COPYRIGHT IN COMPILATIONS

IVAN HOFFMAN, B.A., J.D.



        Suppose you have created or own the rights of copyright in and to series of works (text, photographs etc.) and wish to compile those works into a separate product.  What are the copyright implications of this?

        In Xoom, Incorporated et. al vs. Imageline, Incorporated et. al., the Fourth Circuit Court of Appeals discussed these issues.

        These were the facts, as stated in part by the Court:

Imageline introduced PicturePak SuperBundle ("SuperBundle") on CD-ROM in 1994. SuperBundle contained 1,580 individual electronic clip-art images in CGM, WMF, and EPF formats. Imageline registered the art, text, and packing design for CD-ROM and diskette media with the United States Copyright Office ("Copyright Office").[footnote] The SuperBundle copyright registration became effective on March 12, 1996. The registration covered SuperBundle in its entirety; there was no specific mention of the individual clip-art images. However, Imageline deposited printed and electronic copies of each clip-art image with its registration application. The Copyright Office issued a second copyright to Imageline, effective May 3, 1996, for its data base, Imageline Master Gallery ("Master Gallery"), which contained updated versions of black and white line-art images that Imageline acquired from another company in 1991 and new images based on WMF software. Master Gallery encompassed 9,618 individual clip-art images in varying file formats for use in different operating systems and user environments.[footnote]
        The Court noted in the first-above footnote that
Imageline noted on its registration form that "PicturePak SuperBundle was compiled from five products created in 1991: PicturePak1; Picture Pak2; PicturePak3; PicturePak ValuePak 1; and Office Clips." The registration form also indicated that the material added to SuperBundle was: "New art and new text, as well as a new packaging design, for CD-ROM and diskette media.
        The Court noted in the second-above footnote:
Imageline noted on its registration form that SuperBundle was incorporated into Master Gallery.
        Xoom distributed its own product containing many thousands of images.  Imageline claimed that the Xoom product infringed on some of the images contained in the Imageline products.  Imageline and Xoom each sued each other for copyright infringement, among other claims.
Among the issues on appeal (and the relevant one for the purposes of this article) was whether or not Imageline held a valid copyright in the individual images contained within its above-mentioned collections.

        The Court stated:

Imageline argues that it registered, and therefore owned, copyright in the individual clip-art images through its copyright registrations of SuperBundle and Master Gallery as compilations or derivative works. We decline to make a determination of whether the individual clip-art images were effectively registered through the registrations of Super-Bundle and Master Gallery and find that Imageline's registration of SuperBundle and Master Gallery was sufficient to provide copyright protection to the underlying preexisting works of each. In the instant case, Imageline created SuperBundle and Master Gallery, both compilations or derivative works, and the underlying works which those products encompassed. The Second Circuit held, in Morris v. Bus. Concepts, Inc., 259 F.3d 65, 68 (2d Cir. 2001), that where an owner of a collective work also owns the copyright for a constituent part of that work, registration of the collective work is sufficient to permit an infringement action of the constituent part. [emphasis added]
        The Court further stated:
Similarly, in 1997, a district court in Kansas held that registration of a derivative work is sufficient to allow an infringement claim based on the copying of material, whether newly added or contained in the underlying work. In Re Indep. Serv. Orgs. Antitrust Litig., 964 F.Supp. 1469 (D. Kan. 1997); see also Foxworthy v. Custom Tees, Inc., 879 F.Supp. 1200, 1218 (N.D. Ga. 1995) (holding that "preexisting materials may be subject to copyright protection under the umbrella of a compilation copyright.").
        The Court held:
We adopt this view and reverse the district court, finding that because Imageline owned copyright in SuperBundle and Master Gallery and in the underlying works of each, its registration of Super Bundle and Master Gallery was sufficient to permit an infringement action on the underlying parts, whether they be new or preexisting.[footnote] Based on this holding, we do not address the issue of whether the registration of the products covered the individual clip-art images. If Xoom improperly used any copyrightable image contained in Super-Bundle and Master Gallery, new or preexisting, that usage would give rise to potential statutory damages.
        The United States copyright law states:
§ 103. Subject matter of copyright: Compilations and derivative works

(a) The subject matter of copyright as specified by section 102 includes compilations and derivative works, but protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully.

(b) 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.

        What this means is that although a claimant may claim a copyright in a compilation, that copyright only extends to those elements as to which the said claimant otherwise has rights of copyright.  In the above case, Imageline was the proprietor of the rights in the individual images and thus their compilation copyright was deemed to extend to those individual images.

        This issue becomes more complex when a derivative work or compilation is created under the authority of the copyright proprietor of the underlying work embodying materials contained in that underlying work the rights to which are owned by another party.   In such instances, the party seeking to create the derivative work or compilation and the party owning the rights to the included or underlying work must have a thorough, valid and written agreement covering these issues including the rights to copyright the derivative work or compilation and what rights are in fact granted or licensed to the compiler or creator of the derivative work.  Read “Derivative Rights and Web Sites.”   Also read “Compilation Rights in Book Contracts” and “Derivative Works.”

Conclusion

        Filing applications for copyright can, as you can see, be a bit complex, especially when using materials created by third parties.  Given the financial and other stakes, it is wise to seek legal advice from an attorney experienced in these matters.

© Copyright 2003 Ivan Hoffman.  All Rights Reserved.

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This article is not intended as legal advice and is not legal advice.  This article is intended to provide only general, non-specific legal information.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  This article is based on United States law.  You should consult with an attorney familiar with the issues and the laws of your country.  This article does not create any attorney client relationship.

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