dissenting:
I concur in Part I of the majority opinion.
I respectfully dissent from Part II, and write more about that later.
I concur in the majority’s conclusion in Part III that the district court erred in granting the defendants’ motion for summary judgment based upon the defense of “fair use,” but I do not agree with, and accordingly express my dissent from, that portion of Part III in which the majority suggests that the defendants’ copyright in the movie, “Rear Window,” is in some way limited because the “fair use” defense is inapplicable to Abend’s claim of infringement.
The majority’s view of “fair use” is premised on a hypothetical example by Professor Nimmer in which he assumes that “an unauthorized motion picture is made based on a copyrighted novel.” See majority opinion at page 1482. The obvious flaw in this reasoning is that the premise does not apply in this case. Here, the movie “Rear Window” was not an “unauthorized” creation. Moreover, the defendants copyrighted it. It enjoys its own copyright protection as a derivative work, as I discuss later in this dissent. Pursuant to this copyright, the defendants have the right to exploit their movie without infringement by others, including Abend. The unavailability of the “fair use” doctrine as a defense to Abend’s claim of infringement of his copyright has nothing to do with the defendants’ right to use their movie which is protected by its own copyright.
I dissent from Part IV of the majority opinion, because I believe the district court did not err in denying Abend’s motion for summary judgment.
My dissent from Part II is predicated on my conviction that the district court was correct in granting summary judgment in favor of the defendants on the basis of the Second Circuit’s decision in Rohauer v. Killiam Shows, Inc., 551 F.2d 484 (2d Cir.), cert. denied, 431 U.S. 949, 97 S.Ct. 2666, 53 L.Ed.2d 266 (1977). I would hold, therefore, that the defendants’ 1983 re-release and exhibition of their movie, “Rear Window,” did not infringe Abend’s renewal copyright in the story “It Had To Be Murder.”
The majority opinion accurately recites the facts. I state the following only to focus on those circumstances which I believe apply to an appropriate analysis of Rohauer.
In 1942, Cornell Woolrich’s short story “It Had To Be Murder” was first published. Three years later, Woolrich agreed to assign exclusive worldwide motion picture rights in the story for its initial and renewal copyright terms to the defendants’ predecessor-in-interest. Pursuant to this grant, and during the initial term of Wool-rich’s copyright, the defendants produced and released the motion picture “Rear Window,” based in part on Woolrich’s story. The film, directed by Alfred Hitchcock and starring James Stewart and Grace Kelly, was released in 1954. It was copyrighted by the defendants at that time.
In 1968, just before the onset of the story’s renewal period, Woolrich died. Thus he never assigned the renewal rights in the story to the defendants as he had promised. A year later Woolrich’s executor did renew the story’s copyright, effective in 1970. In 1971, Abend acquired the story’s renewal rights from Woolrich’s executor. In 1982, the defendants renewed their copyright in the film “Rear Window.” In 1983, the defendants re-released the film. Thereafter, Abend brought this suit claiming infringement of the story’s renewal copyright and seeking compensatory damages, an accounting of the defendants’ profits and a permanent injunction which, among other things, would enjoin the defendants from exhibiting, distributing, sell*1484ing or marketing “Rear Window” in the United States.
The majority believes that Miller Music Corp. v. Charles N. Daniels, Inc., 362 U.S. 373, 80 S.Ct. 792, 4 L.Ed.2d 804 (1960) controls this case. See majority opinion, page 1474 n. 8 and page 1475. As Judge Friendly explained in Rohauer, however,1 Miller Music involved a set of facts significantly different from those presented in Rohauer and in the present case. Rohauer, 551 F.2d at 490.
Miller Music involved only one copyrighted work. In that case, two music publishers claimed the right to publish the song “Wine and Roses” through purported assignments of the renewal copyright in the song. Miller Music Company had been assigned the renewal rights by the song’s co-author, Ben Black, during the song’s initial copyright term. Before that initial term expired, Black died. His will contained no specific bequest concerning the renewal copyright. Black’s executor renewed the copyright, which was then distributed by decree of the probate court to Black’s residuary legatees. These legatees then assigned the renewal copyright to Charles N. Daniels, Inc. The Supreme Court held that this latter publisher, and not Miller Music Co., owned the publishing rights to the song. In so doing the Court merely addressed “the relative rights of persons claiming full assignment ... of the renewal term of” a single copyrighted work. Rohauer, 551 F.2d at 490. See also Miller Music, 362 U.S. at 374, 80 S.Ct. at 794.
