S.C. §§ 202, 204(a) (2000) and Dumas v. Gommerman, 865 F.2d 1093, 1097 & n.9 (9th Cir. 1989). As for state law, see, for example, N.Y. ARTS & CULT. AFF. LAW § 14.01 (McKinney 1984) and Samet & Wells, Inc. v. Shalom Toy Co., 185 U.S.P.Q. (BNA) 36, 38-39 (E.D.N.Y. 1975).
231. White v. Kimmell, 193 F.2d 744, 746-47 (9th Cir. 1952) (emphasis added). Since a sale is one type of distribution, the very last portion of the definition seems redundant, if nothing else. For an alternate interpretation of the definition (which I reject), see infra note 248.
232. 210 U.S. 339, 350-51 (1908).
233. See Harrison v. Maynard, Merrill & Co., 61 F. 689, 691-92 (2d Cir. 1894); Clemens v. Estes, 22 F. 899, 900-01 (C.C.D. Mass. 1885).
234. See 17 U.S.C. §109(a) (2000) ("[T]he owner of a particular copy or phonorecord lawfully made under this title . . . is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.").
235. An early case recognizing this principle, Baker v. Libbie, 97 N.E. 109 (Mass. 1912), involved a suit against a person who planned to auction off personal correspondence authored by Christian Science founder Mary Baker Eddy. According to the court, [t]his exact question has never been presented for adjudication, so far as we are aware. . . . But on principle it seems to flow from the nature of the right transferred by the author to the receiver and of that retained by the writer in ordinary correspondence, that the extent of the letter's proprietary power is to make or to restrain a publication, but not to prevent a transfer. The rule . . . is that in the absence of some special limitation imposed either by the subject-matter of the letter or the circumstances under which it is sent, the right in the receiver of an ordinary letter is one of unqualified title in the material on which it is written. He can deal with it as absolute owner subject only to the proprietary right retained by the author for himself . . . to the publication or nonpublication of ideas in its particular verbal expression. Id. at 112; accord Salinger v. Random House, Inc., 811 F.2d 90, 95 (2d Cir. 1987) ("Having ownership of the physical document, the recipient (or his representative) is entitled to deposit it with a library and contract for the terms of access to it."); McCormick's Estates, 80 Pa. D. & C. 413, 414 (Orphans' Ct. Pa. 1952);
236. Comment, Property Rights in Letters, 46 YALE L.J. 493, 494-95 & nn.6-7 (1937).
237. See RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 41(b) (1995).
238. See 944 F.2d 1446, 1452-54 (9th Cir. 1991).
239. Roy Exp. Co. Establishment of Vaduz, Liech. v. Columbia Broad. Sys., Inc., 672 F.2d 1095, 1102 n.14 (2d Cir. 1982) ("Though the cases contain much talk of publication occurring upon the sale of a 'single copy,'. . . such statements express the thought that availability for public sale constitutes publication, even if actual sales are minimal." (citing Bobbs-Merrill Co. v. Straus, 147 F. 15, 19 (2d Cir. 1906), aff'd, 210 U.S. 339 (1908))); William A. Meier Glass Co. v. Anchor Hocking Glass Corp., 95 F. Supp. 264, 268 (W.D. Pa. 1951) (stating that the plaintiff's design "was offered for sale and constituted a general publication whereby the plaintiff abandoned and surrendered any common law property right it may have had in said design"). But see Arista Records LLC v. Greubel, 453 F. Supp. 2d 961, 969 n.11 (N.D. Tex. 2006) (citing In re Napster, Inc. Copyright Litig., 377 F. Supp. 2d 796, 804-05 (N.D. Cal. 2005)) (stating that only an offer for purposes of further distribution, public performance, or public display constitutes a publication, according to a literal reading of section 101).
