Wednesday, January 22, 2014

Class 4: Derivative Works


In Class 3, we learned that originality and fixation are constitutional requirements of requirement, and that originality requires both independent creation by an author and a creative element.

The burden imposed by the creation and creativity requirements is low. A work is independently created by an author so long as it is not a copy of an existing work, even if it closely resembles an existing work. And originality only requires a minimal amount of creativity.

We also learned that copyright does not depend on the value of a work. In particular, the aesthetic non-discrimination principle adopted in Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903) provides that copyright protects commercial works, as well as artistic works. A work is original and protected by copyright if it is independently created by an author and has a creative element, irrespective of its aesthetic value.

Derivative Works & Compilations

Derivative works and compilations are works that consist in part or in whole of preexisting material. A derivative work is created by recasting, transforming, or adapting preexisting works. A compilation is created by selecting, organizing, or arranging any preexisting material.

Section 103 of the Copyright Act provides that copyright protects derivative works and compilations:
(a) The subject matter of copyright as specified by section 102 includes compilations and derivative works, but protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully.
(b) The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material.
17 U.S.C. § 103.

Notably, copyright only protects the original elements of a derivative work or compilation: "The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work."

Also, copyright does not protect any infringing elements of a derivative work or compilation: "protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully."

And the creation of a derivative work or compilation does not affect the copyright status of the preexisting material: "The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material."

In this class, we will examine originality in derivative works. In Class 5, we will examine originality in compilations. And in Class 6, we will examine the idea/expression dichotomy.

Derivative Works

Section 101 of the Copyright Act defines a "derivative work" as:
[A] work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a “derivative work”.
17 U.S.C. § 101.

In other words, a derivative work is a work that consists in part or in whole of preexisting works, which an author has recast, transformed, or adapted in some way. Copyright can only protect the original elements of a derivative work, which may include the recasting, transformation, or adaptation of the preexisting work, if they are independently created by an author and have a creative element.

By definition, a derivative work copies elements of one or more preexisting works, and may infringe on one of those works. If a derivative work infringes on one of the works it copies, the copyright owner may obtain an injunction prohibiting the publication of the derivative work. The author of a derivative work can avoid an infringement action by owning the copied works, licensing the copied works, using works that are in the public domain, or showing that the derivative work is a fair use of the copied works.

Notably, a work that copies the ideas expressed by a preexisting work is not a derivative work, because it is not a copy of that work. Copyright cannot protect ideas, so the author of the new work has not copied a protected element of the preexisting work.

  1. A derivative work is a work that copies an element of a preexisting work. How much copying is necessary for a work to become a derivative work?
  2. Nate Harrison's video Can I Get An Amen? (2004) describes the history of the use of the Amen Break. Are all of the songs that use the Amen Break derivative works?

  3. Many filmmakers, including George Lucas, regularly use the "Wilhelm Scream." Are all of these films derivative works?


A reproduction of a preexisting work is a derivative work, because it is based on a preexisting work. Accordingly, a reproduction may infringe the preexisting work, and copyright can protect a reproduction if and only if it has an original element.

