A “derivative work” is created where a preexisting work is “recast, transformed, or adapted.” 17 U.S.C. § 101. Such a derivative work could be a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgement, or condensation. Id. A derivative work consisting of editorial revisions or annotations also could represent an original work of authorship.

Replacing Glue Binding with Spiral Bindings

In Steeplechase Arts & Productions, L.L.C. v. Wisdom Paths, Inc., No. 22-02031 (D.N.J. Jan. 26, 2023), the defendant, Spiralverse, had purchased copies of Steeplechase's piano books, and then replaced the original glue binding of those purchased books with spiral bindings which would allow the books to lie more flat on a music stand. The new spiralbound books had labels stating: “The original binding was removed and replaced with a spiral binding by Spiralverse.com.”

Copyright

There was no dispute that the first-sale doctrine allows the resale of an unaltered physical book. See 17 U.S.C. § 109. Steeplechase, however, alleged copyright infringement based on a theory that replacing the original glue binding of the piano book with spiral bindings created a separate derivative work. That is, becoming a new creative work such that the first-sale doctrine would not apply.

The district court held that this re-binding did not create a “derivative work” within the meaning of the Copyright Act, citing Lee v. A.R.T. Co., 125 F.3d 580, 582 (7th Cir. 1997) (“It still depicts exactly what it depicted when it left Lee's studio.”) and Lantern Press, Inc. v. Am. Publishers Co., 419 F. Supp. 1267, 1269 (E.D.N.Y. 1976) (finding no copyright infringement where the defendant bought paperback books and installed hard covers without changing a line of text).

Spiralverse's version of the Piano Book is not “based upon” Steeplechase's original; it is the same book.

Thus, the district court dismissed the copyright infringement claim.

Trademark and False Advertising

Steeplechase's trademark claims, however, were not dismissed because consumers could have been confused or misled as to the originator of the spiralbound books, which were materially different from the original glue-bound books. “There is insufficient evidence in the record to demonstrate that consumers likely understood that the rebinding was done without the permission of Steeplechase, or that consumers were likely confused about who was responsible.”

The district court noted that “[i]f a consumer understands that the reseller is responsible for any material differences between the resold and genuine product, then the owner's goodwill in the trademarked product is unlikely to be damaged.”

          However, as discussed above, it is not at all clear that Spiralverse's label alleviates all confusion about which entity is responsible for the rebinding, particularly in light of the fact that Spiralverse advertises its version of the Piano Book as “new.” If consumers understand that Spiralverse modified the binding but believe that it did so with the permission of or in association with Steeplechase, the goodwill of the Steeplechase Mark could still be affected. Accordingly, Spiralverse has not established that the “first sale” doctrine applies to its sale of the spiralbound Piano Books.

Thus, the district court allowed the trademark infringement claims to continue with discovery in the case.

Thomas P. Howard, LLC litigates copyright cases nationwide including in Colorado.