Why the U.k. Adaptation Right Is Superior to the U.s. Derivative Work Right

• Publication year: 2021

92 Nebraska L. Rev. 843. Why the U.K. Adaptation Right Is Superior to the U.S. Derivative Work Right

Why the U.K. Adaptation Right Is Superior to the U.S. Derivative Work Right

Patrick R. Goold(fn*)

TABLE OF CONTENTS

I. History of the Derivative Work Right in Anglo-American Copyright ................................... 849
A. Anglo-American Copyright During the Eighteenth and Nineteenth Centuries ......................... 850
B. Derivative Works in Twentieth Century U.S. Copyright ......................................... 856
1. The 1909 Copyright Act ........................ 856
2. From 1909 to 1976 ............................ 858
a. Motion Pictures ............................ 860
b. Radio Broadcasting ........................ 862
c. Cable Television ........................... 865
3. The Copyright Act 1976 ........................ 866
C. Derivative Works in Twentieth Century U.K. Copyright ......................................... 868
1. The 1911 Act and the Gramophone Case ....... 869
2. The Copyright Act 1956 and the Copyright, Designs, and Patents Act 1988 ................. 871
D. Summary ......................................... 874

II. Modern Doctrine of the Derivative Work Right in Anglo-American Copyright ................................... 874
A. The Right of Reproduction ......................... 875
1. The U.K. Doctrine ............................. 875
2. U.S. Doctrine .................................. 876
B. The Derivative Work Rights ....................... 877
C. The Differences Between the Two Approaches ...... 878

1

1. Supplementary Works ......................... 878
2. Unfixed Adaptations ........................... 879
3. Mounting the Work ............................ 880
4. Sampling Small Quantities .................... 881
D. The Similarities Between the Two Approaches ..... 881
1. Remixes ....................................... 882
2. Colorization of Motion Pictures ................ 883
3. Motion Picture Characters in Video Games ..... 883
4. Sequels and Prequels .......................... 883

III. Rules Versus Standards and the Derivative Work Right ................................................. 884
A. The Economics of Rules and Standards ............ 884
1. Substantive Efficiency ......................... 885
2. Procedural Efficiency .......................... 886
B. Rules and Standards in the Derivative Work Right. 887
1. Substantive Efficiency ......................... 888
a. Defining Over- and Under-Inclusivity ....... 888
b. Over-Inclusivity ............................ 889
c. Under-Inclusivity .......................... 891
2. Procedural Efficiency .......................... 891

IV. Potential Solutions .................................... 892
A. Expansion of Fair Use ............................. 892
B. Derivative Work Guidelines ....................... 894
C. Statutory Amendment ............................. 894

V. Conclusions ........................................... 895

The author's exclusive right to prepare derivative works is one of the most maligned doctrines in modern U.S. copyright.(fn1) Lying at the root of this dissatisfaction is the Copyright Act's expansive conception of derivative works. The statute defines this term as "a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgement, condensation, or any other form in which a work may be recast, transformed, or adapted."(fn2) Courts apply the final clause of this definition (i.e. the "in any other form" language) very broadly, thus allowing the author control over an ever-expanding range of new adaptations. Controversially, courts have held the following types of activities to create derivative works: writing a trivia quiz book based on the TV show Seinfeld;(fn3) manufacturing computer chips that speed up a video game's rate of play;(fn4) cutting out pictures from a book of artwork and mounting them on

2

ceramic tiles;(fn5) and producing cassette tapes that, when inserted to the plaintiff's toy teddy bears, allowed the bears to speak and move.(fn6)

Commentators consistently bemoan this interpretation of the derivative work right as excessively broad.(fn7) They point out that such strong control over derivative works is unnecessary to provide authors with incentives to create new works;(fn8) that this control increases the costs of follow-on creation in the future;(fn9) and that it limits the ability of others to freely express themselves as protected by the First Amendment.(fn10) These problems have led scholars to call the derivative work right "highly problematic,"(fn11) label it the "most troublesome" area of copyright,(fn12) and question its constitutionality.(fn13) As a result,

3

various proposals now exist that demonstrate how the right could be restrained and transformed to better suit the underlying goals of copyright.(fn14)

However, so far these American scholars have not noticed that different countries approach the derivative work right in different ways.(fn15) Broadly speaking, states have developed two approaches to the derivative work right. Some states follow a standard-based approach, while others follow a rule-based approach. The distinction here is one of precision. Rules are highly precise legal commands (e.g. you must drive below 70 mph), while standards are imprecise commands (e.g. you must not drive "dangerously"). Rules are fixed and clear; standards are flexible and allow the court discretion in determining the law's content.(fn16) Under the standard-based approach to the derivative work right, the state provides the author a right over derivative works and then defines the term "derivative work" in a broad, vague, and open-ended fashion. The U.S. law demonstrates the standard-based approach par excellence. Including the "any other form" language in the Act made the author's right broad and vague while ultimately giving the court discretion to decide the law's scope.(fn17)

4

Accompanying the U.S. in this group are states such as Germany(fn18) and China.(fn19)

In contrast, the legislature that follows a rule-based approach defines precisely what types of derivative works fall under the author's right. Adopting this approach, the U.K. provides authors with a right to make adaptations(fn20) and defines the term "adaptation" narrowly in relation to the type of subject matter in question.(fn21) If a British author creates a literary work, he will receive the right to make adaptations, but adaptation in this context is limited to (a) translations, (b) dramatizations, and (c) conveying the story wholly or mainly by means of pictures.(fn22) Or if the author makes a musical work, the law will grant him exclusivity over (a) arrangements of the work and (b) transcriptions.(fn23) In no case is the author provided with a broad, open-ended right to control all adaptations.(fn24) Accordingly, courts are allowed much less discretion in determining what types of adaptations are capable of infringing copyright. Other countries following this approach include Australia(fn25) and Singapore.(fn26)

5

Currently, the U.S. is considering major copyright reform. The Register of Copyrights, Maria Pallante, has called for the "next great copyright act"(fn27) while others are working tirelessly to craft principles ensuring balance in the future legislation.(fn28) Given the controversy caused by the derivative works right, it is time to consider how other nations deal with this issue. This Article suggests that when reforming the derivative works right, the U.S. should adopt a rule-based approach, like the U.K.

In 1976, the U.S. adopted a standard-based derivative work right, hoping this would enable the law to flexibly extend over new, unforeseeable derivative works that may arise in the future. In contrast, the U.K. worried that a general adaptation right may lead to excessively broad law. Therefore, the U.K. narrowly tailored their adaptation right and tried to find flexibility to deal with novel adaptations elsewhere in the copyright system. Using economic literature on the comparative efficiency of rules and standards, this Article demonstrates how the U.K.'s approach was ultimately more efficient. Since enacting the Copyright Act 1976, U.S. law has become excessively broad. The lack of limits on the derivative work concept allowed authors to exclude many new welfare-enhancing works from the market. At the same time, the vagueness inherent in the standard-based approach makes application of the law much more complicated, time consuming, and costly. The U.K. avoided these problems by adopting a precise,

6

rule-based approach to derivative works. As a result, the perturbations surrounding the U.S. derivative works right do not exist in the U.K.

Part I of this Article explains why the U.K. and U.S. adopted different approaches to the derivative works right. Part II shows how this decision to adopt different approaches eventually led to different case outcomes. Part III compares the two approaches using economic literature on legal rules and standards. Doing so demonstrates how the U.S. standard-based approach is substantively too broad and procedurally too costly. Part IV considers some potential solutions to remedy the inefficiencies in U.S. law. This Article contends...