Emphasizing the Copy in Copyright: Why Noncopying Alterations Do Not Prepare Infringing...
I. INTRODUCTION
Utilizing new digital editing technologies, an infant industry began supplying home-video consumers with the option of viewing edited versions of popular movies. These "sanitized" versions removed content deemed objectionable by some consumers, including profanity, sexual content,
Litigation over video filtering is the most recent addition to a growing list of unpredictable controversies arising from noncopying alterations of copyrighted works. Prior to the 1976 Copyright Act (hereinafter "Act" or "1976 Act"), courts consistently rejected attempts to prohibit mere unauthorized alterations of protected works unless there was evidence that those works were copied5 in one form or another. Since the 1976 Act, however, some courts have prohibited unauthorized alterations even absent any evidence of copying, finding that these noncopying alterations infringed the exclusive right of copyright owners to prepare derivative works. Although rudimentary forms of the derivative right date back to the 1870 Copyright Act, the 1976 Act redefined the right very broadly, granting copyright owners the right to prohibit the creation of any work based upon the owners' preexisting works. Relying on this broad definition of the Act, plaintiffs have alleged that respective defendants created derivative works merely by altering lawfully purchased copies of a work or by manufacturing component devices that alter the appearance of a work in real time. Defendants in these cases have included commercial art stores, video-game and other toy producers, clothing manufacturers, software engineers, webpage advertisers, and, most recently, home-video filterers.
Although evidence of copying is elementary to copyright infringement in general, no court deciding a noncopying-alteration case has specifically addressed whether evidence of copying is necessary to prove infringement of the derivative right. Courts have addressed, instead, various other issues, which has resulted in confusing and contradictory federal case law. Supreme Court review is ripe in order to resolve conflicting decisions among the circuit courts and to avoid special congressional intervention, such as the Family Movie Act of 2005. To remedy the current dilemma, courts must directly address whether unauthorized, noncopying alterations prepare infringing derivative works. This Comment concludes that there is no infringement of a copyright owner's exclusive right to prepare derivative works unless the defendant copied the owner's copyrighted work or its elements.
Part II describes the gradual expansion of copyright, which has led to the current controversy over whether noncopying alterations prepare infringing derivative works. Part III examines the judicial treatment of noncopying alterations both before and after the 1976 Act, focusing on the increasingly divergent decisions following the Act. Part IV advocates emphasizing the copy in copyright by concluding that noncopying alterations are not infringing derivative works because the Act's "based upon" requirement implies evidence of copying. In addition, Part IV explains that holding noncopying alterations not to infringe the derivative right would provide a consistent framework for disavowing two circumspect federal appellate court decisions, and would substantially eliminate the need for resorting to narrow legislative exemptions for noncopying alterations. Part V summarizes these conclusions.
Before continuing, it will be helpful to define the nouns "work," "copy," and "embodiment," as well as the verbs "reproduce," "copy," and "alter," as these terms are used in this Comment. Understanding the distinctions between these terms will help clearly define the concept of a "noncopying alteration." Additionally, subtle distinctions between these terms will help form the basis for the conclusions this Comment reaches.
A "work," as used herein, means a copyrightable work, as defined by the Copyright Act-that is, an "original work[] of authorship fixed in any tangible medium of expression . . . from which [it] can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device."6 For example, a printed script of a drama intended for live performance is a work because it is fixed in the tangible mediums of ink and paper. An impromptu theatrical performance, however, is not a work because it is not fixed in any tangible medium of expression. Alternatively, if the same impromptu theatrical performance were recorded, it would then be a work because the recording is fixed in a tangible medium of expression.
A "copy" of a work, as defined in this Comment,7 is a substantially similar representation of the original work, or its copyrightable elements, in a similar form of object as the original-that is, an object consisting of a medium similar to the medium of the object in which the original work was fixed. For example, books published from a handwritten manuscript are copies of the manuscript. Each book is a substantially similar representation of the original manuscript and is fixed into an object (the printed pages of the book) that is similar to the original object in which the work was fixed (the handwritten pages of the manuscript). Thus, the published books are "copies" of the handwritten manuscript.
As used herein, to "reproduce" a work means to intentionally multiply copies of a work. It is possible, however, to copy (verb) a work without reproducing a copy (noun) of it. In other words, although reproducing a work is one way of copying a work, there are also other ways.8 For example, a movie based upon a book copies the book, even though the movie is not a copy of the book. Although the movie is a substantially similar representation of the book, the film recording (either digital or analog) is not a similar medium to the printed pages of the book. Thus, even though the process of deriving one work from another necessarily requires copying, the resultant derivative work is not properly called a copy of the work from which it is derived. Similarly, a live performance of a dramatic script copies the script-when, for instance, the performers repeat the dialogue from the script-even though the performance is not a copy of the script. Defining the concept of copying to include activities other than just reproducing a work-such as preparing derivative works or performing works-comports with the common, everyday use of the verb "copy." For instance, children might complain that siblings copy their favorite basketball moves or copy their styles of dress and grooming, even though the allegedly infringing siblings would not have reproduced anything by their allegedly copying behavior.9
Because the common, everyday use of the verb "copy" may include more activities than just reproduction, it is necessary to distinguish between the noun and verb forms of the term "copy," and, in so doing, to distinguish between "reproducing" a work-that is, intentionally multiplying copies of a work-and "copying" a work. In this Comment, the term "copy," as a verb, means to intentionally multiply embodiments of a work or its elements. An "embodiment" of a work, as defined here,10 is a substantially similar representation of the original work, or its copyrightable elements, in any form. In contrast to a copy, an embodiment of a work need not be fixed in a similar object, or even be fixed in any object at all. Thus, the elements of a literary work previously published in a book, for example, may be embodied in an object similar to the original (for example, a photocopy), embodied in an object different from the original (for example, a motion picture), or embodied in no object at all (for example, a live performance).
In summary, this Comment distinguishes the concept of copying a work from the concept of reproducing a copy of a work. The definition of the term "copy" depends on whether it is being used as a noun or as a verb. Although the noun form of "copy" generally refers only to a reproduction of a work, the verb form of "copy" generally refers to other activities in addition to reproduction, including the preparation of derivative works and the performance of works. Now that the "copying" element of "noncopying alteration" has been described, it will be helpful to define the "alteration" element.
The term "alter" is easy to define, but difficult to apply. Succinctly, the term "alter" merely means to modify. Copyrighted works may be altered in a number of ways. For example, movies based upon books, in most cases, alter certain elements of the respective books in order to adapt them to cinematic storytelling. In this example, the movie producer copies and alters the original copyrighted text. It is possible, however, to alter a copyrighted work without copying it. For example, a book retailer might decide to excise vulgar words from copies of particular novels by marking through the words with a thick, black marker. In this example, the book retailer has altered copies of original works without copying the respective works. Accordingly, this Comment refers to these kinds of alterations as noncopying alterations. Whether copyright law should prohibit unauthorized, noncopying alterations is an important policy discussion that this Comment does not directly address. Instead, this Comment focuses on whether the 1976 Copyright Act did prohibit unauthorized, noncopying alterations.
With these definitions in mind, it is possible to make a subtle, but important, point: altering a copy of an original work may create a new work without copying the original work. This point is best understood by way of example. Consider an artist who paints a landscape picture of a treeless prairie and sells the picture to another artist. If the second artist paints a tree in the middle of the prairie, the original work of art was modified (or altered), but it was not multiplied. Although the alteration created a new work-assuming the tree contained sufficiently original expression-it was not another embodiment of the original work and, therefore, did not multiply embodiments of the original work. Thus, mere alterations to a copy of a work-even those that create separate, additional works-do not necessarily multiply the original work; instead these noncopying alterations embody other, additional works.
It is possible, however, to alter a work in such a way that the alteration copies-that is, intentionally multiplies the embodiments of-the original work. For example, consider an artist who paints a landscape picture of a prairie with a single tree and sells the picture to another artist. If the second artist paints onto the original picture a second tree that is substantially similar to the first tree, then the original work-or, more specifically, an element of it (the tree)-has been multiplied. There are now two embodiments of an original work: the first tree embodied in the paint of the original painting and the second tree embodied in the paint of the alteration. In this example, a copying alteration multiplied the number of embodiments of an original work. Thus, although an alteration to a copy does not necessarily copy the original work, it may. The analysis in Parts III and IV depends on this distinction between copying and noncopying alterations.
Finally, it will be helpful to make another subtle, but important, point: a work may be created from another work without creating a multiple embodiment of the original work. Consider again the first example of an artist who paints a landscape picture of a treeless prairie and sells the picture to another artist. As mentioned above, if the second artist paints a tree in the middle of the prairie, a multiple embodiment of the original work is not created because the added expression, the tree, is completely original. This is true even though the resulting work comprises the original work. As another example, consider an automobile, which is comprised of its parts, but does not embody its parts. An automobile embodies a design, which may have originated on a drafting board or a computer screen. Thus, an automobile is comprised of its parts, but it embodies a design. Assembling an automobile does not create a multiple embodiment of its parts, though it does create an embodiment of the automobile design.
At times it is difficult to identify a noncopying alteration because the altered work is comprised of copies of an original work. The key to distinguishing a noncopying alteration from a copying alteration is to ask whether the alteration copied-that is, to ask whether an original work was copied in the process of alteration. Thus, the addition of a tree to a painting of a treeless prairie does not necessarily copy, unless the added tree is copied from another work. Even though the resulting work-a painting of a prairie with a single tree-comprises a copy of the original work, the alteration did not copy any expression from the original work, making the alteration a noncopying alteration. Similarly, an assembled automobile does not copy its parts, though it does copy its design, making the assembly a noncopying alteration. While reading about the noncopying alterations discussed in Parts III and IV, it will be helpful to keep this distinction in mind.
II. BACKGROUND: THE GRADUAL EXPANSION OF COPYRIGHT
Originally, copyright protected authors only from the unauthorized reproduction of their original works. Over the years, the derivative right gradually grew out of this original reproduction right.11 In 1790, the first copyright statute conferred to the authors of "any map, chart, book or books" only the rights of "printing, reprinting, publishing and vending."12 Owing to this narrow reach of copyright, Harriet Beecher Stowe was unable to exclude unauthorized translations of her novel Uncle Tom's Cabin into German.13 Although the translation was, in essence, "the same book,"14 the deciding court held that the copyright statute extended only to the "particular combination of characters" in the author's original book.15 Significantly, the court observed that copying had occurred, but it refused to recognize such copying as prohibited by statute: "A translation may, in loose phraseology, be called a transcript or copy of her thoughts or conceptions, but in no correct sense can it be called a copy of her book."16 Thus, copyright did not originally prohibit all forms of copying; rather, copyright prohibited only reproduction.
Slowly, Congress began to expand the scope of copyright to include many forms of copying other than just page-by-page duplication. In 1856, Congress prohibited theater performers from copying (that is, performing without permission) an author's protected, dramatic works.17 Then, in the Copyright Acts of 1870 and 1909, Congress prohibited several forms of derivative copying. Taken together, the 1870 and 1909 Copyright Acts expressly prohibited, without the author's permission, the translation of literary works into other languages,18 the conversion of dramatic compositions into novels19 (and vice versa20), the arrangement or adaptation of musical works for use with different voices or instruments,21 and the creation of three-dimensional works of art from two-dimensional models or designs.22 Thus, copyright gradually began to prohibit the copying of themes, styles, characters, forms, structures, stories, plots, designs, arrangements, organizations, etc., in addition to prohibiting exact print duplication. For instance, the Supreme Court in Kalem Co. v. Harper Bros.23 held that an unauthorized motion picture infringed the dramatization right of the copyright owner of the novel Ben Hur because the silent film acted out certain "portions [of the book] giving enough of the story [so as] to be identified with ease."24
Although the 1870 and 1909 Acts expanded the scope of copy protection, courts did not interpret copyright to prohibit all methods of copying. For instance, the Supreme Court in White-Smith Music Publishing Co. v. Apollo Co.25 held that perforated rolls used to operate player pianos were not "copies or publications of the [original] copyrighted music."26 Additionally, in Kalem Justice Holmes acknowledged-without deciding, however, the merits ofthe lower court's conclusion that "pictures of scenes in a novel may be made and exhibited without infringing the copyright."27 Thus, the Supreme Court had refused to recognize that player-piano music rolls or pictorial representations of novels were the result of prohibited copying, even though both had been based upon original works.
When Congress enacted the 1976 Copyright Act, however, it granted copyright owners, in very broad terms, the exclusive right, inter alia,28 "to prepare derivative works based upon the copyrighted work."29 Significantly, the definition of "derivative work" encompassed not only familiar examples such as translations and dramatizations, which had been protected previously, but also included "any other form in which a work may be recast, transformed, or adapted."30 Because the derivative right was defined so broadly, plaintiff copyright owners began to allege infringement for mere alterations to copies of their works-as, arguably, any alteration to a copyrighted work might recast, transform, or adapt that work-even though the defendants had never copied the plaintiffs' works.31 In some cases, plaintiffs sought to enforce otherwise unenforceable "moral rights"32 disguised as infringement claims.33 This Comment concludes that Congress did not intend this result. As demonstrated in Part IV.A, neither the context nor the text of the Act supports finding copyright infringement without evidence of copying. Before addressing the proper interpretation of the modern-day derivative right, however, it will be helpful to examine how courts have treated noncopying alterations both before and after the Act.
III. CASE LAW ADDRESSING NONCOPYING ALTERATIONS: BEFORE AND AFTER THE 1976 COPYRIGHT ACT
This Part attempts to collect federal case law addressing noncopying alterations. Because courts and commentators have not directly addressed whether noncopying alterations prepare infringing derivative works, this collection is unique. Although other authors have identified groups of cases within this field,34 these cases have not been identified for their noncopying characteristic. In other words, the following cases have never been characterized as a distinct category of derivative works cases-that is, as noncopying-alteration cases.
Because the 1976 Copyright Act changed how courts decided controversies arising from noncopying alterations, this Part first collects all pre-1976 cases addressing noncopying alterations-when courts generally did not find infringement absent proof of copying-and then collects all post-1976 cases-when courts began to divide over whether certain noncopying alterations infringed the derivative right. Again, neither courts nor commentators have categorized these cases according to their noncopying characteristic, so it should be remembered that courts have not expressly, or perhaps even consciously, divided over whether noncopying alterations prepare infringing derivative works. As of yet, no court has squarely addressed the issue. In a sense, courts have divided unwittingly, some holding certain noncopying alterations to be infringing and some finding other noncopying alterations not to be infringing. All of these cases ignore the question of whether noncopying alterations prepare infringing derivative works.
A. Before the 1976 Copyright Act: No Infringement Absent Proof of Copying
Prior to the 1976 Act, courts generally found no copyright infringement without proof of copying, even when defendants altered original works without authorization. By far the most often litigated controversy was the rebinding of books.
In the rebound-book cases, courts consistently held that the mere restoration of copyrighted books did not infringe copyright. For example, in Harrison v. Maynard, Merrill & Co.,35 a secondhand book dealer did not infringe the copyright of the plaintiff when the defendant rebound, for the purpose of resale, damaged copies of the plaintiff's books.36 In a similar case, Doan v. American Book Co.,37 the plaintiff argued that copyright prohibited unauthorized repair or renewal of the plaintiff's copyrighted work by those who purchased copies of it. Relying on Harrison, the court of appeals concluded, "A right of ownership in the book carries with it and includes the right to maintain the book as nearly as possible in its original condition, so far, at least, as the cover and the binding of the book is concerned."38 Thus, courts consistently rejected claims of copyright infringement for unauthorized, noncopying alterations of books, at least for restorative purposes.39
Courts were less consistent deciding cases addressing book alterations for nonrestorative purposes. One appellate court, in Kipling v. G.P. Putnam's Sons,40 affirmed Harrison and Doan and held that binding previously unbound manuscripts did not infringe the copyright in the manuscripts.41 Two district courts, however, split over whether unauthorized, noncopying compilations infringed. National Geographic Society v. Classified Geographic42 held that the defendant infringed the plaintiff's copyrights when the defendant purchased secondhand copies of the plaintiff's magazine, disassembled the magazines into separate articles, and organized and bound like-category articles into book form.43 In contrast, Fawcett Publications v. Elliot Publishing Co.44 held that the defendant did not infringe the plaintiff's copyright when the defendant purchased secondhand copies of the plaintiff's comic book and subsequently bound them together with other comic publications (not owned by the plaintiff).45 These cases are, perhaps, distinguishable because the defendant in National Geographic recompiled only the plaintiff's works, albeit in a different order, whereas the defendant in Fawcett Publications recompiled the plaintiff's work with other works the plaintiff did not own. This distinction, however, is without significance. In both cases, the defendant altered (when the defendant compiled) lawfully purchased copies of the plaintiffs works without copying them, yet the deciding courts reached opposite conclusions. On this basis, these cases are irreconcilable.
In addition to the bookbinding cases, pre-1976 courts also addressed other controversies arising from unauthorized, noncopying alterations. As in the bookbinding cases, these courts generally did not find copyright infringement absent copying-that is, absent some multiplication of embodiments of the work. In Scarves by Vera, Inc. v. American Handbags, Inc.46 the defendant made women's handbags from copies of the plaintiffs copyrighted towels, but the plaintiff did not challenge this unauthorized alteration, presumably because there was little, if any, precedent for noncopying infringement.47 In another case, Blazon, Inc. v. Deluxe Game Corp.,48 the defendant repainted a copy (lawfully purchased) of the plaintiffs copyrighted hobbyhorse for display in defendant's showroom. Here the plaintiff alleged infringement, but the district court ruled for the defendant, observing, "It is clear that before there can be infringement there must be ... some proof of copying, and as a matter of logic there can be no copying in the case at bar where the horse seized and alleged to copy [the plaintiffs horse] ... is in fact [the same horse] . . . ."49 Finally, in C.M. Paula, Co. v. Logan?0 the defendant used a "transfer medium" to remove copyrighted designs from greeting cards and notepads and affixed the removed images to ceramic plaques.51 The federal district court concluded, "the process . . . does not constitute copying."52
It will be helpful to examine the reasoning from C.M. Paula more closely, as the opinion explains very carefully why the process of altering a work is not the same as copying a work. The district court reasoned:
The Court notes at the outset that without copying there can be no infringement of copyright. . . . The process utilized by defendant that is now in question results in the use of the original image on a ceramic plaque; such process is not a "reproduction or duplication."
. . . Each ceramic plaque sold by defendant with a Paula print affixed thereto requires the purchase and use of an individual piece of artwork marketed by the plaintiff. For example, should defendant desire to make one hundred ceramic plaques using the identical Paula print, defendant would be required to purchase one hundred separate Paula prints. The Court finds that the process here in question does not constitute copying.53
If, in the alternative, the defendant had created one-hundred ceramic plaques by purchasing a single copy of the copyrighted work, reproducing that copy ninety-nine times, and affixing the total one-hundred copies onto ceramic plaques, then the defendant would have been liable for infringement-for multiplying ninety-nine additional copies of the work. Because the multiplying element was absent, the district court concluded that no copying had occurred.
In contrast, in the many pre-1976 cases where unauthorized alterations did involve copying, courts consistently found copyright infringement. One example is Addison-Wesley Publishing Co. v. Brown,54 in which the defendants published solutions to the plaintiffs' physics textbook without permission, altering how students used the textbook.53 Although the defendants' solutions, in general, "substituted] paraphrase for direct quotation" of the original problems,56 the court appeared to rest its holding of infringement on the finding that the defendant had nevertheless copied from the plaintiff, even though the copy was not a literal reproduction.57 The court did not address whether publishing the solutions, without copying any of the original problems, would infringe.
Gilliam v. ABC, Inc.58 is another case involving unauthorized alterations with evidence of copying. In Gilliam, the BBC licensed to ABC certain recorded performances of the British group of writers and performers known as "Monty Python," and ABC subsequently broadcast unauthorized, edited versions of these recordings to which Monty Python objected.59 Because the BBC agreement with Monty Python had reserved to the group the right to make any significant editorial changes, Gilliam held that ABC had exceeded the scope of the license that the BBC had the authority to give, thereby infringing the copyright by releasing an unauthorized copy.60 Thus, this holding is consistent with the general trend of the courts during the pre-1976 Act era to find copyright infringement only when a defendant had copied the plaintiffs works. In Gillia-m, the infringement occurred as a result of having exceeded the scope of the license-that is, as a result of having impermissibly copied the work by broadcasting an unauthorized copy. It was not the alteration per se-but rather the broadcast of the alteration-that infringed the copyright.
Thus, prior to the 1976 Copyright Act, several controversies over noncopying alterations reached the courts. Those courts consistently rejected copyright infringement claims for unauthorized alterations absent some proof of copying.61
B. After the 1976 Copyright Act: Courts Inconsistently Decide Whether Noncopying Alterations Prepare Infringing Derivative Works
Since enactment of the 1976 Copyright Act, courts have inconsistently decided cases addressing noncopying alterations. Much of this confusion originates from the broadly defined derivative right, first enacted in the 1976 Act. As discussed previously in Part II, although copyright owners previously enjoyed the exclusive right to prepare certain kinds of derivative works, such as translations and dramatizations,62 the 1976 Act recognized for the first time a broad, umbrella derivative right, granting copyright owners the exclusive right "to prepare derivative works based upon the copyrighted work."63
What precisely is a "derivative work"? The Act defines a "derivative work" as "a work based upon one or more preexisting works" and includes a nonexhaustive list of examples.64 In addition to listing familiar examples, such as translations and dramatizations, the Act also includes a broad, catchall phrase: "or any other form in which a work may be recast, transformed, or adapted."65 Thus, a derivative work appears to be any work that recasts, transforms, or adapts a preexisting work.
Courts and commentators have characterized this definition as "hopelessly overbroad"66 and "expansive."67 On the one hand, the broad definition may be representative of the steadily increasing scope of copyright, described as follows by one prominent commentator: "Copyright, which once protected only against the production of substantially similar copies in the same medium as the copyrighted work, today protects against uses and media that often lie far afield from the original."68 As shown below, however, courts and commentators have struggled to define the outer boundaries of the broadly defined derivative right. One unresolved question is whether mere alterations to copyrighted works infringe the derivative right, even absent any evidence of copying by the defendants. Arguably, an alteration may recast, transform, or adapt a preexisting work without copying that work. As discussed previously in Part III.A, however, prior to the 1976 Act courts generally did not find that copyright prohibited noncopying alterations. Since the 1976 Act, courts have inconsistently decided cases addressing noncopying alterations. In general, courts have not directly addressed whether the definition of derivative works includes noncopying alterations, which undoubtedly has contributed to the confusion.
After the 1976 Act, noncopying alterations have generally surfaced in one of two distinct, though related, scenarios. In the first scenario, defendants purchase copies of the plaintiffs' copyrighted work, physically alter or modify the copies (without copying), and subsequently resell the very same copies they purchased. This Comment refers to these alterations as static (one-time) alterations because the alterations generally occur at one fixed point in time. For instance, a clothing company might alter copyrighted fabric by sewing it into garments.69 In the second scenario, defendants sell add-on products that function in a complementary manner with the plaintiffs' works to alter or modify (without copying) the respective work's real-time playback or display. This Comment refers to these alterations as dynamic (real-time) alterations because the alterations are made on the fly, reoccurring during each playback or display of the copyrighted work. For instance, a video-editing company might alter copyrighted movies by selling filters that omit certain scenes and mute certain dialogue only during real-time playback of the home video.70
As shown below, numerous plaintiffs have objected to any unauthorized alterations of their copyrighted works, whether in the form of static or dynamic modification, regardless of whether the defendants actually copied their works. Significantly, the pace of litigation appears to be increasing, making the resolution of this issue timely and important. In the first ten years following enactment of the 1976 Act, there was only one case, Midway Manufacturing Co. v. Artic International, Inc. ,71 in which a plaintiff alleged that a noncopying alteration infringed the derivative right. As demonstrated below, the number of cases addressing noncopying alterations has increased almost exponentially in the succeeding decades.
1. Static (one-time) alterations
As discussed previously in Part III.A, controversies over noncopying alterations prior to the enactment of the 1976 Act included the following static alterations: rebinding copyrighted print (for both restorative and nonrestorative purposes), manufacturing handbags from copyrighted fabrics, repainting hobbyhorses, and affixing designs removed from greeting cards and notepads to ceramic plaques. In each controversy, the defendants purchased copies of the respective plaintiff's works, altered the purchased copies, and then resold, or otherwise reused commercially, the altered copies. Following the 1976 Act, additional controversies arose over affixing copyrighted artworks to ceramic tiles, manufacturing baby bedding from copyrighted fabrics, and editing home video cassettes. Similar to their pre-1976 counterparts, the defendants in these more recent controversies purchased copies of the respective plaintiff's works, altered the purchased copies, and then resold the altered copies. In contrast to their pre-1976 counterparts, however, courts decided inconsistently whether these noncopying alterations infringed the respective plaintiffs copyrights.
In the post-1976 era, the most litigated example of static alteration arose from affixing prints of copyrighted artworks to ceramic tiles. A circuit split developed in the Seventh and Ninth Circuits over whether the creation of these ceramic tiles amounted to the preparation of infringing derivative works. In Mirage Editions, Inc. v. Albuquerque A.R.T. Co.,72 the defendant, without permission, purchased compilations of the plaintiffs copyrighted works, removed selected pages from the books, mounted the removed pages onto ceramic tiles, and then offered the tiles for sale.73 The Ninth Circuit concluded that the defendant art company made "another version" of the plaintiffs works, and held that this other version was an infringing derivative work.74 To arrive at its conclusion, the court explained, "The protection of derivative rights extends beyond mere protection against unauthorized copying to include the right to make other versions of, perform, or exhibit the work."75 From the context, it appears that the Ninth Circuit equated copying with reproduction, but the court never explained why making another version of, performing, or exhibiting a work are not forms of "unauthorized copying." Two district courts in the Ninth Circuit have since followed the holding of Mirage; one district court found (and the Ninth Circuit affirmed) that affixing individual note cards to ceramic tiles created derivative works,76 and another found that disassembling a copyrighted work and separately framing the individual pages likewise created derivative works.77
A split in the circuits developed when A.R.T. Co. (formerly Albuquerque A.R.T. Co. in Mirage) successfully defended the same practice of mounting note cards onto ceramic tiles that the Ninth Circuit previously rejected. In Lee v. A.R.T. Co.,7S the Seventh Circuit expressly rejected the Ninth Circuit's distinction between tile-art mounting and traditional methods of framing.79 Instead, it found that the copyrighted note cards were not transformed80 by the tile art process because each piece of artwork "depict[ed] exactly what it depicted when it left [the] studio."81 The court opined that if the plaintiffs interpretation of the derivative right were followed, then "any alteration of a work, however slight, [would] require[] the author's permission."82
In addition to the tile-art cases, courts have also addressed static alterations to copyrighted fabrics and videocassette tapes. Addressing alterations to copyrighted fabrics, a district court, in Precious Moments, Inc. v. La Infantil, Inc.,8* held that baby bedding manufactured with the plaintiffs copyrighted fabrics were not derivative works. In a similar fashion to the Seventh Circuit in Lee, the court opined that Mira-ge and its progeny erroneously "open the door for the most trivial of modifications to generate an infringing derivative work."84 In Pur amount Pictures Corf. v. Video Broadcast Systems, Inc.,8i a district court found that the defendant's appendage of commercial advertisements to the plaintiffs videocassettes did not create derivative works of its copyrighted motion pictures. Finding Mirage inapplicable (without disagreeing with the merits), the district court concluded simply, "The court does not recognize the addition of [defendants' advertisement] to a videocassette in any way recasting, transforming or adapting the motion picture."86 Perhaps in reference to the holding in Mirage, the court added, "The result is not a new version of the motion picture."87
2. Dynamic (real-time) alterations
During the pre-1976 era, most controversies over noncopying alterations arose from static (one-time) alterations to copies of protected works. Dynamic (real-time) alterations arose during the post-1976 era.88 Most of these controversies surfaced in digital media, such as video games, website advertising, and digital home videos. In each of these controversies, defendants, without the permission of the plaintiff, made products that added onto, plugged into, or otherwise complemented the respective plaintiff's copyrighted works. These products altered the real-time appearance of the plaintiffs work for a temporary period. Similar to their counterparts deciding static alterations, courts deciding controversies addressing dynamic alterations have inconsistently decided whether these noncopying alterations infringe the respective plaintiffs copyrights. Again, courts have disagreed over the relative breadth of the derivative right. Because some of the cases presented below refer to the cases decided before them, they are presented chronologically.
Among the dynamic-alteration cases, video-game components have provided the most prevalent source for litigation. A video-arcade enhancement kit was the first instance of a noncopying alteration to be found an infringing derivative work under the 1976 Act. After several courts had decided instances of video-arcade-game copying,89 Midway Manufacturing Co. v. Artic International, Inc.90 addressed enhancement kits that merely altered, rather than copied, the plaintiffs arcade games. Midway held the defendant manufacturers liable under a theory of contributory infringement.91 Because some of the replacement kits only interacted with the plaintiffs arcade game92-temporarily altering the real-time game speed93-Artic found that a derivative work was created by a noncopying, add-on component that altered an audiovisual work only during real-time.94 Artic's novel holding95 has been unwieldy, as the following discussion demonstrates.
Artic even influenced courts confronted squarely with evidence of copying, persuading some to rest their holdings on broad alteration grounds, rather than evidence of copying. In 1986, two federal district courts relied on the Seventh Circuit's decision in Artic to hold that the defendants infringed the respective plaintiffs' copyrights by manufacturing alternative cassette tapes that animated the then-popular Teddy Ruxpin talking-bear toy.96 Although neither case addressed a strictly noncopying alteration,97 the courts decided them as if they did. Citing Artic, the courts ruled on infringement claims in such a way that made the defendants' copying practically irrelevant. In Worlds of Wonder, Inc. v. Veritel Learning Systems, Inc.,98 the district court found the case "analogous" to Artic."
In this case, the Veritel cassette inserted into Teddy Ruxpin creates a substantially similar audiovisual work which is altered in much the same as a Galaxian game is altered by a speed up kit. Thus, the modification of the copyrighted Teddy Ruxpin toy also falls within the definition of derivative works.100
Thus, although Veritel might have rested its decision on evidence that the defendant had copied the plaintiffs works in order to make its own tapes,101 it instead relied on the fact that the defendant's tapes had altered the plaintiffs works. Significantly, Veritel did not consider whether independently created tapes-that is, tapes that operated in the Teddy Ruxpin toy but that did not mimic the stories, voice, or set of movements from the plaintiff's tapes-would have infringed the derivative right. Worlds of Wonder, Inc. v. Vector Intercontinental, Inc.,102 a companion case in another district, however, did. Vector suggested that even noncopied tapes would infringe the derivative right because the copyright of the animated bear extends to every configuration of the toy.103 Thus, although both cases addressed copying alterations, the courts rested their holdings on noncopying grounds. In so doing, they impliedly endorsed Artic's holding that noncopying alterations are infringing derivative works, even if the facts did not properly present such a case.
Some courts, however, declined to extend Artic beyond its holding. Two years following the Worlds of Wonder cases, the Fifth Circuit, in Vault Corp. v. Quaid Software Ltd.,104 declined to extend Artic, holding that the defendant's digital key was not a derivative work of the plaintiffs disk-protection device, even though the key effectively circumvented the protection of the plaintiffs device.105 The plaintiff cited Artic, in the words of the court, "for the proposition that a product can be a derivative work where it alters, rather than copies, the copyrighted work."106 The Fifth Circuit, however, declined to opine on the merits of that proposition, deciding instead to distinguish Artic on the basis that it did not hold the replacement circuit boards to be derivative works, but rather the altered audiovisual displays caused by the replacement boards. Because the plaintiff in Vault alleged that the digital key itself was a derivative work, the court concluded that Artic was inapplicable.107
Several years later, Lewis Galoob Toys, Inc. v. Nintendo of America, Inc.108 substantially limited the holding of Artic by holding that a different video-game component did not prepare derivative works. In Lewis Galoob Toys, the Ninth Circuit rejected Nintendo's claim that an enhancement component (the "Game Genie") created derivative works of its copyrighted video games. Similar to the "Galaxian" circuit boards at issue in Artic, the Game Genie in Lewis Galoob Toys altered the play of the plaintiffs copyrighted game.109 But unlike the "Galaxian" circuit boards, the Game Genie was not a replacement part-it attached independently to Nintendo's game system.110 The Ninth Circuit found this fact dispositive in distinguishing Artic,111 even though both enhancement kits had the same effect-speeding up game play.112 The court also appears to have distinguished Artic on the basis that the replacement "Galaxian" boards copied the plaintiffs original boards.113 It is unclear, however, how the Ninth Circuit concluded that the defendant's "Galaxian" replacement boards copied the plaintiffs original boards, when Artic suggests the exact opposite.114 The court also distinguished Mirage, concluding that, although the ceramic tiles physically incorporated the copyrighted works, the Game Genie did not.115
In Micro Star v. Forwigen Inc.,116 the Ninth Circuit addressed yet another video-game component and found, in this case, that the component infringed the derivative right. Like previous cases, the plaintiff, Formgen Inc., alleged infringement for the unauthorized distribution of add-on components that modified the plaintiffs video games; unlike previous video-game cases, however, the plaintiff actually supplied the users with the means to create the allegedly infringing components. Formgen's video game, "Duke Nukem 3D," included a "Build Editor," which allowed game users to develop their own player levels. Formgen also encouraged users to post their game levels on the Internet for shared use by other users. When the defendant, Micro Star, downloaded 300 user-created levels and sold them on a CD, Formgen alleged infringement of the derivative right.117 Although Micro Star arguably only copied the efforts of the game's users, the court analogized the game levels to motion picture sequels and held them to be derivative works of the "Duke Nukem 3D" story itself.118
Although other noncopying-alteration controversies have divided courts, there appears to be a general consensus, at least among several federal district courts, that website-advertising technologies do not prepare derivative works. Litigation over website advertising has surfaced in two different contexts-framing (inline linking) and pop-up dialogue boxes. In the late 1990s, several plaintiffs alleged infringement after the respective defendant's website "framed" the respective plaintiffs site.119 Websites that frame other sites contain inline links in their own (host) sites that direct the user's browser to display content from the target (or framed) site within the frame of the host (or framing) site.120 Frames might include a name or logo,121 links to other websites (or other selectable options related either to the host's or the target's business),122 and advertisements.123 Some frames mask or otherwise partially obscure the target site, potentially modifying the appearance of the content or advertising of the target site.124 The frame may even replace the target site's content or advertising with its own125-prompting some to refer to these as "parasitic website[s]"126(or "para-sites"127for short).
Unfortunately, none of the courts that have entertained these complaints have reached a decision on the merits of the copyright claims,128 so whether framing prepares infringing derivative works is an unanswered question before the courts. Legal commentators, however, have not hesitated to offer their opinions.129 Although some parties and commentators appear to characterize the host (or framing) sites as reproducing the target (or framed) site,130 careful analysis of the inline linking at issue demonstrates that host sites merely direct the user's browser to display the target site within the host site; thus, the frames alter or modify the real-time appearance of the framed sites, but they do not reproduce them.131 Whether framing will be determined to infringe the derivative right is an important question because of the scope of Internet technologies that may utilize it in one way or another.132
More recently, litigation over website advertising has focused on the use of pop-up windows, which have been consistently found not to infringe the derivative right. District courts across the country have entertained complaints (alleging, inter alia, infringement of the derivative right) against two advertising network operators, WhenU.com ("WhenU") and the Gator Corporation133 ("Gator").134 WhenU and Gator "bundle" ad-ware programs with certain applications freely available for downloading (such as a weather forecasting desktop display).135 Once installed, the ad-ware program causes site-specific,136 third-party137 advertisements to appear whenever the user browses a targeted website.138The owners of these sites might object to these pop-up advertisements for many reasons. For instance, pop-up ads may interfere with the visitors' use of the targeted site,139 may confuse visitors as to the true source of the advertisements,140 and/or may discourage visitors of the targeted sites from returning.141 Plaintiffs have alleged, inter alia-, that the adware programs prepare derivative works because the pop-up advertisements modify the appearance and presentation of the plaintiffs' websites (on the screen of the ad-ware user).142
To date, no district court has held that these ad-ware programs prepare derivative works.143 These courts have relied on either Lee or Lewis Galoob Toys to reach essentially the same conclusion that popup ads do not recast, transform, or adapt the target websites because the ads do not change the sites.144 The two courts that relied on Lee reasoned that pop-up ads could not be derivative works because it would mean that a user creates a derivative work upon opening any window while another is already open.145 Notwithstanding the defendants' success with regards to the copyright claims, some of the plaintiffs have enjoined the distribution of the respective defendant's programs, at least temporarily, on other grounds (such as trademark infringement);146 moreover, other actions are still pending.147
Of all the controversies arising from noncopying alterations, the most publicized controversy surrounds home-video filtering (and editing). Home-video filtering companies produce data filters that instruct digital video disc players to skip images and mute sounds marked as objectionable by prescreening employees of the filter companies. As explained in Part I, home-video filtering became the subject of litigation after a franchisee of the popular video-editing company CleanFlicks initiated a lawsuit against the Directors Guild of America. Because Congress intervened-expressly exempting video filtering from copyright infringement with the Family Movie Act of 2005148~before a substantive decision was reached in the case, the controversy is mentioned here only briefly. Although the videofiltering companies were recently dismissed as parties to the case-in light of the Family Movie Act of 2005-litigation is still pending with respect to several video-editing companies.149 Video filtering (and editing) will be discussed in more detail below in Part IV.B.3.
In summary, courts have inconsistently decided cases addressing noncopying alterations under the 1976 Copyright Act. As the previous discussion observed, some courts have found that unauthorized, noncopying alterations infringe the derivative right, while other courts have not. Even courts that reach similar outcomes do not arrive at their conclusions for the same reasons. Owing, at least in part, to the unpredictable case law surrounding noncopying alterations, Congress has already intervened in one recent controversy, expressly authorizing video-filtering technologies.
IV. EMPHASIZING THE COPY IN COPYRIGHT
To avoid continued uncertainty in litigation and to remedy the future need for additional congressional intervention, this Comment proposes a simple solution: requiring evidence of copying-that is, evidence of the intentional multiplication of embodiments of the allegedly infringed work-before finding infringement of the derivative right. This solution does not require new legislation150 or new judicial doctrine.151 It simply requires courts to reemphasize a basic principle of copyright law-there is no copyright infringement, even of the derivative right, without evidence of copying. In short, this Comment urges courts to emphasize the copy in copyright. Although holding noncopying alterations not to infringe the derivative right is contrary to at least two federal appellate court precedents, those decisions are either much maligned, generally misunderstood, and/or directly in conflict with the holdings of other circuits. Thus, requiring evidence of copying does not require a significant course change in federal case law. Even more importantly, this requirement would result in more consistent and predictable outcomes for present and future litigation over noncopying alterations, avoiding the need for narrow legislative exemptions, such as the Family Movie Act of 2005.152 This Part first argues why noncopying alterations do not prepare infringing derivative works, and then analyzes how past and present controversies would be resolved by requiring evidence of copying before finding infringement of the derivative right.
A. Why Now-copying Alterations Do Not Prepare Infringing Derivative Works
Simply stated, noncopying alterations do not prepare infringing derivative works because they do not copy. Traditionally, copying has been a necessary element to prove infringement, and the 1976 Copyright Act did not change this fundamental requirement. In addition, as demonstrated below, the text of the 1976 Copyright Act implies that noncopying alterations do not prepare infringing derivative works because a work may not be based upon another work unless the derivative copied, in some degree or other, the original. Thus, this section first argues that the general requirement for evidence of copying to prove infringement applies to the modern derivative right, and then argues that the "based upon" text of the 1976 Act specifically implies requiring evidence of copying to prove infringement of the derivative right.
1. The general requirement for evidence of copying to prove infringement applies to the modern derivative right
Evidence of copying has long been a bedrock requirement for any claim of copyright infringement. One prominent commentator went as far as to call it a principle of "copyright gospel" that copyright "infringement will be found only if defendant's work copies from plaintiffs [work]."153 As shown below, this conclusion, as applied to the present-day reproduction right, is safely rooted in the Supreme Court's consistent interpretation of copyright as conferring the right to multiply copies-or, by negative implication, as conferring the right to exclude others from multiplying copies. Its broad implication-that infringement of the derivative right requires evidence of copying-is, admittedly, more difficult to confirm.
a. Traditionally, copyright infringement required proof of copying. During the years that the derivative right developed, the Supreme Court repeatedly affirmed that copyright protected only against copying. Interpreting the original Copyright Act of 1790, the Court observed, in Stephens v. Cady,154 "The copy-right is an exclusive right to the multiplication of copies."155 At the time, copyright only granted authors the exclusive rights of "printing, reprinting, publishing or vending";156 subsequent cases, however, continued to define copyright as the right to multiply copies, even though Congress had expanded copyright to include additional derivative rights. For instance, Bobbs-Merrill Co. v. Straus157 defined the "main purpose of the copyright statutes" to be "the right to multiply copies,"158 even though the 1870 Act had already expanded copyright protection to include the rights to translate and to dramatize works. Arguably, these additional derivative rights were not the "main purpose" of copyright, but were merely incidental protections. Mazer v. Stein159 concluded unequivocally, however, "The copyright protects originality rather than novelty or invention-conferring only 'the sole right of multiplying copies.'"160 Significantly, Mazer interpreted the 1909 Act, which granted the most expansive protection for derivative rights prior to the 1976 Act.161 How then could Mazer conclude that copyright conferred only the sole right to multiply copies when the statute presently enumerated derivative rights in addition to the traditional reproduction rights162 of printing, reprinting, and publishing?
One reasonable explanation is that the Court considered derivative works, such as translations and dramatizations, to be copies of original works in the same manner that a reproduction was considered to be a copy. Under this interpretation of Mazer, the addition of derivative rights to the statute did not change the fundamental purpose of copyright, which was to prohibit the unauthorized multiplication of copies-that is, unauthorized copying-because derivative works were, by implication, considered to be copies as well. Accordingly, Mazer's subsequent observation-"Absent copying there can be no infringement of copyright"163 was, by implication, equally applicable to infringement of the derivative copyrights. As such, there could have been no infringement of these derivative rights absent evidence of copying-that is, absent some proof that the defendant had multiplied copies of the plaintiffs work by, for instance, creating a translation or dramatization based upon that work.
Significantly, the Supreme Court never found copyright infringement absent at least some evidence of copying, which supports the inference that copying was a requirement for all infringement cases, including alleged infringement of the thenrecognized derivative rights. Admittedly, the Supreme Court never directly addressed whether evidence of copying was required for alleged infringement of the then-recognized derivative rights.
Prior to the 1976 Copyright Act, however, lower courts consistently rejected attempts to expand copyright to prohibit noncopying activities, such as noncopying alterations, as demonstrated in Part III.A. For instance, courts found no infringement for rebinding books,164 for binding comic magazines together,165 for manufacturing handbags from designed fabric,166 for repainting a hobbyhorse,167 or for affixing designs removed from greeting cards and notepads to ceramic plaques.168 In each case, the defendant never copied-that is, never intentionally multiplied embodiments of-the respective plaintiffs works. One of these courts, in reaching its conclusion, relied expressly on the Supreme Court's characterization of copyright as the exclusive right to multiply copies. In Fawcett Publications v. Elliot Publishing Co.,169 the defendant purchased secondhand copies of plaintiff's comic book and subsequently bound them together with other comic publications (not owned by the plaintiff).170 Fawcett, citing BobbsMerrill, noted: "The decisions appear to be uniform that the purpose and effect of the copyright statute is to secure to the owner thereof the exclusive right to multiply copies."171 Accordingly, Fawcett held that there was no copyright infringement because "the defendant ha[d] not multiplied copies but merely resold the plaintiff's under a different cover."172 Many other courts similarly found the absence of copying to be the dispositive issue.173
In summary, prior to the 1976 Copyright Act, the Supreme Court held expressly that copyright infringement, in general, requires evidence of copying. Moreover, the Supreme Court never found copyright infringement absent proof of copying. Finally, almost all of the lower courts deciding noncopying-alteration cases rejected infringement claims on the basis that copyright infringement requires evidence of copying.
But do the same principles of copyright infringement, formed during the years when copyright primarily prohibited only unauthorized reproductions,174 apply to the modern-day derivative right? Specifically, does the traditional infringement requirement for proof of copying apply to claims against noncopying alterations alleged to be derivative works under the 1976 Copyright Act?
b. Feist preserved the traditional infringement requirement for proof of copying even after the 1976 Act. When the Court decided Feist Publications, Inc. v. Rural Telephone Service Co.,175 interpreting the 1976 Act, it stated emphatically, "The sine qua non of copyright is originality."176 In other words, without originality there is no copyright. Originality, according to Feist, means that "the work was independently created by the author, as opposed to [being] copied from other works, and that it possesses at least some minimal degree of creativity."177 By implication, complete originality precludes a finding of copyright infringement.178 Even more directly, Feist held, "To establish infringement, two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original."179 Thus, even after the inclusion of the broadly defined, modern-day derivative right in the 1976 Copyright Act, the Supreme Court restated the traditional rule that copyright infringement requires proof of copying. Although the facts at issue only implicated the reproduction right, not the derivative right,180 Feist, nevertheless, did not make its infringement formula contingent on the reproduction right, making it presumptively applicable to the derivative right.
Whether the infringement formula stated in Feist applies beyond the reproduction right should be the threshold question for any court deciding an infringement claim regarding the derivative right. Surprisingly, no lower courts addressing derivative-works cases have asked this question. Although most, if not all, courts addressing allegedly copying derivative works-that is, derivative works that have allegedly copied original works-determine whether, in fact, there is evidence of copying,181 courts addressing noncopying alterations have not directly addressed the question. Some have cited the infringement formula in Feist,182 and others have cited similar formulations,183 but many courts have ignored any infringement formula requiring proof of copying.184 Even more problematic, courts that have required proof of copying have found infringement absent any such proof.185 Furthermore, those courts that have not found infringement have based their decisions on reasons other than absence of copying.186 Only a very small minority of courts appear to have concluded that noncopying alterations do not infringe because they do not copy.187 The apparent inattention to Feist's formula in cases addressing noncopying alterations, as well as the corresponding confusion over evidence of copying, may be attributable, primarily, to two factors: (1) many noncopying alterations appear to copy; and (2) copying has been redefined by some to mean infringement of any exclusive copyright, including the derivative right.
(1) Many noncopying alterations appear to copy. Many noncopying alterations appear to meet all of the standard elements for establishing circumstantial proof of copying-that is, the elements articulated by the seminal second Circuit opinion in Arnstein v. Porter188-including: (1) access to the copyrighted work, and (2) substantial similarity between the copyrighted work and the allegedly infringing work. In every noncopying-alteration case, the defendant had access to the copyrighted work. In fact, it was the acknowledged business practice of each defendant to alter copies of the respective plaintiff's works; proof of access, therefore, was obvious. Furthermore, altered copies appear substantially similar to the original copies. Speeded-up video-game play appears substantially similar to unaltered game play;189 prints affixed to ceramic tiles appear substantially similar to those same prints before affixation;190 and filtered home-video playback appears substantially similar to unfiltered playback.191 Thus, some courts have summarily concluded that altered copies were substantially similar to the original copies.192 What these courts have neglected is the most fundamental, but most understated, element of copying-multiplication of embodiments of the work. The defendants in the above-mentioned alteration cases-speeded-up video games, tile art, and filtered home videos-did not create additional copies (or embodiments); instead they altered existing copies. Courts have improperly analyzed the elements for circumstantial proof of copying without ever asking, in the first place, whether there was actual copying-that is, intentional multiplication of embodiments of the work.
