DERIVATIVE VS. COLLECTIVE WORKS

IVAN HOFFMAN, B.A., J.D. 


        The ins and outs, the subtleties of the United States copyright law are complex and require the agile mind of an attorney with experience in these matters.   A case out of the Ninth Circuit Court of Appeals serves to illustrate the issue.

        In Jarvis vs. K-2, Inc., these were the facts in summary form:

        The plaintiff was a professional photographer who took thousands of photographs for the defendant company.  In the words of the Court,

               Unfortunately, this relationship eventually soured.

        I know that that is shocking; that parties that initially “loved” each other would find their relationship gone sour but, well, often it is the job of the writer to say what others will not.  Tongue in cheek aside, I have said many, many times: it is not contracts that destroy relationships.  Contracts are just easy targets.  It is the “I thought you said….” stuff that comes from either no contracts or poorly written ones that destroys relationships.  So for those who naïvely believe “we don’t need a contract, we’re [fill in the relationship…friends, brothers, etc. etc], my reply is “That is not only not my experience but not the experience in the real world.”  This case involved some written agreements, including ones related to the photographs in question and yet the parties still ended up spending probably hundreds of thousands of dollars, much time, trouble and uncertainty to resolve what perhaps could have been resolved with clearer agreements.

        The case involved numerous legal issues including the measure of damages for failure to accord credit as contained in the contracts between the parties.   However, for the purpose of this article, I will focus on the legal issues related to 24 photographs that were used in an advertisement “collage,” initially in print format during the contractual term and then, after the contractual term ended, the defendant scanned the collage containing those photographs and used it online.  And with regard to that issue, the legal question was whether such “collage” usage was a “collective” work or a “derivative” work under the copyright law.

The Agreement

        The Court stated:

The 2001 Agreement authorized K2 to “publish” Jarvis’ images in media including K2’s “brochures, print advertisements. . . posters, and electronically for the web so as to market [its] business.” K2 therefore acted within its rights whenit first created the collage ads and published them in the form of magazine inserts.  K2 also would not have breached the Agreement had it scanned the ads and placed them online during the time period authorized by the contract. These uses were (or would have been) examples of the “publi[cation]” in “posters” and “electronically for the web” contemplated by the Agreement.

However, the 2001 Agreement also contained language that explicitly limited the time period during which K2 could use Jarvis’ images. The “Usage” section of the contract specified that K2’s rights were for “2002-2003, ending May 2003.” Analogously, the “Term” section stated that K2’s “photo usage rights apply for the 2002-03 ski season, ending in May 2003.” This language plainly barred any use by K2 of Jarvis’ images after May 2003. … K2 notably fails to argue to the contrary, thus apparently conceding that its scanning and online display of the collage ads after May 2003 were not authorized by the Agreement.

Rather than claim that its post-May 2003 use of the collage ads was permitted by the 2001 Agreement itself, K2 relies on the collective works privilege of § 201(c). In relevant part, § 201(c) provides that, “[i]n the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.” K2 contends — and the district court agreed — that the collage ads were collective works and that even though the Agreement’s usage term had expired, K2’s scanning and online display of the ads were permissible uses under § 201(c). We disagree, because the ads were not collective works and thus not eligible for protection under § 201(c).

… Collective and derivative works are both defined in § 101:

A “collective work” is a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.

A “derivative work” is a work based upon one or more preexisting works, such as a translation, musical arrangement . . . art reproduction, abridgement,
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.”

Id. (emphasis added); see also id. (defining a “compilation,” of which collective works are a subcategory, as “a work formed by the collection and assembling of preexisting materials . . . that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship”); House Report at 122 (“[T]here is a basic distinction between a ‘joint work’ [by multiple authors], where the separate elements merge into a unified whole, and a ‘collective work,’ where they remain unintegrated and disparate.”) (emphasis added); 1 Nimmer on Copyright § 3.02 (“[T]he originality called for in a collective work consists of the collection and assembling of pre-existing works, while derivative work originality lies in the manner in which a preexisting work is transformed . . . .”).

        [Read also “Derivative Works” and “Derivative Rights and Web Sites.”]

        The Court found:

Under these statutory definitions, somewhat clarified by the legislative history, the collage ads were derivative rather than collective works. In accordance with his usual practice, Jarvis delivered all of his images to K2 in the form of identical square slides. The collage ads did not merely compile these slides as an album might, or as Jarvis’ own website does. See Chase Jarvis Portfolio, http://www.chasejarvis.com/ portfolio.html.  To the contrary, the ads shrank, expanded, distorted, overlaid and otherwise edited the original images, while also combining them with photos taken by other photographers, additional graphics, the K2 logo and marketing slogans.

The changes to which K2 subjected Jarvis’ images are examples of the “recast[ing], transform[ing], or adapt[ing]” and “editorial revisions, annotations, elaborations, or other modifications” that define derivative works. See § 101. Jarvis delivered the images to K2 in one form, and they were subsequently used in the collage ads in a quite different (though still recognizable) form. The ads did not simply compile or collect Jarvis’ images, but rather altered them in various ways and fused them with other images and artistic elements into new works that were based on — i.e., derivative of — Jarvis’ original images.

Conclusion

        I practice preventive law.  I have been at both the litigation table and the negotiation table and have found that doing deals right in the first instance, having thorough agreements  that clearly state what the parties intend, is much less expensive and much more productive than allowing another party, in this instance, a court, determine what the parties intended.  Help me is almost always cheaper than fix me.

Copyright © 2007 Ivan Hoffman.  All Rights Reserved.

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This article is not legal advice and is not intended as legal advice.  This article is intended to provide only general, non-specific legal information.  This article is not intended to cover all the issues related to the topic discussed.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  This article is based on United States law.  You should consult with an attorney familiar with the issues and the laws of your country.  This article does not create any attorney client relationship and is not a solicitation.

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