FOR PUBLICATION
`
`UNITED STATES COURT OF APPEALS
`FOR THE NINTH CIRCUIT
`
`
`ABS ENTERTAINMENT, INC., an
`Arkansas corporation; BARNABY
`RECORDS, INC., a New York
`corporation; BRUNSWICK RECORD
`CORPORATION, a New York
`corporation; MALACO INC., a
`Mississippi corporation, each
`individually and on behalf of all
`others similarly situated.,
`Plaintiffs-Appellants,
`
` No. 16-55917
`
`D.C. No.
`2:15-cv-06257-
`PA-AGR
`
`
`ORDER AND
`AMENDED
`OPINION
`
`
`
`v.
`
`
`CBS CORPORATION, a Delaware
`corporation; CBS RADIO, INC., a
`Delaware corporation; DOES, 1
`through 10,
`
`Defendants-Appellees.
`
`
`
`
`Appeal from the United States District Court
`for the Central District of California
`Percy Anderson, District Judge, Presiding
`
`Argued and Submitted November 9, 2017
`Pasadena, California
`
`Filed August 20, 2018
`Amended October 31, 2018
`
`

`

`2
`
`
`ABS ENTERTAINMENT V. CBS CORPORATION
`
`Before: Richard Linn,* Marsha S. Berzon,
`and Paul J. Watford, Circuit Judges.
`
`Order;
`Opinion by Judge Linn
`
`
`SUMMARY**
`
`Copyright
`
`
`
`
`The panel reversed the district court’s grant of summary
`
`judgment in favor of the defendants on claims of violation of
`state law copyrights possessed by the plaintiffs in sound
`recordings originally fixed before 1972.
`
` Under the Sound Recording Act, sound recordings fixed
`after February 15, 1972, are subject to a compulsory license
`regime for performance via digital transmission and are
`excused from infringement for performance via terrestrial
`radio. Congress reserved governance of sound recordings
`fixed before 1972 to state statutory and common law and
`excluded such sound recordings from federal copyright
`protection until 2067.
`
`The plaintiffs owned sound recordings embodying
`
`musical performances initially fixed in analog format prior
`
`
`* The Honorable Richard Linn, United States Circuit Judge for the
`U.S. Court of Appeals for the Federal Circuit, sitting by designation.
`
`** This summary constitutes no part of the opinion of the court. It
`has been prepared by court staff for the convenience of the reader.
`
`

`

`3
`
`ABS ENTERTAINMENT V. CBS CORPORATION
`
`
`
`to February 15, 1972. They remastered these pre-1972
`sound recordings onto digital formats.
`
`The panel held that the district court erred in finding a
`
`lack of a genuine issue of material fact about the copyright
`eligibility of remastered sound recordings distributed by the
`defendants. The panel concluded that a derivative sound
`recording distinctly identifiable solely by the changes in
`medium generally does not exhibit the minimum level of
`originality to be copyrightable.
`
`The panel held that the district court erred in concluding
`
`that plaintiffs’ state copyright interest in the pre-1972 sound
`recordings embodied in the remastered sound recordings
`was preempted by federal copyright law. The panel held that
`the creation of an authorized digital remastering of pre-1972
`analog sound recordings that qualify as copyrightable
`derivative works does not bring the remastered sound
`recordings exclusively under the ambit of federal law.
`
`The panel held that the district court abused its discretion
`
`by excluding the testimony of plaintiffs’ expert, excluding
`certain reports as evidence of defendants’ performance of
`plaintiffs’ sound recordings in California, and granting
`partial summary judgment of no infringement with respect
`to the samples contained in those reports.
`
`The panel concluded that the district court’s strict
`
`application of its local rules with respect to the timeliness of
`plaintiffs’ motion for class action certification was
`inconsistent with the Federal Rules of Civil Procedure and
`was thus an abuse of discretion.
`
`
`

