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10D underlying copyright
1909 Act: §6
1947 Act: §7
1976 Act: §103(a)
“That compilations or abridgments, adaptations, arrangements, dramatizations, translations, or other versions of works in the public domain, or of copyrighted works when produced with the consent of the proprietor of the copyright in such works, or works republished with new matter, shall be regarded as new works subject to copyright under the provisions of this Act but the publication of any such new works shall not affect the force or validity of any subsisting copyright upon the matter employed or any part thereof, or be construed to imply an exclusive right to such use of the original works, or to secure or extend copyright in such original works.” (1909 Act, §6; almost verbatim: 1947 Act, §7)
“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.” (1976 Act, §103(b))
“[T]he only ‘authors’ of a new version are those who contributed copyrightable matter to it. Thus, for renewal purposes, the person who wrote the original version upon which the new work is based cannot be regarded as an ‘author’ of the new version, unless that person also contributed to the new matter.” (Information Circular 15)
This was a case of infringement of copyright to four songs by exhibition of a motion-picture film that had the compositions recorded on the soundtracks. Exhibition was enjoined by restraining infringers “from printing, reprinting, copying, publishing, producing, reproducing, performing, or exhibiting the musical compositions aforesaid in the form of or by means of any negative or positive motion picture films, or otherwise.”
The 1933 Czechoslovakian movie Ecstasy contains music from beginning to end. Some of the tunes were compositions for which American rights were held by Foreign & Domestic Music Corp. After the movie belatedly began to be shown in the United States, the distributor had to contend with the fact that the music supplied on the soundtrack was (apparently) licensed for use in the movie in Europe but not in the United States.
Although the movie was made in 1933 and first shown in Europe that year, the litigated songs were copyrighted in the U.S. later:
“Oh, Play Tzigani,” copyrighted in U.S. 1-30-1936;
“Lost in Ecstasy,” copyrighted in U.S. 3-3-1936;
“What Do Gypsies Dream,” copyrighted in U.S. 3-3-1936 (this song a.k.a. “Down the Gypsy Trail,” copyrighted in U.S. 11-20-1940);
“Love Awakens in the Spring,” copyrighted in U.S. 3-11-1936. (All the copyright dates given here were “on or about” and all in the name of the plaintiff.)
The film was distributed (with prints delivered and shipped) October 1941, and in one engagement was shown July-September 1942. Defendant Harbran, Inc., operator of the Gaiety Theater at 1547 Broadway on Manhattan Island, was enjoined.
(EDITOR’S NOTE: English-language copies in common distribution during the late 20th-century tend to have Tchaikovsky’s “None But the Lonely Heart” (1869) substituted where generally-unfamiliar music appears in foreign-language editions. Comparisons between English-dubbed and Czech-language copies reveal the music substitutions. DVD editions have been issued of each.)
Some of the same issues were litigated in Foreign & Domestic Music Corp. v. Martin Licht et al, USCA 2nd Cir. (5-2-1952), 196 F.2d 627, 93 USPQ 272. It is reported therein that previously the plaintiff was awarded damages of $9800 from Wyngate, and $3800 from the Harbran Company, but that nothing was actually collected. In this later case, defendant Licht was the “medium” of distribution and exhibition. Defendant Astra Pictures exhibited Ecstasy to the Gaiety, among other venues. This later decision extensively discusses the licenses to perform. The decision remarks that it is permissible to own an infringing copy so long as it’s not sold or publicly performed for profit.
“The case involved the story, play and opera entitled Madame Butterfly. The novel was written in 1897 by John Luther Long, published that year in Century Magazine and copyrighted by the Century Company. In 1900 David Belasco wrote a play with the consent of the copyright owner which, however, was not copyrighted until 1917. In 1901 Long and Belasco entered into a contract with Ricordi giving it the exclusive right to make a libretto for an opera of Belasco’s dramatic version of Madame Butterfly. In 1904 Ricordi copyrighted the famous opera composed by Puccini and subsequently secured an assignment from Puccini’s son of the renewal copyright therein. In 1925 Long obtained a renewal of the copyright on his novel and in 1932, subsequent to Long’s death, his administrator granted the motion picture rights therein to Paramount. In the same year, with the Belasco play still in its first copyright term, Paramount obtained from the trustee of Balasco’s will an assignment of the motion picture rights to the play; no renewal of the copyright in the play was ever effected. Ricordi sought a declaration that it was entitled to make a motion picture of the opera free from any interference by Paramount. This court, speaking through Judge Swan for a particularly distinguished bench including Judge Learned Hand and Judge Frank, held that Ricordi was not entitled to so broad a declaration. Ricordi’s renewal copyright in the opera extended only to so much of the opera as was ‘a new work.’ Hence it was not entitled to make general use of the novel for a motion picture version of its opera but was restricted for that purpose to what was copyrightable as new matter in its operatic version.” (Summary quoted from Raymond Rohauer and Cecil Hull v. Killiam Shows and Educational Broadcasting Corp., USCA 2nd Cir. (1-7-1977). Facts given within confirmed by the web site editor from the 1950 decision.)
