Claire Corlett

Fish Food, Fish Tanks, and More
William Fisher, CopyrightX: Lecture 7.3, The Rights to Reproduce and Modify: Derivative Works

William Fisher, CopyrightX: Lecture 7.3, The Rights to Reproduce and Modify: Derivative Works

Unauthorized modifications
of copyrighted works implicate two distinct interests
on the part of copyright owners. The first of those interests we
considered in lecture number two. Modifications of copyrighted works
can threaten the owner’s moral rights, specifically their rights for integrity. Recall in this connection von
Gerkan’s “Berlin Train Station” or Snow’s “Canadian Geese.” When those works were modified, the
authors experienced pain and anger, and sued successfully to
stop the modifications. The legal rules underlying their
lawsuits, we’ve already discussed. The second of the interests is economic,
rather than moral and character. Making or licensing modifications
of their works is one of the ways that copyright owners earn money. If they could not prevent unauthorized
modifications, they would earn less. The economic rights
related to modifications will be the focus of this last
segment of today’s lecture. To many copyright owners, this
source of revenue is very important. Here’s an example. J. K. Rowling, the author of the Harry
Potter series of stories, of course earns royalties when her
books are reproduced and sold. But she also collects
license fees from people who translate her books
into other languages, and more importantly,
in studios that wish to make motion picture
adaptations of her stories. The studios, in turn,
not only earn money by distributing copies of the
films through the myriad channels I described in lecture
number three, but also when subtitled versions are released,
and when various paraphernalia based upon the stories is manufactured and
sold– dolls, glasses, Quidditch pads, and so forth. The expectation of
those ancillary revenue streams increases the
license fees the studios are able and willing to pay to Rowling. These and other sources of
income growing out of the novels made Rowling, at least at
one point, a billionaire. Rowling’s capacity to control these
various offshoots of her novels finds apparent support in Section
106(2) of the Copyright Statute. That section provides, as you
can see, that a copyright owner has the exclusive right “to
prepare derivative works based upon the copyrighted work.” So what’s a derivative work? Section 101 tells us,
quote, “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.” In view of the growing importance
of the revenue streams associated with such adaptations, you
might expect that there would be a great deal of case
law interpreting and applying Section 106(2). Interestingly, there’s not. The main reason is that the reproduction
right– which, as we’ve seen, is shielded by Section 106(1)– is
now construed so broadly that it encompasses almost all of the territory
that you would expect to be covered by 106(2). Indeed, the scope of 106(2) is
most often defined by 106(1). If a defendant’s work does not
incorporate enough of the plaintiff’s work to violate the
rules that we considered in the previous segment
of this lecture, it does not constitute a derivative work
and, thus, does not violate 106(2). A good illustration of the way in
which the derivative work right is now overshadowed by the
reproduction right can be found in the case of Castle Rock
Entertainment versus Carol Publishing. The plaintiff owned the copyright in the
well-known Seinfeld television series. The defendant prepared
what are called a, quote, “trivia book,” which posed questions of
varying levels of difficulty concerning what happened in the television show. For example, one question asked
readers to match the names on the left with the characteristics listed
on the right of this slide. When the defendant first
released the trivia book, the Seinfeld copyright owners appeared
to have been amused, rather than angry. Indeed, NBC, which broadcast the
show, initially asked the defendants for free copies of the
book, which it then distributed with promotions of the show. Note how sharply this
casual response contrasts with the anger expressed by von Gerkan
and Snow when their works were adapted. In any event, it eventually occurred
to the copyright owners in Seinfeld that the trivia book
encroached on their rights. They brought a copyright
infringement suit and prevailed. It’s not at all obvious that
the plaintiff should have won. Is it really the case that the
creator of a work of fiction can prevent others from
writing a separate work that asked questions concerning the plot? If a high school English
teacher assigns a novel and then creates a
multiple choice quiz that requires students to answer questions
concerning what happened in the book, is she engaged in
copyright infringement? What if she sells compilations
of her quizzes to other teachers? I leave that to you. For the moment, we’re concerned
only with the statutory basis of the court’s ruling. At the very beginning of the Court of
Appeal’s analysis in the Castle Rock case, it seems that the key issue will
be whether the trivia book constitutes a, quote, “derivative work,” an
adaptation that will bring it within the statutory
definition of derivative work. So the first sentence of the pertinent
section in the court’s opinion is, quote, “The Copyright Act
of 1976 grants copyright owners a bundle of exclusive
rights, including the rights to reproduce the
copyrighted work in copies and to prepare derivative works
based upon a copyrighted work.” But in the second
sentence of the opinion, the court shifts to the now
familiar language of reproduction. Quote, “Copyright
infringement is established when the owner of a valid copyright
demonstrates unauthorized copying.” Section 106(2) then plays no
further role in the court’s opinion. In this respect, the Castle
Rock opinion is typical. Rarely does a copyright owner’s
right under Section 106(2)– to control derivative works– give him
power greater than he already enjoys under 106(1). But every once in awhile, the difference
between the two provisions matters. The principal examples are listed
in the map in front of you. First, a defendant
will sometimes purchase an authorized copy of a copyrighted
work and then physically alter it or integrate
it with another work. In such a case, the defendant
has not violated 106(1) because he’s not made a copy. He’s bought one. Thus, he can be liable, if at all,
only for preparing a derivative work. Two cases of this sort involving
very similar facts are notorious. In each one, the
defendant purchased books containing copies of the
plaintiff’s copyrighted artwork, cut out individual images from those
books, glued the pictures onto tiles, and then sold the tiles. In one of the cases, the
Ninth Circuit concluded that section 106(2) had been violated. Quote, “By borrowing and mounting the
pre-existing copyrighted individual art images without the consent
