The opinion
In the
United States Court of Appeals
For the Seventh Circuit
Nos. 99-2770 and 99-2843
Ferdinand Pickett,
Plaintiff-Appellant, Cross-Appellee,
v.
Prince,
Defendant-Appellee, Cross-Appellant.
Appeals from the United States District Court
for the Northern District of Illinois, Eastern Division.
No. 94 C 4740--
Rebecca R. Pallmeyer & Milton I. Shadur, Judges.
Argued February 18, 2000--Decided March 14, 2000
Before Posner, Chief Judge, and Bauer and Manion,
Circuit Judges.
Posner, Chief Judge. The appeal by Ferdinand
Pickett, plaintiff in the district court,
presents us with an issue concerning copyright in
derivative works, while the cross-appeal, by the
defendant, presents a procedural issue. The
defendant, identified only as "Prince" in the
caption of the various pleadings, is a well-known
popular singer whose name at birth was Prince
Rogers Nelson, but who for many years performed
under the name Prince (which is what we’ll call
him) and since 1992 has referred to himself by an
unpronounceable symbol reproduced as Figure 1 at
the end of this opinion. (See generally "The
Independent, Unofficial and Uncensored Magazine
Exploring the Artist Formerly Known as Prince,"
<http://www.uptown.se/>.) The symbol (which
rather strikingly resembles the Egyptian
hieroglyph ankh, see Richard H. Wilkinson, Symbol
& Magic in Egyptian Art 159, 169 (fig. 128)
(1994), but the parties make nothing of this, so
neither shall we) is his trademark but it is also
a copyrighted work of visual art that licensees
of Prince have embodied in various forms,
including jewelry, clothing, and musical
instruments. Although Prince did not register a
copyright of the symbol until 1997, the plaintiff
concedes that Prince obtained a valid copyright
in 1992, registration not being a precondition to
copyright protection, 17 U.S.C. sec. 408(a),
though it’s a precondition to a suit for
copyright infringement. sec. 411(a); Raquel v.
Education Mgmt. Corp., 196 F.3d 171, 176 (3d Cir.
1999). Actually the original copyright was not
obtained by him, but he is the assignee, and the
assignment expressly granted him the right to sue
for infringement of the copyright before the
assignment.
In 1993 the plaintiff made a guitar (Figure 2)
in the shape of the Prince symbol; he concedes
that it is a derivative work within the meaning
of 17 U.S.C. sec. 101 ("a work based upon one or
more preexisting works, such as a translation,
musical arrangement, dramatization,
fictionalization, motion picture version, sound
recording, art reproduction, abridgment,
condensation, or any other form in which a work
may be recast, transformed, or adapted. A work
consisting of editorial revisions, annotations,
elaborations, or other modifications which, as a
whole, represent an original work of authorship,
is a ’derivative work’"). The plaintiff claims
(truthfully, we assume for purposes of the
appeal) to have shown the guitar to Prince.
Shortly afterwards Prince appeared in public
playing a guitar quite similar to the plaintiff’s
(Figure 3).
The plaintiff brought this suit for copyright
infringement in 1994, but it languished for years
in the district court. In January 1997 Prince
counterclaimed for infringement of the copyright
on his symbol, arguing (because he had not yet
registered his copyright--indeed it hadn’t even
been assigned to him yet) that in 1992 Warner
Brothers had registered a copyright of the symbol
in connection with a record of Prince’s music.
Prince was mistaken; the copyright was of the
music, not of the symbol, although the symbol
appeared on the album cover. In any event Prince
had no standing to enforce someone else’s
copyright--so that, if only Warner Brothers held
a copyright on the Prince symbol, Prince would
have no defense against Pickett’s suit for
infringement (or at least would not have the
defense that he successfully asserted in the
district court), as well as no basis for a
counterclaim. In July 1997, however, on the
Monday following the third anniversary of
Pickett’s suit (which fell on a Saturday), Prince
filed an amended counterclaim for infringement,
claiming that it was his own, not Warner
Brothers’, copyright that Pickett’s guitar
infringed; for between January and July Prince
had obtained the copyright by assignment and had
registered it. The district court (Judge Shadur)
held that the amended counterclaim, which
superseded the original one, did not relate back
to the original counterclaim because it did not
arise out of the same copyright, and so it was
barred by the three-year statute of limitations
for claims of copyright infringement. 17 U.S.C.
sec. 507(b). Later the suit was transferred to
Judge Pallmeyer, who on Prince’s motion for
summary judgment dismissed Pickett’s claim on the
ground that he had no right to make a derivative
work based on the Prince symbol without Prince’s
consent, which was never sought or granted. 52 F.
