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IP/Entertainment Case Law Updates

Peter Mayer Publishers Inc. v. Shilovskaya

District court holds that eBook version of translated Russian novel is not a new derivative work under the Copyright Act.

Plaintiff Peter Mayer Publishers, Inc., secured a copyright to the English translation of The Master and Margarita, a Russian novel written by Mikhail Bulgakov. The novel fell into the public domain for failure to comply with the formalities of the Copyright Act. Defendants are Bulgakov’s descendants and the owners of a restored copyright interest in the work under the 1996 Uruguay Round Agreements Act (“URAA”), codified at §104A of the Copyright Act. The URAA restored copyrights to certain foreign works, but also offered safeguards to those, like plaintiff, who had relied on the public domain status of those works. Those safeguards included the right to continue exploitation of the work, subject to the payment of reasonable compensation to the restored copyright owners. Defendants argued that, while plaintiff has a right to continue publishing the print versions of the translated novel, an eBook version would constitute a new derivative work and infringe on their restored copyright. The district court in plaintiff’s declaratory judgment action held that an eBook version of the translated novel did not constitute a new derivative work for purposes of §104A protection.

The court began by setting forth the requirements for restoration of copyright under the URAA: (1) at the time the work was created, at least one of its authors was a native or domiciliary of an eligible source country; (2) the work was not in the public domain in the eligible source country due to expiration of the protection period; and (3) the work was in the public domain of the U.S. on the date of the URAA’s enactment for one of three reasons: (i) failure to comply with statutory formalities, (ii) lack of protection for sound recordings prior to 1972, or (iii) lack of a copyright relationship between the U.S. and the country of production at the time of publication. The translated novel met all of these conditions, and its copyright was restored as of January 1, 1996, the URAA’s effective date.

The URAA also offered certain safeguards for parties who had previously relied on the public domain status of those works: (1) it imposed no liability for any use of foreign works occurring before the restoration; (2) it permitted reliance parties to continue to exploit a restored work until the owner of the restored copyright gave notice of an intent to enforce the copyright; and (3) it permitted parties who had created derivative works, like plaintiff, to continue to exploit those works as long as they pay the copyright holder reasonable compensation. Defendants contended that plaintiff’s reliance interest in the translated novel did not extend to an eBook version, which, according to defendants, would be an entirely new derivative work. Plaintiff argued that the eBook would merely be a copy of the translation and not a new derivative work.

The district court looked to Section 101 for the definition of derivative work, noting that the statutory definition requires a new recasting, transformation or adaptation of the original work, and that the derivative work contain separately copyrightable original expression. Here, the eBook version of the translation failed to satisfy either element. Interpreting the phrase “recast, transformed, or adapted,” the court looked to the examples cited in the statute and found that the types of works listed in the statutory definition all referred to 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 – but not to change in medium alone.

Moreover, the statutory definition of derivative work requires that the work represent “an original work of authorship.” Defendants argued that the eBook is an original work of authorship because the preparation of an eBook requires the exercise of human creativity, and the software that displays the eBook has the capability to alter the text, including by superimposing definitions of words in the book. The court, however, held that any minor formatting changes that take place when the translation is converted from print to eBook are legally insufficient to render the eBook a derivative work, and any separately copyrightable features of the eBook display software are not relevant to whether the eBook itself is a new derivative work.

Accordingly, the court held that because the conversion of the translated novel to eBook format constitutes a mere change in medium and is not sufficiently original, it is not a new derivative work. The court therefore granted plaintiff’s summary judgment motion.

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