IPL (Copyright) - E

1. Lipton vs The Nature Company (1995)

Terms of Venery
Facts:
James Lipton had a copyright over his book
titled An Exaltation of Larks. In particular, at
issue in this case was a compilation of terms
of venery collective terms for identifying
certain animal groups which Lipton gathered in
his book.
The defendant, Wein, filed for copyright
registration of a compilation of animal terms,
representing that the work was original to him.
He manufactured and sold posters of the
compilation to various zoos, libraries, and other
entities. He approached the Nature Company, a
retailer specializing in products about the
environment, to market his compilation.
Lipton filed a complaint for copyright
infringement and unfair competition against
Wein and Nature.
Wein denies copying any edition of Lipton's
book and claims that the terms used on the
Wein poster and the Multitudes products were
copied from a banner or scarf (the scarf) that
he received in the late 1960's while working as
an advertising executive in New York City.
Issue: Whether or not there is copyright
infringement.
Held: Yes. A successful claim of copyright
infringement pursuant to the Copyright Act, 17
U.S.C. 501 et seq., requires proof that (1) the
plaintiff had a valid copyright in the work
allegedly infringed and (2) the defendant
infringed the plaintiff's copyright by copying
protected elements of the plaintiff's work.
Although facts are considered to be in the
public domain and therefore not protectible
under copyright law, a compilation of facts
may be protectible in certain instances. Three
requirements must be met for a compilation to
qualify as protectible: (1) the collection and
assembly of preexisting data; (2) the selection,
coordination, or arrangement of that data; and
(3) a resulting work that is original, by virtue of
the selection, coordination, or arrangement of
the data contained in the work.
Although the defendants correctly assert
that the terms themselves are not original, the
uncontradicted evidence is that Lipton's
selection and arrangement of the terms were
original. In compiling his work, Lipton
assembled terms from various fifteenth century
texts and manuscripts. They were selected
from numerous variations of hundreds of

available terms. Furthermore, the defendants

offer nothing to contradict Lipton's assertion
that he selected the terms based on [his]
subjective, informed and creative judgment.
Lipton's arrangement of the terms is
similarly protectible. The defendants do not
challenge
Lipton's
statement
that
his
compilation does not replicate the sequence of
terms in any of the fifteenth century sources
that he consulted, nor do they contradict his
assertion that he repeatedly rearranged the
terms based upon his own aesthetic judgment.
Instead, they argue that because Lipton's
arrangement does not follow any sort of
alphabetical, chronological, or other system, it
is inherently unprotectible under copyright law.
This argument misconstrues governing case
law. We have held that while mechanical
arrangements,
such as
alphabetical or
chronological order, do not display the requisite
originality, any minimal level of creativity is
sufficient to render an arrangement protectible.
2. Waldman Publishing Corp vs Landoll Inc
(1994)
Facts:
Plaintiff Waldman publishes childrens
books, while its co-plaintiff, Playmore Inc, sells
and distributes them. The defendant, Landoll,
publishes, prints and sells childrens books.
Waldman published and Playmore sold a
series of books called Great Illustrated
Classics in both hard and soft covers. Among
the titles included in the series were "Oliver
Twist," "Robin Hood," "The Mutiny on Board
H.M.S. Bounty" (the Bligh account, not that of
Nordhoff and Hall), "Black Beauty," "Swiss
Family Robinson," and "David Copperfield."
In December 1993 Landoll published and
offered for sale soft cover illustrated
adaptations of these six books in a series
called "First Illustrated Classics." In January
1994 Landoll published and offered for sale the
same six adaptations in hard cover, in a series
called "Illustrated Classics."
The plaintiffs sued the defendant for
damages, contending that the texts and
illustrations of the Landoll books closely
resembled their own. In addition to the claims,
plaintiffs invoked Sec. 43(a) of the Lanham Act,
claiming that the defendant committed
reverse passing off.
Issue: Whether or not there is reverse passing
off.

1 | Page

IPL (Copyright) - E
Held: Yes. One of the deceptive practices
actionable under section 43(a) is that form of
false designation of origin known as "reverse
palming off" or "reverse passing off."

although both sides dispute how much profit

was actually made."[2]

In reverse passing off, the wrongdoer sells

plaintiffs products as its own. It contrasts with
passing off, where the wrongdoer sells its
products as the plaintiffs. A phonograph record
album creating the false impression that
defendant rather than plaintiff was the
principal performer constitutes reverse passing
off, actionable under section 43(a).

Wiley
sued
Kirtsaeng
for copyright
infringement and won in two lower courts. The
Second Circuit Court of Appeals upheld the ban
on importation of copyrighted works without
the authority of the U.S. copyright owner; this
set up a Circuit split with the Third Circuit and
the Ninth Circuit, which had had variant
approaches to the same question in other
cases.

In the case at bar, the evidence

demonstrates the likelihood of plaintiffs'
success on their claim that Landoll has
committed the Lanham Act tort of reverse
passing off. I base that conclusion upon the
similarities between the structure, texts and
illustrations of the competing adaptations:
similarities that are too striking to ascribe to
coincidence. The arrangements of chapters
mirror each other in each pair of books.

Kirtsaeng then appealed to the Supreme

Court, arguing the first-sale doctrine, a clause
in the United States copyright which enables
residents of the United States to resell legally
obtained objects without asking for the
copyright owner's permission, was more
important than the copyright owner's rights to
control importation of the owner's works under
US Law.

The Landoll books do not attribute their

editorial structure, texts and illustrations to
those individuals who created them. On the
contrary: the Landoll books identify different
individuals as the adapters and illustrators;
they display on their covers the Landoll logo;
and the inner pages contain a Landoll notice of
copyright which, in the circumstances of the
case, must be regarded as false. This conduct
constitutes reverse passing off. Landoll is
selling the Waldman products as Landoll's own
and under Landoll's name.
3. David Woods vs Bourne Co. (1995)
Tinatamad ako idigest.
fulltext below. Thanks!

Pakibasa

na

lang

4. Kirtsaeng vs John Wiley & Sons (2013)

Facts:
In 2008, John Wiley & Sons, Inc. filed suit
against Thailand native Supap Kirtsaeng over
the sale of foreign edition textbooks made
outside of the United States marked for sale
exclusively abroad which Kirtsaeng imported
into the United States.[1] When Kirtsaeng came
to America in 1997 to study at Cornell
University, he discovered that Wiley textbooks
were considerably more expensive to buy in
the United States than in his home country.
Kirtsaeng asked his relatives from Thailand to
buy such books at home and ship them to him
to sell at a profit. He sold the imported books
on eBay, "making $1.2 million in revenue,

Issue: Whether or not the first-sale doctrine is

applicable.
Held: Yes. In 2013, the U.S. Supreme Court
reversed the Second Circuit and held that
Kirtsaeng's sale of lawfully-made copies
purchased overseas was protected by the firstsale doctrine. The Court held that the first sale
doctrine applies to goods manufactured
outside of the United States, and the
protections and exceptions offered by the
Copyright Act to works "lawfully made under
this title" is not limited by geography. Rather, it
applies to all copies legally made anywhere,
not just in the United States, in accordance
with U.S. copyright law. Justice Stephen Breyer
wrote the opinion of the court which was joined
by five Justices (Roberts, Thomas, Alito,
Sotomayor, and Kagan); Justice Elena Kagan
wrote a separate concurring opinion, also
signed by Samuel Alito; and Justices Ruth
Bader Ginsburg, Anthony Kennedy, and Antonin
Scalia dissented. Kagan and Alito's concurrence
indicated their belief that Congress could
change the law in order to strengthen
copyright protections.
5. Pearl and Dean vs SM (2003)
See digests under Patent.
6. Joaquin vs Drilon (1999) Rhonda and
Me vs Its a Date

2 | Page

IPL (Copyright) - E
Facts:
BJ Productions Inc. (BJPI) was the holder of
copyright over the show Rhoda and Me. It holds
rights over the shows format and style of
presentation.
In
1991,
BJPIs
president
Francisco Joaquin saw on TV RPN 9s show Its a
Date, which is basically the same as Rhoda and
Me. He eventually sued Gabriel Zosa, the
manager of the show Its a Date. Zosa later
sought a review of the prosecutors resolution
before the Secretary of Justice (Franklin Drilon).
Drilon reversed the findings of the fiscal and
directed him to dismiss the case against Zosa.
Issue: Whether or not there is copyright
infringement.
Held:
No.
The
essence
of
copyright
infringement is the copying, in whole or in part,
of copyrightable materials as defined and
enumerated in Section 2 of PD. No. 49
(Copyright Law). Apart from the manner in
which it is actually expressed, however, the
idea of a dating game show is a noncopyrightable
material.
Ideas,
concepts,
formats, or schemes in their abstract form
clearly do not fall within the class of works or
materials susceptible of copyright registration
as provided in PD. No. 49. What is covered by
BJPIs copyright is the specific episodes of the
show Rhoda and Me.
Further, BJPI should have presented the
master videotape of the show in order to show
the linkage between the copyright show
(Rhoda and Me) and the infringing show (Its a
Date). This is based on the ruling in 20th
Century Fox vs CA (though this has been
qualified by Columbia Pictures vs CA, this is still
good law). Though BJPI did provide a lot of
written evidence and description to show the
linkage between the shows, the same were not
enough. A television show includes more than
mere words can describe because it involves a
whole spectrum of visuals and effects, video
and audio, such that no similarity or
dissimilarity may be found by merely
describing the general copyright/format of both
dating game shows.
7. Filipino Society of Composers, Authors
and Publishers Inc vs Tan (1987)
Facts:
Plaintiff Filscap was the owner of certain
musical compositions such as Dahil Sa Iyo,
Sapagkat Ikaw Ay Akin, Sapagkat Kami Ay
Tao lamang and The Nearness of You.
Meanwhile, defendant was the owner of a
restaurant known as Alex Soda Foundation

and Restaurant where musicians played live

songs including those mentioned above.
Filscap
thus
infringement.

sued

for

copyright

Issue: Is there copyright infringement?