240. See, e.g., Ford Motor Co. v. Summit Motor Prods., Inc., 930 F.2d 277, 299-300 (3d Cir. 1991) ("'[A] general publication may be found when only one copy of the work reaches a member of the general public . . . .'" (quoting Brown v. Tabb, 714 F.2d 1088, 1091 (11th Cir. 1983))); Roy Export, 672 F.2d at 1102 n.14; Werckmeister v. Am. Lithographic Co., 134 F. 321, 325 (2d Cir. 1904) (citing Wheaton v. Peters, 33 U.S. (8 Pet.) 591 (1834)); see also H.R. REP. NO. 94-1476, at 138 (1976), as reprinted in 1976 U.S.C.CA.N. 5659, 5754 (stating that, under the definition included in the 1976 Act, "a work is 'published' if one or more copies or phonorecords embodying it are distributed to the public - that is, generally to persons under no explicit or implicit restrictions with respect to disclosure of its contents"). Notice, however, one curious implication of the rule that offers made to the general public effect publications. If I were to compose a work without revealing the precise expression to anyone, and then offer to sell copies of the work (described in somewhat general terms) to the general public, presumably the offer would constitute a general publication, despite the fact that no one besides me has yet seen the actual text (or even responded to the offer). I thank David Nimmer (who agrees that the offer would constitute a general publication) for suggesting this hypothetical.
241. See Werckmeister, 134 F. at 325 ("[I]n case of a book, . . . [t]he unrestricted offer of even a single copy to the public implies the surrender of the common-law right.").
242. See id. at 326 ("The exhibition of a work of art for the purpose of securing a purchaser or an offer to sell does not adversely affect the right of copyright . . . .").
243. See id.
244. The court also noted that copyright law at that time did not (as it now does) confer an affirmative right of exhibition or display, see id., but it is not so clear why, logically, this compels the result that exhibition cannot constitute publication. Cf. Nimmer, supra note 124, at 188-89 (arguing that the lack of copyright protection for sound recordings (prior to 1972) did not logically preclude the result that the publication of a sound recording resulted in publication of the underlying musical work). In addition, the court noted that (as in the later, but factually similar, case of American Tobacco Co. v. Werckmeister, 207 U.S. 284, 287 (1907)), the gallery owner had expressly forbidden observers from copying. See Werckmeister, 134 F. at 326-27.
245. See supra note 175 and accompanying text.
246. See supra note 146 and accompanying text.
247. That is, given the unique circumstances surrounding personal correspondence - the author retains the copyright but rarely, if ever, retains the physical copy - a rule equating the recipient's offer to sell the work with publication might have undermined the author's copyright and privacy interests all too easily. See Wright v. Warner Books, Inc., 748 F. Supp. 105, 111 (S.D.N.Y. 1990) (stating that, in the context of fair use, "what motivated the Court of Appeals in Salinger [v. Random House, Inc., 811 F. 2d 90 (2d Cir. 1987)], at least in part, was concern over J.D. Salinger's right to privacy," but that given Richard "Wright's death in 1960, those concerns . . . are absent here"), aff'd, 953 F.2d 731 (2d Cir. 1991); Baker v. Libbie, 97 N.E. 109, 111-12 (Mass. 1912) (suggesting that public knowledge of the letters at issue in that case would not have violated "delicate feelings," but that letter writers are entitled as much as other authors to enjoy the fruits of their labor). But see Comment, supra note 228, at 503-04 (questioning whether letter writers' interests in privacy or in enjoying the fruits of their labor justifies continued recognition of their common-law copyrights post-mortem).
248. Cf. 1 RICKETSON & GINSBURG, supra note 119, § 6.45 (suggesting that, under the Berne Convention - which, unlike U.S. domestic law, provides that publication does not occur unless "the availability of such copies has been such as to satisfy the reasonable requirements of the public, having regard to the nature of the work," Berne Convention, supra note 27, art. 3(3) - the exhibition for sale of a unique work of art does not constitute publication, because "there is no making available of copies to satisfy the reasonable requirements of the public" (emphasis added)).
249. 17 U.S.C. § 101 (2000 & Supp. V 2007).
250. H.R. REP. NO. 94-1476, at 138 (1976), as reprinted in 1976 U.S.C.C.A.N. 5659, 5754.
251. 17 U.S.C. § 106(3)-(6) (2000 & Supp. V 2007) (emphasis added).
252. See supra Part II.B.4.
253. See 1 NIMMER & NIMMER, supra note 32, § 4.04 (inferring that "an offer to distribute to members of the public for their own use" would constitute a publication as well).
