Ferdinand Pickett, Plaintiff-Appellant, Cross-Appellee, v.
Prince, Defendant-Appellee, Cross-Appellant.
Nos. 99-2770 and 99-2843
UNITED STATES COURT OF APPEALS FOR THE SEVENTH CIRCUIT
207 F.3d 402; 2000 U.S. App. LEXIS 3768; 54 U.S.P.Q.2D
(BNA) 1081; Copy. L. Rep. (CCH) P28,044
February 18, 2000, Argued
March 14, 2000, Decided
OPINION
Posner, Chief Judge.
The appeal by Ferdinand Pickett, plaintiff in the district court, presents us with an issue concerning copyright
in derivative works, while the cross-appeal, by the defendant, presents a
procedural issue. The defendant, identified only as "Prince" in the caption of
the various pleadings, is a well-known popular singer whose name at birth was
Prince Rogers Nelson, but who for many years performed under the name Prince
(which is what we'll call him) and since 1992 has referred to himself by an
unpronounceable symbol reproduced as Figure 1 at the end of this opinion. (See
generally "The Independent, Unofficial and Uncensored Magazine Exploring the
Artist Formerly Known as Prince,.)
The symbol (which rather strikingly resembles the Egyptian hieroglyph ankh,
see Richard H. Wilkinson, Symbol & Magic in Egyptian Art 159, 169 (fig. 128)
(1994), but the parties make [**2] nothing of this, so neither shall we) is his
trademark but it is also a copyrighted work of visual art that licensees of
Prince have embodied in various forms, [*404] including jewelry, clothing, and
musical instruments. Although Prince did not register a copyright of the symbol
until 1997, the plaintiff concedes that Prince obtained a valid copyright in
1992, registration not being a precondition to copyright protection, 17 U.S.C.
sec. 408(a), though it's a precondition to a suit for copyright infringement.
sec. 411(a); Raquel v. Education Mgmt. Corp., 196 F.3d 171, 176 (3d Cir. 1999).
Actually the original copyright was not obtained by him, but he is the assignee,
and the assignment expressly granted him the right to sue for infringement of
the copyright before the assignment.
In 1993 the plaintiff made a guitar (Figure 2) in the shape of the Prince
symbol; he concedes that it is a derivative work within the meaning of 17
U.S.C. sec. 101 ("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, [**3]
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'").
The plaintiff claims (truthfully, we assume for purposes of the appeal) to
have shown the guitar to Prince. Shortly afterwards Prince appeared in public
playing a guitar quite similar to the plaintiff's (Figure 3). The plaintiff
brought this suit for copyright infringement in 1994, but it languished for
years in the district court. In January 1997 Prince counterclaimed for
infringement of the copyright on his symbol, arguing (because he had not yet
registered his copyright--indeed it hadn't even been assigned to him yet) that
in 1992 Warner Brothers had registered a copyright of the symbol in connection
with a record of Prince's music. Prince was mistaken; the copyright was of the
music, not of the symbol, although the symbol appeared on the album cover. In
any event Prince had no standing to enforce someone else's copyright--so that,
if only Warner Brothers held a copyright on the Prince symbol, Prince would have
no [**4] defense against Pickett's suit for infringement (or at least would not
have the defense that he successfully asserted in the district court), as well
as no basis for a counterclaim. In July 1997, however, on the Monday following
the third anniversary of Pickett's suit (which fell on a Saturday), Prince filed
an amended counterclaim for infringement, claiming that it was his own, not
Warner Brothers', copyright that Pickett's guitar infringed; for between January
and July Prince had obtained the copyright by assignment and had registered it.