FRANK, Circuit Judge. 
1. Congressional power to authorize both patents and copyrights is contained in Article 1, § 8 of the Constitution. In passing on the validity of patents, the Supreme Court recurrently insists that this constitutional provision governs. On this basis, pointing to the Supreme Court's consequent requirement that, to be valid, a patent must disclose a high degree of uniqueness, ingenuity and inventiveness, the defendants assert that the same requirement constitutionally governs copyrights. As several sections of the Copyright Act — e. g., those authorizing copyrights of "reproductions of works of art," maps, and compilations — plainly dispense with any such high standard, defendants are, in effect, attacking the constitutionality of those sections. But the very language of the Constitution differentiates (a) "authors" and their "writings" from (b) "inventors" and their "discoveries." Those who penned the Constitution, of course, knew the difference. The pre-revolutionary English statutes had made the distinction. In 1783, the Continental Congress had passed a resolution recommending that the several states enact legislation *101 to "secure" to authors the "copyright" of their books. Twelve of the thirteen states (in 1783-1786) enacted such statutes. Those of Connecticut and North Carolina covered books, pamphlets, maps, and charts. 
Moreover, in 1790, in the year after the adoption of the Constitution, the first Congress enacted two statutes, separately dealing with patents and copyrights. The patent statute, enacted April 10, 1790, 1 Stat. 109, provided that patents should issue only if the Secretary of State, Secretary of War and the Attorney General, or any two of them "shall deem the invention or discovery sufficiently useful and important"; the applicant for a patent was obliged to file a specification "so particular" as "to distinguish the invention or discovery from other things before known and used * * *"; the patent was to constitute prima facie evidence that the patentee was "the first and true inventor or * * * discoverer * * * of the thing so specified." The Copyright Act, enacted May 31, 1790, 1 Stat. 124, covered "maps, charts, and books". A printed copy of the title of any map, chart or book was to be recorded in the Clerk's office of the District Court, and a copy of the map, chart or book was to be delivered to the Secretary of State within six months after publication. Twelve years later, Congress in 1802, 2 Stat. 171, added, to matters that might be copyrighted, engravings, etchings and prints. 
Thus legislators peculiarly familiar with the purpose of the Constitutional grant, by statute, imposed far less exacting standards in the case of copyrights. They authorized the copyrighting of a mere map which, patently, calls for no considerable uniqueness. They exacted far more from an inventor. And, while they demanded that an official should be satisfied as to the character of an invention before a patent issued, they made no such demand in respect of a copyright. In 1884, in Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 57, 4 S.Ct. 279, 28 L.Ed. 349, the Supreme Court, adverting to these facts said: "The construction placed upon the constitution by the first act of 1790 and the act of 1802, by the men who were contemporary with its formation, many of whom were members of the convention which framed it, is of itself entitled to very great weight, and when it is remembered that the rights thus established have not been disputed during a period of nearly a century, it is almost conclusive." Accordingly, the Constitution, as so interpreted, recognizes that the standards for patents and copyrights are basically different. 
The defendants' contention apparently results from the ambiguity of the word "original." It may mean startling, novel or unusual, a marked departure from the past. Obviously this is not what is meant when one speaks of "the original package," or the "original bill," or (in connection with the "best evidence" rule) an "original" document; none of those things is highly unusual in creativeness. "Original" in reference to a copyrighted work means that the particular work "owes its origin" to the "author." 8 No large measure of novelty is necessary. Said the Supreme Court in Baker v. Selden, 101 U.S. 99, 102-103, 25 L.Ed. 841: "The copyright of the book, if not pirated from other works, would be valid without regard to the novelty, or want of novelty, of its subject-matter. The novelty of the art or thing described or explained has nothing to do with the validity of the copyright. To give to the author of the book an exclusive property in the art described therein, when no examination of its novelty has ever been officially made, would be a surprise and a fraud upon the public. That is the province of letters-patent, not of copyright. The claim to an invention or discovery of an art or manufacture must be subjected to the examination of the Patent Office before an exclusive right therein can be obtained; and it can only be secured by a patent from the government. The difference between the two things, letters-patent and copyright, may be illustrated by reference to the subjects just enumerated. Take the case of medicines. Certain mixtures are found to be of great value in the healing art. If the discoverer writes and publishes a book on the subject (as regular physicians generally do), he gains no exclusive right to the manufacture and sale of the medicine; he gives that to the public. If he desires to acquire such exclusive right, he must obtain a patent for the mixture as a new art, manufacture, or composition of matter. He may copyright his book, if he pleases; but that only secures to him the exclusive right of printing and publishing his book. So of all other inventions or discoveries." 
In Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 250, 252, 23 S.Ct. 298, 47 L.Ed. 460, the Supreme Court cited with approval Henderson v. Tompkins, C.C., 60 F. 758, where it was said, 60 F. at page 764: "There is a very broad distinction between what is implied in the word `author,' found in the constitution, and the word `inventor.' The latter carries an implication which excludes the results of only ordinary skill, while nothing of this is necessarily involved in the former. Indeed, the statutes themselves make broad distinctions on this point. So much as relates to copyrights * * * is expressed, so far as this particular is concerned, by the mere words, `author, inventor, designer or proprietor,' with such aid as may be derived from the words `written, composed or made,' * * *. But a multitude of books rest safely under copyright, which show only ordinary skill and diligence in their preparation. Compilations are noticeable examples of this fact. With reference to this subject, the courts have not undertaken to assume the functions of critics, or to measure carefully the degree of originality, or literary skill or training involved." 
It is clear, then, that nothing in the Constitution commands that copyrighted matter be strikingly unique or novel. Accordingly, we were not ignoring the Constitution when we stated that a "copy of something in the public domain" will support a copyright if it is a "distinguishable variation"; or when we rejected the contention that "like a patent, a copyrighted work must be not only original, but new", adding, "That is not * * * the law as is obvious in the case of maps or compendia, where later works will necessarily be anticipated." All that is needed to satisfy both the Constitution and the statute is that the "author" contributed something more than a "merely trivial" variation, something recognizably "his own." Originality in this context "means little more than a prohibition of actual copying." No matter how poor artistically the "author's" addition, it is enough if it be his own. Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 250, 23 S.Ct. 298, 47 L.Ed. 460. 
On that account, we have often distinguished between the limited protection accorded a copyright owner and the extensive protection granted a patent owner. So we have held that "independent reproduction of a copyrighted * * * work is not infringement", whereas it is vis a vis a patent. Correlative with the greater immunity of a patentee is the doctrine of anticipation which does not apply to copyrights: The alleged inventor is chargeable with full knowledge of all the prior art, although in fact he may be utterly ignorant of it. The "author" is entitled to a copyright if he independently contrived a work completely identical with what went before; similarly, although he obtains a valid copyright, he has no right to prevent another from publishing a work identical with his, if not copied from his. A patentee, unlike a copyrightee, must not merely produce something "original"; he must also be "the first inventor or discoverer." "Hence it is possible to have a plurality of valid copyrights directed to closely identical or even identical works. Moreover, none of them, if independently arrived at without copying, will constitute an infringement of the copyright of the others." 
The difference between patents and copyrights is neatly illustrated in the design patent cases. We have held that such a patent is invalid unless it involves "a step beyond the prior art", including what is termed "inventive genius." A. C. Gilbert Co. v. Shemitz, 2 Cir., 45 F.2d 98, 99. We have noted that, as in all patents, there must be a substantial advance over the prior art. Neufeld-Furst & Co. v. Jay-Day Frocks, 2 Cir., 112 F.2d 715, 716. We have suggested that relief for designers could be obtained if they were permitted to copyright their designs, and that, until there is an amendment to the copyright statute, "new designs are open to all, unless their production demands some salient ability." Nat Lewis Purses v. Carole Bags, 2 Cir., 83 F.2d 475, 476. We have noted that if designers obtained such a statute, it would give them "a more limited protection and for that reason easier to obtain. * * *" White v. Leanore Frocks, Inc., 2 Cir., 120 F.2d 113, 115. 
2. We consider untenable defendants' suggestion that plaintiff's mezzotints could not validly be copyrighted because they are reproductions of works in the public domain. Not only does the Act include "Reproductions of a work of art", but — while prohibiting a copyright of "the original text of any work * * * in the public domain" — it explicitly provides for the copyrighting of "translations, or other versions of works in the public domain". The mezzotints were such "versions." They "originated" with those who made them, and — on the trial judge's findings well supported by the evidence — amply met the standards imposed by the Constitution and the statute. There is evidence that they were not intended to, and did not, imitate the paintings they reproduced. But even if their substantial departures from the paintings were inadvertent, the copyrights would be valid. A copyist's bad eyesight or defective musculature, or a shock caused by a clap of thunder, may yield sufficiently distinguishable variations. Having hit upon such a variation unintentionally, the "author" may adopt it as his and copyright it. 
Accordingly, defendants' arguments about the public domain become irrelevant. They could be relevant only in their bearing on the issue of infringement, i. e., whether the defendants copied the mezzotints. But on the findings, again well grounded in the evidence, we see no possible doubt that defendants, who did deliberately copy the mezzotints, are infringers. For a copyright confers the exclusive right to copy the copyrighted work — a right not to have others copy it. Nor were the copyrights lost because of the reproduction of the mezzotints in catalogues. 
* * *

