It's Elementary, my Dear Watson: The Art and Use of Derivative Works in Copyright Law

If you are an artist or a writer or if you’re simply interested in copyright law, you’ve probably heard the phrase “Derivative Work”. This is a term that gets bandied about quite a bit, but for most its meaning and legal significance are a little fuzzy. But, determining if something is a derivative work is one of the first questions of law and fact that must be made before any copyright infringement claim can be made.  So, this blog post is about derivative works: what they are, what they aren’t, and what their significance is in copyright law.

What is a Derivative Work?

The concept of a Derivative Work is defined in the Definitions section of the Copyright Act (17 U.S.C. §101) as “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”.

In plain English, what that means is that a derivative work is also protected under the Copyright Act because it meets two requirements: (a) it is “fixed in a tangible medium” (i.e. not just an idea in the creator’s head), and (b) it is an “independent work”. An independent work is a work where the creator made some independent effort (or “toiled” over the work as described by the courts) and has also brought some form of independent creativity (or a “modicum of creative spark,” also according to the courts)  to the the creation of the work.

An example of a derivative work created by Photo by Jon Tyson on Unsplash

Thus, simply because a work is derivative does not mean it loses copyright protection, as long as it meets the above two requirements (which are interpreted quite liberally in American copyright law). But, even though a derivative work may be subject to copyright protection, the creator is still limited in how it can use the derivative work without improperly infringing on the prior work’s copyright.

Many judges and attorneys think that they will “know” a derivative work when they see it; much like the informal “you know it when you see it” standard first originated in 1964 when the Chief Justice of the Supreme Court Potter Stewart wrote in a “concurring opinion” on an obscenity case Jacobellis v. Ohio. Potter took the position that, in general, pornography should be speech protected under the First Amendment unless it was “hard-core pornography.” And his definition (such as it was) of what hardcore pornography consists of resulted in an oft-quoted phrase:

“I shall not today attempt further to define the kinds of material I understand to be embraced within that shorthand description, and perhaps I could never succeed in intelligibly doing so. But I know it when I see it, and the motion picture involved in this case is not that.”

So basically, Justice Stewart punted the question and just two years later the Jacobellis decision was modified in Memoirs v. Massachusetts to establish clearer guidelines and three factors to define what is or isn’t pornography (the details of which are a discussion for another day). But despite the fact that the “I know it when I see it” rule was essentially made obsolete quite quickly, it continues to be referenced by attorneys and lawyers in many fields, including copyright.

But whether or not something is a derivative work can be a complicated question and we can’t always tell just by looking at them. Take for example the current dispute between NBA player Lebron James and Alabama football coach Nick Saban. James is objecting to a web series started by Saban called “Shop Talk” because James believes it was intentionally modeled on his own web series, “The Shop” and is, therefore, an infringing derivative work. Both web series involve Saban or James having casual discussions while in a barbershop. “The Shop” began airing about a year ago while “Shop Talk” only started quite recently. James claims the shows are similar enough that Saban must be emulating his series while Saban claims that he had never heard of “The Shop” before James’ complaint about his show.

As you can probably guess, matters like this can become complicated both factually and legally because at some point (if no settlement is reached first) a judge or jury must not only determine if Saban’s series is actually similar enough to “The Shop” to be considered derivative but also whether there is evidence that Saban actually did come up with the idea entirely independently of James’ show. These sorts of disputes can potentially linger for years (and cost a great deal more in legal fees than most copyright owners can afford) and it doesn’t even answer the more important second part of the legal analysis: whether a derivative work improperly infringes upon the original work or if it’s protected by one or more exceptions to the Copyright Act.

Does a Derivative Work Always Infringe the Original

Though by their nature derivative works do infringe upon the works that inspired them, it does not necessarily follow that all uses of derivative works are actionable infringement under the Copyright Act. There are several exceptions within the law itself that exempt at least some uses from infringement. Here are a few of the most common exceptions:

• The original work’s copyright has expired. Copyrights do not provide permanent protections for the author; for example, in the United States copyrights expire after either the life of the author plus an additional 70 years or set terms of 95 or 120 years (depending on what type of work it was, when it was published, and whether the author was known). It’s  the reason that, say, remakes of Shakespeare’s works are so common. And yet, it is not always that simple, as is the case with Sherlock Holmes: even though the copyright for Sherlock Holmes expired in the UK and Europe in 2000 (75 years after the death of Sir Arthur Conan Doyle), due to a quirk in American copyright law (inexplicably named the ‘Sonny Bono Copyright Term Extension Act’) the copyrights for works made after 1922 were extended by twenty years, thus many creators here in the United States are still paying a licensing fees to the Doyle estate.

