No Copyright for Art Reproductions?

By Paul Dennis Connuck

Although it has thus far attracted scant notice, the Southern District of New York's recent decision in Bridgeman Art Library Ltd. v. Corel Corp (please see endnote 1), promises to have a profound impact upon the thriving market in photographic transparencies, digital images and other reproductions of visual works.

The plaintiff in the case was The Bridgeman Art Library, a U.K. company engaged in the business of licensing reproduction rights to celebrated masterpieces and other works of art. Bridgeman brought suit against Corel Corporation alleging copyright infringement for Corel's marketing of digital images in which Bridgeman claimed exclusive rights of reproduction under license from museums, private art collections and other owners of these images' underlying, original works.

Bridgeman maintained that, despite the conceded off-copyright status of such masterworks as the ceiling of the Sistine Chapel, it possessed exclusive rights in these works' photographic reproductions, and that Corel's copying of the reproductions, therefore, infringed Bridgeman's rights under international copyright conventions (please see endnote 2) and U.S., U.K. and Canadian copyright law. The court, seizing upon the fact that Bridgeman's images were exact reproductions of works that had long been in the public domain, deemed these images' lack of originality fatal to its assertion of copyrights, and granted summary judgment dismissing its claims.

In so holding, the Bridgeman court was compelled to decide a host of intricate and, in certain respects, novel, copyright issues. Key among these were:

• the extent, if any, to which choice of law principles may control copyrightability;
• whether the U.S.'s constitutionally based requirement of "originality" may give way to international copyright treaties; and
• what constitutes an "original" work for purposes of obtaining copyright protection and, correspondingly, how may "mere" photographic skill be distinguished from creativity, originality and art.

This article will address the court's reasoning with respect to each of these issues, Bridgeman's likely treatment by the Second Circuit, and this precedent's projected impact upon photo stock houses, image libraries and other vendors of visual works. It will conclude with a brief survey of protective alternatives to copyright in light of the Bridgeman case.

At the threshold of the Bridgeman decision lay the need to determine which nation's law controlled the copyrightability of the images at issue. In an earlier holding, the court relied upon the Second Circuit's recent decision in Itar-Tass (please see endnote 3) to rule that, because copyright is a species of property, the works' copyrightability was properly governed by the law of the United Kingdom, the state having "'the most significant relationship' to the property and the parties." Bridgeman Art Library Ltd. v. Corel Corp., 25 F. Supp. 2d 421, 425-426 (Bridgeman I) (please see endnote 4)

Thus, the court cited the nationality of Bridgeman and of the producers of Bridgeman's reproductions, the works’ "country of origin" and place of initial publication, and the location of the plurality of the underlying masterworks. The United Kingdom was held to have "the most significant relationship to the issue of copyrightability," which would be decided, therefore, under U.K. law. Id. at 426.

Turning to the controlling British statute, the court noted that the U.K., like the U.S., requires that a work be "original" to qualify for copyright protection. 25 F. Supp. 2d at 426 (citing The Copyright, Designs and Patents Act, 1988, ch. 1, §1(1)(UK)). This requirement of originality, the court reasoned, mandates that a work originate with the author and, hence, precludes even the most skillful reproduction from attaining the benefit of copyright if merely copied, without "material alteration or embellishment," from another work. Id. (quoting Interlego AG v. Tyco Industries Inc., [1988] 3 All ER 949 at 970).

Bridgeman had shown "no independent creation, no distinguishable variation from preexisting works, nothing recognizably the author's own contribution" to set its transparencies apart from the famous works from which they were copied. Accordingly, the court held that these reproductions lacked sufficient originality to merit protection under British copyright law. 25 F. Supp. 2d at 426, 427.

While emphasizing that this decision was pursuant to the law of the United Kingdom, Judge Lewis A. Kaplan was careful to observe that "the Court would reach the same result under United States law." Id. at 427 n. 47. The observation would soon prove prophetic, as, upon reconsideration of its order, the court reversed course, this time holding that questions of originality and copyrightability must be decided under U.S. copyright law.

