"Derivative Work" for Software Defined

Ravicher, Daniel (x2826) dravicher at pbwt.com
Wed Nov 13 14:48:14 UTC 2002

Thanks for your comments, Rod.

> A public
> re-distribution of the original work, for example, would trigger
> "compliance" as well...to the extent that compliance issues arise.

Correct, I've subsumed in the meaning of derivative work an exact copy of
the original work, at least partially, because, in some cases, distributing
an exact copy of the original work would not implicate the copyright laws if
that original work has no copyrightable interests.  As such, no compliance
with the license is necessary for such re-distribution of such an original
work either.  

I see your point, though, that distribution of an unmodified original work
may be seen by some as a different analysis from distribution of a
derivative work.  However, knowing that a court will first strip down an
original work to its copyright protectable elements leads one to see that
what one is actually distributing as "an exact copy of the [supposed]
original work," is in fact a derivative work of the protectable portions of
the original work.  So, in effect, the court will not compare what is
re-distributed with the whole of what is the original licensed work, unless
every portion of that original licensed work is copyright protectable, which
may or may not be likely.

> In your second paragraph, you indicate that the
> abstraction-filtration-comparison test established by the Second Circuit
> aimed at determining what constitutes a derivative work. Are you confident
> of this claim?  There may be a principled basis for your position, but
> laying out the test does not quite sufficiently make that point.

I'm absolutely confident that the AFC test, in certain Circuits, is the test
for determining whether a second computer software work is indeed a
derivative work of (aka is  "substantially similar to"; aka "is not an
independent or separate work from") an original computer software work.  In
other Circuits, a different, at least in name, standard exists.  This is not
based on principles, but the case law that I cited and if you KeyCite or
Sheppardize those cases, you'll find many more cases to support the

> I doubt that there would be the over-reaching by an open source
> copyright holder that is generally required to reach this phase of dispute
> since the purpose of these tests, ostensibly, is to allow the alleged
> infringer to go about his or her way if all that the court has before it,
> after application of the pertinent test, is uncopyrightable expression; it
> would be odd to see an open source developer attempt to make claim to

I guess we'll have to agree to disagree here.  My open source clients care
very much about defending their and the community's rights, to the fullest
extent that they exist, and routinely expect third-party infringers (esp
non-open source companies) to respect and conform to their rights.  They
don't see this as "over-reaching", but rather protecting erosion of the
community's hard work and effort.  If MS was to incorporate some copyright
protectable elements of open source code, I don't think it unwise for the
open source community to be vigilant about using the law that is good for
the goose and applying it to the gander.

Yes, of course there are disagreements about whether the current state of
copyright law vis-à-vis software is wise.  But, beyond those policy based
arguments that typically distract and detract from the community's more
important efforts, as a simple objective based decision, playing by the
rules to win, albeit perhaps being bad rules, is typically what those who
have invested significant resources will decide to do.

> Admittedly, it may be intriguing to determine whether these
> tests are suitable for derivative software work analysis, but courts seem
> be following a different track. At issue for courts, it seems to me, is a
> fuss over degrees of "modification;" namely, whether a modification is too
> trivial/simplistic or "too"  transformative to be deemed derivative
> a scale with the balance being the derivative measurement).  

Sorry, Rod, but I'm going to have to disagree with you on this point.  See
Tradescape v. Shivram, 77 F.Supp.2d 408 (SDNY 1999).  Comparing two works as
whole against one another to see how "significant" the diffs are between
them is absolutely not the test for derivative work in any Circuit.
Although such an initial "first look" is sometimes performed, it is not
determinative as it would too often lead a court to protect uncopyrightable
portions of the original work.

I think what you are addressing is whether the second author has significant
originality to be deserving of her own copyright in the derivative work.
See Torah Soft v. Drosnin, 136 F.Supp.2d 276 (SDNY 2001) ("All that is
needed for a finding of sufficient originality is a distinguishable
variation that is not merely trivial").  But, simply finding sufficient
originality such that a second work deserves its own copyright doesn't
impact the analysis of whether that second work is a derivative of the
original.  This is not just the case law, but is also required by statute in
that 17 USC 103 states that a derivative work can have copyrightable
interest.  This per se means that simply because a work deserves its own
copyright doesn't mean it isn't a derivative work.  Now, if that derivative
work is created unlawfully, then 103 states that no copyright can exist, but
that's really tertiary to your point.


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