1 17 U.S.C. § 201(a) (1988).

2 Id. 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." 17 U.S.C. § 101 (1988) (definition of "joint work").

3 See 17 U.S.C. § 201(b) (1988). This legal conclusion may only be altered by the parties in a written instrument signed by them expressly agreeing otherwise. Id.

4 The Copyright Act does not define "employee." In 1989, the Supreme Court held that an employment relationship determination for copyright purposes should be made by reference to the "general common law of agency." See Community for Creative Non-Violence v. Reid, 490 U.S. 730, 740-41 (1989). The central question in an agency law inquiry is whether the hiring party has the "right to control the manner and means by which the product is accomplished." Id. at 751. The factors to be considered include the skill required, the source of the instrumentalities and tools used in creating the work, where the work was created, the duration of the relationship between the parties, whether the hiring party has the right to assign additional projects to the hired party, the method of payment, the extent of the hired party's discretion over when and how long to work, the hired party's role in hiring and paying assistants, whether the hiring party is in business and whether the work is part of the regular business of the hiring party, the provision of employee benefits, and the tax treatment of the hired party. Id. at 751-52. The Court did not specify any factors that should be weighed more heavily than others, but made clear that an "employee" under the Copyright Act is not limited to a formal, salaried employee.

5 To qualify as a work made for hire under the second prong, the work must be specially ordered or commissioned for use as (1) a contribution to a collective work, (2) part of an audiovisual work, (3) a translation, (4) a supplementary work, (5) a compilation, (6) an instructional text, (7) a test, (8) answer material for a test or (9) an atlas. 17 U.S.C. § 101 (1988) (definition of "work made for hire").

6 See 17 U.S.C. § 202 (1988).

7 Id.

8 See 17 U.S.C. § 201(d)(1) (1988) ("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").

9 17 U.S.C. § 204(a) (1988). An exclusive license is considered a transfer of copyright and, therefore, must be in writing. Although an exclusive license may be limited in time, place or scope, it nevertheless extends the benefits of copyright ownership with respect to the rights granted to the licensee for the duration of the license. The rights of a copyright owner may also be licensed on a nonexclusive basis to one or more licensees. The Copyright Act does not require nonexclusive licenses to be in writing.

10 17 U.S.C. § 101 (1988) (definition of "transfer of copyright ownership"). With the exception of transfers by operation of law, all transfers of copyright ownership must be in writing. 17 U.S.C. § 204(a) (1988) ("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 of the rights conveyed or such owner's duly authorized agent").

11 See 17 U.S.C. § 204(a) (1988).

12 See discussion of the exclusive rights of a copyright owner infra pp. 63-72.

13 See 17 U.S.C. § 201(d)(2) (1988); 17 U.S.C. § 101 (1988) (definition of "copyright owner").

14 See 17 U.S.C. § 203(a) (1988); see also 17 U.S.C. § 304(c) (1988 & Supp. V 1993).

15 17 U.S.C. § 203(a)(5) (1988) ("[t]ermination 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").

16 See 17 U.S.C. § 203(a) (1988).

17 See 17 U.S.C. § 501(b) (1988) ("legal or beneficial owner of an exclusive right under a copyright is entitled . . . to institute an action for any infringement of that particular right committed while he or she is the owner of it"). In certain circumstances, television broadcast stations and others are treated as legal or beneficial owners and may bring actions for infringement by cable systems and satellite carriers. See 17 U.S.C. § 501(c), (d), (e) (1988).

18 However, like exclusive licenses, nonexclusive licenses may be terminated 35 years after the effective date of the license. See 17 U.S.C. §§ 203(a) (1988), 304(c) (1988 & Supp. V 1993).

19 For example, a user could decide to participate in a licensing program covering all copies made, for a nominal fee per copy, rather than to indulge in the record-keeping necessary to determine which copies are subject to a licensing fee and which are fair use. Copyright owners may not be allowed, however, to seek to increase the term of protection without implicating the doctrine of copyright misuse. Cf. Saturday Evening Post Co. v. Rumbleseat Press, Inc., 816 F.2d 1191, 1200 (7th Cir. 1987) (claims of misuse must be judged by antitrust standards); Lasercomb America, Inc. v. Reynolds, 911 F.2d 970, 979 (4th Cir. 1990) (contract purporting to license copyright for 99 years rendered copyright owner guilty of copyright misuse). The doctrine of copyright misuse might be implicated in other situations where the scope of protection is significantly expanded.

20 HOUSE REPORT at 79, reprinted in 1976 U.S.C.C.A.N. 5693.

21 See, e.g., Harper Bros. v. Klaw, 232 F. 609 (S.D.N.Y. 1916) (license to dramatize "Ben Hur" in a play did not include right to produce a movie, but licensor enjoined from producing movie because licensee's right to produce a play would be harmed by licensor's production of a movie); L.C. Page & Co. v. Fox Film Corp., 83 F.2d 196 (2d Cir. 1936) (grant of exclusive "moving picture" rights embraced technical improvements in movies that might be developed during the term of the license; thus, license held to cover "talkies"); Bartsch v. Metro-Goldwyn-Mayer, Inc., 391 F.2d 150 (2d Cir.), cert. denied, 393 U.S. 826 (1968) (1930 license of film rights in a play, when television was a known technology but its full impact not yet realized, included television rights; as experienced businessman, licensor had reason to know of new technology's potential and had burden of negotiating exception).

