L. Batlin & Son, Inc. v. Snyder - 536 F.2d 486 (2nd Cir. 1976) Entertainment Research Group, Inc.
tainment Research Group, Inc. v. Genesis Creative Group, Inc.,
RULE: In order to obtain a copyright upon a reproduction of a work of art under Copyright
Act, 17 U.S.C.S. § 5(h), the work must contain some substantial, not merely trivial originality.
FACTS:
• Defendant Jeffrey Snyder doing business as J.S.N.Y. (collectively, "Snyder")
obtained a registration of copyright on a plastic "Uncle Sam bank" in Class G ("Works
of Art") as "sculpture."
• It was undisputed that cast-ironUncle Sam banks had been in the public domain for
decades. Snyder wanted his bank to be made of plastic and to be shorter than the
cast metal types in order to fit into the required price range and quality and quantity
of material to be used.
• Defendant Etna Products Co., Inc., was Snyder's licensee. Outside the United
States, plaintiff L. Batlin & Son, Inc. ("Batlin") manufactured plastic Uncle Sam
modeled after a cast-iron version he had seen overseas.
• When Batlin attempted to import his banks into the U.S., he was notified by the
United States Customs Service ("Customs") that his plastic banks were covered by
Snyder's copyright and thus Batlin's banks were refused entry.
• Batlin filed an action in federal district court seeking, inter alia, injunctive relief
against Snyder's enforcement of his copyright.
• The district court granted Batlin a preliminary injunction compelling Snyder to cancel
its recordation of a copyright with Customs and restraining Snyder from enforcing
that copyright. Snyder appealed.
ISSUE: Was Snyder's copyright valid – NO.
CONCLUSION:
• The appellate court affirmed the district court's judgment.
• The court examined both Snyder's plastic bank and the uncopyrighted cast-iron bank
and agreed with the district court that there was little probability that Snyder's
copyright would be found valid in the trial on the merits on the basis that any
variations between Snyder's copyrighted plastic bank and a cast iron bank in the
public domain were merely trivial, and thus Snyder's bank was insufficiently "original"
to support a copyright.
• The court observed that to extend copyrightability to minuscule variations would
simply put a weapon for harassment in the hands of mischievous copiers intent on
appropriating and monopolizing public domain work.
122 F.3d 1211 (9th Cir. 1997), cert. denied, 523 U.S. 1021 (1998)
Defendant Aerostar brings this motion for summary judgment claiming ERG's copyright is not
valid. To establish copyright infringement, the holder of the copyright must prove both valid
ownership of copyright and infringement of that copyright by the alleged infringer. The
registration of a copyright certificate itself establishes a prima facie presumption of validity,
which may be rebutted by a showing on the part of the alleged infringer that the copyright
holder's work is not original. Since Aerostar has put ERG's copyrights in dispute, ERG must
prove the validity of its copyright as a threshold issue. Without proper copyright protection any
infringement claim is moot and summary judgment rejecting the alleged infringement claim is
appropriate.
Plaintiff ERG contends they are entitled to copyright protection for their creation of inflatable
derivative works which are based on previously copyrighted characters (i.e., ERG is claiming
a derivative copyright in their inflatable "Doughboy", where Pillsbury obviously owns the
underlying copyright for the "Doughboy").
The first issue to be decided is whether or not ERG is entitled to a derivative copyright. This
requires the court to determine the scope of derivative copyrights and decide whether ERG's
inflatable derivative costumes fall within the boundaries delineated by copyright law.
Section 101 of the Copyright Act defines a derivative work as:
a work based upon one or more pre-existing works, such as a translation, 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".
17 U.S.C.A. § 101.
Although there is relatively little guidance from the Ninth Circuit[1] on derivative copyrights
where the underlying work is not in the public domain, the Court of Appeals for the Second
Circuit has considerable experience with the question of derivative copyrights and we now
turn to that circuit for guidance.
The Second Circuit has held that in order to constitute a separately protectable derivative
work, an adaptation of a preexisting work must contain "some substantial, not merely trivial,
originality." L. Batlin & Son v. Snyder, 536 F.2d 486 (2d Cir. 1976), cert. denied, 429 U.S. 857,
97 S. Ct. 156, 50 L. Ed. 2d 135 (1976).
The Second Circuit further refined this test in Durham Industries, Inc. v. Tomy Corp, 630 F.2d
905 (2d Cir.1980), where they *322 formulated a two pronged test[2]: "First, to support a
copyright the original aspects of a derivative work must be more than trivial. Second, the
1
original aspects of a derivative work must reflect the degree to which it relies on preexisting
material and must not in any way affect the scope of any copyright protection in that
preexisting material." Id. at 909 (emphasis added).
The basis for the second prong of the Durham test is § 103(b) of the Copyright Act which
provides:
The copyright in a compilation or derivative work extends only to the material contributed by
the author of such work, as distinguished from the preexisting material employed in the work,
and does not imply any exclusive right in the preexisting material. The copyright in such work
is independent of, and does not affect or enlarge the scope, duration, ownership, or
subsistence of, any copyright protection in the preexisting material.
17 U.S.C.A. § 103(b) (emphasis added).
For the purposes of summary judgment however, this court feels constrained by the Ninth
Circuit's decision in North Coast Industries v. Jason Maxwell Inc., 972 F.2d 1031 (9th
Cir.1992). In that case, the Ninth Circuit overturned a summary judgment ruling by the district
court. The district court had held that the minimum changes in design made by the plaintiff
over a work already existing in the public domain were insufficient to warrant copyright
protection. In reversing the trial court, the Ninth Circuit stated that summary judgment is
appropriate when "... no reasonable trier-of-fact could find even trivial differences in the
designs...." Id. at 1034.
Although this court is prepared to adopt the language of North Coast, an important distinction
needs to be drawn between North Coast and the case at bar. North Coast dealt exclusively
with a pattern design imprinted on a dress. There was no aspect of the North Coast designs
which was functional or useful (or to use language from § 102 of the Copyright Act, there was
no aspect of those designs which had a "mechanical or utilitarian aspect").
Unlike the designs in North Coast, the costumes at issue in this case are a necessary hybrid
of form and function. Unlike North Coast, this court must determine the scope of copyright
protection and the propriety of summary judgment when elements of artistry and function are
intertwined.
Section 102 of the Copyright Act defines the subject matter of copyright. Subsection (a) lists
7 categories of works which are copyrightable including "pictorial, graphic and sculptural
works." This court feels that any copyright protection afforded ERG would fall under this
category. A quick look at the definition of "sculptural works" under § 101 leads us to relevant,
useful language.
The definition states that sculptural works, including works of artistic craftsmanship are
entitled to copyright protection "insofar as their form but not their mechanical or utilitarian
aspects are concerned." 17 U.S.C.A. § 101. It further states that "the design of a useful ...
article shall be considered a ... sculptural work only if, and only to the extent that, such design
incorporates ... sculptural features that can be identified separately from and are capable of
existing independently of, the utilitarian aspects of the article." 17 U.S.C.A. § 101 (emphasis
added).
Based on this, this court finds that any aspect of a "sculptural work" which is driven primarily
by a functional, utilitarian or mechanical consideration will not merit copyright protection. Any
differences in appearance between a derivative work and the preexisting work which are
driven primarily by a functional, utilitarian or mechanical purpose cannot be considered when
seeking artistic differences for the purpose of originality.[3]
*323 This court is certain that ERG's clients would request costumes which are completely
identical to their preexisting characters. Any minimal differences in appearance are therefore
a result of functional costume considerations, i.e., the costume must be worn by a human.
A quick look at ERG's "Toucan Sam" costume illustrates this point. In the preexisting work,
"Toucan Sam" has rather short, skinny, rubbery legs placed far apart on "Sam's" torso. In the
derivative costume work, "Toucan Sam" has thick, bulky, tall legs which are placed close
together on "Sam's" torso. Are these differences the result of an "artistic" decision on the part
of ERG? No, they are due to the limitations of the human body. The legs need to be thicker,
and narrowly spaced. ERG was forced to make an alteration in appearance based on
mechanical, functional and utilitarian considerations. No reasonable trier-of-fact could find
that these differences were the result of "artistic" decision making.
With this in mind, this court will adopt and apply the two part Durham test in light of what the
Ninth Circuit has held in North Coast. After careful review of photos of the costumes in
question this court finds that no reasonable trier-of-fact could find even trivial artistic
differences in design between the preexisting work and the underlying work. Adopting the
language of the Durham Court to this case, this court finds that:
[o]ne look at [ERG's costumes] reveals that, in each, the element of originality that is
necessary to support a valid copyright is totally lacking. For [some time these characters]
have peered at us from [television sets, product labels, newspapers] and a variety of other
media, and it would be safe to say that they have a recognition factor that any politician or
celebrity would envy. The [ERG costumes] are instantly identifiable as embodiments of the
[advertising] characters in yet another form: [Toucan Sam, Dino the Dinosaur, Doughboy,
Little Sprout, Cap'n Crunch, Oatis Oat Square and Geoffrey the Giraffe] are now represented
as [three-dimensional walk-around costumes].
Durham, 630 F.2d at 909 (citations omitted).
The linchpin of this derivative copyright claim is originality in appearance. It fails because
ERG's clients do not want original looking costumes. On the contrary, what ERG's customers
ask for is exact replication. Pillsbury necessarily wants a costume which people recognize as
their "Doughboy", not an artistic derivation or interpretation of it[4]. Replications which do not
include trivial differences in appearance are not entitled to copyright protection. Ironically, the
2
very thing which precludes ERG from obtaining derivative copyright protection in their around costumes. Unfortunately, this is not the realm or jurisdiction of Copyright law.
costumes is what makes them successful in the business of costume making: the ability Protection for the "useful arts" (if warranted in this case), is found in the patent system.
to *324 manufacture walk-around life-sized replicas of these characters with what appears to Defendant's motion for partial summary judgment is hereby GRANTED.
be relative precision and accuracy.

Furthermore, Federal Courts have not been inclined to extend derivative copyright protection
for conversion of a two-dimensional design into a three-dimensional object,[5] where the three-
dimensional object lacks the requisite originality. "The mere reproduction of the underlying
characters in plastic, even though ... [it] undoubtedly involved some degree of manufacturing
skill, does not constitute originality as this Court has defined the term." Durham, 630 F.2d at
911. In Gallery House, Inc. v. Yi, 582 F. Supp. 1294 (N.D.Ill.1984), the court refused to grant
a derivative copyright to a moldmaker stating that "[the moldmaker] did not add any artistic
effort. It simply converted a two-dimensional design to a three-dimensional object, which,
without sufficient original artistic contribution does not constitute a copyrightable effort." Id. at
1297.

ERG also fails the second prong of the Durham test in that any granting of derivative
copyrights in an inflatable "Doughboy" would "simply put a weapon for harassment in the
hands of mischievous copiers." Durham, 630 F.2d at 910. This court does not intend to
characterize ERG as a "mischievous copier". However, the fear of the Durham Court and this
court as well, is that ERG would have a pseudo-monopoly on all inflatable "Doughboys". Any
subsequent costume makers and the original copyright holders themselves (Pillsbury, for
example) would be limited by the granting of a derivative copyright in this situation or at the
very least be vulnerable to harassment. One need only look at the procedure for registering
a copyright to see that this fear is well-founded. Copyright Office procedure requires only that
an image of the copyrighted article be submitted along with a registration form for the work.
In order to substantiate a prima facie case of infringement, a company such as ERG would
need only to submit their copyright registration along with a photograph of the infringing
costume which would necessarily look like Plaintiff's.

To avoid this potential harassment liability, a subsequent costume-maker would need to make
significant changes in the "Doughboy's" appearance, which would detract from the original
character, in which ERG has no copyright. As a result, Pillsbury's right to copy (or to permit
others to copy) its own creation would, in effect, be circumscribed. See Durham, 630 F.2d at
911.

III. CONCLUSION

This court holds that ERG's derivative walk-around costume figures do not merit copyright
protection. They lack even a modest degree of artistic originality and the grant of a derivative
copyright would affect the scope of the copyright protection in the preexisting material.
Therefore, as to "Toucan Sam", "Dino the Dinosaur", "Doughboy", "Little Sprout", "Cap'n
Crunch", "Oatis Oat Square" and "Geoffrey Giraffe", we need not consider the question of
copyright infringement by Aerostar.

