Derivatives

Under copyright law, the copyrght holder has rights to all derivatives of the registered copyright. But what is a derivative? It's easy to allege something is a derivative when it isn't. However, there are federal and professional opinions that define a derivative.

For a work to be considered a derivative work the work must first contain originality and second, be made lawfully as described under 17 U.S.C. § 103(a). The term "lawfully" refers to permission granted by the true copyright owner. Therefore, one who is found to have derived a work from a copyrighted work would be liable for infringement if the derivation was made without the owner's permission. The standard which courts have used in determining the amount of originality needed for a work to be considered a derivative work has been that the derivative work must make a variation on an underlying work that is considered more than "merely trivial." If the level of originality is considered more than "merely trivial" and the person seeking a copyright has lawfully received permission to create the derivative work, the author of the adaptation will be entitled to his or her own derivative copyright which will be separate from the copyright contained in the underlining work. The level of originality required does vary among the United States Courts of Appeals, leading to uncertainty as to how the law will apply to the new medium of the Web.

Section 106(2) of the Copyright Act gives a copyright owner the exclusive right to produce derivative works. The Second Circuit's Durham test, which holds that to support a copyright, the original aspects of a derivative work: (1) must be more than trivial; and (2) must reflect the degree to which the derivative work relies on preexisting material and must not in any way affect the scope of any copyright protection in that preexisting material. A derivative must be copyrightable.

Corporate lawyers will readily claim that something is a derivative, often citing the flawed Ninth Circuit Mirage case, and willfully ignoring the many other circuits that disagreed. Remember, the allegations are designed to intimidate you into submission, sort of a legal "Shock And Awe" tactic, so they will not have to engage in a court battle. You will find that the other side will readily lie to you in order to get you to agree to their terms.

Here are some short outlimes of court cases about Deriivatives:

• Entertainment Research Group Vs Genesis Creative Group, Ninth Circuit

• LEE v. A.R.T. COMPANY, 125 F.3d 580 (7th Cir. 1997).

  As pertains to copyright law, 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. A musical arrangement that is a "derivative work" is protectible by copyright. In Woods v. Bourne Co., 841 F. Supp. 118 (1994), the court held that to qualify as a derivative work, there must be such things as unusual vocal treatment, additional lyrics of consequence, unusual altered harmonics, novel sequential uses of themes, or something of substance added which makes the piece to some extent a new work.

From Emphasizing the Copy in Copyright:
A split in the federal circuits developed when A.R.T. Co. (formerly Albuquerque A.R.T. Co. in Mirage) successfully defended the same practice of mounting note cards onto ceramic tiles that the Ninth Circuit previously rejected. In Lee v. A.R.T. Co., the Seventh Circuit expressly rejected the Ninth Circuit's distinction between tile-art mounting and traditional methods of framing. Instead, it found that the copyrighted note cards were not transformed by the tile art process because each piece of artwork "depict[ed] exactly what it depicted when it left [the] studio."The court opined that if the plaintiff's interpretation of the derivative right were followed, then "any alteration of a work, however slight, [would] require[] the author's permission." In addition to the tile-art cases, courts have also addressed static alterations to copyrighted fabrics and videocassette tapes. Addressing alterations to copyrighted fabrics, a district court, in Precious Moments, Inc. v. La Infantil, Inc., held that baby bedding manufactured with the plaintiff's copyrighted fabrics were not derivative works. In a similar fashion to the Seventh Circuit in Lee, the court opined that Mirage and its progeny erroneously "open the door for the most trivial of modifications to generate an infringing derivative work." In Paramount Pictures Corp. v. Video Broadcast Systems, Inc., a district court found that the defendant's appendage of commercial advertisements to the plaintiff's videocassettes did not create derivative works of its copyrighted motion pictures. Finding Mirage inapplicable (without disagreeing with the merits), the district court concluded simply, "The court does not recognize the addition of [defendants' advertisement] to a videocassette in any way recasting, transforming or adapting the motion picture." Perhaps in reference to the holding in Mirage, the court added, "The result is not a new version of the motion picture."

The fundamental problem that the court in Mirage failed to address is that a derivative work, by definition, contains some new copyrightable expression, and that therefore, to find there has been an infringement of the derivative work right under Section 106, one must find such new expression to be present.

This important doctrinal point was, however, addressed in Lee v. Deck the Walls Inc., 925 F.Supp. 576 (N.D.Ill. 1996). Plaintiff Annie Lee, an artist, sued defendants for gluing her notecards to ceramic tiles and covering the images on the tiles with clear epoxy resin. The court in Lee rejected the holding of Mirage Editions and Munoz, observing that to be an infringing derivative work an object must be original enough that, if lawful, it would qualify for protection as a derivative work. The Lee court cited Woods v. Bourne Co., 60 F.3d 978 (2nd Cir. 1995), for the rule that to be a derivative work a thing must be "independently copyrightable." The court found no "creative spark" in the "mundane act of placing notecards onto a ceramic tile." The court also cited in support of its finding the case of Paramount Pictures v. Video Broadcasting System, 724 F.Supp. 808 (D. Kan. 1989), in which the addition of commercials at the beginning of videocassette movies was not found to create infringing derivative works.

In Woods v. Bourne Co., 841 F. Supp. 118 (1994), the court held that to qualify as a derivative work, there must be such things as unusual vocal treatment, additional lyrics of consequence, unusual altered harmonics, novel sequential uses of themes, or something of substance added which makes the piece to some extent a new work

Precious Moments sued La Infantil because La Infantil was converting licensed Precious Moments fabric into bedding and selling it in their stores. Precious Moments also replied on Mirage. In Precious Moments the court stated: