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Derivative Works Under the Copyright Act

© 2005 Mark H. Barinholtz

It's Spring 2005, and two Hollywood studios are basking in the financial glow that solid success at the box office brings. The motion picture Meet The Fockers, three months into its initial theatrical release, is reported to have achieved a cumulative worldwide box office gross of $500 million. That's half a billion dollars and counting, and the ads for sale of the DVDs are just beginning! Could Dustin Hoffman and Barbra Streisand really have made the difference, or could it be that the essence of the original work still has legs? That started me thinking about the fact that Meet The Fockers is a sequel, based upon Meet The Parents which, in turn, is a remake based upon an independent film of the same name made right here in Chicago. So, how valuable is a copyright holder's right to control the making of derivative works?

"What's the Law?"

Three provisions in the Copyright Act lay the groundwork for defining and applying the protections afforded to owners of an underlying work. Section 106 of the Act contains the essential rights reserved to the copyright owner. Among those rights is the exclusive right to prepare derivative works and to exercise all of the other exclusive rights enumerated with respect to derivatives, including but not limited to the making and distribution of copies. Section 101 of the Act defines a derivative work as one which is "based upon" some preexisting work(s). A significant factor is the transformation, adaptation or recasting of the original work into a new form. Finally, Section 103 of the Act provides that copyright protection in the new version only covers the material added by the later author, and has no effect on the protected status of the underlying work. As a corollary, a new version incorporating preexisting material will not be protected under copyright to the extent that the underlying material has been used unlawfully.

"What Are Derivative Works"

 Examples include, but are not limited to, a translation (eg. English to Spanish), a new musical arrangement (eg. in the style of Nelson Riddle), or a motion picture version (eg. of L. Frank Baum's book The Wonderful Wizard of Oz with illustrations by W. W. Denslow). Derivative works may also be created by making deletions from and/or rearranging the underlying work. Examples of such recasting include the processes of abridgement or condensation, or the making of editorial revisions or modifications. Think, Reader's Digest condensed books.
The text of the Act specifically references derivative works to include "dramatization" and "fictionalization." Therefore, a stage play based upon a book, or a motion picture based upon a stage play may be considered derivative works. In fact, most motion pictures are derivative works since they are usually based on a screenplay which is either original or, in some cases, an adaptation of another non-dramatic literary work such as a book or a magazine article. In the realm of musical works, the derivative work may involve new harmonies, orchestral arrangements or choral adaptations of the underlying work. Remember "elevator music?" When you hear refrains of the Beatles' "Can't Buy Me Love" being played by the Boston Pops orchestra without any lyrics, you're hearing a derivative work.
" What is Not a Derivative Work?"
There are situations where a new work may, in a colloquial sense, be "based upon" a preexisting work, but not legally deemed to be a derivative work. Fundamentally, where the new work does not incorporate any copyrightable material from the preexisting work, but is merely based on the idea or concept of the preexisting work, then the new work is simply that -- a new work, not a derivative work.
How about a new television show where a group of young contestants vie for a monetary prize by competing at some challenging activity, then are judged by their peers and/or pseudo-experts and, ultimately, voted out of the competition until only one survives to win. Sound familiar? These basic concepts outlining the general format for a TV program do not usually rise to the level of protectable expression. Similarly, the presence of hackneyed events that would normally flow from an author's choice of setting or situation, may not always support protection under copyright law. For example, a story involving big city police work will usually contain venerable and often-recurring themes such as foot chases with guns drawn and the moral problems of policemen -- the stuff of police fiction.
Another kind of work closely based upon a preexisting work, but which legally is not a derivative work, is a "cover record." Richard Penniman's song "Tutti Frutti" gave birth to the career of Little Richard in 1955. Ironically, it quickly became an even bigger hit when Pat Boone's cover version outsold the original. But, how could Little Richard be heard to complain when the symbiotic effect boosted his career as well.
Section 115 of the current Copyright Act sanctions the making and distribution of competing recordings of the same song made after issuance of an original recording of that song. The competing author must fulfill certain statutory requirements, including giving notice to the original author, upon which the law deems a compulsory license to have been granted. By virtue of the license, payment of a statutorily mandated license fee known as a "mechanical" royalty must be paid to the original author. However, in exchange for the privilege of making the competing record the musical arrangement of the cover must be similar in "style or manner of interpretation" to the first recorded performance, and "not change the basic melody or fundamental character of the work." As a further trade-off for the compulsory license, the law does not protect the "cover" author as having created a derivative work, but preserves that protection to the original author.
"Litigation Over Derivative Rights"
Disputes over derivative rights are a fertile ground for litigation. In recent years there have been a number of lawsuits testing various issues, including whether a parody is excused from a claim of infringement through application of the doctrine of fair use. A parody often straddles the fence, and may or may not be a derivative work. As distinguished from satire, which uses a work(s) to poke fun at some other target, a parody takes aim at the very work it imitates. In a non-legal sense, a parody is always "derivative," since it must take something from the original work it criticizes, to make it recognizable. Depending on various factors, however, including how much the parodist takes in order to conjure up the original, the new version may or may not be a fair use.
 In 1994, the United States Supreme Court had occasion to consider whether the 2 Live Crew rap song "Pretty Woman" infringed copyright rights of the music publisher of Roy Orbison's rock ballad, "Oh, Pretty Woman." In the district court, 2 Live Crew was granted summary judgment in its favor, the court holding that the rap version was a parody which made fair use of the original song. The court of appeals reversed, saying that 2 Live Crew had taken too much from the original work and that the parody caused injury to the music publisher's market for the original, including the market for derivative works.
The Supreme Court reversed in favor of 2 Live Crew, criticizing certain presumptions indulged in by the court of appeals, but still sent the case back down for further proceedings. Justice Souter, who delivered the Court's unanimous opinion, stated that "the licensing of derivatives is an important economic incentive to the creation of originals." In evaluating the concept of "parody," the Court explored the fine line between parody's necessary taking of elements of the original work in order to accomplish its legitimate parodic purpose, namely, to comment upon or criticize the original work, and the kind of work which takes too much and becomes a substitute for the original. The Court primarily looked at 2 Live Crew's "Pretty Woman" in the context of traditional fair use analysis, one factor of which focuses on market harm, including the market for derivative works. The Court opined that on remand the lower court should consider not only the parody aspects of the rap version but the derivative market for "nonparody" rap music versions and whether 2 Live Crew's rap version caused harm to that derivative market.
" Conclusion"
So what's the lesson to take away? Simply this -- by better understanding the copyright owner's exclusive right to prepare and exploit derivative works, the copyright owner will be better protected.


© 2005 Mark H. Barinholtz