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10B derivative versions and new matter in later editions
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This page contains the following subsections:
1909 Act: §6
1947 Act: §7
1976 Act: §§103, 201(c), 304(a), 404, 408(c)
“That compilations or abridgments, 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 Act but the publication of any such new works 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.” (1909 Act, §6; almost verbatim: 1947 Act, §7)
“The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material.” (1976 Act, §103(b))
“The copyright in a derivative work covers only the additions, changes, or other new material appearing for the first time in the work. It does not extend to any preexisting material and does not imply a copyright in that material.
“One cannot extend the length of protection for a copyrighted work by creating a derivative work. A work that has fallen in the public domain, that is, which is no longer protected by copyright, may be used for a derivative work, but the copyright in the derivative work will not restore the copyright of the public domain material. Neither will it prevent anyone else from using the same public domain work for another derivative work. In any case where a protected work is used unlawfully, that is, without the permission of the owner of copyright, copyright will not be extended to the illegally used part.” (Information Circular 14)
The magazines in which successive installments of a book were first published were in the public domain, but the single-volume book in which the chapters were first collected had a valid copyright. The author argued that regardless of the pieces being in the public domain, the whole could not be combined except by the rights-holder of the book.
The book was The Autocrat of the Breakfast Table, the author was the celebrated Dr. Oliver Wendell Holmes (father of the future Supreme Court justice), and the twelve installments first appeared in the Atlantic Monthly from 1857 to 1858. Holmes deposited the work November 2, 1858, after the last installment had been published in the serial. The work was published as a book November 22, 1858. Phillips, Sampson & Company renewed the book July 12, 1886. Defendant Hurst started in 1894 selling his version, which was copied from the Atlantic Monthly. His competing volume was judged to be entirely legal. The Supreme Court noted that “upon each copy so sold or disposed of [by the defendant] a notice appeared that the [text] was taken from the said 12 numbers of the Atlantic Monthly.”
“This case raises the question whether the serial publication of a book in a monthly magazine, prior to any steps taken towards securing a copyright, is such a publication of the same, within the meaning of the act of February 3, 1831, as to vitiate a copyright of the whole book, obtained subsequently, but prior to the publication of the book as an entirety.”
“[T]he learned counsel for the plaintiff admits that the defendant had the right to make copies of these several parts, and to sell them separately or collectively, but insists that he had no right to combine them in a single volume. The distinction between publishing these parts collectively and publishing them in a single volume appears to be somewhat shadowy; but, assuming that he had no such right, it must be because the copyright protected the author, not against the republishing of his intellectual productions or ‘the order of his words,’ but against the assembling of such productions in a single volume. The argument leads to the conclusion that the whole is greater than the sum of all the parts—a principle inadmissible in logic as well as in mathematics. If the several parts had been once dedicated to the public, and the monopoly of the author thus abandoned, we do not see how it could be reclaimed by collecting such parts together in the form of a book”.
Put succinctly: “It is the intellectual production of the author which the copyright protects, and not the particular form which such production ultimately takes; and the word ‘book,’ as used in the statute, is not to be understood in its technical sense of a bound volume, but any species of publication which the author selects to embody his literary product. We are quite unable to appreciate the distinction between the publication of a book and the publication of the contents of such book, whether such contents be published piecemeal or en bloc.”
(Another case about this author’s work, also decided by the Supreme Court [Houghton, Mifflin & Co. v. R. H. White Co., 1903], is under copyright notice omission.)
“The alleged infringements consisted in the copying in reduced form of three chromolithographs prepared by employees of the plaintiffs for advertisements of a circus owned by one Wallace… . The circuit court directed a verdict for the defendant on the ground that the chromolithographs were not within the protection of the copyright law, and this ruling was sustained by the circuit court of appeals… .
“It is obvious also that the plaintiff’s case is not affected by the fact, if it be one, that the pictures represent actual groups,—visible things. They seem from the testimony to have been composed from hints or description, not from sight of a performance. But even if they had been drawn from the life, that fact would not deprive them of protection. The opposite proposition would mean that a portrait by Velasquez or Whistler was common property because others might try their hand on the same face. Others are free to copy the original. They are not free to copy the copy… .
“Yet if they command the interest of any public, they have a commercial value,—it would be bold to say that they have not an aesthetic and educational value,—and the taste of any public is not to be treated with contempt. It is an ultimate fact for the moment, whatever may be our hopes for a change. That these pictures had their worth and their success is sufficiently shown by the desire to reproduce them without regard to the plaintiffs’ rights.”
When movies were a new medium, the law had yet to establish firm rules on whether adaptations of works from other media could be infringed when a movie was similar or even had the same title.
The Court passed judgment on a short movie as to its “alleged infringement of the copyright upon the late General Lew Wallace’s book Ben Hur.”
Harper Bros. “employed a man to read [the novel] Ben Hur and to write out such a description or scenario of certain portions that it could be followed in action; these portions giving enough of the story to be identified with ease. It then caused the described action to be performed, and took negatives for moving pictures of the scenes, from which it produced films suitable for exhibition. These films it expected and intended to sell for use as moving pictures[… .] It advertised them under the title Ben Hur. [… .] It sold the films and public exhibitions from them took place.”
(Rival production firm Kalem Co. had produced and distributed a Ben Hur released December 7, 1907, one reel in length, directed by Frank O. Rose and Sidney Olcott, according to the American Film Institute database.)
