In the
`United States Court of Appeals
`For the Seventh Circuit
`
`
`No. 08-1296
`
`DANIEL P. SCHROCK, d/b/a
`DAN SCHROCK PHOTOGRAPHY,
`
`Plaintiff-Appellant,
`
`v.
`
`LEARNING CURVE INTERNATIONAL, INC.,
`RC2 BRANDS, INC., and HIT ENTERTAINMENT,
`
`Defendants-Appellees.
`
`
`
`
`
`
`
`Appeal from the United States District Court
`for the Northern District of Illinois, Eastern Division.
`No. 04 C 6927—Milton I. Shadur, Judge.
`
`ARGUED SEPTEMBER 9, 2008—DECIDED NOVEMBER 5, 2009
`
`Before FLAUM, WILLIAMS, and SYKES, Circuit Judges.
`SYKES, Circuit Judge. HIT Entertainment (“HIT”) owns
`the copyright to the popular “Thomas & Friends” train
`characters, and it licensed Learning Curve International
`(“Learning Curve”) to make toy figures of its characters.
`Learning Curve
`in
`turn hired Daniel Schrock, a
`professional photographer, to take pictures of the toys for
`
`
`United States Court of Appeals
`For the Seventh Circuit
`
`
`No. 08-1296
`
`DANIEL P. SCHROCK, d/b/a
`DAN SCHROCK PHOTOGRAPHY,
`
`Plaintiff-Appellant,
`
`v.
`
`LEARNING CURVE INTERNATIONAL, INC.,
`RC2 BRANDS, INC., and HIT ENTERTAINMENT,
`
`Defendants-Appellees.
`
`
`
`
`
`
`
`Appeal from the United States District Court
`for the Northern District of Illinois, Eastern Division.
`No. 04 C 6927—Milton I. Shadur, Judge.
`
`ARGUED SEPTEMBER 9, 2008—DECIDED NOVEMBER 5, 2009
`
`Before FLAUM, WILLIAMS, and SYKES, Circuit Judges.
`SYKES, Circuit Judge. HIT Entertainment (“HIT”) owns
`the copyright to the popular “Thomas & Friends” train
`characters, and it licensed Learning Curve International
`(“Learning Curve”) to make toy figures of its characters.
`Learning Curve
`in
`turn hired Daniel Schrock, a
`professional photographer, to take pictures of the toys for
`
`
`
`2
`
`No. 08-1296
`
`promotional materials. Learning Curve used Schrock’s
`services on a regular basis for about four years and there-
`after continued to use some of his photographs in its
`advertising and on product packaging. After Learning
`Curve stopped giving him work, Schrock registered his
`photos for copyright protection and sued Learning Curve
`and HIT for infringement.
`The district court granted summary judgment for the
`defendants, holding that Schrock has no copyright in the
`photos. The court classified the photos as “derivative
`works” under the Copyright Act—derivative, that is, of
`the “Thomas & Friends” characters, for which HIT owns
`the copyright—and held that Schrock needed permission
`from Learning Curve (HIT’s licensee) not only to make
`the photographs but also to copyright them. Because
`Schrock had permission to make but not permission to
`copyright the photos, the court dismissed his claim for
`copyright infringement.
`We reverse. We assume for purposes of this decision
`that the district court correctly classified Schrock’s
`photographs as derivative works. It does not follow,
`however, that Schrock needed authorization from Learning
`Curve to copyright the photos. As long as he was
`authorized to make the photos (he was), he owned the
`copyright in the photos to the extent of their incremental
`original expression. In requiring permission to make and
`permission to copyright the photos, the district court relied
`on language in Gracen v. Bradford Exchange, 698 F.2d 300
`(7th Cir. 1983), suggesting that both are required for
`copyright in a derivative work. We have more recently
`
`
`
`No. 08-1296
`
`3
`
`explained, however, that copyright in a derivative work
`arises by operation of law—not through authority from
`the owner of the copyright in the underlying work—
`although the parties may alter this default rule by
`agreement. See Liu v. Price Waterhouse LLP, 302 F.3d 749,
`755 (7th Cir. 2002). Schrock created the photos with
`permission and therefore owned the copyright to the
`photos provided they satisfied the other requirements for
`copyright and the parties did not contract around the
`default rule.