`

`ABS ENTERTAINMENT V. CBS CORPORATION
`
`4
`
`The panel reversed the grant of summary judgment and
`
`the striking of class certification and remanded for further
`proceedings.
`
`
`
`COUNSEL
`
`
`Robert Edward Allen (argued), Alan P. Block, Roderick G.
`Dorman, and Lawrence M. Hadley, McKool Smith
`Hennigan P.C., Los Angeles, California; Kathleen E.
`Boychuck, Andrew Szot, and Marvin A. Miller, Miller Law
`LLC, Chicago, Illinois; for Plaintiffs-Appellants.
`
`Robert M. Schwartz (argued), Amit Q. Gressel, Andrew J.
`Strabone, Victor Jih, and Moon Hee Lee, Irell & Manella
`LLP, Los Angeles, California, for Defendants-Appellees.
`
`Richard S. Mandel, Cown Liebowitz & Latman P.C., New
`York, New York; George M. Borowsky, Recording Industry
`Association of America Inc., Washington, D.C.; for Amicus
`Curiae Recording Industry Association of America Inc.
`
`Morgan E. Pietz, Gerard Fox Law P.C., Los Angeles,
`California; Katrina Novak, Lowe & Associates P.C., Los
`Angeles, California; for Amicus Curiae California Society
`of Entertainment Lawyers.
`
`Steven G. Sklaver, Kalpana Srinivasan, and Stephen E.
`Morrissey, Susman Godfrey LLP, Los Angeles, California;
`Daniel B. Lifschitz, Maryann R. Marzano, and Henry
`Gradstein, Gradstein & Marzano P.C., Los Angeles,
`California; for Amicus Curiae Flo & Eddie Inc.
`
`Andrew M. Gass and Elizabeth H. Yandell, Latham &
`Watkins LLP, San Francisco, California; Roman Martinez,
`
`

`

`ABS ENTERTAINMENT V. CBS CORPORATION
`
`5
`
`
`
`Latham & Watkins, Washington, D.C.; Sarang v. Damle,
`Latham & Watkins LLP, Washington, D.C.; for Amici
`Curiae iHeartMedia Inc. and National Association of
`Broadcasters.
`
`Stephen B. Kinnard, Paul Hastings LLP, Washington, D.C.;
`Emmy Parsons, Garrett Levin, and Rick Kaplan, National
`Association of Broadcasters, Washington, D.C.; for Amicus
`Curiae National Association of Broadcasters.
`
`
`
`ORDER
`
`The Opinion filed August 20, 2018, and reported at
`900 F. 3d 1113, is hereby amended. The amended opinion
`will be filed concurrently with this order.
`
`The panel has unanimously voted to deny Appellees’
`petition for panel rehearing. Judge Berzon and Judge
`Watford have voted to deny the petition for rehearing en
`banc. Judge Linn recommends denial of the petition for
`rehearing en banc. The full court has been advised of the
`petition for rehearing en banc, and no judge has requested a
`vote on whether to rehear the matter en banc. Fed. R. App.
`P. 35. The petition for panel rehearing and the petition for
`rehearing en banc are DENIED.
`
`Future petitions for rehearing or rehearing en banc will
`not be entertained in this case.
`
`
`
`
`
`
`
`

