PHOTOGRAPHY NOT A DERIVATIVE WORK!
Professional photographers have long assumed that they own the
copyright to the photographs they create for advertising, and that they retain
all rights thereto except for the usage licensed to the client, unless the photographs
were created as a work-made-for-hire, or the copyright was transferred to the
The Ninth Circuit Court of Appeals, in Joshua Ets - Hokin v. Skyy
Spirits, Inc. recently reaffirmed this principal in rejecting a theory that
the photographs were derivative works which did no more than copy the product
- the underlying work - and therefore were not independently copyrightable.
Since this reversed a District Court's dismissal of the Photographer's
case, it is little wonder why photographers are sighing with relief.
Plaintiff was retained to photograph a Skyy Spirits Vodka bottle
for advertising purposes. The bottle appears in front of a plain backdrop, with
back lighting. Under the contract, plaintiff retained all rights to the photos
except for a limited usage license granted to Skyy (the terms of which being
Skyy claimed the photos were unsatisfactory and hired other photographers
to photograph the bottle, apparently on terms more favorable to Skyy than those
negotiated by plaintiff. Skyy then used plaintiff's photos for various advertising
purposes which are alleged to extend beyond those licensed, as well as the other
photographs which are alleged to be imitations of plaintiff's work.
Plaintiff sued Skyy, its advertising agency and individuals involved
for copyright infringement of his photos and for creating photos that infringed
his photos. He did not sue the other photographers (for reasons left unstated).
The Appellate Court concluded that, given the low threshold of
originality required under the Copyright Act, as well as what it characterized
"as the longstanding and consistent body of case law holding that photographs
generally satisfy this minimal standard", plaintiff's photography met the standard
and was thus entitled to copyright protection.
Having determined that plaintiff's photos were copyrightable, the
Court then addressed the key issue of the case - what is a derivative work and
it must be based upon a copyrighted work?
In summary the Court said that a derivative work requires a process
of recasting, transforming, or adapting one or more preexisting works with the
preexisting work coming within the general subject matter of copyright.
Having concluded that the preexisting work (in this case the Vodka
bottle) had to be copyrightable, the Court determined the bottle at issue was
not, in fact, copyrightable, finding that it had no artistic features separable
from its utilitarian ones. The Court stated "it is essentially a functional
bottle without a distinctive shape".
The Court declined to rule on whether the label itself was copyrightable.
Instead it held the product shots were of the bottle as a whole, and not of
the label. This lead to the obvious conclusion that, since the object of the
photos - the bottle - was a useful article not subject to copyright protection,
and not shots "merely, or even mainly, of its label", the bottle did not qualify
as a preexisting work. Therefore the photos can not be derivative works.
Having reversed the District Court on the theory of the case, the
case was sent back to the District Court to determine whether there was copyright
For professional photographers, the decision is a welcome one.
It not only reversed a decision that could have caused chaos in the industry,
but established a clear line as to the requirements of preexisting work.
Left open for another day are issues of whether more creative products
would qualify as being separately copyrightable. But, alas, that is the subject
of another article!