In most infringement cases, implicating either the reproduction or the derivative right, the "multiplying element" of copying is obvious, and courts do not even bother proving the point, answering instead whether the defendant had access to the plaintiffs work and whether the work created by the defendant sufficiently resembles the plaintiffs work such that the court may reasonably infer that the defendant copied the plaintiffs work. Courts rarely must answer whether the defendant created something additional in the first place. For instance, in deciding whether one musical composition reproduced another composition,193 there was no need for the court to prove that the allegedly copying composition was an additional creation; the only question was whether that additional creation embodied the original composition. The same was true with regards to an allegedly copied theatrical play194 and an allegedly copied illustration.195
Similarly, courts often assume the "multiplying element" for infringement claims in derivative-works cases. Thus, courts did not address whether a motion picture based on a book196 or a sequel based on a previous movie197 multiplied embodiments of these respective works. Again, such multiplication was obvious because the defendants created embodiments of their works in addition to the existing embodiments of the respective plaintiffs works. Accordingly, the question before the courts, in most infringement cases, is whether the defendant had access to the plaintiff's works and whether the defendant's creations sufficiently resemble the plaintiffs works-that is, whether the defendant copied the plaintiff's works.
This problem is easily correctible. Courts simply must be advised that noncopying alterations do not necessarily copy the original works they alter; some alterations modify existing copies, without multiplying additional copies (or embodiments), of works. Emphasizing the "multiplying element" of copying preserves the underlying motivation for copyright, as articulated by the Supreme Court-protecting the right to multiply copies (or embodiments).
(2) Copying has been redefined by some to mean infringement of any exclusive copyright, including the derivative right. The apparent inattentiveness to Feist's infringement formula may also be attributable to the sentiment that "copying" is "shorthand" for infringing any of the exclusive rights in section 106 of the Copyright Act.198 If "copying" just means infringing one of the exclusive rights, then any infringement of the derivative right would necessarily be copying, making Feist's requirement for evidence of copying tautological. Although only a few courts have expressly held that "copying" means infringement of any exclusive copyright,199 many more courts appear to agree tacitly, either leaping immediately into the question of whether a work is derivative without ever addressing whether the defendant copied the plaintiff,200 or deciding cases for reasons other than evidence of copying.201 The unfortunate consequence of this tautology is that it removes the most fundamental element of copyright-evidence of copying-and thus opens the door for infringement suits against noncopying defendants.
Requiring evidence of copying for every case of copyright infringement, however, is potentially problematic because, arguably, some of the exclusive rights may be infringed without copying. The 1976 Act granted copyright owners the exclusive rights to reproduce copies of,202 to prepare derivative works based upon,203 to distribute copies of,204 to perform publicly,205 and to display publicly their copyrighted works.206 Arguably, defendants who distribute or display unauthorized copies have not themselves copied. Thus, copyright infringement-at least of the distribution and display rights-does not require proof of the defendant's copying. If the distribution and the display rights appear to deal with unauthorized uses, not unauthorized copying, of protected works, does the derivative right, therefore, also address unauthorized uses, not just unauthorized copying?
Interpreting the derivative right to prohibit unauthorized uses is not reasonable given the historical development of the derivative right. In a sense, the derivative right and the performance right grew out of the early reproduction right as part of a gradually expanding view of what constituted unauthorized copying. Understood as such, the reproduction right excludes literal copying;207 the derivative right excludes copying into alternative mediums or markets;208 and the performance right excludes copying in live productions.209 Describing the reproduction, derivative, and performance rights as "copying" rights is consistent with the historical expansion of copyright, as discussed in Part II, in which Congress gradually extended copyright to include protection against unauthorized theater performances210 and against unauthorized derivative works, such as translations211 and dramatizations.212 If the derivative right enumerated in the 1976 Act "merely restat[ed] preexisting law in a more simple and concise way,"213 then infringement of the modernday derivative right requires proof of copying consistent with the pre-1976 case law described in Part III.A. Interpreting the derivative right, in contrast, as prohibiting unauthorized uses, such as alterations, would be a drastic expansion of copyright, effectively providing copyright owners with full claim to "moral rights" in their works. Arguably, the Visual Rights Act of 1990214 introduced limited protection for "moral rights." At least one appellate court, however, has expressed reluctance to provide through the "back door"-that is, through an expansive definition of the derivative right-that which Congress deliberately omitted from the Visual Rights Act.215
If, however, copyright infringement requires proof of copying how are the distribution and the display rights to be understood? Although there is no need for evidence of copying by the defendants in order to prove infringement of either the distribution or display rights, neither right may be infringed without proof of unauthorized copying by another party. These rights simply help copyright owners to enforce their copyrights against parties who profit from others' unauthorized copying. In the case of the distribution right, copyright owners may enforce their rights against distributors of unauthorized copies who did not themselves make the copies. Similarly, the display right enables copyright holders to prohibit the subsequent display of unauthorized copies.216 In effect, the distribution and display rights do not prohibit unauthorized uses, but rather uses of unauthorized copies. Thus, infringement of every exclusive right requires some proof that either the defendant or a third party copied.
In summary, evidence of copying has always been an element of copyright infringement. Significantly, this conclusion was reaffirmed by the Supreme Court, in Feist Publications, Inc. v. Rural Telephone Service Co.,217 which was decided after enactment of the 1976 Copyright Act. Although Feist, arguably, only applied to the reproduction right, Feist's unequivocal requirement should make evidence of copying presumptively necessary in derivative-rights cases as well. Few courts deciding controversies over noncopying alterations, however, have required plaintiffs alleging infringement of the derivative right to prove evidence of copying. Some courts have likely ignored the requirement for copying because many noncopying alterations appear to copy. Future courts should recognize the difference between modifying a copy and multiplying a copy. Other courts have likely ignored the requirement for copying because "copying" has been redefined by some to mean infringement of any exclusive copyright, including the derivative right. Future courts should reject this tautology because it obscures the most fundamental element of any claim for copyright infringement-evidence of copying! Furthermore, courts should reject attempts to define the derivative right as prohibiting unauthorized uses of copyrighted works, thereby granting copyright owners broad claims to "moral rights," which Congress deliberately omitted from the Visual Artists Rights Act.
2. "Based upon" implies evidence of copying
In addition to the long-established precedent that copyright infringement requires evidence of unauthorized copying, the text of the 1976 Copyright Act specifically implies that evidence of copying is required to prove infringement of the derivative right. There are two relevant sections of the Act: Section 106(2), which defines the exclusive rights granted to copyright owners, and Section 101, which defines certain terms used in the Act.
a. Section 106(2) implies evidence of copying. Section 106(2) of the 1976 Copyright Act grants copyright owners "the exclusive right to . . . prepare derivative works bused upon the [owner's] copyrighted work."218 By negative implication, a work is an infringing derivative work if it is based upon the allegedly infringed copyrighted work. What does it mean for a derivative work to be "based upon" a copyrighted work? As demonstrated below, a work is based upon another work only if it copied that work. Thus, the statutory language, requiring an infringing derivative work to be based upon the allegedly infringed work, requires evidence of copying.
At first glance, the "based upon" requirement may appear to broaden, not limit, the definition of infringing derivative work. After all, every creative work in one form or another is based upon preexisting works, as illustrated by Justice Joseph Story's oft-quoted observation regarding copyright: "In truth, in literature, in science and in art, there are, and can be, few, if any, things, which, in an abstract sense, are strictly new and original throughout."219 Closer scrutiny, however, reveals several significant limiting factors. For example, because it is axiomatic that a work may not be based upon itself, the preparation of an infringing derivative work necessarily requires the creation of another work in addition to the original work. Next, because an additional work is not necessarily based upon the original work, the preparation of an infringing derivative work requires that the additional work embody the original work, or its elements. Finally, because an independently created work, even if it embodies the same or similar elements, is not based upon another work, the preparation of an infringing derivative work requires evidence that the alleged derivative embodiment was created as a result of having copied the original work.
There are, therefore, three "based upon" elements: (1) creation of another work in addition to the original work; (2) embodiment of the original work in the new work; and (3) evidence of copying.220 It will be helpful to remember that "copying" is defined as the intentional multiplication of embodiments of a work.221 Furthermore, it will be helpful here to recognize that "based upon" is not coterminous with the concept of copying. Although a work that is based upon another preexisting work must have copied the preexisting work, copying a preexisting work does not always lead to a work that is based upon the preexisting work. A reproduction is not based upon the original work, even though a reproduction meets the latter "based upon" element-evidence of copying. A reproduction is not based upon the original work from which it is copied because a reproduction does not create another work in addition to the original work-that is, it does not meet the first "based upon" element; rather the reproduction creates an additional copy of the original work. Accordingly, a reproduction does not embody the original work in a new work because there is no new work. Thus, the second "based upon" element is also not satisfied.