The district court (Judge Shadur) held that the amended counterclaim, which
superseded the original one, did not relate back to the original counterclaim
because it did not arise out of the same copyright, and so it was barred by the
three-year statute of limitations for claims of copyright infringement. 17
U.S.C. sec. 507(b). Later the suit was transferred to Judge Pallmeyer, who on
Prince's motion for summary judgment dismissed Pickett's claim on the ground
that he had no right to make a derivative work based on the Prince symbol
without Prince's consent, which was never sought or granted. 52 F. Supp. 2d 893
(N.D. Ill. 1999). [**5]
Pickett claims the right to copyright a work derivative from another person's
copyright without that person's permission and then to sue that person for
infringement by the person's own derivative work. Pickett's guitar was a
derivative work of the copyrighted Prince symbol, and so was Prince's guitar.
Since Prince had (or so we must assume) access to Pickett's guitar, and since
the two guitars, being derivatives of the same underlying work, are, naturally,
very similar in appearance, Pickett has--if he is correct that one can copyright
a derivative work when the original work is copyrighted by someone else who hasn
't authorized the maker of the derivative work to copyright it-- [*405] a
prima facie case of infringement. Wildlife Express Corp. v. Carol Wright Sales,
Inc., 18 F.3d 502, 508 (7th Cir. 1994); Procter & Gamble Co. v.
Colgate-Palmolive Co., 199 F.3d 74, 77 (2d Cir. 1999) (per curiam); Castle Rock
Entertainment, Inc. v. Carol Publishing Group, Inc., 150 F.3d 132, 137 (2d Cir.
1998); Twin Peaks Productions, Inc. v. Publications International, Ltd., 996
F.2d 1366, 1372 (2d Cir. 1993); see also 2 Paul Goldstein, Copyright:
Principles, [**6] Law and Practice sec. 7.2.1, p. 8 (1989) ("the fact that the
defendant had access to the plaintiff's work and that the defendant's work is
similar to the plaintiff's can form the basis for an inference that the
defendant copied her work from the plaintiff's work"). Pickett must, he
concedes, show that his derivative work has enough originality to entitle him to
a copyright, and also that the copyright is limited to the features that the
derivative work adds to the original. But he insists that with these limitations
his copyright is valid.
We doubt that he could show the requisite incremental originality, Lee v.
A.R.T. Co., 125 F.3d 580 (7th Cir. 1997); Gracen v. Bradford Exchange, 698 F.2d
300, 304-05 (7th Cir. 1983), slight as it need be. Feist Publications, Inc. v.
Rural Telephone Service Co., 499 U.S. 340, 345, 362-63, 113 L. Ed. 2d 358, 111
S. Ct. 1282 (1991); CDN Inc. v. Kapes, 197 F.3d 1256, 1259-61 (9th Cir. 1999);
Acuff-Rose Music, Inc. v. Jostens, Inc., 155 F.3d 140, 143-44 (2d Cir. 1998); 1
Melville B. Nimmer & David Nimmer, Nimmer on Copyright sec. 3.03, p. 3-10
(1999); see generally 1 Goldstein, supra, [**7] sec. 2.2.1, pp. 62-65. In Lee
v. A.R.T. Co., supra, 125 F.3d at 582, we noted a conflict in the authorities
over whether any originality is required for a derivative work. We had explained
in Gracen v. Bradford Exchange, supra, 698 F.2d at 304, and we'll note later in
this opinion as well, that such a requirement is essential in order to head off
situations in which it is impossible to adjudicate a dispute between owners of
two derivative works because the works are identical both to the original and to
each other. The Ninth Circuit, the only court cited in Lee as disagreeing with
us, had, in fact, swung around to our view shortly before our decision came
down. Entertainment Research Group, Inc. v. Genesis Creative Group, Inc., 122
F.3d 1211, 1220 (9th Cir. 1997).
Although Pickett's guitar isn't identical to the Prince symbol, the
difference in appearance may well be due to nothing more than the functional
difference between a two-dimensional symbol and a guitar in the shape of that
symbol. In that event even Prince could not have copyrighted the guitar version
of the symbol. 17 U.S.C. sec. 101; American Dental Ass'n v. Delta Dental Plans
Ass'n, 126 F.3d 977, 980 (7th Cir. 1997); [**8] Entertainment Research Group,
Inc. v. Genesis Creative Group, Inc., supra, 122 F.3d at 1221-24; cf. Mitel,
Inc. v. Iqtel, Inc., 124 F.3d 1366, 1374-75 (10th Cir. 1997); Williams v.