The Supreme Court decided: “We are of opinion that Ben Hur was dramatized by what was done. […] Action can tell a story, display all the most vivid relations between men, and depict every kind of human emotion, without the aid of a word.” The fact that Wallace’s words did not appear in the film did not deter the Court from finding that there had been infringement.
EDITOR’S NOTE: Ben-Hur remained a popular literary property for movie adaptations. The 1926 MGM release is reportedly the most expensive silent film ever made ($4 million cost), and sold among the most tickets. The 1959 remake was also a stunning blockbuster, and won eleven Academy Awards in addition to earning the most money at the box-office ($40 million gross) that year. The novel was the best-selling work of American literature prior to Gone With the Wind.
The first book edition of Uncle Remus was published in 1880. When in 1895 a new edition of the book was issued with 112 illustrations by A.B. Frost which replaced the illustrations (by two other artists) in the 1880 edition, two copies of the 1895 edition were deposited with the Librarian of Congress. The 28-year copyright on the 1880 edition was renewed by the author’s widow when it came up in 1908, giving her another 14 years. In 1921, she secured the final 14 years permitted by the law then enforced for pre-1909 works.
No full-term copyright was taken out in 1895; had there been, it would have expired with non-renewal in 1923. After that year, Coca-Cola used Frost illustrations in its ads without license. Although the facts thus far presented indicate that there was a copyright still valid on the 1880 novel, the question was what rights could be enforced on the illustrations added 1895 without the filing of a new copyright.
Because the book was first copyrighted in 1880, when the Copyright Law then in force contained sections 4952, 4953, 4956, 4959, 93 and 94—none of which was the case after passage of the 1909 Act—the judge in the first case could write that “finding as I do that the copyright of 1880 was broadened by the proceedings taken in 1895 to include the Frost illustrations, and that the rights thus secured were for a term of twenty-eight years from … 1880, it remains to consider the effect of the effort to renew the copyright in 1908 and 1921.”
When the case came up again two years later, it had become known that the separate stories in the book (with the exception of one story) had been published (on different dates) in the Daily Constitution, a Georgia newspaper, before publication in book form, and that because those newspapers were without copyright notice, the texts had been in the public domain all along. This judge determined that the illustrations attributable to the author (which all of the illustrations in both editions of the book were, owing to the copyright being in only the author’s name) had the same status of copyright as the text. If the text was in the public domain, the illustrations without separate copyright or credit were also in the public domain.
The third court decision in the dispute concurred in its finding against Mrs. Harris but differed in the reasons. This court considered the differences between the copyright certificates issued to the publisher and the author. Appleton & Co., proprietor of the copyright, received certificates (for the 1880 edition) naming Harris and illustration team Church & Moser, and received (in 1908) ones naming Harris and illustrator Frost. Mrs. Harris received a certificate naming only the author. Such facts indicate that the court would have entertained the possibility of the illustrations remaining in copyright after the text had been thrown into the public domain owing to newspaper publication without notice. Nonetheless, “we also think it unnecessary to inquire whether [deposit] in 1895 resulted in a new copyright effective to protect the new matter in the new edition of the book for a new copyright term, or whether it enlarged the original copyright to protect for its term the added matter. In neither case would Mr. Harris be the author of the new matter, which were neither created nor paid for by him.”
Coca-Cola had objected that the law said nothing about “filing or refiling” a subsequent edition significantly changed, but a title was required to be filed just once. “Whether such procedure is an amendment of the copyright or is the granting of a new copyright for the unexpired term of twenty-eight years, is a technical nicety which should not determine substantial rights.” (Copyright under the 1909 and later acts have clearer procedures for copyright on new versions. Most of the objections and rulings of the Harris v. Coca-Cola cases are not applicable to works copyrighted after the effective date of the 1909 Act.)
“Plaintiffs’ affidavits list over 100 items appearing in their copyrighted catalogs 470 and 471 which it is alleged have been copied without permission by defendants in their 1940 Summer Catalogue. There seems to be no question that these items were substantially copied by the defendants from the plaintiffs’ copyrighted catalogs but as a defense to their action defendants contend that with the exception of two items… all of the material copied had appeared either in an uncopyrighted catalog, No. 469, published by plaintiffs prior to the issuance of Nos. 470 and 471, or in a catalog issued without copyright notice subsequent to the publication of Nos. 470 and 471, namely No. 472, and that therefore the matter had been dedicated to the public prior to the publication of defendants’ book, and no infringement occurred.”
Plaintiff’s catalogue No. 472 was circulated from June 25, 1940, and the defendants’ Summer Catalogue was “‘first mailed and thus first published on July 29, 1940.’”
“It was further established by the affidavits on behalf of defendants that all but some thirty of the items in question did not appear in plaintiffs’ uncopyrighted catalog No. 469 and were therefore dedicated to the public prior to the publication of copyrighted catalogs No. 470 and No. 471. This is conceded by the plaintiffs, so that we are now concerned only with the validity of the copyright on the remaining thirty items, which first appeared in either 470 or 471 and with respect to which the defendants contend that since they were republished in uncopyrighted catalog No. 472, defendants were free to copy them or any other matter found in such catalog even though the items involved had been previously protected by the catalogs 470 and 471, and that plaintiffs have lost any right of action which they may have had upon matter appearing in such copyrighted catalogs by failure of notice in No. 472.”
