Thursday, March 20, 2008

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.


numist said...

Quick note, the GXR 1200 is called a Hayabusa, not a Hayabasa.

Great read.

robert e said...

"Judge Moody specifically considered and rejected Schrock, ruling on summary judgment for defendant."

Should that last word be "plaintiff" (i.e. Latimer)?

Michael La Porte said...

A thought just occurred to me that hadn't before I began reading your blog (fwiw, I'm learning, not trying to be cheeky):

In your view, would the Rasheed Wallace / Nike Ad / Tatoo Copyright controversy, then, have not been a controversey at all since Nike would not have created an "unauthorized derivative work" of the Wallace (and his "joint author" / tatoo artist) arm tatoo, but instead its own, copyrightable photograph, which happened also, to include that tatoo?

William Patry said...

Robert E., I corrected the posting to add something I had mistakenly deleted in the first posting, a ruling for some of the defendants on implied license. Michael, even though a photograph isn't a derivative work of the object photographed doesn't mean there might not be violation of the reproduction right. If I take a photo of a copyrighted work of art and sell copies, I am violating the reproduction art even though my photo is not a derivative work of the art work.
On the Ty case, we argued the opposite, and Judge Posner just got it wrong.

Bruce Boyden said...

The idea that photography is "mere depiction" seems inconsistent with the theory of why photographs are copyrightable in the first place, namely that the photographer "recasts, transforms or adapts" reality merely by taking the photo, framing the image, choosing the lighting, posing the subject, etc. Related to that, the SHL Imaging court seems to set a higher threshold for originality of photographs than other courts have. Also, this Florida case and SHL Imaging seem to have separate standards for infringement and for derivative works, which at least one (unnamed) treatise would reject. So for various reasons, I'm not sure this theory of why a photograph of a copyrighted work is not a derivative work of the copyrighted work will hold up.

William Patry said...

Bruce, I think you are recasting the issue in a way that makes your conclusion seem reasonable, but I don't agree that the issue should be framed the way you have. Photos are protected, even under SHL, under ordinary originality, a standard that will be satisfied in different ways depending on the type of work involved. I don't think recasting reality is one of those ways for photos.

Bruce Boyden said...

Here's what I have in mind: When I take a photograph of a subject, what's supposed to be copyrightable about that is not the subject itself, obviously, but the various creative choices I add to the subject in taking the photograph: lighting, filter, framing, depth of field, pose, etc. But didn't the photographer here make all of those choices in taking the photo of the motorcycle? If so, isn't the addition of those separately copyrightable bits to the original "recast[ing], transform[ing], or adapt[ing]" it in some way? If the addition of those elements is not enough to result in a recasting, transforming, or adapting of a copyrighted subject, then I don't see how their addition to a non-copyrighted subject makes the resulting photograph original.

William Patry said...

Thanks Bruce for your always helpful comments. My take, for what its worth, is that there was originality in the photograph for all the reasons you give, but that those original contributions had (1) nothing to do with the originality that went into the original artwork; and, (2) did not recast the originality in the original artwork. On this last point, what elements of the original do you think was recast by virtue of plaintiff taking a picture of it (I ask respectfully)?

Anonymous said...

I certainly won't speak for Mr. Boyden, but even though I am a photographer, I wouldn't say that a photograph shouldn't ever be considered a derivative work of a copyrighted artwork.

To draw an analogy, and then draw it ridiculously and ask you where the line of ridiculousness is, consider this:

1) If I buy a copyrighted sculpture of a human being, paint it blue and put a skirt on it, I have created, in my opinion, a derivative work. If I take a photograph of the sculpture, either painted blue or lit with blue light so that it appears to be blue, and add a skirt in post-production, why have I not also created a derivative work?

2) If your answer is that the photograph is inherently different, suppose that I then take my blue skirt-wearing sculpture, and squash it flat (we assume that it is made of some material which squashes evenly.) I hang it on a wall, next to a print of a photograph of the original sculpture, digitally modified and enlarged to look the same. Is the modified sculpture still a derivative work? Is the photograph? If the former is but the latter is not, why the distinction?

If your argument is that photographs cannot, under any circumstances, be considered derivative works, I won't gainsay you on the face of your argument (the courts are split, obviously) but I'm not sure the Copyright Statute supports the argument very strongly. Of course, it doesn't matter what I think, it matters what the courts (and eventually the Supremes will probably have to get involved) think.

I hasten to add that your argument to the reproduction right being enough, in and of itself, to offer sculptors et al reasonable protection against photographers is a sound one. The Republic, or even that part of it composed of sculptors, is in no danger if your position prevails. I just like to argue.


William Patry said...

Saint Marc:

The important point, which you add, is that the derivative work question is an academic one, which I discuss merely to tease out the nature of what makes a derivative work a derivative work. As a practical matter, a photo of an work of art will, as a prima facie matter, violate the reproduction right, entitling the photographer to all the remedies provided for in the copyright act.

There can be some fun hypos though. Lets say one photographer (S. Levine, R. Prince) makes an exact duplicate of an earlier photographers' work (W. Evans), and says this is my, derivative work because I am presenting it in a different context. I don't think so. Nor do I think taking an exact photo of artwork on a motorcycle is. But, if I take a Walker Evans photograph, colorize it, crop it, and add a new character, I have made a derivative work.

Your sculpture examples are in between. Just painting the sculpture blue obviously changes the sculpture but an exact picture of the changed sculpture doesn't change the sculpture. But taking a photograph and then changing the appearance of the photograph in post-production -- say be changing the color, distorting the perspective -- might well constitute a derivative work. In your second example, squashing something flat doesn't seem like recasting as much as destruction, but then what about the cracks in DuChamps Bride Laid Bare sculpture, aside from the non-volitional nature of how the cracks came about?

