Wednesday, October 04, 2006

Not a Model Decision

A recent opinion from the District of Utah, Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc, 2006 WL 2623935 (D. Utah Sept. 13, 2006), may be an example of how an overemphasis on technology can blind courts to a more fundamental issue, in this case the nature of originality. I have excerpted below the relevant parts of the court's opinion, so I won't repeat them here. In essence, plaintiff was hired to make computerized, animated 3D models of several Toyota cars for an ad campaign. A dispute broke out, plaintiff sued for infringement, defendants claimed the models weren't protectible, court held for plaintiff.

Although there is discussion of plaintiff's reliance on CAD software, Defendants agreed that the modeling process used to create the works was not entirely mechanical in nature and that it took "creative judgments" to decide the best way to depict the car in the model. The court, however, thought there was a "lack of a creative recasting of the Toyotas vehicles." That seems hard to agree with, if by creativity one means what it means in copyright, namely an original contribution rather than an aesthetic purpose.

The court seemed fixated on plaintiff's desire to accurately depict the vehicles as if such a purpose rendered the models unprotectible on that ground. Purpose is irrelevant, at least since Justice Holmes' Bleistein's opinion. Nor does faithful reproduction of the object at issue matter either if there is originality in how the work is depicted; it is the how that is the subject of copyright, not the what or the purpose. A super-realist painting is intended to make the viewer think he or she is looking at a photograph. Architectural drawings had better be accurate. Yet, in both cases, there is protection because of the skill and judgment involved in making the work. The court agreed plaintiff "made many judgments that required both skill and technical know-how. Those judgments may have even involved 'creativity,' as that word is commonly used." That should have been enough.

Here are the relevant parts from the court's opinion:

"This motion raises the question of whether copyright law protects three-dimensional digital models of commercial products when the digital models are intended to resemble the commercial product as closely as possible. Plaintiff Meshwerks, Inc., was hired by Defendant Grace & Wild, Inc. to create digital models of several Toyota vehicles. After completing the project, Meshwerks obtained copyright registration certificates covering the models. Meshwerks contends that Defendants Toyota Motor Sales U.S.A., Inc., Grace & Wild, 3D Recon, L.L.C., and Saatchi & Saatchi North America, Inc. (collectively, the “Toyota Defendants”) violated Meshwerks's copyright by impermissibly using the models that Meshwerks created. Meshwerks also alleges that Grace & Wild failed to fully pay Meshwerks for the digital modeling that it performed.The Toyota Defendants have moved for summary judgment on Meshwerks's copyright infringement claims, asserting that the digital models created by Meshwerks are not copyrightable. Further, the Toyota Defendants argue that, should they succeed on their motion for summary judgment, the court should decline to exercise supplemental jurisdiction over Meshwerks's remaining state law claim for breach of contract. The court agrees with the Toyota Defendants' position and therefore grants the motion for summary judgment and declines to exercise supplemental jurisdiction over Meshwerks's breach of contract claim.

As part of its advertising strategy, Toyota Motor Sales and its advertising agent, Saatchi & Saatchi sought out a company to create three-dimensional animated images of several Toyota vehicles. Toyota planned on using the models on the Internet and in several other types of promotional media. Saatchi & Saatchi contacted Grace & Wild and asked it to develop the images. Grace & Wild, in turn, hired Meshwerks to create three-dimensional digital models of the Toyota vehicles that would be used to create the final images.The parties present different descriptions of the digital-modeling process. The Toyota Defendants assert that the use of off-the-shelf computer software enables the quick creation of product-accurate models. In contrast, Meshwerks claims that computer software is used to create an initial rough sketch of an object, but that “the skill and creativity of the graphic sculptor,” who uses computer software as a tool, creates the final product. (Plf.'s Memo. in Opp'n to the Toyota Defs. Mot. for Part. Summ. J. ii (dkt.# 19).) Meshwerks began the modeling process by measuring the physical distance between designated points on each Toyota vehicle. To accomplish this task, Meshwerks placed tape in a grid pattern over each car and then, using an articulated arm measuring over six feet, marked each point at which the tape intersected. The distance between the points of intersection was then measured and inputted into a computer. Using the measurements as a guide, the computer software then created lines that formed a rough digital representation of the vehicle, resembling a wireframe model.FN1
FN1. According to Meshwerks, some components of the vehicles, such as the vehicles' headlights, could not be measured. Meshwerks took photographs of those components and then, using the photographs for reference, created the wireframe model of the components from scratch.*2 According to Meshwerks, the individual creating the digital model must manipulate the data initially obtained from the vehicle measurements to effectively create the illusion of a three-dimensional image on a two-dimensional screen in the most efficient manner possible. Given the necessity of manipulating the data obtained through measurement alone, Meshwerks disputes the Toyota Defendants' characterization of the final digital models as absolutely product accurate. In fact, Meshwerks contends that truly product-accurate models would be worthless because they would not create the desired three-dimensional effect. In short, Meshwerks asserts that the modeling process is a creative one, and that the creative nature of the process is borne out by the fact that no two digital models of an object will be exactly alike.After finishing the vehicle models, Meshwerks provided the digital files to Saatchi & Saatchi. Meshwerks also made a print-out of the data comprising each of the digital files and sought copyright protection of the material, claiming that the print-outs represented copyrightable non-dramatic literary works or computer programs. The United States Copyright Office issued copyright registration certificates to Meshwerks covering the submitted files.Meshwerks's copyright infringement claim is based on Meshwerks's belief that the digital models it created have been distributed among the Toyota Defendants and that those models have been used repeatedly without Meshwerks's permission. The Toyota Defendants claim that summary judgment on Meshwerks's copyright infringement claims is warranted because the digital models are not entitled to copyright protection.


The parties do not truly dispute the material facts underlying Meshwerks's copyright claim. Rather, the parties dispute the manner in which those facts are characterized. The only disagreement between the parties concerns whether the process of creating the digital models is dominated by creativity or technical know-how. But even the Toyota Defendants acknowledge that the modeling process is not entirely mechanical in nature. ( See Reply Memo. in Supp. of Defs. Mot. for Part. Summ. J. 11 (dkt.# 25) (“In a manner of speaking, it took ‘creative judgments' to decide how best to depict the three-dimensional Vehicle in a two-dimensional display .”).) The parties' disagreement concerning the accurate characterization of the modeling process does not preclude the entry of summary judgment on Meshwerks's copyright infringement claim. This is so because, even if Meshwerks's characterization of the modeling process is accepted as accurate, the digital models are nevertheless not copyrightable. FN2 Accordingly this matter can be resolved on summary judgment. See Magic Mktg., Inc. v. Mailing Servs. of Pittsburgh, Inc., 634 F.Supp. 769 (W.D.Pa.1986) (“The issue of copyrightability is typically resolved by a motion for summary judgment.”); cf. Sem-Torq, Inc. v. K Mart Corp., 936 F.2d 851, 853 (6th Cir.1991) (“Copyrightability is often resolved on summary judgment.”).
FN2. Meshwerks filed a motion to strike portions of the declaration of Brent Feeman, which was submitted by the Toyota Defendants in support of their motion for partial summary judgment. In an apparent attempt to address the concerns raised by Meshwerks, the Toyota Defendants responded by submitting a supplemental declaration of Mr. Feeman. But Meshwerks contends that the supplemental declaration suffers from deficiencies similar to those present in Mr. Feeman's first declaration. Nevertheless, because the court does not rely on the paragraphs of Mr. Feeman's declaration that Meshwerks seeks to strike and because the court adopts Meshwerks's recitation and characterization of the digital modeling process, the motion to strike Mr. Feeman's declaration is denied as moot.


