COURT STRENGTHENS PHOTOGRAPHER’S RIGHTS

As you will recall, last month I discussed a Ninth Circuit Court of Appeals case, Ets-Hokin v. Skyy Spirits, Inc., where the Court found that photographs of a vodka bottle were not derivative works of the product bottle, and therefore use of the photos without authorization could constitute copyright infringement.

Another case, SHL Imaging, Inc. v. Artisan House, Inc., in the southern district of New York, has confirmed that photographers have these rights, although on a different theory. Taken together, the two cases reinforce rights of photographers in the area of product photography.

The photographer, Steven Lindmer, created images of the defendants’ products – picture frames – and granted limited usage rights. The defendants subsequently used the images beyond the scope of the license and plaintiff sued for copyright infringement.

The defenses were the usual ones, that the images were not copyrightable because they were derivative works of the products themselves, that they were works for hire, or alternatively, that they were joint copyrights. The Court rejected all of these defenses.

As to the derivative work issue, the Court held that, to be a derivative work, any new work must "incorporate a substantial element of a preexisting work of authorship and recast, transform, or adapt those elements" and that a photograph is entirely different and separate from the authorship of the product (or other medium) of expression. For example, a photograph cannot be a derivative work of a sculpture. The Court inferred that a photograph could be a derivative work of another photograph, but only where there is, for instance, alteration of expressive elements or cropping.

The Court thus disagreed with the Ninth Circuit’s analysis of the issue of copyrightability of the underlying work.

This Court, like the Ninth Circuit, discussed the history of copyright protection afforded to photography, concluding that photographs must meet some minimal level of creativity to be eligible for copyright protection. This level is easy to meet professional photography, given the creative selective elements of choice of cameras, lenses, lighting, angles, "lay-out", shading, positioning, and so forth.

Left unresolved in this decision is whether a new work can be a derivative work when the underlying work is not copyrightable while the new one is transformative.

These litigations could have been avoided in the first place if the contracts had explicably stated the intent of the parties – that copyright to the new photos were to be retained by the photographer. As I have repeatedly stated – get it in writing!

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