The full case caption appears at the
end of this opinion. Posner, Chief Judge. The appeal by FerdinandPickett, plaintiff in the district court,presents us with an issue concerning copyright inderivative works, while the cross-appeal, by thedefendant, presents a procedural issue. Thedefendant, identified only as “Prince” in thecaption of the various pleadings, is a well-knownpopular singer whose name at birth was PrinceRogers Nelson, but who for many years performedunder the name Prince (which is what we’ll callhim) and since 1992 has referred to himself by anunpronounceable symbol reproduced as Figure 1 atthe end of this opinion. (See generally “TheIndependent, Unofficial and Uncensored MagazineExploring the Artist Formerly Known as Prince,”.) The symbol (whichrather strikingly resembles the Egyptianhieroglyph ankh, see Richard H. Wilkinson, Symbol& Magic in Egyptian Art 159, 169 (fig. 128)(1994), but the parties make nothing of this, soneither shall we) is his trademark but it is alsoa copyrighted work of visual art that licenseesof Prince have embodied in various forms,including jewelry, clothing, and musicalinstruments. Although Prince did not register acopyright of the symbol until 1997, the plaintiffconcedes that Prince obtained a valid copyrightin 1992, registration not being a precondition tocopyright protection, 17 U.S.C. sec. 408(a),though it’s a precondition to a suit forcopyright infringement. sec. 411(a); Raquel v.Education Mgmt. Corp., 196 F.3d 171, 176 (3d Cir.1999). Actually the original copyright was notobtained by him, but he is the assignee, and theassignment expressly granted him the right to suefor infringement of the copyright before theassignment. In 1993 the plaintiff made a guitar (Figure 2)in the shape of the Prince symbol; he concedesthat it is a derivative work within the meaningof 17 U.S.C. sec. 101 (“a work based upon one ormore preexisting works, such as a translation,musical arrangement, dramatization,fictionalization, motion picture version, soundrecording, art reproduction, abridgment,condensation, or any other form in which a workmay be recast, transformed, or adapted. A workconsisting of editorial revisions, annotations,elaborations, or other modifications which, as awhole, represent an original work of authorship,is a ‘derivative work’”). The plaintiff claims(truthfully, we assume for purposes of theappeal) to have shown the guitar to Prince.Shortly afterwards Prince appeared in publicplaying a guitar quite similar to the plaintiff’s(Figure 3). The plaintiff brought this suit for copyrightinfringement in 1994, but it languished for yearsin the district court. In January 1997 Princecounterclaimed for infringement of the copyrighton his symbol, arguing (because he had not yetregistered his copyright–indeed it hadn’t evenbeen assigned to him yet) that in 1992 WarnerBrothers had registered a copyright of the symbolin connection with a record of Prince’s music.Prince was mistaken; the copyright was of themusic, not of the symbol, although the symbolappeared on the album cover. In any event Princehad no standing to enforce someone else’scopyright–so that, if only Warner Brothers helda copyright on the Prince symbol, Prince wouldhave no defense against Pickett’s suit forinfringement (or at least would not have thedefense that he successfully asserted in thedistrict court), as well as no basis for acounterclaim. In July 1997, however, on theMonday following the third anniversary ofPickett’s suit (which fell on a Saturday), Princefiled an amended counterclaim for infringement,claiming that it was his own, not WarnerBrothers’, copyright that Pickett’s guitarinfringed; for between January and July Princehad obtained the copyright by assignment and hadregistered it. The district court (Judge Shadur)held that the amended counterclaim, whichsuperseded the original one, did not relate backto the original counterclaim because it did notarise out of the same copyright, and so it wasbarred by the three-year statute of limitationsfor claims of copyright infringement. 17 U.S.C.sec. 507(b). Later the suit was transferred toJudge Pallmeyer, who on Prince’s motion forsummary judgment dismissed Pickett’s claim on theground that he had no right to make a derivativework based on the Prince symbol without Prince’sconsent, which was never sought or granted. 