This court suspects ERG is attempting to gain copyright protection in the ideas of structure,
methods and function which support and make up the internal workings of the inflatable walk-
3
 Pickett v. Prince, 207 F.3d 402 (7th Cir. 2000)
The appeal by Ferdinand Pickett, plaintiff in the district court, presents us with an issue
concerning copyright in derivative works, while the cross-appeal, by the defendant, presents
a procedural issue. The defendant, identified only as “Prince” in the caption of the various
pleadings, is a well-known popular singer whose name at birth was Prince Rogers Nelson,
but who for many years performed under the name Prince (which is what we'll call him) and
since 1992 has referred to himself by an unpronounceable symbol reproduced as Figure 1 at
the end of this opinion. (See generally “The Independent, Unofficial and Uncensored
Magazine Exploring the Artist Formerly Known as Prince,” .) The symbol (which rather
strikingly resembles the Egyptian hieroglyph ankh, see Richard H. Wilkinson, Symbol & Magic
in Egyptian Art 159, 169 (fig.128) (1994), but the parties make nothing of this, so neither shall
we) is his trademark but it is also a copyrighted work of visual art that licensees of Prince
have embodied in various forms, including jewelry, clothing, and musical instruments.
Although Prince did not register a copyright of the symbol until 1997, the plaintiff concedes
that Prince obtained a valid copyright in 1992, registration not being a precondition to
copyright protection, 17 U.S.C. § 408(a), though it is a precondition to a suit for copyright
infringement. § 411(a);  Raquel v. Education Mgmt. Corp., 196 F.3d 171, 176 (3d Cir.1999).
Actually the original copyright was not obtained by him, but he is the assignee, and the
assignment expressly granted him the right to sue for infringements of copyright that occur
before the assignment.
In 1993 the plaintiff made a guitar (Figure 2) in the shape of the Prince symbol;  he concedes
that it is a derivative work within the meaning of 17 U.S.C. § 101 (“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’ ”). The plaintiff
claims (truthfully, we assume for purposes of the appeal) to have shown the guitar to Prince.
Shortly afterwards Prince appeared in public playing a guitar quite similar to the plaintiff's
(Figure 3).
The plaintiff brought this suit for copyright infringement in 1994, but it languished for years in
the district court. In January 1997 Prince counterclaimed for infringement of the copyright
on his symbol, arguing (because he had not yet registered his copyright-indeed it hadn't even
been assigned to him yet) that in 1992 Warner Brothers had registered a copyright of the
symbol in connection with a record of Prince's music. Prince was mistaken;  the copyright
was of the music, not of the symbol, although the symbol appeared on the album cover. In
any event Prince had no standing to enforce someone else's copyright-so that, if only Warner
Brothers held a copyright on the Prince symbol, Prince would have no defense against
Pickett's suit for infringement (or at least would not have the defense that he successfully
asserted in the district court), as well as no basis for a counterclaim. In July 1997, however,
on the Monday following the third anniversary of Pickett's suit (which fell on a Saturday),
Prince filed an amended counterclaim for infringement, claiming that it was his own, not
Warner Brothers', copyright that Pickett's guitar infringed;  for between January and July
Prince had obtained the copyright by assignment and had registered it. The district court
(Judge Shadur) held that the amended counterclaim, which superseded the original one, did
not relate back to the original counterclaim because it did not arise out of the same copyright,
and so it was barred by the three-year statute of limitations for claims of copyright
infringement. 17 U.S.C. § 507(b). Later the suit was transferred to Judge Pallmeyer, who
on Prince's motion for summary judgment dismissed Pickett's claim on the ground that he
had no right to make a derivative work based on the Prince symbol without Prince's consent,
which was never sought or granted. 52 F.Supp.2d 893 (N.D.Ill.1999).
Pickett claims the right to copyright a work derivative from another person's copyright without
that person's permission and then to sue that person for infringement by the person's own
derivative work. Pickett's guitar was a derivative work of the copyrighted Prince symbol, and
so was Prince's guitar. Since Prince had (or so we must assume) access to Pickett's guitar,
and since the two guitars, being derivatives of the same underlying work, are, naturally, very
similar in appearance, Pickett has-if he is correct that one can copyright a derivative work
when the original work is copyrighted by someone else who hasn't authorized the maker of
the derivative work to copyright it-a prima facie case of infringement. Wildlife Express Corp.
v. Carol Wright Sales, Inc., 18 F.3d 502, 508 (7th Cir.1994);  Procter & Gamble Co. v. Colgate-
Palmolive Co., 199 F.3d 74, 77 (2d Cir.1999) (per curiam);  Castle Rock Entertainment, Inc.
v. Carol Publishing Group, Inc., 150 F.3d 132, 137 (2d Cir.1998);  Twin Peaks Productions,
Inc. v. Publications International, Ltd., 996 F.2d 1366, 1372 (2d Cir.1993);  see also 2 Paul
Goldstein, Copyright:  Principles, Law and Practice § 7.2.1, p. 8 (1989) (“the fact that the
defendant had access to the plaintiff's work and that the defendant's work is similar to the
plaintiff's can form the basis for an inference that the defendant copied her work from the
plaintiff's work”). Pickett must, he concedes, show that his derivative work has enough
originality to entitle him to a copyright, and also that the copyright is limited to the features
that the derivative work adds to the original. But he insists that with these limitations his
copyright is valid.
We doubt that he could show the requisite incremental originality, Lee v. A.R.T. Co., 125 F.3d
580 (7th Cir.1997);  Gracen v. Bradford Exchange, 698 F.2d 300, 304-05 (7th Cir.1983), slight
as it need be. Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 345,
362-63, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991);  CDN Inc. v. Kapes, 197 F.3d 1256, 1259-
61 (9th Cir.1999);  Acuff-Rose Music, Inc. v. Jostens, Inc., 155 F.3d 140, 143-44 (2d Cir.1998);
 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 3.03, p. 3-10 (1999);  see
generally 1 Goldstein, supra, § 2.2.1, pp. 62-65. In Lee v. A.R.T. Co., supra, 125 F.3d at
582, we noted a conflict in the authorities over whether any originality is required for a
derivative work. We had explained in Gracen v. Bradford Exchange, supra, 698 F.2d at 304,
and we'll note later in this opinion as well, that such a requirement is essential in order to head
off situations in which it is impossible to adjudicate a dispute between owners of two derivative
works because the works are identical both to the original and to each other. The Ninth
Circuit, the only court cited in Lee as disagreeing with us, had, in fact, swung around to our
view shortly before our decision came down. Entertainment Research Group, Inc. v.
Genesis Creative Group, Inc., 122 F.3d 1211, 1220 (9th Cir.1997).
Although Pickett's guitar isn't identical to the Prince symbol, the difference in appearance may
well be due to nothing more than the functional difference between a two-dimensional symbol
and a guitar in the shape of that symbol. In that event even Prince could not have
copyrighted the guitar version of the symbol. 17 U.S.C. § 101;  American Dental Ass'n v.
4
Delta Dental Plans Ass'n, 126 F.3d 977, 980 (7th Cir.1997);  Entertainment Research Group,
Inc. v. Genesis Creative Group, Inc., supra, 122 F.3d at 1221-24;  cf. Mitel, Inc. v. Iqtel, Inc.,
124 F.3d 1366, 1374-75 (10th Cir.1997);  Williams v. Crichton, 84 F.3d 581, 587-88 (2d
Cir.1996). A guitar won't work without strings, frets, etc. arranged in a pattern dictated by
musical considerations, and to the extent that the pattern is what it is because otherwise the
guitar won't sound right, it is not copyrightable as a work of visual art. Maybe, though, the
juxtaposition of the symbol and the guitar is enough to confer on the ensemble sufficient
originality as a work of visual art to entitle the designer to copyright it. See North Coast
Industries v. Jason Maxwell, Inc., 972 F.2d 1031 (9th Cir.1992);  Rogers v. Koons, 960 F.2d
301, 307 (2d Cir.1992). Many works of art rely for their effect on the juxtaposition of familiar
elements ordinarily held separate (like a mustache painted on a photograph of the Mona Lisa);
 indeed, all works of art are ultimately combinations of familiar, uncopyrightable items.
We need not pursue the issue of originality of derivative works. The Copyright Act grants
the owner of a copyright the exclusive right to prepare derivative works based upon the
copyrighted work. 17 U.S.C. § 106(2);  Lee v. A.R.T. Co., supra, 125 F.3d at 581;  Gracen
v. Bradford Exchange, supra, 698 F.2d at 302;  Atari, Inc. v. North American Philips Consumer
Electronics Corp., 672 F.2d 607, 618 n. 12 (7th Cir.1982);  Micro Star v. Formgen Inc., 154
F.3d 1107, 1110 (9th Cir.1998). So Pickett could not make a derivative work based on the
Prince symbol without Prince's authorization even if Pickett's guitar had a smidgeon of
originality. This is a sensible result. A derivative work is, by definition, bound to be very
similar to the original. Concentrating the right to make derivative works in the owner of the
original work prevents what might otherwise be an endless series of infringement suits posing
insoluble difficulties of proof. Consider two translations into English of a book originally
published in French. The two translations are bound to be very similar and it will be difficult
to establish whether they are very similar because one is a copy of the other or because both
are copies of the same foreign-language original. Whether Prince's guitar is a copy of his
copyrighted symbol or a copy of Pickett's guitar is likewise not a question that the methods of
litigation can readily answer with confidence. If anyone can make derivative works based
on the Prince symbol, we could have hundreds of Picketts, each charging infringement by the
others.
Pickett relies for his implausible theory primarily on section 103(a) of the Copyright Act,
which provides that while copyright can be obtained in derivative works, “protection for a work
employing preexisting material in which copyright subsists does not extend to any part of the
work in which such material has been used unlawfully.” Pickett reads this as authorizing a
person other than the owner of the original work to make a derivative work, merely forbidding
him to infringe the original. It is very difficult to see how a derivative work not made by the
owner of the original work could fail to infringe it, given the definition of derivative works.
(There is no infringement by the owner of the copyright of the original work, since, as note,
section 106(2) entitles him to make derivative works based on his copyrighted work. Cortner
v. Israel, 732 F.2d 267, 271 (2d Cir.1984).) Picket doesn't deny this;  having warded off (he
thinks) Prince's counterclaim for copyright infringement, he is unafraid to acknowledge that
he is an infringer and to content himself with arguing that his copyright extends only to the
original elements of the infringing work. But we do not read section 103(a) as qualifying the
exclusive right of the owner of the copyright of the original work to make derivative works
based on that work, the right conferred by section 106(2). Section 103(a) means only, at
least so far as bears on this case, that the right to make a derivative work does not authorize
the maker to incorporate into it material that infringes someone else's copyright. Cortner v.
Israel, supra, 732 F.2d at 272;  1 Nimmer & Nimmer, supra, § 3.06, pp. 3-34.23 to 3-34.27;
 cf. Harris Custom Builders, Inc. v. Hoffmeyer, 92 F.3d 517, 519 (7th Cir.1996). So if Pickett
owned a copyright of, say, a picture of Prince, and Prince used that picture in his own guitar
without Pickett's consent, Pickett would have a claim of infringement. But the only copyright
that Pickett claims Prince infringed is a copyright that Pickett had no right to obtain, namely a
copyright on a derivative work based on Prince's copyrighted symbol.
Pickett relied in the district court on a dictum in Eden Toys, Inc. v. Florelee Undergarment
Co., 697 F.2d 27, 34 n. 6 (2d Cir.1982), that a stranger can make a derivative work without
the permission of the owner of the copyright of the original work if the original work does not
“pervade” the derivative work. The suggestion, if taken seriously (which it has not been),
would inject enormous uncertainty into the law of copyright and undermine the exclusive right
that section 106(2) gives the owner of the copyright on the original work. It also rests on a
confusion between the determination of whether a work is derivative and the determination of
who has the right to make the derivative work. Defined too broadly, “derivative work” would
confer enormous power on the owners of copyrights on preexisting works. The Bernstein-
Sondheim musical West Side Story, for example, is based loosely on Shakespeare's Romeo
and Juliet, which in turn is based loosely on Ovid's Pyramus and Thisbe, so that if “derivative
work” were defined broadly enough (and copyright were perpetual) West Side Story would
infringe Pyramus and Thisbe unless authorized by Ovid's heirs. We can thus imagine the
notion of pervasiveness being used to distinguish a work fairly described as derivative from
works only loosely connected with some ancestral work claimed to be their original. Cf.
Micro Star v. Formgen Inc., supra, 154 F.3d at 1110. In that sense Prince's symbol clearly
“pervades” both guitars. If it did not, the guitars might not be derivative works, but they would
not be derivative works that anyone was free to make without obtaining Prince's permission.
It is apparent from what we have said so far not only that Pickett could not copyright his
guitar, but that his guitar infringes Prince's copyright. (Pickett's further argument, that
Prince's copyright has evaporated if, as Judge Shadur ruled, the counterclaim to enforce it is
time-barred and so Prince's symbol fell into the public domain and became fair game for
makers of derivative works, is ridiculous.) The remaining question, whether the counterclaim
was properly dismissed on the basis of the statute of limitations, is the subject of Prince's
cross-appeal. Oddly, there is not the slightest doubt that the amended counterclaim was
filed before the statute of limitations expired, and this regardless of whether it related back to
the original, Fed.R.Civ.P. 15(c)(2), as probably it did not, since it was based on a different
copyright. Cf. 6A Charles Alan Wright, Arthur R. Miller & Mary Kay Kane, Federal Practice
and Procedure § 1497, pp. 70-74 (1990). Although the amended counterclaim was filed on
the last possible day before expiration, namely the Monday after the Saturday that was the
third anniversary of the filing of Pickett's suit, see Fed. R. Civ.P. 6(a), the adage that a miss
is as good as a mile applies in reverse here:  a suit is timely whether filed the day after the
claim accrues or the very last day before the suit would be time-barred.
So why was the counterclaim dismissed as untimely? The three-year period of limitations
began running on July 5, 1994, and the judge ruled that the counterclaim was untimely
because it had not been filed until July 7, 1997. Apparently no one, including the judge,
noticed that July 5, 1997, was a Saturday. Prince's lawyer finally woke up, and a couple of
weeks after Judge Shadur had ruled filed a motion for reconsideration which the judge denied
5
on the ground that a motion for reconsideration is not an appropriate vehicle for injecting a at all why Judge Shadur should have refused to rescind his erroneous dismissal of the
new legal theory into a case. counterclaim.

