This Split is Bananas

The right to create derivative works is one of the exclusive rights of the owner of a copyright. A “derivative work,” according to 17 U.S.C. §101, “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’.”  Nice circular definition there, eh?

What it means is that work based on an original work is a derivative work, and that new work, not just the modifications, is a whole new work.  The copyright holder of the original work on which it is based gets to control who makes what kind of derivative work.

OK, so if I base my work off of an original, it is a derivative work.  No making movies or sequels without permission. Got it.  No Wolverine inspired musicals in my future.

But what if I do something like buy a book of art prints, rip it apart and apply each art print to a tile?  Can I do that, and more importantly, can I sell that tile? This is where the past two weeks of civics lessons come it.  There is a circuit split on that.  And the answer is maybe. It depends on where you are selling.

The Ninth Circuit (California is part of that circuit) says that “[t]he protection of derivative rights extends beyond mere protection against unauthorized copying to include the right to make other versions of, perform, or exhibit the work.” “By removing the individual images from the book and placing them on the tiles, … [the tile maker] has certainly recast or transformed the individual images by incorporating them into its tile-preparing process.”  As such, the tiles are derivative works, and before the tile maker can do it, he needs to get permission from the copyright owner.

The Seventh Circuit (that’s the circuit in which Madison, Wisconsin is located) says that this is not a derivative work.  The tile maker did not reproduce the art; it simply used the art it already purchased to create something else. It isn’t original; it is just simply remounted. They asked, what about the end of the first sentence in the definition?  Is it “recast, transformed, or adapted”?  According to the Seventh Circuit, no, “[n]one of these words fits what [the tile maker] did.”

They went on to state:

Indeed, if [the original artist] is right about the meaning of the definition’s first sentence, then any alteration of a work, however slight, requires the author’s permission. We asked at oral argument what would happen if a purchaser jotted a note on one of the note cards, or used it as a coaster for a drink, or cut it in half, or if a collector applied his seal (as is common in Japan); [the original artist]’s counsel replied that such changes prepare derivative works, but that as a practical matter artists would not file suit. A definition of derivative work that makes criminals out of art collectors and tourists is jarring despite [the original artist]’s gracious offer not to commence civil litigation.

If [the original artist] (and the Ninth Circuit) are right about what counts as a derivative work, then the United States has established through the back door an extraordinarily broad version of authors’ moral rights, under which artists may block any modification of their works of which they disapprove.

It would not be sound to use § 106(2) to provide artists with exclusive rights deliberately omitted from the Visual Artists Rights Act. We therefore decline to follow Munoz and Mirage Editions.

For those wondering, Munoz and Mirage Editions are the Ninth Circuit’s decisions deciding the exact opposite.  That means that we have two areas of the country that have two opposing views.  What do you do?

Well, if you want to have just one answer, too bad. This split has been around since 1997.  The U.S. Supreme Court doesn’t seem all that concerned about resolving the issue.  So the best thing to do is know what circuit you are in and where you are selling your goods. If you are mostly in the Ninth Circuit, be sure to get permission.  If you don’t get permission, even outside of the Ninth Circuit, you risk being found as infringing, but you are highly unlikely to be considered so in the Seventh Circuit.

And if you like having a bit of confusion and daring in your actions, there is also a circuit split on what constitutes “fair use” again hinging on what is “transformative.”  Want some more whipped cream with that?