One of the first questions to consider is whether the creation of described content by a third party, an individual or group other than the one that owns copyright in the audiovisual work being described, referred to in this paper as third-party described content (TDC), would be deemed the creation of a so-called derivative work. The creation of derivative works is one of the five exclusive rights that a copyright owner of an audiovisual work enjoys. See 17.U.S.C. §106(2). The Copyright Act also confers on the owner reproduction, distribution, public performance, and public display rights. The Act defines a derivative work as a "work based upon one or more pre-existing works" where the new work "recasts, transforms, or adapts" the pre-existing work. Further, the Act provides the following works as examples of derivative works: "translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, abridgement, condensation." 17 U.S.C §101
On first impression, it would seem that description of an audiovisual work would clearly be a derivative work. After all, is not description, by definition, based upon and intimately tied to the original copyrighted work, relating the most significant visual aspects of the work through a combination of faithful retelling of actions and other details along with the exercise of creative interpretive judgment? Couldn't it be considered to "recast, transform, or adapt" the original work? The answer to this question is key because, if TDC is determined to be derivative, unless the copyright owner has authorized it or unless the fair use defense discussed at length below applies, creation of TDC would be considered copyright infringement.
To understand whether TDC does in fact constitute a derivative work, it is important to understand the various ways in which description can be practically achieved. Description can be done live, with a narrator reading a prepared script or adlibbing description, as an audiovisual work is played. The narrator's voice can be either mixed into the audio of the original work or it can be heard in some other fashion that is entirely separate from the original soundtrack. Of course, description can be provided, whether or not it is simultaneously recorded, during live theatre and other events, though such live performances are not per se the focus of this discussion. With respect to audiovisual works, such as motion pictures or online videos, description can either be embedded in the work itself or it can exist outside of the work and be sequenced and even audibly mixed with it. The work may be copied and reproduced in its entirety, with a separately created audio track containing description replacing the original audio track altogether. Alternatively, the description script may be broken down into each of its constituent parts, with each part separately recorded, then digitally sequenced to run at each point during the original work. Thanks to computer technology, it is possible not to embed the description track or each of its component parts in the original work; a stand-alone track, or a series of short burst description tracks, can be run simultaneously with the original work and independently sequenced and mixed with the original work so that the user experiences the original work as though description is embedded in it.
To begin to wrestle with the question of whether description of a given audiovisual work constitutes a derivative work, let us focus on one way of delivering description that would intuitively seem to be the least likely to qualify as a derivative work. Suppose that on a given Sunday evening at 8:00 p.m., a major national broadcast network will air a made-for-TV movie entitled Mark My Words, a dramatization of the life story of one of this paper's authors. Suppose that viewers can place a toll call to join a listen-only teleconference to hear a live description of the movie performed by a volunteer narrator who pays all teleconference fees herself and does not charge callers to participate. Where do we start the analysis?
Copyright law has as a core concept the notion that the thing for which copyright ownership is claimed must be "fixed in a tangible medium of expression." See 17 U.S.C. §101 (providing that a work is "created" when it is "fixed" in a tangible medium of expression and further defining "fixed" as the "embodiment in a copy or phonorecord, by or under the authority of the author," in "sufficiently permanent or stable" manner "to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration."). A live spontaneous street performance, for example, would not be eligible for copyright protection, but the performer's video recording of such a performance would be. Applying the fixation requirement to the digital realm, a video game is a copyrighted work and the computer program that permits the game to be played embodies the fixation of the game. M. Kramer Mfg. v. Andrews, 783 F.2d. 421, (4th Cir. 1986).
In contrast, an artistically arranged garden is not fixed because its nature and appearance change constantly under the influence of forces of nature. Kelly v. Chi. Park Dist., 635 F.3d 290, (7th Cir. 2011). A person's likeness or persona is not fixed and therefore ineligible for copyright protection. Toney v. L'Oreal USA, Inc., 406 F. 3d. 905, (7th Cir. 2004).
We need not recite here the vast jurisprudence delineating the fixation requirement. Suffice it to note that a work has to be fixed in order to be eligible for copyright protection, including as a derivative work. What is less clear is whether a derivative work has to be fixed in order to be considered an infringing derivative. The question is pertinent because in our example, the describer of Mark My Words is providing her description live. It is not being fixed in any tangible medium of expression.
There is some ambivalence about whether the fixation requirement applies to infringing derivative works. The legislative history of the Copyright Act suggests that a derivative work could infringe copyright even when it is not fixed. See Tyler T. Ochao, Symposium Review: Copyright, Derivative Works and Fixation: Is Galoob a Mirage, or Does the Form(gen) of The Alleged Derivative Work Matter, 20 Santa Clara Computer & High Tec. L. J. 991, (2004). Court decisions, however, are less clear. For instance, in Lewis Galoob v. Nintendo, 964 F.2d 965, (9th Cir. 1992), the court held that an infringing derivative work need not be fixed. However, the court further held that such a work had to incorporate "pre-existing works in some concrete or permanent form" in order to infringe. The court did not define the terms "concrete or permanent form" leading some to conclude that it is equivalent to fixation. See Ochao, supra, at 1004. At least one subsequent court appears to have interpreted Lewis Galoob to hold that a derivative work has to be fixed in order to infringe. Thus, in MicroStar v. FormGen Inc., 154 F. 3d 1107, (9th Cir. 1998), the court cited Lewis Galoob for the proposition that a "derivative work must exist in some 'concrete or permanent form' in order to infringe on the original. Because in MicroStar the court considered the allegedly infringing derivative, a compilation of user generated video displays based on a copyrighted video game, to exist in "concrete or permanent form" in the computer program that contained instructions for these displays, the court found that an infringing derivative work had been created.
