Copyright Law Blog: Exclusive Rights

Category Archives: Derivative Work

Fair use cannot be raised sua sponte, 11th Cir.

Shourin Sen - 6 April 2010 – 9:00 am

Filed under Derivative Work, Fair Use, Noncopyrightable Material, Useful Article

Latimer v. Roaring Toyz, Inc., 2010 WL 1253090 (11th Cir. 2010)

The facts of this case are somewhat convoluted. Kawasaki engaged a motorcycle shop to customize two ZX-14 motorcycles for use in promotional material. The customization shop hired a third-party designer to paint the bikes using his own graphics and color scheme. The owner of the cycle customization shop also hired a noted motorcycle photographer, at the bequest of Kawasaki, to take pictures of the customized ZX-14s. The customization shop never entered into written agreements with either the paint job designer or the photog.

The photog claimed, but it was disputed, that the customization shop assured him that the photos would only be used on placard besides a showing of the ZX-14s at Daytona Bike Week and that the photos would not be leaked before the release of a forthcoming issue of Two Wheel Tuner, which feature pictures of his of the bikes from a different photo shoot. Instead, Kawasaki used the photos in a press release which they distributed to the media, the customization shop distributed the photos on its website, and the motorcycle publication Cycle World published three of the photos that were included in Kawasaki’s press kits.

The photographer brought suit alleging, inter alia, that (1) the customization shop unlawfully distributed his photos on its website; (2) Kawasaki unlawfully distributed his photos as part of its press kits, and (3) the publisher of Cycle World magazine unlawfully distributed his photographs in the magazine.

The defendants moved for summary judgment arguing that the photographs were “unauthorized derivative works based upon protectable preexisting works” of the third-party artist who painted the bikes. The district court granted summary judgment to Kawasaki and the publisher of Cycle World finding that the phtog granted Kawasaki an implied license to use the photographs in its press release materials, and that Cycle World’s subsequent publication of the photographs was fair use (the District Court raised the issue of fair use sua sponte). The District Court also found that the photographs were not derivative works of the third-party artist’s paint design.

The Eleventh Circuit delved into a discussion of whether a photograph is a derivative work but ultimately found that the third-party paint artist had granted a non-exclusive license to the photog. The Court found that the third-party artist knew that the ZX-14 that he was customizing was ultimately for Kawasaki’s promotional purposes. The Circuit found that it was “reasonable to infer” that the third-party artist intended that his artwork be photographed and distributed by Kawasaki, the motorcycle customization shop, and the media. The Circuit thus found that the photographs were not infringing, and sidestepped the need to answer the question of whether the photographs were derivative of the the third-party artist’s paint work.

Fair use

The Court also addressed the issue of whether fair use can be raised by a court sua sponte. The defendant-appellees elected not to assert fair use in their answer or in their motion for summary judgment. In a series of rather peculiar events, fair use was first raised by the district court sua sponte in its summary judgment order. It later vacated the order to allow the parties to brief, among other things, the issue of fair use. In the defendants brief on the second motion for summary judgment they stated “Defendants respectfully suggest that this Court need not go as far as fair use analysis in order to determine, as a matter of law, that [Cycle World's] use of the photographs was lawful.” On reconsideration the district court for a second time entered summary judgment in favor of the publisher of Cycle World on the issue, finding its distribution of the photos were a non-infringing fair use.

The photog on appeal argued that, as an affirmative defense, fair use must be pled in an answer. The Eleventh Circuit found that the district court erred in raising the defense sua sponte. The Circuit, however, did not decide the question of whether the defense was waived. The Circuit found that although an affirmative defense usually must be raised in an answer, courts recognize exceptions to the general proposition. The Circuit also stated in a footnote that if factual questions in any resulting fair use analysis “are in dispute, these must be resolved by the jury.”

