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美国知识产权法
英美 法案例 精选 系列丛 书 （ 英文版 ） 美国知识产权法 Intellectual Property Law of the U畅S畅 陈剑玲 编著 对外经济贸易大学出版社 图书在版编目 （ CIP） 数据 美国知识产权法： 英文 ／ 陈剑玲编著．—北京： 对外经 济贸易大学出版社， ２００７ （ 英美法案例精选系列丛书） ISBN ９７８唱７唱８１０７８唱８５１唱 ９ Ⅰ畅美… Ⅱ畅陈… Ⅲ畅知识产权法 －案例 －美国 －英文 Ⅳ畅D９７１畅２３ 中国版本图书馆 CIP 数据核字 （２００７） 第 ０５４１４７ 号 憋 2007 年 对外经济贸易大学出版社出版发行 版权所有 翻印必究 美国知识产权法 Intellectual Property Law of the U畅S畅 陈剑玲 编著 责任编辑： 陈丽君 对外经 济贸易大学出版社 北 京 市 朝 阳区 惠 新 东 街 １０ 号 邮 购电 话 ： ０１０ －６４４９２３３８ 发 行 部电 话 ： ０１０ －６４４９２３４２ 网 址 ： h ttp： ／／ www ．uibep ． com E唱 mail： uibep ＠１２６．co m 北 京 市 山 华 苑责 任 印 刷 有 限 公 司 印 装 成 品 尺 寸 ： １４０mm ×２０３mm ２００７ 年 １０ 月 北 京 第 １ 版 邮 政 编码 ： １０００２９ 新华书店北京发行所发行 １４畅６２５ 印 张 ３６６ 千 字 ２００７ 年 １０ 月 第 １ 次 印 刷 ISB N ９７８唱 ７唱 ８１０７８唱 ８５１唱 ９ 印 数 ： ０ ００１ －３ ０００ 册 定 价 ： ２４畅 ００ 元 总 序 自 １９８４ 年设立国际 法专 业以来， 对外 经济 贸 易大 学法 学院 （ 原国际经济法系 ） 已 经走 过 了 ２０ 个 年头。 在 ２０ 年 的时 间 里， 经过 几 代 人 的 努 力， 在 培 养 懂 法 律、 懂 经 贸 和 熟 练 运 用 外 语 （ 英语） 的综合型人才、 满足国内市场和 国际市 场的 人才需 求的 道路上， 对外经济贸易大学法学院已成为国内外经贸法律教育中 一个具有自己特色和风格的人才培养基地和输送站。 对外经济贸易大学法学院的 教学特色 体系 是从 “ 国际 商法” 开始的， 为了适应国际经贸全球化的发展潮流， 我们希望， 从对 外经济贸易大学法学院走出的人才能够从国际化的视角理解和把 握我国的法律， 并且客观地认识不同国家的法律、 国际法律之间 的相互作用和影响。 为此目的， 我院几代教师编辑的教材， 包括 案例教材， 都在 强 调具 有 国际 化 视 角的 教 学和 比 较 研 究 的重 要 性。 对外经济贸易大学法学院以独特的教学方法———案例教学和 双语教学为代 表， 旨 在通 过 引导 学生 对 “ 原汁 原 味” 的 英 文案 例的阅读和研讨， 学习不同国家在国际商贸领域的法律原理和规 则， 也通过对经典案例事实和纠纷场景的分析， 帮助学生认识现 实生活中经贸活动的规律和特点。 我们多年的教学实践已经证明： 案例教学对于培养学生发现 和归纳问题、 分析和处理问题的综合能力， 对于培养学生在错综 复杂的事实和现象中分清真伪和主次、 结合事实和法律推理的能 力有直接的促进作用。 除了国际商法以外， 对外经济贸易大学法学院国际法专业的 ２ 美国知识产权法 另一个教 学和 研 究 方 向 是以 WTO 法 律为 主 的 国 际 经 济 法 （ 公 法） 。 本套英文案例选编丛书包含了这样两个方面的内容。 我院鼓励教师在教学、 科研和法律实践中全面拓展才能和发 掘潜力， 同时， 我们强调： 教师的工作应以教学为中心， 科研和 法律实践应为提升教师的专业素质、 提高教学水平而服务。 参与 本套丛书编写的同志都 是我 院具 有多年 教学 经验的 中青 年教 师， 本套丛书是他们在对自己的教学心得的积累和总结的基础上精心 编辑而成的， 是他们对多年摸索的教学方法的总结； 本套丛书也 是我院几代人的教学成果的延续， 更是我院 “２１１ 工程” 建设成 果的组成部分。 ２０ 年来， 我们欣慰 地 看到： 对 外经 济 贸易 大 学 法学 院 的教 学风格和特色也得到 国家 和社会 的认 可， 早 在 ２０ 世 纪七、 八十 年代， 我院就经批准设有可招收国际经济法专业方向的硕士点和 博士点； 我 院 的 “ 国 际 商 法 ” 教 材 和 案 例 教 材 也 广 为 流 传； ２００２ 年我院的国际法 专业 被评 为 国 家重 点 建设 学 科， 现 又 增设 了博士后流动站； 学生和教师的规模日益扩大。 我衷心希望： 我 院有更多的教师和学生加入案例教学和双语教学的尝试和探索中 来， 保持和发展特色， 早日走上国际人才培养和学科全面发展的 道路。 对外经济贸易大学 法学院 院长 ２００４ 年 ７ 月 前 言 本书是对外经济贸易大学法学院国家重点学科建设项目英美 法案例精选系 列丛 书 （ 英 文版 ） 中 的一 辑， 是 以 编 者从 美 国知 识产权法三大主要领域， 即版权法、 专利法和商标法中选择的经 典案例为基础编录而成的。 美国是世界上施行知识产权制度最早的国家之一， 其知识产 权法体系的起源可以追溯到联邦政府成立的第一天。 美国的奠基 人早就已经认识到了知识产权法的重要性， 并在美国联邦宪法第 １ 条第 ８ 款中予以确定和保证： “ 国会 有权 保障 作 者和 发明 人对 各自的作品和发明在一定期限内的专有权利， 以促进科学和实用 艺术之进步。” 美国的第一部专利法早在 １７９０ 年就颁布实施， 之 后历经多次修订， 对美 国的经 济发 展和 科技进 步产 生重 大影 响。 迄今， 美国已经基本建立起一套完整的知识产权法律体系， 内容 主要包括专利法、 商标法、 版权法等等。 建国二百多年以来， 美 国经济科技等多方面走在世界前列， 其重要原因也在于其经济制 度适应生产力发展， 其中知识产权制度的完善也是一大因素。 例 如， 透过专利制度促进发明创造和技术进步， 促进了企业在市场 竞争中利用技术创新和 知识 产权 获取最 大经 济效益 和市 场份 额。 除了以促进科学技术的发展为己任之外， 美国的知识产权制度长 期试图协调多种复杂 的利 益， 例如 由于 美国法 律体 系的 特殊 性， 即联邦和州法共同作用， 知识产权法一直致力于保持联邦法和州 法之间的平衡。 又如在商标法的领域， 法律在保护商标权利以创 造公平竞争环境的同时， 必须时刻意识到商标权的根本性目的在 于帮助消费者辨认商品来源， 因此对经营者商标权利的保护不能 ２ 美国知识产权法 过于宽泛而变得不必要。 中国本身的知识产权体系目前尚处于逐渐完善的阶段。 在入 世的大背景下， 如何运用知识产权制度来促进社会科学技术的进 步， 在与国际体系接轨的同时又最大程度地保护本国知识产权是 一项刻不容缓的任务。 美国知识产权制度发展到今天， 已经相对 比较成熟和完善。 研究美国知识产权法律体系、 管理机制、 政策 考虑和实施战略的主要经验， 将对我国知识产权法律体系的建立 和管理体制的改革有极大的启示和借鉴作用。 本书选录了美国版权法、 专利法、 商标法三个领域中的一些 经典案例， 旨在通过研究原汁原味的案例， 介绍美国知识产权法 框架体系中的一些基本原则。 由于篇幅所限， 本书难以对三大部 门法中的相关经典案例作一个非常全面的介绍， 因此， 本书的重 点主要是在版权法上。 读者在阅读案例时， 可以跟随美国法官的 思路， 理解其如何在综合考虑多方因素的基础上， 尽量维护多种 利益的平衡， 并得出最终的判决。 案例后面附有思考题， 以帮助 读者更快的理解每个案件的焦点问题。 同时， 本书最后还附上了 美国版权法部分节选， 方便读者参照和查找制定法的有关规则。 因编者本人的专业和英语能力所限， 书中错误和疏漏在所难 免， 请读者拨冗指正。 编者： 陈剑玲 ２００７ 年 ６ 月于对外经济贸易大学 目 第一编 第一章 版权保护的条件 第一节 录 美国版权 法 …………………………………… （１） 表述和思想观念 ………………………………… （１） 案例 １ Baker v．Selden ………………………………… （３） 案例 ２ Nichols v．Universal Pictures Corporation …………………………………… （１１） 案例 ３ 第二节 Morrissey v．Procter ＆ Gamble ……………… （１８） 作品的原创性 …………………………………… （２１） 案例 ４ Feist v．Rural ………………………………… （２２） 案例 ５ Gracen v．Bradford Exchange ………………… （３１） 案例 ６ Batlin ＆ Son， Inc．v．Jeffrey Snyder ………………………………………………… （３６） 第三节 案例 ７ 作品的固定 ……………………………………… （４３） White Smith Music Pub Co．v． Appollo Co． ………………………………… （４５） 案例 ８ 第四节 案例 ９ National Football League v． McBee ＆ Bruno摧 s， Inc． ……………………… （５１） 版权标记 ………………………………………… （５６） Hasbro Bradley， Inc．v．Sparkle Toys， Inc． …………………………………… （５８） 第五节 版权保护的消极条件 …………………………… （６８） ２ 美国知识产权法 案例 １０ Mitchell Bros．v．Cinema Adult Theater 案例 １１ 第二章 第一节 ……………………………………… （６９） Schnapper v．Foley ………………………… （７９） 作品的类型 ………………………………………… （８８） 一般形式 ………………………………………… （８８） 案例 １２ Warner Bros．Inc．v．American Broadcasting Companies， Inc． ……………… （９０） 案例 １３ A．A．Hoehling v．Universal City Studios， Inc． ………………………………… （９８） 案例 １４ Andrew Leicester v．Warner Brothers 第二节 特殊形式 案例 １５ …………………………………… （ １０４） ……………………………………… （ １１４） G．Ricordi ＆ Co．v．Paramount Pictures， Inc． ……………………………… （ １１６） 案例 １６ Community for Creative Non唱 Violence v．James Earl Reid． ……… （ １２０） 案例 １７ Alice Childress v．Clarice Taylor ……………………………………………… （ １２９） 案例 １８ 第三章 New York Times Co．v．Tasini …………… （ １３７） 版权的期限 案例 １９ ……………………………………… （ １４４） Eric Eldred v．John D．Ashcroft ……………………………………………… （ １４５） 第四章 第一节 版权的内容 ……………………………………… （ １６２） 作者的权利 案例 ２０ …………………………………… （ １６２） Mirage Editions， Inc．v． Albuquerque A畅R畅T畅Co畅 ………………… （ １６３） 案例 ２１ Lee v．A畅R畅T畅Company ………………… （ １６９） 案例 ２２ Columbia Pictures Industries v． 目 ３ 录 Redd Horne ………………………………… （ １７４） 案例 ２３ Quality King Distributors， Inc．v．L摧 Anzaresearch Int摧 l， Inc． ……………………………………………… （ １８４） 第二节 合理使用 ……………………………………… （ １８８） 案例 ２４ Folsom v．Marsh …………………………… （ １９１） 案例 ２５ Harper ＆ Row Publishers v．Nation Enterprises 案例 ２６ ………………………………… （ １９６） Campbell v．Acuff唱 Rose Music Inc． ……………………………………………… （ ２０７） 第五章 第一节 版权的侵权和救济 ……………………………… （ ２２５） 侵权 …………………………………………… （ ２２５） 案例 ２７ Arnstein v．Porter 案例 ２８ Shapiro v．H畅L ．Green Co． ……………… （ ２３０） 案例 ２９ Sony Co．v．Universal City Studios， ………………………… （ ２２７） Inc． ………………………………………… （ ２３５） 案例 ３０ Metro唱 Goldwyn唱 Mayer Studios Inc．v．Grokster ， Ltd． …………………… （ ２５７） 第二节 救济 …………………………………………… （ ２６４） 案例 ３１ Feltner v．Columbia Pictures Television， Inc． …………………………… （ ２６５） 案例 ３２ Fogerty v．Fantasy， Inc． ………………… （ ２６８） 案例 ３３ Boisson v．Banian Ltd． …………………… （ ２７３） 第六章 版权法和其他知识产权法的关联 ……………… （ ２８３） 案例 ３４ Mazer v．Stein ……………………………… （ ２８４） 案例 ３５ Dastar Corp．v．Twentieth Century Foxfilm Corp． …………………… （ ２９１） ４ 美国知识产权法 第二编 第一章 专利保护的对象 案例 ３６ 第二章 美国专利 法 ………………………………… （ ２９７） Diamond v．Chakrabarty …………………… （ ２９８） 获得专利权的条件 ……………………………… （ ３０８） 案例 ３７ Graham v．John Deere Co．of Kansas City ……………………………………………… （ ３０９） 案例 ３８ 第三章 专利权的内容 案例 ３９ 第四章 Brenner v．Manson ………………………… （ ３２２） 侵权 案例 ４０ …………………………………… （ ３３４） Wilbur 唱 Ellis Co．v．Kuther ………………… （ ３３４） ……………………………………………… （ ３３８） Warner唱 Jenkinson Co．， Inc．v．Hilton Davis Chemical Co． ……………………………… （ ３４０） 第三编 第一章 保护的条件 案例 ４１ 美国商标 法 ……………………………………… （ ３６１） Blue Bell， Inc．v．Farah Mfg．Co．， Inc． ……………………………………………… （ ３６４） 案例 ４２ Merely Descriptive or Deceptively Misdescriptive Application of Sun Oil Co． ……………… （ ３７４） 案例 ４３ Deceptive Matter Re： Budge Manufacturing Co． ……………………………………………… （ ３７９） 案例 ４４ Confusing Sity to Prior Armks Milari Re： N．A．D．Inc． …………………………… （ ３８５） 第二章 商标种类 案例 ４５ ………………………………………… （ ３９１） Re： Advertising ＆ Marketing Developing， Inc． ……………………………………………… （ ３９２） 目 案例 ４６ 录 ５ Midwest Plastic Fabricators， Inc．v． Underwriters Laboratories Inc． …………… （ ３９９） 附录 1 美国版权法主要立法颁布时间表 ………………… （ ４０８） 附录 2 1976 年美国版权法节选 ………………………… （ ４０９） 第一编 第 一章 第一节 美国版权法 版 权 保 护的 条 件 表 述和 思想 观念 思想 ／ 表述二 分法 （ idea ／ expression dichotomy） 是美 国 版权 法中一个著名的原则。 该原则基本的含义是指： 思想观念本身不 能得到版权保护， 必须通过一定的表达形式表达出来， 才能够得 到版权法的保护。 美国 １９７６ 年 枟 版 权法 枠 第 １０２ 条 明确地 规定 了这一原则。 至目前为止， 这一理论已经获得了世界范围内的承 认， 并成为美国版权法上最为重要的原则。 版权意义上的思想观念的含义要比通常说的思想观念宽泛得 多， 主要是指概念、 术 语、 原 则、 客 观 事实、 创意、 发现 等 等。 表述就是对上述思想观念的各种形式或方式的表达。 思想 ／ 表述二分法意味着作 者不 能将作 品中 所 体现 的思 想观 念据为己有； 对于同样的思想观念， 他人可以自由利用或者自由 进行原创性的再表述； 由此形成的表述或作品， 同样可以得到版 权法的保护。 思想 ／ 表述二分法这一原 则通过 案例 法 得到 不断 发展。 最早 确立这 一 原则 的是 Baker v畅Selden 案。 最 高法 院 在该 案中 的判 ２ 美国知识产权法 决对美国版 权 法的 发 展产 生 了 深 刻的 影 响。 在该 案 中， 法院 裁 定： 原告可以禁止别人复印出版他的书， 但不能禁止被告使用原 告书中所描述的会计方法。 作品 的 “ 表 达” 是 丰富 多 样的。 对于 小 说、 诗 歌、 散文 等 文学作品， 可以文 字 或 等 同 于 文 字 的 各 种 符 号 （ 如 数 字 符 号） 作为其思想或情感的表达； 绘画、 书法等美术作品则以线条、 色 彩等作为其表达。 如果在一部作品中其思想与表达清晰可辨， 则 对其表达的 保 护 相 对 简 便 易 行。 但 是， 正 如 法 院 在 Nichols v畅 Universal Pictures Corporation 一案 中所 揭 示的 那样， “ 任 何 一部 确定的作品都可以是许多 思想和 表达 的混 合” 。 在 实践中， 区分 思想 和 表 达 并 非 一 件 易 事。 例 如， 对 作 品 中 牵 涉 到 的 创 造 的 “ 素材” 是更接近于思想还是更接近 于表达， 有 时并 不能很 简单 地判定。 以文学作品的故事情节而论， 基本的故事情节应当是创 作的基本素材， 属于思想与事实的范畴。 普通的人物角色更趋向 于被认定是 “ 思想”； 但一个卡通角色可能 更容 易被 认定为 “ 表 达” 。 由此体现的是 “ 情景” 理 论： 相同主 题里通用 的情节、 人 物、 场景不受 到版 权 保 护， 任 何人 在 同 一 主体 的 作 品 中 都可 以 使用。 作为思想 ／ 表述二分法原 则的例 外， 当 某种 思 想观 念只 有一 种或者几种有限表述的时候， 以至于无法从表达中区分思想， 则 版权法不保护思想观念也不保护表述， 因为对表述的保护会损害 到他人对思想的自由获取。 在极端的情况下， 如果思想和表达混 合在一起， 授予版权相 当于 对于 抽象的 思想 授予 了版 权。 因 此， 为保护公共利益， 不能因授予某一人版权而剥夺了公众在该领域 的权利。 Morrissey 一案即体现了这一原则。 二 分法 原则实 质 上 属 于 确 保 版 权 利 益 平 衡 的 基 石 性 范 畴。 版 权法 确立思 想与 表达二 分法 原 则的 目 标， 是在 通 过 提供 向 作 者 提供 合理 的 利 益 ， 以 实 现 促 进 创 作 和 保 障 公 众 利 益 之 间 的 第一编 美 国 版 权法 ３ 平 衡。 案例 1 Baker v．Selden １０１ U畅 S畅９９ １８７９ MR畅JUSTICE BRADLEY delivered the opinion of the court畅 Charles Selden， the testator of the complainant in this case， in the year １８５９ took the requisite steps for obtaining the copyright of a book， entitled “ Selden摧 s Condensed Ledger， or Book唱 keeping Simplified” ， the object of which was to exhibit and explain a peculiar system of book唱 keeping畅 In １８６０ and １８６１， he took the copyright of several other books， containing additions to and improvements upon the said system畅The bill of complaint was filed against the defendant， Baker， for an alleged infringement of these copyrights畅The latter， in his answer， denied that Selden was the author or designer of the books， and denied the infringement charged， and contends on the argument that the matter alleged to be infringed is not a lawful subject of copyright畅 A decree was rendered for the complainant， and the defendant appealed畅 The book or series of books of which the complainant claims the copyright consists of an introductory essay explaining the system of book唱 keeping referred to， to which are annexed certain forms or banks， consisting of ruled lines and headings， illustrating the system ４ 美国知识产权法 and showing how it is to be used and carried out in practice畅This system effects the same results as book唱 keeping by double entry； but， by a peculiar arrangement of columns and headings， presents the entire operation， of a day， a week， or a month， on a single page， or on two pages facing each other， in an account唱 book畅The defendant uses a similar plan so far as results are concerned； but makes a different arrangement of the columns， and uses different headings畅If the complainant摧 s testator had the exclusive right to the use of the system explained in his book， it would be difficult to contend that the defendant does not infringe it， notwithstanding the difference in his form of arrangement； but if it be assumed that the system is open to public use， it seems to be equally difficult to contend that the books made and sold by the defendant are a violation of the copyright of the complainant摧 s book considered merely as a book explanatory of the system畅Where the truths of a science or the methods of an art are the common property of the whole world， any author has the right to express the one， or explain and use the other， in his own way畅As an author， Selden explained the system in a particular way畅It may be conceded that Baker makes and uses account唱 books arranged on substantially the same system； but the proof fails to show that he has violated the copyright of Selden摧 s book， regarding the latter merely as an explanatory work； or that he has infringed Selden摧 s right in any way， unless the latter became entitled to an exclusive right in the system畅 The evidence of the complainant is principally directed to the object of showing that Baker uses the same system as that which is explained and illustrated in Selden摧 s books畅It becomes important， therefore， to determine whether， in obtaining the copyright of his 第一编 ５ 美 国 版 权法 books， he secured the exclusive right to the use of the system or method of book唱 keeping which the said books are intended to illustrate and explain畅 It is contended that he has secured such exclusive right， because no one can use the system without using substantially the same ruled lines and headings which he was appended to his books in illustration of it畅 In other words， it is contended that the ruled lines and headings， given to illustrate the system， are a part of the book， and， as such， are secured by the copyright； and that no one can make or use similar ruled lines and headings， or ruled lines and headings made and arranged on substantially the same system， without violating the copyright畅And this is really the question to be decided in this case畅Stated in another form， the question is， whether the exclusive property in a system of book唱 keeping can be claimed， under the law or copyright， by means of a book in which that system is explained？ The complainant摧 s bill， and the case made under it， are based on the hypothesis that it can be畅 It cannot be pretended， and indeed it is not seriously urged， that the ruled lines of the complainant摧 s account唱 book can be claimed under any special class of objects， other than books， named in the law of copyright existing in １８５９畅The law then in force was that of １８３１， and specified only books， maps， charts， musical compositions， prints， and engravings畅An account唱 book， consisting of ruled lines and blank columns， cannot be called by any of these names unless by that of a book畅 There is no doubt that a work on the subject of book唱 keeping， though only explanatory of well唱 known systems， may be the subject of a copyright； but， then， it is claimed only as a book畅Such a book ６ 美国知识产权法 may be explanatory either of old systems， or of an entirely new system； and， considered as a book， as the work of an author， conveying information on the subject of book唱 keeping， and containing detailed explanations of the art， it may be a very valuable acquisition to the practical knowledge of the community畅But there is a clear distinction between the book， as such， and the art which it is intended to illustrate畅The mere statement of the proposition is so evident， that it requires hardly any argument to support it畅The same distinction may be predicated of every other art as well as that of book唱 keeping畅A treatise on the composition and use of medicines， be they old or new； on the construction and use of ploughs， or watches， or churns； or on the mixture and application of colors for painting or dyeing； or on the mode of drawing lines to produce the effect of perspective， would be the subject of copyright； but no one would contend that the copyright of the treatise would give the exclusive right to the art or manufacture described therein畅 The copyright of the book， if not pirated from other works， would be valid without regard to the novelty， or want of novelty， of its subject唱 matter畅The novelty of the art or thing described or explained has nothing to do with the validity of the copyright畅To give to the author of the book an exclusive property in the art described therein， when no examination of its novelty has ever been officially made， would be a surprise and a fraud upon the public畅That is the province of letters唱 patent， not of copyright畅 The claim to an invention or discovery of an art or manufacture must be subjected to the examination of the Patent Office before an exclusive right therein can be obtained； and it can only be secured by a patent from the government畅 第一编 美 国 版 权法 ７ The difference between the two things， letters唱 patent and copyright， may be illustrated by reference to the subjects just enumerated畅Take the case of medicines畅Certain mixtures are found to be of great value in the healing art畅If the discoverer writes and publishes a book on the subject （ as regular physicians generally do） ， he gains no exclusive right to the manufacture and sale of the medicine； he gives that to the public畅If he desires to acquire such exclusive right， he must obtain a patent for the mixture as a new art， manufacture， or composition of matter畅He may copyright his book， if he pleases； but that only secures to him the exclusive right of printing and publishing his book畅 So of all other inventions or discoveries畅 The copyright of a work on mathematical science cannot give to the author an exclusive right to the methods of operation which he propounds， or to the diagrams which he employs to explain them， so as to prevent an engineer from using them whenever occasion requires畅The very object of publishing a book on science or the useful arts is to communicate to the world the useful knowledge which it contains畅 But this object would be frustrated if the knowledge could not be used without incurring the guilt of piracy of the book畅 And where the art it teaches cannot be used without employing the methods and diagrams used to illustrate the book， or such as are similar to them， such methods and diagrams are to be considered as necessary incidents to the art， and given therewith to the public； not given for the purpose of publication in other works explanatory of the art， but for the purpose of practical application畅 Of course， these observations are not intended to apply to ornamental designs， or pictorial illustrations addressed to the taste畅 ８ 美国知识产权法 Of these it may be said， that their form is their essence， and their object， the production of pleasure in their contemplation畅 This is their final end畅They are as much the product of genius and the result of composition， as are the lines of the poet or the historian摧 s period畅 On the other hand， the teachings of science and the rules and methods of useful art have their final end in application and use； and this application and use are what the public derive from the publication of a book which teaches them畅 But as embodied and taught in a literary composition or book， their essence consists only in their statement畅This alone is what is secured by the copyright畅 The use by another of the same methods of statement， whether in words or illustrations， in a book published for teaching the art， would undoubtedly be an infringement of the copyright畅 Recurring to the case before us， we observe that Charles Selden， by his books， explained and described a peculiar system of book唱 keeping， and illustrated his method by means of ruled lines and blank columns， with proper headings on a page， or on successive pages畅Now， whilst no one has a right to print or publish his book， or any material part thereof ， as a book intended to convey instruction in the art， any person may practise and use the art itself which he has described and illustrated therein畅 The use of the art is a totally different thing from a publication of the book explaining it畅 The copyright of a book on book唱 keeping cannot secure the exclusive right to make， sell， and use account唱 books prepared upon the plan set forth in such book畅Whether the art might or might not have been patented， is a question which is not before us畅It was not patented， and is open and free to the use of the public畅And， of course， in using the art， the ruled lines and headings of accounts must 第一编 美 国 版 权法 ９ necessarily be used as incident to it畅 The plausibility of the claim put forward by the complainant in this case arises from a confusion of ideas produced by the peculiar nature of the art described in the books which have been made the subject of copyright畅 In describing the art， the illustrations and diagrams employed happen to correspond more closely than usual with the actual work performed by the operator who uses the art畅 Those illustrations and diagrams consist of ruled lines and headings of accounts； and it is similar ruled lines and headings of accounts which， in the application of the art， the book唱 keeper makes with his pen， or the stationer with his press； whilst in most other cases the diagrams and illustrations can only be represented in concrete forms of wood， metal， stone， or some other physical embodiment畅But the principle is the same in all畅The description of the art in a book， though entitled to the benefit of copyright， lays no foundation for an exclusive claim to the art itself畅The object of the one is explanation； the object of the other is use畅 The former may be secured by copyright畅The latter can only be secured， if it can be secured at all， by letters唱 patent畅 The remarks of Mr畅Justice Thompson in the Circuit Court in Clayton v畅Stone ＆ Hall （ ２ Paine， ３９２ ） ， in which copyright was claimed in a daily price唱 current， are apposite and instructive畅 He says： “ In determining the true construction to be given to the act of Congress， it is proper to look at the Constitution of the United States， to aid us in ascertaining the nature of the property intended to be protected畅Congress shall have power to promote the progress of science and useful arts， by securing for limited times to authors and inventors the exclusive right to their writings and discoveries畅” The １０ 美国知识产权法 act in question was passed in execution of the power here given， and the object， therefore， was the promotion of science； and it would certainly be a pretty extraordinary view of the sciences to consider a daily or weekly publication of the state of the market as falling within any class of them畅They are of a more fixed， permanent， and durable character畅The term “ science” cannot， with any propriety， by applied to a work of so fluctuating and fugitive a form as that of a newspaper or price唱 current， the subject唱 matter of which is daily changing， and is of mere temporary use畅Although great praise may be due to the plaintiffs for their industry and enterprise in publishing this paper， yet the law does not contemplate their being rewarded in this way： it must seek patronage and protection from its utility to the public， and not a work of science畅The title of the act of Congress is， “ for the encouragement of learning ” ， and was not intended for the encouragement of mere industry， unconnected with learning and the sciences畅畅畅畅We are， accordingly， of opinion that the paper in question is not a book the copyright to which can be secured under the act of Congress畅 The conclusion to which we have come is， that blank account唱 books are not the subject of copyright； and that the mere copyright of Selden摧 s book did not confer upon him the exclusive right to make and use account唱 books， ruled and arranged as designated by him and described and illustrated in said book畅 The decree of the Circuit Court must be reversed， and the cause remanded with instructions to dismiss the complainant摧 s bill； and it is： So ordered畅 第一编 美 国 版 权法 １１ １畅本案的关键争议是什么？ ２畅Selden 对其书的 版 权具 体 保 护的 对 象是 什 么？ 如 果 将该 版权保护延展到书中所记载的技术方法会产生什么后果？ ３畅本案法官如何看待版权和专利的关系？ 案例 2 Nichols v．Universal Pictures Corporation ４５ F畅 ２d １１９ The plaintiff is the author of a play， “ Abie摧 s Irish Rose ” ， which it may be assumed was properly copyrighted under section five， subdivision （ d） ， of the Copyright Act， １７ USCA ？ ５ （ d） ． The defendant produced publicly a motion picture play， “ The Cohens and The Kellys” ， which the plaintiff alleges was taken from it畅As we think the defendant摧 s play too unlike the plaintiff摧 s to be an infringement， we may assume， arguendo， that in some details the defendant used the plaintiff摧 s play， as will subsequently appear， though we do not so decide畅It therefore becomes necessary to give an outline of the two plays畅畅 畅 （ the court compared the two outlines） １２ 美国知识产权法 It is of course essential to any protection of literary property， whether at common唱 law or under the statute， that the right cannot be limited literally to the text， else a plagiarist would escape by immaterial variations畅T hat has never been the law， but， as soon as literal appropriation ceases to be the test， the whole matter is necessarily at large， so that， as was recently well said by a distinguished judge， the decisions cannot help much in a new case畅 Then the question is whether the part so taken is “ substantial，” and therefore not a “ fair use ” of the copyrighted work； it is the same question as arises in the case of any other copyrighted work畅But when the plagiarist does not take out a block in situ， but an abstract of the whole， decision is more troublesome畅Upon any work， and especially upon a play， a great number of patterns of increasing generality will fit equally well， as more and more of the incident is left out畅The last may perhaps be no more than the most general statement of what the play is about， and at times might consist only of its title； but there is a point in this series of abstractions where they are no longer protected， since otherwise the playwright could prevent the use of his “ ideas，” to which， apart from their expression， his property is never extended畅Nobody has ever been able to fix that boundary， and nobody ever can畅In some cases the question has been treated as though it were analogous to lifting a portion out of the copyrighted work； but the analogy is not a good one， because， though the skeleton is a part of the body， it pervades and supports the whole畅In such cases we are rather concerned with the line between expression and what is expressed畅 As respects plays， the controversy chiefly centers upon the characters and sequence of incident， these being the substance畅 第一编 美 国 版 权法 １３ We did not in Dymow v畅Bolton， １１ F畅 （２d） ６９０， hold that a plagiarist was never liable for stealing a plot； that would have been flatly against our rulings in Dam v畅Kirk La Shelle Co畅， １７５ F畅 ９０２， ４１ L畅R畅A畅（ N畅S畅） １００２， ２０ Ann畅Cas畅１１７３， and Stodart v畅 Mutual Film Co畅， ２４９ F畅 ５１３ ， affirming my decision in （ D畅C畅） ２４９ F畅５０７； neither of which we meant to overrule畅We found the plot of the second play was too different to infringe， because the most detailed pattern， common to both， eliminated so much from each that its content went into the public domain； and for this reason we said， “ this mere subsection of a plot was not susceptible of copyright畅” But we do not doubt that two plays may correspond in plot closely enough for infringement畅How far that correspondence must go is another matter畅Nor need we hold that the same may not be true as to the characters， quite independently of the “ plot” proper， though， as far as we know， such a case has never arisen畅If Twelfth Night were copyrighted， it is quite possible that a second comer might so closely imitate Sir Toby Belch or Malvolio as to infringe， but it would not be enough that for one of his characters he cast a riotous knight who kept wassail to the discomfort of the household， or a vain and foppish steward who became amorous of his mistress畅These would be no more than Shakespeare摧 s “ ideas” in the play， as little capable of monopoly as Einstein摧 s Doctrine of Relativity， or Darwin摧 s theory of the Origin of Species畅It follows that HN４ the less developed the characters， the less they can be copyrighted； that is the penalty an author must bear for marking them too indistinctly畅 In the two plays at bar we think both as to incident and character， the defendant took no more — assuming that it took １４ 美国知识产权法 anything at all — than the law allowed畅 The stories are quite different畅One is of a religious zealot who insists upon his child摧 s marrying no one outside his faith； opposed by another who is in this respect just like him， and is his foil畅 Their difference in race is merely an obbligato to the main theme， religion畅 They sink their differences through grandparental pride and affection畅In the other， zealotry is wholly absent； religion does not even appear畅It is true that the parents are hostile to each other in part because they differ in race； but the marriage of their son to a Jew does not apparently offend the Irish family at all， and it exacerbates the existing animosity of the Jew， principally because he has become rich， when he learns it畅They are reconciled through the honesty of the Jew and the generosity of the Irishman； the grandchild has nothing whatever to do with it畅 The only matter common to the two is a quarrel between a Jewish and an Irish father， the marriage of their children， the birth of grandchildren and a reconciliation畅 If the defendant took so much from the plaintiff， it may well have been because her amazing success seemed to prove that this was a subject of enduring popularity畅 Even so， granting that the plaintiff摧 s play was wholly original， and assuming that novelty is not essential to a copyright， there is no monopoly in such a background畅 Though the plaintiff discovered the vein， she could not keep it to herself； so defined， the theme was too generalized an abstraction from what she wrote畅It was only a part of her “ ideas” ． Nor does she fare better as to her characters畅 It is indeed scarcely credible that she should not have been aware of those stock figures， the low comedy Jew and Irishman畅The defendant has not taken from her more than their prototypes have contained for many 第一编 美 国 版 权法 １５ decades畅If so， obviously so to generalize her copyright， would allow her to cover what was not original with her畅But we need not hold this as matter of fact， much as we might be justified畅 Even though we take it that she devised her figures out of her brain de novo， still the defendant was within its rights畅 There are but four characters common to both plays， the lovers and the fathers畅The lovers are so faintly indicated as to be no more than stage properties畅They are loving and fertile； that is really all that can be said of them， and anyone else is quite within his rights if he puts loving and fertile lovers in a play of his own， wherever he gets the cue畅The plaintiff摧 s Jew is quite unlike the defendant摧 s畅His obsession is his religion， on which depends such racial animosity as he has畅He is affectionate， warm and patriarchal畅None of these fit the defendant摧 s Jew， who shows affection for his daughter only once， and who has none but the most superficial interest in his grandchild畅 He is tricky， ostentatious and vulgar ， only by misfortune redeemed into honesty畅Both are grotesque， extravagant and quarrelsome； both are fond of display； but these common qualities make up only a small part of their simple pictures， no more than any one might lift if he chose畅The Irish fathers are even more unlike； the plaintiff摧 s a mere symbol for religious fanaticism and patriarchal pride， scarcely a character at all畅Neither quality appears in the defendant摧 s， for while he goes to get his grandchild， it is rather out of a truculent determination not to be forbidden， than from pride in his progeny畅 For the rest he is only a grotesque hobbledehoy， used for low comedy of the most conventional sort， which any one might borrow， if he chanced not to know the exemplar畅 １６ 美国知识产权法 The defendant argues that the case is controlled by my decision in Fisher v畅Dillingham （ D畅C畅） ２９８ F畅１４５畅Neither my brothers nor I wish to throw doubt upon the doctrine of that case， but it is not applicable here畅We assume that the plaintiff摧 s play is altogether original， even to an extent that in fact it is hard to believe畅We assume further that， so far as it has been anticipated by earlier plays of which she knew nothing， that fact is immaterial畅Still， as we have already said， her copyright did not cover everything that might be drawn from her play； its content went to some extent into the public domain畅We have to decide how much， and while we are as aware as any one that the line， whereever it is drawn， will seem arbitrary， that is no excuse for not drawing it； it is a question such as courts must answer in nearly all cases畅Whatever may be the difficulties a priority， we have no question on which side of the line this case falls畅A comedy based upon conflicts between Irish and Jews， into which the marriage of their children enters， is no more susceptible of copyright than the outline of Romeo and Juliet畅 The plaintiff has prepared an elaborate analysis of the two plays， showing a “ quadrangle” of the common characters， in which each is represented by the emotions which he discovers畅S he presents the resulting parallelism as proof of infringement， but the adjectives employed are so general as to be quite useless畅Take for example the attribute of “ love” ascribed to both Jews畅The plaintiff has depicted her father as deeply attached to his son， who is his hope and joy； not so， the defendant， whose father摧 s conduct is throughout not actuated by any affection for his daughter ， and who is merely once overcome for the moment by her distress when he has violently dismissed her lover畅 “ Anger ” covers emotions aroused by quite 第一编 美 国 版 权法 １７ different occasions in each case； so do “ anxiety，” “ despondency” and “ disgust畅” It is unnecessary to go through the catalogue for emotions are too much colored by their causes to be a test when used so broadly畅This is not the proper approach to a solution； it must be more ingenuous， more like that of a spectator， who would rely upon the complex of his impressions of each character畅 We cannot approve the length of the record， which was due chiefly to the use of expert witnesses畅Argument is argument whether in the box or at the bar， and its proper place is the last畅 The testimony of an expert upon such issues， especially his cross唱 examination， greatly extends the trial and contributes nothing which cannot be better heard after the evidence is all submitted畅It ought not to be allowed at all； and while its admission is not a ground for reversal， it cumbers the case and tends to confusion， for the more the court is led into the intricacies of dramatic craftsmanship， the less likely it is to stand upon the firmer ， if more naive， ground of its considered impressions upon its own perusal畅We hope that in this class of cases such evidence may in the future be entirely excluded， and the case confined to the actual issues； that is， whether the copyrighted work was original， and whether the defendant copied it， so far as the supposed infringement is identical畅 Decree affirmed畅 １畅角色是否获得版权保护？ 前提是什么？ ２畅小说的情节属于思想还是表达？ 为什么？ １８ 美国知识产权法 ３畅如何结合这个案例理解 “ 思想和表达” 二分法？ 案例 3 Morrissey v． Procter ＆ Gamble ３７９ F畅２d ６７５ １９６７ ALDRICH， Chief Judge． This is an appeal from a summary judgment for the defendant畅 The plaintiff， Morrissey， is the copyright owner of a set of rules for a sales promotional contest of the “ sweepstakes” type involving the social security numbers of the participants畅Plaintiff alleges that the defendant， Procter ＆ Gamble Company， infringed， by copying， almost precisely， Rule １畅 In its motion for summary judgment， based upon affidavits and depositions， defendant denies that plaintiff摧 s Rule １ is copyrightable material， and denies access畅The district court held for the defendant on both grounds畅 畅畅畅 The second aspect of the case raises a more difficult question畅 Before discussing it we recite plaintiff摧 s Rule １， and defendant摧 s Rule １， the italicizing in the latter being ours to note the defendant摧 s variations or changes畅 Entrants should print name， address and social security number on a boxtop， or a plain paper畅 Entries must be accompanied by boxtop or by plain paper on which the name is copied from any 第一编 美 国 版 权法 １９ source畅Official rules are explained on packages or leaflets obtained from dealer畅If you do not have a social security number you may use the name and number of any member of your immediate family living with you畅Only the person named on the entry will be deemed an entrant and may qualify for prize畅 Use the correct social security number belonging to the person named on entry． Wrong number will be disqualified畅 （ Plaintiff摧 s Rule） Entrants should print name， address and Social Security number on a Tide boxtop， or on （ a ） plain paper畅 Entries must be accompanied by Tide boxtop （ any size） or by plain paper on which the name “ Tide ” is copied from any source畅 Official rules are available on Tide Sweepstakes packages， or on leaflets at Tide dealers， or you can send a stamped， self唱 addressed envelope to： Tide “Shopping Fling” Sweepstakes， P畅O畅Box ４４５９， Chicago ７７， Illinois畅 If you do not have a Social Security number， you may use the name and number of any member of your immediate family living with you畅Only the person named on the entry will be deemed an entrant and may qualify for a prize畅 Use the correct Social Security number， belonging to the person named on the entry唱 wrong numbers will be disqualified畅 （ Defendant摧 s Rule） The district court， following an earlier decision， Gaye v畅 Gillis， D畅Mass畅， １９５８， １６７ F畅Supp畅４１６， took the position that since the substance of the contest was not copyrightable， which is unquestionably correct， Baker v畅 Selden， and the substance was ２０ 美国知识产权法 relatively simple， it must follow that plaintiff摧 s rule sprung directly from the substance and “ contains no original creative authorship畅” ２６２ F畅Supp畅at ７３８畅This does not follow畅Copyright attaches to form of expression， and defendant摧 s own proof， introduced to deluge the court on the issue of access， itself established that there was more than one way of expressing even this simple substance畅Nor， in view of the almost precise similarity of the two rules， could defendant successfully invoke the principle of a stringent standard for showing infringement which some courts apply when the subject matter involved admits of little variation in form of expression畅 Nonetheless， we must hold for the defendant畅 When the uncopyrightable subject matter is very narrow， so that “ the topic necessarily requires，” if not only one form of expression， at best only a limited number， to permit copyrighting would mean that a party or parties， by copyrighting a mere handful of forms， could exhaust all possibilities of future use of the substance畅 In such circumstances it does not seem accurate to say that any particular form of expression comes from the subject matter畅However， it is necessary to say that the subject matter would be appropriated by permitting the copyrighting of its expression畅We cannot recognize copyright as a game of chess in which the public can be checkmated畅 Cf畅Baker v畅Selden， supra畅 Upon examination the matters embraced in Rule １ are so straightforward and simple that we find this limiting principle to be applicable畅Furthermore， its operation need not await an attempt to copyright all possible forms畅 It cannot be only the last form of expression which is to be condemned， as completing defendant摧 s exclusion from the substance畅Rather， in these circumstances， we 第一编 ２１ 美 国 版 权法 hold that copyright does not extend to the subject matter at all， and plaintiff cannot complain even if his particular expression was deliberately adopted畅 Affirmed畅 １畅如一个主题只 存在 有限 的 几 种表 达 方式， 授 予这 几 种表 达方式以版权的保护是否恰当？ 如果授予， 将会造成什么后果？ ２畅本案裁 决 是 否 违 反 了 版 权 法 是 对 表 达 的 保 护 这 一 基 本 原则？ 第 二节 作 品的 原创 性 １９７６ 年 美 国 版 权 法 第 １０２ 条 （ a ） 款 明 确 要 求 原 创 性 （ originality） 是作品获得版权保护 的一个必 要条件。 然 而， 美国 版权法通篇没有对原创性作出一个确切的定义。 对于原创性的界 定， 主要是通过 法实践 确立， 案例法经 了一个 ， 对于原创性 成的。 而 。 的发展过 在 Feist v畅Rural 一 案 中， 美 国 最高 法 院最 了比 。 法 确定的 在 该 案中 （ sweat of the brow） ， 该理论 实 身， 因此就 定了版权法最 保护。 通过该案判决， 法 上 性。 个诗人单 判了 “ 理论” 版 权保 护 展到 了事 实本 指出： 一 而 ， 原创性意味着作者 已有的材 一 无 二的， 也 并不 等 同于 创作了 对 原创 性 作出 本的原则， 即事实和思想不能获得 立创作了该作品， 而不是简单地复 性并不要求 作品 是 体含义的 诗歌， 如果非常相 。 但是， 原创 利法中的 ， 则没有一 ２２ 美国知识产权法 有 性。 但是只要不 ， 在 都可以被认为 有原创 性， 可以受到版权保护。 正是因为版权法对原创性的要求， 所以版权法对事实和事实 的编 不同。 没有人可以就事实主 不是作者创造的。 但是， 事实 的编 作者一 会对事实作出 方法。 于对事实的 含有最小 事实编 作品 就有可 能 ， 决定 和 的 和 有 原创 性。 和编 ， 只要作者是 的创造 性， 这种 原创性， 因为事实 就 事实的 体 立创作的， 并 够的 原创 性， 作品就可以得到版权保护。 原创性的在不同种 的作品上体现不同的 ， 即使只有很小的 的作品， 原创性的要求相对 也会被认定有原创 性。 但是， 如果是 原创性的要求就会相对 要求。 对于 高 （ 例如地 ， 一 能 性或者 事 实性 的作 品， ）。 案例 4 Feist v．Rural ４９９ U畅S畅３４０， １９９１ O摧 CONNOR J．， delivered the opinion of the Cou rt I Respondent Rural Telephone Service Company， Inc畅， is a certified public utility providing telephone service to several communities in Kansas畅Pursuant to state regulation， Rural publishes a typical telephone directory， consisting of white pages and yellow 第一编 美 国 版 权法 ２３ pages畅It obtains data for the directory from subscribers， who must provide their names and addresses to obtain telephone service畅 Petitioner Feist Publications， Inc畅， is a publishing company that specializes in area唱 wide telephone directories covering a much larger geographic range than directories such as Rural摧 s畅 When Rural refused to license its white pages listings to Feist for a directory covering １１ different telephone service areas， Feist extracted the listings it needed from Rural摧 s directory without Rural摧 s consent畅 Although Feist altered many of Rural摧 s listings， several were identical to listings in Rural摧 s white pages畅Rural sued for copyright infringement畅The District Court granted summary judgment to Rural in its copyright infringement suit， holding that telephone directories are copyrightable畅 The Court of Appeals affirmed畅 We granted certiorari， to determine whether the copyright in Rural摧 s directory protects the names， towns， and telephone numbers copied by Feist畅 II A This case concerns the interaction of two well唱 established propositions畅The first is that facts are not copyrightable； the other， that compilations of facts generally are畅Each of these propositions possesses an impeccable pedigree畅 That there can be no valid copyright in facts is universally understood畅The most fundamental axiom of copyright law is that “ no author may copyright his ideas or the facts he narrates畅” Rural wisely concedes this point， noting in its brief that “ facts and discoveries， of course， are not themselves subject to copyright protection畅” Brief for Respondent ２４畅At the same time， however， it is beyond dispute that compilations of facts ２４ 美国知识产权法 are within the subject matter of copyright畅 Compilations were expressly mentioned in the Copyright Act of １９０９， and again in the Copyright Act of １９７６畅 There is an undeniable tension between these two propositions畅 Many compilations consist of nothing but raw data唱 i畅e畅， wholly factual information not accompanied by any original written expression畅On what basis may one claim a copyright in such a work？ Common sense tells us that １００ uncopyrightable facts do not magically change their status when gathered together in one place畅 Yet copyright law seems to contemplate that compilations that consist exclusively of facts are potentially within its scope畅 The key to resolving the tension lies in understanding why facts are not copyrightable畅The sine qua non of copyright is originality畅 To qualify for copyright protection， a work must be original to the author畅Original， as the term is used in copyright， means only that the work was independently created by the author （ as opposed to copied from other works ） ， and that it possesses at least some minimal degree of creativity畅 To be sure， the requisite level of creativity is extremely low； even a slight amount will suffice畅The vast majority of works make the grade quite easily， as they possess some creative spark， “ no matter how crude， humble or obvious” it might be畅 Originality does not signify novelty； a work may be original even though it closely resembles other works so long as the similarity is fortuitous， not the result of copying畅 To illustrate， assume that two poets， each ignorant of the other， compose identical poems畅Neither work is novel， yet both are original and， hence， copyrightable畅 It is this bedrock principle of copyright that mandates the law摧 s 第一编 美 国 版 权法 ２５ seemingly disparate treatment of facts and factual compilations畅“ No one may claim originality as to facts畅” This is because facts do not owe their origin to an act of authorship畅 The distinction is one between creation and discovery： The first person to find and report a particular fact has not created the fact； he or she has merely discovered its existence畅To borrow from Burrow唱 Giles， one who discovers a fact is not its “ maker” or “ originator畅” Census takers， for example， do not “ create ” the population figures that emerge from their efforts； in a sense， they copy these figures from the world around them畅 The same is true of all facts唱 scientific， historical， biographical， and news of the day畅 Factual compilations， on the other hand， may possess the requisite originality畅The compilation author typically chooses which facts to include， in what order to place them， and how to arrange the collected data so that they may be used effectively by readers畅These choices as to selection and arrangement， so long as they are made independently by the compiler and entail a minimal degree of creativity， are sufficiently original that Congress may protect such compilations through the copyright laws畅T hus， even a directory that contains absolutely no protectible written expression， only facts， meets the constitutional minimum for copyright protection if it features an original selection or arrangement畅 This protection is subject to an important limitation畅The mere fact that a work is copyrighted does not mean that every element of the work may be protected畅Originality remains the sine qua non of copyright； accordingly， copyright protection may extend only to those components of a work that are original to the author畅Thus， if the compilation author clothes facts with an original collocation of ２６ 美国知识产权法 words， he or she may be able to claim a copyright in this written expression畅 Others may copy the underlying facts from the publication， but not the precise words used to present them畅Where the compilation author adds no written expression but rather lets the facts speak for themselves， the expressive element is more elusive畅 The only conceivable expression is the manner in which the compiler has selected and arranged the facts畅 Thus， if the selection and arrangement are original， these elements of the work are eligible for copyright protection畅 This inevitably means that the copyright in a factual compilation is thin畅Notwithstanding a valid copyright， a subsequent compiler remains free to use the facts contained in another摧 s publication to aid in preparing a competing work， so long as the competing work does not feature the same selection and arrangement畅 It may seem unfair that much of the fruit of the compiler摧 s labor may be used by others without compensation畅However， this is not “ some unforeseen byproduct of a statutory scheme畅” It is， rather， “ the essence of copyright，” ， and a constitutional requirement畅The primary objective of copyright is not to reward the labor of authors， but “ to promote the Progress of Science and useful Arts畅” ．To this end， copyright assures authors the right to their original expression， but encourages others to build freely upon the ideas and information conveyed by a work畅This principle， known as the idea ／ expression or fact ／ expression dichotomy， applies to all works of authorship畅As applied to a factual compilation， assuming the absence of original written expression， only the compiler摧 s selection and arrangement may be protected； the raw facts may be copied at will畅This result is neither unfair nor unfortunate畅It is the means by which copyright 第一编 美 国 版 权法 ２７ advances the progress of science and art畅 This Court has long recognized that the fact ／ expression dichotomy limits severely the scope of protection in fact唱 based works畅More than a century ago， the Court observed： “ The very object of publishing a book on science or the useful arts is to communicate to the world the useful knowledge which it contains畅 But this object would be frustrated if the knowledge could not be used without incurring the guilt of piracy of the book畅” This， then， resolves the doctrinal tension： Copyright treats facts and factual compilations in a wholly consistent manner畅 Facts， whether alone or as part of a compilation， are not original and therefore may not be copyrighted畅A factual compilation is eligible for copyright if it features an original selection or arrangement of facts， but the copyright is limited to the particular selection or arrangement畅 In no event may copyright extend to the facts themselves畅 B Originality is a constitutionally mandated prerequisite for copyright protection畅 The Court摧 s decisions announcing this rule predate the Copyright Act of １９０９， but ambiguous language in the １９０９ Act caused some lower courts temporarily to lose sight of this requirement畅 Some courts developed a new theory to justify the protection of factual compilations畅Known alternatively as “ sweat of the brow” or “ industrious collection，” the underlying notion was that copyright was a reward for the hard work that went into compiling facts畅The “ sweat of the brow” doctrine had numerous flaws， the most glaring ２８ 美国知识产权法 being that it extended copyright protection in a compilation beyond selection and arrangement唱 the compiler摧 s original contributions唱 to the facts themselves畅Without a doubt， the “ sweat of the brow” doctrine flouted basic copyright principles C畅 The definition of “ compilation” is found in § １０１ of the １９７６ Act畅It defines a “ compilation” in the copyright sense as “ a work formed by the collection and assembling of preexisting materials or of data that are selected， coordinated， or arranged in such a way that the resulting work as a whole constitutes an original work of authorship”． The purpose of the statutory definition is to emphasize that collections of facts are not copyrightable per se畅 It conveys this message through its tripartite structure， as emphasized above by the italics畅The statute identifies three distinct elements and requires each to be met for a work to qualify as a copyrightable compilation： （１） the collection and assembly of pre唱 existing material， facts， or data； （２ ） the selection， coordination， or arrangement of those materials； and （ ３ ） the creation， by virtue of the particular selection， coordination， or arrangement， of an “ original” work of authorship畅 The first requirement indicates that not every collection of facts receives copyright protection畅The third requirement emphasizes that a compilation， like any other work， is copyrightable only if it satisfies the originality requirement畅 The key to the statutory definition is the second requirement畅 It instructs courts that， in determining whether a fact唱 based work is an original work of authorship， they should focus on the manner in which the collected facts have been selected， coordinated， and arranged畅 This is a straightforward application of the originality requirement畅Facts are 第一编 美 国 版 权法 ２９ never original， so the compilation author can claim originality， if at all， only in the way the facts are presented畅To that end， the statute dictates that the principal focus should be on whether the selection， coordination， and arrangement are sufficiently original to merit protection畅 Not every selection， coordination， or arrangement will pass muster畅This is plain from the statute畅 It states that， to merit protection， the facts must be selected， coordinated， or arranged “ in such a way” as to render the work as a whole original畅As discussed earlier， however， the originality requirement is not particularly stringent畅A compiler may settle upon a selection or arrangement that others have used； novelty is not required畅Even if a work qualifies as a copyrightable compilation， copyright protects only the author摧 s original contributions唱 not the facts or information conveyed畅 III To establish infringement， two elements must be proven： （ １） ownership of a valid copyright， and （ ２ ） copying of constituent elements of the work that are original畅The first element is not at issue here； Feist appears to concede that Rural摧 s directory， considered as a whole， is subject to a valid copyright because it contains some foreword text， as well as original material in its yellow pages advertisements畅 The question is whether Rural has proved the second element畅In other words， did Feist， by taking １， ３０９ names， towns， and telephone numbers from Rural摧 s white pages， copy anything that was “ original” to Rural？ Certainly， the raw data does not satisfy the originality requirement畅Rural may have been the first to discover and report the names， towns， and ３０ 美国知识产权法 telephone numbers of its subscribers， but this data does not “ owe its origin ” to Rural畅 Rather， these bits of information are uncopyrightable facts； they existed before Rural reported them and would have continued to exist if Rural had never published a telephone directory畅 The question that remains is whether Rural selected， coordinated， or arranged these uncopyrightable facts in an original way畅 In fact， Rural摧 s selection of listings could not be more obvious： It publishes the most basic information唱 name， town， and telephone number唱 about each person who applies to it for telephone service畅T his is “ selection” of a sort， but it lacks the modicum of creativity necessary to transform mere selection into copyrightable expression畅Rural expended sufficient effort to make the white pages directory useful， but insufficient creativity to make it original畅 Because Rural摧 s white pages lack the requisite originality， Feist摧 s use of the listings cannot constitute infringement畅 The judgment of the Court of Appeals is Reversed畅 １畅为何事实不能 得到 版权 保 护？ 为 何 事实 的 编 辑组 合 却可 以得到版权保护？ ２畅什么叫做版权 法 上 的原 创 性？ 它 和 新颖 性、 创造 性 有何 区别？ ３畅为何对事实性编辑作品的版权保护是比较微弱的？ ４畅编辑作品要获得版权保护需要满足什么条件？ 第一编 ３１ 美 国 版 权法 案例 5 Gracen v．Bradford Exchange ６９８ F畅２d ３００， １９８３ POSNER， Circuit Judge． This appeal brings up to us questions of some novelty， at least in this circuit， regarding the required originality for copyrighting a derivative work畅 In １９３９ MGM produced and copyrighted the movie “ The Wizard of Oz畅” The central character in the movie， Dorothy， was played by Judy Garland畅The copyright was renewed by MGM in １９６６ and is conceded， at least for purposes of this case， to be valid and in effect today畅In １９７６ MGM licensed Bradford Exchange to use characters and scenes from the movie in a series of collectors摧 plates畅Bradford invited several artists to submit paintings of Dorothy as played by Judy Garland， with the understanding that the artist who submitted the best painting would be offered a contract for the entire series畅Bradford supplied each artist with photographs from the movie and with instructions for the painting that included the following： “ We do want your interpretation of these images， but your interpretation must evoke all the warm feeling the people have for the film and its actors畅 So， your Judy ／ Dorothy must be very recognizable as everybody摧 s Judy ／ Dorothy畅” Jorie Gracen， an employee in Bradford摧 s order唱 processing department， was permitted to join the competition畅 From ３２ 美国知识产权法 photographs and her recollections of the movie （ which she had seen several times） she made a painting of Dorothy as played by Judy Garland畅 Bradford exhibited it along with the other contestants摧 paintings in a shopping center畅The passersby liked Miss Gracen摧 s the best， and Bradford pronounced her the winner of the competition and offered her a contract to do the series， as well as paying her ， as apparently it paid each of the other contestants， ＄２００畅But she did not like the contract terms and refused to sign， and Bradford turned to another artist， James Auckland， who had not been one of the original contestants畅 He signed a contract to do the series and Bradford gave him Miss Gracen摧 s painting to help him in doing his painting of Dorothy畅 Gracen摧 s counsel describes Auckland摧 s painting of Dorothy as a “ piratical copy” of her painting畅Bradford could easily have refuted this charge， if it is false， by attaching to its motion for summary judgment a photograph of its Dorothy plate， but it did not， and for purposes of this appeal we must assume that the plate is a copy of Miss Gracen摧 s painting畅 This is not an absurd supposition畅 Bradford， at least at first， was rapturous about Miss Gracen摧 s painting of Dorothy畅It called Miss Gracen “ a true prodigy畅” It said that hers “ was the one painting that conveyed the essence of Judy摧 s character in the film 畅 畅畅the painting that left everybody saying， ‘ That摧 s Judy in Oz畅摧” Auckland摧 s deposition states that Bradford gave him her painting with directions to “ clean it up，” which he understood to mean： do the same thing but make it “ a little more professional畅” Auckland completed the series， and the plates were manufactured and sold畅But Miss Gracen meanwhile had obtained 第一编 ３３ 美 国 版 权法 copyright registrations on her painting and drawings， and in １９７８ she brought this action for copyright infringement against MGM ， Bradford， Auckland， and the manufacturer of the plates畅MGM and Bradford counterclaimed， alleging among other things that Miss Gracen had infringed the copyright on the movie by showing her drawings and a photograph of her painting to people whom she was soliciting for artistic commissions畅 The district court granted summary judgment against Miss Gracen畅 It held that she could not copyright her painting and drawings because they were not original and that she had infringed MGM摧 s copyright畅 At issue in such a case is not the right to copy the underlying work but whether there is enough difference between the derivative and the underlying work to satisfy the statutory requirement of originality， and thus make the derivative work copyrightable畅 Miss Gracen reminds us that judges can make fools of themselves pronouncing on aesthetic matters畅But artistic originality is not the same thing as the legal concept of originality in the Copyright Act畅Artistic originality indeed might inhere in a detail， a nuance， a shading too small to be apprehended by a judge畅 A contemporary school of art known as “ Super Realism” attempts with some success to make paintings that are indistinguishable to the eye from color photographs畅 These paintings command high prices； buyers must find something original in them畅 Much Northern European painting of the Renaissance is meticulously representational， and therefore in a sense唱 but not an aesthetic sense唱 less “ original” than Cubism or Abstract Expressionism畅A portrait is not unoriginal for being a good likeness畅 ３４ 美国知识产权法 But especially as applied to derivative works， the concept of originality in copyright law has as one would expect a legal rather than aesthetic function唱 to prevent overlapping claims畅Suppose Artist A produces a reproduction of the Mona Lisa， a painting in the public domain， which differs slightly from the original畅B also makes a reproduction of the Mona Lisa畅 A， who has copyrighted his derivative work， sues B for infringement畅B摧 s defense is that he was copying the original， not A摧 s reproduction畅 But if the difference between the original and A摧 s reproduction is slight， the difference between A摧 s and B摧 s reproductions will also be slight， so that if B had access to A摧 s reproductions the trier of fact will be hard唱 pressed to decide whether B was copying A or copying the Mona Lisa itself畅 Miss Gracen摧 s drawings illustrate the problem畅They are very similar both to the photographs from the movie and to the plates designed by Auckland畅Auckland摧 s affidavit establishes that he did not copy or even see her drawings畅 But suppose he had seen them畅 Then it would be very hard to determine whether he had been copying the movie stills， as he was authorized to do， or copying her drawings畅 The painting of Dorothy presents a harder question畅 A comparison of Figures １ and ２ reveals perceptible differences畅A painting （ except， perhaps， one by a member of the Super Realist school mentioned earlier） is never identical to the subject painted， whether the subject is a photograph， a still life， a landscape， or a model， because most painters cannot and do not want to achieve a photographic likeness of their subject畅 Nevertheless， if the differences between Miss Gracen摧 s painting of Dorothy and the photograph of Judy Garland as Dorothy were sufficient to make the painting original in the eyes of the law， then a painting by an 第一编 美 国 版 权法 ３５ Auckland also striving， as per his commission， to produce something “ very recognizable as everybody摧 s Judy ／ Dorothy” would look like the Gracen painting， to which he had access； and it would be difficult for the trier of fact to decide whether Auckland had copied her painting or the original movie stills畅True， the background in Miss Gracen摧 s painting differs from that in Figure ２， but it is drawn from the movie set畅 We do not consider a picture created by superimposing one copyrighted photographic image on another to be “ original” — always bearing in mind that the purpose of the term in copyright law is not to guide aesthetic judgments but to assure a sufficiently gross difference between the underlying and the derivative work to avoid entangling subsequent artists depicting the underlying work in copyright problems畅 We are speaking， however， only of the requirement of originality in derivative works畅If a painter paints from life， no court is going to hold that his painting is not copyrightable because it is an exact photographic likeness畅If that were the rule photographs could not be copyrighted畅 The requirement of originality is significant chiefly in connection with derivative works， where if interpreted too liberally it would paradoxically inhibit rather than promote the creation of such works by giving the first creator a considerable power to interfere with the creation of subsequent derivative works from the same underlying work畅 Justice Holmes摧famous opinion in Bleistein v畅 Donaldson Lithographing Co畅 （ １８８ U畅S畅２３９， １９０３ ） ， heavily relied on by Miss Gracen， is thus not in point畅The issue was whether lithographs of a circus were copyrightable under a statute （ no longer in force） that confined copyright to works “ connected with the fine arts畅” ３６ 美国知识产权法 Holmes摧opinion is a warning against using aesthetic criteria to answer the question畅If Miss Gracen had painted Judy Garland from life， her painting would be copyrightable even if we thought it kitsch； but a derivative work must be substantially different from the underlying work to be copyrightable畅 We agree with the district court that under the test of Batlin Miss Gracen摧 s painting， whatever its artistic merit， is not an original derivative work within the meaning of the Copyright Act畅 The judgment dismissing the complaint is therefore affirmed畅 So Ordered畅 １畅本案主要争议是什么？ ２畅衍生作品的原创性有何特殊要求？ ３畅艺术上的原创性和版权法范畴内的原创性有何区别？ 案例 6 Batlin ＆ Son， Inc．v．Jeffrey Snyder ５３６ F畅２d ４８６， １９７６ OAKES， Circuit Judge： Appellants Jeffrey Snyder and Etna Products Co畅， his licensee， appeal from a preliminary injunction granted L畅Batlin ＆ Son， Inc畅 第一编 ３７ 美 国 版 权法 （ Batlin ） ， compelling appellants to cancel a recordation of a copyright with the United States Customs Service and restraining them from enforcing that copyright畅 The district court held， that there was “ little probability ” that appellants摧copyright “ will be found valid in the trial on the merits” on the basis that any variations between appellants摧copyrighted plastic bank and a cast iron bank in the public domain were merely “trivial，” and hence appellants摧bank insufficiently “ original” to support a copyright畅We agree with the district court and therefore affirm the judgment granting the preliminary injunction畅 Uncle Sam mechanical banks have been on the American scene at least since June ８， １８８６畅 The basic delightful design has long since been in the public domain畅The banks are well documented in collectors摧books and known to the average person interested in Americana畅 Appellant Jeffrey Snyder doing business obtained a registration of copyright on a plastic “ Uncle Sam bank” in Class G （ “ Works of Art” ） as “ sculpture ” on January ２３， １９７５畅Snyder wanted his bank to be made of plastic and to be shorter than the cast metal sample “ in order to fit into the required price range and quality and quantity of material to be used畅” The shape of the carpetbag was also changed畅 Appellee Batlin is also in the novelty business and as early as August ９， １９７４ ， ordered ３０ cartons of cast iron Uncle Sam mechanical banks from Taiwan where its president had seen the bank made畅When he became aware of the existence of a plastic bank， which he considered “ an almost identical copy ” of the cast iron bank， Batlin摧 s trading company in Hong Kong procured a manufacturer and the president of Batlin ordered plastic copies also畅 ３８ 美国知识产权法 Beginning in April， １９７５， Batlin was notified by the United States Customs Service that the plastic banks it was receiving were covered by appellants摧copyright畅In addition the Customs Service was also refusing entry to cast iron banks previously ordered， according to the Batlin affidavit畅Thus Batlin instituted suit for a judgment declaring appellants摧copyright void and for damages for unfair competition and restraint of trade畅The sole question on this appeal is whether Judge Metzner abused his discretion in granting Batlin a preliminary injunction畅We find that he did not畅 This court has examined both the appellants摧plastic Uncle Sam bank made under Snyder摧 s copyright and the uncopyrighted model cast iron mechanical bank which is itself a reproduction of the original public domain Uncle Sam bank畅Appellant Snyder claims differences not only of size but also in a number of other very minute details畅Many of these differences are not perceptible to the casual observer畅Appellants make no claim for any difference based on the plastic mold lines in the Uncle Sam figure which are perceptible畅 Our examination of the banks results in the same conclusion as that of Judge Metzner in Etna Products， the earlier case enjoining Snyder摧 s copyright， that the Snyder bank is “ extremely similar to the cast iron bank， save in size and material ” with the only other differences畅 As Judge Metzner went on to say in his opinion， the appellants摧 plastic version “ reproduces ” the cast iron bank “ except that it proportionately reduces the height from approximately eleven inches to approximately nine inches with trivial variations畅” The court noted that appellants “ went to great pains on the hearing to prove that there were substantial differences between the iron and the 第一编 ３９ 美 国 版 权法 plastic articles，” and found that there had been no “ level of input” ． The substance of appellee摧 s expert摧 s testimony on which the district judge evidently relied was that the variations found in appellants摧 plastic bank were merely “ trivial” and that it was a reproduction of the metal bank made as simply as possible for the purposes of manufacture畅In other words， there were no elements of difference that amounted to significant alteration or that had any purpose other than the functional one of making a more suitable （ and probably less expensive） figure in the plastic medium畅 What the leading authority has called “ the one pervading element prerequisite to copyright protection regardless of the form of the work ” is the requirement of originality that the work be the original product of the claimant畅This derives from the fact that， constitutionally， copyright protection may be claimed only by “ authors畅” Thus， “ one who has slavishly or mechanically copied from others may not claim to be an author畅” Since the constitutional requirement must be read into the Copyright Act， １７ U畅 S畅C畅s １ et seq畅， the requirement of originality is also a statutory one畅It has been the law of this circuit for at least ３０ years that in order to obtain a copyright upon a reproduction of a work of art under １７ U畅 S畅C畅s ５ （ h） that the work “ contain some substantial， not merely trivial originality畅 畅畅畅” Originality is， however， distinguished from novelty； there must be independent creation， but it need not be invention in the sense of striking uniqueness， ingeniousness， or novelty， since the Constitution differentiates “ authors ” and their “ writings ” from “ inventors” and their “ discoveries畅” Originality means that the work owes its creation to the author and this in turn means that the work ４０ 美国知识产权法 must not consist of actual copying畅 The test of originality is concededly one with a low threshold in that “ all that is needed畅畅畅is that the ‘ author摧contributed something more than a ‘ merely trivial摧variation， something recognizably ‘ his own畅摧” ．But as this court said many years ago， “ while a copy of something in the public domain will not， if it be merely a copy， support a copyright， a distinguishable variation will畅畅畅畅”． Necessarily， none of these underlying principles is different in the case of “ reproductions of a work of art，” １７ U畅 S畅C畅s ５ （ h） ， from the case of “ works of art畅畅 畅，” １７ U畅 S畅C畅s ５ （ g ） ．The requirement of substantial as opposed to trivial variation and the prohibition of mechanical copying， both of which are inherent in and subsumed by the concept of originality， apply to both statutory categories畅There is implicit in that concept a “ minimal element of creativity over and above the requirement of independent effort畅” While the quantum of originality that is required may be modest indeed， we are not inclined to abandon that requirement， even if in the light of the constitutional and statutory bases therefor and our precedents we could do so畅 A reproduction of a work of art obviously presupposes an underlying work of art畅Since Mazer v畅Stein， （ １９５４） ， it has been established that mass唱 produced commercial objects with a minimal element of artistic craftsmanship may satisfy the statutory requirement of such a work畅So， too， a toy which qualifies as a work of art such as the original Uncle Sam mechanical bank may qualify as a “ work of art” under Section ５ （ g） ．The underlying work of art may as here be in the public domain畅But even to claim the more limited protection given to a reproduction of a work of art 第一编 ４１ 美 国 版 权法 （ that to the distinctive features contributed by the reproducer ） ， the reproduction must contain “ an original contribution not present in the underlying work of art” and be “ more than a mere copy畅” Moreover， “ the mere reproduction of a work of art in a different medium should not constitute the required originality for the reason that no one can claim to have independently evolved any particular medium畅” Nor can the requirement of originality be satisfied simply by the demonstration of “ physical skill” or “ special training” which， to be sure， Judge Metzner found was required for the production of the plastic molds that furnished the basis for appellants摧plastic bank畅 A considerably higher degree of skill is required， true artistic skill， to make the reproduction copyrightable畅 畅 Here on the basis of appellants摧own expert摧 s testimony it took the Unitoy representative “ about a day and a half， two days work ” to produce the plastic mold sculpture from the metal Uncle Sam bank畅 If there be a point in the copyright law pertaining to reproductions at which sheer artistic skill and effort can act as a substitute for the requirement of substantial variation， it was not reached here畅 Appellants rely heavily upon Alva Studios， Inc畅v畅Winninger， the “ Hand of God” case， where the court held that “ great skill and originality （ were required） to produce a scale reduction of a great work with exactitude畅” There， the original sculpture was， “ one of the most intricate pieces of sculpture ever created ” with “ innumerable planes， lines and geometric patterns畅畅畅interdependent in a multi唱 dimensional work畅” Originality was found by the district court to consist primarily in the fact that “ it takes ‘ an extremely skilled sculptor摧 many hours working directly in front of the original” to effectuate a scale reduction畅The court， indeed， found ４２ 美国知识产权法 the exact replica to be so original， distinct， and creative as to constitute a work of art in itself畅The complexity and exactitude there involved distinguishes that case amply from the one at bar畅 As appellants themselves have pointed out， there are a number of trivial differences or deviations from the original public domain cast iron bank in their plastic reproduction畅 Thus concededly the plastic version is not， and was scarcely meticulously produced to be， an exactly faithful reproduction畅Nor is the creativity in the underlying work of art of the same order of magnitude as in the case of the “ Hand of God畅” Rodin摧 s sculpture is， furthermore， so unique and rare， and adequate public access to it such a problem that a significant public benefit accrues from its precise， artistic reproduction畅No such benefit can be imagined to accrue here from the “knock唱 off” reproduction of the cast iron Uncle Sam bank畅Thus appellants摧plastic bank is neither in the category of exactitude required by Alva Studios nor in a category of substantial originality； it falls within what has been suggested by the amicus curiae is a copyright no唱 man摧 s land畅 Absent a genuine difference between the underlying work of art and the copy of it for which protection is sought， the public interest in promoting progress in the arts indeed， the constitutional demand， Chamberlin v畅Uris Sales Corp畅， supra could hardly be served畅To extend copyrightability to minuscule variations would simply put a weapon for harassment in the hands of mischievous copiers intent on appropriating and monopolizing public domain work畅Even in Mazer v畅Stein， supra， which held that the statutory terms “ works of art” and “ reproduction of works of art” （ terms which are clearly broader than the earlier term “ works of the fine arts ” ） permit copyright of 第一编 ４３ 美 国 版 权法 quite ordinary mass唱 produced items， the Court expressly held that the objects to be copyrightable， “ must be original， that is， the author摧 s tangible expression of his ideas畅” ３４７ U畅S畅 at ２１４， ７４ S畅Ct畅at ４６８ ， ９８ L畅Ed畅 at ６４０畅 No such originality， no such expression， no such ideas here appear畅 To be sure， the test of “ originality” may leave a lot to be desired， although it is the only one we have， in that as one scholar has said， the originality requirement does not perform the function of excluding commonplace matters in the public domain from copyright status very effectively畅In any event， however， the articles should be judged on their own merits， and on these merits appellants摧claim must fail畅Here as elsewhere in the copyright law there are lines that must be drawn even though reasonable men may differ where畅 Judgment affirmed畅 １畅本案法官对原创性的界定与 Feist 案中有何不同？ ２畅复制品要获得版权， 在原创性上应该满足什么要求？ ３畅Alva Studios， Inc畅v畅Winninger 中确立的规则是否适用于 本案？ 第三节 作品的 作品 的固 定 定 性 （ fixation） 是 指 作者 的 在某种有形的物质 体上。 作 品 国版权法授予版权保护的必要条件。 必须 要 体现 定性 的要 求是 １９７６ 年美 ４４ 美国知识产权法 据 １９７６ 年美国 版权 法第 １０１ 条的 规定， 所 指一部作品 定于有形的表述 有 够的 被感知、 复 之上， 即该作品经由作者的授 品 （ copy ） 和 权而体现于 复 性和 （ phonorecord） 之 中， 并 定性， 而不 。 正在 和 成的作品， 只要对该作品的 定的有形物质； 所 是 时的 在， 从而可以 的， 以 、 或者二者 定是在 的同时进行， 也能够 ， 是 指 CD、 定性的要求。 所 复 定 性， 是 品， 是指 等所 有 用以 之外的所有有形物质。 White Smith Music Pub Co畅v畅Apollo Co畅是 第 一个 品 合 论作 定性的案例。 在该案中， 美国最高法院指出作品必须以一定 的形式 定下来， 成为复 决最有 时所 的一 会 品， 使得人 就是确定了作品的 学发展 平的限 义过于狭窄， 即 作 品只 能 质之定 可 以 通过 眼 睛 来 阅 读的 质的 界定 作出 了 即无论是数字的、 文字的、 符号的、 打印的、 定作品的 于当 质。 与该案相比， 第 １０１ 条对 于 或者表现形式， 接感知。 该案裁 定性要求。 但是， ， 该案对于 定在人 质， 不包括机器可以阅读的 可以 大的 的、 绘画的、 其他 展， 形 无论是 以书 写的、 印刷 的、 摄 影的、 雕刻 的、 的或者其他任何 质上即可， 既可以由人 定的形式， 只要 定在某种有形 接感知， 也可以通过机器和设 可 以感知。 没有被 定的作品， 例如 即兴演 讲， 只 能受 到 州法 的保 护。 因此， 针对口述作品发生的争议将一 不会适用联邦版权法， 而 只能从州的普通法中寻求保护。 另外， 单纯的现场 定性的要求。 但是， 如果在 有形的 上， 也符合 的同时将该节目 定性的要求。 将不符合 定在 等 第一编 ４５ 美 国 版 权法 案例 7 White Smith Music Pub Co．v．Appollo Co． ２０９ U畅 S畅１， １９０８ Mr．Justice Day delivered the opinion of the court： The actions were brought to restrain infringement of the copyrights of two certain musical compositions畅 The appellee， defendant below， is engaged in the sale of piano players and player pianos known as the “ Apollo，” and of perforated rolls of music used in connection therewith畅 The appellant， as assignee of Adam Geibel， the composer， alleged compliance with the copyright act， and that a copyright was duly obtained by it on or about March １７， １８９７畅 The appellee is the manufacturer of certain musical instruments adapted to be used with perforated rolls畅The testimony discloses that certain of these rolls， used in connection with such instruments， and being connected with the mechanism to which they apply， reproduce in sound the melody recorded in the two pieces of music copyrighted by the appellant The action was brought under the provisions of the copyright act， § ４９５２， giving to the author， inventor ， designer ， or proprietor of any book， map， chart， dramatic or musical composition the sole liberty of printing， reprinting， publishing， completing， copying， executing， finishing and vending the same畅 Without entering into a detailed discussion of the mechanical ４６ 美国知识产权法 construction of such instruments and rolls， it is enough to say that they are what has become familiar to the public in the form of mechanical attachments to pianos， such as the pianola， and the musical rolls consist of perforated sheets， which are passed over ducts connected with the operating parts of the mechanism in such manner that the same are kept sealed until， by means of perforations in the rolls， air pressure is admitted to the ducts which operate the pneumatic devices to sound the notes畅This is done with the aid of an operator， upon whose skill and experience the success of the rendition largely depends畅As the roll is drawn over the tracker board the notes are sounded as the perforations admit the atmospheric pressure， the perforations having been so arranged that the effect is to produce the melody or tune for which the roll has been cut畅 It is evident， therefore， that persons skilled in the art can take such pieces of sheet music in staff notation， and， by means of the proper instruments， make drawings indicating the perforations， which are afterwards outlined and cut upon the rolls in such wise as to reproduce， with the aid of the other mechanism， the music which is recorded in the copyrighted sheets畅 Music， it is argued， is intended for the ear as writing is for the eye， and that it is the intention of the copyright act to prevent the multiplication of every means of reproducing the music of the composer to the ear畅 On the other hand， it is contended that while it is true that copyright statutes are intended to reward mental creations or conceptions， that the extent of this protection is a matter of statutory law， and that it has been extended only to the tangible results of mental conception， and that only the tangible thing is dealt with by 第一编 美 国 版 权法 ４７ the law， and its multiplication or reproduction is all that is protected by the statute畅 Before considering the construction of the statute as an independent question the appellee invokes the doctrine of stare decisis in its favor and it is its contention that in all the cases in which this question has been up for judicial consideration it has been held that such mechanical producers of musical tones as are involved in this case have not been considered to be within the protection of the copyright act畅 Since these cases were decided Congress has repeatedly had occasion to amend the copyright law畅 The English cases， the decision of the District of Columbia court of appeals， and Judge Colt摧 s decision must have been well known to the members of Congress； and although the manufacture of mechanical musical instruments had not grown to the proportions which they have since attained， they were well known， and the omission of Congress to specifically legislate concerning them might well be taken to be an acquiescence in the judicial construction given to the copyright laws畅 Musical compositions have been the subject of copyright protection since the statute of February ３ ， １８３１， and laws have been passed including them since that time畅 When we turn to the consideration of the act it seems evident that Congress has dealt with the tangible thing， a copy of which is required to be filed with the Librarian of Congress， and wherever the words are used （ copy or copies） they seem to refer to the term in its ordinary sense of indicating reproduction or duplication of the original畅Section ４９５６ provides that two copies of a book， map， chart， or musical composition， etc畅， shall be delivered at the office of the Librarian of ４８ 美国知识产权法 Congress畅Notice of copyright must be inserted in the several copies of every edition published， if a book， or， if a musical composition， etc畅， upon some visible portion thereof畅Section ４９６２， copyright act provides in part that the infringer “ shall forfeit畅 畅畅 every sheet thereof， and畅畅畅one dollar for every sheet of the same found in his possession，” etc畅， evidently referring to musical compositions in sheets畅Throughout the act it is apparent that Congress has dealt with the concrete， and not with an abstract， right of property in ideas or mental conceptions畅 We cannot perceive that the amendment of § ４９６６ by the act of January ６， １８９７ （ ［２９ Stat畅at L畅４８１ ， chap畅４］ U畅S畅Comp畅 Stat畅１９０１， p畅３４１５ ）， providing a penalty for any person publicly performing or representing any dramatic or musical composition for which a copyright has been obtained， can have the effect of enlarging the meaning of the previous sections of the act which were not changed by the amendment畅 The purpose of the amendment evidently was to put musical compositions on the footing of dramatic compositions， so as to prohibit their public performance畅There is no complaint in this case of the public performance of copyrighted music； not is the question involved whether the manufacturers of such perforated music rolls when sold for use in public performance might be held as contributing infringers畅 This amendment was evidently passed for the specific purpose referred to， and is entitled to little consideration in construing the meaning of the terms of the act theretofore in force畅 What is meant by a copy？ We have already referred to the common understanding of it as a reproduction or duplication of a thing畅A definition was given by Bailey， J畅， in West v畅Francis， ５ 第一编 美 国 版 权法 ４９ Barn畅＆ Ald畅７４３畅He said： “ A copy is that which comes so near to the original as to give to every person seeing it the idea created by the original畅” Various definitions have been given by the experts called in the case畅 The one which most commends itself to our judgment is perhaps as clear as can be made， and defines a copy of a musical composition to be “ a written or printed record of it in intelligible notation畅” It may be true that in a broad sense a mechanical instrument which reproduces a tune copies it； but this is a strained and artificial meaning畅When the combination of musical sounds is reproduced to the ear it is the original tune as conceived by the author which is heard畅These musical tones are not a copy which appeals to the eye畅In no sense can musical sounds which reach us through the sense of hearing be said to be copies， as that term is generally understood， and as we believe it was intended to be understood in the statutes under consideration畅 A musical composition is an intellectual creation which first exists in the mind of the composer； he may play it for the first time upon an instrument畅It is not susceptible of being copied until it has been put in a form which others can see and read畅 The statute has not provided for the protection of the intellectual conception apart from the thing produced， however meritorious such conception may be， but has provided for the making and filing of a tangible thing， against the publication and duplication of which it is the purpose of the statute to protect the composer畅 Also it may be noted in this connection that if the broad construction of publishing and copying contended for by the appellants is to be given to this statute it would seem equally ５０ 美国知识产权法 applicable to the cylinder of a music box， with its mechanical arrangement for the reproduction of melodious sounds， or the record of the graphophone， or to the pipe organ operated by devices similar to those in use in the pianola畅All these instruments were well known when these various copyright acts were passed畅Can it be that it was the intention of Congress to permit them to be held as infringements and suppressed by injunctions？ After all， what is the perforated roll？ The fact is clearly established in the testimony in this case that even those skilled in the making of these rolls are unable to read them as musical compositions， as those in staff notations are read by the performer畅 It is ture that there is some testimony to the effect that great skill and patience might enable the operator to read this record as he could a piece of music written in staff notation畅 But the weight of the testimony is emphatically the other way， and they are not intended to be read as an ordinary piece of sheet music， which， to those skilled in the art， converys， by reading， in playing or singing， definite impressions of the melody畅 These perforated rolls are parts of a machine which， when duly applied and properly operated in connection with the mechanism to which they are adapted， produce musical tones in harmonious combination畅But we cannot think that they are copies within the meaning of the copyright act畅 It may be true that the use of these perforated rolls， in the absence of statutory protection， enables the manufacturers thereof to enjoy the use of musical compositions for which they pay no value畅 But such considerations properly address themselves to the legislative， and not to the judicial， branch of the government畅As 第一编 美 国 版 权法 ５１ the act of Congress now stands we believe it does not include these records as copies or publications of the copyrighted music involved in these cases畅 The decrees of the Circuit Court of Appeals are affirmed畅 １畅本案法官对于 “ copy” 所界 定的 范围 是什 么？ Piano Roll 是否属于 “ copy” 的一种？ ２畅本案裁决对于 “ 固定性” 作出了什么要求？ ３畅本案裁决在今天看来具有什么缺陷？ 案例 8 National Football League v． McBee ＆ Bruno摧 s， Inc． ７９２ F畅２d ７２６， １９８６ ARNOLD， Circuit Judge． Affirmed in part and reversed in part畅 This lawsuit， brought by the National Football League （ NFL） and the St畅 Louis Football Cardinals （ Cardinals ） ， alleges that defendants， the owners of several St畅 Louis restaurants， violated federal copyright and communications law by showing Cardinals摧 home games which had been “ blacked out” in the St畅Louis area畅 ５２ 美国知识产权法 According to plaintiffs， defendants picked up the signals for such games by means of satellite dish antennae畅 The District Court， which had already issued a temporary restraining order and a preliminary injunction， entered a permanent injunction against defendants after a trial on the merits畅The decision was based on the Copyright Act of １９７６， １７ U畅S畅C畅 § １０１ et seq畅， and the Federal Communications Act， § ７０５ （ formerly § ６０５） ．