Subject: Re: "Derivative Work" for Software Defined
From: "Rod Dixon, J.D., LL.M." <>
Date: Wed, 13 Nov 2002 14:48:29 -0500

Hmm...If I understood your proposal correctly, you were suggesting a useful
framework to respond to the often difficult assessment of how to determine
whether a licensee has created a derivative work. My response was that your
proposal/suggestion that the abstraction-filtration-comparison (AFC) test be
viewed as the appropo test was an intriguing suggestion.

I then raised two primary concerns: [1] that what "modifications" constitute
derivative works is the open source problem that licensors seem to struggle
with and the AFC test is neither intended, nor useful for such matters and
[2] at bottom, the AFC test is used by courts to determine what aspects, if
any, of the allegedly infringing work constitute a copyrightable work that
may have infringed the plaintiff's work.  Although the circuits do not agree
on how to apply this test, I doubt that one can find more than an isolated
court opinion that has adopted the AFC test as a tool to determine the
constituent elements of a derivative work.

I agree that one principle underlying the AFC test - - that you "filter" out
the non-literal (or, literal) element that is uncopyrightable - -  is a
helpful guideline in circumstances when a licensor is overreaching by
claiming a licensee created a derivative work by copying/modifying/using a
non-literal element from the original work. In such simple cases, a
derivative work will not exist. I don't see examples of this type being
typical open source issues, however.

Sorry, Rod, but I'm going to have to disagree with you on this point.  See
Tradescape v. Shivram, 77 F.Supp.2d 408 (SDNY 1999).  Comparing two works as
whole against one another to see how "significant" the diffs are between
them is absolutely not the test for derivative work in any Circuit.
Although such an initial "first look" is sometimes performed, it is not
determinative as it would too often lead a court to protect uncopyrightable
portions of the original work.

I think what you are addressing is whether the second author has significant
originality to be deserving of her own copyright in the derivative work.
See Torah Soft v. Drosnin, 136 F.Supp.2d 276 (SDNY 2001) ("All that is
needed for a finding of sufficient originality is a distinguishable
variation that is not merely trivial").  But, simply finding sufficient
originality such that a second work deserves its own copyright doesn't
impact the analysis of whether that second work is a derivative of the
I am not sure that the point in your last paragraph about originality not
impacting that analysis of a derivative work is correct or, at least, not
without notable exception (e.g. whether a derivative work is created by the
computer colorization of film seems inextricably tied to the originality


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