Making Derivative Works

In copyright law, a “derivative work” (also referred to as an adaptation in some jurisdictions) is an expressive work that includes significant copyright material from a pre-existing work, but also includes enough new material to be a separate copyrightable work. A new arrangement of a song and a movie script based on a play are both derivative works. By contrast, neither copying recorded music from a compact disc to an mp3 file, nor transcoding video from one format to another, creates a derivative work. These are just new copies because there is nothing creative or original added to the existing work.

Legislative History

Earlier Copyright Acts

The express statutory right to “prepare a derivative work based upon the copyrighted work” is a recent addition to American copyright law. Section 1 of the Copyright Act of 1790 gave domestic authors who complied with certain formalities the “sole right and liberty” to print, reprint, publish, and to vend (sell or offer for sale) qualifying maps, charts, and books, for a term of fourteen years. Section 2 added an importation right, but the Act did not expressly recognize any rights with respect to adaptations or derivative works.

In 1909, Congress provided a more expansive, but still specific, list of derivatives that authors were entitled to control. The Copyright Act of 1909, Section 1(b) conferred an exclusive right (among other things) to translate literary works, to dramatize nondramatic literary works, and to novelize a dramatic work. It is important to note the structure of the 1909 Act. The Act not only identified specific types of derivatives that authors were entitled to control—translations, dramatizations and novelizations—it also tied each type of derivative to the type of work being adapted. It was not until the Copyright Act of 1976 that United States copyright law conferred an express general right to control the preparation of derivative works based upon copyrighted works.

The Copyright Act of 1976

Section 106(2) of the Copyright Act of 1976 grants copyright owners the exclusive right “to prepare derivative works based upon the copyrighted work.” But what does this mean? Before delving into the caselaw it is important to take stock of the other provisions of the Copyright Act that illuminate the meaning of Section 106(2).

17 U.S. Code §101

A “derivative work” 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”.

Section 101 of the Copyright Act of 1976 defines a “derivative work” as “a work based upon one or more preexisting works” and then lists several examples followed by a catchall “or any other form in which a work may be recast, transformed, or adapted.”

What does it mean for one work to be “based upon one or more preexisting works”? Assuming that there are two conceptually distinguishable works, what is the nature and extent of connection between required to assert that one is a derivative work (or, “a work based upon”) the other? Speaking loosely, one could say that a musical composition inspired by a painting is a work ‘based upon’ a preexisting copyrighted work, but that is obviously not what Congress intended.

House Report on the Copyright Act of 1976 (p. 62)

To be an infringement the “derivative work” must be “based upon the copyrighted work.” … Thus, to constitute a violation of section 106(2), the infringing work must incorporate a portion of the copyrighted work in some form; for example, a detailed commentary on a work or programmatic musical composition inspired by a novel would not normally constitute infringements under this clause. (emphasis added)

Even without this clarification, we would not ordinarily interpret the words “based upon” so loosely as to merely require some “but for” causal connection between the original work and the accused derivative. Under the principle of ejusdem generis, the statutory examples, “translation, musical arrangement, dramatization, fictionalization, motion picture version, [etc.]” indicate the universe of things regarded as “based upon the copyrighted work” that Congress intended to capture. If your Latin is a bit rusty, ejusdem generis is a Latin phrase that means “of the same kind.”

Not all transformations, recastings, or adaptations will create a derivative work as that term is used in the Copyright Act because many such activities do not produce a work that includes a sufficient amount of the original copyrighted expression. Explanations, commentaries, indexes, and bibliographies and similar supplementary works are not derivative works. These works would not exist but for the copyrighted work which they supplement, however, “but for” causation is not enough.

When is the Right to Make a Derivative Work Based Upon the Copyrighted Work Infringed?

The role of originality

As discussed in a previous chapter for a work to qualify as a copyrightable, derivative work, someone must contribute new copyrightable authorship to a preexisting work. Trivial modifications are not sufficient, but there is no standard separate from the Supreme Court’s general elucidation of the concept of originality in Feist. Does this mean that to infringe the copyright owner’s right to make derivative works, the accused work must also be original?

Lee v. A.R.T. Co., 125 F.3d 580, 582 (7th Cir. 1997)

Notes and questions

(1) Note that the Seventh Circuit’s decision in Lee v. A.R.T. Co. explicitly rejected an earlier Ninth Circuit opinion in Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 (9th Cir. 1988). The academic consensus is that, in this instance, the Seventh Circuit is correct and the Ninth Circuit is simply in error.

***

Returning to the original question, can one infringe the copyright owner’s right to make derivative works without adding some non-trivial element of authorship that would satisfy the originality standard in Feist?

Why would we even need to answer this question? To infringe upon the derivative work right requires recasting a qualitatively and quantitatively significant amount of the primary work’s original expression into a new form or a new version of the work. It requires, in short, something that would otherwise constitute an infringing reproduction. As a result, you might think that there are not many situations where the derivative work right could be infringed without infringing the reproduction right.

First suppose that a magazine publisher has a license to reproduce a 2000-word article by Alice, but no right to make derivative works. The publisher could prompt a large language model to produce a new shorter version of the article. Assuming no great degree of human intervention and produced was used, the result would be a new version of the work. If these actions had been undertaken by a human the originality standard in Feist would most likely be satisfied, but in this scenario, there is no additional originality or creativity supplied by the machine learning process. It seems unthinkable that the lack of originality could thwart Alice’s exclusive right to make derivative works based upon the copyrighted work. For more, see Daniel J. Gervais, AI Derivatives: The Application to the Derivative Work Right to Literary and Artistic Productions of AI Machines 52 Seton Hall Law Review 1111 (2022).

Is the derivative work right entirely duplicative of the reproduction right?

Litchfield v. Spielberg, 736 F.2d 1352 (9th Cir. 1984)

Notes and questions

(1) Does the court’s holding effectively collapse the derivative work right into the reproduction right? If both require substantial similarity, what independent function does § 106(2) serve?

(2) How should courts handle cases where a work incorporates minimal but qualitatively significant portions of a copyrighted work? Does the Litchfield standard adequately address such scenarios?

(3) The court was highly critical of the plaintiff’s “obsessive conviction” regarding similarities. Should courts consider the psychological motivations of plaintiffs in copyright cases, or does this risk prejudicing legitimate claims? How many cases in this book are the result of such “obsessive conviction”?

(4) The conventional view is that the threshold of substantial similarity required to infringe the reproduction right is the same for the derivative right. In a 2013 law review article, The Derivative Right, or Why Copyright Law Protects Foxes Better than Hedgehogs, Professor Daniel Gervais posits that there is a subtle difference between the reproduction right and the right to make derivative works based upon the copyrighted work. He argues that whereas infringement of the reproduction right requires the copying of protected expression; for derivative works “the test is whether creative choices that gave the plaintiff’s work its originality were copied.” This seems like a distinction without a difference. The only way the copyright owner’s creative choices can be copied is by copying, at some level of generality, their original expression that embodies those creative choices.

