As with all areas of intellectual property, copyright issues in photography law often boil down to questions of: What can I protect? And what can I prevent others from using?
But photography is unique. Because photographs are not generally created from “whole cloth” -- but include subject matter that is often freely viewable, in the public domain, or owned by others -- copyright in photographs is sometimes “thinner” than in other works where the borrowed elements are not so visible.
In contrast to works of music, literature and many other visual arts, photographs contain relatively objective depictions of real world subject matter. As a result, it is important for those counseling the photography industry to understand how the law treats the relationship of subject matter to photograph.
How different must a photograph be from its underlying subject matter to be protectible? What elements added by the photographer are protectible? What protection does a photographer have when the subject matter is controlled by a third party?
For a work to be copyrightable, it must be fixed in a tangible form and be an “original” work of authorship.” The United States Supreme Court has stated that “[t]he sine qua non of copyright[ability] is originality” and that “[o]riginal, as the term is used in copyright, means only that the work was independently created by the author . . . and that it possesses at least some minimal degree of creativity.”[ii] When a photograph is created very objectively and is almost identical to its subject matter, a question arises of whether the photograph has sufficient “originality” to be copyrightable.
It had been believed that almost any photograph had such “originality.” In Bridgeman Art Library, Ltd. v. Corel Corp., however, Judge Kaplan of the Federal District Court for the Southern District of New York held that a group of skillfully rendered photographic depictions of public domain art works were not “original” for copyright purposes.[iii]
Bridgeman Art Library acquired the right to license photographic transparencies and digital images of public domain works. It sought images that copied the underlying works as faithfully as possible without any addition, alteration or transformation. Corel sold a CD-ROM containing images controlled by Bridgeman. Bridgeman sued, claiming ownership in the copyrights of the transparencies and digital images and alleging copyright infringement.
Although the Court recognized that faithful photographic replication of the original works required substantial skill and effort, it held that Bridgeman did not own the copyright in the resulting images.[iv] “Slavish copying” of another work, even where it reproduces the work into a different medium, does not have sufficient “originality” to be copyrightable.[v]
Notwithstanding Bridgeman, courts still have required only a minimal level of “originality. In Eastern America Trio Products v. Tang Electronic Corp, for example, Judge Kaplan also held that defendant infringed plaintiff's copyright by using plaintiff's photographs in its own catalogs.[vi] Defendant claimed that the images were of common, industrial items and lacked sufficient “originality” to be protectible. The Court disagreed, finding “originality” in the lay-out, angles and lighting of plaintiff’s images. The Court noted that there is a “very broad scope for copyright in photographs, encompassing almost any photograph that reflects more than 'slavish copying.’” “Originality” may be founded upon other factors such as choice of subject matter, timing, and selection of camera, film or lens.[vii]
Derivative Works Must be Non-Trivial and Not Affect the Scope of Protection in Underlying Materia
As part of the “originality” requirement of copyright, a “derivative work” must be sufficiently distinguishable from the work upon which it is derived. The Copyright Act defines a derivative work as:
“[A] work based upon one or more pre-existing works, such as a[n] . . . art reproduction . . . 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.’”[viii]
Copyright in a derivative work “extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work . . . .”[ix] Furthermore, to be copyrightable, “the original aspects of a derivative work must be more than trivial,” and must not “affect the scope of any copyright protection in the preexisting material.”[x]
In Ets-Hokin v. Skyy Spirits, Inc.,[xi] photographer Ets-Hokin was retained by Sky Spirits to photograph its vodka bottle for advertising. Ets-Hokin granted limited licensing rights to Skyy and delivered three photographs, each containing a side-lit Skyy Vodka bottle displayed in front of a plain white or yellow backdrop.
Skyy then hired other photographers to shoot the bottle and used their photographs instead. Ets-Hokin sued, claiming copyright in his original images. He alleged that the newer images were substantially similar to his and therefore violated the license agreement and infringed his copyright. Skyy claimed that Ets-Hokin had no independent copyright in the images separable from Skyy’s underlying right in the bottles.