In the main， we affirm畅 The Cardinals， a professional football team， is one of ２８ teams composing the NFL ， an unincorporated non唱 profit association through which the member clubs schedule games and manage their affairs as a group， including contracts with the three major television networks畅One provision of those television contracts is that games which are not sold out within ７２ hours of game time are to be “ blacked out，” that is， not broadcast within a ７５唱 mile radius of the home team摧 s playing field畅Officials of the league and club testified at trial that such a rule boosts team revenue directly by increasing ticket sales and indirectly because a full stadium contributes to a more exciting television program and therefore makes the right to broadcast games more valuable畅 Witnesses also described the process by which a live football game is telecast by the networks， in this case CBS畅As television cameras capture the visual portion of the game， announcers describe and discuss the action from a sound booth of some kind畅 Those simultaneous audio and video signals are combined at an earth station outside the stadium畅This signal唱 called an uplink唱 is transmitted up to a satellite， which then sends the signal back唱 called a downlink唱 to a network control point on Long Island畅Because that signal contains 第一编 美 国 版 权法 ５３ no images other than those from the stadium， this stage is referred to as a “clean feed畅” The signal is then sent by cable to CBS studios in New York； commercials and other interruptions， such as station breaks， are inserted， and it is now described as a “ dirty feed畅” There is another uplink to the satellite， and then a downlink to local affiliates， who insert local material and finally put the live broadcast on the air畅T he process apparently takes far longer to describe than to occur； at argument， counsel for the NFL called the procedure “ simultaneous， instantaneous，” and said that the delay between the action on the field and the broadcast by local affiliates was considerably less than two seconds畅 The defendants are owners， corporate or individual， of St畅 Louis bar唱 restaurants within ７５ miles of Busch Stadium， the Cardinals摧home field畅 All defendants have satellite dish antennae that enable them to receive transmissions in the so唱 called C唱 band frequency， approximately ３２００ －４２００ megahertz， in which the satellite sends and receives transmissions畅There is no question that prior to November １９， １９８４， all defendants but two picked up the clean feed （ from the satellite to CBS） and thereby showed blacked唱 out home games of the Cardinals畅On that date， plaintiffs requested and the District Court entered a temporary restraining order， preventing defendants from intercepting and showing the home game scheduled for the following Sunday； after a hearing， the Court issued a preliminary injunction in basically the same terms， dealing with the last home game of the season畅Trial on the merits was held on May ７ ， １９８５畅The District Court found that the telecasts were copyrightable under Section １０２ of the Copyright Act， that the plaintiffs were owners of those copyrights， and that display of the ５４ 美国知识产权法 clean feed transmissions of those telecasts violated plaintiffs摧 exclusive right of display and performance under Section １０６ of the Act， as well as Section ７０５ of the Communications Act畅 A permanent injunction issued on S eptember １３， １９８５， prohibiting the defendants from intercepting and showing plaintiffs摧programming， whether in the form of the clean or dirty feed transmissions畅 The owners of the defendant restaurants challenge the District Court摧 s Copyright Act decision on a variety of grounds： that the evidence presented by plaintiffs to show irreparable injury was too speculative to support the issuance of a permanent injunction； that defendants摧display of blacked唱 out home games falls under statutory limitations on exclusive rights of a copyright owner， １７ U畅S畅C畅 § １１０ （５ ） ； that defendants did not infringe on plaintiffs摧copyright because they intercepted the clean feed rather than the dirty feed， which was the transmission actually “ fixed” under the Copyright Act and registered with the Copyright Office； and that under １７ U畅S畅C畅 § ４１１， no permanent injunction can issue concerning works which are not already in existence畅Although some of these arguments have more substance than others， we consider all to be ultimately without merit畅 The Copyright Act protects “ original works of authorship fixed in any tangible medium，” １７ U畅S畅C畅 § １０２ （ a ） ， including “ motion pictures and other audiovisual works，” １７ U畅S畅C畅 § １０２ （ a） （６） ．As for live broadcasts， such as the football games at issue here， the Act states that “ a work consisting of sounds， images， or both， that are being transmitted， is ‘ fixed摧畅 畅畅if a fixation of the work is being made simultaneously with its transmission，” １７ U畅S畅C畅 § １０１； “ to ‘ transmit摧” is defined as “ to communicate 第一编 美 国 版 权法 ５５ 畅畅畅by any device or process whereby images or sounds are received beyond the place from which they are sent畅” The defendants claim that no infringement took place because they intercepted the clean feed， and it was the dirty feed which was fixed under the Act and for which the plaintiffs sought copyright protection畅 In making the argument that the clean and dirty feeds represent separate works， defendants depend on the quoted definitions， as well as a third provision of Section １０１ which states that each draft version of a work “prepared over a period of time” ， constitutes a separate work畅 The District Court rejected this theory on two grounds畅 Not only could the argument rule out any protection for live broadcasting by satellite transmission but， the Court said， it also ignored the fact that the game， and not the inserted commercials and station breaks， constituted the work of authorship畅 We agree畅Plaintiffs testified copyright protection was obtained for “ the game， the game action 畅畅畅the noncommercial elements of the game畅” More important， the legislative history demonstrates a clear intent on the part of Congress to “ resolve， through the definition of ‘ fixation摧畅畅畅， the status of live broadcasts，” using唱 coincidentally but not insignificantly唱 the example of a live football game畅We have already discussed the near唱 instantaneous nature of the picture摧 s journey from stadium to viewer， ante at ７２８； Congress surely was aware that the images and sounds from a live broadcast do not go directly from camera or microphone to a home television or radio畅To hold that this transmission process nevertheless represents the performance of separate works would gut the plain purpose of the “ fixation ” definition， as well as distort the concept of a “ work prepared over a period of time畅” ５６ 美国知识产权法 It is so ordered畅 １畅对于由声音、 画 面 或者 两 者 同时 构 成的 作 品， 版 权 法所 要求的固定性有何特殊性？ ２畅对于卫星电视节目， 版权法所保护的作品究竟是指什么？ 第四 节 版权 标记 在我国， 版权于作品创作 成以后自 注等要式行 为 为 前 提， 也 就 是 国 产生， 不以发表、 标 通行的 “ 自 保 护 ” 主 义。 枟 伯尔尼公约枠 中也规 定： “ 享有和 行使 版权， 不 需要 履行 任何 手续。” 但是， 美国在相当 时间里， 坚持以加注版权标记为获得版 权的前提条件。 版权标记一 作品 包括： 英 文 copyright 或 缩写标 志； 出版的年份； 版权人的姓名， 也可以是他人认可的版权 人姓名的缩 写， 还 可以 是 通常 承 认 的指 示 版权 所 有 人 的 其他 方 式。 美国版权法一 对版权标记的要求非常严格： 如果作者没有 在作品上注明版权标记， 其作品将进入公有领域， 作者将因此丧 失版权。 美国是 枟 伯尔尼公约 枠 的 成员 国， 而 公约 中 规 定 版 权的 获 得不以加注标 记为 条 件。 为 了适 应 公 约的 要 求， １９８９ 年 美 国颁 布了 枟 枙 伯尔尼公约枛 实施法枠 以调整国内法律与 公约的 冲突。 这部法律规 定， 加 注 标 记是 有 性 的。 如果 作 者 没 有 加注 标 记， 也不必然丧失版权。 这彻底废除了加注版权标记作为版权保 护之前提的规定， 一改美国以前 期坚持的做法， 实现了与国 第一编 ５７ 美 国 版 权法 会的接轨。 事实上， 早在 １９７６ 年 版权 法中， 美国 已经 逐 渐开 始放 松对 加注版权标记的要求。 尽管该法依旧要求加注版权标记是已经出 版或者公开发行的作品获得版权的前提条件， 但是该法规定了很 多例外条款， 即在某些 例外 的情 形下， 即 使没有 加 注版 权标 记， 也不一定会丧失版权。 该法第 ４０５ 条中规定了三种特殊情况： 第 一， 在相对少量的公开 发行的 出版 物或 品上 省略 了标 记； 第二， 是尽管在公开发行的作品上没有标注标记， 但是如果版权 所有人在公开出版发行后的五年内向版权局办理了注册手续， 并 ， 试 在发现版权标记忽略后作出了合理的努 在国内的出版物 上追加版权标记， 也 不会 丧 失 版 权。 对 “ 合 理努 是， 在所用库 出版物上附加标记， 向 ” 的 合理 发商和零售商提供版 权标记附加于出版物上。 第三， 如果被许可人违背了明示的书面 合同， 没有在许可使用的出版物上加注版权标记， 那么， 不造成 版权人版权的丧失。 法院在适用这些例外条款的时候， 并不考虑 作者或者版权所有人忽略版权标记是 于故意还是过失。 正如法 院在 Hasbro Bradley， Inc畅v畅Sparkle T oys， Inc畅一 案 中 所 指 出 的， 没有必要去追究版权标记的忽略是故意还是过失。 但是， 美国仍然鼓励作者加注版权标记。 如果作者加注了版 权标记， 那么在作品被侵权时， 侵权人就不能主 自己是无过错 侵权， 也不能以这一理 由向法 院提 出减 轻自己 赔偿 责任 的请 求。 因此， 为了进一步切实、 充分地维护自己的权利， 作者仍然应加 注版权标记。 总体 而 大的。 ， 版 权 标记 在 美国 的 影 响 还 是相 当 ５８ 美国知识产权法 案例 9 Hasbro Bradley， Inc．v． Sparkle Toys， Inc． ７８０ F畅２d １８９， １９８５ FRIENDLY， Circuit Judge： The companies involved in this copyright case in the District Court for the S outhern District of New York are Takara Co畅， Ltd畅 （ “ Takara” ） ， a Japanese company that designed the toys here in question； plaintiff Hasbro Bradley， Inc畅 （ “ Hasbro ” ） ， a large American toy manufacturer and seller that acquired Takara摧 s rights to United States copyrights for the toys； and defendant Sparkle Toys， Inc畅（ “ Sparkle” ） ， a smaller American toy manufacturer and seller that copied the toys in Asia from models manufactured by Takara which did not carry the copyright notice required by § ４０１ of the Copyright Act of １９７６ and by Article III （ １ ） of the Revised Universal Copyright Convention （ U畅C畅C畅） ， ２５ U畅S畅T畅 １３４１ （１９７１ ） ， to which the United States and Japan are parties畅 “ Topspin ” and “ Twin Twist ” （ the “ toys ” ） are part of Hasbro摧 s “ The Transformers ” series of changeable robotic action figures畅The sculptural expressions of the toys are original designs of Takara， which manufactures “ The Transformers ” for Hasbro畅 Takara authored the designs in the summer of １９８３ and by the end of November had completed molds for manufacturing the toys畅These molds did not contain a copyright notice畅 Takara avers that the 第一编 美 国 版 权法 ５９ omission was due to the facts that Japanese law does not recognize copyright in toy products and that Takara was unaware that American law does recognize copyright in such works but requires notice， even on copies of the work distributed outside the United States， for copyright protection to be claimed inside the United States畅 Production of the unmarked toys began in December １９８３ and ended in February １９８４畅 Between January and March， approximately ２１３， ０００ of the unmarked toys were sold； thereafter， sales were minor and were made only to remove inventory畅 Whether the unmarked toys were sold only in Asia or some of them were sold as well in the United States is in dispute畅 Hasbro was shown the toys by Takara in June １９８４ and decided to adopt them into “ The Transformers ” series畅 In the course of modifying the toys to meet Hasbro摧 s specifications， Takara designed new molds that contained a copyright notice； at the same time， it added a copyright notice to its old molds畅Takara avers that after August １９８４ no toys using molds that did not contain a copyright notice were manufactured for sale anywhere in the world畅Hasbro has widely distributed the toys in the United States， beginning in January １９８５畅Sparkle does not dispute that all of the toys sold in this country by Hasbro have born copyright notice畅 Sometime in June １９８４， Takara orally granted Hasbro the exclusive right to import and sell the toys in the United States and assigned to Hasbro the United States copyrights in the designs of the toys， including the right to apply for copyright registration畅 A written confirmation of assignment was executed as of November １２， １９８４畅Hasbro applied to register copyrights in the United States in both sculptural expressions of each toy on November ２９， １９８４， ６０ 美国知识产权法 listing Takara as the “ author” and itself as the “ copyright claimant” by virtue of the assignment from Takara畅Certificates of registration were granted effective December ３， １９８４畅 Sparkle摧 s most basic position is that sale of the unmarked toys by Takara in Japan injected the designs into the public domain畅If the designs were truly in the public domain， Hasbro could have enjoyed no copyrights in the toys， and Sparkle摧 s copying would have been permissible畅Sparkle摧 s argument， however， ignores the scheme for the protection of copyrightable works set up by the Act and the U畅C畅C畅畅If the toys， though not initially qualifying for copyright protection， subsequently did， Sparkle摧 s position loses its glow畅 There is no dispute that the toys here at issue were originally designed by Takara in June １９８３畅 Although the toys enjoyed no copyright protection under Japanese law， they fell within the class of “ pictorial， graphic， and sculptural works” covered by § １０２ （ a） （５ ） of the Act畅Since the toys were authored by a Japanese national and first “ published” （ i畅e畅sold） in Japan， they enjoyed copyright protection under United States law from the moment they were created ， by virtue of both § １０４ （ b） of the Act and Article II （１） of the U畅C畅C．． As previously stated， there is also no dispute that before the assignment of Takara摧 s copyrights to Hasbro approximately ２１３敞０００ of the toys were sold， mostly in Japan， without copyright notice畅 This omission of notice from toys sold by Takara or with its authority outside the United States violated § ４０１ （ a） of the Act， which requires： Whenever a work protected under this title is published in the United States or elsewhere by authority of the copyright owner， a 第一编 ６１ 美 国 版 权法 notice of copyright as provided by this section shall be placed on all publicly distributed copies from which the work can be visually perceived， either directly or with the aid of a machine or device畅 This does not mean， however， that the Takara designs were immediately thrust into the public domain畅 The Act explicitly provides in § ４０５ （a） that the omission of notice from copies of a protected work may be excused or cured under certain circumstances， in which case the copyright is valid from the moment the work was created， just as if no omission had occurred畅 The House Report accompanying the Act stated with respect to § ４０５ （ a） that “ under the general scheme of the bill， statutory copyright protection is secured automatically when a work is created， and is not lost when the work is published， even if the copyright notice is omitted entirely畅” In the opinion of the committee that authored the report， the excuse and cure provisions of § ４０５ （ a） represented “ a major change in the theoretical framework of American copyright law畅” It is not contended that the omission of notice from the toys could have been excused under either subsections （１ ） or （３） of § ４０５ （ a） ； rather， reliance is placed on subsection （２ ）．In effect， § ４０５ （ a） （２ ） allows a person who publishes a copyrightable work without notice to hold a kind of incipient copyright in the work for five years thereafter： if the omission is cured in that time through registration and the exercise of “ a reasonable effort 畅畅畅to add notice to all copies 畅 畅畅that are distributed to the public in the United States after the omission has been discovered，” the copyright is perfected and valid retroactively for the entire period after cure； if the omission is not cured in that time， the incipient copyright never ６２ 美国知识产权法 achieves enforceability畅The quid pro quo in the Act for persons who have been misled by the omission of copyright notice before the cure is the more liberal provision of § ４０５ （ b） ， as compared with § ２１ of the １９０９ Act， regarding innocent infringers， of which more hereafter畅 There is no dispute that Takara had not cured the omission of notice from the toys under § ４０５ （ a ） （ ２ ） before assigning to Hasbro in June １９８４ “ the entire right， title and interest to any copyrights on the DESIGNS for the United States of America畅” Takara摧 s copyrights thus were merely incipient唱 though subject to cure唱 at the time of the assignment畅It is axiomatic that an assignee of a copyright can take no more than his assignor has to give畅 In view of this， we reject Hasbro摧 s argument that the omission of notice by Takara is irrelevant in assessing the validity of Hasbro摧 s copyrights畅Hasbro relies on the language of § ４０１ （ a） ， pointing out that this requires notice only with respect to works published “ by authority of the copyright owner畅” According to Hasbro， since it唱 not Takara唱 is the copyright owner in the United States， and since all of the toys sold by its authority in the United States and elsewhere have displayed proper copyright notice， it cannot be in violation of the notice requirement畅The fallacy with this argument is that it starts by assuming the very point here in dispute： that Hasbro is the owner of valid copyrights in the United States畅Our discussion of Bong shows that Hasbro摧 s copyrights initially had only such validity as Takara摧 s畅 For purposes of determining the validity in the United States of Takara摧 s copyrights at the time of assignment， Takara is the relevant “ copyright owner” under § ４０１ （ a） ．As shown above， Takara摧 s violation of the notice requirement left Hasbro with only an incipient 第一编 美 国 版 权法 ６３ copyright， subject to cure畅 The issue thus becomes whether Hasbro has cured Takara摧 s omission of notice under § ４０５ （ a）（ ２） ．There is no question that Hasbro， as Takara摧 s assignee， is permitted to effect cure through its own efforts畅 The “ copyright claimant ” entitled under the Act to register a copyright in the United States may be either the author of the work or his assignee， and any registration is of the work per se and redounds to the benefit of the assignor as well as the assignee畅 Not disputing this， Sparkle argues that Hasbro cannot effect cure under § ４０５ （ a ） （ ２ ） because Takara摧 s omission of notice was deliberate畅 On its face， § ４０５ （ a ） （ ２ ） is not restricted to unintentional omissions畅Its language permits cure if registration is made “ within five years after the publication without notice ” — not， as Sparkle would read it， “ the unintentional publication without notice畅” The difference between the broad language of § ４０５ （ a ） and the more limited language of § ２１ of the １９０９ Act， shows that Congress no longer wished to deal only with omissions of notice due to accident or mistake畅Moreover， the legislative history of the １９７６ Act affords ample demonstration that Congress intended to bring deliberate omissions within the ambit of § ４０５ （ a ） （ ２） ．The House Report comments with respect to § ４０５ （ a） that “ under the proposed law a work published without any copyright notice will still be subject to statutory protection for at least ５ years， whether the omission was partial or total， unintentional or deliberate畅” Professor Nimmer adds： In explaining the same statutory text ［ § ４０５］ ， the Register of Copyrights stated： “畅畅畅it was urged that， to make the validity of a ６４ 美国知识产权法 copyright turn on the question of whether the omission of notice was ‘ deliberate摧or ‘ unintentional摧would involve impossible problems of proof and would result in uncertainty and injustice畅After considering these arguments we concluded that questions involving the subjective state of mind of one or more persons and their ignorance or knowledge of the law should be avoided if at all possible 畅畅畅we decided that the bill should drop any distinction between ‘ deliberate摧 and ‘ inadvertent摧or ‘ unintentional摧omission and， subject to certain conditions， should preserve the copyright in all cases畅” Against this， Sparkle relies on Judge Sand摧 s opinion in Beacon Looms ， Inc畅v畅S畅Lichtenberg ＆ Co畅， ５５２ F畅Supp畅１３０５， and on Professor Nimmer摧 s approval of the reasoning of that opinion畅 The result in Beacon Looms depended almost entirely on the language in § ４０５ （ a） （２ ） that reasonable efforts to affix notice need begin only “ after the omission has been discovered畅” Judge Sand reasoned that since “ one cannot ‘ discover摧an omission that has been deliberate，” ５５２ F畅Supp畅at １３１０， to permit the cure of deliberate omissions would do violence to the unambiguous “ plain meaning” of the statute畅reasonable efforts requirement applies to “ copies published after ‘ discovery摧of the fact that the existence of a copyright has become an issue畅” In view of this supposedly plain meaning， Judge Sand felt compelled to ignore the legislative history outlined above畅 With due respect， we cannot agree with Beacon Looms畅The operative language of the statute in this context comes at the beginning of § ４０５ （ a）， covers all three methods of cure， and is not restricted in any way畅The language relied on by Judge Sand， which comes at the end of § ４０５ （ a ） （２ ） ， is relevant only with 第一编 美 国 版 权法 ６５ respect to unmarked copies that have been publicly distributed in the United States畅 More important， the premise of the argument唱 namely， that a deliberate omission cannot be “ discovered ” — is unsound畅As discussed above， an assignee or licensee may effect cure under § ４０５ （ a） （２ ） on behalf of itself and its assignor or licensor畅In such a situation — the very one presented in this case — no violence is done to the statutory language by saying that the omission， though deliberate on the part of the assignor or licensor， was “ discovered ” by the person later attempting to cure it畅 Similarly， a deliberate omission at a lower level of a corporate hierarchy might well be “ discovered，” in realistic terms， by someone at a higher level畅Instances like these at least indicate that the “ discovered” language does not reveal a plain intent to exclude all deliberate omissions畅 The meaning that § ４０５ （ a） （２ ） does not apply to intentional omissions thus seems to us anything but “ plain畅” At most， the “ discovered ” language introduces an ambiguity畅 It thus becomes appropriate to look at the legislative history， and this demonstrates that intentional as well as unintentional omissions were intended to be made curable畅While there may be some difficulties in determining what constitutes “ a reasonable effort to add notice to all copies 畅畅 畅 that are distributed to the public in the United States after the omission has been discovered ” in cases where the omission was intentional and the person attempting to cure is the same person who omitted notice， as argued in Beacon Looms， ５５２ F畅Supp畅at １３１０ － １１， and ２ Nimmer， supra， § ７畅１３ B ３， at ７ －９６， these difficulties are by no means insuperable and constitute no sufficient reason for disregarding the declared legislative intent畅We therefore conclude ６６ 美国知识产权法 that the omission of notice from the toys， even if deliberate on Takara摧 s part， was subject to cure under § ４０５ （ a ） （ ２ ） ， and we pass on to the question whether Hasbro in fact effectuated cure畅 Apart from Sparkle摧 s contention that Hasbro committed fraud on the Copyright Office， there is no dispute that Hasbro validly registered its copyrights in the Takara designs within five years of publication of the unmarked toys， thus satisfying one of the two requirements for cure under § ４０５ （ a ） （ ２ ） ．Sparkle admits also that Hasbro has affixed notice to all of the toys since sold under its authority in the United States and elsewhere畅It argues， however， that Hasbro did not make “ a reasonable effort” to affix notice to toys from the unmarked batch initially produced by Takara and thus failed to satisfy the second requirement of § ４０５ （ a） （２） ．Hasbro asserts that this was unnecessary： that its obligations under § ４０５ （ a） （２） are limited to unmarked toys distributed to the public in the United States by its own authority as the “ copyright owner” and， insofar as we have previously concluded that this phrase includes Takara， to unmarked toys so distributed by Takara before the assignment畅 We are not prepared to endorse this畅The introductory words to § ４０５ （ a） indeed speak of copies “ publicly distributed by authority of the copyright owner畅” However ， as we have held above， the sales of unmarked toys by Takara in Japan before the assignment of the copyright fall within this phrase畅 In the absence of any prohibition on resale of these toys in the United States， the purchasers were free to sell them here畅To be sure， the requirement of § ４０５ （ a ） （ ２ ） to add notice is limited to copies “ that are distributed to the public in the United States，” but it seems significant that Congress did not here repeat the words “ by authority 第一编 美 国 版 权法 ６７ of the copyright owner畅” We are content， however， to leave undecided the question whether Hasbro would be obligated under § ４０５ （a） （２ ） to make a reasonable effort to affix notice even with respect to unmarked toys distributed in the United States by persons other than itself or Takara畅 At this juncture， Sparkle has yet to produce credible evidence that any of the unmarked toys have been publicly distributed in the United States at all， let alone evidence of who distributed them畅Whether any unmarked toys were introduced into the United States and， if so， who introduced them and what efforts to mark them would be reasonable are questions that can be resolved at trial when Hasbro seeks a permanent injunction畅 Sparkle further alleges that Hasbro failed to advise the Copyright Office of the prior sales of the unmarked toys by Takara when applying for registration and argues that this constituted fraud on the Copyright Office， thereby invalidating Hasbro摧 s copyrights畅 But Sparkle did not respond in brief or at argument to Hasbro摧 s contention， which is supported by the record， that the Copyright Office was informed of the sales of the unmarked toys when registration was made畅Sparkle likewise has not shown that Hasbro was even obligated under the Act to give the Copyright Office this information畅The legislative history of § ４０５ （ a ） suggests that no such obligation exists： “ Since the reasons for the omission have no bearing on the validity of copyright ［ under § ４０５ （ a）（ ２） ］ ， there would be no need for the registration application to refer to them畅” House Report， supra， at １４７， reprinted in １９７６ U畅S畅Code Cong畅＆ Ad畅News at ５７６３畅Finally， this point was not raised in the district court， and we see no reason to permit Sparkle to raise it here for the ６８ 美国知识产权法 first time畅 Turning finally to Sparkle摧 s claim that it should have been recognized as an innocent infringer under § ４０５ （ b） ， we think the record did not contain sufficient information for the district judge to have decided this issue， and he properly declined to do so畅 However， it should be promptly dealt with， either on an application by Hasbro for a permanent injunction or on one by Sparkle for a declaration of its rights畅 Affirmed畅 １畅根据 １９７６ 年美国版权法， 如果作 者在公 开出 版发行 作品 时忽略了版权标记， 有没有办法对此进行补救？ ２畅版权标记的忽略 是故 意 还是 过失 的 对于 作 者 之版 权 有无 影响？ 第五 节 版权 保护 的消 极条 件 不符合前几节所述的原创性、 得到版权 保护。 语， 如名字、 体而 定性等积极条件的作品不能 ， 不 受版 权 保 护 的 作品 有： 单 词和 短 衔、 标 语 等； 想 法、 计 划、 办 法、 系 统 或 者 装 置； 空白表格， 例如时间卡、 账簿、 日记本等； 不包含任何原创 性信息的作品， 如标准日 、 高 表； 字样， 如打字机字样 等等。 另外， １９７６ 年美国版权法第 １０５ 条明确规定： “ 联邦 政府的 作品在本法下不受版权保护， 但是联邦政府可以接受及持有因 第一编 让、 赠与或者以其他 方式 移 而来的 版权。” 联邦政府的作品就是指联邦政府 作 ６９ 美 国 版 权法 据第 １０１ 条， 所 员以及雇员为履行公务而创 成的作品。 一些国家对内 容不 道 德的 作 品 （ 例 如 淫秽 作 品） 不 授 予版 权保护。 但是， 据美国版权法， 只要作品符合原创性、 等要求， 均可以获得版权保护， 内容道德与 定性 并不是判断作品能 得 到 版 权 保 护 的 一 个 标 准。 Mitchell Bros畅v畅 Cinema Adult Theater 对此作出了详细论述。 案 例 10 Mitchell Bros．v． Cinema Adult Theater ６０４ F畅２d ８５２ １９７９ This is a copyright infringement suit， arising under the now唱 superseded Copyright Act of １９０９畅But it is more than the usual commercial contest between copyright holder and alleged infringer畅 The infringers asserted as an affirmative defense that the copyrighted material a movie was obscene， and that， therefore， under the equitable rubric of “ unclean hands ” plaintiffs were barred from relief畅After viewing the film the court found it obscene， adopted the unclean hands rationale， and denied relief to the copyright owners畅 Review of this holding requires us to consider the constitutional limits upon the power granted to Congress to issue copyrights， the manner in which Congress has chosen to exercise that power， and ７０ 美国知识产权法 the applicability of the unclean hands doctrine畅 I．The statutory language The statutory provision that controls in this case reads： “ The works for which copyright may be secured under this title shall include all the writings of an author畅” Motion pictures are unquestionably “ writings” under the Copyright Act畅 The district court did not base its decision on standards found within the Act， which it described as “ silent as to works which are subject to registration and copyright畅” The Act is not “ silent畅” Rather ， the statutory language “ all the writings of an author ” is facially all唱 inclusive， within itself admitting of no exceptions畅There is not even a hint in the language of s ４ that the obscene nature of a work renders it any less a copyrightable “ writing畅” There is no other statutory language from which it can be inferred that Congress intended that obscene materials could not be copyrighted畅 Moreover， there is good reason not to read an implied exception for obscenity into the copyright statutes畅 The history of content唱 based restrictions on copyrights， trademarks， and patents suggests that the absence of such limitations in the Copyright Act of １９０９ is the result of an intentional policy choice and not simply an omission畅 From the first copyright act in １７９０， Congress has seldom added restrictions on copyright based on the subject matter of the work， and in each instance has later removed the content restriction畅These congressional additions and subsequent deletions， though certainly not conclusive， suggest that Congress has been hostile to content唱 based restrictions on copyrightability畅 In contrast Congress has placed explicit content唱 related restrictions in the current statutes 第一编 美 国 版 权法 ７１ governing the related areas of trademarks and patents畅The Lanham Act prohibits registration of any trademark that “ consists of or comprises immoral， deceptive， or scandalous matter，” １５ U畅S畅C畅s １０５２ （ a） ， and inventions must be shown to be “ useful” before a patent is issued畅 The legislative history of the １９７６ Act reveals that Congress intends to continue the policy of the １９０９ Act of avoiding content restrictions on copyrightability畅 It appears to us that Congress has concluded that the constitutional purpose of its copyright power， “ to promote the Progress of Science and useful Arts，” is best served by allowing all creative works （ in a copyrightable format） to be accorded copyright protection regardless of subject matter or content， trusting to the public taste to reward creators of useful works and to deny creators of useless works any reward畅It is not surprising that Congress would choose to rely on public acceptability as a measure of a work摧 s worth rather than on the judgment of such public officials as the Register of Copyrights and federal and state judges畅As Justice Holmes said， in rejecting the argument that under an earlier version of the Copyright Act the courts had a duty to pass upon the artistic merits of engravings and prints畅 It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations， outside of the narrowest and most obvious limits畅At the one extreme， some works of genius would be sure to miss appreciation畅Their very novelty would make them repulsive until the public had learned the new language in which their author spoke畅It may be more than doubted， for instance， whether the etchings of ７２ 美国知识产权法 Goya or the paintings of Manet would have been sure of protection when seen for the first time畅At the other end， copyright would be denied to pictures which appealed to a public less educated than the judge畅Yet if they command the interest of any public， they have a commercial value， it would be bold to say that they have not an aesthetic and educational value， and the taste of any public is not to be treated with contempt畅 In our view， the absence copyrightability indicates that of content restrictions Congress has decided that on the constitutional goal of encouraging creativity would not be best served if an author had to concern himself not only with the marketability of his work but also with the judgment of government officials regarding the worth of the work畅 Further， if Congress were receptive to subject matter restrictions on copyright， there are many reasons why it would be unlikely to choose obscenity as one of those restrictions畅 Obscenity law is a concept not adapted for use as a means for ascertaining whether creative works may be copyrighted畅 Obscenity as a constitutional doctrine has developed as an effort to create a tolerable compromise between First Amendment considerations and police power畅It is an awkward， barely acceptable concept that continues to dog our judicial system and society at large畅 The purpose underlying the constitutional grant of power to Congress to protect writings is the promotion of original writings， an invitation to creativity畅This is an expansive purpose with no stated limitations of taste or governmental acceptability畅Such restraints， if imposed， would be antithetical to promotion of creativity畅The pursuit of creativity requires freedom to explore into the gray areas， to the cutting edge， and even beyond畅 ７３ Obscenity， on the other hand， is a limiting doctrine constricting the scope of acceptability of the written word畅 Denial of （ copyright） Registration could work to discourage the development of the Arts畅At least one commentator has argued that denial of registration will increase the circulation of material to the public ， by removing the right to sue for unauthorized publication and dissemination of copied material畅This view， however， ignores the potentially discouraging effect a stated policy of denial on the ground of obscenity would have on authors， publishers and promoters of works inhabiting the hazy border between obscenity and protected speech畅 Society摧 s view of what is moral and immoral continually changes畅Denying copyright protection to works adjudged obscene by the standards of one era would frequently result in lack of copyright protection （ and thus lack of financial incentive to create） for works that later generations might consider to be not only non唱 obscene but even of great literary merit畅 Furthermore， creative activity does not， in itself， result in effective expression畅Modes of expression must be disseminated in order to reach an audience or readership畅 This requires physical effort， and investment in tangible goods and services is necessary to distribute the various forms of expression畅Effective dissemination of creative work costs money畅 All distribution of expression would not cease in the absence of copyright畅An author or other person with beneficent motives might pay for the distribution， at little or no cost to the recipient畅This sort of largesse is routinely inflicted on the public during political campaigns畅An author also might be able to earn some money by ７４ 美国知识产权法 selling quickly before pirates could market their copies畅However， the large amounts of capital presently invested in disseminating information and thought in newspapers， magazines， books， movies， and other forms of copyrightable material would flow elsewhere if there were no property right to protect the value of these investments畅 The Supreme Court has implied a “ right to hear ” in the first amendment畅In essence， this is the right to reach an audience or readership畅The economic basis of copyright facilitates exercise of this right by providing the financial wherewithal for its exercise畅 Further， Congress in not enacting an obscenity exception to copyrightability avoids substantial practical difficulties and delicate First Amendment issues畅 Since what is obscene in one local community may be non唱 obscene protected speech in another， and the copyright statute does not in other respects vary in its applicability from locality to locality， Congress in enacting an obscenity exception would create the dilemma of choosing between using community standards that would （ arguably unconstitutionally ） fragment the uniform national standards of the copyright system and venturing into the uncharted waters of a national obscenity standard畅 II．Constitutionality of the copyright statute The conclusion that the １９０９ Act was all唱 inclusive and did not provide an exception for obscenity does not end our inquiry， however畅 We must consider whether the statute， in allowing copyright of obscene material， was constitutional and whether despite congressional intent the courts should take it upon themselves to permit the defense of obscenity in copyright infringement cases畅 第一编 美 国 版 权法 ７５ We first turn to the question of constitutionality畅 The Copyright and Patent Clause of the Constitution provides that “ The Congress shall have power畅 畅畅to promote the progress of science and useful arts， by securing for limited times to authors and Inventors the exclusive Right to their respective Writings and discoveries畅畅 畅畅” The words of the copyright clause of the constitution do not require that Writings shall promote science or useful arts： they require that Congress shall promote those ends畅It could well be argued that by passing general laws to protect all works， Congress better fulfills its designated ends than it would by denying protection to all books the contents of which were open to real or imagined objection畅畅畅畅 Within the limits of the constitutional grant， the Congress may， of course， implement the stated purpose of the Framers by selecting the policy which in its judgment best effectuates the constitutional aim畅This is but a corollary to the grant to Congress of any Article I power畅 Judging by this standard， it is obvious that although Congress could require that each copyrighted work be shown to promote the useful arts （ as it has with patents） ， it need not do so畅As discussed in the previous section， Congress could reasonably conclude that the best way to promote creativity is not to impose any governmental restrictions on the subject matter of copyrightable works畅By making this choice Congress removes the chilling effect of governmental judgments on potential authors and avoids the strong possibility that governmental officials （ including judges） will err in separating the useful from the non唱 useful畅Moreover， unlike patents， the grant of a copyright to a non唱 useful work impedes the progress of the sciences ７６ 美国知识产权法 and the useful arts only very slightly， if at all， for the possessor of a copyright does not have any right to block further dissemination or use of the ideas contained in his works畅 The all唱 inclusive nature of the １９０９ Act reflects the policy judgment that encouraging the production of wheat also requires the protection of a good deal of chaff畅We cannot say this judgment was so unreasonable as to exceed congressional power畅We conclude that the protection of all writings， without regard to their content， is a constitutionally permissible means of promoting science and the useful arts畅 III畅 Judicially唱 created defenses to infringement actions involving immoral or obscene works畅 Assuming for the moment that the equitable doctrine of unclean hands has any field of application in this case， it should not be used as a conduit for asserting obscenity as a limit upon copyright protection畅Creating a defense of obscenity in the name of unclean hands or through any other vehicle adds a defense not authorized by Congress that may， as discussed above， actually frustrate the congressional purpose underlying an all唱 inclusive copyright statute畅 It will discourage creativity by freighting it with a requirement of judicial approval畅Requiring authors of controversial， unpopular， or new material to go through judicial proceedings to validate the content of their writings is antithetical to the aim of copyrights畅If the copyright holder cannot obtain financial protection for his work because of actual or possible judicial objections to the subject matter， the pro唱 creativity purpose of the copyright laws will be undercut畅 The Supreme Court and this court have held that equitable 第一编 美 国 版 权法 ７７ doctrines should not be applied where their application will defeat the purpose of a statute畅 Furthermore， the need for an additional check on obscenity is not apparent畅 Most if not all states have statutes regulating the dissemination of obscene materials， and there is an array of federal statutes dealing with this subject， as well畅See note １６ Supra畅As Professor Chafee concluded， the difficulty inherent in formulating a workable obscenity defense to copyright is sufficient reason not to allow such a defense unless the other criminal and civil statutes dealing with the obscenity problem are shown to be plainly ineffective： Sometimes the legislature has expressly entrusted questions of obscenity to the courts， as in criminal statutes， and then judges have to do the best they can， but the results have been quite erratic畅This should be a warning against rushing into new obscenity jobs which no legislature has told them to undertake畅 The question of how to deal with the relationship between copyrights and obscenity is not best suited for case唱 by唱 case judicial resolution but is instead most appropriately resolved by legislatures畅 Congress has not chosen to refuse copyrights on obscene materials， and we should be cautious in overriding the legislative judgment on this issue畅 Apart from the question whether denying copyright protection to obscene works will， on balance， produce more or less creation and dissemination of obscenity， there is， of course， a separate issue of the chilling effect upon authors of new or controversial material that is within the bounds of protected speech but， in the eye of some one or more viewers， arguable obscene畅 ７８ 美国知识产权法 Finally， permitting obscenity as a defense would introduce an unmanageable array of issues into routine copyright infringement actions畅 For reasons that we have set out， obscenity is not an appropriate defense in an infringement action， whether piggybacked on the unclean hands rubric or introduced in some other manner畅But even if obscenity were not objectionable as a defense， the unclean hands doctrine could not properly be used as the vehicle for that defense畅 In the present case the copyright holders摧actions are not inconsistent with any policy of the copyright laws畅The infringers摧 attempt to immunize their illegal acts by wrapping themselves in the mantle of a “ public injury” caused by plaintiffs is antithetical to the purpose of these laws畅 The effort cannot be sustained畅 In an appropriate case a misuse of the copyright statute that in some way subverts the purpose of the statute the promotion of originality might constitute a bar to judicial relief畅 This is not such a case畅 The unclean hands doctrine was not applicable畅 REVERSED and REMANDED畅 １畅根据本案法官 裁决， 版权 法 的立 法 本意 就 没 有禁 止 淫秽 作品得到版权保护， 其依据是什么？ 商标法对此有无不同规定？ ２畅淫秽作品得到 版权 保 护是 否违 反了 美国 宪 法中 的 “ 版权 和专利条款” ， 是否未能促进科学和技术的进步？ ３畅衡平法的 “ 不洁之手” 原则能否适用于本案？ 第一编 美 国 版 权法 ７９ 案 例 11 Schnapper v．Foley ６６７ F畅２d １０２， １９８１ McGOWAN， Senior Circuit Judge： Appellants M畅 B畅 Schnapper and the Public Affairs Press challenge the arrangements among government agencies and public broadcasters for the filming and dissemination of the television series “ Equal Justice Under Law畅” Although the complaint states numerous legal grounds for relief， appellants摧central contention is that one commissioned by the Government to create a literary or artistic work cannot obtain a copyright in that work畅 The District Court granted defendants摧 motion to dismiss畅 For the reasons appearing below， we affirm畅 畅畅畅畅 畅畅 III The most plausible point of departure for considering appellants摧 claims on the merits lies in their assertion that the copyright laws， both old and new， do not permit the registration of works commissioned by the Government， or the subsequent assignment of copyrights subsisting therein to the Government畅As the series was copyrighted in １９７６ under the old Copyright Act， and appellants seek a broad injunction of future applicability under the new Act， we will decide the fate of appellants摧claims with respect to both the old ８０ 美国知识产权法 and new Copyright Acts畅 The status of works produced pursuant to a Government commission does not present any difficult problems under the new Copyright Act畅 Section １０５ of the new Act， １７ U畅S畅C畅s １０５ （ Supp畅I １９７７ ） states in its entirety： “ Copyright protection under this title is not available for any work of the United States Government， but the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment， bequest， or otherwise畅” The statute defines a “ work of the United States ” as one “ prepared by畅 畅畅an employee of the United States Government as part of that person摧 s official duties畅” It is readily observable， therefore， that the language of the new Copyright Act does not prohibit copyright protection for federally commissioned works畅 Whatever doubt there may be left after reading the statute is wholly dispelled by the legislative history， which states plainly that these commissioned works may be eligible for copyright protection： The bill deliberately avoids making any sort of outright， unqualified prohibition against copyright in works prepared under Government contract or grant畅 There may well be cases where it would be in the public interest to deny copyright畅畅畅畅 However， there are almost certainly many other cases where the denial of copyright protection would be unfair or would hamper the production and publication of important works畅 H畅R畅 Rep畅 also states that the government agency may withhold copyright protection from the author if it would be in the public interest to do so or if the commission is merely an alternative to producing the work in唱 house畅 In this case， however ， the 第一编 美 国 版 权法 ８１ government did not choose to withhold copyright protection from WQED畅 Without laying down a broad rule， we are reluctant to cabin the discretion of government agencies to arrange ownership and publication rights with private contractors absent some reasonable showing of a congressional desire to do so畅The legislative history noted above indicates a desire to vest the government with some flexibility in making these arrangements畅The House Report provides no strong indicia of congressional intent that would lead this court to void the alleged assignment provision畅 It states， “ The effect of section １０５ is intended to place all works of the United States Government 畅 畅畅in the public domain畅” Works of the United States were defined by section １０１ to comprise works created by Government employees carrying out their official duties畅 Section １０５， therefore， is not necessarily subverted by assigning to the Government the copyright in a commissioned work that is neither produced by current or former employees nor related to the official duties of any Government employee， as here畅Had the Government employees been detailed as consultants or employees of WQED， we might more readily find the purported assignment to be a “ subterfuge，” but without any such allegation we simply lack the statutory warrant to void the assignment畅 The １９０９ Act similarly provides no basis on which to deny copyright protection to a work commissioned by the Government or to void an alleged assignment of that work to the Government畅 Section ８ of the superseded Copyright Act states， in relevant part， “ No copyright shall subsist 畅畅畅 in any publication of the United States Government畅” １７ U畅S畅C畅s ８ （１９７０ ） ．The applicability of ８２ 美国知识产权法 that language to commissioned works was an “ ambiguous ” issue， according to Professor Nimmer畅 This court has had occasion to determine the general issue of the scope of the governmental exception of the old Copyright Act畅That case was based upon an action for a declaratory judgment brought by Public Affairs Associates， Inc畅， doing business as Public Affairs Press， an appellant in the instant case， to establish its right to public Admiral Rickover摧 s speeches without the Admiral摧 s permission畅In the course of holding that the speeches of a public official composed on his own time and not written as part of his official duties may be copyrighted by that official， this court read section ８ 畅畅畅to refer to publications commissioned or printed at the cost and direction of the United States畅These would be authorized expositions on matters of governmental interest by governmental authority畅 Appellants contend that this dictum supports their contention that federally commissioned works cannot be copyrighted under section ８畅We think that the dictum is too vague to provide much guidance畅A commissioned work， such as “ Equal Justice Under Law，” is not an exposition “ by government authority，” but by the creator畅Therefore， it may be that the court摧 s use of the word “ commissioned ” comprised only works privately printed or reproduced but created by government employees as part of their official duties or intended as statements of government policy畅 Nor is the case of DuPuy v畅Post Telegram Co畅， ２１０ F畅８８３ （３ d Cir畅１９１４） ， dispositive畅While the Third Circuit held that no copyright could be had in a work （ １ ） commissioned by the Government and （２） published as an official Government document， the court摧 s ratio decidendi depended solely upon the latter 第一编 ８３ 美 国 版 权法 quality： “ This bulletin was a public official document， one which by its public character was by statute exempted from copyright appropriation畅” This has also been the consistent position of the Register of Copyrights， who is charged with administering the copyright laws through the Copyright Office畅That agency had consistently accepted for registration federally commissioned works under the previous Copyright Act畅 See Berger， “ Copyright in Government Publications，” in Copyright Law Revision： Studies Prepared for the Subcommittee on Patents， Trademarks， and Copyrights of the Senate Judiciary Committee， ８６th Cong畅， ２d Sess畅３３ －３４ （ Comm畅Print １９６１ ） ． The Esquire court also stated that the Register摧 s interpretation of the copyright laws， if consistently applied， is entitled to considerable weight畅 We also conclude that the alleged assignment to the Government was authorized under section ８畅The provision of section １０５ of the new law permitting the Government to receive a copyright by assignment was a confirmation of the existing rule announced in Folsom v畅Marsh， ９ F畅Cas畅３４２ （ C畅C畅D畅Mass畅１８４１ ） ．Justice Story， sitting as a Circuit Justice， stated that when Congress acquired letters written by President Washington， it did not thereby place the letters in the public domain畅He explained that “ It might be contended， with as much force and correctness， that every private person had an equal right to use any other national property at his pleasure， such as the arms， the ammunition， the ships， or the custom houses， belonging to the government畅” The rule of Folsom， its reaffirmation in the new law， and the practice of the Copyright Office in permitting copyright to exist after assignment in these ８４ 美国知识产权法 circumstances， see Berger， supra， at ３４， provide ample justification for our refusal to hold that section ８ prohibited the assignment of a copyright to the government畅 Informing our consideration of the statutory issues is the contention advanced by WQED that limiting the right of public broadcasters to obtain copyrights in works produced with government funds would “ cripple ” public television， WQED Br畅at １０畅 The federal government spends millions of dollars to finance public television programming， and we cannot understand how， were we to void the copyright in “ Equal Justice Under Law，” any program produced with federal funds could obtain a copyright畅It is idle to state that the harm lies not in federal financing， but in federal “ control” of content畅Presumably a federal grant to televise Hamlet would be deemed an unlawful exercise of control over content if the Government indicated that it would not be satisfied by a production of Macbeth畅If “ control” is the Government摧 s desire to get what it paid for， as here， we conceive that nothing but an unconditional grant to public broadcasting would pass the test of “ control畅” The public broadcasters seek copyright protection for federally commissioned works， they inform us， chiefly as a matter of economic self唱 interest， if not survival畅We are told that the unions with which the broadcasters must negotiate would demand higher rates for production if the stations could not control subsequent commercial， and thus revenue唱 producing， uses畅 We are further informed that foreign and other sales of public television programs constitute a significant source of revenue to the producing stations畅 We infer that the loss of this revenue would lead to requests for more government money， fewer original programs， or both畅 第一编 美 国 版 权法 ８５ It is against this backdrop that we evaluate appellants摧claims that if the old or new copyright acts purport to allow registration for copyright of federally commissioned works， or its assignment to the government， those acts were beyond the power of the Congress to enact into law畅The constitutional grant of power to Congress to pass legislation with respect to copyrights is contained in the Copyright Clause， art畅I， sec畅８： “ To promote the Progress of Science and the useful Arts， by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries畅” The appellants摧argument， although not wholly clear on the point， is that the purposive language of the Copyright Clause constitutes a substantive limit on Congress摧 s legislative power， and that it only refers to the need to provide economic incentives in the form of royalties畅 There are a number of problems with appellants摧position less obvious than their failure to cite any relevant authority for either proposition畅Professor Nimmer apparently does not agree with the appellants摧interpretation of the introductory phrase as a limitation upon congressional power： “ The introductory phrase， rather than constituting a limitation on Congressional authority， has for the most part tended to expand such authority畅” The Fifth Circuit， in holding that a copyright may subsist in a work judged obscene， has， we think， stated the proper scope for judicial review of challenges to congressional power based upon the supposed limits of the Copyright Clause： Congress has authority to make any law that is “ necessary and proper” for the execution of its enumerated Article I powers， 畅畅 畅 including its copyright power， and the courts sicrole in judging ８６ 美国知识产权法 whether Congress has exceeded its Article I powers is limited畅The courts will not find that Congress has exceeded its power so long as the means adopted by Congress for achieving a constitutional end are “ appropriate ” and “ plainly adapted ” to achieving that end畅 McCulloch v畅 Maryland 畅 畅畅畅 It is by the lenient standard of McCulloch that we must judge whether Congress has exceeded its constitutional powers in enacting an all唱 inclusive copyright statute畅 Mitchell Brothers Film Group v畅Cinema Adult Theater， ６０４ F畅２ d ８５２， ８６０畅Having stated a standard for judicial review that we today endorse， the Fifth Circuit applied that standard to conclude that Congress need not “ require that each copyrighted work be shown to promote the useful arts 畅畅畅 畅” That being so， we cannot accept appellants摧argument that the introductory language of the Copyright Clause constitutes a limit on congressional power畅Furthermore， as our earlier discussion implies， we would have serious difficulty reaching the conclusion that prohibiting copyrights in public television programs produced with government support would do much to advance the useful arts畅 We have come to the conclusion that neither the old nor the new copyright law proscribes， the registration of works commissioned by the Government for copyright， and that Congress possessed the power to enact these laws畅In addition， when there is no allegation that the Government and the contractor have attempted to subvert the copyright laws through an assignment subsequent to registration of a commissioned work， we find that the copyright laws， in their present as well as former incarnation， will permit such an assignment畅 Therefore we agree with the District Court that， with respect to the copyright laws， the appellants have failed to state a claim for which 第一编 美 国 版 权法 ８７ relief may be granted against the AO， WQED， PBS， and the Register of Copyrights畅 Since the complaint fails to allege that WETA took any action with respect to the registration or assignment of the copyright in “ Equal Justice Under Law，” it has， on this point， also failed as a matter of law against WETA畅 １畅政府官员或者雇员创作的作品何时不被视为政府作品？ ２畅政府作品不能够得到版权保护的政策考虑是什么？ ３畅如独立合同方 根据 和其 和 政 府签 订 的合 同 而创 作， 其作 品是否能够得到版权， 以及两者分别有着什么样的政策考虑？ 第二 章 作 品 的类 型 第一 节 一般 形式 据美国 １９７６ 年版权 法第 １０２ 条 规定， 可以 得到 保护 的版 权客体 型包括： （ １） 文字 作品； （ ２） （ ３） 戏 剧 作 品， 包 括 所 配 词； （５ ） 绘画、 刻 印 和 雕 塑 作 品； （７ ） 乐； 乐 作品， 包括所 配歌 （ ４ ） 哑剧 和 舞 蹈 作 品； （ ６） 电 影 和 其 他 作 品； 作品； （８） 建筑作品。 美国版权法几百年发展的 的 史。 其中， 地 、 史就是版权保护的客体不断 展 表、 书籍 于 １７９０ 年得 到 保 护； 印 刷字 体于 １８０２ 年得到保护； 乐作品于 １８３１ 年得到保护； 摄影、 底 于 １８６５ 年 得 到 保 护； 绘 画、 素 描、 彩 色 石 印 １８７９ 年 得 到 保护； 电 影 于 １９１２ 年 得到 保 护； 画和 雕塑于 品 于 １９７１ 年得到保护； 计算机软件于 １９８０ 年得 到保 护； 建筑 作品 于 １９９０ 年得到保护。 需 要 指 出 的是 ， 八种 型 的客 体 并 未 穷 尽 所 有 的 可 能 性 。 一 些 没 有 被 包 括 进 来的作品、 包括随着 原创 性 、 只要 据 美 国 １ ９７６ 年 版 权法 １０２ 条 所 列 举的 学 技术 发 展 而 出 现的 的 作 品种 ， 定性 等一 定条件， 都 有可 能被纳 入受保 护的范围。 对于 １０２ 条列举的八种 型的作品， 版权法 １０１ 条对 其中的 五种进行了界定： 所 “ 文 学作 品” 是 指 除 作品 以 外的， 用 文字、 数字 第一编 或其他语 何， 、 数字符号或标记表达的作品。 无论其 体可 以 为 书 籍、 期 刊、 原 稿、 品、 或卡 连 接而 成 的 体的性质如 品、 胶 、 。 “ 电影 和其他 影 所 ８９ 美 国 版 权法 作品 ” 是 指由 一系 列有 作 品， 连 同 其 一 起 放能 够 联的 达出 的 印 象。 “ 绘画、 刻印和雕 塑 作品 ” 包 括 平面 和 立 体 的 美术 作 所 品、 刻印艺术作 品、 实 用 艺 术 品、 摄 影 作 品、 印 刷 和 复 、 地球仪、 品、 地 划在内的技术 纸。 表、 技术绘 、 艺术 和模型和包括建筑规 艺美术作品也属于这一 作品， 但是 指其外形， 而非其机械和实用方面。 按本条所下定义， 实用物品 的设计， 的实用 当其 有的绘画、 能相分离并可单 形或者雕塑的特征， 能够与物品 在时， 才可被视为绘画、 刻印或雕 塑作品。 “ 品” 是除伴随电影或其他 作品 的各 种 的 由现在已知的或以后发展的任何方法加以 过这 物体， 可以被听到、 复 以外 定的物体。 通 或用其他方式 ， 无论是 接地或借助于机器或装置。 “ 建筑作品” 是指体现于任何可触及 的物理 表达 筑设计， 包括建筑物、 建筑规划或者 纸。 建筑作品包括建筑物 的整体外观形式， 以及空间与各种设计元素的 包括个别的标准特征。 质上 的建 列组合， 但是不 ９０ 美国知识产权法 案 例 12 Warner Bros．Inc．v． American Broadcasting Companies， Inc． ７２０ F畅２d ２３１， １９８３ NEWMAN， Circuit Judge： Plaintiffs own the copyrights in various works embodying the character Superman and have thereby acquired copyright protection for the character itself畅 In １９７８ ， building on previous Superman works， plaintiff Warner Bros畅， Inc畅 released a motion picture entitled “ Superman， The Movie” （ Superman I ） and more recently two sequels畅 In Superman I and in previous Superman works， Superman is portrayed as a brave， fearless hero， endowed with superhuman powers畅His strength， speed， vision， and hearing far exceed the physical capabilities of mere mortals畅 The substantial commercial success of Superman I and the attendant publicity prompted many requests for licenses permitting use of the Superman character in connection with the merchandising of toys， greeting cards， apparel， and other products畅 It also led ABC to seek a license for production of a television series about “ Superboy” based on the early adventures of Superman畅Plaintiffs， who were planning to make their own sequels and derivative works， refused ABC permission to proceed with its proposed project畅 Unable to obtain this license， ABC assigned to Cannell， the 第一编 美 国 版 权法 ９１ principal of the third唱 party defendant production company， the task of creating a “ pilot” program for a TV series involving a superhero畅 Cannell produced a program， and subsequently a weekly series， entitled “ The Greatest American Hero” （ Hero）， which he described as being about “ what happens when you ［ the average person ］ become Superman畅” Hero摧 s protagonist， Ralph Hinkley， was given attributes intended to identify him as an “ ordinary guy畅” Hinkley is portrayed as a young high school teacher attempting to cope with a recent divorce， a dispute over the custody of his son， and the strain that his domestic problems place upon his work and his relationship with his girlfriend畅 Although Hinkley is attractive， his physical appearance is not imposing： he is of medium height with a slight build and curly， somewhat unkempt， blond hair畅 The Hero series contains several visual effects and lines that inevitably call Superman to mind， sometimes by way of brief imitation， sometimes by mention of Superman or another character from the Superman works， and sometimes by humorous parodying or ironic twisting of well唱 known Superman phrases畅In the three weeks before the first episode of Hero was televised， ABC conducted one of the most extensive promotional campaigns in the network摧 s history， airing nearly ２００ commercials， or “promos，” each running five， ten， twenty， or thirty seconds畅Like the pilot episode， the “ promos” show Hinkley displaying some Superman唱 like abilities in a decidedly unSuperman唱 like way畅畅畅畅 The complaint alleged copyright infringement in violation of section １０１ of the Copyright Act of １９７６， unfair competition in violation of the common law of New York， and impairment of the value of plaintiffs摧 trademarks and indicia associated with the ９２ 美国知识产权法 Superman character in violation of New York摧 s “ anti唱 dilution ” statute畅 The basic issues concerning the copyright infringement claim are whether the Hero and Superman works are substantially similar so as to support an inference of copying and whether the lack of substantial similarity is so clear as to fall outside the range of reasonably disputed fact questions requiring resolution by a jury畅The similarity to be assessed must concern the expression of ideas， not the ideas themselves畅 We have recognized that a court may determine non唱 infringement as a matter of law on a motion for summary judgment， either because the similarity between two works concerns only “ non唱 copyrightable elements of the plaintiff摧 s work，” ， or because no reasonable jury， properly instructed， could find that the two works are substantially similar畅Before assessing the District Court摧 s determination that summary judgment was appropriate in this case， we consider the principles that guide decision in this area畅 It is a fundamental objective of the copyright law to foster creativity畅The idea唱 expression dichotomy originated in the case law and is now codified in the statute， １７ U畅S畅C畅 § １０２ （ b） （Supp畅 V １９８１ ）， in an effort to enable courts to adjust the tension between these competing effects of copyright protection畅Though imprecise， it remains a useful analytic tool for separating infringing from non唱 infringing works， especially when the essence of the work sought to be protected is a story and the allegedly infringing work is accused of what Professor Nimmer calls “ comprehensive nonliteral similarity” ， duplicating the “ fundamental essence or structure ” of a work畅 Confronting a claim of that sort， courts have often invoked Learned 第一编 美 国 版 权法 ９３ Hand摧 s “ abstractions” test， or Professor Chaffee摧 s “ pattern” test畅 When， as in this case， the claim concerns infringement of a character， rather than a story， the idea唱 expression distinction has proved to be especially elusive畅 In Nichols， Hand applied his “ abstractions ” test in determining that neither the plot nor the characters of “ Abie摧 s Irish Rose ” were infringed by a similar play called “ The Cohens and the Kellys畅” He noted that no case then decided had found infringement of a character described only by written word， although he recognized the possibility that a literary character could be sufficiently delineated to support a claim of infringement by a second comer畅 Copyrightability of a literary character has on occasion been recognized畅However， there has been no doubt that copyright protection is available for characters portrayed in cartoons， even before Nichols畅 In determining whether a character in a second work infringes a cartoon character， courts have generally considered not only the visual resemblance but also the totality of the characters摧attributes and traits畅 A somewhat paradoxical aspect of infringement disputes， especially pertinent to claims of character infringement， concerns the attention courts give both to similarities and differences in the two works at issue畅 Professor Nimmer categorically asserts as a proposition， “ It is entirely immaterial that in many respects plaintiff摧 s and defendant摧 s works are dissimilar if in other respects similarity as to a substantial element of plaintiff摧 s work can be shown畅” ． Yet Professor Nimmer also recognizes， as a second proposition， that “ a defendant may legitimately avoid infringement by intentionally making sufficient changes in a work which would ９４ 美国知识产权法 otherwise be regarded as substantially similar to that of the plaintiff摧 s” ．The two propositions are not facially inconsistent； the second proposition contemplates a work that would be substantially similar if its author had not made changes from the plaintiff摧 s work畅 Yet in practice the distinction between the two propositions has become somewhat blurred畅 We have observed that “ numerous differences tend to undercut substantial similarity” ．This observation appears to go beyond Professor Nimmer摧 s second proposition by emphasizing the significance of differences that do not necessarily change features of the plaintiff摧 s work， but may be entirely additional畅 To that extent， the observation modifies the first proposition畅 The tension between these two propositions perhaps results from their formulation in the context of literary works and their subsequent application to graphic and three唱 dimensional works畅A story has a linear dimension： it begins， continues， and ends畅 If a defendant copies substantial portions of a plaintiff摧 s sequence of events， he does not escape infringement by adding original episodes somewhere along the line畅A graphic or three唱 dimensional work is created to be perceived as an entirety畅 Significant dissimilarities between two works of this sort inevitably lessen the similarity that would otherwise exist between the total perceptions of the two works畅The graphic rendering of a character has aspects of both the linear， literary mode and the multi唱 dimensional total perception畅What the character thinks， feels， says， and does and the descriptions conveyed by the author through the comments of other characters in the work episodically fill out a viewer摧 s understanding of the character畅At the same time， the visual perception of the character 第一编 美 国 版 权法 ９５ tends to create a dominant impression against which the similarity of a defendant摧 s character may be readily compared， and significant differences readily noted畅 Ultimately， care must be taken to draw the elusive distinction between a substantially similar character that infringes a copyrighted character despite slight differences in appearance， behavior， or traits， and a somewhat similar though non唱 infringing character whose appearance， behavior， or traits， and especially their combination， significantly differ from those of a copyrighted character， even though the second character is reminiscent of the first one畅Stirring one摧 s memory of a copyrighted character is not the same as appearing to be substantially similar to that character， and only the latter is infringement畅 An entirely separate issue of infringement， also posed by this case， concerns what Professor Nimmer calls “ fragmented literal similarity，” duplicating the exact or nearly exact wording of a fragment of the protected work， With respect to such claims， courts have invoked two distinct doctrines畅First， a de minimis rule has been applied， allowing the literal copying of a small and usually insignificant portion of the plaintiff摧 s work畅Second， under the “ fair use” doctrine， codified in １７ U畅S畅C畅 § １０７ （ ２ ） （ Supp畅 V １９８１） ， courts have allowed the taking of words or phrases when adapted for use as commentary or parody畅 The “ parody ” branch of the “ fair use ” doctrine is itself a means of fostering the creativity protected by the copyright law畅It also balances the public interest in the free flow of ideas with the copyright holder摧 s interest in the exclusive use of his work畅 Especially in an era of mass communications， it is to be expected ９６ 美国知识产权法 that phrases and other fragments of expression in a highly successful copyrighted work will become part of the language畅That does not mean they lose all protection in the manner of a trade name that has become generic畅No matter how well known a copyrighted phrase becomes， its author is entitled to guard against its appropriation to promote the sale of commercial products畅That doctrine enabled the proprietors of the Superman copyright to prevent a discount chain from using a television commercial that parodied well唱 known lines associated with Superman畅But an original work of authorship with elements of parody， though undoubtedly created in the hope of commercial success， stands on a different footing from the products of a discount chain畅 Whatever aesthetic appeal such a work may have results from the creativity that the copyright law is designed to promote畅It is decidedly in the interests of creativity， not piracy， to permit authors to take well唱 known phrases and fragments from copyrighted works and add their own contributions of commentary or humor畅After all， any work of sufficient notoriety to be the object of parody has already secured for its proprietor considerable financial benefit畅According that proprietor further protection against parody does little to promote creativity， but it places a substantial inhibition upon the creativity of authors adept at using parody to entertain， inform， or stir public consciousness畅 Applying these principles to this case， we conclude that Chief Judge Motley correctly entered summary judgment for the defendants on the claim of copyright infringement畅 The total perception of the Hinkley character is not substantially similar to that of Superman畅 On the contrary， it is profoundly different畅Superman looks and acts like a brave， proud hero， who 第一编 ９７ 美 国 版 权法 has dedicated his life to combating the forces of evil畅Hinkley looks and acts like a timid， reluctant hero， who accepts his missions grudgingly and prefers to get on with his normal life畅 However， we do not accept defendants摧mode of analysis whereby every skill the two characters share is dismissed as an idea rather than a protected form of expression畅 That approach risks elimination of any copyright protection for a character， unless the allegedly infringing character looks and behaves exactly like the original畅A character is an aggregation of the particular talents and traits his creator selected for him畅That each one may be an idea does not diminish the expressive aspect of the combination畅But just as similarity cannot be rejected by isolating as an idea each characteristic the characters have in common， it cannot be found when the total perception of all the ideas as expressed in each character is fundamentally different畅 An infringement claim would surely be within the range of reasonable jury fact issues if a character strongly resembled Superman but displayed some trait inconsistent with the traditional Superman image畅 If a second comer endowed his character with Superman摧 s general appearance， demeanor， and skills， but portrayed him in the service of the underworld， a jury would have to make the factual determination whether the second character was Superman gone astray or a new addition to the superhero genre畅In this case， however， a reasonable jury could not conclude that Hinkley is substantially similar to the Superman character with only a change of name畅The overall perception of the way Hinkley looks and acts marks him as a different， non唱 infringing character who simply has some of the superhuman traits popularized by the ９８ 美国知识产权法 Superman character and now widely shared within the superhero genre畅 The judgment of the District Court is affirmed畅 １畅原告创造的 “ 超人” 形象是否能够得到版权保护？ ２畅原被告创造的两个形象是否实质性相似？ ３畅人物形象属于思想， 还是表达？ 案 例 13 A．A．Hoehling v． Universal City Studios， Inc． ６１８ F畅２d ９７２， １９８０ IRVING R．KAUFMAN， Chief Judge： A grant of copyright in a published work secures for its author a limited monopoly over the expression it contains畅 The copyright provides a financial incentive to those who would add to the corpus of existing knowledge by creating original works畅Nevertheless， the protection afforded the copyright holder has never extended to history， be it documented fact or explanatory hypothesis畅 The rationale for this doctrine is that the cause of knowledge is best served when history is the common property of all， and each 第一编 ９９ 美 国 版 权法 generation remains free to draw upon the discoveries and insights of the past畅Accordingly， the scope of copyright in historical accounts is narrow indeed， embracing no more than the author摧 s original expression of particular facts and theories already in the public domain畅 As the case before us illustrates， absent wholesale usurpation of another摧 s expression， claims of copyright infringement where works of history are at issue are rarely successful畅 This litigation arises from three separate accounts of the triumphant introduction， last voyage， and tragic destruction of the Hindenburg， the colossal dirigible constructed in Germany during Hitler摧 s reign畅 The final pages of the airship摧 s story marked the beginning of a series of journalistic， historical， and literary accounts devoted to the Hindenburg and its fate畅Indeed， weeks of testimony by a plethora of witnesses before the official investigative panels provided fertile source material for would唱 be authors畅 Appellant A畅A畅 Hoehling published “ Who Destroyed the Hindenburg ？，” a full唱 length book based on his exhaustive research in １９６２畅Mr畅Hoehling studied the investigative reports， consulted previously published articles and books， and conducted interviews with survivors of the crash as well as others who possessed information about the Hindenburg畅His book is presented as a factual account， written in an objective， reportorial style畅 Ten years later appellee Michael MacDonald Mooney published his book， The Hindenburg畅 Mooney摧 s endeavor might be characterized as more literary than historical in its attempt to weave a number of symbolic themes through the actual events surrounding the tragedy畅His dominant theme contrasts the natural beauty of the month of May， when the disaster occurred， with the cold， deliberate １００ 美国知识产权法 progress of “ technology畅” The May theme is expressed not simply by the season， but also by the character of Spehl， portrayed as a sensitive artisan with needle and thread畅 The Hindenburg， in contrast， is the symbol of technology， as are its German creators and the Reich itself畅 Mooney acknowledges， in this case， that he consulted Hoehling摧 s book， and that he relied on it for some details畅He asserts that he first discovered the “ Spehl唱 as唱 saboteur” theory when he read Titler摧 s Wings of Mystery畅Indeed， Titler concludes that Spehl was the saboteur， for essentially the reasons stated by Hoehling畅Mooney also claims to have studied the complete National Archives and New York Times files concerning the Hindenburg， as well as all previously published material畅Moreover， he traveled to Germany， visited Spehl摧 s birthplace， and conducted a number of interviews with survivors畅 After Mooney prepared an outline of his anticipated book， his publisher succeeded in negotiations to sell the motion picture rights to appellee Universal City Studios畅Universal then commissioned a screen story by writers Levinson and Link， best known for their television series， Columbo， in which a somewhat disheveled， but wise detective unravels artfully conceived murder mysteries畅In their screen story， Levinson and Link created a Columbo唱 like character who endeavored to identify the saboteur on board the Hindenburg畅 Director Robert Wise， however， was not satisfied with this version， and called upon Nelson Gidding to write a final screenplay畅 Gidding， it will be recalled， had engaged in preliminary work on a film about the Hindenburg almost twenty years earlier畅 Upon learning of Universal摧 s plans to release the film， Hoehling 第一编 美 国 版 权法 １ ０１ instituted this action against Universal for copyright infringement and common law unfair competition in the district court for the District of Columbia in October １９７５畅 Hoehling摧 s principal claim is that both Mooney and Universal copied the essential plot of his book i畅e畅， Eric Spehl， influenced by his girlfriend， sabotaged the Hindenburg by placing a crude bomb in Gas Cell ４畅Appellees argue that Hoehling摧 s plot is an “ idea，” and ideas are not copyrightable as a matter of law畅Hoehling， however， correctly rejoins that while ideas themselves are not subject to copyright， his “ expression” of his idea is copyrightable畅Moreover， Hoehling asserts that， in both these cases， the line between “ ideas” and “ expression” is drawn， in the first instance， by the fact finder畅 Sheldon and Detective Comics， however， dealt with works of fiction， where the distinction between an idea and its expression is especially elusive畅 But， where， as here， the idea at issue is an interpretation of an historical event， our cases hold that such interpretations are not copyrightable as a matter of law畅In Rosemont Enterprises， Inc畅v畅Random House， we held that the defendant摧 s biography of Howard Hughes did not infringe an earlier biography of the reclusive alleged billionaire畅Although the plots of the two works were necessarily similar， there could be no infringement because of the “ public benefit in encouraging the development of historical and biographical works and their public distribution畅” To avoid a chilling effect on authors who contemplate tackling an historical issue or event， broad latitude must be granted to subsequent authors who make use of historical subject matter， including theories or plots畅 Learned Hand counseled in Myers v畅Mail ＆ E xpress Co畅， “ there cannot be any such thing as copyright in the order of presentation of １０２ 美国知识产权法 the facts， nor， indeed， in their selection畅” In the instant case， the hypothesis that Eric Spehl destroyed the Hindenburg is based entirely on the interpretation of historical facts， including Spehl摧 s life， his girlfriend摧 s anti唱 Nazi connections， the explosion摧 s origin in Gas Cell ４ ， Spehl摧 s duty station， discovery of a dry唱 cell battery among the wreckage， and rumors about Spehl摧 s involvement dating from a １９３８ Gestapo investigation畅 Such an historical interpretation， whether or not it originated with Mr畅 Hoehling， is not protected by his copyright and can be freely used by subsequent authors畅 The same reasoning governs Hoehling摧 s claim that a number of specific facts， ascertained through his personal research， were copied by appellees畅The cases in this circuit， however ， make clear that factual information is in the public domain畅Each appellee had the right to “ avail himself of the facts contained” in Hoehling摧 s book and to “ use such information， whether correct or incorrect， in his own literary work畅” The remainder of Hoehling摧 s claimed similarities relate to random duplications of phrases and sequences of events畅 For example， all three works contain a scene in a German beer hall， in which the airship摧 s crew engages in revelry prior to the voyage畅 Other claimed similarities concern common German greetings of the period， such as “ Heil Hitler ，” or songs， such as the German National anthem畅 These elements， however， are merely scenes a faire， that is， “ incidents， characters or settings which are as a practical matter indispensable， or at least standard， in the treatment of a given topic畅” Because it is virtually impossible to write about a particular historical era or fictional theme without employing certain 第一编 美 国 版 权法 １ ０３ “ stock” or standard literary devices， we have held that scenes a faire are not copyrightable as a matter of law畅 All of Hoehling摧 s allegations of copying， therefore， encompass material that is non唱 copyrightable as a matter of law， rendering summary judgment entirely appropriate畅We are aware， however， that in distinguishing between themes， facts， and scenes a faire on the one hand， and copyrightable expression on the other， courts may lose sight of the forest for the trees畅By factoring out similarities based on non唱 copyrightable elements， a court runs the risk of overlooking wholesale usurpation of a prior author摧 s expression畅A verbatim reproduction of another work， of course， even in the realm of nonfiction， is actionable as copyright infringement畅 Thus， in granting or reviewing a grant of summary judgment for defendants， courts should assure themselves that the works before them are not virtually identical畅In this case， it is clear that all three authors relate the story of the Hindenburg differently畅 In works devoted to historical subjects， it is our view that a second author may make significant use of prior work， so long as he does not bodily appropriate the expression of another畅This principle is justified by the fundamental policy undergirding the copyright laws the encouragement of contributions to recorded knowledge畅 The “ financial reward guaranteed to the copyright holder is but an incident of this general objective， rather than an end in itself畅” Knowledge is expanded as well by granting new authors of historical works a relatively free hand to build upon the work of their predecessors畅 The judgment of the district court is affirmed畅 １０４ 美国知识产权法 １畅版权法对历史题材的文学作品的保护有何特殊性？ ２畅如果是一部以 卡通 角色 为 基 础创 作 的文 学 作品， 其 所获 得的版权保护和历史题材的文学作品相比有何不同？ 案 例 14 Andrew Leicester v． Warner Brothers ２３２ F畅 ３d １２１２ ， ２０００ RYMER， Circuit Judge： In １９９４， the ８０１ Tower in downtown Los Angeles and four towers that form its streetwall on the south side of the building became the Second Bank of Gotham in Batman Forever畅 Andrew Leicester， an artist known for large scale public art， claims copyright protection for these towers along with other artistic works he created in a courtyard space called the Zanja Madre畅He registered the whole of Zanja Madre as a “sculptural work” and sued Warner Brothers for infringement畅Following a bench trial， the district court found that the streetwall towers （ even though they have artistic elements ） are part of the “ architectural work畅” As such， the court concluded， pictures taken of the streetwall towers along with the ８０１ Tower are 第一编 美 国 版 权法 １ ０５ not infringing pursuant to the exemption for pictorial representations of buildings in the Architectural Works Copyright Protection Act of １９９０畅１７ U畅S畅C畅 § １２０ （ a） ．Leicester argues that the court erred by refusing to consider the Zanja Madre as a unitary sculptural work， and by construing the １９９０ Act so as to eliminate separate protection for sculptural works attached to buildings畅We disagree that the court erred in either respect （ or in any other） ， and affirm畅 In １９８８， R ＆ T hired TAC International （ TAC ） to design the building， which was to be called the ８０１ Tower畅John Hayes was the main architect for the project畅R ＆ T chose to provide its own artistic development， and commissioned Andrew Leicester in August １９８９ to carry it out within a courtyard space on the south side of the building畅 In July １９９４， Warner Bros畅obtained written permission from R ＆ T to use the premises of the ８０１ Tower for filming Batman Forever畅Leicester and the architect were not consulted， nor was the Zanja Madre mentioned in the agreement畅The ８０１ Tower and the two lantern towers and two smoke towers in the streetwall appear briefly as background in a few scenes in the movie畅The building is the Gotham City bank where nefarious deeds occur before Batman comes to the rescue畅The balance of Zanja Madre唱 the vampire tower and the courtyard portion唱 do not appear in the film畅 In addition， Warner Bros畅built a miniature model of the ８０１ Tower that included a miniature of the Zanja Madre for a special effects shot， and the two lantern towers and two smoke towers along with the building were shown in the videotape taken from the movie as well as in some promotional items畅 Leicester registered the Zanja Madre for copyright as a １０６ 美国知识产权法 sculptural work in １９９５ and brought this suit against Warner Bros畅 for copyright infringement， unfair competition， and interference with prospective business relations畅 Leicester argues that the Zanja Madre is a unitary sculptural work that the district court effectively mutilated by severing four of its eight towers and treating them as part of the building畅He points out that any three唱 dimensional， non唱 utilitarian， original， creative work qualifies as a “ sculptural work，” relying on Kamar Int摧 l， Inc畅 v畅Russ Berrie ＆ Company， ６５７ F畅２d １０５９， １０６１ （９th Cir畅１９８１） ． The Zanja Madre is obviously three唱 dimensional， original and creative， and in his view， it is “ non唱 utilitarian ” because it is not humanly habitable， it is not a building， and it can摧 t become “ functional” simply because it is physically or aesthetically oriented to the ８０１ Tower畅In any event， Leicester contends， the towers are conceptually separate from the building and are protectable as a sculptural work after the １９９０ Act as they were before畅 Title １７ U畅S畅C畅 § １０２ （ a ） defines eight categories of original works of authorship that are afforded copyright protection畅 Section １０２ （ a ） （８ ） protects “ architectural works ” and § １０２ （ a） （５） protects “ pictorial， graphic， and sculptural works” （ PGS works） ．