Defining derivatives

It is frequently interesting, and sometimes appalling, to see how a court that does not usually deal with copyright issues reacts when confronted with one.  Judge Amy Berman Jackson of the U.S. District Court for the District of Columbia is certainly not a complete novice regarding copyright, but the issue she confronted in Drauglis V. Kappa Map Group must certainly have been a new one for her.  It is a case involving the scope and interpretation of a Creative Commons license, and Judge Jackson deals quite well with it, in my opinion, in a decision issued last week.  But she is drawing lines in this case that I am quite sure will be discussed and readjusted over the next few years.

The facts in the case pose a situation that anyone familiar with CC licensing could probably have seen coming.  Art Drauglis, the plaintiff, took a quite lovely photograph  of a scene in rural Maryland that he calls “Swain’s Lock.”  There is no indication that Drauglis is a professional photographer, and he uploaded the image to a Flickr account he shares with his wife, using a CC Attribution Share Alike license.  Several years later he was upset to find that a publisher, Kappa Map Group, had used his photograph on the front cover of their Montgomery County Street Atlas, which, of course, they offered for sale.  Drauglis sued alleging copyright infringement based on the commercial use,  that the share alike provision of his license had been violated, and that he was not given appropriate attribution.  The court dismissed all of these claims on a motion of summary judgment, in the process making some important rulings about how we should understand Creative Commons licenses.

As an initial matter, Judge Jackson cites several authorities for the general proposition that a copyright holder who licenses his or her work can only sue for copyright infringement if the use is outside the scope of that license.  The issue of commercial reuse is an easy matter for the court, since the license Drauglis chose allows such commercial reuse.  He could have chosen an non-commercial (NC) term for this photo, but did not. So the fact that Kappa Maps took the photo and used it as the cover illustration for a commercial product does not, by itself, support a claim of copyright infringement.

The lesson from this part of the story is clear; rights holders need to think carefully about the terms of the licenses they imply.  Creative Commons offers a very flexible set of licenses, and those of us who use them can adjust to suit our particular needs.  But we need to think through what those needs are and select the appropriate terms.

If this was an easy call, three other points raised in this decision are more complicated, and offer some insights into how we might think about some of the aspects of Creative Commons licenses.

First, Drauglis asserted that the terms of his Share Alike provision had been violated because the Atlas was not offered for free and under similar conditions.  To decide this issue, Judge Jackson notes that a CC SA provision applies only to derivative works, and she then examines the definition of a derivative in section 101 of the copyright law.  Noting that a derivative is defined as a work that is “based upon” a preexisting work and that modifications appear to be required, the judge determines that simply reprinting the photo as the cover illustration of a map book does not create a derivative work.  Instead, she considers the atlas to be a compilation, which is treated quite differently in our copyright law.

In general I think this aspect of the case raises a distinction that many users of CC licenses and CC licensed material do not think about — the fact that a share alike provision applies only to derivative works, and not all uses would qualify as derivatives.  The reason I think this will be a matter for future debate is because the line is not very clear.  If I use a preexisting image as an illustration for a web page I create, at what point does that use result in a derivative work?  If the image is reproduced in its entirety and not changed, but merely surrounded by the other parts of the site, it sounds from this decision like the website might be a compilation of sorts, and the SA provision would not come into play.

One thing that is clear, and this is my second point, is that a Share Alike provision does not require that the second work be made available for free, as long as a derivative is not created. The compilation atlas containing Drauglis’ photo was sold, of course, and the court said that was OK because there was no non-commercial restriction on the license and the commercial work was not a derivative (which would activate the share alike restriction).  This was a important issue for me when I was deciding which CC license to use for my book that was published last year.  I considered a CC-BY-SA license in the mistaken belief that this would prevent commercial exploitation of the book without my explicit consent, something I wanted to prevent in order to protect the publisher.   My colleague Paolo Mangiafico corrected my thinking on this point, pointing out that someone could, conceivably, download the book and sell unmodified copies without violating the SA provision.  In this Paolo correctly anticipated the district court, and his argument convinced me to use an attribution/non-commercial license.  Thus non-commercial derivatives are allowed, which was important to me, but all commercial uses other than by the ACRL, who published the book, would require my additional permission.

The third aspect of the case that I think will generate ongoing discussion is the small controversy about appropriate attribution.  This is an issue that I hear about frequently from users of CC-licensed material, who want to do the right thing.  In the case against Kappa Map Group, Drauglis argued that the credit given for his photo, on the outside of the back cover of the Atlas, was inadequate and conflicted with the general statement claiming copyright in the work as a whole that was inside of the front cover.  To decide this issue the judge looked at how copyright notices for the individual maps were handled and what the general standards for appropriate attribution were, and concluded that Kappa had behaved correctly.  This aspect of the case offers a clear lesson for other users of CC licenses.  It is long established that works can have multiple copyright statements, and an assertion of copyright in an overall work does not negate attribution and assertion of rights for incorporated material as long as that attribution is given in a manner appropriate to the medium and the work.  So I think the messages for users of CC-licensed materials from this part of the decision is to relax, give attribution in the best way appropriate to the new work, and not worry too much about the fact that a new work may have multiple attributions and copyright statements.

