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Paper: "The Originality
Requirement"
Paper
"The Originality Requirement: Preventing the Copy Photography
End-Run around the Public Domain"
Kathleen Butler Thomas Cooley School of Law Lansing
Comments prepared for the NINCH Copyright Town Meeting Held
at the Visual Resources Association Conference, April 5, 2000
© 2000 Kathleen Butler
Based on Kathleen Butler, "Keeping the World Safe from
Naked-Chicks-in-Art Refrigerator Magnets: The Plot to Control Art
Images in the Public Domain through Copyrights in Photographic and
Digital Reproductions." The Hastings Communications and
Entertainment Law Journal, 21. Fall 1998
I haven't been to the Louvre. But I know what
the Mona Lisa looks like. I haven't been to the Uffizi Gallery. But
I know what the Birth of Venus looks like. I've seen these paintings
in art books and projected on slides in an art history class. I've
seen them on television and in movies. I can summon an image of
scores of artworks that I have never stood in front of, and I can do
this because of the invention of the camera.
Before photography, the public had little
opportunity to view works of art in any number, because the works
were inaccessible -- isolated in museums, churches, palaces, and
private collections spread around the world. By reproducing art, the
camera allowed artworks to be in two places at one time, allowed
artworks to travel to the viewer rather than requiring the viewer to
travel to the art. One 19th century art critic hailed photographic
reproduction as the end of the "old selfish aristocratic days of
hoarding."
Not only does reproduction allow the public to
see art, reproduction allows the public to use art. Sometimes the
use is a Matisse sweat shirt, selling for $24.99. But other times,
reproduced art illustrates a book on medieval dress or demonstrates
a lecturer's point about the differences between Italian and Dutch
portraiture. In the artistic tradition of appropriation, art is
incorporated into other artworks. Or maybe it's stuck on the
refrigerator door to preserve a memory.
According to John Berger, transforming art works
into easily reproducible, usable images, wrests art away from the
few specialized experts, away from any religious or ruling class
preserve, and gives it to the populace to apply to their own lives.
Instead of museums, Berger suggests, we should have personal
bulletin boards, papered with "letters, snapshots, reproductions of
paintings, newspaper cuttings, original drawings, postcards." No one
here really wants to eliminate museums, but what Berger describes
through the lens of the art critic, is the legal concept of the
public domain, which for works of visual art has practical meaning
only because of photographic -- and now digital --
reproduction.
The Copyright Clause of the United States
Constitution envisions and the Copyright Act establishes a time when
the exclusive rights granted writers, painters, and sculptors are
released to the public. The works become public domain, and the
public may freely reproduce, adapt, distribute, perform, and display
the works or copies of them. The end of the copyright monopoly and
the release of rights to the public was designed to balance the goal
of protecting artists' interests in the fruits of their labor with
the competing but equally desirable goal of granting the public
"free access to materials essential to the development of
society."
Public-domain artworks have a different life
from public-domain literary and musical works. Because Shakespeare
is in the public domain, directors can portray As You Like It as
occurring on a cattle drive in the Old West or set Taming of the
Shrew, as I recently saw it, in the 1920s, with Padua as Oxford and
Petruchio's country home in Canada, complete with moose heads
repeatedly popping out through the scenery. Not only can the
directors stage their own interpretations of Shakespeare, they can
do so without paying royalties to the Folger Shakespeare
Library.
Public-domain works of visual art lead a more
sheltered and restricted life. Museums see themselves as both
guardians and beneficiaries of the public-domain works in their
collections, and they wield aesthetic and financial control over
them by controlling their photographic reproductions. This is
possible because an artwork is a tangible, unique object, unlike the
Shakespeare script, and its owner controls physical access to its
content.
Museums can and do establish rules for what
occurs in their galleries. Some forbid photography entirely. Others
permit only the kind of photography that will produce unpublishable
results. Some instruct visitors that they may use their own
photographs for personal purposes only, while others require
visitors to sign camera permits in which they agree not to
reproduce, publish, or distribute any images they have shot inside
the museum.
As stewards of art for the public, museums must
make works available to the public for use. So museums routinely
hire photographers to make photographs and transparencies of the
works in their collections and will license or rent these images to
scholars and others, for a one-time use, for a fee, and subject to
various limitations.
And then, and this is the clever part, the
museums assert that the photographic reproduction of the artwork is
itself a copyrighted work and that the museum holds the copyright to
the reproduction. By controlling access to the original artwork, so
that the public cannot make its own direct copies, and also
asserting a copyright in the only usable photographic reproductions
of a public-domain image, the museum manages to control the public's
ability to exercise its rights in a public-domain work.
