Re: A Little Linguistic Playground

On 03/27/1999, Rod Dixon <rod[_at_]cyberspaces.org> wrote:
>
> On Thu, 25 Mar 1999, Mark Lemley <mlemley[_at_]mail.law.utexas.edu> wrote:
> >
> > I think Jessica's point (correct, as always) is that if you infringe
> > someone else's material in preparing your derivative work, you *do
> > not own copyright* in your own original work intermingled with the
> > infringing stuff. They don't need to sue you and win to cause this
> > to happen; the infringement has prevented you from owning copyright
> > in your own creations.
>
> Hmm... This is a remarkable interpretation of section 103(a).
>
> Following your lead, Mark, I suppose your position would be that the
> infringing derivative work is essentially automatically placed into
> the public domain? That is, this occurs without the necessity of a
> judgment that the underlying infringement occurred, and that this is
> the legal advice you would offer a client regarding whether she could
> use the derivative work (less, the duly protected subsisting work, of
> course)? And, if this is not the advice you would offer, what is the
> significance of your interpretation of section 103(a)?
>

Yes, I think that is exactly what happens. There is actually a fair bit of caselaw generating this result. Jessica Litman cited Anderson v. Stallone, the most egregious example, but you might also note Grove Press v. Greenleaf Publishing.

The legislative history helps explain the concept here, using the example of an unauthorized translation. A translation is an original, creative act that adds copyrightable expression. If you translate a copyrighted work without permission, though, not only are you infringing, but you lose any claim to copyright protection in the original elements you added in your translation. That means that (in theory, at least) those original elements are in the public domain, and everyone is free to copy them. In practice, of course, only the copyright owner of the first work (or a licensee) will be able to copy the translation without infringing the original. But certainly, if the translator sued the original author for copying the translation verbatim, the translator would lose under 103(a). [Put another way, there are blocking patents, but there are no blocking copyrights].

You can read more than you would ever want to about this subject in my article "The Economics of Improvement in Intellectual Property Law, 75 Tex. L. Rev. 989 (1997).

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

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

My publications list: http://www.law.utexas.edu/lemley/pubs.htm Received on Mon Mar 29 1999 - 15:23:14 GMT