In recent months, three district courts have considered whether a work should be considered to be “derivative” within the meaning of §101 of the 1976 Copyright Act. 1

Although in each case the issue was raised in the context of photographs of three dimensional objects, the determination of whether a work is “derivative” and the consequences of that determination are broadly applicable across the spectrum of copyrightable subject matter.

The Statutory Definition

The term “derivative work,” as defined in the statute and interpreted by the courts, has only a tangential connection to the common usage of “derivative,” the latter often referring to something whose origin can be traced in part to an earlier source. Thus, movies and television series are sometimes called “derivative” in the sense that the concepts central to the later works were inspired by the earlier ones. But concepts, as distinguished from particularized expression, are not protected by copyright, so to say that the later work is “derivative” has little, if any, bearing on whether it would be considered a “derivative work” under copyright law.

Section 101 of the Copyright Act defines a “derivative work” as follows:

[A] work based upon one or more pre-existing works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications, which, as a whole, represent an original work of authorship, is a “derivative work.”

The two key requirements on the face of this statutory definition are that

(i) the second (derivative) work must “recast, transform or adapt” the first work; and

(ii) the modifications in the second work must themselves constitute “an original work of authorship.”

The statutory definition, however, must be read in light of (i) the underlying constitutional requirement of “authorship” set forth in the Supreme Court’s Feist opinion, 2 and (ii) decisions interpreting the phrase “based on one or more pre-existing works” contained in the first line of the definition. The terms “work,” “pre-existing work,” “author” and “original work of authorship” are not defined in the Copyright Act, so further guidance must be found in case law.

In Feist, the Supreme Court held that the Copyright Clause of the U.S. Constitution 3 mandated a minimum level of originality in order for a work to qualify for copyright protection. Not only does the work have to originate from the author in the sense that it was not copied from another source, but it also has to evidence a minimal degree of creativity, a creative spark that is more than trivial. Feist emphasized that the creativity requirement is not particularly stringent, but the Court declined to delineate the requirement with specific examples beyond its holding that alphabetical listings in the white pages of telephone directories lacked any creativity and therefore were not copyrightable.

The constitutional standard of “originality” required for copyright protection has been applied more stringently in the context of derivative works. Thus, to be copyrightable as a derivative work, the new material and/or recasting or transforming of the original work must constitute “a ‘distinguishable variation’ that is more than ‘merely trivial,’” 4 in contrast to Feist’s minimal creative spark.

The courts have employed different rationales to justify this heightened originality requirement for derivative works. One rationale is that when a purported author seeks to claim copyright in a derivative work, it would unduly interfere with exploitation of the underlying work if slight variations could themselves result in a new copyright. 5 Another, enunciated by the U.S. Court of Appeals for the Second Circuit in the context of an alleged derivative work based upon public domain material, is that “[t]o extend copyrightability to minuscule variations would simply put a weapon for harassment in the hands of mischievous copiers intent on appropriating and monopolizing public domain work.” 6

A derivative work must be based upon a pre-existing work that is within the subject matter of copyright. The underlying work could still be in copyright or have already fallen into the public domain, but to form the basis of a derivative work the underlying work must consist of copyrightable subject matter. If the underlying work is still protected by copyright, the author of the derivative work must have the consent of the underlying copyright holder prior to creating the derivative work, except in those instances where the second author only uses noncopyrightable material such as facts or ideas, or useful articles which do not incorporate separately identifiable, copyrightable features. The scope of copyright protection for a derivative work is limited to the new material contributed by its author and confers no rights in the pre-existing material. 7

The Photography Cases

There is no doubt that, in certain instances, a photograph could be a derivative work, such as when the second photograph takes a portion of an earlier photograph and recasts it as part of the new one. For example, a photograph of Senator Obama shaking hands with Senator McCain could be cropped so that Mr. McCain is eliminated from the picture and a second photograph is created in which Mr. Obama appears to be shaking hands with the President of Iran. The second photograph would constitute both a dirty trick and a derivative work. This sort of photographic creation was not at issue in the cases discussed below. Rather, these cases concerned photographs of three-dimensional objects (products) taken to present the products in an accurate and attractive manner for use in sales catalogues and advertising brochures. This subset of photographic works is often referred to in the advertising trade as a “product shot,” and we shall adopt that term here.