`We also take this opportunity to clarify another aspect
`of Gracen that is prone to misapplication. Gracen said
`that “a derivative work must be substantially different
`from the underlying work to be copyrightable.” 698 F.2d
`at 305. This statement should not be understood to
`require a heightened standard of originality for copy-
`right in a derivative work. We have more recently
`explained that “the only ‘originality’ required for [a] new
`work to be copyrightable . . . is enough expressive varia-
`tion from public-domain or other existing works to
`enable the new work to be readily distinguished from its
`predecessors.” Bucklew v. Hawkins, Ash, Baptie & Co., LLP,
`329 F.3d 923, 929 (7th Cir. 2003). Here, Schrock’s photos
`of Learning Curve’s “Thomas & Friends” toys possessed
`sufficient incremental original expression to qualify for
`copyright.
`But the record doesn’t tell us enough about the agree-
`ments between the parties for us to determine whether
`they agreed to alter the default rule regarding copyright
`or whether Learning Curve had an implied license to
`
`
`
`4
`
`No. 08-1296
`
`continue to use Schrock’s photos. Whether Schrock could
`copyright his photographs and maintain an infringe-
`ment action against the defendants depends on the con-
`tractual understandings between Schrock, Learning Curve,
`and HIT. Accordingly, we remand to the district court
`for further proceedings consistent with this opinion.
`
`I. Background
`HIT is the owner of the copyright in the “Thomas &
`Friends” properties, and Learning Curve
`is a
`1
`producer and distributor of children’s toys. HIT and
`Learning Curve entered into a licensing agreement
`granting Learning Curve a license to create and market
`toys based on HIT’s characters. HIT and Learning Curve
`maintain (through an affidavit of HIT’s vice-president
`of licensing) that HIT retained all intellectual-property
`rights in the works produced under the license. The
`licensing agreement, however, is not in the record.
`In 1999 Learning Curve retained Daniel Schrock to take
`product photographs of its toys, including those based on
`HIT’s characters, for use in promotional materials. On
`numerous occasions during the next four years, Schrock
`photographed several lines of Learning Curve’s toys,
`including many of the “Thomas & Friends” toy trains,
`related figures, and train-set accessories. (We have
`
`1 s
`
`RC2 Corporation acquired Learning Curve in early 2003. For
`implicity we refer to Learning Curve, RC2 Corporation,
`and their affiliates collectively as “Learning Curve.”
`
`
`
`No. 08-1296
`
`5
`
`attached two of the photos as examples, although they
`are extremely poor copies because the originals are in
`color.) Schrock invoiced Learning Curve for this work,
`and some of the invoices included “usage restrictions”
`purporting
`to
`limit Learning Curve’s use of his
`photographs to two years. Learning Curve paid the
`invoices in full—in total more than $400,000.
`Learning Curve stopped using Schrock’s photography
`services in mid-2003 but continued to use some of his
`photos in its printed advertising, on packaging, and on
`the internet. In 2004 Schrock registered his photos for
`copyright protection and sued HIT and Learning Curve
`for infringement; he also alleged several state-law claims.
`HIT and Learning Curve moved for summary judgment,
`arguing primarily that Schrock’s photos were derivative
`works and not sufficiently original to claim copyright
`protection, and that neither HIT nor Learning Curve
`ever authorized Schrock to copyright the photos. They
`argued in the alternative that Schrock granted them
`an unlimited oral license to use the photos.
`The district court granted summary judgment for the
`defendants. The judge began by noting the long tradition
`of recognizing copyright protection
`in photographs
`but said he would nonetheless “eschew” the question
`whether Schrock’s photographs were sufficiently orig-
`inal to copyright. The judge focused instead on whether
`the photos were derivative works under the Copyright
`Act and concluded that they were. Then, following
`language in Gracen, the judge held that Learning Curve’s
`permission to make the photos was not enough to
`trigger Schrock’s copyright in them; the judge said Schrock
`
`
`
`6
`
`No. 08-1296
`
`must also have Learning Curve’s permission to copyright
`the photos. Schrock did not have that permission, so the
`judge concluded that Schrock had no copyright in
`the photos and dismissed his claim for copyright
`infringement. Schrock appealed.
