Recognizing the derivative works right as a moral right: a case comparison and proposal.

• Author: Keller, Deidre A.

"All writers since immemorial time have been borrowers." *

"Th[e] utilitarian view of copyrights ..., embraced by Jefferson and Madison, stands in contrast to the 'natural rights' view underlying much of continental European copyright law...." **

CONTENTS INTRODUCTION I. A CASE COMPARISON: DOES THE DERIVATIVE WORKS RIGHT ALLOW COPYRIGHT OWNERS TO CONTROL DERIVATIVE USES? A. Arguments Propounded by the Plaintiffs: How Copyright Owners See the Derivative Works Right B. Arguments Propounded by the Defendants: How Secondary Users See the Derivative Works Right C. The Decisions of the District Courts: Trial Courts Construe the Derivative Works Right as a Mechanism for Control D. The Decisions of the Appellate Courts: The Eleventh Circuit's First Amendment Decision Dressed Up in Fair Use Clothes Versus the Second Circuit's Focus on Irreparable Harm to the Exclusion of Considering Defendant's First Amendment Arguments II. A BRIEF HISTORY OF COPYRIGHT IN THE UNITED STATES: A STUDY IN ACCRETION III. IN SEARCH OF A MOTIVATING PRINCIPLE: WHY DO WE PROTECT COPYRIGHT AND HOW DOES THIS INFORM OUR UNDERSTANDING OF THE APPROPRIATE CONTOURS OF THE DERIVATIVE WORKS RIGHT? IV. HOW DO WE SOLVE THE PROBLEM OF THE DERIVATIVE WORKS RIGHT? A. What Is the Problem of the Derivative Works Right? B. What are Moral Rights? V. A PROPOSED SOLUTION: UNDERSTANDING THE DERIVATIVE WORKS RIGHT AS A MORAL RIGHT A. The Contours of the New Section 106B B. Considering the Implications of the New Section 106B: Hypothetical Resolutions of SunTrust and Salinger CONCLUSION INTRODUCTION

All authors build upon the work of those who came before them. Perhaps the most revered copyright scholar of the twentieth century, Melville Nimmer, noted as much in opining that the musical and movie West Side Story was, at some level of abstraction, a retelling of Shakespeare's Romeo and Juliet. (1) Were Romeo and Juliet protected by the Copyright Act of 1976, the heirs of Shakespeare might well have a case for infringement of the derivative works right.

Copyright owners marshal the derivative works right to exert control over use of their works. (2) In such cases, courts tend to find in favor of the owners and, thereby, deprive the public of new works. (3) This Article will engage in a close reading of the cases concerning Gone with the Wind (4) and The Catcher in the Rye (5) in order to better understand the degree of control asserted by copyright owners and enforced by courts.

The term "derivative work" is defined broadly in the Copyright Act as "a work based upon one or more preexisting works, such as a translation, ... dramatization, fictionalization, motion picture version, ... abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted." (6) Section 106(2) reserves to the copyright owner the exclusive right "to prepare derivative works based upon the copyrighted work." (7) As such, the derivative works right is the only right in the copyright bundle represented by 17 U.S.C. [section] 106 that overtly limits the creation of new works. (8) The other rights articulated in [section] 106 limit reproduction, (9) distribution, (10) performance, (11) display, (12) and digital audio transmission (13) of the original work. (14) This renders the derivative works right the most problematic of the rights in the bundle because by limiting the creation and dissemination of new works it arguably implicates the First Amendment and runs counter to the purpose of copyright articulated in the Constitution, "To promote the Progress of Science and useful Arts." (15) This is so whether one understands that purpose as providing incentives for creation or dissemination of new works. (16)

This Article will demonstrate that copyright owners alleging infringement of the derivative works right and courts enforcing that right are often seeking to vindicate something other than an economic right--a moral right. (17) Moral rights, in this context, refers to the nonpecuniary interests recognized by many countries to be held by authors of creative works, specifically, the rights of attribution, disclosure, integrity, and withdrawal. (18) These rights are seen as protecting an author's personality interests in his creation. (19) As such, it is difficult to see how such rights are related to the utilitarian mandate embodied in the Constitution. (20) Therefore, moral rights ought to be distinguished from the pecuniary rights at the heart of copyright. There is an argument, of course, that such rights are not worthy of protection in the first instance. (21) But since courts enforce such rights in the guise of enforcing the derivative works right, this Article will presume that such rights are worthy of protection while arguing that in the absence of Constitutional justification and given the personal nature of moral rights, they should receive more limited protection. (22)

