Friday, June 30, 2006

Fixation and Violation of the Derivative Right

Back in 2004, when the motion picture companies were waging an unsuccessful fight against what became the Family Movie Act -- an initiative to empower parents to filter out smut and other objectionable elements from smutty films they were voluntarily viewing with their children at home -- the issue was raised whether the derivative right was violated by altering the manner in which the motion picture was viewed. I found the argument a bit strange: the actual complaint was over an altered performance and since the performance in question was private, there could be no violation of Section 106(4). As to the separate derivative right, the complaint was really over the filtering software, which itself was not a derivative work of anything. In short, the argument was, for me at least, too clever by a half, which is to say not clever at all.

But it did get discussed, and in testimony by the Register of Copyrights before the House of Representatives' IP subcommittee on June 17, 2004. Here is a link to that testimony. One part of that testimony states: "The question is, can you have a derivative work when no copy (or "fixation") of the derivative work exists?" The Register answers that question negatively, but the statute is quite clear the answer is positive. Section 106(1) gives copyright owners the right to reproduce the work in copies. Section 106(2), however, gives the copyright owner the right to prepare derivative works based on the original. The lack of the limitation to "copy" in Section 106(2) supplies the intent the Register sought.

Nor does it rebut this position to point out that Section 106(2) refers to "works" and that to be protected "works" must be fixed. Section 106(2) concerns infringement, not protectibility, and assumes the existence of a protected (that is, a fixed work), that may be infringed by an unauthorized unfixed derivative work.

If there was any doubt from the plain language of the statute, it is dispelled by this discussion from the 1976 Act committee reports:

The exclusive right to prepare derivative works, specified separately
in clause (2) of section 106, overlaps the exclusive right of reproduction
in [section 106(1)] to some extent. It is broader than that right, hwoever,
in the sense that reproduction requires fixation in copies or phonorecords,
whereas the 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.
H.R. Rep. No. 1476, 94th Cong., 2d Sess. 62 (1976); S. Rep. No. 473, 94th Cong., 1st Sess. 58 (1975).

This view is, moreover, based on an earlier view expressed by Register of Copyrights Abraham Kaminstein in his 1965 Supplementary Report, at p. 17.

There is a good reason there is no requirement that an infringing derivative work be fixed in a copy: as noted in the committee reports, if a musical work has been fixed, Congress wanted to provide a cause of action for someone who improvised an unauthorized version of it. Of course, as with all rights, there must be a substantial taking (so that aside from the fixation issue, the reproduction right and the derivative right are redundant - that is what the reports meant by "overlaps") and defenses such as fair use apply.


Fred von Lohmann said...

Even though the derivative and reproduction rights are largely redundant as a matter of logic, the redundancy serves a useful purpose when measured against exceptions and statutory licenses that refer only to reproduction.

So, for example, the Section 115 "mechanical" license only extends to reproduction, leaving the possibility of a claim against those who stray too far from the original (but not so far as to be a fair use). Similarly, the Section 108 exceptions for libraries do not extend to translations or adaptations, thanks to the derivative right. (The same distinction can also be relied on by private parties in drafting licensing agreements.)

As for the fixation issue, does this mean that I infringe when I sing badly enough in the shower? Or when I substitute my dog's name into the lyrics of "Martha My Dear"? Or is this simply another weight that the fair use/de minimis exceptions must bear?

William Patry said...


Good point on different exceptions applying to different rights. When you sing in the shower, there is no public performance, so no issue. I have 5 cats and they never complain about singing or lyrics.

Fred von Lohmann said...

Yes, hence my question regarding whether I violate the derivative right when I sing badly enough, thereby creating a derivative work. The fact that it's a private performance would then appear to be irrelevant. Seems a strange result.

William Patry said...

Right, I get it, as in the Family Movie Act, say you are not suing over a performance under Section 106(4) but the creation of a derivative work under 106(2) that, under my analysis at least, need not be fixed. Indeed the examples given in the committee reports refer to things that ordinarily would be regarded as performances. And, unlike the public performance right, the derivative right is not limited to public acts.

Well, one way out in the case of your singing is, as you suggest I think, to have a de minimis requirement as in the Second Circuit's Sandoval case, especially if the singing is truly bad, but at what point are we effectively hunting around for a stand-in for fixation: in other words if we say your signing is de minimis does that also apply to a jazz improv.? At what point wouldn't the de minimis argument swallow up the lack of a need for fixation? Nice question.

Joe Gratz said...

"Prepare" has always seemed a strange choice of words in section 106(2). Does it have any special meaning that might shed light on Fred's or your hypos?

I can imagine a reading of "prepare" that substantially narrows the derivative right. In common usage, one "prepares" for something that happens later -- in this case, we might be preparing for some later copying or public performance, for example. It seems to make little sense to "prepare" when there's no later act intended, as in Fred's shower hypo. If one has to be preparing for some other act implicating a section 106 right, section 106(2) exists only to impose liability for otherwise-inchoate acts of infringement. If liability can be imposed when preparing for some act not implicating a section 106 right, like a private performance (or a walk in the park, or a nap), why is it so doctrinally important that we be preparing for something that the statute requires one to "prepare" rather than to "make" or "create" or "gin up" a derivative work?

This question goes away if derivative works must be fixed to be infringing; the infringer was, in every case, preparing a copy.

There may be some bit of legislative history I haven't encountered that makes the choice of "prepare" crystal clear, but on its face it seems puzzling if derivative works needn't be fixed.

Crosbie Fitch said...

Software that skips naughty bits in a given movie will need a file of instructions that specify which bits to skip.

Given that there's no reason why the same movie can't be watched a second time, but with a different set of skips, this effectively enables reordering of the movie, e.g. the first censor file says "skip the first half", the second file says "skip the second half".

You can also watch any series of movies, which means any section of any movie can be interleaved with that of any other.

We now have all the necessary ingredients to create a file that creates a derivative work (in the perception of the viewer if not the law), and yet this file is not itself a derivative.

Someone better put a stop to my sophistry or things are going to get silly.

Oops! They already are.

William Patry said...

Congress did take care of the movie software problem in legislation, but I think Joe's issue about the emanign of "prepare" warrants further thinking and research.

Anonymous said...

On the fly and without research, I expect that the term "prepare" is used to avoid the alternative term of "create" because within the intergrity of the Act to "create" implicates "authorship" and in an unauthorized derrivative work the new matter added by the changes to the original cannot be works of authorship unless authorized to be such. "Prepare" is simply less charged with meaning.