Classification of the Zanja Madre as an architectural work is critical because unlike PGS works， architectural works are afforded a more limited copyright protection： The copyright in an architectural work that has been constructed does not include the right to prevent the making， distributing， or public display of pictures， paintings， photographs， or other pictorial representations of the work， if the building in which the work is embodied is located in or ordinarily visible from a public place畅 第一编 １ ０７ 美 国 版 权法 Prior to １９９０， the Copyright Act afforded no protection to architectural works畅 Buildings were considered to be “ useful articles，” not protected by the Copyright Act畅As defined by the Copyright Act， a useful article is “ an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information畅An article that is normally a part of a useful article is considered a ‘ useful article畅摧” １７ U畅S畅C畅 § １０１畅Clear examples of useful articles include automobiles， food processors， and television sets畅 Although buildings were not protected prior to １９９０， an architect摧 s plans and drawings were protected as a PGS work畅 On March １， １９８９， the United States joined the Berne Convention for the Protection of Literary and Artistic Works畅 To comply with this treaty obligation， Congress passed the Architectural Works Copyright Protection Act of １９９０ （ AWCPA） ， establishing a new category of copyright protection for works of architecture畅As defined in １７ U畅S畅C畅 § １０１， an “ architectural work” is the design of a building as embodied in any tangible medium of expression， including a building， architectural plans， or drawings畅 The work includes the overall form as well as the arrangement and composition of spaces and elements in the design， but does not include individual standard features畅 Congress did not afford architectural works full copyright protection； rather ， it exempted the making of pictorial representations of architectural works from copyright infringement畅 The House Report notes that “ architecture plays a central role in our daily lives， not only as a form of shelter or as an investment， but also as a work of art畅It is an art form that performs a very public， １０８ 美国知识产权法 social purpose畅” The Report explains the reason for exempting pictorial representations of architectural works from copyright infringement： Architecture is a public art form and is enjoyed as such畅 Millions of people visit our cities every year and take back home photographs， posters， and other pictorial representations of prominent works of architecture as a memory of their trip畅 Additionally， numerous scholarly books on architecture are based on the ability to use photographs of architectural works畅 These uses do not interfere with the normal exploitation of architectural works畅Given the important public purpose served by these uses and the lack of harm to the copyright owner摧 s market， the Committee chose to provide an exemption， rather than rely on the doctrine of fair use， which requires ad hoc determinations畅 Against this backdrop， the district court found that the lantern towers and the smoke towers， including the decorative elements at the top， are part of the ８０１ Tower as a whole畅As it explained， each tower appears to be an integrated concept which includes both architectural and artistic portions畅 The court rejected Leicester摧 s assumption that the decorative portion should be looked at alone as conceptually separate， artistic embellishments of the whole； rather， it found， the artistic and architectural impression is one created by the towers as a whole， complementing the pilasters and continuing the theme of the third floor lanterns of the building畅 Thus， it concluded， the four towers are part of the design plan of the building畅 These findings are well supported in the record畅 The four towers form a streetwall that extends the building to the property 第一编 美 国 版 权法 １ ０９ line畅The streetwall was not a creative aspect of Leicester摧 s work； it was an architectural element mandated by the CRA， which required a structure with sufficient mass to establish the street edge and be no higher than three stories畅Streetwalls are traditionally considered as architectural features： “ Particularly in modern urban design， streetwalls are one of the basics of the architectural vocabulary， along with columns， windows， and doors畅” In addition， the Zanja Madre streetwall serves the functional purpose of channeling traffic into the courtyard， as metal gates， which open and close for control， latch onto the lantern towers畅 Nevertheless， Leicester argues that the court erred when it concluded that because the towers were placed in alignment with the building to give a visual effect of a wall， used the same marble to give the impression that the building continued until the end of the property line， and had identically appearing base features and visually matching design features on the building， that the towers are therefore part of the building plan because those features at most contribute to the visual effect of the Zanja Madre畅L eicester contends that visual effects cannot impart usefulness to the four towers， thereby making the Zanja Madre a “ building畅” He points out that these visual effects are not “ intrinsic ” to the towers nor do they render the towers intrinsically inhabitable as a “ building畅” For this reason， he submits， the court erred in relying on these features畅We disagree that these points matter， however， given the district court摧 s finding that the smoke and lantern towers are part of the architectural work and the building plan畅 In the relevant sense， “ building ” includes structures “ that are used， but not inhabited by human beings，” H畅R畅Rep畅１０１ －７３５， at ２０， and § １０１ 摧 s protection of １１０ 美国知识产权法 an “ architectural work” extends to the “ overall form as well as the arrangement and composition of spaces and elements in the design” of a building畅The ８０１ Tower摧 s streetwall seems plainly covered as an “ arrangement and composition of spaces and elements ” in the building摧 s design畅Leicester also submits that the district court erred by finding that the four columns functioned to direct and control traffic into a courtyard adjacent to the ８０１ Tower， but we don摧 t see how as they clearly support the gates that control access both to the courtyard and to the building畅While Leicester correctly points out that the aesthetic features of the smoke and lantern towers do not contribute to the access control function， we are not convinced that for this reason alone the district court incorrectly found that the towers should be considered as a unit and as part of the ８０１ Tower as a whole畅 Leicester further maintains that the streetwall towers are a sculptural work which is “ conceptually separate” from the building and thus independently entitled to copyright protection畅Again， the district court found otherwise and we cannot say its finding lacks support畅The streetwall towers were designed to extend the building visually， which they do along both Figueroa and Eighth畅The Eighth Street smoke towers are equally integrated and serve the same purpose on E ighth as the Figueroa Street smoke towers do on Figueroa畅This is powerful evidence that they （ together with the additional two lantern towers on Figueroa） are part of the functional and architectural vocabulary of the building畅 Because the streetwall towers are part of the architectural work， § １２０ （ a ） applies畅It allows the public the right to photograph public buildings including， in this case， the streetwall smoke and 第一编 １ １１ 美 国 版 权法 lantern towers unless， as Leicester contends， the １９９０ amendments specifically provide for the continued separate protection of sculptural works attached to buildings畅 Leicester摧 s position is that the Berne Convention did not require taking away copyright protection for PGS works， and Congress did not do so when it passed the AWPCA implementing the Convention畅He relies in particular upon passages in the legislative history indicating that certain works of authorship which may separately qualify for protection as PGS works may be permanently embodied in architectural works， and that in such cases the author （if the same for both works） may elect whether to seek a remedy under § １０２ （ a） （ ５） or １０２ （ a） （８） ． W hether or not Leicester may have some other claim for a diff erent infringement of his copyright in the Z anja M adre towers as a sculptural work ， we believe he has none for a pictorial representation of the ８０１ Tower and its streetw all embodying a protected architectural work畅 Otherwise ， § １２ ０ （ a ） 摧 s exemption for pictorial r epresentations of buildings w ould m ake no sense畅 When copyright owners in architectural works were given protection for the first time in １９９０ ， the right was limited by § １２ ０ （ a） so that publicly visible buildings could freely be photogr aphed畅 T his reflected a shift from the pr ior regime of relying on “ ad hoc determinations ” of fair use畅 Having done this ， it would be counterintuitive to suppose that C ongress meant to restrict pictorial copying to some， but not all of ， a unitary architectural work畅 Accordingly， we agree with the district court that § １２０ （ a） applies畅 We can resolve Leicester摧 s remaining contentions summarily畅 １１２ 美国知识产权法 First， he argues that the district court exceeded its authority by deciding three issues reserved by the parties for the jury trial phase， but we disagree畅Whether R ＆ T gave Warner Bros畅a sublicense to make three唱 dimensional works is clearly encompassed by the Phase I issue of whether any of Warner Bros畅摧 s uses of the Zanja Madre are permissible under a valid license or sublicense or otherwise畅 The issue of whether Warner Bros摧 s use of the Zanja Madre was an infringement is implicated by the district court摧 s answer to the question whether § １２０ （ a） applies to any of the uses of the Zanja Madre畅Further， Leicester argues that the court improperly jumped the gun and merely assumed that the Batman film constituted a “ pictorial representation” of the Zanja Madre畅However， this issue must be considered in determining the applicability of § １２０ （ a） to Warner Bros畅摧 s uses of the Zanja Madre畅 Therefore， the district court did not overstep its bounds畅 Finally， Leicester argues that the district court erred in ruling that Warner Bros畅acquired a license from R ＆ T to make a three唱 dimensional miniature model of the Zanja Madre畅R ＆ T摧 s ability to sublicense turns on whether R ＆ T had an exclusive right to make Zanja Madre miniatures畅 The contract provides： In view of the intention that the WORK in its final dimension shall be unique， the ARTIST shall not make any duplicate， three唱 dimensional reproductions of the final WORK， nor shall the ARTIST grant permission to others to do so畅 The ARTIST grants to the OWNER， to the OWNER摧 s related corporate entities， and to the OWNER摧 s assigns reproductions of a the perpetual WORK irrevocable including but license not to make limited to 第一编 １ １３ 美 国 版 权法 reproductions used in advertising， brochures， media publicity， and catalogs or other similar publications， provided that these reproductions are made in a tasteful and professional manner畅 Leicester claims that R ＆ T did not have an exclusive right to make Zanja Madre miniatures because the contract only prohibited Leicester from making identical duplicates of the Zanja Madre畅 Although the words “ duplicate， three唱 dimensional reproductions ” can conceivably mean identical duplicate sculptures the same size and scale as the original， it would be unreasonable to interpret the term as so narrowly limited畅 Otherwise， the license would be meaningless， for Leicester could make an exact replica of the Zanja Madre ９９ ％ of its size畅The purpose of the provision is to ensure that the Zanja Madre remains “ unique，” and the contract provides no exception for smaller reproductions畅Thus， the contract must be read to prohibit all three唱 dimensional reproductions畅 Accordingly， the district court correctly construed the contract as conferring on R ＆ T an exclusive right to make three唱 dimensional representations of the Zanja Madre of all sizes； therefore， R ＆ T could sublicense that right to Warner Brothers畅 AFFIRME D畅 １畅美国版权法对建筑作品如何界定其含义？ ２畅美国版权法何 时开 始保 护 建 筑作 品？ 态 度 转 变的 原 因是 什么？ ３畅何谓 PGS works？ 美国版权法对 PGS works 的保护和对建 １１４ 美国知识产权法 筑作品的保护有何不同？ 第二 节 特殊 形式 在 １９７６ 年美国版权法 第 １０２ 条所 列举 的八 种 受保 护作 品的 基础之上， 第 １０３ 条又单 规定版权还有 种特殊客体， 即编 作品和演绎作品。 编 作品是指编 ， 对其内容的 数据或者其他材 品。 编 品的 作品 若干作品、 作品的 段或者不 或者编 体现出原创性的作 有以下特性： 第一， 集合性。 它是若干作品、 作 段或者不 成作品的数据或者其他材 的集合。 其 分既可以是 受 版权 法 保护 的 作 品 以及 作 品 的 条、 诗词、 作品， 其所汇集的各个作品是 品， 如文集、 集、 百 性。 内容的 或者编 是 成成 段， 如 论 文、 词 等， 也 可 是 不受 版 权 法 保 护的 数 据 或 者 其他 资 ， 如法规、 股市信息、 电话号码、 商品报 件。 可 成作品的 立 单等。 最典型的编 在或者可以 立 在的作 书、 词典、 摄影画册等。 第二， 原创 体现原创性， 是 成编 作品的实质条 给予一部集合作品版权保护， 不在于其编 受版权法保护， 而在于编 的材 者对被汇集作品的 本身 、 编 是 。 达到一定创作高 美国 １７９０ 年版权法以 “ 出 ” （ sweat of the brow ） 原 则或 “ 辛勤收集” （ industrious collection） 原则 作为 对编 作品 进行法律保护 的理 论 基础 之 一。 但 是， １９９１ 年 美 国 联邦 法 院在 前述著名 的 Feist 案 中 明确 地 拒 绝了 “ 在该案中， 美 国 最 高 法 院 对 编 “ 事实性编 则可以 出 ” 原则 的 适 用。 作品的原创性作了如 下阐 有 （ 版权保护） 必需 的原创 性。 编 之内， 以何种顺 ： 的作 者有代表性地 哪些事实包括在编 列这 些事实， 如何编 所收集的数据以使其更为读者有效利用。 这些 第一编 连同挑 限 和编 的创造性， 就 １ １５ 美 国 版 权法 ， 只要其为编 者 立所为， 并 有最 有了国会通过版权法保护编 作品所需要的 够的原创性。 因此， 即使是一个包含了绝对不 有可保护性的 书面表达——— 是事实———的地址簿， 也可符合宪法规定的版 权保护的最 标准， 如果 它 品原创性的 别要 并 有了 在 于这 些 是原创性的。 在考察编 付出的努 、 改 行重 或编 与编 是编 者 。” 编 立 成 的， 作品的原创性时， 还必须将作者所 据一 个 或更 多 个原 有 的 作品 对 其进 形式和改编的作品， 例如译文、 乐曲改编、 改 编成的戏剧、 改编成的小说、 改编成的电影剧本、 术复 作品、 艺 品、 节本、 缩写本或任何其他的形式。 凡作品内有编 修订、 注 作 区别开来。 “ 演绎作品” 是 所 创的 、 详细 或其他修改， 作为整体成为作者 的 创的作 品均为演绎作品。 演绎作品和编 作品不同之 的作品。 演绎作品是 作品是 、 事实汇集和编 版权或不享有版权的作品、 材 一部 在于编 已有的享有 在一起， 形成 已有版权或者不享有版权的作品重 创作或者改编为另一部作品。 但是 者也不可避免的 在一定 的重叠。 无论是演绎作品还是编 作品， 其版权 限于该作品的作者 所创作的部分， 以区别于该作品中所使用的原有材 ， 而 其版 权并不意味着对原有材 有任何 有权利。 演绎作品还是编 作 品的版权 的任何版权保护之外， 也不影响或 大 原有材 立于原有材 的版权保护的范围、 期限、 所有权或 在。 １１６ 美国知识产权法 案 例 15 G．Ricordi ＆ Co．v． Paramount Pictures， Inc． １８９ F畅２d ４６９， １９５１ SWAN， Circuit Judge． In １８９７ John Luther Long wrote a novel entitled “ Madame Butterfly，” which was copyrighted by the Century Company畅 In １９００ David Belasco， with the consent of the copyright owner ， wrote a play based upon the novel and having the same title畅The play was not copyrighted until １９１７畅 In １９０１ Long and Belasco made a contract with the plaintiff by which they gave it “ the exclusive rights” to make a libretto for an Opera of his （ Belasco摧 s） dramatic version of Madame Butterfly， founded on the original theme， written by Mr畅John Luther Long畅The said Libretto and all rights therein， dramatic or otherwise， to be the exclusive property of Messrs畅G畅 Ricordi ＆ Company for all countries of the world畅It is upon this agreement that the plaintiff grounds its claim to motion picture rights in the world唱 famous opera， with music and lyrics by Puccini in collaboration with Giacosa and Illica， which was copyrighted by the plaintiff in １９０４， and of which the renewal copyright was acquired by the plaintiff from the son of Puccini畅 The defendant does not deny that the plaintiff is the sole owner of the renewal copyright of the opera but it asserts that it owns the motion picture rights in the John Luther Long basic story and in the 第一编 美 国 版 权法 １ １７ Belasco dramatic version thereof， and， consequently， if the plaintiff wishes to make a motion picture version of the opera， the defendant摧 s consent must be obtained for the use of the Long novel and the Belasco play畅Its primary contentions are two： （１ ） that the １９０１ agreement of Long and Belasco with the plaintiff did not grant any motion picture rights； and （ ２） that in any event the expiration in １９２５ of the copyright of Long摧 s novel and the expiration in １９４５ of the copyright of Belasco摧 s play put an end to any exclusive license of the plaintiff to use the novel and the play for a motion picture version of the opera畅Long had obtained in １９２５ a renewal of the copyright on his novel and in １９３２ his administrator granted to the defendant the motion picture rights therein畅In the same year， １９３２， the defendant obtained from the trustee under Belasco摧 s will an assignment of the motion picture rights in Belasco摧 s play畅So far as appears there was no renewal of copyright in the play畅 The district court was of opinion that the primary question for decision was whether the １９０１ agreement granted to the plaintiff motion picture rights in the operaticversion of the novel and of Belasco摧 s dramatization of it畅 After an extensive review of the authorities， the court concluded that it did畅 The appellant argues strenuously that the court erred in so construing the agreement， but we do not find it necessary to decide this question畅The right which Long had to make motion pictures of the story of his copyrighted novel did not extend beyond the term of the copyright； hence， if it be assumed that he assigned to the plaintiff any moving picture rights， they were necessarily similarly limited to the term of the copyright， unless the assignment included the right of renewal畅It did not； the １９０１ agreement made no allusion to renewal of copyright畅 １１８ 美国知识产权法 In Fred Fisher Msic Co畅v畅M畅Whitmark ＆ Sons， ３１８ U畅S畅６４３， which held that an author has power to assign his right of renewal during the term of the original copyright， no one suggested that rights assigned under the original copyright did not end with it， if nothing was said of renewal畅We think they do畅A copyright renewal creates a new estate， and the few cases which have dealt with the subject assert that the new estate is clear of all rights， interests or licenses granted under the original copyright畅 It is true that the expiration of Long摧 s copyright of the novel did not affect the plaintiff摧 s copyright of so much of the opera as was a “ new work” and entitled to be independently copyrighted as such畅 But the plaintiff has acquired no rights under Long摧 s renewal of the copyright of the opera gives its rights only in the new matter which it added to the novel and the play畅It follows that the plaintiff is not entitled to make general use of the novel for a motion picture version of Long摧 s copyrighted story； it must be restricted to what was copyrightable as new matter in its operatic version畅 The next question is whether the plaintiff摧 s right to make use of Belasco摧 s play for a motion picture version thereof is similarly restricted to what was copyrightable as new matter in its operatic version畅After Long摧 s novel was copyrighted， Belasco was given permission唱 a license唱 to make use of the story for a play畅Apparently the license was oral and its precise terms are not disclosed by the record畅If it be assumed that the license gave Belasco any motion picture rights， they were necessarily limited to the term of the copyright of the novel畅However ， Belasco as author of the play had the common law rights of an author， which include the right to copyright it畅 This was done in １９１７畅 By so doing the play was 第一编 美 国 版 权法 １ １９ dedicated to the public except for the rights reserved by the copyright， for that is the condition upon the grant of any copyright畅 When the copyright expired， the play was property in the public demesne， since the record discloses no renewal of the copyright畅 Consequently， the exclusive motion picture rights in the play， which the trustee under Belasco摧 s will assigned to the defendant by the １９３２ agreement， expired in １９４５ with the expiration of the copyright of the play畅Thereafter the plaintiff was as free to use the play as was the defendant in making a motion picture version of the play畅 However， the defendant still has the motion picture rights in the renewal copyright of Long摧 s novel畅Therefore it may assert， as it did， that the plaintiff cannot make general use of the story of the novel for a motion picture version of its opera； and， as already stated， the plaintiff is restricted to using what was copyrightable as new matter in its operatic version of the novel but is not so restricted in using the play which is now in public demesne畅It scarcely need be added that the defendant， while free to use the novel and the play in making a motion picture， may not make use of the plaintiff摧 s opera without its consent畅 So much of the judgment as declares that the plaintiff is “ the rightful owner and sole proprietor of the valid renewal copyright in the Opera entitled Madame Butterfly and of all rights and interest therein including the sole and exclusive motion picture rights ” is affirmed畅The injunction granted the plaintiff is too broad unless it be construed to forbid only such assertions of claims by the defendant as exceed those which the defendant is entitled to make as shown by the foregoing opinion畅 Accordingly the injunction is modified to conform to our opinion畅Each party shall bear its own appellate costs １２０ 美国知识产权法 and no attorney摧 s fees are awarded to either party畅 １畅如果 未 经 过 原 作 品 作 者 许 可， 演 绎 者 的 权 利 受 到 什 么 限制？ ２畅原始作品和演绎作品在保护问题上有什么特殊关系？ 案 例 16 Community for Creative Non唱 Violence v． James Earl Reid． ４９０ U畅S畅７３０ ， １９８９ MARSHALL， J．， delivered the opinion for a unanimous Court． Petitioners are the Community for Creative Non唱 Violence （ CCNV ） ， a nonprofit unincorporated association dedicated to eliminating homelessness in America， and Mitch Snyder， a member and trustee of CCNV畅 In the fall of １９８５， CCNV decided to participate in the annual Christmastime Pageant of Peace in Washington畅Snyder and fellow CCNV members conceived the idea for the nature of the display： a sculpture of a modern Nativity scene畅 They also settled upon a title for the work “Third World America” ． 第一编 美 国 版 权法 １ ２１ Respondent James Earl Reid， a sculptor was finally selected by Snyder畅The parties agreed that the project would cost no more than ＄１５敞０００， not including Reid摧 s services， which he offered to donate畅The parties did not sign a written agreement畅Neither party mentioned copyright畅 After Reid received an advance of ＄３敞 ０００， he made several sketches of figures in various poses畅At Snyder摧 s request， Reid sent CCNV a sketch of a proposed sculpture showing the family in a crèche like setting畅Reid sought a black family to serve as a model for the sculpture畅Upon Snyder摧 s suggestion， Reid visited a family living at CCNV摧 s Washington shelter but decided that only their newly born child was a suitable model畅 While Reid was in Washington， Snyder took him to see homeless people living on the streets畅Snyder pointed out that they tended to recline on steam grates， rather than sit or stand， in order to warm their bodies畅From that time on， Reid摧 s sketches contained only reclining figures畅 On December ２４， １９８５， １２ days after the agreed唱 upon date， Reid delivered the completed statue to Washington畅 There it was joined to the steam grate and pedestal prepared by CCNV and placed on display near the site of the pageant畅Snyder paid Reid the final installment of the ＄１５敞０００畅The statue remained on display for a month畅In late January １９８６， CCNV members returned it to Reid摧 s studio in Baltimore for minor repairs畅Several weeks later， Snyder began making plans to take the statue on a tour of several cities to raise money for the homeless畅Reid objected， contending that the Design Cast ６２ material was not strong enough to withstand the ambitious itinerary畅He urged CCNV to cast the statue in bronze at a cost of ＄３５敞０００， or to create a master mold at a cost of ＄５敞０００畅 １２２ 美国知识产权法 Snyder declined to spend more of CCNV摧 s money on the project畅 In March １９８６ ， Snyder asked Reid to return the sculpture畅Reid refused畅 He then filed a certificate of copyright registration for “ Third World America” in his name畅Snyder， acting in his capacity as CCNV摧 s trustee， immediately filed a competing certificate of copyright registration畅 Snyder and CCNV then commenced this action against Reid seeking return of the sculpture and a determination of copyright ownership畅 The District Court granted a preliminary injunction， ordering the sculpture摧 s return畅 After a ２唱 day bench trial， the District Court declared that “ T hird World America” was a “ work made for hire” under § １０１ of the Copyright Act and that Snyder， as trustee for CCNV ， was the exclusive owner of the copyright in the sculpture畅 The court reasoned that Reid had been an “ employee” of CCNV within the meaning of § １０１ （１ ） because CCNV was the motivating force in the statue摧 s production畅Snyder and other CCNV members， the court explained， “ conceived the idea of a contemporary Nativity scene to contrast with the national celebration of the season，” and “ directed enough of ［ Reid摧 s］ effort to assure that， in the end， he had produced what they， not he， wanted畅” The Court of Appeals for the District of Columbia Circuit reversed and remanded， holding that Reid owned the copyright because “ T hird World America ” was not a work for hire畅 We granted certiorari to resolve a conflict among the Courts of Appeals over the proper construction of the “work made for hire” provisions of the Act畅We now affirm畅 The Copyright Act of １９７６ provides that copyright ownership 第一编 １ ２３ 美 国 版 权法 “ vests initially in the author or authors of the work畅” １７ U畅 S畅C畅 § ２０１ （ a） ．As a general rule， the author is the party who actually creates the work， that is， the person who translates an idea into a fixed， tangible expression entitled to copyright protection畅 § １０２畅 The Act carves out an important exception， however， for “ works made for hire畅” If the work is for hire， “ the employer or other person for whom the work was prepared is considered the author” and owns the copyright， unless there is a written agreement to the contrary畅 § ２０１ （ b ） ． Classifying a work as “ made for hire ” determines not only the initial ownership of its copyright， but also the copyright摧 s duration， § ３０２ （ c ） ， and the owners摧renewal rights， § ３０４ （ a） ， termination rights， § ２０３ （ a） ， and right to import certain goods bearing the copyright， § ６０１ （ b） （ １） ．The contours of the work for hire doctrine therefore carry profound significance for freelance creators唱 including artists， writers， photographers， designers， composers， and computer programmers唱 and for the publishing， advertising， music， and other industries which commission their works畅 Section １０１ of the １９７６ Act provides that a work is “ for hire” under two sets of circumstances： “ （１） a work prepared by an employee within the scope of his or her employment； or （ ２ ） a work specially ordered or commissioned for use as a contribution to a collective work， as a part of a motion picture or other audiovisual work， as a translation， as a supplementary work， as a compilation， as an instructional text， as a test， as answer material for a test， or as an atlas， if the parties expressly agree in a written instrument signed by them that the work shall be considered a １２４ 美国知识产权法 work made for hire畅” The dispositive inquiry in this case therefore is whether “ Third World America ” is “ a work prepared by an employee within the scope of his or her employment” under § １０１ （ １） ．The Act does not define these terms畅 In the absence of such guidance， four interpretations have emerged畅The first holds that a work is prepared by an employee whenever the hiring party retains the right to control the product畅 Petitioners take this view畅 A second， and closely related， view is that a work is prepared by an employee under § １０１ （ １ ） when the hiring party has actually wielded control with respect to the creation of a particular work畅A third view is that the term “ employee” within § １０１ （１） carries its common唱 law agency law meaning畅 Finally， respondent and numerous amici curiae contend that the term “ employee” only refers to “ formal， salaried” employees畅 The starting point for our interpretation of a statute is always its language畅The Act nowhere defines the terms “ employee” or “ scope of employment畅” It is， however， well established that “ where Congress uses terms that have accumulated settled meaning under 畅畅畅the common law， a court must infer， unless the statute otherwise dictates， that Congress means to incorporate the established meaning of these terms畅” In the past， when Congress has used the term “ employee” without defining it， we have concluded that Congress intended to describe the conventional master 唱 servant relationship as understood by common唱 law agency doctrine畅Nothing in the text of the work for hire provisions indicates that Congress used the words “ employee” and “ employment” to describe anything other than “ the conventional relation of employer and employé畅” On the contrary， 第一编 １ ２５ 美 国 版 权法 Congress摧intent to incorporate the agency law definition is suggested by § １０１ （ １ ） 摧 s use of the term， “ scope of employment，” a widely used term of art in agency law畅 In past cases of statutory interpretation， when we have concluded that Congress intended terms such as “ employee，” “ employer，” and “ scope of employment” to be understood in light of agency law， we have relied on the general common law of agency， rather than on the law of any particular State， to give meaning to these terms畅This practice reflects the fact that “ federal statutes are generally intended to have uniform nationwide application畅” Establishment of a federal rule of agency， rather than reliance on state agency law， is particularly appropriate here given the Act摧 s express objective of creating national， uniform copyright law by broadly pre唱 empting state statutory and common唱 law copyright regulation畅We thus agree with the Court of Appeals that the term “ employee ” should be understood in light of the general common law of agency畅 In contrast， neither test proposed by petitioners is consistent with the text of the Act畅The exclusive focus of the right to control the product test on the relationship between the hiring party and the product clashes with the language of § １０１ （１） ， which focuses on the relationship between the hired and hiring parties畅The right to control the product test also would distort the meaning of the ensuing subsection， § １０１ （ ２ ）．Section １０１ plainly creates two distinct ways in which a work can be deemed for hire： one for works prepared by employees， the other for those specially ordered or commissioned works which fall within one of the nine enumerated categories and are the subject of a written agreement畅The right to １２６ 美国知识产权法 control the product test ignores this dichotomy by transforming into a work for hire under § １０１ （ １ ） any “ specially ordered or commissioned” work that is subject to the supervision and control of the hiring party畅Because a party who hires a “ specially ordered or commissioned ” work by definition has a right to specify the characteristics of the product desired， at the time the commission is accepted， and frequently until it is completed， the right to control the product test would mean that many works that could satisfy § １０１ （２） would already have been deemed works for hire under § １０１ （ １ ）． Petitioners摧interpretation is particularly hard to square with § １０１ （２ ） 摧 s enumeration of the nine specific categories of specially ordered or commissioned works eligible to be works for hire， e畅g畅， “ a contribution to a collective work，” “ a part of a motion picture，” and “ answer material for a test畅” The unifying feature of these works is that they are usually prepared at the instance， direction， and risk of a publisher or producer畅 By their very nature， therefore， these types of works would be works by an employee under petitioners摧right to control the product test畅 The actual control test， articulated by the Second Circuit in Aldon Accessories， fares only marginally better when measured against the language and structure of § １０１畅 Under this test， independent contractors who are so controlled and supervised in the creation of a particular work are deemed “ employees” under § １０１ （１ ）．Thus work for hire status under § １０１ （ １ ） depends on a hiring party摧 s actual control of， rather than right to control， the product畅Under the actual control test， a work for hire could arise under § １０１ （ ２ ） ， but not under § １０１ （ １ ） ， where a party commissions， but does not actually control， a product which falls 第一编 １ ２７ 美 国 版 权法 into one of the nine enumerated categories畅Nonetheless， we agree with the Court of Appeals for the Fifth Circuit that “ there is simply no way to milk the ‘ actual control摧test of Aldon Accessories from the language of the statute畅” Section １０１ clearly delineates between works prepared by an employee and commissioned works畅Sound though other distinctions might be as a matter of copyright policy， there is no statutory support for an additional dichotomy between commissioned works that are actually controlled and supervised by the hiring party and those that are not畅 W e therefore conclude that the language and structure of § １ ０１ of the Act do not support either the right to control the product or the actual control approaches畅The structure of § １０１ indicates that a work for hire can arise through one of two mutually exclusive means， one f or employees and one for independent contractors ， and ordinary canons of statutory interpretation indicate that the classification of a particular hired party should be made with reference to agency law畅This reading of the undefined statutory terms finds considerable support in the Act摧 s legislative history 畅畅畅 In sum， we must reject petitioners摧argument畅Transforming a commissioned work into a work by an employee on the basis of the hiring party摧 s right to control， or actual control of， the work is inconsistent with the language， structure， and legislative history of the work for hire provisions畅T o determine whether a work is for hire under the Act， a court first should ascertain， using principles of general common law of agency， whether the work was prepared by an employee or an independent contractor畅 After making this determination， the court can apply the appropriate subsection of １２８ 美国知识产权法 § １０１畅 We turn， finally， to an application of § １０１ to Reid摧 s production of “ Third World America畅” In determining whether a hired party is an employee under the general common law of agency， we consider the hiring party摧 s right to control the manner and means by which the product is accomplished畅Among the other factors relevant to this inquiry are the skill required； the source of the instrumentalities and tools； the location of the work； the duration of the relationship between the parties； whether the hiring party has the right to assign additional projects to the hired party； the extent of the hired party摧 s discretion over when and how long to work； the method of payment； the hired party摧 s role in hiring and paying assistants； whether the work is part of the regular business of the hiring party； whether the hiring party is in business； the provision of employee benefits； and the tax treatment of the hired party畅No one of these factors is determinative畅 Examining the circumstances of this case in light of these factors， we agree with the Court of Appeals that Reid was not an employee of CCNV but an independent contractor畅Indeed， all the other circumstances weigh heavily against finding an employment relationship畅Because Reid was an independent contractor， whether “ Third World America ” is a work for hire depends on whether it satisfies the terms of § １０１ （２） ．This petitioners concede it cannot do畅Thus， CCNV is not the author of “ Third World America” by virtue of the work for hire provisions of the Act畅However， as the Court of Appeals made clear ， CCNV nevertheless may be a joint author of the sculpture if ， on remand， the District Court determines that CCNV and Reid prepared the work “ with the intention that their 第一编 美 国 版 权法 １ ２９ contributions be merged into inseparable or interdependent parts of a unitary whole畅” １７ U畅S畅 C畅 § １０１畅In that case， CCNV and Reid would be co唱 owners of the copyright in the work畅 For the aforestated reasons， we affirm the judgment of the Court of Appeals for the District of Columbia Circuit畅 It is so ordered畅 １畅１９７６ 年版权法对于 “雇员” 和 “ 雇用” 并未作出 确切的 界定， 则对于这两个术语应该如何理解？ ２畅对于 １９７６ 年版权法规定的租用 作品 之确切 含义， 美 国法 院判例中主要有几种理解？ 哪一种理解得到了本案法官的支持？ ３畅根据本案， 如何确 定 一个 受 雇的 一 方是 否 为 代理 关 系中 雇员？ 案 例 17 Alice Childress v． Clarice Taylor ９４５ F畅２d ５００， １９９１ JON O．NEWMAN， Circuit Judge： Defendant Clarice Taylor became interested in developing a play based on Mabley摧 s life畅 Taylor began to assemble material about １３０ 美国知识产权法 “ Moms” Mabley畅 In １９８５， Taylor contacted the plaintiff， playwright Alice Childress， about writing a play based on “ Moms” Mabley畅Taylor turned over all of her research material to Childress， and later did further research at Childress摧 s request畅It is undisputed that Childress wrote the play， entitled “ Moms： A Praise Play for a Black Comedienne畅” However， Taylor， in addition to providing the research material， which according to her involved a process of sifting through facts and selecting pivotal and key elements to include in a play on “ Moms ” Mabley摧 s life， also discussed with Childress the inclusion of certain general scenes and characters in the play畅 Additionally， Childress and Taylor spoke on a regular basis about the progress of the play畅 Childress completed the script within the required time畅 Childress filed for and received a copyright for the play in her name畅 Taylor produced the play at the Green Plays Theatre in Lexington， New York， during the １９８６ summer season and played the title role畅 After the play摧 s run at the Green Plays Theatre， Taylor planned a second production of the play at the Hudson Guild Theatre in New York City畅At the time Childress agreed to the project， she did not have any firm arrangements with Taylor ， although Taylor had paid her ＄２， ５００ before the play was produced畅 On May ９， １９８６， Taylor wrote to Childress摧 s agent， Flora Roberts， stating： “ １畅 CLARICE TAYLOR will pay ALICE CHILDRESS for her playwriting services on the MOMS MABLEY PROJECT the sum of ＄５敞０００畅００， which will also serve as an advance against any future royalties畅２畅The finished play shall be equally owned and be the property of both CLARICE TAYLOR and ALICE CHILDRESS畅” 第一编 美 国 版 权法 １ ３１ In March １９８７， Childress rejected the draft agreement proposed by Taylor， and the parties摧 relationship deteriorated畅 Taylor continued to use the copyrighted work畅Childress sued Taylor and other defendants alleging violations of the Copyright Act， Taylor contended that she was a joint author with Childress， and therefore shared the rights to the play畅 Childress moved for summary judgment， which the District Court granted畅The Court concluded that Taylor was not a joint author of Childress摧 s play and that Caldwell摧 s play was substantially similar to and infringed Childress摧 s play畅In rejecting Taylor摧 s claim of joint authorship， Judge Haight ruled （ a ） that a work qualifies as a “ joint work ” under the definition section of the Copyright Act， １７ U畅S畅C畅 § １０１， only when both authors intended， at the time the work was created， “ that their contributions be merged into inseparable or interdependent parts of a unitary whole，” and （ b） that there was insufficient evidence to permit a reasonable trier to find that Childress had the requisite intent畅 The Court further ruled that copyright law requires the contributions of both authors to be independently copyrightable， and that Taylor摧 s contributions， which consisted of ideas and research， were not copyrightable畅 The Copyright Act defines a “ joint work” as a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole畅 As Professor Nimmer has pointed out， this definition is really the definition of a work of joint authorship畅The definition concerns the creation of the work by the joint authors， not the circumstances， in addition to joint authorship， under which a work may be jointly owned， for example， by assignment of an undivided interest畅The distinction affects the rights that are acquired畅 Joint authors hold undivided interests in a work， like all joint owners of a work， but joint authors， unlike other joint owners， also enjoy all the rights of authorship， including the renewal rights applicable to works in which a statutory copyright subsisted prior to January １， １９７８畅 Some aspects of the statutory definition of joint authorship are fairly straightforward畅Parts of a unitary whole are “ inseparable ” when they have little or no independent meaning standing alone畅 That would often be true of a work of written text， such as the play that is the subject of the pending litigation畅By contrast， parts of a unitary whole are “ interdependent” when they have some meaning standing alone but achieve their primary significance because of their combined effect， as in the case of the words and music of a song畅 Indeed， a novel and a song are among the examples offered by the legislative committee reports on the １９７６ Copyright Act to illustrate the difference between “ inseparable” and “ interdependent” parts畅 The legislative history also clarifies other aspects of the statutory definition， but leaves some matters in doubt畅Endeavoring to flesh 第一编 美 国 版 权法 １ ３３ copyrightable or only the combined result of their joint efforts must be copyrightable畅The Nimmer treatise argues against a requirement of copyrightability of each author摧 s contribution畅Professor Goldstein takes the contrary view畅The case law supports a requirement of copyrightability of each contribution畅 The issue， apparently open in this Circuit， is troublesome畅If the focus is solely on the objective of copyright law to encourage the production of creative works， it is difficult to see why the contributions of all joint authors need be copyrightable畅 An individual creates a copyrightable work by combining a non唱 copyrightable idea with a copyrightable form of expression； the resulting work is no less a valuable result of the creative process simply because the idea and the expression came from two different individuals畅Indeed， it is not unimaginable that there exists a skilled writer who might never have produced a significant work until some other person supplied the idea畅The textual argument from the statute is not convincing畅The Act surely does not say that each contribution to a joint work must be copyrightable， and the specification that there be “ authors ” does not necessarily require a copyrightable contribution畅“ Author ” is not defined in the Act and appears to be used only in its ordinary sense of an originator畅T he “ author ” of an uncopyrightable idea is nonetheless its author even though， for entirely valid reasons， the law properly denies him a copyright on the result of his creativity畅And the Register摧 s tentative constitutional argument seems questionable畅 It has not been supposed that the statutory grant of “ authorship ” status to the employer of a work made for hire exceeds the Constitution， though the employer has shown skill only in selecting employees， not in creating protectable １３４ 美国知识产权法 expression畅 Nevertheless， we are persuaded to side with the position taken by the case law and endorsed by the agency administering the Copyright Act畅The insistence on copyrightable contributions by all putative joint authors might serve to prevent some spurious claims by those who might otherwise try to share the fruits of the efforts of a sole author of a copyrightable work， even though a claim of having contributed copyrightable material could be asserted by those so inclined畅More important， the prevailing view strikes an appropriate balance in the domains of both copyright and contract law畅In the absence of contract， the copyright remains with the one or more persons who created copyrightable material畅Contract law enables a person to hire another to create a copyrightable work， and the copyright law will recognize the employer as “ author畅” Similarly， the person with non唱 copyrightable material who proposes to join forces with a skilled writer to produce a copyrightable work is free to make a contract to disclose his or her material in return for assignment of part ownership of the resulting copyright畅And， as with all contract matters， the parties may minimize subsequent disputes by formalizing their agreement in a written contract畅 It seems more consistent with the spirit of copyright law to oblige all joint authors to make copyrightable contributions， leaving those with non唱 copyrightable contributions to protect their rights through contract畅 There remains for consideration the crucial aspect of joint authorship唱 the nature of the intent that must be entertained by each putative joint author at the time the contribution of each was created畅 The wording of the statutory definition appears to make relevant only 第一编 美 国 版 权法 １ ３５ the state of mind regarding the unitary nature of the finished work唱 an intention “ that their contributions be merged into inseparable or interdependent parts of a unitary whole畅” However， an inquiry so limited would extend joint author status to many persons who are not likely to have been within the contemplation of Congress畅 For example， a writer frequently works with an editor who makes numerous useful revisions to the first draft， some of which will consist of additions of copyrightable expression畅Both intend their contributions to be merged into inseparable parts of a unitary whole， yet very few editors and even fewer writers would expect the editor to be accorded the status of joint author， enjoying an undivided half interest in the copyright in the published work畅Similarly， research assistants may on occasion contribute to an author some protectable expression or merely a sufficiently original selection of factual material as would be entitled to a copyright， yet not be entitled to be regarded as a joint author of the work in which the contributed material appears畅 What distinguishes the writer唱 editor relationship and the writer唱 researcher relationship from the true joint author relationship is the lack of intent of both participants in the venture to regard themselves as joint authors畅 Focusing on whether the putative joint authors regarded themselves as joint authors is especially important in circumstances， such as the instant case， where one person （ Childress ） is indisputably the dominant author of the work and the only issue is whether that person is the sole author or she and another （ Taylor） are joint authors畅 In this case， the issue is not only whether Judge Haight applied the correct standard for determining joint authorship but also whether １３６ 美国知识产权法 he was entitled to conclude that the record warranted a summary judgment in favor of Childress畅We are satisfied that Judge Haight was correct as to both issues畅We need not determine whether we agree with his conclusion that Taylor摧 s contributions were not independently copyrightable since， even if they were protectable as expression or as an original selection of facts， we agree that there is no evidence from which a trier could infer that Childress had the state of mind required for joint authorship畅 As Judge Haight observed， whatever thought of co唱 authorship might have existed in Taylor摧 s mind “ was emphatically not shared by the purported co唱 author畅” There is no evidence that Childress ever contemplated， much less would have accepted， crediting the play as “ written by Alice Childress and Clarice Taylor畅” Childress was asked to write a play about “ Moms” Mabley and did so畅To facilitate her writing task， she accepted the assistance that Taylor provided， which consisted largely of furnishing the results of research concerning the life of “ Moms ” Mabley畅 As the actress expected to portray the leading role， Taylor also made some incidental suggestions， contributing ideas about the presentation of the play摧 s subject and possibly some minor bits of expression畅But there is no evidence that these aspects of Taylor摧 s role ever evolved into more than the helpful advice that might come from the cast， the directors， or the producers of any play畅A playwright does not so easily acquire a co唱 author畅 The judgment of the District Court is affirmed畅 第一编 １ ３７ 美 国 版 权法 １畅何谓合作作品？ 它有几个要素？ ２畅每个合作作者完 成的 部 分是 否必 须 是单 独 能 够取 得 版权 的？ 其背后的政策考虑是什么？ ３畅为何要检验合 作作 者之 间 是 否有 合 作的 意 图？ 美 国 版权 法作此规定是基于什么考虑？ 案 例 18 New York Times Co．v．Tasini ２０６ F畅３d １６１， ２００１ Respondent freelance authors （ Authors ） wrote articles （ Articles ） for newspapers and a magazine published by petitioners New York Times Company （ Times） ， Newsday， Inc畅（ Newsday） ， and Time， Inc畅（ Time） ．The Times， Newsday， and Time （ Print Publishers） engaged the Authors as independent contractors under contracts that in no instance secured an Author摧 s consent to placement of an article in an electronic database畅 The Print Publishers each licensed rights to copy and sell articles to petitioner LEXIS ／ NEXIS， owner and operator of NEXIS畅 NEXIS is a computerized database containing articles in text唱 only format from hundreds of periodicals spanning many years畅 Subscribers access １３８ 美国知识产权法 NEXIS through a computer， may search for articles using criteria such as author and subject， and may view， print， or download each article yielded by the search畅 An article摧 s display identifies its original print publication， date， section， initial page number， title， and author， but each article appears in isolation — without visible link to other stories originally published in the same periodical edition畅NEXIS does not reproduce the print publication摧 s formatting features such as headline size and page placement畅The Times also has licensing agreements with petitioner University Microfilms International （ UMI）， authorizing reproduction of Times materials on two CD—ROM products畅 One， the New York Times OnDisc （ NYTO）， is a text唱 only database containing Times articles presented in essentially the same way they appear in LEXIS ／ NEXIS畅The other， General Periodicals OnDisc （ GPO ）， is an image唱 based system that reproduces the Times摧Sunday Book Review and Magazine exactly as they appeared on the printed pages， complete with photographs， captions， advertisements， and other surrounding materials畅The two CD—ROM products are searchable in much the same way as LEXIS ／ NEXIS； in both， articles retrieved by users provide no links to other articles appearing in the original print publications畅 The Authors filed this suit， alleging that their copyrights were infringed when， as permitted and facilitated by the Print Publishers， LEXIS ／ NEXIS and UMI （ Electronic Publishers） placed the Articles in NEXIS， NYTO， and GPO （ Databases ） ．The Authors sought declaratory and injunctive relief， and damages畅In response to the Authors摧complaint， the Print and Electronic Publishers raised the privilege accorded collective work copyright owners by § ２０１ （ c） of the Copyright Act畅T hat provision， pivotal in this case， reads： 第一编 美 国 版 权法 １ ３９ “ Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole， and vests initially in the author of the contribution畅 In the absence of an express transfer of the copyright or of any rights under it， the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work， any revision of that collective work， and any later collective work in the same series畅” The District Court granted the P ublishers summary judgment， holding， inter alia， that the Databases reproduced and distributed the Authors摧works， in § ２０１ （ c） 摧 s words， “ as part of 畅 畅畅a revision of that collective work ” to which the Authors had first contributed畅 The Second Circuit reversed， granting the Authors summary judgment on the ground that the Databases were not among the collective works covered by § ２０１ （ c ）， and specifically， were not “ revisions ” of the periodicals in which the Articles first appeared畅 Held： Section ２０１ （c） does not authorize the copying at issue here畅The Publishers are not sheltered by § ２０１ （ c ） because the Databases reproduce and distribute articles standing alone and not in context， not “ as part of that particular collective work” to which the author contributed， “ as part of 畅畅畅any revision” thereof， or “ as part of 畅畅 畅any later collective work in the same series畅” （ A ） Where， as here， a freelance author has contributed an article to a collective work， copyright in the contribution vests initially in its author畅 § ２０１ （ c） ．Copyright in the collective work vests in the collective author （ here， the Print Publisher） and extends only to the creative material contributed by that author， not to “ the preexisting material employed in the work，” § １０３ （ b ） ．Congress １４０ 美国知识产权法 enacted the provisions of the １９７６ revision of the Copyright Act at issue to address the unfair situation under prior law， whereby authors risked losing their rights when they placed an article in a collective work畅The １９７６ Act recast the copyright as a bundle of discrete “ exclusive rights，” § １０６， each of which “ may be transferred 畅畅 畅 and owned separately，” § ２０１ （ d ） （ ２） ．The Act also provided， in § ４０４ （ a） ， that “ a single notice applicable to the collective work as a whole is sufficient ” to protect the rights of freelance contributors畅Together， § ４０４ （ a ） and § ２０１ （ c ） preserve the author摧 s copyright in a contribution to a collective work畅 Under § ２０１ （ c） 摧 s terms， a publisher could reprint a contribution from one issue in a later issue of its magazine， and could reprint an article from one edition of an encyclopedia in a later revision of it， but could not revise the contribution itself or include it in a new anthology or an entirely different collective work畅Essentially， § ２０１ （ c ） adjusts a publisher摧 s copyright in its collective work to accommodate a freelancer摧 s copyright in her contribution畅If there is demand for a freelance article standing alone or in a new collection， the Copyright Act allows the freelancer to benefit from that demand； after authorizing initial publication， the freelancer may also sell the article to others畅Cf畅Stewart v畅Abend， ４９５ U畅S畅２０７， ２２９ ， ２３０畅 It would scarcely preserve the author摧 s copyright in a contribution as contemplated by Congress if a print publisher， without the author摧 s permission， could reproduce or distribute discrete copies of the contribution in isolation or within new collective works畅 （ B） The Publishers摧view that inclusion of the Articles in the Databases lies within the “ privilege of reproducing and distributing the Articles as part of 畅畅畅a revision of that collective work，” § ２０１ 第一编 美 国 版 权法 １ ４１ （ c） ， is unacceptable畅In determining whether the Articles have been reproduced and distributed “ as part of ” a “ revision，” the Court focuses on the Articles as presented to， and perceptible by， a Database user畅Here， the three Databases present articles to users clear of the context provided either by the original periodical editions or by any revision of those editions畅 The Databases first prompt users to search the universe of their contents： thousands or millions of files containing individual articles from thousands of collective works （ i畅e畅， editions） ， either in one series （ the Times， in NYTO） or in scores of series （ the sundry titles in NEXIS and GPO） ．When the user conducts a search， each article appears as a separate item within the search result畅In NEXIS and NYTO， an article appears to a user without the graphics， formatting， or other articles with which it was initially published畅In GPO， the article appears with the other materials published on the same page or pages， but without any material published on other pages of the original periodical畅In either circumstance， the Database does not reproduce and distribute the article “ as part of” either the original edition or a “revision” of that edition畅The articles may be viewed as parts of a new compendium — namely， the entirety of works in the Database畅Each edition of each periodical， however， represents only a miniscule fraction of the ever唱 expanding Database畅The massive whole of the Database is not recognizable as a new version of its every small part畅Furthermore， the Articles in the Databases may be viewed “ as part of” no larger work at all， but simply as individual articles presented individually畅 That each article bears marks of its origin in a particular periodical suggests the article was previously part of that periodical， not that the article is currently reproduced or distributed as part of the １４２ 美国知识产权法 periodical畅 The Databases摧 reproduction and distribution of individual Articles — simply as individual Articles — would invade the core of the Authors摧exclusive rights畅The Publishers摧analogy between the Databases and microfilm and microfiche is wanting： In the Databases， unlike microfilm， articles appear disconnected from their original context畅 Unlike the conversion of newsprint to microfilm， the transfer of articles to the Databases does not represent a mere conversion of intact periodicals （ or revisions of periodicals） from one medium to another畅The Databases offer users individual articles， not intact periodicals畅The concept of “ media唱 neutrality” invoked by the Publishers should therefore protect the Authors摧 rights， not the Publishers摧 畅The result is not changed because users can manipulate the Databases to generate search results consisting entirely of articles from a particular periodical edition畅Under § ２０１ （ c） ， the question is not whether a user can assemble a revision of a collective work from a database， but whether the database itself perceptibly presents the author摧 s contribution as part of a revision of the collective work畅 That result is not accomplished by these Databases畅 （ C） The Publishers摧warning that a ruling for the Authors will have “ devastating ” consequences， punching gaping holes in the electronic record of history， is unavailing畅 It hardly follows from this decision that an injunction against the inclusion of these Articles in the Databases （ much less all freelance articles in any databases） must issue畅The Authors and Publishers may enter into an agreement allowing continued electronic reproduction of the Authors摧works； they， and if necessary the courts and Congress， may draw on numerous models for distributing copyrighted works and 第一编 美 国 版 权法 １ ４３ remunerating authors for their distribution畅In any event， speculation about future harms is no basis for this Court to shrink authorial rights created by Congress畅 The Court leaves remedial issues open for initial airing and decision in the District Court畅 Affirmed畅 １畅何谓 collective work？ ２畅创作 collective work 的作者就其作品在多大程度上 可以得 到版权保护？ ３畅本案出版商能否主张适用 § ２０１ （ c） 之保护？ ４畅 “版权不可分割性” 理论在本案中是否还得到适用？ 第三章 版权的期限 版权的保护期限， 是指版权受法律保护的时间界限或者说是 版权的有效 期 限。 在 版 权的 保 护期 限 内， 作品 的 版 权 受 法律 保 护； 版权期限届 ， 就丧失版权， 该作品便进入公共领域， 不再 受法律保护。 我国对作者人身权和作者财产权保护期分别加以规定。 著作 人身权中的 署名 权、 修 改 权和 保 护 作品 整权 受 到 法律 保 护。 发表权的保护期与版权中的财产权利的保护期相同。 作为作 者的公民死亡， 法人或非法人单位 改权、 保护作品 整权仍受版权表权 更、 止后， 其署名权、 修 第一编 １ ４５ 美 国 版 权法 法案从表面形式上看是保护一切作者权益的法案， 但实 上却是 保护极少数最富有的作者和版权人垄断利益的法案， 例如迪斯尼 公 。 因此， 该法案被 形 象 地 称为 “ 挽 救 米老 鼠 法 案 ”。 另 外， 版权的保护期限本来就是保持作者利益和公共利益之间平衡的一 个重要手段， 作者垄断权的 大并不一定导致创造性的发挥， 创 造性发挥的前 提 应该 是 充分 的 信息 资 源 供给 和 成 本 的 素材 提 供。 本案原告是 利 用已 经 进入 公 有 领域 的 作品 谋 生 的 个 人和 团 体， 起诉认为该法案违 反 了 宪 法 限” 及 “ 促进 论 自 由 和 知识 产 权 “ 有限 期 学技 术 进步 ” 的 条款。 该案 在 美国 国内 引 起广 泛反响， 同时也再 引发了版权法的立法宗旨的 论： 版权法的 立法目的到底是 “ 保护作品” 还是 “保护创作 ” ， 以及如 何维持 者的平衡？ 案 例 19 Eric Eldred v． John D．Ashcroft ５３７ U畅S畅１８６， ２００３ Justice GINSBURG delivered the opinion of the Court． This case concerns the authority the Constitution assigns to Congress to prescribe the duration of copyrights畅The Copyright and Patent Clause of the Constitution， Art畅I ， § ８ ， cl畅８， provides as to copyrights： “ Congress shall have Power 畅畅 畅 to promote the Progress of Science 畅 畅畅by securing ［ to Authors］ for limited Times 畅畅畅the exclusive Right to their 畅 畅畅 Writings畅” In １９９８， in the １４６ 美国知识产权法 Copyright Term Extension Act （ CTEA ） here under inspection， Congress enlarged the duration of copyrights by ２０ years畅As in the case of prior extensions， principally in １８３１， １９０９， and １９７６， Congress provided for application of the enlarged terms to existing and future copyrights alike畅 Petitioners are individuals and businesses whose products or services build on copyrighted works that have gone into the public domain畅They seek a determination that the CTEA fails constitutional review under both the Copyright Clause摧 s “ limited Times ” prescription and the First Amendment摧 s free speech guarantee畅Under the １９７６ Copyright Act， copyright protection generally lasted from the work摧 s creation until ５０ years after the author摧 s death畅Under the CTEA， most copyrights now run from creation until ７０ years after the author摧 s death畅 Petitioners do not challenge the “ life唱 plus唱 ７０唱 years” timespan itself， but in enlarging the term for published works with existing copyrights畅 The “ limited Time ” in effect when a copyright is secured， petitioners urge， becomes the constitutional boundary， a clear line beyond the power of Congress to extend畅As to the First Amendment， petitioners contend that the CTEA is a content唱 neutral regulation of speech that fails inspection under the heightened judicial scrutiny appropriate for such regulations畅 In accord with the District Court and the Court of Appeals， we reject petitioners摧challenges to the CTEA畅In that １９９８ legislation， as in all previous copyright term extensions， Congress placed existing and future copyrights in parity畅 In prescribing that alignment， we hold， Congress acted within its authority and did not transgress constitutional limitations畅 第一编 美 国 版 权法 １ ４７ A We evaluate petitioners摧challenge to the constitutionality of the CTEA against the backdrop of Congress摧previous exercises of its authority under the Copyright Clause畅The Nation摧 s first copyright statute， enacted in １７９０， provided a federal copyright term of １４ years from the date of publication， renewable for an additional １４ years if the author survived the first term畅The １７９０ Act摧 s renewable １４唱 year term applied to existing works （ i畅e畅， works already published and works created but not yet published） and future works alike畅Congress expanded the federal copyright term to ４２ years in １８３１ （ ２８ years from publication， renewable for an additional １４ years）， and to ５６ years in １９０９ （ ２８ years from publication， renewable for an additional ２８ years） ．Both times， Congress applied the new copyright term to existing and future works； to qualify for the １８３１ extension， an existing work had to be in its initial copyright term at the time the Act became effective畅 In １９７６， Congress altered the method for computing federal copyright terms畅１９７６ Act § § ３０２ －３０４畅For works created by identified natural persons， the １９７６ Act provided that federal copyright protection would run from the work摧 s creation， not唱 as in the １７９０， １８３１， and １９０９ Acts唱 its publication； protection would last until ５０ years after the author摧 s death畅 § ３０２ （ a ） ． In these respects， the １９７６ Act aligned United States copyright terms with the then唱 dominant international standard adopted under the Berne Convention for the Protection of Literary and Artistic Works畅For anonymous works， pseudonymous works， and works made for hire， the １９７６ Act provided a term of ７５ years from publication or １００ １４８ 美国知识产权法 years from creation， whichever expired first畅 § ３０２ （ c） ． These new copyright terms， the １９７６ Act instructed， governed all works not published by its effective date of January １， １９７８， regardless of when the works were created畅 § § ３０２ －３０３畅For published works with existing copyrights as of that date， the １９７６ Act granted a copyright term of ７５ years from the date of publication， § § ３０４ （ a） and （ b） ， a １９唱 year increase over the ５６唱 year term applicable under the １９０９ Act畅 The measure at issue here， the CTEA， installed the fourth major duration extension of federal copyrights畅Retaining the general structure of the １９７６ Act， the CTEA enlarges the terms of all existing and future copyrights by ２０ years畅For works created by identified natural persons， the term now lasts from creation until ７０ years after the author摧 s death畅This standard harmonizes the baseline United States copyright term with the term adopted by the European Union in １９９３畅For anonymous works， pseudonymous works， and works made for hire， the term is ９５ years from publication or １２０ years from creation， whichever expires first畅 Paralleling the １９７６ Act， the CTEA applies these new terms to all works not published by January １， １９７８畅For works published before １９７８ with existing copyrights as of the CTEA摧 s effective date， the CTE A extends the term to ９５ years from publication畅 Thus， in common with the １８３１， １９０９， and １９７６ Acts， the CTEA摧 s new terms apply to both future and existing copyrights畅 B Petitioners摧suit challenges the CTEA摧 s constitutionality under both the Copyright Clause and the First Amendment畅 第一编 美 国 版 权法 １ ４９ We granted certiorari to address two questions： whether the CTEA摧 s extension of existing copyrights exceeds Congress摧power under the Copyright Clause； and whether the CTEA摧 s extension of existing and future copyrights violates the First Amendment畅 We now answer those two questions in the negative and affirm畅 A We address first the determination of the courts below that Congress has authority under the Copyright Clause to extend the terms of existing copyrights畅 Text， history， and precedent， we conclude， confirm that the Copyright Clause empowers Congress to prescribe “ limited Times” for copyright protection and to secure the same level and duration of protection for all copyright holders， present and future畅 The CTEA摧 s baseline term of life plus ７０ years， petitioners concede， qualifies as a “ limited Time ” as applied to future copyrights畅Petitioners contend， however， that existing copyrights extended to endure for that same term are not “ limited畅” Petitioners摧 argument essentially reads into the text of the Copyright Clause the command that a time prescription， once set， becomes forever “ fixed” or “ inalterable畅” The word “ limited，” however ， does not convey a meaning so constricted畅At the time of the Framing， that word meant what it means today： “ confined within certain bounds，” “ restrained，” or “ circumscribed畅” Thus understood， a timespan appropriately “ limited ” as applied to future copyrights does not automatically cease to infra， at ７８３， there is no cause to suspect that a purpose to evade the “ limited Times ” prescription prompted Congress to adopt the CTEA畅 １５０ 美国知识产权法 To comprehend the scope of Congress摧 power under the Copyright Clause， “ a page of history is worth a volume of logic畅” ． History reveals an unbroken congressional practice of granting to authors of works with existing copyrights the benefit of term extensions so that all under copyright protection will be governed evenhandedly under the same regime畅As earlier recounted， the First Congress accorded the protections of the Nation摧 s first federal copyright statute to existing and future works alike畅１７９０ Act § １畅 Since then， Congress has regularly applied duration extensions to both existing and future copyrights畅 Justice STEVENS stresses the rejection of a proposed amendment to the Statute of Anne that would have extended the term of existing copyrights， and reports that opponents of the extension feared it would perpetuate the monopoly position enjoyed by English booksellers畅But the English Parliament confronted a situation that never existed in the United States畅Through the late １７th century， a government唱 sanctioned printing monopoly was held by the Stationers摧Company， “ the ancient London guild of printers and booksellers畅” Although that legal monopoly ended in １６９５， concerns about monopolistic practices remained， and the １８ th唱 century English Parliament was resistant to any enhancement of booksellers摧and publishers摧entrenched position畅In this country， in contrast， competition among publishers， printers， and booksellers was “ intense” at the time of the founding， and “ there was not even a rough analog to the Stationers摧Company on the horizon畅” The Framers guarded against the future accumulation of monopoly power in booksellers and publishers by authorizing Congress to vest copyrights only in “ Authors畅” Justice STEVENS does not even 第一编 attempt to explain how １ ５１ 美 国 版 权法 Parliament摧 s response to England摧 s experience with a publishing monopoly may be construed to impose a constitutional limitation on Congress摧power to extend copyrights granted to “Authors畅” Because the Clause empowering Congress to confer copyrights also authorizes patents， congressional practice with respect to patents informs our inquiry畅We count it significant that early Congresses extended the duration of numerous individual patents as well as copyrights畅 Further， although prior to the instant case this Court did not have occasion to decide whether extending the duration of existing copyrights complies with the “ limited Times” prescription， the Court has found no constitutional barrier to the legislative expansion of existing patents畅 Also unavailing is Justice STEVENS摧appeal to language found in a private letter written by James Madison畅Respondent points to a better “ demonstration ” ， of Madison摧 s and other Framers摧 understanding of the scope of Congress摧power to extend patents： “ Then唱 President Thomas Jefferson唱 the first administrator of the patent system， and perhaps the Founder with the narrowest view of the copyright and patent powers唱 signed the １８０８ and １８０９ patent term extensions into law； 畅 畅畅 James Madison， who drafted the Constitution摧 s ‘ limited Times摧language， issued the extended patents under those laws as Secretary of State； and 畅 畅畅Madison as President signed another patent term extension in １８１５畅” Congress摧 consistent historical practice of applying newly enacted copyright terms to future and existing copyrights reflects a judgment stated concisely by Representative Huntington at the time １５２ 美国知识产权法 of the １８３１ Act： “ Justice， policy， and equity alike forb ［ id］ ” that an “ author who had sold his ［ work］ a week ago， be placed in a worse situation than the author who should sell his work the day after the passing of the act畅” （ “ Since １７９０， it has indeed been Congress摧 s policy that the author of yesterday摧 s work should not get a lesser reward than the author of tomorrow摧 s work just because Congress passed a statute lengthening the term today畅” ）．The CTEA follows this historical practice by keeping the duration provisions of the １９７６ Act largely in place and simply adding ２０ years to each of them畅Guided by text， history， and precedent， we cannot agree with petitioners摧 submission that extending the duration of existing copyrights is categorically beyond Congress摧authority under the Copyright Clause畅 Satisfied that the CTEA complies with the “ limited Times ” prescription， we turn now to whether it is a rational exercise of the legislative authority conferred by the Copyright Clause畅 On that point， we defer substantially to Congress畅（ “ It is Congress that has been assigned the task of defining the scope of the limited monopoly that should be granted to authors 畅畅畅in order to give the public appropriate access to their work product畅” ） ． The CTEA reflects judgments of a kind Congress typically makes， judgments we cannot dismiss as outside the Legislature摧 s domain畅 As respondent describes， a key factor in the CTEA摧 s passage was a １９９３ European Union （ EU） directive instructing EU members to establish a copyright term of life plus ７０ years畅 Consistent with the Berne Convention， the EU directed its members to deny this longer term to the works of any non唱 EU country whose laws did not secure the same extended term畅 By extending the 第一编 美 国 版 权法 １ ５３ baseline United States copyright term to life plus ７０ years， Congress sought to ensure that American authors would receive the same copyright protection in Europe as their European counterparts畅The CTEA may also provide greater incentive for American and other authors to create and disseminate their work in the United States畅 In addition to international concerns， Congress passed the CTEA in light of demographic， economic， and technological changes， and rationally credited projections that longer terms would encourage copyright holders to invest in the restoration and public distribution of their works畅 Congress also heard testimony from Register of Copyrights Marybeth Peters and others regarding the economic incentives created by the CTEA畅According to the Register， extending the copyright for existing works “ could 畅畅 畅provide additional income that would finance the production and publication of new works畅” “ Authors would not be able to continue to create，” the Register explained， “ unless they earned income on their finished works畅 The public benefits not only from an author摧 s original work but also from his or her further creations畅 Although this truism may be illustrated in many ways， one of the best examples is Noah Webster， who supported his entire family from the earnings on his speller and grammar during the twenty years he took to complete his dictionary畅” In sum， we find that the CTEA is a rational enactment； we are not at liberty to second唱 guess congressional determinations and policy judgments of this order， however debatable or arguably unwise they may be畅 Accordingly， we cannot conclude that the CTEA唱 which continues the unbroken congressional practice of treating future and １５４ 美国知识产权法 existing copyrights in parity for term extension purposes唱 is an impermissible exercise of Congress摧power under the Copyright Clause畅 B Petitioners摧Copyright Clause arguments rely on several novel readings of the Clause畅We next address these arguments and explain why we find them unpersuasive畅 1 Petitioners contend that even if the CTEA摧 s ２０唱 year term extension is literally a “ limited Time，” permitting Congress to extend existing copyrights allows it to evade the “ limited Times ” constraint by creating effectively perpetual copyrights through repeated extensions畅We disagree畅 As the Court of Appeals observed， a regime of perpetual copyrights “ clearly is not the situation before us畅” Nothing before this Court warrants construction of the CTEA摧 s ２０唱 year term extension as a congressional attempt to evade or override the “ limited Times ” constraint畅 Critically， we again emphasize， petitioners fail to show how the CTEA crosses a constitutionally significant threshold with respect to “ limited Times” that the １８３１， １９０９， and １９７６ Acts did not畅 Those earlier Acts did not create perpetual copyrights， and neither does the CTEA畅 Petitioners dominantly advance a series of arguments all premised on the proposition that Congress may not extend an existing copyright absent new consideration from the author畅 They pursue this main theme under three headings畅Petitioners contend that the 第一编 １ ５５ 美 国 版 权法 CTEA摧 s extension of existing copyrights （ １ ） overlooks the requirement of “ originality，” （２） fails to “ promote the Progress of Science，” and （３ ） ignores copyright摧 s quid pro quo畅 Petitioners摧“ originality” argument draws on Feist Publications， Inc畅v畅Rural Telephone Service Co畅Feist， however， did not touch on the duration of copyright protection畅 The decision did not construe the “ limited Times ” for which a work may be protected， and the originality requirement has no bearing on that prescription畅 More forcibly， petitioners contend that the CTEA摧 s extension of existing copyrights does not “ promote the P rogress of Science” as contemplated by the preambular language of the Copyright Clause畅 As petitioners point out， we have described the Copyright Clause as “ both a grant of power and a limitation” ， and have said that “ the primary objective of copyright ” is “ to promote the Progress of Science” ．The “ constitutional command，” we have recognized， is that Congress， to the extent it enacts copyright laws at all， create a “ system” that “ promotes the Progress of Science畅” We have also stressed， however， that it is generally for Congress， not the courts， to decide how best to pursue the Copyright Clause摧 s objectives畅 The justifications we earlier set out for Congress摧enactment of the CTEA， provide a rational basis for the conclusion that the CTEA “ promotes the Progress of Science畅” On the issue of copyright duration， Congress， from the start， has routinely applied new definitions or adjustments of the copyright term to both future works and existing works not yet in the public domain畅Such consistent congressional practice is entitled to “ very great weight， and when it is remembered that the rights thus established have not been disputed during a period of over two １５６ 美国知识产权法 centuries， it is almost conclusive畅” Closely related to petitioners摧preambular argument， or a variant of it， is their assertion that the Copyright Clause “imbeds a quid pro quo畅” They contend， in this regard， that Congress may grant to an “ Author” an “ exclusive Right” for a “ limited Time，” but only in exchange for a “ Writing畅” Congress摧power to confer copyright protection， petitioners argue， is thus contingent upon an exchange： The author of an original work receives an “ exclusive Right” for a “ limited Time” in exchange for a dedication to the public thereafter畅 Extending an existing copyright without demanding additional consideration， petitioners maintain， bestows an unpaid唱 for benefit on copyright holders and their heirs， in violation of the quid pro quo requirement畅 We can demur to petitioners摧description of the Copyright Clause as a grant of legislative authority empowering Congress “ to secure a bargain唱 this for that畅” （ “ The economic philosophy behind the clause empowering Congress to grant patents and copyrights is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors and inventors in ‘ Science and useful Arts畅摧” ） ．But the legislative evolution earlier recalled demonstrates what the bargain entails畅Given the consistent placement of existing copyright holders in parity with future holders， the author of a work created in the last １７０ years would reasonably comprehend， as the “ this” offered her， a copyright not only for the time in place when protection is gained， but also for any renewal or extension legislated during that time畅 Congress could rationally seek to “ promote 畅畅 畅 Progress ” by including in every copyright statute an express guarantee that authors 第一编 １ ５７ 美 国 版 权法 would receive the benefit of any later legislative extension of the copyright term畅Nothing in the Copyright Clause bars Congress from creating the same incentive by adopting the same position as a matter of unbroken practice畅畅 We note， furthermore， that patents and copyrights do not entail the same exchange， and that our references to a quid pro quo typically appear in the patent context畅 If an invention is already commonly known and used when the patent is sought， “ there might be sound reason for presuming， that the legislature did not intend to grant an exclusive right，” given the absence of a “ quid pro quo畅 This is understandable， given that immediate disclosure is not the objective of， but is exacted from， the patentee畅It is the price paid for the exclusivity secured畅 For the author seeking copyright protection， in contrast， disclosure is the desired objective， not something exacted from the author in exchange for the copyright畅 Indeed， since the １９７６ Act， copyright has run from creation， not publication畅 Further distinguishing the two kinds of intellectual property， copyright gives the holder no monopoly on any knowledge畅A reader of an author摧 s writing may make full use of any fact or idea she acquires from her reading畅 The grant of a patent， on the other hand， does prevent full use by others of the inventor摧 s knowledge畅The monopoly granted by a copyright “is not a monopoly of knowledge畅The grant of a patent does prevent full use being made of knowledge， but the reader of a book is not by the copyright laws prevented from making full use of any information he may acquire from his reading畅” In light of these distinctions， one cannot extract from language in our patent decisions唱 language not trained on a grant摧 s duration唱 genuine support for petitioners摧bold １５８ 美国知识产权法 view畅Accordingly， we reject the proposition that a quid pro quo requirement stops Congress from expanding copyright摧 s term in a manner that puts existing and future copyrights in parity畅 2 As an alternative to their various arguments that extending existing copyrights violates the Copyright Clause per se， petitioners urge heightened judicial review of such extensions to ensure that they appropriately pursue the purposes of the Clause畅 Specifically， petitioners ask us to apply the “ congruence and proportionality ” standard described in cases evaluating exercises of Congress摧power under § ５ of the Fourteenth Amendment畅 But we have never applied that standard outside the § ５ context； it does not hold sway for judicial review of legislation enacted， as copyright laws are， pursuant to Article I authorization畅 Section ５ authorizes Congress to enforce commands contained in and incorporated into the Fourteenth Amendment畅Amdt畅１４ ， § ５ “ The Congress shall have power to enforce， by appropriate legislation， the provisions of this article畅” （ emphasis added） ．The Copyright Clause， in contrast， empowers Congress to define the scope of the substantive right畅It would be no more appropriate for us to subject the CTEA to “ congruence and proportionality” review under the Copyright Clause than it would be for us to hold the Act unconstitutional per se畅 For the several reasons stated， we find no Copyright Clause impediment to the CTEA摧 s extension of existing copyrights畅 If petitioners摧vision of the Copyright Clause held sway， it would do more than render the CTEA摧 s duration extensions 第一编 １ ５９ 美 国 版 权法 unconstitutional as to existing works畅Indeed， petitioners摧assertion that the provisions of the CTEA are not severable would make the CTEA摧 s enlarged terms invalid even as to tomorrow摧 s work畅The １９７６ Act摧 s time extensions， which set the pattern that the CTEA followed， would be vulnerable as well畅 As we read the Framers摧instruction， the Copyright Clause empowers Congress to determine the intellectual property regimes that， overall， in that body摧 s judgment， will serve the ends of the Clause畅Congress may “ implement the stated purpose of the Framers by selecting the policy which in its judgment best effectuates the constitutional aim畅” Beneath the facade of their inventive constitutional interpretation， petitioners forcefully urge that Congress pursued very bad policy in prescribing the CTEA摧 s long terms畅The wisdom of Congress摧action， however， is not within our province to second唱 guess畅Satisfied that the legislation before us remains inside the domain the Constitution assigns to the F irst Branch， we affirm the judgment of the Court of Appeals畅 Also， The CTEA摧 s extension of existing and future copyrights does not violate the First Amendment畅 That Amendment and the Copyright Clause were adopted close in time畅 This proximity indicates the Framers摧view that copyright摧 s limited monopolies are compatible with free speech principles畅In addition， copyright law contains built唱 in First Amendment accommodations畅See Harper ＆ Row， ４７１ U畅S畅， at ５６０畅First， １７ U畅 S畅C畅 § １０２ （ b ） ， which makes only expression， not ideas， eligible for copyright protection， strikes a definitional balance between the First Amendment and copyright law by permitting free communication of facts while still protecting an author摧 s expression畅 Harper ＆ Row， ４７１ U畅S畅， at １６０ 美国知识产权法 ５５６畅Second， the “ fair use ” defense codified at § １０７ allows the public to use not only facts and ideas contained in a copyrighted work， but also expression itself for limited purposes畅 “ Fair use ” thereby affords considerable latitude for scholarship and comment， and even for parody， see Campbell v畅Acuff唱 Rose Music， Inc畅， ５１０ U畅S畅 ５６９畅 The CTEA itself supplements these traditional First Amendment safeguards in two prescriptions： The first allows libraries and similar institutions to reproduce and distribute copies of certain published works for scholarly purposes during the last ２０ years of any copyright term， if the work is not already being exploited commercially and further copies are unavailable at a reasonable price， § １０８ （ h ）； the second exempts small businesses from having to pay performance royalties on music played from licensed radio， television， and similar facilities， § １１０ （５ ） （ B ） ． Finally， petitioners摧reliance on T urner Broadcasting System， Inc畅 v畅FCC， ５１２ U畅S畅６２２ ， ６４１， is misplaced畅Turner Broadcasting invalidated a statute requiring cable television operators to carry and transmit broadcast stations through their proprietary cable systems畅 The CTEA， in contrast， does not oblige anyone to reproduce another摧 s speech against the carrier摧 s will畅 Instead， it protects authors摧original expression from unrestricted exploitation畅The First Amendment securely protects the freedom to make – or decline to make – one摧 s own speech； it bears less heavily when speakers assert the right to make other people摧 s speeches畅When， as in this case， Congress has not altered the traditional contours of copyright protection， further First Amendment scrutiny is unnecessary畅 It is so ordered畅 第四 章 第一节 版 权 的内 容 作者 的权 利 据美国 １９７６ 年版 权法 第 １０６ 条 的 规定， 除了 受到 第 １０７ 条到 １２０ 条的限 第一， 复 之外， 版权人享有以下权利： 权： 即使用受版权保护的作品 作复 品 或者 品； 第二， 演绎权： 据受版权保护的作品 第三， 发行 权： 以 销 售或 者 作衍生作品； 移 所 有权 的 方 式， 或 者 以 出 租、 租赁及出借的方式将受版权保护的作品的复 品或者 品向公众发行流通； 第四， 表演权： 据美国版权法第 １０１ 条的定义， “ 表演权” 是指以朗诵、 表演、 演奏、 舞蹈或 或 作的方式， 来表现该作品， 或者在涉及电影或 的方式表现其形象或让人听到有 第五， 展览权： 是指 作品时， 以连续 。 据美国版权法第 １０１ 条的定 义， “ 展览权” 接地或者以胶 展示作品的复 的伴 接地或者以设 、 幻灯、 电视形象或其他的设 品， 或者在涉及电影或其他 或 来 品时， 以非连 续的方式展示单个的形象。 另外， 如果作品为 品， 版 权 人 还 享有 数 码 公开表 演权。 就表演权 和展 览 权 来说， 有 开” 的。 的 表演 和 展览 都 必 须 是 “ 公 据美国版权法第 １０１ 条， “ 公 开地表 演或 展览一 部作 第一编 品” 是指： （１ ） 在 任何 向公众 开放 的地 庭成员或 １ ６３ 美 国 版 权法 ， 或者 在多 于一 交朋 友 的相 当 数量 人 群 出现 的 地 ， 表 演 或 展览 作 品； （ ２） 将作 品的表 演或 展览， 以任 何设 施或 技 术 给第 （１） 款规定的地 公众是在同一地 家 输或 达 或公 众， 而不论 能够接 收表 演或展 览的 还是在不同的地 ， 是在同一时间还是在不同 的时间接收作品。 此外， 作者还有一种非常重要的权利， 即精神权利， 这通常 包括发表权、 保护 作 品 整 权、 署 名 权 和 追回 已 经 发 表 的作 品 权。 在美国版权法中， 这 一权利 主 要体 现在 １９７６ 年版 权法 的第 １０６A 条。 案 例 20 Mirage Editions， Inc．v． Albuquerque A．R．T．Co． ５６ F畅 ２ d １３４１ BRUNETTI， Circuit Judge： Albuquerque A畅R畅T畅 （ appellant or A畅R畅T畅） appeals the district court摧 s granting of summary judgment in favor of appellees Mirage， Dumas， and Van Der Marck （ Mirage）．The district court， in granting summary judgment， found that appellant had infringed Mirage摧 s copyright and issued an order enjoining appellant from further infringing Mirage摧 s copyright畅 Patrick Nagel was an artist whose works appeared in many media including lithographs， posters， serigraphs， and as graphic art １６４ 美国知识产权法 in many magazines， most notably Playboy畅Nagel died in １９８４畅His widow Jennifer Dumas owns the copyrights to the Nagel art works which Nagel owned at the time of his death畅Mirage is the exclusive publisher of Nagel摧 s works and also owns the copyrights to many of those works畅Dumas and Mirage own all of the copyrights to Nagel摧 s works畅No one else holds a copyright in any Nagel work畅Appellee Alfred Van Der Marck Editions， Inc畅is the licensee of Dumas and Mirage and the publisher of the commemorative book entitled NAGEL： The Art of Patrick Nagel （ “ the book ”） ， which is a compilation of selected copyrighted individual art works and personal commentaries畅 Since １９８４ ， the primary business of appellant has consisted of： １ ） purchasing artwork prints or books including good quality artwork page prints therein； ２ ） gluing each individual print or page print onto a rectangular sheet of black plastic material exposing a narrow black margin around the print； ３ ） gluing the black sheet with print onto a major surface of a rectangular white ceramic tile； ４） applying a transparent plastic film over the print， black sheet and ceramic tile surface； and ５） offering the tile with artwork mounted thereon for sale in the retail market畅 It is undisputed， in this action， that appellant did the above process with the Nagel book畅The appellant removed selected pages from the book， mounted them individually onto ceramic tiles and sold the tiles at retail畅 Mirage， Dumas and Van Der Marck brought an action alleging infringement of registered copyrights in the artwork of Nagel and in the book畅 Mirage also alleged trademark infringement and unfair competition under the Lanham Act畅 and the state law of unfair 第一编 １ ６５ 美 国 版 权法 competition， et seq畅 Appellant moved for summary judgment on the Lanham Act and Copyright Act causes of action畅The district court granted summary judgment as to the Lanham Act cause of action but denied summary judgment on the copyright cause of action畅Mirage then moved for summary judgment on the copyright claim which was granted畅The court also enjoined appellants from removing individual art images from the book， mounting each individual image onto a separate tile and advertising for sale and ／ or selling the tiles with the images mounted thereon畅 The Copyright Act of １９７６， confers upon the copyright holder exclusive rights to make several uses of his copyright畅Among those rights are： （ １ ） the right to reproduce the copyrighted work in copies， （２ ） the right to prepare derivative works based upon the copyrighted work； （ ３ ） the right to distribute copies of the copyrighted work to the public by sale or other transfer of ownership， or by rental， lease or lending； and （ ４ ） in the case of literary ， pictorial， graphic and sculptural works， including individual images， the right to display the copyrighted work publicly畅 T he district court concluded appellant infr inged the copyr ights in the individual images through its tile唱 preparing process and also concluded that the resulting products comprised derivative works畅 Appellant contends that there has been no copyright infringement because （１） its tiles are not derivative works， and （２） the “ first sale” doctrine precludes a finding of infringement畅 The Copyright Act of １９７６， defines a derivative work as： A work based upon one or more preexisting works such as a １６６ 美国知识产权法 translation， musical arrangement， dramatization， fictionalization， motion picture version， sound recording， art reproduction， abridgment， condensation or any other form in which a work may be recast， transformed， or adapted畅 A work consisting of editorial revisions， annotations， elaborations， or other modifications which， as a whole， represent an original work of authorship is a “ derivative work畅” （ Emphasis added） ． The protection of derivative rights extends beyond mere protection against unauthorized copying to include the right to make other versions of ， perform， or exhibit the work畅Melvin Nimmer in his treatise on copyright law wrote： A work will be considered a derivative work only if it would be considered an infringing work if the material which it has derived from a preexisting work had been taken without the consent of a copyright proprietor of such preexisting work畅 What appellant has clearly done here is to make another version of Nagel摧 s art works， Lone Ranger ， supra， and that amounts to preparation of a derivative work畅By borrowing and mounting the preexisting， copyrighted individual art images without the consent of the copyright proprietors — Mirage and Dumas as to the art works and Van Der Marck as to the book — appellant has prepared a derivative work and infringed the subject copyrights畅 Appellant摧 s contention that since it has not engaged in “ art reproduction” and therefore its tiles are not derivative works is not fully dispositive of this issue畅Appellant has ignored the disjunctive phrase “ or any other form in which a work may be recast， transformed or adapted畅” The legislative history of the Copyright 第一编 １ ６７ 美 国 版 权法 Act of １９７６ indicates that Congress intended that for a violation of the right to prepare derivative works to occur “ the infringing work must incorporate a portion of the copyrighted work in some form畅” The language “ recast， transformed or adapted” seems to encompass other alternatives besides simple art reproduction畅By removing the individual images from the book and placing them on the tiles， perhaps the appellant has not accomplished reproduction畅 We conclude， though， that appellant has certainly recast or transformed the individual images by incorporating them into its tile唱 preparing process畅 The “ first sale” doctrine， which appellant also relies on in its contention that no copyright infringement has occurred畅That section provides： Notwithstanding the provisions of Section １０６ （３ ）， the owner of a particular copy or phonorecord lawfully made under this title， or any person authorized by such owner， is entitled， without the authority of the copyright owner， to sell or otherwise dispose of the possession of that copy or phonorecord畅 In United States v畅Wise， ５５０ F畅２d １１８０ （ ９ th Cir畅１９７７ ） ， which concerned a criminal prosecution under the pre唱 １９７６ Copyright Act， this court held that： The “ first sale” doctrine provides that where a copyright owner parts with title to a particular copy of his copyrighted work， he divests himself of his exclusive right to vend that particular copy畅 While the proprietor摧 s other copyright rights （ reprinting， copying， etc畅） remain unimpaired， the exclusive right to vend the transferred copy rests with the vendee， who is not restricted by statute from further transfers of that copy畅 １６８ 美国知识产权法 W e recognize that， under the “ first sale ” doctrine as enunciated at １７ U畅S畅C畅 § １０９ （ a） and as discussed in W ise， appellant can purchase a copy of the Nagel book and subsequently alienate its ownership in that book畅However， the right to transfer applies only to the particular copy of the book which appellant has purchased and nothing else畅 The mere sale of the book to the appellant without a specific transfer by the copyright holder of its exclusive right to prepare derivative works， does not transfer that right to appellant畅The derivative works right， remains unimpaired and with the copyright proprietors — Mirage， Dumas and Van Der M arck畅 As we have previously concluded that appellant摧 s tile唱 preparing process results in derivative works and as the exclusive right to prepare derivative works belongs to the copyright holder， the “ first sale ” doctrine does not bar the appellees摧copyright infringement claims畅 We AFFIRM畅 １畅 “first sale” 原则是否能够适用于本案？ ２畅本案的最终 裁决 在 现实 中 会造 成 什 么 影 响？ 你 认 为该 裁 决是否合理？ 第一编 １ ６９ 美 国 版 权法 案 例 21 Lee v．A．R．T．Company １２５ F畅３d ５８０ EASTERBROOK， Circuit Judge． Annie Lee creates works of art， which she sells through her firm Annie Lee ＆ Friends畅Deck the Walls， a chain of outlets for modestly priced art， is among the buyers of her works， which have been registered with the Register of Copyrights畅One Deck the Walls store sold some of Lee摧 s notecards and small lithographs to A畅R畅T畅 Company， which mounted the works on ceramic tiles （ covering the art with transparent epoxy resin in the process） and resold the tiles畅 Lee contends that these tiles are derivative works， which under １７ U畅 S畅C畅 § １０６ （２） may not be prepared without the permission of the copyright proprietor畅 She seeks both monetary and injunctive relief畅 Her position has the support of two cases holding that A畅R畅T畅摧 s business violates the copyright laws， affirming without published opinion畅 Mirage Editions， the only full appellate discussion， dealt with pages cut from books and mounted on tiles； the court of appeals摧concludes that the reasoning of Mirage Editions is equally applicable to works of art that were sold loose畅Our district court disagreed with these decisions and entered summary judgment for the defendant畅 Now one might suppose that this is an open and shut case under the doctrine of first sale， codified at １７ U畅 S畅C畅 § １０９ （ a ） ． １７０ 美国知识产权法 A畅R畅T畅bought the work legitimately， mounted it on a tile， and resold what it had purchased畅Because the artist could capture the value of her art摧 s contribution to the finished product as part of the price for the original transaction， the economic rationale for protecting an adaptation as “ derivative” is absent畅An alteration that includes （ or consumes ） a complete copy of the original lacks economic significance畅 One work changes hands multiple times， exactly what § １０９ （a ） permits， so it may lack legal significance too畅But § １０６ （２） creates a separate exclusive right， to “ prepare derivative works” ， and Lee believes that affixing the art to the tile is “ preparation，” so that A畅R畅T畅would have violated § １０６ （ ２ ） even if it had dumped the finished tiles into the Marianas Trench畅 For the sake of argument we assume that this is so and ask whether card唱 on唱 a唱 tile is a “ derivative work” in the first place畅 “ Derivative work ” is a work based upon one or more preexisting works， such as a translation， musical arrangement， dramatization， fictionalization， motion picture version， sound recording， art reproduction， abridgment， condensation， or any other form in which a work may be recast， transformed， or adapted畅A work consisting of editorial revisions， annotations， elaborations， or other modifications which， as a whole， represent an original work of authorship， is a “ derivative work” ． The district court concluded that A畅R畅T畅摧 s mounting of Lee摧 s works on tile is not an “original work of authorship” because it is no different in form or function from displaying a painting in a frame or placing a medallion in a velvet case畅No one believes that a museum violates § １０６ （ ２ ） every time it changes the frame of a painting that is still under copyright， although the choice of frame or glazing 第一编 美 国 版 权法 １ ７１ affects the impression the art conveys， and many artists specify frames （ or pedestals for sculptures ） in detail畅 Mirage Editions acknowledge that framing and other traditional means of mounting and displaying art do not infringe authors摧exclusive right to make derivative works畅Nonetheless， the ninth circuit held， what A畅R畅T畅 does creates a derivative work because the epoxy resin bonds the art to the tile畅Our district judge thought this a distinction without a difference， and we agree畅If changing the way in which a work of art will be displayed creates a derivative work， and if Lee is right about what “ prepared ” means， then the derivative work is “ prepared ” when the art is mounted； what happens later is not relevant， because the violation of the § １０６ （２ ） right has already occurred畅If the framing process does not create a derivative work， then mounting art on a tile， which serves as a flush frame， does not create a derivative work畅What is more， the ninth circuit erred in assuming that normal means of mounting and displaying art are easily reversible畅A painting is placed in a wooden “ stretcher ” as part of the framing process； this leads to some punctures （ commonly tacks or staples） ， may entail trimming the edges of the canvas， and may affect the surface of the painting as well畅Works by Jackson Pollock are notoriously hard to mount without damage， given the thickness of their paint畅 As a prelude to framing， photographs， prints， and posters may be mounted on stiff boards using wax sheets， but sometimes glue or another more durable substance is employed to create the bond畅 Lee wages a vigorous attack on the district court摧 s conclusion that A畅R畅T畅摧 s mounting process cannot create a derivative work because the change to the work “ as a whole ” is not sufficiently １７２ 美国知识产权法 original to support a copyright畅 Cases such as Gracen v畅 The Bradford Exchange， Inc畅， ６９８ F畅２d ３００ （７th Cir畅１９８３） ， show that neither A畅R畅T畅nor Lee herself could have obtained a copyright in the card唱 on唱 a唱 tile， thereby not only extending the period of protection for the images but also eliminating competition in one medium of display畅After the ninth circuit held that its mounting process created derivative works， A畅R畅T畅tried to obtain a copyright in one of its products； the Register of Copyrights sensibly informed A畅R畅T畅 that the card唱 on唱 a唱 tile could not be copyrighted independently of the note card itself畅 But Lee says that this is irrelevant唱 that a change in a work摧 s appearance may infringe the exclusive right under § １０６ （２） even if the alteration is too trivial to support an independent copyright畅Pointing to the word “original” in the second sentence of the statutory definition， the district judge held that “ originality ” is essential to a derivative work畅 This understanding has the support of both cases and respected commentators畅Pointing to the fact that the first sentence in the statutory definition omits any reference to originality， Lee insists that a work may be derivative despite the mechanical nature of the transformation畅This view， too， has the support of both cases and respected commentators； Paul Goldstein， Copyright： Principles， Law and Practice § ５畅 ３畅１ （ ２d ed畅 １９９６ ） （ suggesting that a transformation is covered by § １０６ （２） whenever it creates a “new work for a different market” ） ． Fortunately， it is not necessary for us to choose sides畅Assume for the moment that the first sentence recognizes a set of non唱 original derivative works畅To prevail， then， Lee must show that A畅R畅T畅 altered her works in one of the ways mentioned in the first sentence畅 第一编 美 国 版 权法 １ ７３ The tile is not an “ art reproduction ” ； A畅R畅T畅 purchased and mounted Lee摧 s original works畅 That leaves the residual clause： “ any other form in which a work may be recast， transformed， or adapted畅” None of these words fits what A畅R畅T畅 did畅 Lee摧 s works were not “ recast” or “ adapted ” ． “ T ransformed ” comes closer and gives the ninth circuit some purchase for its view that the permanence of the bond between art and base matters畅 Yet the copyrighted note cards and lithographs were not “ transformed ” in the slightest畅T he art was bonded to a slab of ceramic， but it was not changed in the process畅It still depicts exactly what it depicted when it left Lee摧 s studio畅If mounting works a “ transformation，” then changing a painting摧 s frame or a photograph摧 s mat equally produces a derivative work畅 Indeed， if Lee is right about the meaning of the definition摧 s first sentence， then any alteration of a work， however slight， requires the author摧 s permission畅We asked at oral argument what would happen if a purchaser jotted a note on one of the note cards， or used it as a coaster for a drink， or cut it in half， or if a collector applied his seal （ as is common in Japan ） ； L ee摧 s counsel replied that such changes prepare derivative works， but that as a practical matter artists would not file suit畅A definition of derivative work that makes criminals out of art collectors and tourists is jarring despite Lee摧 s gracious offer not to commence civil litigation畅 １畅本案被告对原告的作品作了什么改动？ １７４ 美国知识产权法 ２畅经被告改变后的作品是否构成 “ 派生作品” ？ 案 例 22 Columbia Pictures Industries v．Redd H orne ７４９ F畅２d １５４ Maxwell摧 s Video Showcase， Ltd畅， operates two stores in Erie， Pennsylvania畅 At these two facilities， Maxwell摧 s sells and rents video cassette recorders and prerecorded video cassettes， and sells blank video cassette cartridges畅These activities are not the subject of the plaintiffs摧complaint畅 The copyright infringement issue in this case arises from defendants摧exhibition of video cassettes of the plaintiffs摧films， or what defendants euphemistically refer to as their “ showcasing” or “ in唱 store rental” concept畅 Each store contains a small showroom area in the front of the store， and a “ showcase ” or exhibition area in the rear畅The front showroom contains video equipment and materials for sale or rent， as well as dispensing machines for popcorn and carbonated beverages畅Movie posters are also displayed in this front area畅In the rear “ showcase” area， patrons may view any of an assortment of video cassettes in small， private booths with space for two to four people畅There are a total of eighty唱 five booths in the two stores畅 Each booth or room is approximately four feet by six feet and is carpeted on the floor and walls畅In the front there is a nineteen inch 第一编 美 国 版 权法 １ ７５ color television and an upholstered bench in the back畅 The procedure followed by a patron wishing to utilize one of the viewing booths or rooms is the same at both facilities畅The customer selects a film from a catalogue which contains the titles of available films畅The fee charged by Maxwell摧 s depends on the number of people in the viewing room， and the time of day畅 The price is ＄５畅００ for one or two people before ６ p畅m畅， and ＄６畅 ００ for two people after ６ p畅m畅There is at all times a ＄１畅００ surcharge for the third and fourth person畅 The fee also entitles patrons to help themselves to popcorn and soft drinks before entering their assigned rooms畅Closing the door of the viewing room activates a signal in the counter area at the front of the store畅An employee of Maxwell摧 s then places the cassette of the motion picture chosen by the viewer into one of the video cassette machines in the front of the store and the picture is transmitted to the patron摧 s viewing room畅The viewer may adjust the light in the room， as well as the volume， brightness， and color levels on the television set畅 Access to each room is limited to the individuals who rent it as a group畅Although no restriction is placed on the composition of a group， strangers are not grouped in order to fill a particular room to capacity畅Maxwell摧 s is open to any member of the public who wishes to utilize its facilities or services畅 Maxwell摧 s advertises on Erie radio stations and on the theatre pages of the local newspapers畅 Typically， each advertisement features one or more motion pictures， and emphasizes Maxwell摧 s selection of films， low prices， and free refreshments畅 The advertisements do not state that these motion pictures are video cassette copies畅At the entrance to the two Maxwell摧 s facilities， there １７６ 美国知识产权法 are also advertisements for individual films， which resemble movie posters畅 Infringement of Plaintiffs摧Copyright It may be stated at the outset that this is not a case of unauthorized taping or video cassette piracy畅 The defendants obtained the video cassette copies of plaintiffs摧copyrighted motion pictures by purchasing them from either the plaintiffs or their authorized distributors畅 T he sale or rental of these cassettes to individuals for home viewing is also not an issue畅Plaintiffs do not contend that in唱 home use infringes their copyright畅 The plaintiffs摧complaint is based on their contention that the exhibition or showing of the video cassettes in the private booths on defendants摧premises constitutes an unauthorized public performance in violation of plaintiffs摧exclusive rights under the federal copyright laws畅 It is acknowledged that it is the role of the Congress， not the courts， to formulate new principles of copyright law when the legislature has determined that technological innovations have made them necessary畅In the words of Justice Stevens， “ Congress has the constitutional authority and the institutional ability to accommodate fully the varied permutations of competing interests that are inevitably implicated by such new technology畅” Sony Corp畅， supra， １０４ S畅Ct畅 at ７８３畅 A defendant， however， is not immune from liability for copyright infringement simply because the technologies are of recent origin or are being applied to innovative uses畅Although this case involves a novel application of relatively recent technological developments， it can nonetheless be readily analyzed and resolved within the existing statutory framework畅 Section １０６ of the Copyright Act confers upon the copyright holder certain exclusive rights畅This section provides： Subject to sections １０７ through １１８， the owner of copyright under this title has the exclusive rights to do and to authorize （１） to reproduce the copyrighted work in copies or phonorecords； （ ２ ） to prepare derivative works （３ ） to distribute copies； （４） in the case of literary， musical， dramatic， and choreographic works， pantomimes， and motion pictures and other audiovisual works， to perform the copyrighted work publicly； and （５） in the case of literary， musical， dramatic， and choreographic works， pantomimes， and pictorial， graphic， or sculptural works， including the individual images of a motion picture or other audiovisual work， to display the copyrighted work publicly畅 It is undisputed that the defendants were licensed to exercise the right of distribution畅A copyright owner， however， may dispose of a copy of his work while retaining all underlying copyrights which are not expressly or impliedly disposed of with that copy畅Thus， it is clear that the plaintiffs have retained their interest in the other four enumerated rights畅 Since the rights granted by section １０６ are separate and distinct， and are severable from one another， the grant of one does not waive any of the other exclusive rights畅 Thus， plaintiffs摧sales of video cassette copies of their copyrighted motion pictures did not result in a waiver of any of the other exclusive rights enumerated in section １０６， such as the exclusive right to perform their motion pictures publicly畅 In fundamental question is whether th essence， therefore， the １７８ 美国知识产权法 the conclusion of the district court that these activities constitute a public performance， and are an infringement畅 “ To perform a work means 畅 畅畅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畅” Clearly， playing a video cassette results in a sequential showing of a motion picture摧 s images and in making the sounds accompanying it audible畅 Thus， Maxwell摧 s activities constitute a performance under section １０１畅 The remaining question is whether these performances are public畅Section １０１ also states that to perform a work “ publicly” means “ to perform 畅畅畅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畅” The statute is written in the disjunctive， and thus two categories of places can satisfy the definition of “ to perform a work publicly畅” The first category is self唱 evident； it is “ a place open to the public畅” The second category， commonly referred to as a semi唱 public place， is determined by the size and composition of the audience畅 The legislative history indicates that this second category was added to expand the concept of public performance by including those places that， although not open to the public at large， are accessible to a significant number of people畅Clearly， if a place is public， the size and composition of the audience are irrelevant畅 However， if the place is not public， the size and composition of the audience will be determinative畅 We find it unnecessary to examine the second part of the statutory definition because we agree with the district court摧 s conclusion that Maxwell摧 s was open to the public畅 On the 第一编 美 国 版 权法 １ ７９ composition of the audience， the district court noted that “ the showcasing operation is not distinguishable in any significant manner from the exhibition of films at a conventional movie theater畅” ５６８ F畅Supp畅at ５００畅 Any member of the public can view a motion picture by paying the appropriate fee畅 The services provided by Maxwell摧 s are essentially the same as a movie theatre， with the additional feature of privacy畅 The relevant “ place ” within the meaning of section １０１ is each of Maxwell摧 s two stores， not each individual booth within each store畅Simply because the cassettes can be viewed in private does not mitigate the essential fact that Maxwell摧 s is unquestionably open to the public畅 The conclusion that Maxwell摧 s activities constitute public performances is fully supported by subsection （ ２ ） of the statutory definition of public performance： （ ２） to transmit or otherwise communicate a performance 畅畅 畅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 畅 畅畅receive it in the same place or in separate places and at the same time or at different times畅 As explained in the House Report which accompanies the Copyright Revision Act of １９７６， “ a performance made available by transmission to the public at large is ‘ public摧even though the recipients are not gathered in a single place畅畅畅 畅The same principles apply whenever the potential recipients of the transmission represent a limited segment of the public， such as the occupants of hotel rooms 畅畅畅畅” Thus， the transmission of a performance to members of the public， even in private settings such as hotel rooms or Maxwell摧 s viewing rooms， constitutes a public performance畅As the statutory １８０ 美国知识产权法 language and legislative history clearly indicate， the fact that members of the public view the performance at different times does not alter this legal consequence畅 Professor Nimmer摧 s examination of this definition is particularly pertinent： “ if the same copy 畅畅畅of a given work is repeatedly played （ i畅e畅， ‘ performed摧 ） by different members of the public， albeit at different times， this constitutes a ‘ public摧performance畅” Indeed， Professor Nimmer would seem to have envisaged Maxwell摧 s when he wrote： one may anticipate the possibility of theaters in which patrons occupy separate screening rooms， for greater privacy， and in order not to have to await a given hour for commencement of a given film畅These too should obviously be regarded as public performances within the underlying rationale of the Copyright Act畅 Although Maxwell摧 s has only one copy of each film， it shows each copy repeatedly to different members of the public畅 This constitutes a public performance畅 The First Sale Doctrine The defendants also contend that their activities are protected by the first sale doctrine畅The first sale doctrine is codified in section １０９ （ a） of Title １７畅This section provides： Notwithstanding the provisions of section １０６ （ ３ ） ， the owner of a particular copy or phonorecord lawfully made under this title， or any person authorized by such owner， is entitled， without the authority of the copyright owner， to sell or otherwise dispose of the possession of that copy or phonorecord畅 １７ U畅S畅C畅 § １０９ （ a ） （ １９８２ ） ． Section １０９ （ a ） is an 第一编 美 国 版 权法 １ ８１ extension of the principle that ownership of the material object is distinct from ownership of the copyright in this material畅The first sale doctrine prevents the copyright owner from controlling the future transfer of a particular copy once its material ownership has been transferred畅 The transfer of the video cassettes to the defendants， however， did not result in the forfeiture or waiver of all of the exclusive rights found in section １０６畅 The copyright owner摧 s exclusive right “ to perform the copyrighted work publicly” has not been affected； only its distribution right as to the transferred copy has been circumscribed畅 In essence， the defendants摧“ first sale ” argument is merely another aspect of their argument that their activities are not public performances畅For the defendants摧argument to succeed， we would have to adopt their characterization of the “ showcasing” transaction or activity as an “ in唱 store rental畅” T he facts do not permit such a finding or conclusion畅 The record clearly demonstrates that showcasing a video cassette at Maxwell摧 s is a significantly different transaction than leasing a tape for home use畅 Maxwell摧 s never disposed of the tapes in its showcasing operations， nor did the tapes ever leave the store畅At all times， Maxwell摧 s maintained physical dominion and control over the tapes畅Its employees actually played the cassettes on its machines畅 The charges or fees received for viewing the cassettes at Maxwell摧 s facilities are analytically indistinguishable from admission fees paid by patrons to gain admission to any public theater畅 Plainly， in their showcasing operation， the appellants do not sell， rent， or otherwise dispose of the video cassette畅On the facts presented， Maxwell摧 s “ showcasing” operation is a public performance， which， as a matter of law， １８２ 美国知识产权法 constitutes a copyright infringement畅 Liability of Co唱 Defendants Defendant唱 appellants， Robert Zeny， Glenn W畅 Zeny， and Redd Horne， Inc畅， challenge that part of the district court摧 s order which holds them liable as co唱 infringers畅We agree with the district court and affirm畅 It is well settled that “ one who， with knowledge of the infringing activity， induces， causes or materially contributes to the infringing activity of another， may be held liable as a ‘ contributory摧 infringer畅” An officer or director of a corporation who knowingly participates in the infringement can be held personally liable， jointly and severally， with the corporate defendant畅 Robert Zeny is the president and the sole shareholder of Maxwell摧 s Video Showcase， Ltd畅 He knowingly initiated and participated in the infringing activity， and ignored repeated requests from the plaintiffs that he cease and desist the activity畅 He too， therefore， is clearly liable as a co唱 infringer畅 Glenn W畅 Zeny， Robert摧 s brother ， is not a stockholder or officer ， nor does he have a direct financial interest in Maxwell摧 s Video Showcase， Ltd畅 Glenn W畅 Zeny， however， conducted negotiations and wrote letters， on Redd Horne， Inc畅， stationery， on behalf of Maxwell摧 s and its predecessor corporation畅Some of these letters on Redd Horne， Inc畅， stationery， refer to “ our company” and “ our concept” without mentioning Maxwell摧 s畅The impression conveyed by the letters is that Glenn Z eny and Redd Horne， Inc畅， are principals in the venture畅Glenn W畅 Zeny， like his brother， participated knowingly and significantly in the infringing activity and 第一编 美 国 版 权法 １ ８３ ignored the plaintiffs摧persistent requests that the activity cease畅 Redd Horne， Inc畅， conducted all of the advertising and promotional work for Maxwell摧 s畅 It also provided financial， accounting， and administrative services for Maxwell摧 s畅All of these services， and the advertising services in particular， contributed and， indeed， were essential to the copyright infringement畅 In addition， Glenn W畅Zeny摧 s knowledge of ， and substantial participation in， the infringing activities may be imputed to his employer， Redd Horne， Inc畅Thus， we hold that the substantial， knowing participation of Glenn W畅Zeny and Redd Horne， Inc畅， was more than sufficient to hold them liable as co唱 infringers畅 Conclusion In view of the foregoing， it is the holding of this Court that the defendants摧activities constituted an unauthorized， and， therefore， an unlawful public performance of the plaintiffs摧copyrighted motion pictures畅 We also conclude that the activities of each named defendant were sufficient to hold each jointly and severally liable for the copyright infringement畅In addition， we hold that the defendants摧 counterclaims were properly dismissed畅 The judgment of the district court， therefore， will be affirmed畅 １畅本案关键问题是什么？ ２畅如何认定 “ 公开表演” ？ 观众的成分 和规模 是否对公 开表 演的认定有绝对性影响？ １８４ 美国知识产权法 ３畅发行权一次用尽原则和本案有何关系？ 案 例 23 Quality King Distributors， Inc．v．L摧 Anzaresearch Int摧 l ， Inc． ９８ F畅 ３ d １１０９ Respondent L摧 anza， a California manufacturer， sells its hair care products in this country exclusively to distributors who have agreed to resell within limited geographic areas and only to authorized retailers畅 L摧 anza promotes its domestic sales with extensive advertising and special retailer training畅 In foreign markets， however， it does not engage in comparable advertising or promotion； its foreign prices are substantially lower than its domestic prices畅It appears that after L摧 anza摧 s United Kingdom distributor arranged for the sale of several tons of L摧 anza products， affixed with copyrighted labels， to a distributor in Malta， that distributor sold the goods to petitioner， which imported them back into this country without L摧 anza摧 s permission and then resold them at discounted prices to unauthorized retailers畅 L摧 anza filed suit， alleging that petitioner摧 s actions violated L摧 anza摧 s exclusive rights under the Copyright Act of １９７６ （ Act） ， １７ U畅 S畅C畅 § １０６ ５０１， and ６０２， to reproduce and distribute the copyrighted material in the United States畅The District Court rejected petitioner摧 s “ first sale ” defense under § １０９ （ a ） and entered summary judgment for L摧 anza畅 第一编 美 国 版 权法 １ ８５ Concluding that § ６０２ （ a） ， which gives copyright owners the right to prohibit the unauthorized importation of copies， would be “ meaningless” if § １０９ （ a ） provided a defense， the Ninth Circuit affirmed畅 Held： The first sale doctrine endorsed in § １０９ （ a ） is applicable to imported copies畅 （ A ） In Bobbs唱 Merrill Co畅 v畅 Straus， ２１０ U畅S畅３３９， this Court held that the exclusive right to “ vend ” under the copyright statute then in force applied only to the first sale of a copyrighted work畅 Congress subsequently codified Bobbs唱 Merrill摧 s first sale doctrine in the Act畅Section １０６ （３） gives the copyright holder the exclusive right “ to distribute copies 畅畅 畅by sale or other transfer of ownership，” but § １０９ （ a） provides： “ Notwithstanding 畅 畅畅［ § ］ １０６ （３） ， the owner of a particular copy 畅畅畅lawfully made under this title， 畅畅畅 is entitled， without the authority of the copyright owner， to sell or otherwise dispose of the possession of that copy 畅畅畅畅” Although the first sale doctrine prevents L摧 anza from treating unauthorized resales by its domestic distributors as an infringement of the exclusive right to distribute， L摧 anza claims that § ６０２ （ a ） ， properly construed， prohibits its foreign distributors from reselling its products to American vendors unable to buy from its domestic distributors畅 （ B ） The statutory language clearly demonstrates that the right granted by § ６０２ （ a ） is subject to § １０９ （ a ） ． Significantly， § ６０２ （ a ） does not categorically prohibit the unauthorized importation of copyrighted materials， but provides that， with three exceptions， such “ importation 畅畅畅 is an infringement of the exclusive right to distribute 畅畅畅under ［ § ］ １０６ 畅畅畅畅” Section １０６ １８６ 美国知识产权法 in turn expressly states that all of the exclusive rights therein granted — including the distribution right granted by subsection （３ ） — are limited by § § １０７ through １２０畅 One of those limitations is provided by § １０９ （ a ） ， which expressly permits the owner of a lawfully made copy to sell that copy “ notwithstanding the provisions of ［ § ］ １０６ （ ３ ） ． ” After the first sale of a copyrighted item “ lawfully made under this title，” any subsequent purchaser， whether from a domestic or a foreign reseller， is obviously an “ owner” of that item畅Read literally， § １０９ （ a） unambiguously states that such an owner “ is entitled， without the authority of the copyright owner， to sell” that item畅Moreover， since § ６０２ （ a） merely provides that unauthorized importation is an infringement of an exclusive right “ under ［ § ］ １０６ ，” and since that limited right does not encompass resales by lawful owners， § ６０２ （ a ） 摧 s literal text is simply inapplicable to both domestic and foreign owners of L摧 anza摧 s products who decide to import and resell them here畅 （ C） The Court rejects L摧 anza摧 s argument that § ６０２ （ a）， and particularly its exceptions， are superfluous if limited by the first sale doctrine畅The short answer is that this argument does not adequately explain why the words “ under ［ § ］ １０６ ” appear in § ６０２ （ a ） ． Moreover， there are several flaws in L摧 anza摧 s reasoning that， because § ６０２ （ b） already prohibits the importation of unauthorized or “ piratical ” copies， § ６０２ （ a ） must cover nonpiratical （ “lawfully made” ） copies sold by the copyright owner畅First， even if § ６０２ （ a ） applied only to piratical copies， it at least would provide a private remedy against the importer， whereas § ６０２ （ b）摧 s enforcement is vested in the Customs Service畅 Second， because § １０９ （ a ） 摧 s protection is available only to the “ owner ” of a 第一编 美 国 版 权法 １ ８７ lawfully made copy， the first sale doctrine would not provide a defense to a § ６０２ （ a） action against a non唱 owner such as a bailee畅 Third， § ６０２ （ a ） applies to a category of copies that are neither piratical nor “ lawfully made under this title ” ： those that are “ lawfully made” under another country摧 s law畅 （ D ） Also rejected is L摧 anza摧 s argument that because § ５０１ （ a） defines an “ infringer” as one “ who violates 畅 畅畅［ § ］ １０６ 畅畅 畅 ， or who imports 畅畅畅in violation of ［ § ］ ６０２，” a violation of the latter type is distinct from one of the former， and thus not subject to § １０９ （ a） ．This argument摧 s force is outweighed by other statutory considerations， including the fact that § ６０２ （ a ） unambiguously states that the prohibited importation is an infringement “ under ［ § ］ １０６，” thereby identifying § ６０２ violations as a species of § １０６ violations畅 More important is the fact that the § １０６ rights are subject to all of the provisions of “ ［ § ］ １０７ through １２０畅” If § ６０２ （ a） functioned independently， none of those sections would limit its coverage畅 （ E ） The Court finds unpersuasive the Solicitor General摧 s argument that “importation” describes an act that is not protected by § １０９ （ a ） 摧 s authorization to a subsequent owner “ to sell or otherwise dispose of the possession of ” a copy畅 An ordinary interpretation of that language includes the right to ship the copy to another person in another country畅 More important， the Solicitor General摧 s cramped reading is at odds with § １０９ （ a） 摧 s necessarily broad reach畅The whole point of the first sale doctrine is that once the copyright owner places a copyrighted item in the stream of commerce by selling it， he has exhausted his exclusive statutory right to control its distribution畅There is no reason to assume that Congress １８８ 美国知识产权法 intended § １０９ （ a） to limit the doctrine摧 s scope畅 （ F ） The wisdom of protecting domestic copyright owners from the unauthorized importation of validly copyrighted copies of their works， and the fact that the Executive Branch has recently entered into at least five international trade agreements apparently intended to do just that， are irrelevant to a proper interpretation of the Act畅 Reversed畅 １畅本案的主要争议是什么？ ２畅 “first sale” 原则背后的政策考虑是什么？ ３畅美国版权法对版权平行进口的态度是什么？ ４畅中国著作权法 中对 版权 平 行 进口 有 无相 关 规定？ 主 要态 度是什么？ 第 二节 合理 使用 在现代各国著作权法中， 合理使用 作为对著作权的一种必要限 已被普遍采用， 以此 。 多数著作权国 公约亦对此作了 准则。 枟 伯 尔尼 公约枠 对合 明确规定， 从而使这一规则成为国 理使用作了 总 的限 定， 即允 许 以合 理 的 目 的 使用 他 人 作 品， 但 “ 必须符合公平惯例” 。 我国著作权法第 ２２ 条、 第 ４３ 条规定了十 （含摘 ） 、 表演、 翻 绍与评论、 闻报导、 教 三种合理使用的情形。 这些 规定包 括复 译与广 四种方式， 涉及私人使用、 学与研究、 公务使用、 陈列与保 惯例相符合。 等各个方面， 其范围大体与国 第一编 １ ８９ 美 国 版 权法 于合理 使用 的 范 围。 尽 管各 国 在立 法 文件 中 对 “ 合理 使 用” 有不同的 表 述， 适 用的 情 形也 不 尽相 同， 但一 列使用为合理使用， 不 成 对著 作权 人权 利 的侵 害： （１ ） 为个 人学习或研究而使 用有著 作权 的作 品； （２ ） 为 教学目的而复 学研 究或 课堂 少 量有著 作权 的 作品； （ ３） 为 评论、 闻 报道 他 人的 作品； （４ ） 以绘 画、 雕 刻、 摄 影等 的需要而引用或复 方式复 认为 下 期陈列 于公共 场所 的艺 术作 品； （５ ） 公共 其他非营利的资 中心为 保 版本 而复 律诉讼需要而复 某些作品等。 书 馆或 某 一作 品； （６ ） 因法 美国最早 涉 及 合 理 使 用 的 案 例 是 １８４１ 年 Folsom v畅Marsh 案， 美国联邦法院法 Joseph Story 在 判 决中 谈到： “ 在判 断是 成合理 使用 时 候， 法 院应 该 考 量利 用 他人 作 品 之 性 质和 目 的， 利用他人作品之 响的 与 ， 或 是收益 减少 之 ， 引用后对被引用著作销售之影 ， 以 及有 无取 代原 作品 等因 素。” 该案树立了合理使用的判断标准。 １９７６ 年 美国版权 法正式 将合理使用原则成文法 ， 第 １０７ 条规定了判断某一行为是 成合理使用的四条 标准： （１ ） 使用 的目 的 和性 质， 包 括这 种使 用是 有商业性质 或者是 为了 非营 利的 教育 目的； （ ２） 有 版权 作品的性质； （３ ） 同 整个 有版权 作品 相比 所使 用 的部 分的 数量 和内容的实质性； （４） 这 种使用 对有 版权 作品 的 潜在 市场 或 所产生的影响。 除这四条标准外， 美国法院还认为应考虑其他 因素， 例如： 第一， 是 缺乏善意。 合理适用主观上必须出于善 意， 客观上必须行为适 。 所 意 善意是指无损害原作版权利益之 ， 凡不诚 实地 使 用 他人 作 品， 意 在 简 单地 复 而 不 进行 创 ， 即推定为恶意。 第 二， 习 惯或惯 例。 使 用他 人 有版 权作 品， 即使是符合商业惯例， 也可能 成侵权。 因为合理使用的 法院依照法律作出认定而不是依照商业习惯来判断。 美国法 为在特定案件中这些因素必须综合起来考量。 成是 认 １９０ 美国知识产权法 美国国会在 １９７６ 年的 立法 报告 性质， 在 有商业 于合理使用的认定中 机与是 说， 使 用 是 有 商业 有重要意义。 使用他人作品是 。 从这种使用中取得利益无 有商业性 质的使用可能出于符合合理使用规则的目的， 例如用于评论或报 道， 可以用合理使用作为抗辩。 同样， 在性质上不 有商业 机 的使用却可能是一种营利性行为， 例如非营利性质的教师团体对 他人出售有版权作品的复印件。 戏仿作品 （ parody） ， 即模仿 并 取笑 他 人作 品 的 作品， 是 可以得到合理 使 用的 保 护是 合 理使 用 原 则中 一 个很 有 意 思的 问 题。 戏仿依赖于观众对被戏仿作品的熟悉， 因此必须借用相当数 量受到版权保护的材 ， 这就使得戏仿看起来是在搭乘被戏仿作 品的便车， 也使其更容易受到侵权的指责。 在美国法上， 来， 美国法院一 期以 承认戏仿作品应该得到合理使用的保护， 不受 版权侵权之指控。 在判断戏仿作品是 为合理使用时， 分析经常 聚焦于上述 标 准中 的 第三 个 因 素， 即 复 的 实质 性。 一 规则 是， 只要戏仿作品对原作的使用数量没有超过描述讽刺对象所需 要的数量， 这个因素是利于该使用被判定为合理使用的。 Campbell v畅Acuff唱 Rose Music， Inc畅为美国 最高 法院探 仿作品的 著名 案 例。 最 高 法院 在 该案 中 指 出： 戏 “ 戏 仿 作 品的 幽 默， 或者它的评论， 必然来自扭曲地模仿讽刺对象， 这种暗示是 能够被辨识出来的……当戏仿作品将目标对准特定原作时， 该戏 仿作品必须至少能够对原作进 行 象 得清晰可辨。” 而 够的 ‘加 摧 ， 让 它的 评对 ， 最高法院 指出， 无论 是 作为 原作 的 接替换品演出， 还是作为衍生作品占领市场， 一部戏仿作品不可 能对原作的市场产生负面影响。 这是因为戏仿作品和原作一 来针对的是不同的市场。 因此， 在某种 认为侵犯了版权人的市场。 说 上， 戏仿作品不能被 第一编 美 国 版 权法 １ ９１ 案 例 24 Folsom v．Marsh ９ F畅Cas畅３４２ １８４１ STORY， Circuit Justice． This is one of those intricate and embarrassing questions， arising in the administration of civil justice， in which it is not， from the peculiar nature and character of the controversy， easy to arrive at any satisfactory conclusion， or to lay down any general principles applicable to all cases畅Patents and copyrights approach， nearer than any other class of cases belonging to forensic discussions， to what may be called the metaphysics of the law， where the distinctions are， or at least may be， very subtile and refined， and， sometimes， almost evanescent畅 In many cases， indeed， what constitutes an infringement of a patented invention， is sufficiently clear and obvious， and stands upon broad and general agreements and differences； but， in other cases， the lines approach very near to each other， and， sometimes， become almost evanescent， or melt into each other畅 So， in cases of copyright， it is often exceedingly obvious， that the whole substance of one work has been copied from another ， with slight omissions and formal differences only， which can be treated in no other way than as studied evasions； whereas， in other cases， the identity of the two works in substance， and the question of piracy， often depend upon a nice balance of the comparative use made in one of the materials of the other； the １９２ 美国知识产权法 nature， extent， and value of the materials thus used； the objects of each work； and the degree to which each writer may be fairly presumed to have resorted to the same common sources of information， or to have exercised the same common diligence in the selection and arrangement of the materials畅Thus， for example， no one can doubt that a reviewer may fairly cite largely from the original work， if his design be really and truly to use the passages for the purposes of fair and reasonable criticism畅On the other hand， it is as clear， that if he thus cites the most important parts of the work， with a view， not to criticise， but to supersede the use of the original work， and substitute the review for it， such a use will be deemed in law a piracy畅A wide interval might， of course， exist between these two extremes， calling for great caution and involving great difficulty， where the court is approaching the dividing middle line which separates the one from the other畅So， it has been decided that a fair and bona fide abridgment of an original work， is not a piracy of the copyright of the author畅 But， then， what constitutes a fair and bona fide abridgment， in the sense of the law， is one of the most difficult points畅It is clear， that a mere selection， or different arrangement of parts of the original work， so as to bring the work into a smaller compass， will not be held to be such an abridgment畅 There must be real， substantial condensation of the materials， and intellectual labor and judgment bestowed thereon； and not merely the facile use of the scissors； or extracts of the essential parts， constituting the chief value of the original work畅 In the present case， the work alleged to be pirated， is the Writings of President Washington of which the first volume which no 第一编 美 国 版 权法 １ ９３ piracy is asserted or proved畅The other eleven volumes consist of the letters of Washington with explanatory notes and occasional illustrations by the editor畅That the original work is of very great， and， I may almost say， of inestimable value， as the repository of the thoughts and opinions of that great man， no one pretends to doubt畅 The work of the Defendant （Mr畅Upham） consists of a Life of Washington畅There is no complaint， that Defendant has taken his narrative part， substantially， from the Life by P laintiff （ Mr畅 Sparks ） ． He has used the letters of Washington， and inserted， verbatim， copies thereof from the collection of Plaintiff畅The master finds， by his report， that the whole number of pages in Mr畅 Upham摧 s work， corresponding and identical with the passages in Mr畅 Sparks摧 s work， are three hundred and fifty唱 three pages out of eight hundred and sixty唱 six， a fraction more than one third of the two volumes of the defendants畅Of these three hundred and fifty唱 three pages， the report finds that three hundred and nineteen pages consist of letters of Washington， which have been taken from Mr畅Sparks摧 s work， and have never been published before； namely， sixty唱 four pages are official letters and documents， and two hundred and fifty唱 five pages are private letters of Washington畅 The question， therefore， upon this admitted state of the facts， resolves itself into the point， whether such a use， in the defendants摧work， of the letters of Washington， constitutes a piracy of the work of Mr畅Sparks畅 The leading objection of Defendant is， that the defendants had a right to abridge and select， and use the materials which they have taken for their work， which， though it embraces the number of letters above stated， is an original and new work， and that it constitutes， in no just sense， a piracy of the work of the plaintiffs畅 This， in truth， is the real hinge of the whole controversy， and involves the entire merits of the suit畅 It is certainly true， that the defendants摧work cannot properly be treated as an abridgment of that of the plaintiffs； neither is it strictly and wholly a mere compilation from the latter畅a ra 第一编 美 国 版 权法 １ ９５ define， fair quotation畅 A review will not， in general， serve as a substitute for the book reviewed； and even there， if so much is extracted， that it communicates the same knowledge with the original work， it is an actionable violation of literary property畅The intention to pirate is not necessary in an action of this sort； it is enough， that the publication complained of is in substance a copy， whereby a work vested in another is prejudiced畅 In the present case， I have no doubt whatever， that there is an invasion of the plaintiffs摧copyright； I do not say designedly； on the contrary， I entertain no doubt， that it was deemed a perfectly lawful and justifiable use of the plaintiffs摧work畅But if the defendants may take three hundred and nineteen letters， included in the plaintiffs摧 copyright， and exclusively belonging to them， there is no reason why another bookseller may not take other five hundred letters， and a third， one thousand letters， and so on， and thereby the plaintiffs摧 copyright be totally destroyed畅Besides； every one must see， that the work of the defendants is mainly founded upon these letters， constituting its essential value畅Without those letters， in its present form the work must fall to the ground畅It is not a case， where abbreviated or select passages are taken from particular letters； but the entire letters are taken， and those of most interest and value to the public， as illustrating the life， the acts， and the character of Washington畅It seems to me， therefore， that it is a clear invasion of the right of property of the plaintiffs， if the copying of parts of a work， not constituting a major part， can ever be a violation thereof； as upon principle and authority， I have no doubt it may be畅If it had been the case of a fair and bona fide abridgment of the work of the plaintiffs， it might have admitted of a very different consideration畅 １畅本案主要争议是什么？ ２畅本案对界定合理使用提出了什么标准？ 案 例 25 H arper ＆ Row Publishers v． Nation Enterprises ４７１ U畅S畅５３９ ， １９８５ Justice O摧 CONNOR delivered the opinion of the Court畅 This case requires us to consider to what extent the “ fair use” provision of the Copyright Revision Act of １９７６ ， § １０７， sanctions the unauthorized use of quotations from a public figure摧 s unpublished manuscript畅 In March １９７９， an undisc 第一编 美 国 版 权法 １ ９７ Publishers， Inc畅（ hereinafter Harper ＆ Row） ， and Reader摧 s Digest Association， Inc畅（ hereinafter Reader摧 s Digest） ．As a result of The Nation article， Time canceled its agreement畅Petitioners brought a successful copyright action against The Nation畅 On appeal， the Second Circuit reversed the lower court摧 s finding of infringement， holding that The Nation摧 s act was sanctioned as a “ fair use” of the copyrighted material畅We granted certiorari， and we now reverse畅 We agree with the Court of Appeals that copyright is intended to increase and not to impede the harvest of knowledge畅 But we believe the Second Circuit gave insufficient deference to the scheme established by the Copyright Act for fostering the original works that provide the seed and substance of this harvest畅The rights conferred by copyright are designed to assure contributors to the store of knowledge a fair return for their labors畅 Section １０６ of the Copyright Act confers a bundle of exclusive rights to the owner of the copyright畅The copyright owner摧 s rights， however， are subject to certain statutory exceptions畅 § § １０７ － １１８畅Among these is § １０７ which codifies the traditional privilege of other authors to make “ fair use ” of an earlier writer摧 s work畅 There is no dispute that the unpublished manuscript of “ A Time to Heal，” as a whole， was protected by § １０６ from unauthorized reproduction畅Nor do respondents dispute that verbatim copying of excerpts of the manuscript摧 s original form of expression would constitute infringement unless excused as fair use畅 A Fair use was traditionally defined as “ a privilege in others than the owner of the copyright to use the copyrighted material in a １９８ 美国知识产权法 reasonable manner without his consent畅” The statutory formulation of the defense of fair use in the Copyright Act reflects the intent of Congress to codify the common唱 law doctrine畅Section １０７ requires a case唱 by唱 case determination whether a particular use is fair， and the statute notes four nonexclusive factors to be considered畅 “ The author摧 s consent to a reasonable use of his copyrighted works had always been implied by the courts as a necessary incident of the constitutional policy of promoting the progress of science and the useful arts， since a prohibition of such use would inhibit subsequent writers from attempting to improve upon prior works and thus 畅畅畅frustrate the very ends sought to be attained畅” Professor Latman summarized prior law as turning on the “ importance of the material copied or performed from the point of view of the reasonable copyright owner畅In other words， would the reasonable copyright owner have consented to the use？” As early as １８４１， Justice Story gave judicial recognition to the doctrine in a case that concerned the letters of another former President， George Washington畅 “ A reviewer may fairly cite largely from the original work， if his design be really and truly to use the passages for the purposes of fair and reasonable criticism畅On the other hand， it is as clear， that if he thus cites the most important parts of the work， with a view， not to criticise， but to supersede the use of the original work， and substitute the review for it， such a use will be deemed in law a piracy畅” As Justice Story摧 s hypothetical illustrates， the fair use doctrine has always precluded a use that “ supersedes the use of the original畅” Perhaps because the fair use doctrine was predicated on the 第一编 美 国 版 权法 １ ９９ author摧 s implied consent to “reasonable and customary” use when he released his work for public consumption， fair use traditionally was not recognized as a defense to charges of copying from an author摧 s as yet unpublished works畅 It has never been seriously disputed that “ the fact that the plaintiff摧 s work is unpublished 畅畅 畅is a factor tending to negate the defense of fair use畅” Publication of an author摧 s expression before he has authorized its dissemination seriously infringes the author摧 s right to decide when and whether it will be made public， a factor not present in fair use of published works畅 Respondents contend， however， that Congress， in including first publication among the rights enumerated in § １０６， which are expressly subject to fair use under § １０７ ， intended that fair use would apply in pari materia to published and unpublished works畅 The Copyright Act does not support this proposition畅 Though the right of first publication， like the other rights enumerated in § １０６， is expressly made subject to the fair use provision of § １０７， fair use analysis must always be tailored to the individual case畅The nature of the interest at stake is highly relevant to whether a given use is fair畅From the beginning， those entrusted with the task of revision recognized the “ overbalancing reasons to preserve the common law protection of undisseminated works until the author or his successor chooses to disclose them畅” The right of first publication implicates a threshold decision by the author whether and in what form to release his work畅First publication is inherently different from other § １０６ rights in that only one person can be the first publisher； as the contract with Time illustrates， the commercial value of the right lies primarily in exclusivity畅Because the potential ２００ 美国知识产权法 damage to the author from judicially enforced “ sharing” of the first publication right with unauthorized users of his manuscript is substantial， the balance of equities in evaluating such a claim of fair use inevitably shifts畅 The Senate Report confirms that Congress intended the unpublished nature of the work to figure prominently in fair use analysis畅 In discussing fair use of photocopied materials in the classroom the Committee Report states： “ A key， though not necessarily determinative， factor in fair use is whether or not the work is available to the potential user畅If the work is ‘ out of print摧and unavailable for purchase through normal channels， the user may have more justification for reproducing it畅畅畅 畅The applicability of the fair use doctrine to unpublished works is narrowly limited since， although the work is unavailable， this is the result of a deliberate choice on the part of the copyright owner畅 Under ordinary circumstances， the copyright owner摧 s ‘ right of first publication摧would outweigh any needs of reproduction for classroom purposes畅” Although the Committee selected photocopying of classroom materials to illustrate fair use， it emphasized that “ the same general standards of fair use are applicable to all kinds of uses of copyrighted material畅” We find unconvincing respondents摧contention that the absence of the quoted passage from the House Report indicates an intent to abandon the traditional distinction between fair use of published and unpublished works畅 Even if the legislative history were entirely silent， we would be bound to conclude from Congress摧characterization of § １０７ as a “ restatement” that its effect was to preserve existing law concerning 第一编 美 国 版 权法 ２ ０１ fair use of unpublished works as of other types of protected works and not to “ change， narrow， or enlarge it畅” We conclude that the unpublished nature of a work is “ a key， though not necessarily determinative， factor” tending to negate a defense of fair use畅 We also find unpersuasive respondents摧argument that fair use may be made of a soon唱 to唱 be唱 published manuscript on the ground that the author has demonstrated he has no interest in nonpublication畅 This argument assumes that the unpublished nature of copyrighted material is only relevant to letters or other confidential writings not intended for dissemination畅It is true that common唱 law copyright was often enlisted in the service of personal privacy畅In its commercial guise， however， an author摧 s right to choose when he will publish is no less deserving of protection畅The period encompassing the work摧 s initiation， its preparation， and its grooming for public dissemination is a crucial one for any literary endeavor畅The Copyright Act， which accords the copyright owner the “ right to control the first public distribution” of his work， echos the common law摧 s concern that the author or copyright owner retain control throughout this critical stage畅The obvious benefit to author and public alike of assuring authors the leisure to develop their ideas free from fear of expropriation outweighs any short唱 term “ news value ” to be gained from premature publication of the author摧 s expression畅The author摧 s control of first public distribution implicates not only his personal interest in creative control but his property interest in exploitation of prepublication rights， which are valuable in themselves and serve as a valuable adjunct to publicity and marketing畅 （ Exploitation of subsidiary rights is necessary to financial success of new books ） ． Under ordinary circumstances， the author摧 s right to control the first ２０２ 美国知识产权法 public appearance of his undisseminated expression will outweigh a claim of fair use畅 B Respondents， however， contend that First Amendment values require a different rule under the circumstances of this case畅 Respondents argue that the public摧 s interest in learning this news as fast as possible outweighs the right of the author to control its first publication畅 The Second Circuit noted， correctly， that copyright摧 s idea ／ expression dichotomy “ strikes a definitional balance between the First Amendment and the Copyright Act by permitting free communication of facts while still protecting an author摧 s expression畅” Respondents摧theory， however， would expand fair use to effectively destroy any expectation of copyright protection in the work of a public figure畅 The promise of copyright would be an empty one if it could be avoided merely by dubbing the infringement a fair use “ news report” of the book畅 Nor do respondents assert any actual necessity for circumventing the copyright scheme with respect to the types of works and users at issue here畅Where an author and publisher have invested extensive resources in creating an original work and are poised to release it to the public， no legitimate aim is served by pre唱 empting the right of first publication畅The fact that the words the author has chosen to clothe his narrative may of themselves be “ newsworthy ” is not an independent justification for unauthorized copying of the author摧 s expression prior to publication畅 It is fundamentally at odds with the scheme of copyright to 第一编 美 国 版 权法 ２ ０３ accord lesser rights in those works that are of greatest importance to the public畅Such a notion ignores the major premise of copyright and injures author and public alike畅“T o propose that fair use be imposed whenever the ‘ social value of dissemination 畅畅畅 outweighs any detriment to the artist， 摧would be to propose depriving copyright owners of their right in the property precisely when they encounter those users who could afford to pay for it畅” Moreover， freedom of thought and expression includes both the right to speak freely and the right to refrain from speaking at all畅 In view of the First Amendment protections already embodied in the Copyright Act摧 s distinction between copyrightable expression and uncopyrightable facts and ideas， and the latitude for scholarship and comment traditionally afforded by fair use， we see no warrant for expanding the doctrine of fair use to create what amounts to a public figure exception to copyright畅 Whether verbatim copying from a public figure摧 s manuscript in a given case is or is not fair must be judged according to the traditional equities of fair use畅 C Fair use is a mixed question of law and fact畅Thus whether the Nation article constitutes fair use under § １０７ must be reviewed in light of the principles discussed above畅The factors enumerated in the section are not meant to be exclusive： “ Since the doctrine is an equitable rule of reason， no generally applicable definition is possible， and each case raising the question must be decided on its own facts畅” The four factors identified by Congress as especially relevant in determining whether the use was fair are： （ １ ） the purpose and character of the use； （ ２） the nature of the copyrighted ２０４ 美国知识产权法 work； （ ３ ） the substantiality of the portion used in relation to the copyrighted work as a whole； （４） the effect on the potential market for or value of the copyrighted work畅 We address each one separately畅 （ １ ） Purpose of the Use： T he Nation went beyond simply reporting uncopyrightable information and actively sought to exploit the headline value of its infringement， making a “ news event” out of its unauthorized first publication of a noted figure摧 s copyrighted expression畅The fact that a publication was commercial as opposed to nonprofit is a separate factor that tends to weigh against a finding of fair use畅 “ Every commercial use of copyrighted material is presumptively an unfair exploitation of the monopoly privilege that belongs to the owner of the copyright畅” The crux of the profit ／ nonprofit distinction is not whether the sole motive of the use is monetary gain but whether the user stands to profit from exploitation of the copyrighted material without paying the customary price畅In evaluating character and purpose we cannot ignore The Nation摧 s stated purpose of scooping the forthcoming hardcover and Time abstracts畅The Nation摧 s use had not merely the incidental effect but the intended purpose of supplanting the copyright holder摧 s commercially valuable right of first publication畅Also relevant to the “ character” of the use is “ the propriety of the defendant摧 s conduct畅” “ Fair use presupposes ‘ good faith摧and ‘ fair dealing畅摧” The trial court found that The Nation knowingly exploited a purloined manuscript畅Fair use “ distinguishes between ‘ a true scholar and a chiseler who infringes a work for personal profit畅摧” （２ ） Nature of the Copyrighted Work畅 The law generally recognizes a greater need to disseminate factual works than works of 第一编 美 国 版 权法 ２ ０５ fiction or fantasy畅The fact that a work is unpublished is a critical element of its “ nature畅” The scope of fair use is narrower with respect to unpublished works畅In the case of Mr畅Ford摧 s manuscript， the copyright holders摧interest in confidentiality is irrefutable； the copyright holders had entered into a contractual undertaking to “ keep the manuscript confidential” and required that all those to whom the manuscript was shown also “ sign an agreement to keep the manuscript confidential畅” A use that so clearly infringes the copyright holder摧 s interests in confidentiality and creative control is difficult to characterize as “ fair畅” （ ３ ） Amount and Substantiality of the Portion Used畅As the statutory language indicates， a taking may not be excused merely because it is insubstantial with respect to the infringing work畅No plagiarist can excuse the wrong by showing how much of his work he did not pirate畅Conversely， the fact that a substantial portion of the infringing work was copied verbatim is evidence of the qualitative value of the copied material， both to the originator and to the plagiarist who seeks to profit from marketing someone else摧 s copyrighted expression畅T he Nation took what was essentially the heart of the book畅 （４ ） Effect on the Market畅Finally， the Act focuses on “ the effect of the use upon the potential market for or value of the copyrighted work畅” This last factor is undoubtedly the single most important element of fair use畅Fair use， when properly applied， is limited to copying by others which does not materially impair the marketability of the work which is copied畅 Rarely will a case of copyright infringement present such clear唱 cut evidence of actual damage畅Petitioners established a prima facie case of actual damage that respondents failed to rebut畅 More important， to negate fair use one need only show that if the challenged use “ should become widespread， it would adversely affect the potential market for the copyrighted work畅” Placed in a broader perspective， a fair use doctrine that permits extensive prepublication quotations from an unreleased manuscript without the copyright owner摧 s consent poses substantial potential for damage to the marketability of first serialization rights in general畅 D We find that The Nation摧 s use of these verbatim excerpts from the unpublished manuscript was not a fair use， the judgment of the Court of Appeals is reversed， and the case is remanded for further proceedings consistent with this opinion畅 It is so ordered畅 １畅何谓合理使用原则？ 其背后的政策考虑是什么？ ２畅美国版权法如何体现美国宪法第一修正案中的基本原则？ ３畅如何判断对作 品的 使用 是 否 属于 合 理使 用？ 判断 的 标准 应该如何设定？ ４畅一般背布济颁益布都你背触录背张从颁割背触陪 言准终陪 言准现设布背 第一编 ２ ０７ 美 国 版 权法 案 例 26 Campbell v． Acuff唱 Rose Music Inc． ５１０ U畅S畅５６９， １１４ S畅Ct畅１１６４ Justice SOUTER delivered the opinion of the Court． We are called upon to decide whether ２ Live Crew摧 s commercial parody of Roy Orbison摧 s song， “ Oh， Pretty Woman，” may be a fair use within the meaning of the Copyright Act of １９７６， １７ U畅S畅C畅 § １０７ 畅Although the District Court granted summary judgment for ２ Live Crew， the Court of Appeals reversed， holding the defense of fair use barred by the song摧 s commercial character and excessive borrowing畅Because we hold that a parody摧 s commercial character is only one element to be weighed in a fair use enquiry， and that insufficient consideration was given to the nature of parody in weighing the degree of copying， we reverse and remand畅 I In １９６４ ， Roy Orbison and William Dees wrote a rock ballad called “ Oh， Pretty Woman ” and assigned their rights in it to respondent Acuff唱 Rose Music， Inc畅 See Appendix A， infra， at １１７９畅Acuff 唱 Rose registered the song for copyright protection畅 Petitioners Luther R畅Campbell， Christopher Wongwon， Mark Ross， and David Hobbs are collectively known as ２ Live Crew， a popular rap music group畅In １９８９ ， Campbell wrote a song entitled ２０８ 美国知识产权法 “ Pretty Woman，” which he later described in an affidavit as intended， “ through comical lyrics， to satirize the original work畅畅畅畅” App畅to Pet畅for Cert畅８０ a畅On July ５， １９８９， ２ Live Crew摧 s manager informed Acuff唱 Rose that ２ Live Crew had written a parody of “ Oh， Pretty Woman，” that they would afford all credit for ownership and authorship of the original song to Acuff唱 Rose， Dees， and Orbison， and that they were willing to pay a fee for the use they wished to make of it畅Enclosed with the letter were a copy of the lyrics and a recording of ２ Live Crew摧 s song畅See Appendix B畅Acuff唱 Rose摧 s agent refused permission， stating that “ I am aware of the success enjoyed by ‘ The ２ Live Crews摧 ， but I must inform you that we cannot permit the use of a parody of ‘ Oh， Pretty Woman畅摧” Nonetheless， in June or July １９８９ ， ２ Live Crew released records， cassette tapes， and compact discs of “ Pretty Woman” in a collection of songs entitled “ As Clean As They Wanna Be畅” The albums and compact discs identify the authors of “ Pretty Woman” as Orbison and Dees and its publisher as Acuff唱 Rose Live Crew and its record company， Luke Skyywalker Records， for copyright infringement畅 The District Court granted summary judgment for ２ Live Crew， reasoning that the commercial purpose of ２ Live Crew摧 s song was no bar to fair use； that ２ Live Crew摧 s version was a parody， which “ quickly degenerates into a play on words， substituting predictable lyrics with shocking ones” to show “ how bland and banal the Orbison song” is； that ２ Live Crew had taken no more than was necessary to “ conjure up ” the original in order to parody it； and that it was “ extremely unlikely that ２ Live Crew摧 s song could adversely affect the market for the original畅” The Court of Appeals for the Sixth Circuit reversed and 第一编 美 国 版 权法 ２ ０９ remanded畅Although it assumed for the purpose of its opinion that ２ Live Crew摧 s song was a parody of the Orbison original， the Court of Appeals thought the District Court had put too little emphasis on the fact that “ every commercial use 畅畅畅is presumptively 畅畅畅unfair，” and it held that “ the admittedly commercial nature ” of the parody “ requires the conclusion” that the first of four factors relevant under the statute weighs against a finding of fair use畅Next， the Court of Appeals determined that， by “ taking the heart of the original and making it the heart of a new work，” ２ Live Crew had， qualitatively， taken too much畅Finally， after noting that the effect on the potential market for the original （ and the market for derivative works ） is “ undoubtedly the single most important element of fair use，” the Court of Appeals faulted the District Court for “ refusing to indulge the presumption” that “ harm for purposes of the fair use analysis has been established by the presumption attaching to commercial uses畅” In sum， the court concluded that its “ blatantly commercial purpose 畅畅畅prevents this parody from being a fair use畅” We granted certiorari， to determine whether ２ Live Crew摧 s commercial parody could be a fair use畅 II It is uncontested here that ２ Live Crew摧 s song would be an infringement of Acuff唱 Rose摧 s rights in “Oh， Pretty Woman，” under the Copyright Act of １９７６， １７ U畅S畅C畅 § １０６ （１９８８ ed畅and Supp畅 IV） ， but for a finding of fair use through parody畅From the infancy of copyright protection， some opportunity for fair use of copyrighted materials has been thought necessary to fulfill copyright摧 s very purpose， “ to promote the Progress of Science and useful Arts畅畅畅 畅” ２１０ 美国知识产权法 U畅S畅Const畅， Art畅I， § ８ ， cl畅８畅For as Justice Story explained， “ in truth， in literature， in science and in art， there are， and can be， few， if any， things， which in an abstract sense， are strictly new and original throughout畅 Every book in literature， science and art， borrows， and must necessarily borrow， and use much which was well known and used before畅” Similarly， Lord Ellenborough expressed the inherent tension in the need simultaneously to protect copyrighted material and to allow others to build upon it when he wrote， “ while I shall think myself bound to secure every man in the enjoyment of his copy唱 right， one must not put manacles upon science畅” In copyright cases brought under the Statute of Anne of １７１０， English courts held that in some instances “ fair abridgements” would not infringe an author摧 s rights， and although the First Congress enacted our initial copyright statute， Act of May ３１， １７９０， １ Stat畅１２４， without any explicit reference to “ fair use，” as it later came to be known， the doctrine was recognized by the American courts nonetheless畅 The task is not to be simplified with bright唱 line rules， for the statute， like the doctrine it recognizes， calls for case唱 by唱 case analysis畅The text employs the terms “ including” and “ such as” in the preamble paragraph to indicate the “ illustrative and not limitative” function of the examples given， § １０１； see Harper ＆ Row， supra， ４７１ U畅 S畅， at ５６１， １０５ S畅Ct畅， at ２２３０， which thus provide only general guidance about the sorts of copying that courts and Congress most commonly had found to be fair uses畅Nor may the four statutory factors be treated in isolation， one from another畅 All are to be explored， and the results weighed together， in light of the purposes of copyright畅 第一编 美 国 版 权法 ２ １１ This Court has only once before even considered whether parody may be fair use， and that time issued no opinion because of the Court摧 s equal division畅Suffice it to say now that parody has an obvious claim to transformative value， as Acuff唱 Rose itself does not deny畅L ike less ostensibly humorous forms of criticism， it can provide social benefit， by shedding light on an earlier work， and， in the process， creating a new one畅We thus line up with the courts that have held that parody， like other comment or criticism， may claim fair use under § １０７畅 The germ of parody lies in the definition of the Greek parodeia， quoted in Judge Nelson摧 s Court of Appeals dissent， as “ a song sung alongside another畅” Modern dictionaries accordingly describe a parody as a “ literary or artistic work that imitates the characteristic style of an author or a work for comic effect or ridicule，” or as a “ composition in prose or verse in which the characteristic turns of thought and phrase in an author or class of authors are imitated in such a way as to make them appear ridiculous畅” For the purposes of copyright law， the nub of the definitions， and the heart of any parodist摧 s claim to quote from existing material， is the use of some elements of a prior author摧 s composition to create a new one that， at least in part， comments on that author摧 s works畅If， on the contrary， the commentary has no critical bearing on the substance or style of the original composition， which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh， the claim to fairness in borrowing from another摧 s work diminishes accordingly （ if it does not vanish ） ， and other factors， like the extent of its commerciality， loom larger畅Parody needs to mimic an original to make its point， and so has some claim to use the creation ２１２ 美国知识产权法 of its victim摧 s （ or collective victims摧 ） imagination， whereas satire can stand on its own two feet and so requires justification for the very act of borrowing畅 The fact that parody can claim legitimacy for some appropriation does not， of course， tell either parodist or judge much about where to draw the line畅 Like a book review quoting the copyrighted material criticized， parody may or may not be fair use， and petitioners摧suggestion that any parodic use is presumptively fair has no more justification in law or fact than the equally hopeful claim that any use for news reporting should be presumed fair， see Harper ＆ Row， ４７１ U畅S畅， at ５６１， １０５ S畅Ct畅， at ２２３０畅The Act has no hint of an evidentiary preference for parodists over their victims， and no workable presumption for parody could take account of the fact that parody often shades into satire when society is lampooned through its creative artifacts， or that a work may contain both parodic and nonparodic elements畅 Accordingly， parody， like any other use， has to work its way through the relevant factors， and be judged case by case， in light of the ends of the copyright law畅 Here， the District Court held， and the Court of Appeals assumed， that ２ Live Crew摧 s “ Pretty Woman ” contains parody， commenting on and criticizing the original work， whatever it may have to say about society at large畅As the District Court remarked， the words of ２ Live Crew摧 s song copy the original摧 s first line， but then “ quickly degenerate into a play on words， substituting predictable lyrics with shocking ones 畅畅 畅that derisively demonstrate how bland and banal the Orbison song seems to them畅” Judge Nelson， dissenting below， came to the same conclusion， that the ２ Live Crew song “ was clearly intended to ridicule the white唱 bread 第一编 美 国 版 权法 ２ １３ original ” and “ reminds us that sexual congress with nameless streetwalkers is not necessarily the stuff of romance and is not necessarily without its consequences畅The singers （ there are several） have the same thing on their minds as did the lonely man with the nasal voice， but here there is no hint of wine and roses畅” Although the majority below had difficulty discerning any criticism of the original in ２ Live Crew摧 s song， it assumed for purposes of its opinion that there was some畅 We have less difficulty in finding that critical element in ２ Live Crew摧 s song than the Court of Appeals did， although having found it we will not take the further step of evaluating its quality畅 The threshold question when fair use is raised in defense of parody is whether a parodic character may reasonably be perceived畅Whether， going beyond that， parody is in good taste or bad does not and should not matter to fair use畅 As Justice Holmes explained， “ it would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of a work， outside of the narrowest and most obvious limits畅At the one extreme some works of genius would be sure to miss appreciation畅 Their very novelty would make them repulsive until the public had learned the new language in which their author spoke畅” Bleistein v畅Donaldson Lithographing Co畅， １８８ U畅S畅２３９， ２５１， ２３ S畅Ct畅２９８， ３００， ４７ L畅Ed畅４６０ （１９０３） （ circus posters have copyright protection） ； cf畅 Yankee Publishing Inc畅v畅 News America Publishing， Inc畅， ８０９ F畅Supp畅２６７， ２８０ （ SDNY １９９２） （ Leval， J畅） （ “ First Amendment protections do not apply only to those who speak clearly， whose jokes are funny， and whose parodies succeed” ） （ trademark case） ． While we might not assign a high rank to the parodic element ２１４ 美国知识产权法 here， we think it fair to say that ２ Live Crew摧 s song reasonably could be perceived as commenting on the original or criticizing it， to some degree畅２ Live Crew juxtaposes the romantic musings of a man whose fantasy comes true， with degrading taunts， a bawdy demand for sex， and a sigh of relief from paternal responsibility畅T he later words can be taken as a comment on the naiveté of the original of an earlier day， as a rejection of its sentiment that ignores the ugliness of street life and the debasement that it signifies畅It is this joinder of reference and ridicule that marks off the author摧 s choice of parody from the other types of comment and criticism that traditionally have had a claim to fair use protection as transformative works畅 The Court of Appeals， however， immediately cut short the enquiry into ２ Live Crew摧 s fair use claim by confining its treatment of the first factor essentially to one relevant fact， the commercial nature of the use畅The court then inflated the significance of this fact by applying a presumption ostensibly culled from Sony， that “ every commercial use of copyrighted material is presumptively 畅畅 畅 unfair畅 畅畅畅” Sony， ４６４ U畅S畅， at ４５１， １０４ S畅Ct畅， at ７９２畅In giving virtually dispositive weight to the commercial nature of the parody， the Court of Appeals erred畅 The language of the statute makes clear that the commercial or nonprofit educational purpose of a work is only one element of the first factor enquiry into its purpose and character畅Section １０７ （ １） uses the term “ including” to begin the dependent clause referring to commercial use， and the main clause speaks of a broader investigation into “ purpose and character畅” As we explained in Harper ＆ Row， Congress resisted attempts to narrow the ambit of this traditional enquiry by adopting categories of presumptively fair 第一编 美 国 版 权法 ２ １５ use， and it urged courts to preserve the breadth of their traditionally ample view of the universe of relevant evidence畅Accordingly， the mere fact that a use is educational and not for profit does not insulate it from a finding of infringement， any more than the commercial character of a use bars a finding of fairness畅 If， indeed， commerciality carried presumptive force against a finding of fairness， the presumption would swallow nearly all of the illustrative uses listed in the preamble paragraph of § １０７， including news reporting， comment， criticism， teaching， scholarship， and research， since these activities “ are generally conducted for profit in this country畅” Harper ＆ Row， supra， at ５９２ ， １０５ S畅Ct畅， at ２２４６ （ Brennan， J畅， dissenting ）．Congress could not have intended such a rule， which certainly is not inferable from the common唱 law cases， arising as they did from the world of letters in which Samuel Johnson could pronounce that “ no man but a blockhead ever wrote， except for money畅” Sony itself called for no hard evidentiary presumption畅There， we emphasized the need for a “ sensitive balancing of interests，” noted that Congress had “ eschewed a rigid， bright唱 line approach to fair use，” and stated that the commercial or nonprofit educational character of a work is “ not conclusive，” but rather a fact to be “ weighed along with others in fair use decisions ”．The Court of Appeals摧 s elevation of one sentence from Sony to a per se rule thus runs as much counter to Sony itself as to the long common唱 law tradition of fair use adjudication畅Rather， as we explained in Harper ＆ Row， Sony stands for the proposition that the “ fact that a publication was commercial as opposed to nonprofit is a separate factor that tends to weigh against a finding of fair use畅” But that is ２１６ 美国知识产权法 all， and the fact that even the force of that tendency will vary with the context is a further reason against elevating commerciality to hard presumptive significance畅The use， for example， of a copyrighted work to advertise a product， even in a parody， will be entitled to less indulgence under the first factor of the fair use enquiry than the sale of a parody for its own sake， let alone one performed a single time by students in school畅 The second statutory factor ， “ the nature of the copyrighted work，” § １０７ （ ２ ） ， draws on Justice Story摧 s expression， the “ value of the materials used畅” Folsom v畅Marsh， ９ F畅Cas畅， at ３４８畅This factor calls for recognition that some works are closer to the core of intended copyright protection than others， with the consequence that fair use is more difficult to establish when the former works are copied畅We agree with both the District Court and the Court of Appeals that the Orbison original摧 s creative expression for public dissemination falls within the core of the copyright摧 s protective purposes畅This fact， however， is not much help in this case， or ever likely to help much in separating the fair use sheep from the infringing goats in a parody case， since parodies almost invariably copy publicly known， expressive works畅 III The third factor asks whether “ the amount and substantiality of the portion used in relation to the copyrighted work as a whole，” § １０７ （３） （ or ， in Justice Story摧 s words， “ the quantity and value of the materials used，” Folsom v畅 Marsh， supra， at ３４８ ） are reasonable in relation to the purpose of the copying畅Here， attention turns to the persuasiveness of a parodist摧 s justification for the 第一编 美 国 版 权法 ２ １７ particular copying done， and the enquiry will harken back to the first of the statutory factors， for， as in prior cases， we recognize that the extent of permissible copying varies with the purpose and character of the use畅“Even substantial quotations might qualify as fair use in a review of a published work or a news account of a speech” but not in a scoop of a soon唱 to唱 be唱 published memoir ．The facts bearing on this factor will also tend to address the fourth， by revealing the degree to which the parody may serve as a market substitute for the original or potentially licensed derivatives畅 The District Court considered the song摧 s parodic purpose in finding that ２ Live Crew had not helped themselves overmuch畅７５４ F畅Supp畅， at １１５６ －１１５７畅The Court of Appeals disagreed， stating that “ while it may not be inappropriate to find that no more was taken than necessary， the copying was qualitatively substantial畅畅畅 畅 We conclude that taking the heart of the original and making it the heart of a new work was to purloin a substantial portion of the essence of the original畅” ９７２ F畅２d， at １４３８畅 The Court of Appeals is of course correct that this factor calls for thought not only about the quantity of the materials used， but about their quality and importance， too畅 In Harper ＆ Row， for example， the Nation had taken only some ３００ words out of President Ford摧 s memoirs， but we signaled the significance of the quotations in finding them to amount to “ the heart of the book，” the part most likely to be newsworthy and important in licensing serialization畅４７１ U畅S畅， at ５６４ －５６６， ５６８， １０５ S畅Ct畅， at ２２３２ －２２３４ ， ２２３４ （ internal quotation marks omitted） ．We also agree with the Court of Appeals that whether “ a substantial portion of the infringing work was copied verbatim ” from the copyrighted work is a relevant ２１８ 美国知识产权法 question， for it may reveal a dearth of transformative character or purpose under the first factor， or a greater likelihood of market harm under the fourth； a work composed primarily of an original， particularly its heart， with little added or changed， is more likely to be a merely superseding use， fulfilling demand for the original畅 Where we part company with the court below is in applying these guides to parody， and in particular to parody in the song before us畅Parody presents a difficult case畅 Parody摧 s humor， or in any event its comment， necessarily springs from recognizable allusion to its object through distorted imitation畅 Its art lies in the tension between a known original and its parodic twin畅When parody takes aim at a particular original work， the parody must be able to “ conjure up” at least enough of that original to make the object of its critical wit recognizable畅 What makes for this recognition is quotation of the original摧 s most distinctive or memorable features， which the parodist can be sure the audience will know畅Once enough has been taken to assure identification， how much more is reasonable will depend， say， on the extent to which the song摧 s overriding purpose and character is to parody the original or， in contrast， the likelihood that the parody may serve as a market substitute for the original畅But using some characteristic features cannot be avoided畅 We think the Court of Appeals was insufficiently appreciative of parody摧 s need for the recognizable sight or sound when it ruled ２ Live Crew摧 s use unreasonable as a matter of law畅 It is true， of course， that ２ Live Crew copied the characteristic opening bass riff （ or musical phrase） of the original， and true that the words of the first line copy the Orbison lyrics畅But if quotation of the opening riff and the first line may be said to go to the “ heart” of the original， the 第一编 美 国 版 权法 ２ １９ heart is also what most readily conjures up the song for parody， and it is the heart at which parody takes aim畅Copying does not become excessive in relation to parodic purpose merely because the portion taken was the original摧 s heart畅 If ２ Live Crew had copied a significantly less memorable part of the original， it is difficult to see how its parodic character would have come through畅See Fisher v畅 Dees， supra， at ４３９畅 This is not， of course， to say that anyone who calls himself a parodist can skim the cream and get away scot free畅In parody， as in news reporting， see Harper ＆ Row， supra， context is everything， and the question of fairness asks what else the parodist did besides go to the heart of the original畅It is significant that ２ Live Crew not only copied the first line of the original， but thereafter departed markedly from the Orbison lyrics for its own ends畅２ Live Crew not only copied the bass riff and repeated it， but also produced otherwise distinctive sounds， interposing “ scraper ” noise， overlaying the music with solos in different keys， and altering the drum beat畅See ７５４ F畅Supp畅， at １１５５畅 This is not a case， then， where “ a substantial portion” of the parody itself is composed of a “ verbatim” copying of the original畅It is not， that is， a case where the parody is so insubstantial， as compared to the copying， that the third factor must be resolved as a matter of law against the parodists畅 Suffice it to say here that， as to the lyrics， we think the Court of Appeals correctly suggested that “ no more was taken than necessary，” ９７２ F畅２d， at １４３８， but just for that reason， we fail to see how the copying can be excessive in relation to its parodic purpose， even if the portion taken is the original摧 s “ heart畅” As to the music， we express no opinion whether repetition of the bass riff ２２０ 美国知识产权法 is excessive copying， and we remand to permit evaluation of the amount taken， in light of the song摧 s parodic purpose and character， its transformative elements， and considerations of the potential for market substitution sketched more fully below畅 The fourth fair use factor is “ the effect of the use upon the potential market for or value of the copyrighted work畅” § １０７ （４ ） ．It requires courts to consider not only the extent of market harm caused by the particular actions of the alleged infringer， but also “ whether unrestricted and widespread conduct of the sort engaged in by the defendant 畅畅畅 would result in a substantially adverse impact on the potential market” for the original畅The enquiry “ must take account not only of harm to the original but also of harm to the market for derivative works畅” Since fair use is an affirmative defense， its proponent would have difficulty carrying the burden of demonstrating fair use without favorable evidence about relevant markets畅In moving for summary judgment， ２ Live Crew left themselves at just such a disadvantage when they failed to address the effect on the market for rap derivatives， and confined themselves to uncontroverted submissions that there was no likely effect on the market for the original畅They did not， however， thereby subject themselves to the evidentiary presumption applied by the Court of Appeals畅 In assessing the likelihood of significant market harm， the Court of Appeals quoted from language in Sony that “ if the intended use is for commercial gain， that likelihood may be presumed畅 But if it is for a noncommercial purpose， the likelihood must be demonstrated畅” The court reasoned that because “ the use of the copyrighted work is wholly commercial， 畅畅畅we presume that a likelihood of future harm 第一编 美 国 版 权法 ２ ２１ to Acuff唱 Rose exists畅” In so doing， the court resolved the fourth factor against ２ Live Crew， just as it had the first， by applying a presumption about the effect of commercial use， a presumption which as applied here we hold to be error畅 No “presumption” or inference of market harm that might find support in Sony is applicable to a case involving something beyond mere duplication for commercial purposes畅Sony摧 s discussion of a presumption contrasts a context of verbatim copying of the original in its entirety for commercial purposes， with the noncommercial context of Sony itself （ home copying of television programming ） ．In the former circumstances， what Sony said simply makes common sense： when a commercial use amounts to mere duplication of the entirety of an original， it clearly “ supersedes the objects，” Folsom v畅 Marsh， supra， at ３４８ ， of the original and serves as a market replacement for it， making it likely that cognizable market harm to the original will occur畅 Sony， supra， ４６４ U畅S畅， at ４５１， １０４ S畅Ct畅， at ７９３畅 But when， on the contrary， the second use is transformative， market substitution is at least less certain， and market harm may not be so readily inferred畅Indeed， as to parody pure and simple， it is more likely that the new work will not affect the market for the original in a way cognizable under this factor， that is， by acting as a substitute for it （ “ superseding its objects” ） ．See Leval １１２５ ； Patry ＆ Perlmutter ６９２， ６９７ －６９８畅This is so because the parody and the original usually serve different market functions畅 Bisceglia， ASCAP ， Copyright Law Symposium， No畅３４， at ２３畅 We do not， of course， suggest that a parody may not harm the market at all， but when a lethal parody， like a scathing theater review， kills demand for the original， it does not produce a harm ２２２ 美国知识产权法 cognizable under the Copyright Act畅 Because “ parody may quite legitimately aim at garroting the original， destroying it commercially as well as artistically，” B畅 Kaplan， An Unhurried View of Copyright ６９ （１９６７） ， the role of the courts is to distinguish between “ biting criticism that merely suppresses demand and copyright infringement， which usurps it畅” This distinction between potentially remediable displacement and unremediable disparagement is reflected in the rule that there is no protectible derivative market for criticism畅 The market for potential derivative uses includes only those that creators of original works would in general develop or license others to develop畅Yet the unlikelihood that creators of imaginative works will license critical reviews or lampoons of their own productions removes such uses from the very notion of a potential licensing market畅“ People ask 畅畅畅for criticism， but they only want praise畅” S畅 Maugham， Of Human Bondage ２４１ （ Penguin ed畅１９９２） ．