Page:Lewis Galoob Toys v. Nintendo of America.pdf/4

 Act defines copies as “material objects, other than phonorecords, in which a work is fixed by any method.” 17 U.S.C. § 101 (emphasis added). The Act’s definition of “derivative work,” in contrast, lacks any such reference to fixation. See id. Further, we have held in a copyright infringement action that “[i]t makes no difference that the derivation may not satisfy certain requirements for statutory copyright registration itself.” Lone Ranger Television v. Program Radio Corp., 740 F.2d 718, 722 (9th Cir.1984). See also Paul Goldstein, Derivative Rights and Derivative Works in Copyright, 30 J. Copyright Soc’y U.S.A. 209, 281 n. 75 (1988) (“the Act does not require that the derivative work be protectable for its preparation to infringe”). Cf. Kalem Co. v. Harper Bros., 222 U.S. 55, 61, 32 S.Ct. 20, 21, 56 L.Ed. 92 (1911) (finding the movie “Ben Hur” infringed copyright in the book Ben Hur even though Copyright Act did not yet include movies as protectable works). A derivative work must be fixed to be protected under the Act, see 17 U.S.C. § 102(a), but not to infringe.

The argument that a derivative work must be fixed because “[a] ‘derivative work’ is a work,” 17 U.S.C. § 101, and “[a] work is ‘created’ when it is fixed in a copy or phonorecord for the first time,” id., relies on a misapplication of the Copyright Act’s definition of “created”:

"A work is ‘created’ when it is fixed in a copy or phonorecord for the first time; where a work is prepared over a period of time, the portion of it that has been fixed at any particular time constitutes the work as of that time, and where the work has been prepared in different versions, each version constitutes a separate work."

Id. The definition clarifies the time at which a work is created. If the provision were a definition of “work,” it would not use that term in such a casual manner. The Act does not contain a definition of “work.” Rather, it contains specific definitions: “audiovisual works,” “literary works,” and “pictorial, graphic and sculptural works,” for example. The definition of “derivative work” does not require fixation.

The district court’s finding that no independent work is created, see Galoob, 780 F.Supp. at 1291, is supported by the record. The Game Genie merely enhances the audiovisual displays (or underlying data bytes) that originate in Nintendo game cartridges. The altered displays do not incorporate a portion of a copyrighted work in some concrete or permanent form. Nintendo argues that the Game Genie’s displays are as fixed in the hardware and software used to create them as Nintendo’s original displays. Nintendo’s argument ignores the fact that the Game Genie cannot produce an audiovisual display; the underlying display must be produced by a Nintendo Entertainment System and game cartridge. Even if we were to rely on the Copyright Act’s definition of “fixed,” we would similarly conclude that the resulting display is not “embodied,” see 17 U.S.C. § 101, in the Game Genie. It cannot be a derivative work.

Mirage Editions is illustrative. Albuquerque A.R.T. transferred artworks from a commemorative book to individual ceramic tiles. See Mirage Editions, 856 F.2d at 1342." We held that “[b]y borrowing and mounting the preexisting, copyrighted individual art images without the consent of the copyright proprietors … [Albuquerque A.R.T.] has prepared a derivative work and infringed the subject copyrights.” Id. at 1343. The ceramic tiles physically incorporated the copyrighted works in a form that could be sold. Perhaps more importantly, sales of the tiles supplanted purchasers’ demand for the underlying works. Our holding in Mirage Editions would have been much different if Albuquerque A.R.T. had distributed lenses that merely enabled users to view several artworks simultaneously.

Nintendo asserted at oral argument that the existence of a $150 million market for the Game Genie indicates that its audiovisual display must be fixed. We understand Nintendo’s argument; consumers clearly would not purchase the Game Genie if its display was not “sufficiently permanent or