When Fair Use Threatens the Derivative Works Right

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Legal Stuff Follows Warning: This is a long post, but if you read it, most of you will understand more about Fair Use and Derivative Works than you do right now.

From The Illusion of More:

Section 106(2) of the U.S. copyright law grants authors the exclusive right to prepare derivative works.  So, the filmmaker who wants to adapt your novel into a movie must obtain your license to prepare a “derivative work” based on said novel (a.k.a the “underlying work”).  If the film creates original visual material, like a creature that might make a cool action figure, the action-figure producer would have to obtain the filmmaker’s license to prepare a derivative work based on that original design. If another party proposes a Netflix series based on minor characters from the novel, that license may remain with you as the original book author; with the filmmaker who made the first adaptation; or be shared depending on certain variables and agreements.

Suffice to say, derivative works are nearly always some use of underlying material in a new context; and  for the purposes of this post, it is fair to summarize the opinion in Brammer as holding that the use of a whole work in a new context from its original purpose was “transformative” under a fair use analysis.  So, because Brammer is an extreme example of a broader effort by certain parties to push the boundaries of fair use, this is what Carlisle was driving at with his comment; and he further noted that the word transform is part of the statutory definition of a derivative 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.”

So, it is not hard see how a misreading of “transformative” in a fair use analysis can end up validating infringement of the author’s derivative works right.  Moreover, once that “transformative” box is checked, the likelihood of finding fair use increases considerably.  This is reasonable enough when a use is made to produce a truly new expression; but when “transformative” becomes synonymous with “placed in a new context,” the courts are in danger of abrogating the foundation of nearly all licensing protected by the bundle of rights vested in the author.

. . . .

Like fair use, the derivative works right was codified in the 1976 Copyright Act, but its emerging principles can be found in caselaw dating back to at least the mid eighteenth century in both the U.K. and the U.S.  With the development of photography, followed by sound recording, motion pictures, etc., new technologies naturally fostered new ways to use the “heart” of an underlying copyrighted work.  And because law is usually slower than invention—let alone a thorough understanding of a new medium—there are several examples throughout the nineteenth century in which one could argue that copyright law was conveniently interpreted beyond statutory rationale to find infringement.

Scholar Oren Bracha offers such an analysis with respect the case he considers seminal in the development of the derivative works right.  In Kalem Co. v Harper Brothers (1911) the fifteen-minute, silent film adaptation of Ben Hurwas held by Justice Holmes to have infringed the authors’ exclusive right to “dramatize” their works under the statutory amendment of 1891.

There are actually a number of moving parts in to this particular case, but simply put, Bracha contends that Holmes stretched the meaning of “dramatize” in order to encompass the very new medium of of motion pictures and then shoehorned a rationale to find contributory infringement. “The Kalem decision was thus a crucial transitory moment,” he writes.  The decision’s rationale was already based on the new model of copyright, but its legal reasoning still relied on manipulating the doctrines that were rooted in the the traditional print-bound model.”

. . . .

[P]ublishing a photograph on a website hardly requires a major theoretical inquiry in order to compare that conduct to publishing a photograph in a magazine or a brochure.  It’s just a different form of “reproduction” and “display” and should be about ten minutes work for any court.  Likewise, most of the major platforms are just variations on the capacity to display or broadcast creative works through computer networks—a fairly new experience for us as consumers, but not necessarily as groundbreaking from a copyright perspective as the platform owners would have us believe.

Link to the rest at The Illusion of More

You can download the overview of Derivative Works from the US Copyright Office here. Following is an excerpt:

A derivative work is a work based on or derived from one or more already existing works. Common derivative works include translations, musical arrangements, motion picture versions of literary material or plays, art reproductions, abridgments, and condensations of preexisting works. Another common type
of derivative work is a “new edition” of a preexisting work in which the editorial revisions, annotations, elaborations, or other modifications represent, as a whole, an original work.

