Viral permissiveness

John Cowan cowan at
Mon Jan 26 07:26:11 UTC 2009

dtemeles at scripsit:

> I assume that what you are saying is that a non-exclusive licensee of  
> an original work that creates a derivative work can sue for  
> infringement of the original work to the extent it is included in the  
> derivative work.

Sort of.

> 17 U.S.C. § 103(b) provides:
> 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 preexisting material.

Quite so.  The first sentence says the derivator has no exclusive right
in the pre-existing material.  The second sentence tells us that he also
has an independent copyright in his work.

> I think an extreme example might highlight why your assertion cannot  
> be true.  Suppose that Pixar grants to me a non-exclusive license to  
> make a derivative work of one of their films.  I create and then  
> release a derivative that adds a 20 minute prequel and a 20 minute  
> scene in the middle of the movie to enhance a story line in the  
> prequel.  

This isn't a particularly realistic hypo; what's more, it might
turn out to be a compilation rather than a derivative work, since
your work is abutted to the original movie rather than interwoven
with it.

> [D]o you really think that I would be entitled to recover a dime for
> the infringer's copying and sale of the Pixar film simply because
> the infringer obtained the movie from me, a non-exclusive licensee?
> No chance.

Well, the commercial license between you and Pixar probably has
a contractual resolution of this point.

Let's try a more realistic hypo.  Alice writes a novel and licenses it
to Bob to make a movie from.  This is unquestionably a derivative work;
both are independently copyrightable.  Charlie then, without any license
from either Alice or Bob, makes another movie which uses only elements
Bob took from Alice and not anything that Bob added.  Do you suppose
that only Alice and not Bob can sue for infringement?  It seems to me
that both have an action, at least a priori: again, the contract
between Alice and Bob probably specifies who gets to sue Charlie.

IANAL, TINLA, but it is not UPL either.

John Cowan  cowan at
All "isms" should be "wasms".   --Abbie

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