Advanced Intellectual Property Course:
Comparative Copyright Law in the 21st Century
CRN 53467/ Fall 2005
ROOM 304
Overview, basic information, and syllabus
BLUE TEXT INDICATES FILE IS NOT ON ANGEL YET
(revised draft – as of November 30, 2005)
Professor Justin Hughes
212-790-0260
BASIC INFORMATION
Class hours:
Tuesdays and Thursdays, 2:30 – 3:50pm
Office hours:
Mondays, 10:00am – noon, Wednesdays, 2:30pm – 4:30pm – subject to change
I am very happy to meet by appointment. Or stop by the office when the door is open.
Course Materials:
Materials are all on-line through the Angel system.
A Distribution Pack for the first class will be printed and available for the first class. After that, based on class interest, further course packs will be printed [for which there will be a charge] OR students may rely on downloading from the Angel system.
It is recommended, but not required that students buy:
Unfair Competition, Trademark, Copyright and Patent: Selected Statutes and International Agreements
Paul Goldstein and Edmund Kitch, eds.
(Foundation Press, 2005)
This book is not available in the book store. You can buy it online with these steps:
1.Go to the following [very long] URL
2.Click on “Stat Supp & Ct. Rules” tab at the bottom of the page. The book should now appear.
3.Students will also have to register at the site ( to
complete an online purchase
Evaluation Format:
Grading in the course will be based on a final take home examination. Depending on class interest, we may adopt a two-part take home format, one part assigned 2 weeks before the end of class and a smaller part treated as a regular take-home. In addition, class participation will be used to adjust grades upward or downward.
SYLLABUS
Meta-Syllabus
Prelude [how far can copyright go?]
1.Translating 19th Century Copyright Law into 21st Century Problems –
a.what counts as a copy? transient and temporary copies
b.what counts as reproduction and distribution?
2.The Initial Treaty Framework
3.WIPO Copyright Treaties and Comparative National Implementation Thereof
a.United States implementation – digital locks and circumvention devices
b.European implementation – making available to the public, digital lock picks, and circumvention devices
c.Australian and Singaporean implementation
3.The Problem of Internet Service Providers and other Third Party Liability
a.United States
b.European Union
c.Japan and Germany – a comparison
d.China
4.The Problem of Personal Copying
a.peer to peer systems
b.fair use, fair dealing, and personal exceptions
c.levy systems
5.Linking and Framing
a.linking
b.framing
6.Protecting Databases through Copyright Law and other Means
a.The contraction of copyright protection
b.European Union
c.United States
d.Australia and Canada
Expanded Syllabus
name in brackets is file name in Angel System
Materials on Angel and in Coursepack #1(available at Faculty Services,
Prelude
Lancôme v. Kecofa, et al., Decision of the Court of Appeals, Den Bosch, The Netherlands, 8 June 2004 [Lancome.pdf]
1. Translating 19th Century Copyright Law into 21st Century Problems –
Fortnightly Corp. v. United Artists Television, 392 U.S. 390 (1968) [Fornightly2.doc]
MAI Systems v. Peak Computer 991 F.2d 511, 1993 U.S. LEXIS 7522 (9th Cir., 1993) [MAIvPeakreformat.doc]
Marobie-FL, Inc. v. National Association of Fire Equipment Distributors, 983 F. Supp. 1167 (E.D. Ill. 1997) [Marobie2.doc]
Material on Angel
Not required reading, but of interest:
Sony Computer Entertainment v. Ball, et. al., [2004] EWHC 1738 (Ch), English High Court of Justice, Chancery Division, 19 July 2004 [sony-v-ball.doc]
also available at
2. The Initial Treaty Framework
Excerpts from the Trade-Related Aspects of Intellectual Property (TRIPS) Agreement, Annex 1C to the Marrakesg Agreement Establishing the World Trade Organization, April 15, 1994 [TRIPSexcerpt.doc], also available at
Berne Convention on the Protection of Literary and Artistic Works, Articles 1-21, last revised at Paris on July 24, 1971, and amended on September 28, 1979, [BERNE.pdf] also available at
[Skim these provisions – perhaps reviewing the “titles” of each article - to see how the substantive components of the Berne Convention were “integrated” into the WTO system by TRIPS Article 9.]
