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Creation of eBook Version of Translation Not a Derivative Work Under Copyright Act: S.D.N.Y.
Practical Law Legal Update 2-563-6226 (Approx. 4 pages)
Creation of eBook Version of Translation Not a Derivative Work Under Copyright Act: S.D.N.Y.
by Practical Law Intellectual Property & Technology
| Published on 04 Apr 2014 • USA (National/Federal) |
In Peter Mayer Publishers Inc. v. Daria Shilovskaya, the US District Court for the Southern District of New York granted plaintiff's motion for summary judgment declaring that plaintiff's creation of an eBook version of a print-edition translation is not a new derivative work for purposes of Section 104A of the Copyright Act, and does not infringe any copyright interest of the defendants.
On March 31, 2014, in Peter Mayer Publishers Inc. v. Daria Shilovskaya, the US District Court for the Southern District of New York granted summary judgment for the plaintiff, confirming its right to publish an eBook version of a translation that it already publishes in printed form. The district court held that the creation of an eBook version of the translation would not involve any content-based changes to the translation, and the new version adds no original components to the translation, and therefore is not a new derivative work for purposes of Section 104A of the Copyright Act. (No. 1:12-cv-08867-PGG (S.D.N.Y. Mar. 31, 2014).)
Background
Defendants Daria Shilovskaya and Sergey Shilovskiy are the descendants of Mikhail Bulgakov, the author of the Russian novel The Master and Margarita. The novel was written prior to 1940, and first published in France in 1968. At that time, it was not registered for copyright in the US. As a result, it concurrently entered the US public domain.
In 1989, Ardis Publishers, the predecessors-in-interest to the plaintiff, Peter Mayer Publishers, Inc., commissioned an English-language translation of the novel. Ardis registered a copyright for the translation in 1995 and published it in hardcover and paperback formats. The plaintiff succeeded to all rights in the translation when it purchased Ardis in 2001.
In 1994, Congress enacted the Uruguay Round Agreements Act (URAA). The URAA amended Section 104A of the Copyright Act to restore US copyright protection to foreign works in the public domain at the time of enactment, including The Master and Margarita. For restoration of copyright protection, Section 104A requires that:
- At the time the work was created, at least one of its authors was a native or domiciliary of an eligible source country.
- The work was not in the public domain in the eligible source country due to expiration of the protection period.
- The work was in the US public domain on the date of the URAA's enactment for one of three reasons:
- failure to comply with statutory formalities;
- lack of protection for sound recordings prior to 1972; or
- lack of a copyright relationship between the US and the country of production at the time of publication.
The Master and Margarita met these conditions, and its copyright was restored as of the URAA's effective date. Daria Shilovskaya filed a Notice of Intent to Enforce the restored copyright in 1997. Defendants received, and currently hold, a restored copyright interest in the novel as a result of the URAA.
In addition to restoring copyright protection to foreign works, Section 104A offered the following safeguards and benefits to parties that had relied on the public domain status of those works:
- Section 104A imposes no liability for any use of foreign works occurring before restoration.
- Reliance parties may continue to exploit a restored work until the owner of the restored copyright gives notice of an intent to enforce the copyright.
- Parties that create a "derivative work" are allowed to continue to exploit that work indefinitely as long as they pay the restored copyright holder reasonable compensation.
A derivative work is:
- A work based on a pre-existing work that changed or altered the pre-existing work's content.
- Itself an original work of authorship.
The plaintiff and the defendants agreed that plaintiff is a "reliance party" and that its translation is a "derivative work" that was commissioned and copyrighted while the original novel was in the public domain. The plaintiff has paid the defendants a reasonable royalty for its continued publication of the translation in print form.
When the plaintiff decided to publish its translation in eBook format, however, the defendants informed the plaintiff that they would file a copyright infringement action based on the new version. The plaintiff filed a declaratory judgment action, and moved for summary judgment that it may publish the eBook version of its translation. The plaintiff argued that publication of its translation as an eBook would not be a new derivative work that it is prohibited from exploiting, because it would be merely a copy of its print-version. The defendants opposed the plaintiff's motion for summary judgment, arguing that the plaintiff was impermissibly creating a new work in a different medium of expression without their authorization.
Outcome
The court granted the plaintiff's motion for summary judgment, declaring that it has the right to publish the translation in eBook format. Because the plaintiff is prohibited from creating a new derivative work based on The Master and Margarita post-URAA, but may continue to exploit its existing derivative translation, the court analyzed the Copyright Act's definition of a derivative work to determine if publishing the translation in eBook format constituted a new, prohibited derivative work. The court explained that a derivative work must be an original work of authorship that changes or alters a copyrighted work's content. The court found that republishing the translation in eBook format would meet neither of these requirements.
Publishing an Existing Translation in eBook Format Does Not Recast, Transform or Alter a Copyrighted Work
Section 101 of the Copyright Act lists a number of forms a derivative work can take, and also includes "any other form in which a work may be recast, transformed, or adapted" (17 U.S.C. § 101). The forms listed in the statutory definition all reference changes and alterations in the content of the pre-existing work, or changes and alterations in both the content and the medium of that work. None of the listed forms describe a change in medium alone. Further, the Copyright Act generally does not confer copyright protection on changes in medium alone.
The court recognized that an eBook is a separate medium from the original printed work, but explained that the process of transferring the print version of a translation to eBook form would only involve rote copying. Conversion of the translation does not alter or transform the original work. The eBook format is not therefore not a derivative work.
Conversion to eBook Format Does Not Create an Original Work
Section 101 of the Copyright Act also defines a derivative work as a work consisting of editorial revisions, annotations, elaborations or other modifications which, as a whole, represent an original work of authorship (17 U.S.C. § 101). A work that is not sufficiently original is not a derivative work. Originality is "distinguishable variation" that is more than "merely trivial."
The court emphasized that there is no degree of creativity and originality necessary to convert the print version of the translation into an eBook version. Instead, conversion of the print translation into eBook format consists of nothing more than "rote copying," which the US Supreme Court has held will not satisfy the originality component.
Since the conversion of the translation from a print version to an eBook format involves nothing more than copying, it is not an original work of authorship and is not a derivative work.
Practical Implications
This decision appears to be the first to rule on the question of whether conversion of a printed work into eBook format involves more than merely trivial variation on the original work so as to satisfy the originality element of the derivative work definition. The decision is also noteworthy for its finding that publication in eBook format is a change in medium only involving nothing more than rote copying.