Plaintiffs, defendants and the judge agreed that No. 472 was a “new work” insofar as it fit what is in Section 6 concerning “Compilations, or abridgements, adaptations, arrangements, … other versions … or works republished with new matter.” The plaintiffs argued that “No. 472 was merely a new edition of copyrighted catalogs 470 and 471 with comparatively minor changes… and that the publication of No. 472 without copyright notice ‘did not affect the force or validity of the subsisting copyright upon the matter employed or any part thereof’”. (Inner quotation from Section 6.) The plaintiffs’ argument was “that by Section 6 there is a permissive right to copyright the ‘new work,’ but that the publication of the new work without the copyright cannot be considered as an abandonment of a copyright to another work… .
“Defendants strenuously urge, however, that the validity of the subsisting copyright upon the material taken from catalogs 470 and 471 and used in 472 cannot be maintained and secured if notice of such copyright is not carried in the new work… .
“While under Section 6, as plaintiffs contend, the original matter copyrighted retains the protection of the copyright when carried into a ‘new work,’ it seems to me that the copyright owner loses his rights to such protections when he neglects to include the prescribed notice in the new edition, and would be deemed by his action to have abandoned his copyright, regardless of his insistence that it was not his intention to so abandon it. A stranger to the situation who had no knowledge of any previous catalogs, on seeing uncopyrighted 472 could feel free to copy any or all matter therein contained since he would have no notice of his copyright on the portions taken from the previous copyrighted edition.”
After the case had been tried in district court, been appealed in appeals court, it returned to district court. A question without an easy answer was whether the third version of the popular song “Melancholy” had been a derivative work or not. Originally, “Melancholy” was copyrighted in 1911 as an unpublished work by Burnett (music) and Watson (lyrics). There followed a published version of that song with new lyrics composed by Norton in 1912; this version was also copyrighted, and rights were then transferred to Bennett. There then followed “the third version of that song under the name of ‘My Melancholy Baby’, published in 1914, which contained Burnett’s music, Norton’s lyrics, and an additional chorus in march time.”
The Appeals Court wrote (as quoted without criticism in the follow-up district court decision which came next), “A third version of the song was published and copyrighted by Bennett on November 5, 1914 under the title ‘My Melancholy Baby’. This version was composed of Norton’s words and Burnett’s music, with an added chorus in march time. During the final year of the copyright term, claims for renewal were made by Burnett, who assigned his renewal to the plaintiff, and by Norton’s son, who assigned his rights to the appellant. The district court held the son’s attempted renewal invalid and ruled that the plaintiff was the proprietor of the renewed copyright in the music and the title of the 1914 version but that no copyright protection exists for Norton’s lyrics again published in that version.”
The decision in the follow-up district court case goes on to report:
“The Appellate Court decided that the district judge was permitted to enter any judgment consistent with the opinion rendered, and might consider whether the 1914 version was ‘a “joint work” and a “new work” and whether the principles enunciated with respect to the 1912 version are likewise applicable to the 1914 version, and he may act accordingly.’”
The district court had previously not dealt with the issue because it was thought that the 1912 version was in the public domain owing to the only renewal having been filed by a party thought not entitled. (See summary under registration renewal rights.) Whatever the status of the 1912 copyright, the 1914 would be affected. The appeals court had decided that the 1912 version had been properly renewed. (Because the two authors were joint owners, “Burnett’s renewal… inured to the benefit of both”.) Now there was a task of determining to what extent the 1914 version was a “new work” (as opposed to a “derivative work,” although this latter term is not used in the decision).
“The 1914 copyright was of the same song composed by Burnett, and the same lyrics written by Norton as registered under the 1912 copyright, and the published musical composition gave credit for the words to Norton and for the music to Burnett. The only new matter was the change of name from ‘Melancholy’ to ‘My Melancholy Baby’, there was added an additional chorus in march time, the original chorus being in common time; and the base of the accompaniment was changed in some few respects. The tune and lyrics remained identically the same as in the Burnett and Norton compositions.
“If… Burnett and Norton were joint co-authors of the 1912 composition, certainly they were of the 1914 version, for the music and lyrics were identical; and the same result would follow as to renewal for both. But the 1914 copyright would have validity only if the composition then registered was a ‘new work’ within the meaning of Section 6 of the Copyright Law. The change in time of the added chorus, and the slight variation in the base of the accompaniment, there being no change in the tune or lyrics, would not be a ‘new work’. All that remains is the change in title, which, under the instant circumstances, would not add anything.”
The appeals court held that “Burnett and Norton were joint co-authors of the 1912 composition,” the follow-up district court did not dispute this, and the validity of the renewal of all the parts of the 1912 copyright could underpin the continued validity of the copyrights to the entirety of the 1914 version.
George Bernard Shaw’s play Pygmalion was first performed and was copyrighted in 1913. Shaw participated in creating the classic 1938 film version. The 1938 U.S. copyright on the film was not renewed in 1966. Thereafter, prints of the film were made available for rent by Budget Films, whose actions had not been authorized by any entity licensed to distribute the film, which distressed Janus Films, which had paid for the privilege of distributing the film and which could not compete with the budget rates of Budget Films. It remained the case that when live performances were given of the Shaw play, responsible companies would pay for the license necessary to perform the copyrighted play.
The Judge hearing the case against Budget Films ruled that “since exhibition of [the public domain] film Pygmalion necessarily involves exhibition of parts of Shaw’s [stage] play, which is still copyrighted, [proprietors of stage play] may prevent parties from renting the film for exhibition without their authorization.”
Budget Films, so long as they were without authorization of the Shaw estate, was entitled only to copy or distribute those parts of the film which were unique to the film version: “Thus, we affirm, without finding it necessary to repeat the rationale, 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.”
(EDITOR’S NOTE: The film is faithful to the source play.)