• The creator of the derivative work has a license. As briefly mentioned above, creators of derivative works who wish to make full commercial use of their work can so long as the owner of the original material grants them a license. A written license agreement, if you can afford one, is perhaps the best ways to protect against future infringement claims. But as with any agreement like this, it is crucial that there is a written contract signed by both parties that lays out the precise terms of the license itself. Because of potential pitfalls, having an attorney create or review any license agreement is a good choice, whether you are the one getting or the one granting the license.

• The derivative work falls under an exception to the Copyright Act: The exceptions to copyright included in the Copyright Act and interpreted by the courts are the most common defenses in any case involving copyright infringement, but those exceptions are not nearly as broad as many think. Exceptions to the Copyright Act in the United States fall under the umbrella term “fair use”; a phrase used by many but understood by few. I have already written about one example of fair use, the parody exception, and will be blogging about more in the future, so be sure to check those out.

Are derivative works entitled to copyright protection?

The short answer? Yes.

Perhaps the most common misconception about copyright law and derivative works is that derivative works are not entitled to copyright protection in their own right. This isn’t true. If you steal or use a derivative work without a license or an affirmative defense like fair use, you are committing copyright infringement. This includes all kinds of uses of other creator’s work; from publishing or reposting a creator’s work (including fan art and fanfiction) on social media, blogs, or content hosting sites (like Goodreads or Deviantart) without permission from the creator. Or creating accounts on websites (like Etsy, Redbubble, or Zazzle) to see merchandise featuring a derivative work without a license explicitly giving permission for these uses, especially any revenue-generating uses.

In addition, it's also important to note that giving credit to the creator can help in showing “fair use” but it is not enough in and of itself to negate copyright infringement. Especially if the infringement is particularly egregious, as I discussed here. In addition, no matter what many internet users believe, a work does not lose copyright protections simply because the creator posts the derivative work on the internet. If you take anything away from this post, I hope it is this:

If you like an artist or creator’s work online, ask them for permission before you use it, when necessary, pay for a license to do so, and give credit where credit is due. Anything else is just plain stealing.  

“Fair Use” Exceptions to Copyright Infringement

Part 1: Parody v. Satire

In the coming weeks, I will be writing posts here about the various exceptions to copyright protection. Once you’ve created a copyright, you have significant and powerful tools allowing you to control how the copyrighted subject matter is used. But there are also ways of using copyrighted material that is permissible, even without permission. Most of these exceptions, in the United States at least, are grounded in an overarching rule of ‘fair use’.

You may have heard that phrase bandied about the internet, but do you know what it means? Not many do. “Fair use” are exceptions to copyright that courts have granted over the years that are now codified in 17 U.S. § 107.

“Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—

1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

2. the nature of the copyrighted work;

3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

4. the effect of the use upon the potential market for or value of the copyrighted work.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.”

As you can see, the bill itself includes certain usages that are “per se” permissible, such as teaching, scholarship, and research, but it left open a broader test to determine if a defendant’s usage of the material was infringement. The court must use a four-part test to determine “fair use” and over the years, parody has generally been designated fair use under the four-point test.

So, how does parody and satire fit into all this?

The Supreme Court ruled in Campbell v. Acuff Rose Music, Inc. that parodies are fair use under copyright law. When most people use the word “parody” they’re thinking of a whimsical, funny, fairly lighthearted play off/version of an original work. But the Supreme Court relies on a somewhat different definition of parody.

The Supreme Court has ruled: “a parody may qualify as fair use under § 107.  According to the Court, a parody is the ‘use of some elements of a prior author’s composition to create a new one that, at least in part, comments on that author’s works’.” (Campbell, 580).

The Court even went so far as to rule that for-profit parodies were included under the fair use umbrella. But – and this is a very important but – the metes and bounds of this protection are narrower than they seem.

