Infringement II Derivative Works and Other Rights Prof

Infringement II: Derivative Works and Other Rights Prof Merges – Intro to IP 2. 21. 12

The Big Sleep

Agenda • Derivative Works: Definition and Rights • Specific Works, Rights, and Limitations • Moral Rights

“Little guy” sues film studio scenario Hudson v. Universal Studios, 89 U. S. P. Q. 2 d 1132 (SDNY 2008) “Pro se” plaintiff No substantial similarity between play and film

Anderson v. Stallone • Anderson’s “treatment” – How different from Stallone’s 1 -paragraph description of Rocky IV in press appearances • “Pitch meeting” with MGM – Effect of MGM “release”

Aside on the “market for ideas” • Difficult to create “markets for ideas” • “Arrow’s information paradox” • One solution: property rights over ideas; reduces chances of being ripped off, makes it easier to disclose

Aside: preventing cases like Anderson • Movie studios and other entertainment companies have elaborate procedures to prevent “access” – Because popular works often give rise to copyright infringement/misappropriation claims – The “unopened letter” policy

Sec. 101: Deriv. Work 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 work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a “derivative work”.

Sec. 103. Subject Matter of Copyright: Compilations and Derivative Works (a) The subject matter of copyright as specified by section 102 includes compilations and derivative works, but protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully.

Sec. 106 Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following: (1) to reproduce the copyrighted work in copies or phonorecords; (2) to prepare derivative works based upon the copyrighted work;

Anderson Holding • Plaintiff cannot sue Stallone for copyright infringement; derivative work here was unauthorized, so no claim against copyright holder • House Report: distinguish compilations from derivative works

What about 3 rd parties? • “Even if this court were to interpret section 103(a) as allowing an author of an infringing work to sue third parties based on the non-infringing portions of his work, 106(2)” prevents suit against the underlying copyright holder. • IPNTA 5 th ed. at 562

Why 106(2) at all? • Aren’t all derivative works “substantially similar, ” so an infringement of 106(1) (right to make copies)?

Goldstein: Chain of derivatives argument … • Book movie TV show plush toys lunch boxes clothing etc. • Last item in chain may not be substantially similar to elements of the book. . .

Unauthorized derivative works • Legal treatment: no rights for the author of the derivative work • Actual practice: sometimes, an unauthorized “audition” results. . .

Video Game cases: IPNTA 5 th 555 • See also MDY Industries, LLC v. Blizzard Entertainment, Inc. , 89 U. S. P. Q. 2 d 1015 (D. Ariz. July 14, 2008 ) • Derivative work: “bot” program for online gaming – Contract issues, DMCA issues. . .

Specific Rights Under Copyright • Copy, Derivative works • Distribution – First sale issues

Distribution: “Making Available” Courts are divided over whether U. S. copyright law recognizes a making available right. See, e. g. , Capitol Records, Inc. v. Thomas, 579 F. Supp. 2 d 1210 (D. Minn. 2008) (distribution, not just “making available, ” required under 17 USC § 106). But see A & M Records, Inc. v. Napster, Inc. , 239 F. 3 d 1004, 1014 (9 th Cir. 2001) (‘‘Napster users who upload file names to the search index for others to copy violate plaintiffs’ distribution rights. ’’)

Mirage Editions v. Albuquerque ART, Inc. – IPNTA 5 th 568

Derivative Work? First Sale?

Copyright, 1 st Sale and Contracts • First sale doctrine cuts off (many) rights of copyright owner – eg, right to control or limit resale • Label license cases: UMG Recordings, Inc. v. Augusto, 558 F. Supp. 2 d 1055 (C. D. Cal. 2008) (label NOT a license that restricts transferee’s rights)

First Sale and Importation • Does a sale authorized by the copyright holder overseas cut off the copyright owner’s right to control imports? • CF. Quality King, 523 US 125 (1998) • Supreme Court activity

Omega S. A. v. Costco Wholesale Corp. , 541 F. 3 d 982 (9 th Cir. 2008)(Smith, Jr. , J. ), where the Court accepted review but then left the issue in the air with a 4 -4 tie vote affirmance, Costco Wholesale Corp. v. Omega, S. A. , 131 S. Ct. 565 (2010)(per curiam without opinion). 2 Cert petitions pending. . . Kirtsaeng v. John Wiley & Sons, Inc. , Supreme Court No. 11 -697, opinion below, 654 F. 3 d 210 (2 d Cir. 2011)(Cabranes, J. ),

Random House v Rosetta Books • e. Books case – IPNTA 5 th p. 570 -71 • Reminiscent of many “new technology” or “new platform” cases

Performance and Display Rights • Detailed statutory provisions • Paintings, sculpture etc. : “single place” exception • Musical compositions vs. sound recordings – different works, different treatment … • “Open to the public”: IPNTA 5 th 572 -73

Closely bound to limitations on rights • Sections 107 -122 • Broad exceptions (fair use, 107), and very specific exceptions (119, superstations; 122, recordings for the blind) • Case study: rights in music

Copyright and music: P 574 • Musical compositions, vs. • Sound recordings

Sec. 114. Scope of Exclusive Rights in Sound Recordings. Sec. 114 (a) The exclusive rights of the owner of copyright in a sound recording are limited to the rights specified by clauses (1), (2), (3) and (6) of section 106, and do not include any right of performance under section 106(4).

Sound Recording: ℗ Kronos Quartet Composition: © Phillip Glass

Compulsory licensing • Cable retransmissions • Music “covers” – section 115 • Webcasting subscription services, section 114 (sound recordings) – Compositions must always be licensed

17 USC 115(a)1). . . [A]ny other person, including those who make phonorecords or digital phonorecord deliveries, may, by complying with the provisions of this section, obtain a compulsory license to make and distribute phonorecords of the work. .

Moral rights • Section 106 A: Visual Artists only • Attribution, Integrity, and “for works of recognized stature, ” nondestruction

17 USC 106 A (a) [T]he author of a work of visual art— (1) shall have the right— (A) to claim authorship of that work, and (B) to prevent the use of his or her name as the author of any work of visual art which he or she did not create; (2) shall have the right to prevent the use of his or her name as the author of the work of visual art in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation

Roberta Kwall: The Soul of Creativity