Re: Altering Programs

On 02/16/99, Kerry L. Konrad <k_konrad[_at_]stblaw.com> wrote:
>
> Granted, the reasoning of the Ninth Circuit's decision [in Mirage] 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
>
> [snip]
>
> 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.

I agree that some (perhaps even most) courts wouldn't have to turn to fair use to dispose of your hypotheticals, but I still think that a lower court in the Ninth Circuit would feel obligated to do so. There is still a difference between off-the-cuff dicta and dicta that thoroughly disposes of a question and forms a central part of the court's reasoning on a particular issue.

As for the de minimis doctrine, whether the Second Circuit has "recently been trying to revitalize" it depends on your point of view and how you define recently. Sandoval certainly revitalizes it, but Sandoval became necessary only because the Second Circuit had practically killed the doctrine the previous year in Ringgold.

> (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)

I'd be happy to oblige, but I haven't published anything formal. My previous e-mails are as complete an articulation as there is at the moment. And, thus far, there is nothing in the statute, legislative history or case law to really support my view. But I do think it makes sense from a policy standpoint, and I do think that such a limitation could be read into the act without doing severe violence to its language.

Tyler T. Ochoa
Associate Professor
Whittier Law School
<tochoa[_at_]law.whittier.edu> Received on Wed Feb 17 1999 - 22:35:09 GMT