`2
`
`II. Discussion
`judge mistakenly
`Schrock argues that the district
`classified his photos as derivative works and misread or
`misapplied Gracen. He contends that his photos are not
`derivative works, and even if they are, his copyright is
`valid and enforceable because he had permission from
`Learning Curve to photograph the underlying copy-
`righted works and his photos contained sufficient
`incremental original expression to qualify for copyright.
`HIT and Learning Curve defend the district court’s deter-
`mination that the photos are derivative works and argue
`that the court properly read Gracen to require permission
`to copyright as well as permission to make the derivative
`works. Alternatively,
`they maintain
`that Schrock’s
`photographs contain insufficient originality to be copy-
`rightable and that copyright protection is barred under
`the scènes à
`faire or merger doctrines. Finally, the
`defendants ask us to affirm on the independent ground
`that Schrock orally granted them an unlimited license to
`use his works.
`
`Having dismissed the federal-copyright claim, the court
`elinquished jurisdiction over the state-law claims.
`
`2 r
`
`
`
`No. 08-1296
`
`7
`
`As a general matter, a plaintiff asserting copyright
`infringement must prove: “(1) ownership of a valid
`copyright, and (2) copying of constituent elements of the
`work that are original.” Feist Publ’ns, Inc. v. Rural Tel. Serv.
`Co., 499 U.S. 340, 361 (1991). There is no dispute here about
`copying; Learning Curve used Schrock’s photos in its
`promotional materials. The focus instead is on the
`validity of Schrock’s asserted copyright in the photos. The
`Copyright Act provides that “[c]opyright protection
`subsists . . . in original works of authorship fixed in any
`tangible medium of expression . . . from which they can
`be perceived, reproduced, or otherwise communicated,
`either directly or with the aid of a machine or device.”
`17 U.S.C. § 102(a). In this circuit, copyrightability is an
`issue of law for the court. Gaiman v. McFarlane, 360
`F.3d 644, 648-49 (7th Cir. 2004).
`Much of the briefing on appeal—and most of the
`district court’s analysis—concerned the classification of
`the photos as derivative works. 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. The Copyright Act specifically grants the
`author of a derivative work copyright protection in the
`
`
`
`8
`
`No. 08-1296
`
`incremental original expression he contributes as long
`as the derivative work does not infringe the underlying
`work. See id. § 103(a), (b); see also Pickett v. Prince, 207
`F.3d 402, 405 (7th Cir. 2000); Lee v. A.R.T. Co., 125 F.3d
`580, 582 (7th Cir. 1997). The copyright in a derivative
`work, however, “extends only to the material contributed
`by the author of such work, as distinguished from the
`preexisting material employed in the work.” 17 U.S.C.
`§ 103(b).
`
`A. Photographs as Derivative Works
`Whether photographs of a copyrighted work are
`derivative works is the subject of deep disagreement
`among courts and commentators alike. See 1 MELVILLE B.
`NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT
`§ 3.03[C][1], at 3-20.3 (Aug. 2009). The district court
`held that Schrock’s photos came within the definition of
`derivative works because they “recast, transformed, or
`adapted” the three-dimensional toys into a different, two-
`dimensional medium. For this conclusion the judge
`relied in part on language in Gracen and in the Ninth
`Circuit’s decision in Ets-Hokin v. Skyy Spirits, Inc., 225
`F.3d 1068 (9th Cir. 2000), recognizing, however, that
`neither decision directly decided the matter. Gracen did
`not involve photographs at all, and although Ets-Hokin
`did,
`the Ninth Circuit ultimately sidestepped
`the
`derivative-works question and rested its decision on
`other grounds. Id. at 1081.
