Infringement by Copying Public Domain Works

Riddle me this Batman: when can you commit infringement by copying public domain works? When the public domain work is a derivative work and the underlying published work is still under copyright. The issue has its roots in the 1909 Act, in cases construing Section 7 of that Act, which read:

Compilations or abridgements, adaptations, arrangements, dramatizations, translations, or other versions of works in the public domain or of copyrighted works when produced with the consent of the proprietor of the copyright in such works, or works republished with new matter, shall be regarded as new works subject to copyright under the provisions of this title; but the publication of any such new work shall not affect the force or validity of any subsisting copyright upon the matter employed or any part thereof, or be construed to imply an exclusive right to such use of the original works, or to secure or extend copyright in such original works.

This section led to numerous court of appeals opinions and one Supreme Court decision, Stewart v. Abend. The bolded part at the end is particularly inscrutable even by the standards of the 1909 Act. If for example, where there is an authorized derivative work, shouldn't the original material included in the derivative work fall into the public domain when the derivative work falls into the public domain? One way to interpret this section is to say that when an authorized derivative work falls into the public domain, anyone can use that work and anything from the original included in the derivative work. In the case of unpublished screenplays, that is what the Ninth Circuit held in Batjac Productions, Inc. v. Good Times Home Video Corp., 160 F.3d 1223 (9th Cir. 1998).

But earlier, in Russell v. Price, 612 F.2d 1123, 1128 (9th Cir.1979), the court came out differently where published works were involved. Russell involved a film version of Pygmalion, a play by George Bernard Shaw. In 1935, Shaw licensed rights to produce a film (also called Pygmalion) based on his published, copyrighted play. Copyright in the film expired through a failure to timely renew. Copyright in the play, Pygmalion, continued until 1988. Defendant began distributing the now public domain film in 1972. The owners of the play (Shaw had died) brought an infringement claim based on infringement of the play. The Ninth Circuit held that because parts of the film used the still-under-copyright play, infringement occurred. As stated by the court:

Thus we reaffirm ... the well-established doctrine that a derivative copyright protects only the new material contained in the derivative work, not the matter derived from the underlying work. Thus, although the derivative work may enter the public domain, the matter contained therein which derives from a work still covered by statutory copyright is not dedicated to the public. The established doctrine prevents unauthorized copying or other infringing use of the underlying work or any part of that work contained in the derivative product so long as the underlying work itself remains copyrighted. Therefore, since exhibition of the film “Pygmalion” necessarily involved exhibition of parts of Shaw's play, which is still copyrighted, plaintiffs here may prevent defendants from renting the film for exhibition without their authorization.

The issue arose again last August in a different setting, the Andy Griffith television show. The show aired on CBS from 1960 to 1968 and starred Griffith as Andy Taylor, Sheriff of Mayberry, North Carolina with Ron Howard as his son, Opie, Frances Bavier as his aunt, Beatrice "Aunt Bee" Taylor, and Don Knotts as his deputy, cousin, and best friend Barney Fife.
In March 1997, Paramount Pictures Corporation, a predecessor-in-interest to CBS, submitted renewal applications for episodes 80 through 95 (the “16 Middle Episodes”), as well as sixty other episodes. On June 5, 1997, the Copyright Office rejected the renewal applications for the 16 Middle Episodes as untimely, and into the public domain they went. A company called Rel Funds International, Inc. distributed the Middle Episodes, and CBS sued for infringement of the earlier episodes based on the Russell theory. The court held for CBS, 2007 WL 2325218 (N.D. Tex. Aug. 13, 2007). What I fine ironic about this result -- aside from the Middle Episodes not really being in the public domain anymore -- is that in the context of statutory damages, plaintiffs have successfully argued around the Section 504(c) limitation on only one award per derivative work or compilation (i.e., here the series), and obtained multiple awards of damages based on each episode. Apparently, when it comes to the precedent question whether each episode is under copyright, we magically are not to focus on the episode but on the series.