As previously reported in my March 20, 2008, blog, courts have disagreed as to whether photographs of copyrighted works are derivative works. But one of the prior decisions on this issue has been overturned and, as a result, the court has given photographers some good law.
To compare, the court in Latimer v. Roaring Toyz, Inc., 2008 WL 697346 (M.D. Fl.) held that Latimer’s photographs of motorcycles with customized art work on them were not unauthorized derivative works. See my March 16, 2008, blog for more information. Therefore, the court ruled that Latimer could proceed with copyright infringement claims for use of his photos of the motorcycles without his alleged permission. At about the same time, an Illinois District Court in Schrock v. Learning Curve International, Inc. (“Learning Curve”) ruled that Daniel Schrock had no right to register his photographs of toys because they were unauthorized derivative works of the copyrights in the toys. Schrock had been hired to photograph Thomas the Tank Engine toys for use on product boxes. Alleging that Learning Curve and others had used the photos beyond the license terms, Schrock sued for copyright infringement. But the Court dismissed his case when it found that “without approval from the owner of the underlying [copyrighted] work, approval that was totally absent here, Schrock could not obtain a copyright over his derivative works.”
Fortunately, Schrock appealed and the U.S. Court of Appeals for the 7th Circuit agreed with him. The Court’s Order gives all of the details, but several statements by the Court are worth repeating:
- Whether photographs of a copyrighted work are derivative works is the subject of deep disagreement among courts and commentators alike.
- We need not resolve the issue definitively here. The classification of Schrock’s photos as derivative works does not affect the applicable legal standard for determining copyrightability, although as we have noted, it does determine the scope of copyright protection.
- Our review of Schrock’s photographs convinces us that they do not fall into the narrow category of photographs that can be classified as “slavish copies,” lacking any independently created expression. To be sure, the photographs are accurate depictions of the three dimensional “Thomas & Friends” toys, but Schrock’s artistic and technical choices combine to create a two dimensional image that is subtly but nonetheless sufficiently his own.
- We assume for purposes of this decision that the district court correctly classified Schrock’s photographs as derivative works. It does not follow, however, that Schrock needed authorization from Learning Curve to copyright [register] the photos. As long as he was authorized to make the photos (he was), he owned the copyright in the photos to the extent of their incremental original expression.
- To be copyrightable, a derivative work must not be infringing. See 17 U.S.C. § 103(a). . . . This means the author of a derivative work must have permission to make the work from the owner of the copyright in the underlying work.
- . . . copyright in a derivative work arises by operation of law—not through authority from the owner of the copyright in the underlying work—although the parties may alter this default rule by agreement.
- Schrock created the photos with permission and therefore owned the copyright to the photos provided they satisfied the other requirements for copyright and the parties did not contract around the default rule.
The Court of Appeals remanded the case so that the lower court could determine whether Schrock’s and Learning Curve’s contract dictated that Schrock could not register/copyright the photos. While the issue of whether a photograph of a copyrighted work is a derivative work is not resolved, the 7th Circuit has done a lot to support photographer’s rights with this opinion.
Thanks to Thomas D. Paulius for submitting this topic.