Held: No. It is admitted that the patrons of the
restaurant in question pay only for the food
and drinks and apparently not for listening to
the music. As found by the trial court, the
music provided is for the purpose of
entertaining and amusing the customers in
order to make the establishment more
attractive and desirable (Record on Appeal, p.
21). It will be noted that for the playing and
singing the musical compositions involved, the
combo was paid as independent contractors by
the appellant (Record on Appeal, p. 24). It is
therefore obvious that the expenses entailed
thereby are added to the overhead of the
restaurant which are either eventually charged
in the price of the food and drinks or to the
overall total of additional income produced by
the bigger volume of business which the
entertainment was programmed to attract.
Consequently, it is beyond question that the
playing and singing of the combo in defendantappellee's restaurant constituted performance
for profit contemplated by the Copyright Law.
The Supreme Court has ruled that
"Paragraph 33 of Patent Office Administrative
Order No. 3 (as amended, dated September 18,
1947) entitled 'Rules of Practice in the
Philippines Patent Office relating to the
Registration of Copyright Claims' promulgated
pursuant to Republic Act 165, provides among
other things that an intellectual creation should
be copyrighted thirty (30) days after its
publication, if made in Manila, or within the
(60) days if made elsewhere, failure of which
renders such creation public property." (Santos
v. McCullough Printing Company, 12 SCRA 324325 [1964]. Indeed, if the general public has
made use of the object sought to be
copyrighted for thirty (30) days prior to the
copyright application the law deems the object
to have been donated to the public domain and
the same can no longer be copyrighted.
A careful study of the records reveals that
the song "Dahil Sa Iyo" which was registered
on April 20, 1956 (Brief for Appellant, p. 10)
became popular in radios, juke boxes, etc. long
before registration (TSN, May 28, 1968, pp. 3-5;
25) while the song "The Nearness Of You"
registered on January 14, 1955 (Brief for
Appellant, p. 10) had become popular twenty
five (25) years prior to 1968, (the year of the
hearing) or from 1943 (TSN, May 28, 1968, p.

3 | Page

IPL (Copyright) - E
27) and the songs "Sapagkat Ikaw Ay Akin" and
"Sapagkat Kami Ay Tao Lamang" both
registered on July 10, 1966, appear to have
been known and sang by the witnesses as
early as 1965 or three years before the hearing
in 1968. The testimonies of the witnesses at
the hearing of this case on this subject were
unrebutted by the appellant. (Ibid, pp. 28; 29
and 30).
Under the circumstances, it is clear that
the musical compositions in question had long
become public property, and are therefore
beyond the protection of the Copyright Law.
8. ABS-CBN vs Philippine
System Inc (2009)

Multimedia

Facts:
ABS-CBN is engaged in television and radio
broadcasting through wireless and satellite
means while Philippine Multi-Media Systems
Inc. (PMSI for brevity), the operator of Dream
Broadcasting System provides direct-to-home
(DTH) television via satellite to its subscribers
all over the Philippines.
PMSI was granted legislative franchise
under RA 8630 to install, operate and maintain
a nationwide DTH satellite service and is
obligated under by NTC Memorandum Circular
No. 4-08-88, Section 6.2 of which requires all
cable television system operators operating in
a community within Grade A or B contours
to carry the television signals of the authorized
television broadcast stations (must-carry
rule).
ABS-CBN filed a complaint with Intellectual
Property Office (IPO) for violation of laws
involving property rights. It alleged that PMSIs
unauthorized rebroadcasting of Channels 2 and
23 infringed on its broadcasting rights and
copyright and that the NTC circular only covers
cable television system operators and not DTH
satellite television operators. Moreover, NTC
Circular 4-08-88 violates Sec. 9 of Art. III of the
Constitution because it allows the taking of
property for public use without payment of just
compensation.
PMSI argued that its rebroadcasting of
Channels 2 and 23 is sanctioned by
Memorandum Circular No. 04-08-88; that the
must-carry rule under the Memorandum
Circular is a valid exercise of police power.
Issue: Whether or not there was copyright
infringement.
Held: No. PMSI does not infringe on ABS-CBNs
broadcasting rights under the IP Code as PMSI

is not engaged in rebroadcasting of Channels 2

and 23. Rebroadcasting, which is prohibited by
the IP Code, is the simultaneous broadcasting
by one broadcasting organization of the
broadcast
of
another
broadcasting
organization. ABS-CBN creates and transmits
its own signals; PMSI merely carries such
signals which the viewers receive in its
unaltered form. PMSI does not produce, select,
or determine the programs to be shown in
Channels 2 and 23. Likewise, it does not pass
itself off as the origin or author of such
programs. Insofar as Channels 2 and 23 are
concerned, PMSI merely retransmits the same
in accordance with NTC Memorandum Circular
04-08-88.
The carriage of ABS-CBNs signals by virtue
of the must-carry rule in Memorandum Circular
No. 04-08-88 is under the direction and control
of the government though the NTC which is
vested with exclusive jurisdiction to supervise,
regulate and control telecommunications and
broadcast services/facilities in the Philippines.
The imposition of the must-carry rule is within
the NTCs power to promulgate rules and
regulations, as public safety and interest may
require, to encourage a larger and more
effective use of communications, radio and
television broadcasting facilities, and to
maintain effective competition among private
entities.
9. Williams and Wilkins Co vs US Court of
Claims (1973)
Facts:
The plaintiff (Williams and Wilkins) is a
major publisher of medical journals and books,
and the defendant (National Institute of Health)
subscribes to some of the journals published by
the plaintiff.
The defendants library began running a
photocopy service. Its policy was that only a
single copy of a journal article would be made,
and each request was limited to 40-50 pages.
Issue: Is there copyright infringement?
Held: No. Photocopying done for research is
not a violation of copyright law and falls under
the fair use doctrine.
10. National Rifle Association of America
vs Handgun Control Federation of Ohio
(1994)
Facts:
Plaintiff the National Rifle Association of
America (NRA), which lobbies officials and

4 | Page

IPL (Copyright) - E
educates the public in support of the ownership
of firearms, mailed two letters to its
membership urging them to oppose bills
pending in the Ohio state legislature.
Accompanying each letter was a three-page list
of all Ohio state legislators and their
corresponding contact information. The list
included asterisks next to the names of
members of legislative committees relevant to
the pending bills. A short paragraph explaining
why certain names had been marked with
asterisks was at the bottom of the list. In
response,
defendant
Handgun
Control
Federation of Ohio, which advocated gun
control, mailed a letter to its members urging
them to support the bills plaintiff opposed.
Attached to defendants letter was the
photocopied, though slightly modified, listing of
Ohio State legislators that plaintiff used in its
mailing. Defendant appealed the district
courts ruling in plaintiffs favor.

Isabelita Vinuya asked the court to compel the

Philippine government to have Tokyo apologize
to, and provide compensation for the comfort
women. The ruling, which was penned by Del
Castillo, denied the plea of the women, who
were victims of sexual slavery by Japanese
occupation forces during World War II. The
women later appealed the decision by filing a
motion for reconsideration in June 2010.

Issue: Whether defendants unauthorized

duplication and use of plaintiffs list of state
legislators constitutes fair use.

Issue: Whether
committed.

Held: Yes. The court held that the defendants

use of the list of legislators was fair. The court
found that the first and fourth factors weighed
in favor of finding fair use, reasoning that
defendant, a non-profit organization, had made
a noncommercial use of the legislator list with
no attempt to sell it. Further, the court noted
that the list contained information so readily
attainable that no market likely existed for it,
and found that the distributionto only 200
peoplewas not particularly damaging. The
court also found that the document was used
primarily
to
exercise
defendants
First
Amendment speech rights to comment on
public issues and to petition the government
regarding pending legislation. Indicating that
the scope of the fair use doctrine is wider when
the use relates to issues of public concern, the
court found that this factor weighed in
defendants favor.
Finally, for the second and third factors, the
court found that the list at issue was entirely
factual and that defendant copied only the list
and not the copyrighted NRA letters, weighing
in favor of fair use.
11. In the matter of the charges of
plagiarism
against
Associate
Justice
Mariano C. Del Castillo (2010)
Facts:
On April 28, 2010, the court promulgated
its ruling on the "Vinuya, et al. vs. Executive
Secretary" case. Comfort women led by

In July this year, the women filed a

supplemental
motion
alleging
that
Del
Castillo's
ponencia
contains
plagiarized
portions. The sources from where Del Castillo
allegedly borrowed without proper attribution
were A Fiduciary of Theory of Jus Cogens" by
Evan Criddle and Evan Fox-Decent, "Breaking
the Silence on Rape as an International Crime"
by Mark Ellis, and "Enforcing Erga Omnes
Obligations in International Law" by Christian
Tams.
or

not

plagiarism

was

Held: No. The court also held that plagiarism

was not committed because there was no
malicious intent to pass off someone else's
work as one's own.
There was also a statement to the effect
that judicial decisions live off citing precedents,
making accidental plagiarism understandable if
not acceptable.
In the end, the Supreme Court passed the
blame to the Justices researcher and MS Word.
12. Habana vs Felicidad
Goodwill Trading (1999)

Robles

and

Facts:
Pacita Habana et al., are authors and
copyright owners of duly issued of the book,
College English For Today (CET). Respondent
Felicidad Robles was the author of the book
Developing
English
Proficiency
(DEP).
Petitioners found that several pages of the
respondent's book are similar, if not all
together a copy of petitioners' book. Habana et
al. filed an action for damages and injunction,
alleging
respondents
infringement
of
copyrights, in violation of P.D. 49. They allege
respondent
Felicidad
C.
Robles
being
substantially familiar with the contents of
petitioners' works, and without securing their
permission, lifted, copied, plagiarized and/or
transposed certain portions of their book CET.
On the other hand, Robles contends that the
book DEP is the product of her own intellectual
creation, and was not a copy of any existing
valid copyrighted book and that the similarities

5 | Page

IPL (Copyright) - E
may be due to the authors' exercise of the
"right to fair use of copyrighted materials, as
guides." The trial court ruled in favor of the
respondents, absolving them of any liability.
Later, the Court of Appeals rendered judgment
in favor of respondents Robles and Goodwill
Trading Co., Inc. In this appeal, petitioners
submit that the appellate court erred in
affirming the trial court's decision.