Supp. 2d 893 (N.D. Ill. 1999).
Pickett claims the right to copyright a work
derivative from another person’s copyright
without that person’s permission and then to sue
that person for infringement by the person’s own
derivative work. Pickett’s guitar was a
derivative work of the copyrighted Prince symbol,
and so was Prince’s guitar. Since Prince had (or
so we must assume) access to Pickett’s guitar,
and since the two guitars, being derivatives of
the same underlying work, are, naturally, very
similar in appearance, Pickett has-- if he is
correct that one can copyright a derivative work
when the original work is copyrighted by someone
else who hasn’t authorized the maker of the
derivative work to copyright it--a prima facie
case of infringement. Wildlife Express Corp. v.
Carol Wright Sales, Inc., 18 F.3d 502, 508 (7th
Cir. 1994); Procter & Gamble Co. v. Colgate-
Palmolive Co., 199 F.3d 74, 77 (2d Cir. 1999)
(per curiam); Castle Rock Entertainment, Inc. v.
Carol Publishing Group, Inc., 150 F.3d 132, 137
(2d Cir. 1998); Twin Peaks Productions, Inc. v.
Publications International, Ltd., 996 F.2d 1366,
1372 (2d Cir. 1993); see also 2 Paul Goldstein,
Copyright: Principles, Law and Practice sec.
7.2.1, p. 8 (1989) ("the fact that the defendant
had access to the plaintiff’s work and that the
defendant’s work is similar to the plaintiff’s
can form the basis for an inference that the
defendant copied her work from the plaintiff’s
work"). Pickett must, he concedes, show that his
derivative work has enough originality to entitle
him to a copyright, and also that the copyright
is limited to the features that the derivative
work adds to the original. But he insists that
with these limitations his copyright is valid.
We doubt that he could show the requisite
incremental originality, Lee v. A.R.T. Co., 125
F.3d 580 (7th Cir. 1997); Gracen v. Bradford
Exchange, 698 F.2d 300, 304-05 (7th Cir. 1983),
slight as it need be. Feist Publications, Inc. v.
Rural Telephone Service Co., 499 U.S. 340, 345,
362-63 (1991); CDN Inc. v. Kapes, 197 F.3d 1256,
1259-61 (9th Cir. 1999); Acuff-Rose Music, Inc.
v. Jostens, Inc., 155 F.3d 140, 143-44 (2d Cir.
1998); 1 Melville B. Nimmer & David Nimmer,
Nimmer on Copyright sec. 3.03, p. 3-10 (1999);
see generally 1 Goldstein, supra, sec. 2.2.1, pp.
62-65. In Lee v. A.R.T. Co., supra, 125 F.3d at
582, we noted a conflict in the authorities over
whether any originality is required for a
derivative work. We had explained in Gracen v.
Bradford Exchange, supra, 698 F.2d at 304, and
we’ll note later in this opinion as well, that
such a requirement is essential in order to head
off situations in which it is impossible to
adjudicate a dispute between owners of two
derivative works because the works are identical
both to the original and to each other. The Ninth
Circuit, the only court cited in Lee as
disagreeing with us, had, in fact, swung around
to our view shortly before our decision came
down. Entertainment Research Group, Inc. v.
Genesis Creative Group, Inc., 122 F.3d 1211, 1220
(9th Cir. 1997).
