FEIST PUBLICATIONS, INC. v. RURAL TELEPHONE SERVICE CO., 499 U

Topic 2 – What types of intellectual product or creative activity are covered (and not covered)?

A. Originality

FEIST PUBLICATIONS, INC. v. RURAL TELEPHONE SERVICE CO., 499 U.S. 340

(1991)

O'CONNOR, J., delivered the opinion of the Court, in which REHNQUIST, C. J., and WHITE, MARSHALL, STEVENS, SCALIA, KENNEDY, and SOUTER, JJ., joined. BLACKMUN, J., concurred in the judgment.

[p*342] JUSTICE O'CONNOR delivered the opinion of the Court.

[1] This case requires us to clarify the extent of copyright protection available to telephone directory white pages.

I

[2] Rural Telephone Service Company is a certified public utility that provides telephone service to several communities in northwest Kansas. It is subject to a state regulation that requires all telephone companies operating in Kansas to issue annually an updated telephone directory. Accordingly, as a condition of its monopoly franchise, Rural publishes a typical telephone directory, consisting of white pages and yellow pages. The white pages list in alphabetical order the names of Rural's subscribers, together with their towns and telephone numbers. The yellow pages list Rural's business subscribers alphabetically by category and feature classified advertisements of various sizes. Rural distributes its directory free of charge to its subscribers, but earns revenue by selling yellow pages advertisements.

[3] Feist Publications, Inc., is a publishing company that specializes in area-wide telephone directories. Unlike a typical [p*343] directory, which covers only a particular calling area, Feist's area-wide directories cover a much larger geographical range, reducing the need to call directory assistance or consult multiple directories. The Feist directory that is the subject of this litigation covers 11 different telephone service areas in 15 counties and contains 46,878 white pages listings -- compared to Rural's approximately 7,700 listings. Like Rural's directory, Feist's is distributed free of charge and includes both white pages and yellow pages. Feist and Rural compete vigorously for yellow pages advertising.

[4] As the sole provider of telephone service in its service area, Rural obtains subscriber information quite easily. Persons desiring telephone service must apply to Rural and provide their names and addresses; Rural then assigns them a telephone number. Feist is not a telephone company, let alone one with monopoly status, and therefore lacks independent access to any subscriber information. To obtain white pages listings for its area-wide directory, Feist approached each of the 11 telephone companies operating in northwest Kansas and offered to pay for the right to use its white pages listings.

Copyright 2003: Topic 2-1

[5] Of the 11 telephone companies, only Rural refused to license its listings to Feist. Rural's refusal created a problem for Feist, as omitting these listings would have left a gaping hole in its area-wide directory, rendering it less attractive to potential yellow pages advertisers. In a decision subsequent to that which we review here, the District Court determined that this was precisely the reason Rural refused to license its listings. The refusal was motivated by an unlawful purpose "to extend its monopoly in telephone service to a monopoly in yellow pages advertising." Rural Telephone Service Co. v. Feist Publications, Inc., 737 F. Supp. 610, 622 (Kan. 1990).

[6] Unable to license Rural's white pages listings, Feist used them without Rural's consent. Feist began by removing several thousand listings that fell outside the geographic range of its area-wide directory, then hired personnel to investigate the 4,935 that remained. These employees verified [p*344] the data reported by Rural and sought to obtain additional information. As a result, a typical Feist listing includes the individual's street address; most of Rural's listings do not. Notwithstanding these additions, however, 1,309 of the 46,878 listings in Feist's 1983 directory were identical to listings in Rural's 1982-1983 white pages. App. 54 (para. 15-16), 57. Four of these were fictitious listings that Rural had inserted into its directory to detect copying.

[7] Rural sued for copyright infringement in the District Court for the District of Kansas taking the position that Feist, in compiling its own directory, could not use the information contained in Rural's white pages. Rural asserted that Feist's employees were obliged to travel door-to-door or conduct a telephone survey to discover the same information for themselves. Feist responded that such efforts were economically impractical and, in any event, unnecessary because the information copied was beyond the scope of copyright protection. The District Court granted summary judgment to Rural, explaining that "courts have consistently held that telephone directories are copyrightable" and citing a string of lower court decisions. 663 F. Supp. 214, 218 (1987). In an unpublished opinion, the Court of Appeals for the Tenth Circuit affirmed "for substantially the reasons given by the district court." App. to Pet. for Cert. 4a, judgt. order reported at 916 F. 2d 718 (1990). We granted certiorari, 498 U.S. 808 (1990), to determine whether the copyright in Rural's directory protects the names, towns, and telephone numbers copied by Feist.

II

A

[8] This case concerns the interaction of two well-established propositions. The first is that facts are not copyrightable; the other, that compilations of facts generally are. Each of these propositions possesses an impeccable pedigree. That there can be no valid copyright in facts is universally understood. The most fundamental axiom of copyright law is that [p*345] "no author may copyright his ideas or the facts he narrates." Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 556 (1985). Rural wisely concedes this point, noting in its brief that "facts and discoveries, of course, are not themselves subject to copyright protection." Brief for Respondent 24. At the same time, however, it is beyond dispute that compilations of facts are within the subject matter of copyright. Compilations were expressly mentioned in the Copyright Act of 1909, and again in the Copyright Act of 1976.

[9] There is an undeniable tension between these two propositions. Many compilations consist of nothing but raw data -- i. e., wholly factual information not accompanied by any original written expression. On what basis may one claim a copyright in such a work? Common sense tells us that 100 uncopyrightable facts do not magically change their status when gathered together in one place. Yet copyright law seems to contemplate that compilations that consist exclusively of facts are potentially within its scope.

[10] The key to resolving the tension lies in understanding why facts are not copyrightable. The sine qua non of copyright is originality. To qualify for copyright protection, a work must be original to the author.


See Harper & Row, supra, at 547-549. Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity. 1 M. Nimmer & D. Nimmer, Copyright §§ 2.01[A], [B] (1990) (hereinafter Nimmer). To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, "no matter how crude, humble or obvious" it might be. Id., § 1.08[C][1]. Originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying. To illustrate, [p*346] assume that two poets, each ignorant of the other, compose identical poems. Neither work is novel, yet both are original and, hence, copyrightable. See Sheldon v. Metro-Goldwyn Pictures Corp., 81 F. 2d 49, 54 (CA2 1936).

[11] Originality is a constitutional requirement. The source of Congress' power to enact copyright laws is Article I, § 8, cl. 8, of the Constitution, which authorizes Congress to "secure for limited Times to Authors . . . the exclusive Right to their respective Writings." In two decisions from the late 19th Century -- The Trade-Mark Cases, 100 U.S. 82 (1879); and Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884) -- this Court defined the crucial terms "authors" and "writings." In so doing, the Court made it unmistakably clear that these terms presuppose a degree of originality.

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[14] The originality requirement articulated in The Trade-Mark Cases and Burrow-Giles remains the touchstone of copyright protection today. See Goldstein v. California, 412 U.S. 546, 561-562 (1973). It is the very "premise of copyright law." Miller v. Universal City Studios, Inc., 650 F. 2d 1365, 1368 (CA5 1981). Leading scholars agree on this point. As one pair of commentators succinctly puts it: "The originality requirement is constitutionally mandated for all works." Patterson & Joyce, Monopolizing the Law: The Scope of Copyright Protection for Law Reports and Statutory Compilations, 36 UCLA L. Rev. 719, 763, n. 155 (1989) (emphasis in original) (hereinafter Patterson & Joyce). Accord id., at 759-760, and n. 140; Nimmer § 1.06[A] ("originality is a statutory as well as a constitutional requirement"); id., § 1.08[C][1] ("a modicum of intellectual labor . . . clearly constitutes an essential constitutional element").

[15] It is this bedrock principle of copyright that mandates the law's seemingly disparate treatment of facts and factual compilations. "No one may claim originality as to facts." Id., § 2.11[A], p. 2-157. This is because facts do not owe their origin to an act of authorship. The distinction is one between creation and discovery: the first person to find and report a particular fact has not created the fact; he or she has merely discovered its existence. To borrow from Burrow-Giles, one who discovers a fact is not its "maker" or "originator." 111 U.S., at 58. "The discoverer merely finds and records." Nimmer § 2.03[E]. Census-takers, for example, do not "create" the population figures that emerge from their efforts; in a sense, they copy these figures from the world around them. Denicola, Copyright in Collections of Facts: A Theory for the Protection of Nonfiction Literary Works, 81 Colum. L. Rev. 516, 525 (1981) (hereinafter Denicola). Census data therefore do not trigger copyright because these data are not "original" in the constitutional sense. Nimmer [p*348] § 2.03[E]. The same is true of all facts -- scientific, historical, biographical, and news of the day. "They may not be copyrighted and are part of the public domain available to every person." Miller, supra, at 1369.

[16] Factual compilations, on the other hand, may possess the requisite originality. The compilation author typically chooses which facts to include, in what order to place them, and how to arrange the collected data so that they may be used effectively by readers. These choices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity, are sufficiently original that Congress may protect such compilations through the copyright laws. Nimmer §§ 2.11[D], 3.03; Denicola 523, n. 38. Thus, even a directory that contains absolutely no protectible written expression, only facts, meets the constitutional minimum for copyright protection if it


features an original selection or arrangement. See Harper & Row, 471 U.S., at 547. Accord Nimmer § 3.03.

[17] This protection is subject to an important limitation. The mere fact that a work is copyrighted does not mean that every element of the work may be protected. Originality remains the sine qua non of copyright; accordingly, copyright protection may extend only to those components of a work that are original to the author. Patterson & Joyce 800-802; Ginsburg, Creation and Commercial Value: Copyright Protection of Works of Information, 90 Colum. L. Rev. 1865, 1868, and n. 12 (1990) (hereinafter Ginsburg). Thus, if the compilation author clothes facts with an original collocation of words, he or she may be able to claim a copyright in this written expression. Others may copy the underlying facts from the publication, but not the precise words used to present them. In Harper & Row, for example, we explained that President Ford could not prevent others from copying bare historical facts from his autobiography, see 471 U.S., at 556-557, but that he could prevent others from copying his "subjective descriptions and portraits of public figures." [p*349] Id., at 563. Where the compilation author adds no written expression but rather lets the facts speak for themselves, the expressive element is more elusive. The only conceivable expression is the manner in which the compiler has selected and arranged the facts. Thus, if the selection and arrangement are original, these elements of the work are eligible for copyright protection. See Patry, Copyright in Compilations of Facts (or Why the "White Pages" Are Not Copyrightable), 12 Com. & Law 37, 64 (Dec. 1990) (hereinafter Patry). No matter how original the format, however, the facts themselves do not become original through association. See Patterson & Joyce 776.

[18] This inevitably means that the copyright in a factual compilation is thin. Notwithstanding a valid copyright, a subsequent compiler remains free to use the facts contained in an another's publication to aid in preparing a competing work, so long as the competing work does not feature the same selection and arrangement. As one commentator explains it: "No matter how much original authorship the work displays, the facts and ideas it exposes are free for the taking . . . . The very same facts and ideas may be divorced from the context imposed by the author, and restated or reshuffled by second comers, even if the author was the first to discover the facts or to propose the ideas." Ginsburg 1868.

[19] It may seem unfair that much of the fruit of the compiler's labor may be used by others without compensation. As Justice Brennan has correctly observed, however, this is not "some unforeseen byproduct of a statutory scheme." Harper & Row, 471 U.S., at 589 (dissenting opinion). It is, rather, "the essence of copyright," ibid., and a constitutional requirement. The primary objective of copyright is not to reward the labor of authors, but "to promote the Progress of Science and useful Arts." Art. I, § 8, cl. 8. Accord Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975). To this end, copyright assures authors the right to their original [p*350] expression, but encourages others to build freely upon the ideas and information conveyed by a work. Harper & Row, supra, at 556-557. This principle, known as the idea-expression or fact-expression dichotomy, applies to all works of authorship. As applied to a factual compilation, assuming the absence of original written expression, only the compiler's selection and arrangement may be protected; the raw facts may be copied at will. This result is neither unfair nor unfortunate. It is the means by which copyright advances the progress of science and art.

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[21] This, then, resolves the doctrinal tension: Copyright treats facts and factual compilations in a wholly consistent manner. Facts, whether alone or as part of a compilation, are not original and therefore may not be copyrighted. A factual compilation is eligible for copyright if it features an original selection or arrangement of facts, but the copyright is limited to [p*351] the particular selection or arrangement. In no event may copyright extend to the facts themselves.

B


[22] As we have explained, originality is a constitutionally mandated prerequisite for copyright protection. The Court's decisions announcing this rule predate the Copyright Act of 1909, but ambiguous language in the 1909 Act caused some lower courts temporarily to lose sight of this requirement.

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As explained in the Nimmer treatise: “The 1909 Act neither defined originality, nor even expressly required that a work be 'original' in order to command protection. However, the courts uniformly inferred the requirement from the fact that copyright protection may only be claimed by 'authors' . . . . It was reasoned that since an author is 'the . . . [p*352] creator, originator' it follows that a work is not the product of an author unless the work is original.” Nimmer § 2.01 (footnotes omitted) (citing cases).

[27] Making matters worse, these courts developed a new theory to justify the protection of factual compilations. Known alternatively as “sweat of the brow” or “industrious collection,” the underlying notion was that copyright was a reward for the hard work that went into compiling facts. The classic formulation of the doctrine appeared in Jeweler's Circular Publishing Co., 281 F., at 88:

“The right to copyright a book upon which one has expended labor in its preparation does not depend upon whether the materials which he has collected consist or not of matters which are publici juris, or whether such materials show literary skill or originality, either in thought or in language, or anything more than industrious [p*353] collection. The man who goes through the streets of a town and puts down the names of each of the inhabitants, with their occupations and their street number, acquires material of which he is the author” (emphasis added).

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C

[31] “Sweat of the brow” decisions did not escape the attention of the Copyright Office. When Congress decided to overhaul the copyright statute and asked the Copyright Office to study existing problems, see Mills Music, Inc. v. Snyder, 469 U.S. 153, 159 (1985), the Copyright Office promptly recommended that Congress clear up the confusion in the lower courts as to the basic standards of copyrightability. The Register of Copyrights explained in his first report to Congress that “originality” was a “basic requisite” of copyright under the 1909 Act, but that “the absence of any reference to [originality] in the statute seems to have led to misconceptions as to what is copyrightable matter.” Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law, 87th Cong., 1st Sess., p. 9 (H. Judiciary Comm. Print 1961). The Register suggested making the originality requirement explicit. Ibid.

[32] Congress took the Register's advice. In enacting the Copyright Act of 1976, Congress dropped the reference to “all the writings of an author” and replaced it with the phrase “original works of authorship.” 17 U.S.C. § 102(a). In making explicit the originality requirement, Congress announced that it was merely clarifying existing law: “The two fundamental criteria of copyright protection [are] originality and fixation in tangible form . . . . The phrase 'original works of authorship,' which is purposely left undefined, is intended to incorporate without change the standard of originality established by the courts under the present [1909] copyright statute.” H. R. Rep. No. 94-1476, p. 51 (1976) (emphasis added) (hereinafter H. R. Rep.); S. Rep. No. 94-473, p. 50 (1975) (emphasis added) (hereinafter S. Rep.). This sentiment was echoed by the Copyright Office: “Our intention here is to maintain the established standards of originality . . . .” Supplementary Report of the Register of Copyrights on the General Revision of U.S. Copyright Law, 89th Cong., 1st Sess., Part 6, p. 3 (H. Judiciary Comm. Print 1965) (emphasis added).


[33] To ensure that the mistakes of the “sweat of the brow” courts would not be repeated, Congress took additional measures. For example, § 3 of the 1909 Act had stated that copyright protected only the “copyrightable component parts” of a work, but had not identified originality as the basis for distinguishing those component parts that were copyrightable from those that were not. The 1976 Act deleted this section and replaced it with § 102(b), which identifies specifically those elements of a work for which copyright is not available: “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” § 102(b) is universally understood to prohibit any copyright in facts. Harper & Row, supra, at 547, 556. Accord Nimmer § 2.03[E] (equating facts with “discoveries”). As with § 102(a), Congress emphasized that § 102(b) did not change the law, but merely clarified it: “Section 102(b) in no way enlarges or contracts the scope of copyright protection under the present law. Its purpose is to restate . . . that the basic dichotomy between expression and idea remains unchanged.” H. R. Rep., at 57; S. Rep., at 54.

[34] Congress took another step to minimize confusion by deleting the specific mention of “directories . . . and other compilations” in § 5 of the 1909 Act. As mentioned, this section had led some courts to conclude that directories were copyrightable per se and that every element of a directory was protected. In its place, Congress enacted two new provisions. First, to make clear that compilations were not copyrightable per se, Congress provided a definition of the term “compilation.” Second, to make clear that the copyright in a compilation did not extend to the facts themselves, Congress enacted 17 U.S.C. § 103.

[35] The definition of “compilation” is found in § 101 of the 1976 Act. It defines a “compilation” in the copyright sense as “a work formed by the collection and assembly of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship” (emphasis added).

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[40] Not every selection, coordination, or arrangement will pass muster. This is plain from the statute. It states that, to merit protection, the facts must be selected, coordinated, or arranged “in such a way” as to render the work as a whole original. This implies that some “ways” will trigger copyright, but that others will not. See Patry 57, and n. 76. Otherwise, the phrase “in such a way” is meaningless and Congress should have defined “compilation” simply as “a work formed by the collection and assembly of preexisting materials or data that are selected, coordinated, or arranged.” That Congress did not do so is dispositive. In accordance with “the established principle that a court should give effect, if possible, to every clause and word of a statute,” Moskal v. United States, 498 U.S. 103, 109-110 (1990) (internal quotations omitted), we conclude that the statute envisions that there will be some fact-based works in which the selection, coordination, and arrangement are not sufficiently original to trigger copyright protection.

[41] As discussed earlier, however, the originality requirement is not particularly stringent. A compiler may settle upon a selection or arrangement that others have used; novelty is not required. Originality requires only that the author make the selection or arrangement independently (i. e., without copying that selection or arrangement from another work), and that it display some minimal level of creativity. Presumably, [p*359] the vast majority of compilations will pass this test, but not all will. There remains a narrow category of works in which the creative spark is utterly lacking or so trivial as to be virtually nonexistent. See generally Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903) (referring to “the narrowest and most obvious limits”). Such works are incapable of sustaining a valid copyright. Nimmer § 2.01[B].


[42] Even if a work qualifies as a copyrightable compilation, it receives only limited protection. This is the point of § 103 of the Act. Section 103 explains that “the subject matter of copyright . . . includes compilations,” § 103(a), but that copyright protects only the author's original contributions -- not the facts or information conveyed:

“The copyright in a compilation . . . extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material.” § 103(b).

[43] As § 103 makes clear, copyright is not a tool by which a compilation author may keep others from using the facts or data he or she has collected. “The most important point here is one that is commonly misunderstood today: copyright . . . has no effect one way or the other on the copyright or public domain status of the preexisting material.” H. R. Rep., at 57; S. Rep., at 55. The 1909 Act did not require, as “sweat of the brow” courts mistakenly assumed, that each subsequent compiler must start from scratch and is precluded from relying on research undertaken by another. See, e. g., Jeweler's Circular Publishing Co., 281 F., at 88-89. Rather, the facts contained in existing works may be freely copied because copyright protects only the elements that owe their origin to the compiler -- the selection, coordination, and arrangement of facts.

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III

[46] There is no doubt that Feist took from the white pages of Rural's directory a substantial amount of factual information. At a minimum, Feist copied the names, towns, and telephone numbers of 1,309 of Rural's subscribers. Not all copying, however, is copyright infringement. To establish infringement, two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original. See Harper & Row, 471 U.S., at 548. The first element is not at issue here; Feist appears to concede that Rural's directory, considered as a whole, is subject to a valid copyright because it contains some foreword text, as well as original material in its yellow pages advertisements. See Brief for Petitioner 18; Pet. for Cert. 9.

[47] The question is whether Rural has proved the second element. In other words, did Feist, by taking 1,309 names, towns, and telephone numbers from Rural's white pages, copy anything that was “original” to Rural? Certainly, the raw data does not satisfy the originality requirement. Rural may have been the first to discover and report the names, towns, and telephone numbers of its subscribers, but this data does not “'owe its origin'” to Rural. Burrow-Giles, 111 U.S., at 58. Rather, these bits of information are uncopyrightable facts; they existed before Rural reported them and would have continued to exist if Rural had never published a telephone directory. The originality requirement “rules out protecting . . . names, addresses, and telephone numbers of which the plaintiff by no stretch of the imagination could be called the author.” Patterson & Joyce 776.

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[49] The question that remains is whether Rural selected, coordinated, or arranged these uncopyrightable facts in an original way. As mentioned, originality is not a stringent standard; it does not require that facts be presented in an innovative or surprising way. It is equally true, however, that the selection and arrangement of facts cannot be so mechanical or routine as to require no creativity whatsoever. The standard of originality is low, but it does exist. See Patterson & Joyce 760, n. 144 (“While this requirement is sometimes characterized as modest, or a low threshold, it is not without effect”) (internal quotations omitted; citations omitted). As this Court has explained, the Constitution mandates some


minimal degree of creativity, see The Trade-Mark Cases, 100 U.S., at 94; and an author who claims infringement must prove “the existence of . . . intellectual production, of thought, and conception.” Burrow-Giles, supra, at 59-60.

