Re: obscure derivative works question

Mark Lemley writes (as quoted by Carol Ruth Shepard), with regard to unauthorized derivative works:
>
> My question is, at what point in time is "has been used unlawfully"
> judged? If I translate first and get authorization later, am I forever
> without copyright, on the theory that at the time I made it the use was
> unlawful? Or if I later get permission, does my unlawful use become
> lawful, entitling me to a [retroactive?] copyright?

     Another variation of this problem is one I always discuss with my copyright class and arises out of the situation in Anderson v. Stallone, 11 USPQ2d 1161 (C.D. Cal. 1989), edited version in Gorman & Ginsburg, p.224.

     There Anderson wrote an original script using a copyright-protected character ("Rocky") belonging to Stallone. That is, Anderson's story (sequence of events) was original to him but the characters had appeared in earlier works in which Stallone held the copyright. Because Anderson wrote his script without Stallone's permission, the court invalidated Anderson's derivative work copyright completely.

     Section 103(a), however, says that "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 question is, what is a "part of the work" for the purpose of determining whether protected material has been used therein unlawfully? The Anderson court obviously concluded that, because the characters appeared throughout the work, there was no "part" of it in which they were not unlawfully used. This is sort of a "physical separability" test not entirely dissimilar to some analyses for PGS works. I don't say that this approach is obviously wrong, but it doesn't seem to be the only one possible. Because copyright covers "nonliteral elements" of literary works (and not just computer programs), it seems to me that we could conceptualize the detailed plot and sequence of events (protected elements under Sheldon) independent of the actual personalities of the characters that push the events along. Under this approach the basic plot, stripped of all references to protected elements of the characters, would be a "part of the work in which [protected] material has [not] been used unlawfully," because, by hypothesis, all such references have been stripped out. This would still prevent Anderson from exploiting the protected characters without permission but would also prohibit Stallone from getting a windfall at the expense of Anderson's (assumed) creativity in expressing the plot by using Anderson's plot in a new movie. To me, that result is not obviously wrong, either.

     Any thoughts?

Dennis S. Karjala
Professor of Law
Arizona State University
Tempe, Arizona 85287
602-965-4010
602-965-2427 (fax)
dennis.karjala[_at_]asu.edu Received on Tue Nov 05 1996 - 23:09:41 GMT