Although Pickett’s guitar isn’t identical to the
Prince symbol, the difference in appearance may
well be due to nothing more than the functional
difference between a two-dimensional symbol and a
guitar in the shape of that symbol. In that event
even Prince could not have copyrighted the guitar
version of the symbol. 17 U.S.C. sec. 101;
American Dental Ass’n v. Delta Dental Plans
Ass’n, 126 F.3d 977, 980 (7th Cir. 1997);
Entertainment Research Group, Inc. v. Genesis
Creative Group, Inc., supra, 122 F.3d at 1221-24;
cf. Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366,
1374-75 (10th Cir. 1997); Williams v. Crichton,
84 F.3d 581, 587-88 (2d Cir. 1996). A guitar
won’t work without strings, frets, etc. arranged
in a pattern dictated by musical considerations,
and to the extent that the pattern is what it is
because otherwise the guitar won’t sound right,
it is not copyrightable as a work of visual art.
Maybe, though, the juxtaposition of the symbol
and the guitar is enough to confer on the
ensemble sufficient originality as a work of
visual art to entitle the designer to copyright
it. See North Coast Industries v. Jason Maxwell,
Inc., 972 F.2d 1031 (9th Cir. 1992); Rogers v.
Koons, 960 F.2d 301, 307 (2d Cir. 1992). Many
works of art rely for their effect on the
juxtaposition of familiar elements ordinarily
held separate (like a mustache painted on a
photograph of the Mona Lisa); indeed, all works
of art are ultimately combinations of familiar,
uncopyrightable items.
We need not pursue the issue of originality of
derivative works. The Copyright Act grants the
owner of a copyright the exclusive right to
prepare derivative works based upon the
copyrighted work. 17 U.S.C. sec. 106(2); Lee v.
A.R.T. Co., supra, 125 F.3d at 581; Gracen v.
Bradford Exchange, supra, 698 F.2d at 302; Atari,
Inc. v. North American Philips Consumer
Electronics Corp., 672 F.2d 607, 618 n. 12 (7th
Cir. 1982); Micro Star v. Formgen Inc., 154 F.3d
1107, 1110 (9th Cir. 1998). So Pickett could not
make a derivative work based on the Prince symbol
without Prince’s authorization even if Pickett’s
guitar had a smidgeon of originality. This is a
sensible result. A derivative work is, by
definition, bound to be very similar to the
original. Concentrating the right to make
derivative works in the owner of the original
work prevents what might otherwise be an endless
series of infringement suits posing insoluble
difficulties of proof. Consider two translations
into English of a book originally published in
French. The two translations are bound to be very
similar and it will be difficult to establish
whether they are very similar because one is a
copy of the other or because both are copies of
the same foreign-language original. Whether
Prince’s guitar is a copy of his copyrighted
symbol or a copy of Pickett’s guitar is likewise
not a question that the methods of litigation can
readily answer with confidence. If anyone can
make derivative works based on the Prince symbol,
we could have hundreds of Picketts, each charging
infringement by the others.
Pickett relies for his implausible theory
primarily on section 103(a) of the Copyright Act,
which provides that while copyright can be
obtained in derivative works, "protection for a
work employing preexisting material in which
copyright subsists does not extend to any part of
the work in which such material has been used
unlawfully." Pickett reads this as authorizing a
person other than the owner of the original work
to make a derivative work, merely forbidding him
to infringe the original. It is very difficult to
see how a derivative work not made by the owner
of the original work could fail to infringe it,
given the definition of derivative works. (There
is no infringement by the owner of the copyright
of the original work, since section 106(2)
entitles him to make derivative works based on
his copyrighted work. Cortner v. Israel, 732 F.2d
267, 271 (2d Cir. 1984).) Picket doesn’t deny
this; having warded off (he thinks) Prince’s
counterclaim for copyright infringement, he is
unafraid to acknowledge that he is an infringer
and to content himself with arguing that his
copyright extends only to the original elements
of the infringing work. But we do not read
section 103(a) as qualifying the exclusive right
of the owner of the copyright of the original
work to make derivative works based on that work,
the right conferred by section 106(2). Section
103(a) means only, at least so far as bears on
this case, that the right to make a derivative
work does not authorize the maker to incorporate
into it material that infringes someone else’s
copyright. Cortner v. Israel, supra, 732 F.2d at
272; 1 Nimmer & Nimmer, supra, sec. 3.06, pp. 3-
34.23 to 3-34.27; cf. Harris Custom Builders,
Inc. v. Hoffmeyer, 92 F.3d 517, 519 (7th Cir.
