throbber
FILED: NEW YORK COUNTY CLERK 04/27/2016 04:24 PM
`NYSCEF DOC. NO. 36
`
`INDEX NO. 162183/2015
`
`RECEIVED NYSCEF: 04/27/2016
`
`OPINIONS BELOW
`
`The opinion of the Second Circuit affirming the district court’s ruling is reproduced
`
`at Appendix A and is not published.
`
`The district court did not issue any opinion with the final judgment but pre-trial
`opinions are reproduced in Appendix B,C, and D.
`
`JURISDICTION
`
`The Second Circuit issued its opinion on October 30, 2015. On January 19, 2016 this
`Court granted an extension of sixty days to submit this petition. The jurisdiction of
`
`this Court is properly invoked pursuant to 28 U.S.C. § 1254(1).
`
`CONSTITUTIONAL AND STATUTORY PROVISIONS INVOLVED
`
`This case involves 17 U.S.C. §§ 102, 103, 106, 107, and 501. These provisions are
`reproduced in Appendix D.
`
`STATEMENT OF THE CASE
`
`I. BACKGROUND- A TALE OF TWO LAWSUITS
`
`My name is Eve Hars and I am the defendant/appellant/petitioner in this
`
`case. In 2006 in New York City, I began producing, Point Break LIVE!, a funny, low
`
`budget stage presentation of the 1991 action movie, Point Break, about a gang of
`
`bank-robbing surfers that starred Keanu Reeves and Patrick Swayze. I produced it
`
`at the invitation of Jamie Hook, who was a partner in the original creation and
`
`staging of the production in Seattle in 2003.
`
` In 2007, with the permission of Hook I brought the show to Los Angeles on
`
`my own. Soon after arriving in Los Angeles I faced the prospect of two lawsuits from
`
`  
`
`1  
`
`

`

`two different parties claiming to own the copyright to Point Break LIVE! One threat
`
`came from Chris Taylor whose company LEI Development Projects, owned the
`
`copyright of the movie, Point Break, and the other from Jaime Keeling, who was
`
`Hook’s partner in the initial creation and run of the stage production back in 2003
`
`in Seattle.
`
` First came Keeling. Knowing nothing about copyright law and feeling
`
`threatened, I signed an agreement with Keeling for the rights to the show a few
`
`weeks before the opening of the Los Angeles production in September of 2007. The
`
`agreement presented by Keeling named her as “sole owner and creator” of Point
`
`Break LIVE! However on opening night of the show, a man approached me by the
`
`name of Chris Taylor. He told me that because Point Break LIVE! took so much
`
`from the movie that he owned the copyright to, it was from him, not Keeling, I
`
`needed to obtain license from in order to do the show.
`
`The problem with Keeling’s claim to sole ownership of the Point Break LIVE!
`
`script was the fact that it was an unauthorized derivative work in which the plot,
`
`characters, and dialogue were copied entirely from the movie, Point Break. Keeling
`
`had never obtained or even sought license or permission from Taylor for the use of
`
`his copyright. I also learned that it was Hook, not Keeling who came up with the
`
`most important and novel concept of the show- that of an audience member playing
`
`the lead role of Johnny Utah.1 That is what makes the show successful. There is
`
`nothing in Keeling’s script about any audience volunteers or audition process.
`
`                                                                                                                
`  
`
`1 The Second Circuit’s assertion that Keeling came up with the concept is false. Keeling never even
`disputed the fact that it was Hook that came up with that idea.
`
`2  
`
`

