Copyright Query

Hypothetical: Arthur the author writes a new book and transfers the copyright of the final-work to Penny the publisher — including rights to any derivative works.

Later, Arthur decides that the story should have a different ending. He goes back to a rough-draft and rewrites various portions. (In his rewrite, Arthur does not look at the final version.)  Who owns the new version? What about a sequal based on the new version?

21 thoughts on “Copyright Query

  1. I have ten years worth of school magazines from 1962 through that I want to put on an internet web page. None of the magazines has a copyright at the front. Am I able to do so or would there be copyright issues, or perhaps legal issues with posting photographs of people (althoughall would now be in their fifties).

  2. To the extent that Arthur has transferred the copyright to Penny, he may well infringe. Access is not in question, so only substantial similarity remains. With regard to the latter, besides Gross v. Seligman (IMO more a fair dealing than a copyright case), see Franklin Mint, 575 F.2d 62. To the extent that large portions are similar, if not identical, infringement seems likely.

    Under Sec. 103, Arthur has rights in subject matter not included in the original, but, assuming some infringement, he would be hard pressed to exploit it. The situation is similar to base and improvement patents.

  3. I must admit that I have made an assumption (perhaps unwarranted) about the contract between Arthur and Penny.

    The first question here is whether there is some copyrightable matter that is present in both the draft and the final copy? The answer depends on facts not given here. But it’s a safe bet here that it’s a “yes”.

    If the answer is “yes” then the second question here is who owns the copyrightable matter that the draft and the final copy have in common? The answer depends on what exactly the contract looks like.

    If there is some copyrightable matter that is present in both the draft and the final copy and Arthur had transferred the copyright to this common matter to Penny under the contract, then I agree with J. D. Covelman.

    If there is no copyrightable matter that is present in both the draft and the final copy or if (as I assumed) Arthur had not transferred the copyright to this common matter to Penny under the contract, then I think what I’ve written stands.

    PS I guess the patent-think got the better of me and I got caught up in “rough draft is a base claim, final version is a dependent claim” paradigm.

  4. In Gross v. Seligman 212 Fed. 930 (1914). An artist took a photograph of a nude woman and sold it. Later he took a photograph of the woman in an identical pose except with a different facial expression, and holding a cherry stem in her mouth. This was held to be infringement because the identities were much greater than the differences.

    This seems to be analogous, and depending on how similar the work is, the author may be infringing.

  5. The hypothetical posits that Arthur has transferred to Penny copyrights in the final version of the first work (FV1), including control over derivatives of FV1. From this we must infer that a written tranfer occurred, because the right to control derivatives is one of the exclusive rights of a copyright holder, which can only effectively be transferred in writing. A mere non-exclusive licensee, whose license to publish FV1 cannot extend to control derivatives of FV1, could have obtained a non-exclusive right to publish FV1 via an oral agreement or an agreement implied from the conduct of the parties. Since Penny has control over derivatives of FV1, there must be a writing to examine. Thus, as some have already suggested, the first thing to do is to examine the scope of the writing.

    Assuming the written transfer agreement is no broader than a transfer of copyrights in FV1, Arthur has produced a new work (FV2) by revising generally unspecified portions of a draft (DR1) version of FV1, and we wish to know if this infringes Penny’s copyrights. The hypothetical posits that Arthur’s motivation for creating FV2 was to change the ending of FV1. Thus, at least the endings of FV1 and FV2 are not the same. But we do not know what other revisions of DR1 were necessitated by the change in ending. Nor do we know how similar DR1 was to FV1 in other respects.

    Thus, two more questions must be asked. First, what expression in FV1 is found in FV2? Second, is the expression that is common to both works substantial (i.e., more than de minimis)?

    If substantial expression found in FV2 is also found in FV1, Penny would have to prove that Arthur copied FV1 in writing FV2, in order to make out a case that Arthur infringed Penny’s copyrights in FV1. The hypothetical posits that Arthur did not “look at” FV1 in writing FV2, presumably to suggest that Arthur did not substantially copy FV1. But, as mentioned above, Arthur’s stated motivation for writing FV2 was to change the ending of FV1. Thus, Arthur had FV1 in mind when he wrote FV2. This sets up the argument for Penny that Arthur consciously set out to make a derivative of FV1 when he wrote FV2.

    Without proof of direct copying, most jurisdictions employ a “sliding scale” approach to determining whether a copyright holder can make out a prima facie case of infringement. That is, the copyright holder must indirectly establish that the defendant has had access to the copyrighted work, and that the accused work bears actionalbe similarities to the copyrighted work. The greater the evidence of access, the lesser need be the proof of similarity, and vice versa.