Nonetheless, there might be instances where the reproduction right is not infringed but the derivative work right would be. Notably, if the defendant has a license to reproduce the work, but not to alter it. The Nimmer treatise suggests that this theory of the case would “undoubtedly meet resistance, particularly in those courts oriented against moral rights,” but it is hard to see why it should not apply where the right to make changes to the work has been deliberately withheld. 2 Nimmer on Copyright § 8.09 (2022).

Another possibility is that the right to make derivative works based upon the copyrighted work could be infringed by an unfixed work. In Lewis Galoob Toys, Inc. v. Nintendo of Am., Inc., 964 F.2d 965, 968 (9th Cir. 1992) the Ninth Circuit noted that the Copyright Act’s definition of “derivative work,” in contrast to its definition of “copies,” lacks any reference to fixation. This would be an odd result. It would mean that private performances of songs or poetry without alteration were non-infringing, but that performances that changed the original work by injecting new authorship and creativity would be infringing.

Limiting principles

There are at least three key limiting principles that apply to the exclusive right “to prepare derivative works based upon the copyrighted work” under United States copyright law.

First, making a derivative work necessitates recasting a qualitatively and quantitatively significant amount of the primary work’s original expression into a new form or a new version.

Assessing whether this threshold has been met requires some understanding of what made the primary work copyrightable in the first place. Suppose we reduced a novel such as Fifty Shades of Gray down to a table of individual words and the frequency with which they appeared in the text. We could program a computer to randomly construct an alternative novel, Gray Fifty Shades Of, which followed traditional rules of English grammar and used the same individual words. A few things should be obvious about, Gray Fifty Shades Of: (i) it would be terrible; (ii) it would not exist, but for Fifty Shades Of Gray; (iii) but it would not convey any of the original expression of the primary work. Without some nontrivial overlap in original expression Gray Fifty Shades Of would not be a derivative work. On the other hand, a sequel to the primary work that uses the same characters and settings would be very likely to be a derivative work.

The Ninth Circuit made the point sharply in Oracle International Corp. v. Rimini Street, Inc., 123 F.4th 986 (9th Cir. 2024), extracted below. There is no “interoperability test” in the Copyright Act or in the case law: to be a derivative work, the second work must actually incorporate the first, either literally or nonliterally. That a program is designed to work with another program says nothing about whether it contains any of that program’s expression. The distinction matters well beyond software, because it isolates what the derivative work right is actually about — not functional dependence, not being made for use with something else, but the recasting of protected expression.

Second, not all reproductions are derivative works, but all infringing derivatives must meet the same threshold of similarity that is required to infringe the reproduction right. This means that the right to “prepare derivative works based upon the copyrighted work” is in some sense superfluous to the reproduction right. But Section 106(2) is not entirely pointless. As noted above, it makes it easier for a copyright owner to license reproduction but still object to unauthorized changes to her work. Also, the existence of the right to “prepare derivative works based upon the copyrighted work” gives courts some guidance as to the extent of similarity required to make one work a reproduction of some prior work. Without the derivative work right, it may not be obvious that translations, abridgments, fictionalizations, and dramatizations are presumptively within the scope of the copyright owner’s rights.

Third, the relationship between fair use and derivative works can be confusing. Transformative use and derivative works are not mutually exclusive categories, although once a work has been determined to be fair use there is not much clarity to be gained by continuing to refer to it as a derivative work as well. This issue is addressed in more detail in a later chapter on fair use.

Illustrative Cases

The Nintendo Game Genie

The Ninth Circuit grappled with the limits of the right to make derivative works based on the copyrighted work in Section 106(2) in Lewis Galoob Toys, Inc. v. Nintendo of Am., Inc., 964 F.2d 965 (9th Cir. 1992). Galoob sold a “Game Genie” that allowed players using the popular Nintendo platform to modify aspects of how the games were played, such as increasing character lives or abilities. Nintendo argued that the altered audiovisual displays created by the Game Genie were infringing derivative works.

As already mentioned, the court ruled that because the Copyright Act’s definition of “derivative work” does not refer to fixation, the ephemeral nature of the changed game play did not prevent the Game Genie from infringing the right to make derivative works. Nonetheless the derivative work issue did not go Nintendo’s way.

Lewis Galoob Toys, Inc. v. Nintendo of Am., Inc., 964 F.2d 965 (9th Cir. 1992)

Notes and questions

(1) Not every videogame case deals with game modifications the same way. In Micro Star v. FormGen Inc., 154 F.3d 1107 (9th Cir. 1998) the court addressed modifications to a video game called Duke Nukem. It ruled that the modified levels created by a third party did constitute infringing derivative works because unlike the Galoob case, the modifications in Micro Star were fixed in a tangible medium—on a CD-ROM—and were distributed to the public.

Interoperability is not enough

Galoob asked whether the Game Genie incorporated any of Nintendo’s expression. The Ninth Circuit returned to that question thirty years later, in a dispute over third-party support for enterprise software, and had to decide whether a program that works only with another program is for that reason a derivative work of it.

Oracle International Corp. v. Rimini Street, Inc., 123 F.4th 986 (9th Cir. 2024)

The Harry Potter Lexicon Case

The Harry Potter Lexicon Case illustrates the relationship between the concepts of reproduction, adaptation, and fair use.

At the time of the litigation, J.K. Rowling was the author of seven highly acclaimed Harry Potter books and two short companion books to the Harry Potter series. Steven Vander Ark began work on The Harry Potter Lexicon website in 1999 and opened it to the public in 2000. The Harry Potter Lexicon was a crowd-sourced fan website that collected and organized information from the Harry Potter books in encyclopedic form. The lexicon website was well received, and received positive feedback from Rowling herself. At the trial Rowling said: “this is such a great site that I have been known to sneak into an internet cafe while out writing and check a fact rather than go into a bookshop and buy a copy of Harry Potter (which is embarrassing).”

In 2007, RDR Books contacted Vander Ark about the possibility of publishing a Harry Potter encyclopedia based on some of the materials from the Lexicon website. RDR overcame Vander Ark’s initial reluctance to publish by agreeing to defend and indemnify Vander Ark in the event of any lawsuit. The Harry Potter Lexicon was published as an encyclopedia of Harry Potter information.

Warner Brothers Entertainment, Inc. v. RDR Books, 575 F. Supp. 2d 513 (S.D.N.Y. 2008)

The Lexicon itself makes clear that the only source of its content is the work of J.K. Rowling. The first page of the Lexicon manuscript states: “All the information in the Harry Potter Lexicon comes from J.K. Rowling, either in the novels, the ‘schoolbooks,’ from her interviews, or from material which she developed or wrote herself.” Aside from four dictionary citations, no other citations to third-party works appear in the Lexicon.

