Re: Altering Programs

Returning to the discussion on the Mirage case, I have reread it (and a subsequent D. Alaska case involving ART, the defendant). It is true that the Ninth Circuit's opinion, which is fairly short and not deeply reasoned, does not refer to the fact that the defendant was selling the "altered" work in the course of opining that the "altered" work was an infringing derivative work. But in its statement of the key facts of the case, it mentions that the defendant was in the business of "offering tile[s] with artwork mounted thereon for sale in the retail market," and adds that it was undisputed that defendant had offered selected pages from plaintiff's book mounted on individual tiles "and sold the tiles at retail." (In the Alaska case, ART mounted entire notecards, which it provided to a gift shop that sold them; ART unsuccessfully tried to convince the court that the case was different from Mirage because it wasn't "altering" the work by cutting a page out of a book.)

Granted, the reasoning of the Ninth Circuit's decision on the derivative work point does not depend upon the fact of sale. But, as a matter of legal method, I think its pronouncements, to the extent they go beyond the facts of the case actually decided including the fact of sale, are dictum, and the holding of the case should properly be construed as confined to circumstances where the derivative work is sold to others. This may not satisfy the theoretical concerns that some may legitimately have (and I'd be very interested in a more complete articulation of Prof. Ochoa's point about the right to create derivative works not being susceptible of infringement without violating another of the exclusive rights in Section 106), but it does, IMHO, confine the practical sweep of Mirage. Personally, I just don't think a court would need to turn to fair use in order to find no infringement if Ari mounted a postcard of the old Maple Leaf Gardens on his bathroom wall and covered it with a coat of lacquer to make it look even older, possibly applying the "de minimis" concept which the Second Circuit has recently been trying to revitalize as a tool for disposing of absurd cases without doing too much collateral damage to copyright theory. Same for his annotated casebook.

Kerry L. Konrad
<k_konrad[_at_]stblaw.com> Received on Tue Feb 16 1999 - 17:03:07 GMT