Private Law Theory

ABSTRACT
A stealth issue in many close copyright fair use cases is the potential invalidity of second comers’ copyrights under 17 USC § 103(a) if the new use is ultimately held to infringe the derivative work right. In the Supreme Court’s recent Warhol v Goldsmith case, for instance, Lynn Goldsmith claimed that the Warhol Foundation owned no copyright in Andy Warhol’s creations based on her photograph because these works infringed her derivative work right, notwithstanding the Foundation’s plausible fair use defense and the significant value that Warhol contributed to these art works. Section 103(a) of the Copyright Act says, in effect, that no copyright exists in any part of a derivative work in which the first work’s expression was ‘used unlawfully’. Courts have largely ignored § 103(a). This Article traces the origins, history, and case law on § 103(a), highlights the significant ramifications of this provision in cases in which it was arguably relevant, and explores the expansive range of its possible interpretations and applications. It argues that the statutory text and purpose of § 103, as well as equitable considerations, support numerous limitations on the scope of § 103(a) invalidations, especially in close cases of derivative work infringement and failed fair use rulings. When invalidations of copyrights would be inequitable as to good faith secondary uses of source works, result in windfalls to source work authors, or otherwise be contrary to fundamental principles of copyright law, this Article argues that Congress intended § 103 to apply narrowly to achieve copyright’s goal of promoting the ‘progress of science’.

Samuelson, Pamela and Silbey, Jessica M, Preventing Unjust Enrichment and Copyright Opportunism: An Equitable Interpretation of Section 103(a) (January 15, 2025).