In other words, the museums manage an end-run
around the concept of the public domain and end up with something
close to a copyright in public-domain art images by claiming
copyrights in their photographic copies. In fact it's better than
copyright. It's more enduring. Has your time run out? Take another
picture. This really straps educators who cannot always afford the
fees on their academic budgets. But the issue isn't just financial.
It is also aesthetic. The museums are controlling how images may be
used by the restrictions they place on use of their
reproductions.
Relying on the museum practice of asserting
copyrights in photographic reproductions, digitizers such as Corbis
have applied for and been granted copyrights in their digital
reproductions. This is a significant move, because in the future
digital images will be the primary means of reproducing
art.
So, are photographic and digital reproductions
truly copyrightable? The answer to this question lies in the
constitutional and statutory requirement of originality. Both the
constitution and the copyright act limit copyright protection to
"original works of authorship." Without originality, a work is not
copyrightable.
Museums have assumed they are protected because
originality is a very low threshold. A standard formulation is that
a work is original when it "owes its origin to the author, meaning
it is independently created and not copied from other works." You'd
think that the "not copied from other works" part of the definition
would automatically mean that the museum photograph of a Rembrandt
is not copyrightable because it is copied from another work.
However, the Copyright Act recognizes "art reproductions" as a type
of "pictorial, graphic, and sculptural work" that may be
copyrighted.
So, what is an original reproduction?
To answer this, you must first understand that
copyright protection in art reproductions is known as a "thin
copyright." The copyright act protects only those elements of the
reproduction that are not copied from the underlying work. By
limiting protection to the uncopied parts of the reproduction, the
Copyright Act explicitly seeks to keep reproducers from using their
copyrights in reproductions to affect copyrights in or public-domain
status of the works they have reproduced.
Step number one, then, is to determine whether
the work contains uncopied elements. Next, the court must determine
whether the uncopied parts of the reproduction are sufficiently
original to merit copyright protection. Because of the special
nature of the copyright in reproductions, the test for the
originality of the uncopied parts is not simply the "owes its origin
to" test.
Courts have applied two standards. The first
standard requires the copyright claimant to demonstrate a
substantial, distinguishable variation between the reproduction and
the original work. In Alfred Bell v. Catalda Fine Arts, the
plaintiff had commissioned and copyrighted mezzotint engravings of
well-known, public-domain paintings from the 18th and 19th
centuries, including Gainsborough's Blue Boy and Lawrence's Pinky.
The defendant produced and sold color lithographs of the plaintiff's
mezzotints. When the plaintiff sued for copyright infringement, the
defendant argued that the plaintiff's mezzotints lacked sufficient
originality to satisfy the Copyright Clause and so were not entitled
to copyright protection.
The Southern District of New York and then the
Second Circuit on appeal both disagreed. The District Court
explained that "Congress in the Act, and the Copyright Office in the
regulations adopted pursuant to the Act, recognize that there may be
in reproductions of works of art an artistic element distinct from
that of the original work of art." That distinct artistic element
satisfies the constitutional requirement of originality, and so it
is that distinct artistic element the law protects.
The district court concluded that the engraver's
handling of the painting in another medium was original, that the
process of using lines and dots and shading to express what was in
the painting created a distinct artistic element. The second circuit
agreed and required new elements that were a "contribution from the
author, something more than a 'merely trivial' variation, something
recognizably his own." Subsequent case law has refined the Alfred
Bell definition to require a "substantial variation."
Changes in color and changes that have been
motivated by greater ease in mass production have been found too
trivial to merit protection. For example, a manufacturer claimed
that its foam Statue of Liberty hats were original because the
spikes were uniform, but the spikes on the actual Statue of Liberty
are not. The court responded, "You did this because it was easier,
not to express an artistic viewpoint, and so it's not
original."
Because the court in Alfred Bell found
originality in the handling of the paintings in a new medium, the
question arose in later cases whether handling in a new medium was
per se original, but the case law has determined that it is not.
This issue arose when the Bridgeman Art Library sued Corel for
allegedly infringing its copyrights in transparencies of
public-domain artworks. Bridgeman defended the originality and thus
the copyrightability of its transparencies by arguing that its
transformation of the paintings to the photographic medium
"established sufficient variation from the underlying works to
support originality." The Southern District of New York disagreed,
relying heavily on L. Batlin & Son v. Snyder, a 1976 case in
which the parties disputed the originality of plastic Uncle Sam
Banks that reproduced public-domain iron mechanical banks. The
copyright claimant relied on Alfred Bell and claimed that by
handling the banks in the new medium of plastic, he had created an
original work.