Thomas Gainsborough, The Blue Boy (c. 1770)

Thomas Gainsborough, The Blue Boy (c. 1770) (mezzotint reproduction)

  1. Bell accused Catalda of infringing its copyright in mezzotint reproductions of several 18th and 19th Century paintings, including Thomas Gainsborough's The Blue Boy. The court held that the mezzotint reproductions were original works of authorship protected by copyright. Do you agree? What if Catalda made a mezzotint of the mezzotint?
  2. Why does the court find that a mezzotint is a derivative work, rather than a copy? How is a mezzotint created?
POSNER, Circuit Judge. 
This appeal brings up to us questions of some novelty, at least in this circuit, regarding implied copyright licenses and the required originality for copyrighting a derivative work. 
In 1939 MGM produced and copyrighted the movie “The Wizard of Oz.” The central character in the movie, Dorothy, was played by Judy Garland. The copyright was renewed by MGM in 1966 and is conceded, at least for purposes of this case, to be valid and in effect today. In 1976 MGM licensed Bradford Exchange to use characters and scenes from the movie in a series of collectors' plates. Bradford invited several artists to submit paintings of Dorothy as played by Judy Garland, with the understanding that the artist who submitted the best painting would be offered a contract for the entire series. Bradford supplied each artist with photographs from the movie and with instructions for the painting that included the following: “We do want your interpretation of these images, but your interpretation must evoke all the warm feeling the people have for the film and its actors. So, your Judy/Dorothy must be very recognizable as everybody's Judy/Dorothy.” 
Jorie Gracen, an employee in Bradford's order-processing department, was permitted to join the competition. From photographs and her recollections of the movie (which she had seen several times) she made a painting of Dorothy as played by Judy Garland; Figure 1 at the end of this opinion is a reproduction of a photograph of Miss Gracen's painting (an inadequate one, because the original is in color). Bradford exhibited it along with the other contestants' paintings in a shopping center. The passersby liked Miss Gracen's the best, and Bradford pronounced her the winner of the competition and offered her a contract to do the series, as well as paying her, as apparently it paid each of the other contestants, $200. But she did not like the contract terms and refused to sign, and Bradford turned to another artist, James Auckland, who had not been one of the original contestants. He signed a contract to do the series and Bradford gave him Miss Gracen's painting to help him in doing his painting of Dorothy. The record does not indicate who has her painting now. 
Gracen's counsel describes Auckland's painting of Dorothy as a “piratical copy” of her painting. Bradford could easily have refuted this charge, if it is false, by attaching to its motion for summary judgment a photograph of its Dorothy plate, but it did not, and for purposes of this appeal we must assume that the plate is a copy of Miss Gracen's painting. 
This is not an absurd supposition. Bradford, at least at first, was rapturous about Miss Gracen's painting of Dorothy. It called Miss Gracen “a true prodigy.” It said that hers “was the one painting that conveyed the essence of Judy's character in the film ... the painting that left everybody saying, ‘That's Judy in Oz.’ ” Auckland's deposition states that Bradford gave him her painting with directions to “clean it up,” which he understood to mean: do the same thing but make it “a little more professional.” 
Miss Gracen also made five drawings of other characters in the movie, for example the Scarecrow as played by Ray Bolger. Auckland's affidavit states without contradiction that he had not seen any of the drawings when he made his paintings of those characters. Pictures of the plates that were made from his paintings are attached to the motion for summary judgment filed by MGM and Bradford, but there is no picture of his Dorothy plate, lending some support to the charge that it is a “piratical copy.” But apparently the other plates are not copies at all. 
Auckland completed the series, and the plates were manufactured and sold. But Miss Gracen meanwhile had obtained copyright registrations on her painting and drawings, and in 1978 she brought this action for copyright infringement against MGM, Bradford, Auckland, and the manufacturer of the plates. MGM and Bradford counterclaimed, alleging among other things that Miss Gracen had infringed the copyright on the movie by showing her drawings and a photograph of her painting to people whom she was soliciting for artistic commissions. 
The district court granted summary judgment against Miss Gracen on both the main claim and the counterclaim. It held that she could not copyright her painting and drawings because they were not original and that she had infringed MGM's copyright. The court entered judgment for $1500 on the counterclaim. Neither the judgment nor the opinion accompanying it refers to the noncopyright claims in the counterclaim, thus inviting the question whether that judgment is final and hence appealable under 28 U.S.C. § 1291. But this is not a serious problem, because the judgment purports to dispose of “their [MGM's and Bradford's] counterclaims” and both sides have treated it as disposing of the counterclaim in its entirety. The noncopyright claims must therefore be regarded as having been either dismissed or abandoned. 
The briefs and argument in this court follow the district court in treating the principal question as whether Miss Gracen's painting and drawings are sufficiently original to be copyrightable as derivative works under 17 U.S.C. § 103. But this emphasis may be misplaced. The question of the copyrightability of a derivative work (“a work based upon one or more preexisting works, such as a[n] ... art reproduction ... or any other form in which a work may be recast, transformed, or adapted,” 17 U.S.C. § 101) usually arises in connection with something either made by the owner (or a licensee) of the copyright on the underlying work, as in Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905, 909 (2d Cir.1980), or derived from an underlying work that is in the public domain, as in L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486, 491-92 (2d Cir.1976) (en banc). At issue in such a case is not the right to copy the underlying work but whether there is enough difference between the derivative and the underlying work to satisfy the statutory requirement of originality, see 17 U.S.C. § 102(a), and thus make the derivative work copyrightable. 
