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Re: "GPL requirement could have a chilling effect on derivativedistros"

From: Alexander Terekhov
Subject: Re: "GPL requirement could have a chilling effect on derivativedistros"
Date: Fri, 30 Jun 2006 19:07:05 +0200

Merijn de Weerd wrote:
> An interesting case happened some time ago here in the Netherlands.
> A calendar was published that contained for every month a nice
> reproduction of a painting, all by the same painter (Rien
> Poortvliet). Someone bought a lot of calendars, cut out the
> reproductions, framed them and sold that. The Dutch Supreme Court
> ruled that exhaustion (first sale) did not apply, since he was
> transforming the works into something new.

Sonds like Dutch edition of Mirage Editions (scholarly disapproval 
of Mirage Editions has been widespread). Do you have a link?


[4] 17 U.S.C. § 101. The district court concluded that A.R.T.'s 
mounting of Lee's works on tile is not an "original work of 
authorship" because it is no different in form or function from 
displaying a painting in a frame or placing a medallion in a 
velvet case. No one believes that a museum violates § 106(2) 
every time it changes the frame of a painting that is still under 
copyright, although the choice of frame or glazing affects the 
impression the art conveys, and many artists specify frames (or 
pedestals for sculptures) in detail. Muoz and Mirage Editions 
acknowledge that framing and other traditional means of mounting 
and displaying art do not infringe authors' exclusive right to 
make derivative works. Nonetheless, the ninth circuit held, what 
A.R.T. does creates a derivative work because the epoxy resin 
bonds the art to the tile. Our district judge thought this a 
distinction without a difference, and we agree. If changing the 
way in which a work of art will be displayed creates a derivative 
work, and if Lee is right about what "prepared" means, then the 
derivative work is "prepared" when the art is mounted; what 
happens later is not relevant, because the violation of the § 
106(2) right has already occurred. If the framing process does 
not create a derivative work, then mounting art on a tile, which 
serves as a flush frame, does not create a derivative work. What 
is more, the ninth circuit erred in assuming that normal means 
of mounting and displaying art are easily reversible. A painting 
is placed in a wooden "stretcher" as part of the framing process; 
this leads to some punctures (commonly tacks or staples), may 
entail trimming the edges of the canvas, and may affect the 
surface of the painting as well. Works by Jackson Pollock are 
notoriously hard to mount without damage, given the thickness 
of their paint. As a prelude to framing, photographs, prints, 
and posters may be mounted on stiff boards using wax sheets, 
but sometimes glue or another more durable substance is 
employed to create the bond.

[5] Lee wages a vigorous attack on the district court's 
conclusion that A.R.T.'s mounting process cannot create a 
derivative work because the change to the work "as a whole" is 
not sufficiently original to support a copyright. Cases such as 
Gracen v. The Bradford Exchange, Inc., 698 F.2d 300 (7th Cir. 
1983), show that neither A.R.T. nor Lee herself could have 
obtained a copyright in the card-on-a-tile, thereby not only 
extending the period of protection for the images but also 
eliminating competition in one medium of display. After the 
ninth circuit held that its mounting process created derivative 
works, A.R.T. tried to obtain a copyright in one of its products; 
the Register of Copyrights sensibly informed A.R.T. that the 
card-on-a-tile could not be copyrighted independently of the 
note card itself. But Lee says that this is irrelevant - that a 
change in a work's appearance may infringe the exclusive right 
under § 106(2) even if the alteration is too trivial to support 
an independent copyright. Pointing to the word "original" in the 
second sentence of the statutory definition, the district judge 
held that "originality" is essential to a derivative work. This 
understanding has the support of both cases and respected 
commentators. E.g., L. Batlin & Son, Inc. v. Snyder, 536 F.2d 
486 (2d Cir. 1976); Melville B. Nimmer & David Nimmer, 1 Nimmer 
on Copyrights § 3.03 (1997). Pointing to the fact that the first 
sentence in the statutory definition omits any reference to 
originality, Lee insists that a work may be derivative despite 
the mechanical nature of the transformation. This view, too, has 
the support of both cases and respected commentators. E.g., Lone 
Ranger Television, Inc. v. Program Radio Corp., 740 F.2d 718, 
722 (9th Cir. 1984); Paul Goldstein, Copyright: Principles, Law 
and Practice § 5.3.1 (2d ed. 1996) (suggesting that a 
transformation is covered by § 106(2) whenever it creates a 
"new work for a different market").

[6] Fortunately, it is not necessary for us to choose sides. 
Assume for the moment that the first sentence recognizes a set 
of non-original derivative works. To prevail, then, Lee must show 
that A.R.T. altered her works in one of the ways mentioned in the 
first sentence. The tile is not an "art reproduction"; A.R.T. 
purchased and mounted Lee's original works. That leaves the 
residual clause: "any other form in which a work may be recast, 
transformed, or adapted." None of these words fits what A.R.T. 
did. Lee's works were not "recast" or "adapted". "Transformed" 
comes closer and gives the ninth circuit some purchase for its 
view that the permanence of the bond between art and base matters. 
Yet the copyrighted note cards and lithographs were not 
"transformed" in the slightest. The art was bonded to a slab of 
ceramic, but it was not changed in the process. It still depicts 
exactly what it depicted when it left Lee's studio. See William 
F. Patry, Copyright Law and Practice 823-24 (1994) (disapproving 
Mirage Editions on this ground).[n1] If mounting works a 
"transformation," then changing a painting's frame or a 
photograph's mat equally produces a derivative work. Indeed, if 
Lee is right about the meaning of the definition's first sentence, 
then any alteration of a work, however slight, requires the 
author's permission. We asked at oral argument what would happen 
if a purchaser jotted a note on one of the note cards, or used 
it as a coaster for a drink, or cut it in half, or if a collector 
applied his seal (as is common in Japan); Lee's counsel replied 
that such changes prepare derivative works, but that as a practical 
matter artists would not file suit. A definition of derivative work 
that makes criminals out of art collectors and tourists is jarring 
despite Lee's gracious offer not to commence civil litigation.

1. Scholarly disapproval of Mirage Editions has been widespread.
Goldstein § 5.3 at 5:81-82; Nimmer & Nimmer § 3.03; Wendy J. Gordon,
On Owning Information: Intellectual Property and the Restitutionary
Impulse, 78 Va. L. Rev. 149, 255 n.401 (1992).

2. Because this opinion creates a conflict among the circuits, it
has been circulated to all judges in active service. See Circuit
Rule 40(e). No judge requested a hearing en banc.



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