of the copyright proprietors, appellant has prepared a derivative work
and infringed the subject copyrights.” Close quote. In the other case, the
Seventh Circuit, dismayed by the implications of
the Ninth Circuit’s ruling concerning the status of many
common and innocuous habits, like marking up copies of case
books, took the opposite position. As you might expect, such
disputes don’t arise often. The second context in which
106(1) and 106(2) might diverge concerns the requirement of fixation. As we discussed in the previous
section of this lecture, to establish a violation of
the right of reproduction, plaintiff must show, among
other things, the defendant made a copy of the plaintiff’s work. And that, in turn, requires
that the thing the defendant produced be fixed for more
than a transitory duration. Notice that the language
of 106(2) is different. It makes no mention of
copies or phonorecords. Instead, it refers
to, quote, “preparing” close quote derivative works. That seems to leave open
the possibility that 106(2) could be violated without
making anything firm. One passage in the pertinent
legislative history lends support to that possibility. The House of Representatives report
that companies the 1976 statutory reform contained this sentence. Quote, “Preparation
of a derivative work, such as a ballet, pantomime,
or improvised performance, may be an infringement
even though nothing is ever fixed in tangible form.” Close quote. Despite the apparent
clarity of this statement, the courts have been very reluctant
to accept violations of 106(2) in the absence of some kind of fixation. For example, the Ninth
Circuit has ruled that, quote, “To narrow the statute
to a manageable level, we have developed certain criteria
the work must satisfy in order to qualify as a derivative
work, one of which is that it must exist in a
concrete or permanent form.” Close quote. Finally, a few odd
statutory provisions treat parties who make derivative
works more favorably than those who merely make copies. One such provision is
Section 104A(d)(3), which governed the rights and
obligations of a person who has prepared a derivative work based upon
an underlying work that used to be in the public domain in the United
States because of a failure to comply with US formalities, but has now
been restored to copyright protection because of the TRIPS Agreement. The statute permits such a person to
keep on exploiting his derivative work, provided that he pays the
owner of the restored copyright a reasonable compensation. To avail himself of this
option, he must show that his product is a derivative
work, not just a copy of the original. How much must he have changed
the original work to qualify? In the judgment of the
Third Circuit, not much. Changes that embody, quote, “some
minimal degree of creativity” close quote, suffice. One last aspect of Section
106(2) merits reiteration. What happens when you prepare a
derivative work without permission? Well, you expose yourself to the various
remedies for copyright infringement that we’ll consider in detail in
the last lecture in this series. But something else happens
that’s perhaps less obvious. You forfeit whatever
copyrights you might otherwise have enjoyed in your derivative work. The relevant statutory
provision is Section 103(a), which provides the subject matter of
copyright, as specified by Section 102, includes compilations and derivative
works, but protection for a work employing pre-existing material in
which copyright subsists does not extend to any part of the work in which
such material has been used unlawfully. A nuance lurks in this language. Some courts have held that a person
who, without permission, makes a derivative work
forfeits protection only in the portion of the
derivative work that is, quote, “pervaded” by the underlying work. In other words, you may
still claim a copyright in a portion of the derivative
work that is entirely untainted. Putting that nuance to one side, the
main point is that, in this context, an infringer doesn’t get
copyright protection, even for his own creative material. In lecture three, I discuss
this principle briefly in connection with the
Sylvester Stallone Rocky case. Here’s another, even
more odd illustration. At one point in his career, the
artist sometimes known as Prince adopted as his name the
image shown on your screen. During this period, a
guitar maker and Prince fan by the name of Ferdinand
Pickett made a guitar that incorporated most of this shape and
allegedly showed the guitar to Prince. Pickett apparently hoped that
Prince would buy the guitar, and thus enhance Pickett’s reputation. Prince did not do so, but instead
commissioned another guitar maker to fabricate guitars incorporating his
symbol and played them in concerts. Enraged, Pickett brought a
pro se copyright infringement suit against Prince. Pickett acknowledged that Prince
held a valid copyright in the image he had selected as his name,
and that Pickett’s guitar was a derivative work based
upon that copyrighted image. Nevertheless, he contended
that Prince could not make a copy of Pickett’s guitar
without Pickett’s permission. Seven years later, the Court of
Appeals for the Seventh Circuit finally resolved the
dispute in Prince’s favor. Judge Posner, writing for
the court, expressed doubt that Pickett’s guitar embodied
sufficient originality to warrant a copyright
in the first place. But in any event,
Posner ruled, its status as an unauthorized derivative
work meant that Pickett had no copyright protection for it. Thus, even if Prince had seen
and copied Pickett’s guitar, he would not be liable. The trial judge’s comment
on the case seems apt. Quote, “Defendant may as well have had
in mind this protracted litigation when he asked, ‘Why do we
scream at each other? This is what it sounds
like when doves cry.'” As Mark Lemley has observed,
patent law works quite differently. A person who, without permission, makes
an improvement on a patented invention may obtain a patent for his improvement. This creates a situation of
so-called blocking patents. Neither the holder of the
patent on the original invention nor the holder of the
patent on the improvement may practice the improvement
without the permission of the other. So is the net result that
the improvement never gets manufactured and used? Sometimes. But what usually occurs
is that the two parties negotiate a deal by which
they divide in some way the benefits of the
now improved invention. In Lemley’s view, this setup
creates a more efficient pattern of incentives for both primary
and secondary innovators than the copyright system. You might ask yourself, what would have
happened in the Stallone and Prince cases if a system of
blocking copyrights, analogous to the system of blocking
patents, had been in place? This concludes our
analysis of the rights of reproduction and modification. Next week, we’ll take up the
distribution and public performance rights. Thank you.

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