The Lexicon entries cull every item and character that appears in the Harry Potter works, no matter if it plays a significant or insignificant role in the story. The entries cover every spell (e.g., Expecto Patronum, Expelliarmus, and Incendio), potion (e.g., Love Potion, Felix Felicis, and Draught of Living Death), magical item or device (e.g., Deathly Hallows, Horcrux, Cloak of Invisibility), form of magic (e.g., Legilimency, Occlumency, and the Dark Arts), creature (e.g., Blast-Ended Skrewt, Dementors, and Blood-Sucking Bugbears), character (e.g., Harry Potter, Hagrid, and Lord Voldemort), group or force (e.g., Aurors, Dumbledore’s Army, Death Eaters), invented game (e.g., Quidditch), and imaginary place (e.g., Hogwarts School of Witchcraft and Wizardry, Diagon Alley, and the Ministry of Magic) that appear in the Harry Potter works. The Lexicon also contains entries for items that are not explicitly named in the Harry Potter works but which Vander Ark has identified, such as medical magic, candle magic, wizard space, wizard clothing, and remorse. Some of the entries describe places or things that exist in the real world but also have a place in the Harry Potter works, such as moors, Greece, and Cornwall.

Each entry, with the exception of the shortest ones, gathers and synthesizes pieces of information relating to its subject that appear scattered across the Harry Potter novels, the companion books, The Daily Prophet newsletters, Famous Wizard Cards, and published interviews of Rowling. The types of information contained in the entries include descriptions of the subject’s attributes, role in the story, relationship to other characters or things, and events involving the subject. Repositories of such information, the entries seek to give as complete a picture as possible of each item or character in the Harry Potter world, many of which appear only sporadically throughout the series or in various sources of Harry Potter material.

The snippets of information in the entries are generally followed by citations in parentheses that indicate where they were found within the corpus of the Harry Potter works. The thoroughness of the Lexicon’s citation, however, is not consistent; some entries contain very few citations in relation to the amount material provided. When the Lexicon cites to one of the seven Harry Potter novels, the citation provides only the book and chapter number.

While not its primary purpose, the Lexicon includes commentary and background information from outside knowledge on occasion. For example, the Lexicon contains sporadic etymological references, (e.g., entries for “Colloportus,” “Lupin, Remus,” “Alohamora,” “Fidelius Charm”), analogies to characters outside the Harry Potter world such as Merlin, and observations of Rowling’s allusions to other works of literature such as “the weird sisters” from Shakespeare’s Macbeth. The Lexicon also points to the very few “flints,” or errors in the continuity of the story, that appear in the Harry Potter series.

While there was considerable opining at trial as to the type of reference work the Lexicon purports to be and whether it qualifies as such (no doubt in part due to its title), the Lexicon fits in the narrow genre of non-fiction reference guides to fictional works. As Defendant’s expert testified, the Harry Potter series is a multi-volume work of fantasy literature, similar to the works of J.R.R. Tolkien and C.S. Lewis. Such works lend themselves to companion guides or reference works because they reveal an elaborate imaginary world over thousands of pages, involving many characters, creatures, and magical objects that appear and reappear across thousands of pages. The Lexicon, an A-to-Z guide which synthesizes information from the series and generally provides citations for location of that information rather than offering commentary, is most comparable to the comprehensive work of Paul F. Ford, Companion to Narnia: A Complete Guide to the Magical World of C.S. Lewis’s The Chronicles of Narnia, or the unauthorized A-to-Z guide by George W. Beahm, Fact, Fiction, and Folklore in Harry Potter’s World: An Unofficial Guide.

At trial, Rowling testified that the Lexicon took all the highlights of her work, in other words her characters’ secret history, the jokes certainly, certain exciting narrative twists, all the things that are the highlights of her stories. She compared this taking of her work to plundering all of the “plums in [her] cake.” At trial, the testimony of Rowling and the expert opinion of Johnson focused at length on the Lexicon’s verbatim copying of language from the Harry Potter works. Johnson testified that in particular, entries that deal with invented terms, creatures, places and things from the Harry Potter books use “again and again the specific, very colorful, idiosyncratic ... nouns and phrases of Ms. Rowling.”

For example, in the entry for “armor, goblin made,” the Lexicon uses Rowling’s poetic language nearly verbatim without quotation marks. The original language from Harry Potter and the Deathly Hallows reads:

“Muggle-borns,” he said. “Goblinmade armour does not require cleaning, simple girl. Goblins’ silver repels mundane dirt, imbibing only that which strengthens it.”

The Lexicon entry for “armor, goblin made” reads in its entirety:

Some armor in the wizarding world is made by goblins, and it is quite valuable. (e.g., HBP20) According to Phineas Nigellus, goblin-made armor does not require cleaning, because goblins’ silver repels mundane dirt, imbibing only that which strengthens it, such as basilisk venom. In this context, “armor” also includes blades such as swords.

Although the Lexicon entry introduces Rowling’s language with the phrase, “According to Phineas Nigellus,” it does not use quotation marks.

The Lexicon entry for “Dementors” reproduces Rowling’s vivid description of this creature sometimes using quotation marks and sometimes quoting or closely paraphrasing without indicating which language is original expression. The original language appears in Chapters 5 and 10 of Harry Potter and the Prisoner of Azkaban as follows:

Its face was completely hidden beneath its hood. … There was a hand protruding from the cloak and it was glistening, grayish, slimy-looking, and scabbed, like something dead that had decayed in water. … And then the thing beneath the hood, whatever it was, drew a long, slow, rattling breath, as though it were trying to suck something more than air from its surroundings.

* * *

“Dementors are among the foulest creatures to walk this earth. They infest the darkest, filthiest places, they glory in decay and despair, they drain peace, hope, and happiness out of the air around them. Even Muggles feel their presence, though they can’t see them. Get too near a dementor and every good feeling, every happy memory will be sucked out of you. If it can, the dementor will feed on you long enough to reduce you to something like itself . . . soulless and evil. . . .”

The Lexicon entry for “Dementors” reads in its entirety:

Dementors are some of the most terrible creatures on earth, flying tall black spectral humanoid things with flowing robes. They “infest the darkest, filthiest places, they glory in decay and despair, they drain peace, hope, and happiness out of the air around them,” according to Lupin (PA10). Dementors affect even Muggles, although Muggles can’t see the foul, black creatures. Dementors feed on positive human emotions; a large crowd is like a feast to them. They drain a wizard of his power if left with them too long. They were the guards at Azkaban and made that place horrible indeed. The Ministry used Dementors as guards in its courtrooms as well (GF30, DH13). There are certain defenses one can use against Dementors, specifically the Patronus Charm. A Dementor’s breath sounds rattling and like it’s trying to suck more than air out of a room. Its hands are “glistening, grayish, slimy-looking, and scabbed”. It exudes a biting, soulfreezing cold (PA5).

