## Facts

- Jennifer Dumas owned copyrights in artist Patrick Nagel’s works; Mirage Editions, Inc. held copyrights in many Nagel works and served as the exclusive publisher; Alfred Van Der Marck Editions, Inc. published a commemorative compilation book containing selected Nagel artworks and commentary.
- Albuquerque A.R.T. Co. operated a business that purchased books or prints, removed selected pages or prints, affixed each to a backing, mounted it onto a ceramic tile, covered it with a transparent film, and sold the tile-mounted product at retail.
- It was undisputed that A.R.T. removed selected pages from the Nagel compilation book, mounted them individually onto ceramic tiles, and sold the tiles.
- The copyright owners and publisher sued alleging copyright infringement (in the individual artworks and the compilation) and asserted separate trademark and unfair competition claims.
- The district court granted summary judgment for the plaintiffs on copyright infringement and issued an injunction against further infringement; A.R.T. obtained summary judgment only on the Lanham Act claim.
- A.R.T. appealed the summary judgment and injunction on the copyright claim.

## Issues

1. Whether mounting copyrighted book pages onto ceramic tiles for sale constitutes preparation of an unauthorized “derivative work” under 17 U.S.C. §§ 101 and 106(2).
2. Whether the first sale doctrine, 17 U.S.C. § 109, shields a defendant who lawfully purchased copies but then altered their presentation and resold them as a new product.

## Decision

- The Ninth Circuit affirmed summary judgment for the plaintiffs and affirmed the injunction.
- The court held that A.R.T.’s tile-mounted products were unauthorized derivative works because the process recast the copyrighted images into a new form for commercial sale.
- The court held that the first sale doctrine did not apply because it permits disposition of a particular lawfully made copy, not preparation of derivative works.

## Legal Principles

- A “derivative work” includes a work based on a preexisting work that “recast[s], transform[s], or adapt[s]” the original; preparing such a work without authorization infringes the copyright owner’s exclusive right under 17 U.S.C. § 106(2).
- Copyright infringement is not limited to unauthorized reproduction; violation of the exclusive derivative-work right can occur even when the defendant uses lawfully made copies.
- The first sale doctrine (17 U.S.C. § 109) allows resale or other transfer of the specific copy purchased, but does not confer any right to transform that copy into a new derivative product.

## Conclusion

By converting pages from a copyrighted art book into tile-mounted objects for retail sale, A.R.T. prepared unauthorized derivative works, and its lawful purchase of the book did not excuse that conduct under the first sale doctrine; the injunction against further infringement was properly upheld.


Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 (9th Cir. 1988)