When is a Particular Kind of Derivative Version Entitled to Copyright Protection as a Derivative Work?

The Copyright Office Weighed the Merits of Allowing Derivative-Work Copyrights on Colorized Versions of Movies



When It’s a Wonderful Life was released to theaters in 1946, the distributor prepared two ads which began with two black-and-white photos obviously shot in the same session, and added colors that differed from one ad to the other. Obviously, one or both of the colored photos presented color choices that never matched the original objects. Four decades later, the United States Copyright Office was confronted with the question of whether or how to confer copyright status on colorized versions of whole movies. Some film historians and art purists decried colorization as a desecration of the original black and white film, but the Copyright Office decided that colorized versions were entitled to copyright registrations separate from the black and white version. It’s a Wonderful Life is an appropriate film to illustrate this issue with side-by-image images with different color schemes, because there were two different colorized versions of this film (one in 1986 from Hal Roach Studios, Inc., with work done by Colorization, Inc., the other in 1989 from Republic Pictures Corporation with work done by American Film Technologies, Inc.

The concept of derivative works is the subject of an illustrations page of this web site. It is there that readers can learn more about the treatment under American law of compilations, adaptations, underlying works, abridgements, revisions, collections, and any other means by which an earlier work is incorporated into a subsequent one. (Links at the bottom of the page connect to seven pages of summaries of court decisions related to this topic.) Effort by itself does not make something eligible for copyright (courts have ruled this way) yet originality is enough for copyright to be conferred (here too, courts have ruled thus). When the Copyright Office began receiving requests to register works of a kind which never before had even been feasible, it had to decide whether to let there be registrations.

By the mid-1980s, companies sprang up which specialized in a new form of altering pre-existing copyrighted work: using computers for coloring entire movies originally shot in black-and-white. Colorization, Inc. sometimes contracted with the owners of older copyrighted films (most prominently Hal Roach Studios, Inc.) but often performed their modifications on movies that had fallen out of copyright (usually those that had been eligible for renewal but on which registration was not filed). Color Systems Technology had contracted with Turner Entertainment to add color to 150 movies in Turner’s massive library of films originally made by MGM, Warner Bros. and RKO. Both Colorization, Inc. and Color System Technology wanted the Copyright Office to accept registrations for colorized (or “computer-colored”) versions. Colorization, Inc. had spent $260,000 for just the conversion to color of It’s a Wonderful Life, on which it was relying that (a) the original black-and-white film was in the public domain for lack of renewal, and (b) its own work would be protected from infringement by means of a copyright on their derivative version. Although Colorization, Inc. had already shipped 125,000 VHS and Betamax cassettes to video stores by October 1986, “and TV syndication sales for it are booming” (according to an October 1986 news article), it wouldn’t always be the case that early sales would enable expenditures to be recouped quickly. Were copyright protection to be denied, the colorized edition of a public-domain movie would be in competition with legally-made unauthorized knock-offs after a very short time window. Even purveyors of computer-colored still-copyrighted black-and-white films preferred a separate copyright, so that the presumably-more-appealing new version could earn rental payments even after the original became fair game to everyone. (information sources: Los Angeles Times, October 2 and October 17, 1986)

The Copyright Office had to make its decision, and its role as an arm of Congress meant that the decision had to comply with the legal precepts already established. In June 1987, the Copyright Office issued its decision in the pages of the Federal Register (volume 52, pages 23443-23446). Below are portions that delineate that decision and which indicate the facts and principles which influenced that decision.

SUMMARY: This notice of a registration decision is issued to inform the public that the Copyright Office of the Library of Congress has determined that claims to copyright in certain computer-colorized versions of black and white motion pictures may be registered. The notice gives guidance to the public about the standards and practices governing registration of computer-colorized motion pictures. The notice also confirms the validity of existisig regulation 37 CFR 201.1(a), prohibiting copyright registration for mere variations of coloring.

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The Copyright Act also spells out that copyright protection in a 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.” 17 U.S.C. 103(b) (emphasis added).

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… Courts have held that while color per se is uncopyrightable and unregistrable, arrangements or combinations of colors may warrant copyright protection.¹
Between 1985 and 1986, several parties submitted the colorized versions of ten motion pictures and one television program to the Copyright Office for registration of the colorized version as a derivative work. The Copyright Office did not register any of these works. Because of the unusual nature of the claimed authorship and to obtain information about the process of creating the colorized versions from persons other than the claimants, on September 15, 1986, the Copyright Office published a Notice of Inquiry in the Federal Register (51 FR 32665) asking for comments in four specific areas.