To be copyrightable, a derivative work must incorporate some or all of a preexisting “work” and add new original copyrightable authorship to that work. The derivative work right is often referred to as the adaptation right. The following are examples of the many different types of derivative works:

• A motion picture based on a play or novel

• A translation of an novel written in English into another language

• A revision of a previously published book

• A sculpture based on a drawing

• A drawing based on a photograph

• A lithograph based on a painting

• A drama about John Doe based on the letters and journal entries of John Doe

• A musical arrangement of a preexisting musical work

• A new version of an existing computer program

• An adaptation of a dramatic work

• A revision of a website

On the other hand, in constant tension with derivative works, here’s a definition of Fair Use as codified in the US in 17 U.S. Code § 107 :

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

Lawyers make a lot of money from gray areas. In the field of intellectual property law, derivative works vs. fair use is a lovely and large patch of gray. The number of examples is constantly growing. Here are short looks at three modern classics:

Transformative Fair Use (Not a Derivative Work)

From Nolo:

The transformative use doctrine is relatively new. In 1994, the U.S. Supreme Court reviewed a case involving a rap group, 2 Live Crew, in the case Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994). The band had borrowed the opening musical tag and the words (but not the melody) from the first line of the song “Pretty Woman” (“Oh, pretty woman, walking down the street”). The rest of the lyrics and the music were different.

In a decision that surprised many in the copyright world, the Supreme Court ruled that the borrowing was fair use. Part of the decision was colored by the fact that so little material was borrowed. But the Supreme Court also added a new dimension to the fair use analysis. It focused on one of the four fair use factors, the purpose and character of the use, and emphasized that the most important aspect of the fair use analysis was whether the purpose and character of the use was “transformative.”

In the 2 Live Crew case, the use of the lyrics was transformative because they poked fun at the norms of what was “pretty.” The inquiry “focuses on whether the new work merely supersedes the objects of the original creation, or whether and to what extent it is ‘transformative,’ altering the original with new expression, meaning, or message,” Justice Souter wrote in the opinion. “The more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.” (The rap group had initially sought to pay for the right to use portions of the song but were rebuffed by the publisher, who did not want “Pretty Woman” used in a rap song).

In the decades that have since passed, the standards of “transformative” have continued to evolve. Still, the status of a transformative work seems to be defined by two questions:

• Has the material taken from the original work been transformed by adding new expression or meaning?
• Was value added to the original by creating new information, new aesthetics, new insights, and understandings?

Link to the rest at Nolo

Transformative Fair Use (Not a Derivative Work)

From Artist Rights:

In 2000, Patrick Cariou, a professional photographer, published a book of portraits and landscape photographs titled “Yes Rasta.” Richard Prince, a well-known appropriation artist, altered and incorporated a number of Cariou’s photographs into a series of paintings and collages titled “Canal Zone,” which Prince exhibited in 2008 at New York’s Gagosian Gallery. In 2009, Cariou sued Prince, the Gagosian Gallery, Lawrence Gagosian, and Rizzoli International Publications, Inc. in the United States District Court for the Southern District of New York for copyright infringement. In response, the defendants raised the defense of fair use. The district court ruled in favor of Cariou, holding that Prince’s work was not fair use because it did not comment on or critique the original photographs. It ordered the defendants not to infringe upon Cariou’s copyrights and to deliver all of Prince’s unsold “Canal Zone” works to Cariou for him to destroy, sell, or otherwise dispose of.

. . . .

. . . .

On appeal, the Second Circuit reversed the lower court’s ruling and held that most of Prince’s “Canal Zone” works were fair use for several reasons:

In order to be fair use, a secondary use must transform the original by employing it in a different manner or for a different purpose than the original in order to produce a new expression, meaning, or message. A secondary use does not need to comment on or critique the original in order to be transformative as long as it produces a new message. In this case, while Cariou’s book of 9 1/2″ x 12″ black-and-white photographs depicted the serene natural beauty of Rastafarians and their environment, Prince’s work featured enormous collages on canvas that incorporated color and distorted human forms to create a radically different aesthetic. Therefore, even though “Canal Zone” did not comment on or critique “Yes Rasta,” the court still held that it was a transformative fair use of Cariou’s photographs.