After the initial Bridgeman decision, the court invited further briefing and argument on plaintiff's motion for reconsideration. Presented for decision in this later proceeding (Bridgeman II) were plaintiff's challenge to the court's construction of "originality" and the contention, advanced in a letter from Professor William Patry, that U.S. copyright law properly applied. Bridgeman II, 36 F. Supp. 2d at 192.

Significantly, Professor Patry, the court-appointed amicus in the Itar-Tass case, wrote in favor of reconsideration. He opined that the copyrightability of works for which protection is sought in the federal courts, unlike the question of ownership decided in Itar-Tass, is not only properly, but necessarily, governed by U.S. copyright law. 36 F. Supp. 2d at 192-193 (please see endnote 5).

Professor Patry reasoned that the Constitution forecloses consideration of any question of choice of law with respect to copyrightability because the Copyright Clause, Art. I, §8, cl. 8, only authorizes Congress to enact legislation to protect the "writings" of "authors," (please see endnote 6) terms of limitation that permit copyright protection to be accorded solely to original works. Id. at 193. See Feist Publications Inc. v. Rural Tel. Service Co., 499 U.S. 340, 346 (1991) (precedents are "unmistakably clear" that the terms "authors" and "writings" presuppose "originality").

Hence, he is reported to have concluded, "only original works, with originality determined in accordance with the meaning of the Copyright Clause, are susceptible of protection in United States courts." 36 F. Supp. 2d at 193. See Feist, 499 U.S. at 348, 351 ("Originality remains the sine qua non of copyright ... a constitutionally mandated prerequisite for copyright protection.").

While holding no quarrel with the originality requirement's constitutional basis, the Bridgeman II court nevertheless allowed for the possibility that the broad treaty power granted under Article II, §2 of the Constitution might sidestep the Copyright Clause and permit the U.S. to bind itself, by treaty, to the enforcement of foreign copyrights in non-original works. 36 F. Supp. 2d at 193-194. The court ruled it unnecessary, however, to decide this constitutional question, or the issue as to whether any U.S. treaty prescribes a rule of law governing copyrightability, because Congress had already spoken in proclaiming the Copyright Act the sole determinant of copyright protection for works published in the U.S. Id. at 195.

In support of this conclusion, the court noted that the Berne Convention is not self-executing, a position reflected, among other places, in §4(c) of the Berne Convention Implementation Act (BClA) (please see endnote 7), which states: "No right or interest in a work eligible for protection under this title may be claimed by virtue of, or in reliance upon, the provisions of the Berne Convention, or the adherence of the United States thereto." 102 Stat. 2855; 17 U.S.C. §104(c). Section 3(a) of the BCIA, correspondingly, provides:

The provisions of the Berne Convention

These BCIA sections, when coupled with the title 17 (U.S. Copyright Act) provisions granting protection to Berne Convention works, leave little, if any, room to doubt that the Copyright Act, read in light of the Constitution, is the sole arbiter of copyrightability under federal law (please see endnote 9). Specifically, §104(b)(4) of the Copyright Act, 17 U.S.C. §104(b), in giving effect to the Berne Convention, limits U.S. copyright protection to "[t]he works specified by sections 102 and 103 [of the Act]."

The cited §§102 and 103, in turn, expressly define, and limit, protectible, copyright subject matter as being restricted to "original works of authorship," 17 U.S.C. §102(a). Those sections also specify that copyrights in a derivative work, such as a photographic reproduction, extend "only to the material contributed by the author ... as distinguished from the preexisting material," 17 U.S.C. §103(b).

Consequently, the Copyright Act prescribes an express, statutorily based originality requirement that renders academic such broader considerations as whether the Berne Convention adopts a rule of law addressing copyrightability (please see endnote 10) or whether it is constitutionally permissible to exercise the treaty power to extend protection to non-original works. See Bridgeman II, 36 F. Supp. 2d at 195.

