The competition sponsor commissioned another artist to create a similar plate, and Gracen sued the sponsor, MGM, and the artist for copyright infringement. We held that Gracen could not maintain her infringement suit because her painting, a derivative work, was not “substantially different from the underlying work to be copyrightable.” Id. at 305.
Gracen drew this language from an influential Second Circuit decision, L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (2d Cir. 1976). Read in context, however, the cited language from L. Batlin did not suggest that a heightened standard of originality applies to derivative works.[1] To the contrary, the Second Circuit said only that to be copyrightable a work must “ ‘contain some substantial, not merely trivial originality.’ ” Id. at 490 (quoting
- ↑ To the extent that Gracen’s reading of L. Batlin and its “substantial difference” language can be understood as establishing a more demanding standard of originality for derivative works, it has received mixed reviews. Some commentators have suggested that Gracen may have inappropriately narrowed the copyrightability of derivative works without a statutory basis. See 1 Nimmer on Copyright § 3.03[A], at 3-11; 2 William F. Patry, Patry on Copyright § 3:53 (2009). The Nimmer treatise notes that Gracen’s focus on the word “substantial” reads the language from L. Batlin out of context because L. Batlin simply applied the prevailing “distinguishable variation” test, described above. See 1 Nimmer on Copyright § 3.03[A], at 3-11 n.24. The Third Circuit has agreed and explicitly rejected Gracen’s interpretation of L. Batlin. Dam Things from Den. v. Russ Berrie & Co., 290 F.3d 548, 564 (3d Cir. 2002).