We think that in so ruling the judge abused his discretion. Unlike the case in which a The judgment is affirmed insofar as it dismisses Pickett's suit but vacated insofar as it
judgment is sought to be vacated, to which the principle enunciated by the judge does apply, dismisses the counterclaim, and the case is remanded for further proceedings consistent with
e.g., Caisse Nationale de Credit Agricole v. CBI Industries, Inc., 90 F.3d 1264, 1269-70 (7th this opinion.
Cir.1996);  Keene Corp. v. International Fidelity Ins. Co., 736 F.2d 388, 393 (7th Cir.1984),
although its application to a computational error having nothing to do with legal “theory” may
be doubted, see Russell v. Delco Remy Division, 51 F.3d 746, 749 (7th Cir.1995), a motion
to reconsider a ruling is constrained only by the doctrine of the law of the case. And that
doctrine is highly flexible, especially when a judge is being asked to reconsider his own ruling.
Avitia v. Metropolitan Club of Chicago, Inc., 49 F.3d 1219, 1227 (7th Cir.1995);  Prisco v. A &
D Carting Corp., 168 F.3d 593, 607 (2d Cir.1999). Judge Shadur's ruling that the
counterclaim was untimely was interlocutory, and thus not a final judgment. In fact, it was not
a judgment at all. It was issued in December of 1997, and the final decision by the district
court didn't come until June 18 of last year. The ruling was also the plainest of plain errors,
requiring only a glance at the calendar to discover. The judge was led into the plain error
by the party seeking to correct it, but that is often the case. Had Prince's lawyer discovered
the error a few weeks earlier and brought it to Judge Shadur's attention before the judge ruled,
undoubtedly the judge would have held that the counterclaim was timely.

Although we can understand Judge Shadur's annoyance at being led into plain error, a judge's
refusal to correct a plain error that he had committed weeks before is not justified by the
doctrine of the law of the case, or anything else we can think of. Creek v. Village of
Westhaven, 144 F.3d 441, 446 (7th Cir.1998);  Evans v. City of Chicago, 873 F.2d 1007,
1013-14 (7th Cir.1989);  United States v. Zanghi, 189 F.3d 71, 79-80 (1st Cir.1999). Were
we to uphold the denial of reconsideration and dismissal of the counterclaim, we would be
penalizing Prince's lawyer for having asked Judge Shadur to correct his own mistake rather
than reserving the issue for an appeal, and we would thus be discouraging efforts by litigants
to purge errors before the case comes to us (perhaps it won't come to us if the errors are
purged). For if Prince had for the first time on appeal argued that Judge Shadur had erred
in dismissing the counterclaim as untimely, and if Pickett had responded that Prince had
waived the issue by failing to raise it in the district court, Prince would have appealed to the
doctrine of plain error to absolve him from the consequences of the waiver. And limited
though that doctrine is in civil cases, see, e.g., Deppe v. Tripp, 863 F.2d 1356, 1360-61 (7th
Cir.1988);  Smith v. Kmart Corp., 177 F.3d 19, 28 (1st Cir.1999), we would have invoked it
and reversed the dismissal of the counterclaim. The result should not be different merely
because, though apprised of the error, Judge Shadur refused to correct it.

It is conceivable though not argued that Prince's failure to discover that July 5, 1997, was a
Saturday (or to realize the significance of the fact) was harmful to Pickett;  but such an
argument would get nowhere, for it was as irresponsible for Pickett's lawyer to argue the
untimeliness of a counterclaim that he should have known was timely as it was for Prince's
lawyer to fail to refute the argument. As no effort was made to show that Pickett was harmed
by Prince's mistake (and it was, to repeat, Pickett's mistake as well), let alone so gravely
harmed as to warrant the dismissal of the counterclaim rather than just an order that Prince
reimburse Pickett for any expense occasioned by the mistake, we cannot think of any reason

6
 Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 time a person used a fact found in a book, be it in a school paper, newspaper, or another
(1991) book, that person would be guilty of piracy.

Facts. Rural Telephone Service Company, Inc. (Plaintiff) provides telephone service to
several communities. Due to a state regulation, it must issue an annual telephone directory,
so it published a directory consisting of white and yellow pages. The yellow pages have
advertisements that generate revenue. Feist Publications, Inc. (Defendant) is a publishing
company whose directory covers a larger range than a typical directory. Defendant distributes
their telephone books free of charge, and they also generate revenue through the advertising
in the yellow pages. Plaintiff refused to give a license to Defendant for the phone numbers in
the area, so Defendant used them without Plaintiff’s consent. Rural sued for copyright
infringement.

Issue. Are the names, addresses, and phone numbers in a telephone directory able to be
copyrighted – NO.