[50] The selection, coordination, and arrangement of Rural's white pages do not satisfy the minimum constitutional standards for copyright protection. As mentioned at the outset, Rural's white pages are entirely typical. Persons desiring telephone service in Rural's service area fill out an application and Rural issues them a telephone number. In preparing its white pages, Rural simply takes the data provided by its subscribers and lists it alphabetically by surname. The end product is a garden-variety white pages directory, devoid of even the slightest trace of creativity.

[51] Rural's selection of listings could not be more obvious: it publishes the most basic information -- name, town, and telephone number -- about each person who applies to it for telephone service. This is “selection” of a sort, but it lacks the modicum of creativity necessary to transform mere selection into copyrightable expression. Rural expended sufficient effort [p*363] to make the white pages directory useful, but insufficient creativity to make it original.

[52] We note in passing that the selection featured in Rural's white pages may also fail the originality requirement for another reason. Feist points out that Rural did not truly “select” to publish the names and telephone numbers of its subscribers; rather, it was required to do so by the Kansas Corporation Commission as part of its monopoly franchise. See 737 F. Supp., at 612. Accordingly, one could plausibly conclude that this selection was dictated by state law, not by Rural.

[53] Nor can Rural claim originality in its coordination and arrangement of facts. The white pages do nothing more than list Rural's subscribers in alphabetical order. This arrangement may, technically speaking, owe its origin to Rural; no one disputes that Rural undertook the task of alphabetizing the names itself. But there is nothing remotely creative about arranging names alphabetically in a white pages directory. It is an age-old practice, firmly rooted in tradition and so commonplace that it has come to be expected as a matter of course. See Brief for Information Industry Association et al. as Amici Curiae 10 (alphabetical arrangement “is universally observed in directories published by local exchange telephone companies”). It is not only unoriginal, it is practically inevitable. This time-honored tradition does not possess the minimal creative spark required by the Copyright Act and the Constitution.

[54] We conclude that the names, towns, and telephone numbers copied by Feist were not original to Rural and therefore were not protected by the copyright in Rural's combined white and yellow pages directory. As a constitutional matter, copyright protects only those constituent elements of a work that possess more than a de minimis quantum of creativity. Rural's white pages, limited to basic subscriber information and arranged alphabetically, fall short of the mark. As a statutory matter, 17 U.S.C. § 101 does not afford protection [p*364] from copying to a collection of facts that are selected, coordinated, and arranged in a way that utterly lacks originality. Given that some works must fail, we cannot imagine a more likely candidate. Indeed, were we to hold that Rural's white pages pass muster, it is hard to believe that any collection of facts could fail.

[55] Because Rural's white pages lack the requisite originality, Feist's use of the listings cannot constitute infringement. This decision should not be construed as demeaning Rural's efforts in compiling its directory, but rather as making clear that copyright rewards originality, not effort. As this Court noted more than a century ago, “'great praise may be due to the plaintiffs for their industry and enterprise in publishing this paper, yet the law does not contemplate their being rewarded in this way.'” Baker v. Selden, 101 U.S., at 105. The judgment of the Court of Appeals is

[56] Reversed.


JUSTICE BLACKMUN concurs in the judgment.

* Briefs of amici curiae urging reversal were filed for the Association of North American Directory Publishers et al. by Theodore Case Whitehouse; for the International Association of Cross Reference Directory Publishers by Richard D. Grauer and Kathleen McCree Lewis; and for the Third-Class Mail Association by Ian D. Volner.

Briefs of amici curiae urging affirmance were filed for Ameritech et al. by Michael K. Kellogg, Charles Rothfeld, Douglas J. Kirk, Thomas P. Hester, and Harlan Sherwat for Association of American Publishers, Inc., by Robert G. Sugarman and R. Bruce Rich for GTE Corp. by Kirk K. Van Tine, Richard M. Cahill, and Edward R. Sublett; for the National Telephone Cooperative Association by L. Marie Guillory and David Cosson for the United States Telephone Association by Richard J. Rappaport and Keith P. Schoeneberger and for West Publishing Co. by Vance K. Opperman and James E. Schatz.

Briefs of amici curiae were filed for Bellsouth Corp. by Anthony B. Askew, Robert E. Richards, Walter H. Alford, and Vincent L. Sgrosso for Direct Marketing Association, Inc., by Robert L. Sherman for Haines and Co., Inc., by Jeremiah D. McAuliffe, Bernard A. Barken, and Eugene Gressman; and for the Information Industry Association et al. by Steven J. Metalitz and Angela Burnett.

1. The Court ultimately rendered judgment for International News Service on noncopyright grounds that are not relevant here. See 248 U.S., at 235, 241-242.


CDN Inc. v. Kapes, 197 F.3d 1256 (9th Cir. 1999)

Before: Diarmuid F. O'Scannlain, Ferdinand F. Fernandez, and Thomas G. Nelson, Circuit Judges.

O'SCANNLAIN, Circuit Judge:

[1] We must decide whether prices listed in a wholesale coin price guide contain sufficient originality to merit the protection of the copyright laws.

I

[2] Kenneth Kapes operates a coin business, Western Reserve Numismatics, in Ohio. In response to many inquiries he received regarding the price of coins, Kapes developed "The Fair Market Coin Pricer," which listed on his internet web page the retail prices of many coins. In order to generate the prices he listed, Kapes used a computer program he developed to create retail prices from wholesale prices. The exact process is unclear, but Kapes acknowledges using appellee CDN, Inc.'s wholesale price lists.

[3] CDN publishes the Coin Dealer Newsletter, a weekly report of wholesale prices for collectible United States coins, as well as the Coin Dealer Newsletter Monthly Supplement and the CDN Quarterly. The Newsletter, or "Greysheet" as it is known in the industry, includes prices for virtually all collectible coins and is used extensively by dealers. In December 1996, CDN discovered the existence of Kapes' internet site and list of current retail prices. CDN filed a complaint on February 21, 1997 in the U.S. District Court for the Central District of California, alleging that Kapes infringed CDN's copyrights by using CDN's wholesale prices as a baseline to arrive at retail prices. The complaint asked the court to determine that Kapes infringed its copyright and to enjoin Kapes from future infringement.

[4] Kapes responded that although the subject works contained some original copyrightable subject matter, he did not copy any of it. Kapes also asserted various affirmative defenses including license, unclean hands, and estoppel. On December 17, 1997, the parties executed a "Stipulation to Waive Trial in Lieu of Case Dispositive Cross-Motions for Summary Judgment." ("Stipulation") The Stipulation provided that "the dispositive issue in this copyright infringement case is whether the prices listed in plaintiff's copyrighted wholesale coin price guides comprise copyrightable subject matter under Section 102 of the 1976 Copyright Act (17 U.S.C. § 102)." The parties agreed that the "issue of copyrightability may effectively be presented to the Court by cross-motions for summary judgment which, once argued and ruled upon, will dispose of the case in its entirety."

[5] In accordance with the stipulation, the parties filed cross-motions for summary judgment, which the district court heard on February 2, 1998. After reciting the parties' stipulation that the issue of copyrightability was dispositive of the case, the court ruled that CDN's "prices are original creations, not uncopyrightable facts." By order entered February 9, 1998, the court granted CDN's motion for summary judgment and denied that of Kapes. The court enjoined Kapes from infringing CDN's copyright. Kapes timely appealed.

II


[6] As an initial matter it is important to clarify the scope of this appeal. To make out a claim for copyright infringement, a plaintiff must show: (1) ownership of a valid copyright and (2) copying by the defendant of protectable elements of the work. See Smith v. Jackson, 84 F.3d 1213, 1218 (9th Cir. 1996); Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 548 (1985). Although CDN's original complaint alleged infringement, the parties in their stipulation agreed that the dispositive issue in this infringement case was whether the prices are copyrightable subject matter. By entering into this stipulation, Kapes effectively admitted to having copied CDN's work.

[7] Nevertheless, Kapes attempts to raise several issues in his appeal beyond that of copyrightability. This he cannot do for he is bound by the stipulation. Because stipulations serve both judicial economy and the convenience of the parties, courts will enforce them absent indications of involuntary or uninformed consent. See United States v. McGregor, 529 F.2d 928, 931 (9th Cir. 1976). No claim that the stipulation should not be enforced has been made here. Thus the stipulation bars any litigation over copying, the second prong of an infringement action.

[8] The stipulation also prevents Kapes from raising on appeal the affirmative defenses--license, unclean hands, and estoppel--originally raised in his answer to CDN's complaint. An appellate court will not consider issues not properly raised before the district court. See Crawford v. Lungren, 96 F.3d 380, 389 n.6 (9th Cir. 1996). The " `withdrawal of an objection is tantamount to a waiver of an issue for appeal.' " Slaven v. American Trading Transp. Co., Inc., 146 F.3d 1066, 1069 (9th Cir. 1998) (quoting United States v. Manarite, 44 F.3d 1407, 1419 n.18 (9th Cir. 1995)). In Slaven, the appellant first raised several objections to a settlement agreement. See id. at 1069. It then unconditionally signed a stipulation agreeing to the proposed settlement. See id. When the appellant tried to object to the settlement on appeal, the court held that it had waived its right to challenge the agreement by signing the stipulation. See id. Likewise, by stipulating that the sole issue in this case is the copyrightability of the prices, Kapes waived the affirmative defenses he initially asserted and the issue of whether he copied CDN's prices. Thus the sole issue in this appeal, and the only one presented to the district court for decision, is whether the prices are copyrightable. [n1]

III

[9] The Constitution gives Congress the power "To promote the Progress of Science . . . by securing for limited Times to Authors . . . the exclusive Right to their . . . Writings." U.S. Const. art. 1, § 8, cl. 8. Accordingly, Congress has granted copyright protection to "original works of authorship," 17 U.S.C. § 102(a), as well as "compilations. " Id. at § 103(a). The copyright in a compilation "extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work . . . ." Id. at § 103(b).

[10] Discoverable facts, like ideas, are not copyrightable. But compilations of facts are copyrightable even where the underlying facts are not. See Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 344 (1991). The distinction between facts and non-facts, and between discovery and creation, lies at the heart of this case. The essential ingredient present in creations, but absent in facts, is originality, "the sine qua non of copyright." Id. at 345. Subject matter created by and original to the author merits copyright protection. Items not original to the author, i.e., not the product of his creativity, are facts and not copyrightable. In Feist, the issue was whether white page listings of telephone numbers qualified for copyright protection as compilations. The Court held that they did not. In order to warrant protection, compilations and other works must contain a minimal amount of originality or creativity. See id. at 361. The white page listings, which included everyone within a geographical area and were arranged alphabetically, did not. See id. at 362-63. Thus they could be copied in their entirety despite the time and effort spent to compile them.


http://www.law.cornell.edu/copyright/cases/471_US_539.htm

[11] Appellant's attempt to equate the phone number listings in Feist with CDN's price lists does not withstand close scrutiny. First, Kapes conflates two separate arguments: (1) that the listing, selection, and inclusion of prices is not original enough to merit protection; and (2) that the prices themselves are not original creations. Whether CDN's selection and arrangement of the price lists is sufficiently original to merit protection is not at issue here. CDN does not allege that Kapes copied the entire lists, as the alleged infringer had in Feist. Rather, the issue in this case is whether the prices themselves are sufficiently original as compilations to sustain a copyright. Thus Kapes' argument that the selection is obvious or dictated by industry standards is irrelevant.

[12] Although the requirement of originality is a constitutional one inherent in the grant to Congress of the power to promote science and the useful arts, the required level of originality is "minimal." Feist, 499 U.S. at 358. The telephone listings did not qualify because they fell into the "narrow category of works in which the creative spark is utterly lacking or so trivial as to be virtually nonexistent." Id. at 359. The numbers themselves were given by the phone company. Their selection (or rather universal inclusion) and arrangement in alphabetical order were too obvious to be original. Nevertheless, "the requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, `no matter how crude, humble or obvious' it might be." Feist, 499 U.S. at 345 (quoting 1 M. Nimmer & D. Nimmer, Copyright § 1.08[C][1] (1990)). This spark glows in CDN's prices, which are compilations of data chosen and weighed with creativity and judgment.

[13] Here, the district court, explicitly referencing Feist, held that the prices in CDN's guides are not facts, they are "wholly the product of [CDN's] creativity. The evidence indicates that the plaintiff uses its considerable expertise and judgment to determine how a multitude of variable factors impact upon available bid and ask price data. And it is this creative process which ultimately gives rise to the Plaintiff's `best guess' as to what the current `bid' and `ask' prices should be. As such, the Court finds that these prices were created, not discovered." District Court Order Granting Summary Judgment, February 5, 1998.

[14] We agree. CDN's process to arrive at wholesale prices begins with examining the major coin publications to find relevant retail price information. CDN then reviews this data to retain only that information it considers to be the most accurate and important. Prices for each grade of coin are determined with attention to whether the coin is graded by a professional service (and which one). CDN also reviews the online networks for the bid and ask prices posted by dealers. It extrapolates from the reported prices to arrive at estimates for prices for unreported coin types and grades. CDN also considers the impact of public auctions and private sales, and analyzes the effect of the economy and foreign policies on the price of coins. As the district court found, CDN does not republish data from another source or apply a set formula or rule to generate prices. The prices CDN creates are compilations of data that represent its best estimate of the value of the coins.

[15] That this process takes much time and effort is wholly irrelevant to whether the end product of this work is copyrightable. See Feist, 499 U.S. at 349. The Supreme Court in Feist expressly rejected the "sweat of the brow" theory of copyright which would protect subject matter that was expensive and time-consuming to gather. See id. at 352-56. "[C]opyright rewards originality, not effort. " Id. at 364. Thus if CDN did nothing more than discover and report the prices paid by dealers in transactions throughout the country, the prices would not be copyrightable. But it did much more than this. The prices listed are not mere listings of actual prices paid; rather, they are CDN's best estimate of the fair value of that coin. To arrive at this estimate, CDN employs the process described above that satisfies the "minimal degree of creativity" demanded by the Constitution for copyright protection. Id. at 345. This is not a process that is "so mechanical or routine as to require no creativity whatsoever." Id. at 362.

[16] As this court has stated, consistent with Feist , the requisite level of creativity is "extremely low." Urantia Foundation v. Maaherra, 114 F.3d 955, 959 (9th Cir. 1997) (holding that the arrangement of


divine revelations met the level of creativity required for copyright); see also Los Angeles News Serv. v. Tullo, 973 F.2d 791 (9th Cir. 1992) (holding that raw news videotape is original and copyrightable).

[17] Our holding that the prices are copyrightable is consistent with that of the Second Circuit in CCC Info. Servs., Inc. v. Maclean Hunter Mkt. Reports, 44 F.3d 61 (2d Cir. 1994). Maclean Hunter published the Red Book, a list of car values for various regions of the United States. The Red Book listed the editors' projections of the value of different kinds of used cars for six weeks after publication. CCC Information Systems had used these values in compiling its computer databases. Maclean Hunter sued for infringement, and the district court found that the values were facts and as such were not copyrightable. The Second Circuit reversed. The court held that the valuations were not "pre-existing facts that had merely been discovered by the Red Book editors," but instead "represented predictions by the Red Book editors of future prices estimated to cover specified geographic regions." CCC, 44 F.3d at 67. Like CDN's prices, the prices in the Red Book granted copyright protection by the Second Circuit, are "based not only on a multitude of data sources, but also on professional judgment and expertise." Id.

[18] Kapes attempts to distinguish CCC by arguing that the prices in the Red Book were projections of future values, while the prices in the Greysheet are estimates of present value. But the distinction between present and future values is not important to this case. What is important is the fact that both Maclean and CDN arrive at the prices they list through a process that involves using their judgment to distill and extrapolate from factual data. It is simply not a process through which they discover a preexisting historical fact, but rather a process by which they create a price which, in their best judgment, represents the value of an item as closely as possible. If CDN merely listed historical facts of actual transactions, the guides would be long, cumbersome, and of little use to anyone. Dealers looking through such data would have to use their own judgment and expertise to estimate the value of a coin. What CDN has done is use its own judgment and expertise in arriving at that value for the dealers. This process imbues the prices listed with sufficient creativity and originality to make them copyrightable.

IV

[19] In his defense, Kapes argues that a price is an idea of the value of the product, which can be expressed only using a number. Thus the idea and the expression merge and neither qualifies for copyright protection. This is the doctrine of merger. The argument springs from a venerable principle of copyright law. See Mazer v. Stein, 347 U.S. 201, 217 (1954) (Copyright "protection is given only to the expression of the idea--not the idea itself."). Ideas, like facts, are not entitled to copyright. See 17 U.S.C. § 102(b); Baker v. Selden, 101 U.S. 99 (1879). In order to protect the free exchange of ideas, courts have long held that when expression is essential to conveying the idea, expression will also be unprotected. "When the ìdea' and its èxpression' are thus inseparable, copying the èxpression' will not be barred, since protecting the èxpression' in such circumstances would confer a monopoly of the ìdea' upon the copyright owner free of the conditions and limitations imposed by the patent law." Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971). But accepting the principle in all cases, including on these facts, would eviscerate the protection of the copyright law. Cf. CCC, 44 F.3d at 70 (noting that every compilation represents an idea, which in order to be conveyed accurately must be conveyed only by its expression).

[20] Conceptually, the problem arises because the "critical distinction between ìdea' and èxpression' is difficult to draw. As Judge [Learned] Hand candidly wrote, Òbviously, no principle can be stated as to when an imitator has gone beyond copying the "idea," and has borrowed its "expression." ' " See Rosenthal, 446 F.2d at 742 (quoting Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960). We have endorsed Judge Hand's abstractions formulation laid out in Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930). See Rosenthal, 446 F.2d at 742. The formulation recognizes that every work can be described at varying levels of abstraction, and the higher the level of abstraction copied, the less likely this taking will be infringement of a copyright.


http://www.law.cornell.edu/copyright/cases/347_US_201.htm

[21] As Judge Hand noted, the difference between idea and expression is one of degree. This circuit has held that "[t]he guiding consideration in drawing the line is the preservation of the balance between competition and protection reflected in the patent and copyright laws." Rosenthal, 446 F.2d at 742. In this case, the prices fall on the expression side of the line. CDN does not, nor could it, claim protection for its idea of creating a wholesale price guide, but it can use the copyright laws to protect its idea of what those prices are. See id. at 742 (denying protection to the idea of creating a jeweled bee pin where there was no indication that the alleged infringer had copied the pin in question). Drawing this line preserves the balance between competition and protection: it allows CDN's competitors to create their own price guides and thus furthers competition, but protects CDN's creation, thus giving it an incentive to create such a guide. See Mazer, 347 U.S. at 219 ("The economic philosophy behind the clause empowering Congress to grant patents and copyrights is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors and inventors . . . ." ). The doctrine of merger does not bar copyright protection in this case.

V

A

[22] Kapes raises the defense of copyright estoppel, arguing that because CDN represented its prices in its promotional literature as facts, it is estopped from arguing that they are non-facts entitled to protection. Like the district court, we do not consider this argument because Kapes did not raise the issue properly below and waived it when he stipulated that the only issue in this case was the copyrightability of the prices."It is well-established that an appellate court will not consider issues that were not properly raised before the district court." Slaven, 146 F.3d at 1069.

* * *

VI

[24] For the foregoing reasons, we affirm the district court's holding that the prices in the guides contain sufficient originality to sustain copyright protection.

[25] AFFIRMED.

1. We review the district court's determination that the prices are sufficiently original to merit copyright protection de novo. See Los Angeles News Serv. v. Tullo, 973 F.2d 791, 793 (9th Cir. 1992).


B. Covered (and not covered) works of authorship

NATIONAL BASKETBALL ASSOC. v. MOTOROLA, INC., 105 F.3d 841 (2nd Cir.

1997)

Before: VAN GRAAFEILAND, WINTER, and ALTIMARI, Circuit Judges.

WINTER, Circuit Judge:

[1] Motorola, Inc. and Sports Team Analysis and Tracking Systems ("STATS") appeal from a permanent injunction entered by Judge Preska. The injunction concerns a handheld pager sold by Motorola and marketed under the name "SportsTrax," which displays updated information of professional basketball games in progress. The injunction prohibits appellants, absent authorization from the National Basketball Association and NBA Properties, Inc. (collectively the "NBA"), from transmitting scores or other data about NBA games in progress via the pagers, STATS's site on America On-Line's computer dial-up service, or "any equivalent means."

[2] The crux of the dispute concerns the extent to which a state law "hot-news" misappropriation claim based on International News Service v. Associated Press, 248 U.S. 215 (1918) ("INS"), survives preemption by the federal Copyright Act and whether the NBA's claim fits within the surviving INS-type claims. We hold that a narrow "hot-news" exception does survive preemption. However, we also hold that appellants' transmission of "real-time" NBA game scores and information tabulated from television and radio broadcasts of games in progress does not constitute a misappropriation of "hot news" that is the property of the NBA.

[3] The NBA cross-appeals from the dismissal of its Lanham Act claim. We hold that any misstatements by Motorola in advertising its pager were not material and affirm.