illustration: timeline chart of copyright status on various versions of Madame Butterfly.
EDITOR’S NOTE: On December 8, 1994, the United States Congress passed legislation which led the United States to respect foreign copyrights on foreign works, beginning January 1, 1996. Puccini’s copyright on the Madame Butterfly opera was still valid in his native Italy and thus had long been respected in a substantial number of countries having reciprocal-recognition copyright agreements with Italy. The United States had not been one of them. As noted above, Ricordi had arranged with Puccini’s heirs to extend Ricordi’s rights into and through the second term of the American copyright. Although the new law (which became Title 17 §104A(h)(6)) gave new copyright protection to foreign works “in the public domain in the United States due to … failure of renewal” (or due to other “noncompliance with formalities imposed at any time by United States copyright law”), this didn’t apply to this opera because its American copyright had been renewed. (See the Foreign page of this web site.) Thus, expiration of American protection ended with completion of the second term, in 1960. Had there not been that renewal, any foreign source-country copyright still in effect at the time of American entry into Berne would have to be respected, “for the remainder of the term of copyright that the work would have otherwise been granted in the United States if the work never entered the public domain in the United States.” As it was, the Italian copyright on the opera was still in effect on December 8, 1994, and still recognized in much of the world. Under Italian law, duration of copyright is life of the creator plus seventy years, plus the remainder of the final calendar year. Giacomo Puccini died November 29, 1924, so his Italian copyrights expired December 31, 1994 — a date shortly after passage of the new American law.
Filmvideo Releasing Corp. had bought foreign-country rights to the “Hopalong Cassidy” movies copyrighted by Paramount from 1935 to 1948 and had access to the original negatives for this purpose. It would be a boon for Filmvideo if it could release the films to American television, but it had not bought those rights. If the films were in every respect in the public domain, anyone could do so, and in that Filmvideo’s use of the negatives would give its copies superlative quality, it would be in an ideal situation to exploit that opportunity.
The books were written by Clarence E. Mulford from 1907 to 1935, and there were 26 books in all, each copyrighted, each renewed. (Because the ten copyright extensions enacted from 1962 to 1976 had kept valid all renewed copyrights in works originally registered from 1906 onward, even the 1907 book was still protected.) The decisions affirmed that the books were renewed, the copyrights still enforce, and that the movies could not be shown without authorization of the rights-holders of the novels. (The judge’s decision was reached before it was known that there would be no further extensions of copyrights for works registered 1906-1922, thus the decision doesn’t mention that the expiration of the copyright to the 1907 book at the end of 1982 placed its characters in the public domain.) The representative of the Estate of the late author attempted to have the petitioner’s rights to “foreign exhibition, distribution and exploitation” rescinded, but the Court noted that Filmvideo had merely sought declaratory judgement and had not actually infringed, so Filmvideo was allowed to retain the films to show abroad.
Click for a list of the 26 Hopalong Cassidy books listed in the decision plus the two books not, cross-referenced to the films which adapted them. Obviously, as of this web site being introduced, the 1907 book has entered the public domain. Those interested in using films from this series should realize that many of the screen stories were originals, thus without complications from underlying story rights.
Radio scripts for the Lone Ranger radio program had been copyrighted. Decades after these programs were first aired, the proprietors continued to license broadcasts and sold tapes for home playback. Copyright notice was on these tapes. Nonetheless, Program Radio Corporation created new editions of the tapes and sold them. In its defense, Program Radio Corporation said that it had remixed the tapes. The Court ruled that there had been infringement of the valid copyrights on the scripts which were underlying works of the performed programs. The Court said that in using the pre-existing copyrighted material as the basis of their new work, Program Radio Corporation had merely produced an unauthorized derivative work.