Windows, 12 windows installer CDs packed as

Microsoft products. The agents were not given
the end-user license agreements, user
manuals, and certificates of authenticity for the
products purchased. They were given a receipt
which has a header of T.M.T.C. (Phils) Inc.
BELTRON COMPUTER. TMTC stands for Taiwan
Machinery Display and Trade Center.

Issue: Whether or not there is copyright

infringement.

A search warrant was subsequently issued

where 2,831 CDs of Windows installers, among
others, were seized. Based on the items seized
from Beltron, Microsoft filed a case of copyright
infringement against Beltron and TMTC as well
as their officers (Judy Hwang et al) before the
Department of Justice (DOJ). Beltron, in its
counter-affidavit, argued the following:

Held: Yes. A perusal of the records yields

several pages of the book DEP that are similar
if not identical with the text of CET. The court
finds that respondent Robles' act of lifting from
the book of petitioners substantial portions of
discussions and examples, and her failure to
acknowledge the same in her book is an
infringement of petitioners' copyrights. In the
case at bar, the least that respondent Robles
could have done was to acknowledge
petitioners Habana et. al. as the source of the
portions of DEP. The final product of an author's
toil is her book. To allow another to copy the
book without appropriate acknowledgment is
injury enough.
13. NBI-Microsoft Corp vs Hwang (2005)
Facts:
In May 1993, Microsoft Corporation and Beltron
Computer Philippines, Inc. entered into a
Licensing Agreement. Under Section 2(a) of the
Agreement, Microsoft authorized Beltron, for a
fee, to:
1. Reproduce and install no more than one
copy of Windows on each Customer System
hard disk;
2. Distribute directly or indirectly and license
copies of Windows (reproduced as per Section
2 of the Agreement and/or acquired from an
Authorized Replicator or Authorized Distributor.
Their agreement allowed either party to
terminate if one fails to comply with their
respective obligations. Microsoft terminated
the Agreement in June 1995 by reason of
Beltrons non-payment of royalties. Later,
Microsoft learned that Beltron was illegally
copying and selling copies of Windows.
Microsoft then sought the assistance of the
National Bureau of Investigation. NBI agents
made some purchase from Beltron where they
acquired a computer unit pre-installed with

1. That Microsofts issue with Beltron was really

just to have leverage in forcing Beltron to pay
the unpaid royalties; and that Microsoft should
have filed a collection suit.
2. That the computer unit allegedly purchased
by the NBI agents from them cannot be
decisively traced as coming from Beltron
because the receipt issued to the agents did
not list the computer unit as one of the items
bought.
3. That the 12 installers purchased by the
agents which are actually listed in the receipt
were not manufactured by Beltron but rather
they were genuine copies purchased by TMTC
from an authorized Microsoft seller in
Singapore.
4. That the 2,831 installers seized from them
were not a property of Beltron but rather they
were left to them by someone for safekeeping.
The DOJ secretary agreed with Beltron and
dismissed the case. The Secretary ruled that
the issue of the authority of Beltron to copy
and sell Microsoft products should first be
resolved in a civil suit. Microsoft appealed the
decision of the DOJ secretary before the
Supreme Court. Meanwhile, Beltron filed a
motion to quash the search warrant before the
RTC that issued the same. The RTC partially
granted the quashal. The Court of Appeals
reversed the RTC. Hwang et al did not appeal
the CA decision.
Issue: Whether or not the DOJ Secretary is
correct.

6 | Page

IPL (Copyright) - E
Held: No. No. Section 5 of Presidential Decree
49 enumerates the rights vested exclusively on
the copyright owner. Contrary to the DOJs
ruling, the gravamen of copyright infringement
is
not
merely
the
unauthorized
manufacturing of intellectual works but
rather the unauthorized performance of any of
the acts covered by Section 5. Hence, any
person who performs any of the acts under
Section 5 without obtaining the copyright
owners prior consent renders himself civilly
and criminally liable for copyright infringement.
Being the copyright and trademark owner of
Microsoft software, Microsoft acted well within
its rights in filing the complaint before DOJ on
the incriminating evidence obtained from
Beltron. Hence, it was highly irregular for the
DOJ to hold that Microsoft sought the issuance
of the search warrants and the filing of the
complaint merely to pressure Beltron to pay its
overdue royalties to Microsoft.
There is no basis for the DOJ to rule that
Microsoft must await a prior resolution from
the proper court of whether or not the
Agreement is still binding between the parties.
Beltron has not filed any suit to question
Microsofts termination of the Agreement.
Microsoft can neither be expected nor
compelled to wait until Beltron decides to sue
before Microsoft can seek remedies for
violation of its intellectual property rights.
Furthermore, the articles seized from Beltron
are counterfeit per se because Microsoft does
not (and could not have authorized anyone to)
produce such CD installers The copying of the
genuine Microsoft software to produce these
fake CDs and their distribution are illegal even
if the copier or distributor is a Microsoft
licensee. As far as these installer CD-ROMs are
concerned, the Agreement (and the alleged
question on the validity of its termination) is
immaterial to the determination of Beltrons
liability for copyright infringement and unfair
competition. Beltrons defense that the box of
CD installers found in their possession was only
left to them for safekeeping is not tenable.

14. Manly Sportswear Manufacturing Inc

vs Dadotte Enterprises and/or Hermes
Sports Center (2005)
Facts:
On March 17, 2003, RTC- Quezon City,
Branch 83 issued a search warrant against
Dadodette Enterprises and/or Hermes Sports
Center after finding reasonable grounds that
respondents violated Sections 172 and 217 of
Republic Act (RA) No. 8293. Respondents then
moved to quash and annul the search warrant
claiming that the sporting goods manufactured
by and/or registered in the name MANLY are
ordinary hence, not among the classes
protected under Sec. 172 of RA 8293. On June
10, 2003 the trial court granted the motion to
quash and declared the search warrant issued
as null and void. MANLY filed a motion for
reconsideration on August 11, 2003, but was
later on denied for lack of merit. After denial of
the motion for reconsideration, MANLY filed a
petition for review of certiorari in the Court of
Appeals but was later on denied.
Issue: W/N the copyrighted products of MANLY
are original creations subject to the protection
of RA 8293.
Held: No! The copyright certificates issued in
favor of MANLY constitute a prima facie
evidence of validity and ownership. However,
presumption of validity is not created when a
sufficient proof or evidence exist that may cast
a doubt on the copyright validity. In the case at
bar, validity and originality will not be
presumed since the copyrighted products of
MANLY are not original creations considering
that these products are readily available in the
market under various brands. Moreover, no
copyright accrues in favor of MANLY despite the
issuance of the copyright certificate this purely
serves as a notice of recording and registration
of the work and is not a conclusive proof of
copyright ownership as provided in Sec. 2, Rule
7
of
the
Copyrights
Safeguards
and
Regulations.

United States Court of Appeals,Second Circuit.

David D. WOODS, Florence L. Woods, Kristine Woods and Benjamin Woods, d/b/a Callicoon Music,
Plaintiffs-Appellees, v. BOURNE CO., Defendant-Appellant, American Society of Composers, Authors and
Publishers, Defendant.
No.571, Docket 94-7421.
Decided: July 25, 1995