To accomplish these goals, [section] 106(2) of the Copyright Act of 1976 should be repealed and replaced with a more limited grant of rights subject to a compulsory license. (23) This new [section] 106(2) will protect a copyright owner's economic interest in derivative works. In addition, to the extent that the moral rights of literary authors are found to be worthy of protection, a new [section] 106B should be adopted. The moral right protected by the proposed [section] 106B should not apply to works made for hire, should be inalienable, and should be limited in duration to the lifetime of the author.

While neither Eldred v. Ashcroft (24) nor Golan v. Holder (25) centered on the derivative works right, both had implications for secondary uses of copyrighted works. In Eldred v. Ashcroft, the Supreme Court held that the Copyright Term Extension Act (CTEA) (26) passed constitutional muster. (27) The CTEA extended the copyright term from the life of the author plus fifty years to the life of the author plus seventy years. (28) This effectively postponed the availability of works for use by those wishing to create derivatives. In Golan v. Holder, the Supreme Court upheld the constitutionality of the Uruguay Round Agreements Act (URAA) (29) which removed from the public domain works that were previously available for use by secondary authors. (30) In both Eldred and Golan, the petitioners alleged that Congress exceeded the scope of authority granted to it in Article I, Section 8, Clause 8 of the Constitution (the Copyright Clause) and that the statutes in question infringed upon the First Amendment. (31) In both cases, the Court deferred to Congress's determination that the legislation in question "serve[d] the objectives of the Copyright Clause." (32) In Golan, the Court also clarified its statement from Eldred that heightened First Amendment scrutiny would be appropriate only in cases in which Congress altered the "traditional contours of copyright." The Golan Court limited the phrase "traditional contours of copyright" to the idea/expression dichotomy and the affirmative defense of fair use. (33) While this clarification had been long awaited, (34) this limitation significantly curtailed the arguments available to parties seeking to assert First Amendment challenges to new copyright legislation. (35)

In Part I, this Article will compare the cases concerning Gone with the Wind and The Catcher in the Rye in order to focus the inquiry on the derivative works right itself. While some of the existing literature proposes deploying strengthened First Amendment arguments in derivative works cases, (36) such arguments have proven largely ineffective in copyright infringement litigation. (37) Other scholars argue that fair use, properly applied, can function as a limit on the derivative works right. (38) Unfortunately, this strategy has also been unsuccessful. (39) Part I of this Article will undertake a review not only of the opinions but also the arguments advanced by the parties in the Gone with the Wind and Catcher cases to consider how copyright owners and secondary users understand the derivative works right and to determine which arguments appear to resonate in the opinions at the district and appellate court levels. This comparison will serve to develop the issues inherent in infringement determinations in the context of allegedly infringing derivative works and to demonstrate an attempt, on the part of both parties and courts, to vindicate a moral right, namely, the right of integrity.

In Part II, the Article will engage in a brief historical account of the evolution of copyright protection in the United States by way of tracing how the various changes impacted the protection afforded Gone with the Wind and Catcher. In Part III, the Article will consider the justifications for copyright in the existing literature. Part IV will pose the question of how we might solve the problems associated with the derivative works right and outline the existing literature on the protection of moral rights in the United States. Finally, in Part V, this Article proposes revising 17 U.S.C. [section] 106(2) and adopting a new [section] 106B. These revisions to the statute will serve three main purposes. First, they will render transparent the personhood interest often sought to be vindicated by copyright owners under the current [section] 106(2). Second, they will act as a restraint on the power of copyright owners to deny authorization for derivative works except in the limited circumstances where an individual author is asserting his or her moral rights. Finally, these revisions will bring the derivative works right more in line with the constitutional and historical moorings of copyright in the United States.

1. A CASE COMPARISON: DOES THE DERIVATIVE WORKS RIGHT ALLOW COPYRIGHT OWNERS TO CONTROL DERIVATIVE USES?

   Margaret Mitchell's Gone with the Wind, first published in 1936 and the recipient of a 1937 Pulitzer Prize, is set against the backdrop of the Civil War. (40) Its climax takes place in...