“The original version of Kismet was a dramatic play, written by Edward Knoblock in 1911. Knoblock copyrighted the play as an unpublished work in that year and again as a published work in 1912. Knoblock’s copyright expired in 1967, and the dramatic play Kismet entered the public domain.
“In 1952, plaintiff Edwin Lester acquired the right to produce a musical stage production of the dramatic play Kismet. Lester hired plaintiffs Luther Davis and Charles Lederer to write the libretto and plaintiffs Robert Wright and George Forrest to write the music and lyrics for the musical adaptation. [EDITOR’S NOTE: The musical themes came from Alexander Borodin, a Russian who lived 1833-1887. This had no bearing on the decision.] In 1953 and 1954, Lederer and Davis copyrighted their dramatico-musical play Kismet, and in 1953, Wright and Forrest assigned to plaintiff Frank Music Corporation the right to copyright all portions of the musical score written for Kismet… .
“In 1954, Lederer, Wright, and Forrest entered into a license agreement with Loew’s Inc., a predecessor of Metro-Goldwyn-Mayer, Inc., granting to it the right to produce a musical motion picture based on plaintiffs’ play. MGM released its motion picture version of Kismet” in 1955.
From April 26, 1974, the MGM Grand Hotel presented “a musical revue entitled Hallelulah Hollywood”. “It featured ten acts of singing, dancing and variety performances.” Four of the acts “were labeled as ‘tributes’ to MGM motion pictures of the past”. One of these acts was devoted to Kismet. “Comprised of four scenes, it was approximately eleven and one-half minutes in length… . Five songs were taken in whole or in part from plaintiffs’ play. No dialogue was spoken during the act, and, in all, it contained approximately six minutes of music taken directly from plaintiffs’ play.”
MGM “believed its use of plaintiffs’ music was covered by its blanket license agreement with the American Society of Composers, Authors and Publishers. In 1965, plaintiffs had granted to ASCAP the right to license certain rights in the musical score of their play Kismet.”
“Paragraph one of the ASCAP license gives MGM Grand the right to perform publicly ‘non-dramatic renditions of the separate musical compositions’ in the ASCAP repertory. Paragraph three excludes from the license ‘dramatico-musical works, or songs [accompanied by] visual representations of the work from which the music is take… .’” The District Court, Appeals Court and “defendants do not challenge the finding that their production contained these visual representations.” MGM contended that the visual representations “could be said to be derived from Edward Knoblock’s 1911 dramatic version of Kismet rather than from plaintiffs’ Kismet. Since Knoblock’s play is in the public domain, defendants contend these visual representations are not protectable by plaintiffs’ copyright.”
Both courts decided against MGM because the ASCAP license said that “visual representations [were not to] accompan[y] the songs. The license does not refer to ‘copyrightable’ visual representations.” MGM was made to pay a $22,000 award, covering the assumed percentage of profits due plaintiffs. Until “July 16, 1976, when the hotel substituted new music in Act IV”, the act had 1100 performances. Net profit for the revue “during the relevant time period was” $2,489,646. The other nine acts were non-infringing, and within Act IV there were other contributions to the success of the revue, so apportionment was applied.
(EDITOR’S NOTE: This case turned out to be decided on contract stipulations. The decision does not address how a case might be decided that is similar but where separate fees were charged for (1) a stage performance of the music with visual representations of whatever kind, and (2) the story associated with the music. In a situation of this kind, someone wanting to mount a production of a musical based on a still-copyrighted source would understand that he would need both licenses. However, in an instance where the source story had entered the public domain whereas the music remained under copyright, all parties should understand that only the music license would be necessary. To my knowledge, there has not been a trial with that particular issue.)
In a trial over a videocassette company having sold unauthorized copies of NBC’s 1960 broadcast of Peter Pan, the decision reports that NBC had looked into licensing the program to RCA’s videodisc enterprise. However, when NBC had made the arrangements for the 1960 broadcast, which is largely a performance of a theatrical musical version of the Sir James Barrie’s children’s story, it had licensed the underlying works for a limited time and limited conditions. (The Broadway production was a hit, and it was a coup for the network to engage that production’s star, Mary Martin.) “Peter Pan could not be licensed to RCA because NBC’s contractual right to license the show had expired. Another reason for the failure was that NBC never had the contractual right to sell tangible copies of Peter Pan. NBC and the Hospital for Sick Children [to whom Barrie bequeathed his rights] conducted preliminary negotiations on the subject but no licensing agreement was ever reached.” NBC had been able to—and did—license the show to broadcasters in five foreign countries from 1963 to 1968, but that had fallen within the time limits and had not been sales of tangible copies.