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… the Copyright Office specified that aesthetic or moral arguments about the propriety of coloring black and white film did not, and could not, form any part of its inquiry.²

2. Summary of the Comments

In all 46 comments (43 original and three reply) were filed with the Copyright Office. Despite the Copyright Office’s caveat against arguments regarding aesthetic considerations, many of the comments filed related simply to the question of whether or not the commentator found the colorized motion picture aesthetically pleasing. And most did not.

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(b) Representing a modicum of creativity.
As to color selection the opponents claimed that an artist’s selection of palette is an idea that has not as yet produced any copyrightable expression. As to the “data base,” this party noted that copyright does not cover the factual content of a work and contended that it is the color facts in the data base which are integrated into a preexisting visual pattern of the black and white film that is being reprocessed. These patterns, it was argued, serve as the actual expression in the new video product, which merely organizes the facts previously compiled in a different order. Furthemore, the opponents argued that “the protectible forms in which the facts were once complied, that is, expressed and organized, say, as a computer-readable data base, will, in the final video product, be quite simply left behind… .” Finally, the opponents asserted that copyright in a computer program cannot also support a claim in the product or output of the program--in this case the color-recoded film.

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4. Registration Decision

After studying the comments responsive to the questions listed above, the Copyright Act, and the case law, the Copyright Office has concluded that certain colorized versions of black and white motion pictures are eligible for copyright registration as derivative works. The Office will register as derivative works those color versions that reveal a certain minimum amount of individual creative human authorship. This decision is restricted to the colorized films prepared through the computer-colorization process described above.
… The regulation also prohibits registration of multiple colored versions of the same basic design or work. Registration is not precluded, however, where the work consists of original selection, arrangement, or combinations of a large number of colors, or where the lines of an original design are fired by gradations of numerous colors. The Copyright Office finds that these registration practices are consistent with the standards of original authorship set by the Copyright Act, and we affirm the validity of the existing regulation.
The Office concludes that some computer-colorized films may contain sufficient original authorship to justify registration, but our decision is a close, narrow one based on the allegations that the typical colorized film is the result of the selection of as many as 4000 colors, drawn from a palette of 16 million colors. The Office does not consider registration would be justified based on a claimed “arrangement” or “combination” of the colors because the original black and white film predetermines the arrangement of colors. The Office is concerned about implications of registering a claim to copyright in public domain films based on colorizing, and we address that point below. …
… In determining whether the coloring of a particular black and white film is a modification that satisfies the above standard, the Office will apply the following criteria:
(1) Numerous color selections must be made by human beings from an extensive color inventory.
(2) The range and extent of colors added to the black and white work must represent more than a trivial variation.
(3) The overall appearance of the motion picture must be modified; registration will not be made for the coloring of a few frames or the enhancement of color in a previously colored film.
(4) Removal of color from a motion picture or other work will not justify registration.
(5) The existing regulatory prohibition on copyright registration based on mere variations of color is confirmed. When registration is warranted, the copyright will cover only the new material, that is, the numerous selections of color that are added to the original black and white film. The copyright status of the underlying work is unaffected. The black and white film version will remain in the public domain or enter the public domain as dictated by its own copyright term. When an underlying work is in the public domain, another party is free to use that work to make a different color version which may also be eligible for copyright protection.

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1. See also 1 Nimmer on Copyright 3 § 2.14 (1985).
2. Copyright registration determinations cannot be made on aesthetic grounds. Original works of authorship that meet the legal and formal requirements of the Copyright Act are entitled to registration. irrespective of their artistic worth. Moreover, the present federal copyright law does not extend protection to the so-called “moral right” of an author to prevent the distortion or mutilation of the work, after transfer of the copyright.

Dated: June 11, 1987.
Ralph Oman,
Register of Copyrights.
Approved by:
Daniel I. Boorstin,
The Librarian of Congress.
[FR Doc. 87-14091 Filed 6-19-87: 8:45 am]

Readers may profit from studying the arguments so as to understand which aspects of the adding of color to pre-existing movies were specifically relevant to the decision to grant copyright copyright status to them—and which ones were not considered in and of themselves to not warrant protection. In the event of yet another new twist on an old medium, these types of arguments might come under scrutiny again. Those wanting to read the full text of the above Federal Register announcement should seek from a reputable source (online or from a librarian) the text matching citation 52 FR 23443-23446.

Incidentally, computer-colored movies and television programs proved after a time not to draw substantially larger new audiences to older entertainment. The use of the practice came to be confined to a small number of specialized or enduringly-popular titles. Rob Word of Hal Roach Studios stated at a 1987 Senate Hearing, “We would not be doing this if we did not feel that we could at least get our money back through colorizing the film. But besides that, we are taking a film that nobody really cared about, preserving it, giving it lasting value and making it available to the public in both black and white and color.” (Reported in 53 FR 29889) It didn’t work out that way.