CONCLUSION:

• Facts cannot be copyrighted, however compilations of facts can generally be

copyrighted.
• To qualify for copyright protection, a work must be original to the author, which means
that the work was independently created by the author, and it possesses at least some
minimal degree of creativity. A work may be original even thought it closely resembles
other works so long as the similarity is fortuitous, not the result of copying.
• Facts are not original. The first person to find and report a particular fact has not created
the fact; he has merely discovered its existence. Facts may not be copyrighted and are
part of the public domain available to every person.
• Factual compilations may possess the requisite originality. The author chooses what
facts to include, in what order to place them, and how to arrange the collected date so
they may be effectively used by readers. Thus, even a directory that contains no written
expression that could be protected, only facts, meets the constitutional minimum for
copyright protection if it features an original selection or arrangement. But, even though
the format is original, the facts themselves do not become original through association.
The copyright on a factual compilation is limited to formatting. The copyright does not
extend to the facts themselves.
• To establish copyright infringement, two elements must be proven: ownership of a valid
copyright and copying of constituent elements of the work that are original. The first
element is met in this case because the directory contains some forward text. As to the
second element, the information contains facts, which cannot be copyrighted. They
existed before being reported and would have continued to exist if a telephone directory
had never been published. There is no originality in the formatting, so there is no
copyrightable expression. Thus, there is no copyright infringement.

Discussion. Facts cannot be subject to copyright laws; otherwise there would be no

spreading of information or learning. Subjecting facts to copyright laws would mean that any

7
 Roth Greeting Cards v. United Card Co., 429 F.2d 110 (9th Cir. 1970 of access and substantial similarity. In the present case there was clear and uncontradicted
testimony establishing United's access to the Roth cards. United brought Roth cards to its
offices. It sent its employees out to gift shows and retail stores where the Roth cards were on
RULE: Since direct evidence of copying is rarely available, copying may be established by display to observe "what the competition was doing."
proof of access and substantial similarity. Although in some circumstances the mere proof
of access and substantial similarity will not demand that the trier automatically find copying,
the absence of any countervailing evidence of creation independent of the copyrighted
source may well render clearly erroneous a finding that there was not copying.

FACTS: Roth Greeting Cards (Roth) and United Card Company (United) were both engaged
in the greeting card business. Plaintiff Roth brought the present action against defendant
United to recover damages and obtain injunctive relief for copyright infringement of seven
studio greeting cards. Roth alleged that United produced and distributed seven greeting cards
that bore a remarkable resemblance to seven of Roth's cards on which copyrights had been
granted. The district court ruled in favor of United on alternative grounds, lack of jurisdiction
and lack of infringement of any copyrightable material. The trial court based its jurisdictional
holding on 17 U.S.C. § 13, which stated that no action for infringement of copyright "shall be
maintained" until the provisions of Title 17 of the United States Code with respect to the
deposit of copies and registration of such work "shall have been complied with." Roth followed
the described three-step procedure in seeking copyright protection for its greeting cards on
June 6, 1966. The copyright office returned the applications for a change of category of
registration. The revised applications were placed in the mail to the copyright office on July
27, 1966, and received there on July 29, 1966. Roth filed this action on July 27, 1966, which
was the same day it mailed the revised applications, but two days before they were received
by the copyright office. Turning to the merits, the district court found that the art work in
plaintiff's greeting cards was copyrightable, but defendant United had not infringed.

ISSUE:

1. Did the district court have subject-matter jurisdiction – YES.

2. Was the artwork in Roth’s greeting cards copyrightable? If so, was it infringed by
defendant United – YES.

ANSWER:1) Yes. 2) Yes.

CONCLUSION: As to the first issue, the Court of Appeals for the Ninth Circuit concluded that
the district court had subject-matter jurisdiction. According to the Court, when Roth placed the
revised applications in the mail on July 27, 1966, it had done everything required of it under
the copyright law with respect to the deposit of copies and registration, and could therefore,
on that day "maintain" that action, giving the term "maintain" the strict construction the district
court adopted.

As to the second issue, the Court held that Roth’s cards were both original and copyrightable.
Considered as a whole, each of Roths’ cards, represented a tangible expression of an idea
and that such expression was, in totality, created by Roth. Moreover, the Court found that in
total concept and feel, the cards of United were the same as the copyrighted cards of Roth.
As regards the issue of copying, the Court averred that copying may be established by proof