[4] I. BACKGROUND

[5] The facts are largely undisputed. Motorola manufactures and markets the SportsTrax paging device while STATS supplies the game information that is transmitted to the pagers. The product became available to the public in January 1996, at a retail price of about $200. SportsTrax's pager has an inch-and-a-half by inch-and-a-half screen and operates in four basic modes: "current," "statistics," "final scores" and "demonstration." It is the "current" mode that gives rise to the present dispute.[n1] In that mode, SportsTrax displays the following information on NBA games in progress: (i) the teams playing; (ii) score changes; (iii) the team in possession of the ball; (iv) whether the team is in the free-throw bonus; (v) the quarter of the game; and (vi) time remaining in the quarter. The information is updated every two to three minutes, with more frequent updates near the end of the first half and the end of the game. There is a lag of approximately two or three minutes between events in the game itself and when the information appears on the pager screen. SportsTrax's operation relies on a "data feed" supplied by STATS reporters who watch the games on television or listen to them on the radio. The reporters key into a personal computer changes in the score and other information such as successful and missed shots, fouls, and clock updates. The information is relayed by modem to STATS's host computer, which


http://supct.law.cornell.edu/cgi-bin/sup-choice.cgi?248+215

compiles, analyzes, and formats the data for retransmission. The information is then sent to a common carrier, which then sends it via satellite to various local FM radio networks that in turn emit the signal received by the individual SportsTrax pagers.

[6] Although the NBA's complaint concerned only the SportsTrax device, the NBA offered evidence at trial concerning STATS's America On-Line ("AOL") site. Starting in January, 1996, users who accessed STATS's AOL site, typically via a modem attached to a home computer, were provided with slightly more comprehensive and detailed real-time game information than is displayed on a SportsTrax pager. On the AOL site, game scores are updated every 15 seconds to a minute, and the player and team statistics are updated each minute. The district court's original decision and judgment, National Basketball Ass'n v. Sports Team Analysis and Tracking Sys. Inc., 931 F. Supp. 1124 (S.D.N.Y. 1996), did not address the AOL site, because "NBA's complaint and the evidence proffered at trial were devoted largely to SportsTrax." National Basketball Ass'n v. Sports Team Analysis and Tracking Sys. Inc., 939 F. Supp. 1071, 1074 n.1 (S.D.N.Y. 1996). Upon motion by the NBA, however, the district court amended its decision and judgment and enjoined use of the real-time game information on STATS's AOL site. Id. at 1075 n.1. Because the record on appeal, the briefs of the parties, and oral argument primarily addressed the SportsTrax device, we similarly focus on that product. However, we regard the legal issues as identical with respect to both products, and our holding applies equally to SportsTrax and STATS's AOL site.

[7] The NBA's complaint asserted six claims for relief: (i) state law unfair competition by misappropriation; (ii) false advertising under Section 43(a) of the Lanham Act, 15 U.S.C. Section 1125(a); (iii) false representation of origin under Section 43(a) of the Lanham Act; (iv) state and common law unfair competition by false advertising and false designation of origin; (v) federal copyright infringement; and (vi) unlawful interception of communications under the Communications Act of 1934, 47 U.S.C. § 605. Motorola counterclaimed, alleging that the NBA unlawfully interfered with Motorola's contractual relations with four individual NBA teams that had agreed to sponsor and advertise SportsTrax.

[8] The district court dismissed all of the NBA's claims except the first - misappropriation under New York law. The court also dismissed Motorola's counterclaim. Finding Motorola and STATS liable for misappropriation, Judge Preska entered the permanent injunction,[n2] reserved the calculation of damages for subsequent proceedings, and stayed execution of the injunction pending appeal. Motorola and STATS appeal from the injunction, while NBA cross-appeals from the district court's dismissal of its Lanham Act false-advertising claim. The issues before us, therefore, are the state law misappropriation and Lanham Act claims.

[9] II. THE STATE LAW MISAPPROPRIATION CLAIM

[10] A. Summary of Ruling

[11] Because our disposition of the state law misappropriation claim rests in large part on preemption by the Copyright Act, our discussion necessarily goes beyond the elements of a misappropriation claim under New York law, and a summary of our ruling here will perhaps render that discussion - or at least the need for it - more understandable.

[12] The issues before us are ones that have arisen in various forms over the course of this century as technology has steadily increased the speed and quantity of information transmission. Today, individuals at home, at work, or elsewhere, can use a computer, pager, or other device to obtain highly selective kinds of information virtually at will. International News Service v. Associated Press, 248 U.S. 215 (1918) ("INS") was one of the first cases to address the issues raised by these technological advances, although the technology involved in that case was primitive by contemporary standards. INS involved two wire


services, the Associated Press ("AP") and International News Service ("INS"), that transmitted newsstories by wire to member newspapers. Id. INS would lift factual stories from AP bulletins and send them by wire to INS papers. Id. at 231. INS would also take factual stories from east coast AP papers and wire them to INS papers on the west coast that had yet to publish because of time differentials. Id. at 238. The Supreme Court held that INS's conduct was a common-law misappropriation of AP's property. Id. at 242.

[13] With the advance of technology, radio stations began "live" broadcasts of events such as baseball games and operas, and various entrepreneurs began to use the transmissions of others in one way or another for their own profit. In response, New York courts created a body of misappropriation law, loosely based on INS, that sought to apply ethical standards to the use by one party of another's transmissions of events.

[14] Federal copyright law played little active role in this area until 1976. Before then, it appears to have been the general understanding - there being no caselaw of consequence - that live events such as baseball games were not copyrightable. Moreover, doubt existed even as to whether a recorded broadcast or videotape of such an event was copyrightable. In 1976, however, Congress passed legislation expressly affording copyright protection to simultaneously-recorded broadcasts of live performances such as sports events. See 17 U.S.C. § 101. Such protection was not extended to the underlying events.

[15] The 1976 amendments also contained provisions preempting state law claims that enforced rights "equivalent" to exclusive copyright protections when the work to which the state claim was being applied fell within the area of copyright protection. See 17 U.S.C. § 301. Based on legislative history of the 1976 amendments, it is generally agreed that a "hot-news" INS-like claim survives preemption. H.R. No. 94-1476 at 132 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5748. However, much of New York misappropriation law after INS goes well beyond "hot-news" claims and is preempted.

[16] We hold that the surviving "hot-news" INS-like claim is limited to cases where: (i) a plaintiff generates or gathers information at a cost; (ii) the information is time-sensitive; (iii) a defendant's use of the information constitutes free-riding on the plaintiff's efforts; (iv) the defendant is in direct competition with a product or service offered by the plaintiffs; and (v) the ability of other parties to free-ride on the efforts of the plaintiff or others would so reduce the incentive to produce the product or service that its existence or quality would be substantially threatened. We conclude that SportsTrax does not meet that test.

[17] B. Copyrights in Events or Broadcasts of Events

[18] The NBA asserted copyright infringement claims with regard both to the underlying games and to their broadcasts. The district court dismissed these claims, and the NBA does not appeal from their dismissal. Nevertheless, discussion of the infringement claims is necessary to provide the framework for analyzing the viability of the NBA's state law misappropriation claim in light of the Copyright Act's preemptive effect.

[19] 1. Infringement of a Copyright in the Underlying Games

[20] In our view, the underlying basketball games do not fall within the subject matter of federal copyright protection because they do not constitute "original works of authorship" under 17 U.S.C. Section 102(a). Section 102(a) lists eight categories of "works of authorship" covered by the act, including such categories as "literary works," "musical works," and "dramatic works."[n3] The list does not include athletic events, and, although the list is concededly non-exclusive, such events are neither similar nor analogous to any of the listed categories.



[21] Sports events are not "authored" in any common sense of the word. There is, of course, at least at the professional level, considerable preparation for a game. However, the preparation is as much an expression of hope or faith as a determination of what will actually happen. Unlike movies, plays, television programs, or operas, athletic events are competitive and have no underlying script. Preparation may even cause mistakes to succeed, like the broken play in football that gains yardage because the opposition could not expect it. Athletic events may also result in wholly unanticipated occurrences, the most notable recent event being in a championship baseball game in which interference with a fly ball caused an umpire to signal erroneously a home run.

[22] What "authorship" there is in a sports event, moreover, must be open to copying by competitors if fans are to be attracted. If the inventor of the T-formation in football had been able to copyright it, the sport might have come to an end instead of prospering. Even where athletic preparation most resembles authorship - figure skating, gymnastics, and, some would uncharitably say, professional wrestling - a performer who conceives and executes a particularly graceful and difficult - or, in the case of wrestling, seemingly painful - acrobatic feat cannot copyright it without impairing the underlying competition in the future. A claim of being the only athlete to perform a feat doesn't mean much if no one else is allowed to try.

[23] For many of these reasons, Nimmer on Copyright concludes that the "[f]ar more reasonable" position is that athletic events are not copyrightable. 1 M. Nimmer & D. Nimmer, Nimmer on Copyright Section 2.09[F] at 2-170.1 (1996). Nimmer notes that, among other problems, the number of joint copyright owners would arguably include the league, the teams, the athletes, umpires, stadium workers and even fans, who all contribute to the "work." Concededly, caselaw is scarce on the issue of whether organized events themselves are copyrightable, but what there is indicates that they are not. See Prod. Contractors, Inc. v. WGN Continental Broad. Co., 622 F. Supp. 1500 (N.D. Ill. 1985) (Christmas parade is not a work of authorship entitled to copyright protection). In claiming a copyright in the underlying games, the NBA relied in part on a footnote in Baltimore Orioles, Inc. v. Major League Baseball Player's Assn., 805 F.2d 663, 669 n.7 (7th Cir. 1986), cert. denied, 480 U.S. 941 (1987), which stated that the "[p]layers' performances" contain the "modest creativity required for copyrightability." However, the court went on to state, "Moreover, even if the [p]layers' performances were not sufficiently creative, the [p]layers agree that the cameramen and director contribute creative labor to the telecasts." Id. This last sentence indicates that the court was considering the copyrightability of telecasts - not the underlying games, which obviously can be played without cameras.

[24] We believe that the lack of caselaw is attributable to a general understanding that athletic events were, and are, uncopyrightable. Indeed, prior to 1976, there was even doubt that broadcasts describing or depicting such events, which have a far stronger case for copyrightability than the events themselves, were entitled to copyright protection. Indeed, as described in the next subsection of this opinion, Congress found it necessary to extend such protection to recorded broadcasts of live events. The fact that Congress did not extend such protection to the events themselves confirms our view that the district court correctly held that appellants were not infringing a copyright in the NBA games.

[25] 2. Infringement of a Copyright in the Broadcasts of NBA Games

[26] As noted, recorded broadcasts of NBA games - as opposed to the games themselves - are now entitled to copyright protection. The Copyright Act was amended in 1976 specifically to insure that simultaneously-recorded transmissions of live performances and sporting events would meet the Act's requirement that the original work of authorship be "fixed in any tangible medium of expression." 17 U.S.C. § 102(a). Accordingly, Section 101 of the Act, containing definitions, was amended to read:

[27] A work consisting of sounds, images, or both, that are being transmitted, is "fixed" for purposes of this title if a fixation of the work is being made simultaneously with its transmission.


http://www4.law.cornell.edu/uscode/17/102.html


[28] 17 U.S.C. § 101. Congress specifically had sporting events in mind:

[T]he bill seeks to resolve, through the definition of "fixation" in section 101, the status of live broadcasts - sports, news coverage, live performances of music, etc. - that are reaching the public in unfixed form but that are simultaneously being recorded.

[29] H.R. No. 94-1476 at 52, reprinted in 1976 U.S.C.C.A.N. at 5665. The House Report also makes clear that it is the broadcast, not the underlying game, that is the subject of copyright protection. In explaining how game broadcasts meet the Act's requirement that the subject matter be an "original work[] of authorship," 17 U.S.C. § 102(a), the House Report stated:

[30] When a football game is being covered by four television cameras, with a director guiding the activities of the four cameramen and choosing which of their electronic images are sent out to the public and in what order, there is little doubt that what the cameramen and the director are doing constitutes "authorship."

[31] H.R. No. 94-1476 at 52, reprinted in 1976 U.S.C.C.A.N. at 5665.

[32] Although the broadcasts are protected under copyright law, the district court correctly held that Motorola and STATS did not infringe NBA's copyright because they reproduced only facts from the broadcasts, not the expression or description of the game that constitutes the broadcast. The "fact/expression dichotomy" is a bedrock principle of copyright law that "limits severely the scope of protection in fact-based works." Feist Publications, Inc. v. Rural Tel. Service Co., 499 U.S. 340, 350 (1991). "`No author may copyright facts or ideas. The copyright is limited to those aspects of the work - termed `expression' - that display the stamp of the author's originality.'" Id. (quoting Harper & Row, Inc. v. Nation Enter., 471 U.S. 539, 547-48 (1985)).

[33] We agree with the district court that the "[d]efendants provide purely factual information which any patron of an NBA game could acquire from the arena without any involvement from the director, cameramen, or others who contribute to the originality of a broadcast." 939 F. Supp. at 1094. Because the SportsTrax device and AOL site reproduce only factual information culled from the broadcasts and none of the copyrightable expression of the games, appellants did not infringe the copyright of the broadcasts.

[34] C. The State-Law Misappropriation Claim

[35] The district court's injunction was based on its conclusion that, under New York law, defendants had unlawfully misappropriated the NBA's property rights in its games. The district court reached this conclusion by holding: (i) that the NBA's misappropriation claim relating to the underlying games was not preempted by Section 301 of the Copyright Act; and (ii) that, under New York common law, defendants had engaged in unlawful misappropriation. Id. at 1094-1107. We disagree.

[36] 1. Preemption Under the Copyright Act

[37] a) Summary

[38] When Congress amended the Copyright Act in 1976, it provided for the preemption of state law claims that are interrelated with copyright claims in certain ways. Under 17 U.S.C. § 301, a state law claim is preempted when: (i) the state law claim seeks to vindicate "legal or equitable rights that are equivalent" to one of the bundle of exclusive rights already protected by copyright law under 17 U.S.C. § 106 - styled the "general scope requirement"; and (ii) the particular work to which the state law claim is being applied falls within the type of works protected by the Copyright Act under Sections 102 and 103 - styled the "subject matter requirement."[n4]




[39] The district court concluded that the NBA's misappropriation claim was not preempted because, with respect to the underlying games, as opposed to the broadcasts, the subject matter requirement was not met. 939 F. Supp. at 1097. The court dubbed as "partial preemption" its separate analysis of misappropriation claims relating to the underlying games and misappropriation claims relating to broadcasts of those games. Id. at 1098, n. 24. The district court then relied on a series of older New York misappropriation cases involving radio broadcasts that considerably broadened INS. We hold that where the challenged copying or misappropriation relates in part to the copyrighted broadcasts of the games, the subject matter requirement is met as to both the broadcasts and the games. We therefore reject the partial preemption doctrine and its anomalous consequence that "it is possible for a plaintiff to assert claims both for infringement of its copyright in a broadcast and misappropriation of its rights in the underlying event." Id. We do find that a properly-narrowed INS "hot-news" misappropriation claim survives preemption because it fails the general scope requirement, but that the broader theory of the radio broadcast cases relied upon by the district court were preempted when Congress extended copyright protection to simultaneously-recorded broadcasts.

[40] b) "Partial Preemption" and the Subject Matter Requirement

[41] The subject matter requirement is met when the work of authorship being copied or misappropriated "fall[s] within the ambit of copyright protection." Harper & Row, Inc. v. Nation Enter., 723 F.2d 195, 200 (1983), rev'd on other grounds, 471 U.S. 539 (1985). We believe that the subject matter requirement is met in the instant matter and that the concept of "partial preemption" is not consistent with Section 301 of the Copyright Act. Although game broadcasts are copyrightable while the underlying games are not, the Copyright Act should not be read to distinguish between the two when analyzing the preemption of a misappropriation claim based on copying or taking from the copyrightable work. We believe that:

[42] [O]nce a performance is reduced to tangible form, there is no distinction between the performance and the recording of the performance for the purposes of preemption under Section 301(a). Thus, if a baseball game were not broadcast or were telecast without being recorded, the Players' performances similarly would not be fixed in tangible form and their rights of publicity would not be subject to preemption. By virtue of being videotaped, however, the Players' performances are fixed in tangible form, and any rights of publicity in their performances that are equivalent to the rights contained in the copyright of the telecast are preempted.

[43] Baltimore Orioles, 805 F.2d at 675 (citation omitted).

[44] Copyrightable material often contains uncopyrightable elements within it, but Section 301 preemption bars state law misappropriation claims with respect to uncopyrightable as well as copyrightable elements. In Harper & Row, for example, we held that state law claims based on the copying of excerpts from President Ford's memoirs were preempted even with respect to information that was purely factual and not copyrightable. We stated:

[45] [T]he [Copyright] Act clearly embraces "works of authorship," including "literary works," as within its subject matter. The fact that portions of the Ford memoirs may consist of uncopyrightable material . . . does not take the work as a whole outside the subject matter protected by the Act. Were this not so, states would be free to expand the perimeters of copyright protection to their own liking, on the theory that preemption would be no bar to state protection of material not meeting federal statutory standards.

[46] 723 F.2d at 200 (citation omitted). The legislative history supports this understanding of Section 301(a)'s subject matter requirement. The House Report stated:



[47] As long as a work fits within one of the general subject matter categories of sections 102 and 103, the bill prevents the States from protecting it even if it fails to achieve Federal statutory copyright because it is too minimal or lacking in originality to qualify, or because it has fallen into the public domain.

[48] H.R. No. 94-1476 at 131, reprinted in 1976 U.S.C.C.A.N. at 5747. See also Baltimore Orioles, 805 F.2d at 676 (citing excerpts of House Report 94-1476).

[49] Adoption of a partial preemption doctrine - preemption of claims based on misappropriation of broadcasts but no preemption of claims based on misappropriation of underlying facts - would expand significantly the reach of state law claims and render the preemption intended by Congress unworkable. It is often difficult or impossible to separate the fixed copyrightable work from the underlying uncopyrightable events or facts. Moreover, Congress, in extending copyright protection only to the broadcasts and not to the underlying events, intended that the latter be in the public domain. Partial preemption turns that intent on its head by allowing state law to vest exclusive rights in material that Congress intended to be in the public domain and to make unlawful conduct that Congress intended to allow. This concern was recently expressed in ProCD, Inc. v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996), a case in which the defendants reproduced non-copyrightable facts (telephone listings) from plaintiffs' copyrighted software. In discussing preemption under Section 301(a), Judge Easterbrook held that the subject matter requirement was met and noted:

[50] ProCD's software and data are "fixed in a tangible medium of expression", and the district judge held that they are "within the subject matter of copyright". The latter conclusion is plainly right for the copyrighted application program, and the judge thought that the data likewise are "within the subject matter of copyright" even if, after Feist, they are not sufficiently original to be copyrighted. 908 F. Supp. at 656-57. Baltimore Orioles, Inc. v. Major League Baseball Players Ass'n, 805 F.2d 663, 676 (7th Cir. 1986), supports that conclusion, with which commentators agree. . . . One function of 301(a) is to prevent states from giving special protection to works of authorship that Congress has decided should be in the public domain, which it can accomplish only if "subject matter of copyright" includes all works of a type covered by sections 102 and 103, even if federal law does not afford protection to them.

[51] ProCD, 86 F.3d at 1453 (citation omitted). We agree with Judge Easterbrook and reject the separate analysis of the underlying games and broadcasts of those games for purposes of preemption.

[52] c) The General Scope Requirement

[53] Under the general scope requirement, Section 301 "preempts only those state law rights that `may be abridged by an act which, in and of itself, would infringe one of the exclusive rights' provided by federal copyright law." Computer Assoc. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 716 (2d Cir. 1992) (quoting Harper & Row, 723 F.2d at 200). However, certain forms of commercial misappropriation otherwise within the general scope requirement will survive preemption if an "extra-element" test is met. As stated in Altai:

[54] But if an "extra element" is "required instead of or in addition to the acts of reproduction, performance, distribution or display, in order to constitute a state-created cause of action, then the right does not lie `within the general scope of copyright,' and there is no preemption."

[55] Id. (quoting 1 Nimmer on Copyright Section 1.01[B] at 1-15).


[56] ProCD was in part an application of the extra-element test. Having held the misappropriation claims to be preempted, Judge Easterbrook went on to hold that the plaintiffs could bring a state law contract claim. The court held that the defendants were bound by the software's shrink-wrap licenses as a matter of contract law and that the private contract rights were not preempted because they were not equivalent to the exclusive rights granted by copyright law. In other words, the contract right claims were not preempted because the general scope requirement was not met. ProCD, 86 F.3d at 1455.

[57] We turn, therefore, to the question of the extent to which a "hot-news" misappropriation claim based on INS involves extra elements and is not the equivalent of exclusive rights under a copyright. Courts are generally agreed that some form of such a claim survives preemption. Financial Information, Inc. v. Moody's Investors Service, Inc., 808 F.2d 204, 208 (2d Cir. 1986), cert. denied, 484 U.S. 820 (1987) ("FII"). This conclusion is based in part on the legislative history of the 1976 amendments. The House Report stated:

[58] "Misappropriation" is not necessarily synonymous with copyright infringement, and thus a cause of action labeled as "misappropriation" is not preempted if it is in fact based neither on a right within the general scope of copyright as specified by section 106 nor on a right equivalent thereto. For example, state law should have the flexibility to afford a remedy (under traditional principles of equity) against a consistent pattern of unauthorized appropriation by a competitor of the facts (i.e., not the literary expression) constituting "hot" news, whether in the traditional mold of International News Service v. Associated Press, 248 U.S. 215 (1918), or in the newer form of data updates from scientific, business, or financial data bases.

[59] H.R. No. 94-1476 at 132, reprinted in 1976 U.S.C.C.A.N. at 5748 (footnote omitted),[n5] see also FII, 808 F.2d at 209 ("`misappropriation' of `hot' news, under International News Service, [is] a branch of the unfair competition doctrine not preempted by the Copyright Act according to the House Report") (citation omitted)). The crucial question, therefore, is the breadth of the "hot-news" claim that survives preemption.

