Copyright law - Seventh Circuit holds product photography sufficiently creative for copyright as derivative works.

• Author: Hall, Marcus

Copyright Law--Seventh Circuit Holds Product Photography Sufficiently Creative for Copyright as Derivative Works--Schrock v. Learning Curve Int'l, Inc., 586 F.3d 513 (7th Cir. 2009)

Originality stands as both a constitutional and statutory prerequisite for copyright protection. (1) Nevertheless, the absence of a clear definition of copyright originality in the Copyright Act and in judicial application has lead to uncertainty regarding the meaning of the term "originality" in copyright law. (2) Despite the ambiguity, originality endures as the very premise of copyright law and requires thorough articulation in order to establish the boundary between a truly original work and a work exhibiting only a marginal contribution by the alleged author. (3) In Schrock v. Learning Curve International, Inc., (4) the Seventh Circuit Court of Appeals examined whether inherently accurate product photographs contained the requisite amount of originality to be entitled to copyright protection as derivative works. (5) By concluding that derivative works are not held to a higher standard of originality than other works, the Seventh Circuit Court of Appeals declared that the combination of the photographer's technical and artistic choices produced a sufficient degree of creative distance to warrant a finding of originality. (6)

Daniel Schrock is a professional photographer specializing in product imagery. (7) In 1999, Learning Curve International, Inc. (Learning Curve), hired Schrock to create product photographs of some of its merchandise, including toys based on the characters from the popular children's television show Thomas & Friends. (8) Over the following four years, Learning Curve retained Schrock's services on numerous occasions, paying him more than $400,000 for the promotional photographs. (9) Learning Curve used the resulting product photographs in paper and online catalogs as well as on product packaging. (10)

After Learning Curve stopped contracting him for work, Schrock registered some of the photographs for copyright protection and then demanded that Learning Curve either pay a licensing fee or cease using his photos in advertising and on product packaging. (11) When Learning Curve refused, Schrock brought suit in the United States District Court for the Northern District of Illinois, alleging copyright infringement and other state law claims. (12) In its defense, Learning Curve moved for summary judgment under the theory that the product photographs were insufficiently original to justify copyright protection. (13) Learning Curve also argued in its motion that the photos were derivative works of the underlying products, thereby asserting that Schrock should have obtained Learning Curve's permission before acquiring the relevant copyright interest. (14)

In granting Learning Curve's motion for summary judgment, the district court ruled that the photos were derivative works, and therefore Schrock needed Learning Curve's permission not only to make the photographs, but also to register them for copyright protection. (15) The Seventh Circuit Court of Appeals, while assuming that the photos were derivative works for the purposes of its opinion, reversed the district court and held the photos to be sufficiently original to warrant copyright protection, which attaches by operation of law irrespective of permission or lack thereof from the owner of the underlying work. (16)

The fundamental component necessary for a work to receive copyright protection is that it must be an "original work[] of authorship." (17) In referring to the originality requirement as the "sine qua non of copyright," the United States Supreme Court has held that a work must be independently created and have a minimal degree of creativity to qualify for copyright protection. (18) Elaborating on the constitutional requirement for copyright protection, the Court further stated "[o]riginality does not signify novelty," but the author must impart some creative spark to the work to be eligible for protection. (19) Although the courts have interpreted this creativity threshold as being very low, a work must still bear a vestige of distinctiveness that exhibits imagination as well as intellect to a degree sufficiently differentiating it from the merely mechanical in literature or artistic production. (20) Thus, copyrightability depends on originality, originality hinges on creativity, and creativity is predicated on ascertaining evidence of imagination and intellect. (21) While the constitutionally required creativity minimum remains decidedly low, courts have nevertheless developed disparate strands of copyright doctrine that routinely deny protection to expressions that are inherently conventional, pedestrian, or dictated by circumstance. (22)

Beyond the general concept of copyrightability, courts have found it particularly difficult to reach a consensus on how to interpret the quantum of originality necessary to receive protection for a derivative work. (23) A derivative work exists as a functional variation of a preexisting work that is either protected by copyright or in the public domain. (24) Regardless of the nature of the underlying work, the scope of available copyright protection for a derivative work extends only to the material the author of the derivative work contributed, as distinguished from the preexisting material. (25) Whereas some courts have held that the standard of originality should be elevated in determining the copyrightability of derivative works, others maintain that the degree of originality required for derivative works is the same as that mandated for any other work. (26) Particularly in cases involving preexisting copyrighted works, courts have reasoned that copyright protection presupposes a material difference in order to prevent a circumscription of the copyright holder's right to mimic its own creations. (27)

Due partly to the mechanical nature of photography, courts have generally struggled with defining the originality standard for photographs and in particular with contextualizing photographs within the framework of derivative works. (28) Although specifically protected by statute, photography has proven to be a problematic medium for copyright law due to diverging opinions regarding the applicable level of creative distance necessary for a finding of originality, in tandem with the unresolved issue as to whether photographs are derivative works or simply depictions of the underlying materials. (29) Despite the overall lack of consensus, copyright is consistently denied in cases of "slavish copying," with courts exhibiting a distinct pattern of favoring departures from convention over technical proficiency. (30)

In Schrock v. Learning Curve International, Inc., the Seventh Circuit Court of Appeals held that the classification of photographs as derivative works does not affect the applicable legal standard for determining their copyrightability. (31) Nonetheless, recognizing that this classification defines the scope and applicability of copyright protection, the Seventh Circuit assumed, without deciding, that the subject photographs fell within the category of derivative works. (32) As such, the Seventh Circuit declared that the only originality requirement for a derivative work is that it exhibits expressive variations sufficient to render it readily distinguishable from the underlying work. (33) In recognizing a historically generous standard among the federal courts for granting copyright protection of photographs, the Seventh Circuit held that Schrock's rendition of the subject matter, including his combined artistic and technical choices, resulted in the photographs being "sufficiently his own." (34) The Seventh Circuit specifically rejected the substance of its earlier decision in Gracen v. Bradford Exchange, (35) in which it stated that a derivative work must be "substantially different from the underlying work to be copyrightable," thereby subjecting derivative works to a higher standard of originality than other works of authorship. (36) By placing the language of Gracen in a wider precedential context, the Seventh Circuit weighed the Gracen concern of differentiating derivative works from original materials against the risk of undue limitations on the already narrow copyrightability of derivative works. (37) The Seventh Circuit asserted that an analysis that focused on identifying whether a derivative work varies enough to be readily distinguishable from the underlying work would adequately encapsulate these competing interests and allow a court to accurately determine if the derivative work contains sufficient incremental originality to qualify for copyright protection. (38) In applying this reasoning, the Seventh Circuit concluded that Schrock's photographs exhibited a sufficient amount of expressive elements to fulfill the minimal degree of originality required for copyright protection. (39)

In Schrock v. Learning Curve International, Inc., the Seventh Circuit sensibly decided to reject the "substantial difference" test, as set forth in its previous Gracen decision, because of the susceptibility of the test to misconstruction. (40) By adopting an originality standard focused...