Class 5 Copyright, Winter, 2010 Derivative Works Randal C. Picker Leffmann Professor of Commercial Law The Law School The University of Chicago Copyright © Randal C. Picker. All Rights Reserved.

May 18, 2015Copyright © Randal C. Picker2 The Man in the Moon

May 18, 2015Copyright © Randal C. Picker3

Using the Man in the Moon n Hypo I u P&G takes an ordinary shampoo bottle, adds shampoo and calls the shampoo “Moonlight Shampoo” u Attaches a physical label to the bottle with the name of the shampoo and the Man in the Moon graphic n Copyright status? May 18, 2015Copyright © Randal C. Picker4

Using the Man in the Moon n Hypo II u Joshua, a professional photographer, takes a photograph of the Moonlight Shampoo bottle with the label attached. u Attaches a physical label to the bottle with the name of the shampoo and the Man in the Moon graphic n Copyright status of the photograph? May 18, 2015Copyright © Randal C. Picker5

May 18, 2015Copyright © Randal C. Picker6 The Coke Bottle

May 18, 2015Copyright © Randal C. Picker7

The Creation of the Bottle n From Coca Cola Website u 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 May 18, 2015Copyright © Randal C. Picker8

Using the Coke Bottle n Hypo II u Joshua, a professional photographer, takes a photograph of the Coke bottle n Copyright status of the photograph? May 18, 2015Copyright © Randal C. Picker9

May 18, 2015Copyright © Randal C. Picker10 PGS Statutes and Regs

PGS Works n The Definition u “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. May 18, 2015Copyright © Randal C. Picker11

PGS Works n The Definition u Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned May 18, 2015Copyright © Randal C. Picker12

PGS Works n The Definition u 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. May 18, 2015Copyright © Randal C. Picker13

Useful Articles n The Definition u 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”. May 18, 2015Copyright © Randal C. Picker14

Treatment of PGS Works n 102(a)(5) u Works of authorship include the following categories: … (5) pictorial, graphic, and sculptural works; … May 18, 2015Copyright © Randal C. Picker15

Treatment of PGS Works n Section 113(c) u (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. May 18, 2015Copyright © Randal C. Picker16

Copyright Regs on Labels n 37 CFR (b) (here)here u (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. May 18, 2015Copyright © Randal C. Picker17

May 18, 2015Copyright © Randal C. Picker18 Derivative Works Statutes

May 18, 2015Copyright © Randal C. Picker19 101: Derivative Work n A “derivative work” is a work based upon one or more preexisting works, u 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”.

May 18, 2015Copyright © Randal C. Picker20 101: Compilation n A “compilation” is a work u 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.

May 18, 2015Copyright © Randal C. Picker Subject matter of copyright: Compilations and derivative works n (a) u 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.

May 18, 2015Copyright © Randal C. Picker n (b) u 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.

May 18, 2015Copyright © Randal C. Picker Exclusive rights in copyrighted works n 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: u (1) to reproduce the copyrighted work in copies or phonorecords; u (2) to prepare derivative works based upon the copyrighted work;

May 18, 2015Copyright © Randal C. Picker24 Economics

May 18, 2015Copyright © Randal C. Picker25 Controlling Future Product Uses of a Work n Two Critical Doctrines u Scope of derivative work rights u Fair Use n Defines extent to which subsequent use has to be arranged through contract

May 18, 2015Copyright © Randal C. Picker26 Substitutes and Complements n Substitutes u Would I buy product X instead of product Y? u E.g., would I buy the picture book of beanie babies instead of an actual beanie baby? n Complements u Would I buy product X with product Y? u E.g., would exposure to a beanie baby book increase beanie baby sales?

May 18, 2015Copyright © Randal C. Picker27 Beanie Babies

May 18, 2015Copyright © 2005 Randal C. Picker28 Screen Capture Slide

What is a Beanie Baby? n Is it … u different from the Coke bottle? u a PGS work? u a useful article? May 18, 2015Copyright © Randal C. Picker29

May 18, 2015Copyright © Randal C. Picker30 Beanie Baby Photographs n Hypo u I take photographs of Beanie Babies and sell them n Is this u a copy of the original work? u an impermissible derivative work?

