Ninth Circuit defines differences between derivative and collective worksMay 1, 2007

Yesterday, the Ninth Circuit decided a copyright case dealing with the differences between derivative and collective works. The defendant took photographs which were licensed to it individually by the plaintiff and, after the term of its license had expired, modified the photographs and integrated them into "collage" advertisements.

The court held that these advertisements were derivative works rather than collective works, and as a result use of the plaintiff's photographs in them constituted infringement of the copyright in the photographs. This was important in this case, because the copyright owner registered the works after several earlier acts of infringement of the photos, but before these advertisements were created. As a result, the copyright owner could seek statutory damages and, potentially, attorney fees for the copyright infringement for the collage advertisements. This case is therefore a reminder of the benefits of early copyright registration in order to keep all potential remedies for infringement available if an author's work is copied.

More details of the case after the jump.

Chase Jarvis is a photographer who shoots a variety of subjects, including skiers. K2 Inc. (named after the famous mountain, second only to Everest in altitude) makes a variety of sporting goods, including skis and snowboards.

The two entered into a business relationship, but the relationship went south after Jarvis had provided over 4,000 slides of images to K2. Of relevance here, K2 only had the right to use Jarvis's images until May 2003. After that date, K2 used 24 of Jarvis's images in various "collage" advertisements. One of the advertisements is shown below, with numbered arrows pointing to Jarvis's images:

collage advertisement

The district court held these advertisements to be collective works, which are defined in 17 U.S.C. § 101 as works, "such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole." As a result, K2 could avail itself of the privilege afforded collective works under 17 U.S.C. § 201(c), which provides that:

Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.

As a result, the district court held that K2 had "the privilege of reproducing and distributing the contribution as part of" the collage advertisements, and thus Jarvis could not recover for infringement based on these advertisements.

The Ninth Circuit disagreed. The court first stated that the collage advertisements were actually derivative works, not collective works. Derivative works are, like collective works, defined in 17 U.S.C. § 101, and are works that are:

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”.

Here, the collage ads were derivative works because the advertisements "shrank, expanded, distorted, overlaid and otherwise edited the original images, while also combining them with photos taken by other photographers, additional graphics, the K2 logo and marketing slogans," rather than just consisting of a compilation of the slides, such as in an album. The court analogized a previous Ninth Circuit case, Mirage Editions, Inc. v. Albuquerque A.R.T. Co., where the accused infringer purchased art prints, placed them in a black plastic border, glued them to ceramic tiles, and sold the finished product. In that case, the finished tile product was held to be a derivative work, because the original images were borrowed and mounted. Here, there was even more adaptation, given the changes in size and shape of the images.

This was important for Mr. Jarvis, as he had registered his copyrights before the collage advertisements were made, but not before the other infringing acts were committed. As a result, the court reversed the lower court's determination of the nature of the works, and remanded for an assessment of statutory and actual damages as well as the possibility of attorney fees, which were only possible because Mr. Jarvis's registration predated these acts of infringement.

To read the full decision in Jarvis v. K2 Inc., click here. For the exhibits showing a sampling of the collage ads, click here.

Update (5/3): Copyright guru William Patry offers his thoughts on the case here.

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