The Second Circuit rejected this argument,
reasoning that any time a work is translated into another medium,
trivial variation will necessarily occur, and that such necessary
variation cannot be attributed to the reproducer who did not
independently evolve the medium. Protecting the variations that
occur solely because of a change in medium (it's flat because it's a
photograph; it's luminous because it's on a computer screen) would
produce the "ludicrous result" that the first person to reproduce a
public-domain artwork in a different medium thereafter obtains a
monopoly on the underlying work in the medium of the reproduction
(because these would be flat or luminous also and therefore
infringing). The court explained that "to extend copyrightabilty to
minuscule variations would simply put a weapon for harassment in the
hands of mischievous copiers intent on appropriating and
monopolizing public domain work."
The Bridgeman case reaffirms generally that
translation to a new medium does not automatically establish
originality and states specifically that the changes in a
photographic reproduction that are inherent to the change of medium
do not constitute originality.
Distinguishable variation, though, is not the
only test available. In the 1959 case of Alva Studios v. Winninger,
the Southern District of New York established an alternate test. In
that case the plaintiff had laboriously and accurately reproduced
the Carnegie Institute's casting of Rodin's Hand of God in a smaller
size. When a competitor also marketed reproductions of the Hand of
God, the plaintiff sued for copyright infringement, and the
defendant who claimed it had copied the Met's original casting of
Hand of God responded that the plaintiff's reproduction was not
original and hence not copyrightable.
Indeed, plaintiff's reproduction was so
accurate, it couldn't satisfy the substantial variation test, so the
court made up a new test that Plaintiff could satisfy. A work is
original if it is created by the reproducer's "own skill, labor, and
judgment without directly copying or evasively imitating the work of
another." Subsequent case law has refined the definition to require
"true artistic skill" and not simply the use of "great effort and
time."
This is not an appropriate test for the
originality of art reproductions, and the reasons could fill a
separate talk. Briefly, there is the problem that most art
reproductions, unless made by a photocopy machine, do require skill,
labor, and judgment. The skill test could bestow copyright too
freely.
The Cliff Notes version of my concerns is this.
All reproductions require skill, so it is difficult for a court to
tell when the skill has crossed the line into protectible skill.
Also, it's difficult to determine what is protected by this test,
since nothing new is created in the works it protects. All the
accurate reproduction does is to commodify the art. It does not put
any new image out there that wasn't there before. If it protects
skill, that permeates the entire work, which causes the further
difficulty that the skill standard can be used to monopolize
public-domain images and harass subsequent reproducers of original
images.
The next question is whether photographic and
digital reproductions of two-dimensional artworks would satisfy
either the substantial variation test or the skill, labor, and
judgment test. The answer should be no.
Under the variation test, a copyright claimant
could point to differences between the reproduction and the original
artwork. But if the variations are not distinct, artistic elements,
substantial changes rather than mere by-products of reproducing the
art in another medium, they will not satisfy the test. In addition,
the grant of copyright protection must not affect the public-domain
status of the original work being reproduced.
How, then, is a photograph or digital image
different from the painting it copies? The color in a photograph or
digitally produced image cannot be true to the color in the
painting. A photograph shows the colors of a painting from a fixed
angle and in a fixed light, and subtleties and variations within
color are lost. The range of palate that film and printing inks can
capture is more limited than the range of pigments available to the
painter. This difference is not a new contribution from the
reproducer but a dilution of the original produced by the inadequacy
of the copying medium. It is not a "distinct artistic element"
deserving protection. In a case involving reproductions of
public-domain Wizard of Oz lithographs, even deliberate, distinct
color changes were not substantial enough to be copyrightable.
Protecting the resulting color dilution in a photographic or digital
reproduction of a work of art would create a monopoly on color
differences necessitated by the limitations of the medium and thus
prevent subsequent reproductions in the medium, which would of
necessity contain the same limited palate.
The surface of a reproduction is different from
the surface of a painting. The texture and bulk of the paint is
replaced by flat glossy paper or a glowing screen. But again, this
is a dilution of the effect of the original necessitated by the
switch to the new medium. It is not the result of the reproducer's
"own artistic viewpoint," as required by some of the
cases.
Photographic and digital reproductions are
smaller than the originals, but in the Hand of God case, reduction
to a smaller size was not enough to satisfy the test.
We know, too, from the Uncle Sam bank case and
from Bridgeman Art Library v. Corel that merely reproducing the
painting in the photographic medium does not automatically satisfy
the originality requirement.