May 18, 2015Copyright © Randal C. Picker31 Answer n Yes u PIL concedes photograph of Beanie Baby is derivative work

May 18, 2015Copyright © Randal C. Picker32 For the Love of Beanie Babies n Situating the Book u Fun pictures of beanie babies with light text n Impermissible derivative work?

May 18, 2015Copyright © Randal C. Picker33 Answer n Yes

May 18, 2015Copyright © Randal C. Picker34 The BB Guide n Hypo u I collect info on actual BB sales u I publish info on those sales and make statements about likely market conditions u No pictures n Impermissible derivative work?

May 18, 2015Copyright © Randal C. Picker35 Answer n No u Causally related to Beanie Babies but that isn’t enough to create a derivative work u Just info about facts u 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

May 18, 2015Copyright © Randal C. Picker36 BBs Collector’s Guide n Hypo u I collect info on actual BB sales u I publish info on those sales and make statements about likely market conditions u I add pictures

May 18, 2015Copyright © Randal C. Picker37 BB Collector’s Guide n Ty’s Licensing u Ty licenses me to use the pictures u Forbids licensees to reveal that they are licensed by Ty u Requires statement: w “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.” n Impermissible derivative work?

May 18, 2015Copyright © Randal C. Picker38 License-Free Guide with Pictures n Hypo u I collect info on actual BB sales u I publish info on those sales and make statements about likely market conditions u I add pictures n Impermissible derivative work? Should it matter whether Ty has licensed others to add pictures to their guides?

May 18, 2015Copyright © Randal C. Picker39 Card on a Tile

May 18, 2015Copyright © Randal C. Picker40 Lee v. A.R.T. Co. n Core Facts u Annie Lee sells art notecards and lithographs to Deck the Walls u Deck the Walls sells those to A.R.T. Co. u ART glues cards to tiles, resells tiles n Lee sues ART alleging that ART is creating a derivative work, in violation of Sec. 106(2). Who wins?

May 18, 2015Copyright © Randal C. Picker41 The Card on a Tile n Hypo u Lee creates notecard and claims copyright u Lee glues card to tile and claims copyright on the card-on-a-tile n How many copyrights does she get? Does this eliminate competition in one medium?

May 18, 2015Copyright © Randal C. Picker42 Analysis n Answer u Clear copyright on notecard u As to card-on-a-tile w 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

May 18, 2015Copyright © Randal C. Picker43 Analysis w What is contributed by the author of the card-on-a-tile? u 103 deals with compilations and derivative works in parallel u Like Feist on compilations, gluing the notecard to a title lacks sufficient incremental originality u Can’t separately copyright card-on-a-tile

May 18, 2015Copyright © Randal C. Picker44 Do We Need More? n No Copyright in Card-on-a-Tile u True for Lee, true for ART n Does the absence of copyrightability of the card answer the question as to whether Lee can block ART?

May 18, 2015Copyright © Randal C. Picker45 The Skyy Vodka Bottle

Ets-Hokin v. Skyy n Core Facts u Skyy hires professional photographer, Joshua Ets-Hokin, to take product shots of Skyy vodka bottle for various uses, including advertising u JEH does so and under the agreement, he retains the copyright in the photographs May 18, 2015Copyright © Randal C. Picker46

Ets-Hokin v. Skyy n Core Facts u Skyy decides to get new photos taken u Other photographers take pictures of the Skyy bottle similar to those taken by JEH May 18, 2015Copyright © Randal C. Picker47

Ets-Hokin v. Skyy n Key Questions u Does JEH have a copyright in the photographs that he took? w Are they sufficiently original? w Are they impermissible derivative works of the Skyy vodka bottle? May 18, 2015Copyright © Randal C. Picker48

Ets-Hokin v. Skyy n Key Questions u Do the new photographs of the Skyy vodka bottle infringe JEH’s photographs?? May 18, 2015Copyright © Randal C. Picker49

May 18, 2015Copyright © 2005 Randal C. Picker50 Screen Capture Slide

May 18, 2015Copyright © 2005 Randal C. Picker51 Screen Capture Slide

May 18, 2015Copyright © 2005 Randal C. Picker52 Screen Capture Slide

May 18, 2015Copyright © 2005 Randal C. Picker53 Screen Capture Slide