USDC N.D. Illinois, January 29, 2008
The plaintiff photographer was hired by the defendants to create product photographs of some of the defendants’ toys for use in marketing. The plaintiff registered copyrights for a large number of his photographs and included a two year “usage restriction” on the invoices submitted to the defendants. The defendants continued to use the photographs after the two year usage period, over the plaintiff’s objections, so he filed suit against the defendants for copyright infringement and conversion. The defendants argued that the photographer did not have valid copyrights in the photographs because they were derivative works based on the defendants’ copyrighted toys, and the district court agreed.
The court explained that while photography is an art form entitled to copyright protection, its opinion would turn on the question of whether the plaintiff’s photographs are derivative works. The court cited to case law from other circuits, noting that this issue is unresolved. The Ninth Circuit in Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000) held that a product photograph of a Skyy vodka bottle was not a "derivative work" in statutory terms because the bottle itself was uncopyrightable and a derivative work must derive from a “pre-existing work.” The inference that could rationally be drawn from that opinion is that if the bottle had been copyrightable, the photograph would have been a derivative work. In contrast, the Southern District of New York held in SHL Imaging, Inc. v. Artisan House, Inc., 117 F.Supp. 2d 301 (S.D.N.Y. 2000), that product photographs of picture and mirror frames were not derivative works because the authorship of the photographic work is entirely different and separate from the photographed work.
The court noted that the Seventh Circuit had not yet addressed this issue directly. However, in Ty, Inc. v. Publ'ns Int'l Ltd., 292 F.3d 512 (7th Cir. 2002), where the defendant conceded that the photographs of copyrighted works constituted derivative works, the court also appeared to independently conclude that those photographs (concession or not) were derivative works. Similarly, in Saturday Evening Post Co. v. Rumbleseat Press, Inc., 816 F.2d 1191 (7th Cir. 1987), the Seventh Circuit “delivered the same message.”
Accordingly, the district court held that because the plaintiff’s photographs portray the three-dimensional toys in two dimensions, they “recast, transform, or adapt” the toys into another medium and they create a derivative work “based upon” the pre-existing work. Thus, the plaintiff, who was unquestionably granted rights to create the derivative work photographs, needed permission to copyright the derivative works. The plaintiff admitted that he received no such authorization and the court held that his assertion that he was never informed that the defendants objected to his registration of the copyrights in his photographs fails because, without express approval from the owner of the underlying work, the plaintiff could not obtain a copyright in his derivative photographs.