(Long after this trial, the copyright status of the film changed once again. See the foreign chart page.)
The 1948 Italian film The Bicycle Thief (original title: Ladri Di Biciclette) has become a classic. In 1967, Richard Feiner and Company, Inc., “entered into a contract with [the film’s owner] for the rights to theatrical, non-theatrical and television exploitation in the United States of an English-language-dubbed version of the film” lasting through (by a 1970 extension) 1992. The 1970 contract gave Feiner “the rights to distribute an Italian-language version of the film, with or without subtitles.” Feiner granted two exclusive rights (different licensees for theatrical and non-theatrical), which eventually were both held by Corinth Films.
In 1974, Italfilm acquired ownership of the film from the Italian production company as well as all rights not already assigned. International Film Exchange (IFEX) acquired “an exclusive license to create and distribute a subtitled version of the film for a period of twelve years, beginning in 1977.” In 1977, IFEX granted a ten-year license to MacMillian Films, later renamed Brandon Films.
Corinth and Feiner contend that Italfilm was required to respect Feiner’s pre-existing rights when Italfilm took ownership. IFEX, Brandon, et al., argue that Feiner’s rights were void because his side “failed to obtain the Italian Government authorization required by” Italian law when Italians contract internationally.
The “date of publication of the film was December 6, 1948… . [A]n application for a valid renewal would have had to have been filed between December 6, 1975 and December 6, 1976.” It wasn’t.
“It is undisputed that neither of the defendants ever filed for a renewal of copyright for the film during that period. Plaintiff IFEX applied for and received a renewal certificate from the Copyright Office on November 29, 1976. However, since this renewal application was made in the name of IFEX, it was not effective to validly extend the copyright term. A mere licensee, as opposed to an assignee, cannot validly renew a copyright in its own name. As a consequence, the film irrevocably entered the public domain upon expiration of the initial term of copyright.”
Although IFEX argued that its renewal should be considered valid owing to language in its contract which gave it “‘rights of renewal’”, this “could only be reasonably interpreted as granting IFEX a right to secure a renewal of copyright in name of the author.” Section 24 of the 1909 Act was cited.
As for the conflicting licensings of subtitled versions: “since it appears clear that the film is now in the public domain, and that neither party may properly claim any proprietary rights in the film, it is not necessary to resolve these issues.”
(EDITOR’S NOTE: Entry of the United States into URAA/GATT in 1994 resulted in the United States respecting Italian copyrights in instances where the expiration of the American copyright in the same work had previously put the work into the U.S. public domain. The Bicycle Thief reportedly now enjoys copyright protection in the United States on the basis of an Italian copyright which had never lapsed.)
When Video Images was charged with infringing rights to NBC’s 1960 broadcast of Peter Pan (for which Jonathan Sonneborn was found guilty), admitted copier “Sonneborn urges this Court to conclude that NBC has no interest in Peter Pan that is capable of being copyrighted. He argues that NBC only made ‘trivial’ additions to the underlying theatrical work… . The 1960 NBC production of Peter Pan meets the requirements of a derivative work.
“I viewed the 1960 and 1956 versions of Peter Pan side by side. Innumerable differences of camera angle, stage direction and editing of camera views are apparent between the two versions. These differences in the 1960 version amount to ‘modifications which, as a whole, represent an original work.’ NBC did not have to change the content of the theatrical production of Peter Pan in order to author an audiovisual work worthy of copyright protection. Rather, the television production itself was a modification of the original work… . [NBC] produce[d] an audiovisual work that was distinct both from the theatrical production and the 1956 audiovisual work. The element of independent creation occurred in the direction of cameras, color mix, stage business and special effects.”
(A more thorough summary of this case is under limited publication of movies.)
UAV, a homevideo company aware that the copyright in the motion picture McLintock! (1963) had not been renewed, issued an unauthorized homevideo edition. The two companies which had rights derived from the original production, sued, contending that UAV infringed a derivative version of McLintock!: the “panned and scanned” version protected by a separate copyright.
“In 1993, Batjac created a ‘panned and scanned’ version of the McLintock! motion picture for the videocassette and television market. Panning and scanning is the process by which motion pictures are adapted from the wide screen theater format known as ‘Panavision’ [and similar systems] to a narrower format capable of fitting on a television screen. The ‘aspect ratio’ of the motion picture (i.e., the ratio of the screen length to the screen height) was 2.35:1. Batjac reduced the aspect ratio of the 1993 version of McLintock! to 1.33:1. In other words, the television version of McLintock! uses only about 56% of each from the 1963 picture. In addition to reconciling the aspect ratios, Batjac edited the motion picture’s monaural soundtrack by remixing, resequencing, sweetening, balancing, and stereoizing it, and also added entirely new sound material.
“On February 23, 1993, Batjac transferred exclusive domestic home video rights in the 1993 McLintock! to Maljack for a term of years. [Number of years not specified in decision.]
“On April 12, 1993, Batjac registered the 1993 McLintock! with the Copyright Office as a ‘derivative work.’ The registration certificate lists Batjac as the ‘copyright claimant.’ The preexisting material is listed as the ‘previously published motion picture.’ The material added to the work is listed as ‘new editing of visual and sound material (including editing for new visual format, sound remixing, resequencing, sweetening, equalization, and balancing) and addition of new sound material.’
“In 1993, UAV began producing and distributing video cassettes of McLintock!. UAV’s videocassette version of McLintock! was photographically identical and largely aurally identical to Plaintiff’s 1993 McLintock! UAV’s only change was to replace the original soundtrack music with new music. UAV later created and released its own pan and scanned version of the public domain McLintock! and ceased distributing the copy of the 1993 McLintock!”