254. Cf. Bagdadi v. Nazar, 84 F.3d 1194, 1198-99 (9th Cir. 1996) (holding that a school constituted a "group of persons"). Building on the preceding analysis, the next question would be whether an offer to distribute multiple copies to a single person, and not a group, constitutes a publication. Presumably, distributing a single copy of a play or musical work to a single person chosen by the author - or even to a limited group (say, of actors or musicians) - for purposes of public performance, would not be a publication; neither would distributing a single copy of a work of art for public display. Distributing a single copy to a single person, with instructions that she in turn pass it along (but not copy it) to others, on the other hand, might conceivably be a publication.
255. See supra text accompanying notes 224-29.
256. Alternatively, perhaps one could argue that my exegesis of limited publication has been incorrect from the start, and that a publication is limited unless, inter alia, the author conveys to the recipient the right to diffuse, reproduce, distribute, and sell the work. In other words, maybe the phrase "without the right of diffusion, reproduction, distribution or sale" should be read to mean something like "without the right to do all of the following: diffusion, reproduction, distribution, or sale." Reading the word "or" to mean, in context, "and," is not without some precedent within the context of statutory interpretation. See, e.g., Skutt v. Dillavou, 13 N.W.2d 322, 325 (Iowa 1944) ("The courts do not hesitate to construe 'and' as 'or' if necessary to arrive at legislative intent."); Robson v. Cantwell, 141 S.E. 180, 184 (S.C. 1928). But this definition seems to go too far in the other direction. Distributing copies - or even offering to distribute copies, to credit the statutory text - to even a limited group for the specific purpose of further distribution of those copies to the general public would appear to be a general publication, even if the group is not authorized to make its own copies. More generally, it has long been common for authors to license their individual rights (to copy, to perform, etc.) to different entities, without licensing any one entity to engage in all of the activities covered by the copyright.
257. So construing the language would avoid making formalistic distinctions, based on number of recipients or number of copies. It would also avoid casting the offering of a single copy to a single recipient as a general publication, if the offer contemplates a general publication at some point beyond the immediate future - or, a fortiori, merely permits but does not request the recipient to make a general publication. In such a case, a general publication would occur only when the recipient exercises his right to make a general publication, not before. As such, it would be analogous to the rule that merely delivering a copy to a prospective publisher or to a printer is not a publication, whereas the delivery to retail stores is. See, e.g., 1 NIMMER & NIMMER, supra note 32, § 4.13[A][1].
258. Alternatively, perhaps one could focus on the words "for purposes of." An author who offers to distribute even a single copy to a single recipient effects a general publication if her purpose is to effect, in the immediate future, the further distribution of copies to the general public or to permit the general public to perform or display the work. (Note that, when a broadcaster transmits a performance of a work over the airwaves or over the Internet, the broadcaster has effected a public "performance" of the work. See 17 U.S.C. § 101 (2000 & Supp. V 2007) (defining "perform," "publicly," and "transmit").) A member of the general public who tunes into the broadcast also arguably "performs" the work, through rendering or playing it "by means of any device or process," see id., but she does not "publicly" perform it unless she happens to be playing the radio or television or accessing Internet in a place open to the general public, see id. She also would be publicly performing a work if she played a CD or DVD embodying that work in a public place. See id. Whether these acts infringe would depend on the applicability of a liability exception such as fair use or 17 U.S.C. § 110(4). See id. § 110(4) (2000 & Supp. V 2007) (providing an exception to liability for unauthorized public performances of nondramatic literary or musical works where no purpose of commercial advantage exists and fees are not collected). But legislative history suggests that the language was intended to cover situations in which the "group of persons," not the public, effects the further distribution, performance, or display. See supra text accompanying note 242.
259. See H.R. REP. NO. 94-1476, at 138 (1976), as reprinted in 1976 U.S.C.C.A.N. 5659, 5754. Depending on the degree of vertical integration, of course, there may be only a limited number of distributors or broadcasters or theaters with whom a copy is contractually bound to deal. At least in theory, though, such exclusive dealing arrangements are open to revision from time to time. See, e.g., Barry Wright Corp. v. ITT Grinnell Corp., 724 F.2d 227, 237-38 (1st Cir. 1983).