[Discussion of additional examples omitted]

The entries for the hero and the villain of the Harry Potter series (Harry Potter and Lord Voldemort) present the closest thing to “plot summaries,” but are more aptly characterized as synopses or outlines of the narrative revolving around those characters. Because Harry Potter and Lord Voldemort drive the narrative and because they appear in nearly every chapter of the series, an encapsulation of the events surrounding them ultimately yields a synopsis of the primary narrative thread in the Harry Potter series.

[The trial court found that the Lexicon was substantially similar to Rowling’s original works, not so much in terms of the overall plot—the court’s analysis not entirely consistent on this point—, character and story of the works, but in terms of excessive literal quotation.]

Although it is difficult to quantify how much of the language in the Lexicon is directly lifted from the Harry Potter novels and companion books, the Lexicon indeed contains at least a troubling amount of direct quotation or close paraphrasing of Rowling’s original language. The Lexicon occasionally uses quotation marks to indicate Rowling’s language, but more often the original language is copied without quotation marks, often making it difficult to know which words are Rowling’s and which are Vander Ark’s.

[The court reviewed several examples.] … Although in these instances, the Lexicon often changes a few words from the original or rewrites original dialogue in the third person, the language is nonetheless substantially similar.

Plaintiffs allege that the Lexicon not only violates their right of reproduction, but also their right to control the production of derivative works. The Copyright Act defines a “derivative work” 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” 17 U.S.C. § 101 (emphasis added). A work “consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represents an original work of authorship” is also a derivative work.

A work is not derivative, however, simply because it is “based upon” the preexisting works. If that were the standard, then parodies and book reviews would fall under the definition, and certainly “ownership of copyright does not confer a legal right to control public evaluation of the copyrighted work.” Ty, Inc. v. Publ’ns Int’l Ltd., 292 F.3d 512, 521 (7th Cir.2002). The statutory language seeks to protect works that are “recast, transformed, or adapted” into another medium, mode, language, or revised version, while still representing the “original work of authorship.” Thus in Ty, Inc., Judge Posner concluded, as the parties had stipulated, that a collectors’ guide to Beanie Babies was not a derivative work because “guides don’t recast, transform, or adapt the things to which they are guides.” 292 F.3d at 520 (emphasis added).

Plaintiffs argue that based on the Twin Peaks decision “companion guides constitute derivative works where, as is the case here, they ‘contain a substantial amount of material from the underlying work.’” This argument inaccurately states the holding of Twin Peaks and overlooks two important distinctions between the Lexicon and the guidebook in Twin Peaks. First, as mentioned earlier, the portions of the Lexicon that encapsulate plot elements or sketch plotlines bear no comparison with the guidebook in Twin Peaks, whose plot summaries giving “elaborate recounting of plot details” were found to constitute an “abridgement” of the original work. See Twin Peaks, 996 F.2d at 1373 n. 2 (reproducing an excerpt of the infringing book containing a high degree of detail). Given that the Lexicon’s use of plot elements is far from an “elaborate recounting” and does not follow the same plot structure as the Harry Potter novels, Plaintiffs’ suggestion that these portions of the Lexicon are “unauthorized abridgements” is unpersuasive. Second, and more importantly, although the Lexicon contains a substantial amount of material from the Harry Potter works, the material is not merely “transformed from one medium to another,” as was the case in Twin Peaks. Id. at 1373. By condensing, synthesizing, and reorganizing the preexisting material in an A-to-Z reference guide, the Lexicon does not recast the material in another medium to retell the story of Harry Potter, but instead gives the copyrighted material another purpose. That purpose is to give the reader a ready understanding of individual elements in the elaborate world of Harry Potter that appear in voluminous and diverse sources. As a result, the Lexicon no longer “represents [the] original work[s] of authorship.” 17 U.S.C. § 101. Under these circumstances, and because the Lexicon does not fall under any example of derivative works listed in the statute, Plaintiffs have failed to show that the Lexicon is a derivative work.

[The court found that the overall purpose of the Lexicon was transformative because the purpose of the original works was to tell an entertaining and thought-provoking story, whereas the purpose of the Lexicon was to make information about the intricate world of Harry Potter readily accessible to readers through a reference guide. However, the claim to fair use ultimately failed for two reasons. First, the Lexicon was not transformative in relation to the Harry Potter companion books, and so copying from those books into the Lexicon was harder to justify as fair use. Second, in spite of its transformative purpose, the Lexicon’s use of the underlying Harry Potter books was not reasonable in light of that purpose. The Lexicon contained too much slapdash cut-and-paste and thus it impermissibly blurred the line between transformative reference guide and expressive substitute.]

Castle Rock Entertainment v. Carol Publishing Group, Inc., 150 F.3d 132 (2d Cir. 1998)

In Castle Rock, the Second Circuit held that a quiz book based on the characters and events of the popular television series, Seinfeld, violated the show’s copyright. The differences between the Seinfeld quiz and the Harry Potter Lexicon are subtle, but important. Like the Seinfeld quiz, the Lexicon related “fictional facts” the author, J.K. Rowling, had created.

The Castle Rock court acknowledged that the substantially similar standard depends on “the copying of expression, rather than ideas” and that the quiz reproduced none of the plot, sequence, pace, or setting of the show. The defendant’s quiz focused on “facts” internal to the Seinfeld universe, such as the reason that Kramer enjoys going to the airport (because he is hypnotized by the baggage carousels) or what it was that Jerry placed on Elaine’s leg during a piano recital (a Pez dispenser), and not facts about the show.

The court of appeals took the view that “[b]ecause these characters and events spring from the imagination of Seinfeld’s authors, the [quiz] plainly copies copyrightable, creative expression.” Of course, the court can’t really mean that any work that refers to the characters and events in a creative work would be infringing, otherwise ownership of copyright would confer a legal right to control public evaluation of the copyrighted work, an idea anathema to copyright law. See Ty, Inc. v. Publ’ns Int’l Ltd., 292 F.3d 512, 521 (7th Cir. 2002).

The real problem with the defendant’s quiz in Castle Rock Entertainment was that it sought to “repackage Seinfeld to entertain Seinfeld viewers” and that the quiz itself was in no way analytical. If the Seinfeld quiz infringed the copyright owner’s rights at all, it was because it essentially recast the series’ copyrightable characters into a new format, much the same as if the defendant had made miniature dolls of the show’s characters. See, e.g., Hasbro Bradley, Inc. v. Sparkle Toys, Inc., 780 F.2d 189 (2d Cir. 1985) (upholding copyrightability of “Transformer” changeable robotic action figures as sculptural works).