`

`6
`
`
`ABS ENTERTAINMENT V. CBS CORPORATION
`
`OPINION
`
`LINN, Circuit Judge:
`
`Appellants ABS Entertainment, Inc., Barnaby Records,
`Inc., Brunswick Record Corp. and Malaco,
`Inc.
`(collectively, “ABS”) appeal from the grant of summary
`judgment by the Central District of California in favor of
`CBS Corporation and CBS Radio, Inc. (collectively,
`“CBS”), holding that CBS did not violate any state law
`copyrights possessed by ABS in sound recordings originally
`fixed before 1972. ABS also appeals from the district
`court’s striking of its class action certification, and certain
`evidentiary rulings.
`
`We conclude that the district court erred in finding a lack
`of a genuine issue of material fact about the copyright
`eligibility of remastered sound recordings distributed by
`CBS. We also conclude that the district court abused its
`discretion by excluding the testimony of ABS’s expert Paul
`Geluso, excluding the Triton Reports as evidence of CBS’s
`performance of ABS’s sound recordings in California, and
`granting partial summary judgment of no infringement with
`respect to the samples contained in those reports. Finally,
`we conclude that the district court’s strict application of its
`local rules with respect to the timeliness of ABS’s motion
`for class action certification was inconsistent with the
`Federal Rules of Civil Procedure and was thus an abuse of
`discretion.
`
`For the reasons set forth below, we reverse the grant of
`summary judgment and the striking of class certification,
`and remand for further proceedings consistent with this
`opinion.
`
`

`

`
`
`
`ABS ENTERTAINMENT V. CBS CORPORATION
`
`7
`
`I
`
`In 1971, Congress passed the Sound Recording Act.
`This Act for the first time created federal copyright
`protection for certain sound recordings. Under that law,
`sound recordings fixed after February 15, 1972 were made
`subject to a compulsory license regime for performance via
`digital transmission and were excused from infringement for
`performance via terrestrial radio. 17 U.S.C. §§ 114, 301(c).
`
`ABS owns sound recordings embodying musical
`performances initially fixed in analog format prior to
`February 15, 1972 (“pre-1972 sound recordings”).1 As
`digital formats replaced analog ones, ABS hired remastering
`engineers to remaster the pre-1972 sound recordings onto
`digital formats (“remastered sound recordings”). In doing
`so, ABS determined to optimize the recordings for the new
`digital format using standard, technical processes to create
`accurate reproductions of its original pre-1972 analog
`recordings and did not set out to create any new and different
`sound recordings. ABS contends that this resulted in a
`change in quality but not a substantial difference in the
`identity or essential character of the sound recordings
`themselves. ABS argues that injecting a substantial
`difference in the digital remasters from their analog originals
`would have diminished the value of the remastered sound
`recordings, contrary to ABS’s objective in seeking to fully
`exploit its intellectual property in those sound recordings.
`
`
`1 For purposes of this appeal, the sound recordings at issue are
`defined by a series of 174 “representative samples” by artists including
`Al Green, the Everly Brothers, Jackie Wilson, King Floyd, and other
`artists.
`
`

`

`ABS ENTERTAINMENT V. CBS CORPORATION
`
`8
`
`
`ABS did not enter copies of the contracts between ABS
`and the remastering engineers into the record, but both
`parties agree that ABS authorized the creation of the
`remastered sound recordings at issue here.2 There is no
`dispute that the remastered sound recordings contain only
`the sounds (i.e. the vocals and instruments) originally
`performed and fixed in the studio before 1972 and contained
`in the pre-1972 sound recordings, and that no sounds were
`removed or rearranged from the original fixed version. ABS
`agrees that the remastered sound recordings are not identical
`to the pre-1972 sound recordings, but contends that any
`differences were
`trivial and of no copyrightable
`consequence.
`
`CBS delivers music content through terrestrial radio and
`digital streaming, including 18 music stations in California
`that are
`themselves streamed over
`the
`internet
`in
`“simulcast.” CBS’s Radio 2.0 system logs “all sound
`recordings it digitally transmits over the Internet,” and a
`third party, Triton, tracks CBS’s simulcasts. CBS does not
`use any analog sound recordings; it exclusively relies on
`digitally mastered or remastered sound recordings for the
`content it delivers to its customers. For all the broadcast
`content, CBS paid a royalty to the owner of the underlying
`musical composition. For the digitally streamed content,
`CBS paid the compulsory license fee under the Sound
`Recording Act to Sound Exchange. For content delivered by
`terrestrial radio, CBS does not pay a license fee pursuant, as
`
`
`2 The parties vigorously dispute whether the authorization to create
`the remastered sound recordings also authorizes the creation of
`derivative works, and which party bears the burden of proving such
`authorization (or lack thereof).
`
`