260. See ProCD, Inc. v. Zeidenberg, 86 F.3d 1447, 1452 (7th Cir. 1996) ("To propose a change in a law's text is not necessarily to propose a change in the law's effect. New words may be designed to fortify the current rule with a more precise text that curtails uncertainty.").
261. Mere acquiescence on the part of the copyright owner probably should not suffice, unless it rises to the level of laches; copyright owners generally are under no duty to enforce their rights. See, e.g., Famous Music Corp. v. Bay State Harness Horse Racing & Breeding Ass'n, Inc., 423 F. Supp. 341, 344 (D. Mass. 1976) (holding that the plaintiffs' delay of five months before bringing an infringement suit did not rise to the level of causing financial hardship to support the defendants' allegation of laches), aff'd, 544 F.2d 1213 (1st Cir. 1977).
262. See supra notes 157, 171 and accompanying text.
263. See supra text accompanying note 64.
264. See ONLINE CIRCULAR, supra note 211, at 2 (stating that, "[g]enerally, copyrightable revisions to online works that are published on separate days must each be registered individually, with a separate application and filing fee," unless the work qualifies as an automated database or a serial or newsletter). Online works can be registered as literary works, pictorial works, and so on, see id., but there is no separate classification for online works, and I am not aware of any statistics on the number of websites or other online works that have been registered. According to one estimate, there are over 165,000,000 websites in existence. Netcraft, April 2008 Web Server Survey, http://news.netcraft.com/archives/ web_server_survey.html Gast visited Apr. 27, 2008).
265. As noted above, whether such an equation would contravene the Berne Convention presents an interesting question as well. See supra note 117 and accompanying text.
266. See supra note 122 and accompanying text.
267. Even if Internet transmissions by themselves do not constitute publications, the user's authorized downloading of material from a website may. See supra notes 196-211 and accompanying text. If so, then the work may be deemed simultaneously published in all countries in which authorized downloading is possible, and the country of origin may indeed be the country with the shortest term. See supra Part II.B.5.
268. In the vast majority of cases, however, the final twenty-five years of copyright protection will probably have little if any value, and the fact that a work is published is often not a determinative factor in the fair use calculus.
269. See supra notes 34-48 and accompanying text.
270. Under current law, the date of creation is used for some purposes. The term of copyright, for example, now commences at creation. See 17 U.S.C. § 302(a) (2000). The termination date for works for hire and for anonymous and pseudonymous works is 95 years from the date of publication or 120 from the date of creation, whichever expires first. Id. § 302(c) (2000).
271. See 17 U.S.C. § 101 (2000 & Supp. V 2007) (defining derivative work).
272. Patent law sometimes takes into consideration the date on which an inventor conceived of an invention. See In re Jolley, 308 F.3d 1317, 1325 (Fed. Cir. 2002) ("[E]vidence of conception must ultimately address whether the inventor formed 'the definite and permanent idea of the complete and operative invention' in his or her mind." (quoting Bosies v. Benedict, 27 F.3d 539, 543 (Fed. Cir. 1994))). Applying this criterion in the context of patent law is difficult enough. Applying it in the context of, say, a novel or a symphony would require a court to consider how fully formed the work must be in the mind of the creator before it is conceived. Determining when an initially unfixed work was first performed would involve similar difficulties.
273. The only criterion now, under U.S. law, is that an embodiment of a work "is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration." 17 U.S.C. § 101.
274. See Lichtman, supra note 143, at 732-34.
275. Under U.S. law, an inventor is entitled to a patent only if, inter alia, the invention claimed was not "described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent," 35 U.S.C. § 102(a) (2000); was not "described in a printed publication in this or a foreign country . . . more than one year prior to the date of the application for patent in the United States," id. § 102(b); and was nonobvious in light of any such printed publication or publications, as of the date of invention and more than one year prior to the date of application for a U.S. patent, see id. § 103(a) ("A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."). See also Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1305 (Fed. Cir. 2006), aff'd in part, rev'd in part on other grounds, 498 F.3d 1307 (Fed. Cir. 2007); In re Foster, 343 F.2d 980, 987-88 (C.C.P.A. 1965) Giolding that an invention must be nonobvious, in light of § 1020(b) prior art, more than one year prior to filing of a U.S. patent application).