7th Cir opines on originality standard for derivative works

Shourin Sen - 9 November 2009 – 9:00 am

Filed under Derivative Work

Schrock, Daniel v. Learning Curve International, Inc., 08-1296 (7th Cir. 2009)

HIT Entertainment granted Learning Curve a license, which was not part of the record, to make “Thomas & Friends” train toys. Learning Curve hired a photographer to take promotional shots of the toys. After four years, the relationship between Learning Curve and the photographer soured. Learning Curve continued to distribute the promotional shots in advertisement and on the internet. The photographer registered the promotional photos and brought suit against Learning Curve and HIT alleging infringement.

The District Court granted summary judgment for Learning Curve finding that the images were a derivative work of the toys, and that the photographer needed both [1] permission from Learning Curve to make the photographs; and [2] permission from Learning Curve to have a copyright in the derivative works. Since Learning Curve never explicitly granted the photographer the right to make a derivative work, said the District Court, the photographer never had a copyright in the photos.

The Seventh Circuit reversed finding that, assuming there was no agreement to the contrary, the photographer only needed permission to take the pictures, not permission to obtain a copyright in the works. The Seventh Circuit relied on their holding in See Liu v. Price Waterhouse LLP, 302 F.3d 749, 755 (7th Cir. 2002) (Kanne, J., writing), as opposed to language from Gracen v. Bradford Exchange, 698 F.2d 300 (7th Cir. 1983) (Posner, J., writing), which suggesting that explicit permission was required for an author to have a copyright in a derivative work, not just permission to make the work.

Originality and derivative works

The Seventh Circuit, assuming that the photos were derivative works for the purposes of the opinion, found that the promotional photos “possessed sufficient incremental original expression to qualify for copyright.” The Seventh Circuit opined that Gracen’s statement that “a derivative work must be substantially different from the underlying work to be copyrightable,” 698 F.2d at 305, “should not be understood to require a heightened standard of originality for copyright in a derivative work.” The Seventh Circuit instead looked to Buckew and found that “the only ‘originality’ required for [a] new work to be copyrightable . . . is enough expressive variation from public-domain or other existing works to enable the new work to be readily distinguished from its predecessors.” Bucklew v. Hawkins, Ash, Baptie & Co., LLP, 329 F.3d 923, 929 (7th Cir. 2003) (Ponser, J., writing).

Remand

The Seventh Circuit remanded the case for further findings on whether the photographer granted HIT and Learning Curve an oral non-exclusive license in the photos; and to see whether Learning Curve had the power to authorize the photographer to make the photos, under the licensing agreement between HIT and Learning Curve.

(H/t Rebecca Tushnet.)

Court finds that answers to textbook questions are an infringing derivative work

Shourin Sen - 30 October 2009 – 9:00 am

Filed under Derivative Work

Pearson Educ., Inc. v. Nugroho, 2009 WL 3429610 (S.D.N.Y. 2009)

The Defendant allegedly sold answer to the Plaintiff’s engineering and accounting textbooks questions, via the internet. The answer sets were identical to the Plaintiff’s instructor’s solutions manuals. Uneventful simple case of copyright infringement? Such was not the case.

The Plaintiff never registered its copyright in its solutions manuals. The Plaintiff instead claimed that the defendant’s distribution of the answers were infringing derivative works of the textbooks themselves. The Court granted summary judgment in favor of the Plaintiff:

[The Defendant's answer sets do] not have independent economic value, and they are not by themselves economically viable. The Schedule is by nature derivative and it is meaningless without the Manual. It has no purpose on its own as it merely lays out a schedule with repeated references to the Manual, using terms that appear in the Manual and that have little meaning without reference to the Manual. Similarly, the Addendum is by nature derivative, as it merely provides additional samples of papers written by students and a booklet prepared for a science symposium, to be used with the Manual. Pavlica v. Behr, 03 Civ. 9628, 04 Civ. 8152, 2006 WL 1596763 at * 1, 3 (S.D.N.Y. June 12, 2006) (Chin, D.J.) (record citation omitted). In Addison-Wesley Publ’g Co. v. Brown, 223 F.Supp. 219, 221-24, 226-28 (E.D.N.Y.1963), the Court held that defendant’s publication and sale of a “Manual of Solutions” corresponding to the questions posed in plaintiff’s copyrighted textbook infringed on plaintiff’s copyright, explaining:

The solutions, for their part, have no independent viability. Without appropriation of the exact dimensions and magnitudes stipulated, in their context of the postulates propounded in plaintiffs’ problems, whatever the form or version into which defendants in their effort at disguise may have translated what they purloined, the solutions would exist in vacuo and be meaningless. What gives the solutions their value is that which, and only that which is already in the pirated works.