`

`ABS ENTERTAINMENT V. CBS CORPORATION
`
`
`
`permitted, to the Sound Recording Act’s safe haven for
`terrestrial radio performance. See 17 U.S.C. § 114(d).
`
`9
`
`II
`
`On August 17, 2015, ABS filed a putative class action
`against CBS in the Central District of California, alleging
`that CBS’s transmission and distribution of the remastered
`sound recordings violated California state law—specifically,
`California Civil Code § 980(a)(2) (protecting the property
`rights of an author of a sound recording fixed prior to
`February 15, 1972); misappropriation and conversion; and
`unfair competition, under California Business and
`Professions Code § 17200.
`
`On November 17, 2015, the district court denied a joint
`stipulation to extend the 90-day deadline for filing a motion
`for class action certification to allow for class certification
`discovery, explaining that there was “no show of cause, let
`alone good cause.” On November 19, 2015, the expiration
`date of the local rule’s 90-day deadline for filing of class
`certification, the court denied without explanation another
`joint stipulation to extend the filing date. That same day,
`ABS timely filed a motion for class certification. On
`November 25, 2015, the district court struck the motion for
`class certification because it set a hearing date for the motion
`beyond the 35-day period after service of process as required
`by the court’s standing orders and it did not include a
`statement pursuant to Local Rule 7-3 that a “conference of
`counsel” took place prior to the filing of the motion. The
`court then struck ABS’s class allegations as untimely filed
`under Local Rule 23-3.
`
`CBS thereafter filed a motion for summary judgment,
`arguing that there was no genuine issue of material fact that
`the remastered sound recordings were authorized original
`
`

`

`ABS ENTERTAINMENT V. CBS CORPORATION
`
`10
`
`derivative works, subject only to federal copyright law. In
`support of its motion, CBS submitted declarations from
`music engineers, including from Durand R. Begault,
`attesting that the remastering process involved originality
`and aesthetic judgment. In response, ABS submitted expert
`declarations of its own, including from Paul Geluso, who
`testified that the pre-1972 and remastered recordings
`“embodied” the same performance based on waveform,
`spectral, and critical listening analysis.
`
`The district court decided two important evidentiary
`issues and granted summary judgment to CBS. The district
`court excluded Geluso’s testimony under Federal Rule of
`Evidence 702 and Daubert v. Merrell Dow Pharms., Inc.,
`509 U.S. 579, 589–90 (1993) as “unscientific” and
`“unnecessary to aid a fact finder capable of listening to the
`sound recordings on his or her own,” and, “[a]lternatively”
`because Geluso’s testimony was “irrelevant.” The court
`reasoned that Geluso limited his forensic analysis to only the
`first five seconds of each sound recording, which was
`“clearly inadequate to rule out the possibility that non-trivial
`differences exist between the [pre-1972 and remastered
`sound recordings].” The court also rejected Geluso’s
`reliance on “critical listening” as undefined and unscientific,
`and objected to Geluso’s failure to include in his report the
`results of his phase inversion testing, which the court
`categorized as “adverse to Plaintiffs’ position.”
`
`Considering only Begault’s expert testimony, the district
`court then held that there was no genuine issue of material
`fact that the remastering created original derivative works
`protected by federal copyright law. The district court
`explained that “during the remastering process, at least some
`perceptible changes were made to Plaintiff’s Pre-1972
`Sound Recordings,” and that these changes were not merely
`
`