Whether or not art is transformative depends on how it may “reasonably be perceived” and not on the artist’s intentions. Even though Prince expressly stated he did not “have a message,” the court still found that most observers would see Prince’s “Canal Zone” as having a radically different purpose and aesthetic than Cariou’s “Yes Rasta” and that this was enough to make the work transformative.

. . . .

[T]he Second Circuit found that there was no evidence that Prince’s transformative use had touched, much less usurped, the market for the original photographs.

Link to the rest at Artist Rights

Infringing Derivative Work

From Design Observer:

Art Rogers refers to himself as “a professional artist and photographer.” His work has often been exhibited, generally in and around his home of Point Reyes, California.

. . . .

In 1980, James Scanlon, whom Rogers had met a few years earlier, called and asked if Rogers would take a picture of the litter of pups his German shepherd had just had. Scanlon later said, “I specifically commissioned Art so that the photograph would have his genius — his special ‘magic’ — and he provided it.” Rogers spent hours finding the right pose for the Scanlons and their pups. He worked to catch just the right light. And afterwards he labored long and hard in the darkroom processing and printing the image. Rogers was just as pleased with the result as the Scanlons were. He said that “Puppies” was “one of my best images. It has a beautiful, creamy soft but crisp light . . . I wanted the puppies to look real cute, and they are cute.” The Scanlons agreed to let Rogers publish the picture in “The Point Reyes Family Album.”

In 1984 Rogers reached an agreement with a card company to sell notecard and postcard versions of “Puppies” and three other pictures. End of story — until the moment in May, 1989, when James Scanlon called to say that a “colorized” version of the photograph had been printed on the front page of the Los Angeles Times’ Sunday calendar section. Rogers quickly discovered that Jeff Koons, an artist he had never heard of, had turned his picture into a sculpture, and that the piece had been included in an exhibition at the Los Angeles County Museum of Art entitled “A Forest of Signs.”

. . . .

In October, 1989, Rogers files suit against both Koons and his principal gallery, the Sonnabend Gallery. He alleged that the three sculptures titled “String of Puppies” constituted “copies, reproductions or derivative works of ‘Puppies.'” He sought at least $375,000 in compensatory damages, and $2.5 million in punitive damages.

. . . .

Even the most apparently straightforward principles of copyright law seem mired in fudge. For example, what, exactly, is a “copy”? The accepted judicial test for copying is “whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.” This is known as the “substantial similarity” test. If I draw a mouse that looks just like Mickey Mouse, but I change the color of his spats, “the average lay observer” would instantly recognize that the one was “appropriated from” the other. But what if I put Mickey’s famous ears on a dog? The ears would be appropriated, but the work would not. “Stirring one’s memory of a copyrighted character,” as the Second Circuit Appeals Court has written, “is not the same as appearing to be substantially similar to that character.” Appropriating, by itself, is not copying. “Protection covers the ‘pattern’ of the work,” as one copyright scholar has put it.

. . . .

Then, in 1976, when congress rewrote the copyright statute, the rule finally gained a proper legal pedigree, though it retained its open-ended character. Section 107 of the Copyright Act stipulated that “fair use of a copyrighted work . . . is not an infringement of copyright.” In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include —

1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
2. the nature of the copyrighted work;
3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
4. the effect of the use upon the potential market for or value of the copyrighted work.

The advocates and Talmudists of copyright law have haggled over every word of the statute, as well as its framework. Is fair use meant to be applied according to a relatively predictable logic, or on a case-by-case basis? Which of the four criteria counts the most? In the last major copyright case to reach the Supreme Court, Harper & Row Publishers v. Nation Enterprises, the Court observed that the market-harm factor “is undoubtedly the single most important element of fair use.” But an unsigned article in The Harvard Law Review suggests giving equal weight to the first factor, so that a sufficiently valuable “use” might be held to be non-infringing despite a showing of some market harm. Lawyers for photographers and illustrators — for people like Art Rogers — tend to focus on factors two and three, arguing that substantial takings from copyrighted work should be considered infringing even in the face of a valuable secondary work, or minor economic harm.

. . . .