Crichton, 84 F.3d 581, 587-88 (2d Cir. 1996). A guitar won't work without
strings, frets, etc. arranged in a pattern dictated by musical considerations,
and to the extent that the pattern is what it is because otherwise the guitar
won't sound right, it is not copyrightable as a work of visual art. Maybe,
though, the juxtaposition of the symbol and the guitar is enough to confer on
the ensemble sufficient originality as a work of visual art to entitle the
designer to copyright it. See North Coast Industries v. Jason Maxwell, Inc., 972
F.2d 1031 (9th Cir. 1992); Rogers v. Koons, 960 F.2d 301, 307 (2d Cir. 1992).
Many works of art rely for their effect on the juxtaposition of familiar
elements ordinarily held separate (like a mustache painted on a photograph of
the Mona Lisa); indeed, all works of art are ultimately combinations of
familiar, uncopyrightable items.
We need not pursue the issue of originality of derivative works. The
Copyright [**9] Act grants the owner of a copyright the exclusive right to
prepare derivative works based upon the copyrighted work. 17 U.S.C. sec. 106
(2); Lee v. A.R.T. Co., [*406] supra, 125 F.3d at 581; Gracen v. Bradford
Exchange, supra, 698 F.2d at 302; Atari, Inc. v. North American Philips Consumer
Electronics Corp., 672 F.2d 607, 618 n. 12 (7th Cir. 1982); Micro Star v.
Formgen Inc., 154 F.3d 1107, 1110 (9th Cir. 1998). So Pickett could not make a
derivative work based on the Prince symbol without Prince's authorization even
if Pickett's guitar had a smidgeon of originality. This is a sensible result. A
derivative work is, by definition, bound to be very similar to the original.
Concentrating the right to make derivative works in the owner of the original
work prevents what might otherwise be an endless series of infringement suits
posing insoluble difficulties of proof. Consider two translations into English
of a book originally published in French. The two translations are bound to be
very similar and it will be difficult to establish whether they are very similar
because one is a copy of the other or because both are copies [**10] of the
same foreign-language original. Whether Prince's guitar is a copy of his
copyrighted symbol or a copy of Pickett's guitar is likewise not a question that
the methods of litigation can readily answer with confidence. If anyone can make
derivative works based on the Prince symbol, we could have hundreds of Picketts,
each charging infringement by the others.
Pickett relies for his implausible theory primarily on section 103(a) of the
Copyright Act, which provides that while copyright can be obtained in derivative
works, "protection for a work employing preexisting material in which copyright
subsists does not extend to any part of the work in which such material has been
used unlawfully." Pickett reads this as authorizing a person other than the
owner of the original work to make a derivative work, merely forbidding him to
infringe the original. It is very difficult to see how a derivative work not
made by the owner of the original work could fail to infringe it, given the
definition of derivative works. (There is no infringement by the owner of the
copyright of the original work, since section 106(2) entitles him to make
derivative works based on his copyrighted work. Cortner v. Israel, 732 F.2d
267, 271 (2d Cir. 1984).) [**11] Picket doesn't deny this; having warded off
(he thinks) Prince's counterclaim for copyright infringement, he is unafraid to
acknowledge that he is an infringer and to content himself with arguing that his
copyright extends only to the original elements of the infringing work. But we
do not read section 103(a) as qualifying the exclusive right of the owner of the
copyright of the original work to make derivative works based on that work, the
right conferred by section 106(2). Section 103(a) means only, at least so far as
bears on this case, that the right to make a derivative work does not authorize
the maker to incorporate into it material that infringes someone else's
copyright. Cortner v. Israel, supra, 732 F.2d at 272; 1 Nimmer & Nimmer, supra,
sec. 3.06, pp. 3-34.23 to 3-34.27; cf. Harris Custom Builders, Inc. v.
