Copyright Derivative Works

The right to create a derivative work belongs exclusively to the copyright holder. It is the right to make new versions or adaptations, and to modify a work, which permits the owner or grantee of this right freedom to improve a copyrighted work, and to create new copyrights that vest in the author or developer of the derivative work. This area of law is critical to rights holders and in business for the growth of an enterprise that needs flexibility with intellectual property rights.

A derivative work refers to the work as a whole, and not only to modifications to it. The preexisting material in the original work is part of the derivative work, but the copyright in the derivative work extends only to the material contributed by the author of the derivative work, as distinguished from the preexisting material employed in the work. The preexisting material employed in the derivative work is part of the copyrighted derivative work as a whole, but the copyright owner of the derivative-work copyright does not obtain exclusive copyright rights in the preexisting material.

Several sections of the Copyright Act, 17 U.S.C. §101, should be read and operate together regarding derivative work.

Section 101 defines “[a] ‘derivative work’ 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. A work consisting of editorial revisions, annotations, or other modifications which, as a whole, represent an original work of authorship, is a ‘derivative work’.”

Section 103(2) states that ”[t]he copyright in a derivative work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material.”

Under Section 106(2), the copyright owner has the exclusive right to prepare and authorize others to prepare derivative works based on a copyrighted work.

Under Section 203(b), “a derivative work prepared under authority of the grant [to prepare a derivative work] before its termination may continue to be utilized under the terms of the grant after its termination.” This means termination of the grant to prepare a derivative work can affect the right to prepare future derivative works based on the preexisting copyrighted work, but not the continued utilization of any derivative works made lawfull during the grant of the license from the copyright owner.

Section 304(c)(6)(A) reaffirms this principle. Absent contractual restrictions, the owner of the copyrights in the new version has the full range of exclusive copyrights in the new version as a whole, including the right to make derivative works of the derivative based on the new version as a whole — but not the right after the original copyright owner’s termination of the right to create derivative works based on the original preexisting copyrighted material.

The copyright and trademark lawyers at Lubin Austermuehle have over thirty-years of experience defending and prosecuting intellectual property claims for large and mid-size corporations and businesses. We are knowledgeable regarding the changes and complexities of copyright and trademark law. We are committed to fighting for our clients' property rights or defending them against baseless infringement claims at both the trial and appellate court levels. We have successfully defended large corporations in multi-million-dollar copyright or trademark infringement suits and regularly prosecute complex copyright infringement cases for computer software having achieved large six and seven figure settlements for our clients. Conveniently located in Chicago and Elmhurst, Illinois, we have successfully litigated intellectual property, trademark and copyright cases for clients all over the Chicago area. To schedule a consultation with one of our skilled attorneys, you can contact us online or give us a call at 630-333-0333.