There is additional analysis and discussion of this case over at TechDirt.  To me the bottom line is that Kappa Map Group behaved responsibly and Mr. Drauglis, suffering from licencor’s remorse, tried to use the courts to remedy his own mistaken selection of a license.  Nevertheless, whether this case is finished or not, I think we will hear more about what the boundaries of a derivative work really are.



9 thoughts on “Defining derivatives”

  1. Excellent analysis, Kevin. But here are two additional thoughts:

    1. Would choosing a NC license have prevented this use? Here is what Creative Commons has to say about NC uses: “NonCommercial means not primarily intended for or directed towards commercial advantage or monetary compensation” (emphasis mine). Kappa Map may have picked the image because it thought that it would sell more atlases, so maybe that would have made it a commercial use. But Kappa could also have picked the image because it is a pretty picture of an iconic spot in Montgomery County and hence is illustrative of the content of the Atlas. Would that have been using it “primarily” for commercial advantage? In other words, could Kappa have used the image even if it had been licensed for non-commercial use?

    2. As for the Share Alike part, I would quibble with your statement that “a Share Alike provision does not require that the second work be made available for free, as long as a derivative is not created.” Are you trying to suggest that if a derivative had been created, then the second work would have had to have been made available for free? I think that would be incorrect. Share Alike has nothing to do with whether a work is made available for free or sold. It only means that if a derivative had been created, then that derivative would have had to have been licensed under the same terms as original work. And I think the Adapted License could apply just to the modified version of the photograph and not have to apply to the entire work (but correct me if I am wrong on that).

    1. As for your part 2, that’s explicitly what a derivative work *means*…as in, if it had been found that the book counted as a derivative work as a whole, then yes the work as a whole would have had to have been licensed under the same terms as the original work.

  2. Interesting analysis. One thing I was wondering about– once you assign a CC license (especially for a digitized run of a serial) can the license be changed? Or is it for all time?

    1. IANAL, but to my understanding the license terms “apply” at the moment of distribution…that is, if you gave me (or I downloaded because you provided) a work under a particular license (such as the CC license), then my usage of the exact version of the work that I downloaded can be done under the terms of that license in perpetuity. If you decided to no longer distribute the work on your site under those terms, or distributed a new version under new terms, then I would not be allowed to use the new version under the old CC license terms.

      It seems to me that it would have to be this way, in order to prevent people from retroactively changing the license terms. You can’t let me use something under a license term and then sue me later because you retroactively changed your mind without telling me.

  3. This is a very useful summary. To use a well known expression (hopefully legally) I come from the land down-under, and our copyright legislation is differently framed, but in the case of a novel provision such as CC, I am sure this is a judgement which will be noted.

    I also see Peter Hurtle’s comments as adding to the whole discussion, which is far from over. The issue of the lines that exist and by whom and where they move is far from settled. Equally, we should consider that the term “primarily” might need to be rethought in the CC definitions.

    The introduction of the CC licenses is a watershed change in this area, and it would be laughable to consider that four versions is all that will be necessary to fully codify the concepts.

    The discussions, such as this one are very valuable and great to read.

  4. Thanks this a useful case and analysis. My comments:

    SA (similar to Hirtle) – my reading of the SA terms is that what is required is using the same license. This is very different from the commonsense understanding of sharealike as in “I shared my work for free and you agree to do the same with your derivative of my work”. CC-BY-SA licensed works that are OA (online and free of charge and free of most restrictions) can become works (copies of the original or derivatives) within paywalled environments, for example course management systems limited to registered students.

    Attribution as you note is more complex than it appears. If downstream use does not require attribution of the original as I think you are saying, this may be easier for downstream users, but does it meet the expectations of attribution that the original author intended with their CC license?

    Here is an example that perhaps Kevin or others would like to comment on: if a scholar’s work is copied into Wikipedia and downstream citations are to the Wikipedia article, not the scholar’s work:

    1. Is this permitted under CC-BY?
    2. If the answer to 1. is yes or maybe, are scholars using CC-BY aware of this?
    3. If the answer to 1. or 2. is yes or maybe and scholars were aware, would they choose this license?
    4. If the same words are seen to be in a scholar’s work and a Wikipedia article, and it is appropriate to cite Wikipedia rather than the original author, is there not a danger that the scholar will be perceived to be plagiarizing their own work?

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