The ‘Ets-Hokin’ Case

Prior to the recent spate of cases concerning product shots, two courts had considered whether such photographs could constitute derivative works, and they reached contrary results. In Ets-Hokin v. Skyy Spirits Inc., separate panels of the Ninth Circuit considered whether a photograph of a vodka bottle was copyrightable and, if so, whether it was infringed by later photographs which mimicked plaintiff’s product shot. In the first opinion, 8 the Ninth Circuit concluded that plaintiff’s photograph met the minimum standard of copyrightability and remanded the case to the district court for a determination of whether defendant’s photograph was an infringement.

In reaching its conclusion on copyrightability, the court held that the product shot was not a derivative work and thus was not subject to the heightened standard of originality for derivative works. However, the Ninth Circuit based this holding on its determination that the vodka bottle itself was not copyrightable and therefore could not be a “pre-existing work” forming the basis of a derivative work. The court apparently assumed that if the subject of the photograph had been copyrightable (such as a bottle decorated with an original painting or containing separately copyrightable design features), the photograph would have been a derivative work. Although, strictly speaking, such an assumption could be characterized as dicta, it is implicit in the court’s holding and has been treated as a reasonable inference by other courts considering the opinion.

In a later opinion, 9 on appeal from the district court’s decision on remand, a new Ninth Circuit panel, operating on the same premise, held that the defendant’s photographs did not infringe because there were no similarities of copyrightable expression. Instead, the court held that the similarities concerned ideas and standard elements that would be common to any product shot of a vodka bottle.

‘SHL Imaging’

Shortly after the initial Ninth Circuit opinion in Ets-Hokin, U.S. District Judge William H. Pauley for the Southern District of New York rejected Ets-Hokin’s implicit holding that a product shot should be considered a derivative work when the subject of the photograph is itself copyrightable or contains copyrightable material. In SHL Imaging Inc. v. Artisan House Inc., 10 Judge Pauley criticized the Ninth Circuit for failing properly to take account of the statutory definition of a derivative work. Thus, he stated:

[The Ninth Circuit] misconstrued the nature of derivative works. While the Ets-Hokin court correctly noted that a derivative work must be based on a “pre-existing work,” and that the term “work” refers to a “work of authorship” . . . , it failed to appreciate that any derivative work must recast, transform or adapt the authorship contained in the pre-existing work. A photograph of Jeff Koons’ “Puppy” sculpture . . . merely depicts that sculpture; it does not recast, transform, or adapt [Mr.] Koons’ sculptural authorship. In short, the authorship of the photographic work is entirely different and separate from the authorship of the sculpture.” 11

In 2008, three more district courts have had the opportunity to consider this issue. One of the decisions, Masterson Marketing Inc. v. Lotus International Inc., 12 was made by a district court within the Ninth Circuit which therefore was constrained to follow Ets-Hokin. The product shots at issue were photographs of copyrighted animal-design cookie jars. Although purporting to follow Ets-Hokin on the derivative work issue, the Masterson court in fact applied the “de minimus” standard of originality rather than the heightened standard applicable to derivative works. Thus, the court stated: “The amount of creativity necessary to render a work copyrightable is ‘extremely low; even a slight amount will suffice.’” 13

The court nevertheless held that only virtually identical photographs were infringing because the product shots were “thin” copyrights. Masterson and the earlier Ninth Circuit opinion in Ets-Hokin, demonstrate that even when a derivative work plaintiff clears the “copyrightability” hurdle, it may face even higher hurdles on the infringement front. The very limited scope of protection given to product shots often reduces the “substantial similarity” standard to a “virtual identicality” test focusing on minor differences between the works rather than whether a material amount of protected expression has been copied.

