stmarc (stmarc) wrote in copyright,

  • Mood:

Photographs of Copyrighted Artworks as Derivative Works

There is now a split in the Federal courts as to whether a photograph of a copyrighted artwork is a derivative artwork of that original artwork. In January, a judge in Chicago, following precedent in that district, ruled that it is. Last week, a judge in Florida ruled that it is not. The question is important because a derivative work cannot be copyrighted without the consent of the author of the original work, which means that the photographer has almost no legal protection from what would otherwise be infringing use. (You cannot sue for copyright infringement without a copyright registration.)

The Supreme Court may very well have to resolve this issue if the split continues to develop. However, what I want to point out is this:

Even if the view that photographs are not derivative works prevails, that does not mean that photographers do not have to worry about depicting copyrighted artworks in their photographs.

The holder of a copyright has several exclusive rights, one of which is the right of reproduction. The right of reproduction is good against reproductions in different media, including photographs. This is entirely independent of the copyrightability of those photographs.

To set forth an example of who is affected differently by the two positions, consider the following fact pattern (which is taken from the Florida case.)

A, a motorcycle manufacturer, hires B, an artist to customize a motorcycle (assume that A does not ask for a copyright assignment or a work-for-hire contract, but does obtain at least a license from B to use the customized motorcycles in advertising.)

B creates a custom paint and deco scheme including copyrightable elements.

C photographs the motorcycle after B decorates it.

A gets the photographs and uses them for commercial advertising without an appropriate license from C.

C claims copyright infringement by A.

What result?

In the first line of cases, C's photographs are derivative works of B's custom deco scheme. C cannot copyright a derivative work without the consent of B, the creator of the underlying work. Assuming B has not so consented, C's images cannot be registered. Without a copyright registration, C cannot sue A. A wins.

In the second line of cases, C's photographs are not derivative works of B's custom deco scheme. C may copyright them without B's consent. Once C's copyright registration issues, C can sue A. A loses.

In *either* line of cases, B can sue C for unauthorized reproduction of his artwork, but B cannot grant A the right to use C's photographs under either theory (although in the first, it wouldn't matter as to A versus C.) If C can copyright his photographs, his copyright is good against the entire world, including B. C's use of the photographs may be subordinate to B's reproduction right, but that gives no rights in the photographs to B other than to prevent their being used in a manner which would infringe B's copyright.

While I don't know that I agree that the Copyright Statute is meant to ensure that photographs can't be derivative works, I tentatively tend to agree with the FL reasoning. Such a result still makes photographers answerable to original authors under the reproductive right, so it doesn't lose anybody anything. And it gives photographers the right to claim copyright and prevent third parties from using their photographs without permission under the shield of the copyright laws. That would seem like a pretty contrary result to the general purpose of said laws.

In some ways, the distinction is academic, but 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.



  • Post a new comment


    Anonymous comments are disabled in this journal

    default userpic

    Your IP address will be recorded