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Last Updated - October 30, 2009

Derivatives

In order for a work to qualify as a derivative work it must be independently copyrightable. Weissmann v. Freeman, 868 F.2d 1313, 1320-21 (2d Cir.), cert. denied, 493 U.S. 883 (1989).

Under copyright law, the copyright 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.

As William Landes and Richard Posner, now Chief Judge of the Seventh Circuit Court of Appeals, wrote: "[f]or obvious reasons, the derivative work must have some expressive elements not found in the original work; otherwise it would be identical to the original work.... The "mechanical `translation' of [a] figure into a new medium involves no expression." William M. Landes & Richard A. Posner, An Economic Analysis of Copyright Law, 18 J.Legal Studies 325, 355-56 (June 1989).


Here are some short quotes from court cases about Derivatives:
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 protectable 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. Michael K. Erickson wrote a lengthy paper titled Emphasizing the Copy in Copyright in 2005 for the Brigham Young University Law Review. The paper is 74 pages long in pdf format. We have excerpted four pages for your reference; pages 20 through 23. If you want to see the full 74 page document, CLICK HERE.

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:

Mirage and its progeny have been criticized by others as well. See 1 Nimmer on Copyrights, 3.03 (quoted in Lee, 925 F.Supp. at 579 n. 2); 2 Paul Goldstein, Copyright 5.3 at 5:81 (2d ed.1996) (described as "condemning Mirage as an unwarranted extension *69 of the Copyright Act" in Mark A. Lemley, The Economics of Improvement in Intellectual Property Law, 75 Tex. L.Rev. 989, 1084 n. 144 (April 1997)); Black and Page, Add-On Infringements, at 629 (describing Mirage as "often criticized"); David Goldberg and Robert J. Bernstein, "What is a Derivative Work? ... Continued," 9/20/96 N.Y.L.J. 3 (col.1) ("[T]he Ninth Circuit approach applied in Greenwich Workshop is unsupported by the statutory text.").

Id., 971 F.Supp. 66, 69

The court also stated:

This Court agrees with the Lee court that Mirage and the subsequent cases read the originality requirement out of the definition of "derivative work" and open the door for the most trivial of modifications to generate an infringing derivative work. Applying the proper standard to the case at bar, the Court finds that the necessary element of originality is absent from the items manufactured for La Infantil from the Precious Moments fabric. They therefore do not constitute "derivative works" infringing on Precious Moments' copyright. Precious Moments thus does not carry its burden of showing a likelihood of success on the merits on its copyright claim, and the Court need not consider the remaining requirements for a preliminary injunction.

Id., 971 F.Supp. 66, 69

From paragraph 31, the Ninth Curcuit Court of Appeals in PERFECT 10, INC., vs AMAZON.COM, INC et al, 487 F.3d 701 (9th Cir 2007):

See Lewis Galoob Toys, Inc. v. Nintendo of Am., Inc., 964 F.2d 965, 967 (9th Cir.1992). We held that a copyright holder's right to create derivative works is not infringed unless the alleged derivative work "incorporate[s] a protected work in some concrete or permanent `form.'" Id. In other words, in some contexts, the claimant must be able to claim infringement of its reproduction right in order to claim infringement of its right to prepare derivative works.

See also American Bar Association report Committee #304 Report from 1996-1997.


From the U.S. Copyright Office Circular 14:

Examples of Derivative Works

The following examples show some of the many different types of derivative works:

Television documentary (that contains archival footage and photographs)
Motion picture (based on a play)
Novel in English (a translation of a book originally published in Russian)
Sound recording (CD in which two of the ten selections were previously published online)
Sculpture (based on a drawing)
Drawing (based on a photograph)
Book of maps (based on public-domain maps with some new maps)
Lithograph (based on a painting)
Biography of John Doe (that contains journal entries and letters by John Doe)
Drama about John Doe (based on the letters and journal entries of John Doe)
Super Audio CD (in which all the tracks were previously released in a CD and have been remixed)
Words and music (that include words from the Bible)
Words and musical arrangement (arrangement is based on a piece by Bach)
Musical arrangement (based on a work by Bach)

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