An example illustrates that the three above-mentioned elements are identifiable in a work that-in common, everyday usage-is based upon another work. Consider a motion picture version of a novel. Commonly, the character scripts are based upon the novel's dialogues; actors' costumes and film sets are based upon the novel's descriptions; and action sequences are based upon the novel's plots. Often, these motion pictures are preceded by an announcement, such as, "Based upon the novel by . . ."or "Based upon a true story." Because a motion picture version of a novel is based upon that novel, the motion picture version should meet the three aboveidentified "based upon" elements. First, a separate motion picture is another work in addition to the original work, the novel. second, a motion picture version of a novel by definition embodies the elements of the original novel; otherwise it would not be called a version of the novel. Third, a motion picture version of a novel cannot be created but for the copying of the elements of the novel into the movie; an independently created motion picture that coincidentally embodied elements of the novel would not be called a version of the novel.
By definition, noncopying alterations do not meet the third "based upon" element-evidence of copying. Is it possible, however, for a work to be based upon another work without having copied it? In other words, is evidence of copying a necessary element for one work to be based upon another work? The discussion below answers this question by way of example. In the following discussion, examples of three types of noncopying alterations-alternative displays, alternative configurations, and compound works-will be discussed. In each example, common, everyday use of the phrase "based upon" suggests that these noncopying alterations are not based upon the respective preexisting works; instead, they are the respective preexisting works, albeit altered copies of them. Because all of the noncopying alterations identified in Part III fall into one of these three categories (or combinations of them), there is a reasonable inference that there are no noncopying alterations that are based upon preexisting works. Accordingly, as it is reasonably inferred that noncopying alterations cannot be based upon preexisting works, it is further inferred that evidence of copying is a necessary element for one work to be based upon another work.
(1) Alternative displays and alternative configurations are not based upon preexisting works. Several examples demonstrate that neither alternative displays nor alternative configurations of a work, two types of noncopying alterations, are based upon that work.
Consider the example of an alternative display of a motion picture viewed on a home video. Most, if not all, entertainment systems include functions that allow consumers to alter the display of home-video versions of motion pictures during real-time playback. For instance, the volume of a video soundtrack may be increased or decreased, or muted altogether. Similarly, segments of a video may be viewed in fast forward or reverse. Additionally, segments may be skipped entirely by stopping play and skipping ahead or behind. These alternative playbacks, however, are not based upon the original motion picture. A motion picture viewed without the soundtrack is not based upon that motion picture-it is that motion picture, albeit a silent showing of it. A motion picture viewed with certain scenes played in fast forward is not based upon that motion picture-it is that motion picture, albeit a fast-forwarded showing of it. Everyday, commonplace usage of the phrase "based upon" resists application to these alternative means of displaying the work, suggesting that these noncopying alterations are not based upon the motion picture.
Accordingly, these alternative displays should fail to meet at least one of the three "based upon" factors. Indeed, they fail to meet all three requirements. Because there is only one work, the motion picture, it goes without saying that there are not multiple works. In other words, an alternative display of a work does not create another work in addition to the original work. Because there is no new work in addition to the preexisting work, the two remaining "based upon" elements also are not satisfied. With regards to the second element, a new work cannot embody an original work if there is no new work. Although the creation of a new work is not necessary to meet the third requirement of copying, there must at least be a new copy of the original work, which is also absent here. Thus, alternative displays of a work do not meet any of the three identified "based upon" elements.
What is the difference between a motion picture version of a novel, which is based upon a preexisting work, and a muted or fastforwarded display of a motion picture? More specifically, is not a motion picture version of a novel similarly just an alternative version for displaying the original expression embodied by the novel? In an abstract sense, a motion picture version might be described as an alternative display of the novel, but it is also much more. A motion picture version of a novel is a new work (the motion picture) that "recasts, transforms, and adapts"222 a preexisting work (the novel). In contrast, the alternative versions for motion picture playback described above-muting sound or fast forwarding scenes-are not new works., but rather alternative displays of copies of the original work. An alternative display of a work is not based upon that work-it is that work, albeit displayed differently.
Another example demonstrates that an alternative configuration of a work, another type of noncopying alteration, is also not based upon that work. Consider many popular toys and games that are configurable-that is, their parts may be rearranged during play. For example, some toys consist of basic building blocks and other shapes that may be configured to build models of complex machines, buildings, etc. Similarly, many dolls have detachable parts, clothes, and accessories that may be arranged differently. More complex toys, such as video games, have a database of sounds and images that may be rearranged during game play according to the decisions of the game player. Many of these toys and their elements are copyrightable. An alternative configuration of a toy, however, is not based upon that toy-it is that toy, albeit configured differently. Everyday, commonplace usage of the phrase "based upon" resists being applied to describe alternative configurations of toys, suggesting that these noncopying alterations are not based upon the toys. Accordingly, these alternative displays should fail to meet at least one of the three "based upon" factors. Indeed, they fail to meet all three. Alternative configurations, similar to alternative displays, do not create another work in addition to the original work, which eliminates the possibility of meeting either of the first two "based upon" elements. Additionally, there is no evidence of copying, the third "based upon" element.
Arguably, some alternative displays and some alternative configurations may add sufficient original expression to create a new work, thereby meeting the first "based upon" factor, and most likely the second factor. In these kinds of noncopying alterations-defined below as compound works-however, there is not necessarily any evidence of copying, even though the works are created with copies of other works. Unauthorized compound works, therefore, are not necessarily infringing derivative works. As demonstrated below, an unauthorized compound work is not an infringing derivative work unless there is evidence of copying.
(2) Compound works are also not bused upon preexisting "works. Some noncopying alterations add sufficient expression such that the resultant alteration is a new work. In other words, copies of preexisting works may become the building blocks, or raw materials, for the creation of new works. For purposes of this Comment, a work that is created by assembling altered copies of other works is called a compound work-that is, a work created with copies of other works. Here it is important to distinguish between two ways in which one work may be created from another work. In the first instance, an author may create another work from an original work by copying recognizable elements of an original work into an embodiment separate from the original work. In the second instance, an author may create another work with copies of an original work. In other words, a work may be created by using copies of preexisting works as the building blocks, or raw materials, of the new work. These compound works are not based upon the works from which they were created because they do not meet the "based upon" requirement for evidence of copying. Accordingly, unauthorized compound works are not based upon their component works and, therefore, are not infringing derivative works.
An example is illustrative. A few years ago, digital computer technology made it possible to easily arrange a collage of pictures, which, taken as a whole, created an independent image.223 Consider an artist who purchases a collection of digital images-perhaps a collection of images from the movie Star Wars marketed for use as computer screensavers or for computer-desktop backgrounds-and who is granted rights only to a single digital copy of each image. Consider further that this artist uses a software collage program to arrange this collection of purchased images such that, taken as a whole, the resultant collage creates the image of one of the artist's own copyrighted works. This is an example of a compound work-a work created with copies of other original works. In essence, the artist used copies of copyrighted images as the building blocks, or raw materials, for a new work-the collage. Rather than creating a painting using watercolors or oils, this artist created an original work of art using copies of other artists' works. Has this artist prepared a work based upon other artists' works? No. Even though the resultant collage is created with copies of other original works, it is not based upon those works-it is those works, albeit a compound work made with copies of those works. In an analogous manner, an automobile is not based upon its parts-it is its parts, or rather it is comprised of its parts. Everyday, commonplace usage of the phrase "based upon" resists application to describe compound works, as it resists application to describe an automobile composition of parts.
Accordingly, a compound work, the collage in this example, should fail to meet at least one of the three "based upon" elements. Because the collage contains its own original expression-the arrangement of preexisting images such that an independent image is formed by their arrangement-in addition to the expression embodied in the preexisting images, the collage is a new work. The collage, therefore, meets the first "based upon" requirement-creation of another work in addition to the original work. It also meets the second "based upon" requirement-embodiment of the original work in the new work. Because the new work, the collage, comprises copies of the original works, it necessarily embodies those works. Those works are not embodied in the new work, however, as a result of copying, so the collage fails to meet the third "based upon" requirement-evidence of copying. This point is subtle. The new work embodies the original works because it was created with copies of those works, not because it copied those works. The collage, therefore, is not a derivative work of its component images.224 The collage is not based upon its component images any more than an automobile is based upon its parts; instead, the collage, similar to the automobile, is based upon its design-that is, the image forming the basis for the arrangement of the component parts.
A compound work, however, may be an infringing derivative work if it copied, without authorization, from another work. Consider another example of an artist who purchases a collection of Star Wars movie images. In the example above, the artist arranged the images in order to create an independent embodiment of one of the artist's own copyrighted works. Had the artist, instead, intentionally arranged the images in order to resemble a copyrighted work, such as an image of a popular character from Star Wars, then the resulting collage would be a derivative work of the copied Star Wars image. In this case, the resultant collage would meet the third "based upon" requirement-evidence of copying.
b. Section 101 also implies evidence of copying. Until this point, only Section 106(2)-which defines an infringing derivative work, by negative implication, as an unauthorized work based upon a copyrighted work-has been addressed. The Copyright Act, however, expressly defines a "derivative work" in Section 101, as follows:
A "derivative work" is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a "derivative work."225
Similar to Sction 106(2), this definition repeats the "based upon" requirement. In addition, the Sction 101 definition adds two lists of nonexhaustive examples, as well as a catchall phrase, in order to further clarify what it means for one work to be based upon another work. If the phrase "based upon" indeed implies evidence of copying, as advocated in Part IV.A.2.a, then the listed examples of works that are "based upon" other works, as well as the catchall phrase, must all be capable of being created as the result of some form of copying-that is, the intentional multiplication of embodiments of an original work.