The Debate Continues

In January 2008, the U.S. District Court for the Northern District of Illinois considered the “derivative work” issue in the context of photographs of toy train engines, railway cars, train tracks and vehicles. In Schrock v. Learning Curve International Inc., 14 Judge Milton I. Shadur held that these product shots were derivative works because they recast the copyrightable toy sculptural works from three-dimensional items to two-dimensional photographs. The court inferred from Ets-Hokin that if the vodka bottle photographed by Ets-Hokin had been copyrightable, the Ninth Circuit would have held the photograph to be a derivative work. The Schrock court was persuaded by Ets-Hokin, and cited as further support two Seventh Circuit opinions 15 in which photographs of copyrighted items (Beanie Baby scultpures and Norman Rockwell paintings) were described as derivative works. However, in one of those cases, plaintiff had conceded that its photograph was a derivative work and, in the other, the court merely made a passing reference to the photograph as a derivative work without any discussion of the issue. There is therefore no Seventh Circuit holding on this point.

In Schrock, Judge Shadur analogized a photograph of a three-dimensional object to a sculpture of a two-dimensional drawing. He considered such photographs to be “no less derivative” than the sculptures because each recast the pre-existing work “into another medium, thus creating a derivative work ‘based upon’ the pre-existing work” within the meaning of the statutory definition. 16 However, this conclusion could only be reached by failing to take account of a crucial step in the analysis: identifying the nature of the authorship involved in the works at issue.

Because a derivative work is only protected to the extent of the original new expression contained in it, that new authorship must be clearly identified in order to determine whether the underlying work has been recast. Photographic authorship includes such elements as the posing of the subject matter, camera angle, lighting, background choices, shading and timing. The authorship in a copyrighted sculpture of a toy train includes none of these elements. A product shot which merely replicates that toy train/sculpture does not recast, adapt or transform the authorship in it. Whether a particular three dimensional sculpture of a drawing would recast the drawing in a manner sufficient to be considered a derivative work would require a comparable analysis of the nature of the authorship inherent in the drawing and the sculpture. 17

The question of whether product shots were derivative works arose again in March 2008 in an action in the U.S. District Court for the Middle District of Florida, Latimer v. Roaring Toyz Inc. 18 There, on cross-motions for summary judgment and on defendants’ motion for permission to file a sur-reply brief discussing the then-recent Schrock decision, Judge James S. Moody Jr. held that product shots of Kawasaki motorcycles and customized motorcycle parts were not derivative works. Without giving Schrock the courtesy of explicit consideration, Judge Moody went straight to the divide between the Ninth Circuit’s Ets-Hokin opinion and Southern District Judge Pauley’s decision in SHL Imaging, and came down squarely on the side of his fellow district court judge.

In Latimer, the product shots were taken for specific advertising and publicity uses, but thereafter defendants used them on a Web site and in other manners beyond the parties’ agreement. In an effort to defeat the infringement claims, defendants argued that the photographs were unauthorized derivative works based on pre-existing works including, inter alia, paint-work on the motorcycles. Putting aside the question of authorization (which appears to have been a specious assertion in light of defendants’ request that Mr. Latimer take the photographs), Judge Moody addressed the derivative work argument and found it lacking:

The Court rejects Defendants’ argument that [Mr.] Latimer can have no copyrightable interest in his photographs. Here, [Mr.] Latimer has not altered Hathaway’s artwork, recast it, or otherwise transformed it during the photographic process . . . . The ZX-14s are the subject of the photographs. Hathaway’s artwork has not been transformed in the slightest – it is presented in a different medium, but it has not been changed in the process such that it meets the criteria for a derivative work under copyright law. 19

Judge Moody then applied the de minimus test of originality to the photographs and found that they satisfied that test in light of “the photographer’s selection of the background, lighting, and shading, positioning of the subject, and determining the timing for the shot.” 20 The photographs therefore “satisf[ied] the elements of artistic craft protected by Mr. Latimer’s copyright.”