`

`11
`
`ABS ENTERTAINMENT V. CBS CORPORATION
`
`
`
`“mechanical” or “trivial” changes, but rather “reflect
`multiple kinds of creative authorship, such as adjustments of
`equalization, sound editing, and channel assignment.” The
`court thus concluded that as to the 57 works reviewed by
`both parties’ experts, the remastered sound recordings were
`entitled to federal copyright protection as original derivative
`works.
`
`Next, the district court concluded that ABS authorized
`the creation of the remastered sound recordings, because
`ABS had failed to meet its burden to show that its
`authorization to create the remastered sound recordings did
`not extend to the creation of a derivative work, and because,
`in any event, “the right to claim copyright in a non-infringing
`derivative work arises by operation of law, not through
`authority from the copyright owner of the underlying work.”
`
`The district court also concluded that, because the
`remastered sound recordings, created after 1972, were
`original and authorized, the remastered sound recordings
`were exclusively governed by federal copyright law.
`Therefore, the district court held, CBS had the right to
`perform the remastered sound recordings by complying with
`the statutory compulsory license obligations and taking
`advantage of the terrestrial radio performance safe harbor
`under 17 U.S.C. § 114. The district court assumed that
`because the right to perform the remastered sound recordings
`had been secured, CBS’s performance of the remastered
`sound recordings could not infringe the pre-1972 sound
`recordings.
`
`The district court also held, in the alternative, that CBS
`was entitled
`to partial summary
`judgment of non-
`infringement with respect to 126 of the 174 representative
`remastered sound recordings because ABS failed to provide
`evidence of CBS’s performance of those sound recordings.
`
`

`

`ABS ENTERTAINMENT V. CBS CORPORATION
`
`12
`
`The evidence presented with respect to the 174 samples
`breaks down as follows. Sixty samples were contained in
`CBS’s internal digital audio library, Radio 2.0, which tracks
`broadcast or transmission via CBS’s internet-only radio
`stations. The parties agree that for 48 of these, ABS
`presented evidence of CBS’s broadcast or transmission of
`sound recordings embodying the same performances as
`ABS’s pre-1972 sound recordings. The parties also agree
`that nine sound recordings were not infringing because
`CBS’s records show that it broadcast versions based on
`different performances than the pre-1972 sound recordings.
`Three of these sound recordings were not reviewed by the
`parties’ experts. An additional 40 samples were contained
`exclusively in the Triton Reports, which are created by a
`third-party company to track “simulcasts”—live internet
`streams—of CBS’s radio broadcasts across the United
`States. The parties do not discuss on appeal the evidence
`available with respect to the remaining 74 sound recordings.
`
`The district court concluded that the Triton Reports were
`hearsay and did not fall within the business records
`exception because “Plaintiffs have failed to establish any one
`of the requirements necessary for them to be admitted under
`the business records exceptions.” The district court thus
`concluded that ABS had failed to raise a genuine issue of
`material fact as to CBS’s transmission or broadcast in
`California of all but the 48 samples both parties agree CBS
`transmitted.
`
`ABS appealed each of the adverse rulings.
`
`III
`
`We review the district court’s grant of summary
`judgment de novo, asking whether the moving party has met
`its burden to prove the absence of genuine issues of material
`
`

`

`13
`
`ABS ENTERTAINMENT V. CBS CORPORATION
`
`
`
`fact. U.S. Auto Parts Net., Inc. v. Parts Geek, LLC, 692 F.3d
`1009, 1014 (9th Cir. 2012). A genuine issue of material fact
`exists if, drawing all inferences in favor of the non-moving
`party, a reasonable jury could find in favor of the non-
`moving party. Id. Whether a work is protected by copyright
`law is a mixed question of law and fact, which we review de
`novo. Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1073
`(9th Cir. 2000). We review the district court’s evidentiary
`rulings for an abuse of discretion. Fonseca v. Sysco Food
`Servs. Of Ariz., Inc., 374 F.3d 840, 845 (9th Cir. 2004).
`
`IV
`
`We begin with the district court’s determination that
`“there is no genuine dispute of material fact that CBS
`performed a post-1972 version of Plaintiffs’ pre-1972 Sound
`Recordings which
`contained
`federally-copyrightable
`original expression added during the remastering process.”
`
`A
`
`The constitutional purpose of copyright law is “to
`promote the Progress of Science and the useful Arts” by
`securing to “authors the right to their original expression, but
`encourage[ing] others to build freely upon the ideas and
`information conveyed by a work.” Feist Pubs., Inc. v. Rural
`Tel. Serv. Co., 499 U.S. 340, 349–50 (1991). “The sine qua
`non of copyright is originality.” Id. at 345. “Original, as the
`term is used in copyright, means only that the work was
`independently created by the author (as opposed to copied
`from other works), and that it possesses at least some
`minimal degree of creativity.” Id. A product of independent
`creation is distinguished from a copy in that it contains
`something which “owes its origin” to the independent
`creator. Burrow-Giles Lithographic Co. v. Sarony, 111 U.S.
`53, 58 (1884). A copy, on the other hand, is not a separate
`
`

