1. Class 4 Derivative and Compilation Works

2. Copyright Law – Class 4 © 2011 Anne S. Mason Review Background and policies of copyright law -- to encourage creation but also give the public access to it. Pre-requisites for copyright protection: originality and fixed in a tangible medium. Idea Expression Dichotomy/Merger doctrines. Works of Authorship -- eight categories in § 102(a); Not exclusive. Facts and processes, etc. not protected § 102(b).

3. Copyright Law – Class 4 © 2011 Anne S. Mason Review contd Why not grant protection to useful articles? How do you separate out the useful article from the expression? Physically? Conceptually? Conceptual separability exists when the artistic aspects of an article can be conceptualized as existing independently of their utilitarian function. Fifth Circuit applies different test and looks at whether it would be marketable without any utilitarian use. Is the useful article still useful without the aesthetic feature?

4. Copyright Law – Class 4 © 2011 Anne S. Mason Review contd Know distinctions between sound recordings, musical works and phonorecords. There is a difference between the material object and the sound recording or musical work of authorship that is on the phonorecord (CD). Two intangible property rights reside on the same material object. Know about architectural works; what they extend to. Owners of the building may make alterations or even destroy the building without affecting the CR owned by the architect. But see § 113(d).

5. Copyright Law – Class 4 © 2011 Anne S. Mason Derivative and Compilation Works § 103 § 103: Special Forms of Works of Authorship But Are Types of § 102(a) Works Same rules apply regarding prerequisites for protection. Same rules apply regarding § 102(b). Derivatives and compilations are second generation works. Always based on pre-existing matter. Always based on a type of work that is listed in § 102(a).

6. Copyright Law – Class 4 © 2011 Anne S. Mason Derivative and Compilation Works contd The CR in these works extends only to the contribution of the author of the new work. The underlying first generation work is unaffected. Compilation: selecting, organizing, arranging things regardless of whether they were themselves capable of CR protection. Derivative: recasts or transforms first generation work within Section 102 regardless of whether it was ever copyrighted.

7. Copyright Law – Class 4 © 2011 Anne S. Mason Derivatives and Compilations Must look to see if use of the first generation work was unlawful. If protected by fair use or other defense, not unlawful, even if there was no permission. Cannot procure copyright protection on the next generation work of authorship to the extent there is unlawful appropriation. Use of the first generation work without permission OR defense = infringement. One of the bundles of rights is to be able to make a derivative work.

8. Copyright Law – Class 4 © 2011 Anne S. Mason SCHROCK v. LEARNING CURVE INTERNATIONAL (222) Thomas and Friends train characters. What are the first generation works? What is the derivative work? Photographer sued for unlicensed use of his photos. District court held there was no CR in the photos; that they were derivative works and needed permission not only to create the derivative work, but to procure CR registration for them. Learning Curve argues not original because they were intended to serve the purely utilitarian function of IDing the products for consumers (remember circus poster case). Also argued higher originality standard.

9. Copyright Law – Class 4 © 2011 Anne S. Mason SCHROCK contd Reversed on appeal. Photographer was authorized to make the photos. He, therefore, owned the work of authorship he contributed in the second generation work so long as original and modicum of creativity and fixed in tangible medium. So long as rights not contracted away. Remember that CR arises when fixed in a tangible medium so no permission to CR needed.

10. Copyright Law – Class 4 © 2011 Anne S. Mason SCHROCK contd How much difference between the first generation and the second generation is required? Compare with the computer/car image case where there was no modicum of creativity and instead slavish copying. There is no heightened standard for creativity of derivative works. Accused contends that under scenes a faire or merger, copyright protection is barred. If these were applied, wouldnt that bar protection of all photographs?

11. Copyright Law – Class 4 © 2011 Anne S. Mason SCHROCK contd Is a photograph of a copyrighted work really a derivative work? Does it transform and recast, setting aside the medium? It is the RENDITION of the subject matter, or the expression of the subject matter that matters. If completely slavish interpretation, then there might not be contributed expression and no copyrightable material. Court was persuaded by the testimony of the photographer as to the choices he made and the artistic intentions.

12. Copyright Law – Class 4 © 2011 Anne S. Mason SCHROCK contd Gracen case regarding Wizard of Oz plates. The artist was not allowed to sue for infringement of her paintings on the plates because she had slavishly copied the underlying still from the film. Her painting was not substantially different from the first generation work. Gracen (see pictures 231) pointed to Batlin (Uncle Sam bank case-see 233)) where it said the contribution must be more than trivial and used substantial difference. Created problem of heightened standard for derivative works. If there are not many differences, how do you determine which is the first generation work and which is the second for the purposes of infringement?