Beginning with the first list, little explanation is required to demonstrate that translations, musical arrangements, dramatizations, fictionalizations, motion picture versions, sound recordings, and art reproductions intentionally multiply embodiments of original expression-that is, copy. For instance, a translation is, by definition, an intentional multiplication of an embodiment of the original text into a new language. Similarly, a sound recording is an intentional multiplication of an embodiment of a live musical performance into a reproducible medium. In each case, the resultant derivative work is based upon the preexisting work from which it was copied. It is difficult to hypothesize creating any of the above examples without some form of copying.
The inclusion of abridgments and condensations, however, requires a more searching explanation. Arguably, abridgments and condensations may be created without any copying. For instance, a secondhand bookseller might excise with a thick, black marker certain lengthy portions of popular novels, marketing these excised copies as "abridged" or "condensed" versions. Thus, the may statute include abridgments and condensations that are the result of alteration, rather than of copying. everal observations suggest, however, that the statute refers to copy-based, rather than alteration-based, abridgments and condensations. First, most commercially produced abridgments and condensations are distributed as standalone copies of the abbreviated versions, not as excised copies of the original. The statutory definition, therefore, likely refers to these kinds of abridgments and condensations. In response, it might be argued that it would be unnecessary to include these stand-alone abridgments and condensations in the list of example derivative works because the reproduction right would protect authors against the reproduction of those portions of an original text that were included in abbreviated versions. By implication, it might further be argued that the statutory definition, therefore, specifically contemplated noncopying abridgments and condensations-created by means of direct alteration-in order to extend protection beyond the limits of the reproduction right.
This argument, however, ignores the fact that many, if not most, abridgments and condensations require rewritten, and even additional, text in order to transition over the excised portions.226 Abridging or condensing works requires much more effort than merely reproducing those portions of the text that are chosen for abbreviated versions, including effort to rewrite the style, organization, and content of sentences, paragraphs, and chapters. If a certain event or character is excised in the process of abbreviation, then any reference to that event or character must be removed from all of the otherwise unmolested portions of the text. This may require extensive rewriting in order to make the omission unnoticeable. In each case that the abridgment or condensation rewrites original text, the abridgment or condensation must necessarily copy the style, organization, and content of the original text.
Having observed that abridgments and condensations require significant rewriting, it is reasonable to conclude that the reproduction right protects against the unauthorized copying of intact portions of a text, and that the derivative right protects against the unauthorized copying of style, organization, and content of a text. Accordingly, the inclusion of abridgments and condensations under the derivative right does not infer that the definition of derivative right includes noncopying alterations. Consistent with common practice, the preparation of abridgments and condensations typically requires evidence of copying.
Similarly, the inclusion of the broad, catchall phrase-"any . . . form in which a work may be recast, transformed, or adapted"-does not infer that the derivative right includes noncopying alterations because works may be "recast," "transformed," or "adapted" as a result of copying. In fact, with regards to the term "recast," it appears that only copying alterations would fit the description. Derived from the process of casting or molding, the term "recast," in the copyright context, suggests creating a new work from the copied cast or mold of a preexisting work. Indeed, it is difficult to imagine how a work could be "recast" without some evidence of copying.
The terms "transformed" and "adapted," however, may be interpreted to include both copying and noncopying alterations. Admittedly, these terms are commonly used without connoting any concept of copying. For instance, a child might adapt a bicycle helmet for use with a Halloween costume by attaching various decorative embellishments. Similarly, a family might transform their garage into a guestroom by painting and adding carpet. In both cases, the described alteration required no element of copying. The terms "adapt" and "transform," however, may also be used to indicate copying alterations. For instance, a musician might adapt a piece of music by rewriting it for a different set of voices and/or instruments. Similarly, an artist might transform a watercolor painting by repainting it with oils. In both cases, the described activity required the intentional multiplication of embodiments of the original work-that is, copying.
Apparently, the potentially broad application of the terms "transformed" and "adapted" has formed the primary basis for interpreting the derivative right to include noncopying alterations.227 Interpreting "transformed" and "adapted" broadly, however, ignores the "based upon" requirement.. The 1976 Copyright Act did not define derivative works to be any work that "recast, transformed, or adapted" a previous work; rather, the Act defined derivative works to be works that are based upon preexisting works in such a way that the resulting work "recast, transformed, or adapted" the preexisting work. Thus, although the terms "transformed" and "adapted" might be interpreted to include certain noncopying alterations, such alterations are not based upon preexisting works. With reference to the above examples, a bicycle helmet adapted for use with a Halloween costume is not based upon the original, unaltered helmet-it is that helmet, albeit adapted for another use with decorative attachments. Similarly, a garage that is transformed into a guestroom is not based upon the original, unaltered garage-it is that garage, albeit transformed with the addition of paint and carpet.
Stated simply, the catchall phrase in the Section 101 definition is only as broad as the interpretation of the "based upon" requirement. In other words, the catchall phrase must be interpreted in light of the "based upon" requirement. The inclusion of the broad, catchall phrase, therefore, does not infer that derivative works include noncopying alterations. Interpreting the catchall phrase to be limited to instances of copying is internally consistent because each of the terms in the catchall phrase may refer to activities requiring copying. Thus, interpreting the phrase "based upon" to require evidence of copying-as advocated in Part IV.B.2.a-is not inconsistent with the first list of examples and the accompanying catchall phrase in the Section 101 definition of "derivative work."
Interpreting "based upon" to require some form of copying is also consistent with the second list of examples in the Section 101 definition, though the point is more subtle. The second sentence of the definition lists editorial "revisions," "annotations," and "elaborations" as examples of derivative works, with the condition that these editorial modifications are sufficiently original when taken as a whole. At first glance, copying does not appear to be an element of any of these examples. Moreover, the definition continues, listing "other modifications, which as a whole, represent an original work of authorship" as examples of derivative works. Because originality is partly defined as the absence of copying,228 the second list appears to expressly contemplate noncopying modifications to be within the scope of the derivative right. From this initial perspective, the interpretation of "based upon" as requiring evidence of copying appears to be in jeopardy. Upon closer examination, however, editorial "revisions," "annotations," and "elaborations" likely require some form of copying, and the broad phrase "other modifications" should be interpreted in light of these examples to include only copying modifications.
Editors do not edit from scratch. Editorial revisions, much like rewritten sentences from abridgments and condensations, likely copy the style, organization, and content of the original text. Similarly, editorial annotations and elaborations depend upon the original text for context. These annotations and elaborations likely copy portions of the original text in order to transition into the new material being added or to refer to the original. The physics solutions at issue in Addison-Wesley Publishing Co. v. Brown229 provide a helpful example. Editorial annotations and elaborations likely paraphrase the original texts that they complement in a similar fashion that the physics solutions in Addison-Wesley paraphrased the original problems.230 Admittedly, some annotations and elaborations may not paraphrase or otherwise copy the texts that they complement, resting instead as freestanding additions to the original texts. These annotations and elaborations, however, are not properly described as editorial.2*1 Thus, each of the three enumerated examples of editorial modifications likely requires some form of copying. Because the context of "other modifications" suggests that the broad phrase refers to other editorial modifications, any elements common to the three enumerated examples are reasonably imputed to the interpretation of the otherwise open-ended phrase. Accordingly, the phrase "other modifications" should be interpreted to include only copying modifications, as the three enumerated examples all include an element of copying.
In summary, the definition of "derivative work," found in Section 101 of the Copyright Act, is consistent with interpreting the phrase "based upon" to signify the existence of copying. In other words, the Section 101 definition of "derivative work" is consistent with requiring evidence of copying before finding infringement of the Section 106(2) derivative right.
B. Application to Controversies
Although holding noncopying alterations not to infringe the derivative right is contrary to at least two federal appellate court precedents,232 those decisions are either much maligned, generally misunderstood, and/or directly in conflict with the holdings of other circuits. Thus, requiring evidence of copying does not require a significant course change in federal case law. Even more importantly, this requirement would result in more consistent and predictable outcomes for present and future litigation over noncopying alterations, avoiding the need for narrow legislative exemptions, such as the Family Movie Act of 2005.233 This section first examines each of the two federal appellate court decisions that squarely hold examples of noncopying alterations to infringe the derivative right, demonstrating that neither holding merits continued deference. This Section then examines how the video-filtering controversy might have been resolved without congressional intervention, which appears to have been initiated as a direct result of the contradictory case law surrounding noncopying alterations.
1. Mirage Editions, Inc. v. Albuquerque A.R.T. Co.
If, as advocated in this Comment, evidence of copying is required to prove infringement of the derivative right, then Mirage Editions, Inc. v. Albuquerque A.R. T. Co.234 and its progeny should be disavowed. As demonstrated by the following, many courts and commentators have already criticized Mirage; their reasons, however, are not consistent. If courts require evidence of copying before finding infringement of the derivative right, then Mirage and its progeny may be safely disavowed on a consistent basis.
Of all the noncopying, static alteration decisions, Mirage is the most heavily criticized by courts235 and commentators236 alike. Critics generally agree that the holding of Mirage-that is, that affixing lawfully purchased copies of a work onto ceramic tiles creates derivative works of that work-interprets the derivative right much too broadly, opening the door, as one court described, "for the most trivial of modifications to generate an infringing derivative work."237 If, as Mirage held, permanent affixation to ceramic tile creates a "new version" of the original work, then any permanent alteration to a copy of a work would create a derivative work, including, for example, framing, cropping, or labeling.238 Although such alterations, arguably, "transform" the work, it is doubtful that Congress intended, in the words of the Seventh Circuit, "[to] make[] criminals out of art collectors and tourists."239
Although many courts and commentators agree that the derivative right should be interpreted to eliminate the kind of alteration at issue in Mirage from the scope of the derivative right, critics of Mirage have not agreed on the appropriate "limiting doctrine."240 Some commentators conclude that the cr