52 F.Supp. 2d 893 (N.D. Ill. 1999). Pickett claims the right to copyright a workderivative from another person’s copyrightwithout that person’s permission and then to suethat person for infringement by the person’s ownderivative work. Pickett’s guitar was aderivative work of the copyrighted Prince symbol,and so was Prince’s guitar. Since Prince had (orso we must assume) access to Pickett’s guitar,and since the two guitars, being derivatives ofthe same underlying work, are, naturally, verysimilar in appearance, Pickett has– if he iscorrect that one can copyright a derivative workwhen the original work is copyrighted by someoneelse who hasn’t authorized the maker of thederivative work to copyright it–a prima faciecase of infringement. Wildlife Express Corp. v.Carol Wright Sales, Inc., 18 F.3d 502, 508 (7thCir. 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 defendanthad access to the plaintiff’s work and that thedefendant’s work is similar to the plaintiff’scan form the basis for an inference that thedefendant copied her work from the plaintiff’swork”). Pickett must, he concedes, show that hisderivative work has enough originality to entitlehim to a copyright, and also that the copyrightis limited to the features that the derivativework adds to the original. But he insists thatwith these limitations his copyright is valid. We doubt that he could show the requisiteincremental originality, Lee v. A.R.T. Co., 125F.3d 580 (7th Cir. 1997); Gracen v. BradfordExchange, 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 at582, we noted a conflict in the authorities overwhether any originality is required for aderivative work. We had explained in Gracen v.Bradford Exchange, supra, 698 F.2d at 304, andwe’ll note later in this opinion as well, thatsuch a requirement is essential in order to headoff situations in which it is impossible toadjudicate a dispute between owners of twoderivative works because the works are identicalboth to the original and to each other. The NinthCircuit, the only court cited in Lee asdisagreeing with us, had, in fact, swung aroundto our view shortly before our decision camedown. 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 thePrince symbol, the difference in appearance maywell be due to nothing more than the functionaldifference between a two-dimensional symbol and aguitar in the shape of that symbol. In that eventeven Prince could not have copyrighted the guitarversion of the symbol. 17 U.S.C. sec. 101;American Dental Ass’n v. Delta Dental PlansAss’n, 126 F.3d 977, 980 (7th Cir. 1997);Entertainment Research Group, Inc. v. GenesisCreative 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 guitarwon’t work without strings, frets, etc. arrangedin a pattern dictated by musical considerations,and to the extent that the pattern is what it isbecause otherwise the guitar won’t sound right,it is not copyrightable as a work of visual art.Maybe, though, the juxtaposition of the symboland the guitar is enough to confer on theensemble sufficient originality as a work ofvisual art to entitle the designer to copyrightit. 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). Manyworks of art rely for their effect on thejuxtaposition of familiar elements ordinarilyheld separate (like a mustache painted on aphotograph of the Mona Lisa); indeed, all worksof art are ultimately combinations of familiar,uncopyrightable items. We need not pursue the issue of originality ofderivative works. The Copyright Act grants theowner of a copyright the exclusive right toprepare derivative works based upon thecopyrighted 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 ConsumerElectronics Corp., 672 F.2d 607, 618 n. 12 (7thCir. 1982); Micro Star v. Formgen Inc., 154 F.3d1107, 1110 (9th Cir. 1998). So Pickett could notmake a derivative work based on the Prince symbolwithout Prince’s authorization even if Pickett’sguitar had a smidgeon of originality. This is asensible result. A derivative work is, bydefinition, bound to be very similar to theoriginal. Concentrating the right to makederivative works in the owner of the originalwork prevents what might otherwise be an endlessseries of infringement suits posing insolubledifficulties of proof. Consider two translationsinto English of a book originally published inFrench. The two translations are bound to be verysimilar and it will be difficult to establishwhether they are very similar because one is acopy of the other or because both are copies ofthe same foreign-language original. WhetherPrince’s guitar is a copy of his copyrightedsymbol or a copy of Pickett’s guitar is likewisenot a question that the methods of litigation canreadily answer with confidence. If anyone canmake derivative works based on the Prince symbol,we could have hundreds of Picketts, each charginginfringement by the others. Pickett relies for his implausible theoryprimarily on section 103(a) of the Copyright Act,which provides that while copyright can beobtained in derivative works, “protection for awork