“There is no dispute that if the 1993 copyright is valid, Plaintiffs own it. UAV, however, asserts that the copyright is not valid because the 1993 McLintock! lacks sufficient originality to qualify for copyright protection. UAV asserts that Batjac’s changes … are merely mechanical rather than creative alterations to the underlying work… .
“To be copyrightable, a work must possess more than a de minimis degree of creativity; the work must possess ‘at lease some minimal degree of creativity.’ [Quote is from Feist, 499 U.S. at 363.]…
“UAV contends that the pan and scan process is a mechanical one where the author of the pan and scan work simply follows the action in a movie… . On the other hand, the Copyright Office also has stated that there is ‘virtually an infinite number of possible’ pans and scans of a film, and that the results are ‘virtually indistinguishable from actual camera pans.’ The Copyright Office further recognizes that ‘the aesthetic effect of panning and scanning’ varies depending upon the manner in which the process is conducted. According to the Motion Picture Association of America, the person panning and scanning a wide-screen motion picture ‘can vary the speed with which the “camera” pans across the image… [and] can zero in on specific features on the film image and accentuate them in the video version.’
“The pan and scan process clearly has the potential to create a copyrightable derivative work and, according to Nanette Petruzzelli, Chief of the Examining Division of the Copyright Office, panned and scanned versions of prior films are accepted for copyright registration… .”
“Plaintiffs have produced evidence detailing the creation of the panned and scanned McLintock!, and the changes are sufficiently original to warrant protection. Michael Wayne, President and Chairman of the Board of Batjac (and son of John Wayne), created the pan and scan version by ‘mak[ing] artistic decisions about the composition of each frame of the 1963 picture, determining which portions should stay and which should be “chopped off.”’ Wayne attempted to show the portions of the film ‘that [he] believed would be most effective for the storytelling, the characters, the interplay of characters and the quality of the 1993 VHS videocassette version of the film.’ In addition, the Court compared the 1993 McLintock! to the public domain McLintock!, and the Court finds that Wayne’s changes are sufficiently original to warrant copyright protection for the new pan and scan material.” The Court also affirmed that the soundtrack had been changed enough to be distinguishably different from the public domain version.
(Note: throughout the above, the spelling of the title of the film has been corrected from how it appears in the decision.)
EDITOR’S NOTE: The editor disagrees with the opinion of the Copyright Office about pan and scan only insofar “that the results are ‘virtually indistinguishable from actual camera pans.’” Pans made upon completed film render objects being moved across as artificially two-dimensional where actual camera movement reveals and conceals sidal detail as the object moves across the screen. This difference in opinion does not affect the verdict insofar as it remains based upon the valid conclusion that creativity is entailed in the process of selecting and excluding the portions of the original image to be retained for the cropped version.
(I have created a supplemental page comparing widescreen frames from McLintock! with the cropped versions in two different television versions of the film. Comparisons of widescreen and panned-scanned versions.)
Cases Summarized in Other Sections
|Silverman vs CBS (launch this) decided who had the right to create a theatrical version of Amos ‘n’ Andy given that the creator of the new version used dialogue from scripts still under copyright although the characters themselves had entered the public domain along with earlier scripts of the long-running radio series.
Lone Ranger Television, Inc vs Program Radio Corporation (launch this) concerned whether, after remixing the sound of old radio dramatic programs, there was infringement of the underlying works.
Kalem Co. vs Harper Bros (launch this) was a Supreme Court decision concerning a book adatpted without authorization into a movie.
“[N]otwithstanding a termination, a derivative work prepared earlier may ‘continue to be utilized’ under the conditions of the terminated grant; the clause adds, however, that this privilege is not broad enough to permit the preparation of other derivative works. In other words, a film made from a play could continue to be licensed for performance after the motion picture contract had been terminated but any remake rights covered by the contract would be cut off. For this purpose, a motion picture would be considered as a ‘derivative work’ with respect to every ‘preexisting work’ incorporated in it, whether the preexisting work was created independently or was prepared expressly for the motion picture.” Quotation of H. R. Rep. No. 94-1476, at 127, quoted in full within the judgment of Shoptalk v. Concorde-New Horizons, 168 F.3d 586 (2d Cir. 1999).
On November 1, 2006, the U.S. Copyright Office in its emailed periodical NewsNet, Issue 299, reported that the Copyright Register had decided that ringtones are derivative works if excerpted from a musical composition:
“COPYRIGHT OFFICE RESPONDS TO NOVEL QUESTIONS OF LAW FROM COPYRIGHT ROYALTY BOARD (71 FR 64303)
“The Copyright Royalty Board, acting pursuant to statute, referred two novel questions of law to the Register of Copyrights. Specifically, the Copyright Royalty Board requested a decision by the Register regarding whether ringtones (monophonic, polyphonic, or mastertone) are subject to the statutory license for making and distributing phonorecords under the Copyright Act, and if so, what legal conditions and/or limitations would apply. The Register transmitted a Memorandum Opinion to the Copyright Royalty Board stating that, in general, a ringtone will fall within the scope of the statutory license unless it has so altered the musical composition as to constitute a derivative work. Simply excerpting a single portion of a licensed sound recording of a musical composition will not constitute the making of a derivative work. The Register states that it is clear that many, but not all, ringtones will fall within the scope of the section 115 license. Therefore, it is appropriate for the Copyright Royalty Judges to determine royalties to be payable for the making and distribution of ringtones under the compulsory license. For further information, go to http://www.copyright.gov/fedreg/2006/71fr64303.html”
The Compendium of Copyright Office Practices is an internal document used by the Copyright Office to guide Office employees in their work. The 1970 edition states:
“To be registerable as a ‘new version,’ a motion picture should contain new visual elements or substantial revisions.
