Ets-Hokin v. Skyy Spirits, Inc.
2000 D.A.R. 9203, 225 F.3d 1068, 2000 Daily Journal DAR 9203 (2000)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
A photograph of a non-copyrightable, utilitarian object is not a derivative work under the Copyright Act. Such a photograph is an original work of authorship entitled to copyright protection so long as it possesses at least a minimal degree of creativity.
Facts:
- Joshua Ets-Hokin is a professional photographer.
- In the summer of 1993, representatives from Skyy Spirits, Inc. ('Skyy'), hired Ets-Hokin to photograph their distinctively shaped, blue vodka bottle.
- Ets-Hokin produced a series of commercial 'product shots' of the bottle, using specific lighting, angles, and backdrops to create a particular look.
- Under the terms of their engagement, Ets-Hokin retained all rights to the photographs and granted Skyy a limited license for their use.
- Ets-Hokin later obtained a certificate of registration from the U.S. Copyright Office for his series of photographs.
- Skyy, purportedly finding Ets-Hokin's photos unsatisfactory, subsequently hired other photographers to photograph the same bottle.
- Ets-Hokin alleged that Skyy used his photographs beyond the scope of the limited license and also used virtually identical photographs taken by the other photographers.
Procedural Posture:
- Joshua Ets-Hokin sued Skyy Spirits, Inc., and others in the U.S. District Court for the Northern District of California, alleging copyright infringement, fraud, and negligent misrepresentation.
- The defendants moved for summary judgment on the copyright claim, arguing Ets-Hokin's photographs were not copyrightable.
- The district court granted summary judgment in favor of Skyy Spirits.
- The district court held that the photographs were derivative works of the Skyy bottle and lacked the requisite originality for derivative works.
- Ets-Hokin (appellant) appealed the summary judgment ruling on the copyright claim to the U.S. Court of Appeals for the Ninth Circuit, where Skyy Spirits was the appellee.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Does a professional photograph of a non-copyrightable, utilitarian object (a vodka bottle) constitute a 'derivative work' under the Copyright Act, or is it an original work of authorship subject to the standard minimal creativity requirement for copyrightability?
Opinions:
Majority - McKeown
No, a photograph of a non-copyrightable, utilitarian object is not a derivative work; it is an original work subject to the standard minimal creativity requirement. The court reasoned that the threshold for originality in copyright law is extremely low, and a photograph easily meets this standard through the photographer's creative choices regarding lighting, angle, shading, and subject arrangement. The district court erred by analyzing the photographs as derivative works. A work can only be 'derivative' if it is based upon a 'preexisting work' that is itself copyrightable. Because the Skyy vodka bottle is a useful article with no separable, copyrightable artistic features, it is not a 'preexisting work' under the Copyright Act. The bottle's potential protection under trade dress law is irrelevant to the copyright analysis. Therefore, Ets-Hokin's photographs are original works entitled to copyright protection, and the case must be remanded to determine infringement.
Dissenting - D.W. Nelson
No, the photograph is an original work, but the lower court's dismissal should be affirmed on other grounds. The dissent agrees that the district court's derivative works analysis was incorrect and that the photographs are original under the low threshold for copyrightability. However, because that threshold is so low, the allegedly infringing photographs taken by other photographers are also original and therefore cannot be infringing. Furthermore, Ets-Hokin's claim would fail as a matter of law under the merger and scenes à faire doctrines, as he cannot monopolize the standard, commonplace way of photographing a commercial product. The majority is also too quick to rule out that a work with trade dress protection could be the basis for a derivative work.
Analysis:
This decision clarifies a crucial boundary in copyright law by establishing that a photograph's subject matter must itself be copyrightable for the photograph to be considered a 'derivative work.' This prevents the application of a higher originality standard to a vast body of commercial and artistic photography featuring non-copyrightable objects. The ruling reinforces the low threshold of originality required for photographs, protecting photographers' creative choices in lighting, angle, and composition. It also maintains a clear distinction between copyright and trademark/trade dress law, preventing the doctrines of one from improperly influencing the analysis of the other.