7 | Page

IPL (Copyright) - E
Before: FEINBERG, CARDAMONE and McLAUGHLIN, Circuit Judges. Robert C. Osterberg, New York
City (Abeles Clark Osterberg and Prager, of counsel), for defendant-appellant. Frederick F. Greenman,
New York City (Deutsch Klagsbrun & Blasband, Alvin Deutsch, David Blasband, of counsel), for plaintiffsappellees.
This appeal requires us to address conflicting claims to royalties generated by various uses of the song
When the Red, Red, Robin Comes Bob, Bob, Bobbin' Along (the Song) during what is known in
copyright law as an extended renewal term. Plaintiffs, heirs of song composer Harry Woods, and
defendant Bourne Co., Woods's music publisher, both claim the right to receive certain royalties
generated during this period. Essentially, plaintiffs claim that they are entitled to the royalties because
they have exercised their statutory right to terminate the publisher's interests in the Song pursuant to 17
U.S.C. 304(c). Bourne maintains that the royalties belong to it because all the disputed posttermination uses of the Song are attributable to so-called derivative works, which were prepared under its
authority prior to termination and which therefore do not revert to the author. 17 U.S.C. 304(c)(6)(A).
The royalties at issue were generated by several different uses of the Song following termination. These
uses include (1) television performances of movies and television programs that incorporate the Song
(hereafter sometimes referred to collectively as audiovisual works); (2) radio performances of sound
recordings of the Song; and (3) sales of reprints of published arrangements. Following a bench trial
before Judge Richard Owen in the United States District Court for the Southern District of New York,
judgment was entered in March 1994 granting all the disputed royalties to plaintiffs-appellees. The
opinion of the district court is reported at 841 F.Supp. 118.
The district court essentially reached its determination by analyzing whether any of the musical
arrangements of the Song contained in the movies, television shows, sound recordings and printed
arrangements were sufficiently original to qualify as derivative works. Finding that, with one minor
exception, no version of the Song was sufficiently original, the district court granted judgment for the
plaintiffs. The district court did not consider it relevant that some of the disputed royalties were
generated by performances of audiovisual works, such as movies containing the Song, which are
conceded to be original enough to qualify as derivative works.
For reasons set forth below, we hold that when a musical arrangement is contained within an audiovisual
work produced under license from a publisher prior to termination, the publisher is entitled to receive
royalties from post-termination performances of the audiovisual work under the terms of pre-termination
licenses governing performance rights. It is irrelevant to disposition of those royalties whether the
musical arrangement in the audiovisual work would qualify independently as a derivative work. We
reverse the ruling of the district court in this respect and direct payment of royalties to Bourne for these
performances in accordance with the terms of the licenses governing performance of the Song
immediately prior to termination.
Whether a particular musical arrangement prepared under the authority of the publisher is a derivative
work is relevant, however, to most other disputed categories of royalties before us. We essentially affirm
the judgment with respect to those categories. For reasons set forth below, we affirm in part, reverse in
part and remand for further proceedings consistent with this opinion.
I.Background
A.The Grant
Harry Woods (Woods) wrote the words and music to When The Red, Red, Robin Comes Bob, Bob,
Bobbin' Along in 1926. That same year, Woods entered into a Songwriter's Agreement with the
publishing company of Irving Berlin, Inc. (Berlin). The heirs of Woods, doing business as Callicoon
Music (Callicoon), are plaintiffs-appellees in this matter. At some point in the 1940s, the Bourne
Company (Bourne), defendant-appellant herein, succeeded to Berlin's interests in the Song.
By the Songwriter's Agreement, Woods transferred to Berlin
the original musical composition including the publishing rights, the performing rights, the rights to use
the same for mechanical reproduction, the right to make, publish and perform any arrangement or
adaptation of the same, and all copyrights and the rights to secure copyrights and extensions and
renewals of copyrights in the same, or in any arrangements or adaptations thereof.
In April 1926, Berlin obtained a certificate of registration of copyright for the original unpublished musical
composition. The copyright certificate indicates that Woods is the author of the words and music.
Berlin also published a piano-vocal arrangement, and Berlin obtained a certificate of copyright for that

8 | Page

IPL (Copyright) - E
arrangement one month after registering the unpublished Song. The copyright certificate for the pianovocal arrangement also names Woods as the author of the words and music. Berlin is listed as the
copyright owner on both certificates. The certificates do not indicate that anyone other than Woods
acted as arranger.
B.The Extended Renewal Term
Under the Copyright Act of 1909, in effect at the time of Woods's grant to Berlin, the original term of a
copyright was 28 years, followed by a renewal term of another 28 years. Pub.L. No. 349, 35 Stat. 1075,
23 (1909). Thus, the grant from Woods to Berlin in the Songwriter's Agreement, which included
renewal rights, was to endure for up to 56 years, ending in 1982.
The reason for including a renewal term in the Copyright Act was to permit an author who sold the rights
in his work for little consideration, when measured against the work's subsequent success, to enjoy a
second opportunity with more bargaining power to reap the full value of the work. See 2 Melville B.
Nimmer & David Nimmer, Nimmer on Copyright 9.02 at 9-28 to 9-29 (1994). 1 Thus, Congress
attempted to alleviate the problem of the inability of authors to know the true monetary value of their
works prior to commercial exploitation. Id. at 9-30. That purpose, however, was largely eroded by a
subsequent Supreme Court decision holding that renewal rights were assignable along with original term
rights in a work. Fisher Music Co. v. M. Witmark & Sons, 318 U.S. 643, 63 S.Ct. 773, 87 L.Ed. 1055
(1943); see 2 Nimmer 9.06 [B] [1] at 9-108.
When the Copyright Act was thoroughly revised in 1976, Pub.L. No. 94-553, 90 Stat. 2541 (1976),
Congress attempted to restore a second chance to authors or their heirs. Among other changes,
Congress prolonged the duration of copyrights then in the renewal term so that they would continue for an
additional 19 years. 17 U.S.C. 304(b). At the end of the 28th year of the renewal term, the author (if
alive) or the author's surviving spouse or children may terminate the rights of a grantee, usually a
publisher, to whom the author had transferred rights in the original work. 17 U.S.C. 304(c)(1)-(3).
During the 19-year extended renewal term, a copyrighted work does not enter the public domain but
continues to generate royalties. If the author or heirs elect to terminate the publisher's rights, royalties
become payable to them rather than to the publisher. 17 U.S.C. 304(c)(6). The author or heirs thus
recapture rights in the copyrighted work and may thereby be relieved of the consequences of ill-advised
and unremunerative grants that had been made before the author had a fair opportunity to appreciate the
[work's] true value. Mills Music, Inc. v. Snyder, 469 U.S. 153, 172-73, 105 S.Ct. 638, 649, 83 L.Ed.2d
556 (1985).
There is an important exception to the reversion rights of the author or heirs for derivative works produced
by an authorized party during the original and renewal copyright terms. The Copyright Act of 1976
provides that
[a] derivative work prepared under authority of the grant before its termination may continue to be utilized
under the terms of the grant after its termination, but this privilege does not extend to the preparation after
the termination of other derivative works based upon the copyrighted work covered by the terminated
grant.
17 U.S.C. 304(c)(6)(A) (referred to hereafter as the Derivative Works Exception or simply the
Exception). The Act defines a derivative work as
a work based upon one or more preexisting works, such as a translation, musical arrangement,
dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment,
condensation, or any other form in which a work may be recast, transformed, or adapted. A work
consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole,
represent an original work of authorship, is a derivative work.
17 U.S.C. 101.
The renewal term for Bourne's copyright in the Song came to an end in April 1982, and Callicoon
terminated Bourne's rights immediately thereafter.
C.Registration and Commercial Exploitation of the Song
During the original and renewal copyright terms, Berlin, and then its successor Bourne, successfully
exploited the Song for its commercial value. As already noted, Berlin published a piano-vocal
arrangement of the Song in 1926, shortly after receiving the grant from Woods. Berlin registered the
piano-vocal arrangement with the Copyright Office, naming Woods as the author. Berlin or Bourne
eventually prepared and published approximately 19 other arrangements of the Song for various

9 | Page

IPL (Copyright) - E
combinations of voices and musical instruments. Bourne obtained 16 different registrations of copyright
for different arrangements of the Song. The copyright registrations for these arrangements indicate that
Woods is the author of the words and music. Other people are listed as arrangers or authors of new
material. Bourne authorized the Hal Leonard Publishing Company (Leonard) to reprint arrangements of
the Song in assorted sheet music compilations. Bourne also issued numerous licenses (known as
mechanical licenses), often through its agent, the Harry Fox Agency, to record companies to make sound
recordings of the Song as performed by popular artists. Bourne also issued licenses (known as
synchronization licenses or synch licenses), frequently through the Harry Fox Agency, to motion picture
and television studios to incorporate the Song in movies and in television programs.
After terminating Bourne's rights in the Song, Callicoon began to commercially exploit the Song. Bourne
claims, and Callicoon does not dispute, that Callicoon licensed Leonard to reprint published arrangements
of the Song formerly licensed by Bourne, simply changing the copyright notice to read Callicoon instead
of Bourne. When Leonard announced that it would continue to pay Bourne the royalties for these
reprints, Callicoon licensed Warner Brothers Publications instead to reprint arrangements of the Song.
Callicoon (or the Harry Fox Agency as Callicoon's agent) also issued synch licenses for use of the Song
in various new television programs. Callicoon also granted new synch licenses, similar to an expired
license originally issued by Bourne prior to termination, for use of the Song in an episode of The Lucy
Show. Further, Callicoon licensed use of the Song in a television advertisement for Delta Faucet.
D.Performance Rights
The principal issues in this case concern rights to perform the Song publicly. Under the Copyright Act,
[t]o perform a work means to recite, render, play, dance, or act it, either directly or by means of any
device or process 17 U.S.C. 101. As relevant here, performances include television broadcasts of
the Song as captured in movies and television programs and radio broadcasts of the Song as captured in
sound recordings.
The right to perform a work publicly has been described as [o]ne of the greatest sources of revenue in
the music industry. Sidney Shemel & M. William Krasilovsky, This Business of Music 196 (1990); see
also 2 Nimmer 8.19 at 8-264. However, given the ephemeral nature of performance, it is difficult for
the owners of this right to monitor and enforce it. To facilitate these functions, authors and publishers
early in this century established a performing rights society, the American Society of Composers, Authors
and Publishers (ASCAP). Currently, two other societies, Broadcast Music, Inc. (BMI) and the Society of
European State Authors and Composers (SESAC), carry out similar functions. See generally 2 Nimmer
at 8-264 to 8-273. Both Bourne and Callicoon are members of ASCAP.
By becoming members of ASCAP, authors and publishers may transfer to it the public performance rights
in their works. ASCAP in turn issues licenses to radio stations, television stations, restaurants, stores
and other entities that perform music publicly. Television stations generally obtain blanket licenses
from ASCAP that entitle them to perform any musical composition in ASCAP's extensive catalogue. In
exchange, the stations pay ASCAP a percentage of their annual gross receipts. Shemel & Krasilovsky,
at 197.
ASCAP surveys all forms of public performance of members' musical compositions in order to determine
allocation of licensing fees. As between the composer and publisher of a particular composition, ASCAP
distributes half of the collected fees to each, unless the author and publisher indicate otherwise in their
contract with each other. Al Kohn & Bob Kohn, The Art of Music Licensing 635-36 (1992).
During the original and renewal terms, Bourne received royalties from ASCAP for television broadcasts of
movies and television programs containing the Song and radio broadcasts of the Song. A typical synch
license issued by Bourne for the production of an audiovisual work required a producer to pay a flat fee
but provided that any broadcast entity performing the Song as contained in the audiovisual work must
obtain a performance license from ASCAP or Bourne. Thus, for each pre-recorded audiovisual work
incorporating the Song, Bourne had two sources of income: royalties from the producer for the right to
incorporate the Song in the audiovisual work and royalties from television stations, via ASCAP, for each
performance of the Song contained in the work. Similarly, Bourne received income from both record
producers and, via ASCAP, radio stations performing recordings of the Song. However, the licenses
Bourne issued to the record producers do not address performance rights, as the audiovisual synch
licenses do.
E.The Parties' Dispute