Thus， to the extent that the opinion below may be read to have considered harm to the market for parodies of “ Oh， Pretty Woman，” see ９７２ F畅 ２d， at １４３９， the court erred畅 In explaining why the law recognizes no derivative market for critical works， including parody， we have， of course， been speaking of the later work as if it had nothing but a critical aspect （ i畅e畅， “ parody pure and simple，” ） But the later work may have a more complex character， with effects not only in the arena of criticism but also in protectible markets for derivative works， too畅In that sort of case， the law looks beyond the criticism to the other elements of the work， as it does here畅 ２ Live Crew摧 s song comprises not only parody but also rap music， and the derivative market for rap music is 第一编 美 国 版 权法 ２ ２３ a proper focus of enquiry畅Evidence of substantial harm to it would weigh against a finding of fair use， because the licensing of derivatives is an important economic incentive to the creation of originals畅See １７ U畅S畅C畅 § １０６ （ ２） （ copyright owner has rights to derivative works ） ．Of course， the only harm to derivatives that need concern us， as discussed above， is the harm of market substitution畅 The fact that a parody may impair the market for derivative uses by the very effectiveness of its critical commentary is no more relevant under copyright than the like threat to the original market畅 Although ２ Live Crew submitted uncontroverted affidavits on the question of market harm to the original， neither they， nor Acuff唱 Rose， introduced evidence or affidavits addressing the likely effect of ２ Live Crew摧 s parodic rap song on the market for a nonparody， rap version of “ Oh， Pretty Woman畅” And while Acuff唱 Rose would have us find evidence of a rap market in the very facts that ２ Live Crew recorded a rap parody of “ Oh， Pretty Woman ” and another rap group sought a license to record a rap derivative， there was no evidence that a potential rap market was harmed in any way by ２ Live Crew摧 s parody， rap version畅 The fact that ２ Live Crew摧 s parody sold as part of a collection of rap songs says very little about the parody摧 s effect on a market for a rap version of the original， either of the music alone or of the music with its lyrics畅The District Court essentially passed on this issue， observing that Acuff唱 Rose is free to record “ whatever version of the original it desires，” the Court of Appeals went the other way by erroneous presumption畅Contrary to each treatment， it is impossible to deal with the fourth factor except by recognizing that a silent record on an important factor ２２４ 美国知识产权法 bearing on fair use disentitled the proponent of the defense， ２ Live Crew ， to summary judgment畅The evidentiary hole will doubtless be plugged on remand畅 IV It was an error for the Court of Appeals to conclude that the commercial nature of ２ Live Crew摧 s parody of “ Oh， Pretty Woman” rendered it presumptively unfair畅No such evidentiary presumption is available to address either the first factor， the character and purpose of the use， or the fourth， market harm， in determining whether a transformative use， such as parody， is a fair one畅The court also erred in holding that ２ Live Crew had necessarily copied excessively from the Orbison original， considering the parodic purpose of the use畅We therefore reverse the judgment of the Court of Appeals and remand the case for further proceedings consistent with this opinion畅 It is so ordered畅 １畅何谓 “ 戏仿作品” ？ ２畅本案在判断是否为合理使用上主要考虑的是哪几种因素？ ３畅戏仿作品为得到合理使用原则的保护应满足什么条件？ 第五章 版 权 的 侵 权和 救 济 第一 节 侵 权 版 权侵 权 问 题主 要 规定 在 美国 版 权法 第 ５０１ 条。 版 权法 第 ５０１ 条共 （ a） 、 （ b） 、 （ c） 、 （ d） 、 （ e） ５ 款。 （a） 款是 的一 于侵权 定义， 规定： “ 侵 犯第 １０６ 条至 第 １１８ 条规定 的版权 所有 人或第 １０６ 条之二 （ a） 款 规定 的 作者 条规定从国外进口复 品或 有权， 或 者违 反 第 ６０２ 品的任何人， 系版权或作者权 的侵权人。” 美国版权法第 １０６ 条规定版权人享有复 权、 表演权和 展 览 权 等 五 项 权、 演绎权、 发行 他 性 权 利。 版 权 法 第 １０６ 条 之 （ 二） （a） 款规定视觉艺术作品的作者享有署名 权和保护 作品 整权。 版权法第 ６０２ 条规定版权人有权控 有版权的作品的复 品和 从国外输入美国的享 品。 综合以上规定， 美国版权法上侵权行为是指侵犯了版权人所 享有的复 权、 演绎 权、 发行 权、 表 演权和 展览 权 等 或侵犯了视觉艺术作品的作者的署名权和保护作品 反了第 ６０２ 条规定向美国进口复 人 件或 有权 利， 整权， 或违 品的行为。 如果他 接侵犯版权人的上述权利， 则要承担停止侵害或者损害赔偿 的侵权责任。 如果他人以获得商业利益或个人私利为目的而故意 侵犯版权的， 还有可能要承担刑事责任。 在美国版权法中， 侵犯 版权 可以 分为 接侵 权 和间 接侵 权。 ２２６ 在 美国知识产权法 法实践中， 确认被告作品是 用的是 “ 二步 法” 标 准： 其 看这种复 间是 是 接侵犯原告作品的版权， 使 先看 被告是 复 了 原 告 的 作 品； 已经达到了非法占用的地步， 即 在表述上的相同 或者实 质性 相 个作品之 。 Arnstein v畅Porter 一 案就很好的体现了这一标准。 间接侵权并未 接体现成文法上， 美国版权法上的间接侵权 理论主要是通过法院判例确立的。 法院依据普通法上已经确立的 原 则， 将 间 接 侵 权 责 任 分 为 帮 助 侵 权 责 任 （ contributory infringement） 和代位侵权责任 （ vicarious liability） ， 让第 三人为 接侵权人的行为承担责任。 帮助侵权来源于侵权法， 其基本含义是说 者应当承担法 律责 任。 接帮助他人侵权 于 帮助 侵 权， １９７１ 年 由 美 国第 二 巡回 上诉法院判决的 Gershwin 案中， 有一个明确的定义： “ 知 道侵权 而引诱、 促使或以物质帮助他人实施侵权， 可以作为帮助侵 权者承 担 责 任。 依 据 这 个 定 义， 帮 助 侵 权 的 （１ ） 知道； 成要件有 个： （２ ） 以 引 诱、 促 使 或 以 提供 物 质 的 方 式帮 助 他 人 侵权。 代位侵权一 说来 在于代理 系中。 例如， 雇员在其职责 范围内， 代理人在其代理范围内， 侵犯了他人的权利， 则雇主或 被代理人都应承担侵权责任。 但是， 版权侵权中的代位侵权又远 远不止于此。 在版权的侵权诉讼中， 代位责任的概念最早产生于 １９６３ 年的 Shapiro 案。 该 案 提 出 了 判 定 代 位 侵 犯 版 权 的 准： 一是代位侵权者有能 人的侵权 中获得了 美国版权法在认定 止侵权 个标 ， 二是代位侵权者从他 接的经济收益。 接侵权问题上， 适用无过错责任。 至于 版权侵权中的间接侵权—代位侵权和帮助侵权， 则要考虑侵权者 是 而没有 有主观上的过错。 其中， 代位侵权是有能 止， 止侵权 有主观上的过失。 而在帮助侵权中， 则是知道他 第一编 ２ ２７ 美 国 版 权法 人有可能侵权而引诱、 促使或帮助其侵权， 有主观上的故意。 在版权的间接侵权责任方面， “ SONY 案” 是一 个影响 的案例。 被告索尼美国公 造并销售了大量的家庭 机， 而 原告环球影视城就一些电视节目拥有版权。 由于购买家用 的一些消费者， 通过电视广 被告侵犯其版权。 原告主 大 机 了原告的电视节目， 原告起诉 ： 被告 造和提供家用 帮助侵权。 最高法院认为， “ 销售 复 机 ， 与 销售 其他商 品一 设 样， 只要是广泛地用于合法的和不受反对的目的， 就不 侵权。” 也就是说， 如果 一种 产品 成了 成帮助 有 “ 实质 性的 非 侵权 用 途” （ substantial non唱 infringing use ） ， 即 使 产 品 提 供者 明 知 这 种 产 品 ， 也不能认定其 也可用于侵权 成帮助侵权。 案 例 27 Arnstein v畅Porter １５４ F畅２d ４６４ February １１， １９４６ FRANK， Circuit Judge畅 Plaintiff brought this suit， charging infringement by defendant， of plaintiff摧 s infringement copyrights of his to rights several to other musical compositions， uncopyrighted musical compositions， and wrongful use of the titles of others畅 It is important to avoid confusing two separate elements essential to a plaintiff摧 s case in such a suit： （ a ） that defendant copied from plaintiff摧 s copyrighted work and （ b ） that the copying ２２８ 美国知识产权法 （ assuming it to be proved ） went to far as to constitute improper appropriation畅 As to the first — copying唱 the evidence may consist （ a ） of defendant摧 s admission that he copied or （ b ） of circumstantial evidence — usually evidence of access唱 from which the trier of the facts may reasonably infer copying畅 Of course， if there are no similarities， no amount of evidence of access will suffice to prove copying畅If there is evidence of access and similarities exist， then the trier of the facts must determine whether the similarities are sufficient to prove copying畅 On this issue， analysis （ “ dissection ”） is relevant， and the testimony of experts may be received to aid the trier of the facts畅If evidence of access is absent， the similarities must be so striking as to preclude the possibility that plaintiff and defendant independently arrived at the same result畅 If copying is established， then only does there arise the second issue， that of illicit copying （ unlawful appropriation） ．On that issue （ as noted more in detail below ） the test is the response of the ordinary lay hearer； accordingly， on that issue， “ dissection ” and expert testimony are irrelevant畅 In some cases， the similarities between the plaintiff摧 s and defendant摧 s work are so extensive and striking as， without more， both to justify an inference of copying and to prove improper appropriation畅But such double唱 purpose evidence is not required； that is， if copying is otherwise shown， proof of improper appropriation need not consist of similarities which， standing alone， would support an inference of copying畅 Each of these two issues唱 copying and improper appropriation is an issue of fact畅But a case could occur in which the similarities were 第一编 美 国 版 权法 ２ ２９ so striking that we would reverse a finding of no access， despite weak evidence of access （ or no evidence thereof other than the similarities） ； and similarly as to a finding of no illicit appropriation畅 We turn first to the issue of copying畅 After listening to the compositions as played in the phonograph recordings submitted by defendant， we find similarities； but we hold that unquestionably， standing alone， they do not compel the conclusion， or permit the inference， that defendant copied畅 The similarities， however， are sufficient so that， if there is enough evidence of access to permit the case to go to the jury， the jury may properly infer that the similarities did not result from coincidence畅 On the record now before us， more than a million copies of one of his compositions were sold； copies of others were sold in smaller quantities or distributed to radio stations or band leaders or publishers， or the pieces were publicly performed畅If， after hearing both parties testify， the jury disbelieves defendant摧 s denials， it can， from such facts， reasonably infer access畅 Assuming that adequate proof is made of copying， that is not enough； for there can be permissible copying， copying which is not illicit畅Whether （ if he copied ） defendant unlawfully appropriated presents， too， an issue of fact畅The question， therefore， is whether defendant took from plaintiff摧 s works so much of what is pleasing to the ears of lay listeners， who comprise the audience for whom such popular music is composed， that defendant wrongfully appropriated something which belongs to the plaintiff畅Surely， then， we have an issue of fact which a jury is peculiarly fitted to determine畅Indeed， even if there were to be a trial before a judge， it would be desirable （ although not necessary） for him to summon an advisory jury on ２３０ 美国知识产权法 this question畅 １畅根据本案裁决， 如何认定被告抄袭了原告的作品？ ２畅何谓 “ 接触” ？ 如何证明 “接触” ？ ３畅何谓 “ 相似性” ？ ４畅在认定被告 是否 侵权 时， “ 接 触” 和 “ 相 似 性” 两 者是 否缺一不可？ 案 例 28 Shapiro v畅H畅L畅Green Co畅 ３１６ F畅２d ３０４ April １５， １９６３ KAUFMAN， Circuit Judge畅 The plaintiffs in the court below， appellants here， are the copyright proprietors of several musical compositions， recordings of which have met with considerable popularity， especially amongst the younger set畅 Jalen operated the phonograph record department as concessionaire in twenty唱 three stores of defendant H畅L畅Green Co畅， Inc畅， pursuant to written licenses from the Green Company畅The complaint alleged that Green was liable for copyrights infringement because it “ sold， or contributed to and participated actively in the 第一编 ２ ３１ 美 国 版 权法 sale of” the so唱 called “ bootleg” records manufactured by Jalen and sold by Jalen in the Green stores畅 The District Judge， after trial， found Jalen liable as manufacturer of the “ bootleg ” records畅 He concluded， however， that Green had not sold any of the phonograph records and was not liable for any sales made by Jalen畅 Plaintiffs come before us to challenge the dismissal of the claims asserted against Green畅The validity of those claims depends upon a detailed examination of the relationship between Green and the conceded infringer Jalen畅 At the time of suit， Jalen had been operating under license from Green the phonograph record department in twenty唱 three of its stores， in some for as long as thirteen years畅 The licensing agreements provided that Jalen and its employees were to ‘ abide by， observe and obey all rules and regulations promulgated from time to time by H畅L畅Green Company， Inc畅Green， in its “ unreviewable discretion” ， had the authority to discharge any employee believed to be conducting himself improperly畅All sales of Jalen were made by Jalen employees， who， as the District Court found， were under the effective control and supervision of Jalen畅All of the daily proceeds from record sales went into Green摧 s cash registers and were removed there from by the cashier of the store畅Customers purchasing records were given a receipt on a printed form marked “ H畅 L畅 Green Company， Inc畅” ； Jalen摧 s name was wholly absent from the premises畅 The District Judge found that Green did not actively participate in the sale of the records and that it had no knowledge of the unauthorized manufacture of the records畅 Section １０１ （ e ） of the Copyright Act makes unlawful the “ unauthorized manufacture， use， or sale” of phonograph records畅 ２３２ 美国知识产权法 Because of the open唱 ended terminology of the section， and the related section １ （ e ）， courts have had to trace， case by case， a pattern of business relationships which would render one person liable for the infringing conduct of another畅It is quite clear， for example， that the normal agency rule of respondent superior applies to copyright infringement by a servant within the scope of his employment畅Realistically， the courts have not drawn a rigid line between the strict cases of agency， and those of independent contract， license， and lease畅When the right and ability to supervise coalesce with an obvious and direct financial interest in the exploitation of copyrighted materials唱 even in the absence of actual knowledge that the copyright monopoly is being impaired， the purposes of copyright law may be best effectuated by the imposition of liability upon the beneficiary of that exploitation畅 The two lines of precedent most nearly relevant to the case before us are those which deal， on the one hand， with the landlord leasing his property at a fixed rental to a tenant who engages in copyright唱 infringing conduct on the leased premises and， on the other hand， the proprietor or manager of a dance hall or music hall leasing his premises to or hiring a dance band， which brings in customers and profits to the proprietor by performing copyrighted music but without complying with the terms of the Copyright Act畅If the landlord lets his premises without knowledge of the impending infringement by his tenant， exercises no supervision over him， charges a fixed rental and receives no other benefit from the infringement， and contributes in no way to it， it has been held that the landlord is not liable for his tenant摧 s wrongdoing畅But， the cases are legion which hold the dance hall proprietor liable for the 第一编 美 国 版 权法 ２ ３３ infringement of copyright resulting from the performance of a musical composition by a band or orchestra whose activities provide the proprietor with a source of customers and enhanced income畅He is liable whether the bandleader is considered， as a technical matter， an employee or an independent contractor， and whether or not the proprietor has knowledge of the compositions to be played or any control over their selection畅 We believe that the principle which can be extracted from the dance hall cases is a sound one and， under the facts of the cases before us， is here applicable畅Those cases and this one lie closer on the spectrum to the employer唱 employee model than to the landlord唱 tenant model畅 Green licensed one facet of its variegated business enterprise， for some thirteen years， to the Jalen Amusement Company畅Green retained the ultimate right of supervision over the conduct of the record concession and its employees畅By reserving for itself a proportionate share of the gross receipts from Jalen摧 s sales of phonograph records， Green had a most definite financial interest in the success of Jalen摧 s concession； １０％ Or １２ ％ Of the sales price of every record sold by Jalen， whether “ bootleg” or legitimate， found its way — both literally and figuratively — into the coffers of the Green Company畅 We therefore conclude， on the particular facts before us， that Green摧 s relationship to its infringing licensee， as well as its strong concern for the financial success of the phonograph record concession， renders it liable for the unauthorized sales of the “ bootleg” records畅 The imposition of liability upon the Green Company， even in the absence of an intention to infringe or knowledge of infringement， is not unusual畅While there have been some complaints concerning ２３４ 美国知识产权法 the harshness of the principle of strict liability in copyright law， courts have consistently refused to honor the defense of absence of knowledge or intention畅 The protection accorded literary property would be of little value if insulation from payment of damages could be secured by merely refraining from making inquiry畅 It is the innocent infringer who must suffer， since he， unlike the copyright owner， either has an opportunity to guard against the infringement （ by diligent inquiry ） ， or at least the ability to guard against the infringement （ by an indemnity agreement and ／ or by insurance） ． For much the same reasons， the imposition of vicarious liability in the case before us cannot be deemed unduly harsh or unfair畅 Green has the power to police carefully the conduct of its concessionaire Jalen； our judgment will simply encourage it to do so， thus placing responsibility where it can and should be effectively exercised畅Green摧 s burden will not be unlike that quite commonly imposed upon publishers， printers， and vendors of copyrighted materials畅Indeed， the record in this case reveals that the “ bootleg” recordings were somewhat suspicious on their face； they bore no name of any manufacturer upon the labels or on the record jackets， as is customary in the trade畅 Even if a fairly constant system of surveillance is thought too burdensome， Green is in the position to safeguard itself in a less arduous manner against liability resulting from the conduct of its concessionaires畅It has in fact done so， by incorporating a save唱 harmless provision in its licensing agreements with Jalen畅 Reversed and remanded畅 第一编 ２ ３５ 美 国 版 权法 １畅 “舞厅” 类的先例确立了什么规则？ ２畅 “房东 －房客” 类的先例确立了什么规则？ ３畅本案中连锁店主 人和 出 售侵 权录 音 制品 的 承 租人 之 间的 关系更类似于哪一种关系？ ３畅在确立代位侵权的问题上， 本案确立的标准是什么？ 案 例 29 Sony Co畅v畅Universal City Studios， Inc畅 ４６４ U畅S畅 ４１７ ， January １７， １９８４ Justice STEVENS delivered the opinion of the Court畅 Petitioner Sony Corp畅manufactures home video tape recorders （ VTR摧 s） ， and markets them through retail establishments， some of which are also petitioners畅Respondents own the copyrights on some of the television programs that are broadcast on the public airwaves畅 Respondents brought an action against petitioners in Federal District Court， alleging that VTR consumers had been recording some of respondents摧 copyrighted works that had been exhibited on commercially sponsored television and thereby infringed respondents摧 copyrights， and further that petitioners were liable for such copyright ２３６ 美国知识产权法 infringement because of their marketing of the VTR摧 s畅The District Court denied respondents all relief， holding that noncommercial home use recording of material broadcast over the public airwaves was a fair use of copyrighted works and did not constitute copyright infringement， and that petitioners could not be held liable as contributory infringers even if the home use of a VTR was considered an infringing use畅 The Court of Appeals reversed， holding petitioners liable for contributory infringement and ordering the District Court to fashion appropriate relief畅 Ⅰ From its beginning， the law of copyright has developed in response to significant changes in technology畅Indeed， it was the invention of a new form of copying equipment唱 the printing press唱 that gave rise to the original need for copyright protection畅Repeatedly， as new developments have occurred in this country， it has been the Congress that has fashioned the new rules that new technology made necessary畅Thus， long before the enactment of the Copyright Act of １９０９， ３５ Stat畅１０７５， it was settled that the protection given to copyrights is wholly statutory畅 By enacting the Sound Recording Amendment of １９７１， ８５ Stat畅３９１， Congress also provided the solution to the “ record piracy” problems that had been created by the development of the audio tape recorder畅Sony argues that the legislative history of that Act indicates that Congress did not intend to prohibit the private home use of either audio or video tape recording equipment畅In view of our disposition of the contributory infringement issue， we express no opinion on that question畅 第一编 美 国 版 权法 ２ ３７ The judiciary摧 s reluctance to expand the protections afforded by the copyright without explicit legislative guidance is a recurring theme畅Sound policy， as well as history， supports our consistent deference to Congress when major technological innovations alter the market for copyrighted materials畅 Congress has the constitutional authority and the institutional ability to accommodate fully the varied permutations of competing interests that are inevitably implicated by such new technology畅 In a case like this， in which Congress has not plainly marked our course， we must be circumspect in construing the scope of rights created by a legislative enactment which never contemplated such a calculus of interests畅In doing so， we are guided by Justice Stewart摧 s exposition of the correct approach to ambiguities in the law of copyright： “ The limited scope of the copyright holder摧 s statutory monopoly， like the limited copyright duration required by the Constitution， reflects a balance of competing claims upon the public interest： Creative work is to be encouraged and rewarded， but private motivation must ultimately serve the cause of promoting broad public availability of literature， music， and the other arts畅The immediate effect of our copyright law is to secure a fair return for an ‘ author摧 s’ creative labor畅But the ultimate aim is， by this incentive， to stimulate artistic creativity for the general public good畅‘ The sole interest of the United States and the primary object in conferring the monopoly，’ this Court has said， ‘ lie in the general benefits derived by the public from the labors of authors畅’ When technological change has rendered its literal terms ambiguous， the Copyright Act must be construed in light of this basic purpose畅” ２３８ 美国知识产权法 Copyright protection “subsists畅 畅畅in original works of authorship fixed in any tangible medium of expression畅” １７ U畅S畅C畅§ １０２ （ a ） ． This protection has never accorded the copyright owner complete control over all possible uses of his work畅 Rather ， the Copyright Act grants the copyright holder “ exclusive ” rights to use and to authorize the use of his work in five qualified ways， including reproduction of the copyrighted work in copies畅All reproductions of the work， however ， are not within the exclusive domain of the copyright owner； some are in the public domain畅Any individual may reproduce a copyrighted work for a “ fair use；” the copyright owner does not possess the exclusive right to such a use畅 The two respondents in this case do not seek relief against the Betamax users who have allegedly infringed their copyrights畅 Moreover， this is not a class action on behalf of all copyright owners who license their works for television broadcast， and respondents have no right to invoke whatever rights other copyright holders may have to bring infringement actions based on Betamax copying of their works畅As was made clear by their own evidence， the copying of the respondents摧programs represents a small portion of the total use of VTR摧 s畅It is， however， the taping of respondents own copyrighted programs that provides them with standing to charge Sony with contributory infringement畅 To prevail， they have the burden of proving that users of the Betamax have infringed their copyrights and that Sony should be held responsible for that infringement畅 Ⅱ The Copyright Act does not expressly render anyone liable for infringement committed by another畅 In contrast， the Patent Act 第一编 ２ ３９ 美 国 版 权法 expressly brands anyone who “ actively induces infringement of a patent” as an infringer ， ３５ U． S． C畅 § ２７１ （ b ） ， and further imposes liability on certain individuals labeled “ contributory ” infringers， § ２７１ （ c ） ．The absence of such express language in the copyright statute does not preclude the imposition of liability for copyright infringements on certain parties who have not themselves engaged in the infringing activity畅For vicarious liability is imposed in virtually all areas of the law， and the concept of contributory infringement is merely a species of the broader problem of identifying the circumstances in which it is just to hold one individual accountable for the actions of another畅 We note the parties摧statements that the questions of petitioners摧 liability under the “ doctrines ” of “ direct infringement ” and “ vicarious liability ” are not nominally before this Court畅We also observe， however， that reasoned analysis of respondents摧 unprecedented contributory infringement claim necessarily entails consideration of arguments and case law which may also be forwarded under the other labels， and indeed the parties to a large extent rely upon such arguments and authority in support of their respective positions on the issue of contributory infringement畅 Such circumstances were plainly present in Kalem Co畅 v畅 Harper Brothers畅 The copyright decision of this Court on which respondents place their principal reliance畅In Kalem， the Court held that the producer of an unauthorized film dramatization of the copyrighted book Ben Hur was liable for his sale of the motion picture to jobbers， who in turn arranged for the commercial exhibition of the film畅 Justice Holmes， writing for the Court， explained： ２４０ 美国知识产权法 “ The defendant not only expected but invoked by advertisement the use of its films for dramatic reproduction of the story畅T hat was the most conspicuous purpose for which they could be used， and the one for which especially they were made畅If the defendant did not contribute to the infringement it is impossible to do so except by taking part in the final act畅It is liable on principles recognized in every part of the law畅” The use for which the item sold in Kalem had been “ especially” made was， of course， to display the performance that had already been recorded upon it畅The producer had personally appropriated the copyright owner摧 s protected work and， as the owner of the tangible medium of expression upon which the protected work was recorded， authorized that use by his sale of the film to jobbers畅But that use of the film was not his to authorize： the copyright owner possessed the exclusive right to authorize public performances of his work畅 Further， the producer personally advertised the unauthorized public performances ， dispelling any possible doubt as to the use of the film which he had authorized畅 Respondents argue that Kalem stands for the proposition that supplying the “ means ” to accomplish an infringing activity and encouraging that activity through advertisement are sufficient to establish liability for copyright infringement畅This argument rests on a gross generalization that cannot withstand scrutiny畅The producer in Kalem did not merely provide the “ means ” to accomplish an infringing activity； the producer supplied the work itself， albeit in a new medium of expression畅Petitioners in the instant case do not supply Betamax consumers with respondents摧works； respondents do畅Petitioners supply a piece of equipment that is generally capable 第一编 ２ ４１ 美 国 版 权法 of copying the entire range of programs that may be televised： those that are uncopyrighted， those that are copyrighted but may be copied without objection from the copyright holder， and those that the copyright holder would prefer not to have copied畅The Betamax can be used to make authorized or unauthorized uses of copyrighted works， but the range of its potential use is much broader than the particular infringing use of the film Ben Hur involved in Kalem畅 Kalem does not support respondents摧novel theory of liability畅 Justice Holmes stated that the producer had “contributed” to the infringement of the copyright， and the label “ contributory infringement” has been applied in a number of lower court copyright cases involving an ongoing relationship between the direct infringer and the contributory infringer at the time the infringing conduct occurred畅 In such cases， as in other situations in which the imposition of vicarious liability is manifestly just， the “ contributory” infringer was in a position to control the use of copyrighted works by others and had authorized the use without permission from the copyright owner畅This case， however， plainly does not fall in that category畅 The only contact between Sony and the users of the Betamax that is disclosed by this record occurred at the moment of sale畅The District Court expressly found that “ no employee of Sony， Sonam or DDBI had either direct involvement with the allegedly infringing activity or direct contact with purchasers of Betamax who recorded copyrighted works off 唱 the唱 air畅” ４８０ F畅Supp畅， at ４６０畅And it further found that “ there was no evidence that any of the copies made by Griffiths or the other individual witnesses in this suit were influenced or encouraged by Sony摧 s advertisements畅” In Shapiro， Bernstein ＆ Co畅v畅H畅L畅Green Co畅， ３１６ F畅２ d ２４２ 美国知识产权法 ３０４ （ CA２ １９６３） the owner of twenty唱 three chain stores retained the direct infringer to run its record departments畅The relationship was structured as a licensing arrangement， so that the defendant bore none of the business risk of running the department畅 Instead， it received １０％ or １２％ of the direct infringer摧 s gross receipts畅The Court of Appeals concluded： “ T he dance唱 hall cases and this one lie closer on the spectrum to the employer唱 employee model， than to the landlord唱 tenant model畅 On the particular facts before us， 畅畅 畅Green摧 s relationship to its infringing licensee， as well as its strong concern for the financial success of the phonograph record concession， renders it liable for the unauthorized sales of the ‘ bootleg’ records畅 “ The imposition of vicarious liability in the case before us cannot be deemed unduly harsh or unfair畅Green has the power to police carefully the conduct of its concessionaire； our judgment will simply encourage it to do so， thus placing responsibility where it can and should be effectively exercised畅” In Gershwin Publishing Corp畅v畅Columbia Artists Management， Inc畅， ４４３ F畅 ２d １１５９， the direct infringers retained the contributory infringer to manage their performances畅 The contributory infringer would contact each direct infringer， obtain the titles of the musical compositions to be performed， print the programs， and then sell the programs to its own local organizations for distribution at the time of the direct infringement畅The Court of Appeals emphasized that the contributory infringer had actual knowledge that the artists it was managing were performing copyrighted works， was in a position to police the infringing conduct of the artists， and derived substantial benefit from the actions of the primary infringers畅 第一编 美 国 版 权法 ２ ４３ In Screen Gems唱 Columbia Music， Inc畅 v畅Mark唱 Fi Records， Inc畅， ２５６ F畅Supp畅 ３９９ （ SDNY １９６６ ） ， the direct infringer manufactured and sold bootleg records畅 In denying a motion for summary judgment， the District Court held that the infringer摧 s advertising agency， the radio stations that advertised the infringer摧 s works， and the service agency that boxed and mailed the infringing goods could all be held liable， if at trial it could be demonstrated that they knew or should have known that they were dealing in illegal goods畅 If vicarious liability is to be imposed on petitioners in this case， it must rest on the fact that they have sold equipment with constructive knowledge of the fact that their customers may use that equipment to make unauthorized copies of copyrighted material畅 There is no precedent in the law of copyright for the imposition of vicarious liability on such a theory畅The closest analogy is provided by the patent law cases to which it is appropriate to refer because of the historic kinship between patent law and copyright law畅 We have consistently rejected the proposition that a similar kinship exists between copyright law and trademark law， and in the process of doing so have recognized the basic similarities between copyrights and patents畅Given the fundamental differences between copyright law and trademark law， in this copyright case we do not look to the standard for contributory infringement set forth in Inwood Laboratories v畅Ives Laboratories， which was crafted for application in trademark cases畅 There we observed that a manufacturer or distributor could be held liable to the owner of a trademark if it intentionally induced a merchant down the chain of distribution to pass off its product as that of the trademark owner摧 s or if it continued ２４４ 美国知识产权法 to supply a product which could readily be passed off to a particular merchant whom it knew was mislabeling the product with the trademark owner摧 s mark畅 If Inwood摧 s narrow standard for contributory trademark infringement governed here， respondents摧 claim of contributory infringement would merit little discussion畅 Sony certainly does not “ intentionally induce” its customers to make infringing uses of respondents摧copyrights， nor does it supply its products to identified individuals known by it to be engaging in continuing infringement of respondents摧copyrights畅 In the Patent Code both the concept of infringement and the concept of contributory infringement are expressly defined by statute畅The prohibition against contributory infringement is confined to the knowing sale of a component especially made for use in connection with a particular patent畅There is no suggestion in the statute that one patentee may object to the sale of a product that might be used in connection with other patents畅Moreover， the Act expressly provides that the sale of a “ staple article or commodity of commerce suitable for substantial noninfringing use ” is not contributory infringement畅 When a charge of contributory infringement is predicated entirely on the sale of an article of commerce that is used by the purchaser to infringe a patent， the public interest in access to that article of commerce is necessarily implicated畅 A finding of contributory infringement does not， of course， remove the article from the market altogether； it does， however ， give the patentee effective control over the sale of that item畅Indeed， a finding of contributory infringement is normally the functional equivalent of holding that the disputed article is within the monopoly granted to the ２４６ 美国知识产权法 the product is widely used for legitimate， unobjectionable purposes畅 Indeed， it need merely be capable of substantial noninfringing uses畅 Ⅲ The question is thus whether the Betamax is capable of commercially significant noninfringing uses畅In order to resolve that question， we need not explore all the different potential uses of the machine and determine whether or not they would constitute infringement畅Rather， we need only consider whether on the basis of the facts as found by the district court a significant number of them would be non唱 infringing畅Moreover， in order to resolve this case we need not give precise content to the question of how much use is commercially significant畅 For one potential use of the Betamax plainly satisfies this standard， however it is understood： private， noncommercial time唱 shifting in the home畅 It does so both （ A ） because respondents have no right to prevent other copyright holders from authorizing it for their programs， and （ B） because the District Court摧 s factual findings reveal that even the unauthorized home time唱 shifting of respondents摧programs is legitimate fair use畅 Each of the respondents owns a large inventory of valuable copyrights， but in the total spectrum of television programming their combined market share is small畅 The exact percentage is not specified， but it is well below １０％ 畅If they were to prevail， the outcome of this litigation would have a significant impact on both the producers and the viewers of the remaining ９０％ of the programming in the Nation畅No doubt， many other producers share respondents摧 concern about the possible consequences of unrestricted copying畅 Nevertheless the findings of the District Court make it clear that 第一编 ２ ４７ 美 国 版 权法 time唱 shifting may enlarge the total viewing audience and that many producers are willing to allow private time唱 shifting to continue， at least for an experimental time period畅 The District Court found： “Even if it were deemed that home唱 use recording of copyrighted material constituted infringement， the Betamax could still legally be used to record noncopyrighted material or material whose owners consented to the copying畅An injunction would deprive the public of the ability to use the Betamax for this noninfringing off唱 the唱 air recording畅 “ Defendants introduced considerable testimony at trial about the potential for such copying of sports， religious， educational and other programming畅This included testimony from representatives of the Offices of the Commissioners of the National Football， Basketball， Baseball and Hockey Leagues and Associations， the Executive Director of National Religious Broadcasters and various educational communications agencies畅 Plaintiffs attack the weight of the testimony offered and also contend that an injunction is warranted because infringing uses outweigh noninfringing uses畅” “ Whatever the future percentage of legal versus illegal home唱 use recording might be， an injunction which seeks to deprive the public of the very tool or article of commerce capable of some noninfringing use would be an extremely harsh remedy， as well as one unprecedented in copyright law畅” Although the District Court made these statements in the context of considering the propriety of injunctive relief， the statements constitute a finding that the evidence concerning “ sports， religious， educational， and other programming ” was sufficient to establish a significant quantity of broadcasting whose copying is now ２４８ 美国知识产权法 authorized， and a significant potential for future authorized copying畅 That finding is amply supported by the record畅In addition to the religious and sports officials identified explicitly by the District Court， two items in the record deserve specific mention畅 First is the testimony of John Kenaston， the station manager of Channel ５８， an educational station in Los Angeles affiliated with the Public Broadcasting Service畅 He explained and authenticated the station摧 s published guide to its programs畅For each program， the guide tells whether unlimited home taping is authorized， home taping is authorized subject to certain restrictions （ such as erasure within seven days ） ， or home taping is not authorized at all畅The Spring １９７８ edition of the guide described １０７ programs畅 Sixty唱 two of those programs or ５８％ authorize some home taping畅Twenty唱 one of them or almost ２０％ authorize unrestricted home taping畅 Second is the testimony of Fred Rogers， president of the corporation that produces and owns the copyright on Mr畅Rogers摧 Neighborhood畅The program is carried by more public television stations than any other program畅 Its audience numbers over ３敞０００敞０００ families a day畅He testified that he had absolutely no objection to home taping for noncommercial use and expressed the opinion that it is a real service to families to be able to record children摧 s programs and to show them at appropriate times畅 If there are millions of owners of VTR摧 s who make copies of televised sports events， religious broadcasts， and educational programs such as Mister Rogers摧 Neighborhood， and if the proprietors of those programs welcome the practice， the business of supplying the equipment that makes such copying feasible should not be stifled simply because the equipment is used by some individuals 第一编 美 国 版 权法 ２ ４９ to make unauthorized reproductions of respondents摧works畅 The respondents do not represent a class composed of all copyright holders畅Yet a finding of contributory infringement would inevitably frustrate the interests of broadcasters in reaching the portion of their audience that is available only through time唱 shifting畅 Of course， the fact that other copyright holders may welcome the practice of time唱 shifting does not mean that respondents should be deemed to have granted a license to copy their programs畅Third party conduct would be wholly irrelevant in an action for direct infringement of respondents摧 copyrights畅 But in an action for contributory infringement against the seller of copying equipment， the copyright holder may not prevail unless the relief that he seeks affects only his programs， or unless he speaks for virtually all copyright holders with an interest in the outcome畅In this case， the record makes it perfectly clear that there are many important producers of national and local television programs who find nothing objectionable about the enlargement in the size of the television audience that results from the practice of time唱 shifting for private home use畅The seller of the equipment that expands those producers摧 audiences cannot be a contributory infringer if， as is true in this case， it has had no direct involvement with any infringing activity畅 In the context of television programming， some producers evidently believe that permitting home viewers to make copies of their works off the air actually enhances the value of their copyrights畅Irrespective of their reasons for authorizing the practice， they do so， and in significant enough numbers to create a substantial market for a non唱 infringing use of the S ony VTR摧 s畅No one could dispute the legitimacy of that market if the producers had authorized ２５０ 美国知识产权法 home taping of their programs in exchange for a license fee paid directly by the home user畅 The legitimacy of that market is not compromised simply because these producers have authorized home taping of their programs without demanding a fee from the home user畅The copyright law does not require a copyright owner to charge a fee for the use of his works， and as this record clearly demonstrates， the owner of a copyright may well have economic or noneconomic reasons for permitting certain kinds of copying to occur without receiving direct compensation from the copier畅It is not the role of the courts to tell copyright holders the best way for them to exploit their copyrights： even if respondents摧competitors were ill唱 advised in authorizing home videotaping， that would not change the fact that they have created a substantial market for a paradigmatic non唱 infringing use of petitioners摧product畅 Unauthorized Time唱 Shifting Even unauthorized uses of a copyrighted work are not necessarily infringing畅An unlicensed use of the copyright is not an infringement unless it conflicts with one of the specific exclusive rights conferred by the copyright statute畅Twentieth Century Music Corp畅v畅Aiken， ４２２ U畅 S畅１５１， １５４ －１５５， ９５ S畅Ct畅２０４０， ２０４３， ４５ L畅Ed畅２d ８４畅 Moreover， the definition of exclusive rights in § １０６ of the present Act is prefaced by the words “ subject to sections １０７ through １１８畅” Those sections describe a variety of uses of copyrighted material that “ are not infringements of copyright notwithstanding the provisions of § １０６畅” The most pertinent in this case is § １０７， the legislative endorsement of the doctrine of fair use畅” That section identifies various factors that enable a Court to 第一编 ２ ５１ 美 国 版 权法 apply an “ equitable rule of reason” analysis to particular claims of infringement畅Although not conclusive， the first factor requires that “ the commercial or nonprofit character of an activity” be weighed in any fair use decision畅If the Betamax were used to make copies for a commercial or profit唱 making purpose， such use would presumptively be unfair畅The contrary presumption is appropriate here， however， because the District Court摧 s findings plainly establish that time唱 shifting for private home use must be characterized as a noncommercial， nonprofit activity畅Moreover， when one considers the nature of a televised copyrighted audiovisual work， and that timeshifting merely enables a viewer to see such a work which he had been invited to witness in its entirety free of charge， the fact that the entire work is reproduced， does not have its ordinary effect of militating against a finding of fair use畅 The Senate Committee similarly eschewed a rigid， bright line approach to fair use畅The Senate Report endorsed the view “ that off唱 the唱 air recording for convenience ” could be considered “ fair use” under some circumstances， although it then made it clear that it did not intend to suggest that off唱 the唱 air recording for convenience should be deemed fair use under any circumstances imaginable畅 Senate Report ９４ －４７３， pp畅６５ －６６畅The latter qualifying statement is quoted by the dissent， post， at ８０９， and if read in isolation， would indicate that the Committee intended to condemn all off唱 the唱 air recording for convenience畅Read in context， however， it is quite clear that that was the farthest thing from the Committee摧 s intention畅 This is not， however， the end of the inquiry because Congress has also directed us to consider “ the effect of the use upon the potential market for or value of the copyrighted work畅” The purpose ２５２ 美国知识产权法 of copyright is to create incentives for creative effort畅Even copying for noncommercial purposes may impair the copyright holder摧 s ability to obtain the rewards that Congress intended him to have畅But a use that has no demonstrable effect upon the potential market for， or the value of， the copyrighted work need not be prohibited in order to protect the author摧 s incentive to create畅The prohibition of such noncommercial uses would merely inhibit access to ideas without any countervailing benefit畅 Thus， although every commercial use of copyrighted material is presumptively an unfair exploitation of the monopoly privilege that belongs to the owner of the copyright， noncommercial uses are a different matter畅 A challenge to a noncommercial use of a copyrighted work requires proof either that the particular use is harmful， or that if it should become widespread， it would adversely affect the potential market for the copyrighted work畅Actual present harm need not be shown； such a requirement would leave the copyright holder with no defense against predictable damage畅Nor is it necessary to show with certainty that future harm will result畅What is necessary is a showing by a preponderance of the evidence that some meaningful likelihood of future harm exists畅If the intended use is for commercial gain， that likelihood may be presumed畅But if it is for a noncommercial purpose， the likelihood must be demonstrated畅 In this case， respondents failed to carry their burden with regard to home time唱 shifting畅 The District Court described respondents摧 evidence as follows： “ Plaintiffs摧experts admitted at several points in the trial that the time唱 shifting without librarying would result in ‘ not a great deal of harm畅’ Plaintiffs摧greatest concern about time唱 shifting is with ‘ a 第一编 美 国 版 权法 ２ ５３ point of important philosophy that transcends even commercial judgment畅’ They fear that with any Betamax usage， ‘ invisible boundaries摧are passed： ‘ the copyright owner has lost control over his program畅’ ” ４８０ F畅Supp畅， at ４６７畅 Later in its opinion， the District Court observed： “ Most of plaintiffs摧predictions of harm hinge on speculation about audience viewing patterns and ratings， a measurement system which Sidney Sheinberg， MCA摧 s president， calls a ‘ black art ’ because of the significant level of imprecision nvolved in the calculations畅” There was no need for the District Court to say much about past harm畅 “ Plaintiffs have admitted that no actual harm to their copyrights has occurred to date畅” On the question of potential future harm from time唱 shifting， the District Court offered a more detailed analysis of the evidence畅It rejected respondents摧“ fear that persons ‘ watching ’ the original telecast of a program will not be measured in the live audience and the ratings and revenues will decrease，” by observing that current measurement technology allows the Betamax audience to be reflected畅 It rejected respondents摧 prediction “ that live televisionor movie audiences will decrease as more people watch Betamax tapes as an alternative，” with the observation that “ there is no factual basis for the underlying assumption畅” It rejected respondents摧“ fear that time唱 shifting will reduce audiences for telecast reruns，” and concluded instead that “given current market practices， this should aid plaintiffs rather than harm them畅” And it declared that respondents摧suggestion “ that theater or film rental exhibition of a program will suffer because of time唱 shift recording of that program” “lacks merit畅” ２５４ 美国知识产权法 After completing that review， the District Court restated its overall conclusion several times， in several different ways畅“ Harm from time唱 shifting is speculative and， at best， minimal畅” “ The audience benefits from the time唱 shifting capability have already been discussed畅It is not implausible that benefits could also accrue to plaintiffs， broadcasters， and advertisers， as the Betamax makes it possible for more persons to view their broadcasts畅” “ No likelihood of harm was shown at trial， and plaintiffs admitted that there had been no actual harm to date畅” “ Testimony at trial suggested that Betamax may require adjustments in marketing strategy， but it did not establish even a likelihood of harm畅” “ Television production by plaintiffs today is more profitable than it has ever been， and， in five weeks of trial， there was no concrete evidence to suggest that the Betamax will change the studios摧financial picture畅” The District Court摧 s conclusions are buttressed by the fact that to the extent time唱 shifting expands public access to freely broadcast television programs， it yields societal benefits畅Earlier this year， in Community Television of Southern California v畅 Gottfried， — U畅S畅—， — —， n畅１２， １０３ S畅Ct畅８８５， ８９１ －８９２， ７４ L畅Ed畅２ d ７０５ （ １９８３ ） ， we acknowledged the public interest in making television broadcasting more available畅Concededly， that interest is not unlimited畅 But it supports an interpretation of the concept of “ fair use ” that requires the copyright holder to demonstrate some likelihood of harm before he may condemn a private act of time唱 shifting as a violation of federal law畅 When these factors are all weighed in the “ equitable rule of reason” balance， we must conclude that this record amply supports the District Court摧 s conclusion that home time唱 shifting is fair use畅In 第一编 ２ ５５ 美 国 版 权法 light of the findings of the District Court regarding the state of the empirical data， it is clear that the Court of Appeals erred in holding that the statute as presently written bars such conduct畅 Congress has plainly instructed us that fair use analysis calls for a sensitive balancing of interests畅 The distinction between “ productive” and “ unproductive” uses may be helpful in calibrating the balance， but it cannot be wholly determinative畅 Although copying to promote a scholarly endeavor certainly has a stronger claim to fair use than copying to avoid interrupting a poker game， the question is not simply two唱 dimensional畅For one thing， it is not true that all copyrights are fungible畅 Some copyrights govern material with broad potential secondary markets畅Such material may well have a broader claim to protection because of the greater potential for commercial harm畅Copying a news broadcast may have a stronger claim to fair use than copying a motion picture畅And， of course， not all uses are fungible畅Copying for commercial gain has a much weaker claim to fair use than copying for personal enrichment畅 But the notion of social “ productivity” cannot be a complete answer to this analysis畅A teacher who copies to prepare lecture notes is clearly productive畅But so is a teacher who copies for the sake of broadening his personal understanding of his specialty畅 Or a legislator who copies for the sake of broadening her understanding of what her constituents are watching； or a constituent who copies a news program to help make a decision on how to vote畅 Making a copy of a copyrighted work for the convenience of a blind person is expressly identified by the House Committee Report as an example of fair use， with no suggestion that anything more than a purpose to entertain or to inform need motivate the copying畅 ２５６ 美国知识产权法 In a hospital setting， using a VTR to enable a patient to see programs he would otherwise miss has no productive purpose other than contributing to the psychological well唱 being of the patient畅 Virtually any time唱 shifting that increases viewer access to television programming may result in a comparable benefit畅 The statutory language does not identify any dichotomy between productive and nonproductive time唱 shifting， but does require consideration of the economic consequences of copying畅 In summary， the record and findings of the District Court lead us to two conclusions畅 First， Sony demonstrated a significant likelihood that substantial numbers of copyright holders who license their works for broadcast on free television would not object to having their broadcasts time唱 shifted by private viewers畅And second， respondents failed to demonstrate that time唱 shifting would cause any likelihood of nonminimal harm to the potential market for， or the value of， their copyrighted works畅 The Betamax is， therefore， capable of substantial noninfringing uses畅 Sony摧 s sale of such equipment to the general public does not constitute contributory infringement of respondent摧 s copyrights畅 Ⅳ “ The direction of Art畅I is that Congress shall have the power to promote the progress of science and the useful arts畅When， as here， the Constitution is permissive， the sign of how far Congress has chosen to go can come only from Congress畅” One may search the Copyright Act in vain for any sign that the elected representatives of the millions of people who watch television every day have made it unlawful to copy a program for later viewing 第一编 美 国 版 权法 ２ ５７ at home， or have enacted a flat prohibition against the sale of machines that make such copying possible畅 It may well be that Congress will take a fresh look at this new technology， just as it so often has examined other innovations in the past畅But it is not our job to apply laws that have not yet been written畅Applying the copyright statute， as it now reads， to the facts as they have been developed in this case， the judgment of the Court of Appeals must be reversed畅 It is so ordered畅 １畅何谓版权法意义上的 “ contributory infringement” ？ ２畅专利法关于 contributory infringement 的认定对本案有何重 要意义？ ３畅本案和合理使用原则存在什么关系？ 案 例 30 Metro唱 Goldwyn唱 Mayer Studios Inc畅v畅Grokster， Ltd畅 ３８０ F畅 ３d １１５４ Respondent companies distribute free software that allows computer users to share electronic files through peer唱 to唱 peer ２５８ 美国知识产权法 networks， so called because the computers communicate directly with each other， not through central servers畅 Although such networks can be used to share any type of digital file， recipients of respondents’ software have mostly used them to share copyrighted music and video files without authorization畅Seeking damages and an injunction， a group of movie studios and other copyright holders （ hereinafter MGM ） sued respondents for their users ’ copyright infringements， alleging that respondents knowingly and intentionally distributed their software to enable users to infringe copyrighted works in violation of the Copyright Act畅 Discovery revealed that billions of files are shared across peer唱 to唱 peer networks each month畅 Respondents are aware that users employ their software primarily to download copyrighted files， although the decentralized networks do not reveal which files are copied， and when畅Respondents have sometimes learned about the infringement directly when users have e唱 mailed questions regarding copyrighted works， and respondents have replied with guidance畅 Respondents are not merely passive recipients of information about infringement畅The record is replete with evidence that when they began to distribute their free software， each of them clearly voiced the objective that recipients use the software to download copyrighted works and took active steps to encourage infringement畅After the notorious file唱 sharing service， Napster， was sued by copyright holders for facilitating copyright infringement， both respondents promoted and marketed themselves as Napster alternatives畅 They receive no revenue from users， but， instead， generate income by selling advertising space， then streaming the advertising to their users畅As the number of users increases， advertising opportunities 第一编 ２ ５９ 美 国 版 权法 are worth more畅There is no evidence that either respondent made an effort to filter copyrighted material from users摧 downloads or otherwise to impede the sharing of copyrighted files畅 While acknowledging that respondents摧 users had directly infringed MGM摧 s copyrights， the District Court nonetheless granted respondents summary judgment as to liability arising from distribution of their software畅The Ninth Circuit affirmed畅It read Sony Corp畅of America v畅Universal City Studios， Inc畅， ４６４ U畅S畅 ４１７， as holding that the distribution of a commercial product capable of substantial noninfringing uses could not give rise to contributory liability for infringement unless the distributor had actual knowledge of specific instances of infringement and failed to act on that knowledge畅Because the appeals court found respondents摧software to be capable of substantial noninfringing uses and because respondents had no actual knowledge of infringement owing to the software摧 s decentralized architecture， the court held that they were not liable畅It also held that they did not materially contribute to their users摧infringement because the users themselves searched for， retrieved， and stored the infringing files， with no involvement by respondents beyond providing the software in the first place畅Finally， the court held that respondents could not be held liable under a vicarious infringement theory because they did not monitor or control the software摧 s use， had no agreed唱 upon right or current ability to supervise its use， and had no independent duty to police infringement畅 Held： One who distributes a device with the object of promoting its use to infringe copyright， as shown by clear expression or other affirmative steps taken to foster infringement， going beyond ２６０ 美国知识产权法 mere distribution with knowledge of third唱 party action， is liable for the resulting acts of infringement by third parties using the device， regardless of the device摧 s lawful uses畅 （ a ） The tension between the competing values of supporting creativity through copyright protection and promoting technological innovation by limiting infringement liability is the subject of this case畅Despite offsetting considerations， the argument for imposing indirect liability here is powerful， given the number of infringing downloads that occur daily using respondents ’ software畅When a widely shared product is used to commit infringement， it may be impossible to enforce rights in the protected work effectively against all direct infringers， so that the only practical alternative is to go against the device摧 s distributor for secondary liability on a theory of contributory or vicarious infringement畅One infringes contributorily by intentionally inducing or encouraging direct infringement， and infringes vicariously by profiting from direct infringement while declining to exercise the right to stop or limit it畅Although “ the Copyright Act does not expressly render anyone liable for another摧 s infringement，” these secondary liability doctrines emerged from common law principles and are well established in the law畅 （ b ） Sony addressed a claim that secondary liability for infringement can arise from the very distribution of a commercial product畅There， copyright holders sued Sony， the manufacturer of videocassette recorders， claiming that it was contributorily liable for the infringement that occurred when VCR owners taped copyrighted programs畅The evidence showed that the VCR摧 s principal use was “ time唱 shifting，” i畅e畅， taping a program for later viewing at a more convenient time， which the Court found to be a fair， noninfringing 第一编 ２ ６１ 美 国 版 权法 use畅Moreover， there was no evidence that Sony had desired to bring about taping in violation of copyright or taken active steps to increase its profits from unlawful taping畅 On those facts， the only conceivable basis for liability was on a theory of contributory infringement through distribution of a product畅 Because the VCR was “ capable of commercially significant noninfringing uses，” the Court held that Sony was not liable畅 This theory reflected patent law摧 s traditional staple article of commerce doctrine that distribution of a component of a patented device will not violate the patent if it is suitable for use in other ways畅The doctrine absolves the equivocal conduct of selling an item with lawful and unlawful uses and limits liability to instances of more acute fault畅 In this case， the Ninth Circuit misread Sony to mean that when a product is capable of substantial lawful use， the producer cannot be held contributorily liable for third parties ’ infringing use of it， even when an actual purpose to cause infringing use is shown， unless the distributors had specific knowledge of infringement at a time when they contributed to the infringement and failed to act upon that information畅Sony did not displace other secondary liability theories畅 （ c） Nothing in Sony requires courts to ignore evidence of intent to promote infringement if such evidence exists畅It was never meant to foreclose rules of fault唱 based liability derived from the common law畅Where evidence goes beyond a product摧 s characteristics or the knowledge that it may be put to infringing uses， and shows statements or actions directed to promoting infringement， Sony摧 s staple唱 article rule will not preclude liability畅 At common law a copyright or patent defendant who “ not only expected but invoked infringing use by advertisement ” was liable for infringement畅The ２６２ 美国知识产权法 rule on inducement of infringement as developed in the early cases is no different today畅Evidence of active steps taken to encourage direct infringement， such as advertising an infringing use or instructing how to engage in an infringing use， shows an affirmative intent that the product be used to infringe， and overcomes the law摧 s reluctance to find liability when a defendant merely sells a commercial product suitable for some lawful use畅 A rule that premises liability on purposeful， culpable expression and conduct does nothing to compromise legitimate commerce or discourage innovation having a lawful promise畅 （ d） On the record presented， respondents摧unlawful objective is unmistakable畅 T he classic instance of inducement is by advertisement or solicitation that broadcasts a message designed to stimulate others to commit violations畅 MGM argues persuasively that such a message is shown here畅T hree features of the evidence of intent are particularly notable畅 First， each of the respondents showed itself to be aiming to satisfy a known source of demand for copyright infringement， the market comprising former Napster users畅Respondents ’ efforts to supply services to former Napster users indicate a principal， if not exclusive ， intent to bring about infringement畅 Second， neither respondent attempted to develop filtering tools or other mechanisms to diminish the infringing activity using their software畅While the Ninth Circuit treated that failure as irrelevant because respondents lacked an independent duty to monitor their users摧activity， this evidence underscores their intentional facilitation of their users摧 infringement畅 Third， respondents make money by selling advertising space， then by directing ads to the screens of computers employing their software畅 T he more their software is used， the more ads are sent out and the greater the advertising revenue畅Since the extent of the software摧 s use determines the gain to the distributors， the commercial sense of their enterprise turns on high唱 volume use， which the record shows is infringing畅T his evidence alone would not justify an inference of unlawful intent， but its import is clear in the entire record摧 s context畅 （ e ） In addition to intent to bring about infringement and distribution of a device suitable for infringing use， the inducement theory requires evidence of actual infringement by recipients of the device， the software in this case畅 There is evidence of such infringement on a gigantic scale畅 Because substantial evidence supports MGM on all elements， summary judgment for respondents was error畅 On remand， reconsideration of MGM摧 s summary judgment motion will be in order畅 Vacated and remanded畅 １畅本案的主要争议是什么？ ２畅Sony Corp畅of America v畅Universal City Studi ２６４ 美国知识产权法 第二 节 救 济 美国版权法第 ５０２ 条至 ５０５ 条规定了版权被侵害后可 以得到 的救济， 包括法院禁令、 扣押和 置侵权物品、 损害赔偿、 获得 诉讼费用和律师费用等。 例如： 据第 ５０２ 条， 法院得按其认为合理的条件发出临时的或 性禁令， 以预防或 步 止侵犯版权行为的发生， 避免损失的进一 大。 据第 ５０３ 条， 法院在本法内诉讼案件尚未作出判决的任何 时候， 得按其认为合理的条件， 命令没收所有被视为是侵犯版权 所有者的 用来复 有权利而 这些复 、 影 底 作或使用的复 件或 这些复 底 品以及所有的 品的印版、 字模、 纸型、 原版、 或其他物品。 另外， 作为最后判决的一部分， 法 院可以命令销毁或用其他合理办法来 有权利 件或 作或使用的复 件或 件或 理所有违犯版权所有者的 品， 以及所有的用来复 品的印版、 字模、 纸型、 原版、 、 影 或其他物品。 据第 ５０４ 条， 版权所有者有权要求赔偿其由于版权受到侵 犯所蒙受的实 损害， 以及版权侵犯者由于侵犯其版权所获得的 没有计算在实 损害中的利润。 在确定版权侵犯者的利润时， 要 求版权所有者提供有 版权侵犯者的总收入的证据， 同时要求版 权侵犯者证明其可扣除的费用， 以及由于版权作品以外的其他因 素所获得的利润。 或者， 版权所有者可以要求侵权者赔偿法定损 害赔偿， 这为难以证明自己实 提供了一个有利的 损失和侵权者利润的版权所有人 。 据第 ５０５ 条， 法院可酌情决定允许由除美国或美国 外的任何一方当事人负担 员以 部诉讼费。 法院还可裁定将合理的律 第一编 美 国 版 权法 ２ ６５ 师费作为诉讼费的一 部分 偿还 胜诉 一方。 在 １９９４ 年 之前， 有些 巡回法院在律师费的问题上采用了双重标准， 即胜诉的被告必须 证明败诉的原告是恶意起诉的， 而胜诉的原告则不必说明被告的 恶意。 在 １９９４ 年 的 Fogerty v畅Fantasy， Inc畅案 中， 最高 法 院推 翻了这一双重标准， 裁决对于原被告应一视同仁。 除了上述救济措施之外， 美国版权法第 ５０６ 条还规定了刑事 救济。 只要任何人为了商业目的或者个人金钱所得而故意侵犯他 人版权， 可以 据刑法予以惩罚。 案 例 31 Feltner v畅Columbia Pictures Television， Inc畅 １０６ F畅３d ２８４ Reversed and remanded畅 Respondent Columbia Pictures Television， Inc畅， terminated agreements licensing several television series to three television stations owned by petitioner Feltner after the stations ’ royalty payments became delinquent畅 When the stations continued to broadcast the programs， Columbia sued Feltner and others for， inter alia， copyright infringement畅 Columbia won partial summary judgment as to liability on its copyright infringement claims and then exercised the option afforded by § ５０４ （ c） of the Copyright Act to recover statutory damages in lieu of actual damages畅The District Court denied Feltner摧 s request for a jury trial， and awarded Columbia ２６６ 美国知识产权法 statutory damages following a bench trial畅 The Ninth Circuit affirmed， holding that neither § ５０４ （ c ） nor the Seventh Amendment provides a right to a jury trial on statutory damages畅 Held： １畅There is no statutory right to a jury trial when a copyright owner elects to recover statutory damages畅Section ５０４ （ c） makes no mention of a right to a jury trial or to juries at all， providing instead that damages should be assessed in an amount “ the court deems just，” and that in the event that “ the court finds ” an infringement that is willful or innocent， “ the court in its discretion” may increase or decrease the statutory damages畅The word “ court” in this context appears to mean judge， not jury畅 Other remedies provisions in the Act use the term “ court ” in contexts generally thought to confer authority on a judge， and the Act does not use the term “ court” when addressing awards of actual damages and profits， see § ５０４ （ b ） ， which generally are thought to constitute legal relief ， Dairy Queen， Inc畅v畅Wood， ３６９ U畅S畅４６９， ４７７畅Feltner摧 s reliance on Lorillard v畅Pons， ４３４ U畅 S畅５７５， ５８５， for a contrary interpretation is misplaced畅There being no statutory right to a jury trial on statutory damages， the constitutional question must be addressed畅 ２畅The Seventh Amendment provides a right to a jury trial on all issues pertinent to an award of statutory damages under § ５０４ （ c） ， including the amount itself畅 （ a ） The Seventh Amendment applies to both common唱 law causes of action and to statutory actions more analogous to cases tried in １８th唱 century courts of law than to suits customarily tried in courts of equity or admiralty畅To determine the proper analogue， this 第一编 ２ ６７ 美 国 版 权法 Court examines both the nature of the statutory action and the remedy sought畅 （ b ） There are close １８ th唱 century analogues to § ５０４ （ c ） statutory damages actions畅 Before the adoption of the Seventh Amendment， the common law and statutes in England and this country granted copyright owners causes of action for infringement畅 More importantly， copyright suits for monetary damages were tried in courts of law， and thus before juries畅There is no evidence that the first federal copyright law， the Copyright Act of １７９０， changed this practice； and damages actions under the Copyright Act of １８３１ were consistently tried before juries畅The Court is unpersuaded by Columbia摧 s contention that， despite this undisputed historical evidence， statutory damages are clearly equitable in nature畅 （ c） The right to a jury trial includes the right to have a jury determine the amount of statutory damages， if any， awarded to the copyright owner畅There is overwhelming evidence that the consistent common唱 law practice was for juries to award damages畅 More specifically， this was the consistent practice in copyright cases畅Tull v畅 United States， supra唱 in which this Court determined that， although the Seventh Amendment grants a right to a jury trial on liability for civil penalties under the Clean Water Act， Congress could constitutionally authorize trial judges to assess the amount of the civil penalties唱 is inapposite to this case畅In Tull， there was no evidence that juries historically had determined the amount of civil penalties to be paid to the Government， and the awarding of such penalties could be viewed as analogous to sentencing in a criminal proceeding畅Here there is no similar analogy， and there is clear and direct historical evidence that juries， both as a general matter and in ２６８ 美国知识产权法 copyright cases， set the amount of damages awarded to a successful plaintiff畅 在 statutory damages 的赔偿问题上， 陪审团发挥什么作用？ 案 例 32 Fogerty v畅Fantasy， Inc畅 ５１０ U畅S畅５１７ ， １９９４ Chief Justice REHNQUIST delivered the opinion of the Court畅 The Copyright Act of １９７６， １７ U畅S畅C畅 § ５０５， provides in relevant part that in any copyright infringement action “ the court may畅畅畅award a reasonable attorney摧 s fee to the prevailing party as part of the costs畅” The question presented in this case is what standards should inform a court摧 s decision to award attorney摧 s fees to a prevailing defendant in a copyright infringement action唱 a question that has produced conflicting views in the Courts of Appeals畅 Petitioner John Fogerty is a successful musician who wrote a song entitled “ Run Through the Jungle ” and sold the exclusive publishing rights to respondent Fantasy， Inc畅 In １９８５， Fogerty published and registered a copyright to a song entitled “ The Old Man Down the Road ” 畅 Respondent Fantasy， Inc畅， sued Fogerty in 第一编 ２ ６９ 美 国 版 权法 District Court， alleging that “ The Old Man Down the Road” was merely “ Run Through the Jungle” with new words畅The copyright infringement claim went to trial and a jury returned a verdict in favor of Fogerty畅 After his successful defense of the action， Fogerty moved for reasonable attorney摧 s fees pursuant to １７ U畅S畅 C畅 § ５０５畅 The District Court denied the motion， finding that Fantasy摧 s infringement suit was not brought frivolously or in bad faith as required by Circuit precedent for an award of attorney摧 s fees to a successful defendant畅 The Court of Appeals affirmed， and declined to abandon the existing Ninth Circuit standard for awarding attorney摧 s fees which treats successful plaintiffs and successful defendants differently畅Under that standard， commonly termed the “ dual ” standard， prevailing plaintiffs are generally awarded attorney摧 s fees as a matter of course， while prevailing defendants must show that the original suit was frivolous or brought in bad faith畅 In contrast， some Courts of Appeals follow the so唱 called “ evenhanded ” approach in which no distinction is made between prevailing plaintiffs and prevailing defendants畅 The Court of Appeals for the Third Circuit， for example， has ruled that “ we do not require bad faith， nor do we mandate an allowance of fees as a concomitant of prevailing in every case， but we do favor an evenhanded approach畅” We granted certiorari to address an important area of federal law and to resolve the conflict between the Ninth Circuit摧 s “ dual ” standard for awarding attorney摧 s fees under § ５０５ ， and the so唱 called “ evenhanded ” approach exemplified by the Third Circuit畅 We reverse畅 Respondent advances three arguments in support of the dual ２７０ 美国知识产权法 standard followed by the Court of Appeals for the Ninth Circuit in this case畅 One of its arguments is that， it asserts that treating prevailing plaintiffs and defendants differently comports with the “ objectives ” and “ equitable considerations ” underlying the Copyright Act as a whole畅 畅畅畅 Respondent argues that the policies and objectives of § ５０５ and of the Copyright Act in general are best served by the “ dual approach” to the award of attorney摧 s fees畅T he most common reason advanced in support of the dual approach is that， by awarding attorney摧 s fees to prevailing plaintiffs as a matter of course， it encourages litigation of meritorious claims of copyright infringement畅 （ “ Because section ５０５ is intended in part to encourage the assertion of colorable copyright claims， to deter infringement， and to make the plaintiff whole， fees are generally awarded to a prevailing plaintiff” ） （citations omitted） ； Diamond v畅 Am唱 Law Publishing Corp畅， ７４５ F畅２d １４２， １４８ （ CA２ １９８４ ） （ same） ．Indeed， respondent relies heavily on this argument畅We think the argument is flawed because it expresses a one唱 sided view of the purposes of the Copyright Act畅While it is true that one of the goals of the Copyright Act is to discourage infringement， it is by no means the only goal of that Act畅In the first place， it is by no means always the case that the plaintiff in an infringement action is the only holder of a copyright； often times， defendants hold copyrights too， as exemplified in the case at hand畅 More importantly， the policies served by the Copyright Act are more complex， more measured， than simply maximizing the number of meritorious suits for copyright infringement畅 The Constitution grants to Congress the power “ To promote the Progress of Science 第一编 美 国 版 权法 ２ ７１ and useful Arts， by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries畅” We have often recognized the monopoly privileges that Congress has authorized， while “ intended to motivate the creative activity of authors and inventors by the provision of a special reward，” are limited in nature and must ultimately serve the public good畅For example， in Twentieth Century Music Corp畅v畅Aiken， ４２２ U．S畅１５１， （ １９７５ ） ， we discussed the policies underlying the １９０９ Copyright Act as follows： “ The limited scope of the copyright holder摧 s statutory monopoly畅畅畅reflects a balance of competing claims upon the public interest： Creative work is to be encouraged and rewarded， but private motivation must ultimately serve the cause of promoting broad public availability of literature， music， and the other arts畅The immediate effect of our copyright law is to secure a fair return for an ‘ author摧 s’ creative labor畅But the ultimate aim is， by this incentive， to stimulate artistic creativity for the general public good畅” We reiterated this theme in Feist v畅 Rural， ４９９ U畅S畅３４０ （１９９１ ） ， where we said： “ The primary objective of copyright is not to reward the labor of authors， but ‘ to promote the Progress of Science and useful Arts畅’ To this end， copyright assures authors the right to their original expression， but encourages others to build freely upon the ideas and information conveyed by a work畅” Because copyright law ultimately serves the purpose of enriching the general public through access to creative works， it is peculiarly important that the boundaries of copyright law be demarcated as clearly as possible畅To that end， defendants who seek ２７２ 美国知识产权法 to advance a variety of meritorious copyright defenses should be encouraged to litigate them to the same extent that plaintiffs are encouraged to litigate meritorious claims of infringement畅In the case before us， the successful defense of “ The Old Man Down the Road” increased public exposure to a musical work that could， as a result， lead to further creative pieces畅 Thus a successful defense of a copyright infringement action may further the policies of the Copyright Act every bit as much as a successful prosecution of an infringement claim by the holder of a copyright畅畅 畅畅 Thus we reject the “ dual standard ” adopted by several of the Courts of Appeals畅Prevailing plaintiffs and prevailing defendants are to be treated alike， but attorney摧 s fees are to be awarded to prevailing parties only as a matter of the court摧 s discretion畅“There is no precise rule or formula for making these determinations，” but instead equitable discretion should be exercised “ in light of the considerations we have identified畅” Because the Court of Appeals erroneously held petitioner， the prevailing defendant， to a more stringent standard than that applicable to a prevailing plaintiff ， its judgment is reversed， and the case is remanded for further proceedings consistent with this opinion畅 It is so ordered畅 １畅何谓律师费用的双重标准？ ２畅采用双重标准是否违反版权法的基本宗旨？ 第一编 美 国 版 权法 ２ ７３ 案 例 33 Boisson v畅Banian Ltd畅 ２８０ F畅Supp畅２ d １０， ２００３ This is a copyright infringement action commenced by Plaintiffs Judi Boisson and her wholly唱 owned company， American Country Quilts and Linens， Inc畅（ Collectively “ Boisson ” or “ Plaintiff ”） against Defendants Banian， Inc畅 and its principal， Vijay Rao （ collectively “ Defendant ” ） ． Plaintiff摧 s action alleges that quilts marketed by Defendant infringed upon Plaintiff摧 s copyrighted designs畅 I畅Legal Principals A畅Statutory Dam ages １７ U畅S畅C畅 § ５０４ （ “ Section ５０４” ） provides that a copyright infringer shall be liable for either actual damages and profits or statutory damages畅１７ U畅 S畅C畅§ ５０４ （ a ） ．A plaintiff who seeks statutory damages is currently entitled to collect in the range of ＄７５０ to ＄３０敞０００ for each work that is infringed upon畅In cases filed before the statutory amendments setting damages in this range， the prior range of ＄５００ to ＄２０敞０００ is the applicable statutory range畅 In addition to the statutory range of damages， Section ５０４ provides that if a plaintiff proves willful infringement， the court has discretion to increase the statutory award up to ＄１００敞０００ ２７４ 美国知识产权法 （ ＄１５０敞０００ pursuant to the １９９９ Amendments ） ． In Yurman Design， Inc畅v畅P AJ， Inc畅， ２６２ F畅３d １０１ （ ２d Cir畅２００１ ） ， the court noted that a defendant摧 s conduct can be considered willful if the defendant had knowledge that his conduct represented infringement or perhaps recklessly disregarded the possibility畅 On the other hand， if it is shown that the infringer was not aware， and had no reason to be aware of the infringement， he can be declared an innocent infringer畅An innocent infringer is not absolved of all liability畅Instead， the finding of innocence allows the court to exercise its discretion to fashion the proper equitable remedy畅 In such instances， the court has discretion to reduce the statutory award to ＄２００畅 A finding that an infringement is not willful does not necessarily mean that the infringement is innocent and that the infringer is entitled to a reduction in damages畅Instead， the court considers a variety of factors when exercising its discretion to determine the proper award， within the statutory range畅Such factors include the plaintiff摧 s lost revenues， defendant摧 s profits， the value of the copyright and the deterrent effect of the award畅 B畅Injunctive Relief The Copyright Act gives the court discretion to grant temporary and permanent injunctions deemed reasonably necessary to prevent future infringements畅１７ U畅S畅 C畅§ ５０２ （ a） ．Permanent injunctions are appropriate only where infringement has been found and there is a substantial likelihood of future infringements畅On the other hand， permanent injunctive relief will not be awarded in cases where there is no history of infringement， the defendant is cooperative in ceasing 第一编 ２ ７５ 美 国 版 权法 to sell infringing products and there does not exist any probability of future infringement畅 C畅Attorney摧 s Fees In addition to the remedies above， the court in a copyright action has the discretion to award full costs to the prevailing party畅 As part of these costs， the court may award a reasonable attorney摧 s fee畅 The standard to apply when deciding whether a party has “ prevailed” is the same for plaintiffs and defendants畅A party need not be successful on all claims to be deemed the “ prevailing party” under the Copyright Act畅Instead， a party may be deemed prevailing if it succeeds on a significant issue in litigation that achieves some benefits that the party sought in bringing suit畅 Prevailing party status does not require an award of fees畅 Instead， the court considers the conduct of the non唱 prevailing party畅 The factors considered when determining whether an award of fees is appropriate include frivolousness， motivation， objective unreasonableness， and the need to advance considerations of compensation and deterrence畅The factor of objective reasonableness is entitled to “ substantial weight ” when determining whether an award of fees is warranted畅 With the above唱 referenced principals in mind， the court turns to the merits of Plaintiff摧 s claims for relief畅 II畅Disposition of Plaintiff摧 s Claims A畅Statutory Dam ages Plaintiff here has elected to seek statutory damages畅Because ２７６ 美国知识产权法 this suit was filed in １９９７， the range of ＄５００ to ＄２０敞０００ is the applicable statutory range畅 As noted above， the determination of the proper amount of the award requires the court to consider whether the infringement was willful， innocent， or neither畅 In addition， the court considers the plaintiff摧 s lost revenues， defendant摧 s profits， the value of the copyright and the deterrent effect of the award畅 1畅Wilfulness or Innocence As noted above， statutory damages can be reduced to ＄２００ in cases where the infringer was unaware， and had no reason to be aware， of the infringement畅 Defendant contends that the infringement here was completely innocent and a reduction in damages is therefore appropriate畅 A finding that an infringement was not willful does not necessarily lead to the conclusion that the infringement was innocent畅 In light of this standard and the facts developed at trial， the court concludes that the infringement can be deemed neither willful nor innocent畅The catalogs in Defendant摧 s possession make it clear that Defendant had access to Plaintiff摧 s copyrighted designs畅While the possession of these catalogs does not necessarily lead to the conclusion that Defendant knew of， or recklessly disregarded， the possibility of infringement， the court concludes that Defendant had reason to be aware of the infringement畅Thus， a finding of innocent infringement is improper here畅 The court therefore rejects the invitation to increase or decrease the statutory damage award and turns to consider the appropriate award within the statutory range畅 第一编 美 国 版 权法 ２ ７７ 2畅Other Factors In determining the appropriate level of statutory damages， the court looks at a number of factors in addition to willfulness， including the value of the copyright， expenses saved and profits gained by the defendant， lost revenues by the plaintiff， defendant摧 s cooperation in providing records， and the need to deter the defendant and others from future infringing activity畅 While this court is required to consider such factors， there is broad discretion in determining the amount of an award畅畅 畅畅 In light of the foregoing， the court awards to Plaintiff a total of ＄４ ， ８０６ in statutory damages畅 B畅Injunctive Relief The issue as to the propriety of injunctive relief is whether or not Defendant poses a threat of future infringement畅Plaintiff argues that there is a threat of continuing infringement because Defendant has continually created new designs by making modifications to previous designs， specifically pointing to Defendant摧 s creation of the ABC Navy quilt as a modification of the ABC Green quilts畅 Defendant correctly points out， however， that such design by modification is commonplace in the quilting industry畅Furthermore， even though the ABC Navy quilt was based on a modification of an infringing quilt， the Navy quilt was found to be non唱 infringing by both the District Court and the Court of Appeals畅Thus， it would be improper for the court to base a finding of a substantial likelihood of future infringement on an action which was never declared to be an infringement畅 ２７８ 美国知识产权法 Defendant points out a number of additional factors which the court considers畅Specifically， Defendant has no history of copyright infringement， and he immediately ceased selling the designs when advised of the initial lawsuit畅 Furthermore， Defendant did not resume selling any of the designs even after the District Court entered a finding of non唱 infringement， and continued to withhold the designs from the market until a final decision from the Court of Appeals畅 Finally， Defendant has thus far fully complied with the settlement agreement reached with Plaintiff pertaining to the star唱 design quilts畅 All of these factors weigh strongly against finding a substantial likelihood of future infringement， and thus the court is reluctant to award a permanent injunction against defendant畅 Furthermore， Defendant argues that a permanent injunction would harm his reputation as a quilt dealer， and that harm outweighs any potential benefit gained by the injunction畅The court is reluctant to recognize that injunctive relief would have any drastic effects on Defendant摧 s business as a quilt retailer， especially since Defendant repeatedly stipulated to a permanent injunction in his many settlement offers throughout the course of litigation畅In any event， the requisite threat of future infringing activity is lacking completely in this case， and the court therefore declines to award a permanent injunction畅 C畅Attorney摧 s Fees Both parties contend that they have prevailed and should therefore be awarded full attorney摧 s fees畅 After identifying the prevailing party， the court will turn to consider the factors necessary to determine whether an fee award is warranted畅 第一编 ２ ７９ 美 国 版 权法 1畅Prevailing Party The first issue of contention here is whether Plaintiff or Defendant is the prevailing party畅 Plaintiff initially brought suit claiming a number of infringements畅 Boisson claimed that defendant摧 s ABC Green Version I， ABC Green Version II， and ABC Navy quilts each infringed on plaintiff摧 s School Days I and School Days II quilts畅Although Plaintiff also initially claimed infringement on her Pastel Twinkle Star quilts， this matter was settled before litigation on the alphabet quilts畅 The ultimate result of this litigation was that only the ABC Green quilts infringed on plaintiff摧 s School Days I quilt畅All other claims were decided in Defendant摧 s favor畅 Due to the mixed outcome of the initial claims brought by plaintiff， each party claims that they are the prevailing party within the meaning of １７ U畅S畅C畅 § ５０５畅It is clear ， however， that Boisson succeeded on a significant aspect of her initial lawsuit， and thus it is appropriate to declare Plaintiff as the prevailing party within the meaning of the Copyright Act畅 2畅Frivolousness Neither the actions of Plaintiff nor Defendant can be deemed frivolous畅Because there was nothing frivolous about either party摧 s actions， this factor has no bearing on the decision of whether or not to award attorney摧 s fees畅 3畅Motivation Defendant摧 s motivation throughout the course of litigation was ２８０ 美国知识产权法 simply to defend his right to produce and sell quilts which he felt he was entitled to sell畅In view of the fact that the District Court and Court of Appeals came to different decisions as to the infringement， it is evident that this was not a clear唱 cut case to decide畅Both parties had a good唱 faith belief in the merits of their cases， and the litigation was simply an effort to assert those beliefs畅Furthermore， Plaintiff made settlement demands throughout the litigation for monetary damages in the amount of ＄１７５敞 ０００， which far exceeds the statutory maximum畅 Defendant摧 s refusal to accept this settlement offer was in no way motivated by a bad唱 faith effort畅Thus， this factor alone would not support an award of attorney摧 s fees to the plaintiff畅 4畅Objective Unreasonableness The third discretionary factor which courts consider， and the factor that is entitled to substantial weight， is whether the legal or factual arguments put forth by the losing party were objectively unreasonable畅 In this case， there is no basis to conclude that Defendant摧 s actions were objectively unreasonable畅It is first worth noting that not only did Defendant摧 s claim survive attempts at summary judgment at the trial level， but the District Court ultimately decided the case in Defendant摧 s favor畅Though the Court of Appeals ultimately reversed the trial court摧 s decision in part， Defendant was nonetheless successful on a number of claims畅 Furthermore， Defendant摧 s primary argument on appeal was that Plaintiff摧 s copyrights were invalid because her designs were copied from the public domain畅Although the Court of Appeals ultimately concluded that there was not enough evidence to support this claim， there is still no basis to conclude that Defendant摧 s actions were objectively 第一编 美 国 版 权法 ２ ８１ unreasonable畅 5畅Deterrence and Compensation The final factor to consider is the need to advance notions of compensation and deterrence畅 Given the nature of this case， the court does not conclude that an award of attorney摧 s fees is necessary to advance considerations of deterrence畅As noted earlier， Defendant was entirely cooperative in ceasing any potentially infringing activity upon being served with this lawsuit畅Defendant continued to cease selling all quilts involved until the final disposition by the Court of Appeals畅Furthermore， Defendant made multiple attempts to settle this matter for a monetary value which was significantly greater than the current award畅Given all of these circumstances， the court does not find any need to further notions of deterrence or compensation， and thus declines to award attorney摧 s fees to the prevailing plaintiff畅 CONCLUSION For the foregoing reasons， the court awards ＄４敞 ８０６ in statutory damages to the Plaintiff畅A permanent injunction will not be entered and the court declines to award Plaintiff attorney摧 s fees畅 Plaintiff may submit an order reflecting the holdings herein畅 The Clerk of the Court is directed to terminate the motion畅 SO ORDERED畅 １畅永久性禁令和 临时 性禁 令 有 何不 同？ 