1996). So if Pickett owned a copyright of, say, a
picture of Prince, and Prince used that picture
in his own guitar without Pickett’s consent,
Pickett would have a claim of infringement. But
the only copyright that Pickett claims Prince
infringed is a copyright that Pickett had no
right to obtain, namely a copyright on a
derivative work based on Prince’s copyrighted
symbol.
Pickett relied in the district court on a dictum
in Eden Toys, Inc. v. Florelee Undergarment Co.,
697 F.2d 27, 34 n. 6 (2d Cir. 1982), that a
stranger can make a derivative work without the
permission of the owner of the copyright of the
original work if the original work does not
"pervade" the derivative work. The suggestion, if
taken seriously (which it has not been), would
inject enormous uncertainty into the law of
copyright and undermine the exclusive right that
section 106(2) gives the owner of the copyright
on the original work. It also rests on a
confusion between the determination of whether a
work is derivative and the determination of who
has the right to make the derivative work.
Defined too broadly, "derivative work" would
confer enormous power on the owners of copyrights
on preexisting works. The Bernstein-Sondheim
musical West Side Story, for example, is based
loosely on Shakespeare’s Romeo and Juliet, which
in turn is based loosely on Ovid’s Pyramus and
Thisbe, so that if "derivative work" were defined
broadly enough (and copyright were perpetual)
West Side Story would infringe Pyramus and Thisbe
unless authorized by Ovid’s heirs. We can thus
imagine the notion of pervasiveness being used to
distinguish a work fairly described as derivative
from works only loosely connected with some
ancestral work claimed to be their original. Cf.
Micro Star v. Formgen Inc., supra, 154 F.3d at
1110. In that sense Prince’s symbol clearly
"pervades" both guitars. If it did not, the
guitars might not be derivative works, but they
would not be derivative works that anyone was
free to make without obtaining Prince’s
permission.
It is apparent from what we have said so far not
only that Pickett could not copyright his guitar,
but that his guitar infringes Prince’s copyright.
(Pickett’s further argument, that Prince’s
copyright has evaporated if, as Judge Shadur
ruled, the counterclaim to enforce it is time-
barred and so Prince’s symbol fell into the
public domain and became fair game for makers of
derivative works, is ridiculous.) The remaining
question, whether the counterclaim was properly
dismissed on the basis of the statute of
limitations, is the subject of Prince’s cross-
appeal. Oddly, there is not the slightest doubt
that the amended counterclaim was filed before
the statute of limitations expired, and this
regardless of whether it related back to the
original, Fed. R. Civ. P. 15(c)(2), as probably
it did not, since it was based on a different
copyright. Cf. 6A Charles Alan Wright, Arthur R.
Miller & Mary Kay Kane, Federal Practice and
Procedure sec. 1497, pp. 70-74 (1990). Although
the amended counterclaim was filed on the last
possible day before expiration, namely the Monday
after the Saturday that was the third anniversary
of the filing of Pickett’s suit, see Fed. R. Civ.
P. 6(a), the adage that a miss is as good as a
mile applies in reverse here: a suit is timely
whether filed the day after the claim accrues or
the very last day before the suit would be time-
barred.
So why was the counterclaim dismissed as
untimely? The three-year period of limitations
began running on July 5, 1994, and the judge
ruled that the counterclaim was untimely because
it had not been filed until July 7, 1997.
Apparently no one, including the judge, noticed
that July 5, 1997, was a Saturday. Prince’s
lawyer finally woke up, and a couple of weeks
after Judge Shadur had ruled filed a motion for
reconsideration which the judge denied on the
ground that a motion for reconsideration is not
an appropriate vehicle for injecting a new legal
theory into a case.
