Cease and Desist - Derivatives.

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Derivatives

The following is taken from the complaint Tabberone filed in federal court against Disney Enterprises and other sources.
The primary standard for a work to qualify as a derivative work is that it be copyrightable in it's own right. No one would suggest that an apron or a pillow made from the copyrighted fabric would qualify as copyrightable. Laying a pattern on a piece of fabric, cutting it out, and then sewing it together, lacks any "originality" which is a requirement of the statute for a work to qualify as a derivative.
Section 101 of the Copyright Act defines a derivative work as:
"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. 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 fabric itself is not copyrighted, only the images on it are. These images are not "recast, transformed, or adapted" in any manner. The fabric is modified into an end product consistent with the intended use, the images are not.
The copyright "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." 17 U.S.C. § 103(b); see Feist Publications, 499 U.S. at 348 ("[C]opyright protection [in a factual compilation] extend[s] only to those components of a work that are original to the author.").
A derivative work is copyrightable if it is sufficiently original. 1 Nimmer on Copyright § 3.03. The law requires more than a modicum of originality. This has been interpreted to require a distinguishable variation that is more than merely trivial. L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (2d Cir.) (en banc) (requiring some substantial, not just a trivial, variation), cert. denied, 429 U.S. 857, 490-92 (1976). As the Court of Appeals for the Second Circuit said in Batlin:
"Originality is . . . 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." Originality means that the work owes its creation to the author and this in turn means that the work must not consist of actual copying." Id. at 490 (citations omitted).
Indeed, if the secondary work sufficiently transforms the expression of the original work such that the two works cease to be substantially similar, then the secondary work is not a derivative work and, for that matter, does not infringe the copyright of the original work. See 1 Nimmer § 3.01, at 3-3 (stating that "a work will be considered a derivative work only if it would be considered an infringing work" if it were unauthorized).
Permission to use the fabric to make fabric items is implied with the retail sale of the fabric.
In Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984), the Supreme Court stated that copyright protection "subsists . . . in original works of authorship fixed in any tangible medium of expression." 17 U. S. C. § 102(a) (1982 ed.).
This protection has never accorded the copyright owner complete control over all possible uses of his work. (White-Smith Music Publishing Co. v. Apollo Co., 209 U.S., at 19)
In Quality King Distributors, Inc. v. L'Anzaresearch Int'l, Inc (98 F.3d 1109, reversed), Justice Stevens noted for a unanimous court:
"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."
In Precious Moments vs La Infantil, 1997, (D.P.R.) 971 F.Supp. 66, the First Circuit Court specifically rejected the copyright claim where La Infantil was being accused with unauthorized use of copyrighted fabric, saying that "bedding items manufactured with lawfully acquired, authentic fabric with copyrighted design were not infringing derivative works."
The Court also said "The copyright owner's right to distribute the work is limited by the "First Sale" doctrine, which permits the owner of a legally acquired lawfully made copy of a work to sell that particular copy without the consent of the copyright holder".
The Court argued that previous decisions had omitted the qualification that a derivative work must show originality. It held that merely using a pattern to sew fabric into a design was not "original" and it does not make the item a derivative work.
Likewise, since the fabric was intended to be cut, and shaped, and sewn, no "material difference" exists from the original product. Indeed, the fabric images would have to be altered before the First Sale Doctrine could be refuted under 15 U.S.C. Section 1114. One does not buy a yard of fabric, toss over their shoulder, and walk down the street showing it off. The fabric must be cut and shaped and sewn to complete the use for which it was intended.
Under the First Sale Doctrine, the we do not need, nor require, permission from the copyright holder to make the fabric items or to sell the fabric items. Since no authorization is required, claims of selling "unauthorized" goods is baseless. When M&M/Mars sells a candy dish, they do not require the purchaser only fill the dish with "M&M's"Ž. They cannot place a restriction upon the use of the item. Nor can the copyright holder stipulate that a certain piece of fabric only be sewn into certain items, such as an apron or a vest. Unfinished fabric is intended to be finished by the purchaser. That completes the sale. Likewise, they cannot restrict the use of fabric sold at retail to "non-commercial home-use only".
While the use of a disclaimer on the fabric may deter some, the disclaimer itself is not binding upon the purchaser. The wording is specific that the use is intended for home use, not that this use required for purchase. Disclaimers of this nature are limitations on use to which the original owner desires but has no legal claim under the First Sale Doctrine. Owners and manufacturers can limit future use only as far as their on-going responsibility, such as a warranty. An automobile manufacturer can stipulate that using the vehicle for stock car racing invalidates the warranty but they cannot prohibit the purchaser from racing. A bicycle manufacturer cannot claim the bike is for recreational home-use only and cannot be ridden to work or used in a work environment, such as bicycle messenger.

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