Penguin Random House LLC v. Colting, 270 F. Supp. 3d 736 (S.D.N.Y. 2017)

District Judge Jed S. Rakoff

At all times here relevant, plaintiffs owned valid copyrights to Breakfast at Tiffany’s, The Old Man and the Sea, On the Road, and 2001: A Space Odyssey. Defendants’ “colorfully illustrated story summaries,” called “KinderGuides,” are designed to “introduce” these works to children.

On or about September 22, 2016, defendants published their four Guides (part of a planned 50-book series). On their front covers, the Guides very prominently display the titles of plaintiffs’ Novels and the names of the authors of plaintiffs’ Novels, along with the words “KinderGuides,” in large print and, in much smaller print, the words “Early Learning Guides to Culture Classics.” The only other words are “Illustrations by ____,” in very small print at the bottom.

All four Guides share the same layout. The first four pages feature illustrations and one-line quotations taken from and attributed to the authors of the Novels (Capote, Hemingway, Kerouac, and Clarke). The fifth page contains publication information, and the sixth is a title page, stating, to take one example, “KinderGuides: Early Learning Guides to Culture Classics,” “On the Road,” “by Jack Kerouac,” and, in smaller font, “Illustrations by Rose Forshall,” “a division of Moppet Books/Los Angeles, CA.” The seventh and eighth pages contain a “Table of Contents.” The ninth displays an illustration of the original author of the Novel, and the tenth is a page “About the Author.” Following these front-pages are “Story Summaries,” which comprise a few dozen pages. Appended after these “Story Summaries” are a series of back-pages, two each devoted to “Main Characters,” “Key Words,” “Quiz Questions,” and “Analysis.”

Defendants admit that they had access to plaintiffs’ Novels in preparing their Guides and that they relied on them. Indeed, a side-by-side comparison of plaintiffs’ and defendants’ works reveals as much. Not only do the plots, settings, and characters of the Guides mirror the Novels, but the Guides also include many specific details from the Novels. For example, in both versions of Breakfast at Tiffany’s, Holly Golightly’s business card reads “Holly Golightly, Traveling,” and in both versions Holly describes an experience she calls “the mean reds,” or feeling afraid “but you don’t know what you’re afraid of.” See, Truman Capote, Breakfast at Tiffany’s (2012 edition) at 32 (“the mean reds are horrible. You’re afraid ... but you don’t know what you’re afraid of”), Kinder-Guides, Breakfast at Tiffany’s (2016) at 11, (“... the mean reds. That means she is afraid but doesn’t know what she is afraid of.”). Similarly, in both versions of On the Road, Sal drives across the United States with $50 in his pocket and goes to see a blind jazz pianist named George Shearing; in both versions of 2001: A Space Odyssey, Dr. Heywood Floyd travels to Clavius Base, a space station on the moon, where there is a large monolith named “TMA-1” and a crater named “Tyco”; and, in both versions of The Old Man and the Sea, Santiago has gone 84 days without catching a fish and roots for the New York Yankees. While, of course, many aspects of plaintiffs’ Novels do not appear in defendants’ shorter Guides, all of the plots, characters, and settings in defendants’ Guides appear in plaintiffs’ Novels.

It is also undisputed that there is an established market for children’s books based on adult novels, and that it is not unusual for copyright holders to publish, or license publication of, children’s versions of works originally intended for adults. Defendants, however, never sought permission to prepare children’s guides for plaintiffs’ Novels.

It is further undisputed that plaintiffs have never authorized anyone to publish children’s versions of their Novels. The managers of Hemingway’s literary estate altogether rejected requests to create children’s versions of The Old Man and the Sea. Penguin Random House considered authorizing a children’s version of 2001: A Space Odyssey, but decided against it. The Capote estate did authorize the creation of an illustrated, stand-alone children’s version of A Christmas Memory — a short story originally included in the same volume as Breakfast at Tiffany’s — but did not authorize a children’s version of Breakfast at Tiffany’s. Finally, Penguin Random House and the Clarke Estate have authorized the creation of an ESL (“English as a Second Language”) version of 2001: A Space Odyssey — “a simplified version,” which includes “inserted pages of exercises and notes,” but no children’s versions.

Infringement

The Copyright Act of 1976 grants copyright owners a bundle of exclusive rights, including the exclusive right to “reproduce the copyrighted work” and the exclusive right “to prepare derivative works based upon the copyrighted work.” Id. § 106. Here, plaintiffs allege that defendants’ Guides infringe both those rights.

To prevail on either ground, plaintiffs must prove that: (1) they hold a valid ownership interest in the relevant copyrights, (2) defendants have “actually copied” their works, and (3) defendants’ “copying is illegal” because of a “substantial similarity” between defendants’ works and the “protectable elements” of their copyrighted works. Castle Rock, 150 F.3d at 137. To prevail on the second ground, plaintiffs must further prove that (4) defendants’ works are unauthorized derivatives under 17 U.S.C. § 106(2).²

[The court found that the undisputed evidence established ownership and actual copying. After reviewing different tests for substantial similarity the court continued:]

In the instant case, however, none of these special tests is even needed to establish substantial similarity, as defendants’ Guides are not even superficially distinct from the respective Novels. Instead, they are explicitly based on plaintiffs’ Novels, and seek in defendant’s words, to “introduce” them to children “through colorfully illustrated story summaries and kid-friendly analyses.”

To avoid, therefore, this obvious similarity, defendants would have the Court, in effect, subtract from defendants’ Guides the characters, plots, and settings that were directly lifted from plaintiffs’ Novels, on the ground that these elements do not constitute protectable expression. See Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir. 1995) (noting that a court must limit its infringement inquiry to whether “the protectable elements, standing alone, are substantially similar”).

Defendants claim that the characters, plots, and settings in plaintiffs’ Novels are merely “a collection of made-up facts” or “fictional facts,” and, since (historical or independently-existing) facts are not protected, these elements are not aspects of “an author’s original expression” subject to copyright. As defendants put it, their Guide to 2001: A Space Odyssey “merely summarized some of the facts of the book and the characters, not the creative expression that makes Dr. David Bowman and HAL [the characters] memorable.” In other words, the aspects of plaintiffs’ Novels that appear in defendants’ Guides, such as the character of Holly Golightly, her place of residence, her trips to the prison, her relationship to Sally Tomato, are not protected expression but, according to defendants, “fictional facts.”