在 授 予 条件 上 有何 ２８２ 美国知识产权法 区别？ ２畅本案法官在决定 是否 授 予永 久性 禁 令问 题 上 主要 考 虑了 那些因素？ ３畅侵权人的主观状态对于法定赔偿金的计算有何影响？ ４畅Fogerty v畅Fantasy， Inc畅一案对于本案法官在律师费的裁 定上有无影响？ 第六章 版 权 法 和 其他 知 识 产 权 法 的 关联 实用艺术品是指兼 实用性与艺术性的产品。 如果实用艺术 品符合作品条件， 就可以得到版权保护。 实用艺术品既有艺术作 品 有审美 它与 能的特 ， 又 业品外观设计之间 在实践中， 实用艺术品与 有物质产品实用 在概念上相 能的属性， 这使 。 无论是在理论上还是 业品外观设计在一定 体的， 在实用艺术作品保护领域中 上是可为一 在版权保护和外观设计 利 权保护的重叠。 实用艺术品纳入版权对象的是体现为物质产品的 原创性表达部分， 这一表达必须能够与产品的实用性 能分离 立形成作品。 美国最高法院在 Mazer v畅Stein 一案 中确立了 “ 分 离特性与 立 在 ” 的原 则 作为 判 断 纳入版权保护的标准。 该案涉及的是 为台灯底座是 立 于以人体舞蹈造型雕 得以 作 可以获得版权保护的争议。 但是， 在实践中， 要 运用 “ 分离特 性和 性与 业 品外 观 设 计是 立 在 ” 的 标准 尤其 是 “ 概 念上 的分 离特 在” ， 从而区分可获 得版 权保 护的实 用艺 术品与 不可 获得版权保护的 业品外观设计之间的清楚界线， 并非轻易可以 做到。 美国版权法中并没有对作者的精神权利作出 整规定。 实践 中主要是通过版权法之外的法律对这些权利提供救济， 主要是商 标法、 州法和地方法律中的相 款主要规范 “ 来源的 假标示和 法律。 美 国商 标法 第 ４３ 条 （ a） 假陈述” ， 这 实 上就对 作者 身份权的保护。 然而， 通 过 第 ４３ 条 （ a ） 款来 保 护 作 者 精神 权 利的做法有可能导致作者权利的过分 ， 从而逐步模糊了商标 ２８４ 美国知识产权法 法 与版权法的区分。 在 Dastar Corp畅v畅Twentieth Century Foxfilm Corp畅一案中， 美国最高法院重 分析了第 ４３ 条 （ a） 款 的几个 重要 问 题， 例 如： 商 标 法 及 该 条 款 的 目 的、 该条 款 中 “ 来 源” （ Origin） 的含义、 以 及由 此决 定 的该 条款 的适 用 范 围和 版 权法 与商标法的界限， 最 后拒 绝 用第 ４３ 条 （ a ） 款 来 保 护作 者 的精 神权利。 案 例 34 Mazer v畅Stein ３４７ U畅S畅２０１， ７４ S畅Ct畅４６０ U畅S畅１９５４ Mr畅Justice REED delivered the opinion of the Court畅 This case involves the validity of copyrights obtained by respondents for statuettes of male and female dancing figures made of semivitreous china畅The controversy centers around the fact that although copyrighted as “ works of art，” the statuettes were intended for use and used as bases for table lamps， with electric wiring， sockets and lamp shades attached畅 Respondents are partners in the manufacture and sale of electric lamps畅One of the respondents created original works of sculpture in the form of human figures by traditional clay唱 model technique畅From this model， a production mold for casting copies was made畅The resulting statuettes， without any lamp components added， were submitted by the respondents to the Copyright Office for registration 第一编 美 国 版 权法 ２ ８５ as “ works of art” or reproductions thereof under s ５ （ g） or s ５ （ h） of the copyright law， and certificates of registration issued畅Sales （ publication in accordance with the statute） as fully equipped lamps preceded the applications for copyright registration of the statuettes畅 Thereafter， the statuettes were sold in quantity throughout the country both as lamp bases and as statuettes畅The sales in lamp form accounted for all but an insignificant portion of respondents摧sales畅 Petitioners are partners and， like respondents， make and sell lamps畅Without authorization， they copied the statuettes， embodied them in lamps and sold them畅 The instant case is one in a series of reported suits brought by respondents against various alleged infringers of the copyrights， all presenting the same or a similar question畅Because of conflicting decisions， we granted certiorari畅 The District Court dismissed the complaint畅 The Court of Appeals reversed and held the copyrights valid畅 It said that， a subsequent utilization of a work of art in an article of manufacture in no way affects the right of the copyright owner to be protected against infringement of the work of art itself畅Petitioners， charged by the present complaint with infringement of respondents摧copyrights of reproductions of their works of art， seek here a reversal of the Court of Appeals decree upholding the copyrights畅 Petitioners in their petition for certiorari present a single question： “ Can statuettes be protected in the United States by copyright when the copyright applicant intended primarily to use the statuettes in the form of lamp bases to be made and sold in quantity and carried the intentions into effect？ ” “ Stripped down to its essentials， the question presented is： Can ２８６ 美国知识产权法 a lamp manufacturer copyright his lamp bases？” The first paragraph accurately summarizes the issue畅T he last gives it a quirk that unjustifiably， we think， broadens the controversy畅The case requires an answer， not as to a manufacturer摧 s right to register a lamp base but as to an artist摧 s right to copyright a work of art intended to be reproduced for lamp bases畅As petitioners say in their brief， their contention “ questions the validity of the copyright based upon the actions of respondents畅” Petitioners question the validity of a copyright of a work of art for ‘ mass ’ production畅 “ Reproduction of a work of art” does not mean to them unlimited reproduction畅Their position is that a copyright does not cover industrial reproduction of the protected article畅T hus their reply brief states： “ When an artist becomes a manufacturer or a designer for a manufacturer he is subject to the limitations of design patents and deserves no more consideration than any other manufacturer or designer畅” It is not the right to copyright an article that could have utility under s ５ （ g） and （ h ） ， note １， supra， that petitioners oppose畅 Their brief accepts the copyright唱 ability of the great carved golden saltcellar of Cellini but adds： “ If， however， Cellini designed and manufactured this item in quantity so that the general public could have salt cellars， then an entirely different conclusion would be reached畅In such case， the salt cellar becomes an article of manufacture having utility in addition to its ornamental value and would therefore have to be protected by design patent畅” It is publication as a lamp and registration as a statue to gain a 第一编 美 国 版 权法 ２ ８７ monopoly in manufacture that they assert is such a misuse of copyright as to make the registration invalid畅 No unfair competition question is presented畅The constitutional power of Congress to confer copyright protection on works of art or their reproductions is not questioned畅 P etitioners assume， as Congress has in its enactments and as do we， that the constitutional clause empowering legislation “ To promote the Progress of Science and useful Arts， by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries ”， Art畅 I ， s ８， cl畅 ８ ， includes within the term “ Authors ” the creator of a picture or a statue畅 The Court摧 s consideration will be limited to the question presented by the petition for the writ of certiorari畅In recent years the question as to utilitarian use of copyrighted articles has been affirmed by many cases畅畅畅 畅 （ relevant cases omitted） In answering that issue， a review of the development of copyright coverage will make clear the purpose of the Congress in its copyright legislation畅畅畅畅The successive acts， the legislative history of the １９０９ Act and the practice of the Copyright Office unite to show that “ works of art” and “ reproductions of works of art” are terms that were intended by Congress to include the authority to copyright these statuettes畅 The author摧 s tangible expression of his ideas， whether meticulously delineating the model or mental image or conveying the meaning by modernistic form or color， is copyrightable畅 The conclusion that the statues here in issue may be copyrighted goes far to solve the question whether their intended reproduction as lamp stands bars or invalidates their registration畅This depends solely ２８８ 美国知识产权法 on statutory interpretation畅Congress may after publication protect by copyright any writing of an author畅Its statute creates the copyright畅 It did not exist at common law even though he had a property right in his unpublished work畅 But petitioners assert that congressional enactment of the design patent laws should be interpreted as denying protection to artistic articles embodied or reproduced in manufactured articles畅They say： “ F undamentally and historically， the Copyright Office is the repository of what each claimant considers to be a cultural treasure， whereas the Patent Office is the repository of what each applicant considers to be evidence of the advance in industrial and technological fields畅” Their argument is that design patents require the critical examination given patents to protect the public against monopoly畅 Attention is called to Gorham Mfg畅Co畅v畅White， １４ Wall畅５１１， ２０ L畅Ed畅７３１， interpreting the design patent law of １８４２， ５ Stat畅 ５４４， granting a patent to anyone who by “ their own industry， genius， efforts， and expense， may have invented or produced any new and original design for a manufacture” A pattern for flat silver was there upheld畅The intermediate and present law differs little畅 “ Whoever invents any new， original and ornamental design for an article of manufacture may obtain a patent therefor， subject generally to the provisions concerning patents for invention畅” As petitioner sees the effect of the design patent law： “ If an industrial designer can not satisfy the novelty requirements of the design patent laws， then his design as used on articles of manufacture can be copied by anyone畅” Petitioner has furnished the Court a booklet of numerous design patents for statuettes， bases for table lamps and similar articles for manufacture， quite indistinguishable in type from the copyrighted statuettes here in issue畅Petitioner urges that overlapping of patent and copyright legislation so as to give an author or inventor a choice between patents and copyrights should not be permitted畅We assume petitioner takes the position that protection for a statuette for industrial use can only be obtained by patent， if any protection can be given畅 As we have held the statuettes here involved copyrightable， we need not decide the question of their patentability畅 Though other courts have passed upon the issue as to whether allowance by the election of the author or patentee of one bars a grant of the other， we do not畅We do hold that the patentability of the statuettes， fitted as lamps or unfitted， does not bar copyright as works of art畅Neither the Copyright Statute nor any other says that because a thing is patentable it may not be copyrighted畅We should not so hold畅 Unlike a patent， a copyright gives no exclusive right to the art disclosed； protection is given only to the expression of the idea唱 not the idea itself畅T hus， in the Court held that a copyrighted book on a peculiar system of bookkeeping was not infringed by a similar book using a similar plan which achieved similar results where the alleged infringer made a different arrangement of the columns and used different headings畅The distinction is illustrated in Fred Fisher， I ２９０ 美国知识产权法 directory is not infringed by a similar directory which is the product of independent work畅The copyright protects originality rather than novelty or invention — conferring only “the sole right of multiplying copies畅” Absent copying there can be no infringement of copyright畅 Thus， respondents may not exclude others from using statuettes of human figures in table lamps； they may only prevent use of copies of their statuettes as such or as incorporated in some other article畅 Regulation s ２０２畅８ ， supra， makes clear that artistic articles are protected in “ form but not their mechanical or utilitarian aspects畅” The dichotomy of protection for the aesthetic is not beauty and utility but art for the copyright and the invention of original and ornamental design for design patents畅We find nothing in the copyright statute to support the argument that the intended use or use in industry of an article eligible for copyright bars or invalidates its registration畅We do not read such a limitation into the copyright law畅 Nor do we think the subsequent registration of a work of art published as an element in a manufactured article， is a misuse of the copyright畅This is not different from the registration of a statuette and its later embodiment in an industrial article畅 “ The copyright law， like the patent statutes， makes reward to the owner a secondary consideration畅” However ， it is intended definitely to grant valuable， enforceable rights to authors， publishers， etc畅， without burdensome requirements； to afford greater encouragement to the production of literary （ or artistic ） works of lasting benefit to the world畅 The economic philosophy behind the clause empowering Congress to grant patents and copyrights is the conviction that encouragement of individual effort by personal gain is the best way 第一编 美 国 版 权法 ２ ９１ to advance public welfare through the talents of authors and inventors in “ Science and useful Arts畅” Sacrificial days devoted to such creative activities deserve rewards commensurate with the services rendered畅 Affirmed畅 １畅本案 要 解 决 的 主 要 问 题 是 什 么？ 最 高 法 院 对 此 的 态 度 如何？ ２畅版权保护的作品能够同时用于实用的目的？ ３畅版权法的保护和专利法的保护在范围上有何不同？ 案 例 35 Dastar Corp畅v畅Twentieth Century Foxfilm Corp畅 ５４０ U畅S畅８０６ （２００３） General Dwight D畅Eisenhower摧 s World War II book， Crusade in Europe， was published by Doubleday， which registered the work摧 s copyright and granted exclusive television rights to an affiliate of respondent Twentieth Century Fox Film Corporation （ Fox） ．Fox， in turn， arranged for Time， Inc畅， to produce a Crusade in Europe television series based on the book， and Time assigned its copyright ２９２ 美国知识产权法 in the series to Fox畅The series was first broadcast in １９４９畅In １９７５， Doubleday renewed the book摧 s copyright， but Fox never renewed the copyright on the television series， which expired in １９７７ ， leaving the series in the public domain畅 In １９８８， Fox reacquired the television rights in the book， including the exclusive right to distribute the Crusade television series on video and to sub唱 license others to do so畅 Respondents SFM Entertainment and New Line Home Video， Inc畅， acquired from Fox the exclusive rights to manufacture and distribute Crusade on video畅 In １９９５ ， petitioner Dastar released a video set， World War II Campaigns in Europe， which it made from tapes of the original version of the Crusade television series and sold as its own product for substantially less than New Line摧 s video set畅Fox， SFM， and New Line brought this action alleging， inter alia， that Dastar摧 s sale of Campaigns without proper credit to the Crusade television series constitutes “ reverse passing off” in violation of § ４３ （ a ） of the Lanham Act畅 The District Court granted respondents summary judgment畅 The Ninth Circuit affirmed in relevant part， holding， among other things， that because Dastar copied substantially the entire Crusade series， labeled the resulting product with a different name， and marketed it without attribution to Fox， Dastar had committed a “ bodily appropriation” of Fox摧 s series， which was sufficient to establish the reverse passing off畅 Held： Section ４３ （ a） of the Lanham Act does not prevent the unaccredited copying of an uncopyrighted work畅 （ a ） Respondents ’ claim that Dastar has made a “ false designation of origin， false or misleading description of fact， or false or misleading representation of fact， which 畅畅畅is likely to cause 第一编 ２ ９３ 美 国 版 权法 confusion 畅畅畅as to the origin 畅 畅畅of its goods” in violation of § ４３ （ a ） of the Lanham Act， １５ U畅S畅C畅 § １１２５ （ a ） ， would undoubtedly be sustained if Dastar had bought some of New Line摧 s Crusade videotapes and merely repackaged them as its own畅 However， Dastar has instead taken a creative work in the public domain， copied it， made modifications （ arguably minor ） ， and produced its very own series of videotapes畅If “ origin” refers only to the manufacturer or producer of the physical “ good ” that is made available to the public （ here， the videotapes ） ， Dastar was the origin畅If， however， “ origin” includes the creator of the underlying work that Dastar copied， then someone else （ perhaps Fox） was the origin of Dastar摧 s product畅At bottom， the Court must decide what § ４３ （a） means by the “origin” of “ goods畅” （ b） Because Dastar was the “ origin” of the physical products it sold as its own， respondents cannot prevail on their Lanham Act claim畅 As dictionary definitions affirm， the most natural understanding of the “ origin ” of “ goods” 唱 the source of wares唱 is the producer of the tangible product sold in the marketplace， here Dastar摧 s Campaigns videotape畅The phrase “ origin of goods ” in the Lanham Act is incapable of connoting the person or entity that originated the ideas that “ goods” embody or contain畅The consumer typically does not care about such origination， and § ４３ （a） should not be stretched to cover matters that are of no consequence to purchasers畅 Although purchasers do care about ideas or communications contained or embodied in a communicative product such as a video， giving the Lanham Act special application to such products would cause it to conflict with copyright law， which is precisely directed to that subject， and which grants the public the ２９４ 美国知识产权法 right to copy without attribution once a copyright has expired， e畅g畅， Sears， Roebuck ＆ Co畅 v畅 Stiffel Co畅， ３７６ U畅S畅 ２２５， ２３０畅 Recognizing a § ４３ （ a ） cause of action here would render superfluous the provisions of the Visual Artists Rights Act that grant an artistic work摧 s author “ the right 畅畅畅to claim authorship，” １７ U． S．C畅 § １０６A （ a） （１ ） （ A ） ， but carefully limit and focus that right， § § １０１， § １０６ A （ b） ， （ d） （ １） ， and （ e） ．It would also pose serious practical problems畅 Finally， reading § ４３ （ a ） as creating a cause of action for， in effect， plagiarism would be hard to reconcile with， e畅g畅， Wal唱 Mart Stores， Inc畅v畅Samara Brothers， Inc畅， ５２９ U畅S畅２０５ ， ２１１畅 Reversed and remanded畅 １畅最高法院在本案 中对 于 商标 法和 版 权法 各 自 规范 的 领域 做了什么划分？ ２畅最高法院的这一 判决 对版 权 法第 ４３ 条 （ a） 款 的适 用会 产生什么影响？ 第二编 美国专利法 据授权， 美国国会建立 利 的美国联邦宪法第一条第 八节第八款和第十八款， 即： “ ［国会有权］ …… ［８ ］， 通过保 障作者和发明人对其作品和发明的有期限的 和实用技术的进步； …… ［ 和］ ［１８］ 法律， 以行使 上 述权 也是 定 。” 这 一 条款 不 利立法的权 美国第一部 他权， 以促进 学 定一切 必要的和 适当的 是国会 定 版 权 立 法， 来源。 定于 １７９０ 年。 第 一部 美国 利法 利 法， 名 称为 “ 促进实用技艺进步法案” ， 只 有七 个部 分， 篇幅 很短。 此 法案规定国务卿、 国防部 明不超过 十 四年 保 护期 的 用和 和 法部 中的任何 利 权。 该发 明 应是 位有权授予发 的， 应 “有 够重要” 。 利法很 快 被 １７９３ 年的 第 二部 第一部 利的主题定 义为 “ 任 何 利法将可 利 法所 替代。 １９７３ 的 有 用的 技艺、 机 器、 品和物质的组合以及在任何技艺、 机器、 品和物质的组合方 面的任何 的 有用的改进 ”。 此定 义在 美国最 续沿用， 只是做了细微的改 美国现代 利 。 利法的基本 利权的要求不 是 非显而易见性， 从而将 一个世 纪内 有 另外， 还明确界定了侵权的定义， 包括 助侵权等等。 其他 利法 中继 主要是 在 １９５２ 年确 立的。 １９５２ 年对 法的修改奠定了美国现代 规定了授予发明 的 利 架， 在成文法中第一 性和实用性， 还包括 创造性 的判 例法 法典 。 接侵权、 引诱侵权和帮 包括对可授权主题的定义进行了微小的改 ２９６ 美国知识产权法 ， 将 １８ 世纪的 “ 技艺 （ art） ” 修改 为 “ 方法 （ process） ” ； 明 确说明当发明涉及要素的组合时可以以 能性描述定义这些要素 （ 即 means ＋function， 做某事的 “手段” ） ； 放宽了对共同 发明人 实施发明的形式要求， 对于 个以上发明人 找到某个发明人 或 某个 发 明人 拒 绝 实施 该 成的发明， 当无法 利 （ 即 使通 过 合同 ） 时， 受让人可以实施发明； 等等。 来限 在 １９５２ 年 利法 定 以后， 美国 国会 又对 其 进行 了一 系列 沿 用 到今。 例如， １９８４ 年 的 枟 药 品 修改， 并一 格竞 争 与 利保护 期 延 法 枠 ， １９９９ 年 的 枟 知 识 产 权 与 通 信 改 革 法 枠 、 枟２００３ 年医护 方药现代法案枠 等等。 与世界其他 国 家 利 法 相 比， 美 国 利法 有 许 多 特的 规 定， 例如： （１） 采用 “ 发明在先原则” ， 即不同当事人 就同一内 容的发 明申请 利时， 发明在先者有权获得 （２ ） 采用 “ 发明人” 来确认 利； 利 申请 人 资 格。 即 提交 利申请人必须是发明人本人。 即使是雇员发明， 也由雇员发明 人申请 利权， 利权取得以后， 再 （３ ） 采取 “ 即 时 审 查 局 立进行发明 ” 和 “ 不 公开 审 查 利性的审查， 查又进行实质审查， 审查过 文件 于 保密 状 让于雇主； ， 只有 颁布 ”。 即由 利 利局对发明申请既进行形式审 斥第三者参加； 审查材 利 权 以 后， 才 公 开 和申请 利 申请 文件； （４ ） 建立职责分明 的 保 护 利 法机 。 在 美 国， 一 利诉讼案件由联邦地区法院受理， 巡回上诉法院负责上诉审。 对 外国人提起的 申请人对 利诉讼 案件 由哥 伦比亚 特区 的联邦 区法 院受 理。 利局驳回决定不 服有权向 利 “ 申诉 委员会 ” 申 诉。 不服 “ 申诉委员会” 的决定， 有权向联邦巡回上诉法院起诉。 第二编 第 一章 据美国 利、 外观设计 对 美国 专 利 保 护的 对 象 利法， 有三 利和植物 发明创造可以获得 品种 成 ， 或 者其他 任何 件 和要 求获 得 利， 即发明 利。 利 法 第 １０１ 条 规 定： 利 法保 护 的 范 围 或 主 题， 美 国 “ 凡发明 或 发 现 任 何 ２ ９７ 利法 而 实用 的 方 法 、 机器 、 产 品、 物 质 合 而 实用 之 改进 者， 可 按本 法 所规 定 的 条 利。” 其 中 ， “ 方 法 ” 在 早 期 利法中表 述为 “ 技艺” ， 在 １９５２ 年 的时 候 才 被 改 为 “ 方 法 ” 。 “ 机 器、 产 品、 物 质合 成” 的 列 举 并 非 是 报 告中指 出， 他 性 的 ， 美国 １９５２ 年 利 保护的 应该 是 “ 阳光 下人 所 利法立法 造 出 来 的一 切 东 西” 。 随着 学技术 的不 断发展 ， 一 些 繁 出现 ， 对 型 的就 是生 物 利法 的 和运 用 提 出 学 技术的发 展所 形 式 的 技 术 或者 产 品 频 的 挑战 。 其 中 ， 尤 为 典 来的 。 １９８０ 年 ６ 月 １６ 日 ， 美 国 联 邦 最 高 法 院 在 Diamond v畅Chakrabarty 案 的 判 决 中 认为 ， 由遗 条的 产 生 的 微生 物 不 法 院在 该领域 对可 里 利 法 第 １０１ 利保护 范围 之外。 最高 法 院的 判 决清 楚 地表 明 ， 发 明 是 包含 了有生 命的 物质与 是 质是 除 在美 国 是人 干预 的 碑 式的判 例。 有可 利性 的 问 题无 。 最高 利性 主题 设定 的 判 断标 准 是该 有 生命 的 物 果 。 这 是美 国 在生 物 技术 发 明 领域 里 的 ２９８ 美国知识产权法 案 例 36 Diamond v畅Chakrabarty ４４７ U畅S畅３０３， １００ S畅Ct畅２２０４ U畅S畅， １９８０ Mr畅Chief Justice BURGER delivered the opinion of the Court畅 We granted certiorari to determine whether a live， human唱 made micro唱 organism is patentable subject matter under ３５ U畅 S畅C畅§ １０１畅 I In １９７２， respondent Chakrabarty， a microbiologist， filed a patent application， assigned to the General Electric Co畅 The application asserted ３６ claims related to Chakrabarty摧 s invention of “ a bacterium from the genus Pseudomonas containing therein at least two stable energy唱 generating plasmids， each of said plasmids providing a separate hydrocarbon degradative pathway畅” This human唱 made， genetically engineered bacterium is capable of breaking down multiple components of crude oil畅Because of this property， which is possessed by no naturally occurring bacteria， Chakrabarty摧 s invention is believed to have significant value for the treatment of oil spills畅 Chakrabarty摧 s patent claims were of three types： first， process claims for the method of producing the bacteria； second， claims for an inoculum comprised of a carrier material floating on water， such as straw， and the new bacteria； and third， claims to the bacteria 第二编 美国 ２ ９９ 利法 themselves畅The patent examiner allowed the claims falling into the first two categories， but rejected claims for the bacteria畅His decision rested on two grounds： （ １ ） that micro唱 organisms are “ products of nature ，” and （２） that as living things they are not patentable subject matter under ３５ U畅S畅C畅§ １０１畅 Chakrabarty appealed the rejection of these claims to the Patent Office Board of Appeals， and the Board affirmed the Examiner on the second ground畅Relying on the legislative history of the １９３０ Plant Patent Act， in which Congress extended patent protection to certain asexually reproduced plants， the Board concluded that § １０１ was not intended to cover living things such as these laboratory created micro唱 organisms畅 The Court of Customs and Patent Appeals， by a divided vote， reversed on the authority of its prior decision in In re Bergy， ５６３ F畅２ d １０３１， １０３８ （ １９７７ ） ， which held that “ the fact that microorganisms 畅 畅畅are alive畅畅 畅is without legal significance ” for purposes of the patent law畅 Subsequently， we granted the Acting Commissioner of Patents and Trademarks摧petition for certiorari in Bergy， vacated the judgment， and remanded the case “ for further consideration in light of Parker v畅Flook， ４３７ U畅S畅５８４ ， ［９８ S畅Ct畅 ２５２２， ５７ L畅Ed畅 ２d ４５１ ］ （ １９７８ ） ．” The Court of Customs and Patent Appeals then vacated its judgment in Chakrabarty and consolidated the case with Bergy for reconsideration畅 After re唱 examining both cases in the light of our holding in Flook， that court， with one dissent， reaffirmed its earlier judgments畅 The Commissioner of Patents and Trademarks again sought certiorari， and we granted the writ as to both Bergy and Chakrabarty畅 Since then， Bergy has been dismissed as moot， ３００ 美国知识产权法 leaving only Chakrabarty for decision畅 II The Constitution grants Congress broad power to legislate to “ promote the Progress of Science and useful Arts， by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries畅” Art畅 I， § ８ ， cl畅８畅 The patent laws promote this progress by offering inventors exclusive rights for a limited period as an incentive for their inventiveness and research efforts畅The authority of Congress is exercised in the hope that “ the productive effort thereby fostered will have a positive effect on society through the introduction of new products and processes of manufacture into the economy， and the emanations by way of increased employment and better lives for our citizens畅” The question before us in this case is a narrow one of statutory interpretation requiring us to construe ３５ U畅S畅 C畅§ １０１， which provides： “ Whoever invents or discovers any new and useful process， machine， manufacture， or composition of matter， or any new and useful improvement thereof， may obtain a patent therefor， subject to the conditions and requirements of this title畅” Specifically， we must determine whether respondent摧 s micro唱 organism constitutes a “ manufacture ” or “ composition of matter” within the meaning of the statute畅 III In cases of statutory construction we begin， of course， with the language of the statute畅And “ unless otherwise defined， words will 第二编 美国 ３ ０１ 利法 be interpreted as taking their ordinary， contemporary common meaning畅” We have also cautioned that courts “ should not read into the patent laws limitations and conditions which the legislature has not expressed畅” Guided by these canons of construction， this Court has read the term “ manufacture ” in § １０１ in accordance with its dictionary definition to mean “ the production of articles for use from raw or prepared materials by giving to these materials new forms， qualities， properties， or combinations， whether by hand唱 labor or by machinery畅” Similarly， “ composition of matter” has been construed consistent with its common usage to include “all compositions of two or more substances and 畅 畅畅all composite articles， whether they be the results of chemical union， or of mechanical mixture， or whether they be gases， fluids， powders or solids畅” In choosing such expansive terms as “ manufacture ” and “ composition of matter，” modified by the comprehensive “ any，” Congress plainly contemplated that the patent laws would be given wide scope畅 The relevant legislative history also supports a broad construction畅 The Patent Act of １７９３， authored by Thomas Jefferson， defined statutory subject matter as “ any new and useful art， machine， manufacture， or composition of matter， or any new or useful improvement thereof畅” Act of Feb畅２１， １７９３， § １， １ Stat畅 ３１９畅 The Act embodied Jefferson摧 s philosophy that “ ingenuity should receive a liberal encouragement畅” Subsequent patent statutes in １８３６， １８７０， and １８７４ employed this same broad language畅In １９５２， when the patent laws were recodified， Congress replaced the word “ art” with “ process，” but otherwise left Jefferson摧 s language intact畅The Committee Reports accompanying the １９５２ Act inform ３０２ 美国知识产权法 us that Congress intended statutory subject matter to “ include anything under the sun that is made by man畅” This is not to suggest that § １０１ has no limits or that it embraces every discovery畅The laws of nature， physical phenomena， and abstract ideas have been held not patentable畅 Thus， a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter畅Likewise， E instein could not patent his celebrated law that E ＝mc ； nor could Newton have patented the law of gravity畅Such discoveries are “ manifestations of 畅畅畅nature， free to all men and reserved exclusively to none畅” Judged in this light， respondent摧 s micro唱 organism plainly qualifies as patentable subject matter畅His claim is not to a hitherto unknown natural phenomenon， but to a nonnaturally occurring manufacture or composition of matter唱 a product of human ingenuity “ having a distinctive name， character and use畅” The point is underscored dramatically by comparison of the invention here with that in Funk畅There， the patentee had discovered that there existed in nature certain species of root唱 nodule bacteria which did not exert a mutually inhibitive effect on each other畅He used that discovery to produce a mixed culture capable of inoculating the seeds of leguminous plants畅 Concluding that the patentee had discovered “ only some of the handiwork of nature，” the Court ruled the product nonpatentable： “ Each of the species of root唱 nodule bacteria contained in the package infects the same group of leguminous plants which it always infected畅No species acquires a different use畅The combination of species produces no new bacteria， no change in the six species of bacteria， and no enlargement of the range of their utility畅 Each 第二编 美国 利法 ３ ０３ species has the same effect it always had畅The bacteria perform in their natural way畅Their use in combination does not improve in any way their natural functioning畅They serve the ends nature originally provided and act quite independently of any effort of the patentee畅” Here， by contrast， the patentee has produced a new bacterium with markedly different characteristics from any found in nature and one having the potential for significant utility畅His discovery is not nature摧 s handiwork， but his own； accordingly it is patentable subject matter under § １０１畅 IV Two contrary arguments are advanced， neither of which we find persuasive畅 （ A） The petitioner摧 s first argument rests on the enactment of the １９３０ Plant Patent Act， which afforded patent protection to certain asexually reproduced plants， and the １９７０ Plant Variety Protection Act， which authorized protection for certain sexually reproduced plants but excluded bacteria from its protection畅In the petitioner摧 s view， the passage of these Acts evidences congressional understanding that the terms “ manufacture ” or “ composition of matter” do not include living things； if they did， the petitioner argues， neither Act would have been necessary畅 We reject this argument畅 Prior to １９３０ ， two factors were thought to remove plants from patent protection畅The first was the belief that plants， even those artificially bred， were products of nature for purposes of the patent law畅The second obstacle to patent ３０４ 美国知识产权法 protection for plants was the fact that plants were thought not amenable to the “ written description” requirement of the patent law畅 Because new plants may differ from old only in color or perfume， differentiation by written description was often impossible畅 Congress thus recognized that the relevant distinction was not between living and inanimate things， but between products of nature， whether living or not， and human唱 made inventions畅Here， respondent摧 s micro唱 organism is the result of human ingenuity and research畅Hence， the passage of the Plant Patent Act affords the Government no support畅 Nor does the passage of the １９７０ Plant Variety Protection Act support the Government摧 s position畅 As the Government acknowledges， sexually reproduced plants were not included under the １９３０ Act because new varieties could not be reproduced true唱 to唱 type through seedlings畅However， it was generally recognized that true唱 to唱 type reproduction was possible and that plant patent protection was therefore appropriate畅 The １９７０ Act extended that protection畅There is nothing in its language or history to suggest that it was enacted because § １０１ did not include living things畅 （ B） The petitioner摧 s second argument is that micro唱 organisms cannot qualify as patentable subject matter until Congress expressly authorizes such protection畅His position rests on the fact that genetic technology was unforeseen when Congress enacted § １０１畅From this it is argued that resolution of the patentability of inventions such as respondent摧 s should be left to Congress畅The legislative process， the petitioner argues， is best equipped to weigh the competing 第二编 美国 利法 ３ ０５ economic， social， and scientific considerations involved， and to determine whether living organisms produced by genetic engineering should receive patent protection畅 In support of this position， the petitioner relies on our recent holding in Parker v畅Flook， ４３７ U畅S畅 ５８４ （ １９７８ ） ， and the statement that the judiciary “ must proceed cautiously when 畅 畅畅asked to extend patent rights into areas wholly unforeseen by Congress畅” It is， of course， correct that Congress， not the courts， must define the limits of patentability； but it is equally true that once Congress has spoken it is “ the province and duty of the judicial department to say what the law is畅” Congress has performed its constitutional role in defining patentable subject matter in § １０１； we perform ours in construing the language Congress has employed畅In so doing， our obligation is to take statutes as we find them， guided， if ambiguity appears， by the legislative history and statutory purpose畅 Here， we perceive no ambiguity畅The subject唱 matter provisions of the patent law have been cast in broad terms to fulfill the constitutional and statutory goal of promoting “ the Progress of Science and the useful Arts” with all that means for the social and economic benefits envisioned by Jefferson畅Broad general language is not necessarily ambiguous when congressional objectives require broad terms畅 To buttress his argument， the petitioner ， with the support of amicus， points to grave risks that may be generated by research endeavors such as respondent摧 s畅 The briefs present a gruesome parade of horribles畅 Scientists， among them Nobel laureates， are quoted suggesting that genetic research may pose a serious threat to the human race， or， at the very least， that the dangers are far too substantial to permit such research to proceed apace at this time畅We ３０６ 美国知识产权法 are told that genetic research and related technological developments may spread pollution and disease， that it may result in a loss of genetic diversity， and that its practice may tend to depreciate the value of human life畅 These arguments are forcefully， even passionately， presented； they remind us that， at times， human ingenuity seems unable to control fully the forces it creates唱 that with Hamlet， it is sometimes better “ to bear those ills we have than fly to others that we know not of畅” It is argued that this Court should weigh these potential hazards in considering whether respondent摧 s invention is patentable subject matter under § １０１畅We disagree畅The grant or denial of patents on micro唱 organisms is not likely to put an end to genetic research or to its attendant risks畅The large amount of research that has already occurred when no researcher had sure knowledge that patent protection would be available suggests that legislative or judicial fiat as to patentability will not deter the scientific mind from probing into the unknown any more than Canute could command the tides畅 Whether respondent摧 s claims are patentable may determine whether research efforts are accelerated by the hope of reward or slowed by want of incentives， but that is all畅 What is more important is that we are without competence to entertain these arguments唱 either to brush them aside as fantasies generated by fear of the unknown， or to act on them畅The choice we are urged to make is a matter of high policy for resolution within the legislative process after the kind of investigation， examination， and study that legislative bodies can provide and courts cannot畅 That process involves the balancing of competing values and interests， which in our democratic system is the business of elected 第二编 美国 利法 ３ ０７ representatives畅Whatever their validity， the contentions now pressed on us should be addressed to the political branches of the Government， the Congress and the Executive， and not to the courts畅 We have emphasized in the recent past that “ our individual appraisal of the wisdom or unwisdom of a particular legislative course 畅畅畅is to be put aside in the process of interpreting a statute畅” Our task， rather， is the narrow one of determining what Congress meant by the words it used in the statute； once that is done our powers are exhausted畅Congress is free to amend § １０１ so as to exclude from patent protection organisms produced by genetic engineering畅Cf畅４２ U畅S畅C畅§ ２１８１ （ a ） ， exempting from patent protection inventions “ useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon畅” Or it may chose to craft a statute specifically designed for such living things畅 But， until Congress takes such action， this Court must construe the language of § １０１ as it is畅 The language of that section fairly embraces respondent摧 s invention畅 Accordingly， the judgment of the Court of Customs and Patent Appeals is affirmed畅 １畅被告提出了几项专利申请的要求？ ２畅专利主管机关驳回了被告哪一项申请？ 其主要依据是什么？ ３畅本案要解决的主要争议是什么？ ４畅本案法官对于 “ 物质” 如何解释？ ５畅植物专利法和植物变种保护法是否能够适用于本案？ 第二 章 获 得 专利 权 的条件 美国 １７９０ 年 利 法 规 定： 如 果 某 发 明 是 （ suffcieht１y useful and important） ， 就 应 授 予 史没有实 利 权， 这 一规 定 ， 因而 “ 对 于 以后 没有得到任何判例 法的 的条件演 够实 用和重要 意义。” 美国 １７９３ 年 于取得 利法规定： 和实 用的 （ new and tlseful） 机 械， 应授予任 何 知识， 并 是 利权 造 品， 或 利 法 哲学——— “ 只 物质合成 的发 明， 这 反 映了 杰 弗 逊 当时 的 有那些增进人 利权 和实用的发明和发现， 才可以 证明有限的私有垄断的特别激励 是合理的。” １８３６ 年之 后， 美国 利局 据 性 和实 用 性这 个 条件 审 查 利 申 请。 除此 之 外， 还运用 １８７５ 年 在案 例 法 创设 的 “ 发 明” 测 试 标准。 然 而， 随着时间的推移， 美 国 利 界 感 到， 法 定的 “发明” 测试 标准缺乏严格的限定， 希望成文法予以明确的规定。 因此， 在编 纂 的 １９５２ 年 利法时， 便增 加了美 国 款， 即第 １０３ 条非显而易见性， 即： 有 利立 法 从未 有过 的条 发明， 尽 管和 本法 １０２ 条所说方式加以披露或者描述的技术不同， 但如果申请 体和现有技术之间的不同是这样一种 术领域中一 技术 ， 即在该客体所 的技 平的人员看来， 该客体作为一个整体， 在发 明 成时候是显而易见的， 则不能获得 国 利法， 取得 利。 因此， 利权 的条 件包 括 第 １０１、 １０２ 节 性、 实用性和第 １０３ 节 所 利的客 据现行美 体 限定 的 规定的非显而易见性。 “ 非显而易见性” （ non唱 obvious ） 是 美国 利 法第 １０３ 条中的特有术语， 它 是 “ 创 造 性” 的 同 义 词。 现 代 各 国 利法 第二编 美国 ３ ０９ 利法 利权的必 条件。 TRIPS 在规定 都以 表述， 规定这是取得 可取得 利权 的条 件 中采 用了 “ 创造 性 ” 一词， 并 在注 中说 明， “ 本条所指 ‘ 创造性’ ……， 与某些成员使用 的 ‘ 非 显而易 见性， ……系同义词。” 然而， 在美 国 最 高 法 院 作 出 Graham v畅John Deere Co畅of Kansas City 案的判决之前， 上并不统一。 问题的 题包括 １） 造品 法实践中对 的第 １０３ 节的 键是： 第 １０１ 条规定可取得 ， 或 ２） 利权的主 ， 或， ３ ） 上 述 各 。 如何判断这些主题， 尤其是改进 １９５２ 年 个判例， 亦是迄今为止， 美国 的 改进 主题的非显而易见性始一 个重要的问题。 本案裁决对非显而易见性问题上确立了 一的标准， 是美国最高法 院 实 善和统 利法 第 １０３ 条的 第一 利局和联邦法院 据第 １０３ 节认 定 “ 非显而易见 性” 的单 一最 重 要 的指 导 性判 例。 该判 例 的法 律意义实 上已超出了对第 １０３ 条本身的 的阐述， 面地论及了美国 利 ， 尤其是第二部分 的由来、 精神和可取得 利 权的诸多条件。 案 例 37 Graham v畅John Deere Co畅of Kansas City ３８３ U畅S畅１， ８６ S畅Ct畅６８４ U畅S畅Mo畅１９６６ Mr畅Justice CLARK delivered the opinion of the Court畅 After a lapse of １５ years， the Court again focuses its attention on the patentability of inventions under the standard of Art畅I， s ８， ３１０ 美国知识产权法 cl畅８， of the Constitution and under the conditions prescribed by the laws of the United States畅 Since our last expression on patent validity， Great A畅＆ P畅Tea Co畅v畅Supermarket Equipment Corp畅， ３４０ U畅S畅１４７， ７１ S畅Ct畅１２７， ９５ L畅Ed畅１６２ （１９５０ ）， the Congress has for the first time expressly added a third statutory dimension to the two requirements of novelty and utility that had been the sole statutory test since the Patent Act of １７９３畅 This is the test of obviousness， i畅e畅， whether “ 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畅Patentability shall not be negatived by the manner in which the invention was made畅” s １０３ of the Patent Act of １９５２， ３５ U畅S畅C畅s １０３畅 The questions， involved in each of the companion cases before us， are what effect the １９５２ Act had upon traditional statutory and judicial tests of patentability and what definitive tests are now required畅We have concluded that the １９５２ Act was intended to codify judicial precedents embracing the principle long ago announced by this Court in Hotchkiss v畅Greenwood， １１ How畅２４８， １３ L畅Ed畅６８３ （１８５１） ， and that， while the clear language of s １０３ places emphasis on an inquiry into obviousness， the general level of innovation necessary to sustain patentability remains the same畅畅 畅 Ⅰ At the outset it must be remembered that the federal patent power stems from a specific constitutional provision which authorizes the Congress “ To promote the Progress of 倡 倡 倡 useful Arts， by 第二编 美国 利法 ３ １１ securing for limited Times to 倡 倡 倡 Inventors the exclusive Right to their 倡 倡 倡 Discoveries畅” Art畅I， s ８ ， cl畅８畅The clause is both a grant of power and a limitation畅 This qualified authority， unlike the power often exercised in the sixteenth and seventeenth centuries by the English Crown， is limited to the promotion of advances in the “ useful arts畅” It was written against the backdrop of the practices唱 eventually curtailed by the Statute of Monopolies唱 of the Crown in granting monopolies to court favorites in goods or businesses which had long before been enjoyed by the public畅The Congress in the exercise of the patent power may not overreach the restraints imposed by the stated constitutional purpose畅Nor may it enlarge the patent monopoly without regard to the innovation， advancement or social benefit gained thereby畅Moreover， Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain， or to restrict free access to materials already available畅Innovation， advancement， and things which add to the sum of useful knowledge are inherent requisites in a patent system which by constitutional command must “ promote the Progress of useful Arts畅” This is the standard expressed in the Constitution and it may not be ignored畅And it is in this light that patent validity “ requires reference to a standard written into the Constitution畅” Great A畅＆ P畅Tea Co畅v畅Supermarket Equipment Corp畅， supra， ３４０ U畅S畅 at １５４ ， ７１ S畅Ct畅 at １３１ （ concurring opinion）． Within the limits of the constitutional grant， the Congress may， of course， implement the stated purpose of the Framers by selecting the policy which in its judgment best effectuates the constitutional aim畅This is but a corollary to the grant to Congress of any Article I ３１２ 美国知识产权法 power畅Gibbons v畅Ogden， ９ Wheat畅１， ６ L畅Ed畅２３畅Within the scope established by the Constitution， Congress may set out conditions and tests for patentability畅 McClurg v畅 Kingsland， １ How畅２０２ ， ２０６， １１ L畅Ed畅１０２畅It is the duty of the Commissioner of Patents and of the courts in the administration of the patent system to give effect to the constitutional standard by appropriate application， in each case， of the statutory scheme of the Congress畅 Ⅱ The difficulty of formulating conditions for patentability was heightened by the generality of the constitutional grant and the statutes implementing it， together with the underlying policy of the patent system that “ the things which are worth to the public the embarrassment of an exclusive patent，” as Jefferson put it， must outweigh the restrictive effect of the limited patent monopoly畅The inherent problem was to develop some means of weeding out those inventions which would not be disclosed or devised but for the inducement of a patent畅 This Court formulated a general condition of patentability in １８５１ in Hotchkiss v畅Greenwood， １１ How畅２４８， １３ L畅Ed畅６８３畅 The patent involved a mere substitution of materials唱 porcelain or clay for wood or metal in doorknobs唱 and the Court condemned it， holding： “ Unless more ingenuity and skill 倡 倡 倡 were required 倡 倡 倡 than were possessed by an ordinary mechanic acquainted with the business， there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention畅 In other words ， the improvement is the work of the skilful mechanic， not that 第二编 美国 ３ １３ 利法 of the inventor畅” At p畅２６７畅 Hotchkiss， by positing the condition that a patentable invention evidence more ingenuity and skill than that possessed by an ordinary mechanic acquainted with the business， merely distinguished between new and useful innovations that were capable of sustaining a patent and those that were not畅 The Hotchkiss test laid the cornerstone of the judicial evolution suggested by Jefferson and left to the courts by Congress畅The language in the case， and in those which followed， gave birth to “ invention ” as a word of legal art signifying patentable inventions畅Yet， as this Court has observed， “ the truth is， the word （ ‘ invention ’ ） cannot be defined in such manner as to afford any substantial aid in determining whether a particular device involves an exercise of the inventive faculty 倡１２ or not畅” McClain v畅Ortmayer， １４１ U畅S畅４１９， ４２７， １２ S畅Ct畅７６， ７８， ３５ L畅Ed畅８００ （１８９１） ； Great A畅＆ P畅Tea Co畅v畅Supermarket Equipment Corp畅， supra， ３４０ U畅S畅， at １５１ ， ７１ S畅Ct畅at １２９畅Its use as a label brought about a large variety of opinions as to its meaning both in the Patent Office， in the courts， and at the bar畅The Hotchkiss formulation， however， lies not in any label， but in its functional approach to questions of patentability畅 In practice， Hotchkiss has required a comparison between the subject matter of the patent， or patent application， and the background skill of the calling畅It has been from this comparison that patentability was in each case determined畅 Ⅲ The １９５２ Patent Act畅 The Act sets out the conditions of patentability in three sections畅 ３１４ 美国知识产权法 An analysis of the structure of these three sections indicates that patentability is dependent upon three explicit conditions： novelty and utility as articulated and defined in s １０１ and s １０２ ， and nonobviousness， the new statutory formulation， as set out in s １０３畅 The first two sections， which trace closely the １８７４ codification， express the “ new and useful” tests which have always existed in the statutory scheme and， for our purposes here， need no clarification畅 The pivotal section around which the present controversy centers is s １０３畅It provides： １０３畅Conditions for patentability； non唱 obvious subject matter “ 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畅Patentability shall not be negatived by the manner in which the invention was made畅” The section is cast in relatively unambiguous terms畅 Patentability is to depend， in addition to novelty and utility， upon the “ non唱 obvious ” nature of the “ subject matter sought to be patented” to a person having ordinary skill in the pertinent art畅 The first sentence of this section is strongly reminiscent of the language in Hotchkiss畅 Both formulations place emphasis on the pertinent art existing at the time the invention was made and both are implicitly tied to advances in that art畅The major distinction is that Congress has emphasized “ nonobviousness” as the operative test of the section， rather than the less definite “ invention ” language of 第二编 美国 ３ １５ 利法 Hotchkiss that Congress thought had led to “ a large variety ” of expressions in decisions and writings畅 It is undisputed that this section was， for the first time， a statutory expression of an additional requirement for patentability， originally expressed in Hotchkiss畅It also seems apparent that Congress intended by the last sentence of s １０３ to abolish the test it believed this Court announced in the controversial phrase “ flash of creative genius，” used in Cuno Engineering Corp畅v畅Automatic Devices Corp畅， ３１４ U畅S畅８４ ， ６２ S畅Ct畅３７， ８６ L畅Ed畅５８ （１９４１ ） ． Ⅳ Approached in this light， the s １０３ additional condition， when followed realistically， will permit a more practical test of patentability畅The emphasis on non唱 obviousness is one of inquiry， not quality， and， as such， comports with the constitutional strictures畅 While the ultimate question of patent validity is one of law， Great A畅＆ P畅Tea Co畅v畅Supermarket Equipment Corp畅， supra， ３４０ U畅S畅at １５５， ７１ S畅Ct畅at １３１， the s １０３ condition， which is but one of three conditions， each of which must be satisfied， lends itself to several basic factual inquiries畅Under s １０３， the scope and content of the prior art are to be determined； differences between the prior art and the claims at issue are to be ascertained； and the level of ordinary skill in the pertinent art resolved畅 Against this background， the obviousness or nonobviousness of the subject matter is determined畅 Such secondary considerations as commercial success ， long felt but unsolved needs， failure of others， etc畅， might be utilized to give light to the circumstances surrounding the origin ３１６ 美国知识产权法 of the subject matter sought to be patented畅 As indicia of obviousness or nonobviousness， these inquiries may have relevancy畅 We now turn to the application of the conditions found necessary for patentability to the cases involved here： A畅The Patent in Issue in No畅１１， Graham v畅John Deere Co畅 This patent， No畅２， ６２７ ， ７９８ （ hereinafter called the ‘ ７９８ patent） relates to a spring clamp which permits plow shanks to be pushed upward when they hit obstructions in the soil， and then springs the shanks back into normal position when the obstruction is passed over畅The device， which we show diagrammatically in the accompanying sketches （ Appendix， Fig畅１ ） ， is fixed to the plow frame as a unit畅The mechanism around which the controversy center is basically a hinge畅The top half of it， known as the upper plate （ marked １ in the sketches） ， is a heavy metal piece clamped to the plow frame （ ２ ） and is stationary relative to the plow frame畅The lower half of the hinge， known as the hinge plate （３） ， is connected to the rear of the upper plate by a hinge pin （ ４ ） and rotates downward with respect to it畅The shank （５） ， which is bolted to the forward end of the hinge plate （ at ６） ， runs beneath the plate and parallel to it for about nine inches， passes through a stirrup （７） ， and then continues backward for several feet curving down toward the ground畅The chisel （８） ， which does the actual plowing， is attached to the rear end of the shank畅As the plow frame is pulled forward， the chisel rips through the soil， thereby plowing it畅In the normal position， the hinge plate and the shank are kept tight against the upper plate by a spring （ ９） ， which is atop the upper plate畅A rod （１０） runs through the center of the spring， extending down through holes in both plates and the shank畅Its upper end is bolted to the top 第二编 美国 利法 ３ １７ of the spring while its lower end is hooked against the underside of the shank畅 When the chisel hits a rock or other obstruction in the soil， the obstruction forces the chisel and the rear portion of the shank to move upward畅The shank is pivoted （ at １１） against the rear of the hinge plate and pries open the hinge against the closing tendency of the spring畅（ See sketch labeled “ Open Position，” Appendix， Fig畅 １畅） This closing tendency is caused by the fact that， as the hinge is opened， the connecting rod is pulled downward and the spring is compressed畅When the obstruction is passed over ， the upward force on the chisel disappears and the spring pulls the shank and hinge plate back into their original position畅The lower， rear portion of the hinge plate is constructed in the form of a stirrup （７） which brackets the shank， passing around and beneath it畅The shank fits loosely into the stirrup （ permitting a slight up and down play） ．The stirrup is designed to prevent the shank from recoiling away from the hinge plate， and thus prevents excessive strain on the shank near its bolted connection畅The stirrup also girds the shank， preventing it from fishtailing from side to side畅 In practical use， a number of spring唱 hinge唱 shank combinations are clamped to a plow frame， forming a set of ground唱 working chisels capable of withstanding the shock of rocks and other obstructions in the soil without breaking the shanks畅 Background of the Patent畅 Chisel plows， as they are called， were developed for plowing in areas where the ground is relatively free from rocks or stones畅 Originally， the shanks were rigidly attached to the plow frames畅 When such plows were used in the rocky， glacial soils of some of ３１８ 美国知识产权法 the Northern States， they were found to have serious defects畅As the chisels hit buried rocks， a vibratory motion was set up and tremendous forces were transmitted to the shank near its connection to the frame畅 The shanks would break畅 Graham， one of the petitioners， sought to meet that problem， and in １９５０ obtained a patent， U畅S畅No畅２， ４９３， ８１１ （ hereinafter ‘ ８１１ ） ， on a spring clamp where solved some of the difficulties畅 Graham and his companies manufactured and sold the ‘ ８１１ clamps畅 In １９５０， Graham modified the ‘ ８１１ structure and filed for a patent畅 That patent， the one in issue， was granted in １９５３畅This suit against competing plow manufacturers resulted from charges by petitioners that several of respondents’ devices infringed the ‘７９８ patent畅 The Prior Art畅 Five prior patents indicating the state of the art were cited by the Patent Office in the prosecution of the ‘７９８ application畅Four of these patents， １０ other United States patents and two prior唱 use spring唱 clamp arrangements not of record in the ‘７９８ file wrapper were relied upon by respondents as revealing the prior art畅The District Court and the Court of Appeals found that the prior art “ as a whole in one form or another contains all of the mechanical elements of the ７９８ Patent畅” One of the prior唱 use clamp devices not before the Patent Examiner唱 Glencoe唱 was found to have “ all of the elements畅” We confine our discussion to the prior patent of Graham， ‘８１１， and to the Glencoe clamp device， both among the references asserted by respondents畅 The Graham ‘ ８１１ and ‘ ７９８ patent devices are similar in all elements， save two： （ １ ） the stirrup and the bolted connection of the shank to the hinge plate do not appear in ‘ ８１１； and （２） the position of the shank is reversed， being placed in patent 第二编 美国 利法 ３ １９ ‘８１１ above the hinge plate， sandwiched between it and the upper plate畅The shank is held in place by the spring rod which is hooked against the bottom of the hinge plate passing through a slot in the shank畅Other differences are of no consequence to our examination畅 In practice the ‘ ８１１ patent arrangement permitted the shank to wobble or fishtail because it was not rigidly fixed to the hinge plate； moreover， as the hinge plate was below the shank， the latter caused wear on the upper plate， a member difficult to repair or replace畅 Graham摧 s ‘ ７９８ patent application contained １２ claims畅 All were rejected as not distinguished from the Graham ‘ ８１１ patent畅 The inverted position of the shank was specifically rejected as was the bolting of the shank to the hinge plate畅 The Patent Office examiner found these to be “ matters of design well within the expected skill of the art and devoid of invention畅” Graham withdrew the original claims and substituted the two new ones which are substantially those in issue here畅His contention was that wear was reduced in patent ‘７９８ between the shank and the heel or rear of the upper plate畅He also emphasized several new features， the relevant one here being that the bolt used to connect the hinge plate and shank maintained the upper face of the shank in continuing and constant contact with the underface of the hinge plate畅 Graham did not urge before the Patent Office the greater “ flexing ” qualities of the ‘ ７９８ patent arrangement which he so heavily relied on in the courts畅 The sole element in patent ‘ ７９８ which petitioners argue before us is the interchanging of the shank and hinge plate and the consequences flowing from this arrangement畅 The contention is that this arrangement唱 which petitioners claim is not disclosed in the prior art唱 permits the shank to flex under stress for its ３２０ 美国知识产权法 entire length畅As we have sketched （ see sketch， “ Graham ‘ ７９８ Patent” in Appendix， Fig畅２ ） ， when the chisel hits an obstruction the resultant force （ A） pushes the rear of the shank upward and the shank pivots against the rear of the hinge plate at （ C ） ．The natural tendency is for that portion of the shank between the pivot point and the bolted connection （ i畅e畅， between C and D） to bow downward and away from the hinge plate畅The maximum distance （ B） that the shank moves away from the plate is slight唱 for emphasis， greatly exaggerated in the sketches畅This is so because of the strength of the shank and the short唱 nine inches or so唱 length of that portion of the shank between （ C） and （D） ．On the contrary， in patent ‘８１１ （ see sketch， “ Graham ‘ ８１１ Patent” in Appendix， Fig畅２ ） ， the pivot point is the upper plate at point （c） ； and while the tendency for the shank to bow between points （ c） and （ d） is the same as in ‘７９８， the shank is restricted because of the underlying hinge plate and cannot flex as freely畅 In practical effect， the shank flexes only between points （a） and （ c） ， and not along the entire length of the shank， as in ‘ ７９８畅 Petitioners say that this difference in flex， though small， effectively absorbs the tremendous forces of the shock of obstructions whereas prior art arrangements failed畅 The Obviousness of the Differences畅 We cannot agree with petitioners畅We assume that the prior art does not disclose such an arrangement as petitioners claim in patent ‘ ７９８畅 Still we do not believe that the argument on which petitioners ’ contention is bottomed supports the validity of the patent畅The tendency of the shank to flex is the same in all cases畅If free唱 flexing， as petitioners now argue， is the crucial difference above the prior art， then it appears evident that the desired result would be 第二编 美国 利法 ３ ２１ obtainable by not boxing the shank within the confines of the hinge畅 The only other effective place available in the arrangement was to attach it below the hinge plate and run it through a stirrup or bracket that would not disturb its flexing qualities畅Certainly a person having ordinary skill in the prior art， given the fact that the flex in the shank could be utilized more effectively if allowed to run the entire length of the shank， would immediately see that the thing to do was what Graham did， i畅e畅， invert the shank and the hinge plate畅 Petitioners摧argument basing validity on the free唱 flex theory raised for the first time on appeal is reminiscent of Lincoln Engineering Co畅 of Illinois v畅 Stewart唱 Warner Corp畅， ３０３ U畅S畅 ５４５， ５８ S畅Ct畅６６２， ８２ L畅Ed畅１００８ （ １９３８ ） ， where the Court called such an effort “ an afterthought畅No such function 倡 倡 倡 is hinted at in the specifications of the patent畅If this were so vital an element in the functioning of the apparatus， it is strange that all mention of it was omitted畅” No “ flexing” argument was raised in the Patent Office畅 Indeed， the trial judge specifically found that “ flexing is not a claim of the patent in suit 倡 倡 倡” and would not permit interrogation as to flexing in the accused devices畅Moreover， the clear testimony of petitioners摧experts shows that the flexing advantages flowing from the ‘ ７９８ arrangement are not， in fact， a significant feature in the patent畅 We find no nonobvious facets in the ‘ ７９８ arrangement畅The wear and repair claims were sufficient to overcome the patent examiner摧 s original conclusions as to the validity of the patent畅 However， some of the prior art， notably Glencoe， was not before him畅There the hinge plate is below the shank but， as the courts below found， all of the elements in the ‘７９８ patent are present in the Glencoe structure畅 Furthermore， even though the position of the shank and hinge plate appears reversed in Glencoe， the mechanical operation is identical畅The shank there pivots about the underside of the stirrup， which in Glencoe is above the shank畅In other words， the stirrup in Glencoe serves exactly the same function as the heel of the hinge plate in ‘７９８畅The mere shifting of the wear point to the heel of the ‘７９８ hinge plate from the stirrup of Glencoe唱 itself a part of the hinge plate唱 presents no operative mechanical distinctions， much less nonobvious differences畅 The judgment of the Court of Appeals in No畅１１ is affirmed畅 １畅美国 １９５２ 年专利法第 １０３ 条与先前判例法的关系如何？ ２畅杰弗逊的专利法哲学对本案最终裁决有何影响？ ３畅在判定非显而易见性问题上， 本案确立了一个什么标准？ 案 例 38 Brenner v畅Manson ３８３ U畅S畅５１９， ８６ S畅Ct畅１０３３ U畅S畅Cu0& 第二编 美国 利法 ３ ２３ disputable， that one may patent only that which is “ useful畅” In Graham v畅John Deere Co畅， ３８３ U畅S畅１， at ５ －１０， ８６ S畅Ct畅６８４， at ６８７ －６９０， we have reviewed the history of the requisites of patentability， and it need not be repeated here畅Suffice it to say that the concept of utility has maintained a central place in all of our patent legislation， beginning with the first patent law in １７９０ and culminating in the present law摧 s provision that “ Whoever invents or discovers any new and useful process， machine， manufacture， or composition of matter， or any new and useful improvement thereof， may obtain a patent therefor， subject to the conditions and requirements of this title畅” As is so often the case， however， a simple， everyday word can be pregnant with ambiguity when applied to the facts of life畅That this is so is demonstrated by the present conflict between the Patent Office and the CCPA over how the test is to be applied to a chemical process which yields an already known product whose utility唱 other than as a possible object of scientific inquiry唱 has not yet been evidenced畅It was not long ago that agency and court seemed of one mind on the question畅In Application of Bremner， １８２ F畅２ d ２１６， ２１７， ３７ C畅C畅P畅A畅 （ Pat畅） １０３２， １０３４， the court affirmed rejection by the Patent Office of both process and product claims畅It noted that “no use for the products claimed to be developed by the processes had been shown in the specification畅” It held that “ It was never intended that a patent be granted upon a product， or a process producing a product， unless such product be useful畅” Nor was this new doctrine in the court畅 The Patent Office has remained stead唱 fast in this view畅 The CCPA， however ， has moved sharply away from Bremner畅The trend ３２４ 美国知识产权法 began in Application of Nelson， ２８０ F畅 ２ d １７２， ４７ C畅C畅P畅A畅 （ Pat畅） １０３１畅There， the court reversed the Patent Office摧 s rejection of a claim on a process yielding chemical intermediates “ useful to chemists doing research on steroids，” despite the absence of evidence that any of the steroids thus ultimately produced were themselves “useful畅” The trend has accelerated， culminating in the present case where the court held it sufficient that a process produces the result intended and is not “ detrimental to the public interest畅” It is not remarkable that differences arise as to how the test of usefulness is to be applied to chemical processes畅Even if we knew precisely what Congress meant in １７９０ when it devised the ‘ new and useful’ phraseology and in subsequent re唱 enactments of the test， we should have difficulty in applying it in the context of contemporary chemistry where research is as comprehensive as man摧 s grasp and where little or nothing is wholly beyond the pale of “utility” 唱 if that word is given its broadest reach畅 Respondent does not唱 at least in the first instance唱 rest upon the extreme proposition， advanced by the court below， that a novel chemical process is patentable so long as it yields the intended product and so long as the product is not itself “ detrimental畅” Nor does he commit the outcome of his claim to the slightly more conventional proposition that any process is “ useful ” within the meaning of s １０１ if it produces a compound whose potential usefulness is under investigation by serious scientific researchers， although he urges this position， too， as an alternative basis for affirming the decision of the CCPA畅 Rather， he begins with the much more orthodox argument that his process has a specific utility which would entitle him to a declaration of interference even under 第二编 美国 ３ ２５ 利法 the Patent Office摧 s reading of s １０１畅The claim is that the supporting affidavits filed pursuant to Rule ２０４ （ b） ， by reference to Ringold摧 s １９５６ article， reveal that an adjacent homologue of the steroid yielded by his process has been demonstrated to have tumor唱 inhibiting effects in mice， and that this discloses the requisite utility畅 We do not accept any of these theories as an adequate basis for overriding the determination of the Patent Office that the “ utility” requirement has not been met畅 Even on the assumption that the process would be patentable were respondent to show that the steroid produced had a tumor唱 inhibiting effect in mice， we would not overrule the Patent Office finding that respondent has not made such a showing畅The Patent Office held that， despite the reference to the adjacent homologue， respondent摧 s papers did not disclose a sufficient likelihood that the steroid yielded by his process would have similar tumor唱 inhibiting characteristics畅 Indeed， respondent himself recognized that the presumption that adjacent homologues have the same utility has been challenged in the steroid field because of ‘ a greater known unpredictability of compounds in that field畅In these circumstances and in this technical area， we would not overturn the finding of the Primary Examiner， affirmed by the Board of Appeals and not challenged by the CCPA畅 The second and third points of respondent摧 s argument present issues of much importance畅Is a chemical process “ useful” within the meaning of s １０１ either （１ ） because it works唱 i畅e畅， produces the intended product？ or （２） because the compound yielded belongs to a class of compounds now the subject of serious scientific investigation？ These contentions present the basic problem for our ３２６ 美国知识产权法 adjudication畅Since we find no specific assistance in the legislative materials underlying s １０１， we are remitted to an analysis of the problem in light of the general intent of Congress， the purposes of the patent system， and the implications of a decision one way or the other畅 In support of his plea that we attenuate the requirement of “ utility，” respondent relies upon Justice Story摧 s well唱 known statement that a “useful” invention is one “ which may be applied to a beneficial use in society， in contradistinction to an invention injurious to the morals， health， or good order of society， or frivolous and insignificant” — and upon the assertion that to do so would encourage inventors of new processes to publicize the event for the benefit of the entire scientific community， thus widening the search for uses and increasing the fund of scientific knowledge畅 Justice Story摧 s language sheds little light on our subject畅Narrowly read， it does no more than compel us to decide whether the invention in question is “ frivolous and insignificant” — a query no easier of application than the one built into the statute畅Read more broadly， so as to allow the patenting of any invention not positively harmful to society， it places such a special meaning on the word ‘ useful’ that we cannot accept it in the absence of evidence that Congress so intended畅There are， after all， many things in this world which may not be considered “ useful ” but which， nevertheless are totally without a capacity for harm畅 It is true， of course， that one of the purposes of the patent system is to encourage dissemination of information concerning discoveries and inventions畅And it may be that inability to patent a process to some extent discourages disclosure and leads to greater 第二编 美国 利法 ３ ２７ secrecy than would otherwise be the case畅 The inventor of the process， or the corporate organization by which he is employed， has some incentive to keep the invention secret while uses for the product are searched out畅However， in light of the highly developed art of drafting patent claims so that they disclose as little useful information as possible唱 while broadening the scope of the claim as widely as possible唱 the argument based upon the virtue of disclosure must be warily evaluated畅 Moreover， the pressure for secrecy is easily exaggerated， for if the inventor of a process cannot himself ascertain a “ use” for that which his process yields， he has every incentive to make his invention known to those able to do so畅 Finally， how likely is disclosure of a patented process to spur research by others into the uses to which the product may be put？ To the extent that the patentee has power to enforce his patent， there is little incentive for others to undertake a search for uses畅 Whatever weight is attached to the value of encouraging disclosure and of inhibiting secrecy， we believe a more compelling consideration is that a process patent in the chemical field， which has not been developed and pointed to the degree of specific utility， creates a monopoly of knowledge which should be granted only if clearly commanded by the statute畅Until the process claim has been reduced to production of a product shown to be useful， the metes and bounds of that monopoly are not capable of precise delineation畅 It may engross a vast， unknown， and perhaps unknowable area畅 Such a patent may confer power to block off whole areas of scientific development， without compensating benefit to the public畅The basic quid pro quo contemplated by the Constitution and the Congress for granting a patent monopoly is the benefit derived by the public from ３２８ 美国知识产权法 an invention with substantial utility畅Unless and until a process is refined and developed to this point唱 where specific benefit exists in currently available form唱 there is insufficient justification for permitting an applicant to engross what may prove to be a broad field畅 These arguments for and against the patentability of a process which either has no known use or is useful only in the sense that it may be an object of scientific research would apply equally to the patenting of the product produced by the process畅 Respondent appears to concede that with respect to a product， as opposed to a process， Congress has struck the balance on the side of nonpatentability unless “ utility” is shown畅Indeed， the decisions of the CCPA are in accord with the view that a product may not be patented absent a showing of utility greater than any adduced in the present case畅We find absolutely no warrant for the proposition that although Congress intended that no patent be granted on a chemical compound whose sole “ utility ” consists of its potential role as an object of use唱 testing， a different set of rules was meant to apply to the process which yielded the unpatentable product畅That proposition seems to us little more than an attempt to evade the impact of the rules which concededly govern patentability of the product itself畅 This is not to say that we mean to disparage the importance of contributions to the fund of scientific information short of the invention of something “ useful，” or that we are blind to the prospect that what now seems without “ use ” may tomorrow command the grateful attention of the public畅But a patent is not a hunting license畅 It is not a reward for the search， but compensation for its successful conclusion畅“ （ A ） patent system must be related to the world of 第二编 美国 利法 ３ ２９ commerce rather than to the realm of philosophy畅倡 倡 倡” The judgment of the CCPA is reversed畅 Mr畅Justice DOUGLAS， while acquiescing in Part I of the Court摧 s opinion， dissents on the merits of the controversy for substantially the reasons stated by Mr畅Justice HARLAN畅 Mr畅Justice HARLAN， concurring in part and dissenting in part畅 While I join the Court摧 s opinion on the issue of certiorari jurisdiction， I cannot agree with its resolution of the important question of patentability畅 Respondent has contended that a workable chemical process， which is both new and sufficiently nonobvious to satisfy the patent statute， is by its existence alone a contribution to chemistry and “ useful” as the statute employs that term畅Certainly this reading of “ useful” in the statute is within the scope of the constitutional grant， which states only that “ （ t） o promote the Progress of Science and useful Arts，” the exclusive right to “Writings and Discoveries” may be secured for limited times to those who produce them畅Art畅I， s ８畅 Yet the patent statute is somewhat differently worded and is on its face open both to respondent摧 s construction and to the contrary reading given it by the Court畅In the absence of legislative history on this issue， we are thrown back on policy and practice畅Because I believe that the Court摧 s policy arguments are not convincing and that past practice favors the respondent， I would reject the narrow definition of “ useful ” and uphold the judgment of the Court of Customs and Patent Appeals （ hereafter CCPA）． The Court摧 s opinion sets out about half a dozen reasons in support of its interpretation畅Several of these arguments seem to me to have almost no force畅For instance， it is suggested that “ until the ３３０ 美国知识产权法 process claim has been reduced to production of a product shown to be useful， the metes and bounds of that monopoly are not capable of precise delineation” （ p畅１０４１， ante ） and ‘ it may engross a vast， unknown， and perhaps unknowable area” （ p畅１０４２， ante） ．I fail to see the relevance of these assertions； process claims are not disallowed because the products they produce may be of ‘ vast’ importance nor， in any event， does advance knowledge of a specific product use provide much safeguard on this score or fix “ metes and bounds” precisely since a hundred more uses may be found after a patent is granted and greatly enhance its value畅 The further argument that an established product use is part of “ the basic quid pro quo ” （ p畅１０４２ ， ante ） for the patent or is the requisite “ successful conclusion” （ p畅１０４２， ante） of the inventor摧 s search appears to beg the very question whether the process is “ useful” simply because it facilitates further research into possible product uses畅 The same infirmity seems to inhere in the Court摧 s argument that chemical products lacking immediate utility cannot be distinguished for present purposes from the processes which create them， that respondent appears to concede and the CCPA holds that the products are nonpatentable， and that therefore the processes are nonpatentable畅 Assuming that the two classes cannot be distinguished， a point not adequately considered in the briefs， and assuming further that the CCPA has firmly held such products nonpatentable， this permits us to conclude only that the CCPA is wrong either as to the products or as to the processes and affords no basis for deciding whether both or neither should be patentable absent a specific product use畅 More to the point， I think， are the Court摧 s remaining， 第二编 美国 利法 ３ ３１ prudential arguments against patentability： namely， that disclosure induced by allowing a patent is partly undercut by patent唱 application drafting techniques， that disclosure may occur without granting a patent， and that a patent will discourage others from inventing uses for the product畅 How far opaque drafting may lessen the public benefits resulting from the issuance of a patent is not shown by any evidence in this case but， more important， the argument operates against all patents and gives no reason for singling out the class involved here畅 The thought that these inventions may be more likely than most to be disclosed even if patents are not allowed may have more force； but while empirical study of the industry might reveal that chemical researchers would behave in this fashion， the abstractly logical choice for them seems to me to maintain secrecy until a product use can be discovered畅As to discouraging the search by others for product uses， there is no doubt this risk exists but the price paid for any patent is that research on other uses or improvements may be hampered because the original patentee will reap much of the reward畅From the standpoint of the public interest the Constitution seems to have resolved that choice in favor of patentability畅 What I find most troubling about the result reached by the Court is the impact it may have on chemical research畅 Chemistry is a highly interrelated field and a tangible benefit for society may be the outcome of a number of different discoveries， one discovery building upon the next畅 To encourage one chemist or research facility to invent and disseminate new processes and products may be vital to progress， although the product or process be without “ utility” as the Court defines the term， because that discovery permits someone else ３３２ 美国知识产权法 to take a further but perhaps less difficult step leading to a commercially useful item畅In my view， our awareness in this age of the importance of achieving and publicizing basic research should lead this Court to resolve uncertainties in its favor and uphold the respondent摧 s position in this case畅 This position is strengthened， I think， by what appears to have been the practice of the Patent Office during most of this century畅 While available proof is not conclusive， the commentators seem to be in agreement that until Application of Bremner， １８２ F畅２d ２１６， ３７ CCPA （ Pat畅） １０３２， in １９５０ ， chemical patent applications were commonly granted although no resulting end use was stated or the statement was in extremely broad terms畅 Taking this to be true， Bremner represented a deviation from established practice which the CCPA has now sought to remedy in part only to find that the Patent Office does not want to return to the beaten track畅If usefulness was typically regarded as inherent during a long and prolific period of chemical research and development in this country， surely this is added reason why the Court摧 s result should not be adopted until Congress expressly mandates it， presumably on the basis of empirical data which this Court does not possess畅 Fully recognizing that there is ample room for disagreement on this problem when， as here， it is reviewed in the abstract， I believe the decision below should be affirmed畅 １畅专利局认为本案方法不具有实 用性的 原因是什 么？ CCPA 第二编 美国 利法 ３ ３３ 对此持何观点？ 其理由是什么？ ２畅美国最高法院同意专利局的观点， 还是 CCPA 的观点？ ３畅对专利申请进行实用性审查的 意义何在？ 在化 学领域 中， 不进行实用性的审查会造成什么后果？ 第 三章 据美国 专 利 权 的内 容 利法第 １５４ 条， 利权人就其发明享有 造、 使用、 销售和许诺销售、 进口的权利， 人于美国境内 利权人得 除他 造、 使用、 贩卖该项发明品； 发明若为方法， 并 包括 除他 人于 美 国境 内 使用、 贩 卖或 进 口该 方 法 所 品。 利权的保护期间为申请之日起的二十年。 在 期限内， 任何人未经 销售和进口 占性的 利权人的许可而 成之 产 利权的有效 造、 使用、 销售、 许诺 利权所保护的发明， 都视为侵权行为。 案 例 39 Wilbur唱 Ellis Co畅v畅Kuther ３７７ U畅S畅４２２， ８４ S畅Ct畅１５６１ U畅S畅Cal畅１９６４ Mr畅Justice DOUGLAS delivered the opinion of the Court畅 Respondent is the owner of a combination patent covering a fish唱 canning machine畅A number of machines covered by the patent were manufactured and sold under his authorization畅Among them were the four machines in suit， petitioner Wilbur唱 Ellis Company being the second唱 hand purchaser畅 Respondent received out of the original purchase price a royalty of ＄１， ５００ per machine畅 As 第二编 美国 利法 ３ ３５ originally constructed each of these machines packed fish into “ １唱 pound” cans： ３ inches in diameter and ４ １１ ／ １６ inches high畅Three of the machines when acquired by Wilbur唱 Ellis were corroded， rusted， and inoperative； and all required cleaning and sandblasting to make them usable畅Wilbur唱 Ellis retained petitioner Leuschner to put the machines in condition so they would operate and to resize six of the ３５ elements that made up the patented combination畅The resizing was for the purpose of enabling the machines to pack fish into “５唱 ounce” cans： ２ １ ／ ８ inches in diameter and ３ １ ／ ２ inches long畅One of the six elements was so corroded that it could be rendered operable only by grinding it down to a size suitable for use with the smaller “５唱 ounce” can畅 This suit for infringement followed； and both the District Court， ２００ F畅S upp畅８４１， and the Court of Appeals， ３１４ F畅２d ７１， held for respondent畅The case is here on certiorari畅 We put to one side the case where the discovery or invention resided in or embraced either the size or locational characteristics of the replaced elements of a combination patent or the size of the commodity on which the machine operated畅The claims of the patent before us do not reach that far畅We also put to one side the case where replacement was made of a patented component of a combination patent畅We deal here with a patent that covered only a combination of unpatented components畅 The question in terms of patent law precedents is whether what was done to these machines， the original manufacture and sale of which had been licensed by the patentee， amounted to “ repair ，” in which event there was no infringement， or “ reconstruction，” in which event there was畅The idea of ‘ reconstruction’ in this context ３３６ 美国知识产权法 has the special connotation of those acts which would impinge on the patentee摧 s right “ to exclude others from making，” ３５ U．S． C畅s １５４， the article畅As stated in Wilson v畅Simpson， ９ How畅１０９， １２３， １３ L畅Ed畅６６， “ 倡 倡 倡 when the material of the combination ceases to exist， in whatever way that may occur， the right to renew it depends upon the right to make the invention畅If the right to make does not exist， there is no right to rebuild the combination畅” On the other hand， “ When the wearing or injury is partial， then repair is restoration， and not reconstruction畅” Replacing worn唱 out cutting knives in a planing machine was held to be “ repair，” not “ reconstruction，” in Wilson v畅Simpson， supra畅Our latest case was Aro Mfg畅 Co畅 v畅Convertible Top Replacement Co畅， ３６５ U畅S畅 ３３６， ８１ S畅Ct畅５９９， ５ L畅Ed畅２d ５９２ ， which a majority of the Court construe as holding that it was not infringement to replace the worn唱 out fabric of a patented convertible automobile top， whose original manufacture and sale had been licensed by the patentee畅 Whatever view may be taken of the holding in the first Aro case， the majority believe that it governs the present one畅These four machines were not spent； they had years of usefulness remaining though they needed cleaning and repair畅Had they been renovated and put to use on the “ １唱 pound” cans， there could be no question but that they were “ repaired，” not “ reconstructed，” within the meaning of the cases畅 When six of the ３５ elements of the combination patent were resized or relocated， no invasion of the patent resulted， for as we have said the size of cans serviced by the machine was no part of the invention； nor were characteristics of size ， location， shape and construction of the six elements in question patented畅Petitioners in adapting the old machines to a related use 第二编 美国 利法 ３ ３７ were doing more than repair in the customary sense； but what they did was kin to repair for it bore on the useful capacity of the old combination， on which the royalty had been paid畅We could not call it “ reconstruction ” without saying that the patentee摧 s right “ to exclude others from making ” the patented machine， ３５ U畅S畅C畅s １５４， had been infringed畅Yet adaptation for use of the machine on a “５ 唱 ounce” can is within the patent rights purchased， since size was not an invention畅 The adaptation made in the six nonpatented elements improved the usefulness of these machines畅That does not， however ， make the adaptation “ reconstruction” within the meaning of the cases畅We are asked in substance to treat the case as if petitioners had a license for use of the machines on “ １唱 pound” cans only畅But the sales here were outright， without restriction畅Adams v畅Burke， １７ Wall畅４５３， ４５６， ２１ L畅Ed畅 ７００， therefore controls： “ 倡 倡 倡 when the patentee， or the person having his rights， sells a machine or instrument whose sole value is in its use， he receives the consideration for its use and he parts with the right to restrict that use畅” Reversed畅 １畅被告对原告受专利保护的产品作了什么改动？ ２畅被告对原告受专利保护的产品所作的改动属于什么性质？ ３畅本案例反映专利权人就其专利保 护的产品 拥有 什么权 利？ 权利范围应该如何界定？ 第四 章 在 侵 权 利权的 有 效期 限 内， 任 何 人 未 经 造、 使用、 销售、 许诺销售和进口 侵权行为。 在判断是 利权所保护的发明， 都视为 侵权的时候， 的范围和权利要求的内容， 对 先要明确的是 利的保护是以 求书中对权利范围的描述为依据的； 其 侵权产品或者方法进行比 利侵权可以分为 所 利权保护 利申请中权利要 是将权利要求的范围和 ， 以确定是 侵权。 接侵权和间接侵权。 利权的有效 期内， 他人 未 经授 权 而 行使 了 利， 如 利 权 人 的 许 可而 接侵权是指在 利权人 他 性的 权 造、 使用、 销售和许诺销售和进口等等。 间接侵权是指第三人的行为诱导或者促成了第二人的侵 权， 第二人就是 接的侵权者， 第三人为间接侵权者， 后者虽然 没有 接侵犯 利权人的 权的 接诱导因素。 间接侵权可以分为引诱侵权和帮助侵权。 引 诱侵权是指侵权人 他人的 利权， 而 利权， 但是其行为却是 接或者故意的诱导或者协助 接侵权人实 接侵权者侵 接侵权者侵犯 上发生了侵犯他人 利权的 行为。 帮助侵权是指侵权人故意销售、 许诺销售或者进口了他人 发明 利中的重要 成成分， 而买方实 上确实侵犯了他人的 利权。 接侵权可以分为字面侵权和等同侵权。 所 是权利要求中的 一个技术要素都清楚而 或者方法当中， 被控侵权产品或方法 个技术要素； 或者说权利要求书里的 控侵权的产品或方法中找到。 字面侵权， 就 体的体现在侵权产品 了权利要求书中的 一 一个技术要素都可以在被 第二编 然而， 随着 利 美国 的发展， 利侵权案件者采取的手段不 再是简单的模仿原 利产品， 而是在产品 于原 ， 意 是 利产品的改 ３ ３９ 利法 作中， 对产品作不同 逃避法律的追究。 判断被控侵权产品 落入权利保护范围， 国 上标准有周边限定论和中心限定论 种。 周边限定论的认为， 对被控侵权客体的描述， 在文字上 部落入权利要求书的范围。 以该理论为标准， 上例中的行为不认 定为侵权。 坚持中心限定论认为被控侵权客体的技术特征与 利 要求中的技术特征相比， 能达到同样的效果。 所以上例行为被认 定为侵权。 随着 协调过 利 ， 国 种判断准则正进行协调， 在 中， 各国逐步同意引入等同范畴的概念： 在进行侵权判 断时， 不能 限于对被指控侵权客体是 权利要求中的 严格字面意义下的 部技术特征， 还应考虑其是 换手段的等同侵权。 导入这一概念， 是在 术会有重大发展， 技术手段或材 的技术手段与 名 属于包含有等 利有效期内， 替 学技 。 不将改进 性能会有很大 利要求中的特征认定为同等侵权， 利 就会 实亡。 美国的等同侵 权 理 论及 体判 定 方 法 都是 由 法 判 例确 立 的。 确立美国现代等同理论的 是 １９５０ 年的 “ 格 拉夫 ” 一 案。 在 这一案例中， 美国最高法院阐述了现代等同理论的基本轮廓及适 用等同理论时应当考 虑的一 些要 素。 自 １９５０ 年 的 格拉 夫一 案以 后， 美国最高法院一 没有受理过有 等同理论的案件。 将近五 十年的时间里， 在各级法院之间就如何适用等同理论， 以及适用 等同理论时应当着重考虑什么因素， 逐渐产生了分歧。 其判决也 不尽相同， 有的甚至相反。 与此相应， 美国的 界也围绕 法实践中的有 利学术界和律师 问题展开了激烈的争论。 正是在这种 背景之下， 美国最高法院 于 １９９７ 年 ３ 月对 希尔 顿 作出了判决， 重 级法院和 阐 学公 一案 了等同理论中的一些基本要素， 澄清了下 利学术界及律师界争论的一些问题。 ３４０ 美国知识产权法 案 例 40 Warner唱 Jenkinson Co畅， Inc畅v畅 Hilton Davis Chemical Co畅 ５２０ U畅S畅１７， １１７ S畅Ct畅１０４０ U畅S畅， １９９７ Justice THOMAS delivered the opinion of the Court畅 Nearly ５０ years ago， this Court in Graver T ank ＆ Mfg畅Co畅v畅 Linde Air Products Co畅， ３３９ U．