“Examples of copyrightable new matter:
“(1) English subtitles on a previously published foreign film.
“(2) An explanatory prologue added to an Italian film version of an opera.
“(3) An edited version of War and Peace, running 100 minutes rather than 200.” (pg. 2-52, as 2.14.3, III b)
Elsewhere in the Compendium (1970 edition), it indicates some examples that some people might regard as just as worthy of being “new versions” as the examples listed above but which the Copyright Office considers not necessarily to be and not to be:
“The Copyright Office takes no position as to whether copyright in a motion picture covers the integrated sound track portions of the work.
“Registration is not made for a sound track alone, or for a sound track as the only new matter in a previously published or registered motion picture.
“(1) An old silent film with a new sound track.
“(2) A previously published foreign film with a dubbed sound track in English.” (pgs. 2-46 and 2-47, within 2.14.1, III)
(EDITOR’S NOTE: In fairness to the Copyright Office, it should be pointed out that the new soundtrack to the silent film (usually this is of music, although sometimes creators add spoken narration or even dubbed voices) and the dubbed-English soundtrack to the foreign film, can be copyrighted in classes other than the two for motion pictures (L and M). The musical soundtrack can be copyrighted as a music composition or as a phonorecord, for instance. Companies which add newly-recorded musical soundtracks to silent films often also make other changes so that the combined sound-and-picture work qualifies as a “new version” for purposes of copyright. These other changes can include: adding new introductory titles; changing the length of time that intercut dialogue titles appear on screen; altering the playback speed to different extents on different scenes; combining shots from different editions of the original release, in instances where the foreign release contained different performances than the domestic release or where some countries were shown scenes cut in the prints released in other countries.)
10B.1 rights to create derivative versions
1909 Act: §1(b)
1947 Act: §1(b)
1976 Act: §103
The District Court, Appeals Court, and Supreme Court ruled that television comedian Jack Benny, his television network and his sponsor did not have the right to appropriate vast portions of a serious MGM drama and insist that they were permitted to do so without authorization because their version was burlesque. Not just anyone had the right to create a derivative version. “One person has the sole right to do this — the copyright owner, [in that] he has the exclusive right to make any other version”.
(A thorough summary of this case is under parody.)
The artist who made a painting has the exclusive right to reproduce more of the same. Common law permits this. If he publishes the painting, he must obtain a statutory copyright if he is to continue enjoying his rights.
(The Supreme Court in its affirmation discussed only the legality of duplicate registration. See listing under registration duplicated.)
Hammett, the author of The Maltese Falcon (“first published serially in a magazine during 1929 and 1930”) and other classic works of detective fiction, sued to have declared that Warner Bros. had “no right to a fictitious character [Sam Spade], excepting the right to use such character in and as part of a story [The Maltese Falcon] written by [Hammett] and sold to” Warner Bros. Hammett and the publisher of the book version (Knopf) on June 23, 1930, had sold Warner Bros. “exclusive motion picture and radio rights in the published works and in any future arrangements or revisions of them and the exclusive rights to use of the title or titles of the works copyrighted in motion pictures.” No adaptation of The Maltese Falcon could be faithful to its source without including and using the name of its principal character, private eye Sam Spade. “Since the publication of The Maltese Falcon, Hammett has written other stories in which ‘Sam Spade’ has been the principal character…
“On May 15, 1946, Hammett assigned to other parties the exclusive right to the use in radio, television, motion pictures and other media of the name ‘Sam Spade’ and the title, ‘The Adventures of Sam Spade’ in connection with original material to be written by others. Subsequently, since about July, 1946, these assignees and the successors have produced a weekly radio show called Adventures of Sam Spade”.
On January 29, 1948, then again May 13, 1948, and May 28, 1948, an attorney for Warner Bros. wrote CBS (the radio network carrying the Sam Spade series) and another assignee that, among other claims, “The character and name of Sam Spade are an integral part of this valuable literary property…”, by which Warner Bros. meant The Maltese Falcon, in which Warner and Knopf held copyright. As Warner wrote in another letter, “Warner Bros. has the exclusive rights to the radio rights to use the Maltese Falcon and is the only one who can authorize use of Sam Spade on the air.” Warner Bros. mentioned in court filings “several broadcasts licensed by plaintiff.” Unfair competition could be shown specifically to have occurred in the market of radio broadcasting.
The broadcasts had occurred in California, yet the contract between Hammett and Warner “makes their rights subject to New York law in so far as state law is applicable.” The Court considered this to be a California case and dismissed the complaint.
Be sure to read the case summarized next, as it involves the same novel and some of the same parties.
CBS was sued over “the contention that Warner has the exclusive right to use the characters portrayed in Maltese Falcon—and thus to create sequel to the work—in the field of motion pictures, radio and television by virtue of the grant to Warner as ‘Purchaser’ under” the 1930 contract. The Court said this contract “is completely silent as to whether or not the author retained any right to use the characters of Maltese Falcon in other works.”