`

`Regardless of that, the only things added to the Point Break movie script by either
`
`Hook or Keeling were concepts, ideas, actions, and use of props describe by stage
`
`directions (i.e. elements listed as being not copyrightable under §102(b) of the
`
`Copyright Act).
`
`In light of Taylor’s copyright claim and Hook’s crucial contributions, I asked
`
`Keeling to lower the percentage of gross2 she was taking from the show but she
`
`refused and threatened to “unleash a lawsuit” against me. So what is a producer to
`
`do? Pay the person who actually owns the rights to the material being used (Taylor)
`
`or pay the person who copied that material without permission (Keeling)? What
`
`would the members of this Court do? After considering copyright law as it then
`
`stood, I chose not to renew the agreement with Keeling under the terms she
`
`demanded. Several months later, seeing the show was successful, Taylor began
`
`taking action to start a lawsuit against me, so I agreed to license the material from
`
`him. I paid Taylor $5,000 up front and another $10,000 in royalties for the rights to
`
`the Point Break movie script and I continued producing the show with license from
`
`Taylor and permission of Hook, who I consider a co-creator of Point Break LIVE!
`
`I did not hear from Keeling for several years. In all the years between 2003
`
`when the production started until 2010, by which time I had made it a critically
`
`acclaimed success, there was nothing preventing her from producing the show
`
`herself but instead, in December of 2010 she initiated a lawsuit against me accusing
`
`me of infringing on her alleged copyright of Point Break LIVE!
`
`                                                                                                                
`  
`
`2 Keeling was demanding 5% of gross which is the highest percentage usually given out to sole
`authors/rightsholders of scripts which would leave no room to accommodate other claims.
`
`3  
`
`

`

`II. DISTRICT COURT
`
`In the two years preceding the trial Keeling’s legal team insisted in various
`
`memorandums of law that although Keeling’s script was an unauthorized derivative
`
`work it was entitled to a copyright. They based this on a new legal principle on a
`
`passage from the Congressional Notes of the Copyright Act to conclude that if an
`
`infringing work qualifies as fair use under 17 U.S.C. §107, it is not really infringing
`
`and thus it is lawful and thus it is entitled to copyright protection under 17 U.S.C.
`
`§103(b). So here, fair use was not invoked by a defendant as a defense against
`
`infringement but rather by a plaintiff as a prosecutory instrument to accuse others
`
`of infringement on her unauthorized derivative work. The approach was approved
`
`and adopted by the district court judge who, in various orders denied our motion for
`
`the case to be dismissed as well as a motion for summary judgment and a motion to
`
`appeal those orders. The judge ordered a trial in which he, along with Keeling’s
`
`counsel, told the jury that if they found that Keeling’s script was a fair use of Point
`
`Break then she would have a valid copyright regardless of how much she
`
`appropriated from the movie. The judge instructed the jury that the four factors of
`
`fair use were “without content or meaning”3 and proceeded to describe only one
`
`factor of §107 of the Copyright Act in a somewhat confusing way. Based on this
`
`instruction the jury found that Keeling’s script constituted fair use and that Keeling
`
`therefore had a valid copyright that I was guilty of infringing upon. December 7,
`
`2012 the jury awarded Keeling a judgment of $250,000 even though no one
`
`involved with the show including me made anywhere near that amount because it
`
`                                                                                                                
`  
`
`3 Opinion at 8 quoting Judge Griesa.
`
`4  
`
`

`

`was always a small, underground production. The district court judge issued a
`
`judgment on January 16, 2013 but did not accompany it with any opinion.
`
`III. COURT OF APPEALS FOR THE SECOND CIRCUIT
`
`I could not afford a lawyer but felt there had been a miscarriage of justice so I
`
`appealed pro se. After a three year delay, in an opinion dated October 30, 2015 the
`
`Second Circuit affirmed the lower court’s conclusion that fair use can engender
`
`copyright protection for unauthorized derivative works and that Keeling’s script
`
`therefore is entitled to copyright protection even though by the appellate court’s
`
`own description, her script “relies almost exclusively on selected dialogue from the
`
`screenplay”(Opinion at 3) of Point Break. Because Keeling’s script had no tangible
`
`expression that was original to her, in order to rule in her favor the Second Circuit
`
`sanctioned copyright protection for her “original contributions”: the stage directions
`
`that describe concepts ideas, tone, and use of props etc.
`
`I also asked and argued in my appellate brief for the court to reverse the
`
`judgment because of ‘plain error’ in the jury instruction during the trial. However,
`
`the appellate court excused the district judge’s failure to describe more than one of
`
`the four factors of the fair use statute to a jury who were deciding the outcome of
`
`the case based on an understanding of fair use. The Second Circuit held that this
`
`didn’t constitute plain error.
`
`IV. MISSING THE CHANCE FOR A REHEARING
`
`The same week as the Second Circuit issued its ruling on my appeal I was
`
`diagnosed with a serious, life threatening disease, so in the weeks following I was in
`
`no condition physically, psychologically or emotionally to deal with the case at all
`
`  
`
`5  
`
`