This exercise in sophistry, however, which confuses the difference between historical or independently-existing facts and fictional details created by a novelist, finds no support in applicable law. As the Second Circuit has clearly stated, “characters and events” that “spring from the imagination” of authors are copyrightable, creative expression. See Castle Rock, 150 F.3d at 139. Thus, the Copyright Act protects both the literal text describing, for example, Dr. Bowman and HAL, and the “made-up facts” about Dr. Bowman and HAL. “Unlike the facts in a phone book, which do not owe their origin to an act of authorship,” each “fact” in defendants’ Guides is really “fictitious expression” created by plaintiffs’ authors. Castle Rock, 150 F.3d at 139. Because the “characters and events” in defendants’ Guides “spring from the imagination of” Capote, Hemingway, Kerouac, and Clarke, each Guide “plainly copies copyrightable, creative expression.” Id.

By any reasonable comparison, defendants’ Guides copy substantial aspects of the themes, characters, plots, sequencing, pace, and settings of plaintiffs’ Novels. Indeed, that is their stated purpose. The defendants admit that “they wanted to be true to the author’s original conception” at least “as far as possible given the nature of the Kinder-Guides as children’s books” and that defendants’ works seek to convey to children “the stories and characters” in plaintiffs’ Novels. Defendants thus effectively admit to copyright infringement as a matter of law.

Plaintiffs also allege that defendants’ Guides violate their right to control the preparation of derivative works. See 17 U.S.C. § 106(2). The Copyright Act defines a “derivative work” 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.” 17 U.S.C. § 101. “A work is not derivative, however, simply because it is ‘based upon’ the preexisting works.” Harry Potter, 575 F.Supp.2d at 538. Only works that are “recast, transformed, or adapted” into another medium, mode, or language while still representing the “original work of authorship” are derivative. Id.; Castle Rock, 150 F.3d at 143 n. 9. For example, book reviews and parodies of copyrighted works are not derivative works, despite being based on, and potentially reproducing, substantial amounts of protected expression. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 592 (1994) (stating the general rule that the “market for potential derivative uses includes only those that creators of original works would in general develop or license others to develop”).

Depending on its nature, a “guide” may or may not qualify as a derivative work. The issue turns on whether the guide changes the copyrighted material in such a way that the guide no longer represents the original “work of authorship.” 17 U.S.C. § 101; Warner Bros. Entm’t Inc. v. RDR Books, 575 F.Supp.2d 513, 539 (S.D.N.Y. 2008). For example, the Second Circuit found that a guide to the TV show Twin Peaks, which “merely transformed” the original work “from one medium to another,” was a derivative work. But an encyclopedia based on the Harry Potter world, which did not tell the same story as the original copyrighted books and movies, was not a derivative work. Id. (“by condensing, synthesizing, and reorganizing the preexisting material in an A-to-Z reference guide, the Lexicon does not recast the material in another medium to retell the story of Harry Potter, but instead gives the copyrighted material another purpose. That purpose is to give the reader a ready understanding of individual elements in the elaborate world of Harry Potter that appear in voluminous and diverse sources.”).

Here, though defendants’ Guides add additional material at the end, specifically a few brief pages of “Analysis,” “Quiz Questions,” and information about the author, they are primarily dedicated to retelling plaintiffs’ stories. Two pages of analysis do not convert the Guides overall — which are largely composed of “Story Summaries” — into something that no longer “represents the original work of authorship.” Like a translation, dramatization, or motion picture adaptation (three categories explicitly delineated by Congress as derivative works, see 17 U.S.C. § 101), and like the guide in Twin Peaks, defendants’ works basically retell the story of plaintiffs’ works in another medium (in this case illustrated children’s books). Thus, because defendants never received permission from plaintiffs to produce their Guides, the Guides are unauthorized derivatives as a matter of law.

For the aforementioned reasons, defendants’ Guides are infringing; they infringe upon plaintiffs’ exclusive right to reproduce their Novels, including the character of Holly Golightly (a separate count), and they infringe upon plaintiffs’ exclusive right to exploit the market for derivative works based on their Novels.

… U.S. law no longer protects abridgements as fair use, even in cases where the shortening involves, as Justice Story put it, “real, substantial condensation of the materials, and intellectual labor and judgment bestowed thereon; and not merely the facile use of the scissors.” Folsom v. Marsh, 9 F.Cas. 342, 344-45 (C.C.D. Mass. 1841). Instead, under the Copyright Act, abridgements are generally considered to be derivative works, and the right to prepare them is reserved exclusively to the copyright holder. See Twin Peaks, 996 F.2d at 1376.

With respect to modifying the Novels for a younger audience, the mere removal of adult themes does not meaningfully “recast” the work any more than an airline’s editing of R-rated films so that they can be shown to children on a flight absolve the airline from paying a royalty. As Judge Leval puts it, the question is whether the work produces new insights and understandings. Here, defendants’ expurgated Guides are a vehicle for conveying to children the Novels’ original stories and insights. Indeed, it is quite clear that defendants’ Guides seek to fairly represent the original work of authorship — defendants admit as much.

Finally, there is the question of whether defendants’ Guides qualify as educational criticism or commentary. Works of criticism and commentary provide the sort of new insights and understandings that are the sine qua non of transformative use. Defendants suggest that their Guides should be considered commentary, arguing that their works serve educational purposes. As evidence, defendants point to the few pages of analysis, quiz questions, and background information at the back of each Guide.

But tacking on these few pages does not provide safe harbor for an otherwise infringing work. Here, defendants’ story summaries do not recount plaintiffs’ Novels in the service of literary analysis, they provide literary analysis in the service of trying to make the Guides qualify for the fair use exception. Indeed, defendants admitted this in open court, when their counsel explained that Colting and Medina “went to great lengths” to achieve fair use protection. See Transcript at 17 (“the very fact that we have these sections in the book [e.g. the “Main Characters” and “Keywords” and “Analysis” sections] these are all things that were done to make these books fair use, at least in the minds of the defendants”). Fair use, however, is not a jacket to be worn over an otherwise infringing outfit. One cannot add a bit of commentary to convert an unauthorized derivative work into a protectable publication.

[Having rejected the defendant’s arguments that their use was transformative, the court applied the statutory fair use factors and concluded that their use was not fair.]

Notes and questions

(1) The district court in Penguin Random House LLC v. Colting repeated the Second Circuit’s suggestion in Castle Rock that fictional facts are copyrightable, i.e., because the characters and events in a novel “spring from the imagination” of authors they must be copyrightable, creative expression. The court can’t really mean that any work that refers to the characters and events in a creative work is infringing, can it?

(2) Obviously the KinderGuides were quite different from the original literary works that inspired them. How significantly would the Guides have to change in order not to be seen as an infringing reproduction, derivative work, or to qualify as fair use? Why were the KinderGuides in Penguin Random House LLC v. Colting held to be a derivative work based upon the copyrighted work while the Harry Potter Lexicon in Warner Brothers Entertainment, Inc. v. RDR Books was not?

