Photographs and Derivative Works

The concept of what constitutes a derivative work seems to elude far too many courts, particularly in the photography context. In Ets-Hokin v. Skky Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000), a photograph of a vodka bottle was taken for use in an advertisement. The district court had held that the bottle depicted in the photograph was a “preexisting work,” and thus the photograph was “based on” that work and was therefore a derivative work. Rather than dismiss this shockingly wrong conclusion on the basis of the plain words of the statute, the court of appeals went off on an irrelevant inquiry: Whether the object depicted in the photograph (the vodka bottle) was copyrightable. According to the court of appeals, if it was, the photograph was a derivative work; if not, the photograph was not a derivative work. In order to determine whether the bottle photographed was copyrightable, the court examined it as the design of a useful article, ultimately rejecting protection for the bottle and therefore upholding copyright in the photograph as a nonderivative work.

Photographs of other objects are not derivative works of those objects. First, a photograph of an object is not “based on” that object: It is a mere depiction of it. Second, even if one were to find that a photograph of an object is based on that “preexisting work” within the meaning of the definition of “derivative work” in Section 101, such a photograph must still “recast, transform, or adapt” the authorship in the preexisting work to be considered a derivative work. Such recasting, transformation, or adaptation does not occur in a photograph of an object, even copyrighted objects. What makes a derivative work a derivative work is the contribution of changes in the actual authorship of the preexisting work, not a mere depiction of that work.

Fortunately, Judge William H. Pauley III of the Southern District of New York set matters straight in SHL Imaging, Inc. v. Artisan House, Inc., 117 F. Supp. 2d 301 (S.D. N.Y. 2000). Judge Pauley rightly focused on the requirement of recasting, transformation, or adaptation, noting: “A photograph of Jeff Koons's ‘Puppy’ sculpture in Manhattan's Rockefeller Center merely depicts that sculpture; it does not recast, transform, or adapt Koons's sculptural authorship. In short, the authorship of the photographic work is entirely different and separate from the authorship of the sculpture

Now a district court in Illinois has returned to the Ets-Hokins approach,
Schrock v. Learning Curve Intern., Inc., 2008 WL 224280
(N.D.Ill., January 29, 2008). In Schrock, defendants hired plaintiff photographer to take pictures of hundreds of toys for use in marketing. There surprisingly was no work for hire or transfer, but instead a license with usage restrictions, which the photographer alleged had been violated. Defendants alleged the photographs were unauthorized derivative works of their toys, and regrettably the court agreed:

Schrock's photographs are product photographs-depictions of Thomas & Friends toys. Such depictions portray the three dimensional toy in two dimensions. In the words of Section 101, such photographs “recast, transform[ ] or adapt [ ]” the preexisting three dimensional toy into another medium, thus creating a derivative work “based upon” the preexisting work. Such photographs are no less derivative works than are three dimensional embodiments of two dimensional drawings (e.g., a guitar created to embody a written symbol, as in Pickett v. Prince, 207 F.3d 402 (7th Cir.2000), or porcelain dolls fashioned to embody Norman Rockwell illustrations, as in Saturday Evening Post, 816 F.2d at 1193). In sum, Schrock's photographs are derivative works of the copyrightable toys that they portray.

The court then widened its destructive trip through basic principles of copyright law by holding that there was no original derivative authorship based on the Seventh Circuit’s widely criticized Gracen opinion. In short it was a windy, blustery day in Chicago.

Photographs are not Derivative Works Part II

On February 5th, I did a posting about the question of whether photographs of objects are derivative works of those objects. I have long answered that question negatively, but the post was prompted by an Iliinois case that came out the other way, Schrock v. Learning Curve Intern., Inc., 2008 WL 224280 (N.D.Ill., January 29, 2008).

I am happy to report (not gloating, really) that on March 13th, Judge James Moody of the Middle District of Florida came out my way, in Latimer v. Roaring Toyz, Inc., 2008 WL 697346, Docket No. No. 8:06-CV-1921-T-30EAJ. Judge Moody specifically considered and rejected Schrock, (but ruled on summary judgment on implied license for some defendants). You go judge!