I. Copyright Infringement.
The Copyright Act provides that “[c]opyright protection subsists ··· in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced or otherwise communicated, either directly or with the aid of a machine or device.” 17 U.S.C. § 102(a). “To qualify for copyright protection, a work must be original to the author.” Feist Pub., Inc. v. Rural Tele. Serv. Co., 499 U.S. 340, 345 (1991) (citing Harper & Row, Pubs., Inc. v. Nat. Enterps., 471 U.S. 539, 547-49 (1985)). In fact, originality is “[t]he sine qua non of copyright.” Id. The requirement of originality is met if the author created the work and the creation involved a creative component. See id. (“Original ··· means only that the work was independently created by the author ··· and ··· possesses at least some minimal degree of creativity.”). With regard to the presence of creativity, the United States Supreme Court has stated: “To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, no matter how crude, humble, or obvious it might be.” Id. (internal quotation omitted).The parties devote some time in their briefs to the presence of a presumption of copyright protection flowing from the registration certificates obtained by Meshwerks. See Grundberg v. Upjohn Co., 137 F.R.D. 372, 382 (D.Utah 1991) (“The registration certificate is prima facie evidence of copyright validity.”) The effect of the presumption in this case is not in dispute. The Toyota Defendants have the burden of proving that the digital models created by Meshwerks are not copyrightable. See id. (“[T]he presumption is not absolute: ‘possession of a registration certificate creates a rebuttable presumption that the work in question is copyrightable.’ “ (quoting Whimsicality Inc. v. Rubie's Costume Co., 891 F.2d 452, 455 (2d Cir.1989))). The Toyota Defendants attack the copyrightability of the Meshwerks models on creativity grounds, contending that the models fail to “make the grade,” because they do not exhibit the “creative spark” that serves as the necessary predicate for copyright protection, Feist, 499 U.S. at 345.In support of their position, the Toyota Defendants cite ATC Distribution Group, Inc. v. Whatever It Takes Transmissions & Parts, Inc., 402 F.3d 700 (6th Cir.2005), in which an auto parts dealer claimed that a competitor copied illustrations used in an auto parts catalog. See id. at 702-03, 712. The illustrations in ATC Distribution Group were “hand-drawn sketches of transmissions parts,” that were originally “copied from photographs cut out of competitors' catalogs.” Id. In reaching the conclusion that the hand-drawn illustrations were not entitled to copyright protection, the Sixth Circuit focused on the lack of creative intent, stating that “[t]he illustrations were intended to be as accurate as possible in reproducing the parts shown in the photographs on which they were based, a form of slavish copying that is the antithesis of originality.” Id. (citing J. Thomas Distribs. v. Greenline Distribs., 100 F.3d 956 (6th Cir.1996), available at No. 95-2100, 1996 WL 636138 at *1 (6th Cir. Oct. 31, 1996) (unpublished opinion) (“Plaintiff's spindle bearing was drawn with the express intention of duplicating on paper the appearance of an actual spindle bearing. Its reproduction involved absolutely no creative spark whatsoever.”)).*4 Meshwerks contends that its modeling process involved much more that mere “slavish copying,” id. Instead, Meshwerk analogizes its process to that undertaken by commercial photographers. In particular, Meshwerks relies on SHL Imaging, Inc. v. Artisan House, Inc., 117 F.Supp.2d 301 (S.D.N.Y.2000), in which the court held that product photographs of mirrored picture frames were entitled to copyright protection, id. at 311.The court in SHL Imaging, Inc. began its analysis with the acknowledgment that “[t]here is no uniform test to determine the copyrightability of photographs.” Id. at 309-10. Citing the “almost limitless creative potential” offered by the medium of photography, the court commented that “[t]he elements that combine to satisfy Feist's minimal ‘spark of creativity’ standard will necessarily vary depending on the photographer's creative choices.” SHL Imaging, Inc., 117 F.Supp.2d at 310. The court went on to state that “[t]he cumulative impact of these technical and artistic choices becomes manifest in renowned portraits, such as ‘Oscar Wilde 18.’ The measure or originality becomes more difficult to gauge as one moves from sublime expression to simple reproduction.” Id.The SHL Imaging, Inc. court viewed the product photographs that were the subject of the parties' dispute as less than sublime expression, but much more than simple reproduction. See id. at 311 (“While Lindner's works may not be as creative as a portrait by Dianne Arbus, they show artistic judgment and therefore meet the Feist standard.”). In reaching its conclusion that the product photographs were protected by copyright, the court focused on the artistic choices made by the photographer. See id. at 311 (“What makes plaintiff's photographs original is the totality of the precise lighting selection, angle of the camera, lens and filter selection.”). Nevertheless, the court noted that the copyright protection afforded to the photographs was narrow, stating that “[p]laintiff cannot prevent others from photographing the same frames, or using the same lighting techniques and blue sky reflection in the mirrors[;] ··· [p]ractically, the plaintiff's works are only protected from verbatim copying.” Id.The models created by Meshwerks are more analogous to the illustrations in ATD Distribution Group than to the photographs in SHL Imaging, Inc. The critical distinction between the present case and SHL Imaging, Inc. is the lack of a creative recasting of the Toyota vehicles. The photographer in SHL Imaging, Inc. used his camera to introduce new creative elements that elevated his photographs beyond mere replication. The illustrators in ATC Distribution Group, on the other hand, utilized their skill to reproduce, as accurately as possible, the auto parts they were attempting to depict. Similarly, in this case, Meshwerks's intent was to replicate, as exactly as possible, the image of certain Toyota vehicles. Although the tools used by the illustrators in ATC Distribution Group vary from the digital-modeling tools used by Meshwerks, the endeavor was identical: product-accurate representation without the introduction of new creative elements.*5 Todd v. Montana Silversmiths, Inc., 379 F.Supp.2d 1110 (D.Colo.2005), provides a helpful example of the distinction drawn in copyright law between skilled craft and creative, protectable, works. In Todd, a jewelry maker claimed that a competitor had impermissibly copied jewelry that the plaintiff had designed to resemble barbed wire. Id. at 1111. The court concluded that the plaintiff's design was not protected by copyright law. See id . at 1113-14. According to the Todd court, “[w]hile Plaintiff is no doubt a skilled artist capable of making jewelry with a certain aesthetic appeal, she has failed to show what copyrightable features she has added to her work to separate it from ordinary public domain barbed-wire.” Id. at 1113. The court, while acknowledging the skill and judgment involved in the design process, nevertheless declined to extend copyright protection to the unoriginal result of that process, stating that “[t]he fact remains that for all her aesthetic choices, the final arrangement of the elements in her jewelry still corresponds to the arrangement of public domain barbed-wire.” Id.Like the jeweler in Todd, Meshwerks no doubt made many judgments that required both skill and technical know-how. Those judgments may have even involved “creativity,” as that word is commonly used. But the digital models created by Meshwerks are not original. Just as the jewelry in Todd ultimately corresponded to common barbed-wire, the digital models created by Meshwerks correspond to the Toyota vehicles they were intended to represent. Accordingly, Meshwerks's models are not protected by copyright law and the Toyota Defendants are entitled to summary judgment on Meshwerks's copyright claims."