The lower court agreed and dismissed Ets-Hokin’s claim. It found that the photographs were derivative works of the bottle’s copyrighted material and trade dress. Because the differences between the images and the bottle were “trivial,” and granting copyright in the images would deprive Skyy of its right to create derivative works of its bottle, the trial court found that Ets-Hokin had no copyright protection in the images.[xii]
On appeal, however, the Court of Appeals for the Ninth Circuit reversed, holding that the images had copyright protection independently of the bottle.[xiii] First, the many photographic judgments that went into shooting the Ets-Hokin images satisfied the “originality” requirement.[xiv] Second, the photographs were not derivative works. Although every photograph is “derived” from its subject matter in a colloquial sense, a “derivative work” under the Copyright Act must be based upon a preexisting work that is itself copyrightable.[xv] The Court found that the Skyy vodka bottle was a utilitarian object unprotected by copyright.[xvi]
Since the Ets-Hokin images were protected by copyright, the Court remanded the matter to determine whether the newer images infringed.[xvii]
Infringement Must Be of Protectible Element
Even with a valid copyright, an infringement action will lie only if the “the allegedly infringing work is substantially similar to the [original] work with regard to its protected elements.”[xviii] When two photographers shoot images of the same subject matter, however, it can sometimes be problematic to determine what is a protected element.
In Leigh v. Warner Bros. Inc., the Court of Appeals for the Eleventh Circuit addressed which elements of a photographer’s contributions are protectible.[xix] Photographer Jack Leigh owned the rights to and was photographer of the famous “Bird Girl” cover from the book “Midnight in Garden of Good and Evil.” Leigh had been commissioned by Random House to photograph the cover, and he chose the Bird Girl statue located in Savannah, Georgia’s Bonaventure Cemetery as evocative of the book’s mood and themes. The statue had been sculpted by Sylvia Shaw Judson, and one copy had been purchased and placed in a family plot in the cemetery.
When Warner Brothers made a film version of the book, it included another photographer’s images of the Bird Girl statue in both the film and its promotional material. Leigh then sued Warner Brothers for, among other things, copyright infringement. Since the parties did not dispute Leigh’s copyright in his photograph, the issue was which elements of the photograph were protectible and whether defendant infringed on those element.
Although Leigh selected the statue and created its association with the “Midnight” story, the Court held that Leigh could not prevent Warner Brothers from utilizing that association. Since copyright protects only original expression and not ideas, Leigh had no copyright in the “idea” of that association.[xx] Also, Leigh’s copyright did not cover the appearance of the statute or the cemetery, because Leigh had no rights in either.[xxi]
Nevertheless, the Court found that material portions of Leigh’s photograph were protectible. These included those expressive “elements of craft [such as] selection of lighting, shading, timing, angle and film.”[xxii] Warner Brothers thus infringed to the extent that the film and promotional images were “substantially similar to [Leigh’s photograph] with regard to [these] protected elements.”[xxiii]
After comparing how the respective images portrayed the virtually identical subject matter, the Court held that the film sequences were not infringing as a matter of law because they were not substantially similar to protected elements of the photograph.[xxiv] The Court found, for example one non-infringing sequence from the film where -- in contrast to the photograph -- the cemetery was shrouded in fog, the Bird Girl’s head was cropped, and the image contained a Celtic cross.[xxv]
With regard to the promotional images, however, the similarities were significant enough for the Court to require a jury to decide the question of infringement.[xxvi] In both Leigh’s photograph and most of Warner Brothers’ stills, the images were monochrome and bordered on the top with Spanish moss, shot from a low position, with light enveloping the statue that was situated close to the center of the image.[xxvii]
Party who Owns and Controls Subject Matter is not a Joint Author
A somewhat different issue arises when a party hires a photographer to photograph subject matter that is owned or controlled by the hiring party. Generally, the parties’ relationship will be governed by whatever licensing agreement exists between the parties. However, in several recent cases, the hiring party claimed ownership of photographs as a joint author because of its ownership and control of the subject matter.
In Natkin et al v. Winfrey et al.,[xxviii] for example, defendants (“Winfrey”) had retained plaintiffs to photograph the “Oprah Show” and its guests. Winfrey then published a book containing eleven of these photographs. The photographers sued, alleging copyright infringement and claiming that they had only granted rights for the images to be used for publicity purposes.
