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Building on Copyrighted Works- Module 2 of 5

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Module 2-Building on Copyrighted Works

Copyright law prohibits anyone other than the copyright owner from exercising the exclusive rights of copying, reproduction, adaptation, and distribution, but the law recognizes works that make use of, and build upon, existing copyrighted works to encourage and facilitate additional creativity and innovation.   

In this module, we discuss the two most popular ways to build on pre-existing copyrighted works: a derivative work and a compilation. We address the differences between the two and the steps required to creating each.

Derivative Works

A derivative work is a new, original product that includes aspects of a preexisting copyrighted work. Examples of derivative works include, foreign language translations of books, motion pictures based on novels, and a painting based on a photograph.  A derivative work is eligible for its own copyright protection, even though the work it is based on is also copyrighted. 

A copyright owner has the right to create a derivative work and can do so during the entire term of his copyright.[1]  While initially, only the copyright owner for a particular work has the right to create derivative works based on the original.  The copyright owner must authorize and allow another party seeking to create a derivative work.

The right to create derivative works is sometimes characterized as the right to adapt the work.  Adaptation rights for a copyrighted work grant a party the right to create versions of the copyrighted work in different media.  For example, a novelist may grant a motion picture producer the right to create a movie based on her novel, granting the producer the right to adapt the novel into a film.

Copyrightable works can also be based on works derived from public domain materials.  Here, copyright protection applies only to the new material, not the public domain material upon which the new work was based.  For example, singer-songwriter Pete Seeger wrote the lyrics for the song, “Turn, Turn, Turn,” made popular by the American band The Byrds. The music is original to Seeger, however, the lyrics of the song come directly from the text of The Bible. The entire song is copyrightable to Seeger, along with the music, yet the lyrics are not within the scope of Seeger’s copyright protection, so anyone else could make other uses of those lyrics.

The derivative right has two beneficial effects. First, the derivative right could lead someone who otherwise would not have created a copyrighted work to create one, so it leads to creativity and fosters innovation. For example, a writer has a unique idea for a new book but is unsure of whether he has the time and energy to write it. After speaking with a publisher, he learns about the possibility of royalties from film and other types of adaptations. The financial benefits from a derivative work conceivably could incentivize him and be the decisive consideration that pushes him to embark on writing.

Second, the derivative right may lead someone to invest more in a copyrighted work to preserve and maximize opportunities for adaptation.[2] Laura Hillenbrand, wrote the nonfiction best-seller Seabiscuit, which became a hit movie that grossed nearly $150 million worldwide.[3] Before writing the book, Hillenbrand ended up with a movie contract and it’s possible that she devoted more time to researching and writing the book once she knew that the book would become a movie. So, the derivative right may tend to steer investment of both time and money to works that are most likely to be adapted, increasing the quality of an original work and any adaptations as well.

The creator of an original work can claim copyright infringement if he can show certain things.  To prove infringement, he must show that the derivative work is substantially similar in both ideas and expressions to the original work and that the creator of the derivative work didn’t get permission to create his derivative work. Similarity of ideas may be shown by comparing the objective details of the works: plot, theme, dialogue, mood, setting, and characters. Similarity of expression focuses on the response of the ordinary reasonable person and considers the total concept and feel of the original work and later work.

In one case, Micro Star v. Formgen, Inc., FormGen made and owned the copyright to the popular computer game, Duke Nukem 3D. Micro Star then packaged user-created content from that game and sold it as a new game called Nuke It, which it claimed was an enhanced version of Duke Nukem.[4] The court disagreed though and found that with Nuke It, Micro Star was competing against FormGen’s product. The two computer games were too alike, and the later game couldn’t qualify for derivative work status. The court determined that Micro Star infringed on Form Gen’s copyright.

Compilations and Collective Works

Section 101 of the 1976 Copyright Act defines a compilation as “a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.”[5]

 Compilations of data or compilations of preexisting works may also be copyrightable if the materials are arranged, coordinated, or selected in such a way that the resulting work as a whole constitutes a new work. Although the components of a compilation are not new, the way those components are organized and presented is new.

When the collection of the preexisting material that makes up the compilation doesn’t appear to have any original arrangement or coordination, copyright protection for the compilation isn’t available.

Some examples of compilations that may be copyrightable are:

·       a directory of the best services in a geographic region;

·       a list of the best short stories of 2018;

·       a collection of sound recordings of the top hits of 2019; or

·       an academic journal containing articles on a subject.

One form of a compilation is a collective work.  A collective work can be a regularly published periodical or magazine and even an encyclopedia.  In a collective work, each of its component parts is an original work of authorship.  For example, an anthology of poems is a collective work, and each of the poems is an original work of authorship by its author.  In a collective work, each of the component works are protected by copyright, in addition to the copyright protection provided for the entire collection.

An important case addressing copyright and compilations is Feist Publications, Inc. v. Rural Telephone Service Co.[6] There, Rural was a public utility that provided telephone service in northwest Kansas and Feist Publications was a publishing company that specialized in publishing telephone directories that covered Rural’s service territory. Rural didn’t license its white pages listings to Feist, but Feist then extracted the listings anyways. Feist altered many of the listings, but many were identical. Rural filed a copyright infringement suit soon afterwards.