[60] In INS, the plaintiff AP and defendant INS were "wire services" that sold news items to client newspapers. AP brought suit to prevent INS from selling facts and information lifted from AP sources to INS-affiliated newspapers. One method by which INS was able to use AP's news was to lift facts from AP news bulletins. INS, 248 U.S. at 231. Another method was to sell facts taken from just-published east coast AP newspapers to west coast INS newspapers whose editions had yet to appear. Id. at 238. The Supreme Court held (prior to Erie R. Co. v. Tompkins, 304 U.S. 64 (1938)), that INS's use of AP's information was unlawful under federal common law. It characterized INS's conduct as

amount[ing] to an unauthorized interference with the normal operation of complainant's legitimate business precisely at the point where the profit is to be reaped, in order to divert a material portion of the profit from those who have earned it to those who have not; with special advantage to defendant in the competition because of the fact that it is not burdened with any part of the expense of gathering the news.

[61] INS, 248 U.S. at 240.

[62] The theory of the New York misappropriation cases relied upon by the district court is considerably broader than that of INS. For example, the district court quoted at length from Metropolitan Opera Ass'n v. Wagner-Nichols Recorder Corp., 101 N.Y.S.2d 483 (N.Y. Sup. Ct. 1950), aff'd, 107 N.Y.S.2d 795 (1st Dep't 1951). Metropolitan Opera described New York misappropriation law as standing for the "broader principle that property rights of commercial value are to be and will be protected from any form of commercial immorality"; that misappropriation law developed "to deal with business malpractices



offensive to the ethics of [] society"; and that the doctrine is "broad and flexible." 939 F. Supp. at 1098-1110 (quoting Metropolitan Opera, 101 N.Y.S.2d at 492, 488-89). However, we believe that Metropolitan Opera's broad misappropriation doctrine based on amorphous concepts such as "commercial immorality" or society's "ethics" is preempted. Such concepts are virtually synonymous for wrongful copying and are in no meaningful fashion distinguishable from infringement of a copyright. The broad misappropriation doctrine relied upon by the district court is, therefore, the equivalent of exclusive rights in copyright law.

[63] Indeed, we said as much in FII. That decision involved the copying of financial information by a rival financial reporting service and specifically repudiated the broad misappropriation doctrine of Metropolitan Opera. We explained:

[64] We are not persuaded by FII's argument that misappropriation is not "equivalent" to the exclusive rights provided by the Copyright Act . . . . Nor do we believe that a possible exception to the general rule of preemption in the misappropriation area - for claims involving "any form of commercial immorality,". . . quoting Metropolitan Opera Ass'n v. Wagner-Nichols Recorder Corp., 199 Misc. 786, 101 N.Y.S.2d 483, . . . - should be applied here. We believe that no such exception exists and reject its use here. Whether or not reproduction of another's work is "immoral" depends on whether such use of the work is wrongful. If, for example, the work is in the public domain, then its use would not be wrongful. Likewise, if, as here, the work is unprotected by federal law because of lack of originality, then its use is neither unfair nor unjustified.

[65] FII, 808 F.2d at 208. In fact, FII only begrudgingly concedes that even narrow "hot news" INS-type claims survive preemption. Id. at 209.

[66] Moreover, Computer Associates Intern., Inc. v. Altai Inc. indicated that the "extra element" test should not be applied so as to allow state claims to survive preemption easily. 982 F.2d at 717. "An action will not be saved from preemption by elements such as awareness or intent, which alter `the action's scope but not its nature' . . . . Following this `extra element' test, we have held that unfair competition and misappropriation claims grounded solely in the copying of a plaintiff's protected expression are preempted by section 301." Id. (citation omitted).

[67] In light of cases such as FII and Altai that emphasize the narrowness of state misappropriation claims that survive preemption, most of the broadcast cases relied upon by the NBA are simply not good law. Those cases were decided at a time when simultaneously-recorded broadcasts were not protected under the Copyright Act and when the state law claims they fashioned were not subject to federal preemption. For example, Metropolitan Opera, 101 N.Y.S.2d 483, involved the unauthorized copying, marketing, and sale of opera radio broadcasts. As another example, in Mutual Broadcasting System v. Muzak Corp., 30 N.Y.S.2d 419 (Sup. Ct. 1941), the defendant simultaneously retransmitted the plaintiff's baseball radio broadcasts onto telephone lines. As discussed above, the 1976 amendments to the Copyright Act were specifically designed to afford copyright protection to simultaneously-recorded broadcasts, and Metropolitan Opera and Muzak could today be brought as copyright infringement cases. Moreover, we believe that they would have to be brought as copyright cases because the amendments affording broadcasts copyright protection also preempted the state law misappropriation claims under which they were decided.

[68] Our conclusion, therefore, is that only a narrow "hot-news" misappropriation claim survives preemption for actions concerning material within the realm of copyright.[n6] See also 1 McCarthy on Trademarks and Unfair Competition (4th ed. 1996), Section 10:69, at 10-134 (discussing National Exhibition Co. v. Fass, 133 N.Y.S.2d 379 (Sup. Ct. 1954), Muzak, 30 N.Y.S.2d 419, and other cases relied upon by NBA that pre-date the 1976 amendment to the Copyright Act and concluding that after the


amendment, "state misappropriation law would be unnecessary and would be preempted: protection is solely under federal copyright").[n7]

[69] In our view, the elements central to an INS claim are: (i) the plaintiff generates or collects information at some cost or expense, see FII, 808 F.2d at 206; INS, 248 U.S. at 240; (ii) the value of the information is highly time-sensitive, see FII, 808 F.2d at 209; INS, 248 U.S. at 231; Restatement (Third) Unfair Competition, Section 38 cmt. c.; (iii) the defendant's use of the information constitutes free-riding on the plaintiff's costly efforts to generate or collect it, see FII, 808 F.2d at 207; INS, 248 U.S. at 239-40; Restatement Section 38 at cmt. c.; McCarthy, Section 10:73 at 10-139; (iv) the defendant's use of the information is in direct competition with a product or service offered by the plaintiff, FII, 808 F.2d at 209, INS, 248 U.S. at 240; (v) the ability of other parties to free-ride on the efforts of the plaintiff would so reduce the incentive to produce the product or service that its existence or quality would be substantially threatened, FII, 808 F.2d at 209; Restatement, Section 38 at cmt. c.; INS, 248 U.S. at 241 ("[INS's conduct] would render [AP's] publication profitless, or so little profitable as in effect to cut off the service by rendering the cost prohibitive in comparison with the return.")[n8]

[70] INS is not about ethics; it is about the protection of property rights in time-sensitive information so that the information will be made available to the public by profit-seeking entrepreneurs. If services like AP were not assured of property rights in the news they pay to collect, they would cease to collect it. The ability of their competitors to appropriate their product at only nominal cost and thereby to disseminate a competing product at a lower price would destroy the incentive to collect news in the first place. The newspaper-reading public would suffer because no one would have an incentive to collect "hot news." We therefore find the extra elements - those in addition to the elements of copyright infringement - that allow a "hot-news" claim to survive preemption are: (i) the time-sensitive value of factual information, (ii) the free-riding by a defendant, and (iii) the threat to the very existence of the product or service provided by the plaintiff.

[71] 2. The Legality of SportsTrax

[72] We conclude that Motorola and STATS have not engaged in unlawful misappropriation under the "hot-news" test set out above. To be sure, some of the elements of a "hot-news" INS-claim are met. The information transmitted to SportsTrax is not precisely contemporaneous, but it is nevertheless time-sensitive. Also, the NBA does provide, or will shortly do so, information like that available through SportsTrax. It now offers a service called "Gamestats" that provides official play-by-play game sheets and half-time and final box scores within each arena. It also provides such information to the media in each arena. In the future, the NBA plans to enhance Gamestats so that it will be networked between the various arenas and will support a pager product analogous to SportsTrax. SportsTrax will of course directly compete with an enhanced Gamestats.

[73] However, there are critical elements missing in the NBA's attempt to assert a "hot-news" INS-type claim. As framed by the NBA, their claim compresses and confuses three different informational products. The first product is generating the information by playing the games; the second product is transmitting live, full descriptions of those games; and the third product is collecting and retransmitting strictly factual information about the games. The first and second products are the NBA's primary business: producing basketball games for live attendance and licensing copyrighted broadcasts of those games. The collection and retransmission of strictly factual material about the games is a different product: e.g., box-scores in newspapers, summaries of statistics on television sports news, and real-time facts to be transmitted to pagers. In our view, the NBA has failed to show any competitive effect whatsoever from SportsTrax on the first and second products and a lack of any free-riding by SportsTrax on the third.


[74] With regard to the NBA's primary products - producing basketball games with live attendance and licensing copyrighted broadcasts of those games - there is no evidence that anyone regards SportsTrax or the AOL site as a substitute for attending NBA games or watching them on television. In fact, Motorola markets SportsTrax as being designed "for those times when you cannot be at the arena, watch the game on TV, or listen to the radio . . ." The NBA argues that the pager market is also relevant to a "hot-news" INS-type claim and that SportsTrax's future competition with Gamestats satisfies any missing element. We agree that there is a separate market for the real-time transmission of factual information to pagers or similar devices, such as STATS's AOL site. However, we disagree that SportsTrax is in any sense free-riding off Gamestats.

[75] An indispensable element of an INS "hot-news" claim is free-riding by a defendant on a plaintiff's product, enabling the defendant to produce a directly competitive product for less money because it has lower costs. SportsTrax is not such a product. The use of pagers to transmit real-time information about NBA games requires: (i) the collecting of facts about the games; (ii) the transmission of these facts on a network; (iii) the assembling of them by the particular service; and (iv) the transmission of them to pagers or an on-line computer site. Appellants are in no way free-riding on Gamestats. Motorola and STATS expend their own resources to collect purely factual information generated in NBA games to transmit to SportsTrax pagers. They have their own network and assemble and transmit data themselves.

[76] To be sure, if appellants in the future were to collect facts from an enhanced Gamestats pager to retransmit them to SportsTrax pagers, that would constitute free-riding and might well cause Gamestats to be unprofitable because it had to bear costs to collect facts that SportsTrax did not. If the appropriation of facts from one pager to another pager service were allowed, transmission of current information on NBA games to pagers or similar devices would be substantially deterred because any potential transmitter would know that the first entrant would quickly encounter a lower cost competitor free-riding on the originator's transmissions.[n9]

[77] However, that is not the case in the instant matter. SportsTrax and Gamestats are each bearing their own costs of collecting factual information on NBA games, and, if one produces a product that is cheaper or otherwise superior to the other, that producer will prevail in the marketplace. This is obviously not the situation against which INS was intended to prevent: the potential lack of any such product or service because of the anticipation of free-riding.

[78] For the foregoing reasons, the NBA has not shown any damage to any of its products based on free-riding by Motorola and STATS, and the NBA's misappropriation claim based on New York law is preempted.[n10]

[79] III. THE NBA'S CROSS-APPEAL

* * *

[83] IV. CONCLUSION

[84] We vacate the injunction entered by the district court and order that the NBA's claim for misappropriation be dismissed. We affirm the district court's dismissal of the NBA's claim for false advertising under Section 43(a) of the Lanham Act.

1. The other three SportsTrax modes involve information that is far less contemporaneous than that provided in the "current" mode. In the "statistics" mode, the SportsTrax pager displays a variety of player and team statistics, such as field goal shooting percentages and top scorers. However, these are calculated only at half-time and when the


game is over. In the "final scores" mode, the unit displays final scores from the previous day's games. In the "demonstration" mode, the unit merely simulates information shown during a hypothetical NBA game. The core issue in the instant matter is the dissemination of continuously-updated real-time NBA game information in the "current" mode. Because we conclude that the dissemination of such real-time information is lawful, the other modes need no further description or discussion.

2. The NBA moved initially for a preliminary injunction and a hearing was held on that motion. Subsequently, the parties agreed to consolidate the hearing into a trial on the merits, submitting supplemental briefing and attending an additional oral argument.

3. The text of Section 102(a) reads:

Section 102. Subject matter of copyright: In general

(a) Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories:

(1) literary works;

(2) musical works, including any accompanying words;

(3) dramatic works, including any accompanying music;

(4) pantomimes and choreographic works;

(5) pictorial, graphic, and sculptural works;

(6) motion pictures and other audiovisual works;

(7) sound recordings; and

(8) architectural works.

4. The relevant portions of the statute, 17 U.S.C. § 301, read:

Section 301. Preemption with respect to other laws

(a) On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.

(b) Nothing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to

(1) subject matter that does not come within the subject matter of copyright as specified by sections 102 and 103, including works of authorship not fixed in any tangible medium of expression; or . . .

(3) activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106.


5. Although this passage implies that INS survives preemption because it fails the general scope requirement, Nimmer apparently takes the view adopted by the district court, namely that INS survives preemption because the subject matter requirement is not met. Nimmer Section 1.01[B][2][b] at 1-44.2.

6. State law claims involving breach of fiduciary duties or trade-secret claims are not involved in this matter and are not addressed by this discussion. These claims are generally not preempted because they pass the "extra elements" test. See Altai, 982 F.2d at 717.

7. Quite apart from Copyright Act preemption, INS has long been regarded with skepticism by many courts and scholars and often confined strictly to its facts. In particular, Judge Learned Hand was notably hostile to a broad reading of the case. He wrote:

[W]e think that no more was covered than situations substantially similar to those then at bar. The difficulties of understanding it otherwise are insuperable. We are to suppose that the court meant to create a sort of common-law patent or copyright for reasons of justice. Either would flagrantly conflict with the scheme which Congress has for more than a century devised to cover the subject-matter.

Cheney Bros. v. Doris Silk Corp., 35 F.2d 279, 280 (2d Cir. 1929), cert. denied, 281 U.S. 728 (1930). See also Restatement (Third) of Unfair Competition Section 38 cmt. c (1995):

The facts of the INS decision are unusual and may serve, in part, to limit its rationale . . . . The limited extent to which the INS rationale has been incorporated into the common law of the states indicate that the decision is properly viewed as a response to unusual circumstances rather than as a statement of generally applicable principles of common law. Many subsequent decisions have expressly limited the INS case to its facts.

8. Some authorities have labeled this element as requiring direct competition between the defendant and the plaintiff in a primary market. "[I]n most of the small number of cases in which the misappropriation doctrine has been determinative, the defendant's appropriation, like that in INS, resulted in direct competition in the plaintiffs' primary market. . . Appeals to the misappropriation doctrine are almost always rejected when the appropriation does not intrude upon the plaintiff's primary market.", Restatement (Third) of Unfair Competition, Section 38 cmt. c, at 412-13; see also National Football League v. Delaware, 435 F. Supp. 1372 (D. Del. 1977). In that case, the NFL sued Delaware over the state's lottery game which was based on NFL games. In dismissing the wrongful misappropriation claims, the court stated:

While courts have recognized that one has a right to one's own harvest, this proposition has not been construed to preclude others from profiting from demands for collateral services generated by the success of one's business venture.

Id. at 1378. The court also noted, "It is true that Delaware is thus making profits it would not make but for the existence of the NFL, but I find this difficult to distinguish from the multitude of charter bus companies who generate profit from servicing those of plaintiffs' fans who want to go to the stadium or, indeed, the sidewalk popcorn salesman who services the crowd as it surges towards the gate." Id.

9. It may well be that the NBA's product, when enhanced, will actually have a competitive edge because its Gamestats system will apparently be used for a number of in-stadium services as well as the pager market, resulting in a certain amount of cost-sharing. Gamestats might also have a temporal advantage in collecting and transmitting official statistics. Whether this is so does not affect our disposition of this matter, although it does demonstrate the gulf between this case and INS, where the free-riding created the danger of no wire service being viable.

10. In view of our disposition of this matter, we need not address appellants' First Amendment and laches defenses.

* * *


MAZER v. STEIN, 347 U.S. 201 (1954)

Warren, Black, Reed, Frankfurter, Douglas, Jackson, Burton, Clark, Minton.

[p*202] MR. JUSTICE REED delivered the opinion of the Court.

[1] This case involves the validity of copyrights obtained by respondents for statuettes of male and female dancing figures made of semivitreous china. The controversy centers around the fact that although copyrighted as "works of art," the statuettes were intended for use and used as bases for table lamps, with electric wiring, sockets and lamp shades attached.

[2] Respondents are partners in the manufacture and sale of electric lamps. One of the respondents created original works of sculpture in the form of human figures by traditional clay-model technique. From this model, a production mold for casting copies was made. The resulting statuettes, without any lamp components added, were submitted by the respondents to the Copyright Office for registration as "works of art" or reproductions thereof under § 5 (g) or § 5 (h) of the copyright law, [n1] and certificates [p*203] of registration issued. Sales (publication in accordance with the statute) as fully equipped lamps preceded the applications for copyright registration of the statuettes. 17 U. S. C. (Supp. V, 1952) §§ 10, 11, 13, 209; Rules and Regulations, 37 CFR, 1949, §§ 202.8 and 202.9. Thereafter, the statuettes were sold in quantity throughout the country both as lamp bases and as statuettes. The sales in lamp form accounted for all but an insignificant portion of respondents' sales.

[3] Petitioners are partners and, like respondents, make and sell lamps. Without authorization, they copied the statuettes, embodied them in lamps and sold them.

[4] The instant case is one in a series of reported suits brought by respondents against various alleged infringers of the copyrights, all presenting the same or a similar question. [n2] Because of conflicting decisions, [n3] we granted certiorari. 346 U.S. 811. In the present case respondents [p*204] sued petitioners for infringement in Maryland. Stein v. Mazer, 111 F.Supp. 359. Following the Expert decision and rejecting the reasoning of the District Court in the Rosenthal opinion, both referred to in the preceding note, the District Court dismissed the complaint. The Court of Appeals reversed and held the copyrights valid. Stein v. Mazer, 204 F.2d 472. [n4] It said: "A subsequent utilization of a work of art in an article of manufacture in no way affects the right of the copyright owner to be protected against infringement of the work of art itself." Id., at 477.

[5] Petitioners, charged by the present complaint with infringement of respondents� copyrights of reproductions of their works of art, seek here a reversal of the Court of Appeals decree upholding the copyrights. Petitioners in their petition for certiorari present a single question:

"Can statuettes be protected in the United States by copyright when the copyright applicant intended primarily to use the statuettes in the form of lamp [p*205] bases to be made and sold in quantity and carried the intentions into effect?

"Stripped down to its essentials, the question presented is: Can a lamp manufacturer copyright his lamp bases?"


[6] The first paragraph accurately summarizes the issue. The last gives it a quirk that unjustifiably, we think, broadens the controversy. The case requires an answer, not as to a manufacturer’s right to register a lamp base but as to an artist’s right to copyright a work of art intended to be reproduced for lamp bases. As petitioners say in their brief, their contention "questions the validity of the copyright based upon the actions of the respondents." Petitioners question the validity of a copyright of a work of art for "mass" production. "Reproduction of a work of art" does not mean to them unlimited reproduction. Their position is that a copyright does not cover industrial reproduction of the protected article. Thus their reply brief states:

"When an artist becomes a manufacturer or a designer for a manufacturer he is subject to the limitations of design patents and deserves no more consideration than any other manufacturer or designer."It is not the right to copyright an article that could have utility under §§ 5 (g) and (h), note 1, supra, that petitioners oppose. Their brief accepts the copyright ability of the great carved golden saltcellar of Cellini but adds:

"If, however, Cellini designed and manufactured this item in quantity so that the general public could have salt cellars, then an entirely different conclusion would be reached. In such case, the salt cellar becomes an article of manufacture having utility in addition to its ornamental value and would therefore have to be protected by design patent."[p*206] It is publication as a lamp and registration as a statute to gain a monopoly in manufacture that they assert is such a misuse of copyright as to make the registration invalid.

[7] No unfair competition question is presented. The constitutional power of Congress to confer copyright protection on works of art or their reproductions is not questioned. [n5]

[8] Petitioners assume, as Congress has in its [p*207] enactments and as do we, that the constitutional clause empowering legislation "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their [p*208] respective Writings and Discoveries," Art. I, § 8, cl. 8, includes within the term "Authors" the creator of a picture or a statute. The Court�s consideration will be limited to the question presented by the petition for the writ of certiorari. [n6] In recent years the question as to utilitarian use of copyrighted articles has been much discussed. [n7] In answering that issue, a review of the development of copyright coverage will make clear the purpose of the Congress in its copyright legislation. In 1790 the First Congress conferred a copyright on "authors of any map, chart, book or books already printed." [n8] Later, designing, engraving and etching were included; [n9] in 1831 musical [p*209] compositions; [n10] dramatic compositions in 1856; [n11] and photographs and negatives thereof in 1865. [n12] The Act of 1870 defined copyrightable subject matter as:

". . . any book, map, chart, dramatic or musical composition, engraving, cut, print, or photograph or negative thereof, or of a painting, drawing, chromo, statue, statuary, and of models or designs intended to be perfected as works of the fine arts."