8
 Childress v. Taylor, 945 F.2d 500 (1991
RULE: The Copyright Act defines a "joint work" as a work prepared by two or more authors
with the intention that their contributions be merged into inseparable or interdependent parts
of a unitary whole.
FACTS: Defendant Clarice Taylor, a performer on stage, radio, television, and in film for over
40 years, sought review of summary judgment as to plaintiff Alice Childress's copyright and
trademark infringement and related state law claims, brought pursuant to the Copyright Act,
17 U.S.C.S. § 101 et seq., the Lanham Act, 15 U.S.C.S. §§ 1051, 1125(a), and N.Y. Gen.
Bus. Law § 368-d (1984), alleging sole ownership of a play written by plaintiff with the
collaboration of defendant. Defendant contended that her contributions of research material
and ideas entitled her to joint authorship and shared rights in the play.
ISSUE: Did the trial court err in granting summary judgment to a playwright after determining
that a performer had failed to prove the elements of joint authorship?
ANSWER: No.
CONCLUSION: The Court of Appeals for the Second Circuit affirmed summary judgment,
holding that for joint authorship to exist, all participants had to have fully intended so at the
outset. As plaintiff never shared defendant's thoughts of co-authorship, and plaintiff rejected
defendant's attempts to negotiate a co-authorship agreement, plaintiff was considered the
sole author of the play entitled to full rights to the work.
Erickson v. Trinity Theatre, Inc., 13 F.3d 1061 (7th Cir. 1994)
RULE: A "joint work" is defined as a work prepared by two or more authors with the intention
that their contributions be merged into inseparable or interdependent parts of a unitary whole.
FACTS: Plaintiff Karen Erickson was one of the founders of Defendant Trinity Theatre d/b/a/
Trinity Square Ensemble (Trinity). Between 1981 and January 1991, Erickson served Trinity
in various capacities: as playwright, artistic director, actress, play director, business manager,
and member of the board of directors. The subject of the present case were the rights to three
plays: (i) Much Ado About Shakespeare (Much Ado); The Theatre Time Machine (Time
Machine); and Prairie Voices: Tales from Illinois (Prairie Voices). As regards the script Much
Ado, Erickson, together with others, made decisions as to what would be included in the texts.
Moreover, Erickson received a copyright registration for Time Machine in 1988. Erickson then
started producing the play independently of Trinity in 1984 with two other actors, Paddy Lynn
and Will Clinger. Erickson claimed that she worked to develop the scenes alone; however,
the evidence shows that the actors were involved in the development of the melodrama and
improvisational scenes. In 1990, Erickson developed Prairie Voices, a play based on tales
from Illinois history. As with Time Machine, Erickson worked with the actors in the
improvisational format; however, Erickson controlled what eventually was put in the script.
In 1987, Trinity began paying Erickson royalties for its performances of her plays. On July 5,
1988, Ms. Erickson entered into a two-year licensing agreement with Trinity that designated
her as a "playwright" entitling her to royalties for performances of two of her plays, Much Ado
and Time Machine. Erickson was also subject to an actors’ agreement with Trinity, wherein,
it was stipulated that Erickson agreed that Trinity reserved the right to any recording, audio,
video, or both of the Production. Eventually, Erickson left Trinity in January 1991. Shortly
thereafter, she applied for and was issued copyright registration for Much Ado and Prairie
Voices. Erickson's attorneys wrote Trinity a letter demanding that Trinity discontinue
performing the plaintiff's plays. Trinity refused to comply with the request.
Erickson then filed a 17-count complaint against Trinity, members of Trinity's management,
and individual Trinity actors seeking injunctive and legal relief in which she alleged copyright
infringement, unfair competition, and other related tortious activity. The magistrate judge
recommended enjoining the performance of the plays but not the use of the videotapes. Both
parties filed objections. The district court sustained Erickson's objections to the portions of
the recommendation addressing the videotapes but denied Trinity's objections to the portion
of the recommendation addressing performance of the plays. Accordingly, the district court
enjoined Trinity from using either the plays or the videotapes. Trinity appealed, contending
that several of its members were joint authors of the three plays with Ms. Erickson; that these
joint authors gave Trinity the right to produce the plays, and therefore that Trinity and its
member joint authors share rights to the plays and videotapes.
ISSUE: Did the district court err in granting a preliminary injunction against Trinity,
notwithstanding the alleged joint authorship of the subject works?
ANSWER: No
9
CONCLUSION: The Court affirmed the issuance of the preliminary injunction, rejecting the
"de minimis," or collaboration alone test, and applied the Goldstein "copyrightable subject
matter" test. The Court determined that other members of defendant theatre company were
not joint authors of the works in question because the parties did not intend to be joint authors
at the time the work was created and contributions to the works were not independently
copyrightable. According to the Court, actors making suggestions, ideas, and refinements
standing alone were not independently copyrightable materials, and therefore, these other
individuals did not qualify as authors of a joint work.
Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 1999)
RULE: Several factors suggest themselves as among the criteria for joint authorship, in the
absence of contract. First, an author superintends the work by exercising control. This will
likely be a person who has actually formed the picture by putting the persons in position, and
arranging the place where the people are to be—the man who is the effective cause of that,
or the inventive or master mind who creates, or gives effect to the idea. Second, putative
coauthors make objective manifestations of a shared intent to be coauthors. Third, the
audience appeal of the work turns on both contributions and the share of each in its success
cannot be appraised. Control in many cases will be the most important factor.
FACTS: Plaintiff Jefri Aalmuhammed claimed that the movie Malcolm X was a joint work of
which he was an author, thus making him a co-owner of the copyright. He filed an action in
federal district court against defendant Spike Lee and others, seeking a declaratory judgment
to that effect, and an accounting for profits. As for his copyright claims, Aalmuhammed was
not claiming copyright merely in what he wrote or contributed, but rather in the whole work,
as a co-author of a joint work. In addition to claims und the Copyright Act, the complaint
alleged breach of implied contract, quantum meruit, and unjust enrichment, and federal
(Lanham Act) and state unfair competition claims. Defendants filed motions to dismiss and a
motion for summary judgment. The district court dismissed some of the claims on defendants'
Rule 12(b)(6) motion to dismiss; the other claims were dismissed on defendants' motion for
summary judgment. Aalmuhammed appealed.
ISSUE: Was Aalmuhammed correct in his assertion that he was a co-author of the copyright
because he had creative contributions to the joint work?
ANSWER: No.
CONCLUSION: The appellate court affirmed the district court's dismissal of Aalmuhammed's
copyright claims, vacated the dismissal the dismissal of Aalmuhammed's implied contract,
quantum meruit, and unjust enrichment claims and remand those claims for further
proceedings. The court ruled, among other things, that the record before the district court
established no genuine issue of fact as to Aalmuhammed's co-authorship of the movie as a
joint work. The court ruled that creative contributions did not suffice to establish authorship of
the movie. Aalmuhammed did not at any time have superintendence of the work and he
lacked control over the work, and the absence of control was strong evidence of the absence
of co-authorship to the court. As to the non-copyright claims, the district court improperly
applied the two-year California statute of limitations on those claims, as opposed to the six-
year New York statute of limitations. New York's connection with Aalmuhammed's claim was
considerably more substantial, immediate and concrete than California's, and thus, the court
concluded, New York would suffer more damage to its interest if California law were applied
than would California if New York law were applied.
10
 Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989) worked in his own studio with his materials, and was a skilled sculptor. The Court held that a
work was a work for hire when either the work was prepared by an employee within the scope
of his or her employment or it was included in the list of nine categories of works enumerated
RULE: Section 101 of the Copyright Act of 1976, 17 U.S.C.S. § 101, provides that a work is in § 101(2). The Court rejected petitioners' arguments that the hiring party's right to control or
"for hire" under two sets of circumstances: (1) a work prepared by an employee within the actual control tests should determine whether the work was for hire. The Court stated that
scope of his or her employment; or (2) a work specially ordered or commissioned for use as
because the statute did not define the terms "employer" or "employee," they had to rely on
a contribution to a collective work, as a part of a motion picture or other audiovisual work, as
the conventional master-servant relationship understood by the common law. Upon
a translation, as a supplementary work, as a compilation, as an instructional text, as a test, determination of whether a work was prepared by an employee or by an independent
as answer material for a test, or as an atlas, if the parties expressly agree in a written contractor, the appropriate subsection of § 101 could be applied. The Court directed that on
instrument signed by them that the work shall be considered a work made for hire. remand the district court was to determine whether the parties were joint authors based on
preparation of the work with the intention that their contributions be merged into inseparable
In determining whether a hired party is an employee under the general common law of or interdependent parts of a unitary whole.
agency, courts consider the hiring party's right to control the manner and means by which the
product is accomplished. Among the other factors relevant to this inquiry are the skill required;
the source of the instrumentalities and tools; the location of the work; the duration of the
relationship between the parties; whether the hiring party has the right to assign additional
projects to the hired party; the extent of the hired party's discretion over when and how long
to work; the method of payment; the hired party's role in hiring and paying assistants; whether
the work is part of the regular business of the hiring party; whether the hiring party is in
business; the provision of employee benefits; and the tax treatment of the hired party. No one
of these factors is determinative.

FACTS: A nonprofit unincorporated association which was dedicated to eliminating

homelessness orally commissioned an artist to produce a statue to dramatize the plight of
homelessness. After the sculpture was completed and a dispute arose over it, competing
copyright registrations for the sculpture were filed by the sculptor and by an association
member, in the member's capacity as trustee of the association. The association and the
member then filed an action in a United States district court against the sculptor and another
person seeking a return of the sculpture and a determination of copyright ownership. The
district court, eventually ordering declaratory and injunctive relief, expressed the view that the
association was the exclusive owner of the copyright on the sculpture on the ground that the
sculptor had been an employee because the association was the motivating force in the
sculpture's production. On appeal, the Court of Appeals for the District of Columbia
Circuit reversed, expressing the view that the association could not claim ownership on the
basis of the work for hire doctrine, where (a) the work was not prepared by an employee
because the sculptor was an independent contractor under agency law, and and no written
agreement existed between the parties. Nevertheless, it found a remand was necessary to
determine whether the sculpture was a joint work by the sculptor and the association. The
association appealed.

ISSUE: Was the sculpture a work for hire under Section 101 of the Copyright Act?

ANSWER: No

CONCLUSION: The Supreme Court of the United States found that respondent was an
independent contractor and affirmed the judgment of the court of appeals. Respondent was
not an employee given the facts that he was hired only for one specific task for a limited time,

11
 Aymes v. Bonelli, 980 F.2d 857 (2d. Cir. 1992)
Before:  PRATT, ALTIMARI, and JACOBS, Circuit Judges. Clifford Scott Aymes, pro se.
Susan E. McHale, New York City (Thomas A. O'Rourke, Wyatt, Gerber, Burke & Badie, of
counsel), for defendant-appellees.
Plaintiff-appellant Clifford Scott Aymes appeals from a judgment entered in the United States
District Court for the Southern District of New York, dismissing his copyright infringement
action. Aymes initially filed his complaint in 1985 against defendants-appellees Island
Recreation Inc. (“Island”) and its president Jonathan Bonelli, alleging that they had infringed
his copyright to certain computer programs he had written for Island between 1980 and 1982.
The programs, collectively called CSALIB, were designed to facilitate Island's inventory,
record-keeping, and sales efforts in Island's business of operating a chain of retail stores
selling swimming pools and related supplies. Aymes alleged, among other things, that
defendants had violated oral commitments Bonelli made to use CSALIB on only one computer
at Island and to grant Aymes the exclusive right to modify the programs. This is the second
time that this matter has come to us for review, see Aymes v. Bonelli, 980 F.2d 857 (2d
Cir.1992), therefore we presume familiarity with the facts and circumstances of this case.
Following multiple pretrial motions, the district court held a bench trial on the issue of
infringement liability on September 10, 1991. By Memorandum Opinion and Order dated
September 24, 1991, the district court dismissed Aymes's complaint. It found that Bonelli
never agreed to limit his right to use the programs in a way that “would prohibit him from using
[the programs] for any other corporation he might form or from expanding his data processing
capability by adding a second computer.” In addition, the district court found that “there
never was a contractual commitment by Bonelli that Island would never in the future use any
other programmer to make modifications to the programs.”
In any event, the district court held, Island was the rightful owner of the program, under 17
U.S.C. § 201(b) (1988), because Aymes had prepared it in his capacity as an employee of
Island. In its Memorandum on Reconsideration dated November 6, 1991, the district court
adhered to its finding that Aymes was an employee whose work belonged to Island. Lastly,
by Memorandum Opinion and Order dated December 18, 1991, the district court awarded
Aymes $34,549.13 in monies due for his work on the program plus interest.
On remand, the district court again dismissed Aymes's complaint, noting that “[a]s the Second
Circuit anticipated, having considered the issues before me, I conclude that Mr. Aymes has
not prevailed on his infringement claim.” Agreeing with a finding from the 1988 district court
order denying defendants' motion for summary judgment, the district court stated, “[T]he
evidence is clear that Mr. Aymes sold the program to Island.” The district court also
reiterated the findings from its 1991 post-trial decision. The district court found it
unnecessary to reach the issue of whether Island could have used the program for its
subsidiary corporations, because it found that CSALIB had been used only by one corporation
and on one computer. Because of the absence of evidence of any copyright infringement,
the district court did not reach the joint-ownership issue.
On this appeal, Aymes argues principally that he owns the copyright to CSALIB and that any
modifications that Island made to the program, even for its own internal purposes, constituted
copyright infringement. We affirm the judgment of the district court for the reasons discussed
below.
DISCUSSION: Aymes contends that the defendants' modifications to CSALIB constituted
copyright infringement under 17 U.S.C. § 106 because he, as the owner of the copyright to
CSALIB, had the exclusive right to prepare derivative works. 17 U.S.C. § 106 provides:
CONCLUSION
In sum, defendants properly modified their copy of CSALIB to suit their own needs;  Island's
adaptations were essential to allow use of the program for the very purpose for which it was
purchased. Island used CSALIB on only one computer for one corporation and defendants
did not infringe Aymes's copyright.
The judgment of the district court is therefore affirmed.
GEORGE C. PRATT, Circuit Judge:

On the first appeal, we reversed the judgment of the district court and remanded for further
proceedings. Aymes, 980 F.2d at 865. We held that under Community for Creative Non-
Violence v. Reid, 490 U.S. 730, 109 S.Ct. 2166, 104 L.Ed.2d 811 (1989), Aymes as a matter
of law was an independent contractor, rather than Island's employee. We therefore found
that, as author of the program, Aymes owned the copyright, and we remanded for a
determination of Aymes's infringement claim. We noted, however, that based on the district
court's earlier findings, it appeared “unlikely” that Aymes would prevail. An additional issue
that required consideration on remand was whether Bonelli was a “joint owner” of the
copyright under 17 U.S.C. § 201(a) because of his contribution to its creation.

12
 Roeslin v. District of Columbia, 921 F. Supp. 793 (D.D.C.
1995)
Findings of Fact
D.O.E.S. is responsible for collecting and tabulating employment statistics for the District of
Columbia and the D.C. metropolitan area. It collects the statistics by mailing the Current
Employment Service ("CES") survey to area employers, and tabulating their responses.
D.O.E.S. transmits these statistics and estimates based thereon to the Federal Bureau of
Labor Statistics ("BLS") for its use in computing national labor statistics.
Plaintiff was hired by D.O.E.S. in November, 1986 for the position of a Labor Economist for a
four year term, and began work in the Labor Management Information Section of D.O.E.S.
He received a salary from the District and full benefits. At the time plaintiff was hired, he had
no computer programming skills, nor was his supervisor, Mr. Groner, aware of whether
plaintiff had any computer programming skills.
As a Labor Economist, plaintiff was charged with three tasks: (1) to improve employer
response rate to the CES survey; (2) to expand the CES sample size; and (3) to develop
industry and occupational employment projections. His job description listed his duties as: (1)
planning and carrying out projects for collecting detailed economic data; (2) evaluating and
adapting necessary statistical methods for the preparation of data; (3) planning, organizing
and operating programs (i.e. projects) for the collection, verification and presentation of data;
(4) selecting the most appropriate statistical methods; (5) preparing estimates of employment
and unemployment; and (6) preparing various reports and studies. He had discretion in
determining how to carry out these duties.
When plaintiff began working at D.O.E.S., employees manually collected the information from
returned CES surveys and recorded the information on office record cards. A data processing
staff would enter this data into the mainframe system. The estimates derived from this data
were computed manually with the aid of a computer. The District anticipated the future
development of the Automated Current Employment Statistics ("ACES") mainframe system.
Prior to developing the DC-790 system, plaintiff did use a computer to assist in the carrying
out of his duties, although he did not do any computer programming.[1] Plaintiff also assisted
in the "automation" of the office, that is, in transferring some of the work that was done
manually to already existing computer software applications. This task also did not involve
any computer programming.
Plaintiff was motivated to create the DC-790 system in June 1988 when he attended a CES
conference. Upon returning from the conference, plaintiff informed his supervisor, Mr. Groner,
that he believed a personal computer ("PC") based system could be created for the District's
CES surveys. Plaintiff testified that after checking with BLS, Mr. Groner informed plaintiff that
creation of a *796 PC-based program was neither feasible nor desirable, and told plaintiff not
to pursue the idea because he would be too busy with his other job duties, and because
D.O.E.S. had already decided to eventually implement ACES, the mainframe system.[2]
Nonetheless, plaintiff informed Mr. Groner that he would create a PC-based system on his
own time. Plaintiff testified that his motivation in creating the program was to prove that it
could be done and to develop job opportunities for himself. Mr. Groner told the plaintiff that
the program would be "in the public domain," which plaintiff took to mean that the system
would not be owned by anybody. Mr. Groner actually believed that the District would own the
program; he testified that he thought that the phrase "in the public domain" meant that the
District would own the program.
In August 1988, plaintiff purchased a personal computer with his own funds. In October 1988,
he purchased software using his own funds. Plaintiff taught himself how to program
computers using books that he purchased with his own funds.[3] He spent approximately
3,000 hours creating the various modules necessary to complete the DC-790 program, and
creating enhancements to the system. He completed the final module in January, 1991,
although most of the modules were completed by 1990. Plaintiff did all of this work at home.
He also tested each module at home, using hypothetical data. Nobody at D.O.E.S. directed
plaintiff to create the DC-790 system, supervised his doing so, or assisted him in doing so.
He was not offered compensation for the creation of the system.
After testing each module at home, plaintiff brought each module into work to test with actual
data. Some of the testing and debugging of various modules was done during office hours.
Once each module worked properly, plaintiff incorporated the modules into the PC system
operating at D.O.E.S. Shortly after the DC-790 system became operational, D.O.E.S.
personnel ceased using office record cards. Plaintiff also created an operating manual for the
DC-790 system in May 1990 in response to a request by an employee of the BLS Regional
Office. Plaintiff received positive performance appraisals based, in part, on his development
of the DC-790 system. Prior to April 1991, plaintiff attempted to promote the DC-790 system
to BLS, and demonstrated the system to some of its personnel during office hours.
Throughout this period, according to plaintiff's testimony, he relied on Mr. Groner's statement
to him that nobody would own the DC-790 system and that it would be in the public domain.
Plaintiff stated that he first learned that the District asserted a proprietary interest in the
program in April of 1991. At that time, he was provided with a copy of a letter from the District
to the State of Maine, in which the District stated that it had a proprietary interest in the
program. Defendant does not dispute that this is when plaintiff first learned that defendant
asserted a proprietary interest.
When plaintiff learned that the District claimed a proprietary interest in the DC-790 system,
he confronted Mr. Groner. He told Mr. Groner that if anyone owned the system (rather than it
being in the public domain), then he did, as the author of the program. Plaintiff and Mr. Groner
met to discuss the issue, at which time plaintiff requested recognition by the District that he
had independent ownership of the program, in exchange for which the District would be
allowed free use and distribution of the software. He also requested a promotion.
*797 In June of 1991, plaintiff placed a copyright notice on the initial screen of the DC-790
system. In June, through counsel, he notified the District's Corporation Counsel and the
Mayor's office of his claim of copyright ownership. He also demanded that the District stop
using the system. In December of that year, he filed for and received Copyright Registration
13
No. TXu 514 262 for the DC-790 system. The District never filed an application to register a
copyright for the system.
Despite plaintiff's notice of copyright ownership, employees of the District continued using the
system. Mr. Groner never instructed his employees to cease using the system.
general common law of agency. Community for Creative Non-Violence v. Reid, 490 U.S. 730,
740, 109 S. Ct. 2166, 2172-73, 104 L. Ed. 2d 811 (1989). There is no dispute in this case that
plaintiff was an employee of defendant. The question is whether he created the DC-790
system within the scope of his employment.