The United States Supreme Court determined that a listing of names and telephone numbers in a telephone directory was a mere compilation of information, not a creative and original work of authorship.  As a compilation, the information collected cannot be protected by copyright, however, creative methods to organize and present the information can be copyrighted.  The Court concluded that the method of presenting the telephone directory information used by the competing publication did not display creativity and originality sufficient to merit copyright protection. 

The Feist case established the principle that compilations of facts or information can receive copyright protection only to the extent that the compilation was either developed or presented to users in a manner which displays originality and creativity. Generally, collections of information, no matter how extensive or complex, are not subject to copyright law protection.  If however, the compilation or the manner of its presentation reflect creativity and insight on the part of the compiler, those collections may qualify for copyright protection.

In another case involving information on estimated used car values, a federal court also asserted copyright protection over the presentation of a collection of car valuation estimates.  In CCC Information Services v. MacLean Hunter Marketing Reports, the U.S. Court of Appeals for the Second Circuit extended copyright protection to the compilation of estimated used car values.[7] 

The key for this court was that the estimated values were established using the expertise and insights of the authors and the information was presented to users in a creative and original manner.  The compilers of the information did not merely collect information, but instead applied creativity and expertise to estimate the vehicle values.  Additionally, the court determined that the compilers of the information also presented the information to users in a creative and original manner.

Permission from Copyright Owner

Just like any other use of another’s work, prior to creating a derivative work or a compilation, the creator of a new work must obtain permission from the copyright owner of the base work.  As discussed previously, the right to create derivative works is one of the fundamental rights of copyright ownership, so before anyone can create a derivative work based on a copyrighted work, permission to do so must be granted by the original copyright’s owner.

Permission from a copyright owner to create and distribute a derivative work is characterized as a license, a contract between an intellectual property rights owner and a party to be authorized to exercise some of the legal rights associated with that property.  A written licensing agreement for the exercise of derivative rights should clearly identify the copyrighted material and define the specific authorization granted to the licensee. 

A license authorizing another person to exercise derivative rights can be recorded with the United States Copyright Office. The recorded licensing agreement at the Copyright Office will document evidence of ownership and transfer of rights associated with copyrighted works, which in turn can help to avoid or resolve disputes.

A copyright owner can authorize multiple parties to create derivative works based on the same original copyrighted work.  For example, a novelist can authorize one publisher to create and publish a German language version of her novel while simultaneously authorizing another publisher to create and publish a French language version of the same novel.  That same novelist could authorize one party to adapt the novel into a motion picture, while also authorizing another party to adapt the novel into a theatrical play.  This ability to segment derivative rights among multiple parties suggests that it is vital that each license authorizing a derivative work be as specifically and as narrowly defined and described as is possible.  Attorneys and intellectual property specialists dissuade a copyright owner from granting one party a broad authorization to create all forms of derivative works because the original creator could potentially obtain more financial return and exert more control if he licenses his original work to different parties.

Creation of a derivative work without permission from the owner of the copyright for the original work is a form of copyright infringement.  In Rogers v. Koons, the Second Circuit addressed a controversy centering on the creation of a wood sculpture that was based on a photograph.[8]  The creator of the sculpture had purchased two copies of the original photograph and then created his sculpture based on the photograph, without permission from the photographer. 

The court determined that the action was infringement, as the creator of the sculpture had access to the original work and created a new work that was substantially like the original.  The fact that the two works were in different media and that the photographer did not create sculptures did not impact the court when it reached its decision.  As the owner of the copyright, the photographer had all rights associated with creation of derivatives in any form, thus prior permission for creation of any derivative was required.

Koons illustrates the broad scope of derivative or adaptive rights.  The derivative rights of the photographer were broad enough to control creation of adaptations of his photograph in all media.  Thus in addition to controlling sculptures created based on his photograph, the photographer could control creation of paintings based on the image captured in his photograph.  The photographer could similarly control graphical representations of his photo printed on cards or clothing.  The photographer could even control use of the image captured in his photograph as a model for the design of a float in the annual New Year’s Day “Rose Bowl Parade.”

If an original work of authorship is to be included in a collective work, the creator of the collective work can commission authors to create contributions for that collective work on a work made for hire basis.  Thus if a fully executed written agreement is completed establishing a work made for hire relationship, then the owner of the copyright for the collective work can obtain ownership of the copyrights for the various component works, as well.

Registration of Derivative Works and Compilations

To register copyright claims in a derivative work or compilation, information will be required regarding previous registrations of preexisting material, limitations of the claim, the material excluded, and a description of the new material added to the derivative work or compilation.

The United States Copyright Office provides the following recommendations for the steps required to register a derivative work or compilation.[9] First, provide the author of the compilation or derivative work. There is no need to name the author of the previously registered or published work unless that person is also the author of the new material. Second, the applicant should specify what he’s newly created, whether it be a text, music, artwork, or even a lyric. Third, he must identify the copyright claimant, who is either the person who obtained from the original creator all rights she initially owned or is the creator of the new work. When identifying the copyright claimant, the creator of the new work should also clarify how he’s acquired the copyright to be able to create a compilation or derivative work. If the work being registered contains a substantial amount of material that was previously registered, in the public domain, or published, the creator should identify that material and should also identify the material that he’s not using.

Finally, the creator of the new work should briefly describe all new copyrightable authorship covered by the copyright claim for which registration is sought. Identifying all the old material and new material will assist the Copyright Office in recognizing if the work being registered is a derivative work or a compilation.

          In our next module, we will turn to the great exception to copyright protection: the fair use rule and we will discuss its nuances and ramifications.