Literary history has shown “it became custom that, in the absence of express agreement to the contrary, an assignment of copyright in this field of writing [detective fiction] did not include the right to exclusive use of the characters portrayed in the copyrighted work. In other words, the author customarily retained so-called character, series or sequel rights in the copyrighted work. The existence of this custom is one of the surrounding circumstances which aids interpretation of the instruments involved at bar.” The Judge cited Sherlock Holmes (of Arthur Conan Doyle) and Perry Mason (of Earl Stanley Gardner). In line with this practice, Knopf and Warner Bros. did not object when Hammett wrote and published his second Sam Spade story in 1932. New York law (the chosen jurisdiction of Warner and Knopf) stipulates, “Evidence of custom is permitted for the purpose of qualifying the meaning of a contract where otherwise ambiguous.”
Legal precedent in Federal copyright law shows that “the courts have recognized that statutory copyright does not divest the author of such non-statutory or common-law rights as he may have to exclude others from making use of the title or the characters.” There having been no transfer of the Falcon characters expressly granted, Hammett retained them and “was entitled to license third person to use such characters.” The Court acknowledges that such licenses may not be “so employed in subsequent works as to invade the copyright monopoly.” Of the almost 200 radio scripts in evidence, “plaintiffs state that defendants’ broadcast of ‘The Kandy Tooth’ episode presents the strongest instance in support of the claim of infringement.” The Court recognized similarities between “The Kandy Tooth” and The Maltese Falcon, but “the incidents which are similar do not perform like dramatic functions in the two works.” Conclusion: “the defendants’ series of broadcasts have ‘kept clear’ of the ‘expression’ of the copyrighted work, and hence do not infringe Warner’s copyrights”.
(EDITOR’S NOTE: A significant distinction is that copyright protection for a character ends when the first work in which that character appeared enters the public domain. However, the sale of the copyright to that first work does not divest the author of his rights in that character. Apart from specific language in a contract, the author retains those exclusive rights in the character for the life of the copyright.)
The Appeals Court opined that the $8500 paid by Warner Bros. for the movie rights “would seem inadequate compensation for the complete surrender of the characters made famous by the popular reception of the book.” From the legal perspective: “If Congress had intended that the sale of the right to publish a copyrighted story would foreclose the author’s use of its characters in subsequent works for the life of the copyright, it would seem Congress wold have made specific provision therefor.” Warner Bros. was capable of exercising its rights in the property it bought without excluding the author from extending his annals. The judgment of the earlier courts was affirmed. Although Hammett won, the Court did not give Hammett something he sought: a declaration of his rights, for “no useful purpose could be served” by that declaration, said the Court.
The decision did not rule out that in other situations involving other books, the sale of movie rights to a book might include exclusive movie rights to the characters. “It is conceivable that the characters really constitute the story being told, but if the character is only the chessman in the game of telling the story he is not within the area of the protection afforded by the copyright.” The standing with regard to The Maltese Falcon was that, “The characters were [merely] vehicles for the story told, and the vehicles did not go with the sale of the story.”
Cases Summarized in Other Sections
|Trust Company Bank vs MGM/UA Entertainment Company (launch this) came to be litigated because MGM hoped it could make a sequel to Gone With the Wind just on the basis of the original contract by which Margaret Mitchell sold the rights to make the 1939 movie.|
10B.2 rights to authorize derivative versions
The verse “Plain Bull” (“Thirteen four-line stanzas descriptive of a cowboy’s attempt to put his brand on a maverick bull”) was set to music without the author’s knowledge, consent, or enrichment. He argued that he should be able to authorize new versions of his work, but the Court considered the result to not be another “version” of the poem, as the copyright law did not accord such a reading to poems. “And while in the 1909 revision of the Copyright Act composers were given the exclusive right of recording their copyrighted musical compositions and the like right was granted to authors of copyrighted dramatic works, Congress did not see fit to give like protection to copyrighted poems, stories or works of that nature.”
The poet attempted to claim that his work had been mis-classified, that it should be regarded as a dramatic work. The Court disagreed. “The work is a narrative poem. Undoubtedly, it could be arranged and dramatized in the form of the animated cartoon… . Most novels and stories and even some news stories may be dramatized but nobody thinks of them as dramatic works.”
The requirement limiting use by “‘compulsory licensee’” of copyrighted musical compositions “in mechanical reproduction to the use originally made or granted by the [copyright owner] in the initial mechanical reproduction, has been liberally construed… to mean that the reproduction need not be identical, but that some latitude has been allowed to each manufacturer to prepare an individual instrumental or vocal arrangement of the composition.”
When the defendants recorded “a Spanish dance song” called Malaguen, “the said musical version and arrangement was made without the knowledge or consent of the plaintiff”. Nonetheless: “The defendants… admit that there is owing to the plaintiff a certain amount of royalties”. No infringement was found, only that royalties were due.
“To hold that the separate and distinct right to make a version and arrangement also existed in connection with the right of mechanical reproduction, would be to rewrite the section so as to add to subsection (c) the right to mechanical reproduction. This the Congress has steadfastly refused to do on the ground that to do so would be to create an opportunity for the birth of mechanical trusts… . The court may not create a right which the Congress has seen fit not to grant.”
The Appeal Court said that plaintiff “executed what it called its ‘Mechanical License agreement,’ which United Masters in turn also executed.” (Although the defendants accepted their loss in the District Court, the plaintiff had appealed, seeking a finding of greater wrong.)
CBS broadcast a half-hour program about Charlie Chaplin shortly after the great filmmaker/comedian’s death. Two-fifths of the program were film clips that had not been licensed from the copyright owner. “According to CBS, its use of the Chaplin films was essential to acquaint the public with the artistic genius of the controversial Chaplin. Due to Chaplin’s twenty year absence and his withholding of his later films from the American market, CBS argues, it could not properly communicate the significance of his life without showing these excerpts.”