Plaintiff also gave notice that he would make no further modifications to the program if these
modifications required programming. From November of 1992 until June or July of 1993,
plaintiff was temporarily reassigned to the District's Office of Management, Information and
Data Systems. During this time, plaintiff was working under a job description of computer
programmer analyst. Plaintiff did not work on the DC-790 system while placed on this
assignment. While the DC-790 system was rendered inoperable during this time period, due
to an employee error, plaintiff was not asked to assist in correcting the problem.

In November of 1991, the District requested installation of the ACES system. The installation
of this system was completed in January 1993. Plaintiff assisted the District somewhat in the
conversion from the DC-790 system to the ACES system. He would not participate to the
extent that participation would involve his copyright. There was some delay in implementing
the ACES system, but according to plaintiff's testimony, some of which was due in no part to
plaintiff's behavior, and some of which was due to a combination of plaintiff's standing by his
copyright claim and defendant's delay in finding alternate sources of the information it sought
from plaintiff.

Based on a study conducted by a D.O.E.S. employee, Ms. Moore, the ACES system costs in
excess of $83,000 a year. $59,000 goes to programmers' salaries and $24,000 is attributable
to mainframe processing charges. Ms. Moore testified that the DC-790 system did not incur
the processing charges or the programmers' salaries.

Conclusions of Law

The central issue in this case is whether plaintiff, as the author of the DC-790 system, or
defendant, as plaintiff's employer, is the owner of the copyright on the DC-790 system.
Generally, the author of a work is the owner of a copyright. 17 U.S.C. § 201(a). However, in
the case of a "work made for hire," the owner of the copyright is the entity for whom the work
was prepared. Id. at § 201(b). The copyright statute defines a work made for hire as "a work
prepared by an employee within the scope of his or her employment." Id. at § 101. Because
plaintiff has received a copyright registration for the DC-790 system, the presumption is that
plaintiff owns the copyright. 17 U.S.C. § 410(c). The burden is thus on the defendant to
establish that the system is a work made for hire. See, e.g., Avtec Systems Inc. v. Peiffer, 21
F.3d 568, 571 (4th Cir. 1994); Design v. Lauren Knitwear Corp., 782 F. Supp. 824, 829 n. 11
(S.D.N.Y.1991).

The Supreme Court has held that to determine whether an individual was an employee, and
whether he created a work within the scope of his employment, courts should look to the

14
 Garcia v. Google, Inc. - 786 F.3d 733 (9th Cir. 2015)
RULE:

Preliminary injunctions are an extraordinary remedy never awarded as of right. An applicant

must satisfy a four-factor test. A plaintiff seeking a preliminary injunction must show that: (1)
she is likely to succeed on the merits, (2) she is likely to suffer irreparable harm in the absence
of preliminary relief, (3) the balance of equities tips in her favor, and (4) an injunction is in the
public interest.

FACTS:

A movie producer transformed plaintiff Cindy Lee Garcia's five-second acting performance for
a film titled "Desert Warrior" into part of a blasphemous video proclamation against the
Prophet Mohammed. The video was entitled "Innocence of Muslims." The producer uploaded
a trailer of the video to YouTube. Millions of viewers soon watched it online, according to
Garcia. News outlets credited the film as a source of violence in the Middle East. Garcia
received death threats, and as a result, Garcia filed a motion for a preliminary injunction in
federal district court against defendant Google, Inc., seeking to compel Google to remove the
video from all of its platforms, including YouTube. The district court denied the motion
for preliminary injunction against Google, and Garcia appealed asserting that the trial court
abused its discretion.

ISSUE:

Did the trial court err in denying Garcia's motion for preliminary injunction?
ANSWER:

No.
CONCLUSION:

The en banc court of appeals affirmed the district court's decision. The court held that the
district court did not abuse its discretion in denying Garcia's motion for a mandatory
preliminary injunction because the law and facts did not clearly favor her claim to a copyright
in her acting performance as it appeared in Innocence of Muslims. The en banc court credited
the expert opinion of the Copyright Office, which had refused to register Garcia's performance
apart from the film. The court also held that in the context of copyright infringement, the only
basis upon which the preliminary injunction was sought, Garcia failed to make a clear showing
of irreparable harm to her interests as an author. It further held that the injunction was
unwarranted and incorrect as a matter of law and was a prior restraint that infringed the First
Amendment values at stake.

15
Article 722 and 723, Civil Code
TITLE II
Intellectual Creation
Article 722. The author and the composer, mentioned in Nos. 1 and 2 of the preceding
article, shall have the ownership of their creations even before the publication of the same.
Once their works are published, their rights are governed by the Copyright laws.
The painter, sculptor or other artist shall have dominion over the product of his art even
before it is copyrighted.
The scientist or technologist has the ownership of his discovery or invention even before it
is patented. (n)
Article 723. Letters and other private communications in writing are owned by the person
to whom they are addressed and delivered, but they cannot be published or disseminated
without the consent of the writer or his heirs. However, the court may authorize their
publication or dissemination if the public good or the interest of justice so requires. (n)
Article 520 of the Civil Code
CHAPTER 3
Trade-marks and Trade-names
Article 520. A trade-mark or trade-name duly registered in the proper government bureau
or office is owned by and pertains to the person, corporation, or firm registering the same,
subject to the provisions of special laws. (n)
(5) The term of protection subsequent to the death of the author and the terms provided
by paragraphs (2), (3) and (4), shall run from the date of death or of the event referred to
in those paragraphs, but such terms shall always be deemed to begin on the 1 st of January
of the year following the death or such event.
(6) The countries of the Union may grant a term of protection in excess of those provided
by the preceding paragraphs.
(7) Those countries of the Union bound by the Rome Act of this Convention, which grant,
in their national legislation in force at the time of signature of the present Act, shorter terms
of protection than those provided for in the preceding paragraphs, shall have the right to
maintain such terms when ratifying or acceding to the present Act.
(8) In any case, the term shall be governed by the legislation of the country where
protection is claimed; however, unless the legislation of that country otherwise provides,
the term shall not exceed the term fixed in the country of origin of the work.
Article 7bis
The provisions of the preceding Article shall also apply in the case of a work of joint
authorship, provided that the terms measured from the death of the author shall be
calculated from the death of the last surviving author.

Articles 7 and 7bis, Berne Convention for the Protection of Literary and Artistic Works

BERNE CONVENTION FOR THE PROTECTION OF

LITERARY AND ARTISTIC WORKS (Paris Text 1971)
Article 7
(1) The term of protection granted by this Convention shall be the life of the author and fifty
years after his death.
(2) However, in the case of cinematographic works, the countries of the Union may provide
that the term of protection shall expire fifty years after the work has been made available
to the public with the consent of the author, or, failing such an event within fifty years from
the making of such a work, fifty years after the making.
(3) In the case of anonymous or pseudonymous works, the term of protection granted by
this Convention shall expire fifty years after the work has been lawfully made available to
the public. However, when the pseudonym adopted by the author leaves no doubt as to
his identity, the term of protection shall be that provided in paragraph (1). If the author of
an anonymous or pseudonymous work discloses his identity during the above-mentioned
period, the term of protection applicable shall be that provided in paragraph (1). The
countries of the Union shall not be required to protect anonymous or pseudonymous works
in respect of which it is reasonable to presume that their author has been dead for fifty
years.
(4) It shall be a matter for legislation in the countries of the Union to determine the term of
protection of photographic works and that of works of applied art in so far as they are
protected as artistic works; however, this term shall last at least until the end of a period of
twenty-five years from the making of such a work.
16