`

`ABS ENTERTAINMENT V. CBS CORPORATION
`
`14
`
`work, but a mere representation or duplication of a prior
`creative expression. 3
`
`A “derivative work” is defined in the Copyright Act as a
`work “based upon one or more preexisting works” that
`“recast[s], transform[s], or adapt[s]” a preexisting work and
`“consist[s] of editorial revisions, annotations, elaborations,
`or other modifications which, as a whole, represent an
`original work of authorship.” 17 U.S.C. § 101. A derivative
`work is copyrightable when it meets two criteria: (1) “the
`original aspects of a derivative work must be more than
`trivial,” and (2) “the original aspects of a derivative work
`must reflect the degree to which it relies on preexisting
`material and must not in any way affect the scope of any
`copyright protection in that preexisting material.” U.S. Auto
`Parts, 692 F.3d at 1016 (citing Durham Indus. v. Tomy
`Corp., 630 F.2d 905, 909 (2d Cir. 1980)). This is known as
`the Durham test. Both prongs arise out of Copyright’s basic
`focus on originality. The first prong asks “whether the
`derivative work is original to the author and non-trivial” and
`the second prong ensures that the derivative work author
`does not hinder the original copyright owner’s ability to
`exercise all of its rights. Id. at 1017.
`
`
`3 The Copyright Act defines “Copies” as “material objects, other
`than phonorecords, in which a work is fixed by any method now known
`or later developed, and from which the work can be perceived,
`reproduced, or otherwise communicated, either directly or with the aid
`of a machine or device. The term ‘copies’ includes the material object,
`other than a phonorecord, in which the work is first fixed.” 17 U.S.C.
`§ 101. “Phonorecords” are “material objects in which sounds, other than
`those accompanying a motion picture or other audiovisual work, are
`fixed by any method now known or later developed, and from which the
`sounds can be perceived, reproduced, or otherwise communicated, either
`directly or with the aid of a machine or device.” Id.
`
`

`

`ABS ENTERTAINMENT V. CBS CORPORATION
`
`15
`
`
`
`
`Because derivative works do not start from scratch,
`courts have endeavored
`to determine
`the kinds of
`contributions in the derivative work that qualify as original.
`In most circumstances, derivative works contain obvious
`creative contributions and so are easily recognizable as
`distinct from the underlying work. The casting, lighting,
`cinematography, props, editing, acting, and directing
`required to craft a movie from a screenplay, for example,
`easily render the movie distinct from the screenplay.
`Likewise, the authors of most sound recordings that use a
`sample of another sound recording to create distinct
`derivative works do so by adding new vocals, instruments,
`and edits to the underlying sample. Where the alleged
`derivative work, however, is intended as, and is in fact, a
`direct representation of the original work, the contributions
`of the derivative work author are harder to identify.
`
`This court applied the two-part Durham test in
`Entertainment Research Group, Inc. v. Genesis Creative
`Group, Inc., 122 F.3d 1211 (9th Cir. 1997). In that case,
`Entertainment Research Group (“ERG”) made
`three-
`dimensional inflatable costumes based on copyrighted
`characters like “Toucan Sam” and “Cap’n Crunch.” Id. at
`1217–18. In relevant part, the court, in applying the
`originality prong, concluded that the costume-maker’s
`contributions—including the change in format from 2D to
`3D; changes in the proportion of textures, facial features and
`facial expressions; and the changes attendant to the
`functional addition of movement—were insufficient to
`render the costumes copyright eligible as derivative works.
`Id. at 1223.
`
`The court first discounted the changes occasioned by
`technical, functional, and utilitarian concerns, such as the
`differences in proportion (necessitated by the requirement
`
`

