class 5 copyright, winter, 2010 derivative works randal c. picker leffmann professor of commercial...
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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.
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The Man in the Moon
The Man in the Moon
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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?
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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?
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The Coke Bottle
The Coke Bottle
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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.
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Using the Coke Bottle
Hypo II Joshua, a professional photographer, takes
a photograph of the Coke bottle Copyright status of the photograph?
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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.
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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
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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.
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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”.
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Treatment of PGS Works
102(a)(5) Works of authorship include the following
categories: … (5) pictorial, graphic, and sculptural works; …
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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.
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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.
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Derivative Works Statutes
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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”.
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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.
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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.
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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.
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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;
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Economics
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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
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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?
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Beanie Babies
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Screen Capture Slide
What is a Beanie Baby?
Is it … different from the Coke bottle? a PGS work? a useful article?
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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?
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Answer
Yes PIL concedes photograph of Beanie Baby is
derivative work
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For the Love of Beanie Babies
Situating the Book Fun pictures of beanie babies with light text
Impermissible derivative work?
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Answer
Yes
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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
Impermissible derivative work?
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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
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BBs Collector’s Guide
Hypo I collect info on actual BB sales I publish info on those sales and make
statements about likely market conditions I add pictures
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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.”
Impermissible derivative work?
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License-Free Guide with Pictures
Hypo I collect info on actual BB sales I publish info on those sales and make
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?
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Card on a Tile
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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?
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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?
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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
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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
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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?
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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
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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
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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?
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Ets-Hokin v. Skyy
Key Questions Do the new photographs of the Skyy vodka
bottle infringe JEH’s photographs??
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Screen Capture Slide
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Screen Capture Slide
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Screen Capture Slide
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Screen Capture Slide