S畅６０５ ， ７０ S畅Ct畅８５４， ９４ L畅Ed畅 １０９７ （ １９５０ ） ， set out the modern contours of what is known in patent law as the “ doctrine of equivalents畅” Under this doctrine， a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is “ equivalence ” between the elements of the accused product or process and the claimed elements of the patented invention畅 Petitioner， which was found to have infringed upon respondent摧 s patent under the doctrine of equivalents， invites us to speak the death of that doctrine畅 We decline that invitation畅 The significant disagreement within the Court of Appeals for the Federal Circuit concerning the application of Graver Tank suggests， however， that the doctrine is not free from confusion畅We therefore will endeavor to clarify the proper scope of the doctrine畅 第二编 美国 ３ ４１ 利法 I The essential facts of this case are few畅 Petitioner Warner唱 Jenkinson Co畅 and respondent Hilton Davis Chemical Co畅 manufacture dyes畅Impurities in those dyes must be removed畅Hilton Davis holds United States Patent No畅４， ５６０， ７４６ （ 摧 ７４６ patent） ， which discloses an improved purification process involving “ ultrafiltration畅” The 摧 ７４６ process filters impure dye through a porous membrane at certain pressures and pH levels， resulting in a high purity dye product畅 The 摧 ７４６ patent issued in １９８５畅As relevant to this case， the patent claims as its invention an improvement in the ultrafiltration process as follows： “ In a process for the purification of a dye畅畅畅the improvement which comprises： subjecting an aqueous solution畅畅畅to ultrafiltration through a membrane having a nominal pore diameter of ５ －１５ Angstroms under a hydrostatic pressure of approximately ２００ to ４００ p畅s畅i畅g畅， at a pH from approximately ６畅 ０ to ９畅０， to thereby cause separation of said impurities from said dye畅 畅畅” App畅 ３６ －３７ （ emphasis added） ． The inventors added the phrase “ at a pH from approximately ６畅０ to ９畅０ ” during patent prosecution畅At a minimum， this phrase was added to distinguish a previous patent （ the “ Booth” patent） that disclosed an ultrafiltration process operating at a pH above ９畅０畅The parties disagree as to why the low唱 end pH limit of ６畅 ０ was included as part of the claim畅 In １９８６， Warner唱 Jenkinson developed an ultrafiltration process that operated with membrane pore diameters assumed to be ５ －１５ ３４２ 美国知识产权法 Angstroms， at pressures of ２００ to nearly ５００ p畅s畅i畅g畅， and at a pH of ５畅０畅Warner唱 Jenkinson did not learn of the 摧 ７４６ patent until after it had begun commercial use of its ultrafiltration process畅 Hilton Davis eventually learned of Warner唱 Jenkinson摧 s use of ultrafiltration and， in １９９１， sued Warner唱 Jenkinson for patent infringement畅 As trial approached， Hilton Davis conceded that there was no literal infringement， and relied solely on the doctrine of equivalents畅 Over Warner唱 Jenkinson摧 s objection that the doctrine of equivalents was an equitable doctrine to be applied by the court， the issue of equivalence was included among those sent to the jury畅 The jury found that the 摧 ７４６ patent was not invalid and that Warner唱 Jenkinson infringed upon the patent under the doctrine of equivalents畅The jury also found， however， that Warner唱 Jenkinson had not intentionally infringed， and therefore awarded only ２０％ of the damages sought by Hilton Davis畅The District Court denied Warner唱 Jenkinson摧 s post唱 trial motions， and entered a permanent injunction prohibiting Warner 唱 Jenkinson from practicing ultrafiltration below ５００ p畅s畅i畅g畅 and below ９畅０１ pH畅A fractured en banc Court of Appeals for the Federal Circuit affirmed畅 The majority below held that the doctrine of equivalents continues to exist and that its touchstone is whether substantial differences exist between the accused process and the patented process畅The court also held that the question of equivalence is for the jury to decide and that the jury in this case had substantial evidence from which it could conclude that the Warner唱 Jenkinson process was not substantially different from the ultrafiltration process disclosed in the 摧 ７４６ patent畅 There were three separate dissents， commanding a total of ５ of 第二编 美国 利法 ３ ４３ １２ judges畅Four of the five dissenting judges viewed the doctrine of equivalents as allowing an improper expansion of claim scope， contrary to this Court摧 s numerous holdings that it is the claim that defines the invention and gives notice to the public of the limits of the patent monopoly畅The fifth dissenter， the late Judge Nies， was able to reconcile the prohibition against enlarging the scope of claims and the doctrine of equivalents by applying the doctrine to each element of a claim， rather than to the accused product or process “ overall畅” As she explained it： “ The ‘ scope ’ is not enlarged if courts do not go beyond the substitution of equivalent elements畅” All of the dissenters， however， would have found that a much narrowed doctrine of equivalents may be applied in whole or in part by the court畅 We granted certiorari， and now reverse and remand畅 II In Graver Tank we considered the application of the doctrine of equivalents to an accused chemical composition for use in welding that differed from the patented welding material by the substitution of one chemical element畅３３９ U畅S畅， at ６１０， ７０ S畅Ct畅， at ８５７畅The substituted element did not fall within the literal terms of the patent claim， but the Court nonetheless found that the “question which thus emerges is whether the substitution of one element for the other畅畅畅is a change of such substance as to make the doctrine of equivalents inapplicable； or conversely， whether under the circumstances the change was so insubstantial that the trial court摧 s invocation of the doctrine of equivalents was justified畅” The Court also described some of the considerations that go into applying the doctrine of ３４４ 美国知识产权法 equivalents： “ What constitutes equivalency must be determined against the context of the patent， the prior art， and the particular circumstances of the case畅Equivalence， in the patent law， is not the prisoner of a formula and is not an absolute to be considered in a vacuum畅It does not require complete identity for every purpose and in every respect畅 In determining equivalents， things equal to the same thing may not be equal to each other and， by the same token， things for most purposes different may sometimes be equivalents畅 Consideration must be given to the purpose for which an ingredient is used in a patent， the qualities it has when combined with the other ingredients， and the function which it is intended to perform畅An important factor is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was畅” Considering those factors， the Court viewed the difference between the chemical element claimed in the patent and the substitute element to be “ colorable only，” and concluded that the trial court摧 s judgment of infringement under the doctrine of equivalents was proper畅 A Petitioner摧 s primary argument in this Court is that the doctrine of equivalents， as set out in Graver Tank in １９５０ ， did not survive the １９５２ revision of the Patent Act， ３５ U畅 S畅C畅§ １００ et seq畅， because it is inconsistent with several aspects of that Act畅 In particular， petitioner argues： （ １ ） The doctrine of equivalents is inconsistent with the statutory requirement that a patentee specifically 第二编 美国 利法 ３ ４５ “ claim” the invention covered by a patent， § １１２； （２） the doctrine circumvents the patent reissue process唱 designed to correct mistakes in drafting or the like唱 and avoids the express limitations on that process， § § ２５１唱 ２５２； （ ３ ） the doctrine is inconsistent with the primacy of the Patent and Trademark Office （ PTO） in setting the scope of a patent through the patent prosecution process； and （ ４） the doctrine was implicitly rejected as a general matter by Congress摧 specific and limited inclusion of the doctrine in one section regarding “ means” claiming， § １１２， ６畅All but one of these arguments were made in Graver Tank in the context of the １８７０ Patent Act， and failed to command a majority畅 The １９５２ Patent Act is not materially different from the １８７０ Act with regard to claiming， reissue， and the role of the PTO畅 Compare， e畅g畅， ３５ U畅S畅 C畅 § １１２ （ “ The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention” ） with the Consolidated Patent Act of １８７０， ch畅２３０， § ２６， １６ Stat畅１９８， ２０１ （ the applicant “shall particularly point out and distinctly claim the part， improvement， or combination which he claims as his invention or discovery”） 畅Such minor differences as exist between those provisions in the １８７０ and the １９５２ Acts have no bearing on the result reached in Graver Tank， and thus provide no basis for our overruling it畅In the context of infringement， we have already held that pre唱 １９５２ precedent survived the passage of the １９５２ Act畅（ new section defining infringement “ left intact the entire body of case law on direct infringement”） ．We see no reason to reach a different result here畅 Petitioner摧 s fourth argument for an implied congressional ３４６ 美国知识产权法 negation of the doctrine of equivalents turns on the reference to “ equivalents” in the “ means” claiming provision of the １９５２ Act畅 Section １１２， ６， a provision not contained in the １８７０ Act， states： “ An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure， material， or acts in support thereof， and such claim shall be construed to cover the corresponding structure， material， or acts described in the specification and equivalents thereof畅” （Emphasis added畅） Thus， under this new provision， an applicant can describe an element of his invention by the result accomplished or the function served， rather than describing the item or element to be used （ e畅g畅， “ a means of connecting Part A to Part B，” rather than “ a two唱 penny nail” ） ．Congress enacted § １１２， ６， in response to Halliburton Oil Well Cementing Co畅v畅 Walker ， ３２９ U畅S畅１， ６７ S畅Ct畅６ ， ９１ L畅Ed畅３ （ １９４６ ） ， which rejected claims that “ do not describe the invention but use ‘ conveniently functional language at the exact point of novelty畅’ ” ， at ８， ６７ S畅Ct畅， at ９ －１０， （ citation omitted） ． See In re Donaldson Co畅， １６ F畅 ３d １１８９， １１９４ （ C畅A畅Fed畅１９９４） （ Congress enacted predecessor of § １１２， ６， in response to Halliburton ） ； In re Fuetterer ， ５０ C畅C畅P畅A畅１４５３， ３１９ F畅２ d ２５９， ２６４， n畅１１ （ １９６３ ） （ same ） ； see also ２ D畅Chisum， Patents § ８畅０４ ［ ２ ］ ， pp畅 ６３ －６４ （ １９９６ ） （ discussing １９５４ commentary of then唱 Chief Patent Examiner P畅J畅Federico） ．Section １１２， ６， now expressly allows so唱 called “ means” claims， with the proviso that application of the broad literal language of such claims must be limited to only those means that are “ equivalent” to the actual means shown in the patent specification畅This is an application 第二编 美国 利法 ３ ４７ of the doctrine of equivalents in a restrictive role， narrowing the application of broad literal claim elements畅We recognized this type of role for the doctrine of equivalents in Graver Tank itself畅The added provision， however， is silent on the doctrine of equivalents as applied where there is no literal infringement畅 Because § １１２ ， ６ ， was enacted as a targeted cure to a specific problem， and because the reference in that provision to “ equivalents ” appears to be no more than a prophylactic against potential side effects of that cure， such limited congressional action should not be overread for negative implications畅Congress in １９５２ could easily have responded to Graver Tank as it did to the Halliburton decision畅 But it did not畅 Absent something more compelling than the dubious negative inference offered by petitioner， the lengthy history of the doctrine of equivalents strongly supports adherence to our refusal in Graver Tank to find that the Patent Act conflicts with that doctrine畅Congress can legislate the doctrine of equivalents out of existence any time it chooses畅The various policy arguments now made by both sides are thus best addressed to Congress， not this Court畅 B We do， however， share the concern of the dissenters below that the doctrine of equivalents， as it has come to be applied since Graver Tank， has taken on a life of its own， unbounded by the patent claims畅There can be no denying that the doctrine of equivalents， when applied broadly， conflicts with the definitional and public唱 notice functions of the statutory claiming requirement畅Judge Nies identified one means of avoiding this conflict： ３４８ 美国知识产权法 “ A distinction can be drawn that is not too esoteric between substitution of an equivalent for a component in an invention and enlarging the metes and bounds of the invention beyond what is claimed畅 畅畅畅畅畅 “ Where a claim to an invention is expressed as a combination of elements， as here， ‘ equivalents ’ in the sobriquet ‘ Doctrine of Equivalents’ refers to the equivalency of an element or part of the invention with one that is substituted in the accused product or process畅 畅畅畅畅畅 “ This view that the accused device or process must be more than ‘ equivalent’ overall reconciles the Supreme Court摧 s position on infringement by equivalents with its concurrent statements that ‘ the courts have no right to enlarge a patent beyond the scope of its claims as allowed by the Patent Office畅’ Citations omitted畅 The ‘ scope’ is not enlarged if courts do not go beyond the substitution of equivalent elements畅” We concur with this apt reconciliation of our two lines of precedent畅 Each element contained in a patent claim is deemed material to defining the scope of the patented invention， and thus the doctrine of equivalents must be applied to individual elements of the claim， not to the invention as a whole畅It is important to ensure that the application of the doctrine， even as to an individual element， is not allowed such broad play as to effectively eliminate that element in its entirety畅 So long as the doctrine of equivalents does not encroach beyond the limits just described， or beyond related limits to be discussed infra， this page and １０５０ －１０５１， １０５３， n畅８， and 第二编 美国 利法 ３ ４９ １０５４， we are confident that the doctrine will not vitiate the central functions of the patent claims themselves畅 III Understandably reluctant to assume this Court would overrule Graver Tank， petitioner has offered alternative arguments in favor of a more restricted doctrine of equivalents than it feels was applied in this case畅We address each in turn畅 A Petitioner first argues that Graver Tank never purported to supersede a well唱 established limit on nonliteral infringement， known variously as “ prosecution history estoppel ” and “ file wrapper estoppel畅” According to petitioner， any surrender of subject matter during patent prosecution， regardless of the reason for such surrender， precludes recapturing any part of that subject matter， even if it is equivalent to the matter expressly claimed畅Because， during patent prosecution， respondent limited the pH element of its claim to pH levels between ６畅０ and ９畅０， petitioner would have those limits form bright lines beyond which no equivalents may be claimed畅Any inquiry into the reasons for a surrender， petitioner claims， would undermine the public摧 s right to clear notice of the scope of the patent as embodied in the patent file畅 We can readily agree with petitioner that Graver Tank did not dispose of prosecution history estoppel as a legal limitation on the doctrine of equivalents畅But petitioner reaches too far in arguing that the reason for an amendment during patent prosecution is irrelevant to any subsequent estoppel畅In each of our cases cited by petitioner ３５０ 美国知识产权法 and by the dissent below， prosecution history estoppel was tied to amendments made to avoid the prior art， or otherwise to address a specific concern唱 such as obviousness唱 that arguably would have rendered the claimed subject matter unpatentable畅Thus， in Exhibit Supply Co畅v畅Ace Patents Corp畅， ３１５ U畅S畅１２６， ６２ S畅Ct畅５１３， ８６ L畅Ed畅７３６ （１９４２） Chief Justice Stone distinguished inclusion of a limiting phrase in an original patent claim from the “ very different” situation in which “ the applicant， in order to meet objections in the Patent Office， based on references to the prior art， adopted the phrase as a substitute for the broader one ” previously used畅Similarly， in Keystone Driller Co畅v畅Northwest Engineering Corp畅， ２９４ U畅S畅４２ （１９３５） ， estoppel was applied where the initial claims were “ rejected on the prior art，” and where the allegedly infringing equivalent element was outside of the revised claims and within the prior art that formed the basis for the rejection of the earlier claims畅 It is telling that in each case this Court probed the reasoning behind the Patent Office摧 s insistence upon a change in the claims畅In each instance， a change was demanded because the claim as otherwise written was viewed as not describing a patentable invention at all唱 typically because what it described was encompassed within the prior art畅But， as the United States informs us， there are a variety of other reasons why the PTO may request a change in claim language畅 Brief for United States as Amicus Curiae ２２ －２３ counsel for the PTO also appearing on the brief ） ． And if the PTO has been requesting changes in claim language without the intent to limit equivalents or， indeed， with the expectation that language it required would in many cases allow for a range of equivalents， we should be 第二编 美国 利法 ３ ５１ extremely reluctant to upset the basic assumptions of the PTO without substantial reason for doing so畅 Our prior cases have consistently applied prosecution history estoppel only where claims have been amended for a limited set of reasons， and we see no substantial cause for requiring a more rigid rule invoking an estoppel regardless of the reasons for a change畅 In this case， the patent examiner objected to the patent claim due to a perceived overlap with the Booth patent， which revealed an ultrafiltration process operating at a pH above ９畅０畅In response to this objection， the phrase “ at a pH from approximately ６畅０ to ９畅 ０” was added to the claim畅While it is undisputed that the upper limit of ９畅０ was added in order to distinguish the Booth patent， the reason for adding the lower limit of ６畅 ０ is unclear畅 The lower limit certainly did not serve to distinguish the Booth patent， which said nothing about pH levels below ６畅 ０畅Thus， while a lower limit of ６畅０， by its mere inclusion， became a material element of the claim， that did not necessarily preclude the application of the doctrine of equivalents as to that element畅（ “ All specified elements must be regarded as material， ” though it remains an open “ question whether an omitted part is supplied by an equivalent device or instrumentality ” （ citation omitted ） ） ． Where the reason for the change was not related to avoiding the prior art， the change may introduce a new element， but it does not necessarily preclude infringement by equivalents of that element畅 We are left with the problem， however， of what to do in a case like the one at bar， where the record seems not to reveal the reason for including the lower pH limit of ６畅０畅In our view， holding that certain reasons for a claim amendment may avoid the application of ３５２ 美国知识产权法 prosecution history estoppel is not tantamount to holding that the absence of a reason for an amendment may similarly avoid such an estoppel畅Mindful that claims do indeed serve both a definitional and a notice function， we think the better rule is to place the burden on the patent holder to establish the reason for an amendment required during patent prosecution畅The court then would decide whether that reason is sufficient to overcome prosecution history estoppel as a bar to application of the doctrine of equivalents to the element added by that amendment畅Where no explanation is established， however， the court should presume that the patent applicant had a substantial reason related to patentability for including the limiting element added by amendment畅 In those circumstances， prosecution history estoppel would bar the application of the doctrine of equivalents as to that element畅T he presumption we have described， one subject to rebuttal if an appropriate reason for a required amendment is established， gives proper deference to the role of claims in defining an invention and providing public notice， and to the primacy of the PTO in ensuring that the claims allowed cover only subject matter that is properly patentable in a proffered patent application畅Applied in this fashion， prosecution history estoppel places reasonable limits on the doctrine of equivalents， and further insulates the doctrine from any feared conflict with the Patent Act畅 Because respondent has not proffered in this Court a reason for the addition of a lower pH limit， it is impossible to tell whether the reason for that addition could properly avoid an estoppel畅Whether a reason in fact exists， but simply was not adequately developed， we cannot say畅On remand， the Federal Circuit can consider whether reasons for that portion of the amendment were offered or not and 第二编 美国 利法 ３ ５３ whether further opportunity to establish such reasons would be proper畅 B Petitioner next argues that even if Graver Tank remains good law， the case held only that the absence of substantial differences was a necessary element for infringement under the doctrine of equivalents， not that it was sufficient for such a result畅Brief for Petitioner ３２畅Relying on Graver Tank摧 s references to the problem of an “ unscrupulous copyist” and “ piracy，” ３３９ U畅S畅， at ６０７， ７０ S畅Ct畅， at ８５５ －８５６， petitioner would require judicial exploration of the equities of a case before allowing application of the doctrine of equivalents畅To be sure， Graver Tank refers to the prevention of copying and piracy when describing the benefits of the doctrine of equivalents畅That the doctrine produces such benefits， however， does not mean that its application is limited only to cases where those particular benefits are obtained畅 Elsewhere in Graver Tank the doctrine is described in more neutral terms畅 And the history of the doctrine as relied upon by Graver Tank reflects a basis for the doctrine not so limited as petitioner would have it畅In Winans v畅Denmead， １５ How畅３３０， ３４３， １４ L畅Ed畅 ７１７ （ １８５４ ） ， we described the doctrine of equivalents as growing out of a legally implied term in each patent claim that “ the claim extends to the thing patented， however its form or proportions may be varied畅” Under that view， application of the doctrine of equivalents involves determining whether a particular accused product or process infringes upon the patent claim， where the claim takes the form唱 half express， half implied唱 of “ X and its ３５４ 美国知识产权法 equivalents畅” Union Paper唱 Bag Machine Co畅 v畅 Murphy， ９７ U畅S畅 １２０， １２５， ２４ L畅Ed畅９３５ （ １８７８ ） ， on which Graver Tank also relied， offers a similarly intent唱 neutral view of the doctrine of equivalents： “ The substantial equivalent of a thing， in the sense of the patent law， is the same as the thing itself； so that if two devices do the same work in substantially the same way， and accomplish substantially the same result， they are the same， even though they differ in name， form， or shape畅” If the essential predicate of the doctrine of equivalents is the notion of identity between a patented invention and its equivalent， there is no basis for treating an infringing equivalent any differently from a device that infringes the express terms of the patent畅 Application of the doctrine of equivalents， therefore， is akin to determining literal infringement， and neither requires proof of intent畅 Petitioner also points to Graver Tank摧 s seeming reliance on the absence of independent experimentation by the alleged infringer as supporting an equitable defense to the doctrine of equivalents畅The Federal Circuit explained this factor by suggesting that an alleged infringer摧 s behavior， be it copying， designing around a patent， or independent experimentation， indirectly reflects the substantiality of the differences between the patented invention and the accused device or process畅According to the Federal Circuit， a person aiming to copy or aiming to avoid a patent is imagined to be at least marginally skilled at copying or avoidance， and thus intentional copying raises an inference唱 rebuttable by proof of independent development唱 of having only insubstantial differences， and intentionally designing around a patent claim raises an inference of 第二编 美国 ３ ５５ 利法 substantial differences畅This explanation leaves much to be desired畅 At a minimum， one wonders how ever to distinguish between the intentional copyist making minor changes to lower the risk of legal action and the incremental innovator designing around the claims， yet seeking to capture as much as is permissible of the patented advance畅 But another explanation is available that does not require a divergence from generally objective principles of patent infringement畅In both instances in Graver Tank where we referred to independent research or experiments， we were discussing the known interchangeability between the chemical compound claimed in the patent and the compound substituted by the alleged infringer畅The need for independent experimentation thus could reflect knowledge唱 or lack thereof唱 of interchangeability possessed by one presumably skilled in the art畅The known interchangeability of substitutes for an element of a patent is one of the express objective factors noted by Graver Tank as bearing upon whether the accused device is substantially the same as the patented invention畅 Independent experimentation by the alleged infringer would not always reflect upon the objective question whether a person skilled in the art would have known of the interchangeability between two elements， but in many cases it would likely be probative of such knowledge畅 Although Graver Tank certainly leaves room for petitioner摧 s suggested inclusion of intent唱 based elements in the doctrine of equivalents， we do not read it as requiring them畅The better view， and the one consistent with Graver Tank摧 s predecessors and the objective approach to infringement， is that intent plays no role in the application of the doctrine of equivalents畅 ３５６ 美国知识产权法 C Finally， petitioner proposes that in order to minimize conflict with the notice function of patent claims， the doctrine of equivalents should be limited to equivalents that are disclosed within the patent itself畅A milder version of this argument， which found favor with the dissenters below， is that the doctrine should be limited to equivalents that were known at the time the patent was issued， and should not extend to after 唱 arising equivalents畅 As we have noted， supra， at １０５２， with regard to the objective nature of the doctrine， a skilled practitioner摧 s knowledge of the interchangeability between claimed and accused elements is not relevant for its own sake， but rather for what it tells the fact唱 finder about the similarities or differences between those elements畅Much as the perspective of the hypothetical “ reasonable person” gives content to concepts such as “ negligent ” behavior， the perspective of a skilled practitioner provides content to， and limits on， the concept of “ equivalence畅” Insofar as the question under the doctrine of equivalents is whether an accused element is equivalent to a claimed element， the proper time for evaluating equivalency唱 and thus knowledge of interchangeability between elements唱 is at the time of infringement， not at the time the patent was issued畅And rejecting the milder version of petitioner摧 s argument necessarily rejects the more severe proposition that equivalents must not only be known， but must also be actually disclosed in the patent in order for such equivalents to infringe upon the patent畅 第二编 美国 利法 ３ ５７ IV The various opinions below， respondents， and amici devote considerable attention to whether application of the doctrine of equivalents is a task for the judge or for the jury畅However， despite petitioner摧 s argument below that the doctrine should be applied by the judge， in this Court petitioner makes only passing reference to this issue畅 Petitioner摧 s comments go more to the alleged inconsistency between the doctrine of equivalents and the claiming requirement than to the role of the jury in applying the doctrine as properly understood畅Because resolution of whether， or how much of， the application of the doctrine of equivalents can be resolved by the court is not necessary for us to answer the question presented， we decline to take it up畅The Federal Circuit held that it was for the jury to decide whether the accused process was equivalent to the claimed process畅There was ample support in our prior cases for that holding畅 Nothing in our recent decision in Markman v畅 Westview Instruments， Inc畅necessitates a different result than that reached by the Federal Circuit畅Indeed， Markman cites with considerable favor， when discussing the role of judge and jury， the seminal Winans decision畅Whether， if the issue were squarely presented to us， we would reach a different conclusion than did the Federal Circuit is not a question we need decide today畅 V All that remains is to address the debate regarding the linguistic framework under which “ equivalence ” is determined畅 Both the ３５８ 美国知识产权法 parties and the Federal Circuit spend considerable time arguing whether the so唱 called “ triple identity” test唱 focusing on the function served by a particular claim element， the way that element serves that function， and the result thus obtained by that element唱 is a suitable method for determining equivalence， or whether an “ insubstantial differences ” approach is better畅 There seems to be substantial agreement that， while the triple identity test may be suitable for analyzing mechanical devices， it often provides a poor framework for analyzing other products or processes畅On the other hand， the insubstantial differences test offers little additional guidance as to what might render any given difference “ insubstantial畅” In our view， the particular linguistic framework used is less important than whether the test is probative of the essential inquiry： Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention？ Different linguistic frameworks may be more suitable to different cases， depending on their particular facts畅 A focus on individual elements and a special vigilance against allowing the concept of equivalence to eliminate completely any such elements should reduce considerably the imprecision of whatever language is used畅 An analysis of the role played by each element in the context of the specific patent claim will thus inform the inquiry as to whether a substitute element matches the function， way， and result of the claimed element， or whether the substitute element plays a role substantially different from the claimed element畅With these limiting principles as a backdrop， we see no purpose in going further and micromanaging the Federal Circuit摧 s particular word choice for 第二编 美国 ３ ５９ 利法 analyzing equivalence畅We expect that the Federal Circuit will refine the formulation of the test for equivalence in the orderly course of case唱 by唱 case determinations， and we leave such refinement to that court摧 s sound judgment in this area of its special expertise畅 VI Today we adhere to the doctrine of equivalents畅 The determination of equivalence should be applied as an objective inquiry on an element唱 by唱 element basis畅Prosecution history estoppel continues to be available as a defense to infringement， but if the patent holder demonstrates that an amendment required during prosecution had a purpose unrelated to patentability， a court must consider that purpose in order to decide whether an estoppel is precluded畅Where the patent holder is unable to establish such a purpose， a court should presume that the purpose behind the required amendment is such that prosecution history estoppel would apply畅 Because the Court of Appeals for the Federal Circuit did not consider all of the requirements as described by us today， particularly as related to prosecution history estoppel and the preservation of some meaning for each element in a claim， we reverse its judgment and remand the case for further proceedings consistent with this opinion畅 It is so ordered畅 Justice GINSBURG， with whom Justice KENNEDY joins， concurring畅 I join the opinion of the Court and write separately to add a cautionary note on the rebuttable presumption the Court announces regarding prosecution history estoppel畅 I address in particular the application of the presumption in this case and others in which patent ３６０ 美国知识产权法 prosecution has already been completed畅The new presumption， if applied woodenly， might in some instances unfairly discount the expectations of a patentee who had no notice at the time of patent prosecution that such a presumption would apply畅Such a patentee would have had little incentive to insist that the reasons for all modifications be memorialized in the file wrapper as they were made畅Years after the fact， the patentee may find it difficult to establish an evidentiary basis that would overcome the new presumption畅 The Court摧 s opinion is sensitive to this problem， noting that “ the PTO may have relied upon a flexible rule of estoppel when deciding whether to ask for a change” during patent prosecution畅 Because respondent has not presented to this Court any explanation for the addition of the lower pH limit， I concur in the decision to remand the matter to the Federal Circuit畅On remand， that court can determine唱 bearing in mind the prior absence of clear rules of the game唱 whether suitable reasons for including the lower pH limit were earlier offered or ， if not， whether they can now be established畅 １畅何谓等同侵权理论？ ２畅被告主张等同侵权理论已经失效的理由是什么？ ３畅１９５０ 年的格拉夫一案对本案产生什么影响？ ４畅确定等同的时间点应该是何时？ ５畅判定非显而易见性和等同是对什么主体而言的？ 第三编 美国商标法 美国第一部商标法 为 １８７０ 年 定 的 枟 美利 坚合众 国联 邦商 标条例枠 ， 在判例法的基础 上发 展而 成。 该法 施行 七年后， 被联 邦最高法院判决 为违 反 宪法 而予 以 废 止。 １８８１ 年 定了 的商 标法。 １９０５ 年美国对该 法 规作 出 重 大修 改， 将 注 册 商标 和 虽未 注册但其使用超出一州地域的商标， 都纳入联邦商标法的调整范 围， 逐步 了现代商标法 。 １９４６ 年， 美国议会重 共五十条。 该法主要特 定 了 现行 商 标 法即 枟 兰 汉 姆 法枠 ， 是： （１ ） 联邦注册与州注册并 其商务部所属的 。 美国 定 有联 邦统 一商标 法， 利商标局负责联邦商标注册。 各州也都有商标 立法权， 并设有州级注册机 。 但是， 各州商标局无权接受外国 人的商标注 册申 请。 外 国 人即 使 在 美国 某 个州 从 事 商 业 贸易 ， 如若取得商标 用权， 也只能向联邦 （２ ） 主簿和副 簿分 别 注册。 联 邦 利商标局申请。 利 商标 局 的 注册 簿 分为 主簿与副簿。 凡不道 德或 违 反 “ 公共 秩 ” 的标 记， 与 国 公 约及美国法律所禁用的国旗、 国徽、 国 组织标志相同或近 的 标记、 未经同意而以他人姓名或肖 作商标使用的标记、 可能在 市场上引起混淆的标记等绝对不准注册。 此外， 说明性的标记或 该说明与商品内容不符的标记、 地名与产地不同的标记以及常用 姓氏等， 一 源的 不得注册， 但经商标局审查认为其 能时， 则可以 一定时期证明其 有区别商品来 准在副簿注册。 在副簿注册的商标， 经过 注册条 件时， 则可能 上升 到主 簿注 册。 ３６２ 美国知识产权法 凡主簿注册商标， 在权利纠纷中 商标所有人通常可判定为商标 使用， 之副簿注册商标地位优越， 该 用权人。 如该商标五年内不间断 无人争议或争议不成立， 被称为无争议商标， 远确有 （３ ） 商标注册有效 期 为 二 十 年， 可 以 续 展， 展 期 仍为 用权。 二十年。 注册商标如不使用则丧失商标 用权。 使用包括在与商 品有 要求注册后的第一个五 的标签、 展览或广告中使用。 一 年中必须连续使用， 在其他的任何五年中， 只要未曾连续 年不 加使用， 则视为符合商标使用要求。 （４ ） 允许商标 或企业信誉一并 的商标， 让 或 许可 他 人 使用。 但必 须 连 同企 业 本身 让， 不得单 让。 凡在联邦 让时必须在该局登记 案。 （５ ） 对于商标 侵权 行 为所 判 定 的赔 偿 金 情做出高于 实 利商标局注册 ， 法 院可 据案 损 失 三倍 的 裁 决。 但 是， 受侵 害 人 提 出 侵权 诉 讼， 不论涉及的金 多少， 一律由联邦法院受理， 各州法院不得 受理。 第一 章 美国是世界上 保 护 的条 件 有的要求商标实 要求给国外的商标所 有者 和申 请者 要求商标所有者在美国使用并 使用的 个国家之一。 此 来了 诸多的 误 和困 惑。 持续使用其注册商标有利于促进 美国经济和商业的繁荣。 换句话说， 法律驱使商标所有者 他们 的商品或服务投入到市场中。 如果商标所有人停止使用商标， 法 律会立即收回所有者手中的注册证。 商标使用得越多， 法律对该 商标的保护也就越有 。 与不要求商标实 使用的国家的法律相 第三编 ３ ６３ 美 国 商 标法 比， 以普通法为基础的美国商标法不 保护了消费者的利益， 使 其享受到同等质量的商品和服务， 认可了商标所有人的权利， 而 推 了美国商业和经济的发展。 商标使用的定义是指在运往美国的商品的一 者在美国销售商品的一 美国国会管理的州 第 贸易过 贸易过 中或 中使用该商标。 贸易一 是指 贸易、 美国和其他国家之间的涉外贸易、 印 贸易。 受到保护的商标必须 有显著性， 能够使得商标使用者的商 品或者服务与其他人的商品或者服务区分开来。 按照显著性的 ， 美国的 体 第一 是实 生 第二 法实践 商品标记划分为四 ： 是任意型标记， 该标记和商标毫无联系， 但是该标记 中的确 在的形式； 是 想 象 型 标 记， 该 标 记 纯 属 发 明 或 者 编 造 出 来 的 标记； 第三 是指 示 型标 记， 以非 接 方 式 描述 商 品 或 者 服务 的 标记； 第四 记。 这 是描述性标记， 是指那些 接描述商品或者服务的标 标记只有在市场上获得第二含义或者显著性之后， 才能 作为商标获得注册和保护。 所 用而 第二含义， 是指一个描述性的用语或者标记通过商业使 有了识别商品 来源 的性质， 从而 有了 非描 述性 的含 义， 即识别性含义。 第二含义并非意味着该含义相对于其原来的描述 性含义是第二位的或者 要的， 相反， 在特定的商业场合， 第二 含义应该是该标记的主要含义， 其原来的描述性含义反而成为 要的。 第二含义是后来取得的， 它是通过在市场上的使用， 从而 使得消费者能够识别 有该标识的商品和服务的来源而发展而来 的。 这种描述性标记便成了与之有 有了识别性的 能， 即商标的 能。 的商品和服务的同义词， ３６４ 美国知识产权法 案 例 41 Blue Bell， Inc．v．Farah Mfg． Co．， Inc． ５０８ F畅 ２d １２６０ GEWIN， Circuit Judge： In the spring and summer of １９７３ two prominent manufacturers of men摧 s clothing created identical trademarks for goods substantially identical in appearance畅 Though the record offers no indication of bad faith in the design and adoption of the labels， both Farah Manufacturing Company （ Farah ） and Blue Bell， Inc畅（ Blue Bell） devised the mark “ Time Out” for new lines of men摧 s slacks and shirts畅 Both parties market their goods on a national scale， so they agree that joint utilization of the same trademark would confuse the buying public畅 Thus， the only question presented for our review is which party established prior use of the mark in trade畅A response to that seemingly innocuous inquiry， however， requires us to define the chameleonic term “ use” as it has developed in trademark law畅 After a full development of the facts in the district court both parties moved for summary judgment畅T he motion of Farah was granted and that of Blue Bell denied畅It is not claimed that summary judgment procedure was inappropriate； the controversy presented relates to the application of the proper legal principles to undisputed facts畅A permanent injunction was granted in favor of Farah but no damages were awarded， and Blue Bell was allowed to fill all orders for garments bearing the Time Out label received by it as of the close of business on December ５， １９７３畅For the reasons hereinafter stated we affirm畅 Farah conceived of the Time Out mark on May １６， after screening several possible titles for its new stretch menswear畅Two days later the firm adopted an hourglass logo and authorized an extensive advertising campaign bearing the new insignia畅 Farah presented its fall line of clothing， including Time Out slacks， to sales personnel on June ５畅 In the meantime， patent counsel had given clearance for use of the mark after scrutiny of current federal registrations then on file畅 One of Farah摧 s top exec (t) Tj1.08 Tc (h) Tj-0.2 ３６６ 美国知识产权法 “ upstairs ” market畅 Though initially to be housed at the Hicks唱 Ponder plant in EL Paso， the new division would eventually enjoy separate headquarters畅On June １８ Blue Bell management arrived at the name Time Out to identify both its new division and its new line of men摧 s sportswear畅Like Farah， it received clearance for use of the mark from counsel畅 Like Farah， it inaugurated an advertising campaign畅Unlike Farah， however， Blue Bell did not ship a dozen marked articles of the new line to its sales personnel畅Instead， Blue Bell authorized the manufacture of several hundred labels bearing the words Time Out and its logo shaped like a referee摧 s hands forming a T畅When the labels were completed on June ２９， the head of the embryonic division flew them to EL Paso畅He instructed shipping personnel to affix the new Time Out labels to slacks that already bore the “ Mr畅Hicks” trademark畅The new tags， of varying sizes and colors ， were randomly attached to the left hip pocket button of slacks and the left hip pocket of jeans畅Thus， although no change occurred in the design or manufacture of the pants， on July ５ several hundred pair left EL Paso with two tags畅 Blue Bell made intermittent shipments of the doubly唱 labeled slacks thereafter ， though the out唱 of 唱 state customers who received the goods had ordered clothing of the Mr畅Hicks variety畅Production of the new Time Out merchandise began in the latter part of August， and Blue Bell held a sales meeting to present its fall designs from September ４ －６畅Sales personnel solicited numerous orders， though shipments of the garments were not scheduled until October畅 By the end of October Farah had received orders for ２０４敞４０３ items of Time Out sportswear， representing a retail sales value of over ＄２敞 ７５０敞 ０００畅 Blue Bell had received orders for １５４敞２００ 第三编 ３ ６７ 美 国 商 标法 garments valued at over ＄９００敞０００畅Both parties had commenced extensive advertising campaigns for their respective Time Out sportswear畅 Soon after discovering the similarity of their marks， Blue Bell sued Farah for common law trademark infringement and unfair competition， seeking to enjoin use of the Time Out trademark on men摧 s clothing畅Farah counter唱 claimed for similar injunctive relief畅 The district court found that Farah摧 s July ３ shipment and sale constituted a valid use in trade， while Blue Bell摧 s July ５ shipment was a mere “ token ” use insufficient at law to create trademark rights畅While we affirm the result reached by the trial court as to Farah摧 s priority of use， the legal grounds upon which we base our decision are somewhat different from those undergirding the district court摧 s judgment畅 Federal jurisdiction is predicated upon diversity of citizenship， since neither party has registered the mark pursuant to the Lanham Act畅 Given the operative facts surrounding manufacture and shipment from EL Paso， the parties agree the Texas law of trademarks controls畅 In １９６７ the state legislature enacted a Trademark Statute畅Section １６畅 ０２ of the Act explains that a mark is “ used” when it is affixed to the goods and “ the goods are sold， displayed for sale， or otherwise publicly distributed畅” Thus the question whether Blue Bell or Farah established priority of trademark use depends upon interpretation of the cited provision畅 Unfortunately， there are no Texas cases construing １６畅０２畅 This court must therefore determine what principles the highest state court would utilize in deciding such a question畅In view of the statute摧 s stated purpose to preserve common law rights， we conclude the ３６８ 美国知识产权法 Texas Supreme Court would apply the statutory provision in light of general principles of trademark law畅 A trademark is a symbol （ word， name， device or combination thereof） adopted and used by a merchant to identify his goods and distinguish them from articles produced by others畅Ownership of a mark requires a combination of both appropriation and use in trade畅 Thus， neither conception of the mark， nor advertising alone establishes trademark rights at common law畅Rather， ownership of a trademark accrues when goods bearing the mark are placed on the market畅 The exclusive right to a trademark belongs to one who first uses it in connection with specified goods畅Such use need not have gained wide public recognition； Waldes v畅 International Manufacturers摧 Agency， ２３７ F畅５０２ （ S畅D畅N畅Y畅 １９１６ ）， and even a single use in trade may sustain trademark rights if followed by continuous commercial utilization畅 The initial question presented for review is whether Farah摧 s sale and shipment of slacks to twelve regional managers constitutes a valid first use of the Time Out mark畅Blue Bell claims the July ３ sale was merely an internal transaction insufficiently public to secure trademark ownership畅 After consideration of pertinent authorities， we agree畅 Secret， undisclosed internal shipments are generally inadequate to support the denomination “ use畅” Trademark claims based upon shipments from a producer摧 s plant to its sales office， and vice versa， have often been disallowed畅Though none of the cited cases dealt with sales to intra唱 corporate personnel， we perceive that fact to be a distinction without a difference畅 The sales were not made to 第三编 美 国 商 标法 ３ ６９ customers， but served as an accounting device to charge the salesmen with their cost in case of loss畅The fact that some sales managers actively solicited accounts bolsters the good faith of Farah摧 s intended use， but does not meet out essential objection： that the “ sales” were not made to the public畅 The primary， perhaps singular purpose of a trademark is to provide a means for the consumer to separate or distinguish one manufacturer摧 s goods from those of another畅 Personnel within a corporation can identify an item by style number or other unique code畅A trademark aids the public in selecting particular goods畅As stated by the First Circuit： But to hold that a sale or sales are the sine qua non of a use sufficient to amount to an appropriation would be to read an unwarranted limitation into the statute， for so construed registration would have to be denied to any manufacturer who adopted a mark to distinguish or identify his product， and perhaps applied it thereon for years， if he should in practice lease his goods rather than sell them， as many manufacturers of machinery do畅It seems to us that although evidence of sales is highly persuasive， the question of use adequate to establish appropriation remains one to be decided on the facts of each case， and that evidence showing， first， adoption， and， second， use in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark， is competent to establish ownership． ．． Similarly， the Trademark Trial and Appeal Board has reasoned： T o acquire trademark rights there has to be an “ open” use， that is to say， a use has to be made to the relevant class of purchasers or prospective purchasers since a trademark is intended ３７０ to 美国知识产权法 identify goods and distinguish those goods from those manufactured or sold by others畅 There was no such “ open ” use rather the use can be said to be an “ internal” use， which cannot give rise to trademark rights畅 Farah nonetheless contends that a recent decision of the Board so undermines all prior cases relating to internal use that they should be ignored畅 In Standard Pressed Steel Co畅 v畅 Midwest Chrome Process Co畅， １８３ U．S．P．O．７５８ （ TTAB １９７４ ） the agency held that internal shipment of marked goods from a producer摧 s manufacturing plant to its sales office constitutes a valid “ use in commerce” for registration purposes畅 An axiom of trademark law has been that the right to register a mark is conditioned upon its actual use in trade畅Theoretically， then， common law use in trade should precede the use in commerce upon which Lanham Act registration is predicated畅Arguably， since only a trademark owner can apply for registration， any activity adequate to create registrable rights must perforce also create trademark rights畅A close examination of the Board摧 s decision， however， dispels so mechanical a view畅The tribunal took meticulous care to point out that its conclusion related solely to registration use rather than ownership use畅 It has been recognized and especially so in the last few years that， in view of the expenditures involved in introducing a new product on the market generally and the attendant risk involved therein prior to the screening process involved in resorting to the federal registration system and in the absence of an “ intent to use” statute， a token sale or a single shipment in commerce may be sufficient to support an application to register a trademark in the 第三编 美 国 商 标法 ３ ７１ Patnet Office notwithstanding that the evidence may not show what disposition was made of the product so shipped畅That is， the fact that a sale or a shipment of goods bearing a trademark was designed primarily to lay a foundation for the filing of an application for registration does not， per se， invalidate any such application or subsequent registration issued thereon畅Inasmuch as it is our belief that a most liberal policy should be followed in a situation of this kind （ in which dispute as to priority of used and ownership of a mark is not involved ） ， applicant摧 s initial shipment of fasteners， although an intra唱 company transaction in that it was to a company sales representative， was a bona fide shipment ．．． Priority of use and ownership of the Time Out mark are the only issues before this court畅The language fashioned by the Board clearly indicates a desire to leave the common law of trademark ownership intact畅The decision may demonstrate a reversal of the presumption that ownership rights precede registration rights， but it does not affect our analysis of common law use in trade畅 Farah had undertaken substantial preliminary steps toward marketing the Time Out garments， but it did not establish ownership of the mark by means of the July ３ shipment to its sales managers畅 The gist of trademark rights is actual use in trade畅Though technically a “ sale” ， the July ３ shipment was not “ publicly distributed ” within the purview of the Texas statute畅 Blue Bell摧 s July ５ shipment similarly failed to satisfy the prerequisites of a bona fide use in trade畅 Elementary tenets of trademark law require that labels or designs be affixed to the merchandise actually intended to bear the mark in commercial transactions畅Furthermore， courts have recognized that the usefulness ３７２ 美国知识产权法 of a mark derives not only from its capacity to identify a certain manufacturer， but also from its ability to differentiate between different classes of goods produced by a single manufacturer畅Here customers had ordered slacks of the Mr畅Hicks species， and Mr畅 Hicks was the fanciful mark distinguishing these slacks from all others畅Blue Bell intended to use the Time Out mark on an entirely new line of men摧 s sportswear， unique in style and cut， though none of the garments had yet been produced畅 While goods may be identified by more than one trademark， the use of each mark must be bona fide畅 Mere adoption of a mark without bona fide use， in an attempt to reserve it for the future， will not create trademark rights畅 In the instant case Blue Bell摧 s attachment of a secondary label to an older line of goods manifests a bad faith attempt to reserve a mark畅We cannot countenance such activities as a valid use in trade畅Blue Bell therefore did not acquire trademark rights by virtue of its July ５ shipment畅 W e thus hold that neither Farah摧 s July ３ shipment nor Blue Bell摧 s July ５ shipment sufficed to create rights in the Time Out mark畅Based on a desire to secure ownership of the mark and superiority over a competitor， both claims of alleged use were chronologically premature畅 Essentially， they took a time out to litigate their differences too early in the game畅T he question thus becomes whether we should continue to stop the clock for a remand or make a final call from the appellate bench畅While a remand to the district court for further factual development would not be improper in these circumstances， we believe the interests of judicial economy and the parties摧desire to terminate the litigation demand that we decide， if possible， which manufacturer first used the mark 第三编 美 国 商 标法 ３ ７３ in trade畅 Careful examination of the record discloses that Farah shipped its first order of Time Out clothing to customers in September of １９７３畅Blue Bell， approximately one month behind its competitor at other relevant stages of development， did not mail its Time Out garments until at least October畅Though sales to customers are not the sine qua non of trademark use， see New England Duplicating Co畅v畅Mendes， supra， they are determinative in the instant case畅 These sales constituted the first point at which the public had a chance to associate Time Out with a particular line of sportswear畅 Therefore， Farah established priority of trademark use； it is entitled to a decree permanently enjoining Blue Bell from utilization of the Time Out trademark on men摧 s garments畅 The judgment of the trial court is affirmed畅 １畅何谓 “Token Use”？ ２畅“ commercial use” 需要满足什么样的条件？ ３畅本案事实中几个关键性的时间点 （例如内部 装运的 时间、 发货给顾客的时间） 对在法院的裁决中有何重要影响？ ３７４ 美国知识产权法 案 例 42 Merely Descriptive or Deceptively Misdescriptive Application of Sun Oil Co． ５７ C．C．P．A．１１４７， ４２６ F畅２d ４０１ Cust畅＆ Pat畅App畅１９７０ ALMOND， Judge． Sun Oil Company brings this appeal from the decision of the Trademark Trial and Appeal Board， affirming the examiner摧 s refusal to allow appellant摧 s application to register “ CUSTOM唱 BLENDED” for gasoline on the ground that the mark is merely descriptive of applicant摧 s goods within the meaning of section ２ （ e） （１ ） of the Trademark Act of １９４６ （ １５ U．S．C畅 § １０５２ （ e ） （ １ ） ） and because the evidence submitted has not clearly established a secondary meaning， denoting that the mark has become distinctive of appellant摧 s goods， within section ２ （ f） of the Act （ １５ U．S．C畅 § １０５２ （ f） ） ． The application seeking registration on the Principal Register alleges use since １９５６畅The mark is displayed on special pumps， called “ blending pumps，” at appellant摧 s service stations畅 The application is designated a continuation of an earlier application filed July １３ ， １９６１， in which registration on the Principal Register was sought for the same mark for gasoline and refused by the Trademark Trial and Appeal Board on the ground that the mark was merely a 第三编 ３ ７５ 美 国 商 标法 descriptive connotation to purchasers of applicant摧 s goods畅 In his Answer， the examiner predicated refusal of registration on the ground that CUSTOM唱 BLENDED is merely descriptive of appellant摧 s goods within the meaning of section ２ （ e） （１） because it is so highly descriptive of appellant摧 s blended gasoline that it is incapable of becoming distinctive as claimed畅It was the examiner摧 s opinion that the term CUSTOM唱 BLENDED merely informs purchasers that various grades of gasoline from appellant摧 s blending pumps are custom blended for them； that the word “ custom ” is commonly used to indicate things made to order； that it has very little trademark significance when used in connection with blended gasoline； that appellant is not entitled to exclusive appropriation of this term， which so aptly describes custom唱 blended gasoline； and that the conclusion derived from surveys conducted by appellant is that purchasers who are acquainted with appellant摧 s Blue Sunoco gasoline know that such gasoline is custom blended畅 In affirming refusal of registration， the board stated that granted that the generic terms for appellant摧 s blended gasolines are pump唱 blended and multplegrade gasolines， there is no question that “ CUSTOM 唱 BLENDE D” has a merely descriptive significance in that it will immediately indicate to patrons of applicant摧 s service stations that the various grades of gasoline dispensed thereat are custom blended to their needs and requirements； that in view thereof and the decision on applicant摧 s prior application， it was incumbent upon applicant to show that the facts and circumstances since that decision have changed in that “ CUSTOM唱 BLENDED ” now serves as an indication of origin of applicant摧 s gasoline to the general public摧 ； that the case， therefore， turned upon the sufficiency of applicant摧 s ３７６ 美国知识产权法 evidence in that regard； that the only definite conclusion that can be drawn from the surveys is that purchasers who are acquainted with applicant摧 s “ SUNOCO” gasoline know that such gasoline is custom blended’ ； that this manifestly does not support applicant摧 s assertion that CUSTOM唱 BLEND has acquired a secondary meaning as an indication of origin for gasoline， and that upon the record presented CUSTOM 唱 BLENDED does not possess anything “ other than a descriptive significance to purchasers of gasoline畅” We have given a synoptic analysis of the board摧 s able， well唱 considered and exhaustive opinion without reiterating essential facts of record畅These facts are detailed in their essence and relevancy and supportive of the board摧 s conclusions so clearly and aptly enunciated in its decision畅We， therefore， incorporate herein by reference the opinion of the board and affirm its refusal of registration畅The decision of the Trademark Trial and Appeal Board is， accordingly， affirmed畅 Affirmed． RICH， Acting Chief Judge （ concurring） ． I agree with the result reached by the majority which is supported by an opinion largely relying on and incorporating by reference the opinion of the board畅 While I do not disagree with anything said in the majority摧 s opinion， I do not accord the survey evidence， by which it was attempted to show “ secondary meaning，” the significance apparently accorded it by the board畅The examiner accorded it none畅 I do not agree with the board摧 s statement that “ This case turns upon the sufficiency of applicant摧 s evidence ” of “ secondary meaning畅” The examiner in this case was of the view， as the board reported， that CUSTOM 唱 BLENDED “ is so highly descriptive of 第三编 美 国 商 标法 ３ ７７ applicant摧 s blended gasoline that it is incapable of becoming distinctive as claimed畅” If that is so， registration must be refused under １５ U畅S畅C畅 § １０５２ （ e ） （ １ ） no matter what evidence of alleged ‘ secondary meaning’ is adduced； in other words， under the facts of this case the law proscribes the possibility of a de jure “ secondary meaning，” notwithstanding the existence of １５ U畅S畅C畅 § １０５２ （ f） and a de facto “ secondary meaning畅” In my opinion， CUSTOM唱 BLENDED is so highly descriptive that it cannot， under the law， be accorded trademark rights even though at some times， or to some people， or in some places， it has a de facto secondary meaning畅 My view was expressed by the examiner畅I think that conclusively disposes of the matter畅While I see no objection to pointing out to appellant that its evidence has not established “ secondary meaning，” I am unwilling to lead appellant or others to think that the fault was in the quantity or quality of its evidence rather than in the descriptiveness of the words sought to be registered畅Appellant should not be encouraged to try again to prove “ secondary meaning畅” The only particular in which I do not fully agree with the examiner is that he said the word “ custom ” in CUSTOM 唱 BLENDED “ has very little trademark significance畅” I think it has none畅 Appellant has argued that the descriptive term for its gasoline is “ pump唱 blended畅” I do not question that that is a descriptive唱or as appellant calls it “ generic ” 唱 term； but a product may have more than one generically descriptive name畅 Because one merchandiser has latched onto one of the descriptive terms does not mean it can force its competitors to limit themselves to the use of the others， which appellant， it seems to me， is trying to do here畅All of the ３７８ 美国知识产权法 generic names for a product belong in the public domain畅 The product itself， for example， is called gasoline in the United States but petrol in England畅Clearly both of those names must remain free of proprietary claims， in either country畅So it is， in my view， with respect to pump唱 blended and custom唱 blended畅T he examiner stated the factual basis for this view in pointing out that “ custom，” as in custom唱 built， custom唱 service， custom唱 cut， custom唱 made， custom唱 tailored， custom唱 work， etc畅， merely indicates that it is done according to the customer摧 s desire畅 That is exactly how appellant摧 s gasolines are pump唱 blended唱to give the customer what he asks for畅I can think of no descriptive term which is more apt畅 FISHER， District Judge （ dissenting）． Under the doctrine of “ secondary meaning，” a trademark， though originally descriptive of a type of product， is nonetheless entitled to registration if the mark has， by association with a business， come primarily to identify its user， rather than the product， to that part of the public interested in contracting with the trademark user畅Whether a descriptive mark has acquired secondary meaning depends upon the particular facts of each case畅 Briefly， it has been shown that appellant has used the mark in question for its gasoline exclusively and continuously over a period of some twelve years畅There is evidence of extensive advertising of and sales of large volumes of gasoline under that mark during this period畅Surveys of record suggest that in at least two areas where there are other marketers of multi唱 grade， pump唱 blended gasoline， the term CUSTOM唱 BLENDED is associated in the public mind with this appellant in a preponderance which can only be accounted for by 第三编 美 国 商 标法 ３ ７９ recognition of origin畅There is no evidence which would imply that the mark is of such a descriptive nature that granting trademark rights therein to the user would deprive others of their right to normal use of the language畅 In light of these facts， it is respectfully submitted that the decision of the Trademark Trial and Appeal Board should be reversed and registration granted on the basis that the mark CUSTOM唱 BLENDED has acquired secondary meaning within Section ２ （ f） of the Act （１５ U． S．C畅 § １０５２ （ f） ） ． １畅商标复 审委 员会 为何 拒绝 “ CUSTOM唱 BLENDED ” 商标 的授予？ ２畅“ 仅仅是描述性” 和 “ 第二含义” 之间有何关联？ ３畅法院是否支持商标复审委员会的决定？ 案 例 43 Deceptive Matter Re： Budge Manufacturing Co． ８５７ F畅２d ７７３ NIES， Circuit Judge． Budge Manufacturing Co畅， Inc畅， appeals from the final ３８０ 美国知识产权法 decision of the United States Trademark Trial and Appeal Board refusing registration of LOVEE LAMB for “ automotive seat covers，” application Serial No畅５０７敞９７４ filed November ９， １９８４畅 The basis for rejection is that the term LAMB is deceptive matter within the meaning of section ２ （ a ） of the Lanham Act， １５ U畅S畅C畅 § １０５２ （ a） （１９８２） ， as applied to Budge摧 s goods which are made wholly from synthetic fibers畅We affirm畅 Opinion Section ２ （ a ） of the Lanham Act bars registration of a mark which： “ Consists of or comprises ．．．deceptive．． ．matter ． ．．” As stated in In re Automatic Radio Mfg畅Co畅， ４０４ F畅 ２ d １３９１， １３９６， １６０ USPQ ２３３， ２３６ （ CCPA １９６９ ） ： “ The proscription ［ of section ２ （ a ） ］ is not against misdescriptive terms unless they are also deceptive畅” Thus， that a mark or part of a mark may be inapt or misdescriptive as applied to an applicant摧 s goods does not make it “ deceptive畅” （ AUTOMATIC RADIO not a deceptive mark for air conditioners， ignition systems， and antennas ） ． Recognizing that premise， the Trademark Trial and Appeal Board has sought to articulate a standard by which “ deceptive matter ” under section ２ （ a） can be judged畅In this case， the board applied the three唱 part test which was stated in In re Shapely， Inc畅， ２３１ USPQ ７２， ７３ （ TTAB １９８６） ： （ １ ） whether the term is misdescriptive as applied to the goods， （ ２ ） if so， whether anyone would be likely to believe the misrepresentation， and （ ３ ） whether the misrepresentation would materially affect a potential purchaser摧 s decision to buy the goods畅 Budge argues that the board was bound to follow the standard articulated in In re Simmons， Inc畅， １９２ USPQ ３３１ （ TTAB １９７６） ． Per Budge， Simmons sets forth a different standard in that it requires 第三编 ３ ８１ 美 国 商 标法 as a minimum that “the mark convey some information， upon which an intended customer may reasonably rely， concerning something about the character， quality， function， composition or use of the goods to induce the purchase thereof， but which information， in fact， is misleadingly false畅” The standard applied by the board for determining deceptive matter in section ２ （ a ） cases has not been uniformly articulated in some material respects畅For example， in at least one opinion an intent to mislead was required to establish section ２ （ a ） deceptiveness畅 However， while phrased differently， we discern no material difference between the standard set forth in Shapely and that in Simmons畅Budge points to no substantive difference and， indeed， merely quarrels over the different result here from that in Simmons畅Thus， we need not address the question of the extent to which panels of the board are required to follow prior decisions of other board panels畅 What is more significant， in any event， is that this court is bound only by its own precedent， none of which Budge discusses畅 Although we will give deference in appropriate circumstances to a board摧 s decision on a question of law， we are， of course， not bound by such rulings畅 Where the issue relates to deceptive misdescriptiveness within the meaning of ２ （ a） ， we are in general agreement with the standard set out by the board in Shapely， with the following amplification in part drawn from S immons： （ １ ） Is the term misdescriptive of the character， quality， function， composition or use of the goods？ （２ ） If so， are prospective purchasers likely to believe that the misdescription actually describes the goods？ （３ ） If so， is the misdescription likely to affect the decision to ３８２ 美国知识产权法 purchase？ In ex parte prosecution， the burden is initially on the Patent and Trademark Office （ PTO ） to put forth sufficient evidence that the mark for which registration is sought meets the above criteria of unregistrability畅 Mindful that the PTO has limited facilities for acquiring evidence — it cannot， for example， be expected to conduct a survey of the marketplace or obtain consumer affidavits — we conclude that the evidence of record here is sufficient to establish a prima facie case of deceptiveness畅 That evidence shows with respect to the three唱 pronged test： （１ ） Budge admits that its seat covers are not made from lamb or sheep products畅Thus， the term LAMB is misdescriptive of its goods畅 （２） Seat covers for various vehicles can be and are made from natural lambskin and sheepskin畅Applicant itself makes automobile seat covers of natural sheepskin畅Lambskin is defined， inter alia， as fine唱 grade sheep skin畅 See Webster摧 s Third New International Dictionary ６３９ （ unabr畅１９７６ ） ．The board摧 s factual inference is reasonable that purchasers are likely to believe automobile seat covers denominated by the term LAMB or SHEEP are actually made from natural sheep or lamb skins畅 （ ３） Evidence of record shows that natural sheepskin and lambskin is more expensive than simulated skins and that natural and synthetic skins have different characteristics畅Thus， the misrepresentation is likely to affect the decision to purchase畅 Faced with this prima facie case against registration， Budge had the burden to come forward with countering evidence to overcome the rejection畅It wholly failed to do so畅 Budge argues that its use of LAMB as part of its mark is not 第三编 美 国 商 标法 ３ ８３ misdescriptive when considered in connection with the text in its advertising， which states that the cover is of “ simulated sheepskin畅” Some， but not all， of Budge摧 s specimen labels also have this text畅 This evidence is unpersuasive畅In R畅Neumann ＆ Co畅v畅Overseas Shipments， Inc畅， ３２６ F畅２d ７８６， a similar argument was made that the mark DURA唱 HYDE on shoes was not deceptive as an indication of leather because of tags affixed to the shoes proclaiming the legend “ Outwears leather畅” In discounting the evidence， the court stated： “ The legends constitute advertisement material separate and apart from any trademark significance畅” There the court held， with respect to a clarifying statement made in advertising circulars， which the applicant urged negated the deceptive nature of the mark， “ This argument is beside the issue畅It is the word of the mark， not the statement of an advertising circular which appellant seeks to register．． ．” Thus， we conclude that the board properly discounted Budge摧 s advertising and labeling which indicate the actual fabric content畅 Misdescriptiveness of a term may be negated by its meaning in the context of the whole mark inasmuch as the combination is seen together and makes a unitary impression畅The same is not true with respect to explanatory statements in advertising or on labels which purchasers may or may not note and which may or may not always be provided畅 The statutory provision bars registration of a mark comprising deceptive matter畅Congress has said that the advantages of registration may not be extended to a mark which deceives the public畅 Thus， the mark standing alone must pass muster， for that is what the applicant seeks to register， not extraneous explanatory statements畅 Budge next argues that no reasonable purchaser would expect to purchase lambskin automobile seat covers because none made of ３８４ 美国知识产权法 lambskin are on the market畅Only sheepskin automobile seat covers are being made， per Budge畅Not only was no evidence submitted on the point Budge seeks to make， only statements of Budge摧 s attorney， but also the argument is without substance畅 The board properly equated sheepskin and lambskin based on the dictionary definition which indicates that the terms may be used interchangeably畅 In addition， while Budge would discount the evidence presented that bicycle and airline seat coverings are made of lambskin， we conclude that it does support the board摧 s finding that there is nothing incongruous about automobile seat covers being made from lambskin畅 We also agree with the board摧 s conclusion that any differences between sheepskin and lambskin would not be readily apparent to potential purchasers of automobile seat covers畅 The board摧 s finding here that purchasers are likely to believe the misrepresentation is not clearly erroneous畅 To overturn the board摧 s finding that misdescribing synthetic fabric as “ lamb” would affect a purchaser摧 s decision to purchase the item， Budge merely reiterates its argument that its advertising negates the possibility of misdescriptiveness畅We find that argument no more persuasive in this context than previously and， in any event， wholly unresponsive to this issue畅 Finally， we note the evidence of Budge摧 s extensive sales since １９７４ under the mark畅 However， it is too well established for argument that a mark which includes deceptive matter is barred from registration and cannot acquire distinctiveness畅 Conclusion None of the facts found by the board have been shown to be clearly erroneous nor has the board erred as a matter of law畅 第三编 美 国 商 标法 ３ ８５ Accordingly， we affirm the board摧 s decision that Budge摧 s mark LOVEE LAMB for automobile seat covers made from synthetic fibers is deceptive within the meaning of １５ U．S．C畅 § １０５２ （ a） and is， thus， barred from registration畅 AFFIRME D畅 １畅商标注册委员会拒绝本案商标申请的理由是什么？ ２畅判定欺骗性标 记 有什 么标 准？ 将 这些 标准 适 用于 本 案有 何结果？ ３畅申请人认为其 在 广告 中已 经指 出是 仿 羊皮， 这一 事 实证 据对法院裁决产生什么影响？ 案 例 44 Confusing Sity to Prior Armks Milari Re： N．A．D．Inc． ７５４ F畅２d ９９６ C畅A畅Fed畅， １９８５ RICH， Circuit Judge． This appeal is from the February ２９， １９８４ decision of the United States Patent and T rademark Office （ PTO） Trademark Trial and Appeal Board （ board） ， ２２１ USPQ １１１５， affirming the PTO ３８６ 美国知识产权法 Trademark Attorney摧 s refusal to register a trademark by reason of １５ U畅S畅C畅 § １０５２ （ d ） ， section ２ （ d ） of the Trademark Act of １９４６畅We reverse畅 The mark sought to be registered is NARKOMED畅The goods named in the application are “ anesthesia machines for use in surgery畅” Application to register was filed May ７， １９８０ ， alleging first use April ３， １９７２畅The rejection is predicated on two prior registrations： （ １ ） Reg畅 No畅 ９８２， ６５７ ， April ２３ ， １９７４， or NARCO MEDICAL SERVICES for “ rental and leasing of hospital and surgical equipment and consultation services relating to the operation of such equipment畅” This service mark registration issued to Air唱 Shields， Inc畅and on April ２６， １９７８ was assigned to Narco Scientific Industries， Inc畅（ ２ ） Reg畅No畅１敞 ０３６敞 ６９５， March ３０， １９７６， of NARCO and design （ see board opinion for illustration） for a long list of specialized medical equipment including， as most relevant here， “ apparatus for administration of anesthesia畅” This registration issued to Narco Scientific Industries， Inc畅which changed its name to Narco Scientific， Inc畅The board opinion contains the full list of goods named in the registration畅 The examining attorney and the board were both of the view that registration must be refused under § ２ （ d） because， in their commonly held opinions， on which they had no doubts， “ confusion between the applicant摧 s mark and the cited registered marks is likely，” to quote from the board摧 s opinion畅Applicant摧 s arguments relying on differences in the marks， sophistication of purchasers of the equipment or services， and the high prices thereof were summarily dismissed as “ not persuasive畅” As to registration （ ２ ） ， supra， there is no question that identical goods are named by both 第三编 ３ ８７ 美 国 商 标法 applicant and registrant畅As to the services in registration （１） ， they are clearly closely related to applicant摧 s goods， all being in the medical equipment field畅 As this court and its predecessor， the Court of Customs and Patent Appeals， have often said， each likelihood唱 of唱 confusion trademark case must be determined on its own facts畅Beside that， however， the salient feature of this case is an argument， which has several times been fully dealt with in earlier cases， based on agreements between appellant and the owner of the prior registrations relied on to support the rejection containing a consent to the use and registration of NARKOMED by appellant畅 The agreements containing the consent to use and register came about as follows畅Applicant唱 appellant， N畅A畅D畅， Inc畅， which also does business as North American Drager， is a Pennsylvania corporation the majority of the stock of which is owned by Draegerwerk AG， of Luebeck， Federal Republic of Germany畅 Draegerwerk AG brought cancellation proceedings to cancel the two reference registrations herein， now both owned by Narco Scientific， Inc畅These cancellations were inter parties proceedings extending over several years in which competitors in a relatively restricted field were involved， the disputes involving many marks other than NARKOMED畅By written settlement agreements， Draegerwerk AG and N畅A畅D畅 undertook to abandon certain pending trademark registration applications and to discontinue the use of four different NARKO唱 marks， provision being made for a phasing唱 out period畅 Money changed hands畅In the course of it all， the other party， Narco Scientific Inc畅， owner of the two references， expressly acknowledged N畅A畅D畅摧 s right “ to the use and registration of the ３８８ 美国知识产权法 trademark NARKOMED．． ． for use in the sale of hospital and medical equipment畅” The first agreement so providing was in November １９７５ and the second one， reaffirming that provision， was in September １９７９畅While we are uninformed as to all the details of the disputes and negotiations， these competitors clearly thought out their commercial interests with care畅We think it highly unlikely that they would have deliberately created a situation in which the sources of their respective products would be confused by their customers畅 “ It can be safely taken as fundamental that reputable businessmen唱 users of valuable trademarks have no interest in causing public confusion畅” The Examining Attorney， while citing DuPont and saying that “ great weight is to be accorded consent agreements，” interpreted that case， erroneously， as allowing registration only “ where the goods of the respective parties were disparate， and the markets and trade channels were different畅” She held that “ Notwithstanding an agreement between the parties， the likelihood of confusion cannot be avoided畅” She concluded that “ refusal of registration is appropriate notwithstanding the consent agreement ” In affirming， the board refused to give any weight to the contractual consent to use and to register， saying： An appropriate consent agreement can tip the scales in favor of an applicant if there is doubt as to the likelihood of confusion畅In light of the fact that no doubt exists in the board摧 s mind and the parties have failed to specify how customer confusion can be avoided， we do not find that the consent agreement is an appropriate basis upon which to base registration畅 Consents come in different forms and under circumstances in 第三编 ３ ８９ 美 国 商 标法 infinite variety畅They are， however， but one factor to be taken into account with all of the other relevant circumstances bearing on the likelihood of confusion referred to in § ２ （ d ） ．The board spent much of its opinion analyzing and dissecting the marks in arriving at its opinion that they are “ confusingly similar，” and then finding it “ axiomatic that confusion is likely when confusingly similar marks are used to identify closely related goods and services畅” We have never found anything axiomatic about the application of § ２ （d） to fact situations， especially when consent agreements are involved畅All aspects of the fact situation must be appraised and the situation judged as a whole畅 In the present case， we start with the marks畅 They are not identical， as the marks have been in some other cases such as DuPont， United， and Loew摧 s畅Appellant摧 s mark is NARKOMED； the reference marks are NARCO and NARCO MEDICAL SERVICES畅An alert purchaser could readily distinguish them畅We turn next to the goods畅With reference to NARCO， there is identity； with reference to NARCO MEDICAL SERVICES there is not畅The most that can be said is that appellant摧 s anesthesia machines and Narco Scientific摧 s rental and leasing services are both in the medical field畅A most important factor， in our view， is the specific nature of appellant摧 s goods畅The record shows the machines to be elaborate， sizeable， complex pieces of technical apparatus of the kind which would be purchased only in consultation with an anesthesiologist or someone with equivalent technical knowledge畅In other words， only very sophisticated purchasers are here involved who would buy with great care and unquestionably know the source of the goods畅There would be no likelihood of confusing source merely by reason of the ３９０ 美国知识产权法 similarity between NARCO and NARKOMED畅Another factor is the cost of appellant摧 s apparatus畅 Though not of record， it would obviously be considerable唱 definitely not in the class of the cigarettes and smokers pipes involved in Loew摧 s畅 Taking all of the above facts into account， it is not at all surprising that the owner of the reference marks was willing to consent to the use and registration by N畅A畅D畅Inc畅of NARKOMED for “ hospital and medical equipment畅” This consent， moreover， having been given by a competitor well acquainted with the realities of the business suffices to persuade us， when taken together with all of the other facts， that the board and the Examining Attorney were simply wrong in their opinions that there would be a likelihood of confusion， and we so hold畅“ A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not畅” The decision of the board affirming the refusal to register is reversed畅 REVERSED畅 １畅在后使用或者 申请 注册 的商 标在 何 种条 件下 可以 继 续使 用， 哪怕和在先商标近似？ 需要满足什么要求？ ２畅双方达成的协议是否是绝对性的？ 第二 章 美国商标基本包括四种 商 标 种类 型： 商品商标、 服务商标、 集体商 标、 证明商标。 服务商标和商品商标的注册条件和方式相同， 所获得保护也 。 服务商标是 和商品商标相 某人的服务与他人服务区分开来 的标记。 为了基于服务商标的使用而提出注册申请， 或为了维持商标 的注册， 商标所有人应该： （１ ） 在宣 手 册上、 广 告或 宣 资 上或 者 在 销售 的 服务 上使用该商标； （２ ） 在商贸 中使用该服务。 所 中使用， 一种是在州 在商贸 间使用， 另一种就是 在美国与其他国家的涉外贸易中使用。 通常情况下， 申请人会基 于在贸易 提供在贸易 中对服务商标的将要使用提出申请， 然而却不能够 中 确 切使 用 的 证 据。 因 此， 申 请 就 只 能 被迫 放 弃。 基于即将使用的商 标提 出申 请很容 易， 但获 准 注册 却很 难。 有时， 即使申请人是基 于商标 在涉 外贸 易中的 使用 而提 出申 请， 在证明商标使用时， 申请人也只需要提供商标在美国或是在州 贸易中的使用证明。 集体商标既可以是服务商标， 也可以是商品商标。 集体商标 是公 、 协会或者其他组织的成员所使用的商标。 而证明商标则 是证明其他人所提供的商品或者服务 有某种特性的标记， 例如 地理来源， 商品质量等等。 由于证明商标的所有人为他人商品或 者服务设定了某些特定的标准， 因此， 商标法对于证明商标所有 ３９２ 美国知识产权法 人规定了一些必须遵守的规则。 案 例 45 Re： Advertising ＆ Marketing Developing， Inc． BACKGROUND A．Nature of the Case． A ＆ M is in the business of providing sales promotion services by creating and licensing sales promotion campaigns畅 Sales promotion campaigns are used by various types of merchants， such as grocery stores， gas stations， banks， and automobile dealers， for the purpose of increasing customer traffic and sales畅 A ＆ M created the campaign known as THE NOW GENERATION or NOW GENERATION and licensed the campaign to banks for the purpose of advertising the banks摧financial services， including NOW accounts， and to automobile dealers for the purpose of advertising automobiles畅（ A NOW account is a checking account that earns interest畅） The license entitles the banks or automobile dealers to use THE NOW GENERATION as a mark for financial services or automobiles畅 The NOW GENERATION licenses are individually tailored to include the right to use selected physical components from a total of ５ television commercials， ５１ radio commercials， ３０ newspaper advertisements， a musical theme， direct mail advertising materials， 第三编 ３ ９３ 美 国 商 标法 point of sale materials， and other materials畅A ＆ M provides services to its licensees including advice as to which components to select， how to use and benefit from the advertising， and how the campaign could assist in the merchandising of banking services or automobiles to the public畅 A ＆ M sought to register THE NOW GENERATION as a service mark for “PROMOTING THE SALE OF GOODS AND ／ OR SERVICES OF AUTOMOBILE DEALERS， FINANCIAL INSTITUTIONS AND RETAILERS THROUGH THE DISTRIBUTION OF PRINTED PROMOTIONAL MATERIALS AND BY RENDERING MERCHA唱 NDISING AND SALES PROMOTION ADVICE” （hereinafter referred to as advertising or promotional services ）． The board affirmed the examiner摧 s refusal to register the mark， finding that the mark had not been used for A ＆ M摧 s promotional services， but only for the banks摧 financial services畅（ In the board decision presently on appeal， the board focused on the bank licensees and not on the automobile dealer licensees畅） The board does not question that A ＆ M provides promotional “ services” as opposed to “ goods畅” The board also does not suggest that there is any possibility of confusion or any difficulty in distinguishing between A ＆ M摧 s use of THE NOW GENERATION as a mark for promotional services to banks， on one hand， and the banks摧use of the same mark for financial services to individuals， on the other畅The question is whether， in fact， A ＆ M has used THE NOW GENERATION as a mark for its promotional services畅 SERVICE MARK REGISTRATION FOR ADVERTISING OR PROMOTIONAL SERVICES Section ３ of the Lanham Act provides for the registration of ３９４ 美国知识产权法 service marks畅Section ４５ of the Lanham Act defines “ service mark” as “ a mark used in the sale or advertising of services to identify and distinguish the services of one person， including a unique service， from the services of others and to indicate the source of the services， even if that source is unknown畅” The Lanham Act， as amended， does not define “ services，” nor does the legislative history provide such a definition畅However， our predecessor court stated that the term “ services ” was intended to have broad scope， reasoning that “ no attempt was made to define ‘ services’ simply because of the plethora of services that the human mind is capable of conceiving畅” The board has held that there is “ no reason why a particular class of service” should be excluded from service mark registration， as long as the statutory requirements for registration are met畅Each application for registration of a mark must be separately evaluated with reference to the manner in which the mark has been used in the specimens of record畅 In In re Goodwill Advertising Co畅and in In re Universal Press Syndicate， the board has allowed registration of service marks for advertising or promotional services畅In each case， the board found that the advertising services were sufficiently separate from the subject of the advertising， and that the mark had been used to identify the advertising services themselves畅 However， in Admark and in In re Local Trademarks， Inc畅， the board refused registration of service marks for advertising or promotional services畅 In each of the latter two cases， the board found that the marks had not been used to identify advertising services， but only to identify the subject of the advertising畅 In 第三编 美 国 商 标法 ３ ９５ Admark and Local Trademarks， the board went beyond the issues presented in those cases to make statements which would appear to severely curtail the availability of service mark registration for advertising services畅 At this point， it will be useful to discuss certain aspects of service marks as they relate to advertising services畅 The distinguishing characteristic of advertising services is that they are associated with the subject of the advertising， whether that subject is goods or services畅However ， service mark registration for advertising services must be based on use of the mark to identify the advertising services themselves畅 A畅Advertising Services Must Be Sufficiently Separate from the Subject of the Advertising畅 In certain cases， the board has refused service mark registration when the advertising services are not “ sufficiently separate” from the subject of the advertising畅Thus， in In re Radio Corp畅of America， the CCPA affirmed the board摧 s decision refusing service mark registration of the slogan “ The Music You Want When You Want It，” where the slogan was used only to advertise the applicant摧 s own goods， i畅e畅， records畅 On the other hand， as the board stated in In re Heavenly Creations， Inc畅， “ the statute makes no distinction between services on the basis of primary， incidental or ancillary畅” In Heavenly Creations， the board allowed registration of a service mark for the promotion of wigs and hair pieces， where the promotion included demonstrations of hair pieces generally， such that the information and techniques conveyed would be usable with any type or brand of hair piece畅The same mark had also been registered as a trademark ３９６ 美国知识产权法 for hair pieces畅The board was “ persuaded that applicant is rendering a service over and above that normally involved in promoting the sale of its goods畅” It may be helpful to think of a “ service，” defined in In re Canadian Pacific， Ltd畅， as “ the performance of labor for the benefit of another畅” In the present case， A ＆ M is in the business of providing advertising services for the benefit of another， i畅e畅， for the benefit of banks and automobile dealers畅 A ＆ M摧 s sale of advertising services to banks and automobile dealers is a wholly separate transaction from the banks摧and automobile dealers摧sale of financial services or automobiles to individuals畅 Here， the board correctly found that A ＆ M摧 s advertising services are sufficiently separate from the subject of the advertising， i畅e畅， financial services and automobiles畅 B畅Mark Must Be Used T o Identify Advertising Services， Not Merely To Identify Subject of the Advertising畅 It is not enough for the applicant to be a provider of services； the applicant also must have used the mark to identify the named services for which registration is sought畅 In In re Universal Oil Products Co畅， the CCPA affirmed the board摧 s refusal to register PACOL and PENEX as marks for engineering services， even though the applicant was a provider of such services， because the marks had been used only to identify certain processes and not to identify the engineering services for which registration was sought畅The CCPA stated that the applicant had failed to show a “ direct association” between the mark and the services named in the application畅The “ direct association ” test does not create an additional or more stringent requirement for registration； it is implicit in the statutory 第三编 美 国 商 标法 ３ ９７ definition of “ a mark used 倡 倡 倡 to identify and distinguish the services of one person 倡 倡 倡 from the services of others and to indicate the source of the services畅” In Admark， the board refused registration of “ THE ROAD AUTHORITY” as a mark for advertising services， because the mark had been used only to identify retail tire store services畅The board went on to make the following sweeping statement： The mark or slogan that is the focus of an advertising campaign for a client摧 s goods or services cannot be said to function as a service mark for the licensor摧 s唱 applicant摧 s唱 advertising agency services畅 In the present case， the examiner should not have relied on the statement made in Admark to refuse registration畅 However， on appeal to the board， the board correctly stated that A ＆ M would be entitled to registration of THE NOW GENERATION as a mark for advertising services if A ＆ M had actually used that mark to identify its advertising services畅The board refused service mark registration based on its finding that A ＆ M had not used THE NOW GENERATION as a mark for its advertising services畅 WHETHER THE BOARD CLEARLY ERRED IN FINDING A ＆ M DID NOT USE THE MARK FOR ADVERTISING SERVICES Whether a mark has been used to identify a particular type of service is a question of fact reviewable under the clearly erroneous standard畅 This court reviews the board摧 s findings for clear error based on the evidence of record， including the specimens of use of the mark and the affidavits of A ＆ M摧 s president and of the purchasers of A ＆ M摧 s services畅 On this record， the board clearly erred in finding that A ＆ M had not used THE NOW GENERATION as a mark for its ３９８ 美国知识产权法 promotional services畅 A ＆ M （ here， its predecessor in interest） submitted a letterhead specimen naming itself as the “ creators， producers and suppliers of THE NOW GENERATION promotion services and specialized advertising sales campaigns for automobile dealers， financial institutions and retailers畅” （ Emphasis supplied畅） This letterhead was actually used in correspondence with financial institutions and automobile dealers regarding A ＆ M摧 s promotional services畅It is difficult to imagine how A ＆ M could have made a clearer use of the mark to identify its promotional services畅However， if any doubt remained， on remand A ＆ M submitted postcard and magazine advertising specimens to the same effect， as well as affidavits from purchasers of A ＆ M摧 s services stating that they considered THE NOW GENERATION to identify A ＆ M摧 s promotional services畅 The board has equated the messenger with the message， as a result of which the messenger has been unjustly shot down畅The board majority selectively focused only on those aspects of the evidence which showed the banks摧use of THE NOW GENERATION to identify the banks摧financial services畅This analysis was unavailing， since the board conceded that there was no difficulty in distinguishing between the two different uses of the same mark， and that the mark would be registrable for promotional services if A ＆ M showed that it had used the mark to identify such services畅 CONCLUSION Service mark registration is available for advertising or promotional services under the same standard as for other services， i畅e畅， the mark must have been “ used in the sale or advertising of services to identify and distinguish the services of one person， 第三编 美 国 商 标法 ３ ９９ including a unique service， from the services of others and to indicate the source of the services， even if that source is unknown畅” Cases involving advertising services may present factual considerations including whether the services are “ sufficiently separate ” from the subject of the advertising， and whether the mark has been used to identify the advertising services themselves畅 Here， the board clearly erred in finding that A ＆ M had not used THE NOW GENERATION to identify its promotional services； hence， the board摧 s decision refusing registration is reversed畅 REVERSED畅 １畅何谓服务标记？ ２畅商标法对服务标记的注册有何特殊要求？ 案例 46 Midwest Plastic Fabricators， Inc．v． Underwriters Laboratories Inc． ９０６ F畅 ２d １５６８ C畅A畅Fed畅， １９９０ MICHEL， Circuit Judge． Midwest Plastic Fabricators， Inc畅 （ Midwest ） appeals the ４００ 美国知识产权法 decision of the United States Patent and Trademark Office， Trademark Trial and Appeal Board （ Board ）， denying Midwest摧 s petition to cancel two certification mark registrations issued to Underwriters Laboratories Inc畅 （ UL ）． Midwest Plastic Fabricators， Inc畅 v畅 Underwriters Laboratories Inc畅， １２ USPQ２d １２６７ （ TTAB １９８９ ）． Because the Board摧 s findings that UL did not misuse and did control use of its certification marks are not clearly erroneous， we affirm畅 BACKGROUND UL， a corporation that promulgates and certifies compliance with safety standards for thousands of consumer and other products， is the owner and federal registrant of the two certification marks at issue in this appeal畅 See Joint Appendix at １３ － １５， Midwest Plastic Fabricators， Inc畅v畅Underwriters Laboratories Inc畅， No畅９０ －１０４３ （ Fed畅Cir畅filed Mar畅９， １９９０） Each registration states， in part， that the certification is used by persons authorized by UL to certify that representative samplings of the goods conform to the safety standards or requirements established by UL畅A manufacturer that wishes to use the UL marks on its products to indicate compliance with UL safety standards must first submit samples to UL for testing and evaluation畅 Once those samples are determined to comply with UL standards， the products become eligible for listing with UL畅 Usually the manufacturer will enter into a listing and follow唱 up service agreement with UL畅 This agreement provides， inter alia， that the manufacturer order UL marks through ［UL］ from an authorized printer； that no UL mark shall be used on products not in compliance with ［ UL摧 s］ requirements； that the manufacturer agrees that it will ensure that the products bearing the UL mark are in compliance with ［ UL摧 s］ 第三编 美 国 商 标法 ４ ０１ requirements； that a testing and inspection program will be maintained by the manufacturer to assure continued compliance．． ．； that access to ［ UL摧 s］ inspectors shall be allowed together with providing adequate facilities for the conducting of product testing and that any tests which indicate noncompliance with ［ UL摧 s ］ requirements shall result in the manufacturer摧 s being required to either correct the problem or remove the UL mark from the noncomplying products畅 Midwest is a manufacturer and seller of polyvinyl chloride （ PVC） fittings and elbows for use with PVC conduit which encases electrical wiring畅The company entered into a listing and follow唱 up service agreement with UL which provides， in part， that Midwest “ agrees that his use of the Listing Mark constitutes his declaration that the products are Listed by ［ UL］ and have been made in compliance with the requirements of ［ UL ］ 畅” Joint App畅at １３７８ （ emphasis added） ． Midwest now seeks reversal of the Board摧 s denial of its petition to cancel UL摧 s registrations on the same two bases it presented to the Board畅First， Midwest alleged that UL permits use of the certification marks for purposes other than certification， in violation of １５ U畅S畅C畅 § １０６４ （ e） （３ ） （１９８２）．According to Midwest， UL摧 s president testified that application of UL摧 s mark represents not UL摧 s， but merely the manufacturer摧 s declaration that the products meet UL standards畅 Midwest argued that the failure of UL itself to certify that the products carrying the UL mark meet UL standards demonstrates that UL permits use of the marks for purposes other than certification畅 As the second basis for cancellation， Midwest charged UL fails to control the use of its marks畅Specifically， Midwest alleged： （１ ） certain PVC elbows carrying the UL marks failed impact tests ４０２ 美国知识产权法 performed by its expert， Professor Charles E畅 Rogers， of Case Western Reserve University； and （２） certain conduit pipe manufactured by a competitor of Midwest， National Pipe Company （ National） ， carried counterfeit UL marks畅If UL fails to control its marks， the registrations are subject to cancellation under １５ U畅S畅C畅 § １０６４ （ e） （ １） （１９８２ ）．Alternatively， Midwest argued to the Board that as UL fails to control use of the marks on PVC conduit， the registrations should be cancelled at least as to such conduit畅UL controverted these allegations and asserted that Midwest摧 s cancellation petition was barred by the doctrine of licensee estoppel畅 ISSUE Whether either the Board摧 s fact finding that UL does not use the marks other than for certification or that UL does control use of its marks is clearly erroneous畅 OPINION I．Use of the Marks for Purposes Other Than to Certify We have jurisdiction over this appeal under ２８ U畅S畅C畅 § １２９５ （ a） （４） （B） （１９８８）． Although our court has not previously addressed either the burden or the standard of proof in cancellation proceedings for certification mark registrations， we discern no reason to make them different than for trademark registration cancellations畅 A certification mark registration may be cancelled if the mark is not used exclusively as a certification mark畅１５ U畅S畅C畅 § １０６４ （e） （３）．For example， if a certification mark摧 s owner also allowed the mark to be used as a trademark， there would be a basis for cancellation of the registration畅 Midwest argues that UL摧 s registrations must be cancelled because 第三编 美 国 商 标法 ４ ０３ the UL certification marks are not UL摧 s own declarations to consumers that the marked products comply with UL standards， but instead are the manufacturer摧 s declarations畅Midwest asserts the failure of UL itself to make that declaration is evidence that UL “permits the use of the certification mark for purposes other than to certify” and therefore the registrations must be cancelled畅 There is an important difference， however， between the mark摧 s use and the user畅 That others test products and apply UL摧 s certification marks simply is not probative that the marks are used for other than certification畅 Certainly， on this record， there is no evidence that these certification marks are used， by anyone， as trademarks or service marks畅 Instead， Midwest merely complains about who applies the mark to the product畅Midwest in effect argues that third party application of a certification mark constitutes per se misuse唱 use for a purpose other than certification畅But Midwest offers no authority to support such a proposition畅 The statute， however， plainly does not require that， as the registrant， UL itself must test the products and declare to the public that items carrying UL marks meet UL standards畅It merely authorizes cancellation of a registration if the registrant allows use of the mark for purposes other than certification畅In addition， the general practice， in accord with the statute， allows for a third party to apply the certification mark畅 Thus， both registrations at issue here include a provision that the certification marks may be used by “persons authorized by ［UL］” to indicate that “ representative samplings ” of the products conform to safety standards established by UL畅 See Joint App畅 at １３， １５ （ registrations） ．The registrations clearly state what the marks do and ４０４ 美国知识产权法 do not represent to the public畅 The registrations certainly do not require UL to represent that UL itself tests the items畅 UL agrees that UL marks， when applied by Midwest to Midwest摧 s products， are Midwest摧 s declaration of compliance with UL standards畅The Board concluded that UL摧 s use of the UL mark as a manufacturer摧 s declaration that the marked product complies with UL standards is “ a reasonable one designed to reflect the realities of the limitations involved in inspecting and certifying a large number of different products畅We do not find that such a statement in any way constitutes a ground for cancelling the certification marks． ．．” We cannot disagree畅 We review findings of fact made by the Board to determine whether they are clearly erroneous畅Cerveceria， ８９２ F畅２d at １０２４ n畅 ３， １３ USPQ ２d at １３１０ n畅３； Stock Pot Restaurant， Inc畅v畅Stockpot， Inc畅， ７３７ F畅２d １５７６， １５７８ －７９， ２２２ USPQ ６６５ ， ６６６ －６７ （ Fed畅Cir畅 １９８４） ．Midwest presented no evidence to the Board that UL allowed use of its marks for purposes other than to certify that representative samplings of a product comply with UL standards畅 The Board摧 s finding that UL does not use the mark for purposes other than certification thus cannot be clearly erroneous畅The Board therefore correctly decided that section １０６４ （ e） （ ３） 摧 s basis for cancelling UL摧 s registrations has not been established畅 II．Failure to Control Use of the Marks Midwest also asserts UL does not control the use of the UL marks as required under １５ U畅S畅C畅 § １０６４ （e） （１） ， and cancell唱 ation is thus necessary畅Section １０６４ （e） （１） provides for cancellation if the certification mark registrant “ does not control， or is not able legitimately to exercise control over， the use of such mark畅” 第三编 ４ ０５ 美 国 商 标法 The purpose of requiring a certification mark registrant to control use of its mark is the same as for a trademark registrant： to protect the public from being misled畅In the case of a certification mark registrant， the risk of misleading the public may be even greater because a certification mark registration sets forth specific representations about the manufacture and characteristics of the goods to which the mark is applied畅 As the purpose of the control requirement is to protect the public， the requirement places an affirmative obligation on the certification mark owner to monitor the activities of those who use the mark畅 To obtain cancellation registrations， Midwest of the has the burden UL certification mark to demonstrate by a preponderance of the evidence that UL failed to exercise control over use of its marks畅The statute， however， does not define “ control” or otherwise indicate the degree of control that it requires畅Clearly， the statutory requirement cannot mean absolute control， because it would be impracticable， if not impossible， to satisfy畅The Board stated： “ The specific degree of control necessary in determining whether or not a certification mark should be cancelled depends， of course， on the particular facts presented in each case畅” Midwest， １２ USPQ２d at １２７３畅While interpretation of the statutory term “ control ” is a question of law which we review de novo， the Board explicated a rule of reasonableness which， because reasonableness cannot be gauged by some abstract standard， will vary depending on the particular facts畅The “ control” requirement of the statute means the mark owner must take reasonable steps， under all the circumstances of the case， to prevent the public from being misled畅 This standard for demonstrating that a registrant has exercised ４０６ 美国知识产权法 control over the use of its marks is entirely consistent with the precedent of this court， which speaks in terms of “adequate control畅” The Board found that UL has “ a vast network of inspectors making hundreds of thousands of inspections of thousands of different products across the country ” and that UL conducts comprehensive follow唱 up programs to ensure compliance with UL standards畅Midwest， １２ USPQ２d at １２７３畅The Board also stated that UL demonstrated “ considerable diligence in controlling the use of its marks； that while the inspection and follow唱 up procedures are not １００％ accurate or foolproof， we know of no such requirement．． ．” Midwest relies upon two types of evidence to challenge the Board finding on control畅First， it relies on the results of impact tests performed on certain conduit and elbows carrying the UL mark畅The Board found the tests were not “ shown to be reliable and are entitled to very little， if any， probative value畅” We cannot overturn that finding as clearly erroneous because Midwest摧 s testing of PVC conduit and elbows did not account for the age of the elbows tested or their exposure to sunlight， although it is undisputed that age and sunlight make PVC conduit brittle畅 Also， impact tests were performed on PVC elbows and Midwest concedes “ that the ［ UL ］ standards for elbows do not require impact tests畅” T he Board， therefore， appropriately discounted the impact tests畅 The second type of evidence Midwest employs to demonstrate UL摧 s failure to control use of its marks is the proven use of counterfeit UL marks on certain conduit manufactured by National， a competitor畅 The Board concluded that this limited counterfeiting problem was not sufficient to cancel UL摧 s registrations and that UL exercised control over subsequent use of its marks by this company， 第三编 ４ ０７ 美 国 商 标法 based on findings about UL摧 s responsiveness and the stringency of its corrective action畅It included inspections being done solely by UL personnel and inspection of not just a “ representative sampling，” all that is required by the registrations， but of １００％ of the conduit畅 These findings have not been shown to be clearly erroneous畅 Because Midwest has not shown that the findings supporting the reasonableness of UL摧 s control are clearly erroneous， we must sustain the Board摧 s determination that UL摧 s control avoids cancellation of its registrations in these proceedings畅 CONCLUSION We hold Midwest has failed to prove either asserted basis for cancelling UL摧 s registrations畅We therefore need not， and do not， reach the remaining issues： Whether a certification mark registration may be partially cancelled for failure to control use of the mark on a single class of goods； and whether the doctrine of licensee estoppel bars Midwest摧 s petition for cancellation畅Finally， UL摧 s request for sanctions under Rule ３８ of the Federal Rules of Appellate Procedure on the ground of a frivolous appeal is denied畅The decision of the Board denying cancellation is AFFIRME D畅 １畅本案要解决的主要争议是什么？ ２畅本案中塑料厂 的 主要 主张 是什 么？ 商 标复 审 委员 会 对此 的意见是什么？ ３畅“ 法定的控制” 和 “ 绝对的控制” 之间是什么关系？ 附录 1 美国 版 权 法 主 要立 法 颁布时间表 １７９０ 年 枟１７９０ 年版权法枠 （ 美国第一部版权法） １９０９ 年 枟１９０９ 年版权法枠 （ 美国第二部版权法） １９７６ 年 枟１９７６ 年版权法枠 （ 美 国第 三部版 权法， 现 行生 效的版权法） １９８９ 年 枟 枙 伯尔尼公约枛 实施法枠 １９９０ 年 枟建筑作品版权保护法枠 ； 枟 视觉艺术家权利法枠 １９９８ 年 枟数字化时代版权法枠 附录 2 197 6 年 美 国 版权法节选 CHAPTER 1 SUBJECT MATTER AND SCOPE OF COPYRIGHT § 101．Definitions Except as otherwise provided in this title， as used in this title， the following terms and their variant forms mean the following： An “anonymous work” is a work on the copies or phonorecords of which no natural person is identified as author畅 An “ architectural work” is the design of a building as embodied in any tangible medium of expression， including a building， architectural plans， or drawings畅The work includes the overall form as well as the arrangement and composition of spaces and elements in the design， but does not include individual standard features畅 “ Audiovisual works ” are works that consist of a series of related images which are intrinsically intended to be shown by the use of machines， or devices such as projectors， viewers， or electronic equipment， together with accompanying sounds， if any， regardless of the nature of the material objects， such as films or tapes， in which the works are embodied畅 The “ Berne Convention” is 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畅 ４１０ 美国知识产权法 The “ best edition” of a work is the edition， published in the United States at any time before the date of deposit， that the Library of Congress determines to be most suitable for its purposes畅 A person摧 s “ children” are that person摧 s immediate offspring， whether legitimate or not， and any children legally adopted by that person畅 A “ collective work ” is a work， such as a periodical issue， anthology， or encyclopedia， in which a number of contributions， constituting separate and independent works in themselves， are assembled into a collective whole畅 A “ compilation ” is a work formed by the collection and assembling of preexisting materials or of data that are selected， coordinated， or arranged in such a way that the resulting work as a whole constitutes an original work of authorship畅 The term “ compilation” includes collective works畅 A “ computer program” is a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result畅 “ Copies ” are 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畅The term “ copies ” includes the material object， other than a phonorecord， in which the work is first fixed畅 A “ Copyright Royalty Judge ” is a Copyright Royalty Judge appointed under section ８０２ of this title， and includes any individual serving as an interim Copyright Royalty Judge under such section畅 附 ２ １９７６ 年 美 国 版 权法 节 ４ １１ “ Copyright owner” ， with respect to any one of the exclusive rights comprised in a copyright， refers to the owner of that particular right畅 A work is “ created” when it is fixed in a copy or phonorecord for the first time； where a work is prepared over a period of time， the portion of it that has been fixed at any particular time constitutes the work as of that time， and where the work has been prepared in different versions， each version constitutes a separate work畅 A “ derivative work ” is a work based upon one or more preexisting works， such as a translation， musical arrangement， dramatization， fictionalization， motion picture version， sound recording， art reproduction， abridgment， condensation， or any other form in which a work may be recast， transformed， or adapted畅A work consisting of editorial revisions， annotations， elaborations， or other modifications which， as a whole， represent an original work of authorship， is a “ derivative work” 畅 A “ device” ， “ machine” ， or “ process” is one now known or later developed畅 A “ digital transmission” is a transmission in whole or in part in a digital or other non唱 analog format畅 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 audiovis？ ual work， to show individual images nonsequentially畅 An “ establishment” is a store， shop， or any similar place of business open to the general public for the primary purpose of selling goods or services in which the majority of the gross square feet of space that is nonresidential is used for that purpose， and in which ４１２ 美国知识产权法 nondramatic musical works are performed publicly畅 A “ food service or drinking establishment” is a restaurant， inn， bar， tavern， or any other similar place of business in which the public or patrons assemble for the primary purpose of being served food or drink， in which the majority of the gross square feet of space that is nonresidential is used for that purpose， and in which nondramatic musical works are performed publicly畅 The term “ financial gain ” includes receipt， or expectation of receipt， of anything of value， including the receipt of other copyrighted works畅 A work is “ fixed” in a tangible medium of expression when its embodiment in a copy or phonorecord， by or under the authority of the author， is sufficiently permanent or stable to permit it to be perceived， reproduced， or otherwise communicated for a period of more than transitory duration畅A work consisting of sounds， images， or both， that are being transmitted， is “ fixed ” for purposes of this title if a fixation of the work is being made simultaneously with its transmission畅 The “ Geneva Phonograms Convention” is the Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms， concluded at Geneva， Switzerland， on October ２９ ， １９７１畅 The “ gross square feet of space” of an establishment means the entire interior space of that establishment， and any adjoining outdoor space used to serve patrons， whether on a seasonal basis or otherwise畅 The terms “ including ” and “ such as” are illustrative and not limitative畅 附 ２ １９７６ 年 美 国 版 权法 节 ４ １３ An “ international agreement” is — （１ ） the Universal Copyright Convention； （２ ） the Geneva Phonograms Convention； （３ ） the Berne Convention； （４ ） the WTO Agreement； （５ ） the WIPO Copyright Treaty； （６ ） the WIPO Performances and Phonograms Treaty； and （７ ） any other copyright treaty to which the United States is a party畅 A “ joint work” is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole畅 “ Literary works ” are works， other than audiovisual works， expressed in words， numbers， or other verbal or numerical symbols or indicia， regardless of the nature of the material objects， such as books， periodicals， manuscripts， phonorecords， film， tapes， disks， or cards， in which they are embodied畅 “ Motion pictures” are audiovisual works consisting of a series of related images which， when shown in succession， impart an impression of motion， together with accompanying sounds， if any畅 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畅 A “ performing rights society” is an association， corporation， or other entity that licenses the public performance of nondramatic musical works on behalf of copyright owners of such works， such as ４１４ 美国知识产权法 the American Society of Composers， Authors and Publishers （ ASCAP）， Broadcast Music， Inc畅（ BMI） ， and SESAC， Inc畅 “ P honorecords ” are 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畅The term “ phonorecords ” includes the material object in which the sounds are first fixed畅 “ Pictorial， graphic， and sculptural works ” include two唱 dimensional and three唱 dimensional works of fine， graphic， and applied art， photographs， prints and art reproductions， maps， globes， charts， diagrams， models， and technical drawings， including architectural plans畅 Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned； the design of a useful article， as defined in this section， shall be considered a pictorial， graphic， or sculptural work only if ， and only to the extent that， such design incorporates pictorial， graphic， or sculptural features that can be identified separately from， and are capable of existing independently of， the utilitarian aspects of the article畅 For purposes of section ５１３， a “ proprietor ” is an individual， corporation， partnership， or other entity， as the case may be， that owns an establishment or a food service or drinking establishment， except that no owner or operator of a radio or television station licensed by the Federal Communications Commission， cable system or satellite carrier， cable or satellite carrier service or programmer， provider of online services or network access or the operator of 附 ２ １９７６ 年 美 国 版 权法 节 ４ １５ facilities therefor， telecommunications company， or any other such audio or audiovisual service or programmer now known or as may be developed in the future， commercial subscription music service， or owner or operator of any other transmission service， shall under any circumstances be deemed to be a proprietor畅 A “ pseudonymous work ” is a work on the copies or phonorecords of which the author is identified under a fictitious name畅 “ Publication” is the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership， or by rental， lease， or lending畅 The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution， public performance， or public display， constitutes publication畅A public performance or display of a work does not of itself constitute publication畅 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畅 “ Registration” ， for purposes of sections ２０５ （ c） （ ２ ）， ４０５， ４０６， ４１０ （ d） ， ４１１， ４１２， and ５０６ （ e） ， means a registration of a claim in the original or the renewed and extended term of copyright畅 ４１６ 美国知识产权法 “ Sound recordings” are works that result from the fixation of a series of musical， spoken， or other sounds， but not including the sounds accompanying a motion picture or other audiovisual work， regardless of the nature of the material objects， such as disks， tapes， or other phonorecords， in which they are embodied畅 “ State ” includes the District of Columbia and the Commonwealth of Puerto Rico， and any territories to which this title is made applicable by an Act of Congress畅 A “ transfer of copyright ownership ” is an assignment， mortgage， exclusive license， or any other conveyance， alienation， or hypothecation of a copyright or of any of the exclusive rights comprised in a copyright， whether or not it is limited in time or place of effect， but not including a nonexclusive license畅 A “ transmission program” is a body of material that， as an aggregate， has been produced for the sole purpose of transmission to the public in sequence and as a unit畅 To “ transmit” a performance or display is to communicate it by any device or process whereby images or sounds are received beyond the place from which they are sent畅 A “ treaty party” is a country or intergovernmental organization other than the United States that is a party to an international agreement畅 The “ United States ” ， when used in a geographical sense， comprises the several States， the District of Columbia and the Commonwealth of Puerto Rico， and the organized territories under the jurisdiction of the United States Government畅 For purposes of section ４１１， a work is a “ United States work” only if — 附 ２ １９７６ 年 美 国 版 权法 节 ４ １７ （ １ ） in the case of a published work， the work is first published — （ A） in the United States； （ B ） simultaneously in the United States and another treaty party or parties， whose law grants a term of copyright protection that is the same as or longer than the term provided in the United States； （ C） simultaneously in the United States and a foreign nation that is not a treaty party； or （ D） in a foreign nation that is not a treaty party， and all of the authors of the work are nationals， domiciliaries， or habitual residents of， or in the case of an audiovisual work legal entities with headquarters in， the United States； （２ ） in the case of an unpublished work， all the authors of the work are nationals， domiciliaries， or habitual residents of the United States， or ， in the case of an unpublished audiovisual work， all the authors are legal entities with headquarters in the United States； or （３ ） in the case of a pictorial， graphic， or sculptural work incorporated in a building or structure， the building or structure is located in the United States畅 A “ useful article ” is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information畅An article that is normally a part of a useful article is considered a “ useful article” 畅 The author摧 s “ widow” or “ widower” is the author摧 s surviving spouse under the law of the author摧 s domicile at the time of his or her death， whether or not the spouse has later remarried畅 The “ WIPO Copyright Treaty” is the WIP O Copyright Treaty concluded at Geneva， Switzerland， on December ２０， １９９６畅 ４１８ 美国知识产权法 The “ WIPO Performances and Phonograms Treaty ” is the WIPO Performances and Phonograms Treaty concluded at Geneva， Switzerland， on December ２０ ， １９９６畅 A “ work of visual art” is — （１ ） a painting， drawing， print， or sculpture， existing in a single copy， in a limited edition of ２００ copies or fewer that are signed and consecutively numbered by the author， or， in the case of a sculpture， in multiple cast， carved， or fabricated sculptures of ２００ or fewer that are consecutively numbered by the author and bear the signature or other identifying mark of the author； or （ ２） a still photographic image produced for exhibition purposes only， existing in a single copy that is signed by the author， or in a limited edition of ２００ copies or fewer that are signed and consecutively numbered by the author畅 A work of visual art does not include — （ A） （ i ） any poster， map， globe， chart， technical drawing， diagram， model， applied art， motion picture or other audiovisual work， book， magazine， newspaper ， periodical， data base， electronic information service， electronic publication， or similar publication； （ ii ） any merchandising item or advertising， promotional， descriptive， covering， or packaging material or container； （ iii） any portion or part of any item described in clause （i） or （ ii） ； （ B） any work made for hire； or （ C ） any work not subject to copyright protection under this title畅 附 ２ １９７６ 年 美 国 版 权法 节 ４ １９ A “ work of the United States Government” is a work prepared by an officer or employee of the United States Government as part of that person摧 s official duties畅 A “ work made for hire” is — （ １） a work prepared by an employee within the scope of his or her employment； or （ ２ ） a work specially ordered or commissioned for use as a contribution to a collective work， as a part of a motion picture or other audiovisual work， as a translation， as a supplementary work， as a compilation， as an instructional text， as a test， as answer material for a test， or as an atlas， if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire畅For the purpose of the foregoing sentence， a “ supplementary work ” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing， concluding， illustrating， explaining， revising， commenting upon， or assisting in the use of the other work， such as forewords， afterwords， pictorial illustrations， maps， charts， tables， editorial notes， musical arrangements， answer material for tests， bibliographies， appendixes， and indexes， and an “ instructional text” is a literary， pictorial， or graphic work prepared for publication and with the purpose of use in systematic instructional activities畅 In determining whether any work is eligible to be considered a work made for hire under paragraph （ ２ ） ， neither the amendment contained in section １０１１ （ d ） of the Intellectual Property and Communications Omnibus Reform Act of １９９９， as enacted by section １０００ （ a） （９） of Public Law １０６ – １１３， nor the deletion of the words added by that amendment — ４２０ 美国知识产权法 （ A） shall be considered or otherwise given any legal significance， or （ B） shall be interpreted to indicate congressional approval or disapproval of， or acquiescence in， any judicial determination， by the courts or the Copyright Office畅Paragraph （ ２ ） shall be interpreted as if both section ２ （ a） （１） of the Work Made For Hire and Copyright Corrections Act of ２０００ and section １０１１ （ d） of the Intellectual Property and Communications Omnibus Reform Act of １９９９， as enacted by section １０００ （ a） （９ ） of Public Law １０６ – １１３， were never enacted， and without regard to any inaction or awareness by the Congress at any time of any judicial determinations畅 The terms “ WTO Agreement” and “ WTO member country” have the meanings given those terms in paragraphs （９ ） and （ １０ ） ， respectively， of section ２ of the Uruguay Round Agreements Act畅 102．Subject matter of copyright： In general （ a） Copyright protection subsists， in accordance with this title， in original works of authorship fixed in any tangible medium of expression， now known or later developed， from which they can be perceived， reproduced， or otherwise communicated， either directly or with the aid of a machine or device畅Works of authorship include the following categories： （１ ） literary works； （２ ） musical works， including any accompanying words； （３ ） dramatic works， including any accompanying music； （４ ） pantomimes and choreographic works； （５ ） pictorial， graphic， and sculptural works； （６ ） motion pictures and other audiovisual works； 附 ２ １９７６ 年 美 国 版 权法 节 ４ ２１ （７ ） sound recordings； and （８ ） architectural works畅 （ b） In no case does copyright protection for an original work of authorship extend to any idea， procedure， process， system， method of operation， concept， principle， or discovery， regardless of the form in which it is described， explained， illustrated， or embodied in such work畅 § 103．Subject matter of copyright： Compilations and derivative works （ a） The subject matter of copyright as specified by section １０２ includes compilations and derivative works， but protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully畅 （ b） The copyright in a compilation or derivative work extends only to the material contributed by the author of such work， as distinguished from the preexisting material employed in the work， and does not imply any exclusive right in the preexisting material畅 The copyright in such work is independent of， and does not affect or enlarge the scope， duration， ownership， or subsistence of， any copyright protection in the preexisting material畅 § 104．Subject matter of copyright： National origin （ a ） Unpublished Works畅— The works specified by sections １０２ and １０３， while unpublished， are subject to protection under this title without regard to the nationality or domicile of the author畅 （ b） Published Works畅— The works specified by sections １０２ and １０３， when published， are subject to protection under this title if — ４２２ 美国知识产权法 （１ ） on the date of first publication， one or more of the authors is a national or domiciliary of the United States， or is a national， domiciliary ， or sovereign authority of a treaty party， or is a stateless person， wherever that person may be domiciled； or （２ ） the work is first published in the United States or in a foreign nation that， on the date of first publication， is a treaty party； or （ ３） the work is a sound recording that was first fixed in a treaty party； or （４ ） the work is a pictorial， graphic， or sculptural work that is incorporated in a building or other structure， or an architectural work that is embodied in a building and the building or structure is located in the United States or a treaty party； or （５ ） the work is first published by the United Nations or any of its specialized agencies， or by the Organization of American States； or （ ６ ） the work comes within the scope of a Presidential proclamation畅Whenever the President finds that a particular foreign nation extends， to works by authors who are nationals or domiciliaries of the United States or to works that are first published in the United States， copyright protection on substantially the same basis as that on which the foreign nation extends protection to works of its own nationals and domiciliaries and works first published in that nation， the President may by proclamation extend protection under this title to works of which one or more of the authors is， on the date of first publication， a national， domiciliary， or sovereign authority of that nation， or which was first published in that nation畅 The President may revise， suspend， or revoke any such proclamation 附 ２ １９７６ 年 美 国 版 权法 节 ４ ２３ or impose any conditions or limitations on protection under a proclamation畅 For purposes of paragraph （２） ， 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畅 （ c） Effect of Berne Convention畅— No right or interest in a work eligible for protection under this title may be claimed by virtue of， or in reliance upon， the provisions of the Berne Convention， or the adherence of the United States thereto畅 Any rights in a work eligible for protection under this title that derive from this title， other Federal or State statutes， or the common law， shall not be expanded or reduced by virtue of ， or in reliance upon， the provisions of the Berne Convention， or the adherence of the United States thereto畅 （ d ） Effect of Phonograms Treaties畅— Notwithstanding the provisions of subsection （ b） ， no works other than sound recordings shall be eligible for protection under this title solely by virtue of the adherence of the United States to the Geneva Phonograms Convention or the WIPO Performances and Phonograms Treaty畅 § 105．Subject matter of copyright： United States Government works Copyright protection under this title is not available for any work of the United States Government， but the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment， bequest， or otherwise畅 § 106．Exclusive rights in copyrighted works Subject to sections １０７ through １２２， the owner of copyright under this title has the exclusive rights to do and to authorize any of ４２４ 美国知识产权法 the following： （１） to reproduce the copyrighted work in copies or phonorecords； （ ２ ） to prepare derivative works based upon the copyrighted work； （ ３ ） to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership， or by rental， lease， or lending； （４） in the case of literary， musical， dramatic， and choreographic works， pantomimes， and motion pictures and other audiovisual works， to perform the copyrighted work publicly； （５） in the case of literary， musical， dramatic， and choreographic works， pantomimes， and pictorial， graphic， or sculptural works， including the individual images of a motion picture or other audiovisual work， to display the copyrighted work publicly； and （６ ） in the case of sound recordings， to perform the copyrighted work publicly by means of a digital audio transmission § 106A．Rights of certain authors to attribution and integrity （ a ） Rights of Attribution and Integrity畅— Subject to section １０７ and independent of the exclusive rights provided in section １０６， the author of a work of visual art — （１ ） shall have the right — （ A） to claim authorship of that work， and （ B） to prevent the use of his or her name as the author of any work of visual art which he or she did not create； （ ２） shall have the right to prevent the use of his or her name as the author of the work of visual art in the event of a distortion， 附 ２ １９７６ 年 美 国 版 权法 节 ４ ２５ mutilation， or other modification of the work which would be prejudicial to his or her honor or reputation； and （３ ） subject to the limitations set forth in section １１３ （ d） ， shall have the right — （ A） to prevent any intentional distortion， mutilation， or other modification of that work which would be prejudicial to his or her honor or reputation， and any intentional distortion， mutilation， or modification of that work is a violation of that right， and （ B） to prevent any destruction of a work of recognized stature， and any intentional or grossly negligent destruction of that work is a violation of that right畅 （ b） Scope and Exercise of Rights畅— Only the author of a work of visual art has the rights conferred by subsection （ a） in that work， whether or not the author is the copyright owner畅The authors of a joint work of visual art are coowners of the rights conferred by subsection （ a） in that work畅 （ c） Exceptions畅— （１ ） The modification of a work of visual art which is a result of the passage of time or the inherent nature of the materials is not a distortion， mutilation， or other modification described in subsection （ a） （３） （ A） ． （２ ） The modification of a work of visual art which is the result of conservation， or of the public presentation， including lighting and placement， of the work is not a destruction， distortion， mutilation， or other modification described in subsection （ a） （ ３ ） unless the modification is caused by gross negligence畅 （３ ） The rights described in paragraphs （ １ ） and （ ２ ） of subsection （ a ） shall not apply to any reproduction， depiction， ４２６ 美国知识产权法 portrayal， or other use of a work in， upon， or in any connection with any item described in subparagraph （ A ） or （ B ） of the definition of “ work of visual art” in section １０１， and any such reproduction， depiction， portrayal， or other use of a work is not a destruction， distortion， mutilation， or other modification described in paragraph （３ ） of subsection （ a） ． （ d） Duration of Rights畅— （１ ） With respect to works of visual art created on or after the effective date set forth in section ６１０ （ a ） of the Visual Artists Rights Act of １９９０ ， the rights conferred by subsection （ a ） shall endure for a term consisting of the life of the author畅 （２ ） With respect to works of visual art created before the effective date set forth in section ６１０ （ a ） of the Visual Artists Rights Act of １９９０， but title to which has not， as of such effective date， been transferred from the author， the rights conferred by subsection （ a ） shall be coextensive with， and shall expire at the same time as， the rights conferred by section １０６畅 （３ ） In the case of a joint work prepared by two or more authors， the rights conferred by subsection （ a ） shall endure for a term consisting of the life of the last surviving author畅 （４ ） All terms of the rights conferred by subsection （ a） run to the end of the calendar year in which they would otherwise expire畅 （ e） Transfer and Waiver畅— （ １ ） The rights conferred by subsection （ a ） may not be transferred， but those rights may be waived if the author expressly agrees to such waiver in a written instrument signed by the author畅 Such instrument shall specifically identify the work， and uses of that work， to which the waiver applies， and the waiver shall apply only 附 ２ １９７６ 年 美 国 版 权法 节 ４ ２７ to the work and uses so identified畅 In the case of a joint work prepared by two or more authors， a waiver of rights under this paragraph made by one such author waives such rights for all such authors畅 （２ ） Ownership of the rights conferred by subsection （ a） with respect to a work of visual art is distinct from ownership of any copy of that work， or of a copyright or any exclusive right under a copyright in that work畅Transfer of ownership of any copy of a work of visual art， or of a copyright or any exclusive right under a copyright， shall not constitute a waiver of the rights conferred by subsection （ a） ．Except as may otherwise be agreed by the author in a written instrument signed by the author， a waiver of the rights conferred by subsection （ a） with respect to a work of visual art shall not constitute a transfer of ownership of any copy of that work， or of ownership of a copyright or of any exclusive right under a copyright in that work畅 § 107．Limitations on exclusive rights： Fair use Notwithstanding the provisions of sections １０６ and １０６A， the fair use of a copyrighted work， including such use by reproduction in copies or phonorecords or by any other means specified by that section， for purposes such as criticism， comment， news reporting， teaching （ including multiple copies for classroom use） ， scholarship， or research， is not an infringement of copyright畅 In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include — （１ ） the purpose and character of the use， including whether such use is of a commercial nature or is for nonprofit educational purposes； ４２８ 美国知识产权法 （２ ） the nature of the copyrighted work； （ ３） the amount and substantiality of the portion used in relation to the copyrighted work as a whole； and （４ ） the effect of the use upon the potential market for or value of the copyrighted work畅 The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors CHAPTER 2 COPYRIGHT OWNERSHIP AND TRANSFER § 201．Ownership of copyright （ a） Initial Ownership畅— Copyright in a work protected under this title vests initially in the author or authors of the work畅The authors of a joint work are coowners of copyright in the work畅 （ b） Works Made for Hire畅— In the case of a work made for hire， the employer or other person for whom the work was prepared is considered the author for purposes of this title， and， unless the parties have expressly agreed otherwise in a written instrument signed by them， owns all of the rights comprised in the copyright畅 （ c ） Contributions to Collective Works畅— Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole， and vests initially in the author of the contribution畅In the absence of an express transfer of the copyright or of any rights under it， the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work， 附 ２ １９７６ 年 美 国 版 权法 节 ４ ２９ any revision of that collective work， and any later collective work in the same series畅 （ d） Transfer of Ownership畅— （１ ） The ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law， and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession畅 （ ２ ） Any of the exclusive rights comprised in a copyright， including any subdivision of any of the rights specified by section １０６， may be transferred as provided by clause （ １ ） and owned separately畅The owner of any particular exclusive right is entitled， to the extent of that right， to all of the protection and remedies accorded to the copyright owner by this title畅 （ e ） Involuntary Transfer畅— When an individual author摧 s ownership of a copyright， or of any of the exclusive rights under a copyright， has not previously been transferred voluntarily by that individual author， no action by any governmental body or other official or organization purporting to seize， expropriate， transfer， or exercise rights of ownership with respect to the copyright， or any of the exclusive rights under a copyright， shall be given effect under this title， except as provided under title １１畅 § 202．Ownership of copyright as distinct from ownership of material object Ownership of a copyright， or of any of the exclusive rights under a copyright， is distinct from ownership of any material object in which the work is embodied畅 Transfer of ownership of any material object， including the copy or phonorecord in which the work is first fixed， does not of itself convey any rights in the ４３０ 美国知识产权法 copyrighted work embodied in the object； nor， in the absence of an agreement， does transfer of ownership of a copyright or of any exclusive rights under a copyright convey property rights in any material object畅 § 203． Termination of transfers and licenses granted by the author （ a） Conditions for Termination畅— In the case of any work other than a work made for hire， the exclusive or nonexclusive grant of a transfer or license of copyright or of any right under a copyright， executed by the author on or after January １， １９７８， otherwise than by will， is subject to termination under the following conditions： （１） In the case of a grant executed by one author， termination of the grant may be effected by that author or， if the author is dead， by the person or persons who， under clause （２ ） of this subsection， own and are entitled to exercise a total of more than one唱 half of that author摧 s termination interest畅In the case of a grant executed by two or more authors of a joint work， termination of the grant may be effected by a majority of the authors who executed it； if any of such authors is dead， the termination interest of any such author may be exercised as a unit by the person or persons who， under clause （２） of this subsection， own and are entitled to exercise a total of more than one唱 half of that author摧 s interest畅 （２ ） Where an author is dead， his or her termination interest is owned， and may be exercised， as follows： （A） The widow or widower owns the author摧 s entire termination interest unless there are any surviving children or grandchildren of the author ， in which case the widow or widower owns one唱 half of the author摧 s interest畅 附 ２ １９７６ 年 美 国 版 权法 节 ４ ３１ （ B ） The author摧 s surviving children， and the surviving children of any dead child of the author， own the author摧 s entire termination interest unless there is a widow or widower， in which case the ownership of one唱 half of the author摧 s interest is divided among them畅 （ C） The rights of the author摧 s children and grandchildren are in all cases divided among them and exercised on a per stirpes basis according to the number of such author摧 s children represented； the share of the children of a dead child in a termination interest can be exercised only by the action of a majority of them畅 （ D ） In the event that the author摧 s widow or widower， children， and grandchildren are not living， the author摧 s executor， administrator， personal representative， or trustee shall own the author摧 s entire termination interest畅 （３ ） Termination of the grant may be effected at any time during a period of five years beginning at the end of thirty唱 five years from the date of execution of the grant； or， if the grant covers the right of publication of the work， the period begins at the end of thirty唱 five years from the date of publication of the work under the grant or at the end of forty years from the date of execution of the grant， whichever term ends earlier畅 （４ ） The termination shall be effected by serving an advance notice in writing， signed by the number and proportion of owners of termination interests required under clauses （ １ ） and （ ２ ） of this subsection， or by their duly authorized agents， upon the grantee or the grantee摧 s successor in title畅 （ A） T he notice shall state the effective date of the termination， which shall fall within the five唱 year period specified by clause （ ３） of this subsection， and the notice shall be served not less than two or ４３２ 美国知识产权法 more than ten years before that date畅A copy of the notice shall be recorded in the Copyright Office before the effective date of termination， as a condition to its taking effect畅 （ B） The notice shall comply， in form， content， and manner of service， with requirements that the Register of Copyrights shall prescribe by regulation畅 （５ ） Termination of the grant may be effected notwithstanding any agreement to the contrary， including an agreement to make a will or to make any future grant畅 （ b ） Effect of Termination畅— Upon the effective date of termination， all rights under this title that were covered by the terminated grants revert to the author， authors， and other persons owning termination interests under clauses （ １ ） and （ ２ ） of subsection （ a） ， including those owners who did not join in signing the notice of termination under clause （ ４ ） of subsection （ a ）， but with the following limitations： （１ ） A derivative work prepared under authority of the grant before its termination may continue to be utilized under the terms of the grant after its termination， but this privilege does not extend to the preparation after the termination of other derivative works based upon the copyrighted work covered by the terminated grant畅 （ ２） The future rights that will revert upon termination of the grant become vested on the date the notice of termination has been served as provided by clause （ ４ ） of subsection （ a ）．The rights vest in the author， authors， and other persons named in， and in the proportionate shares provided by， clauses （１） and （２） of subsection （a）． （３ ） S ubject to the provisions of clause （４） of this subsection， a further grant， or agreement to make a further grant， of any right 附 ２ １９７６ 年 美 国 版 权法 节 ４ ３３ covered by a terminated grant is valid only if it is signed by the same number and proportion of the owners， in whom the right has vested under clause （２） of this subsection， as are required to terminate the grant under clauses （ １ ） and （２ ） of subsection （ a） ．Such further grant or agreement is effective with respect to all of the persons in whom the right it covers has vested under clause （ ２ ） of this subsection， including those who did not join in signing it畅If any person dies after rights under a terminated grant have vested in him or her， that person摧 s legal representatives， legatees， or heirs at law represent him or her for purposes of this clause畅 （４ ） A further grant， or agreement to make a further grant， of any right covered by a terminated grant is valid only if it is made after the effective date of the termination畅 As an exception， however， an agreement for such a further grant may be made between the persons provided by clause （３ ） of this subsection and the original grantee or such grantee摧 s successor in title， after the notice of termination has been served as provided by clause （４ ） of subsection （ a） ． （ ５） Termination of a grant under this section affects only those rights covered by the grants that arise under this title， and in no way affects rights arising under any other Federal， State， or foreign laws畅 （６ ） Unless and until termination is effected under this section， the grant， if it does not provide otherwise， continues in effect for the term of copyright provided by this title畅 § 204．Execution of transfers of copyright ownership （ a） A transfer of copyright ownership， other than by operation of law， is not valid unless an instrument of conveyance， or a note or memorandum of the transfer， is in writing and signed by the owner ４３４ 美国知识产权法 of the rights conveyed or such owner摧 s duly authorized agent畅 （ b） A certificate of acknowledgement is not required for the validity of a transfer， but is prima facie evidence of the execution of the transfer if — （１ ） in the case of a transfer executed in the United States， the certificate is issued by a person authorized to administer oaths within the United States； or （２ ） in the case of a transfer executed in a foreign country， the certificate is issued by a diplomatic or consular officer of the United States ， or by a person authorized to administer oaths whose authority is proved by a certificate of such an officer畅 § 205．Recordation of transfers and other documents （ a ） Conditions for Recordation畅— Any transfer of copyright ownership or other document pertaining to a copyright may be recorded in the Copyright Office if the document filed for recordation bears the actual signature of the person who executed it， or if it is accompanied by a sworn or official certification that it is a true copy of the original， signed document畅 （ b） Certificate of Recordation畅— The Register of Copyrights shall， upon receipt of a document as provided by subsection （ a） and of the fee provided by section ７０８ ， record the document and return it with a certificate of recordation畅 （ c ） Recordation as Constructive Notice畅— Recordation of a document in the Copyright Office gives all persons constructive notice of the facts stated in the recorded document， but only if — （ １ ） the document， or material attached to it， specifically identifies the work to which it pertains so that， after the document is indexed by the Register of Copyrights， it would be revealed by a 附 ２ １９７６ 年 美 国 版 权法 节 ４ ３５ reasonable search under the title or registration number of the work； and （２ ） registration has been made for the work畅 （ d） Priority Between Conflicting Transfers畅— As between two conflicting transfers， the one executed first prevails if it is recorded， in the manner required to give constructive notice under subsection （ c） ， within one month after its execution in the United States or within two months after its execution outside the United States， or at any time before recordation in such manner of the later transfer畅 Otherwise the later transfer prevails if recorded first in such manner， and if taken in good faith， for valuable consideration or on the basis of a binding promise to pay royalties， and without notice of the earlier transfer畅 （ e ） Priority Between Conflicting Transfer of Ownership and Nonexclusive License畅— A nonexclusive license， whether recorded or not， prevails over a conflicting transfer of copyright ownership if the license is evidenced by a written instrument signed by the owner of the rights licensed or such owner摧 s duly authorized agent， and if — （１ ） the license was taken before execution of the transfer； or （ ２） the license was taken in good faith before recordation of the transfer and without notice of it畅 CHAPTER 3 DURATION OF COPYRIGHT § 301．Preemption with respect to other laws （ a） On and after January １， １９７８， all legal or equitable rights that are equivalent to any of the exclusive rights within the general ４３６ 美国知识产权法 scope of copyright as specified by section １０６ in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections １０２ and １０３， whether created before or after that date and whether published or unpublished， are governed exclusively by this title畅Thereafter， no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State畅 （ b） Nothing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to — （１ ） subject matter that does not come within the subject matter of copyright as specified by sections １０２ and １０３， including works of authorship not fixed in any tangible medium of expression； or （２ ） any cause of action arising from undertakings commenced before January １ ， １９７８ ； （３ ） activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by section １０６； or （４ ） State and local landmarks， historic preservation， zoning， or building codes， relating to architectural works protected under section １０２ （ a） （８ ） ． （ c） With respect to sound recordings fixed before February １５， １９７２， any rights or remedies under the common law or statutes of any State shall not be annulled or limited by this title until February １５， ２０６７畅T he preemptive provisions of subsection （ a） shall apply to any such rights and remedies pertaining to any cause of action arising from undertakings commenced on and after February １５， ２０６７畅 Notwithstanding the provisions of section ３０３， no sound recording fixed before February １５， １９７２， shall be subject to 附 ２ １９７６ 年 美 国 版 权法 节 ４ ３７ copyright under this title before， on， or after February １５， ２０６７畅 （ d） Nothing in this title annuls or limits any rights or remedies under any other Federal statute畅 （ e） The scope of Federal preemption under this section is not affected by the adherence of the United States to the Berne Convention or the satisfaction of obligations of the United States thereunder畅 （ f） （１ ） On or after the effective date set forth in section ６１０ （ a） of the Visual Artists Rights Act of １９９０， all legal or equitable rights that are equivalent to any of the rights conferred by section １０６A with respect to works of visual art to which the rights conferred by section １０６ A apply are governed exclusively by section １０６A and section １１３ （ d ） and the provisions of this title relating to such sections畅Thereafter， no person is entitled to any such right or equivalent right in any work of visual art under the common law or statutes of any State畅 （ ２） Nothing in paragraph （ １） annuls or limits any rights or remedies under the common law or statutes of any State with respect to — （ A） any cause of action from undertakings commenced before the effective date set forth in section ６１０ （ a ） of the Visual Artists Rights Act of １９９０； （ B） activities violating legal or equitable rights that are not equivalent to any of the rights conferred by section １０６A with respect to works of visual art； or （ C） activities violating legal or equitable rights which extend beyond the life of the author畅 ４３８ 美国知识产权法 § 302． Duration of copyright： Works created on or after January 1， 1978 （ a） In General畅— Copyright in a work created on or after January １ ， １９７８ ， subsists from its creation and， except as provided by the following subsections， endures for a term consisting of the life of the author and ７０ years after the author摧 s death畅 （ b） Joint Works畅— In the case of a joint work prepared by two or more authors who did not work for hire， the copyright endures for a term consisting of the life of the last surviving author and ７０ years after such last surviving author摧 s death畅 （ c ） Anonymous Works， Pseudonymous Works， and Works Made for Hire畅— In the case of an anonymous work， a pseudonymous work， or a work made for hire， the copyright endures for a term of ９５ years from the year of its first publication， or a term of １２０ years from the year of its creation， whichever expires first畅 If， before the end of such term， the identity of one or more of the authors of an anonymous or pseudonymous work is revealed in the records of a registration made for that work under subsections （ a） or （ d） of section ４０８， or in the records provided by this subsection， the copyright in the work endures for the term specified by subsection （ a） or （ b） ， based on the life of the author or authors whose identity has been revealed畅Any person having an interest in the copyright in an anonymous or pseudonymous work may at any time record， in records to be maintained by the Copyright Office for that purpose， a statement identifying one or more authors of the work； the statement shall also identify the person filing it， the nature of that person摧 s interest， the source of the information recorded， and the particular work affected， and shall comply in form and content 附 ２ １９７６ 年 美 国 版 权法 节 ４ ３９ with requirements that the Register of Copyrights shall prescribe by regulation畅 （ d ） Records Relating to Death of Authors畅— Any person having an interest in a copyright may at any time record in the Copyright Office a statement of the date of death of the author of the copyrighted work， or a statement that the author is still living on a particular date畅The statement shall identify the person filing it， the nature of that person摧 s interest， and the source of the information recorded， and shall comply in form and content with requirements that the Register of Copyrights shall prescribe by regulation畅 The Register shall maintain current records of information relating to the death of authors of copyrighted works， based on such recorded statements and， to the extent the Register considers practicable， on data contained in any of the records of the Copyright Office or in other reference sources畅 （ e） Presumption as to Author摧 s Death畅— After a period of ９５ years from the year of first publication of a work， or a period of １２０ years from the year of its creation， whichever expires first， any person who obtains from the Copyright Office a certified report that the records provided by subsection （ d） disclose nothing to indicate that the author of the work is living， or died less than ７０ years before， is entitled to the benefits of a presumption that the author has been dead for at least ７０ years畅Reliance in good faith upon this presumption shall be a complete defense to any action for infringement under this title畅 § 303．Duration of copyright： Works created but not published or copyrighted before January 1， 1978 （ a） Copyright in a work created before January １， １９７８ ， but ４４０ 美国知识产权法 not theretofore in the public domain or copyrighted， subsists from January １ ， １９７８ ， and endures for the term provided by section ３０２畅 In no case， however， shall the term of copyright in such a work expire before December ３１， ２００２ ； and， if the work is published on or before December ３１， ２００２， the term of copyright shall not expire before December ３１ ， ２０４７畅 （ b） The distribution before January １ ， １９７８， of a phonorecord shall not for any purpose constitute a publication of the musical work embodied therein畅 § 304．Duration of copyright： Subsisting copyrights （ a） Copyrights in Their First Term on January １， １９７８畅— （１ ） （ A） Any copyright， the first term of which is subsisting on January １， １９７８ ， shall endure for ２８ years from the date it was originally secured畅 （ B） In the case of — （ i） any posthumous work or of any periodical， cyclopedic， or other composite work upon which the copyright was originally secured by the proprietor thereof， or （ ii） any work copyrighted by a corporate body （ otherwise than as assignee or licensee of the individual author） or by an employer for whom such work is made for hire， the proprietor of such copyright shall be entitled to a renewal and extension of the copyright in such work for the further term of ６７ years畅 （ C ） In the case of any other copyrighted work， including a contribution by an individual author to a periodical or to a cyclopedic or other composite work — 附 ２ １９７６ 年 美 国 版 权法 节 ４ ４１ （ i） the author of such work， if the author is still living， （ ii ） the widow， widower， or children of the author ， if the author is not living， （ iii） the author摧 s executors， if such author ， widow， widower， or children are not living， or （ iv） the author摧 s next of kin， in the absence of a will of the author， shall be entitled to a renewal and extension of the copyright in such work for a further term of ６７ years畅 （２ ） （ A） At the expiration of the original term of copyright in a work specified in paragraph （ １ ） （ B ） of this subsection， the copyright shall endure for a renewed and extended further term of ６７ years， which — （ i） if an application to register a claim to such further term has been made to the Copyright Office within １ year before the expiration of the original term of copyright， and the claim is registered， shall vest， upon the beginning of such further term， in the proprietor of the copyright who is entitled to claim the renewal of copyright at the time the application is made； or （ ii） if no such application is made or the claim pursuant to such application is not registered， shall vest， upon the beginning of such further term， in the person or entity that was the proprietor of the copyright as of the last day of the original term of copyright畅 （ B ） At the expiration of the original term of copyright in a work specified in paragraph （ １ ） （ C ） of this subsection， the copyright shall endure for a renewed and extended further term of ６７ years， which — ４４２ 美国知识产权法 （ i） if an application to register a claim to such further term has been made to the Copyright Office within １ year before the expiration of the original term of copyright， and the claim is registered， shall vest， upon the beginning of such further term， in any person who is entitled under paragraph （１） （ C） to the renewal and extension of the copyright at the time the application is made； or （ ii） if no such application is made or the claim pursuant to such application is not registered， shall vest， upon the beginning of such further term， in any person entitled under paragraph （ １） （ C ） ， as of the last day of the original term of copyright， to the renewal and extension of the copyright畅 （３ ） （ A ） An application to register a claim to the renewed and extended term of copyright in a work may be made to the Copyright Office — （ i） within １ year before the expiration of the original term of copyright by any person entitled under paragraph （１） （ B） or （ C） to such further term of ６７ years； and （ ii） at any time during the renewed and extended term by any person in whom such further term vested， under paragraph （ ２ ） （ A） or （ B） ， or by any successor or assign of such person， if the application is made in the name of such person畅 （ B） Such an application is not a condition of the renewal and extension of the copyright in a work for a further term of ６７ years畅 （４ ） （ A） If an application to register a claim to the renewed and extended term of copyright in a work is not made within １ year before the expiration of the original term of copyright in a work， or 附 ２ １９７６ 年 美 国 版 权法 节 ４ ４３ if the claim pursuant to such application is not registered， then a derivative work prepared under authority of a grant of a transfer or license of the copyright that is made before the expiration of the original term of copyright may continue to be used under the terms of the grant during the renewed and extended term of copyright without infringing the copyright， except that such use does not extend to the preparation during such renewed and extended term of other derivative works based upon the copyrighted work covered by such grant畅 （ B） If an application to register a claim to the renewed and extended term of copyright in a work is made within １ year before its expiration， and the claim is registered， the certificate of such registration shall constitute prima facie evidence as to the validity of the copyright during its renewed and extended term and of the facts stated in the certificate畅The evidentiary weight to be accorded the certificates of a registration of a renewed and extended term of copyright made after the end of that １唱 year period shall be within the discretion of the court畅 （ b ） Copyrights in Their Renewal Term at the Time of the Effective Date of the Sonny Bono Copyright Term Extension Act畅— Any copyright still in its renewal term at the time that the Sonny Bono Copyright Term Extension Act becomes effective shall have a copyright term of ９５ years from the date copyright was originally secured畅 （ c） Termination of Transfers and Licenses Covering Extended Renewal Term畅— In the case of any copyright subsisting in either its first or renewal term on January １， １９７８ ， other than a copyright in a work made for hire， the exclusive or nonexclusive grant of a transfer ４４４ 美国知识产权法 or license of the renewal copyright or any right under it， executed before January １， １９７８， by any of the persons designated by subsection （a） （１） （ C） of this section， otherwise than by will， is subject to termination under the following conditions： （１ ） In the case of a grant executed by a person or persons other than the author， termination of the grant may be effected by the surviving person or persons who executed it畅In the case of a grant executed by one or more of the authors of the work， termination of the grant may be effected， to the extent of a particular author摧 s share in the ownership of the renewal copyright， by the author who executed it or， if such author is dead， by the person or persons who， under clause （２ ） of this subsection， own and are entitled to exercise a total of more than one唱 half of that author摧 s termination interest畅 （２ ） Where an author is dead， his or her termination interest is owned， and may be exercised， as follows： （A） The widow or widower owns the author摧 s entire termination interest unless there are any surviving children or grandchildren of the author ， in which case the widow or widower owns one唱 half of the author摧 s interest畅 （ B） The author摧 s surviving children， and the surviving children of any dead child of the author， own the author摧 s entire termination interest unless there is a widow or widower ， in which case the ownership of one唱 half of the author摧 s interest is divided among them畅 （ C） The rights of the author摧 s children and grandchildren are in all cases divided among them and exercised on a per stirpes basis according to the number of such author摧 s children represented； the share of the children of a dead child in a termination interest can be 附 ２ １９７６ 年 美 国 版 权法 节 ４ ４５ exercised only by the action of a majority of them畅 （ D ） In the event that the author摧 s widow or widower， children， and grandchildren are not living， the author摧 s executor， administrator， personal representative， or trustee shall own the author摧 s entire termination interest畅 （３ ） Termination of the grant may be effected at any time during a period of five years beginning at the end of fifty唱 six years from the date copyright was originally secured， or beginning on January １ ， １９７８ ， whichever is later畅 （４ ） The termination shall be effected by serving an advance notice in writing upon the grantee or the grantee摧 s successor in title畅 In the case of a grant executed by a person or persons other than the author， the notice shall be signed by all of those entitled to terminate the grant under clause （ １ ） of this subsection， or by their duly authorized agents畅In the case of a grant executed by one or more of the authors of the work， the notice as to any one author摧 s share shall be signed by that author or his or her duly authorized agent or， if that author is dead， by the number and proportion of the owners of his or her termination interest required under clauses （１ ） and （２） of this subsection， or by their duly authorized agents畅 （ A） T he notice shall state the effective date of the termination， which shall fall within the five唱 year period specified by clause （ ３） of this subsection， or ， in the case of a termination under subsection （ d） ， within the five唱 year period specified by subsection （ d） （２ ） ， and the notice shall be served not less than two or more than ten years before that date畅A copy of the notice shall be recorded in the Copyright Office before the effective date of termination， as a condition to its taking effect畅 ４４６ 美国知识产权法 （ B） The notice shall comply， in form， content， and manner of service， with requirements that the Register of Copyrights shall prescribe by regulation畅 （５ ） Termination of the grant may be effected notwithstanding any agreement to the contrary， including an agreement to make a will or to make any future grant畅 （６ ） In the case of a grant executed by a person or persons other than the author， all rights under this title that were covered by the terminated grant revert， upon the effective date of termination， to all of those entitled to terminate the grant under clause （ １ ） of this subsection畅In the case of a grant executed by one or more of the authors of the work， all of a particular author摧 s rights under this title that were covered by the terminated grant revert， upon the effective date of termination， to that author or ， if that author is dead， to the persons owning his or her termination interest under clause （ ２ ） of this subsection， including those owners who did not join in signing the notice of termination under clause （ ４） of this subsection畅In all cases the reversion of rights is subject to the following limitations： （ A） A derivative work prepared under authority of the grant before its termination may continue to be utilized under the terms of the grant after its termination， but this privilege does not extend to the preparation after the termination of other derivative works based upon the copyrighted work covered by the terminated grant畅 （ B） The future rights that will revert upon termination of the grant become vested on the date the notice of termination has been served as provided by clause （４） of this subsection畅 （ C） Where the author摧 s rights revert to two or more persons under clause （２） of this subsection， they shall vest in those persons 附 ２ １９７６ 年 美 国 版 权法 节 ４ ４７ in the proportionate shares provided by that clause畅In such a case， and subject to the provisions of subclause （ D ） of this clause， a further grant， or agreement to make a further grant， of a particular author摧 s share with respect to any right covered by a terminated grant is valid only if it is signed by the same number and proportion of the owners， in whom the right has vested under this clause， as are required to terminate the grant under clause （２ ） of this subsection畅 Such further grant or agreement is effective with respect to all of the persons in whom the right it covers has vested under this subclause， including those who did not join in signing it畅If any person dies after rights under a terminated grant have vested in him or her， that person摧 s legal representatives， legatees， or heirs at law represent him or her for purposes of this subclause畅 （ D） A further grant， or agreement to make a further grant， of any right covered by a terminated grant is valid only if it is made after the effective date of the termination畅 As an exception， however， an agreement for such a further grant may be made between the author or any of the persons provided by the first sentence of clause （６ ） of this subsection， or between the persons provided by subclause （ C） of this clause， and the original grantee or such grantee摧 s successor in title， after the notice of termination has been served as provided by clause （４ ） of this subsection畅 （ E ） Termination of a grant under this subsection affects only those rights covered by the grant that arise under this title， and in no way affects rights arising under any other Federal， State， or foreign laws畅 （ F ） Unless and until termination is effected under this subsection， the grant， if it does not provide otherwise， continues in ４４８ 美国知识产权法 effect for the remainder of the extended renewal term畅 （ d ） Termination Rights Provided in Subsection （ c ） Which Have Expired on or Before the Effective Date of the Sonny Bono Copyright Term Extension Act畅—In the case of any copyright other than a work made for hire， subsisting in its renewal term on the effective date of the Sonny Bono Copyright Term Extension Act for which the termination right provided in subsection （ c ） has expired by such date， where the author or owner of the termination right has not previously exercised such termination right， the exclusive or nonexclusive grant of a transfer or license of the renewal copyright or any right under it， executed before January １， １９７８， by any of the persons designated in subsection （ a ） （１） （ C） of this section， other than by will， is subject to termination under the following conditions： （１ ） The conditions specified in subsections （ c ） （１ ） ， （２ ） ， （４ ）， （５） ， and （６ ） of this section apply to terminations of the last ２０ years of copyright term as provided by the amendments made by the Sonny Bono Copyright Term Extension Act畅 （２ ） Termination of the grant may be effected at any time during a period of ５ years beginning at the end of ７５ years from the date copyright was originally secured畅 § 305．Duration of copyright： Terminal date All terms of copyright provided by sections ３０２ through ３０４ run to the end of the calendar year in which they would otherwise expire畅 附 CHAPTER 5 ２ １９７６ 年 美 国 版 权法 节 ４ ４９ COPYRIGHT INFRINGEMENT AND REMEDIES § 501．In fringement of copyright （ a ） Anyone who violates any of the exclusive rights of the copyright owner as provided by sections １０６ through １２２ or of the author as provided in section １０６A （ a ） ， or who imports copies or phonorecords into the United States in violation of section ６０２ ， is an infringer of the copyright or right of the author， as the case may be畅 For purposes of this chapter （ other than section ５０６） ， any reference to copyright shall be deemed to include the rights conferred by section １０６A （ a） ．As used in this subsection， the term “ anyone” includes any State， any instrumentality of a State， and any officer or employee of a State or instrumentality of a State acting in his or her official capacity畅Any State， and any such instrumentality， officer， or employee， shall be subject to the provisions of this title in the same manner and to the same extent as any nongovernmental entity畅 （ b） The legal or beneficial owner of an exclusive right under a copyright is entitled， subject to the requirements of section ４１１， to institute an action for any infringement of that particular right committed while he or she is the owner of it畅The court may require such owner to serve written notice of the action with a copy of the complaint upon any person shown， by the records of the Copyright Office or otherwise， to have or claim an interest in the copyright， and shall require that such notice be served upon any person whose interest is likely to be affected by a decision in the case畅The court may require the joinder， and shall permit the intervention， of any ４５０ 美国知识产权法 person having or claiming an interest in the copyright畅 （ c ） For any secondary transmission by a cable system that embodies a performance or a display of a work which is actionable as an act of infringement under subsection （ c ） of section １１１， a television broadcast station holding a copyright or other license to transmit or perform the same version of that work shall， for purposes of subsection （ b） of this section， be treated as a legal or beneficial owner if such secondary transmission occurs within the local service area of that television station畅 （ d） For any secondary transmission by a cable system that is actionable as an act of infringement pursuant to section １１１ （ c ） （３ ）， the following shall also have standing to sue： （ i） the primary transmitter whose transmission has been altered by the cable system； and （ ii） any broadcast station within whose local service area the secondary transmission occurs畅 （ e） With respect to any secondary transmission that is made by a satellite carrier of a performance or display of a work embodied in a primary transmission and is actionable as an act of infringement under section １１９ （ a） （ ５） ， a network station holding a copyright or other license to transmit or perform the same version of that work shall， for purposes of subsection （ b） of this section， be treated as a legal or beneficial owner if such secondary transmission occurs within the local service area of that station畅 （ f） （１ ） With respect to any secondary transmission that is made by a satellite carrier of a performance or display of a work embodied in a primary transmission and is actionable as an act of infringement 附 ２ １９７６ 年 美 国 版 权法 节 ４ ５１ under section １２２， a television broadcast station holding a copyright or other license to transmit or perform the same version of that work shall， for purposes of subsection （ b） of this section， be treated as a legal or beneficial owner if such secondary transmission occurs within the local market of that station畅 （ ２） A television broadcast station may file a civil action against any satellite carrier that has refused to carry television broadcast signals， as required under section １２２ （ a ） （２ ） ， to enforce that television broadcast station摧 s rights under section ３３８ （ a ） of the Communications Act of １９３４ § 502．Remedies for infringement： Injunctions （ a） Any court having jurisdiction of a civil action arising under this title may， subject to the provisions of section １４９８ of title ２８， grant temporary and final injunctions on such terms as it may deem reasonable to prevent or restrain infringement of a copyright畅 （ b） Any such injunction may be served anywhere in the United States on the person enjoined； it shall be operative throughout the United States and shall be enforceable， by proceedings in contempt or otherwise， by any United States court having jurisdiction of that person畅The clerk of the court granting the injunction shall， when requested by any other court in which enforcement of the injunction is sought， transmit promptly to the other court a certified copy of all the papers in the case on file in such clerk摧 s office畅 § 503．Remedies for infringement： Impounding and disposition of infringing articles （ a） At any time while an action under this title is pending， the court may order the impounding， on such terms as it may deem reasonable ， of all copies or phonorecords claimed to have been made ４５２ 美国知识产权法 or used in violation of the copyright owner摧 s exclusive rights， and of all plates， molds， matrices， masters， tapes， film negatives， or other articles by means of which such copies or phonorecords may be reproduced畅 （ b） As part of a final judgment or decree， the court may order the destruction or other reasonable disposition of all copies or phonorecords found to have been made or used in violation of the copyright owner摧 s exclusive rights， and of all plates， molds， matrices， masters， tapes， film negatives， or other articles by means of which such copies or phonorecords may be reproduced畅 § 504．Remedies for infringement： Damages and profits （ a） In General畅— E xcept as otherwise provided by this title， an infringer of copyright is liable for either — （１ ） the copyright owner摧 s actual damages and any additional profits of the infringer， as provided by subsection （ b） ； or （２ ） statutory damages， as provided by subsection （c） ． （ b ） Actual Damages and Profits畅— The copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement， and any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages畅In establishing the infringer摧 s profits， the copyright owner is required to present proof only of the infringer摧 s gross revenue， and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work畅 （ c） Statutory Damages畅— （１ ） Except as provided by clause （ ２ ） of this subsection， the copyright owner may elect， at any time before final judgment is 附 ２ １９７６ 年 美 国 版 权法 节 ４ ５３ rendered， to recover， instead of actual damages and profits， an award of statutory damages for all infringements involved in the action， with respect to any one work， for which any one infringer is liable individually， or for which any two or more infringers are liable jointly and severally， in a sum of not less than ＄７５０ or more than ＄３０敞０００ as the court considers just畅 For the purposes of this subsection， all the parts of a compilation or derivative work constitute one work畅 （２ ） In a case where the copyright owner sustains the burden of proving， and the court finds， that infringement was committed willfully， the court in its discretion may increase the award of statutory damages to a sum of not more than ＄１５０敞０００畅In a case where the infringer sustains the burden of proving， and the court finds， that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright， the court in its discretion may reduce the award of statutory damages to a sum of not less than ＄２００畅The court shall remit statutory damages in any case where an infringer believed and had reasonable grounds for believing that his or her use of the copyrighted work was a fair use under section １０７， if the infringer was： （ i） an employee or agent of a nonprofit educational institution， library， or archives acting within the scope of his or her employment who， or such institution， library， or archives itself ， which infringed by reproducing the work in copies or phonorecords； or （ ii） a public broadcasting entity which or a person who， as a regular part of the nonprofit activities of a public broadcasting entity （ as defined in subsection （ g ） of section １１８ ） ［ １ ］ infringed by performing a published nondramatic literary work or by reproducing ４５４ 美国知识产权法 a transmission program embodying a performance of such a work畅 （３ ） （ A ） In a case of infringement， it shall be a rebuttable presumption that the infringement was committed willfully for purposes of determining relief if the violator， or a person acting in concert with the violator， knowingly provided or knowingly caused to be provided materially false contact information to a domain name registrar， domain name registry， or other domain name registration authority in registering， maintaining， or renewing a domain name used in connection with the infringement畅 （ B） Nothing in this paragraph limits what may be considered willful infringement under this subsection畅 （ C） For purposes of this paragraph， the term “ domain name” has the meaning given that term in section ４５ of the Act entitled “ An Act to provide for the registration and protection of trademarks used in commerce， to carry out the provisions of certain international conventions， and for other purposes ” approved July ５ ， １９４６ （ commonly referred to as the “ Trademark Act of １９４６ ” ； １５ U畅S畅C畅１１２７） ． （ d ） Additional Damages in Certain Cases畅— In any case in which the court finds that a defendant proprietor of an establishment who claims as a defense that its activities were exempt under section １１０ （５ ） did not have reasonable grounds to believe that its use of a copyrighted work was exempt under such section， the plaintiff shall be entitled to， in addition to any award of damages under this section， an additional award of two times the amount of the license fee that the proprietor of the establishment concerned should have paid the plaintiff for such use during the preceding period of up to ３ 附 ２ １９７６ 年 美 国 版 权法 节 ４ ５５ years畅 § 505．Remedies for infringement： Costs and attorney摧 s fees In any civil action under this title， the court in its discretion may allow the recovery of full costs by or against any party other than the United States or an officer thereof畅 Except as otherwise provided by this title， the court may also award a reasonable attorney摧 s fee to the prevailing party as part of the costs畅
