1

Imagine 3 parties: A, B & C.

  • Party A owns all rights to image X. Image X is not in the public domain, and no explicit licenses for use to the other parties have been granted.

  • Party B adds some minor annotations to image X, and calls it image Y (whether or not the annotations are original enough to constitute a derivative work is unclear).

  • Party C then removes the annotations from image Y (so it is again visually similar to image X) and uses it (let's call it Image Z)

Party B now takes offence and claims copyright infringement against party C for image X/Y.

Does party B have a reasonable case for Cease & Desist against Party C in the following scenarios:

  1. Image Y does not contain annotations original enough to constitute a derivative work
  2. Image Y does contain annotations original enough to constitute a derivative work (bearing in mind that image Z contains none of the additional material in image Y)

Party A obviously have grounds to issue a C&D to both parties - but whether or not Party B have any such rights is unclear to me.

Edit - Follow Up Question

If instead Party B's work (Image Y) was an authorized derivative of A's work (Image X) - would Party B have the right to legally issue a C&D to Party C (still assuming C removed B's changes), or would it still have to come from Party A?

  • 3
    Did you mean to say "claims copyright infringement against party C for image X/Y"? – phoog Jul 25 at 3:55
  • @phoog Yes - thanks for catching that! – BBQ Jul 25 at 9:18
4

No

B holds no right to a copyright, if his work infringes on A's right to X. So he can't win against A and neither C or lawfully demand a C&D from C. See Anderson v. Stallone, 11 U.S.P.Q.2d 1161 especially IV A 4:

  1. Since Anderson's Work Is An Unauthorized Derivative Work, No Part Of The Treatment Can Be Granted Copyright Protection

Stallone owns the copyrights for the first three Rocky movies. Under 17 U.S.C. section 106(2), he has the exclusive right to prepare derivative works based on these copyrighted works. This Court has determined that Anderson's treatment is an unauthorized derivative work. Thus, Anderson has infringed upon Stallone's copyright. See 17 U.S.C. section 501(a).

[...]

Plaintiff has written a treatment which is an unauthorized derivative work. This treatment infringes upon Stallone's [*31] copyrights and his exclusive right to prepare derivative works which are based upon these movies. 17 U.S.C. § 106(2). Section 103(a) was not intended to arm an infringer and limit the applicability of section 106(2) on unified derivative works. As the House Report and Professor Nimmer's treatise explain, 103(a) was not intended to apply to derivative works and most certainly was not an attempt to modify section 106(2). Section 103(a) allows an author whose authorship essentially is the arrangement or ordering of several independent works to keep the copyright for his arrangement even if one of the underlying works he arranged is found to be used unlawfully. The infringing portion would be easily severable and the scope of the compilation author's own work would be easily ascertainable. Even if this Court were to interpret section 103(a) as allowing an author of an infringing derivative work to sue third parties based on the non-infringing portions of his work, section 106(2) most certainly precludes the author of an unauthorized infringing derivative work from suing the author of the work which he has already infringed. Thus, the Court HOLDS that the defendants are entitled to summary [*32] judgment on plaintiff's copyright claims as the plaintiff cannot gain copyright protection for any portion of his work under section 103(a). In addition, Anderson is precluded by section 106(2) from bringing an action for copyright infringement against Stallone and the other defendants.

Note that any change to a work - even a single stroke or word, or cutting out a single frame - makes something out of necessity a derivative work. No alteration whatsoever makes it a pure copy. And using figures from a work in a different setting makes them, by necessity, a derivate, as in Anderson v Stallone.

However, even if B's work was licensed or fair use (which can be done by critically recutting a work as in the h3h3 case or in Akila Hughs v Carl Benjamin aka Sargon of Akkad) and thus doesn't infringe on A's right, C still doesn't infringe on B's work: C's work is a (recreated) copy of A's original work, making it an infringement of A's work, but not B's altered work.

Fair Use is explicitly not infringing under 17 USC § 107

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  • Thanks for the info! To take this one step further - what would happen if B's work is an authorized derivative of A's work? But C removes B's changes - could B lawfully demand a C&D in this case? Or would A still need to issue the C&D? – BBQ Jul 25 at 15:37
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    I believe B still has copyright in the changes they made. Imagine that A took B's modified image and published it: does B really have no rights at that point? Maybe I should ask that as a separate question. – Paul Johnson Jul 25 at 15:51
  • 1
    @PaulJohnson On U.S. law Trish seems essentially correct on that point (see 17 U.S.C 103(a), also Anderson v. Stallone). Internationally, after doing a decent amount of searching, the stance seems to be mostly silence on the issue. – DPenner1 Aug 1 at 2:54
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    @DPenner1 I added the relevant part of ´the Anderson v Stallone decision – Trish Aug 14 at 11:33
2

No for other reasons. Whether B infringed on someone else’s copyright or not, B has the copyright on their changes. If C copied B’s modifications, B could sue C (and A could obviously sue B and C). But C removed all of B’s changes, so B’s copyright is not infringed. A can obviously sue.

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  • you can't gain a copyright by infringing on a copyright illegally. – Trish Jul 25 at 13:50
  • You can by adding things. If I sell a copy of a Harry Potter book with an additional chapter that I wrote myself, I have the copyright on that chapter. Of course selling the combination is copyright infringement. – gnasher729 Jul 26 at 22:02
  • that's not how it works! See Anderson v Stallone under IV A 4 - you don't own Harry Potter, your book is an unauthorized derivate and not fair use, so, just adapting the language: "This [book] infringes upon [Rowling]'s [*31] copyrights and [her] exclusive right to prepare derivative works which are based upon these [books]." – Trish Aug 14 at 11:35
2
+50

As to the extra question: any cease and desist directed at C should come from A.

Because a derivative work contains additional original material, the derivative portion is separately copyrightable. But the right to create derivative works belongs exclusively to the holder of the original copyright. 17 U.S.C. § 106. That original holder can transfer some or all of the rights, including the right to copyright the derivative portion.

The process for registering copyright in derivative works with the Copyright Office involves tracking the separate contributions of the original author and the derivative author. This circular describes the process.

Here A has copyright in X. Call the derivative X+. If A transfers the right to copyright a derivative of X, B essentially has copyright in the + portion when it's associated with X.

If Z ends up at X, courts would think of it as an infringement of the copyright on X. They wouldn't think of it as an infringement of the + associated with X. One reason for the outcome is that for something to be copyrightable it has to be fixed in a tangible medium. 17 U.S.C. § 102. That means the system cares about what gets fixed rather than the starting point.

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  • While the rights are detailed in 17 USC § 106 there's also the exception 17 USC § 107 (fair use) which might allow X+ without A's consent (like... Parody) – Trish Aug 5 at 17:57
  • @Trish +1. Fair use is a good point and definitely bears mention (though there's no need for a usage analysis if the rights at issue have been transferred). – Pat W. Aug 5 at 18:00
  • It's simply the one way to make X+ without needing a license from A. – Trish Aug 5 at 18:04
  • @Trish Exactly. – Pat W. Aug 5 at 18:05

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