(3) Does the Wikipedia page describing the plot and main characters of a novel infringe on the copyright in that book? If not, how would you distinguish the Wikipedia entry for The Old Man and the Sea from The Old Man and the Sea, by Ernest Hemingway: A KinderGuides Illustrated Learning Guide?

The Scope of Copyright in Derivative Works

Section 103(a) of the Act contains a provision clarifying that compilations and derivative works are eligible copyright subject matter, meaning that a derivative work can also be a new copyrighted work, possibly with a different owner from the original and entitled to a new term of protection.

17 U.S. Code § 103(a)

The subject matter of copyright as specified by section 102 includes compilations and derivative works, …

… but protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully.

The Act also clarifies that copyrights in compilations and derivative works extend only to the original material contributed by their authors and are independent of and have no effect on the scope, duration, ownership, or subsistence of copyright in preexisting material.

17 U.S. Code §103(b)

The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material.

Keeling v. Hars, 809 F.3d 43 (2d Cir. 2015)

Now, the person who creates the derivative work has a copyright in that derivative work. Now, if the derivative work is simply somehow really a copy of the original then it may be somehow called a derivative work but it infringes on the owner of the original. But if it is what we call “fair use” then it is not an infringement on the original and it is a new work and it has its own copyright and the author or the creator of the new work owns that copyright as well as owns the new work....

The plaintiff contends that [PBL] is a fair use of sections of the script of the original movie. The plaintiff contends that this is fair use as a parody and a parody, certainly, can be fair use....

A proper parody is something which generally ridicules to some extent, makes fun of, makes light of the original. Suppose the original is the very serious drama of some kind and if someone comes along and makes a parody, it is generally turning it into something different, humorous, ridiculous. And if that is done it is fair use to use even substantial amounts of the script of the original movie. It is fair use to even use the high points or the high point as long as it is not simply conveying again the original movie. If it takes the script of the original movie and creates something which uses that script to ridicule to make fun of, to make light of to produce humor instead of the original seriousness, then that is a legitimate parody.

Now, the amount of script taken from the original cannot completely go beyond the needs of the parody. In other words, if the parody is for, if we could imagine, a third it is not legitimate to copy the other two thirds and put them out again. But if the amount of script used is reasonably related to the production of the humor, the ridicule, the lightheartedness and so forth that is a legitimate parody and that is fair use.

Now, it is sometimes said that the judge in instructing a jury on fair use is supposed to refer to a list of factors. The list of factors is a list of factors without much content or meaning. And what I am trying do with you now is to refer to the necessary factors but I hope put a little more content on the discussion. And really that’s all I have to say to define fair use by way of parody.

under this provision [(i.e., Section 103(a) of the Copyright Act)], copyright could be obtained as long as the use of the preexisting work was not “unlawful,” even though the consent of the copyright owner had not been obtained. For instance, the unauthorized reproduction of a work might be “lawful” under the doctrine of fair use or an applicable foreign law, and if so the work incorporating it could be copyrighted.

Notes and questions

(1) The defendant in Keeling v. Hars argued that she did not infringe copyright in the stage play parody Point Break Live! because that work was itself an infringing work based on the unintentionally absurd 1991 film, Point Break. The defendant relied on Section 103(a) that provides that copyright protection “does not extend to any part of the work in which such material has been used unlawfully.” Why did the Second Circuit reject this argument?

(2) That fair use results in a new copyrightable work has been the law since at least the early 19th Century. As Robert Maugham explained in his Treatise On The Laws Of Literary Property, published in 1828, “An abridgment of a voluminous work, executed with skill and labor, in a bona fide manner, is not only lawful in itself . . . and exempt from the charge of piracy[,] but is protected from invasion by subsequent writers.” (emphasis added). In the late 18th and early 19th Century, copyright law treated abridgments as noninfringing under principles that we would now identify as fair use, and it accorded copyright to those abridgments themselves and protected them against “invasion by subsequent writers.” Robert Maugham, Treatise On The Laws Of Literary Property 126 (1828).

(3) In footnote 6 the court notes “as a general matter, “derivative works” and “fair use” are discrete legal categories.” This is confusing, it would be better to say that derivative works and fair use are functionally or effectively discrete legal categories. To elaborate: A secondary use that recasts, adds to, translates, or transforms an original copyrighted work creates a derivative work. So technically, some fair uses will create derivative works, just as some fair uses involve reproductions. If a use is fair, it does not infringe the exclusive right to “prepare derivative works based upon the copyrighted work,” in Section 106(2) because that right is expressly subject to the fair use doctrine. By convention, we tend to use the labels “derivative work” and “fair use” in the alternative, but that only makes sense if we are using the term derivative work as shorthand for “derivative works that do not qualify as fair use.”

(4) There are a few other significant cases on the application of Section 103(a) worth considering. In Anderson v. Stallone centered around a script for the film Timothy Burton Anderson, the plaintiff, wrote a script for “Rocky IV” watching “Rocky III” and then tried to pitch that script to MGM and Sylvester Stallone. Stallone denied that he used Anderson’s script, however there were some similarities between Anderson’s Rocky IV and Stallone’s Rocky IV. Rather than determining whether the latter was too similar to the former, the court held that Anderson’s script was an infringing derivative work and thus not entitled to copyright protection. Thus, Stallone was free to borrow as much as he liked. In view of Section 103(a) of the Copyright Act, the court held that copyright does not protect any part of a derivative work that infringes the copyright in a preexisting work it copies. See Anderson v. Stallone, 11 U.S.P.Q.2d 1161 (C.D. Cal. 1989).

(5) In Pickett v. Prince a fan had made a guitar in the shape of the symbol that served as the name for the musical artist Prince, at a time when he went by the designation, “The Artist Formerly Known As Prince.” The district court held that because Prince’s copyrighted symbol had been used without authorization there could be no copyright in the guitar which incorporated the copyrighted symbol. The Seventh Circuit affirmed. Pickett v. Prince, 52 F. Supp. 2d 893 (N.D. Ill. 1999); 207 F.3d 402 (7th Cir. 2000). Note that the Seventh Circuit was also doubtful that Pickett’s guitar was different enough to sustain a copyright in any event given that it was based on the Prince symbol and any differences in appearance may well have been due “to nothing more than the functional difference between a two-dimensional symbol and a guitar in the shape of that symbol.”

