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United States District Court, Southern District of New York

February 18, 1999


The opinion of the court was delivered by: Kaplan, District Judge.


On November 13, 1998, this Court granted defendant's motion for summary judgment dismissing plaintiff's copyright infringement claim on the alternative grounds that the allegedly infringed works — color transparencies of paintings which themselves are in the public domain — were not original and therefore not permissible subjects of valid copyright and, in any case, were not infringed.*fn1 It applied United Kingdom law in determining whether plaintiff's transparencies were copyrightable.*fn2 The Court noted, however, that it would have reached the same result under United States law.*fn3

Following the entry of final judgment, the Court was bombarded with additional submissions. On November 23, 1998, plaintiff moved for reargument and reconsideration, arguing that the Court erred on the issue of originality. It asserted that the Court had ignored the Register of Copyright's issuance of a certificate of registration for one of plaintiff's transparencies, which it takes as establishing copyrightability, and that the Court had misconstrued British copyright law in that it failed to follow Graves' Case,*fn4 which was decided in the Court of Queens Bench in 1869.*fn5 At about the same time, the Court received an unsolicited letter from Professor William Patry, author of a copyright law treatise, which argued that the Court erred in applying the law of the United Kingdom to the issue of copyrightability. Plaintiff then moved for an order permitting the filing of an amicus brief by one of its associates, The Wallace Collection, to address the United Kingdom law issue. The Court granted leave for the submission of the amicus brief and invited the parties to respond to Professor Patry's letter. The matter now is ripe for decision.

At the outset, it is worth noting that the post-judgment flurry was occasioned chiefly by the fact that the plaintiff failed competently to address most of the issues raised by this interesting case prior to the entry of final judgment. In particular, while plaintiff urged the application of U.K. law, it made no serious effort to address the choice of law issue and no effort at all (apart from citing the British copyright act) to bring pertinent U.K. authority to the Court's attention before plaintiff lost the case. Indeed, it did not even cite Graves' Case, the supposedly controlling authority that the Court is said to have overlooked.*fn6

Everything plaintiff has submitted on this motion should have been before the Court earlier, which is more than sufficient reason to deny its motion as an unwarranted imposition on the Court and, indeed, its adversary. The issues, however, are significant beyond the immediate interests of the parties. Accordingly, the Court will address them on the merits.

Choice of Law

Professor Patry argues principally that there can be no choice of law issue with respect to copyrightability because the Copyright Clause of the Constitution*fn7 permits Congress to enact legislation protecting only original works of authorship. In consequence, he contends, only original works, with originality determined in accordance with the meaning of the Copyright Clause, are susceptible of protection in United States courts.

Of course, the ability of Congress to extend the protection of copyright is limited by the Copyright Clause. Nevertheless, the constitutional issue is not as straightforward as Professor Patry suggests. Bridgeman claims that the infringed works are protected by United Kingdom copyrights and that the United States, by acceding to the Convention for the Protection of Literary and Artistic Works, popularly known as the Berne Convention,*fn8 and the Universal Copyright Convention*fn9 and by enacting the Berne Convention Implementation Act of 1988 (the "BCIA"),*fn10 agreed to give effect to its United Kingdom copyrights.

The fact that plaintiff's rights allegedly derive from its claimed British copyrights arguably is material. Granting Professor Patry's point that Congress, in light of the originality requirement of the Copyright Clause, in ordinary circumstances may not extend copyright protection to works that are not original, the questions remain whether (1) the United States constitutionally may obligate itself by treaty to permit enforcement of a foreign copyright where that copyright originates under the law of a signatory nation which does not limit copyright protection to works that are original in the sense required by the United States Constitution and, if so, (2) the United States in fact has done so. Thus, Professor Patry's contention that the United States may not apply foreign law less restrictive than its own with respect to originality may be too narrow because it rests exclusively on the Copyright Clause. The legal effect and constitutionality of treaties also is implicated.