3.The WIPO Copyright Treaties and Comparative National Implementation
WIPO Copyright Treaty (WCT), World Intellectual Property Organization [WIPO] (1996) [WCTtest.pdf] available at
Draft Law of Copyright and Related Rights for Lao People’s Democratic Republic,sometime 2004 [preparatory text based on consultations with WIPO officials; NOT for distribution outside our class] [LaoCopyight.pdf]
[Read Articles 3-9 (pp. 8-13), Articles 21-22 (pp. 20-22), and Art. 29 (pp. 28-28)]
a.United States implementation – digital locks and circumvention devices
Selected provisions of U.S. Digital Millennium Copyright Act (1998), 17 U.S.C. Read § 1201 (a) through (j) and § 1202 [17USC 1201-1205.pdf]
U.S. Copyright Office, The Digital Millennium Copyright Act of 1998: U.S. Copyright Office Summary, December 1998. [read intro and discussions of Titles I and III at this time; you may want to refer to discussion of Title II later in the course]available at [CO-on-DMCA.pdf]
Universal City Studios v. Reimerdes, 111 F. Supp. 2d 294, 2000 U.S. Dist. LEXIS 11696 (S.D.N.Y. 2000) [Universal2.doc]
Lexmark International v. Static Control Components, 387 F.3d 522;2004 U.S. App. LEXIS 22250 (Sixth Cir. 2004) [Lexmark2.doc]
b.European implementation – making available to the public, digital lock picks, and circumvention devices
Sunde v. Johansen, Case No. 02-507 M/94, Oslo Court of First Instance, 7 January 2003 [translation courtesy of Professor Jon BING, University of Oslo, Norway] [DVD-Jon-engelsk-RRW.1.doc]
European Union Copyright Directive, Directive 2001/29/EC of the European Parliament and the of the Council, 22 May 2001 [2001COPYRIGHTdIRECTIVE.PDF] [Skim “whereas” provisions and read directive articles beginning on page 15; skip Article 5, which we study later].
Joint Press Report, Die Deutsche Bibliothek, Börsenverein des Deutschen Buchhandels, and Bundesverband der Phonographischen Wirtschaft, 18 January 2005 (showing a private sector effort to provide access and, therefore, avoid interference with any TPM or DRM) [vereinbarung_engl_jan2005.doc]
c.Australian and Singaporean implementation
Excerpts fromUnited States – Singapore Free Trade Agreement, signed byPresident George W. Bush and Singapore Prime Minister Chok Tong Goh on May 6, 2003 , provisions on Intellectual Property Rights also available at Articles 16.4 and 16.5 (p. 188, et seq.)]
Excerpts from Singaporean Copyright Act in response to U.S. – Singapore “FTA” (Part XIIIA, Circumvention of Technological Measures . Read with a mind to comparing to the parallel provisions of the DMCA and EU Copyright Directive) [2005CopyrightAct – PART IIIX.doc], available at
Selected provisions of Australia’s Copyright Amendment (Digital Agenda) Act 2000, No. 110, 2000, Assented to 4 September 2000
Australian Copyright Council, Digital Agenda amendments: an overview, Information Sheet G65, July 2003, available at
Sony Computer Entertainment v. Eddy Stevens, Federal Court of Australia, [2003] FCAFC 157, 30 July 2003 [excerpts – summary and opinions of Judge French, Lindgren, and Finkelstein] [EddyStevens2.doc]
3.The Problem of Internet Service Providers and other Third Party Liability
a.United States
Selected provisions of U.S. Digital Millennium Copyright Act (1998), 17 U.S.C. § 512. [Sec.512.pdf]
b.European Union
EU Directive on Electronic Commerce, Directive 2000/31/EC of the European Parliament and the Council of 8 June 2000 [review articles 12 - 15 reproduced here and any “whereas” clauses (which serve as a kind of legislative history) that you think are relevant] [EU E-Commerce Directive]
The Multatuli Project, ISP Notice & take down, Lecture by Sjoera Nas, Bits of Freedom, SANE, 1 October 2004
c.Japan and Germany – a comparison
Sections 8-11, German Tele-Service Act (Teledienstgesetz), as amended December 14, 2001 [German Tele-Service Act]
BGH, Urteil vom 04.03.2004 - III ZR 96/03 ("Rolex"),Judgment of the Bundesgerichtschof (BGH) (Federal High Court), March 11, 2004 (summaries from Dr. Boris Borsch [Rolex case summary – Germany] and Shinji Niioka, CSL LLM) [NiiokaGERMANLAW.doc]
Interim Report by Copyright Council of Japan (First SubGroup) Regarding ISP Liability, December 2000
(detailing two cases of defamation and ISP liability in Japanese courts, with additional story from Yomiuri Shimbun) [JapanCopyrightCouncil.doc or Interim Report of the Copyright Council of Japan]
Japan Provider Liability Limitation Act, passed November 30, 2001 and effective May 27, 2002 [the version we have here is a translation of the “draft” of the PLLA but seems to reflect the final provisions] [Japan Provider Liability Limitation Act - DRAFT] also available at
d.China
Interpretation by the Supreme People’s Court (China) of Several Issues Relating to Adjudication of and Application of Law to Cases of Copyright Disputes on Computer Network,
Adopted at the 1144th meeting of the Adjudication Commission of the Supreme People’s Court, December 21, 2000; Amended at the 1302nd Meeting of the Adjudication Commission of the Supreme People's Court on 23 December 2003 and Entering into Force on 7 January 2004. [CHINA-2004Intrepretation.doc] also available at
e.Singapore
Excerpts fromSingapore Copyright Act[Chapter 63 of Singapore Laws], Part IXA, Works, and Other Subject Matter, in Electronic Form, amended in 2004 and effective Jan. 1, 2005. [d-2005SingaporeISPprovisions.doc] available at
4.The Problem of Personal Copying
a.peer to peer systems
Justin Hughes, On Suing One’s Own Customers and the Dilemma of Infringement-Based Business Models, 23 Cardozo Arts & Ent. L. J. 725 (2005
contributory liability
[If you studied the Universal Studios v. Sony (“Betamax”) decision in your basic Copyright course, it would be useful for you to review the case before reading Napster.]