Since the copyright owner's bundle of exclusive rights includes the right “to prepare derivative works based upon the copyrighted work,” 17 U.S.C. § 106(2), even if Miss Gracen's painting and drawings had enough originality to be copyrightable as derivative works she could not copyright them unless she had authority to use copyrighted materials from the movie. “[P]rotection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully.” 17 U.S.C. § 103(a). 
Miss Gracen does not claim that she painted the 16-year-old Judy Garland who appeared in “The Wizard of Oz” in 1939 from life or from photographs taken from the movie, or that her painting is not of Judy Garland but is an imaginative conception of the character Dorothy. The painting was based on the movie, both as independently recollected by Miss Gracen and as frozen in the still photographs that Bradford supplied her. As with any painting there was an admixture of the painter's creativity-how much we shall consider later-but that it is a painting of Judy Garland as she appears in photographs from the movie (such as the photograph reproduced at the end of this opinion as Figure 2), and is therefore a derivative work, is beyond question. The same is true of the drawings. 
Therefore, if Miss Gracen had no authority to make derivative works from the movie, she could not copyright the painting and drawings, and she infringed MGM's copyright by displaying them publicly. But obviously she had some authority, having been invited by Bradford to make a painting of Dorothy based on the movie. And although Bradford was not expressly authorized to sublicense the copyright in this way, there can be no serious doubt of its authority to do so. Thus the question is not whether Miss Gracen was licensed to make a derivative work but whether she was also licensed to exhibit the painting and to copyright it. 
Bradford made no written agreement with the contestants for the disposition of their paintings. It could have required each contestant to give it full rights as consideration for $200 and a shot at a potentially lucrative contract, but it did not do so, not in writing anyway, and though it argues that it “bought” Miss Gracen's painting of Dorothy for $200 we find no evidence to support this characterization of the transaction. Miss Gracen testified in her deposition that Foster, who was in charge of the contest, said he would return the painting to her; and we must ask what he thought she would do with the painting when she got it back, if they failed to come to terms. Destroy it? Keep it in a closet till MGM's copyright expired? Bradford, in promising Miss Gracen (as for purposes of this appeal we must assume it did) that she could keep the painting, must have known she would exhibit it to advance her career as an artist. And while Bradford's license from MGM may not have authorized it to make any such promise, Bradford may have had apparent authority to do so and that is all that would be necessary to give Miss Gracen (who presumably knew nothing of the terms of the license) the right to exhibit her painting. See Seavey, Handbook of the Law of Agency 125-28 (1964). We do not say she actually had the right, but only that there is a genuine issue of material fact concerning the scope of her implied license to make a derivative work. 
It is less likely that Miss Gracen was entitled to exhibit, or even to make, the drawings. Their making was no part of the contest. Yet she testified that Foster told her to make the drawings to improve her chances of winning, and this testimony was not contradicted or inherently incredible. If she was authorized to make the drawings maybe she was also authorized-or reasonably believed she was authorized-to exhibit them, at least if she did not come to terms with Bradford. 
The grant of summary judgment on the counterclaim was therefore erroneous-assuming an oral nonexclusive copyright license is enforceable. Nimmer describes this as the law both before and after the Copyright Act was revised in 1976, see 3 Nimmer on Copyright §§ 10.03[A]-[B] at pp. 10-36 to 10-37 and nn. 17, 22, 23 (1982), and though support for this conclusion is sparse, and there is some contrary authority, see Douglas Int'l Corp. v. Baker, 335 F.Supp. 282, 285 (S.D.N.Y.1971), we think Nimmer is right. This case shows why. MGM and Bradford do not even argue that Bradford had no authority to permit Miss Gracen to make a derivative work, though nothing in the license to Bradford purports to authorize sublicensing. They thus tacitly acknowledge the impracticality of requiring written licenses in all circumstances; and we do not see how it can be argued that only the existence and not the scope of a license can be proved by parol evidence. 
This disposes of the counterclaim, but we have still to consider Miss Gracen's claim that she had valid copyrights which the defendants infringed. The initial issue is again the scope of her implied license from Bradford. Even if she was authorized to exhibit her derivative works, she may not have been authorized to copyright them. Bradford was licensed to use MGM's copyright in its series of collectors' plates but not to copyright the derivative works thus created. A copyright owner is naturally reluctant to authorize a licensee to take out copyrights on derivative works-copyrights that might impede him in making his own derivative works or in licensing others to do so. And it would have made no more sense for Bradford, the licensee, to arm Miss Gracen, its sublicensee, with a weapon-the right to copyright her derivative works-that she could use to interfere with Bradford's efforts to get another artist to do the plates if it could not cut a deal with her. The affidavits submitted with the motions for summary judgment deny that Miss Gracen was authorized to copyright derivative works based on the movie and are not contradicted on this point. (In contrast, they do not deny that she was authorized to exhibit her painting of Dorothy.) 
We are reluctant to stop here, though, and uphold the dismissal of the complaint on the basis of an issue of fact that the district judge did not address, and that we therefore may have got wrong, so we shall go on and consider his ground for dismissal of the complaint-that Miss Gracen's painting and drawings are not original enough to be copyrightable.