(Emphasis supplied.) [n13] The italicized part added three-dimensional work of art to what had been protected previously. [n14] In 1909 Congress [p*210] again enlarged the scope of the copyright statute. [n15] The new Act provided in § 4:

"That the works for which copyright may be secured under this Act shall include all the writings of an author." [n16]

[9] Some writers interpret this section as being coextensive with the constitutional grant, [n17] but the House Report, while inconclusive, indicates that it was "declaratory of existing law" only. [n18] Section 5 relating to classes of writings in 1909 read as shown in the margin with subsequent additions not material


to this decision. [n19] [p*211] Significant for our purposes was the deletion of the fine-arts clause of the 1870 Act. [n20] Verbal distinctions between purely aesthetic articles and useful works of art ended insofar as the statutory copyright language is concerned. [n21] The practice of the Copyright Office, under the 1870 and 1874 Acts and before the 1909 Act, was to allow registration "as works of the fine arts" of articles of the same character as those of respondents now under challenge. Seven examples appear in the Government's [p*212] brief amicus curiae. [n22] In 1910, interpreting the 1909 Act, the pertinent Copyright Regulations read as shown in the margin. [n23] Because, as explained by the Government, this regulation "made no reference to articles which might fairly be considered works of art although they might also serve a useful purpose," it was reworded in 1917 as shown below. [n24] The amicus brief gives sixty examples selected at five-year intervals, 1912-1952, said to be typical of registrations of works of art possessing utilitarian aspects. [n25] The current pertinent regulation, published in 37 CFR, 1949, § 202.8, reads thus:

"Works of art (Class G) -- (a) In General. This class includes works of artistic craftsmanship, in so far as their form but not their mechanical or utilitarian aspects are concerned, such as artistic jewelry, [p*213] enamels, glassware, and tapestries, as well as all works belonging to the fine arts, such as paintings, drawings and sculpture. . . ."

[10] So we have a contemporaneous and long-continued construction of the statutes by the agency charged to administer them that would allow the registration of such a statuette as is in question here. [n26] This Court once essayed to fix the limits of the fine arts. [n27] That effort need not be appraised in relation to this copyright issue. It is clear Congress intended the scope of the copyright statute to include more than the traditional fine arts. Herbert Putnam, Esq., then Librarian of Congress and active in the movement to amend the copyright laws, told the joint meeting of the House and Senate Committees:

"The term 'works of art' is deliberately intended as a broader specification than 'works of the fine arts' in the present statute with the idea that there is subject-matter (for instance, of applied design, not yet within the province of design patents), which may properly be entitled to protection under the copyright law." [n28]

[11] The successive acts, the legislative history of the 1909 Act and the practice of the Copyright Office unite to show [p*214] that "works of art" and "reproductions of works of art" are terms that were intended by Congress to include the authority to copyright these statuettes. Individual perception of the beautiful is too varied a power to permit a narrow or rigid concept of art. As a standard we can hardly do better than the words of the present Regulation, § 202.8, supra, naming the things that appertain to the arts. They must be original, that is, the author�s tangible expression of his ideas. Compare Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 59-60. Such expression, whether meticulously delineating the model or mental image or conveying the meaning by modernistic form or color, is copyrightable. [n29] What cases there are confirm this coverage of the statute. [n30] The conclusion that the statutes here in issue may be copyrighted goes far to solve the question whether their intended reproduction as lamp stands bars or invalidates their registration. This depends solely on statutory interpretation. Congress may after publication protect by copyright any writing of an author. Its statute creates the copyright. [n31] It did not exist at common law even [p*215] though he had a property right in his unpublished work. [n32] But petitioners assert that congressional enactment of the design patent laws should be interpreted as denying protection to artistic articles embodied or reproduced in manufactured articles. [n33] They say:

"Fundamentally and historically, the Copyright Office is the repository of what each claimant considers to be a cultural treasure, whereas the Patent Office is the repository of what each applicant considers to be evidence of the advance in industrial and technological fields."


[12] Their argument is that design patents require the critical examination given patents to protect the public against monopoly. Attention is called to Gorham Co. v. White, 14 Wall. 511, interpreting the design patent law of 1842, 5 Stat. 544, granting a patent to anyone who by "their own industry, genius, efforts, and expense, may have invented or produced any new and original design for a manufacture . . . ." A pattern for flat silver was there upheld. [n34] The intermediate and present law differs [p*216] little. "Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, . . ." subject generally to the provisions concerning patents for invention. § 171, 66 Stat. 805. As petitioner sees the effect of the design patent law:

"If an industrial designer can not satisfy the novelty requirements of the design patent laws, then his design as used on articles of manufacture can be copied by anyone."

[13] Petitioner has furnished the Court a booklet of numerous design patents for statuettes, bases for table lamps and similar articles for manufacture, quite indistinguishable in type from the copyrighted statuettes here in issue. [n35] Petitioner urges that overlapping of patent and copyright legislation so as to give an author or inventor a choice between patents and copyrights should not be permitted. We assume petitioner takes the position that protection for a statuette for industrial use can only be obtained by patent, if any protection can be given. [n36] [p*217] As we have held the statuettes here involved copyrightable, we need not decide the question of their patentability. Though other courts have passed upon the issue as to whether allowance by the election of the author or patentee of one bars a grant of the other, we do not. [n37] We do hold that the patentability of the statuettes, fitted as lamps or unfitted, does not bar copyright as works of art. Neither the Copyright Statute nor any other says that because a thing is patentable it may not be copyrighted. We should not so hold. [n38] Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea -- not the idea itself. [n39] Thus, in Baker v. Selden, 101 U.S. 99, the Court held that a copyrighted book on a peculiar system of bookkeeping was not infringed by a similar book using a similar plan which achieved similar results where the alleged infringer made a different arrangement of the columns and used different headings. The distinction is illustrated in Fred Fisher, Inc. v. Dillingham, 298 F. 145, 151, when the court speaks of two men, each a perfectionist, independently making [p*218] maps of the same territory. Though the maps are identical, each may obtain the exclusive right to make copies of his own particular map, and yet neither will infringe the other�s copyright. Likewise a copyrighted directory is not infringed by a similar directory which is the product of independent work. [n40] The copyright protects originality rather than novelty or invention -- conferring only "the sole right of multiplying copies." [n41] Absent copying there can be no infringement of copyright. [n42] Thus, respondents may not exclude others from using statuettes of human figures in table lamps; they may only prevent use of copies of their statuettes as such or as incorporated in some other article. Regulation § 202.8, supra, makes clear that artistic articles are protected in "form but not their mechanical or utilitarian aspects." See Stein v. Rosenthal, 103 F.Supp. 227, 231. The dichotomy of protection for the aesthetic is not beauty and utility but art for the copyright and the invention of original and ornamental design for design patents. We find nothing in the copyright statute to support the argument that the intended use or use in industry of an article eligible for copyright bars or invalidates its registration. We do not read such a limitation into the copyright law.

[14] Nor do we think the subsequent registration of a work of art published as an element in a manufactured article, is a misuse of the copyright. This is not different from [p*219] the registration of a statuette and its later embodiment in an industrial article.

[15] "The copyright law, like the patent statutes, makes reward to the owner a secondary consideration." United States v. Paramount Pictures, 334 U.S. 131, 158. However, it is "intended definitely to grant valuable, enforceable rights to authors, publishers, etc., without burdensome requirements; �to afford greater encouragement to the production of literary [or artistic] works of lasting benefit to the world.�" Washingtonian Co. v. Pearson, 306 U.S. 30, 36.


[16] The economic philosophy behind the clause empowering Congress to grant patents and copyrights is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors and inventors in "Science and useful Arts." Sacrificial days devoted to such creative activities deserve rewards commensurate with the services rendered.

[17] Affirmed.

[For footnotes see on-line version of the case]

Opinion of MR. JUSTICE DOUGLAS, in which MR. JUSTICE BLACK concurs.

[18] An important constitutional question underlies this case -- a question which was stirred on oral argument but not treated in the briefs. It is whether these statuettes of dancing figures may be copyrighted. Congress has provided that "works of art," "models or designs for works of art," and "reproductions of a work of art" may be copyrighted (17 U. S. C. § 5); and the Court holds that these statuettes are included in the words "works of art." But may statuettes be granted the monopoly of the copyright?

[19] Article I, § 8 of the Constitution grants Congress the power "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors . . . the [p*220] exclusive Right to their respective Writings . . . ." The power is thus circumscribed: it allows a monopoly to be granted only to "authors" for their "writings." Is a sculptor an "author" and is his statue a "writing" within the meaning of the Constitution? We have never decided the question.

[20] Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, held that a photograph could be copyrighted.

[21] Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, held that chromolithographs to be used as advertisements for a circus were "pictorial illustrations" within the meaning of the copyright laws. Broad language was used in the latter case, ". . . a very modest grade of art has in it something irreducible, which is one man�s alone. That something he may copyright unless there is a restriction in the words of the act." 188 U.S., at 250. * * *

[23] The interests involved in the category of "works of art," as used in the copyright law, are considerable. The [p*221] Copyright Office has supplied us with a long list of such articles which have been copyrighted -- statuettes, book ends, clocks, lamps, door knockers, candlesticks, inkstands, chandeliers, piggy banks, sundials, salt and pepper shakers, fish bowls, casseroles, and ash trays. Perhaps these are all "writings" in the constitutional sense. But to me, at least, they are not obviously so. It is time that we came to the problem full face. I would accordingly put the case down for reargument.


SUPERIOR FORM BLDRS. v. DAN CHASE TAXIDERMY, 74 F.3d 488 (4th Cir. 1996)

Before NIEMEYER, MICHAEL, and MOTZ, Circuit Judges.

NIEMEYER, Circuit Judge:

[1] The principal issue presented in this appeal is whether animal mannequins used by taxidermists to mount animal skins are copyrightable. The controversy centers around whether these mannequins are "useful articles" or "sculptural works" within the meaning of the Copyright Act, and if useful, whether their sculptural features are conceptually separable and thus copyrightable. We also must decide evidentiary and damage issues arising from the trial in the district court.

[2] Because these animal mannequins were designed to portray the appearance of animals through artistic features introduced by the author in their creation, we hold that they are not "useful articles" as defined in the Copyright Act and that therefore copyright protection is available for them. Because we also reject the assignments of error attributed to the evidentiary and damage rulings, we affirm.

[3] Superior Form Builders, Inc. ("Superior Form"), through its owner and president, Tommy Knight, creates and markets animal mannequins for mounting animal skins. Employing traditional sculpturing techniques, Knight creates the mannequins, using casts of actual animal carcasses as models. He begins by applying clay to an armature made of wood and actual animal bones and shaping the desired animal in a particular pose and with precise anatomical features. From the clay sculpture, he makes a fiberglass mold and uses it to produce polyurethane forms, i.e. the animal mannequins. The mannequins contain special receptacles for artificial eyes,"ear butts" for the proper placement of animal ears, and pre-molded features for the application of artificial teeth.

[4] Knight considers his mannequins to be a form of artistic expression and has entered several of his unadorned mannequins in art contests. Some have won awards.

[5] Knight registered each of his mannequins with the United States Copyright Office and then assigned the copyrights to his company, Superior Form. Superior Form issued its first catalog with Knight's mannequins in December 1991.

[6] In January 1992, Dan Chase Taxidermy Supply Co., Inc. ("Chase Taxidermy"), a Superior Form competitor, ordered four mannequins from Superior Form's catalog: an otter, two raccoons in different poses, and a deer. Dan Chase, the president and chief executive officer of Chase Taxidermy, used the name of a fictional company in placing the order because he feared that Superior Form would not send the forms otherwise. Chase Taxidermy also used pseudonyms in the past to obtain animal mannequins from other companies.

[7] Chase Taxidermy used the four Superior Form mannequins to develop its own forms, making few or no modifications. After registering the mannequins as its own with the Copyright Office, Chase Taxidermy offered these mannequins for sale in its 1992-93 catalog and in each edition thereafter, with its own copyright notice attached.


[8] Chase Taxidermy advertises that it is the largest taxidermy supply company in the world and offers over 3,000 forms for sale through its catalog. Although Chase Taxidermy developed many of its forms from competitors' mannequins, it represented in its initial catalogs that "each manikin in this catalog is legally copyrighted according to the law of the United States of America and any infringement will be vigorously prosecuted." In later catalogs, it warned, "Beware of looka-likes," and explained:

[9] Practically everyone recognizes the fact that we are being copied by the desperate "copy cats" working overtime in an attempt to deceive the public and violate the rights of others. In September 1993, Superior Form filed suit against Chase Taxidermy and Dan Chase alleging that the defendants (hereinafter "Chase") had infringed Superior Form's copyrights on the four animal mannequins that Chase had purchased from Superior Form. Lilly Chase, Dan Chase's wife, was also named a defendant, but she was subsequently dismissed because the court lacked personal jurisdiction over her. Superior Form's complaint sought equitable relief, statutory damages of $400,000, and attorneys fees and costs. Chase moved for summary judgment on the ground that Superior Form's mannequins are not copyrightable because they are "useful articles" that do not have separable and independent sculptural features. The district court denied the motion, ruling as a matter of law that the taxidermy mannequins are copyrightable since they have no utilitarian function other than portraying the appearance of an animal and that such a portrayal is "unquestionably a permanent artistic object."

[10] The case proceeded to trial before a jury on the issues of whether Chase infringed Superior Form's copyrights and whether the infringement was willful. The jury returned a special verdict, finding in favor of Superior Form on all issues and awarding Superior Form the maximum statutory damages of $100,000 on each of the four works that Chase had copied. The district court denied Chase's motion for a new trial and, following a hearing, awarded Superior Form $74,104.50 in attorneys fees and costs. The court found that Chase had been involved in similar infringement suits for years and that only "substantial awards of damages as well as attorney's fees will deter Mr. Chase from continuing this willful and outrageous conduct." From the judgment entered, Chase appeals.

II

[11] We turn first to the question of whether the Copyright Act affords Superior Form copyright protection for its animal mannequins.

[12] The Copyright Act provides copyright protection for "original works of authorship fixed in any tangible medium of expression," including "sculptural works." 17 U.S.C. § 102(a)(5). Copyright protection, which gives authors the exclusive right to use, publish, and sell their work, is intended "to promote the Progress of Science and useful Arts." See U.S. Const. art. I, Section(s) 8, cl. 8.

[13] The copyright is the author's right to prohibit the copying of the author's intellectual invention, i.e. the originality of an author's expression. Since individual expressions of ideas inevitably vary, the originality inherent in each author's expression is the essence of the proprietary interest protected. See Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 346 (1991). Originality requires "independent creation plus a modicum of creativity." Id. Copyright protection is available even if the quantum of originality is minimal. Id. at 348.

[14] But the public has a corollary interest against any grant of an undeserving monopoly. Thus, while the Copyright Act affords protection for originality inherent in authorship, it retains in the public domain the right to discover facts and exchange ideas freely. Thus, copyright protection does not extend to ideas or facts, see 17 U.S.C. § 102(b), even if such facts were discovered as the product of long and hard work. A copyright "rewards originality, not effort." Feist, 499 U.S. at 364. It follows, therefore, that while authors are free to adopt ideas, narrate facts, and copy an original, they are not free "to copy the copy." Bleistein v. Donaldson Lith. Co., 188 U.S. 239, 249 (1903).






[15] Accordingly, an animal sculpture, even if realistic, is copyrightable as long as the work represents the author's creative effort. See, e.g., Kamar Int'l, Inc. v. Russ Berrie and Co., 657 F.2d 1059 (9th Cir. 1981). Several sculptors may copy a deer, even the same deer, in creating a sculpture, and each may obtain copyright protection for his or her own expression of the original. See Rachel v. Banana Republic, Inc., 831 F.2d 1503 (9th Cir. 1987). Such individual creative efforts inevitably possess some degree of originality. But when an author copies another author's work, he appropriates that author's propriety interest in the work, the author's individual expression.

[16] If, however, a person makes a casting rather than a sculpture of the deer, the effort introduces no originality into the product. Indeed, in such a case, the idea in the original and its expression in the casting are identical and inseparable because the mechanical process allowed for no possibility of originality, which is inherent in authorship. In such cases, copyright protection is not available. See Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971) (holding that where idea and expression are indistinguishable, copying the expression would not be barred by copyright registration).

[17] In this case, no one has seriously disputed the fact that Knight individually created sculptural works and thereby introduced originality into them. Even though his works realistically depict animals, they are not mere "castings" of animal carcasses. To the contrary, Knight constructs armatures to which he applies clay, forming what becomes clay sculptures of animals in particular poses. Chase's counsel conceded at trial that Knight formed his sculptures"from scratch" and that therefore there was some originality in each of his works. These clay sculptures were Knight's tangible expressions of animals and thus contained originality, which is required as a condition for obtaining copyright protection. See Feist, 499 U.S. at 346.

[18] While Chase offers no serious challenge to the originality of Knight's work, he does contend that by using the sculpted forms to mount animal skins, Superior Form's mannequins serve a utilitarian purpose and therefore are not copyrightable. As Chase argues, the mannequin is "one of the tools of a taxidermist as utilitarian as the glue, clay, glass and other materials used in mounting an animal." To support his contention, Chase relies on a Second Circuit case holding that human mannequins used to display clothes for commercial sale are not copyrightable. See Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir. 1985).

[19] Superior Form responds that its mannequins are in fact "sculptural works," not "useful articles," within the meaning of the Copyright Act. Alternatively, it argues that any utilitarian aspect of the mannequins is conceptually separable from their sculptural features. Superior Form analogizes its mannequins to the mannequins the Ninth Circuit has recognized as copyrightable. See Rachel, 831 F.2d at 1507 (recognizing that animal mannequins painted, fitted with artificial eyes, and covered with flocking are copyrightable); Kamar Int'l, 657 F.2d at 1061, (holding that stuffed toy animals are copyrightable).

[20] The Copyright Act excludes from copyright protection any "useful article," defining such an article as "having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information." 17 U.S.C. § 101. A"sculptural work," however, does not lose its copyrightability even if it has utilitarian aspects so long as the "sculptural features . . . can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." 17 U.S.C. § 101 (defining "pictorial, graphic, and sculptural work"). When the sculptural features and utilitarian aspects are not separable, the work is not copyrightable, although it may be protectable on a more limited basis with a design patent. Thus, the industrial design of a unique, aesthetically pleasing chair cannot be separated from the chair's utilitarian function and, therefore, is not subject to copyright protection. But the design of a statue portraying a dancer, created merely for its expressive form, continues to be copyrightable even when it has been included as the base of a lamp which is utilitarian. See Mazer v. Stein, 347 U.S. 201, 205 (1954). The objective in designing a chair is to create a utilitarian object, albeit an aesthetically pleasing one; the objective in creating a statue of a dancer is to express the idea of a





dancer. As the Act makes the distinction, a useful article has as its function something more than portraying its own appearance. See 17 U.S.C. § 101 (defining "useful article").

[21] In this case, Chase argues that Superior Form's animal mannequins have the utilitarian function of acting as mounts for animal skins for display. But this argument overlooks that which distinguishes mannequins from ordinary plastic foam pellet animal stuffing: A mannequin provides the creative form and expression of the ultimate animal display, whereas pellets do not. Even though covered with a skin, the mannequin is not invisible but conspicuous in the final display. The angle of the animal's head, the juxtaposition of its body parts, and the shape of the body parts in the final display is little more than the portrayal of the underlying mannequin. Indeed, the mannequin can even portray the intensity of flexed body parts, or it can reveal the grace of relaxed ones. None of these expressive aspects of a mannequin is lost by covering the mannequin with a skin. Thus, any utilitarian aspect of the mannequin exists "merely to portray the appearance" of the animal. See 17 U.S.C. § 101.

[22] The very same considerations that distinguish useful articles from sculptural works thus qualify mannequins designed to display trophy animals for copyright protection; the author's artistic portrayal of the animal form survives the final assemblage. It is the portrayal of the animal's body expression given by the mannequin that is thus protectable under the Copyright Act. See Rachel, 831 F.2d at 1507; cf. Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663 (3rd Cir. 1990) (finding nose mask for humans copyrightable because its sole function is to portray appearance of article); Kamar Int'l, 657 F.2d at 1061. We therefore agree with the district court in this case because "the usefulness of the forms is their portrayal of the appearance of animals." The mannequin forms "by definition are not useful articles."

[23] To the extent that an argument can be made that the mannequins in this case perform a utilitarian function - other than portraying themselves - by supporting the mounted skins, we believe the function to be conceptually separable from the works' sculptural features. See Brandir Int'l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1145 (2d Cir. 1987) ("Where design elements can be identified as reflecting the designer's artistic judgment exercised independently of functional influences, conceptual separability exists"); Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1980) (finding sculptural element of belt buckle conceptually separable from utilitarian function).

[24] We are not persuaded that the decision in Carol Barnhart compels a different result. In that case, the Second Circuit concluded that human mannequins used to display clothes for commercial sale were aesthetically pleasing articles of industrial design and were not designed for portraying themselves:

[25] [T]he aesthetic and artistic features of the Barnhart forms are inseparable from the forms' use as utilitarian articles . . . . While [sculptural techniques in creating the forms] may indicate that the forms are "aesthetically satisfying and valuable," it is insufficient to show that the forms possess aesthetic or artistic features that are physically or conceptually separable from the forms' use as utilitarian objects to display clothes.

[26] 773 F.2d at 418. The court did not find that the author fixed a mode of expression in a tangible form for the purpose of displaying or portraying the article.

[27] The human mannequins considered in Carol Barnhart are quite unlike Standard Form's animal mannequins, which are intended to give body expression to the final displays and to constitute a permanent portrayal of the animal. While we believe that Carol Barnhart is thus distinguishable in significant respects, to the extent that it might be construed as leaving unprotected an author's mode of expression fixed in a tangible medium for the purpose of portraying that expression, we would disagree with its holding. The court in Mazer articulates the relevant distinction:




[28] The dichotomy of protection . . . is . . . art for the copyright and the invention of original and ornamental design for design patents. We find nothing in the copyright statute to support the argument that the intended use or use in industry of an article eligible for copyright bars or invalidates its registration.