A&M Records v. Napster, Inc., 239 F.3d 1004, 2001 U.S. App. LEXIS 5446, 2001 Cal. Daily Op. Service 1255, 2001 D.A.R. 1611, Copy. L. Rep. (CCH) P28200, 57 U.S.P.Q.2d (BNA) 1729 (9th Cir. Cal. 2001) [Napsterappellate2.doc]
In re. Aimster Litigation, 334 F.3d 643; 2003 U.S. App. LEXIS 13229. Civil Case No. 02-4125, (Posner, 7th Circuit, June 30, 2003) [AimsterPosner2.doc] also at
MGM et al. v. Grokster, et al., 380 F.3d 1154; 2004 U.S. App. LEXIS 17471 (9th Cir. 2004) [GroksterEditedAppellate.doc]
MGM v. Grokster, United States Supreme Court, 545 U.S. ___ (2005) (June 27, 2005) [GROKSTER-SCopinion.pdf]
The Rogue File Case, Heisei 14 (Wa) 4249, Tokyo District Court Decision of January 29, 2003 [translation by Professor Kazuo MAKINO, Omiya Law School]
P2P Site Operators “Did Not Violate Copyright” Appellate Court, English editionof Chosun, Seoul, Korea, Jan 12, 2005 [From English Chosun.doc] also at see also Song Jung-a, Korean Court Acquits music swap service, Financial Times, Jan 13, 2005,
Universal Music Australia Pty Ltd v. Sharman License Holdings Ltd, [2005] FCA 1242, Federal Court of Australia, 5 September 2005
Completely optional
b.suits against end-users – strategy and privacy
Columbia Insurance Company v. Seescandy.com, 185 F.R.D. 573; 1999 U.S. Dist. LEXIS 12652 (N.D. Cal. 1999) [seescandy.doc]
RIAA v. Verizon, 351 F.3d 1229, 2003 U.S. App. LEXIS 25735 (D.C. Cir. 2003) [RIAAvVERIZON.doc]
EMI Records, et. al v. EIRCOM, Ltd., The High Court Dubline, Case No. 2014P/2005, Ex-Tempore Judgment Given by Mr. Justice Kelly, 8 July 2005 [Irish Judgment-summer2005 – edited.doc]
BMG Canada, et. al v. John Doe, Canada Federal Court (Ottawa), 2004 FC 488, Reasons for Order and Order, March 31, 2004 [BMG CANADA v. DOES.pdf] also at
c.levy systems – more or less needed? jurisdiction issues.
