Re: Assignment of Copyright II

On 4/9/98, Juli Krute <juliann[_at_]people-are.strange.com> wrote:
>
> OK, let's make matters a bit more confusing. Assuming that Author A has
> given a license to make a derivative work to Author B, who has assumed
> the responsibility and writing for the web pages.
>
> 2 years pass. Author B has updated the site almost daily, and the
> content has changed almost entirely. The theme, name and format remain
> the same, but every other detail has been altered throughout the years.
>
> Author A comes to Author B and demands that B stop work on the pages,
> because Author A wants them back.
>
> Can Author B continue to do B's version of the web pages or must B cease
> all work? Is there an argument that Author B can redo the pages with the
> same content but under a different format? B's pages are a derivative,
> yes, but is there a point at which the work resembles only tangentially
> the original that a license is no longer necessary?
>
> This question is asked with respect to all jurisidictions, not just the
> US or Canada. Also, we may not assume that Authors A and B are in the
> same country.
>

Juli -

My answer is based on US law; I won't even speculate on other law.

The first question is, what does the "derivative" license say? There are two ways such licenses work: A may demand rights (exclusive or nonexclusive) in the derivatives, or she may not. If A has the right to control the derivatives, she will likely be able to demand this. If B retains this right, then there *is* a point beyond which B is free to do as he pleases. That point is where the preparation of new derivatives no longer makes works that are "substantially similar in protectable expression" to A's old original. If that is true, and if A doesn't own the intervening derivatives, A has no claim to the new derivatives.

B should also think about trademark, though -- if the pages are billed as "A's pages, updated by B" or the like, producing the pages without authorization may cause consumer confusion.

Mark A. Lemley
Assistant Professor, University of Texas School of Law Of Counsel, Fish & Richardson, P.C.
mlemley[_at_]mail.law.utexas.edu

Berkeley conference on UCC Article 2B, April 23-25 1998: http://sims.berkeley.edu/BCLT/events/ucc2b/

Information on UT's Intellectual Property program: http://www.utexas.edu/law/acadaff/intelprop/

My publications list: http://www.law.utexas.edu/lemley/pubs.htm Received on Fri Apr 10 1998 - 15:39:40 GMT