[29] 347 U.S. at 218.

[30] Accordingly, we hold that the originality of expression fixed in Superior Form's plastic mannequins, used for mounting animal skins for permanent display, is protectable as a sculptural work under the Copyright Act.

III

* * *

IV

[39] Finally, Chase contends that the award of statutory damages was improper and excessive and that the award of attorneys fees was unjustified. The jury awarded Superior Form $400,000 in statutory damages, the maximum allowable, and the district court awarded Superior Form $74,104.50 in attorneys fees and costs. Chase does not challenge the reasonableness of the amount of the attorneys fees.

[40] Chase argues that the statutory damages must bear some reasonable relationship to the amount of actual damages and"should not amount to a windfall" or punishment. He points out that his gross revenue from the sale of the contested mannequins was roughly $10,200 and that Superior Form was not able to identify any damages caused by his misappropriation. Chase further notes that the $400,000 awarded by the jury is more than double the combined net income of Dan Chase Taxidermy for fiscal years 1991 and 1992, which totaled roughly $170,000.

[41] The Copyright Act provides that "an infringer of copyright is liable for either . . . actual damages . . . or . . . statutory damages as provided by subsection (c)." 17 U.S.C. § 504(a). And subsection (c) provides:

[42] In a case where the copyright owner sustains the burden of proving, and the court finds, that infringement was committed willfully, the court in its discretion may increase the award of statutory damages to a sum of not more that $100,000.

[43] 15 U.S.C. § 504(c)(2). Thus, if the jury was presented with evidence justifying a finding of willful infringement, it is given broad discretion to award up to $100,000 for each work copied. Our review of such an award is even more deferential than abuse of discretion. See Douglas v. Cunningham, 294 U.S. 207, 210 (1935); Broadcast Music, Inc. v. Star Amusement, Inc., 44 F.3d 485, 487 (7th Cir. 1995).

[44] In this case the jury was properly instructed on its discretionary authority under the Copyright Act. The court told the jury that if it found willfulness, it should determine the appropriate damages by focusing not only on the actual damages suffered by the plaintiffs, but also on:

[45] any evidence that the defendants have a history of copyright infringement; any evidence that the defendants are apparently impervious to either deterrence or rehabilitation; the extent of the defendant's knowledge of the copyright laws; any misleading or false statements made by the defendants; . . . and any factor which the jury believes evidences the defendants knew, had reason to know, or recklessly disregarded the fact that its conduct constituted copyright infringement.






[46] See, e.g., F. W. Woolworth Co. v. Contemporary Arts, Inc., 344 U.S. 228, 234 (1952) (holding that recovery is not limited to gross profit from infringement; court may consider all facts); Chi-Boy Music v. Charlie Club, Inc., 930 F.2d 1224, 1229 (7th Cir. 1991) (holding that court may consider several factors in awarding damages under copyright Act, including deterrence and circumstances of infringement). Moreover, the jury was presented with evidence substantially implicating each of those factors.

* * *

[54] With respect to attorneys fees, Chase argues that attorneys fees are not to be awarded as a matter of course under 17 U.S.C. § 505. He notes, moreover, that because of the enormous statutory damages, Superior Form has been "more than adequately compensated for any injury or expense incurred." Chase concludes,"the magnitude of [Superior Form's] award is already grossly excessive without further punishing Chase by awarding [attorneys] fees and costs." We conclude, however, that the district court did not abuse its discretion in the circumstances of this case.

[55] A court may award costs and "may also award a reasonable attorney's fee to the prevailing party as part of the costs." 17 U.S.C. § 505. Chase is correct in noting that such awards are not to be made as a matter of course but, rather, as a matter of the court's discretion. See Fogerty v. Fantasy, Inc., 114 S.Ct. 1023, 1033 (1994). In exercising such discretion, we have instructed district courts to consider: (1) the motivation of the parties; (2) the objective reasonableness of the legal and factual positions advanced; (3) the need in particular circumstances to advance considerations of compensation and deterrence; and (4) any other relevant factor presented. See Rosciszewski v. Arete Assoc., Inc., 1 F.3d 225, 234 (4th Cir. 1993).

* * *

[58] The district court recognized that it was not required to award attorneys fees to the prevailing party and did so only after carefully considering each of the relevant factors. In this case, it found Chase's conduct "outrageous," and we conclude that the court's finding is amply supported. Under such circumstances, we do not find the district court's award in this case to constitute an abuse of discretion.

[59] For the foregoing reasons, the judgment of the district court is AFFIRMED.





GAY TOYS, INC. v. BUDDY L CORP., 703 F.2d 970 (6th Cir. 1983)

Before ENGEL and MARTIN, Circuit Judges, and BROWN, Senior Circuit Judge.

BAILEY BROWN, Senior Circuit Judge.

[1] The issue raised in this appeal is whether toys are copyrightable subject matter under the 1976 Copyright Act, 17 U.S.C. §§ 101-810. The district court held that toys are not copyrightable because they are "useful articles" as defined under § 101 of the statute. 522 F.Supp. 622 (E.D.Mich. 1981).

I.

[2] The appellant, Buddy L Corporation, is a toy manufacturer located in New York City. It designed a new toy airplane, the "Air Coupe," which apparently was first offered for sale to the public in April 1978. Id. at 623.

[3] The appellee, Gay Toys, Inc., is a toy manufacturer located in Southeastern Michigan. Gay Toys also designed a new toy airplane. According to Gay Toys, its Product Development Committee met in late 1979 to discuss ideas for developing a new toy airplane. During its deliberations, the committee had before it samples of various toy airplanes already on the market, including Buddy L's Air Coupe, as well as catalogs of real and toy airplanes. The committee decided to direct a designer to design, within certain specified restrictions, a new toy airplane. No two-dimensional technical drawings were made first; rather, the designer created a wood model from scratch. However, the designer had one of Buddy L's Air Coupes in front of him as he worked on the wood model, and he occasionally referred to it. The result was Gay Toys' "Flying Eagle I."

[4] Shortly after Gay Toys put its Flying Eagle I on the market, Buddy L notified Gay Toys that it was infringing on Buddy L's copyright in the Air Coupe. In response, Gay Toys commenced this action on November 14, 1980, seeking a declaratory judgment that Buddy L's copyright in its Air Coupe was invalid. After the filing of the suit, on November 19, 1980, Buddy L filed an application for registration of its Air Coupe copyright under the 1976 federal copyright statute, 17 U.S.C. §§ 101-810.[n1] The Copyright Office issued Registration No. VA 61-293 for the Air Coupe copyright on the same day. Buddy L then filed a counterclaim on February 4, 1981, alleging infringement of its copyright.[n2]

II.

[5] This case falls within the 1976 Copyright Act, which was a general revision of the 1909 Copyright Act. However, some of the cases interpreting the 1909 Act will be helpful in interpreting the 1976 Act.

[6] Section 102(a)(5) extends copyright protection under the statute to "pictorial, graphic, and sculptural works," which is defined in § 101 to include:


two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, technical drawings, diagrams, and models.[n3]

[7] As will be discussed infra, this definition was intended to be broad. However, the statute carves out an exception to this general category of "pictorial, graphic, and sculptural works." The definition further provides that

the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

[8] 17 U.S.C. § 101 (emphasis added). This portion of the definition indicates that "useful articles" are not generally copyrightable, although certain features of "useful articles" may be copyrighted separately. Section 101 defines "useful article" as:

an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.

[9] The legislative history makes clear that Congress intended to distinguish between "copyrightable works of applied art and uncopyrighted works of industrial design." H.R.Rep. No. 1476, 94th Cong., 2d Sess. 54, reprinted in 1976 U.S.Code Cong. & Ad. News 5659, 5668 (hereinafter referred to as House Report).

[10] The statutory scheme of the provisions at issue in this case, then, is that copyright protection is extended to "pictorial, graphic, and sculptural works" generally; an exception to this general rule is carved out by exempting "useful articles" from copyrightability; nevertheless, certain particular features of "useful articles" may be separately copyrighted.

III.

[11] The district court acknowledged that the toy airplane, as a "three-dimensional work of applied art or a model," 522 F.Supp. at 625, satisfied the general definition of "pictorial, graphic, and sculptural works." The legislative history indicates that the general definition was intended to be broad:

works of "applied art" encompass all original pictorial, graphic, and sculptural works that are intended to be or have been embodied in useful articles, regardless of factors such as mass production, commercial exploitation, and the potential availability of design patent protection.

[12] House Report at 54, 1976 U.S.Code Cong. & Ad.News at 5667. The House Report also states that the definition "carries with it no implied criterion of artistic taste, aesthetic value, or intrinsic quality." Id. It is also clear that the phrase includes the "works of art" category of the 1909 Act, id., see also 1 Nimmer on Copyright § 2.08 at 2-74 (1982), under which toys were copyrightable (see cases cited infra). There is little question, then, that toys fall within the general category of "pictorial, graphic, and sculptural works."

[13] However, the district court concluded that Buddy L's Air Coupe is not copyrightable because it is a "useful article." The court reasoned that children need toys for growing up and that a "toy airplane is useful and possesses utilitarian and functional characteristics in that it permits a child to dream and to let his or her imagination soar." 522 F.Supp. at 625. Although the district court also observed that certain aspects of the Air Coupe design were adopted for economy in packaging, the court's decision is not


limited to the particular characteristics of this particular toy. The clear import of the district court's holding is that toys qua toys are "useful articles" and not copyrightable.

[14] But the statutory definition of "useful article" suggests that toys are copyrightable. To be a "useful article," the item must have "an intrinsic utilitarian function that is not merely to portray the appearance of the article."[n4] And a toy airplane is merely a model which portrays a real airplane. To be sure, a toy airplane is to be played with and enjoyed, but a painting of an airplane, which is copyrightable, is to be looked at and enjoyed. Other than the portrayal of a real airplane, a toy airplane, like a painting, has no intrinsic utilitarian function.

[15] This interpretation is supported by legislative history as well. The intention of Congress was to exclude from copyright protection industrial products such as automobiles, food processors, and television sets. House Report at 55, 1976 U.S.Code Cong. & Ad.News at 5668. The function of toys is much more similar to that of works of art than it is to the "intrinsic utilitarian function" of industrial products.

[16] Indeed, under the district court's reasoning, virtually any "pictorial, graphic, and sculptural work" would not be copyrightable as a "useful article." A painting of Lindbergh's Spirit of St. Louis invites the viewer "to dream and to let his or her imagination soar," and would not be copyrightable under the district court's approach. But the statute clearly intends to extend copyright protection to paintings. The district court would have the "useful article" exception swallow the general rule, and its rationale is incorrect. See 1 Nimmer on Copyright § 2.08[B] at 2-93 n. 107 (1982).

[17] This conclusion is consistent with many prior decisions, holding either explicitly or implicitly that toys are copyrightable. See, e.g., Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 824 n. 2 (11th Cir. 1982) (soft-sculpture dolls held copyrightable); Kamar International, Inc. v. Russ Berrie and Co., 657 F.2d 1059, 1061 (9th Cir. 1981) (stuffed toy animals held copyrightable); Monogram Models, Inc. v. Industro Motive Corp., 492 F.2d 1281, 1284 (6th Cir.), cert. denied, 419 U.S. 843 (1974) (scale model airplane kit copyrightable); Uneeda Doll Co., Inc. v. P & M Doll Co., Inc., 353 F.2d 788 (2d Cir. 1965) (per curiam) (implicit that dolls are copyrightable); Knickerbocker Toy Co., Inc. v. Genie Toys Inc., 491 F.Supp. 526 (E.D.Mo. 1980) (implicit that doll is copyrightable); Dollcraft Industries, Ltd. v. Well-Made Toy Mfg. Co., 479 F.Supp. 1105, 1113 (E.D.N.Y. 1978) ("toy animals are entitled to copyright protection"); Blazon, Inc. v. DeLuxe Game Corp., 268 F.Supp. 416, 421 (S.D.N.Y. 1965) ("it is no longer subject to dispute that statutes or models of animals or dolls are entitled to copyright protection"). But see 1 Nimmer § 2.18[H][1].

[18] Some of the cited cases were decided under the 1909 Act, and it might be argued that certain changes made by the 1976 Act broaden the "useful article" exception. The exception that developed under the 1909 Act disallowed copyright protection to articles whose sole intrinsic function was utility. On the other hand, the 1976 Act disallows copyright protection to articles which have an intrinsic utilitarian function. See M. Nimmer, The Subject Matter of Copyright Under the Act of 1976, 24 U.C.L.A. L.Rev. 978, 1001-1003 (1977). However, in the present case, the contention that the 1976 Act expands this exception need not be decided. Even if this interpretation were adopted, it would not affect the copyrightability of toys because, as already determined, toys do not even have an intrinsic function other than the portrayal of the real item.

[19] The district court further concluded that certain aspects of the design of the Air Coupe were based on economic considerations. Apparently, Buddy L designed the Air Coupe to make it more economical to ship. The district court considered this design aspect of the Air Coupe as "useful, functional, and utilitarian." 522 F.Supp. at 625. But this consideration is irrelevant to the "useful article" determination. Again, the same could be said of the selection of canvas and colors for any painting. The designer's or


manufacturer's selection of certain features for economical reasons has nothing to do with whether the article is, to the consumer, a "useful article" under the statute.

[20] Finally, because we conclude that the Air Coupe is not a "useful article," we need not consider whether certain aspects of the item are copyrightable individually as separate and independent features. This provision applies only to items that are first, as a whole, disallowed copyright protection as "useful articles," and thus has no application to the present case.[n5]

IV.

[21] The district court's judgment is vacated, and the case is remanded for additional proceedings not inconsistent with this opinion.

1. Unless otherwise indicated, all section numbers hereinafter refer to the 1976 Copyright Act as codified in the United States Code.

2. The parties do not contend that the outcome of this case should be affected by the fact that the copyright was not actually issued until after Gay Toys filed this action.

3. The definition in its entirety reads:

"Pictorial, graphic, and sculptural works" include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, technical drawings, diagrams, and models. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

17 U.S.C. § 101.

4. 17 U.S.C. § 101.

5. As a result, two cases relied on by the parties, Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980), and Esquire, Inc. v. Ringer, 591 F.2d 796 (D.C.Cir. 1978), cert. denied, 440 U.S. 908, 99 S.Ct. 1217, 59 L.Ed.2d 456 (1979), are inapplicable to the present case because in those cases, the items in question were "useful articles," and the issue was whether certain features of the items were separable and independent.


ETS-HOKIN v. SKYY SPIRITS INC., 225 F.3d 1068 (9th Cir. 2000)

Before: Procter Hug, Jr., Chief Judge, and Dorothy W. Nelson and M. Margaret McKeown, Circuit Judges.

McKEOWN, Circuit Judge:

[1] This case requires us to apply copyright principles to stylized photographs of a vodka bottle. Specifically, we must decide whether professional photographer Joshua Ets-Hokin's commercial photographs, dubbed "product shots, " of the Skyy Spirits vodka bottle merit copyright protection. Given the Copyright Act's low threshold for originality generally and the minimal amount of originality required to qualify a photograph in particular, we conclude that Ets-Hokin's photographs are entitled to copyright protection.

[2] We also conclude that the district court erred in analyzing this case through the lens of derivative copyright. The photographs at issue cannot be derivative works because the vodka bottle--the alleged underlying work--is not itself subject to copyright protection. Accordingly, we reverse the grant of summary judgment for Skyy Spirits and remand for consideration of whether infringement has occurred.

BACKGROUND

I. THE STORY

[3] The centerpiece of this case and the subject of the photographs is a vodka bottle, shaped like a wine bottle, with boldly colored blue glass, a "pilfer-proof" cap, and a rectangular label. The label, which has a shiny blue background and a thin gold border, includes text that reads as follows:

SKYY VODKA® SKYY SPIRITS INC., SAN FRANCISCO 40% ALCOHOL BY VOLUME (80 PROOF) DISTILLED IN AMERICA FROM AMERICAN GRAIN

The text is in various fonts and sizes, all colored gold, except for "VODKA®," which is white. These are the label's only adornments; there are no pictures, illustrations, or other noteworthy features on the label or elsewhere on the bottle.

[4] Ets-Hokin is a professional photographer who maintains a studio in San Francisco. Maurice Kanbar, the president of Skyy Spirits, Inc. ("Skyy"), and Daniel Dadalt, an employee of the company, visited his studio in the summer of 1993. During this visit, Kanbar and Dadalt reviewed Ets-Hokin's photograph portfolio and subsequently hired him to photograph Skyy's vodka bottle.[n1] Ets-Hokin then shot a series of photographs and ultimately produced and delivered three photographs of the bottle. In all three photos, the bottle appears in front of a plain white or yellow backdrop, with back lighting. The bottle seems to be illuminated from the left (from the viewer's perspective), such that the right side of the bottle is slightly shadowed. The angle from which the photos were taken appears to be perpendicular to the side of the bottle, with the label centered, such that the viewer has a"straight on" perspective. In two of the photographs, only the bottle is pictured; in the third, a martini sits next to the bottle.


[5] Under the terms of a confirmation of engagement, signed by Dadalt on Skyy's behalf, Ets-Hokin retained all rights to the photos and licensed limited rights to Skyy. The parties dispute the scope of the license, including whether Skyy was licensed to use the photographs in advertising or in publications distributed to the public. After the confirmation was executed, Ets-Hokin applied to the U.S. Copyright Office for a certificate of registration for his series of photos, and a certificate was issued effective on March 10, 1995. Section six of the registration form, which instructs the applicant to "[c]omplete both space 6a & 6b for a derivative work," was left blank.

[6] Skyy claims that it found Ets-Hokin's photographs unsatisfactory and thus hired other photographers to photograph the bottle. In dealing with these photographers, Skyy sought to purchase all rights to the photographs of the bottle, as opposed to the license arrangement it had agreed to with Ets-Hokin. One photographer refused to sell his photograph outright, insisting on licensing. Two other photographers were apparently willing to sell all rights to their photographs.

[7] Ets-Hokin brought suit against Skyy and three other defendants[n2] for copyright infringement, fraud, and negligent misrepresentation. He alleged that the company used his work in various advertisements, including in Deneuve magazine and the San Francisco Examiner, and on the side of a bus, without his permission and in violation of the limited license. He also alleged that Skyy used photographs taken by the other photographers that mimicked his own photos; specifically, he claimed that these photographers improperly used his photographs to produce virtually identical photos of the vodka bottle.

II. THE DISTRICT COURT'S RULING

[8] The defendants argued that Ets-Hokin's photographs were not subject to copyright protection. Contending that Ets-Hokin's photos of the Skyy bottle were derivative works, the defendants moved for summary judgment on the grounds that Ets-Hokin raised no genuine issue of material fact to support the validity of his copyright or his claim of infringement. The district court granted the defendants' motion on the ground that Ets-Hokin failed to establish the validity of his copyright. As a result, the court did not reach the question of infringement. The court also dismissed Ets-Hokin's claims of fraud and negligent misrepresentation. Ets-Hokin v. Skyy Spirits, Inc., No. C 96-3690 SI, 1998 WL 690856 (N.D. Cal. Sept. 28, 1998). On appeal, only the copyright claims are at issue.

[9] In analyzing whether Ets-Hokin had a valid copyright, the court noted that, by establishing that the photos were derivative works, the defendants could rebut the statutory presumption of validity that Ets-Hokin enjoyed by virtue of holding a copyright registration. The court then held that the product shots were derivative works, reasoning that the photos were based on a preexisting work, namely, the Skyy vodka bottle. Having found that "the Skyy bottle is clearly a preexisting work," the court further held that the bottle's"trade dress (the blue bottle, the gold label, etc.) and copyrighted material (the label and all non-utilitarian features of the bottle)" rendered it a "protected and copyrighted work."

[10] Once Ets-Hokin's photos were determined to be derivative of the vodka bottle, the court applied the standard applicable to derivative works set forth in Entertainment Research Group, Inc. v. Genesis Creative Group, Inc., 122 F.3d 1211, 1220-21 (9th Cir. 1997) [hereinafter ERG]. Specifically, the court stated:

Because plaintiff's work is a derivative work, to establish the validity of his copyright, he must show both (1) that the differences between the two works are more than trivial, i.e., that his photographs are "sufficiently original," and (2) that his copyright will not interfere with Skyy's rights to create derivative works based upon its own bottle.

[11] In its analysis of the photographs as derivative works, the court found that Ets-Hokin did not raise a genuine issue of material fact as to either prong of the ERG test, concluding that (1) the photos were


insufficiently original to warrant copyright because the differences between the photos and the bottle were not "more than trivial"; and (2) a copyright in the photos would interfere with Skyy's right to create works based upon its own bottle.

STANDARD OF REVIEW

[12] We review de novo the district court's decision to grant summary judgment. See ERG, 122 F.3d at 1216; Worth v. Selchow & Righter Co., 827 F.2d 569, 571 (9th Cir. 1987) ("Summary judgments in copyright infringement actions are reviewed de novo."). We likewise interpret the Copyright Act de novo. See generally Bay Area Addiction Research & Treatment, Inc. v. City of Antioch, 179 F.3d 725, 730 (9th Cir. 1999) (standard of review for interpretation of a statute). Whether a particular photograph is protected by copyright law is a mixed question of law and fact, also subject to de novo review. Cf. Harper House, Inc. v. Thomas Nelson, Inc., 889 F.2d 197, 201 (9th Cir. 1989) ("Issues involving the availability and extent of copyright protection for Harper House's time management system present mixed questions of law and fact" reviewed de novo) (citation omitted).