Winfrey argued, among other things, that because she controlled the underlying subject matter -- Oprah, the guests, their clothes and expression, the sets, and the “look” and “mood” of the show -- she was a co-author and jointly owned the copyright in the photos with the photographers. She was free, therefore, to include the photos in her book.
The Court disagreed. “[T]o establish co-ownership of the photograph copyrights, the defendants must show that ‘the parties intended to be joint authors at the time the work was created [and] . . . that [their] contributions to the works were independently copyrightable.’”[xxix] Although the Court found that evidence as to the parties’ intent was ambiguous, defendants’ contributions to the photographs were not independently copyrightable.[xxx] The Court pointed to Copyright Office rules that “the nature of the thing depicted or the subject of the photograph . . . is not regarded as a copyrightable element.”[xxxi] Winfrey therefore had no copyrightable interest in the photographs.
The Court found that a trial was necessary to determine whether defendants had been granted a valid license to use the images in their book.[xxxii] The case subsequently settled.[xxxiii]
In conclusion, a photograph will have copyright protection if it has a minimal level of originality, which requires more than “slavish copying” of the underlying material. If the photograph is a derivative work, the photograph must have more than trivial differences with, and must not affect the scope of copyright protection of, the underlying work. To be successful on an infringement claim, the infringing work must be substantially similar to a protectible element of the original photograph. Finally, a photographer may share joint authorship with a third party if the parties intend the final work to be jointly owned, and if each party made a copyrightable contribution to the work. Mere ownership or control of the subject matter will not suffice.
[i] 17 U.S.C. § 102(a).
[ii] Feist Publications, Inc., v. Rural Telephone Service Co., Inc., 499 U.S. 340, 345, 111 S.Ct. 1282, 1287, 113 L.Ed.2d 358 (1991)(citations omitted).
[iii] 36 F.Supp. 2d 191 (S.D.N.Y. 1999).
[iv] Id., at 197.
[v] Id.
[vi] 54 U.S.P.Q.2d 1776 (S.D.N.Y. May 3, 2000).
[vii] Id., at 1791.
[viii] 17 U.S.C. §101.
[ix] 17 U.S.C. §103(b).
[x] Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905, 909 (2d Cir. 1980).
[xi] 225 F.3d 1068 (9th Cir. 2000).
[xii] Id., at 1072.
[xiii] 225 F.3d 1068.
[xiv] Id., at 1077.
[xv] Id., at 1078-80.
[xvi] Id., at 1080-81.
[xvii] Id., at 1081-82.
[xviii] Leigh v. Warner Brothers, Inc., 212 F.3d 1210, 1214, (11 Cir. 2000)(citations omitted)(emphasis in original).
[xix] Id.
[xx] Id., at 1214 (citations omitted).
[xxi] Id., at 1215.
[xxii] Id.
[xxiii] Id. at 1214.
[xxiv] Id., at 1215.
[xxv] Id.
[xxvi] Id., at 1216.
[xxvii] Id.
[xxviii] 111 F.Supp.2d 1003 (N.D. Ill., 2000).
[xxix] Id., at 1010 (citations omitted).
[xxx] Id.
[xxxi] Copyright Office, Compendium II of Copyright Office Practices § 508.01 (1998 Supp.).
[xxxii] 111 F.Supp.2d at 1012.
[xxxiii] See http://chicagotribune.com/business/businessnews/article/0,2669,SAV-0008170343,FF.html. See also, SHL Imaging Inc. v. Artisan House Inc., 117 F.Supp.2d 301 (S.D.N.Y., 2000), where the Court held that plaintiff owned copyright in its photographs of defendant’s picture frames in that the images were original, and not derivative works, works for hire, or joint works.
Originally published 2001.
Although we like to think of our legal system as a fair forum that grants
majestic justice from on high, for Penny Gentieu in her recent litigation
with Getty Images it was more like a back alley extortionist that
threatened to crack her knees unless she dropped her claims and walked
away. 
The judge believed -- even accepting the evidence in a light
most favorable to Gentieu -- that no reasonable jury could find in
Gentieu’s favor. As a result, Gentieu got no trial and no jury. As an example, the Court found that the Getty Image to the right did not infringe upon Gentieu's image displayed above.