`

`and therefore I missed the deadline for requesting a rehearing in the Court of
`
`Appeals. But thereafter I realized, despite the incredible odds against my petition
`
`being granted I had to at least try to bring the ruling to the attention of this Court.
`
`In early January I asked for an extension of time to submit a writ of certiorari and
`
`thankfully this Court granted that request.
`
`IV. A CRUCIAL OMMISSION
`
`The Second Circuit did not even mention the “Licensing Agreement4 between
`
`Chris Taylor and I in the below opinion even though I emphasized it and discussed
`
`it at length in my appellant brief and it was provided as an exhibit in the evidence.
`
`Acknowledging the licensing agreement would have precluded the Second Circuit’s
`
`affirmation of the lower court’s ruling because it would have been then incumbent
`
`upon the Court to face and solve an insoluble conundrum: if Keeling can have a
`
`copyright on a work which “relies almost exclusively on selected dialogue from the
`
`screenplay” for which she “possessed no copyright or licenses,”5 where does that
`
`leave the owner of the copyright to that screenplay?
`
`According to this judgment I should have paid Keeling, the unauthorized user
`
`of the Point Break movie copyright for using dialogue, plot, and characters that she
`
`copied verbatim from the Point Break movie, instead of the owner of the copyright of
`
`the dialogue, plot and characters. So the copyright owner of the pre-existing
`
`material has lost not only his exclusive standing to sue for infringement of his
`
`copyright, he has lost his exclusive right to license out his copyright for the stage
`
`                                                                                                                
`  
`
`4 Appendix F
`5 Opinion at 4
`
`6  
`
`

`

`production of his movie because those rights have been transferred to Keeling by
`
`the Court.
`
`As copyright law had always been interpreted before this case, I did the right
`
`thing by paying Chris Taylor for the rights to use his script. According to the new
`
`interpretation, I did the wrong thing and I am being severely punished for it by
`
`having to pay a huge sum of money to Jaime Keeling, who is the only one, by law as
`
`existed before this ruling, who could have actually been guilty of copyright
`
`infringement.
`
`
`
`REASONS FOR GRANTING
`
`I.
`
`CIRCUIT SPLITS
`
`The circuits are currently split over the interpretation of §103 of the
`
`Copyright Act. The question that divides them is whether a derivative work in
`
`which the use of the underlying copyright is not authorized, is entitled to copyright
`
`protection without the permission of the owner of that underlying copyright? As it
`
`stands presently such a work might have a valid copyright in New York but not
`
`next door in New Jersey. It may have a copyright in Illinois but not in the
`
`neighboring state of Minnesota nor in California.
`
`After a history of rulings to the contrary the Second and Seventh Circuits, in
`
`Keeling v. Hars and Shrock v. Learning Curve, have recently reversed their former
`
`positions and now hold that derivative works are entitled to copyright protection
`
`without the permission of the copyright holder of the underlying work no matter the
`
`degree to which the derivative work relies on the underlying work. Meanwhile the
`
`  
`
`7  
`
`

`

`Ninth, Third and Eight circuits take the opposite view and have ruled that
`
`unauthorized derivative works are not entitled to copyright protection at all because
`
`they are themselves infringing works.
`
`
`
`Allowing copyrights for an unauthorized derivative work necessarily
`
`affects the exclusive rights promised by the Copyright Act to copyright owners of
`
`original works such as (17 U.S.C. §501(b)) pertaining to ‘standing to sue’. The
`
`Second Circuit and Seventh Circuits separate from the other circuits (as well as
`
`their own precedents) by assigning the right to bring action for infringement to
`
`those with no exclusive rights in a copyright and furthermore put themselves at
`
`odds with several of this Court’s rulings in regard to the issue of what is
`
`copyrightable according to 17 U.S.C. §102(b) and the idea/expression dichotomy. By
`
`granting copyright protection to non-protectable elements in derivative works
`
`without permission of the copyright owners of the underlying works, the Second
`
`Circuit aligns itself with the Seventh Circuit but against the Eighth, Ninth, and
`
`Tenth Circuits and this Court. Finally, in rejecting the necessity of considering all
`
`the factors of §107 in determining fair use in the ruling below, the Second Circuit
`
`contradicts rulings by this Court.
`
`
`II. CASE INVOLVES ISSUES OF NATIONAL IMPORTANCE
`
`Silvers v. Sony Pictures Entertainment, Inc., 402 F. 3d 881 (9th
`Circuit 2005) (en banc):
`
`“In Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27 (2d
`Cir. 1982), superseded by rule and statute on other grounds, the
`court held that one who owns no exclusive right in a copyright may
`not sue for infringement.”
`
`8  
`
`
`
`  
`
`