Chart showing comparative levies for EU countries,The Industry Standard February 5, 2001, at 70 [Copyright Levies Europe.pdf]
Summary and chapters 3, 4 , and 5from, Institute for Information Law (IviR), University of Amsterdam,The Future of Levies in a Digital Environment(March 2003) [you may just skim many of the details of this piece – although the entire report is posted on ANGEL, please review only the summary and chapters 3, 4, and 5]
Canadian Association of Internet Providers, et. al. v. Society of Composers, Authors and Music Publishers of Canada, Supreme Court of Canada, 2004 SCC 45, June 30, 2004 [2004_SCC_45.doc]
Michael Geist, The Failure of Canada’s Private Copying System, August 2005, essay appeared in the Toronto Star on August 8, 2005, as “Copying Levy Has Not Worked Well for Anyone” and the Ottawa Citizen on August 11, 2005, as “Lose the Levy”. [GEIST-The Failure of Canada.doc] This version is from
6.Linking and Framing
Section from Universal City Studios v. Reimerdes, 111 F. Supp. 2d 294, 2000 U.S. Dist. LEXIS 11696 (S.D.N.Y. 2000) [universal3.doc]
The Shetland Times v. Wills, Court of Session, Edinburgh, Scotland. Text of InterimInterdict, October 24, 1996 [along with dismissal upon settlement], also available at
Futuredontics, Inc. v. Applied Anagramics, Inc., 1998 U.S. Dist LEXIS 2265, 45 U.S.P.Q.2d (BNA) 2005 (C.D. Cal. 1998) [Futuredontics.doc]
Kelly v. Arriba Soft Corporation, 280 F.3d 934, 2002 U.S. App. LEXIS 1786 (9th Cir. 2002) [actually we will be looking at amended Ninth Circuit opinion], also at
[Kelly2.doc]
Intellectual Reserve, Inc. v. Utah Lighthouse Ministry, 1999 U.S. Dist. LEXIS 19103 (D. Utah, 1999) [INTELLECTUAL RESERVE.doc]
Background – further reading
The Link Controversy Page, also available at
6.Protecting Databases through Copyright Law and other Means
a.The contraction of copyright protection
Romme v. Van Dale Lexicografie¸Supreme Court of the Netherlands, Judgment of January 4, 1991 [reprinted in Dommering and Hugenholtz, eds, Protecting Works of Fact]
Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340; 111 S. Ct. 1282; 1991 U.S. LEXIS 1856; 113 L.Ed. 2d 358; 59 U.S.L.W. 4251; 18 U.S.P.Q.2D (BNA) 1275 [Feist2.wpd]
Pages 27-51 of Justin Hughes, Political Economies of Harmonization: Database Protection and Information Patents, paper presented “Frontiers of Ownership in the Digital Economy” Conference, Institut Français des Relations Internationales, Paris, June 2002, available at
b.European Union
European Union Directive on the Legal Protection of Databases, 96/9/EC, March 11, 1996, [European Union 1996 Database Directive] also available at
cyber.law.harvard.edu/property00/ alternatives/directive.html.
Editorial Aranzadi v. Dealing World Espana, S.A., Judgment of July 2, 1999, Court of First Instance, Alicante, Spain [EditorialAranzadi.wpd]
The British Horseracing Board Ltd and Others v. William Hill Organization Ltd,European Court of JusticeCase C-203/02, JUDGMENT OF THE COURT (Grand Chamber), 9 November 2004 [British Horseracing Board et al. v. William Hill , ECJ (2004)]
d.Australia and Canada
CCH Canadian v. Law Society of Upper Canada, Canada Federal Court of Appeals, [2002] F.C.A. 187, (Fed. Ct.) (Can.) [section on originality standard], also available at
Desktop Marketing Systems v. Telstra Corporation, Federal Court of Australia - Full Court, [2002] F.C.A.F.C. 112, May 15, 2002, [TelstraCase3 – heavyedit.doc] also available at
NTT Town Page Database Case, Tokyo District Court Decision, March 17, 2000 [translation by Professor Kazuo MAKINO, Omiya Law School]
Automobile Database Case, Tokyo District Court Decision, May 25, 2001 [translation by Professor Kazuo MAKINO, Omiya Law School]
7.The Interface between Copyright Law and Contract Law
ProCD v. Zeidenberg, 86 F.3d 1447; 1996 U.S. App. LEXIS 14951; 39 U.S.P.Q.2D (BNA) 1161; Copy. L. Rep. (CCH) P27,529; 29 U.C.C. Rep. Serv. 2d (Callaghan) 1109
Bowers v. Baystate Technologies, 320 F.3d 1316 (Fed. CIr. 2003), 2003 U.S. App. LEXIS 1422; 65 U.S.P.Q.2D (BNA) 1746
Deanna L. Kwong, Note, The Copyright-Contract Intersection: SoftMan Products Co. v. Adobe Systems, Inc. & Bowers v. Baystate Technologies, Inc., 18 Berkeley Law and Technology J. 349 (2003)
End of Syllabus – version #5
Material not assigned, spring 2005
Tele-Direct Publications Inc. v. American Business Information, Inc., Canada Federal Court of Appeals, [1997] 154 D.L.R.4th 328, leave to appeal refused, [1998] 228 N.R. 200 (Fed. Ct.) (Can.)
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