Copyright’s Adaptation Right and Originality in the Ninth Circuit
True to its unorthodox form, the Ninth Circuit is the black sheep of the copyright world when it comes to derivative works and originality. Most of the circuit courts in the country (with the exception of the Ninth Circuit) require some minimal amount of originality in a derivative work in order for it to potentially infringe a pre-existing copyright. In other words, the derivative work must be independently copyrightable. If not, the majority view is that there is no copyright infringement. California’s Ninth Circuit, however, does things differently. In California, a derivative work can exist and infringe an underlying work, absent originality.
Once upon a time (September of 1988), the Ninth Circuit decided the case of Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 (9th Cir. 1988), which involved the resale of artworks that that the defendant cut out of plaintiff’s books before mounting them individually onto ceramic tiles and then selling the tiles. Since the books and the images therein were authorized publications that the defendant lawfully purchased at retail, the defendant relied on the first sale doctrine, 17 U.S.C. § 109(a), which permits purchasers to resell or otherwise dispose of any “copies” legally acquired from the author. The court held that the defendant’s removal of artworks from the plaintiff’s books, combined with the process of gluing them to ceramic tiles, resulted in the creation and sale of “derivative works” rather than the resale of lawfully-acquired “copies,”; thus, the first sale doctrine did not exculpate the defendant’s actions because the California court found a derivative work despite the blatant lack of originality.
Just as a side note, this seems illogical to me. For a derivative work without some originality to infringe an underlying copyrighted work does not quite add up. The entire premise behind copyright’s adaptation right is that the derivative work becomes a second, separate work independent in form from the first. Otherwise, there is no derivative work, but rather a mere copy, which would implicate the reproduction right—not the adaptation right. To argue that adding a frame to a picture is sufficient to transform the original picture into a separate, independently copyrightable work is groundless and unreasonable. Yet, this is what the court seems to imply in Mirage. To hold a defendant liable for copyright infringement under such circumstances essentially blurs the distinction between the adaptation and reproduction rights and nullifies the first sale doctrine.
Mirage has paved the way for—what I believe is—a string of bad case law finding infringement of the derivative work right, even in cases where the allegedly derivative work lacks sufficient (if any) originality to make it a derivation of the original. The only way that I can make sense of the court’s decision in Mirage is to view the transformation in form—from book to tile—as the legally dispositive fact. In other words, had the defendant simply cut the images out of the books and framed them (as opposed to gluing them to tiles), then by that same logic the court would have had to conclude that there was no infringing derivative work. Nevertheless, I still prefer the approach taken by other circuits.
An Illinois court in the Seventh Circuit got it right when it decided Lee v. Deck the Walls, Inc. The court rejected the Ninth Circuit’s skewed reasoning and held that a defendant’s “mundane” epoxy mounting of plaintiff’s notecards onto ceramic tiles did not create derivative works. The sale of the tiles was consequently permitted under the first sale doctrine. Even if the first sale doctrine were somehow deemed inapplicable in this case, infringement of the reproduction right would have been the more viable theory under which to sue, but of course the first sale doctrine was – and should have been – applied by the court.
It’s no news that one seeking to register copyright in a derivative work must demonstrate original authorship and fixation, but the point here is that even an unoriginal “derivative work” may constitute infringement in California. As Galoob Toys, Inc. v. Nintendo of America, Inc. summarizes, “[i]t makes no difference that the derivation may not satisfy certain requirements for statutory copyright registration itself. A derivative work must be fixed to be protected under the Act . . . but not to infringe“. So the takeaway—aside from California’s skewed outlook on derivative works—is that a defendant similarly situated to Timber Creations in Mirage should do everything possible to have his or her case heard in the Second Circuit, Seventh Circuit, or some other jurisdiction in which derivative works cannot infringe copyrighted works absent some originality. If you’re a plaintiff, the Ninth Circuit is where you want to be.
 See Greenwich Workshop, Inc. v. Timber Creations, Inc., 932 F. Supp. 1210 (C.D. Cal. 1996) (finding that defendant’s removal of artworks from the plaintiff’s books, combined with the matting and framing of the pictures, infringed the plaintiff’s derivative work right).
Photo by: Eric E Johnson under Creative Commons License.