By contrast here, as in Rohauer, two separately copyrighted works, each capable of being renewed under section 24 of the 1909 Act, are involved. The distinction, as Judge Friendly recognized, is an important one. The defendants do not challenge Abend’s right to publish the story, nor do they claim a right to publish it themselves; they do challenge Abend’s ability to block their right to show their film or to participate in its profits. Instead of being called upon to decide which of two parties has rights under the 1909 Act (the question decided by the Court in Miller Music), we are called upon to reconcile the interests of two parties who both have rights under the 1909 Act. See Rohauer, 551 F.2d at 490.
The question thus remains here, as it did in Rohauer, whether continued exhibition of the copyrighted derivative work (the film “Rear Window”) should be deemed to infringe Abend’s renewal copyright on the underlying work (the story “It Had To Be Murder.”). See Rohauer, 551 F.2d at 485-86. In my view, it should not. Nothing in the 1909 Act limits the use a copyright holder can make of his properly created derivative work. Rather, in section 7 of the 1909 Act, Congress gave derivative works dignity equal to underlying works, by providing that derivative works “shall be regarded as new works subject to copyright under the provisions of this title,” so long as “produced with the consent” of the proprietor of the underlying copyright. 17 U.S.C. § 7 (emphasis added). Thus, like an underlying work, a properly created2 derivative work is entitled to the full range of protection provided to all works copyrighted under the 1909 Act.
Mindful of this, Judge Friendly concluded that it would not make sense to “de-privet] the proprietor of the derivative copyright of a right, stemming from the section 7 ‘consent’ of the original proprietor of the underlying work, to use so much of the underlying copyrighted work as already has been embodied in the copyrighted derivative work” simply because the re*1485newal copyright in the underlying work had vested in the statutory successor to the original proprietor instead of the original proprietor. Rohauer, 551 F.2d at 492. The identical situation is presented here, and the same result should obtain.
Abend argues, and the majority appears to agree, that Judge Friendly’s Rohauer analysis “violates” the “traditional rule” of this circuit as expressed in Russell v. Price, 612 F.2d 1123 (9th Cir.1979), cert. denied, 446 U.S. 952, 100 S.Ct. 2919, 64 L.Ed.2d 809 (1980), that “a derivative copyright protects only the new material contained in the derivative work, not the matter derived from the underlying work.” Russell at 1128. This is not so.
Russell involved the George Bernard Shaw play “Pygmalion.” The play was copyrighted by Shaw. A motion picture of the same name based on the play had been produced under a license from Shaw. The film itself was copyrighted when initially made. However, the film’s copyright was never renewed. The copyright in the underlying play, meanwhile, had been renewed. The case arose when holders of the underlying play’s renewal copyright sued defendants who had distributed the film after the film’s copyright had expired.
The defendants in Russell, citing Ro-hauer, argued that when the film’s derivative copyright expired, the whole product entered the public domain free of the monopoly protection of any subsisting copyright in the underlying work. Russell, 612 F.2d at 1127. For this reason, defendants argued, the underlying work, like the derivative work, was no longer protected by the copyright laws. We rejected that notion, and explained that the defendants’ attempt to rely on Rohauer was misplaced, because the facts of Rohauer involved “significant differences” from the facts of Russell. Id. at 1126. The Russell court then held that “although the derivative work may enter the public domain, the matter contained therein which derives from a work still covered by statutory copyright is not dedicated to the public: Id. (emphasis added). The import of the “traditional rule” in Russell is simply that a derivative work’s loss of its copyright protection does not cause the loss of the underlying work’s copyright protection.