Addison-Wesley Publ’g Co. v. Brown, 223 F.Supp. at 220, 223-24; see, e.g., Castle Rock Entm’t, Inc. v. Carol Publ’g Group, Inc., 150 F.3d at 145 (trivia book about the television sitcom, Seinfeld, “substitutes for a derivative market that a television program copyright owner such as Castle Rock ‘would in general develop or license others to develop.’ ”) (quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 592, 114 S.Ct. 1164, 1178, 127 L.Ed.2d 500 (1994)); Educ. Testing Serv. v. Simon, 95 F.Supp.2d 1081, 1089 (C.D.Cal.1999) (“Defendants have further violated [plaintiff's] right to create derivative works by incorporating the copied questions into a new work-defendants’ coaching materials-which add, among other things, suggested answers to the questions.”); Video Aided Instruction, Inc. v. Y & S Express, Inc ., No. 96 CV 518, 1996 WL 711513 at *5 (E.D.N.Y. Oct. 29, 1996) (study booklets and audio portions of an educational videocassette series were derivative works rather than separate works for purposes of statutory damages because their “viability [was] wholly dependent on the video-cassettes themselves”).FN5

FN5. See also, e.g., Midway Mfg. Co. v. Arctic Int’l, Inc., No. 80 C 5863, 1981 WL 1390 at * 9 (N.D.Ill. June 2, 1981) (“If defendant’s device is designed and used solely to modify plaintiff’s visual image, then plainly defendant’s device would only have value because of
plaintiff’s particular copyrighted audio visual work. Defendant, thus, by selling its device reaps the benefits of plaintiff’s artistic endeavor.”); Kepner-Tregoe, Inc. v. Carabio, No. 8-71025, 1979 WL 1072 at *17 (E.D.Mich. July 23, 1979) (materials used to train instructors to teach a program were “by nature derivative” because they could not“ ‘live their own copyright life’ “ and “would have no purpose” without the program); Procter & Gamble Co. v. Moskowitz, 127 U.S.P.Q. 523, 524 (E.D.N.Y.1960) (noting that “selling answers to a [copyrighted] puzzle contest [is]an unlawful interference with the plaintiff’s business and copyright”).

*5 Here, as in Pavlica and Addison-Wesley Publ’g Co., Nugroho’s instructor’s solutions manuals complement plaintiffs’ copyrighted textbooks, have no “independent economic value” and are “meaningless” without the textbooks because they merely provide answers to questions posed in the textbooks. Accordingly, this Court holds that Nugroho’s instructor’s solutions manuals are derivative works that infringe upon plaintiffs’ textbook copyrights.FN6

FN6. Nugroho relies upon Well-Made Toy Mfg. Corp. v. Goffa Int’l Corp., 210 F.Supp.2d 147 (E.D.N.Y.2002) (Weinstein, D.J.), aff’d, 354 F.3d 112 (2d Cir.2003), to argue that he did not infringe plaintiffs’ copyrights because (1) plaintiffs’ solutions manuals were not registered and (2) the solutions manuals he sold “failed to show any substantial similarity” to the textbooks. (Dkt. No. 38: Nugroho Br. at 2-4, emphasis omitted.) As plaintiffs aptly noted in their brief ( see Pls. Br. at 4-5), Nugroho’s arguments and Well-Made Toy Mfg. Corp. do not apply to this case because (1) plaintiffs are not arguing that Nugroho infringed its “unregistered instructors’ solutions manual[s]” and (2) plaintiffs are not arguing that Nugroho infringed their copyrights by selling a “substantially similar work” but instead are arguing that Nugroho infringed their copyrights by selling derivative works. (Dkt. No. 39: Pls. Reply Br. at 4-5.)