`

`ABS ENTERTAINMENT V. CBS CORPORATION
`
`16
`
`that a human body must fit within the costume) and texture
`(necessitated by the material choice), because copyright in a
`sculptural work is limited to its form and cannot extend to its
`mechanical or utilitarian aspects under 17 U.S.C. § 101. Id.
`at 1221. The remaining changes in the facial expressions
`were also deemed insufficient to support a derivative work
`copyright, because “no reasonable trier of fact would see
`anything but a direct replica of the underlying characters.”
`Id. at 1224. “Viewing the three-dimensional costumes and
`the two-dimensional drawings upon which they are based, it
`is immediately apparent that the costumes are not exact
`replicas of the two-dimensional drawings.” Id. at 1223.
`These
`identifiable changes “themselves
`reflect[] no
`independent creation, no distinguishable variation from
`preexisting works, nothing recognizably the author’s own
`contribution that sets [ERG’s costumes] apart from the
`prototypical [characters]” the costumes represented. Id. at
`1223 (quoting Durham, 630 F.2d at 910). In other words,
`the costumes did not constitute new works, despite the
`independent decision-making involved in their creation. Id.
`at 1224 (holding that the different facial expressions,
`proportions, and functional capabilities were “clearly not the
`defining aspect[s] of the costumes” when viewed “in the
`context of the overall costume” and, thus, were not
`considered distinguishable variations capable of supporting
`independent copyright protection). The court then went on
`to apply the second prong of Durham, noting that because of
`the similarity between ERG’s costumes and the underlying
`characters, granting a derivative work copyright in the
`costumes would improperly give ERG “a de facto monopoly
`on all inflatable costumes depicting the copyrighted
`characters also in ERG’s costumes.” Id.
`
`The Tenth Circuit similarly held that a digital work must
`be more than a copy of an underlying analog work to support
`
`