`The judge also cited other decisions in this circuit that
`appear to support the conclusion that photographs are
`
`
`
`No. 08-1296
`
`9
`
`derivative works, but these, too (and again, as the judge
`properly acknowledged), did not directly address the
`question. Ty, Inc. v. Publications International Ltd., 292
`F.3d 512, 519 (7th Cir. 2002), involved unauthorized
`“Beanie Babies” collector’s guides that incorporated
`photographs of the popular beanbag plush toys into the
`text. We said there that “photographs of Beanie Babies
`are derivative works from the copyrighted Beanie
`Babies themselves,” but this statement was based entirely
`on the parties’ concession that the photographs were
`derivative works. Id. Saturday Evening Post Co. v.
`Rumbleseat Press, Inc., 816 F.2d 1191 (7th Cir. 1987), made a
`passing remark suggesting that photographs of Norman
`Rockwell illustrations were derivative works, but that
`was not an issue in the case, id. at 1201; the issue
`instead was whether certain terms in a licensing agree-
`ment (specifically, no-contest and arbitration clauses)
`were enforceable, id. at 1193.
`We need not resolve the issue definitively here. The
`classification of Schrock’s photos as derivative works
`does not affect the applicable legal standard for deter-
`mining copyrightability, although as we have noted, it
`does determine the scope of copyright protection. Ac-
`cordingly, we will assume without deciding that each
`of Schrock’s photos qualifies as a derivative work within
`the meaning of the Copyright Act.
`
`B. Originality and Derivative Works
`As a constitutional and statutory matter, “[t]he sine qua
`non of copyright is originality.” Feist Publ’ns, Inc., 499
`
`
`
`10
`
`No. 08-1296
`
`U.S. at 345; see 17 U.S.C. § 102. Originality in this
`context “means only that the work was independently
`created by the author . . . and that it possesses at least some
`minimal degree of creativity.” Feist Publ’ns, Inc., 499 U.S.
`at 345. The Supreme Court emphasized in Feist that “the
`requisite level of creativity is extremely low; even a
`slight amount will suffice.” Id. The Court also explained
`that “[o]riginality does not signify novelty; a work may
`be original even though it closely resembles other works.”
`Id. What is required is “independent creation plus a
`modicum of creativity.” Id. at 346.
`Federal courts have historically applied a generous
`standard of originality
`in evaluating photographic
`works for copyright protection. See, e.g., Ets-Hokin,
`225 F.3d at 1073-77; SHL Imaging, Inc. v. Artisan House,
`Inc., 117 F. Supp. 2d 301, 305 (S.D.N.Y. 2000). In some
`cases, the original expression may be found in the
`staging and creation of the scene depicted in the
`photograph. See, e.g., Mannion v. Coors Brewing Co., 377 F.
`Supp. 2d 444, 452 (S.D.N.Y. 2005). But in many cases, the
`photographer does not invent the scene or create the
`subject matter depicted
`in
`it. Rather, the original
`expression he contributes lies in the rendition of the subject
`matter—that is, the effect created by the combination of
`his choices of perspective, angle, lighting, shading, focus,
`lens, and so on. See id.; 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.”). Most photographs
`
`
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`No. 08-1296
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`11
`
`contain at least some originality in their rendition, see
`Mannion, 377 F. Supp. 2d at 452 (“Unless a photograph
`replicates another work with total or near-total fidelity, it
`will be at least somewhat original in the rendition.”),
`except perhaps for a very limited class of photographs
`that can be characterized as “slavish copies” of an under-
`lying work, Bridgeman Art Library, Ltd. v. Corel Corp., 25
`F. Supp. 2d 421, 427 (S.D.N.Y. 1998) (finding no
`originality in transparencies of paintings where the goal
`was to reproduce those works exactly and thus to
`minimize or eliminate any individual expression).
`Our review of Schrock’s photographs convinces us that
`they do not fall into the narrow category of photographs
`that can be classified as “slavish copies,” lacking any
`independently created expression. To be sure, the
`photographs are accurate depictions of
`the
`three-
`dimensional “Thomas & Friends” toys, but Schrock’s
`artistic and technical choices combine to create a two-
`dimensional
`image
`that
`is subtly but nonetheless
`sufficiently his own. This is confirmed by Schrock’s
`3
`deposition testimony describing his creative process in
`
`3 m
`
`We note, however, that a mere shift in medium, without
`ore, is generally insufficient to satisfy the requirement of
`originality for copyright in a derivative work. Durham Indus.,
`Inc. v. Tomy Corp., 630 F.2d 905, 910 (2d Cir. 1980) (noting that
`circuit’s rejection of “the contention that the originality re-
`quirement of copyrightability can be satisfied by the mere
`reproduction of a work of art in a different medium”); L. Batlin
`& Son, Inc. v. Snyder, 536 F.2d 486, 491 (2d Cir. 1976) (same).
`
`
`
`12
`
`No. 08-1296
`
`depicting the toys. Schrock explained how he used various
`camera and lighting techniques to make the toys look more
`“life like,” “personable,” and “friendly.” He explained how
`he tried to give the toys “a little bit of dimension” and that
`it was his goal to make the toys “a little bit better than
`what they look like when you actually see them on
`the shelf.” The original expression in the representative
`sample is not particularly great (it was not meant to be),
`but it is enough under the applicable standard to
`warrant
`the
`limited copyright protection accorded
`derivative works under § 103(b).
`Aside from arguing that the works fail under the
`generally accepted test for originality, Learning Curve and
`HIT offer two additional reasons why we should con-
`clude that Schrock’s photographs are not original. First,
`they claim that the photos are intended to serve the
`“purely utilitarian function” of identifying products for
`consumers. The purpose of the photographs, however,
`is irrelevant. See Bleistein v. Donaldson Lithographing Co.,
`188 U.S. 239, 251-52 (1903); SHL Imaging, Inc., 117 F. Supp.
`2d at 311 (“That the photographs were intended solely
`for commercial use has no bearing on their protectibility.”).
`The defendants’ second and more substantial argu-
`ment is that it is not enough that Schrock’s photographs
`might pass the ordinary test for originality; they claim that
`as derivative works, the photos are subject to a higher
`standard of originality. A leading copyright commentator
`disagrees. The Nimmer treatise maintains that the
`quantum of originality required for copyright in a
`derivative work is the same as that required for copyright
`
`
`
`No. 08-1296
`
`13
`
`in any other work. See 1 NIMMER ON COPYRIGHT § 3.01, at 3-
`2, § 3.03[A], at 3-7. More particularly, Nimmer says the
`relevant standard is whether a derivative work con-
`tains a “nontrivial” variation from the preexisting
`work “sufficient to render the derivative work distin-
`guishable from [the] prior work in any meaningful
`manner.” Id. § 3.03[A], at 3-10. The caselaw generally fol-
`lows this formulation. See, e.g., Eden Toys, Inc. v. Florelee
`Undergarment Co., 697 F.2d 27, 34-35 (2d Cir. 1982)
`(holding that numerous minor changes in an illustration
`of Paddington Bear were sufficiently nontrivial because
`they combined to give Paddington a “different, cleaner
`‘look’ ”); Millworth Converting Corp. v. Slifka, 276 F.2d 443,
`445 (2d Cir. 1960) (holding that embroidered reproduction
`of a public-domain embroidery of Peter Pan was
`sufficiently distinguishable because the latter gave a
`“three-dimensional look” to the former embroidery).
`Learning Curve and HIT argue that our decision in
`Gracen established a more demanding standard of orig-
`inality for derivative works. Gracen involved an artistic
`competition in which artists were invited to submit
`paintings of the character Dorothy from the Metro-
`Goldwyn-Mayer (“MGM”) movie The Wizard of Oz.
`Participating artists were given a still photograph of
`Dorothy from the film as an exemplar, and the paintings
`were solicited and submitted with the understanding that
`the best painting would be chosen for a series of collector’s
`plates. Gracen, 698 F.2d at 301. Plaintiff Gracen prevailed
`in the competition, but she refused to sign the contract
`allowing her painting to be used in the collector’s plates.
`
`
`
`14
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`No. 08-1296
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`The competition sponsor commissioned another artist
`to create a similar plate, and Gracen sued the sponsor,
`MGM, and the artist for copyright infringement. We held
`that Gracen could not maintain her infringement suit
`because her painting, a derivative work, was not
`“substantially different from the underlying work to be
`copyrightable.” Id. at 305.
`Gracen drew this language from an influential Second
`Circuit decision, L. Batlin & Son, Inc. v. Snyder, 536 F.2d
`486 (2d Cir. 1976). Read in context, however, the cited
`language from L. Batlin did not suggest that a heightened
`standard of originality applies to derivative works. To
`4
`the contrary, the Second Circuit said only that to be
`copyrightable a work must “ ‘contain some substantial,
`not merely trivial originality.’ ” Id. at 490 (quoting
`
`4 s
`
`To the extent that Gracen’s reading of L. Batlin and its “sub-
`tantial difference” language can be understood as establishing
`a more demanding standard of originality for derivative
`works, it has received mixed reviews. Some commentators
`have suggested that Gracen may have inappropriately nar-
`rowed the copyrightability of derivative works without a
`statutory basis. See 1 NIMMER ON COPYRIGHT § 3.03[A], at 3-11; 2
`WILLIAM F. PATRY, PATRY ON COPYRIGHT § 3:53 (2009). The
`Nimmer treatise notes that Gracen’s focus on the word “sub-
`stantial” reads the language from L. Batlin out of context because
`L. Batlin simply applied the prevailing “distinguishable varia-
`tion” test, described above. See 1 NIMMER ON COPYRIGHT
`§ 3.03[A], at 3-11 n.24. The Third Circuit has agreed and explic-
`itly rejected Gracen’s interpretation of L. Batlin. Dam Things
`from Den. v. Russ Berrie & Co., 290 F.3d 548, 564 (3d Cir. 2002).
`
`
`
`No. 08-1296
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`15
`
`Chamberlin v. Uris Sales Corp., 150 F.2d 512, 513 (2d Cir.
`1945)). The court explained that for derivative works, as
`for any other work, “[t[he test of originality is concededly
`one with a low threshold in that all that is needed is that
`the author contributed something more than a merely
`trivial variation, something recognizably his own.” Id.
`(internal quotation marks and ellipsis omitted).
`The concern expressed in Gracen was that a derivative
`work could be so similar in appearance to the underlying
`work that in a subsequent infringement suit brought by
`a derivative author, it would be difficult to separate the
`original elements of expression in the derivative and
`underlying works in order to determine whether one
`derivative work infringed another. The opinion offered
`the example of artists A and B who both painted
`their versions of the Mona Lisa, a painting in the public
`domain. See Gracen, 698 F.2d at 304. “[I]f the difference
`between the original and A’s reproduction is slight, the
`difference between A’s and B’s reproductions will also
`be slight, so that if B had access to A’s reproductions
`the trier of fact will be hard-pressed to decide whether B
`was copying A or copying the Mona Lisa itself.” Id.
`No doubt this concern is valid. But nothing in the
`Copyright Act suggests that derivative works are subject
`to a more exacting originality requirement than other
`works of authorship. Indeed, we have explained since
`Gracen that “the only ‘originality’ required for [a] new
`work to by copyrightable . . . is enough expressive
`variation from public-domain or other existing works to
`enable the new work to be readily distinguished from its
`
`
`
`16
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`No. 08-1296
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`predecessors.” Bucklew, 329 F.3d at 929. We emphasized
`in Bucklew that this standard does not require a “high
`degree of [incremental] originality.” Id.
`We think Gracen must be read in light of L. Batlin, on
`which it relied, and Bucklew, which followed it. And
`doing so reveals the following general principles: (1) the
`originality requirement for derivative works is not more
`demanding than the originality requirement for other
`works; and (2) the key inquiry is whether there is
`sufficient nontrivial expressive variation
`in
`the
`derivative work to make it distinguishable from the
`underlying work in some meaningful way. This focus on
`the presence of nontrivial “distinguishable variation”
`adequately captures the concerns articulated in Gracen
`without unduly narrowing
`the copyrightability of
`derivative works. It is worth repeating that the copyright
`in a derivative work is thin, extending only to the
`incremental original expression contributed by the author
`of the derivative work. See 17 U.S.C. § 103(b).
`As applied to photographs, we have already explained
`that the original expression in a photograph generally
`subsists in its rendition of the subject matter. If the photo-
`grapher’s rendition of a copyrighted work varies
`enough
`from
`the underlying work
`to enable
`the
`photograph to be distinguished from the underlying
`work (aside from the obvious shift from three dimen-
`sions to two, see supra n.3), then the photograph con-
`tains sufficient incremental originality to qualify for
`copyright. Schrock’s photos of the “Thomas & Friends”
`toys are highly accurate product photos but contain
`
`
`
`No. 08-1296
`
`17
`
`minimally sufficient variation in angle, perspective,
`lighting, and dimension to be distinguishable from
`the underlying works;
`they are not “slavish
`copies.” Accordingly, the photos qualify for the limited
`derivative-work copyright provided by § 103(b). See
`5
`
`5 S
`
`Learning Curve and HIT argue in the alternative that
`chrock’s photos fall within the scènes à faire or merger doctrines
`and therefore are not copyrightable. The doctrine of scènes à faire
`(French for “scenes for action”) prohibits copyright protection
`in elements or themes that are “so rudimentary, commonplace,
`standard, or unavoidable that they do not serve to distinguish
`one work within a class of works from another.” Bucklew,
`329 F.3d at 929; see also Atari, Inc. v. N. Am. Philips Consumer
`Elecs. Corp., 672 F.2d 607, 616 (7th Cir. 1982) (mazes and tunnels
`in Atari’s PAC-MAN video game are common to this class of
`video games and are therefore scènes à
`faire and not
`copyrightable). The defendants’ argument seems to be that
`because images of its “Thomas & Friends” toys will be
`common to all product photos of the toys, no product photos
`can be copyrighted. If this were true, then no derivative
`work would be copyrightable; by definition, derivative works
`incorporate the underlying work in some way. In any event,
`as we explained in Bucklew,
`[e]very expressive work can be decomposed into elements
`not themselves copyrightable—the cars in a car chase, the
`kiss in a love scene, the dive bombers in a movie about
`Pearl Harbor, or for that matter the letters of the alphabet
`in any written work. The presence of such [common]
`elements obviously does not forfeit copyright protection
`of the work as a whole, but infringement cannot be found
`(continued...)
`
`
`
`18
`
`No. 08-1296
`
`SHL Imaging, 117 F. Supp. 2d at 311 (holding that copyright
`protection in product-accurate photographs was “thin”);
`see also Rockford Map Publishers, Inc. v. Directory Serv. Co. of
`Colo., Inc., 768 F.2d 145, 148 (7th Cir. 1985) (“Perhaps the
`smaller the effort the smaller the contribution; if so, the
`copyright simply bestows fewer rights.”). However narrow
`that copyright might be, it at least protects against the kind
`of outright copying that occurred here.
`
`5
`
`(...continued)
`on the basis of such elements alone; it is the combination
`of elements, or particular novel twists given to them, that
`supply the minimal originality required for copyright
`protection.”
`329 F.3d at 929. Schrock’s contribution of the photographic
`elements of lighting, angle, perspective, and the like supply
`the “minimal originality” required for copyright in the photos.
`Learning Curve and HIT also invoke the doctrine of merger,
`which is premised on the principle that ideas cannot be copy-
`righted. See JCW Invs., Inc. v. Novelty, Inc., 482 F.3d 910, 917
`(7th Cir. 2007) (noting the “fundamental tenet of copyright
`law that the idea is not protected, but the original expression
`of the idea is”). Copyright cannot attach when the idea and the
`expression “merge.” The defendants argue that because
`Schrock’s photos are “straightforward” product photos, he
`has done nothing more than “express” the “idea” of “basic
`product photography.” The defendants do not explain how a
`product photo—even one that is “straightforward” or “ba-
`sic”—qualifies as an uncopyrightable “idea.” In any event,
`this argument essentially advocates a categorical rule that
`all accurate product photos are uncopyrightable. We are
`unwilling to establish such a rule.
`
`
`
`No. 08-1296
`
`19
`
`C. Authorization and Derivative Works
`To be copyrightable, a derivative work must not be
`infringing. See 17 U.S.C. § 103(a); see also Pickett, 207 F.3d
`at 405-06; Gracen, 698 F.2d at 302. The owner of the
`copyright in the underlying work has the exclusive right to
`“prepare derivative works based upon the copyrighted
`work,” 17 U.S.C. § 106(2), and “it is a copyright
`infringement to make or sell a derivative work without a
`license from the owner of the copyright on the work
`from which the derivative work is derived,” Bucklew,
`329 F.3d at 930. This means the author of a derivative
`work must have permission to make the work from
`the owner of the copyright in the underlying work;
`Gracen suggested, however, that the author of a derivative
`work must also have permission to copyright it. 698 F.2d
`at 303-04 (“[T]he question is not whether Miss Gracen
`was licensed to make a derivative work but whether
`she was also licensed to exhibit [her] painting and to
`copyright it. . . . Even if [Gracen] was authorized to
`exhibit her derivative works, she may not have been
`authorized to copyright them.”). The district court
`relied on this language from Gracen to conclude that
`Schrock has no copyright in his photos because he was not
`authorized by Learning Curve to copyright them. This
`was error.
`First, Gracen’s language presupposing a permission-to-
`copyright requirement was dicta; the case was actually
`decided on nonoriginality grounds. Id. at 305. More
`importantly, the dicta was mistaken; there is nothing in
`the Copyright Act requiring the author of a derivative
`
`
`
`20
`
`No. 08-1296
`
`work to obtain permission to copyright his work from
`the owner of the copyright in the underlying work. To
`the contrary, the Act provides that copyright in a
`derivative work, like copyright in any other work, arises by
`operation of law once the author’s original expression
`is fixed in a tangible medium. “Copyright protection
`subsists . . . in original works of authorship fixed in any
`tangible medium of expression,” 17 U.S.C. § 102(a), and
`“[t]he subject matter of copyright . . . includes . . .
`derivative works,” id. § 103(a). “Copyright in a work
`protected under this title vests initially in the author or
`authors of the work.” Id. § 201(a); see also Schiller &
`6
`Schmidt, Inc. v. Nordisco Corp., 969 F.2d 410, 413 (7th Cir.
`1992) (“The creator of the [intellectual] property is the
`owner . . . .”). While the author of an original work “may
`obtain a certificate of copyright, which is ‘prima facie
`evidence’ of its validity,” JCW Invs., Inc. v. Novelty, Inc., 482
`F.3d 910, 915 (7th Cir. 2007), “copyright protection
`begins at the moment of creation of ‘original works of
`authorship,’ ” id. at 914. This principle applies with equal
`force to derivative works.
`
`6 §
`
`An exception is a “work made for hire,” defined in 17 U.S.C.
` 101 as “a work prepared by an employee within the scope
`of his or her employment” or “a work specially ordered
`or commissioned” for inclusion in certain categories of intellec-
`tual property as specified in subsection (2) of the definition.
`Ownership of the copyright in a work made for hire vests in
`“the employer or other person for whom the work was pre-
`pared.” Id. § 201(b); see also Schiller & Schmidt, Inc. v. Nordisco
`Corp., 969 F.2d 410, 412 (7th Cir. 1992). The defendants do not
`argue that Schrock’s photos qualify as works made for hire.
`
`
`
`No. 08-1296
`
`21
`
`The leading treatise on copyright law confirms this basic
`understanding. “[T]he right to claim copyright in a
`noninfringing derivative work arises by operation of law,
`not through authority from the copyright owner of
`the underlying work.” 1 NIMMER ON COPYRIGHT § 3.06, at
`7
`3-34.34. We have cited Nimmer with approval on this
`point. See Liu, 302 F.3d at 755. As we noted in Liu, however,
`there is an important proviso explained in the treatise:
`“[I]f the pertinent agreement between the parties af-
`firmatively bars the licensee from obtaining copyright pro-
`tection even in a licensed derivative work, that contractual
`provision would appear to govern.’ ” 1 NIMMER ON
`COPYRIGHT § 3.06, at 3-34.34; see also Liu, 302 F.3d at 755.
`On this point Liu is instructive. Price Waterhouse LLP
`owned th
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