`

` “We think it important to parallel the Second Circuit for two
`reasons. First, and more importantly, our independent analysis
`leads us to the same conclusion. Second, the creation of a circuit
`split would be particularly troublesome in the realm of copyright.[2]
`The Supreme Court has noted "Congress' paramount goal in
`revising the 1976 Act of enhancing predictability and certainty of
`copyright ownership." As we have phrased it, "[c]ongressional
`intent to have national uniformity in copyright laws is clear." ).
`That admonition makes sense, given the nature of intellectual
`property. Inconsistent rules among the circuits would lead to
`different levels of protection in different areas of the country, even
`if the same alleged infringement is occurring nationwide.”6
`
`
`
`
`Who better to present this Court with the necessity of maintaining national
`
`uniformity in copyright law than the Ninth Circuit in an en banc decision. Not only
`
`does the Ninth Circuit clearly present the issue as one of national importance, the
`
`Court also warns of the problems inherent in a split between the circuits on such a
`
`basic question of copyright law.
`
`
`
`If one had to quantify how important copyright law is nationally, some
`
`startling economic data on the subject was recently made available:
`
`The economic contributions of U.S. copyright industries
`reached new heights last year, for the first time contributing
`more than $1 trillion to the gross domestic product and
`accounting for 6.5% of the nation's economy, according to a
`new report.7
`
`
`
`It is frightening to consider how many cases it would take to nullify all the
`
`threats to copyright law the ruling below presents and how many lawsuits it could
`
`generate which would be nearly impossible to adjudicate because the courts would
`
`                                                                                                                
`  
`
`6 Id at 889-890 (emphasis added)
`7 U.S. Bureau of Economic Analysis and National Endowment for the Arts Report on Impact of Arts
`and Culture on U.S. Economy, 2013.
`
`9  
`
`

`

`be forced into either one of two untenable courses of action: either 1) transferring
`
`the copyright and all the exclusive rights prescribed therein from the copyright
`
`holder of the original work to the person using that copyright in a derivative work
`
`without license or 2) mandating the division of the copyright between the copyright
`
`owner of the original and the new copyright owner of derivative work.
`
`Furthermore, the Seventh and Second Circuit have granted copyright
`
`protection for non-copyrightable and/or minor contributions and alterations made to
`
`a pre-existing copyright without authorization by the owner of the original. This
`
`will inevitably lead to copyright claims to a single copyright rising exponentially
`
`every time an original copyright is licensed out for use- or in this case, used without
`
`license.
`
`Taken altogether the inevitable outcome of the ruling below, if allowed to
`
`stand and foster similar decisions, is multiple claims on the same copyright. This
`
`constitutes a huge threat to the authors and copyright holders of original work and
`
`thus to all the copyright industries. All rely on the containment of copyright claims
`
`that copyright law has traditionally provided. When the scope of that containment
`
`expands, the value of copyrights decline. The decision below promotes, and even
`
`worse, mandates such an expansion and thus poses a threat to a substantial
`
`segment of this country’s economy.
`
`III. DANGEROUS DEPARTURE FROM USUAL COURSE OF PROCEEDINGS
`
`
`
`The Second Circuit’s new legal principle that inculcates the fair use statute,
`
`§107 of the Copyright Act with the power to vest copyright in an otherwise non-
`
`copyrightable unauthorized derivative work and insistence that only one of the four
`
`  
`
`10  
`
`

