When you hire a photographer to take promotional pictures, can he or she later bring a copyright claim against you? In Schrock v. Learning Curve International Inc., No. 08-1296 (7th Cir. Nov. 5, 2009), the Seventh Circuit Court of Appeals has ruled that the photographer does own copyrights in the pictures unless the contract with the photographer expressly states otherwise. The case, as described briefly below, also provides a useful analysis of derivative works.
Background
Schrock was hired by Learning Curve, the licensed maker of toys based on "Thomas the Tank Engine," to take photographs for use in advertising and packaging. When Learning Curve discontinued Schrock’s services, but kept using his photos, Schrock registered the photos with the Copyright Office and sued Learning Curve for copyright infringement.
An expressive work, such as a photograph, that adds new original elements to a preexisting work is called a "derivative work." Under the Copyright Act, the creator of a derivative work receives copyright protection in any new original expression he or she adds to the preexisting work. There has been some debate about how much photographic artistry is necessary to add "new original expression" to a photograph of an already-copyrighted work (in this case, photographs of toys based on copyrighted characters) sufficient to create additional copyright protection for the photograph as a derivative work.
Schrock’s ability to copyright the photos without Learning Curve’s consent also was in question because earlier cases suggested copyright protection for a derivative work is only available when the creator receives permission from the holder of rights in the preexisting work.
Decision
With regard to the originality of the photos, the Schrock court rejected the idea that the added elements in a derivative work must demonstrate a high degree of originality to qualify for copyright protection. Instead, the new elements in a derivative work need only satisfy the general originality requirement for copyrightability. Therefore, even very minimal "originality" in the derivative work qualifies for protection. For example, originality in a photograph of an existing work lies "in the rendition of the subject matter—that is, the effect created by the combination of [the photographer’s] choices of perspective, angle, lighting, shading, focus, lens, and so on."
The court took care to emphasize the limited nature of Schrock’s derivative copyright protection. While Schrock’s copyright in his photographic artistry would permit him to stop the use of his actual photos, it would not allow him to restrict the use of someone else’s photos of the same toys even if the pictures were just slightly different. In essence, Schrock had rights in the specific photos he took, but he could not prevent others from creating their own derivative works based on the same toys.
With regard to permission to make the derivative work, the owner of copyright in the original work permits the derivative copyright simply by authorizing the initial creation of the derivative work. The Schrock court rejected earlier cases suggesting that the creator of the derivative work must receive additional, separate permission to copyright the derivative work. In other words, once the photographer is hired to take the picture, his or her right to claim copyright in the derivative work arises immediately by operation of law, and no further permission to copyright the derivative work is required.
Importantly, the holder of rights in the underlying work (i.e. the toys themselves) may avoid this operation of law through a carefully worded contract with the creator of the derivative work. For example, a clause in a signed contract stating that the photographer transfers any copyright rights to the hiring party would be sufficient to prevent him or her from later asserting a claim. The Schrock court noted that, absent such a clause in his contract, Schrock had obtained a copyright in the photos. However, because the relevant contracts had not been presented to the court for consideration, the Schrock court remanded to the district court to make that determination.
In addition, copyright limitations set by a contract between the copyright owner of an original work and a licensee are likely insufficient to restrict a third party hired to create the licensee’s promotional materials from obtaining a new copyright in those derivative works. Thus, if the intermediate licensee fails to properly limit its own contract with the third party, the third party will obtain copyright rights in the derivative work by operation of law, no matter what the copyright owner of the original work intended.
Conclusion
The Schrock case recognizes that a person hired to make promotional materials obtains a copyright in those promotional materials by operation of law. The hiring party must include express language in its contracts to avoid inadvertently losing control of these important rights. In addition, any company that licenses its copyrights to others should retain the right to approve any further contracts made by those others involving the licensed rights. Otherwise, a copyright holder may find that it, like Learning Curve, is barred from using promotional materials, such as photographs, that it already bought and paid for. The Intellectual Property Services Group at Armstrong Teasdale LLP invites you to contact us with any questions or concerns that your company may have about the preservation of your copyright rights.
