The Copyright Act preempts the GPL

Chloe Hoffman chloehoffman at
Tue Feb 17 05:50:08 UTC 2004

Not sure if you saw this language in the text:

The aspects of a derivative work added by the derivative author are that
author's property, but the element drawn from the pre-existing work remains
on grant from the owner of the pre-existing work. See Russell v. Price, 612
F.2d 1123, 1128 (CA9 1979) (reaffirming "well-established doctrine that a
derivative copyright protects only the new material contained in the
derivative work, not the matter derived from the underlying work"), cert.
denied, 446 U.S. 952 (1980); see also Harper & Row, Publishers, Inc. v.
Nation Enterprises, 471 U.S. 539, 547 (1985) ("The copyright is limited to
those aspects of the work - termed `expression' - that display the stamp of
the author's originality"). So long as the pre-existing work remains out of
the public domain, its use is infringing if one who employs the work does
not have a valid license or assignment for use of the pre-existing work.
Russell v. Price, supra, at 1128 ("[E]stablished doctrine prevents
unauthorized copying or other infringing use of the underlying work or any
part of that work contained in the derivative product so long as the
underlying work itself remains copyrighted"). It is irrelevant whether the
pre-existing work is inseparably intertwined with the derivative work. See
Gilliam v. American Broadcasting Cos., 538 F.2d 14, 20 (CA2 1976)
("[C]opyright in the underlying script survives intact despite the
incorporation of that work into a derivative work"). Indeed, the plain
language of 7 supports the view that the full force of the copyright in the
pre-existing work is preserved despite incorporation into the derivative
work. See 17 U.S.C. 7 (1976 ed.) (publication of the derivative work "shall
not affect the force or validity of [495 U.S. 207, 224]   any subsisting
copyright upon the matter employed"); see also 17 U.S.C. 3 (1976 ed.)
(copyright protection of a work extends to "all matter therein in which
copyright is already subsisting, but without extending the duration or scope
of such copyright"). This well-settled rule also was made explicit in the
1976 Act:

  "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 pre-existing material." 17
U.S.C. 103(b).

The plain language of the termination provision itself indicates that
Congress assumed that the owner of the pre-existing work possessed the right
to sue for infringement even after incorporation of the pre-existing work in
the derivative work.

  "A derivative work prepared under authority of the grant before its
termination may continue to be utilized under the terms of the grant after
its termination, but this privilege does not extend to the preparation after
the termination of other derivative works based upon the copyrighted work
covered by the terminated grant." 304(c)(6)(A) (emphasis added).

Congress would not have stated explicitly in 304(c)(6)(A) that, at the end
of the renewal term, the owner of the rights in the pre-existing work may
not terminate use rights in existing derivative works unless Congress had
assumed that [495 U.S. 207, 227]   the owner continued to hold the right to
sue for infringement even after incorporation of the pre-existing work into
the derivative work. Cf. Mills Music, Inc. v. Snyder, 469 U.S. 153, 164
(1985) ( 304(c)(6)(A) "carves out an exception from the reversion of rights
that takes place when an author exercises his right to termination").


In this case, the grant of rights in the pre-existing work lapsed and,
therefore, the derivative work owners' rights to [495 U.S. 207, 236]   use
those portions of the pre-existing work incorporated into the derivative
work expired. Thus, continued use would be infringing; whether the
derivative work may continue to be published is a matter of remedy, an issue
which is not before us. To say otherwise is to say that the derivative work
nullifies the "force" of the copyright in the "matter employed."

----- Original Message ----- 
From: "John Cowan" <cowan at>
To: "Chloe Hoffman" <chloehoffman at>
Cc: <license-discuss at>
Sent: Tuesday, February 17, 2004 12:16 AM
Subject: Re: The Copyright Act preempts the GPL

> Chloe Hoffman scripsit:
> > You may want to take a look at Stewart v. Abend.
> >
> An interesting case, but not really apropos, because the pre-1976
> copyright renewal scheme, like the corresponding termination provisions
> in post-1976 law, are specially intended to arrange for the rights to
> be recaptured by the author or his heirs.
> > This is not legal advice, etc.
> +1
> -- 
> After fixing the Y2K bug in an application:     John Cowan
>         WELCOME TO <censored>                   jcowan at
>         DATE: MONDAK, JANUARK 1, 1900 
> --
> license-discuss archive is at
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