Because, also in Campbell, the Supreme Court established what is essentially an exception to an exception; more precisely, it specified that while parody (as defined above) was clearly fair use even if used in commerce, satire would be given significantly less leeway under the four-part test (especially if the satire is used in commerce.)

The Court reasoned that satire: “has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh’. The work is less transformative, and other fair use factors, such as whether the new work was sold commercially, loom larger. The Court explained further that while a parody targets and mimics the original work to make its point, a satire uses the work to criticize something else, and therefore requires justification for the very act of borrowing.  As a result, the Court appears to favor parody under the fair use doctrine, while devaluing satire.” See here at § B.1 referencing Campbell at 581.

The Court relied on two main aspects of parody that justified the exception: (1) whether the usage commented on or criticized the original work (and was thus transformative in nature), and (2) that it would be unlikely that the work would ever be licensed because a copyright holder was unlikely to give a license to someone who is planning to criticize them.

Essentially, the court found that making parody a copyright exception was a net good for society. But the same could be said for satire, and the court battles over what should be defined as parody and what should be defined as satire shows clearly that the Campbell decision was not a straightforward decision, as courts across the country now had to determine what exactly counted as a parody (or didn’t count as a satire).

But what about Weird Al?

I don’t think you can talk about parody in the United States without at least mentioning Weird Al Yankovic: For those who don’t know about him, he’s a singer, songwriter, and accordian-playing polka master who also does comedic rewrites of popular songs. And Weird Al’s songs have definitely tested courts ability to pinpoint the line that separates parody and satire. At face value, Weird Al’s songs seem to fit into the satire category – when an infringer simply makes use of the underlying work as a jumping off point without any political or editorial message – especially since many of his songs are so light-hearted. And yet, as detailed in this article, courts have been split forever over whether Weird Al is parody or satire.

Luckily for Weird Al, he has never had to face a judge for a definitive determination of whether his works counted as parody because he takes one critical step in (almost) all of his work. Specifically, he always seeks permission from the artist of the songs he is parodying and is most often given a license by the artist. That has lead some to argue in lower courts that Campbell was wrong in assuming that copyright holders would be unwilling to license their works for the purpose of parody, but Weird Al may be something of an exception to that because his gently comedic remakes of popular songs are frequently considered rights of passage for musicians who are happy to grant him a license.

Long Story Short:

In summary, usage of copyrighted material for the purpose of commenting on or criticizing the original material is a parody and is a recognized exception to copyright law. However, the usage must reflect back on the original; usages that simply use a previous framework for comedic effect are not transformative enough to count as fair use, though what constitutes a comment or critique of the underlying work is something of a gray area, as demonstrated by Weird Al’s work. But, in the end, the safest way to protect yourself when using someone else’s copyrighted material is to license it.

The Law Office of Erin Dwyer-Frazier represents clients in all stages of the copyright process. Reach out today and let’s see how I can help protect you and your work!

DISCLAIMER: This blog post may be considered advertising under Massachusetts Supreme Judicial Court Rules. The content of this website is for informational purposes and should not be considered legal advice. This web page does not establish an attorney-client relationship. Please refer to the terms and conditions for more.

So, You Wrote a Song….Or Did You?: Licensing vs. Ownership in Copyright

So, if you follow me on Twitter, you know that my brother and I took a day trip to New York City this week to see the Broadway show Waitress, that first premiered in 2016. Sara Bareilles – who also write the music and lyrics – and Jason Mraz play the two starring roles – roles that were filled by Keri Russell and Nathan Fillion when the movie Waitress was first released in 2007. Even though the movie itself was only moderately successful, stage rights for the film were purchased shortly after it was released and the creative team, including Sara, began working on bringing it to the stage. Since then, the show has become a massive success and if you have a chance to see it, you should take it.

Waitress, just like any major creative undertaking, is a collaboration. A lot of love, sweat, and tears from a lot of different people go into every element of the production and it shows. But what doesn’t show (and if everyone has done their job right, should never show) is the complicated legal framework that lays out not only who gets credit for writing the show, creating the costumes, or playing the oboe, but also what that credit entails and how each of those people will be compensated.  

Now, for the vast majority of you creators, the legal issues you face won’t be as complicated as those involved in staging a Broadway production. But, for every creator, understanding how collaboration impacts your copyrights is essential.