`

`factors of §107 necessarily be considered in determining whether or not a work
`
`constitutes fair use, leads to such a derangement of longstanding copyright law and
`
`“has so far departed from the accepted and usual course of proceedings, or
`
`sanctioned such a departure by a lower court, as to call for an exercise of [this]
`
`Court’s supervisory power.”8
`
`IV. THE ISSUES MAY SEEM COMPLICATED BUT THE SOLUTION MIGHT BE
`
`CLEAN AND SIMPLE
`
`Any ruling by a court on the subject of unauthorized copyrights for derivative
`
`works could not be arrived at without addressing related questions like what
`
`considerations make such works copyrightable and what within such works are
`
`subject to copyright protection. Thus, this case is the perfect vehicle for this Court to
`
`make a ruling on the subject because this case addresses those related questions.
`
`Noted copyright scholar, William F. Patry has observed that “the
`
`understanding of derivative works is fast approaching incomprehensibility.”9 The
`
`fact that, as demonstrated herein, the circuits are now polarized on the subject
`
`lends credence to that statement. However, a solution has been hinted at in a couple
`
`of appellate opinions. They suggest that if the contributions made to the original
`
`work in the derivative work are “clearly detachable”10 and “easily severable [from
`
`and can] stand alone”11 as copyrightable expression independent of the original
`
`work, then those contributions could be copyrighted without the permission of the
`
`                                                                                                                
`  
`
`8 Rule 10(a) of Rules of the Supreme Court of the United States
`9 Patry, William F. “Patry On Copyright” § 3:46 (2013).
`10 Bucklew v. Hawkins, Ash, Baptie & Co., LLP. 10 329 F. 3d 923 (7th Circuit 2003) at 930
`11 Anderson v. Stallone,11 USPQ2D 1161 (C.D. Cal. 1989) at 31
`
`11  
`
`

`

`owner of the original. Such prerequisites would not be hard to determine and are
`
`not subject to the kind of rampant inconsistency that is inherent in determining fair
`
`use. Furthermore, the principle could apply to both variations of the question: 1)
`
`granting copyrights for unauthorized derivative works and 2) granting copyrights
`
`for “lawful” derivative works without the permission of the rightsholders of the
`
`underlying works. In a controversy that seems complicated and hopelessly
`
`entangled, that proposition seems like a simple, clear solution, a principle that
`
`appellate courts could easily follow if set as precedent by this Court in a decision
`
`based on this case. It would bring all courts in alignment and go far in resolving the
`
`confusion that has so far plagued the lower courts and created disparity across the
`
`nation on a basic issue of copyright law.
`
`V. PUBLICITY AND PRECEDENT
`
`The Second Circuit did not submit this opinion for publication in the Federal
`
`Reporter even though it creates new copyright law that radically departs from
`
`existing case law. Despite this oversight, the significance and potential impact of
`
`the ruling below should not be underestimated. There are well over a thousand
`
`articles about this case on the internet and in publications, legal and otherwise.12
`
`These include the National Law Review, American Bar Association, Associated
`
`Press, Courthouse News, Hollywood Reporter, Wall Street Journal, NY Daily News,
`
`Stanford University Libraries, as well as hundreds of law firm newsletters, blogs
`
`and websites devoted to copyright law most of which report this as a landmark
`
`ruling because it allows copyright for unauthorized derivative works, invokes fair
`
`                                                                                                                
`  
`
`12 Appendix G
`
`12  
`
`

