The leading treatise on copyright law confirms this basic understanding. “[T]he right to claim copyright in a noninfringing derivative work arises by operation of law, not through authority from the copyright owner of the underlying work.”[1] 1 Nimmer on Copyright § 3.06, at 3-34.34. We have cited Nimmer with approval on this point. See Liu, 302 F.3d at 755. As we noted in Liu, however, there is an important proviso explained in the treatise: “[I]f the pertinent agreement between the parties affirmatively bars the licensee from obtaining copyright protection even in a licensed derivative work, that contractual provision would appear to govern.’ ” 1 Nimmer on Copyright § 3.06, at 3-34.34; see also Liu, 302 F.3d at 755.
On this point Liu is instructive. Price Waterhouse LLP owned the copyright to a computer-software program, and Yang, an employee, was asked to help recruit a Chinese computer programmer to increase the speed of the program. Liu, 302 F.3d at 751. Yang became concerned that if the Chinese programmer was successful, Price Waterhouse might exclude her from future Chinese ventures. To allay these concerns, Price Waterhouse entered into a series of letter agreements with Yang specifying a payment schedule for benchmark improve-
- ↑ The Nimmer treatise notes the anomaly in Gracen: “[Gracen] would appear to be incorrect in suggesting that copyright in any derivative work may not be claimed, even if the making of such work had been licensed, unless such license affirmatively included the right to claim copyright in the derivative work.” 1 Nimmer on Copyright § 3.06, at 3-34.34 n.28.