(A more thorough summary of this case is under limited publication of movies.)
“Silverman filed this lawsuit seeking a declaration that the Amos ‘n’ Andy radio programs broadcast from March 1928 through March 1948 (the ‘pre-1948 radio programs’) are in the public domain and that he is therefore free to make use of the content of the programs, including the characters, character names, and plots. He also sought a declaration that CBS has no rights in these programs under any body of law, including statutory and common law copyright law and trademark law. CBS asserted … that Silverman’s scripts [for a proposed Broadway musical] infringed CBS’s copyrights in the scripts for three post-1948 radio programs”
A lower court had determined that there were valid copyrights on the radio programs from 1948 onward.
“The District Judge [1986 case] then found that Silverman had had access to the scripts and had listened to the broadcasts, that the first script for his musical indisputably contained substantial portions of dialogue from at least one of the post-1948 radio scripts, and that Silverman was therefore liable for copyright infringement.” The post-1948 radio script from which Silverman copied “significant dialogue” was “not contained in the pre-1948 scripts”.
“The fundamental copyright principle applicable to this case is that a copyright affords protection only for original works of authorship and, consequently, copyrights in derivative works secure protection only for the incremental additions of originality contributed by the authors of the derivative works. Thus, the CBS copyrights in the post-1948 radio scripts [and] programs, and whatever rights it may have in the television scripts and programs (assuming for the moment that the programs have not been published without copyright notice) provide protection only for the increments of expression beyond what is contained in the pre-1948 radio scripts, which are in the public domain… .
“For Silverman, the basic copyright principle means that he is entitled to use the public domain material from the pre-1948 scripts and may do so up to the point… protected by valid CBS copyrights.
“With respect to the Amos ‘n’ Andy characters, which are at the heart of this litigation, we have no doubt that they were sufficiently delineated in the pre-1948 radio scripts to have been placed in the public domain when the scripts entered the public domain. What Silverman may not use, however, is any further delineation of the characters contained in the post-1948 radio scripts and the television scripts and programs, if it is ultimately determined that these last items remain protected by valid copyrights.”
The Appeals Court addressed whether the “visual representation of these characters, recorded on film, is the expression of an idea that goes beyond the word portraits in the public domain scripts”. The Court answered, “Since only the increments of expression added to the films are protectable, Silverman would infringe only if he copies these protectiable increments. It is, of course, likely that the visual portrayals of the characters added something beyond the delineation contained in the public domain radio scripts, but surely not every visual aspect is protected… . [T]he race of the characters was a feature fully delineated in the public domain scripts. Similarly, other physical features adequately described in the pre-1948 radio scripts may be copied even though those characteristics are visually apparent in the television films or tapes.”
CBS had not in any way traded on their Amos ‘n’ Andy characters since 1965, yet the network alleged it continued to hold trademark rights to them. “We conclude… that CBS’s trademarks, if valid, have been abandoned.”
(Findings (inconclusive) regarding the copyright status of the television programs are summarized under limited publication of movies.)
Passport assembled a compilation which they copyrighted as “Legends of Comedy.” It excerpted three coming-attractions trailers, one of which bore copyright notice. As the coming-attractions trailers were for earlier compilations, the footage selected had originally come from twelve Laurel & Hardy silent comedies. All were still under copyright. (The trailers advertised the compilation films The Golden Age of Comedy (1958), Laurel & Hardy’s Laughing 20’s (1965) and The Further Perils of Laurel & Hardy (1968), the latter being the one bearing notice.) “The defendants have not disputed Feiner’s assertion that, within the film industry, movie trailers are not sold outright for general consumption, it being industry practice to license trailers for exhibition only, the trailers themselves remaining at all times the property of the underlying proprietor.” Passport was permanently enjoined from using the works, and ordered to pay damages of $30,000 and attorney’s fees of $15,853.09.