`

`use as a means of vesting such works with copyrights, and grants copyright to what
`
`have always been considered non-protectable elements in such works. There can be
`
`little doubt that this ruling will set new precedent because in the eyes of the public
`
`and the legal establishment it already has.
`
`All the articles, blogs and legal analysis seem to herald the ruling below as a
`
`victory for authors of unauthorized derivative works but none contemplate the
`
`threat it poses to authors and copyright holders of original works on which those
`
`unauthorized derivative works are based. Hopefully, this Court will take a broader
`
`and deeper view and will consider the blow that this ruling deals to copyright
`
`protection for original works and the real and dangerous implications it has on
`
`copyright law as a whole.
`
`VI. COPYRIGHT FOR UNAUTHORIZED DERIVATIVE WORKS
`
`
`
`All the cases I present in this section involve the same essential fact pattern
`
`as the present one: a plaintiff who is not authorized to use another person’s
`
`copyright (or not authorized to certain rights endowed by that copyright) attempting
`
`to sue a third party for infringement.*13 The difference is the outcome of the rulings
`
`and the manner in which law was applied in rendering those outcomes.
`
`Appellate courts were once united in rejecting copyrights for unauthorized
`
`derivative works. But then in Eden v. Florelee14, the Second Circuit, for the first
`
`time opened up the possibility by stating that if an unauthorized derivative work is
`
`                                                                                                                
`  
`
`13  
`
`13 With the exception of Dam Things From Denmark v. Russ Berrie & Co. Inc., 290 F. 3d 548 – (3rd
`Circuit 2002)
`14 Eden Toys, Inc. v. Florelee Undergarment Co. 697 F.2d 27 (2d Cir.1982), Footnote 6
`
`

`

`not pervaded by the original work it could obtain a copyright. Although stated in
`
`dicta the pervade principle disseminated in subsequent Second Circuit cases such
`
`as Dynamic Solutions, Inc. v. Planning & Control, Inc.,15 and in a more recent case:
`
`JBJ Fabrics, Inc. v. Brylane, Inc.,
`
`Moreover, even if plaintiff's use of the underlying design
`were unlawful, it would be entitled to protection for its
`original contributions absent some showing by defendant
`that the unlawful use pervaded the entire work.16
`
`In the decision below the Second Circuit took off from there, admitting that
`
`“unauthorized derivative works are typically afforded no copyright protection
`
`because they unlawfully infringe the exclusive rights of the original author,”17 and
`
`that;
`
`The Keeling‐authored PBL [Point Break LIVE!] parody
`parallels the characters and plot elements from Point Break
`and relies almost exclusively on selected dialogue from the
`screenplay.. ………. Keeling possesses no copyright or
`license with regard to the Point Break motion picture.
`(Opinion at 3-4)
`
` Yet the Second Circuit went on to conclude that although it is an unauthorized
`
`derivative work, “[Point Break LIVE!] is entitled to copyright protection capable of
`
`supporting Keeling’s claim of infringement by a third party.”18 The Court bases that
`
`conclusion on 17 U.S.C. § 103(b), holding that under this statute unauthorized
`
`“derivative works are entitled to “independent” copyright protection, separate from
`
`                                                                                                                
`  
`
`15 Dynamic Solutions, Inc. v. Planning & Control, Inc., 646 F.Supp. 1329, 1340 (S.D.N.Y.1986)
`16 JBJ Fabrics, Inc. v. Brylane, Inc., 714 F. Supp. 107 – (S.D.N.Y.) 1989 at 110
`17 Opinion at 10
`18 Opinion at 9.
`
`14  
`
`

`

`any copyright in the preexisting material.”19 The Court seems to find precedent (?)
`
`in another Second Circuit case, Durham v. Tomy:
`
`We have previously confirmed that, because “[d]erivative works are
`explicitly included in the subject matter of copyright as defined by
`the Copyright Act,” the mere fact that a litigant’s unauthorized
`“creations are derivative works is in itself, of course, no bar to
`copyrightability.” Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905,
`909 (2d Cir. 1980) (Opinion at 15)
`
`
`The Seventh Circuit had been firm in its rejection of granting unauthorized
`
`derivative works with a copyright, stating in Pickett v. Prince20 that the pervade
`
`principle introduced by the Second Circuit in Eden v. Florelee “would inject
`
`enormous uncertainty into the law of copyright.”21 Yet nine years later the Seventh
`
`Circuit came to a drastically different conclusion.
`
`Schrock v. Learning Curve22
`
`This case involved Learning Curve, a marketing company contracted by HIT
`
`Entertainment, owner of the copyrights on the well-known “Thomas Train”
`
`characters, to promote their products. Learning Curve hired Schrock, a
`
`photographer, to set up and photograph Thomas Train toys for promotional
`
`materials. Later Schrock sued Learning Curb for copyright infringement for
`
`continuing to use his photos of the Thomas Trains in catalogues. The Court
`
`addressed the question of whether Shrock’s photographs of copyrighted figures
`
`                                                                                                                
`
`19 Opinion at 13
`20 Pickett v. Prince, 207 F.3d 402 (7th Cir. 2000) at 404 “Pickett claims [erroneously] the right to
`copyright a work derivative from another person's copyright without that person's
`permission.”20
`21 Id. at 406
`22 Schrock v. Learning Curve Intern., Inc., 586 F. 3d 513 (7th Circuit 2009)
`
`15  
`
`  
`
`

