(1) Preemption

When a derivative work is created the copyright ownership subsists in a “preexisting” author and a “contributing” author. See 17 USC 103(b). The Copyright Act does not speak to the distribution of derivative works as a whole. The distribution of a derivative work requires the authorization of both the preexisting author and the contributing author.

Public domain rights are “in rem” or rights “against the world”. Exclusive rights granted under the Copyright Act are “in rem” rights controlled by copyright law. Rights created by contract are rights “in personam” or personal rights between the contracting parties are controlled by contract law. 17 USC sec. 301(a) prevents any new copyright from being established by contract that regulates rights in the scope of the public domain. See ProCD v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996):

“A copyright is a right against the world. Contracts, by

contrast, generally affect only their parties; strangers may do

as they please, so contracts do not create “exclusive rights?.

. . .

Like the Supreme Court in Wolens, we think it prudent to refrain

from adopting a rule that anything with the label “contract” is

necessarily outside the preemption clause: the variations and

possibilities are too numerous to foresee. . . But whether a

particular license is generous or restrictive, a simple two-party contract is not “equivalent to any of the exclusive rights within the general scope of copyright” and therefore may be enforced.”

(2) Misuse

A copyright owner cannot leverage his copyright with licensing restrictions that have the effect of enlarging the scope of his copyright power beyond the limits imposed by Congress. Forcing a

a modifying author to relinquish his exclusive rights in the scope of the general public was never contemplated by the Copyright Act and is contrary to 17 USC 103(b). Under the doctrine of “misuse of copyright” an author who attempts to leverage a copyright in this manner loses the right to enforce his copyright in that context. See Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970 (4th Cir. 1990).

(3) Impossibility

When a license condition is impossible to meet it is interpreted against the drafter of the license. A term in a contract that requires an underlying author to license his rights to a non-party (i.e. the general public) is not possible. A party to a contract cannot bind a non-party to the provisions of that contract. See EEOC V. WAFFLE HOUSE, INC. (99-1823) 534 U.S. 279 (2002) (”It goes without saying that a contract cannot bind a nonparty”).