In the present case, the defendants do not argue that Woolrich’s story is no longer protected from public appropriation. Rather, they assert the right to exhibit their own protected work. Thus, once again the present case is distinguishable because it presents the conflict of two protected works. Russell, like Miller, involved only one copyrighted work; the film in Russell was no longer protected by copyright law. The court in Russell was not faced as we are here with two works of equal dignity in the eyes of copyright law. Indeed, the Russell court itself pointed out that in Russell, unlike Rohauer, there was “no longer a conflict between two copyrights, each apparently granting ‘their proprietors overlapping “exclusive” rights to whatever underlying material ... had been incorporated into the derivative film.’ ” Russell, 612 F.2d at 1128 (citation omitted).
Both Abend and the majority assert that Rohauer runs counter to cases in its own Second Circuit, in particular one case antedating Rohauer, G. Ricordi & Co. v. Paramount Pictures, Inc., 189 F.2d 469 (2d Cir.), cert. denied, 342 U.S. 849, 72 S.Ct. 77, 96 L.Ed. 641 (1951), and one case announced after Rohauer, Gilliam v. American Broadcasting Co., 538 F.2d 14 (2d Cir.1976). These cases, however, are distinguishable.
Like Russell, Ricordi did not concern the question whether the holder of a derivative copyright could exhibit that copyrighted work. Rather, it concerned the question whether the derivative copyright holder could produce a new and different derivative work without the consent of the underlying copyright holder.
Ricordi obtained the rights to make a libretto for an opera from the novel “Madame Butterfly.” 3 The agreement granted *1486such rights for the initial copyright period only. Ricordi made the opera and copyrighted it. Later, during the novel’s renewal period, Ricordi sued for a declaration that he was entitled to produce a movie based on the opera. The Second Circuit held that to the extent Ricordi had added new matter, he could produce a movie based thereon, but he no longer had the right to exploit the underlying material for a movie. Ricordi, 189 F.2d at 471.
Unlike Ricordi, the defendants here do not seek to create a new work from their movie. If they sought to make a play, or even a new movie, Ricordi would be applicable. Moreover, there was no challenge in Ricordi analogous to the one here — no one there challenged Ricordi’s ability to exhibit his opera. For these reasons Judge Friendly in Rohauer properly distinguished Ricordi. Rohauer, 551 F.2d at 493.
Neither is Gilliam on point. In that case, a group of British actors and performers known as “Monty Python” held the copyrights in scripts written for a television series. The copyrights in the recorded programs based on the scripts, meanwhile, were held by the British Broadcasting Corporation (BBC). Under a detailed agreement between Monty Python and the BBC, the latter was not permitted to edit the programs without first consulting the Monty Python writers. The BBC later granted the American Broadcasting Company (ABC) the right to broadcast several of the programs. ABC severely edited the programs. Monty Python sued for infringement of their scripts.
In finding for Monty Python, the Second Circuit concluded that since the BBC itself had never obtained permission to edit the scripts, it could not possibly transfer such a right to a third party like ABC. Gilliam, 538 F.2d at 21. Gilliam has nothing to do with our case.
In sum, when presented with the facts of Rohauer, Judge Friendly wrote on a precedent-free slate. He did not, however, look only to the statute. He carefully examined the 1909 Act’s legislative history as well as its language in determining that the “force or validity” clause of section 7 “ha[d] no bearing” on the problem there presented. Rohauer, 551 F.2d at 488, 490. That is, he concluded that the statutory language had not been designed to address the competing copyrights situation presented by Rohauer.4
Having found nothing in precedent or legislative history dictating a finding of infringement, Judge Friendly next looked to policy considerations in determining what Congress would have wanted when faced with the problem of competing copyrights. Rohauer, 551 F.2d at 493. See also id. at 486 (“A court must grope to ascertain what would have been the thought of the 1909 Congress on an issue about which it almost certainly never thought at all.”). He decided that it would be “more in keeping with the letter and purposes of the [1909 Act]” not to limit exhibition of the derivative work. Rohauer, 551 F.2d at 486. Judge Friendly reasoned that makers of derivative works, unlike licensees who merely print or distribute an unchanged underlying work, make their own creative contributions, of the type Congress sought to protect under copyright law. Id. at 493. This factor augurs in favor of allowing the derivative copyright holder to continue exhibiting his work.