`

`17
`
`ABS ENTERTAINMENT V. CBS CORPORATION
`
`
`
`copyright as a derivative work. In Meshwerks, Inc. v. Toyota
`Motor Sales U.S.A., 528 F.3d 1258 (10th Cir. 2008), the
`Tenth Circuit considered the copyright eligibility of
`Meshwerks’ digital wire frame models used as skeletons for
`the interactive display of Toyota’s vehicle designs online
`and in advertising. Id. at 1260. Meshwerks measured
`Toyota’s vehicles with an articulated arm tethered to a
`computer and mapped the results onto a computerized grid
`using modeling software; connected the measured points to
`create a wire frame; and manually adjusted about ninety-
`percent of the data points to make the models more closely
`resemble the vehicles. Id. at 1260–61. The Tenth Circuit
`drew a sharp distinction between copies and original works,
`explaining
`that copies cannot qualify for copyright
`protection “since obviously a copier is not a creator, much
`less an ‘independent’ creator.” Id. at 1267 (citing Patry on
`Copyright § 3:28). The wire frames were copies, according
`to the court, because they “depict nothing more than
`unadorned Toyota vehicles—the car as car,” the visual
`designs of “which do not owe their origins to Meshwerks.”
`Id. at 1265, 1268.
`
`Meshwerks relied on three important doctrines in coming
`to that conclusion. First, as in Entertainment Research
`Group, the mere act of translating the derivative work into a
`different medium did not confer a distinct identity on the
`derivative work. Id. at 1267 (“[T]he fact that a work in one
`medium has been copied from a work in another medium
`does not render it any the less a ‘copy.’” (citing 2 Nimmer
`on Copyright § 8.01[B])); id. (noting that although the wire
`models did not “recreate Toyota vehicles outright—steel,
`rubber, and all,” “what Meshwerks accomplished was a
`peculiar kind of copying”). Second, the court analyzed
`originality by comparing the start and end products—the
`underlying vehicle designs and the wire models—not the
`
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`ABS ENTERTAINMENT V. CBS CORPORATION
`
`18
`
`process used to get from one to the other. Id. at 1268 (“[I]n
`assessing the originality of a work for which copyright
`protection is sought, we look only at the final product, not
`the process, and the fact that intensive, skillful, and even
`creative labor is invested in the process of creating a product
`does not guarantee its copyrightability.”). Finally, the court
`considered Toyota’s intent in authorizing Meshwerks to
`create an accurate representation of Toyota’s vehicles, not
`something new and different: “If an artist affirmatively sets
`out to be unoriginal—to make a copy of someone else’s
`creation, rather than to create an original work—it is far
`more likely that the resultant product will, in fact, be
`unoriginal.” Id.
`
`The Second Circuit considered the originality needed to
`justify copyright protection for a derivative work in L. Batlin
`& Son, Inc. v. Snyder. 536 F.2d 486 (2d Cir. 1976). In that
`case, appellant Snyder obtained a copyright registration for
`a plastic version of a cast metal Uncle Sam bank that had
`previously entered the public domain.4 Snyder made several
`changes in the plastic version: he made it shorter “in order to
`fit into the required price range and quality and quantity of
`material to be used;” changed the proportions of Uncle
`Sam’s face, bag, hat, and eagle; changed the textures of
`several
`components;
`created
`a
`single-piece mold
`incorporating the umbrella instead of the two-piece mold of
`
`4 The public domain metal bank comprised: “Uncle Sam, dressed in
`his usual stove pipe hat, blue full dress coat, starred vest and red and
`white striped trousers, and leaning on his umbrella, stands on a four- or
`five-inch wide base, on which sits his carpetbag. A coin may be placed
`in Uncle Sam's extended hand. When a lever is pressed, the arm lowers,
`and the coin falls into the bag, while Uncle Sam's whiskers move up and
`down. The base has an embossed American eagle on it with the words
`‘Uncle Sam’ on streamers above it, as well as the word ‘Bank’ on each
`side.” 536 F.2d at 488.
`
`

`

`ABS ENTERTAINMENT V. CBS CORPORATION
`
`
`
`the metal bank; and replaced the arrows in the eagle’s talons
`with leaves, because “the arrows did not reproduce well in
`plastic on a smaller size.” Id. at 488–89.
`
`19
`
`Even though the plastic bank was not identical to the
`metal original, the Second Circuit held that the changes did
`not amount to a distinguishable variation in the identity or
`essential character of the original work. Id. at 491. The
`transfer of the expression from the underlying cast iron
`Uncle Sam to a plastic version, despite overcoming technical
`challenges and, arguably, improving the original in terms of
`lowering the price, did not result in a copyrightable
`derivative work, because the changes did not constitute the
`“substantial variation” necessary to support copyright.
`Instead, they were merely the “trivial” results of the
`“translation to a different medium.” Id. The plastic bank
`was not a new work—it did not embody “the author’s
`tangible expression of his ideas,” id. at 492 (quoting Mazer
`v. Stein, 347 U.S. 201, 214 (1954)), and was thus a mere
`copy of the underlying work.
`
`The Copyright Office guidance provided in Circular 56
`reflects that a similar analysis applies specifically to
`derivative sound recordings.5 In rel