(6) Demetrious Polychron v. Jeff Bezos et al., 2023 WL 6192743 (C.D. Cal. Aug. 14, 2023) is similar to Anderson. Demetrious Polychron was a fan of Tolkien and had created a series he claimed was a sequel to Tolkien’s “The Lord of the Rings” and “The Hobbit.” Polychron’s series, which included a book titled “The Fellowship of the King,” borrowed heavily from Tolkien’s universe, using similar themes and characters. Polychron offered to collaborate with the Tolkien estate, but this offer was rejected. Polychron argued that after this rejection, Amazon’s series “Rings of Power” shifted its focus to align more closely with the themes of his unauthorized sequel, particularly in its depiction of the Elven rings set 6000 years before the original series. He claimed this change happened after the Tolkien estate and possibly Amazon became aware of his manuscript. The trial court concluded as follows:

Plaintiff’s work is an unauthorized derivative work that is not entitled to copyright protection. Though Defendants appear to be correct that there is some question in the case law as to whether the derivative work’s original elements may be protected, where, as here, Plaintiff’s work is intended to be a literal continuation of a copyrighted work, but was not authorized to use the Tolkien intellectual property, and Plaintiff has sued the original creators, section 106(2) of the Copyright Act forecloses such a claim.

(7) In Hiller, LLC v. Success Grp. Int’l Learning All., LLC, 976 F.3d 620 (6th Cir. 2020) the court of appeals took a narrower approach to Section 103(a) as recommended by the influential Nimmer treatise. In the Hiller case the district court had instructed the jury that Hiller’s copyright in the Guide would be nullified only if it was “pervaded” by unauthorized material. The court of appeals agreed:

That instruction correctly follows directly from two sections of the Copyright Act. First, section 106 gives the author of an original work the exclusive right to create new works that are derivative of (i.e. “based on”) that work. Accordingly, when a person creates a derivative work without the original author’s permission, that person has unlawfully used the original work. Second, section 103 provides that a work can be copyrighted even if it unlawfully incorporates preexisting material, but protection for such a work “does not extend to any part of the work in which such material has been used unlawfully.” § 103(a). The district court’s “pervades” instruction is a logical corollary of these two principles: Hiller would lose all copyright protection in the Guide only if content from Clockwork’s Manuals ran throughout every “part” of the Guide, or in other words “pervaded” it.

In most cases regarding derivative works, that instruction would be unnecessary because the determination that a work is derivative would necessarily imply that the preexisting work “pervades” the derivative. See Pickett v. Prince, 207 F.3d 402, 407 (7th Cir. 2000) (finding that an original work (the graphic symbol used by the artist Prince) “clearly ‘pervade[d]’ ” two derivative works (guitars that were shaped like that symbol) and noting that “[i]f it did not, the guitars might not be derivative works”). That is, in most cases, a work that “adapts” or “recasts” another work without permission would contain no discrete “parts” that did not unlawfully use the original work.

However, because the Guide contains discrete parts, some of which are clearly not based on protected elements the Manuals, the district court properly instructed the jury that it could find that Hiller maintained a copyright in some parts of the Guide even if other parts copied from the Manuals without authorization.

(8) In Wozniak v. Warner Bros. Entertainment Inc., 726 F. Supp. 3d 213 (S.D.N.Y. 2024), Christopher Wozniak sued Warner Bros., alleging that its 2022 film The Batman copied elements of a story he had written in 1990 and registered with the Copyright Office in 2022. His story drew on Batman, Bruce Wayne, the Riddler, Commissioner Gordon and Gotham City, all of which DC Comics owned and none of which he had permission to use. DC intervened and brought its own infringement claim against him.

Judge Engelmayer held the story unprotectable under § 103(a). Copyright protection “does not extend to any part of a derivative work in which pre-existing material was used unlawfully,” and where unauthorized preexisting material “tends to pervade the entire derivative work,” protection “is denied to the derivative work entirely.” That was this case. “By Wozniak’s own account, the Story represents his ‘reimagining of the Batman universe’”; its “entire premise and plot centers on Batman,” and almost every character in it belonged to DC. The pre-existing material therefore “pervade[s] the entire [Story],” and the registration presumption was rebutted. Note that the court also held, independently, that Warner Bros. had not copied the story at all.

(9) Gray v. Paramount Global, 814 F. Supp. 3d 487 (S.D.N.Y. 2026), applies the same reasoning to a sequel. Shaun Gray, cousin of the credited screenwriter of Top Gun: Maverick, claimed to have written several of its scenes in 2017 and registered a copyright in them in 2024. Paramount owned the 1986 film and its screenplay, and Gray had no authorization to assert an independent copyright in derivative material built on that universe.

Judge Rakoff held Gray’s copyright invalid. It was “self-evident that the Gray Scenes are materially based on the Top Gun universe, including characters, settings, and plot devices, as one would expect of such a sequel.” Gray’s argument that he had at least an implied right to claim copyright failed because “under their own contracts with Paramount, neither Singer nor Kosinski had any right to copyright what they produced for Top Gun: Maverick, let alone the authority to grant such an unusual right to Gray.” Following Wozniak, the court concluded that “Gray is a writer who indisputably based his entire script on existing material,” and that the Copyright Act “most certainly precludes the author of an unauthorized infringing derivative work from suing the author of the work which he has already infringed.” Paramount’s own counterclaims survived and remain live; Gray appealed to the Second Circuit in March 2026.

Two things are worth noticing about this pair. In Gray the court assumed the § 410(c) presumption of validity applied and placed the burden on Paramount, and it declined to hold that the scenes lacked independent originality — so the claim failed on the narrow ground that the work was an unauthorized derivative, not because the writing was unoriginal. And compare the pervasion analysis in both cases with the more forgiving approach in Hiller at note (7) above, where the court was willing to sever the discrete parts of a work that were not based on the protected material.

(10) Pamela Samuelson and Jessica Silbey, Preventing Unjust Enrichment and Copyright Opportunism: Equitable Interpretations of Section 103(a), 66 Boston College Law Review 2585 (2025), note that:

A stealth issue in many close copyright fair use cases is the potential invalidity of second comers’ copyrights under 17 U.S.C. § 103(a) if the new use is ultimately held to infringe the derivative work right. In the Supreme Court’s recent Warhol v. Goldsmith case, for instance, Lynn Goldsmith claimed that the Warhol Foundation owned no copyright in Andy Warhol’s creations based on her photograph because these works infringed her derivative work right, notwithstanding the Foundation’s plausible fair use defense and the significant value that Warhol contributed to these art works. Section 103(a) of the Copyright Act says, in effect, that no copyright exists in any part of a derivative work in which the first work’s expression was “used unlawfully.” Courts have largely ignored § 103(a).

Samuelson and Silbey trace the origins, history, and case law on Section 103(a) and argue that the statutory text and purpose of Section 103, as well as equitable considerations, support several limitations on the scope of that section. Come back to this issue when you have read Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 598 U.S. 508 (2023) (a fair use case discussed later in this book).