10 | P a g e

IPL (Copyright) - E
Public performances of the Song as contained in movies, television programs and sound recordings
continue to generate substantial royalties. Since Callicoon exercised its termination right in April 1982,
Callicoon has continued to receive from ASCAP the author's 50% share of performance royalties, which
share is not disputed.
What is disputed is the publisher's share of royalties for several categories of post-termination public
performances of the Song. The first category concerns post-termination television broadcasts of
audiovisual works produced under licenses issued by Bourne before termination. The second category
concerns radio performances during the extended renewal term of the Song through sound recordings
that were produced before termination under licenses issued by Bourne. Another category concerns
post-termination television and radio broadcasts of the Song for which source material is not identified in
ASCAP records. In a fourth category by itself is a television commercial for Delta Faucet licensed by
Callicoon after termination; according to Bourne, the commercial contains a 1981 Bourne-authorized
arrangement of the Song that is a derivative work.
Prior to Callicoon's termination of Bourne's rights, Bourne notified ASCAP of Bourne's contention that it
continued to be possessed of the right to receive income from all derivative works retained by it.
ASCAP then deemed that a dispute existed between the parties as to rights to publisher's royalties from
post-termination performances of the Song. In accordance with ASCAP policy, such royalties have been
held in escrow pending resolution of the dispute. The parties have stipulated that the publisher's share
of post-termination royalties withheld by ASCAP from the fourth quarter of 1982 to the first quarter of 1992
is $85,042.69. This share is comprised of the following components: (1) $27,157.78 from television
performances of audiovisual works created before termination; (2) $1,058.56 from radio performances of
the Song in sound recordings created before termination; (3) $17,985.28 from television and radio
performances for which source materials were not identified in ASCAP records; and (4) $38,841.07 from
television performances of audiovisual works created after termination (including $13,365.78 from the
Delta Faucet advertisement). As of October 1, 1992, an additional $32,181 in the escrow account was
attributable to accrued interest and miscellaneous special distributions.
In addition to performance royalties, the parties dispute rights to royalties from sales of reprints of
published arrangements of the Song in sheet music compilations produced and distributed by Leonard
and Warner Brothers during the extended renewal term.
In September 1989, Callicoon filed an amended complaint against Bourne and ASCAP in the district court
seeking principally a declaration that Callicoon is entitled to the publisher's royalties withheld by ASCAP.
Callicoon also sought a determination of rights to reprint royalties. The district court held a bench trial in
November 1992, and rendered its decision in January 1994. Judgment in favor of Callicoon was entered
in March 1994.
F.The Decision Below
The district court determined that Callicoon was entitled to all of the royalties generated by posttermination performances of the Song, including performances contained in pre-termination derivative
audiovisual works. The court acknowledged, and the parties do not dispute, that the works in which the
Song was incorporated-for example, movies-were by definition derivative. Nevertheless, the court found
the controlling issue, as to all categories of performance, to be whether the underlying arrangement of the
Song itself is a derivative work. Only then would performance royalties continue to go to Bourne during
the extended renewal term. 841 F.Supp. at 120. The court then considered whether any of the printed
or performed arrangements of the Song were derivative works. It found, first, that the original pianovocal arrangement published by Berlin (Bourne's predecessor in interest) was not a Berlin-created
derivative work. The court then found that none of the printed or performed arrangements of the Song,
with the exception of one arrangement performed by Fred Waring, could be called a derivative work. Id.
at 123.
Since Bourne claimed an exception to the general rule in the 1976 Act permitting termination of the
publisher's rights, the court placed the burden on Bourne to identify performances of derivative
arrangements. Since Bourne offered no evidence of performances of the Fred Waring arrangement, the
court held that all of the withheld ASCAP royalties should be paid to Callicoon. Id. The district court
also found that none of the printed arrangements made after the piano-vocal arrangement were derivative
works. Accordingly, it ordered all reprint royalties to be paid to Callicoon. Id.
This appeal by Bourne followed.

11 | P a g e

IPL (Copyright) - E
II.Discussion
The appeal poses two principal issues. The first is the basis for determining whether a publisher is
entitled to receive royalties for post-termination performances of the Song in pre-termination audiovisual
works, such as movies, that are concededly derivative works. 2 As already indicated, the district court
found the relevant inquiry to be whether the arrangement of the Song within a derivative work is itself a
derivative work. We disagree with the district court in this respect. Whether the arrangement of the
Song is itself a derivative work is not relevant to this category of royalties.
The derivative work status of an arrangement of the Song, however, is relevant to several other kinds of
royalties at issue in this suit. These include royalties from performances of pre-termination sound
recordings, performances of post-termination audiovisual works and sales of sheet music reprints. The
second principal issue in this appeal can be broken into two parts: whether the district court invoked the
correct standard for determining whether arrangements of the Song are sufficiently original to be
derivative works and, if so, whether the court correctly applied that standard to the facts before it.
A.Royalties from Television Performances
We consider first the basis for determining entitlement to royalties from post-termination performances
of the Song as contained in pre-termination movies and television programs.
The Derivative Works Exception preserves the right of owners of derivative works to continue to exploit
their works during the extended renewal term under previously negotiated terms. Without such an
exception, authors might use their reversion rights to extract prohibitive fees from owners of successful
derivative works or to bring infringement actions against them. See Mills Music, 469 U.S. at 172-74, 105
S.Ct. at 649-50 (discussing legislative history of termination right and Derivative Works Exception); id. at
183-84 n. 8, 105 S.Ct. at 655 n. 8 (White, J., dissenting) (explaining that under the 1909 Act, films had
been removed from public circulation during renewal periods for fear of infringement actions).
The goal of keeping derivative works in public circulation does not require that publishers rather than
authors receive royalties for their use. As long as the royalties paid by a derivative work user remain
unchanged, the user should be indifferent as to whether an author or publisher receives the payment.
See Mills Music, 469 U.S. at 177, 105 S.Ct. at 652. The royalties generated during the extended
renewal term will be a windfall to either authors (and their heirs) or publishers since, at the time the rights
at issue were originally established, neither group expected to get royalties for more than 56 years. The
question, therefore, is: Who is the beneficiary of this windfall?
1.The Mills Music Decision
The answer, according to the decision of the Supreme Court in Mills Music, Inc. v. Snyder, is found in the
phrase under the terms of the grant, as used in the Derivative Works Exception. We quote its text
again for convenience:
A derivative work prepared under authority of the grant before its termination may continue to be utilized
under the terms of the grant after its termination, but this privilege does not extend to the preparation after
the termination of other derivative works based upon the copyrighted work covered by the terminated
grant.
17 U.S.C. 304(c)(6)(A) (emphasis supplied); see Mills Music, 469 U.S. at 156, 105 S.Ct. at 641.
Mills Music posed circumstances similar to those of the instant case. Snyder, treated for purposes of
that case as the sole author of the song Who's Sorry Now, had assigned renewal rights in the song to a
publisher, Mills, in 1940 in exchange for, among other things, a 50% share in mechanical royalties, that is,
royalties from sales of copies of sound recordings.3 Mills in turn licensed record companies to produce
copies of sound recordings of the song. Upon termination of the grant from Snyder to Mills, Snyder's
heirs claimed the right to 100%, rather than just 50%, of future mechanical royalties. Harry Fox Agency,
Inc. v. Mills Music, Inc., 543 F.Supp. 844, 850 (S.D.N.Y.1982), rev'd, 720 F.2d 733 (2d Cir.1983), rev'd sub
nom. Mills Music, Inc. v. Snyder, 469 U.S. 153, 105 S.Ct. 638, 83 L.Ed.2d 556 (1985). Mills claimed that
the sound recordings at issue were derivative works created under the terms of the grant from Snyder to
Mills and that, therefore, Mills should continue to share in mechanical royalties according to the terms of
that grant. 543 F.Supp. at 850.
In the district court, Judge Edward Weinfeld held that the sound recordings produced before termination
were derivative works and that the terms of the grant required payment of mechanical royalties to Mills.
Id. at 852. This court reversed, holding that upon termination only the grant from Mills to the record
companies remained in effect. Since the basis for Mills's retention of half the mechanical royalties was

