Photography, Copyright, and "Derivative Works"
Mark Twain channeled the frustration of many artists when he wrote, “Only one thing is impossible for God: To find any sense in any copyright law on the planet.” One such frustration is the realm of derivative works. Artists understand that all art is ultimately derivative. For example, Ernest Hemingway wrote, “All modern American literature comes from one book by Mark Twain called Huckleberry Finn.”
But copyright law takes a narrower view, defining “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.” 17 U.S.C. § 101.
Why is this definition important? Because one of the six exclusive rights given to a copyright owner is the right “to prepare derivative works based upon the copyrighted work.” 17 U.S.C. § 106. Thus the movie version and the videogame version of the novel Jurassic Park are “derivative works” that cannot be made without the permission of the owner of the copyright in the underlying work. Most of us understand that part—but not much else.
The recent 7th Circuit Court of Appeals decision in Schrock v. Learning Curve Int’l highlights how confusing the concept of a “derivative work” can get in real life—especially when the derivative work is a photograph of the underlying work. Is there even a copyright in that photo, and, if so, who owns it?
We begin with the “Thomas & Friends” toy train figures, which are themselves “derivative works” based on the popular “Thomas & Friends” train characters from the animated television show, which is itself a “derivative work” based upon The Railway Series, a set of story books dating back to the 1940s about a fictional railway system on an imaginary island.
The Thomas & Friends toys were each protected by copyright. The defendant hired Daniel Schrock, a freelance photographer, to take pictures of the toys for use in advertising and on product packaging. When the defendant continued to use his photos in ads and on packages beyond what he claimed was the term of the agreement, Schrock registered the copyrights in the photographs and sued for infringement. His case raised two important copyright questions that had not been settled by prior case law:
1. Is a photograph of a copyrighted work a “derivative work” that is entitled to its own copyright?
2. If so, who owns that copyright?
As for Question 1, the test for copyrightability is the standard one: originality. In finding that Strock’s photographs passed that test, the Court drew upon prior cases that applied a generous standard of originality in evaluating photographic works for copyright protection. Those cases focused on the photographer’s originality in “the rendition of the subject matter—that is, the effect created by the combination of his choices of perspective, angle, lighting, shading, focus, lens, and so on.”
The Court rejected the defendant’s contention that Schrock’s photos had to meet a higher standard of originality because they were undeniably “derivative works”—i.e., realistic photographs of copyrighted toys. Instead, the Court held that the standard of originality for a “derivative work” is the same as the standard for any work. It concluded that Schrock’s photos of the toys “possessed sufficient incremental original expression to qualify for copyright.” In particular, the Court cited Schrock’s testimony about his creative process in depicting the toys in his photographs.
As for the final question—who owns the copyright in a “derivative work”?—the Court first had to deal with precedents that suggested that because the creator of a derivative work requires permission of the owner of the copyright in the underlying work to create the derivative work, he also needs permission of the owner to register the copyright of the derivative work. The Court rejected those prior cases. Instead, it held that the right to claim a copyright in a non-infringing derivative work arises by operation of law and not through authority from the copyright owner of the underlying work. Under operation of law—in this case, copyright law—the creator of a work of art is the owner of the copyright in that creation.
That final question, however, did not receive a final answer. The trial record was unclear as to the terms of the freelance photographer’s contract, especially whether there was any provision limiting his ability to copyright the derivative works in his own name. Accordingly, the Court remanded the case for further proceedings.
Despite the remand, the Schrock decision stands as an important affirmation of the rights of photographers in their works, including derivative works, and the artistic merits of those works. The case also stands as a reminder to all parties to address the issue of copyright ownership in writing and at the outset of the relationship.