Ever since the Sixties, artists had been incorporating copyrighted or trademarked images into their works. By the late 1980s there was a sizeable group of artists whose work consisted almost entirely of appropriation. There had been disputes before, but they had always been settled out of court. Andy Warhol had settled with a number of photographers after using their work without permission. In the 1970s photographer Arnold Newman had sued Larry Rivers after Rivers used a Newman photograph of the Statue of Liberty in one of his drawings. David Salle had been sued in 1984 after including in a painting a portion of a drawing that was in turn based on the famous photograph of Jack Ruby shooting Lee Harvey Oswald — a daisy chain of appropriation.

. . . .

What was different about Rogers v. Koons was that Jeff Koons had sold the allegedly infringing works for $375,000. Art — an art based on appropriation — had made Koons rich. The works in his Banality show had sold for over $6 million. Not only did this enormous sum give Art Rogers every incentive to pursue the issue to trial, it also made Koons a wonderfully inviting target.

. . . .

In the course of overseeing the construction of his sculpture, Koons had faxed a series of notes from fine hotels all over Europe to his artisans in Italy. Among his instructions were “work must be just like photo,” “keep as per photo form of puppies,” “the puppies must have variation in fur as per photo,” and so on. In other words, “copy.”

But of course that was only part of the truth. The faxes also show that Koons went to great lengths to persuade his craftsmen to give the puppies a cartoon nose. Like Rogers, they understood copying, but not subversion-through-copying. Koons wrote, “The work should have an intensity in between real life and animation — but do not animate — just make details sharp and at times slightly exaggerated.” Koons’ instructions were in fact a guide to the way that an art form based on appropriation actually works.

The core of Koons’ defense was that the Rogers notecard represented a “completely accurate and literal depiction of two real people holding eight puppies belonging to them.” The card was a fragment of data, a journalistic recording, rather than an expressive work. Yes, Koons had borrowed from the work; but what he had borrowed was information rather than expression. The profound differentness of Koons’ intentions from Rogers’ dictated that he would only mine the original for its raw material. It hadn’t even occurred to him that a copyright issue might be implicated, and he had torn off the backing of the card because it consisted of essentially blank paper, and not because it contained evidence of a legal obligation. Koons’ lawyer, John Koegel, strongly questioned whether a sculpture could ever be considered a copy of a photograph, so great was the transformation required in the change of medium. And even if it was found to be a copy, Loegel contended, the artistic nature of Koons’ work should privilege it as a fair use.

. . . .

Judge Charles Haight of the federal District Court in Manhattan granted summary judgment to the plaintiff. “Rogers’ photograph,” he wrote, “is a creative work.” It was not a “cupcake,” neither was it a literal recording; it was “charming.” Koons’ sculpture was clearly substantially similar to this expressive work. Haight was not impressed by Koons’ claims of fair use. “Notwithstanding its unquestioned status as a work of art,” he noted dryly, “the sculpture is not unsullied by considerations of commerce.” Haight found that the balance tipped toward Rogers on all four fair use factors. Koons was ordered to turn over all “infringing materials,” including a fourth edition of the sculpture, an artist’s proof.

. . . .

Jeff Koons’ appeal was filed June 27, 1991. By this time Koons had managed to get himself in even deeper trouble. Back in April he had sent his artist’s proof of “String of Puppies” to Berlin for an exhibition, in direct violation of the court order requiring the surrender of infringing materials.

. . . .

In his appeal, Koons’ new attorneys, Michael Rips and Frank Wright, made the fair use argument that had not been made before. It was an argument, they conceded, that had never been made before. “For the first time,” the appeal stated, “this Court must attempt to reconcile the fair use doctrine with various widely recognized elements of what is called the post-modern art movement. More so than their traditional forebears, post-modern artists incorporate in their works existing art and commercial images, thereby putting these artists on an apparent collision course with the Copyright statute. Appellants submit that whereas here it is widely recognized that the artist has an identifiable critical purpose for using existing images in his works of art and transforms those images so as to effect that purpose, the fair use doctrine must be flexible enough to encompass and thereby not discourage these new and legitimate art forms.”

. . . .