ANALYSIS

[13] In order to establish copyright infringement, Ets-Hokin "must prove both valid ownership of the copyright and infringement of that copyright by" the defendants. ERG, 122 F.3d at 1217. To address Ets-Hokin's claim, we must first address whether his photographs are entitled to copyright protection. Only if they are do we turn to the issue of infringement.

I. VALIDITY OF THE COPYRIGHT

[14] Skyy argues, in a nutshell, that the commercial photographs of its vodka bottle are not worthy of copyright protection. We disagree. The essence of copyrightability is originality of artistic, creative expression. Given the low threshold for originality under the Copyright Act, as well as the longstanding and consistent body of case law holding that photographs generally satisfy this minimal standard, we conclude that Ets-Hokin's product shots of the Skyy vodka bottle are original works of authorship entitled to copyright protection. The district court erred in analyzing copyright protection under the rubric of derivative works. To put our holding in context, we summarize the historical treatment of photographs both as artistic expression and as the proper subject of copyright protection.

A. History of Photography as Copyrightable Artistic Expression

[15] It is well recognized that photography is a form of artistic expression, requiring numerous artistic judgments. As one photojournalist wrote,

[u]p to and including the instant of exposure, the photographer is working in an undeniably subjective way. By his choice of technical approach (which is a tool of emotional control), by his selection of the subject matter to be held within the confines of his negative area, and by his decision as to the exact, climatic [sic] instant of exposure, he is blending the variables of interpretation into an emotional whole which will be a basis for the formation of opinions by the viewing public.

W. Eugene Smith, Photographic Journalism, PHOTO NOTES, June 1948, at 4, reprinted in PHOTOGRAPHERS ON PHOTOGRAPHY 103, 104 (Nathan Lyons ed., 1966). But these judgments are not the only ones. As the well-known photographer Edward Weston wrote,


[b]y varying the position of his camera, his camera angle, or the focal length of his lens, the photographer can achieve an infinite number of varied compositions with a single, stationary subject. By changing the light on the subject, or by using a color filter, any or all of the values in the subject can be altered. By varying the length of exposure, the kind of emulsion, the method of developing, the photographer can vary the registering of relative values in the negative. And the relative values as registered in the negative can be further modified by allowing more or less light to affect certain parts of the image in printing. Thus, within the limits of his medium, without resorting to any method of control that is not photographic (i.e., of an optical or chemical nature), the photographer can depart from literal recording to whatever extent he chooses.

Edward Weston, Seeing Photographically, 9 COMPLETE PHOTOGRAPHER 3200, 3203 (William D. Morgan ed., 1943), reprinted in PHOTOGRAPHERS ON PHOTOGRAPHY, supra, at 159, 161.

[16] Courts as well as photographers have recognized the artistic nature of photography. Indeed, the idea that photography is art deserving protection reflects a longstanding view of Anglo-American law. Under English law, photographs first received statutory copyright protection under an 1862 law that granted the author of "every original painting, drawing and photograph . . . the sole and exclusive right of copying, engraving, reproducing and multiplying . . . such photograph, and the negative thereof." See Keith Lupton, Photographs and the Concept of Originality in Copyright Law, 10(9) EUR. INTELL. PROP. REV. 257, 257 & n.7 (1988) (quoting the Fine Arts Copyright Act 1862 § 1).

[17] Three years later, President Abraham Lincoln signed into law a similar statute that made "photographs and the negatives thereof" copyrightable.[n3] Act of March 3, 1865, 13 Stat. 540. The impetus for this act was likely due in part to the "prominent role [of photos] in bringing the horrors of the Civil War to the public." 1 WILLIAM PATRY, COPYRIGHT LAW & PRACTICE 244 (1996). In fact, many photographers, most notably Matthew Brady, attained notoriety for their graphic depictions of battle on the front lines; Brady's photographs were some of the first registered for copyright. Id. at 248 n.560. Some twenty years later, the Supreme Court held the statute constitutional. See Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58 (1884) ("[T]he Constitution is broad enough to cover an act authorizing copyright of photographs, so far as they are representatives of original intellectual conceptions of the author.").

[18] Burrow-Giles, a landmark case involving a photograph of Oscar Wilde, is the first of a line of cases establishing that photography entails creative expression warranting copyright protection, that photography is "an art," and that an individual photograph may be a "work of art." Id. at 58, 60. Of particular import here, the Court held that several specific decisions made by the photographer rendered his photograph"an original work of art . . . of a class of inventions for which the Constitution intended that Congress should secure to him the exclusive right to use, publish and sell, as it has done . . . ." Id. at 60. Decisions rendering the photograph a protectable "intellectual invention" included: the posing and arrangement of Wilde "so as to present graceful outlines"; the selection and arrangement of background and accessories; the arrangement and disposition of light and shade; and the evocation of the desired expression. Id. Courts today continue to hold that such decisions by the photographer--or, more precisely, the elements of photographs that result from these decisions--are worthy of copyright protection. See, e.g., Rogers v. Koons, 960 F.2d 301, 307 (2d Cir. 1992) ("Elements of originality in a photograph may include posing the subjects, lighting, angle, selection of film and camera, evoking the desired expression, and almost any other variant involved.") (citations omitted); Eastern America Trio Prods., Inc. v. Tang Elec. Corp., 97 F. Supp. 2d 395, 417 (S.D.N.Y. 2000).

[19] Twenty years after Burrow-Giles, the Supreme Court laid to rest the notion that use of a picture in advertising would preclude its copyrightability. See Bleistein v. Donaldson Lithographic Co., 188 U.S. 239 (1903). Writing for the Court, Justice Holmes stated:


http://supct.law.cornell.edu/supct-cgi/get-us-cite?111+53



Certainly works are not the less connected with the fine arts because their pictorial quality attracts the crowd and therefore gives them a real use--if use means to increase trade and to help to make money. A picture is none the less a picture and none the less a subject of copyright that it is used for an advertisement. And if pictures may be used to advertise soap, or the theatre, or monthly magazines, as they are, they may be used to advertise a circus.

Id. at 251. Thus, whether a photograph is used in (or intended for) a museum, an art gallery, a mural, a magazine, or an advertisement does not bear on its copyrightability. We have ourselves rejected the notion that copyright law treats works intended for advertising differently from other works:

It is true that a pictorial work is no less a subject of copyright protection because it is used to sell goods. Fabrica attempts to make it appear, however, that advertising materials constitute some separate and distinct subject matter of copyright. That is not and has never been the law. Items otherwise copyrightable will not be denied copyright simply because of their advertising purpose, but they do not gain any greater protection than non-advertising materials.

Fabrica Inc. v. El Dorado Corp., 697 F.2d 890, 894 (9th Cir. 1983) (internal quotations and citation omitted). See also National Cloak & Suit Co. v. Kaufman, 189 F. 215, 217 (M.D. Penn. 1911) (finding copyrightable "pictorial illustrations" of "ladies attired in the latest . . . styles" that appeared in a catalog). Instead of looking to the intended or actual use of the photograph, or considering whether its subject matter has commercial value, we evaluate whether it has copyrightable elements.

[20] Cases after Burrow-Giles and Bleistein confirmed that a photograph of an object is copyrightable. See, e.g., Rogers, 960 F.2d at 307 (2d Cir. 1992) (photograph of puppies); Eastern America Trio, 97 F. Supp. 2d at 417 (photographs of "common industrial items" including electrical products); Pagano v. Chas. Beseler Co., 234 F. 963, 964 (S.D.N.Y. 1916) (photograph of a scene including the New York Public Library).

[21] These are the foundations of copyright applicable to photographs.

B. Contemporary Standards for Copyright Protection of Photographs

[22] Under the copyright laws, Ets-Hokin's certificate of registration from the U.S. Copyright Office entitled him to a "rebuttable presumption of originality" with respect to the photographs at issue. Smith v. Jackson, 84 F.3d 1213, 1219 (9th Cir. 1996) (quoting North Coast Indus. v. Jason Maxwell, Inc., 972 F.2d 1031, 1033 (9th Cir. 1992)); 17 U.S.C. § 410(c). In moving for summary judgment, the defendants thus initially had the burden of showing the invalidity of Ets-Hokin's copyright:

Under the copyright laws, the registration of a copy-right certificate constitutes prima facie evidence of the validity of a copyright in a judicial proceeding commenced within five years of the copyright's first publication. A certificate of copyright registration, therefore, shifts to the defendant the burden to prove the invalidity of the plaintiff's copyrights. An accused infringer can rebut this presumption of validity, however. To rebut the presumption, an infringement defendant must simply offer some evidence or proof to dispute or deny the plaintiff's prima facie case of infringement.

ERG, 122 F.3d at 1217 (citations and internal quotations omitted). See also Harper House, Inc. v. Thomas Nelson, Inc., 889 F.2d 197, 201 (9th Cir. 1989) (stating that the presumption "shifts the burden of proof to the defendants to demonstrate why plaintiff's organizers are not copyrightable."). In short, to overcome the presumption of validity, defendants must demonstrate why the photographs are not copyrightable. This they have failed to do, primarily because the degree of originality required for copyrightability is



minimal.[n4] Addressing the threshold for copyrightability, in Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340 (1991), the Supreme Court held that "[t]he sine qua non of copyright[ability] is originality" and that "[o]riginal, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity." Id. at 345 (citation omitted). Here there is no dispute over the independent creation of the photographs--they are the result of Ets-Hokin's work alone--so what we must decide is whether the photographs of Skyy's vodka bottle possess "at least some minimal degree of creativity."

[23] Feist, which involved listings in a telephone directory, described the requisite degree of creativity as"extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, `no matter how crude, humble or obvious' it might be." Id. (citation omitted). When this articulation of the minimal threshold for copyright protection is combined with the minimal standard of originality required for photographic works, the result is that even the slightest artistic touch will meet the originality test for a photograph.

[24] In assessing the "creative spark" of a photograph, we are reminded of Judge Learned Hand's comment that "no photograph, however simple, can be unaffected by the personal influence of the author." Jewelers' Circular Pub. Co. v. Keystone Pub. Co., 274 F. 932, 934 (S.D.N.Y. 1921). This approach, according to a leading treatise in the copyright area, "has become the prevailing view," and as a result, "almost any[ ] photograph may claim the necessary originality to support a copyright merely by virtue of the photographers' [sic] personal choice of subject matter, angle of photograph, lighting, and determination of the precise time when the photograph is to be taken." 1 MELVIN B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT § 2.08[E][1], at 2-130 (1999) [hereinafter NIMMER]. This circuit is among the majority of courts to have adopted this view. Thus, we have noted that"courts have recognized repeatedly that the creative decisions involved in producing a photograph may render it sufficiently original to be copyrightable and `have carefully delineated selection of subject, posture, background, lighting, and perhaps even perspective alone as protectable elements of a photographer's work.' " Los Angeles News Serv. v. Tullo, 973 F.2d 791, 794 (9th Cir. 1992) (quoting United States v. Hamilton, 583 F.2d 448, 452 (9th Cir. 1978)).

[25] In view of the low threshold for the creativity element, and given that the types of decisions Ets-Hokin made about lighting, shading, angle, background, and so forth have been recognized as sufficient to convey copyright protection, we have no difficulty in concluding that the defendants have not met their burden of showing the invalidity of Ets-Hokin's copyright, and that Ets-Hokin's product shots are sufficiently creative, and thus sufficiently original, to merit copyright protection. See also Bleistein, 188 U.S. at 250 ("The least pretentious picture has more originality in it than directories and the like, which may be copyrighted."). Finally, although Ets-Hokin took photos that undoubtedly resemble many other product shots of the bottle--straight-on, centered, with back lighting so that the word "Skyy" on the bottle is clear--the potential for such similarity does not strip his work of the modicum of originality necessary for copyrightability. Indeed, the fact that two original photographs of the same object may appear similar does not eviscerate their originality or negate their copyrightability. See Feist, 499 U.S. at 345-46 ("Originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying. To illustrate, assume that two poets, each ignorant of the other, compose identical poems. Neither work is novel, yet both are original and, hence, copyrightable.").

[26] Having concluded that Ets-Hokin's photos are entitled to copyright protection, we leave to the district court the scope of Ets-Hokin's copyright in the photographs vis-a-vis the claimed infringement.

C. Derivative Copyright


[27] We next address the issue of derivative copyright because the district court analyzed the photographs as derivative works. For the reasons set forth below, this is not a derivative works case.

[28] The Copyright Act defines a "derivative work" as "a work based upon one or more preexisting works." [n5] Copyright Act of 1976 § 101, 90 Stat. 2541, 2542, 17 U.S.C. § 101. The district court held, and Skyy argues, that Ets-Hokin's photographs are derivative works. The court reasoned that the photographs fell within the statutory definition because they were based on or derived from the Skyy vodka bottle, which the court concluded, without explanation, qualified as an original "preexisting work." After determining that"an original work must be protected, copyrighted or protectable in order for a subsequent work to be `derivative,' " the district court concluded as follows:

Here, the Skyy bottle is clearly a preexisting work by the statutory definition. In addition, the bottle includes its trade dress (the blue bottle, gold label, etc.) and copyrighted material (the label and all non-utilitarian features of the bottle) and is thus a protected and copyrighted work.

[29] We have never previously addressed whether a photograph can be a derivative work, and specifically, whether a derivative work must be based upon a copyrightable work. In a colloquial sense, of course, a photograph is derived from the object that is its subject matter. As such, one teacher of photography wrote of a photo as being an image "derived from . . . the object pictured." Henry Holmes Smith, Photography In Our Time, in KALAMAZOO ART CTR., THREE PHOTOGRAPHERS (catalog of exhibition) (Feb. 1961), reprinted in PHOTOGRAPHERS ON PHOTOGRAPHY, supra, at 99, 102. But simply because photographs are in this colloquial sense "derived" from their subject matter, it does not necessarily follow that they are derivative works under copyright law.

[30] As discussed below, the district court erred in adopting the derivative work framework for two reasons: (1) a derivative work must be based on a preexisting work that is copyrightable; and (2) the Skyy vodka bottle is a utilitarian object that is not protected by copyright.

1. Preexisting Work Must Be Copyrightable

[31] Under the Copyright Act, a work is not a "derivative work" unless it is "based upon one or more preexisting works" and, in order to qualify as a "preexisting work," the underlying work must be copyrightable.[n6] The Act does not make this point explicitly, nor does it define "work," but a reading of the statute as a whole and its legislative history compel this conclusion.

[32] Turning first to the statute, several provisions point to the requirement for the underlying, "preexisting work " to be copyrightable. Under section 106, the "owner of copyright" has "exclusive rights" to "prepare derivative works based upon the copyrighted work." Id. § 106(2) (emphasis added). The statute thus presupposes that the preexisting work--that is, the work that underlies the derivative work--is copyrightable. Other provisions buttress this reading.

[33] Under section 102, titled "[s]ubject matter of copyright: [i]n general," copyright protection "subsists . . . in original works of authorship." 17 U.S.C. § 102(a). Such "original works of authorship" include not only underlying (preexisting) works but also derivative works and compilations. See id. § 103(a) ("The subject matter of copyright . . . includes compilations and derivative works"). It is significant that the term "works" is used in defining the "subject matter of copyright" and that all of these types of works are subject to copyright.

[34] It is also significant that the Copyright Act specifically limits the scope of copyright protection for derivative works (and compilations). Under section 103, copyright protection "for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such








material has been used unlawfully." Id.§ 103(a). It would make little sense to specify that a derivative work's copyright does not extend to any part of that work using "preexisting material in which copyright subsists" if that material "has been used unlawfully" unless the material is itself copyrightable.[n7]

[35] A comparison of how the Copyright Act defines "derivative works" and "compilations" provides an explanation for the use of the term "preexisting material" in section 103 as well as further support for the proposition that the underlying "preexisting work" must be copyrightable. A derivative work, as noted above, is defined as "a work based upon one or more preexisting works," whereas a "compilation" is defined as "a work formed by the collection and assembling of preexisting materials or of data . . . ." Id.§ 101 (emphasis added). By specifying that a derivative work is based upon a"preexisting work"--as opposed to "preexisting materials or. . . data," the basis for a compilation--Congress has set forth a distinction with a difference, a distinction to which we must give meaning. We agree with Nimmer that "[t]he reference to `preexisting works' in this definition, as compared with the reference to `preexisting materials' in the definition of a`compilation' implies that a derivative work, unlike a compilation, must incorporate that which itself is the subject of copyright." 1 NIMMER § 3.01, at 3-3 n.10.[n8] This implication becomes even clearer when one considers that the term "work " or "works" is used throughout the Copyright Act to refer to the"subject matter" that the act is designed to protect: "original works of authorship." See id. § 3.06, at 3-34.23 ("The pre-existing work or works upon which a given derivative or collective work is based must be capable of copyright in the sense that it must constitute an original work of authorship within the meaning of Section 102.").

[36] These statutory sections, read together,[n9] and coupled with the fact that the term "derivative work" appears only in the Copyright Act, and not, for example, in the patent or trademark statutes, indicate that for a work to qualify as a derivative work, the work from which it derives must itself be within the ambit of copyright.

[37] We view the statute's meaning as plain on its face, but to the extent there is any ambiguity, the legislative history also confirms our reading of the Act. A House report accompanying the Copyright Act states that "[a] derivative work . . . requires a process of recasting, transforming, or adapting one or more preexisting works; the preexisting work must come within the general subject matter of copyright set forth in section 102, regardless of whether it is or was ever copyrighted." H.R. REP. NO. 94-1476, at 57 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5670 (emphasis added and internal quotations omitted). See also Phillip Edward Page, The Works: Distinguishing Derivative Creations Under Copyright, 5 CARDOZO ARTS & ENT. L.J. 415, 418 (1986) ("To be derivative, a work must be `based upon' a preexisting work which could itself come within the general subject matter of copyright.").

[38] We need only comment briefly on the district court's assertion that the bottle's trade dress--its blue color, gold label, etc.--renders the bottle a protected work. Although it is true that trade dress may arguably afford Skyy some intellectual property protection with regard to its bottle[n10] --an issue we need not decide here--that protection is irrelevant to deciding whether the bottle is a preexisting work under the Copyright Act.[n11] As noted above, this concept is one peculiar to the copyright law, and its scope must be defined within the contours of that law. The Copyright Act speaks to copyright, not trade dress, and its subject matter, as defined in section 102, is "original works of authorship."

2. The Bottle Is Not Copyrightable

[39] Recognizing that the preexisting work must be copyrightable, we turn then to the so-called preexisting work--the Skyy vodka bottle. The district court treated the bottle as a whole as the underlying, "preexisting work," even though the bottle as a whole is a utilitarian object that cannot be copyrighted.

[40] Under the Copyright Act, the design of a useful article, such as a bottle, is not protected unless the design includes features that exist separately from utilitarian ones:




Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

17 U.S.C. §101. As Nimmer notes, "[a] work is a `useful article,' and therefore denied copyright for its shape as such, if it has `an intrinsic utilitarian function,' even though it may have other functions which are not utilitarian." 1 NIMMER § 2.08[B][3], at 2-97 (footnotes omitted). In this case, the district court did not identify any artistic features of the bottle that are separable from its utilitarian ones. We also find none. Although it is "difficult [to] determin[e] when pictorial, graphic, or sculptural features `can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article,' " Id. at 2-98, we conclude that the bottle has no "artistic features [that] can be identified separately and [that] are capable of existing independently as a work of art." Fabrica, 697 F.2d at 893.[n12]

[41] The Skyy vodka bottle, although attractive, has no special design or other features that could exist independently as a work of art. It is essentially a functional bottle without a distinctive shape.

[42] Turning next to the bottle's label, which the district court also cited in part in categorizing Ets-Hokin's photos as derivative works, we note that "[a] claim to copyright cannot be registered in a print or label consisting solely of trademark subject matter and lacking copyrightable matter." 37 C.F.R. § 202.10(b). Although a label's "graphical illustrations" are normally copyrightable,[n13] "textual matter" is not--at least not unless the text "aid[s] or augment[s]" an accompanying graphical illustration. 1 NIMMER § 2.08[G][2], at 2-136.[n14] The label on Skyy's vodka bottle consists only of text and does not include any pictorial illustrations.

[43] We need not, however, decide whether the label is copyrightable because Ets-Hokin's product shots are based on the bottle as a whole, not on the label. The whole point of the shots was to capture the bottle in its entirety. The defendants have cited no case holding that a bottle of this nature may be copyrightable, and we are aware of none. Indeed, Skyy's position that photographs of everyday, functional, noncopyrightable objects are subject to analysis as derivative works would deprive both amateur and commercial photographers of their legitimate expectations of copyright protection. Because Ets-Hokin's product shots are shots of the bottle as a whole--a useful article not subject to copyright protection--and not shots merely, or even mainly, of its label, we hold that the bottle does not qualify as a "preexisting work " within the meaning of the Copyright Act. As such, the photos Ets-Hokin took of the bottle cannot be derivative works.[n15] The district court erred in so concluding.

II. INFRINGEMENT

[44] Having determined that Ets-Hokin's photos are copyrightable works, we move to the question of infringement. Ets-Hokin claims infringement with regard to Skyy's use of his product shots and with regard to solicitation and use of shots produced by other photographers who, Ets-Hokin contends, unlawfully mimicked his work.[n16] This issue, which the district court did not reach in view of its holding that Ets-Hokin failed to establish the validity of his copyright, should be addressed in the first instance by that court. Although Ets-Hokin has won the battle of copyrightability, the winner of the infringement war has yet to be determined.