Hoffmeyer, 92 F.3d 517, 519 (7th Cir. 1996). So if Pickett owned a copyright of,
say, a picture of Prince, and Prince used that picture in his own guitar without
Pickett's consent, Pickett would have a claim of infringement. But the only
copyright that Pickett claims Prince infringed is a copyright that Pickett had
no right to obtain, namely a [**12] copyright on a derivative work based on
Prince's copyrighted symbol.
Pickett relied in the district court on a dictum in Eden Toys, Inc. v.
Florelee Undergarment Co., 697 F.2d 27, 34 n. 6 (2d Cir. 1982), that a stranger
can make a derivative work without the permission of the owner of the copyright
of the original work if the original work does not "pervade" the derivative
work. The suggestion, if taken seriously (which it has not been), would inject
enormous uncertainty into the law of copyright and undermine the exclusive right
that section 106(2) gives the owner of the copyright on the original work. It
also rests on a confusion between the determination of whether a work is
derivative and the determination of who has the right to [*407] make the
derivative work. Defined too broadly, "derivative work" would confer enormous
power on the owners of copyrights on preexisting works. The Bernstein-Sondheim
musical West Side Story, for example, is based loosely on Shakespeare's Romeo
and Juliet, which in turn is based loosely on Ovid's Pyramus and Thisbe, so that
if "derivative work" were defined broadly enough (and copyright were perpetual)
West Side Story would infringe Pyramus [**13] and Thisbe unless authorized by
Ovid's heirs. We can thus imagine the notion of pervasiveness being used to
distinguish a work fairly described as derivative from works only loosely
connected with some ancestral work claimed to be their original. Cf. Micro Star
v. Formgen Inc., supra, 154 F.3d at 1110. In that sense Prince's symbol clearly
"pervades" both guitars. If it did not, the guitars might not be derivative
works, but they would not be derivative works that anyone was free to make
without obtaining Prince's permission.
It is apparent from what we have said so far not only that Pickett could not
copyright his guitar, but that his guitar infringes Prince's copyright. (Pickett
's further argument, that Prince's copyright has evaporated if, as Judge Shadur
ruled, the counterclaim to enforce it is time-barred and so Prince's symbol fell
into the public domain and became fair game for makers of derivative works, is
ridiculous.) The remaining question, whether the counterclaim was properly
dismissed on the basis of the statute of limitations, is the subject of Prince's
cross-appeal. Oddly, there is not the slightest doubt that the amended
counterclaim was filed before [**14] the statute of limitations expired, and
this regardless of whether it related back to the original, Fed. R. Civ. P.
15(c)(2), as probably it did not, since it was based on a different copyright.
Cf. 6A Charles Alan Wright, Arthur R. Miller & Mary Kay Kane, Federal Practice
and Procedure sec. 1497, pp. 70-74 (1990). Although the amended counterclaim was
filed on the last possible day before expiration, namely the Monday after the
Saturday that was the third anniversary of the filing of Pickett's suit, see
Fed. R. Civ. P. 6(a), the adage that a miss is as good as a mile applies in
reverse here: a suit is timely whether filed the day after the claim accrues or
the very last day before the suit would be time-barred.
So why was the counterclaim dismissed as untimely? The three-year period of
limitations began running on July 5, 1994, and the judge ruled that the
counterclaim was untimely because it had not been filed until July 7, 1997.
Apparently no one, including the judge, noticed that July 5, 1997, was a
Saturday. Prince's lawyer finally woke up, and a couple of weeks after Judge
Shadur had ruled filed a motion for reconsideration which the judge denied on
the ground that a motion [**15] for reconsideration is not an appropriate
vehicle for injecting a new legal theory into a case.
We think that in so ruling the judge abused his discretion. Unlike the case
in which a judgment is sought to be vacated, to which the principle enunciated
by the judge does apply, e.g., Caisse Nationale de Credit Agricole v. CBI
Industries, Inc., 90 F.3d 1264, 1269-70 (7th Cir. 1996); Keene Corp. v.