employing preexisting material in whichcopyright subsists does not extend to any part ofthe work in which such material has been usedunlawfully.” Pickett reads this as authorizing aperson other than the owner of the original workto make a derivative work, merely forbidding himto infringe the original. It is very difficult tosee how a derivative work not made by the ownerof the original work could fail to infringe it,given the definition of derivative works. (Thereis no infringement by the owner of the copyrightof the original work, since section 106(2)entitles him to make derivative works based onhis copyrighted work. Cortner v. Israel, 732 F.2d267, 271 (2d Cir. 1984).) Picket doesn’t denythis; having warded off (he thinks) Prince’scounterclaim for copyright infringement, he isunafraid to acknowledge that he is an infringerand to content himself with arguing that hiscopyright extends only to the original elementsof the infringing work. But we do not readsection 103(a) as qualifying the exclusive rightof the owner of the copyright of the originalwork to make derivative works based on that work,the right conferred by section 106(2). Section103(a) means only, at least so far as bears onthis case, that the right to make a derivativework does not authorize the maker to incorporateinto it material that infringes someone else’scopyright. Cortner v. Israel, supra, 732 F.2d at272; 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, apicture of Prince, and Prince used that picturein his own guitar without Pickett’s consent,Pickett would have a claim of infringement. Butthe only copyright that Pickett claims Princeinfringed is a copyright that Pickett had noright to obtain, namely a copyright on aderivative work based on Prince’s copyrightedsymbol. Pickett relied in the district court on a dictumin Eden Toys, Inc. v. Florelee Undergarment Co.,697 F.2d 27, 34 n. 6 (2d Cir. 1982), that astranger can make a derivative work without thepermission of the owner of the copyright of theoriginal work if the original work does not”pervade” the derivative work. The suggestion, iftaken seriously (which it has not been), wouldinject enormous uncertainty into the law ofcopyright and undermine the exclusive right thatsection 106(2) gives the owner of the copyrighton the original work. It also rests on aconfusion between the determination of whether awork is derivative and the determination of whohas the right to make the derivative work.Defined too broadly, “derivative work” wouldconfer enormous power on the owners of copyrightson preexisting works. The Bernstein-Sondheimmusical West Side Story, for example, is basedloosely on Shakespeare’s Romeo and Juliet, whichin turn is based loosely on Ovid’s Pyramus andThisbe, so that if “derivative work” were definedbroadly enough (and copyright were perpetual)West Side Story would infringe Pyramus and Thisbeunless authorized by Ovid’s heirs. We can thusimagine the notion of pervasiveness being used todistinguish a work fairly described as derivativefrom works only loosely connected with someancestral work claimed to be their original. Cf.Micro Star v. Formgen Inc., supra, 154 F.3d at1110. In that sense Prince’s symbol clearly”pervades” both guitars. If it did not, theguitars might not be derivative works, but theywould not be derivative works that anyone wasfree to make without obtaining Prince’spermission. It is apparent from what we have said so far notonly that Pickett could not copyright his guitar,but that his guitar infringes Prince’s copyright.(Pickett’s further argument, that Prince’scopyright has evaporated if, as Judge Shadurruled, the counterclaim to enforce it is time-barred and so Prince’s symbol fell into thepublic domain and became fair game for makers ofderivative works, is ridiculous.) The remainingquestion, whether the counterclaim was properlydismissed on the basis of the statute oflimitations, is the subject of Prince’s cross-appeal. Oddly, there is not the slightest doubtthat the amended counterclaim was filed beforethe statute of limitations expired, and thisregardless of whether it related back to theoriginal, Fed. R. Civ. P. 15(c)(2), as probablyit did not, since it was based on a differentcopyright. Cf. 6A Charles Alan Wright, Arthur R.Miller & Mary Kay Kane, Federal Practice andProcedure sec. 1497, pp. 70-74 (1990). Althoughthe amended counterclaim was filed on the lastpossible day before expiration, namely the Mondayafter the Saturday that was the third anniversaryof the filing of Pickett’s suit, see Fed. R. Civ.P. 6(a), the adage that a miss is as good as amile applies in reverse here: a suit is timelywhether filed the day after the claim accrues orthe very