A famous rockstar named Prince
started referring to himself by a strange unpronounceable symbol. He
received a trademark and a copyright on the symbol.
A guitar-maker named Pickett
started producing guitars in the same shape as the symbol. Soon after,
Prince started performing with his own guitar in the same shape as the
symbol. Pickett sued, claiming copyright infringement. Prince countersued for the same thing.
Prince argued that he held
the copyright on the symbol, therefore Pickett was violating it when he
made the guitar.
Pickett argued that while
Prince held the copyright on the symbol, Pickett's guitar was a derivative
work and was itself copyrightable.
Basically, just because
Prince owned the symbol, that didn't mean he could own a guitar shaped
like the symbol.
So even if Pickett was
infringing on Prince's copyright by making the guitar, Prince was
infringing on Pickett's copyright on the derivative work by making a copy of Pickett's guitar.
The Trial Court found for
Prince. Pickett appealed.
The Appellate Court affirmed.
The Appellate Court found
that Pickett could not make a derivative work based on an original without authorization of
the original copyright holder, even if the derivative work contained some original elements.
See 17 U.S.C. §103(a), which says that derivative works
can get a copyright, but that does not extent to any part of the work in
which such material has been used unlawfully.
Basically, a derivative
work can be afforded some copyright
protection. However, you can't create a derivative work by infringing on someone else's copyright.
If Pickett had gotten
Prince's permission to use the symbol, or was using a public domain
symbol, then he would have a claim to stop others from making guitars
shaped like the symbol. But since his guitar was an infringement of
Prince's copyright, he couldn't claim it as a derivative work.