A relaxing of the fixation requirement for derivative works makes some common sense. It is useful to require claimants of copyright protection to point to the tangible thing they say they own, but such ownership includes the exclusive right to exploit such ownership in ways that are not particularly tangible, such as the right to do an unrecorded dramatic reading of one's own novel on a street corner. If someone other than the novel's copyright owner does the dramatic reading on the street corner without permission, such a performance is one of the copyright owner's exclusive rights and is an infringement even though such performance is not fixed in any meaningful way. In any case, the volunteer describer of Mark My Words who performs her description via an unrecorded conference call to whomever dials in may very well be considered to be performing a work that is derivative of the movie and hence an infringement. The mere fact that the description is live and unrecorded may not shield it per se from the claim that it is an infringing derivative work.
Let us now assume that the describer of Mark My Words records her description because she intends to use it the next time the movie may be broadcast, meaning that there is now no legal controversy over fixation. How might we determine that her description of the movie is not an infringing derivative work but simply an independent creation, or in the language of the Copyright Act, an "original work of authorship" for which the law is intended to afford protection? A review of prominent cases on this subject shows that the answer to this question is not clear.
Two cases in particular shed some light on the way courts conceive of derivative works as opposed to original works of authorship and suggest that a new work that presents the original in a new mode or medium, without the author's permission could be an infringing derivative work. Following this rationale, Mark My Words, which presents an audiovisual work in a new medium – an audio only description- could be considered an infringing derivative work. The first case, Castle Rock Entertainment v. Carol Publ'g Group, 150 F. 3d. 132, (2d. Cir, 1998), held that a trivia quiz book concerning the hit television situation comedy, Seinfeld, infringed copyright in the show because it copied substantial portions of creative expression from the Seinfeld series. The court noted that, that although "direct quotations or close paraphrases" that the defendant copied were "few and almost irrelevant", Id. at 140, the trivia book was substantially similar to the television series because quantitatively it copied "not a few but 643 fragments" and qualitatively each question in the book was based "directly upon original protectable expression" in Seinfeld. Id. at 139. Furthermore, in a side note to the fair use discussion, the court observed that a derivative work is one that "transform[s] an original work, into a new mode of presentation." Id. at 143.
Similarly, the court in Warner Bros. v. RDR Books, 575 F. Supp. 2d 513 (S.D.N.Y. 2008) held that a companion guide to the Harry Potter series that created an alphabetical index of "spells, characters, creatures, and magical items" and also included supplementary materials such as "commentary, essays, timelines, forums and interactive data" pertaining to the popular Harry Potter novels infringed copyright in the original Harry Potter series. The court repeatedly noted that the companion book borrowed "a troubling amount of quotation and close paraphrasing" from the original series. Id, at 527, 536, & 544.
In both Castle Rock and Warner Bros., the infringing materials either quoted directly from the original works or were otherwise so inextricably bound to them that the courts found them to be infringing. Note here that while the describer of Mark My Words is not directly copying the movie she is describing, her description is based completely on the original and is based directly upon "original protectable expression" as the Castle Rock court put it. Based on this analysis, a court could find the description of Mark My Words to be an infringing derivative.
In contrast to the findings in Castle Rock and Warner Bros., the holding in Lewis Galoob v. Nintendo, 964 F.2d 965, (9th Cir. 1992), possibly leads to the conclusion that the description of Mark My Words would be an original work of authorship itself deserving of copyright protection. In Lewis Galoob, a manufacturer of a game controller that allowed users to augment the strength and abilities of characters in Nintendo games was held not to have infringed Nintendo's copyrights. In reaching this conclusion, the Lewis Galoob court noted that the manufacturer did not, in any way, copy Nintendo's work, either in the display of game characters or in the underlying computer code that generated games. The manufacturer's product was simply a tool that users could add onto their Nintendo gaming experience to enhance play. The court noted that in order to be an infringing derivative, the subsequent work had to incorporate "pre-existing works in some concrete or permanent form." Because the game controller did not so incorporate any aspect of Nintendo's game, it was not a derivative work. Following this analysis, the audio description of Mark My Words, which does not incorporate any material from the show Mark My Words, could be considered an independent work of authorship and not an infringing derivative work.
What the case law seems to be suggesting then, is that works that incorporate or in some way recapitulate some aspects of a copyrighted work are likely to be viewed as infringing derivative works unless the copyright owner has authorized such works or unless the fair use defense, discussed below, applies. On the other hand, a court, following the Lewis Galoob analysis, may very well hold that the describer of Mark My Words is in fact creating an original work of authorship that enhances viewers' experience. Following the Lewis Galoob holding, it would seem that the likelihood that courts would regard a third-party-described movie as a derivative work would increase significantly to the extent that the description is embedded in the movie or appears to be embedded from the user's point of view. While the latter instance, the sequencing of description with the movie, does not result in per se copying of the original movie, such per se copying is not necessary to a finding that the independently achieved but sequenced description may nevertheless be a derivative work. The uncertainty, then, of the status of TDC as legally derivative of copyrighted works makes the following discussion of the fair use doctrine critical.