In a line of decisions dating back well over a century, the Supreme Court, defining the constitutional ambit of "writings," has held that "while the word writings may be liberally construed ... to include original designs for engraving, prints, &c., it is only such as are original, and are founded in the creative powers of the mind" that may qualify for protection under U.S. copyright. The Trade-Mark Cases, 100 U.S. 82, 94 (1879) (citing U.S. Const., Art. I, §8, cl. 8) (italics added). See also Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58 (1884) ("writings ... include all forms of writing, printing, engraving, etching, &c., by which the ideas in the mind of the author are given visible expression").

The Court has further emphasized this creative, conceptual component of originality in dissecting the Copyright Clause's reference to "authors," stressing that the protection of copyright is limited to "original intellectual conceptions of the author," who is obliged to demonstrate "the existence of ... originality, intellectual production, ... thought, and conception" to secure exclusive copyrights in her works. Burrow-Giles, 111 U.S. at 58, 59-60 (italics added). See Feist, 499 U.S. at 346-347.

In so reasoning, the Supreme Court has deemed the Constitution's reference to "authors" tied, as in the case of "writings," to the requirement of originality, defining "author" to import "he to whom anything owes its origin; originator; maker." Burrow-Giles, 111 U.S. at 58 (quotations omitted). See Goldstein v. California, 412 U.S. 546, 561 (1973) ("'author' ... in its constitutional sense, has been construed to mean an 'originator'").

As the Court explained more recently in Feist:

499 U.S. at 345 (citation omitted; italics added).

It has thus long been held that photographs, "so far as they are representatives of original intellectual conceptions of the author," may receive copyright protection as original works under the Copyright Clause. Burrows-Giles, 111 U.S. at 58. See also Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903) (commercial poster images protectible as "pictorial illustrations"). In those instances, however, in which the photographic process demands no more than "the manual operation ... of transferring ... the visible representation of some existing object," no copyrights may attach. Burrows-Giles, 111 U.S. at 59 (dicta).

The question thus presented is: are photographic reproductions categorically excluded from the protection of U.S. copyrights? Certainly, there is more than ample precedent holding that "mere" or "slavish" copies of existing works, lacking originality, cannot be subject to copyright. See, e.g., Feist, 499 U.S. at 435; Durham Industries Inc. v. Tomy Corp., 630 F.2d 905, 910 (2d Cir. 1980); L. Batlin & Son Inc. v. Snyder, 536 F.2d 486, 491 (2d Cir.) (en banc) (1975), cert. denied, 429 U.S. 857 (1976)).

To qualify for copyright protection, derivative works, such as the photographic images at issue in Bridgeman, must display "some substantial, not merely trivial originality" in the way of independent creation, such that they consist of something more than mechanical, literal or "actual" copying of the works upon which they are based. Durham, 630 F.2d at 910 (citations omitted).

This originality requirement cannot be met by a show of "physical skill" or "special training," or by the mere reproduction of the underlying work in a different, e.g., digital, medium. Batlin, 536 F.2d at 491. The creator of a derivative image must contribute a "substantial" or "distinguishable" variation to the work upon which it is based; skillful reproduction, however expert, will not suffice. Id.; Durham, 630 F.2d at 910; Hearn v. Meyer, 664 F. Supp. 832, 835-836 (S.D.N.Y. 1987). See Bridgeman I, 25 F. Supp. 2d at 427 n. 41.

The reasoning of these precedents would seem to preclude any possibility that faithful reproductions, such as those presented in Bridgeman, may qualify for U.S. copyrights (please see endnote 11). However, the lines drawn between "skill" and "true artistic skill," and between "substantial" and "trivial" variations tend to blur when considering the nature of photographic art.

In Rogers v. Koons, for example, the Second Circuit noted that "[e]lements of originality in a photograph may include posing the subjects, lighting, angle, selection of film and camera, evoking the desired expression, and almost any other variant involved." 960 F.2d 301, 307 (2d Cir.), cert. denied, 506 U.S. 934 (1992). Compare Burrows-Giles, 111 U.S. at 54-55 (plaintiff's protectible photograph was "entirely from his own original mental conception," executed by posing, selecting and arranging the subject, costume and surroundings, capturing light and shade, and "evoking the desired expression").