Article II, Section 2, of the Constitution provides that the President "shall have Power, by and with the Advice and Consent of the Senate, to make Treaties, provided two thirds of the Senators present concur." Treaties, by virtue of the Supremacy Clause, join the Constitution and federal statutes as "supreme law of the land."*fn11 As the Supreme Court wrote in Geofroy v. Riggs:*fn12

  "The treaty power, as expressed in the Constitution,
  is in terms unlimited except by those restraints
  which are found in that instrument against the action
  of the government . . ., and those arising from the
  nature of the government itself and the States. It
  would not be contended that it extends so far as to
  authorize what the Constitution forbids, or a change
  in the character of the government or in that of one
  of the States, or a cession of any portion of the
  territory of the latter, without its consent . . .
  But with these exceptions, it is not perceived that
  there is any limit to the questions which can be
  adjusted touching any matter which is properly the
  subject of negotiation with a foreign country."*fn13

And while it now is clear that the treaty power is "subject to the constitutional limitations that apply to all exercises of federal power, principally the prohibitions of the Bill of Rights,"*fn14 the treaty power retains considerable scope.

The Copyright Clause and the Copyright Act both recognize that the United States has an important interest in protecting the intellectual property of its citizens and of those whose creative efforts enrich our lives. In this increasingly interconnected world, securing appropriate protection abroad also is important. Hence, it cannot seriously be denied that international copyright protection is "properly the subject of negotiation with" foreign countries.

Decades ago, the Supreme Court held in Missouri v. Holland*fn15 that Congress could enact legislation necessary and proper to the implementation of a treaty which, absent the treaty, would have been beyond its powers. Although the case arose in a different context,*fn16 it suggests that the Conventions, if their purported effect actually is to permit enforcement in the United States of foreign copyrights which do not meet U.S. standards of originality — in other words, if they require enforcement here of any copyright valid under the law of the signatory nation in which copyright attached, even if that copyright does not meet U.S. standards of validity — would not be obviously invalid.

In view of these considerations, the proposition advanced by Professor Patry — that the Copyright Clause forecloses any choice of law issue with respect to the validity of a foreign Berne Convention work, is not free from doubt. It is necessary to decide that question, however, only if the Conventions require application of foreign law in determining the existence of copyright and, if so, whether there is any true conflict of law in this case on that point.

In most circumstances, choice of law issues do not arise under the Berne and Universal Copyright Conventions. Each adopts a rule of national treatment.*fn17 Article 5 of the Berne Convention, for example, provides that "[a]uthors shall enjoy, in respect of works for which they are protected under this Convention, in countries of the Union other than the country of origin, the rights which their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted by this convention" and that "the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed."*fn18 Hence, the Conventions make clear that the holder of, for example, a British copyright who sues for infringement in a United States court is entitled to the same remedies as holders of United States copyrights and, as this Court previously held, to the determination of infringement under the same rule of law.

While the nature of the protection accorded to foreign copyrights in signatory countries thus is spelled out in the Conventions, the position of the subject matter of copyright thereunder is less certain. Do the Conventions purport to require signatory nations to extend national treatment with respect to such enforcement-related subjects as remedies for infringement only where the copyright for which protection is sought would be valid under the law of the nation in which enforcement is sought? Or do they purport to require also that a signatory nation in which enforcement is sought enforce a foreign copyright even if that copyright would not be valid under its own law?*fn19 But there is an even more fundamental issue, viz. whether United States courts may give effect to any provisions of the Conventions which might require or suggest that the existence of copyright be determined under the law of another nation.

Although the Supreme Court has not yet decided the point, it seems quite clear at this point that the Berne Convention is not self-executing.*fn20 Section 3(a) of the BCIA*fn21 confirms this view, stating that:

"The provisions of the Berne Convention —

    "(1) shall be given effect under title 17, as
  amended by this Act, and any other relevant provision
  of Federal or State law, including the common law,

    "(2) shall not be enforceable in any action brought
  pursuant to the provisions of the Berne Convention

Section 4(c),*fn22 now codified at 17 U.S.C. § 104(c), states in relevant part that "[n]o right or interest in a work eligible for protection under this title may be claimed by virtue of, or in reliance upon, the provisions of the Berne Convention or the adherence of the United States thereto." Thus, while the Copyright Act, as amended by the BCIA, extends certain protection to the holders of copyright in Berne Convention works as there defined, the Copyright Act is the exclusive source of that protection.

