Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600.



            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 client.

            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 in dispute).

            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 infringement.

            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!


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