Many of these elements of photographic creativity and inventiveness can be exercised, and seen, in the reproduction of preexisting works. Lighting, angle, choice of film and camera, for example, all come into play.

While the composition and subject of the preexisting work are in a sense pre-arranged and "fixed," the same may be said of objects and phenomena of nature. Copyrights routinely attach to photographs of such natural subjects, however, though the photographer plays little or no role in these subjects' creation, occurrence or arrangement. See Bleistein, 188 U.S. at 249 ("even if they had been drawn from the life, that fact would not deprive them of protection"). This leaves one to question whether it is "true artistic" as distinguished from "physical" skill that differentiates "original" photography from works of photographic reproduction, or whether another principle is at work.

The answer would appear to be threefold. First, courts repeatedly have emphasized that "originality," as required by the Copyright Clause, possesses a core, conceptual dimension. See, e.g., Burrows-Giles, 111 U.S. at 58 ("original intellectual conceptions of the author"); Feist, 499 U.S. at 346-347. Accordingly, it may be that such elements as choice of subject, composition and overall expressive treatment are given greater weight in assessing originality than the more technical, albeit "creative," aspects of photographic technique.

Second, in appraising a work's "originality," the courts do not render an aesthetic judgment, but a legal one. Bleistein, 188 U.S. at 251-252. As Judge Posner observed in Gracen v. Bradford Exchange, "the purpose of the term ["original"] 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 … in copyright problems." 698 F.2d 300, 305 (7th Cir. 1983).

These evidentiary and prudential concerns thus may also guide the courts' determination as to the originality of reproductions and other derivative works. See Durham, 630 F.2d at 911 (subsequent copier of preexisting work would be "vulnerable to harassment").

Last, and most fundamentally, the extension of copyrights to unaltered reproductions of works of art might impermissibly enable those who obtain copyrights in such reproductions to extend, indefinitely, the statutory period of copyright protection. That is, on the eve of each expiration of the copyrights in a given image, the copyright owner need only produce another, more recent reproduction of that image to start the statutory copyright period running again. This practice of serial recreation, if permitted, could abrogate the societal bargain enshrined in the Constitution, which empowers Congress to grant exclusive copyrights, but only for "limited times." U.S. Const., Art. I, §8, cl. 8.

The Bridgeman decision, if upheld, would strip reproductions of public domain works of copyright protection, leaving their owners without a copyright remedy for the appropriation of the reproductions or their underlying works. Image vendors would thus be wise to reexamine their licensing practices and, in particular, the form and content of the restrictions they place upon access and use. Absent copyrights, it becomes critical to the possessor of valuable images that they not be let loose upon the world without binding, contractual restrictions.

Whether such restrictions will be enforceable, in turn, will depend upon how the images are presented (e.g., in mass Internet and other general publications, or in discrete transactions), whether the restrictions are bargained for or dictated in a "take-it-or-leave-it" shrinkwrap or click-on license, and the ultimate judicial resolution of the not yet fully settled issue as to whether such license restrictions are preempted under the Constitution or Copyright Act as being impermissibly obstructive of, or equivalent to, federal copyrights. See Copyright Act §301(a), 17 U.S.C. §30l(a) (federal copyright preemption) and U.S. Const., Art. VI, cl. 2 (supremacy clause).

Paul Dennis Connuck is a partner in the Intellectual Property Department at Whitman Breed Abbott & Morgan LLP. If you have any questions or concerns, please contact him at 212-351-2511 or e-mail him at pconnuck@WBAM.com.

This publication is intended to provide general information to our clients and friends. All facts and law discussed are as of the date of intial publication and may not reflect significant later developments. The material is not intended to convey an exhaustive treatment of the subject matter. It is not presented as legal advice nor is it to be used as a substitute for legal advice applicable to a particular situation. Always consult your attorney for specific legal advice.