12 | P a g e

IPL (Copyright) - E
the grant from Snyder, and since that grant was now terminated, all mechanical royalties should revert to
Snyder's heirs. 720 F.2d at 739.
The Supreme Court reversed. It found that the phrase terminated grant, the last two words in the
Derivative Works Exception, must refer to the original grant from author to publisher. The Court
reasoned that the other two uses of the word grant in the single sentence of the Derivative Works
Exception must logically refer to the same grant. 469 U.S. at 164-65, 105 S.Ct. at 645. The Court
noted that [t]he 1940 grant from Snyder to Mills expressly gave Mills the authority to license others to
make derivative works. Id. at 165, 105 S.Ct. at 646. It then concluded that a fair construction of the
phrase under the terms of the grant as applied to any particular licensee would necessarily encompass
both the [original] grant [from author to publisher] and the individual license [to record producers]
executed pursuant thereto. Id. at 166-67, 105 S.Ct. at 646. Because the combination of the two grants
directed record companies to pay royalties to Mills, and Mills in turn to pay 50% of the amount collected to
Snyder, the Court held that Mills was entitled to retain its 50% share of mechanical royalties on sales of
records produced before termination but sold during the extended renewal term. Id. at 178, 105 S.Ct. at
652.
Mills Music is, of course, binding upon us.4 Mills Music appears to require that where multiple levels of
licenses govern use of a derivative work, the terms of the grant encompass the original grant from
author to publisher and each subsequent grant necessary to enable the particular use at issue. See
Howard B. Abrams, Who's Sorry Now? Termination Rights and the Derivative Works Exception, 62
U.Det.L.Rev. 181, 234-35 (1985) (describing holding in Mills Music as preserv[ing] the entire paper chain
that defines the entire transaction). If one of those grants requires payment of royalties by licensees to
an intermediary, such as a publisher, then continued utilization of derivative works under the terms of the
grant requires continued payments to the intermediary. See Mills Music, 469 U.S. at 167, 105 S.Ct. at
646. The effect of Mills Music, then, is to preserve during the post-termination period the panoply of
contractual obligations that governed pre-termination uses of derivative works by derivative work owners
or their licensees.
2.Applying the Mills Music Decision
The derivative works involved in Mills Music were sound recordings, and the use there was the sale of
copies. The concededly derivative works we now address are audiovisual works and the use in question
is public performance. We believe that the reasoning of Mills Music also applies in this situation.
There is no question that the owners of the copyrights in audiovisual works have the right to perform the
works publicly. They typically exercise this right by licensing television stations to broadcast their works.
In this case, the terms of the synch licenses issued by Bourne to the producers required the television
stations performing the audiovisual works to obtain a second grant from either Bourne or ASCAP,
licensing the stations to perform the Song contained in the audiovisual works. In practice, this license is
always obtained from ASCAP, which then remits the publisher's share of fees to Bourne pursuant to the
agreement between Bourne and ASCAP. Under our reading of Mills Music, the terms of the grant
include the provisions of the grants from Bourne to ASCAP and from ASCAP to television stations. This
pair of licenses is contemplated in the grant of the synch licenses from Bourne to film and television
producers.
Callicoon contends that neither the terms of the grants from Bourne to audiovisual work producers nor the
terms of the grant from Bourne to ASCAP identify Bourne as the payee of performance royalties. By
contrast, Callicoon points out that the mechanical licenses to record companies in Mills Music explicitly
named Mills as payee, and the Supreme Court viewed this fact as dispositive. Therefore, Callicoon
argues, termination in this case simply subjects distribution of the royalties to ASCAP's usual procedures,
under which, absent any specific direction to the contrary, royalties are distributed to current copyright
owners.
We do not agree. The fact that the performance right in the Song is conveyed separately through
ASCAP is simply an accommodation dictated by the practical problem of enforcing performance rights
and should not control analysis of the distribution of performance royalties. It may be true that no license
specifically identifying audiovisual works containing Red, Red, Robin requires payment of performance
royalties to Bourne. However, as explained above, performance royalties are generally traded in bulk,
with a publisher granting ASCAP non-exclusive performance rights in all of its songs, whether contained
in derivative works or not. Television broadcast stations in turn obtain blanket licenses from ASCAP.

13 | P a g e

IPL (Copyright) - E
Thus, even if the terms of a grant to perform any single work may be somewhat obscured by the bulk
trading of performance rights, the terms are necessarily contained within the overarching grants (from
Bourne to ASCAP and from ASCAP to the television broadcast stations) and may be reconstructed by
reference to them. The relevant terms, according to Mills Music, would be those that were in place at
the time of termination. 469 U.S. at 174, 105 S.Ct. at 650.
We therefore reverse the decision of the district court as to royalties from post-termination performances
of pre-termination audiovisual works. On remand, the court should enter judgment ordering defendant
ASCAP to pay these royalties to Bourne in accordance with the terms of the grants in effect immediately
prior to the effective date of Callicoon's termination.
B.Royalties from Sound Recordings and Other Works
The analysis in Part A above, which applies to post-termination performances of pre-termination movies
and television programs, does not apply to certain other post-termination uses of the Song. The various
post-termination uses which we now consider have little in common except that for each, the question
whether the arrangement of the Song itself is a derivative work is relevant to the allocation of posttermination royalties.
The first category to which we turn is post-termination radio performances of pre-termination sound
recordings. At first blush, it may seem anomalous that sound recordings should be subject to a different
analysis than the audiovisual works considered above. Like audiovisual works, sound recordings are
clearly derivative works, which at least for some purposes fall within the Derivative Works Exception.
See generally Mills Music, 469 U.S. 153, 105 S.Ct. 638 (addressing sales of copies of sound recordings).
However, while the Act confers a right of public performance on the owner of a copyright in an
audiovisual work, it specifically denies such a right to the owner of a copyright in a sound recording. 17
U.S.C. 114(a); see generally Agee v. Paramount Communications, Inc., 59 F.3d 317, 321 (2d Cir.1995).
Instead, the right to perform a song contained in a sound recording belongs to the owner of the
copyright in the song. 17 U.S.C. 106(4); see Abrams at 235.
The Derivative Works Exception provides for continued utilization of a derivative work. As the
Supreme Court noted in Mills Music, The purpose of the Exception was to preserve the right of the
owner of a derivative work to exploit it, notwithstanding reversion. 469 U.S. at 173, 105 S.Ct. at 650
(quoting statement of Barbara Ringer in Further Discussions and Comments on Preliminary Draft for
Revised U.S. Copyright Law 39, 88th Cong., 2d Sess., Copyright Law Revision, Part 4 (H.Judiciary
Comm.Print 1964)) (emphasis supplied). Thus, the Exception protects only authorized uses made by
derivative work copyright owners, or their licensees.
Therefore, even though a sound recording is concededly a derivative work, that fact alone does not
justify application of the Derivative Works Exception to performances of sound recordings-as it did with
the performances of audiovisual works discussed in Part A above. We must still consider, however,
whether a different analysis requires application of the Exception. Since the owner of the copyright in
the Song holds the public performance right for sound recordings, that right would ordinarily revert to
Callicoon during the extended renewal term. However, if the particular Song arrangements contained in
the sound recordings are themselves Bourne-authorized derivative works, as Bourne contends, then
Bourne should retain the performance right under the Derivative Works Exception and receive the
royalties therefrom.
The same analysis applies to the royalties from the remaining post-termination uses of the Song, since
Bourne argues with respect to all of them that they utilize arrangements of the Song that are Bourneauthorized derivative works. These categories of uses are the reprinting and selling of sheet music of
pre-termination arrangements, the performance of a television commercial for Delta Faucet, which was
produced after termination, and post-termination radio and television performances for which ASCAP
records do not identify source material.
In the district court and again on appeal, Bourne has argued that all of the pre-termination arrangements
prepared under its authority qualify as derivative works. This argument stems from the premise that the
first published piano-vocal arrangement of the Song was itself a Bourne-authorized derivative work. The
original grant from Woods to Berlin, according to Bourne, was just a lead sheet-a very simple, handwritten rendering of the lyrics and melody of the composition without harmonies or other embellishments.
Bourne argues that Berlin modified the lead sheet by adding harmonies and other elements to create a
commercially exploitable piano-vocal arrangement that qualifies as a derivative work. Bourne also