Miss Gracen reminds us that judges can make fools of themselves pronouncing on aesthetic matters. But artistic originality is not the same thing as the legal concept of originality in the Copyright Act. Artistic originality indeed might inhere in a detail, a nuance, a shading too small to be apprehended by a judge. A contemporary school of art known as “Super Realism” attempts with some success to make paintings that are indistinguishable to the eye from color photographs. See Super Realism: A Critical Anthology (Battcock ed. 1975). These paintings command high prices; buyers must find something original in them. Much Northern European painting of the Renaissance is meticulously representational, see, e.g., Gombrich, The Story of Art 178-80 (13th ed. 1978), and therefore in a sense-but not an aesthetic sense-less “original” than Cubism or Abstract Expressionism. A portrait is not unoriginal for being a good likeness. 
But especially as applied to derivative works, the concept of originality in copyright law has as one would expect a legal rather than aesthetic function-to prevent overlapping claims. See L. Batlin & Son, Inc. v. Snyder, supra, 536 F.2d at 491-92. Suppose Artist A produces a reproduction of the Mona Lisa, a painting in the public domain, which differs slightly from the original. B also makes a reproduction of the Mona Lisa. A, who has copyrighted his derivative work, sues B for infringement. B's defense is that he was copying the original, not A's reproduction. But if the difference between the original and A's reproduction is slight, the difference between A's and B's reproductions will also be slight, so that if B had access to A's reproductions the trier of fact will be hard-pressed to decide whether B was copying A or copying the Mona Lisa itself. Miss Gracen's drawings illustrate the problem. They are very similar both to the photographs from the movie and to the plates designed by Auckland. Auckland's affidavit establishes that he did not copy or even see her drawings. But suppose he had seen them. Then it would be very hard to determine whether he had been copying the movie stills, as he was authorized to do, or copying her drawings. 
The painting of Dorothy presents a harder question. A comparison of Figures 1 and 2 reveals perceptible differences. A painting (except, perhaps, one by a member of the Super Realist school mentioned earlier) is never identical to the subject painted, whether the subject is a photograph, a still life, a landscape, or a model, because most painters cannot and do not want to achieve a photographic likeness of their subject. Nevertheless, if the differences between Miss Gracen's painting of Dorothy and the photograph of Judy Garland as Dorothy were sufficient to make the painting original in the eyes of the law, then a painting by an Auckland also striving, as per his commission, to produce something “very recognizable as everybody's Judy/Dorothy” would look like the Gracen painting, to which he had access; and it would be difficult for the trier of fact to decide whether Auckland had copied her painting or the original movie stills. True, the background in Miss Gracen's painting differs from that in Figure 2, but it is drawn from the movie set. We do not consider a picture created by superimposing one copyrighted photographic image on another to be “original”-always bearing in mind that the purpose of the term in copyright law is not to guide aesthetic judgments but to assure a sufficiently gross difference between the underlying and the derivative work to avoid entangling subsequent artists depicting the underlying work in copyright problems. 
We are speaking, however, only of the requirement of originality in derivative works. If a painter paints from life, no court is going to hold that his painting is not copyrightable because it is an exact photographic likeness. If that were the rule photographs could not be copyrighted-the photographs of Judy Garland in “The Wizard of Oz,” for example-but of course they can be, 1 Nimmer on Copyright § 2.08[E] (1982). The requirement of originality is significant chiefly in connection with derivative works, where if interpreted too liberally it would paradoxically inhibit rather than promote the creation of such works by giving the first creator a considerable power to interfere with the creation of subsequent derivative works from the same underlying work. 
Justice Holmes' famous opinion in Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 23 S.Ct. 298, 47 L.Ed. 460 (1903), heavily relied on by Miss Gracen, is thus not in point. The issue was whether lithographs of a circus were copyrightable under a statute (no longer in force) that confined copyright to works “connected with the fine arts.” Holmes' opinion is a warning against using aesthetic criteria to answer the question. If Miss Gracen had painted Judy Garland from life, her painting would be copyrightable even if we thought it kitsch; but a derivative work must be substantially different from the underlying work to be copyrightable. This is the test of L. Batlin & Son, Inc. v. Snyder, supra, 536 F.2d at 491, a decision of the Second Circuit-the nation's premier copyright court-sitting en banc. Earlier Second Circuit cases discussed in Batlin that suggest a more liberal test must be considered superseded. 
We agree with the district court that under the test of Batlin Miss Gracen's painting, whatever its artistic merit, is not an original derivative work within the meaning of the Copyright Act. Admittedly this is a harder case than Durham Industries, Inc. v. Tomy Corp., supra, heavily relied on by the defendants. The underlying works in that case were Mickey Mouse and other Walt Disney cartoon characters, and the derivative works were plastic reproductions of them. Since the cartoon characters are extremely simple drawings, the reproductions were exact, differing only in the medium. The plastic Mickey and its cartoon original look more alike than Judy Garland's Dorothy and Miss Gracen's painting. But we do not think the difference is enough to allow her to copyright her painting even if, as we very much doubt, she was authorized by Bradford to do so. 
The judgment dismissing the complaint is therefore affirmed. The judgment on the counterclaim is vacated and the case remanded for further proceedings consistent with this opinion. No costs in this court. 

