Friday, July 21, 2006

Does the Derivative Right Add Up?

On June 30th, I did a post on the question of fixation and derivative works. Whether Fred von Lohmann could be stopped from singing in the shower by the derivative right (assuming an altered version, intentionally or not) even though it would be a private performance, was an unsolved question. The post mostly explored the difference between reproduction right (which requires fixation in copies or phonorecords) and the derivative right (which doesn't).

There is another difference between the two rights, though, namely, violation of the derivative right can occur not just by copying, but also by adding to the original. I use the term original here is the sense both of the intangible work and an intangible fixation: the reproduction right isn't violated if Marcel DuChamp painted a mustache on your physical painting, but the derivative right might be. Judge Posner wrote, in a case involving the addition of teletext to cable retransmissions, that "if the publisher of a book leaves the inside cover blank, the book seller cannot inscribe the Lord's Prayer on them in order to broaden the book's appeal," WGN Continental Broadcasting Co. v. United Video, Inc., 693 F.2d 622 (7th Cir. 1982). This is similar to a real such case, National Bank of Commerce v. Shaklee Corp., 503 F. Supp. 533 (W.D. Tex. 1980), where advertisements were affixed to to the copyrighted work. In a more recent case, National Conference of Bar Examiners v. Sacuzzo, 2003 WL 2146772, at *2 (S.D. Cal. June 10, 2003), infringement of the derivative right was found when student's recollections of taking secure tests was added to copyrighted material.

All of these cases are interesting because infringement was based not on copying the original, but adding to it. And there of course there are the subtraction cases, like Gilliam v. ABC, 538 F.2d 14 (2d Cir. 1976). Whether less is more, as Mies thought, or a bore as Robert Venturi thought, infringement can involve more or less.

6 comments:

Bruce Boyden said...

I've been puzzled by the derivative works right for a long time and have been meaning to dig into the legislative history. First, I don't understand how it's not mere surplusage. Granted, a DW does not have to be fixed, no matter what the 9th Circuit says. But your post just points to a couple of cases where you can have a substantially similar public performance, or public display, as opposed to a substantially similar reproduction. Couldn't infringement still be handled under one of those other rights?

Second, I'm not sure I agree that merely adding to an existing fixation creates a derivative work. You give the example of an inscription in the margin (why just a bookseller? I gave a book to my wife with an inscription in it, which did not comment on, criticize, etc. the book -- infringement?), but what about the A.R.T. print-on-tile cases? As I believe the 7th Circuit decision notes (which seems at odds with Judge Posner's language), the A.R.T. cases seem no different than if you permanently mount a picture in a frame. Is framing a picture creating a derivative work?

William Patry said...

Historically, it seems that rights we would regard now under the derivative right were analyzed either under the reproduction right or the public performance right (like Daly v. Palmer).There wasn't a general derivative right of any consequence until 1909. I would guess Judge Posner would excuse your inscription as de minimis, but I agree there could be tension between his dicta and the Lee opinion.

J Sanders said...

With regard to bruce boyden's comments above, I think there is an important distinction (practically as well as legally) between a book seller inscribing something in the front cover of a book and someone inscribing a book before giving it as a gift. The distinction is that the book seller has not actually “bought” the book (regardless of the niceties of accounting in the publishing world) and thus first sale rights have not passed with regard to those copies. So Posner’s comment about the book seller strikes us as appropriate. However, I’m not sure it would still seem correct if the bookseller actually bought 1000 copies, and added on the inside front cover “Gift of Jane’s Books,” or the Lord’s Prayer for that matter, and then gave them away. It is this tension that unfortunately also puts appropriation artists, such as DuChamp, in a bit of a bind. I wrote an article on this, which can be found at http://www.cll.com/articles/AppropriatingArtists.pdf, which discusses this tension.

Fred von Lohmann said...

I'm afraid I have to disagree with Mr. Sanders -- I don't see how "first sale" makes any difference to the analysis. Section 109 says that notwithstanding 106(3), an owner may sell or otherwise dispose of a copy. Nothing in 109 purports to limit 106(2).

Which means first sale doesn't tell us much about the difficult question of when adding material infringes the derivative right.

As for Mr. Boyden's comment, I agree that the 106(2) right will often be redundant with other exclusive rights. That doesn't mean it doesn't offer copyright owners substantial tactical advantages in particular cases. For example, a licensee may have the right to reproduce, but not create derivatives (which is why a book publisher doesn't get to make movies of your book w/o permission).

Lots of exclusive rights overlap significantly (see, e.g., public display and reproduction in the electronic transmission context), but still are valuable in the right circumstances.

joshua wattles said...

Fred von Lohman wrote : For example, a licensee may have the right to reproduce, but not create derivatives (which is why a book publisher doesn't get to make movies of your book w/o permission).

I just participated in a class where this example was given: a music Website obtains a statutory 115 license granting reproduction rights from the music publisher for a DPD but the user also makes a thirty-second clip for previews. Is the clip unlawful because it is a reproduction without license or is it unlawful as a derivative work? A well-regarded music publishing specialist in the room said it was a derivative work and that was the evil. The Harry Fox form would permit the clip, I believe; but that was outside the scope of the issue as framed.

Thos said...

Though the owner of the book does not own the work as a work, the owner of the work does not own the book as a book. Only a change to the work as a work, not the book as a book, would create a derivative work. So I'm doubtful whether placing another work in physical contiguity with another work is any kind of infringement (though it might breach a publishing or sales contract). I share the general doubt about the usefulness of the derivative work concept. A similar debate has been conducted about the "adaptation right"; or perhaps it is the same debate.