The statutory basis of the protection of published Berne Convention works such as the photographs here at issue is Section 104(b), which states in relevant part that:

  "The works specified by sections 102 and 103, when
  published, are subject to protection under this title
  if —

"(4) the work is a Berne Convention work . . ."*fn23

Section 102(a) limits copyright protection in relevant part to "original works of authorship. . . ."*fn24 Accordingly, there is no need to decide whether the Berne Convention adopts any rule regarding the law governing copyrightability or whether the treaty power constitutionally might be used to extend copyright protection to foreign works which are not "original" within the meaning of the Copyright Clause. Congress has made it quite clear that the United States' adherence to the Berne Convention has no such effect in the courts of this country. And while there is no comparable legislation with respect to the Universal Copyright Convention,*fn25 the question whether that treaty is self-executing is of no real significance here because the substantive provisions of the UCC are "of very limited practical import . . ."*fn26

Originality and Copyrightability

United States Law

The Court's prior opinion indicated that plaintiff's exact photographic copies of public domain works of art would not be copyrightable under United States law because they are not original.*fn27 In view of the Court's conclusion here that U.S. law governs on this issue, it is appropriate to give a somewhat fuller statement of the Court's reasoning.

In Burrow-Giles Lithographic Co v. Sarony,*fn28 the Supreme Court held that photographs are "writings" within the meaning of the Copyright Clause and that the particular portrait at issue in that case was sufficiently original — by virtue of its pose, arrangement of accessories in the photograph, and lighting and the expression the photographer evoked — to be subject to copyright. The Court, however, declined to decide whether "the ordinary production of a photograph" invariably satisfies the originality requirement. While Judge Learned Hand later suggested that the 1909 Copyright Act protected photographs independent of their originality,*fn29 his view ultimately was rejected by the Supreme Court.*fn30 Nevertheless, there is broad scope for copyright in photographs because "a very modest expression of personality will constitute sufficient originality."*fn31

As the Nimmers have written, there "appear to be at least two situations in which a photograph should be denied copyright for lack of originality," one of which is directly relevant here: "where a photograph of a photograph or other printed matter is made that amounts to nothing more than slavish copying."*fn32 The authors thus conclude that a slavish photographic copy of a painting would lack originality, although they suggest the possibility that protection in such a case might be claimed as a "reproduction of a work of art."*fn33 But they immediately go on to point out that this suggestion is at odds with the Second Circuit's in banc decision in L. Batlin & Son, Inc. v. Snyder.*fn34

Batlin involved the defendants' claim to copyright in a plastic reproduction, with minor variations, of a mechanical cast-iron coin bank that had been sold in the United States for many years and that had passed into the public domain. The Court of Appeals affirmed a district court order compelling the defendants to cancel a recordation of copyright in the plastic reproduction on the ground that the reproduction was not "original" within the meaning of the 1909 Copyright Act, holding that the requirement of originality applies to reproductions of works of art.*fn35 Only "a distinguishable variation" — something beyond technical skill — will render the reproduction original.*fn36 In consequence:

    "Absent a genuine difference between the underlying
  work of art and the copy of it for which protection
  is sought, the public interest in promoting progress
  in the arts — indeed, the constitutional demand
  [citation omitted] — could hardly be served. To
  extend copyrightability to minuscule variations would
  simply put a weapon for harassment in the hands of
  mischievous copiers intent on appropriating and
  monopolizing public domain work. Even in Mazer v.
  Stein, [347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630
  (1954)], which held that the statutory terms `works
  of art' and `reproduction of works of art' . . .
  permit copyright of quite ordinary mass-produced
  items, the Court expressly held that the objects to
  be copyrightable, `must be original, that is, the
  author's tangible expression of his ideas.' 347 U.S.
  at 214, 74 S.Ct. at 468, 98 L.Ed. at 640. No such
  originality, no such expression, no such ideas here

The requisite "distinguishable variation," moreover, is not supplied by a change of medium, as "production of a work of art in a different medium cannot by itself constitute the originality required for copyright protection."*fn38

There is little doubt that many photographs, probably the overwhelming majority, reflect at least the modest amount of originality required for copyright protection. "Elements of originality . . . may include posing the subjects, lighting, angle, selection of film and camera, evoking the desired expression, and almost any other variant involved."*fn39 But "slavish copying," although doubtless requiring technical skill and effort, does not qualify.*fn40 As the Supreme Court indicated in Feist, "sweat of the brow" alone is not the "creative spark" which is the sine qua non of originality.*fn41 It therefore is not entirely surprising that an attorney for the Museum of Modern Art, an entity with interests comparable to plaintiff's and its clients, not long ago presented a paper acknowledging that a photograph of a two-dimensional public domain work of art "might not have enough originality to be eligible for its own copyright."*fn42

In this case, plaintiff by its own admission has labored to create "slavish copies" of public domain works of art. While it may be assumed that this required both skill and effort, there was no spark of originality — indeed, the point of the exercise was to reproduce the underlying works with absolute fidelity. Copyright is not available in these circumstances.