International Fidelity Ins. Co., 736 F.2d 388, 393 (7th Cir. 1984), although its
application to a computational error having nothing to do with legal "theory"
may be doubted, see Russell v. Delco Remy Division, 51 F.3d 746, 749 (7th Cir.
1995), a motion to reconsider a ruling is constrained only by the doctrine of
the law of the case. And that doctrine is highly flexible, especially when a
judge is being asked to reconsider his own ruling. Avitia v. Metropolitan Club
of Chicago, Inc., 49 F.3d 1219, 1227 (7th Cir. 1995); Prisco v. A & D Carting
Corp., 168 F.3d 593, 607 (2d Cir. 1999). Judge Shadur's ruling that the
counterclaim was untimely was interlocutory, and thus not a final judgment. In
fact, it was not a judgment at all. [**16] It was issued in December of 1997,
and the final decision by the district court [*408] didn't come until June 18
of last year. The ruling was also the plainest of plain errors, requiring only a
glance at the calendar to discover. The judge was led into the plain error by
the party seeking to correct it, but that is often the case. Had Prince's lawyer
discovered the error a few weeks earlier and brought it to Judge Shadur's
attention before the judge ruled, undoubtedly the judge would have held that the
counterclaim was timely.
Although we can understand Judge Shadur's annoyance at being led into plain
error, a judge's refusal to correct a plain error that he had committed weeks
before is not justified by the doctrine of the law of the case, or anything else
we can think of. Creek v. Village of Westhaven, 144 F.3d 441, 446 (7th Cir.
1998); Evans v. City of Chicago, 873 F.2d 1007, 1013-14 (7th Cir. 1989); United
States v. Zanghi, 189 F.3d 71, 79-80 (1st Cir. 1999). Were we to uphold the
denial of reconsideration and dismissal of the counterclaim, we would be
penalizing Prince's lawyer for having asked Judge Shadur to correct his own
mistake, rather than [**17] reserving the issue for an appeal, and we would
thus be discouraging efforts by litigants to purge errors before the case comes
to us (perhaps it won't come to us if the errors are purged). For if Prince had
for the first time on appeal argued that Judge Shadur had erred in dismissing
the counterclaim as untimely, and if Pickett had responded that Prince had
waived the issue by failing to raise it in the district court, Prince would have
appealed to the doctrine of plain error to absolve him from the consequences of
the waiver. And limited though that doctrine is in civil cases, see, e.g., Deppe
v. Tripp, 863 F.2d 1356, 1360-61 (7th Cir. 1988); Smith v. Kmart Corp., 177 F.3d
19, 28 (1st Cir. 1999), we would have invoked it and reversed the dismissal of
the counterclaim. The result should not be different merely because, though
apprised of the error, Judge Shadur refused to correct it.
It is conceivable though not argued that Prince's failure to discover that
July 5, 1997, was a Saturday (or to realize the significance of the fact) was
harmful to Pickett; but such an argument would get nowhere, for it was as
irresponsible for Pickett's lawyer to argue the [**18] untimeliness of a
counterclaim that he should have known was timely as it was for Prince's lawyer
to fail to refute the argument. As no effort was made to show that Pickett was
harmed by Prince's mistake (and it was, to repeat, Pickett's mistake as well),
let alone so gravely harmed as to warrant the dismissal of the counterclaim
rather than just an order that Prince reimburse Pickett for any expense
occasioned by the mistake, we cannot think of any reason at all why Judge Shadur
should have refused to rescind his erroneous dismissal of the counterclaim.
The judgment is affirmed insofar as it dismisses Pickett's suit but vacated
insofar as it dismisses the counterclaim, and the case is remanded for further
proceedings consistent with this opinion.
Affirmed in Part, Vacated in Part, and Remanded.
[*409] Figure 1
[SEE Figure 1 IN ORIGINAL]
[*410] Figure 2
[SEE Figure 2 IN ORIGINAL]
[*411] Figure 3
[SEE Figure 3 IN ORIGINAL]