[45] We note that Skyy has invoked the doctrines of merger and scenes a faire. Under the merger doctrine, courts will not protect a copyrighted work from infringement if the idea underlying the copyrighted work can be expressed in only one way, lest there be a monopoly on the underlying idea. See CDN Inc. v. Kapes, 197 F.3d 1256, 1261 (9th Cir. 1999). In such an instance, it is said that the work's


idea and expression "merge." Under the related doctrine of scenes a faire, courts will not protect a copyrighted work from infringement if the expression embodied in the work necessarily flows from a commonplace idea;[n17] like merger, the rationale is that there should be no monopoly on the underlying unprotectable idea. See Landsberg v. Scrabble Crossword Game Players, Inc., 736 F.2d 485, 489 (9th Cir. 1984); See v. Durang, 711 F.2d 141, 143 (9th Cir. 1983) (per curiam). Although there is some disagreement among courts as to whether these two doctrines figure into the issue of copyrightability or are more properly defenses to infringement, see Mason v. Montgomery Data, Inc., 967 F.2d 135, 138 n.5 (5th Cir. 1992) (noting a split as to the doctrine of merger); 4 NIMMER § 13.03[B][3], at 13-69 - 13-70 & nn.164, 165 (same); id. at § 13.03[B][4], at 13-73 n.182 (noting a split as to the doctrine of scenes a faire), we hold that they are defenses to infringement. Accord Kregos v. Associated Press, 937 F.2d 700, 705 (2d Cir. 1991) (holding that the merger doctrine relates to infringement, not copyrightability); Reed-Union Corp. v. Turtle Wax, Inc., 77 F.3d 909, 914 (7th Cir. 1996) (explaining why the doctrine of scenes a faire is separate from the validity of a copyright); see also 4 NIMMER §§ 13.03[B][3], at 13-69 - 13-70, 13.03[B][4], at 13-73. Accordingly, these defenses should be addressed in the first instance by the district court in the context of the infringement claims.

[46] REVERSED AND REMANDED.

1. Ets-Hokin was also hired to take photographs of mixed drinks containing Skyy vodka, but on appeal he does not raise any claims with regard to those photographs.

2. The other named defendants are Kanbar, Dadalt, and the advertising firm hired by Skyy. Ets-Hokin did not name the other photographers as defendants.

3. Protection for photographs in the current copyright statute is under 17 U.S.C. § 102(a)(5), which covers "pictorial works."

4. In light of the historical connection between copyright in photographs under American and English law, it is noteworthy that the requirement of originality for copyright in photographs is low also under English law. As one commentator observed:

The requirement of originality for photographs has existed since the Fine Arts Copyright Act 1862. . . . From the beginning, however, the standard of originality was minimal. The issue was considered in Graves' Case, [L.R. 4 Q.B. 715 (1869),] where the applicant argued that an independent copyright could not subsist in photographs of pre-existing engravings. In holding that such photographs were entitled to an independent copyright registration under the Act of 1862, Blackburn, J reasoned that: "All photographs are copies of some object, such as a painting or a statue. And it seems to me that a photograph taken from a picture is an original photograph, insofar that to copy it is an infringement of this statute." [Id. at 723]. Keith Lupton, Photographs and the Concept of Originality in Copyright Law, 10(9) EUR. INTELL. PROP. REV. 257, 257 & n.8(1988).

5. The full statutory definition states:

A "derivative work" is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a "derivative work." 17 U.S.C. § 101.

6. This issue does not typically arise. Ordinarily in derivative works cases the underlying work is copyrightable, and courts implicitly recognize copyrightability as a prerequisite to invocation of a derivative rights claim. See, e.g.,


Stewart v. Abend, 495 U.S. 207 (1990) (discussing a motion picture based upon a magazine story); Pickett v. Prince, 207 F.3d 402 (7th Cir. 2000) (discussing a guitar based upon the copyrighted symbol associated with the rock legend Prince); Micro Star v. Formgen Inc., 154 F.3d 1107 (9th Cir. 1998) (discussing video game software based upon other video game software); ERG, 122 F.3d 1211 (discussing costumes based upon cartoon characters); Russell v. Price, 448 F. Supp. 303 (C.D. Cal. 1977) (discussing a movie based upon the play "Pygmalion").

7. Interpreting the term "unlawfully" to refer to a violation of the Copyright Act rather than any other statute is consistent with the legislative history of the act, which speaks of unlawful use only in connection with copyright violations. See H. REP. NO. 94-1476, at 57 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5670-71 ("unlawfully employing preexisting copyrighted material"); S. REP. NO. 94-473, at 55 (1975) (same); see also 1 NIMMER § 3.06, at 3-34.26 & n.26.

8. By contrast, the `preexisting materials' that are the basis of a compilation "may or may not in themselves be capable of being protected by copyright." 1 NIMMER § 3.02, at 3-5.

9. See generally United States v. Wells, 519 U.S. 482, 490 (1997) (stating that in interpreting statutes "the first criterion in the interpretive hierarchy [is] a natural reading of the full text."); Stewart v. Abend, 495 U.S. 207, 235 (1990) (interpreting the Copyright Act by "read[ing] the plain language of [two different sections] together").

10. See, for example, the following cases addressing trade dress and trademark protection in bottles: Paddington Corp. v. Attiki Importers & Distributors, Inc., 996 F.2d 577 (2d Cir. 1993); Faberge, Inc. v. Saxony Prods., Inc., 605 F.2d 426 (9th Cir. 1979); Carillon Importers Ltd. v. Frank Pesce Group, Inc., 913 F. Supp. 1559 (S.D. Fla. 1996).

11. Were we to hold, as the district court did, that the preexisting work must simply be "protectable" and that trade dress protection was sufficient to invoke the underlying, "preexisting work" requirement, it would only stand to reason that underlying works protected by trademarks and patents could also be the basis for derivative works. Following such a path, however, would be contrary to the Copyright Act and would disrupt divisions basic to intellectual property law. For good reason, the Supreme Court cautions against mixing the doctrines of trademark and copyright. See Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 439 & n.19 (1984); United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97-98 (1918); Trade-Mark Cases, 100 U.S. 82, 93-95 (1879).

12. See LESTER HORWITZ & ETHAN HORWITZ, 1 INTELLECTUAL PROPERTY COUNSELING AND LITIGATION § 3.03[1][a], at 3-43 n.9 (1999), for additional examples of cases in which courts have found features to be separable-or inseparable--from the utilitarian features of an article.

13. See 1 NIMMER§ 2.08[G][2], at 2-136 & n.234.1. Asto the requirement of originality, it bears noting that "there is some tendency to require a somewhat greater degree of originality in labels than in other works." 1 NIMMER § 2.08[G][3], at 2-140 & n.252 (citing several cases).

14. Nimmer explains:

However categorized, certain copyright limitations on the protection available for such textual material should be observed. In Kitchens of Sara Lee, Inc. v. Nifty Foods Corp., [266 F.2d 541 (2d Cir. 1959)], the court expressly endorsed the following passage from [a] Copyright Office Circular . . . relating to commercial prints and labels: "Brand names, trade names, slogans, and other short phrases or expressions cannot be copyrighted, even if they are distinctively arranged or printed." This confirms an earlier trend discernible in the cases that such short phrases placed upon labels cannot claim copyright protection, at least if the textual matter does not aid or augment an accompanying pictorial illustration.

1 NIMMER § 2.08[G][2], at 2-136 (footnotes omitted). See also Alberto-Culver Co. v. Andrea Dumon, Inc., 466 F.2d 705, 710 (7th Cir. 1972) (citing Kitchens of Sara Lee and holding that the phrase "most personal sort of deodorant" which appeared on the back of a deodorant spray can was not subject to copyright protection).

15. Throughout its briefing, Skyy relies heavily on a Seventh Circuit Case, Gracen v. Bradford Exchange, 698 F.2d 300 (7th Cir. 1983), which involved a painting of a photograph of Judy Garland. Gracen is inapposite, however, because it involved a work based upon unquestionably copyrightable material, which this does not. It also bears


noting that Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Productions, 134 F.3d 749 (6th Cir. 1998), has no applicability here. Not only is it a trademark case but nowhere does the majority, or for that matter, the dissent, analyze the issue--relating to a museum's unique building design--under the copyright statute, let alone under the rubric of derivative copyright.

16. In his complaint, Ets-Hokin alleged both of these theories of infringement: (1) Skyy illegally used Ets-Hokin's work for various advertisements, including in Deneuve magazine, in the San Francisco Examiner, and on the side of a bus; and (2) Skyy used photographs taken by others that mimicked Ets-Hokin's photographs. Skyy argues on appeal that, based primarily on a brief parenthetical reference in summary judgment briefing, Ets-Hokin abandoned the first theory; Ets-Hokin argues on appeal that there was no abandonment. Reading the statement in context--namely as a response to Skyy's efforts to minimize the nature of the claims, along with other explicit statements arguing both infringement theories--and given that the district court did not reach the issue of infringement, we conclude that Ets-Hokin preserved both infringement theories. The dissent suggests that there is no way that Ets-Hokin could prove infringement. Based on the record before us, we believe that this is an issue to be addressed in the first instance by the district court. For example, the district court has yet to address whether there has been outright copying as alleged by Ets-Hokin.

17. Nimmer explains:

[F]or example, if two scenarios wish to treat the unprotected idea of police life in the South Bronx, for each it will be only natural to depict [certain stereotypical, stock scenes]. Judge Leon Yankwich has called such [scenes] "scenes a faire" --i.e., "scenes which `must' be done." That language is often invoked to immunize from liability similarity of incidents or plot that necessarily follows from a common theme or setting. Moreover, beyond mere "plot" incidents applicable to works of fiction, the scene a faire doctrine can be invoked throughout other copyright contexts as well.

4 NIMMER § 13.03[B][4], at 13-72 - 13-73.

D.W. NELSON, dissenting:

[48] The majority opinion errs in reversing the district court's summary judgment order because there is no way that Ets-Hokin can prove infringement given the low standard of originality for photographs. I agree with the majority opinion that under this standard that Ets-Hokin's photographs are original. By the same token, however, so are the other allegedly infringing photographs of Skyy's vodka bottle.[n1] These subse quent photographs are based on slightly different angles, different shadows, and different highlights of the bottle's gold label. Thus, even if the district court had applied the proper standard of originality, Ets-Hokin's lawsuit would not have survived summary judgment because the subsequent photographs also possess originality.[n2] Furthermore, as a matter of law, legal defenses such as scenes a fair and the merger doctrine prevent Ets-Hokin from prevailing on his copyright infringement claims.

[49] I also agree with the majority opinion that the district court erred by basing its summary judgment order solely on a derivative works analysis. The majority opinion, however, fails to acknowledge that it is a much closer question (and a question that lacks clear statutory or judicial authority) whether a photograph of a vodka bottle can be subject to derivative works analysis. A derivative work is defined as "a work based upon one or more preexisting works such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted." 17 U.S.C. § 101. Although we have recognized that the statutory definition of a derivative work is "hopelessly over broad," see Micro Star v. Formgen, Inc., 154 F.3d 1107, 1110 (9th Cir. 1998), the definition is limited by additional non-statutory requirements. Micro Star recognized that a derivative work "must substantially incorporate protected material from the preexisting work." See id. (citing Litchfield v. Spielberg, 736 F.2d 1352, 1357 (9th Cir. 1984)) (emphasis added).




[50] It is not clear from the plain meaning of the copyright statute that a preexisting work must be copyrighted or whether the underlying work merely must be protectible. The majority opinion relies on inferences in the copyright statute and absence of references to derivative works in the trademark and patent statutes. The opinion's only other authority is based on selective quotations from Nimmer's treatise. See, e.g., Micro Star, 154 F.3d at 1112 (quoting Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341, 1343 (1988) (quoting 1 Nimmer on Copyright § 3.01 (1986 ed.))) (" ` "A work will be considered a derivative work only if it would be considered an infringing work if the material which it has derived from a preexisting work has been taken without the consent of a copyright proprietor of such preexisting work." ' ").

[51] Yet neither the majority opinion nor Ets-Hokin cites any cases that say preexisting works protected by trade dress and trademarks cannot be protected from derivative works. But see Theotokatos v. Sara Lee Personal Prods., 971 F. Supp. 332, 338 (N.D. Ill. 1997) (finding a derivative work based on preexisting logos and trademarks); Moore Publishing, Inc. v. Big Sky Mktg., Inc., 756 F. Supp. 1371, 1375 (D. Idaho 1991) (finding a derivative work based on logos). Although in a dissent to a case about unlicensed photographs of Cleveland's Rock and Roll Hall of Fame, Chief Judge Boyce Martin assumed for the purposes of his argument that a photograph of a Coke bottle was a derivative work:

When a Coke bottle is photographed it loses a dimension, but the subject of the picture remains recognizable as one of a trademarked, three-dimensional figure. If a photograph of a trademark -- for example, one of the Coke bottle -- can be sold by the owner of the trademark in a poster form, that poster naturally must be recognized as one of the owner's "goods", albeit a derivative good.

Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Prods., 134 F.3d 749, 757 (6th Cir. 1997) (Martin, C.J., dissenting). Martin's analysis mirrors the analysis in this case and in derivative works cases in other circuits. [n3] Suffice to say, in order to trigger a derivative works analysis, some aspect of the preexisting work must be protected, either by copyright or by trademark and trade dress.

[52] The flaw in the majority opinion's derivative works analysis is that it consistently understates the protected elements of Skyy's vodka bottle, beginning with the opinion's attempt to reproduce Skyy's label in the statement of facts. The opinion's rough, non-scale, black-and-white depiction ignores the way Skyy's gold label contrasts with its electric blue bottle. Vodka bottles are often the subject of highly-competitive print advertising campaigns. For example, Absolut Vodka is famous for its clever ads featuring its bottle. The majority opinion overlooks the Skyy bottle's copyrightable elements -- its non-utilitarian features (such as the color and shape of the bottle) and its label. Furthermore, the bottle and label also are subject to trademark and trade dress protection. If derivative works analysis is limited solely to copyrighted works (as opposed to works protected by trademark and trade dress), it is up to Congress, not the Ninth Circuit, to say so. As it currently stands, derivative works analysis may be another means of preventing Ets-Hokin from obtaining a monopoly over product shots of Skyy's bottle.

[53] The district court should not have dismissed this case solely based on a derivative works analysis because this case could have been dismissed on firmer legal grounds -- the originality of the allegedly infringing photographs and the merger doctrine. The majority opinion, however, compounds the district court's error with a blanket rejection of a derivative works analysis in this case. Thus, I would affirm the district court's summary judgment order, albeit on slightly different grounds. I respectfully dissent.

1. Although it may be Ets-Hokin's best argument, this is not a licensing case about the unauthorized use of Ets-Hokin's photographs. See Mendler v. Winterland Prod., 207 F.3d 1119 (9th Cir 2000). The district court made an unambiguous factual finding (which we review for clear error) that Ets-Hokin abandoned his claims about the


unauthorized use of his photographs in advertisements. Nor does Ets-Hokin attempt to rebut the district court's finding of abandonment in his appellate briefs. The majority opinion attempts to ignore the district court's factual findings and the lack of argument by Ets-Hokin on this issue. Nonetheless, the only remaining issue in this case is whether the subsequent photographs of Skyy's bottle infringe on Ets-Hokin's copyright. As a matter of law, there cannot be infringement because of the low standard of originality.

2. We have recognized two exceptions to this broad rule of originality: (1) a photograph of a copyrighted photograph; and (2) a photograph that duplicated every single element of a copyrighted photograph. See Los Angeles News Serv. v. Tullo, 973 F.2d 791, 794 n.2 (9th Cir. 1992) (citing Nimmer on Copyright, § 2.08[E][1], at 2-126.3-2.126.7 (1992 ed.)). Neither of these exceptions applies to this case. Given the different angles, shadows, and highlights of the subsequent photographs, they are not virtually identical and therefore do not infringe on Ets-Hokin's photographs.

3. The majority's attempt to distinguish Judge Posner's decision in Gracen v. Bradford Exch., 698 A F.2d 300 (7th Cir. 1983) -- because Gracen is a derivative works case based on a "unquestionably" copyrighted work -- is unpersuasive. Gracen, 698 F.2d at 302 (finding a painting copied from still-life photographs of Dorothy from the movie "The Wizard of Oz" to be a derivative work) appears to be on point with this case, especially given that the Skyy bottle's label and non-utilitarian features are copyrightable. Nor does the majority opinion specifically address Chief Judge Martin's coke bottle analogy in Rock and Roll Hall of Fame and Museum. Together, Gracen and the coke bottle analogy suggest that a derivative works analysis may be appropriate in this case, though not as a means of granting summary judgment.


ETS-HOKIN v. SKYY SPIRITS INC., 323 F.3d 763 (9th Cir. 2003)

Before: Mary M. Schroeder, Chief Judge, Alfred T. Goodwin and Richard R. Clifton, Circuit Judges.

SCHROEDER, Chief Judge

[1] This long-running litigation is fundamentally about how many ways one can create an advertising photograph, called a "product shot," of a blue vodka bottle. We conclude there are not very many. We therefore affirm the district court's summary judgment because the allegedly infringing photographs are not "virtually identical" as required upon application of the defensive doctrines of merger and scenes a faire. We agree fully with the district court that such defenses were appropriately invoked.

[2] Indeed, we held as much when this case was previously before this court. See Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000). The facts and background of the case are contained in that opinion, and we repeat them here only as necessary.

[3] In 1993, photographer Joshua Ets-Hokin took a series of photographs of Skyy's iconic blue vodka bottle for use in a marketing campaign. Skyy later hired two other photographers to photograph the bottle and used these photographs in advertising and other marketing materials. In 1996, Ets-Hokin filed this action against Skyy alleging infringement of his copyrights in the 1993 photographs.

[4] The district court originally granted summary judgment in favor of Skyy on the ground that Ets-Hokin's photographs were not sufficiently original to merit copyright protection. We reversed, holding that the photographs met the minimal threshold of originality required for copyright protection, but noted that such protection was limited by the doctrines of merger and scenes a faire, which apply because of the narrow range of artistic expression available in the context of a commercial product shot. See Ets-Hokin, 225 F.3d at 1082. We instructed the district court to consider those defenses on remand, which it did, and they are now the subject of this appeal.

[5] While the previous panel's majority opinion reflects that the applicable defenses were not before the court at that stage of the litigation, Judge Dorothy Nelson's dissent was prescient: "[A]s a matter of law, legal defenses such as scenes a faire and the merger doctrine prevent Ets-Hokin from prevailing on his copyright infringement claims." Ets-Hokin, 225 F.3d at 1083 (D.W. Nelson, dissenting). We agree, and we now affirm the district court.

[6] In this appeal, Ets-Hokin argues that the district court's decision is inconsistent with the principle recognized in Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, at 58 (1884), that photographs are entitled to copyright protection. This argument reflects a misconception of the district court's ruling, and indeed of the prior ruling of this court, neither of which questioned the copyrightability of photographs. Whether Ets-Hokin's photographs are subject to copyright protection is not before us either. We answered that question affirmatively in the previous iteration of this case. See Ets-Hokin, 225 F.3d at 1077. Rather, the question is the scope of Ets-Hokin's copyright within the limited landscape of commercial product shots.


[7] Ets-Hokin argues that Skyy's photographs are substantially similar to those in which he holds the copyrights and that they are therefore infringing. However, his claim fails upon application of the defensive doctrines of merger and scenes a faire. As we previously explained:

Under the merger doctrine, courts will not protect a copyrighted work from infringement if the idea underlying the work can be expressed only in one way, lest there be a monopoly on the underlying idea. In such an instance, it is said that the work's idea and expression "merge." Under the related doctrine of scenes a faire, courts will not protect a copyrighted work from infringement if the expression embodied in the work necessarily flows from a commonplace idea . . . . Ets-Hokin, 225 F.3d at 1082. Likewise, when similar features of a work are "as a practical matter indispensable, or at least standard, in the treatment of a given idea, they are treated like ideas and are therefore not protected by copyright." Apple Computer Corp. v. Microsoft Corp., 33 F.3d 1435, 1444 (9th Cir. 1994) (internal quotation marks and citation omitted).

[8] Though the Ets-Hokin and Skyy photographs are indeed similar, their similarity is inevitable, given the shared concept, or idea, of photographing the Skyy bottle. When we apply the limiting doctrines, subtracting the unoriginal elements, Ets-Hokin is left with only a "thin" copyright, which protects against only virtually identical copying. See Apple, 35 F.3d at 1442 (9th Cir. 1994). As we observed, in Apple, "[w]hen the range of protectable expression is narrow, the appropriate standard for illicit copying is virtual identity." Id. at 1439.

[9] This principle has long been a part of copyright law. Indeed, as Judge Learned Hand observed in the context of stock dramaturgy: "The less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly." Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930). The same is true here, where the range of protectable expression is con-strained by both the subject-matter idea of the photograph and the conventions of the commercial product shot.

[10] Skyy's photographs are not virtually identical to those of Ets-Hokin. Indeed, they differ in as many ways as possible within the constraints of the commercial product shot. The lighting differs; the angles differ; the shadows and highlighting differ, as do the reflections and background. The only constant is the bottle itself. The photographs are therefore not infringing.

* * *

[13] AFFIRMED


FEIST PUBLICATIONS, INC. v. RURAL TELEPHONE SERVICE CO., 499 U

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