14 | P a g e

IPL (Copyright) - E
argues that the 1981 arrangement allegedly used in the Delta Faucet commercial, as well as all other
Bourne-authorized arrangements, were derivative works. Because only the first piano-vocal
arrangement, the 1981 arrangement and other Bourne-authorized arrangements were ever commercially
exploited, Bourne concludes that any given performance of the Song is more likely than not a
performance of a Bourne-authorized derivative work.
The district court rejected both aspects of this argument-that the piano-vocal or any other Bourneauthorized arrangements were derivative works and that all relevant performances were in fact
performances of Bourne-authorized arrangements. In finding that the piano-vocal arrangement is not a
derivative work, the court relied on a close reading of the statutory definition of a derivative work and
inferences regarding industry practice. 841 F.Supp. at 121. For convenience, we repeat the Copyright
Act's definition of a derivative work as
a work based upon one or more preexisting works, such as a musical arrangement motion picture
version, sound recording or any other form in which a work may be recast, transformed, or adapted. A
work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole,
represent an original work of authorship, is a derivative work.
17 U.S.C. 101.
The district court found that the first sentence of that definition, which plainly identifies a musical
arrangement as one type of derivative work, must be read in conjunction with the second sentence's
requirement of modifications which, as a whole, represent an original work of authorship. 841 F.Supp.
at 121. Therefore, according to the district court, not every musical arrangement is entitled to derivative
work status. The arrangement must be an original work of authorship. The court then asserted that
Bourne's claim that Berlin's arrangers somehow exercised authorship by turning the lead sheet into a
commercially exploitable piano-vocal arrangement was contrary to the ways of the trade. Id. The court
inferred that Woods doubtless played the song for Berlin when he brought it into the firm, id., and that, at
the very least, he must have approved the piano-vocal arrangement before it was published and made
available to the public. The court concluded that, [a]ccordingly, the very first piano and voice version
that was sold could not possibly be a musical arrangement making it a derivative work of the lead
sheet. Id. The court went on to find that none of the printed or (with one minor exception) performed
arrangements were derivative works. Id. at 122-23.
1.The Standard of Originality
In order for a work to qualify as a derivative work it must be independently copyrightable. Weissmann
v. Freeman, 868 F.2d 1313, 1320-21 (2d Cir.), cert. denied, 493 U.S. 883, 110 S.Ct. 219, 107 L.Ed.2d 172
(1989). The basis for copyright protection contained in both the constitution and the Copyright Act is
originality of authorship. L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486, 490 (2d Cir.) (in banc), cert.
denied, 429 U.S. 857, 97 S.Ct. 156, 50 L.Ed.2d 135 (1976). While a certificate of copyright registration,
such as the one that Berlin obtained for the piano-vocal arrangement, creates a presumption of
copyrightability, the existence of a registration certificate is not dispositive. Weissmann, 868 F.2d at
1320.
We thoroughly discussed the standard of originality in a derivative work in our in banc decision in Batlin.
There we held that there must be at least some substantial variation [from the underlying work], not
merely a trivial variation. Batlin, 536 F.2d at 491; accord Durham Indus., Inc. v. Tomy Corp., 630 F.2d
905, 909 (2d Cir.1980) ([T]o support a copyright the original aspects of a derivative work must be more
than trivial.). Further, the requirement of originality [cannot] be satisfied simply by the demonstration of
physical skill or special training Batlin, 536 F.2d at 491; see also Tempo Music, Inc. v. Famous Music
Corp., 838 F.Supp. 162, 170 (S.D.N.Y.1993) (discussing Batlin ). Our discussions of the originality
standard in recent decisions, such as Weissmann, 868 F.2d at 1321, and Gaste v. Kaiserman, 863 F.2d
1061, 1066 (2d Cir.1988), upon which Bourne relies, do not render the Batlin standard inapplicable. See
Waldman Publishing Corp. v. Landoll, Inc., 43 F.3d 775, 782 (2d Cir.1994) (relying on Batlin as
authoritative statement of originality requirement).
In Batlin we warned that [t]o extend copyrightability to minuscule variations would simply put a weapon
for harassment in the hands of mischievous copiers intent on appropriating and monopolizing public
domain work. 536 F.2d at 492. At least one other circuit, relying on this court's opinion in Batlin, has
advised special caution in analyzing originality in derivative works, since too low a threshold will giv[e] the
first [derivative work] creator a considerable power to interfere with the creation of subsequent derivative

15 | P a g e

IPL (Copyright) - E
works from the same underlying work. Gracen v. Bradford Exchange, 698 F.2d 300, 305 (7th Cir.1983).
As the Gracen court explained in discussing the originality requirement for a painting derived from a
photograph, there must be sufficiently gross difference between the underlying and the derivative work to
avoid entangling subsequent artists depicting the underlying work in copyright problems. 698 F.2d at
305. This observation may be particularly relevant in the musical context. While it is easy enough to
describe the threshold of originality as being low, it is difficult to translate this standard from one medium
to another. See Tempo Music, 838 F.Supp. at 170 ([T]he risk of copyright confusion seems particularly
significant in music cases given that finders of fact often lack musical expertise.); 1 Nimmer 2.05[C] at
2-57 (noting tendency to require a somewhat greater degree of originality in order to accord copyright in
a musical arrangement). But see 1 William F. Patry, Copyright Law and Practice 237 (1994).
Bourne argues that the district court overstated the degree of originality required for an arrangement of a
song to merit derivative work status. Bourne focuses on the court's statement that [t]here must be such
things as unusual vocal treatment, additional lyrics of consequence, unusual altered harmonies, novel
sequential uses of themes 841 F.Supp. at 121. We agree that the sentence that Bourne quotes does
overstate the standard for derivative work originality. As we have observed on several occasions, the
requirement of originality is not the same as the requirement of novelty, the higher standard usually
applied to patents. E.g., Batlin, 536 F.2d at 490 ([T]here must be independent creation, but it need not
be invention in the sense of striking uniqueness, ingeniousness, or novelty); Alfred Bell & Co. v. Catalda
Fine Arts, Inc., 191 F.2d 99, 102-03 (2d Cir.1951). However, we read the district court's statement as
brief dictum within a discussion that otherwise does identify the correct standard.
Earlier in its opinion, the district court correctly cited the statutory definition of a derivative work, which the
court said required the modification to the composition to be an original work of authorship. 841
F.Supp. at 121. Following its apparent exaggeration of the standard for derivative work originality, the
court explained that
[there must be] something of substance added making the piece to some extent a new work with the old
song embedded in it but from which the new has developed. It is not merely a stylized version of the
original song where a major artist may take liberties with the lyrics or the tempo, the listener hearing
basically the original tune. It is, in short, the addition of such new material as would entitle the creator to
a copyright on the new material.
Id.
This, we believe, is a correct statement of the originality standard as set out in Batlin. The first and third
sentences simply reiterate Batlin' s substantial variation requirement. The second sentence,
disqualifying stylized version[s] of the original song, as well as the district court's earlier dismissal of
cocktail pianist variations of the piece that are standard fare in the music trade by any competent
musician, id., merely express, in terms relevant to the musical context, our explanation in Batlin that the
demonstration of physical skill or special training, 536 F.2d at 491, is insufficient to satisfy the
requirement of originality. Because we conclude that the district court articulated the correct standard of
originality, we turn to consider the application of the standard to the facts of this case.
2.Application of the Originality Standard
To determine whether a work is sufficiently original to be a derivative work, the judge in a bench trial
must make findings of fact based upon a comparison of two works. The judge must then apply the legal
standard of originality to the facts to determine whether the standard has been met. Although this seems
at first blush to be a two-step process, with review of the factual findings governed by a clearly erroneous
standard and the legal conclusion subject to de novo review, most courts, including this one, apparently
view the process as purely a factual inquiry, reviewable for clear error alone. E.g., Folio Impressions,
Inc. v. Byer California, 937 F.2d 759, 763 (2d Cir.1991); Weissmann v. Freeman, 868 F.2d 1313, 1322 (2d
Cir.1989) (citing Fed.R.Civ.P. 52(a)); Financial Information, Inc. v. Moody's Investors Serv., Inc., 808 F.2d
204, 207 (2d Cir.1986), cert. denied, 484 U.S. 820, 108 S.Ct. 79, 98 L.Ed.2d 42 (1987); cf. American
Geophysical Union v. Texaco, Inc., 37 F.3d 881, 886 (2d Cir.1994), as amended on denial of reh'g
(analyzing fair use), petition for cert. filed, 63 U.S.L.W. 3788 (U.S. Apr. 24, 1995) (No. 94-1726); 1 Patry,
Copyright Law and Practice 145 n. 106 (cataloguing cases). Regardless of the applicable standard of
review, in the instant case we believe that there is adequate support in the record for Judge Owen's
determinations. In other words, on this aspect of the case we find that the district court did not errperiod. Obviously, therefore, it did not clearly err.

16 | P a g e

IPL (Copyright) - E
a.The piano-vocal arrangement
Harry Woods is the sole person identified as author of the words and music on copyright certificates for
both the lead sheet and the piano-vocal arrangement that Berlin obtained in 1926. No one else is listed
as the arranger of either of these works, but later Bourne-authorized derivative works do list different
arrangers. Although the district court did not rely heavily on these uncontested facts, we view them as
evidence supporting the district court's conclusion that Woods, not Berlin, composed the Song
represented by both the lead sheet and the piano-vocal arrangement or at least that at the time of the
grant, Berlin credited Woods with such authorship. A reasonable inference could be made that the
piano-vocal arrangement closely approximated the composition conveyed from Woods to Berlin in 1926.
Thus, regardless of whether the piano-vocal arrangement may be considered original as compared with
the lead sheet, any original creativity that went into producing it was the result of Woods's effort and
occurred before the rights in the composition were granted to Berlin.
This theory, apparently adopted by the district court, is supported by the trial testimony of Beebe Bourne,
the current president of Bourne, Inc. and the daughter of one of Berlin's founders. She testified to the
operating procedure at Berlin in 1926, stating:
a Harry Woods would come in then and in subsequent years and bring in what we call a lead sheet And
they would often work at the piano. Some of the musicians could not even read and write music as we
know it, but had a tremendous ear for sound. They would come in and it would be reviewed to
determine the merits of it insofar as the commercial salability for those times.
Later she explained that in-house editors, whom she referred to as technicians, would actually write the
piano vocal
These statements, that the Berlin employees who physically wrote out the musical notes were
technicians, and that the composers would often work at the piano when they came in to sell a song,
certainly lend additional support to the district court's view that any act of independent creation
distinguishing the lead sheet from the piano-vocal arrangement was attributable to Woods before he sold
the Song to Berlin. 841 F.Supp. at 121 (noting that Woods doubtless played the song for Berlin when he
brought it into the firm.).
The scant record evidence thus suggests that the lead sheet and the piano-vocal arrangement were
simply two different renderings of a single composition, the rights in which Woods granted to Berlin.
Upon termination, the heirs recovered rights in the composition, rendered in both forms, and any
subsequent Bourne arrangements that were not sufficiently original to be considered derivative works.
In addition to finding that the piano-vocal arrangement essentially represents the composition granted
from Woods to Berlin, the district court found that the piano-vocal arrangement is not sufficiently original
compared with the lead sheet to be considered a derivative work. A side-by-side comparison of the two
printed documents quickly reveals that they are not literally identical. But it is not readily apparent
whether the differences between the two documents are substantial. At trial, both Callicoon and
Bourne presented expert testimony on whether the differences were substantial variations reflecting
deliberate aesthetic choices or merely trivial changes dictated, for instance, by applying conventional
rules of harmony to the melody in the lead sheet. The district court was ultimately persuaded by
Callicoon's expert, Thomas Shepard, that the variations in the piano-vocal arrangement were
insubstantial.
We have considered the record before the district court, and we cannot say that on the particular facts
before it the court erred in making this determination. Accordingly, even if all the disputed performances
were based upon the piano-vocal arrangement, as Bourne contends, this would not compel judgment for
Bourne.
Moreover, even if the piano-vocal arrangement could fairly be described as a derivative work, there is little
if any evidence in the record to suggest that the versions of the Song in sound recordings and audiovisual
works were based upon the piano-vocal arrangement. To the contrary, Callicoon's expert testified that
each performance he had listened to was different. The only common elements were the words and
melody contained in the lead sheet. He also stated that arrangers do not always use piano-vocal
arrangements in developing subsequent arrangements; they often work from memory or from lead
sheets. Therefore, even if the district judge had agreed with Bourne that the piano-vocal arrangement
was a derivative work, the judge need not have concluded that the performances of the Song were
ultimately performances of the piano-vocal arrangement.

