Class 5 Copyright, Winter, 2010 Derivative Works Randal C. Picker Leffmann Professor of Commercial Law The Law School The University of Chicago 773.702.0864/[email protected]

Class 5Copyright, Winter, 2010

Derivative WorksRandal C. PickerLeffmann Professor of Commercial Law

The Law School

The University of Chicago

773.702.0864/[email protected] © 2005-10 Randal C. Picker. All Rights Reserved.

April 18, 2023 Copyright © 2005-07 Randal C. Picker 2

The Man in the Moon

The Man in the Moon


Using the Man in the Moon

Hypo I P&G takes an ordinary shampoo bottle,

adds shampoo and calls the shampoo “Moonlight Shampoo”

Attaches a physical label to the bottle with the name of the shampoo and the Man in the Moon graphic

Copyright status?


Using the Man in the Moon

Hypo II Joshua, a professional photographer, takes

a photograph of the Moonlight Shampoo bottle with the label attached.

Attaches a physical label to the bottle with the name of the shampoo and the Man in the Moon graphic

Copyright status of the photograph?



The Coke Bottle

The Coke Bottle


The Creation of the Bottle From Coca Cola Website

The never-ending battle against substitution was the major force behind the evolution of the distinctive hobble-skirt bottle. A variety of straight-sided containers was used through 1915, but as soft-drink competition intensified, so did imitation. Coca-Cola deserved a distinctive package, and in 1916, the bottlers approved the unique contour bottle designed by the Root Glass Company of Terre Haute, Indiana. The now-familiar shape was granted registration as a trademark by the U.S. Patent Office in 1977, an honor accorded only a handful of other packages. The bottle thus joined the trademarks "Coca-Cola," registered in 1893, and "Coke®," registered in 1945.


Using the Coke Bottle

Hypo II Joshua, a professional photographer, takes

a photograph of the Coke bottle Copyright status of the photograph?



PGS Statutes and Regs

PGS Works

The Definition “Pictorial, graphic, and sculptural works”

include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans.


PGS Works

The Definition Such works shall include works of artistic

craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned


PGS Works

The Definition the design of a useful article, as defined in this

section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.


Useful Articles

The Definition A “useful article” is an article having an

intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a “useful article”.


Treatment of PGS Works

102(a)(5) Works of authorship include the following

categories: … (5) pictorial, graphic, and sculptural works; …


Treatment of PGS Works

Section 113(c) (c) In the case of a work lawfully reproduced in useful

articles that have been offered for sale or other distribution to the public, copyright does not include any right to prevent the making, distribution, or display of pictures or photographs of such articles in connection with advertisements or commentaries related to the distribution or display of such articles, or in connection with news reports.


Copyright Regs on Labels

37 CFR 202.10(b) (here) (b) A claim to copyright cannot be registered in a print or

label consisting solely of trademark subject matter and lacking copyrightable matter. While the Copyright Office will not investigate whether the matter has been or can be registered at the Patent and Trademark Office, it will register a properly filed copyright claim in a print or label that contains the requisite qualifications for copyright even though there is a trademark on it. However, registration of a claim to copyright does not give the claimant rights available by trademark registrations at the Patent and Trademark Office.



Derivative Works Statutes


101: 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. 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”.


101: Compilation

A “compilation” is a work formed by the collection and assembling of

preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. The term “compilation” includes collective works.


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.


103 (b)

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.


106. Exclusive rights in copyrighted works

Subject to sections 107 through 121, 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;


Economics


Controlling Future Product Uses of a Work

Two Critical Doctrines Scope of derivative work rights Fair Use

Defines extent to which subsequent use has to be arranged through contract


Substitutes and Complements

Substitutes Would I buy product X instead of product Y? E.g., would I buy the picture book of beanie

babies instead of an actual beanie baby? Complements

Would I buy product X with product Y? E.g., would exposure to a beanie baby book

increase beanie baby sales?


Beanie Babies

April 18, 2023 Copyright © 2005 Randal C. Picker 28

Screen Capture Slide

What is a Beanie Baby?

Is it … different from the Coke bottle? a PGS work? a useful article?



Beanie Baby Photographs

Hypo I take photographs of Beanie Babies and

sell them Is this

a copy of the original work? an impermissible derivative work?


Answer

Yes PIL concedes photograph of Beanie Baby is

derivative work


For the Love of Beanie Babies

Situating the Book Fun pictures of beanie babies with light text

Impermissible derivative work?


Answer

Yes


The BB Guide

Hypo I collect info on actual BB sales I publish info on those sales and make

statements about likely market conditions No pictures



Answer

No Causally related to Beanie Babies but that

isn’t enough to create a derivative work Just info about facts Facts aren’t copyrightable (Feist, 102(b))

and these are “real” facts—Stinky sold for $25 in 2005—and not “cultural” facts of SAT variety


BBs Collector’s Guide


statements about likely market conditions I add pictures


BB Collector’s Guide Ty’s Licensing

Ty licenses me to use the pictures Forbids licensees to reveal that they are

licensed by Ty Requires statement:

“This publication is not sponsored or endorsed by, or otherwise affiliated with Ty, Inc. All Copyrights and Trademarks of Ty Inc. are used by permission. All rights reserved.”



License-Free Guide with Pictures


statements about likely market conditions I add pictures

Impermissible derivative work? Should it matter whether Ty has licensed others to add pictures to their guides?


Card on a Tile


Lee v. A.R.T. Co.

Core Facts Annie Lee sells art notecards and

lithographs to Deck the Walls Deck the Walls sells those to A.R.T. Co. ART glues cards to tiles, resells tiles

Lee sues ART alleging that ART is creating a derivative work, in violation of Sec. 106(2). Who wins?


The Card on a Tile

Hypo Lee creates notecard and claims copyright Lee glues card to tile and claims copyright

on the card-on-a-tile How many copyrights does she get? Does

this eliminate competition in one medium?


Analysis

Answer Clear copyright on notecard As to card-on-a-tile

103(b): 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


Analysis

What is contributed by the author of the card-on-a-tile?

103 deals with compilations and derivative works in parallel

Like Feist on compilations, gluing the notecard to a title lacks sufficient incremental originality

Can’t separately copyright card-on-a-tile


Do We Need More?

No Copyright in Card-on-a-Tile True for Lee, true for ART

Does the absence of copyrightability of the card answer the question as to whether Lee can block ART?


The Skyy Vodka Bottle

Ets-Hokin v. Skyy

Core Facts Skyy hires professional photographer,

Joshua Ets-Hokin, to take product shots of Skyy vodka bottle for various uses, including advertising

JEH does so and under the agreement, he retains the copyright in the photographs


Ets-Hokin v. Skyy

Core Facts Skyy decides to get new photos taken Other photographers take pictures of the

Skyy bottle similar to those taken by JEH


Ets-Hokin v. Skyy

Key Questions Does JEH have a copyright in the

photographs that he took? Are they sufficiently original? Are they impermissible derivative works of

the Skyy vodka bottle?


Ets-Hokin v. Skyy

Key Questions Do the new photographs of the Skyy vodka

bottle infringe JEH’s photographs??










Documents

Class 5 Copyright, Winter, 2010 Derivative Works Randal C. Picker Leffmann Professor of Commercial Law The Law School The University of Chicago 773.702.0864/[email protected]