22 See, e.g., 17 U.S.C. § 111 (1988 & Supp. V 1993). The cable compulsory license was enacted to reduce the need for negotiations among thousands of program copyright owners and hundreds of cable systems for the right to retransmit the copyrighted programs that are included in the broadcast signals retransmitted by cable systems.

23 See discussion of on-line transactions infra pp. 53-59.

24 See discussion infra pp. 191-92, 235-36.

25 Library subscription costs for print journals have for many years been two or more times those for individual subscriptions. This additional cost has been assumed by some to permit use of the material by the library's patrons. Licenses would serve to convert this assumption to explicit terms that could be negotiated, avoiding misunderstandings and litigation.

26 See generally Information Infrastructure Task Force, Committee on Applications and Technology, Putting the Information Infrastructure to Work, 25-40 (May 1994).

27 See discussion infra pp. 192-94; see generally Uniform Commercial Code, Art. 4A (1990); K. Epper, Money Creators: Point of Sale Pioneer Setting Sail on the Internet, The American Banker 14 (Feb. 10, 1995).

28 B. WRIGHT, THE LAW OF ELECTRONIC COMMERCE 235 (1991 & Supp. 1994) (hereinafter WRIGHT).

29 See J. CALAMARI & J. PERILLO, THE LAW OF CONTRACTS 25 (3d ed. 1987) (hereinafter CALAMARI & PERILLO).

30 In Corinthian Pharmaceutical v. Lederle Laboratories, the court found that the "automated, ministerial act" of a seller issuing an electronic order tracking number to a purchaser's on-line purchase order did not constitute assent or acceptance by the seller. See 724 F. Supp. 605, 610 (S.D. Ind. 1989); see also WRIGHT, supra note 159, at 236 (1991); Electronic Messaging Task Force, The Commercial Use of Electronic Data Interchange -- A Report and Model Trading Partner Agreement, A.B.A. Sec. Bus. Law, reprinted from 45 BUS. LAW 1647 (1990) (hereinafter A.B.A. Report or A.B.A. Model Agreement).

31 See Step-Saver Data Systems, Inc. v. Wyse Technology, 939 F.2d 91 (3d Cir. 1991).

32 See id. at 96 n.7.

33 See Standard Oil Co. v. Perkins, 347 F.2d 379, 385 n.5 (9th Cir. 1965).

34 Compare D. Johnson & K. Marks, Mapping Electronic Data Communications onto Existing Legal Metaphors: Should We Let Our Conscience (and Our Contracts) be Our Guide?, 38 VILL. L. REV. 487, 488-89 (1993) with Note, Offers Users Can't Refuse: Shrink-Wrap License Agreements as Enforceable Adhesion Contracts, 10 CARDOZO L. REV. 2105, 2120 (1989).

35 See RESTATEMENT (SECOND) OF CONTRACTS § 211 (1981).

36 Compare Step-Saver, supra note 162, at 99 with Arizona Retail Systems v. Software Link, 831 F. Supp. 759 (D. Ariz. 1993).

37 See Step-Saver, supra note 162, at 99; see also J. Peys, Comment, Commercial Law -- The Enforceability of Computer "Box-Top" License Agreements Under the U.C.C., 7 WHITTIER L. REV. 881, 885-92 (1985).

38 See ILL. REV. STAT. ch. 29, para. 801-08 (1986); LA. REV. STAT. §§ 51:1961-66 (1987). The Louisiana statute was declared partially invalid in a controversial decision in Vault Corp. v. Quaid Software, Ltd. because the court found that it impinged on "rights" under the U.S. copyright laws, and was therefore preempted. See 847 F.2d 255, 270 (5th Cir. 1988).

39 See RESTATEMENT (SECOND) OF CONTRACTS § 131 (1981). Signed writings are also required for exclusive licenses and assignments under the Copyright Act. See 17 U.S.C. § 204 (1988).

40 See WRIGHT, supra note 159, at 274 (1991).

41 See U.C.C. § 1-102(2)(b) (1990).

42 U.C.C. § 2-204 (1990).

43 Id. at § 2-206 (1990).

44 See U.C.C. § 2-207 (1990).

45 The U.C.C. contains a Statute of Frauds which raises the same questions as common law concerning whether a purely electronic contract can meet the writing and signature requirements. However, the U.C.C. Statute of Frauds includes exceptions to the requirements -- for specially manufactured goods not suitable for sale to others which the seller has begun to manufacture, and for goods that have been received and accepted. See U.C.C. § 2-201(2), (3) (1990).

46 See U.C.C. § 1-205(1), (2) (1990).

47 See U.C.C. §§ 2-105(2), 716(3) (1990). See D. Frisch, Symposium: The Revision of the Uniform Commercial Code, 35 WM. & MARY L. REV. 1691, 1729 (1994).

48 See U.C.C. § 1-102 (1990). But see CALAMARI & PERILLO, supra note 160, at 16; Step Saver, supra note 162, at 94; Advent Systems Ltd. v. Unisys Corp., 925 F.2d 670 (3d Cir. 1991).

49 See supra notes 160-71 and accompanying text.

50 See R. Nimmer, Symposium: The Revision of Article 2 of the Uniform Commercial Code, 35 WM. & MARY L. REV. 1337, 1341-50 (1994).

51 See 17 U.S.C. § 301 (1988).

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