Because the inherent and therefore trivial
differences of color, texture, and size permeate the photographic or
digital reproduction, a court cannot possibly isolate distinct,
protectible differences. Consequently, permitting copyrights in
photographic and digital copies of art would threaten rights to the
underlying works, because the reproduction as a whole would have to
be protected, and subsequent reproductions of the original could
falsely but convincingly be accused of infringing the reproduction.
If reproduction #1 contains only those differences inherent in a
photographic reproduction, and reproduction #2 contains only those
differences inherent in a photographic reproduction, reproduction #2
will look just like reproduction #1, and reproducer #1 can accuse
reproducer #2 of infringement. But if reproduction #1 had contained
substantial differences, and reproducer #2 had copied the original
public domain work, the second reproduction would not contain the
differences of the first, and a court would be able to tell that the
second reproduction did not infringe the first.
Given the very poor chances of succeeding with
the substantial variation test, museums and digitizers are more
likely to argue that they deserve copyright protection because of
their skill, labor, and judgment. This was the Bridgeman Art
Library's second argument. Photography requires talent and therefore
the transparencies are original, the lawyers argued. The court
disagreed, and it did so without exploring the skill required for
copy photography but instead by examining the purpose of copy
photography and the resulting image. "The point of the exercise,"
the court wrote, " was to reproduce the underlying works with
absolute fidelity." This made them "slavish copies," undeserving of
copyright. The "slavish copy" idea is not new to the Bridgeman case.
Even in the Hand of God case, the court said that where the skill
and effort involve "direct copying" the skill test is not satisfied.
Some reproductions, however skilled, must fall into a category of
"mere copies" that cannot be protected. As the Uncle Sam bank case
explained, when a reproduction is a "mechanical" or "mere slavish"
copy, it is not copyrightable.
The documentary photographer of two-dimensional
works of art strives to make accurate copies, faithful to the
original. The value of the copies is that they do not interpret or
add or change, because the purpose of photographing two-dimensional
works of art is largely to provide information about the work or a
usable substitute for the work.
The camera or computer is merely a
sophisticated, mechanical copying device. The surrogate image
provided is a slavish copy, slavish in every detail so that it can
serve its purpose of providing accurate information about the image
in the two-dimensional work. The accurate copy is achieved through a
mechanical process -- either photography or digital scanning. As
these are copies not only slavish but mechanical, digital and
photographic reproductions should not be copyrightable. They should
fail the skill test before the issue of skill is ever
reached.
If the court does address the skill issue, it
should find that photography and digital scanning do not involve the
kind of skill the test requires. In Hearn v. Meyer, a 1987 case
involving Wizard of Oz lithographs, the Southern District of New
York found that Michael Hearn's year-long, painstaking recreation of
the lithographs did not satisfy the originality requirement. Using
pen and ink on acetate, Hearn drew every mark by hand two or three
times to produce a single color and traced or redrew every color. To
produce secondary colors, he printed primary colors on top of each
other. At each stage he pulled proofs to check the register and
density of color and continually redrew and reapplied mylar. Despite
these laborious and skilled efforts, Hearn failed to demonstrate the
level of originality and skill that afforded protection to the Hand
of God reproduction.
This does not bode well for the photographers
and digitizers. Physical skill, special training, and "sheer
artistic skill and effort" have been ruled not enough to substitute
for substantial variation. I can find no copyright claimant other
than the plaintiff who reproduced Hand of God who has succeeded
under this test. All other copyright claimants under this test have
lost.
In Hearn v. Meyer, the court observed that the
reproduction of the Rodin required "more than just the skill of the
artisan doing the reproduction; it took great creativity as well as
skill to interpret, project and transpose the original Rodin work,
in order to create a scale model thereof." Copy photography of
two-dimensional art objects requires no projecting or transposing
and demands as little interpretation as possible.
Given the ease of the digital scanning process,
digitizers will probably emphasize the technical expertise and
creativity involved in making adjustments to pattern, brightness,
contrast, and color after the scan is made. This, though, is a
routinized process, and the technician's greatest contribution is
time. But case law tells us that great effort and time are not
enough and true artistic skill is required. A court should not find
sufficient originality in digital image capture to support
originality.
Under either test, photographic and digital
reproductions are not original and therefore not copyrightable. When
these copyrights fall, the quasi-copyrights in the public domain
works they reproduce also fall, and the public domain is
safeguarded. And yes, sometimes that just means that novelty
companies can put great works of art on neckties and night lights
and refrigerator magnets. But it will also free teachers to project
public-domain images on individual viewscreens in their classrooms
or post them on course Web pages. It will allow scholars to use
royalty-free works in books. It will let artists continue the
tradition of appropriating and building from the work of artists who
preceded them.
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