17 | P a g e

IPL (Copyright) - E
b.The 1981 arrangement
A new arrangement of the Song was made under license from Bourne in 1981. This arrangement is
potentially significant because, according to Bourne, it is this arrangement that is performed in the posttermination Delta Faucet commercial, which has earned approximately $13,000 in performance royalties.
The district court found that the 1981 arrangement in no way exhibits the degree of creativity required
to make it a derivative work. Id. at 123.
According to both parties' experts, the principal variation in the 1981 arrangement as compared with the
piano-vocal arrangement concerns the bass line in the piano part. While the bass line in the first pianovocal arrangement consists primarily of quarter notes on the first and third beat of each measure, there is
a so-called moving bass line in the 1981 arrangement.
As with the piano-vocal arrangement, we have considered the record before the district court, and we are
unable to conclude that the court erred in finding the 1981 arrangement, which Bourne contends was
used in the Delta Faucet commercial, insufficiently original to be called a derivative work. Accordingly,
Bourne is not entitled to post-termination royalties from the Delta Faucet commercial. The judgment of
the district court is affirmed to the extent that it awards royalties from the Delta Faucet commercial to
Callicoon.
c.Other printed and performed arrangements
We have reviewed the evidence concerning other recorded and printed arrangements and find that the
district court did not err in its determinations regarding the originality of any of these arrangements.
As we stated above, Bourne would not be entitled to royalties generated by post-termination radio
performances of pre-termination sound recordings unless the arrangements in those recordings were
themselves Bourne-authorized derivative works. Since we are unable to conclude that the district court
erred in finding none of the Bourne-authorized arrangements (with the exception of one performance by
Fred Waring) to be derivative works, we affirm the judgment of the district court to the extent that it
awards Callicoon royalties from post-termination performances of pre-termination sound recordings. We
also affirm the court's judgment to the extent that it orders Bourne to remit to Callicoon reprint royalties
that Bourne continued to receive after termination.
C.Royalties from Performances Where Source Material was not Identified
We are left with the category of royalties, worth about $18,000, pertaining to radio and television
performances monitored by ASCAP for which source materials were not sufficiently identified. The
district court placed the burden on Bourne, as the party claiming an exception to the heirs' right of
termination to prove that any post-termination performances were based upon pre-termination derivative
arrangements of the Song. 841 F.Supp. at 122 (citing United States v. Allen, 163 U.S. 499, 16 S.Ct.
1071, 41 L.Ed. 242 (1896)). Finding that Bourne failed to meet this burden, the court awarded the
royalties to Callicoon.
On appeal, Bourne claims that the recapture right and the Derivative Works Exception are two parts of a
legislative compromise, and that the two parts should be placed on a level playing field. On that view,
Bourne contends that the usual rule, requiring a party claiming an exception to bear the burden of proof,
does not apply. Bourne then argues that because it is more likely than not that post-termination
performances are performances of Bourne-authorized derivative works, the burden of proof should in fact
be on Callicoon. In the alternative, Bourne suggests that royalties from unidentified performances be
allocated in proportion to royalties for all identified performances.
We are unpersuaded by Bourne's argument that the Derivative Works Exception should not be treated
like any other exception to a statutory rule. It is clear from the statutory scheme that it is indeed an
exception to the general rule of reversion of rights to the author's heirs upon termination, and it was thus
described by the Supreme Court in Mills Music, 469 U.S. at 162, 105 S.Ct. at 644. Therefore, we hold
that the district court properly placed the burden on Bourne to prove that particular performances were
based upon Bourne-authorized derivative works.
Because, as the parties stipulated, the source materials for these performances were unidentified, it is
impossible to determine from the record whether the works performed were created before or after
termination. As to the unidentified television performances, Bourne has introduced no evidence that any
of these disputed performances were of pre-termination audiovisual works, which would entitle it to
royalties under the analysis of Part A above. In addition, in light of our affirmance of the district court's
ruling that virtually none of the Bourne-authorized arrangements are derivative works, it is not more likely

18 | P a g e

IPL (Copyright) - E
than not that unidentified performances are performances of Bourne-authorized derivative works. Thus,
the district court did not err in finding that Bourne had failed to satisfy its burden of proof. Accordingly,
we affirm the judgment to the extent that it awarded Callicoon approximately $18,000 attributable to posttermination performances of unidentified material.
D.Miscellaneous Issues
The briefs raise two additional issues that should be decided on remand. First, the parties dispute
entitlement to certain royalties from a musical work, Freckles, that allegedly infringed the copyright in the
Song. During the renewal term, Bourne entered into a settlement agreement with the publisher of
Freckles. The district court apparently determined that Callicoon is entitled to receive royalties from
Freckles during the extended renewal term, but the basis of the ruling is not clear in the opinion.
Second, Bourne raises a question concerning an episode of The Lucy Show for which Bourne had
issued a synch license in 1973. The synch license had a five-year term, and Bourne apparently never
renewed the license. However, during the extended renewal term, in 1988 and again in 1990, Callicoon
issued renewal licenses for the same Lucy Show episode, for which it received a total of $1,700.
Bourne now contends that by issuing these renewal licenses Callicoon was encroaching on Bourne's right
to utilize during the extended renewal term derivative works prepared before termination. In its opinion,
the district court did not address Bourne's contention. We remand to the district court to decide both the
Freckles and Lucy Show issues in accordance with the principles set forth in this opinion.
III.Conclusion
To summarize, we hold as follows: (1) As to performance royalties attributable to pre-termination movies
and television programs, the judgment of the district court is reversed. The royalties withheld by ASCAP
from those performances should be paid in accordance with the terms of the grant of performance rights
from Bourne to ASCAP and from ASCAP to television stations that existed immediately before
termination; (2) The judgment of the district court is affirmed as to (a) royalties attributable to radio
performances of pre-termination sound recordings, (b) reprint royalties, (c) the Delta Faucet commercial,
and (d) unidentified television and radio performances; (3) On remand, the district court should address
the Freckles and Lucy Show issues and enter judgment consistent with this opinion. 5
FOOTNOTES
1. Cf. Pierre N. Leval & Lewis Liman, Are Copyrights for Authors or Their Children?, 39 J. Copyright
Soc'y U.S.A. 1 (1991).
2. For reasons discussed in Part B below, we address pre-termination sound recordings separately,
even though sound recordings are derivative works.
3. A sound recording is defined by the Copyright Act as a fixation of sounds. 17 U.S.C. 101. This
is distinct from a phonorecord, which is the tangible thing on which the sounds (other than sounds
accompanying an audiovisual work) are fixed. The term phonorecords thus includes records and
cassettes, etc. While we take note of the distinction, for simplicity we refer exclusively to sound
recordings throughout this opinion, even where it may be technically more precise to refer to
phonorecords.
4. We realize, however, that its interpretation of the legislative history of the Derivative Works
Exception has been criticized. See 1 Paul Goldstein, Copyright, 4.9.3 at 498-501 (1989); William F.
Patry, Latman's The Copyright Law 113 (6th ed. 1986); Howard B. Abrams, Who's Sorry Now?
Termination Rights and the Derivative Works Exception, 62 U.Det.L.Rev. 181, 224-32, 238-39 (1985);
Jessica D. Litman, Copyright, Compromise, and Legislative History, 72 Cornell L.Rev. 857, 901-02 (1987).
But see 3 Nimmer, 11.02[B] at 11-18.11 to 11-18.14.
5. After Bourne appealed, the district court awarded attorneys' fees to Callicoon, finding that Bourne
had adopted an objectively unreasonable position. Woods v. Bourne Co., 858 F.Supp. 399
(S.D.N.Y.1994). Although Bourne asks us to address the award of attorneys' fees, that judgment was
not the subject of Bourne's notice of appeal and the issue is not properly before us. We assume that, in
view of our disposition of this appeal, the district court will reconsider its ruling on attorneys' fees.
FEINBERG, Circuit Judge:
-

19 | P a g e