    Here, Arthur could not contest that he had access to FV1, because he wrote it. The fact that he did not look at FV1 in writing FV2 carries virtually no weight, since defendants have been found liable for unconsciously copying works, or consciously copying from memory works to which they have been shown to have had access. Here, Arthur’s stated motivation (i.e., to make a version of FV1 with a different ending) makes it highly likely that he consciously copied FV1 from memory, even if he didn’t look at it.

    Penny must still prove that there is more than a de minimis similarity of actionable expression between FV1 and FV2 to make out a prima facie case of copying by Arthur. I assume that this can be shown.

    The reason I speak of “actionable expression” is that Arthur may yet escape liability, if he can show that the similarities between the works reside in non-copyrightable realms, or that they are the result of scenes-a-faire, or some other exculpatory doctrine. But this seems highly unlikely.

    As for rights in sequels to FV2, who owns rights in these depends upon whether Penny succeeds or fails in proving that FV2 is actionably (or de jure) copied from FV1. Since something recognizable has found its way from FV2 (e.g., characters, plot, setting, particular situations, or dialogue) into any sequel (otherwise the new work would not be considered a sequel), the final question is whether this content is de jure actionable content found in FV1. If so, then any sequel to FV2 falls under Penny’s derivative rights in FV1.

  6. Another Wiki gem…

    “Under the U.S. Copyright Act, a transfer of ownership in copyright must be memorialized in a writing signed by the transferor. For that purpose, ownership in copyright includes exclusive licenses of rights. Thus exclusive licenses, to be effective, must be granted in a written instrument signed by the grantor. No special form of transfer or grant is required. A simple document that identifies the work involved and the rights being granted is sufficient. Non-exclusive grants (often called non-exclusive licenses) need not be in writing under U.S. law. They can be oral or even implied by the behavior of the parties. Transfers of copyright ownership, including exclusive licenses, may and should be recorded in the U.S. Copyright Office. (Information on recording transfers is available on the Office’s web site.) While recording is not required to make the grant effective, it offers important benefits, much like those obtained by recording a deed in a real estate transaction.”

    Doesn’t sound good for Arthur.

  7. Arthur may have refuge vis a vis “droit d’auteur,” although his contracting away his rights to derivative works has significant impact. Moral rights usually allow the author to prevent distortion of his original work. The question might better be stated “did Arthur transfer an exclusive or non-exclusive right to derivative works?”

    Wiki page on moral rights:

    link to en.wikipedia.org

  8. re: infringement – I’m not so sure access even matters. Even without proof of access, [infringment may be found if it can be showed] that the two works were not just substantially similar, but were so strikingly similar as to preclude the possibility of independent creation. 3 M. Nimmer, Copyright § 13.01(A); See Donald v. Zack Meyer’s T. V. Sales & Service, 426 F.2d 1027 (5th Cir. 1970).

    As long as the rewritten work is strikingly similar to the transferred work, it infringes. That probably exists here. I’d be willing to bet that even if Arthur went and gave a public reading of the rough draft, he would infringe the transfered later work as long as all rights in that later work were transfered.

    Has any court ever held that ownership of an earlier work is a defense to infringement of subsequent similar work (wholly owed by a different party)? I was thinking Stewart v. Abend, but there only film rights were transferred.

  9. Arthur owns it (assuming contract silent as addressed above).

    Infringement is much more interesting though. I like Bruce’s answer and not Ilya’s, but I think that this is a close question. Arthur does have similarity and access, and I don’t think there’s a case holding that alternative access is a defense to infringement inferred from similarity and access. So I think Arthur *CAN* (not must) infringe.

    Keep in mind that an inference of infringement is a question of fact, so a jury may still find non-infringement based on the alternative access (assuming jury instructions don’t forbid it, which is where you’d get to the issue on appeal)

  10. Nothing against soft IP (although I am glad the PTO likes my degree), but does anyone know the status of the KSR case? I want my K.S.R… (for my fellow MTV generationers)

  11. In Harrison, the access in combination with the similarity of the product have created a prima facie proof of subconscious copying of a work which Harrison did not own. The opinion states that “copying may be inferred” — it does say that it must be. I think the same goes for preparing derivative works: it may be inferred, but the inference is rebuttable.

    By owning a work I mean owning 17 USC 106 rights to it.