Creative contributions by the defendants to the movie “Rear Window” abound. The movie added a love interest not present in the story. And of course the lighting, acting, staging, as well as substantial script adaptations from the basic story, all originated with the film. In short, the film is a new work of art. Faced with substantially *1487the same question which was presented in Rohauer, there is no reason to depart from its holding. Its reasoning is sound, its precedent is firm, and I see no logic in creating a split of authority in the circuits on this matter of national concern.
The majority states the defendants lost their right to exploit “Rear Window” without Abend’s consent, or at least without letting him share in the proceeds from the exploitation, because Woolrich died prior to assigning his renewal rights. I do not agree. In my view, what the defendants lost when Woolrich died before commencement of the renewal term and assignment of his renewal rights was not the right to continue to display their separately copyrighted movie. Rather, they lost the right to create a new movie — indeed to create any new work using Woolrich’s story. It seems to me this view reads the 1909 Act plainly and gives due weight to Rohauer, Miller, Russell, Ricordi, and Gilliam.
Contrary to the majority’s suggestion, the holding of Rohauer does not deny authors of underlying works or their successors a “second chance” to reap benefits from their own works. See majority opinion at page 1477. Abend is free to republish “It Had To Be Murder,” authorize a new movie, television or theatrical productions, create book cassettes and otherwise capitalize on the success of “Rear Window” in any manner so long as he does not infringe upon the new matter contained in that movie. See G. Ricordi & Co. v. Paramount Pictures, Inc., 189 F.2d 469, 472 (2d Cir.), cert. denied, 342 U.S. 849, 72 S.Ct. 77, 96 L.Ed. 641 (1951).
Because I believe the defendants should prevail on their Rohauer defense, I would not get to the issue of remedies. The majority suggests the parties should share the profits from “Rear Window.” It reaches this conclusion apparently because it recognizes the unjust result of its holding that Abend, who invested not one dime in creating the movie, should now have some rights to it. This “share-the-wealth” concept offends my sense of justice. I don’t see why Abend should be permitted to squeeze the defendants for money generated by a movie which they created, in which they risked their capital, and to which they committed their substantial talents. Granted, the defendants used Woolrich's story. But they paid him for it, and he agreed to assign his renewal rights in the story to them. Now, because of the quirk of fate that Woolrich died before the renewal term of the copyright in the underlying story, Abend, according to the majority, is entitled to a portion of “Rear Window’s” profits. It just doesn’t make sense.
. The majority asserts that Judge Friendly "virtually ignore[d]” Miller Music in Rohauer, and Miller Music "provides ineluctable authority for Abend’s position." Majority opinion at page 1475. The majority thus suggests that Judge Friendly either did not understand or purposely ignored the obvious. As I explain above, I believe Judge Friendly correctly determined that Miller Music failed to address the situation presented by Rohauer. Indeed, the Justices of the Supreme Court who have expressed an opinion about the Rohauer decision have noted that it states the view of the 1909 Act that has "prevailed." Mills Music, Inc. v. Snyder, 469 U.S. 153, 183 n. 7, 105 S.Ct. 638, 655 n. 7, 83 L.Ed.2d 556 (1985) (White, J., dissenting).
. There is no dispute that the derivative film “Rear Window” was originally made with valid section 7 consent.
. He also obtained permission to make the opera from the holder of a copyright in a play based on the book; the play had been created pursuant to proper consent of the novel’s author as well.
. Abend nevertheless contends that the defendants’ re-release of "Rear Window” does impair the "force or validity” of Abend’s renewal copyright in the underlying story in violation of section 7. The majority, in finding Miller Music dispositive, chose not to decide “whether or how section 7’s ‘force or validity’ clause” is implicated by the present case. See majority opinion at page 1474 n. 8. I agree with Judge Friendly's analysis, which applies equally here, that section 7 was not written to address the situation presented by Rohauer. See Rohauer, 551 F.2d at 488-90.