Anonymous said...

This is an unfortunate example of the hostility that many judges have to copyright protection in visual art. See, for example, the recent Ninth Circuit case on glass-blown depiction of a jellyfish, which, not surprisingly, looked like a jellyfish.

Anonymous said...

The case makes it seems as though simply applying a background to the models would have given it enough creativity to get copyright protection, but that the creation of the models, in and of themselves, was not enough.

That's an unfortunate decision as it seems to require a sort of "formality" for creativity. That is, bring something more than mere judgment on what is necessary to make a sufficiently exacting 3D model like by putting the model into some context.

That's very peculiar and definitely narrows any protection available to mesh models outside that available by contract.

Anonymous said...

So, according to this judge, photographs of cars are protectible but software models of them (which can take considerably more skill and creativity to create) aren't. Yeah, right. I'd like to see his or her analysis of the originality of Warhol's Campbell's Soup I.

I'd bet that CTA9 reverses this one.

LKB in Houston

Anonymous said...

I'd bet that CTA9 reverses this one.

The Ninth Circuit is not going to reverse this one. How much do ya wanna bet?

William Patry said...

I wouldn't bet a jellyfish sculpture on a reversal

Mark Jaffe said...

This decision reminds me of Gracen v. Bradford - the Wizard of Oz plates.

Anonymous said...

Anyone who thinks the 9th Circuit will reverse should take a look at

Anonymous said...

Anyone who thinks the 9th circuit will reverse should take a look at

Anonymous said...

The decision that I see as most germane is Ets-Hokin v. Skyy Spirits, 225 F.3d 1068 (9th Cir. 2000), which tellingly is not cited or distinguished by Judge Campbell.

If "product shot" photographs of a bottle of vodka can satisfy the minimal standards for originality (recall that CTA9 reversed the district court on this point), why can't a 3d model of a product -- especially when the district court admits that the SJ evidence shows that Meshwerks' efforts "may even have involved creativity"?

While CTA9's demonstrated history of wackiness makes any prediction uncertain (and also recognizing the considerable legal skills that will be brought to bear for the defendants by my former law partner [Herschel Fink]), I still like the plaintiff's chances for reversal given (1) the low standards for creativity required for copyrightability under Feist, (2) the high standards of proof required for summary judgment, and (3) the
Ets-Hokin v. Skyy Spirits decision.

LKB in Houston

Anonymous said...

I GUARANTEE the Ninth Circuit will not only not be reversing this, it won't even be touching it. As we discuss how unfortunate this decision is, maybe we should all remember that the District of Utah appeals to the TENTH CIRCUIT.

Anonymous said...

Wow. That's embarassing.

Anyone care to go off a little more about why Tena didn't mention Ets-Hokin v. Skyy Spirits, which isn't even controlling authority?!?

Anonymous said...

FYI, Meshwerks is currently appealing Judge Campbell's decision to the 10th Cir., Case No. 06-4222 (the opening brief is already filed). Meshwerks did rely on the Skyy vodka case below. However, Judge Campbell apparently applied the higher derivative works standard to the models, rather than the minimal orginality standard announced by the Supreme Court in Feist. She also made her decision without even looking at the models themselves. Needless to say, Meshwerks expects the decision to be reversed on appeal.

Lewis Francis, attorney for Meshwerks.