Anonymous said...

Mr. Patry:

It is interesting to note that in your range of hypos, the closer the photograph is to the original artwork, the more likely that it is not a derivative work (and therefore the photographer can copyright it and gain protection.) Interesting counter-analogies to various principles of trademark law can be made - although I won't, because I don't like to encourage that kind of thing. (I get real nervous when judges do it.)

While the distinction is in some ways academic, it's going to make a very real difference to photographers as to whether or not they can use copyright against unlicensed users of their work in such cases. Since courts often like to claim pre-emption in contract cases involving copyrighted or copyrightable works of art, arguments to things like quantum meruit, or unjust enrichment, are going to be uphill slogs in cases like the ones at hand.

I was on the winning side of just such a case last year - a fellow sued my client under various theories for the alleged unjust use of some computer software under many novel theories, including contract, unjust enrichment, and whatever else he could think of. The Seventh Circuit agreed with the District Court's summary judgment ruling that whatever he was saying in his complaint, his only viable claim, due to pre-emption, was copyright infringement. He had no registration and could not get one. Game Over. They didn't even seriously examine the merits of his contract and tort claims.

I wonder, to argue against myself, if it wouldn't be to the net benefit of the copyright system to go with the FL decision. It wouldn't seriously affect the rights of original authors (reproduction rights still prevail) but it would give additional protection to photographers, who would still be answerable to the original authors but could prevent third parties from merrily making off with the fruits of their labor without compensation. That would seem to be a pretty contrary result to the general principles of copyright.


William Patry said...

Dear St., you begin:

"It is interesting to note that in your range of hypos, the closer the photograph is to the original artwork, the more likely that it is not a derivative work (and therefore the photographer can copyright it and gain protection.)"

But doesn't it make sense that would be the case: the definition of a derivative work involves making changes, so if you didn't make many changes you didn't engage in derivative activity.

The distinction is usually academic for another reason: in order for infringement to result for violation of both the reproduction and the derivative rights, a material amount of the original has to have been copied.

Anonymous said...

Mr. Patry:

Oh, it makes perfect sense. It's quite logical. I just thought it was interesting to note that the more perfect the copy, the more likely it is to be copyrightable by the photographer. In a sense this rewards him for his lack of originality, although as a photographer I know that making a really, really good photograph of an artwork is not a trivial exercise.

Of course, the converse is that the more perfect the copy, the more likely that the photographer will run afoul of the reproductive right of the original author! And I think in almost all cases, that right is going to be broader than the photographer's right, which means that if the third-party infringer can get the original author on his side, the photographer is going to lose either way. (And if not, the original author can probably come in and tell the photographer, "Congratulations on defending your copyright. Now hand over your winnings or I'll sue you for infringing my reproduction right.")

Thank you for a very informative discussion.


William Patry said...

Thanks to you for prompting the discussion and making me spell out my thoughts more. You gotta love blogs; much more fun than writing treatises where there is no interaction.

Bruce Boyden said...

My concern is that, as I understand the doctrine in this area, including not just photographs but also video, there is no such thing as an "exact" reproduction of an object by capturing its image on film, with the possible exception of the creation of digital images of artwork where the frame exactly corresponds to the frame of the original painting. (E.g., Bridgeman Art Library.) For every other video and photograph, the taker chooses the subject, chooses the angle, chooses the lighting (perhaps), chooses the frame, chooses the distance, and may choose the pose. *All* of that affects the way that the original is captured on the film, whether it's the original Oscar Wilde or the original motorcycle with artwork. Thus, merely by taking the photograph after making such choices, the photographer is recasting or transforming or adapting the subject, just as Sarony was transforming or recasting or adapting Oscar Wilde (else there would have been no copyright, because Sarony did not have a copyright in Oscar Wilde's image per se).

I'm not saying I like this doctrine, mind you. But the way I read the cases, the amount of transformation a photographer has to accomplish to turn a subject-as-it-exists-in-reality into an original work of authorship is minimal. Given that, I don't see why the same wouldn't be true of the case where the subject-as-it-exists-in-reality is itself a copyrighted work.

Anonymous said...

Re: Latimer case. Right result, wrong reason.

If we assume that a photograph is of a protected work (e.g., a sculpture or a painting, and not of an unprotected useful article), then I think it is manifest that photographing the work constitutes either reproduction or creation of a derivative work.

The proper analysis, IMO, should be under fair use: where, as in this case, photographing the artwork on the motorcycle would in no way likely impact the market for such artwork (and may well have been de minimus), I rather doubt that infringement would be found.

Additionaly, a query for the good Prof.: if photographing protected works cannot, per se, be the creation of an unauthorized derivative work, then why did Congress feel the need to create an explicit statutory exception (120(a)) for photographs of architectural works? Doesn't the fact that Congress has made such a per se exception *only* for photographs of architectural works imply as a matter of statutory construction (expressio unius est exclusio alterius) that photographs of other protected works are not per se noninfringing? Or, stated differently, if Prof. Patry's construction is accepted, then isn't 120(a) superfluous?

LKB in Houston

Anonymous said...

It is interesting to note that in your range of hypos, the closer the photograph is to the original artwork, the more likely that it is not a derivative work (and therefore the photographer can copyright it and gain protection.)

But that cannot be right. In Bridgeman you had a whole lot of reproduction and no copyright. Wouldn't it make a lot more sense to view this as an issue of infringement rather than an issue of copyrightability (sort of an Altai analysis, except for photos).

And as Professor Patry has emphasized it makes no difference (in determining the infringement of the photographs themselves) whether they are unauthorized reproductions or unauthorized derivative works.