In a March 31, 2014 ruling, Judge Paul G. Gardephe granted summary judgment in favor of the plaintiff in its declaratory judgment action that it had the right under the Copyright Act to publish an ebook version of a translation (i.e., derivative work) of a then-public domain book it had previously published in print even though the copyright was restored in the interim under the Uruguay Round Agreements Act. The provision of the Uruguay Round Agreements restoring copyrights for certain foreign works permits those who created derivative works before restoration to continue to publish them upon payment to the rights holder of “reasonable compensation.” The central issue in the case was whether the ebook version is a new derivative work or simply a different medium for an existing derivative work. In deciding that the ebook version is not a new derivative work, Judge Gardephe wrote:All of the forms of “works” listed in the statutory definition of “derivative work” reference changes and alterations in the content for the pre-existing work, or changes and alterations in both the content and the medium of that work. None of the listed forms describes a change in medium alone. A “translation,” for example, requires the selection of new words, phrases, and idioms that are not part of the original work. A “musical arrangement” involves the exercise of artistic judgment concerning, inter alia, composition, rhythm, and lyrics. A “dramatization” or “fictionalization” involves the introduction of fictional elements to an existing story. A “motion picture version” of a book or play involves elements of production, direction and acting, as well as innumerable artistic judgments about how much of the original work will be used. A “sound recording” of a musical performance or other live event will likewise involve innumerable production and editing determinations. An “art reproduction” typically involves taking an image, sculpture, or other work of art and introduction new colors, shadowing, or otherwise recomposing the original work. A “condensation” or “abridgement” of a literary work is, by definition, a presentation of something less than the original work. Accordingly, the terms “recast, transformed, or adapted” [in the definition of a derivative work] must similarly be read to refer to content-based changes. . . . Had Congress wished to afford derivative work status to works involving changes in medium alone, one would expect to see references to, for example, “hardcover,” “softcover,” “VHS,” and “CD.”
The Court also rejected the defendants’ argument that the ebook was itself an “original work,” finding that the process of creating the ebook “involves little more than pure transcription,” by inputting the work into software designed to create the ebook.
