Re: Altering Programs

On Tue, 16 Feb 1999, Kerry Konrad <k_konrad[_at_]stblaw.com> writes:
>
> 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.
>

A creative argument, but I don't think this will fly. There are two different section 106 rights at issue here: the right to prepare derivative works, and the right to distribute. The fact that there is a sale certainly determines whether the right to distribute is implicated. But the right to prepare derivative works is simply not limited to "derivative works that you later sell." Once the court concludes that the Mirage tile *is* a derivative work, and that ART has prepared it, there is infringement of 106(2). The rest of the case discusses liability under 106(3), but infringing one right is enough to get you into trouble.

Mark Lemley
<mlemley[_at_]mail.law.utexas.edu> Received on Wed Feb 17 1999 - 16:15:06 GMT