276. See In re Klopfenstein, 380 F.3d 1345, 1348 n.2, 1349 n.4 (Fed. Cir. 2004) (stating that "the question to be resolved in a 'printed publication' inquiry is the extent of the reference's accessibility to at least the pertinent part of the public, of a perceptible description of the invention, in whatever form it may have been recorded"; but that "an entirely oral presentation at a scientific conference that includes neither slides nor copies of the presentation is without question not a 'printed publication,"' and that "a presentation that includes a transient display of slides is likewise not necessarily a 'printed publication'" (citation omitted) (internal quotation marks omitted)); U.S. PATENT & TRADEMARK OFFICE, MANUAL OF PATENT EXAMINING PROCEDURE § 2128 (8th rev. ed. 2007) ("An electronic publication, including an on-line database or Internet publication, is considered to be a 'printed publication' within the meaning of 35 U.S.C. 102(a) and (b) . . . .").
277. See Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (stating that a reference is "publicly accessible" if it "'has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation'" (quoting In re Wyer, 655 F.2d 221, 226 (C.C.P.A. 1981))); In re Klopfenstein, 380 F. 3d at 1348 (stating that "the key inquiry is whether or not a reference has been made 'publicly accessible'"); In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989) (stating that a reference "'must have been sufficiently accessible to the public interested in the art; dissemination and public accessibility are the keys'" (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988))).
278. In re Hall, 781 F.2d 897, 898-900 (Fed. Cir. 1986); cf. In re Cronyn, 890 F.2d at 1159-61 (holding that theses made available to defense committees consisting of four faculty members, and not meaningfully catalogued or indexed, were not sufficiently publicly accessible to count as "printed publications").
279. See Bruckelmyer, 445 F.3d at 1377-80; see also In re Wyer, 655 F.2d at 226 (finding that a patent application available on microfilm in the Australian Patent Office counted as a "printed publication").
280. See In re Klopfenstein, 380 F.3d at 1350.
281. Id.; see also id. at 1348.
282. See, e.g., Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1323-24 (Fed. Cir. 2002); Aluminum Co. of Am. v. Reynolds Metals Co., 14 U.S.P.Q.2d (BNA) 1170, 1172-73 (N.D. Ill. 1989). If a person breaches an obligation of confidentiality owed to the inventor, however, and thus renders the invention publicly accessible, the public accessibility of the invention probably will count against the inventor. See Lorenz v. Colgate-Palmolive-Peet Co., 167 F.2d 423, 425-30 (3d Cir. 1948).
283. See ROBERT PATRICK MERGES & JOHN FITZGERALD DUFFY, PATENT LAW AND POLICY: CASES AND MATERIALS 417-19 (4th ed. 2007).
284. Assuming, that is, that RAM copies are sufficiently tangible embodiments. Under the 1976 Act, as we have seen, copyright law clearly cannot go as far as patent law in equating mere displays with publication.
285. 239 F.2d 740 (2d Cir. 1956).
286. Id. at 742-43.
287. Some courts actually appear to be moving in this direction. See Kelly v. Arriba Soft Corp., 336 F.3d 811, 820 (9th Cir. 2003) (stating that "[p]ublished works are more likely to qualify as fair use because the first appearance of the artist's expression has already occurred," and that "Kelly's images appeared on the internet before Arriba used them in its search engine," such that the second fair use factor, nature of the copyrighted work, weighed "only slightly in favor of Kelly"); Video-Cinema Films, Inc. v. Cable News Network, Inc., Nos. 98 Civ. 7128(BSJ), 98 Civ. 7129(BSJ), 98 Civ. 7130(BSJ), 2001 WL 1518264, at *7 n.17 (S.D.N.Y. Nov. 28, 2001) (holding that, for the purposes of fair use analysis, either a general or a limited publication weighs in favor of the use being a fair use).
288. See supra notes 116-18 and accompanying text.