EDITOR’S NOTE: Where the decision states that “The defendants have not disputed Feiner’s assertion that [it is] industry practice to license trailers for exhibition only,” this does not prove that the Court had determined that trailers distributed in this way don’t meet the criterion of “publication.” As verdicts in similar cases illustrate, a work can be deemed to have been “published” in “instances where prints went to regional offices as part of distribution, thus subject[ing] the copyright owner to loss of control.” (Quotation by M. Nimmer cited approvingly within the decision of Paramount Pictures Corp. v. Leslie Rubinowitz, et al (1981).) Section 62 of the 1909 Act and section 26 of the 1947 Act set the publication date as “the earliest date when copies of the first authorized edition were placed on sale, sold, or publicly distributed by the proprietor” (emphases made by web editor). The movie industry practice (then as now) is for the studios to supply trailers to National Screen Service, which serves as an industry “clearing house” for providing advertising material to theaters. That Passport and Diamond did not dispute Feiner does not prove that they would have won the case had they raised this defense, but rather that Passport and Diamond may have realized they would have lost for other reasons connected with their roundabout means of securing footage from the twelve copyrighted silent comedies without authorization.
Cases Summarized in Other Sections
|Metro-Goldwyn-Mayer Distributing Corporation vs Bijou Theatre Co. (launch this) had a studio suing a theater which believed that the copyrights it was violating were invalid because the underlying works on which the films were based did not fit an overly-literal interpretation of the copyright statute.
Cyril Russell etc., et al vs Daniel A. Price (launch this) decided that the valid copyright in the play Pygmalion controlled use of the (then) public-domain movie version of the play.
“[Section] 3 provides that one can obtain copyright in a work where parts of the work are already copyrighted. For example, one could obtain a copyright in an opera even though three of the songs to be used were already copyrighted. This, and only this, is what is meant in [Section] 7 when it states that ‘[c]ompilations or abridgements, adaptations * * * or other versions of works … or works republished with new matter shall be regarded as new works subject to copyright * * *. More important, however, is that under the express language of [Section] 3, one obtains a copyright on the entire work, but the parts previously copyrighted get copyright protection only according to the ‘duration or scope’ of the already existing copyright.” (Quotation from Certiorari to Supreme Court (1998) regarding Batjac v. Goodtimes (1998). The Supreme Court chose not to schedule an appeal.)
The decision in Mills Music v. Snyder (1980) discusses there being movies taken out of circulation owing to second-term rights:
“These included Thanks for the Memory [1938; starring Bob Hope], You Can’t Take It With You [the Academy Award winner for Best Picture of 1938; directed by Frank Capra, starring James Stewart], and The Man Who Came to Dinner [1941; starring Monty Woolley, Bette Davis and Jimmy Durante]. [The last two are both adaptations of plays written by the team of George S. Kaufman and Moss Hart.] Others, like Gone With the Wind, remained in circulation only because producers were willing to pay substantial sums to holders of copyrights in the underlying works. See Jaszi, When Works Collide: Derivative Motion Pictures, Underlying Rights, and the Public Interest, 28 UCLA L. Rev. 715, 740 (1981). If an author had assigned his rights in the renewal term at the time that he assigned rights in the initial term, a grantee might safely release a derivative work prepared under authority of the first-term grant. But if the author had died before his renewal rights vested, his statutory successors acquired those rights, and any previous assignment was rendered null. See Miller Music Corp. v. Charles N. Daniels, Inc., 362 U.S. 373 (1960). Movies based on plays or novels were therefore taken out of circulation when authors had died before their renewal rights had vested, and statutory successors or their assignees had renewed the copyright in the underlying work. Note, Derivative Copyright and the 1909 Act—New Clarity or Confusion?, 44 Brooklyn L. Rev. 905, 928, n. 125 (1978).” [Factual information within brackets in this paragraph was added by the website proprietor.]
The following quotation from a House Report indicates that the House of Representatives was studying the issue, with an eye to introducing a change in the law to eliminate the conditions by which derivative versions are withdrawn from circulation:
“[N]otwithstanding a termination, a derivative work prepared earlier may ‘continue to be utilized’ under the conditions of the terminated grant; the clause adds, however, that this privilege is not broad enough to permit the preparation of other derivative works. In other words, a film made from a play could continue to be licensed for performance after the motion picture contract had been terminated but any remake rights covered by the contract would be cut off. For this purpose, a motion picture would be considered as a ‘derivative work’ with respect to every ‘preexisting work’ incorporated in it, whether the preexisting work was created independently or was prepared expressly for the motion picture.” H. R. Rep. No. 94-1476, at 127 (1976). (This passage appears in a footnote within Mills Music Inc v. Snyder, 469 U.S. 153, 175 (1980))
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