For the purposes of this post, let’s imagine you’re a poet, and you have a good voice and would like to convert your poetry into music. The only problem is you really don’t like other people and you have no interest in starting a band. Or having any collaborators at all, if you can avoid it. Luckily for you, you’ve met a musician named Hope, and she can really lay down a beat. She’s a little odd, she’s really into feathers, and her business card says that her job is “To Sing the Tune Without the Words” which you feel might be a bit pretentious, but who are you to judge. Anyway, you’ve listened to some of her raw beats and liked them, but does that mean you have to work with her? What are your options?

You Have Three options:

1. Hire Hope to create music as a “work for hire”:

Section 101 of the Copyright Act allows employers to take direct ownership of the copyright associated with their employees’ creative work in two situations: (1) if the copyrightable material was created by the employee in the normal course of their employment (i.e. a W-2 employee performing their normal job) or the work was specially ordered or commissioned for use with a written agreement using specific language that the work is either “made for hire” or that it is “a work made for hire” and the work must fall into one of the following nine specific categories: (1) a contribution to a collective work, (2) a part of a motion picture or other audiovisual work, (3) a translation, (4) a supplementary work, (5) a compilation, (6) an instructional text, (7) a test, (8) answer material for a test, [or] (9) an atlas. If the arrangement doesn’t meet all of these tests, it will not be considered a “work-for-hire” and ownership of the copyright stays with the creator.

Is this a good option for you and Hope? There are benefits associated with “work-for-hire” arrangements for you, specifically, it means that at the moment of creation the copyright for the music Hope creates for you belongs to you. It also comes with complete ownership of the copyright and the authority to do whatever you choose with the work, including editing it, sampling it, altering it, or anything else necessary, without consulting with Hope. This is why large collaborative projects, like movies or Broadway musicals, will often try to rely on “work for hire” arrangements, so that they won’t have to worry about transferring copyrights from creators who may try to limit how their work can or can’t be used. And that is also why collaborative projects and collective works are amongst the categories that allow independent contractors to be used on a work-for-hire basis, but works without such complicated ownership issues will default to the “traditional” copyright rules.   

So, though audio recordings can qualify as works made for hire, it’s not guaranteed that your album, as a larger project, will qualify as a collective work or compilation as required by the Copyright Office because of your tendency to work alone with very few collaborators. In addition, you may find that Hope is reluctant to agree to a work-for-hire arrangement. Hope may want one of the next two options, because licensing or transfer agreements can give copyright creators greater protections when doing work as part of a larger project.

2. Licensing the copyright.

One of the most basic foundations of copyright law is also one of the most misunderstood; specifically, that a copyright is a legal right that vests (aka stays) with the creator when the original work is created. To have a valid copyright, all you need to do is create. Now, there may be limits to what you can do with that copyrighted work and certain statutory protections only apply to registered copyrights, but the act of creation itself also creates the copyright. So, presuming that you did not specifically commission anything from Hope as a “work-for-hire,” you and Hope will have to come to some sort of agreement that gives you some rights over Hope’s copyrighted work.

Now, beginning with the assumption that Hope has already created a beat or an instrumental that you want to use on your album, Hope could offer to simply license the rights to use the instrumental to you. For Hope, licensing the copyright gives her the most control over how her work is used or not used. Theoretically, Hope could place limits on how you can change the instrumental, where the instrumental can be played, who else can use the instrumental, or even reserve the right to sell or lease the rights to use the instrumental to someone else. Hope could also create some kind of ongoing royalties or licensing fee arrangement that would require you to continue to pay Hope going forward (especially if the song were to become a hit.) And, as the key issue, Hope could retain authority to revoke the license if you were to violate the terms of your agreement (i.e. if you didn’t pay what was owed or misused the instrumental) which is a pretty powerful bargaining chip since without the instrumental, you’re stuck with just your poetry.

So, it’s pretty clear why Hope would like a licensing arrangement, but are there any positives for you? One potential positive for you in accepting a license is that it is likeliest the cheapest way to get rights to Hope’s instrumentals. And if the beat or instrumental is fairly generic, you may not even care about having exclusive rights to use it. But a license is always going to be risky, especially for someone like you, who doesn’t want any kind of on-going business or collaborative relationship with Hope. For a loner who just wants to write poetry and make music, a license can be a permanent tether keeping your work from taking flight. So what’s probably the best middle-ground for you and Hope?