13. Copyright Law – Class 4 © 2011 Anne S. Mason SCHROCK contd Held: there is no heightened standard. Look to see if there is sufficient non trivial expressive variation in the derivative work to make it distinguishable from the first generation work in some meaningful way. Copyright in derivative work is thin. Only the original expression contributed by the new author is protected. Dont need protection for CR -- it arises from moment of fixation.

14. Copyright Law – Class 4 © 2011 Anne S. Mason Derivative Works contd Even the coma boy can create protectable work -- a clap of thunder, bad eyesight -- any unintentional work that yields sufficiently distinguishable variations… Must look to the effect on the first generation work. Does the derivative limit the rights that the first generation author may give away to others? Change in the medium itself should not be sufficient. Where a collage is created from images that were altered and fused with other images = derivative. Where a collage is unaltered images merely selected and arranged = collective work.

15. Copyright Law – Class 4 © 2011 Anne S. Mason FEIST PUB v. RURAL TELEPHONE (237) Big daddy of CR cases. Clarifies the extent of CR protection available to telephone directory white pages. Interesting facts are that Rural was required as a condition of its monopoly to create the directory. Interesting fact is that the infringer sought permission which was denied and proceeded anyway. Interesting fact is the planting of false data to detect and prove copying.

16. Copyright Law – Class 4 © 2011 Anne S. Mason FEIST contd Feists listings included the individuals street address; Rurals did not. 1309 listings were identical, including the fictitious ones. Rural argues sweat of the brow; Feist argues nothing was CR protected. Justice OConnor affirms facts are not copyrightable. Creation versus discovery important. Compilations are protectable as long as independently made by compiler and there is minimal degree of creativity.

17. Copyright Law – Class 4 © 2011 Anne S. Mason FEIST contd The mere fact that a work is copyrighted does not mean that every element of the work may be protected. Protection extends only to those aspects of the expression that are original to the author. Others may copy the underlying facts but not the precise words used to express them. Copyright in compilation is thin. Object of CR is not to reward the labor of authors but to Promote the Progress of Science and Useful Arts.

18. Copyright Law – Class 4 © 2011 Anne S. Mason FEIST contd Fact/expression dichotomy acts as a protector for this precept. Rejects sweat of the brow and urges those wronged to look to unfair competition or other state laws for relief. Collation of facts can receive copyright protection, from a statutory construction standpoint. Focus on the manner in which the collected facts have been selected, coordinated and arranged. Novelty is not required. There remains a narrow category of works in which the creative spark is utterly lacking or so trivial to be virtually nonexistent.

19. Copyright Law – Class 4 © 2011 Anne S. Mason FEIST contd For infringement, must prove (1) ownership of a valid copyright and (2) copying of the constituent elements of the work that are original. Rural compiled uncopyrightable facts. Question was whether it coordinated, selected or arranged them in a manner that was copied by FEIST. If mechanical or routine, may not have enough creativity. Standard of originality is low, but it does exist. Held that it lacks the modicum of creativity necessary to transform mere selection into copyrightable expression.

20. Copyright Law – Class 4 © 2011 Anne S. Mason Compilations Pre-existing materials that may or may not be independently copyrightable. Collective works are a kind of compilation. Catalogs and computer databases are compilations. Very thin protection. Baseball card price guides, car Red books, yellow pages all are compilations. Get clients to arrange things in a novel way -- not used in the industry before. Be cognizant of merger doctrine -- are there different ways to present the work?

21. Copyright Law – Class 4 © 2011 Anne S. Mason Compilations and Derivatives in Sum Is the contribution subjective and evaluative? Be sure to use contracts to protect the work if there is only thin protection. Examples: see Circular 14. Compilation of poetry is a literary work but is copyrightable under § 103 because the compiler has collected, selected and arranged the poetry from other sources. Irrelevant whether the pre-existing material is unprotected or is currently protected by subsisting copyright.

22. Copyright Law – Class 4 © 2011 Anne S. Mason Compilations and Derivatives in Sum contd Look at what the second generation author does with the original, first generation work = thats what is protected. So long as original and fixed in a tangible medium, it is protectable by CR. No rights to the first generation work. Copyright of a movie that is based on the play does not affect the duration of the copyright in the play. Note that if the movie falls into the public domain (such as because of no CR notice pre 1989) that does not drag the play into the public domain with it.

23. Copyright Law – Class 4 © 2011 Anne S. Mason