    Here Arthur has a powerful rebuttal to the “access plus similarity” inference: the new version was in fact derived from a work owned by Arthur. Thus no infringement took place when the new version had been created and Arthur owns it.

    In other words, you cannot be sued for “similarity plus access”, it’s not in 106. You can be sued for preparing a work derived from a work you don’t own, and any similarity and access would be powerful evidence against you, but you still can win if the work had in fact been derived from a work you do own.

  12. You need to include the drafts as part of the work, even though they predate the work–otherwise the transfer of copyright is virtually meaningless. I also assume that the final work was not one of a series of works or something where substantial portions of the work would not be covered by the transfer.

    I’m not sure that Arthur can transfer the rights to derivative works, though. § 106 gives rights rights to license or prepare derivative works–but not to the derivative works themselves. Arthur certainly doesn’t get rights. I don’t think the publisher can get the rights unless it successfully argues that Arthur transferred rights in any derivative works that he would make by contract. Even then, Arthur could argue that § 301 would preempt a contract that would seem to extend the copyright’s coverage. If I recall correctly, Arthur can’t get a copyright in his unlicensed derivative work–so it would seem that nobody owns the new part.

    If the sequel is a derivative work of the rewriting, the crucial question is whether it is also a derivative work of the original. It might not be if it does not incorporate anything from the original.

  13. This sort of seems like the John Fogerty case. In theory, there’s no reason why Arthur isn’t liable for infringement, as long as it’s substantially similar and assuming broad contract language. In Fogerty, the agreement granted “all rights to Fogerty’s music composed during the agreement’s term.” The court held that Fogerty could liable for a derivative work based on the work that he earlier sold the rights to. Fantasy, Inc. v. Fogerty, 654 F. Supp. 1129 (C.D. Cal. 1987).

    Of course the question is who “owns” the work, to which I believe the answer is that Arthur owns material not included in the work sold, as long as it’s not substantially similar. But he can’t exploit it in the context of pre-existing material he has sold the rights to. See Nimmer ss 3.03[A], 3.04[A]. The original copyright persists, however, and any new copyright in the additional matter does not cover it.

  14. Isn’t that fact that Arthur does not look at the “final” version during his rewrite virtually irrelevant? After all, Arthur previously had access to the final version when he wrote the final version — just like George Harrison previously had access to “He’s So Fine” when he wrote “My Sweet Lord.”

    Even if the assignment did not cover the rough draft and the rough draft was the original work, the rewrite could easily be a derivative work of both the rough draft and the final version depending, for example, on the substantial similarity of the revisions to the material that was in the final version, but not in the rough draft.

  15. Well, since you’ve mentioned copyright…..

    What is the copyright status of published PCT applications? Can an applicant preserve their copyright by putting a notice in the application the way they can for US patent applications?

  16. Arthur creates an Original Work (aka “the rough-draft”).

    Then Arthur creates a Derivative Work One based on the Original Work and transfers the copyright to DW1 (aka “the final-work”) together with rights to any derivative works based on DW1 to Penny.

    If a work is not DW1 or its derivative, Penny has no right to it.

    Then Arthur creates a Derivative Work Two based ONLY on the Original Work.

    Penny has no rights to DW2 (aka “the new version”) since DW2 is not DW1 or DW1′s derivative. Arthur owns the copyright to the new version.

    Then Arthur creates a sequel to DW2, and again Penny has no rights to the sequel since the sequel is not DW1 and is not derived from it in any way, directly or indirectly.

    Therefore, the answer to both questions is “Arthur”.

  17. He could always wait 35 years from the date of transfer and then terminate the assignment to the publisher.

  18. I agree with the last comment – it depends on the rights granted, and the question you are asking. If it is a wholesale transfer of ALL rights in the existing works, but not a transfer of new works, then:

    1. Arthur owns the new content in the rewrite, but he has committed copyright infringement for every copy of his draft that exists.

    2. Arthur would own the sequel to the rewrite, and whether he committed copyright infringement depends on how much of the story from the original he copies – copyrights have been upheld for story elements such as characters, for example.

    BUT, if the contract also assigns as yet unwritten derivative works or sequels, then the publisher would own the works, in addition to the copyright infringement, but that’s really determined by the scope of contract.

  19. It depends, Professor. It’s a contract question, more than a copyright question. If the derivative works provisio contains the litany of examples, including sequels, re-writes, etc., then the answer is plain.
    The 2nd question is what rights were granted – the right to publish, the right to distribute, or the copyright in gross.
    As Socrates may’ve said to Freud, ‘Should you question whether my inquiry has satisfied your curiosity?’

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