Koons’ lawyers argued that the sculpture was, in fact, “a direct comment on and criticism of the Rogers notecard,” since the card was “representative of” the kind of mass-produced imagery that is the subject of Koons’ critique. The copying was needed to summon up the mass-produced sensibility embedded in the card, and Koons’ subtle transformations produced the critique. The argument focused not so much on the indispensability of the original as on the validity of the secondary work. If the artist is working in a valid tradition, and has “an identifiable critical purpose for using existing images,” then the fair use doctrine “must be flexible enough” to protect his work.

The battle was now joined at its deepest level. If Rogers won, the kind of art that people like Koons did — possibly the kind of work that artists since Picasso have done — could be disabled. Artists would have to ask permission to appropriate an image, and go elsewhere if permission were denied. Copyright law might replace Jesse Helms as the bugaboo of avant-garde art. But if Jeff Koons won, photographers and illustrators and graphic designers would be helpless before the claims of artistic license. Anyone calling himself an artist could steal their work.

It was a hard issue; but only if you took Koons’ intentions seriously. The Appeals Court did not. “The copying was so deliberate,” the court wrote, “as to suggest that defendants [Koons and Sonnabend] resolved so long as they were significant players in the art business, and the copies they produced bettered the price of the copied work by a thousand to one, their piracy of a less well-known artist’s work would escape being sullied by an accusation of plagiarism.”

The court found that Koons had copied not only the “idea” of the photograph, but its “charming and unique expression.” (Judges apparently consider charm a special attribute of art.) The fact that Koons had made “small changes here and there” was irrelevant, since only where “the points of dissimilarity exceed those that are similar” can there be a finding of no infringement. And the three-judge panel virtually repeated the language of the Rogers’ brief in concluding that the Koons sculpture was not a parody of or comment on the Rogers photograph, and thus could not be privileged as a fair use. “It is not really the parody flag that appellants are flying under,” the court wrote, “but rather the flag of piracy.”

Link to the rest at Design Observer

As PG mentioned before, Derivative Rights vs. Fair Use may be clear in the descriptions of each legal principle, but applying those conflicting doctrines with respect to concrete works of literary or any other type of art is immensely difficult and courts provide anything but clear guidance on the topic other than in the case of a few black or white casses.

 

 

The University of Rochester has a detailed Fair Use Analysis Checklist, apparently for use by its faculty, students or anyone else. Keeping in mind that use for educational purposes is a factor indicating permissible fair use, this checklist might prove helpful to indie authors at least for highlighting issues that may not be immediately obvious to a non-attorney.

For indie authors who have trekked this far into a lengthy and detailed post, as a general proposition, PG suggests that you write your own books and not plagiarize the work of others. Doing so will avoid a host of problems and disagreeable conversations involving lawyers.

Quotes from others, particularly with appropriate attribution, will be safe in all but the most bizarre situations. However, they should be of a reasonably short length. Placing an opening quote in front of an 80,000-word manuscript written by someone else who is not long dead with a closing quote at the end of the manuscript followed by “Jane Smith wrote.” will be an invitation to a disagreement.

Basic story structures and ideas – Boy/Girl/Etc. meets Girl/Boy, Etc. Boy/Girl/Etc. loses Girl/Boy, Etc., Boy/Girl/Etc. gets Girl/Boy, Etc. are not protectable under copyright law. Copyright protects the expression of an idea, not the idea itself.

Neither are romances between men and women set in the period from 1811 to 1820 when the Prince of Wales ruled as proxy for his father, King George III, as Prince Regent.

Absent outright plagiarism, the area where indie authors may be most at risk for claims of copyright infringement are in the use of covers for which they have not purchased rights from the cover artist. If the cover artist has used images created by others without acquiring appropriate rights, similar headaches may arise.

PG is anything but an expert on the habits and practices of cover artists, but if an artist is creating the cover from scratch, or making copies from paintings created during the Regency era or some other period of enough antiquity that the rights of the original artists have expired due to the passage of time or creating covers from clip art photos from an agency that licenses those photos, the indie author should be protected from claims of copyright infringement for book covers.

As usual, this post is not legal advice and should not be relied on as such. You obtain legal advice by hiring an attorney to provide it, not by reading a blog post.