3. Permanent transfer of the copyright

In all likelihood, the best approach for you and Hope is a Copyright Transfer Agreement. Sections 201-205 of the Copyright Act cover the rights of copyright holders to transfer those rights to others. This is distinct from a “work-for-hire” situation because the rights to the copyright have vested with the creator and now the creator is choosing to transfer those rights to another person. This is also distinct from a license, because the creator is transferring their entire rights under the copyright (though the transfer can be subject to some limitations) and granting the purchaser the right to register the copyright in their name. The terms and conditions of a transfer agreement can vary depending on the type of work but generally, once a transfer is completed, the transferee (in our case, you) will have full use and ownership of the copyright, limited only by the same limitations that would have governed the creator.

Why is this a good middle ground for both you and Hope? For you, a copyright transfer agreement gives you what you want most, the ability to use Hope’s instrumentals in your music without having to deal with Hope herself. It also allows you to register a copyright for both the lyrics and the instrumentals for your song, which makes enforcing your control over the song easier further down the line. It also allows you to make changes to the instrumentals or even sell or lease them to someone else without Hope’s approval.

But a copyright transfer agreement can also be a valuable tool for Hope, especially if she frequently records beats or instrumentals for other singers and artists. By using transfer agreements (as opposed to the “work-for-hire” arrangement discussed above), Hope has a contract that allows her to revoke the transfer if contractual elements aren’t met, so if Hope is not paid, or if you otherwise violate the transfer agreement, Hope has the legal right (usually as laid out in a termination clause in the agreement) to revoke the transfer and reclaim her copyright. Hope can also require that credit be given when her instrumental is used on the album. While this may not seem like a great deal of authority, it is still a powerful way for Hope to protect both her financial interest in the deal but also build a reputation through her work (as opposed to many, many work-for-hire artists and creators who have simply been erased by studios, publishing companies, or comic-book companies.)

Even if you’re not a singer, managing your copyrighted material is vital and anyone who creates and/or sells creative works should be educated about their rights and how to protect them and enforce them. For almost any freelancer or independent creative, having some kind of copyright license agreement and copyright transfer agreement to use with clients is a good idea. And if you aren’t sure where to start, give me a call. We’ll be able to find the right solution for you and your creative needs.

DISCLAIMER: This blog post may be considered advertising under Massachusetts Supreme Judicial Court Rules. The content of this website is for informational purposes and should not be considered legal advice. This web page does not establish an attorney-client relationship. Please refer to the terms and conditions for more.

But, I don't own any intellectual property...

There are three main types of intellectual property protected by the law: patents*, copyrights, and trademarks. While most people are familiar with these erms, they frequently confuse what each one means and what they protect. There are many excellent resources out there that define and differentiate patents, copyrights, and trademarks; I find these definitions from the USPTO to be especially helpful and clear. This post will focus on copyright - the most widespread and common intellectual property - which most people have no idea they own.

Copyrights: Once you have created an "original work of authorship," you have an automatic copyright by virtue of the creation alone. So, if you have taken photos, published a story, or written a song, you have a copyright as soon as the work is "created and fixed in a tangible form." But be careful to make sure that ou are the actual creator of the work; for example, the copyright on a picture belongs to whomever hits the shutter. So be careful that you don't let a monkey get a hold on your camera.  For many people, their copyrights simply exist but are never acknowledged or enforced; until, of course, their original work is misappropriated for profit or simply without credit. It is at that point that you need to consider the value of your copyrighted work (whether it is monetary value or personal value) and the costs of enforcement to decide whether to take any action to protect your copyright. In a brief consultation, I can help you determine which, if any, enforcement actions make the most sense for you.

Once you have decided that your copyrighted work is valuable enough to protect, I can help you find a variety of legal solutions that can hopefully prevent misappropriation in the first place, such as, registration and clear, written contracts whenever copyrightable work is being created, sold, or licensed to another person. But if your work does get stolen, I can help with enforcement, especially with DMCA takedown notices and other cease and desist letters.

My next post will cover how to determine if your company name, slogan, or icon (amongst others) are trademarks protectable under federal law.

*My legal services related to intellectual property focuses on copyright and trademark because patent law requires scientific or technical knowledge that I do not have. If patent issues arise during the course of my representation of a client, that work will be referred to a patent attorney.