According to the United States Copyright Office Circular 14:

"A derivative work is a work based on or derived from one or more already existing works. Common derivative works include translations, musical arrangements, motion picture versions of literary material or plays, art reproductions, abridgments, and condensations of preexisting works. Another common type of derivative work is a “new edition” of a preexisting work in which the editorial revisions, annotations, elaborations, or other modifications represent, as a whole, an original work. To be copyrightable, a derivative work must incorporate some or all of a preexisting “work” and add new original copyrightable authorship to that work. The derivative work right is often referred to as the adaptation right. The following are examples of the many different types of derivative works:

• A motion picture based on a play or novel
• A translation of an novel written in English into another language
• A revision of a previously published book
• A sculpture based on a drawing
• A drawing based on a photograph
• A lithograph based on a painting
• A drama about John Doe based on the letters and journal entries of John Doe
• A musical arrangement of a preexisting musical work
• A new version of an existing computer program
• An adaptation of a dramatic work
• A revision of a website

Only the owner of copyright in a work has the right to prepare, or to authorize someone else to create, an adaptation of that work. The owner of a copyright is generally the author or someone who has obtained the exclusive rights from the author. In any case where a copyrighted work is used without the permission of the copyright owner, copyright protection will not extend to any part of the work in which such material has been used unlawfully. The unauthorized adaptation of a work may constitute copyright infringement.

This blog will discuss some ideas that may spur on THE NEXT BIG THING using your existing copyrighted work. Vondran Legal® can help with copyright protection, enforcement, licensing, and litigation.

Derivative work caselaw 9th Circuit?

Here are a few snippets of case law used in regard to copyright derivatives and infringement:

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Brighton Collectibles, Inc. v. RK Tex. Leather Mfg. (S.D.Cal. Dec. 13, 2012, No. 10-CV-419-GPC (WVG)) 2012 U.S.Dist.LEXIS 177718, at *10-12.)

A derivative work is "based upon one or more preexisting works, such as [an] . . . 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 consisting of . . . elaborations, or other modifications which, as a whole, represent an original work of authorship, is a 'derivative work.'"

A derivative work is afforded less protection than an original work. "The copyright in . . . a derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work." Id. § 103(b).

The Ninth Circuit applies a two-prong test for the copyrightability of a derivative work:

First, to support a copyright the original aspects of a derivative work must be more than trivial.

Second, the original aspects of a derivative work must reflect the degree to which it relies on preexisting material and must not in any way affect the scope of any copyright protection in that preexisting material.

For example, Alfred Hitchcock's movie "Rear Window" is a derivative work of the preexisting work of Cornell Woolrich's story "It Had to be Murder." Abend v. MCA, Inc., 863 F.2d 1465 (9th Cir. 1988).

In that example, both works were copyrightable because Hitchcock's film version contributed significant original, creative elements to distinguish it from the author's original storyline. ("Creative contributions by the defendants to the movie 'Rear Window' abound. . . . In short, the film is a new work of art.").

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Entm't Research Grp., Inc. v. Genesis Creative Grp., Inc. (9th Cir. 1997) 122 F.3d 1211, 1218-1219.

Copyrights in Derivative Works

Having discussed this initial "threshold" issue, we will now evaluate whether ERG's costumes are actually copyrightable. It is undisputed that ERG's costumes are based upon two-dimensional characters that are copyrighted and owned by the purchasers of the costumes. The Copyright Act defines a derivative work as:

[A] work based upon one or more pre-existing works, such as an . . . art reproduction . . . 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, representan original work of authorship, is a "derivative work."

17 U.S.C. § 101. Given this definition, it is clear that ERG's costumes are derivative works for purposes of the Copyright Act.

That ERG's costumes are derivative works is not a bar to their copyrightability, however, Section 103(a) of the Copyright Act explicitly provides that the subject matter of copyright, as specified by Section 102, includes "derivative works." 17 U.S.C. § 103(a).

Nevertheless, the copyright protection afforded to derivative works is more limited than it is for original works of authorship. Specifically, Section 103(b) provides that the copyright in a derivative work "extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work." 17 U.S.C. § 103(b); see also Russell v. Price, 612 F.2d 1123, 1128 (9th Cir. 1979). Accordingly, we will now examine whether ERG's costumes are copyrightable as derivative works.

We have not previously had occasion to provide much guidance with regard to the copyrightability of derivative works. See Moore Pub., Inc. v. Big Sky Marketing, Inc., 756 F. Supp. 1371, 1374 (D. Idaho 1990) (looking to cases from the Second Circuit and the Seventh Circuit for guidance on the standards to be employed in determining whether derivative works are copyrightable).

Faced with this lack of guidance, the district court turned to the Second Circuit's decision in Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905 (2d Cir. 1980), as a model for determining whether ERG's derivative works were copyrightable. See Entertainment Research Group, 853 F. Supp. at 321-22. ERG argues that the district court should not have relied on that test since the Durham test is not the controlling law of the Ninth Circuit and since the Durham analysis is premised on an erroneous interpretation of copyright law.

Instead of the Durham test, ERG contends that the district court should have applied the test created by a district court in the Central District of California. Doran v. Sunset House Distributing Corp., 197 F. Supp. 940 (S.D. Cal. 1961), aff'd, Sunset House Distributing Corp. v. Doran, 304 F.2d 251 (9th Cir. 1962).

In Doran, we affirmed the district court's decision that a three-dimensional, inflatable representation of Santa Claus was original and copyrightable. The district court in that case reached its decision based on its belief that the "test of copyrightability must be the form which the author has used to express the figure, idea, or theme." Id. at 944. In other words, under the Doran district court's test, if the form of the derivative work and the form of the underlying work - three-dimensional, two-dimensional, plastic, etc. - are sufficiently different, then the derivative work is original enough to be copyrightable.

Sample ideas for derivative works for various copyright Works

Here are some sample concepts of derivative works an artist, musician, photographer, videographer, filmmaker, programmer, or other creative designer can make to create a derivative work that can be separately copyrighted, or you can license the derivative work to a third party after copyright registering it.

Book Derivatives

Film/Movie Derivatives

Click here for a list of movies turned into a stage play.

Music Derivatives

Software Program Derivatives

Does the author copyright register the derivative work with the USCO?

Yes. This is available. According to the United States Copyright Office:

"Copyright Protection in Derivative Works The copyright in a derivative work covers only the additions, changes, or other new material appearing for the first time in the work. Protection does not extend to any preexisting material, that is, previously published or previously registered works or works in the public domain or owned by a third party. As a result, it is not possible to extend the length of protection for a copyrighted work by creating a derivative work. A work that has fallen into the public domain, that is, a work that is no longer protected by copyright, is also an underlying “work” from which derivative authorship may be added, but the copyright in the derivative work will not extend to the public domain material, and the use of the public domain material in a derivative work will not prevent anyone else from using the same public domain work for another derivative work."