Here are the facts, from the court’s opinion, editing out extraneous stuff:

Todd Latimer, a free-lance fashion photographer, prepared a series of photographs of custom motorcycle parts for an advertising brochure for Defendant Roaring Toyz In June, 2005… Roaring Toyz displayed a number of customized motorcycles at the West Palm Beach Motorcycle Show. During the show, Latimer took numerous photographs of motorcycles customized by Roaring Toyz . Between June, 2005, and March, 2006, Latimer photographed a number of motorcycles Roaring Toyz was customizing at its Sarasota, Florida facility. Latimer provided Roaring Toyz copies of some of the photographs taken during this time period for its use on its website. Defendant Kawasaki Motor Corporation USA, Inc., manufactures, inter alia, motorcycles, utility vehicles, all terrain vehicles, and watercraft. Kawasaki began promoting its ZX-14 motorcycle in September 2005. While preparing for the introduction of the ZX-14 motorcycles, Kawasaki personnel noted a trend developing in the marketplace for customized motorcycles. Since Kawasaki did not manufacture or sell customized motorcycles, it arranged for two ZX-14s to be delivered to Roaring Toyz in January, 2006, for customization. Decisions regarding how the customization should be done, as well as what the final product should look like, were left to Roaring Toyz ... . Roaring Toyz commissioned Ryan Hathaway, an independent contractor who operated a one-man shop engaged in custom paint work and graphics design, to customize the paint on the ZX-14s. While Hathaway and Fisher discussed graphics styles and color schemes, Hathaway made the final decisions as to the design and color of the artwork on the ZX-14s During January and February, 2006, Hathaway worked in his shop in Lake Placid, Florida, designing the artwork, selecting the paint colors, and painting the ZX-14s. Meanwhile, in January, 2006, Latimer was retained by 2Wheel Tuner “to follow the build” of the ZX-14s and provide 2Wheel Tuner with photographs of the motorcycles at various stages of the customization process for inclusion with a magazine article. On February 23, 2006, Fisher learned … that Kawasaki wanted photographs of the customized ZX-14s. Roaring Toyz had one day in which to provide the requested photographs. Fisher contacted Latimer regarding Kawasaki's request for photographs, explaining the tight deadline when they spoke. Latimer agreed to travel to Sarasota to conduct a photo shoot that evening. … Latimer worked throughout the night of February 23-24 taking photographs of the ZX-14s as requested by Kawasaki. Once the photo session concluded, Latimer asked Fisher for $800.00 as payment for photographs of three R-1 and three Hayabasa motorcycles taken on February 14 and 16, 2006. Fisher wrote Latimer an $800.00 check. …

In short, a photographer took pictures of a motorcycle on which there was art work and then sued for infringement of them. Among the various defenses asserted by defendant was one that plaintiff’s photograph was an unauthorized derivative work of the artwork on the motorcycle and as such not protectible.

Here is the court’s rejection of this approach:


Under 17 U.S.C. § 101, a derivative work must incorporate a substantial element of a preexisting work of authorship and recast, transform, or adapt those elements. See SHL Imaging, Inc. v. Artisan Homes, Inc., 117 F.Supp.2d 301, 305-306 (S.D.N.Y.2000) (noting that “any derivative work must recast, transform or adopt the authorship contained in the preexisting work,” the Court found that “the authorship of the photographic work is entirely different and separate from the authorship of the sculpture” depicted in the photograph). As explained in SHL Imaging, “a photograph of ... [a] ‘Puppy’ sculpture in Manhattan's Rockefeller Center[ ] merely depicts that sculpture; it does not recast, transform, or adopt ... [the] sculptural authorship.... [A]uthorship of the photographic work is entirely different and separate from the authorship of the sculpture.” Id. at 306. It is undisputed that the artwork on the motorcycles is the original, creative expression of Ryan Hathaway, and as such, entitled to copyright protection. Defendants contend that since Hathaway did not grant a license to Latimer to make a derivative work by photographing Hathaway's artwork, the photographs at issue are unauthorized derivative works. The Copyright Act states that “[a] work consisting of editorial revisions, annotations, elaborations, or other modifications [to a preexisting work that], as a whole, represent an original work of authorship, is a ‘derivative work.’ “ 17 U.S.C. § 101. If, however, it is non-infringing and sufficiently original, such a work qualifies for a separate copyright. The Court rejects Defendants' argument that Latimer can have no copyrightable interest in his photographs. Here, 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. While Latimer has copyrighted photographs of the ZX-14s, he does not seek to monopolize the subject matter or idea of the photographs but merely to protect the actual reproduction of his expression of the idea, to wit, the photographs themselves. As in SHL Imaging, Latimer has not “recast, transform[ed], or adopt[ed]” Hathaway's artwork. Defendants' argument that Latimer's photographs are derivative works lacks merit.

Praise the Lord. Apropos a comment on the original posting, there was a claim of joint authorship, which the court rejected.