Gracen v. Bradford Exchange
698 F.2d 300, 1983 U.S. App. LEXIS 31430, 217 U.S.P.Q. (BNA) 1294 (1983)
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Rule of Law:
To be copyrightable, a derivative work must be substantially different from the underlying work. A work that is merely a skillful reproduction in a different medium, even if it has perceptible variations, lacks the requisite originality if it is not substantially different from the preexisting work.
Facts:
- In 1939, MGM produced and copyrighted the movie 'The Wizard of Oz'.
- In 1976, MGM licensed Bradford Exchange to use characters and scenes from the movie in a series of collectors' plates.
- Bradford invited several artists, including Jorie Gracen, to submit paintings of Dorothy, providing them with photographs from the movie and instructing that the character must be 'very recognizable'.
- Gracen created a painting of Dorothy based on the movie stills and her memory of the film.
- Bradford selected Gracen's painting as the winner of the competition and paid her $200.
- Gracen and Bradford failed to agree on the terms of a contract for the full series, and Gracen refused to sign.
- Bradford then hired another artist, James Auckland, and gave him Gracen's painting to use as a model for his own painting of Dorothy.
- Bradford manufactured and sold plates based on Auckland's painting, which for the purposes of the appeal was assumed to be a copy of Gracen's work.
Procedural Posture:
- Jorie Gracen obtained copyright registrations for her painting and drawings based on 'The Wizard of Oz'.
- Gracen sued MGM, Bradford Exchange, James Auckland, and the plate manufacturer for copyright infringement in the U.S. District Court.
- MGM and Bradford filed a counterclaim, alleging that Gracen infringed MGM's copyright by displaying her derivative works.
- The district court granted summary judgment against Gracen on both her infringement claim and the counterclaim.
- The district court held that Gracen's works were not original enough to be copyrightable and that she had infringed MGM's copyright, awarding $1500 on the counterclaim.
- Gracen appealed the district court's judgment to the U.S. Court of Appeals for the Seventh Circuit.
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Issue:
Does a derivative work that is intended to be a recognizable depiction of a copyrighted character possess sufficient originality to be copyrightable under the Copyright Act?
Opinions:
Majority - Judge Posner
No, a derivative work that is intended to be a recognizable depiction of a copyrighted character does not possess sufficient originality to be copyrightable. The legal concept of originality for derivative works requires that the new work be substantially different from the underlying work. Gracen's painting, while artistically skillful, was a derivative work based on MGM's copyrighted film stills and was intended to be a recognizable depiction of Judy Garland as Dorothy. Citing the test from L. Batlin & Son, Inc. v. Snyder, the court reasoned that a derivative work must possess a 'sufficiently gross difference between the underlying and the derivative work' to be copyrightable. This higher standard for derivative works serves a legal, not aesthetic, function: it prevents the first creator of a derivative work from entangling subsequent artists in copyright disputes. Because Gracen's painting was not substantially different from the MGM movie stills, it lacked the originality required for copyright protection. Therefore, the dismissal of her copyright infringement complaint was affirmed. However, the court found a genuine issue of material fact regarding the scope of Gracen's implied license to exhibit her work, and thus vacated the summary judgment against her on MGM's counterclaim and remanded that issue for further proceedings.
Analysis:
This decision establishes a high bar for the originality required to copyright a derivative work, adopting the Second Circuit's 'substantially different' test from L. Batlin & Son. Judge Posner distinguishes between artistic originality and the legal concept of originality, emphasizing that the latter serves the practical legal function of preventing overlapping claims and litigation. The ruling makes it significantly harder for artists creating works based on preexisting copyrighted material to obtain their own copyright unless their contribution adds substantial, distinguishing creative elements, rather than just skillful rendering in a different medium. It solidifies the principle that copyright in derivative works protects only the new material, and that new material must be more than a trivial variation.