Jorie Gracen, Over the Rainbow (1977) (obverse)

Jorie Gracen, Over the Rainbow (1977) (reverse)

  1. Is Gracen consistent with Catalda?
  2. Judge Posner argues that purpose of the concept of originality is to "prevent overlapping claims." Do you agree? Does the concept of originality have other purposes?
Bridgeman Art Library, Ltd. v. Corel Corp., 25 F. Supp. 2d 421 (S.D.N.Y. 1998)
KAPLAN, District Judge. 
Plaintiff The Bridgeman Art Library, Ltd. (“Bridgeman”) claims to have exclusive rights in photographic transparencies of a substantial number of well known works of art located in museums around the world and to have transformed those transparencies into digital images in which it also claims exclusive rights. It contends that defendant Corel Corporation (“Corel”) is marketing in the United States and abroad compact disks containing digital images of a significant number of the same works of art which, Bridgeman claims, must have been copied from its transparencies and that Corel thus is infringing its copyrights in the United States, the United Kingdom and Canada. It claims as well that Corel's actions violated Sections 32(1) and 43(a) of the Lanham Act and are actionable at common law. The matter now is before the Court on Corel's motion for summary judgment dismissing the complaint and Bridgeman's cross-motion for partial summary judgment. 
Bridgeman is an English company which has an office in New York. It is in the business of acquiring rights to market reproductions of public domain works of art owned by museums and other collections which it obtains either from the owners of the underlying works of art or freelance photographers it hires. Bridgeman maintains a library of those reproductions in the form of large format color transparencies and digital files. Additionally, Bridgeman attaches a color correction strip to each transparency to ensure that the image is a genuine reflection of the original work as it existed in the circumstances in which it was photographed. 
Bridgeman distributes its images as transparencies and as digital files on CD–ROM. The high resolution transparencies are made available to clients through licensing arrangements, while the low resolution CD–ROM images generally are provided to Bridgeman's clients without charge as a digital catalog of available transparencies. 
Corel is a Canadian corporation engaged chiefly in the creation and marketing of computer software products. Among Corel's products is a set of seven CD–ROMs known as “Corel Professional Photos CD–ROM Masters I–VII” (“Masters CD–ROM”). This product contains seven hundred digital reproductions of well known paintings by European masters. Corel maintains that it obtained the images for its Masters CD–ROM from 35 millimeter slides owned by OWI. Corel claims that it was told that the slides were created from lithograph images owned by OWI's president, Richard Friedman. 
Bridgeman's Claim 
Bridgeman here claims that Corel has infringed its rights in approximately 120 of its images. Its theory is that (1) the owners of the underlying works of art, all of which it concedes are in the public domain, strictly limit access to those works, (2) Bridgeman's transparencies of those works, from which it prepared its digital images and presumably other reproductions, are “the only authorized transparencies of some of these works of art,” and (3) “[b]y inference and logical conclusion, the images in Corel's CD–ROMs must be copies of Bridgeman's transparencies because they have not proved legal [sic] source.” The alleged infringements are said to have occurred in the United States, Canada and Great Britain. 
Bridgeman contends that it enjoys copyright in the allegedly infringed transparencies on a number of theories. First, in 1997, after the dispute with Corel arose, Bridgeman obtained from the Register of Copyrights a certificate of registration for a derivative work entitled Old World Masters I, which consists of digital images and transparencies of all or substantially all of the reproductions allegedly infringed by Corel. Second, it contends that its transparencies enjoy copyright protection under the laws of the United Kingdom and Canada as well as the Convention for the Protection of Literary and Artistic Works, popularly known as the Berne Convention.
* * *  
KAPLAN, District Judge. 
On November 13, 1998, this Court granted defendant's motion for summary judgment dismissing plaintiff's copyright infringement claim on the alternative grounds that the allegedly infringed works—color transparencies of paintings which themselves are in the public domain—were not original and therefore not permissible subjects of valid copyright and, in any case, were not infringed. It applied United Kingdom law in determining whether plaintiff's transparencies were copyrightable. The Court noted, however, that it would have reached the same result under United States law. 
* * * 
The Court's prior opinion indicated that plaintiff's exact photographic copies of public domain works of art would not be copyrightable under United States law because they are not original. In view of the Court's conclusion here that U.S. law governs on this issue, it is appropriate to give a somewhat fuller statement of the Court's reasoning. 