Defendants also argued in the alternative that the photographs were joint works. However, Judge Moody rejected this argument because there was no evidence that “the putative co-authors . . . shared an intent to be co-authors.” 21

Conclusion

Two district courts (the Southern District of New York and the Middle District of Florida) have now held that product shots are not derivative works, whereas the Ninth Circuit (including a district court within that circuit) and the Northern District of Illinois have held the opposite.

For what it is worth, the authors of this article consider the product shots at issue in all of these cases to be works of photographic expression that depict their subjects but do not recast, adapt or transform them in the manner required of derivative works. In the case of a photograph whose raison d’être is to present a product accurately in catalogues or advertising so that the consumer can appreciate what might be delivered to his door, such replication of the product does not change it in ways that result in a “derivative work” under copyright law.

Robert J. Bernstein practices law in The Law Office of Robert J. Bernstein and is a past president of the Copyright Society of the U.S.A. Robert W. Clarida is a partner at Cowan, Liebowitz & Latman and is the coauthor of “Recent Developments in Copyright,” a review of decisions delivered at the annual meeting of the Copyright Society of the U.S.A. (c) 2008 Cowan, Liebowitz & Latman and Robert J. Bernstein.

Endnotes:

1. 17 U.S.C. §§101 et seq. (the “Copyright Act”).

2. Feist Publ. Inc. v. Rural Telephone Serv. Co., 499 U.S. 340 (1991).

3. U.S. Const., Art. I, §8.

4. 1 Nimmer on Copyright §3.03[A] at 3-12 (citations omitted).

5. See, e.g., Entertainment Research Group Inc. v. Genesis Creative Group Inc., 112 F.3d 1211,1220, (9th Cir. 1977), cert. denied, 523 U.S. 1021 (1998).

6. L. Batlin & Son Inc. v. Snyder, 536 F.2d 486 (2d Cir.) (en banc), cert. denied, 429 U.S. 857 (1976).

7. Section 103(b) of the Copyright Act provides, inter alia, that the copyright in a derivative work “extends only to the material contributed by the author of such work, as distinguished from the pre-existing material employed in the work, and does not imply any exclusive right in the pre-existing material.” 17 U.S.C. §103(b).

8. 225 F.3d 1068 (9th Cir. 2000).

9. 323 F.3d 763 (9th Cir. 2003).

10. 117 F.Supp.2d 301 (S.D.N.Y. 2000).

11. Id. at 306.

12. 2008 U.S. Dist. LEXIS 17696 (S.D. Cal. March 7, 2008).

13. Id., at *16 (citations omitted).

14. 531 F.Supp.2d 990 (N.D. Ill. 2008) ( Schrock).

15. Ty Inc. v. Publ’ns Int’l Ltd., 292 F.3d 512 (7th Cir. 2002), and Saturday Evening Post Co. v. Rumbleseat Press. Inc., 816 F.2d 1191, 1201 (7th Cir. 1987).

16. Schrock, supra, 531 F.Supp.2d at 995.

17. After determining that the photographs were derivative works, the Schrock court went on to hold that Mr. Schrock did not hold a valid copyright in them because he had not received permission to register copyrights in the derivative works from the owner of the copyrights in the items photographed. That issue is beyond the scope of this article. However, it should be noted that one of the authors, Robert W. Clarida, has submitted an amicus brief in support of Mr. Schrock’s pending appeal in which the amici contend that the district court’s holding on the registration issue was erroneous.

18. 2008 U.S. Dist. LEXIS 21202 (M.D. Fla. March 13, 2008).

19. Id., at *23-*24.

20. Id., at *25 (citations omitted).

21. Id., at *28.