last day before the suit would be time-barred. So why was the counterclaim dismissed asuntimely? The three-year period of limitationsbegan running on July 5, 1994, and the judgeruled that the counterclaim was untimely becauseit had not been filed until July 7, 1997.Apparently no one, including the judge, noticedthat July 5, 1997, was a Saturday. Prince’slawyer finally woke up, and a couple of weeksafter Judge Shadur had ruled filed a motion forreconsideration which the judge denied on theground that a motion for reconsideration is notan appropriate vehicle for injecting a new legaltheory into a case. We think that in so ruling the judge abused hisdiscretion. Unlike the case in which a judgmentis sought to be vacated, to which the principleenunciated by the judge does apply, e.g., CaisseNationale 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 itsapplication to a computational error havingnothing 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 aruling is constrained only by the doctrine of thelaw of the case. And that doctrine is highlyflexible, especially when a judge is being askedto reconsider his own ruling. Avitia v.Metropolitan Club of Chicago, Inc., 49 F.3d 1219,1227 (7th Cir. 1995); Prisco v. A & D CartingCorp., 168 F.3d 593, 607 (2d Cir. 1999). JudgeShadur’s ruling that the counterclaim wasuntimely was interlocutory, and thus not a finaljudgment. In fact, it was not a judgment at all.It was issued in December of 1997, and the finaldecision by the district court didn’t come untilJune 18 of last year. The ruling was also theplainest of plain errors, requiring only a glanceat the calendar to discover. The judge was ledinto the plain error by the party seeking tocorrect it, but that is often the case. HadPrince’s lawyer discovered the error a few weeksearlier and brought it to Judge Shadur’sattention before the judge ruled, undoubtedly thejudge would have held that the counterclaim wastimely. Although we can understand Judge Shadur’sannoyance at being led into plain error, ajudge’s refusal to correct a plain error that hehad committed weeks before is not justified bythe doctrine of the law of the case, or anythingelse we can think of. Creek v. Village ofWesthaven, 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, 189F.3d 71, 79-80 (1st Cir. 1999). Were we to upholdthe denial of reconsideration and dismissal ofthe counterclaim, we would be penalizing Prince’slawyer for having asked Judge Shadur to correcthis own mistake, rather than reserving the issuefor an appeal, and we would thus be discouragingefforts by litigants to purge errors before thecase comes to us (perhaps it won’t come to us ifthe errors are purged). For if Prince had for thefirst time on appeal argued that Judge Shadur haderred in dismissing the counterclaim as untimely,and if Pickett had responded that Prince hadwaived the issue by failing to raise it in thedistrict court, Prince would have appealed to thedoctrine of plain error to absolve him from theconsequences of the waiver. And limited thoughthat doctrine is in civil cases, see, e.g., Deppev. 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 thedismissal of the counterclaim. The result shouldnot be different merely because, though apprisedof the error, Judge Shadur refused to correct it. It is conceivable though not argued thatPrince’s failure to discover that July 5, 1997,was a Saturday (or to realize the significance ofthe fact) was harmful to Pickett; but such anargument would get nowhere, for it was asirresponsible for Pickett’s lawyer to argue theuntimeliness of a counterclaim that he shouldhave known was timely as it was for Prince’slawyer to fail to refute the argument. As noeffort was made to show that Pickett was harmedby Prince’s mistake (and it was, to repeat,Pickett’s mistake as well), let alone so gravelyharmed as to warrant the dismissal of thecounterclaim rather than just an order thatPrince reimburse Pickett for any expenseoccasioned by the mistake, we cannot think of anyreason at all why Judge Shadur should haverefused to rescind his erroneous dismissal of thecounterclaim. The judgment is affirmed insofar as it dismissesPickett’s suit but vacated insofar as itdismisses the counterclaim, and the case isremanded for further proceedings consistent withthis opinion. Affirmed in Part, Vacated in Part, and Remanded. Figure 1 Figure 2 Figure 3
Ferdinand Pickett v. ‘The Artist Formerly Known as Prince’ In the United States Court of Appeals for the Seventh Circuit Ferdinand Pickett, Plaintiff-Appellant, Cross-Appellee, v. Prince, Defendant-Appellee, Cross-Appellant. Nos. 99-2770 and 99-2843 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.