United Kingdom Law

While the Court's conclusion as to the law governing copyrightability renders the point moot, the Court is persuaded that plaintiff's copyright claim would fail even if the governing law were that of the United Kingdom.

Plaintiff's attack on the Court's previous conclusion that its color transparencies are not original and therefore not copyrightable under British law depends primarily on its claim that the Court failed to apply Graves' Case, a nisi prius decision and the supposedly controlling authority that plaintiff did not even cite in its opposition to defendant's motion for summary judgment.

Graves' Case in relevant part involved an application to cancel entries on the no longer extant Register of Proprietors of Copyright in Paintings, Drawings and Photographs for three photographs of engravings.*fn43 In rejecting the contention that the photographs were not copyrightable because they were copies of the engravings, Justice Blackburn wrote:

  "The distinction between an original painting and its
  copy is well understood, but it is difficult to say
  what can be meant by an original photograph. All
  photographs are copies of some object, such as a
  painting or statute. And it seems to me that a
  photograph taken from a picture is an original
  photograph, in so far that to copy it is an
  infringement of the statute."*fn44

Plaintiff and the amicus therefore argue that plaintiffs photographs of public domain paintings are copyrightable under British law. But they overlook the antiquity of Graves' Case and the subsequent development of the law of originality in the United Kingdom.

Laddie, a modern British copyright treatise the author of which now is a distinguished British judge, discusses the issue at Bar in a helpful manner:

  "It is obvious that although a man may get a
  copyright by taking a photograph of some well-known
  object like Westminster Abbey, he does not get a
  monopoly in representing Westminister Abbey as such,
  any more than an artist would who painted

  or drew that building. What, then, is the scope of
  photographic copyright? As always with artistic
  works, this depends on what makes his photograph
  original. Under the 1988 Act the author is the person
  who made the original contribution and it will be
  evident that this person need not be he who pressed
  the trigger, who might be a mere assistant.
  Originality presupposes the exercise of substantial
  independent skill, labour, judgment and so forth.
  For this reason it is submitted that a person who
  makes a photograph merely by placing a drawing or
  painting on the glass of a photocopying machine and
  pressing the button gets no copyright at all; but he
  might get a copyright if he employed skill and labour
  in assembling the thing to be photocopied, as where
  he made a montage. It will be evident that in
  photography there is room for originality in three
  respects. First, there may be originality which does
  not depend on creation of the scene or object to be
  photographed or anything remarkable about its
  capture, and which resides in such specialties as
  angle of shot, light and shade, exposure, effects
  achieved by means of filters, developing techniques
  etc.: in such manner does one photograph of
  Westminster Abbey differ from another, at least
  potentially. Secondly, there may be creation of the
  scene or subject to be photographed. We have already
  mentioned photo-montage, but a more common instance
  would be arrangement or posing of a group . . .
  Thirdly, a person may create a worthwhile photograph
  by being at the right place at the right time. Here
  his merit consists of capturing and recording a scene
  unlikely to recur, e.g. a battle between an elephant
  and a tiger . . ."*fn45

Moreover, the authors go on to question the continued authority of Graves' Case under just this analysis:

  "It is submitted that Graves' Case (1869) LR 4 QB
  715 (photograph of an engraving), a case under the
  Fine Arts Copyright Act 1862, does not decide the
  contrary, since there may have been special skill or
  labour in setting up the equipment to get a good
  photograph, especially with the rather primitive
  materials available in those days. Although the
  judgments do not discuss this aspect it may have been
  self-evident to any contemporary so as not to require
  any discussion. If this is wrong it is submitted
  that Graves' Case is no longer good law and in that
  case is to be explained as a decision made before the
  subject of originality had been fully developed by
  the courts."*fn46

This analysis is quite pertinent in this case. Most photographs are "original" in one if not more of the three respects set out in the treatise and therefore are copyrightable. Plaintiff's problem here is that it seeks protection for the exception that proves the rule: photographs of existing two-dimensional articles (in this case works of art), each of which reproduces the article in the photographic medium as precisely as technology permits. Its transparencies stand in the same relation to the original works of art as a photocopy stands to a page of typescript, a doodle, or a Michelangelo drawing.*fn47

Plaintiff nevertheless argues that the photocopier analogy is inapt because taking a photograph requires greater skill than making a photocopy and because these transparencies involved a change in medium. But the argument is as unpersuasive under British as under U.S. law.