`

`could be eligible for copyright protection themselves without the consent of the
`
`owner of the copyright on those figures. The Seventh Circuit had previously held in
`
`a similar case, Gracen v. Bradford,23 that even if a the creator of a derivative work
`
`was “authorized to exhibit her derivative works, she may not have been authorized
`
`to copyright the them.” In the Schrock case the Seventh Circuit disagreed with the
`
`Gracen decision:
`
`There is nothing in the Copyright Act requiring the author of a
`derivative work to obtain permission to copyright his work from
`the owner of the copyright in the underlying work.24
`
`The case differs slightly from the Keeling case in that Shrock had initially been
`
`given permission to use the underlying copyrights to create his derivative works but
`
`was no longer authorized to continue using the underlying copyrights in those
`
`derivative work. Keeling never had permission in the first place. The question
`
`might be posed as to whether the status of “authorized derivative” work subsists
`
`only in creation or if it also depends on the use beyond creation. For the purposes of
`
`this writ, the moniker of “unauthorized derivative work” will be based on a situation
`
`wherein a creator of a derivative work is not authorized to use the underlying
`
`copyright in obtaining and retaining copyright for the derivative work. This makes
`
`sense given that an unauthorized creation of derivative work might later become
`
`authorized in its use if permission to use the underlying copyright was later
`
`obtained.
`
`                                                                                                                
`  
`
`23 Gracen v. Bradford Exchange, 698 F. 2d 300 – (7th Circuit 1983) at 406
`24 Shrock at 523
`
`16  
`
`
`
`

`

`The Third, Eighth and Ninth circuits stand diametrically opposed to the
`
`possibility of copyright for unauthorized derivative works.
`
`Third Circuit
`
`Dam Things from Denmark (a.k.a. The Troll Company), v. Russ Berrie
`
`The Third Circuit held that Berrie’s variations on the original Troll figures
`
`might be extensive enough to sustain a copyright with permission of the Troll
`
`company or if he was a licensee under §104A(d)(3), but that would not hold true
`
`without such permission or license:
`
`"If the underlying work is itself protected by copyright, then [the
`author of the derivative work] will receive no protection at all; on
`the contrary, he is a copyright infringer, because in order to
`create his work he has copied the underlying work.”25
`
`Eighth Circuit
`
`Mulcahy v. Cheetah26
`
`
`
`In this case, much like Keeling did with the movie, Point Break, the plaintiff
`
`created an unauthorized derivative work, PMP Prep, based on a copyrighted book,
`
`Project Management Body of Knowledge (PMBOK) in which “[l]arge portions of
`
`[the] PMP Exam Prep appear to copy, condense, and adapt those portions of the
`
`PMBOK.”27 But much unlike the Second Circuit and Seventh Circuits, the Eighth
`
`Circuit held that “the creator of an original derivative work is only entitled to a
`
`                                                                                                                
`  
`
`25 Dam Things at 563
`26 Mulcahy v. Cheetah Learning LLC, 386 F. 3d 849 (8th Cir. 2004)
`27. at 850
`
`17  
`
`

`

`copyright if she had permission to use the underlying copyrighted work.”28 The
`
`court explained:
`
`[T]he creator of an original derivative work is only entitled to a
`copyright if she had permission to use the underlying copyrighted
`work…. Thus, if the PMP Exam Prep is an unauthorized derivative
`work of the PMBOK, Mulcahy's copyrights are invalid.
`
`Ninth Circuit
`
`ERG v. Genesis et al
`
`The Court held that ERG’s costumes were too similar to the copyrighted characters
`
`owned by various companies (i.e. Pillbury, Quaker Oats, General

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket