Thursday, February 21, 2008

Thomas the Tank Engine of free expression

Schrock v. Learning Curve Intern., Inc., --- F.Supp.2d ----, 2008 WL 224280 (N.D.Ill.)

Plaintiff Schrock was hired to take pictures of toys (Thomas & Friends). These pictures were used on product packages and in catalogs. Schrock later sued, alleging that defendants’ use of his pictures beyond the two-year term specified in their contract was unauthorzied. The district court held that Schrock lacked any copyright in his photos because they were derivative works of the toys themselves and defendants had never granted authority to register any copyright interest in these derivative works.

Prof. Patry covered the question of whether a photograph of a three-dimensional object is a derivative work of that object (he says no; it may, however, be a reproduction, as well as possessing independent authorship in the creative decisions that go into taking a photo). What I don’t understand is why authority to register ought to matter. The derivative works – accepting for the moment that this is what they were – were made with the permission of the copyright owner in the original works. That is all that ought to be required. Of course there is a potential problem of blocking copyrights – but other cases have avoided this by finding no derivative work at all where a translation from two dimensions to three, or three to two, has taken place.

The court isn’t holding that the photos are unauthorized derivative works and that Schrock is an infringer. He’s obviously not. To say that the Copyright Act includes within it an implicit instruction that derivative works may not be registered without the original copyright owner’s consent – such that they’re copyrightable, but no remedy for their infringement is available – seems a stretch. (It’s the Seventh Circuit in Gracen v. Bradford Exchange that did much of the stretching, facing similarly embarrassing circumstances of an authorized derivative work that the original copyright owner commissioned without a contract.) The result is that, assuming Schrock can plead around copyright preemption, he has only contract remedies for the continued use of his photos, even though he alleges he deliberately retained his copyright in the photos.

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