The allegedly greater skill required to make an exact photographic, as opposed to Xerographic or comparable, copy is immaterial. As the Privy Council wrote in Interlego AG v. Tyco Industries, Inc.,*fn48 "[s]kill, labor or judgment merely in the process of copying cannot confer originality. . . ."*fn49 The point is exactly the same as the unprotectibility under U.S. law of a "slavish copy."

Nor is the change in medium, standing alone, significant. The treatise relied upon by plaintiff for the contrary proposition does not support it. It states that "a change of medium will often entitle a reproduction of an existing artistic work to independent protection."*fn50 And it goes on to explain:

    "Again, an engraver is almost invariably a copyist,
  but his work may still be original in the sense
  that he has employed skill and judgment in its
  production. An engraver produces the resemblance he
  wishes by means which are very different from those
  employed by the painter or draughtsman from whom he
  copies; means which require a high degree of skill
  and labour. The engraver produces his effect by the
  management of light and shade, or, as the term of his
  art expresses it, the chiaroscuro. The required
  degree of light and shade are produced by different
  lines and dots; the engraver must decide on the
  choice of the different lines or dots for himself,
  and on his choice depends the success of his

Thus, the authors implicitly recognize that a change of medium alone is not sufficient to render the product original and copyrightable. Rather, a copy in a new medium is copyrightable only where, as often but not always is the case, the copier makes some identifiable original contribution. In the words of the Privy Council in Interlogo AG, "[t]here must . . . be some element of material alteration or embellishment which suffices to make the totality of the work an original work."*fn52 Indeed, plaintiff's expert effectively concedes the same point, noting that copyright "may" subsist in a photograph of a work of art because "change of medium is likely to amount to a material alteration from the original work, unless the change of medium is so insignificant as not to confer originality . . ."*fn53

Here, as the Court noted in its earlier opinion, "[i]t is uncontested that Bridgeman's images are substantially exact reproductions of public domain works, albeit in a different medium."*fn54 There has been no suggestion that they vary significantly from the underlying works. In consequence, the change of medium is immaterial.

Finally, the amicus argues that this result is contraindicated because public art collections in the United Kingdom charge fees for reproductions of photographic images of works in their collections, thus evidencing their view that the images are protected by copyright. But the issue here is not the position of an economically interested constituency on an issue that has not been litigated, at least in this century, but the content of the originality requirement of the British Copyright Act. Moreover, it is far from clear what the understanding of British art collections, if any, actually is. Certainly, for example, there are original works of art in British public art collections in which copyright subsists and is owned by the collections, in which case reproduction rights no doubt are a fit subject for exploitation.*fn55

For all of the foregoing reasons, the Court is persuaded that its original that Bridgeman's transparencies are not copyrightable under British law was correct. The Certificate of Registration for The Laughing Cavalier

As indicated above, plaintiff argues also that the fact that the Register of Copyright issued a certificate of registration for one of plaintiff's transparencies demonstrates that its photographs are copyrightable under U.S. law. The argument is misguided.

No one disputes that most photographs are copyrightable. In consequence, the issuance of a certificate of registration for a photograph proves nothing. And while the certificate is prima facie evidence of the validity of the copyright,*fn56 including the originality of the work, the presumption is not irrebuttable.*fn57 Here, the facts pertinent to the issue of originality are undisputed. The Court has held as a matter of law, and reiterates, that plaintiff's works are not original under either British or United States law.


Plaintiff's motion for reargument and reconsideration of this Court's order granting summary judgment dismissing the complaint is granted. Nevertheless, on reargument and reconsideration, defendant Corel Corporation's motion for summary judgment dismissing the complaint is granted.


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