In Burrow–Giles Lithographic Co v. Sarony, the Supreme Court held that photographs are “writings” within the meaning of the Copyright Clause and that the particular portrait at issue in that case was sufficiently original—by virtue of its pose, arrangement of accessories in the photograph, and lighting and the expression the photographer evoked—to be subject to copyright. The Court, however, declined to decide whether “the ordinary production of a photograph” invariably satisfies the originality requirement. While Judge Learned Hand later suggested that the 1909 Copyright Act protected photographs independent of their originality, his view ultimately was rejected by the Supreme Court. Nevertheless, there is broad scope for copyright in photographs because “a very modest expression of personality will constitute sufficient originality.” 
As the Nimmers have written, there “appear to be at least two situations in which a photograph should be denied copyright for lack of originality,” one of which is directly relevant here: “where a photograph of a photograph or other printed matter is made that amounts to nothing more than slavish copying.” The authors thus conclude that a slavish photographic copy of a painting would lack originality, although they suggest the possibility that protection in such a case might be claimed as a “reproduction of a work of art.” But they immediately go on to point out that this suggestion is at odds with the Second Circuit's in banc decision in L. Batlin & Son, Inc. v. Snyder
Batlin involved the defendants' claim to copyright in a plastic reproduction, with minor variations, of a mechanical cast-iron coin bank that had been sold in the United States for many years and that had passed into the public domain. The Court of Appeals affirmed a district court order compelling the defendants to cancel a recordation of copyright in the plastic reproduction on the ground that the reproduction was not “original” within the meaning of the 1909 Copyright Act, holding that the requirement of originality applies to reproductions of works of art. Only “a distinguishable variation”—something beyond technical skill—will render the reproduction original. In consequence: 
“Absent a genuine difference between the underlying work of art and the copy of it for which protection is sought, the public interest in promoting progress in the arts—indeed, the constitutional demand [citation omitted]—could hardly be served. To extend copyrightability to minuscule variations would simply put a weapon for harassment in the hands of mischievous copiers intent on appropriating and monopolizing public domain work. Even in Mazer v. Stein, [347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954) ], which held that the statutory terms ‘works of art’ and ‘reproduction of works of art’ ... permit copyright of quite ordinary mass-produced items, the Court expressly held that the objects to be copyrightable, ‘must be original, that is, the author's tangible expression of his ideas.’ 347 U.S. at 214, 74 S.Ct. at 468, 98 L.Ed. at 640. No such originality, no such expression, no such ideas here appear.” 
The requisite “distinguishable variation,” moreover, is not supplied by a change of medium, as “production of a work of art in a different medium cannot by itself constitute the originality required for copyright protection.” 
There is little doubt that many photographs, probably the overwhelming majority, reflect at least the modest amount of originality required for copyright protection. “Elements of originality ... may include posing the subjects, lighting, angle, selection of film and camera, evoking the desired expression, and almost any other variant involved.” But “slavish copying,” although doubtless requiring technical skill and effort, does not qualify. As the Supreme Court indicated in Feist, “sweat of the brow” alone is not the “creative spark” which is the sine qua non of originality. It therefore is not entirely surprising that an attorney for the Museum of Modern Art, an entity with interests comparable to plaintiff's and its clients, not long ago presented a paper acknowledging that a photograph of a two-dimensional public domain work of art “might not have enough originality to be eligible for its own copyright.” 
In this case, plaintiff by its own admission has labored to create “slavish copies” of public domain works of art. While it may be assumed that this required both skill and effort, there was no spark of originality—indeed, the point of the exercise was to reproduce the underlying works with absolute fidelity. Copyright is not available in these circumstances. 
* * * 
  1. In Bridgeman, the Second Circuit held that photographic reproductions of paintings cannot be protected by copyright because they are not original. Do you agree? What about photographs of sculptures? What if the photographs were poorly made and did not look like the originals?
  2. Is Bridgeman consistent with Burrow-Giles?
  3. In 1936, while working for the WPA, Walker Evans took a photograph of Allie Mae Burroughs, which he titled Alabama Tenant Farmer Wife. The photograph was in the public domain because Evans made it as an employee of the United States. In 1981, Sherrie Levine created a series of photographs titled After Walker Evans, in which she rephotographed several of Evans's iconic photographs, including Alabama Tenant Farmer Wife. Levine's work "became a landmark of postmodernism, both praised and attacked as a feminist hijacking of patriarchal authority, a critique of the commodification of art, and an elegy on the death of modernism." In the image below, Evans's photograph is on the left and Levine's photograph is on the right. Is Levine's photograph an original work protected by copyright?

No comments:

Post a Comment

Creative Commons License
Copyright Law Casebook by Brian L. Frye is licensed under a Creative Commons Attribution 4.0 International License.
Based on a work at