The Court deflated CBS’s argument that “Chaplin’s artistic expressions were newsworthy in themselves. But this argument misconceives the policies of the copyright laws. Under CBS’ view, the more successful an artist is, the less he can protect or demand payment for use of his work. Yet the copyright law bestows a monopoly right on the copyright owner to encourage artistic creativity, and would be undermined by CBS’ bootstrapping argument.” (All quotes are from the District Court decision, which was affirmed by the Appeals Court.)
(A thorough summary of this case is under fair use.)
10B.3 derivative versions not authorized
“[P]rotection 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.” 1976 Act, §103(a)
Jed Sparks was the author of The Writings of George Washington, [etc.] (the full title is much longer) published in 12 volumes. Folsom, Wells and Thurston later issued The Life of George Washington in the Form of an Autobiography, which made extensive use of letters first published in Sparks’s work. Sparks had evidence that he had obtained the exclusive rights to Washington’s private writings.
“The work of the defendants is mainly founded upon these letters, constituting more than one third of their work, and imparting to it its greatest, nay, its essential value… . It is not a case, where abbreviated or select passages are taken from particular letters; but the entire letters are taken, and those of most interest and value to the public… [and is thus] a clear invasion of the right of property of the plaintiffs’…
“388 pages of the said pirated book [which totals 866 pages] are copied verbatim … of matter originally published by the said Sparks, under his copyright, and which had never been published or printed, and which the said Sparks had the exclusive right and privilege to print, publish and sell.”
illustration: The “Lansdowne” portrait of George Washington, painted 1796 by Gilbert Stuart, now owned by the U.S. Government, photographed by the website editor at the National Portrait Gallery.
“Since 1996, Palladium has been in the business of producing original master sound recordings of popular hits, commonly referred to as ‘karaoke music tracks.’ The tracks are designed to allow consumers of the music to sing along with their favorite songs. Palladium hires musicians and technicians to record music made popular by other artists. The recordings it produces sound similar to the original artist and are produced ‘in the style’ of that artist. Palladium does not, however, incorporate any previously recorded sound components in its production and it does not attempt to change in any way the original musical compositions it uses. The final product is an original sound recording of a previously copyrighted musical composition… .
“It is undisputed that from 1996-1999 Palladium produced its sound recordings without licensing from the copyright owners of the underlying musical works. It sold its sound recordings to third-party manufacturers, like defendant TPC, who then combined the sound recordings with synchronized lyrics to produce private label karaoke products…
“In 1999, Palladium decided to launch its first retail product line by offering its sound recordings directly to consumers through digital downloads on the Internet.” Palladium discovered in November 2002 that EatSleepMusic was selling online Palladium recordings that had been sold by Palladium to TPC despite TPC being restricted from selling to other resellers. The other two companies, once sued by Palladium, “moved for summary judgment claiming that Palladium’s copyrights were invalid and unenforceable because Palladium produced the sound recordings at issue without the authority of the copyright owners of the underlying musical compositions.”
“To prove ownership of a valid copyright, Palladium presented evidence of twenty certificates of registration obtained for the musical sound recordings it has produced. Each certificate identifies Palladium as the author and lists no preexisting works or materials. Nonetheless, defendants argued that Palladium did not own valid and enforceable copyrights in the sound recordings. To overcome the presumption of validity created by the certificates, defendants presented evidence that the sound recordings Palladium had registered are based upon preexisting musical compositions, and that Palladium had failed to obtain either compulsory or consensual licenses from the copyright owners of those preexisting musical compositions.
“The district court agreed with defendants that Palladium’s sound recordings are ‘derivative works’ of the underlying musical compositions and that such derivative works are only protected by the Copyright Act if there is lawful use of the preexisting material. The district court found that Palladium had failed to obtain a license from the copyright owners of the underlying musical compositions as provided in 17 U.S.C. 115, and thus was not lawfully using the preexisting material. As a result, the district court concluded Palladium’s copyrights were therefore invalid and unenforceable.”
The Appeals Court affirmed that “Palladium’s sound recordings are derivative works, and its copyrights in the sound recordings are invalid and unenforceable because it has failed to obtain compulsory or consensual licenses from the copyright owners of the underlying musical compositions as required”.
The Court took up an argument made by Palladium:
“Palladium does not dispute that its sound recordings are ‘works’ as contemplated by the Copyright Act, nor that they are ‘based upon’ preexisting works—the underlying musical compositions. … Palladium argues that since its sound recordings do not incorporate any preexisting sounds, they are entirely ‘original’ and therefore not ‘derivative’ for the purposes of the Copyright Act.
“Palladium either simply misreads Circular 56 [Palladium’s source of information], or draws from it an unwarranted inference. Nothing in Circular 56 supports the conclusion that only sound recordings that incorporate some preexisting sounds are “derivative” works for the purposes of the Copyright Act. Indeed, one example in the circular explains in unmistakable terms that a party in Palladium’s position must first ‘comply with permissions and license procedures’ before it can obtain a valid copyright in a sound recording, ‘derivative’ or otherwise, if it is based upon a preexisting musical composition.” There was no question that Palladium’s works were based on pre-existing works.
Cases Summarized in Other Sections
|Jerome J. Gordon vs Guy Edmund Weir, et al (launch this) was an infringement case where one party used his own variation of the other party’s work without authorization.|
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© 2007 David P. Hayes