We think that in so ruling the judge abused his
discretion. Unlike the case in which a judgment
is sought to be vacated, to which the principle
enunciated by the judge does apply, e.g., Caisse
Nationale de Credit Agricole v. CBI Industries,
Inc., 90 F.3d 1264, 1269-70 (7th Cir. 1996);
Keene Corp. v. International Fidelity Ins. Co.,
736 F.2d 388, 393 (7th Cir. 1984), although its
application to a computational error having
nothing to do with legal "theory" may be doubted,
see Russell v. Delco Remy Division, 51 F.3d 746,
749 (7th Cir. 1995), a motion to reconsider a
ruling is constrained only by the doctrine of the
law of the case. And that doctrine is highly
flexible, especially when a judge is being asked
to reconsider his own ruling. Avitia v.
Metropolitan Club of Chicago, Inc., 49 F.3d 1219,
1227 (7th Cir. 1995); Prisco v. A & D Carting
Corp., 168 F.3d 593, 607 (2d Cir. 1999). Judge
Shadur’s ruling that the counterclaim was
untimely was interlocutory, and thus not a final
judgment. In fact, it was not a judgment at all.
It was issued in December of 1997, and the final
decision by the district court didn’t come until
June 18 of last year. The ruling was also the
plainest of plain errors, requiring only a glance
at the calendar to discover. The judge was led
into the plain error by the party seeking to
correct it, but that is often the case. Had
Prince’s lawyer discovered the error a few weeks
earlier and brought it to Judge Shadur’s
attention before the judge ruled, undoubtedly the
judge would have held that the counterclaim was
timely.
Although we can understand Judge Shadur’s
annoyance at being led into plain error, a
judge’s refusal to correct a plain error that he
had committed weeks before is not justified by
the doctrine of the law of the case, or anything
else we can think of. Creek v. Village of
Westhaven, 144 F.3d 441, 446 (7th Cir. 1998);
Evans v. City of Chicago, 873 F.2d 1007, 1013-14
(7th Cir. 1989); United States v. Zanghi, 189
F.3d 71, 79-80 (1st Cir. 1999). Were we to uphold
the denial of reconsideration and dismissal of
the counterclaim, we would be penalizing Prince’s
lawyer for having asked Judge Shadur to correct
his own mistake, rather than reserving the issue
for an appeal, and we would thus be discouraging
efforts by litigants to purge errors before the
case comes to us (perhaps it won’t come to us if
the errors are purged). For if Prince had for the
first time on appeal argued that Judge Shadur had
erred in dismissing the counterclaim as untimely,
and if Pickett had responded that Prince had
waived the issue by failing to raise it in the
district court, Prince would have appealed to the
doctrine of plain error to absolve him from the
consequences of the waiver. And limited though
that doctrine is in civil cases, see, e.g., Deppe
v. Tripp, 863 F.2d 1356, 1360-61 (7th Cir. 1988);
Smith v. Kmart Corp., 177 F.3d 19, 28 (1st Cir.
1999), we would have invoked it and reversed the
dismissal of the counterclaim. The result should
not be different merely because, though apprised
of the error, Judge Shadur refused to correct it.
It is conceivable though not argued that
Prince’s failure to discover that July 5, 1997,
was a Saturday (or to realize the significance of
the fact) was harmful to Pickett; but such an
argument would get nowhere, for it was as
irresponsible for Pickett’s lawyer to argue the
untimeliness of a counterclaim that he should
have known was timely as it was for Prince’s
lawyer to fail to refute the argument. As no
effort was made to show that Pickett was harmed
by Prince’s mistake (and it was, to repeat,
Pickett’s mistake as well), let alone so gravely
harmed as to warrant the dismissal of the
counterclaim rather than just an order that
Prince reimburse Pickett for any expense
occasioned by the mistake, we cannot think of any
reason at all why Judge Shadur should have
refused to rescind his erroneous dismissal of the
counterclaim.
The judgment is affirmed insofar as it dismisses
Pickett’s suit but vacated insofar as it
dismisses the counterclaim, and the case is
remanded for further proceedings consistent with
this opinion.
Affirmed in Part,
Vacated in Part,
and Remanded.
Figure 1
Figure 2
Figure 3