Bridgeman Art Library, Ltd. v. Corel Corp.

Citations: 36 F. Supp. 2d 191; 1999 WL 85513Docket: 97 Civ. 6232(LAK)

Court: District Court, S.D. New York; March 2, 1999; Federal District Court

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In the case of The Bridgeman Art Library, Ltd. v. Corel Corporation, the United States District Court for the Southern District of New York granted summary judgment in favor of Corel Corporation, dismissing Bridgeman's copyright infringement claim on November 13, 1998. The court determined that the claimed infringed works, which were color transparencies of public domain paintings, lacked originality and thus were not copyrightable. The court applied United Kingdom law to assess copyrightability but noted that the same conclusion would have been reached under U.S. law.

Following the final judgment, Bridgeman filed a motion for reargument and reconsideration, asserting that the court had erred regarding originality and had overlooked the Register of Copyright's issuance of a registration certificate for one of its transparencies. Bridgeman also claimed that the court misconstrued British copyright law, particularly failing to consider Graves' Case, a precedent from 1869.

The court received an unsolicited letter from Professor William Patry, who contended that the application of U.K. law to copyrightability was incorrect. Bridgeman subsequently sought permission to file an amicus brief from The Wallace Collection to discuss the U.K. law issue. The court granted this request and invited responses to Professor Patry's letter. 

The court noted that the plaintiff had not adequately addressed key issues regarding choice of law prior to the final judgment, including relevant U.K. authority. Although the plaintiff's post-judgment submissions were deemed a burdensome imposition on the court, the court chose to consider the significant issues raised. Professor Patry argued that since the U.S. Copyright Clause allows protection only for original works, there should be no choice of law issue regarding copyrightability. He claimed that Bridgeman's works were protected under U.K. copyrights, and that the U.S. had obligations under international copyright agreements, including the Berne Convention and the Berne Convention Implementation Act of 1988, to recognize these copyrights.

Plaintiff's rights stemming from claimed British copyrights raise significant legal questions regarding the applicability of U.S. copyright law and constitutional provisions. It is debated whether the U.S. can constitutionally enter treaties enforcing foreign copyrights that do not adhere to the U.S. originality requirement. This raises two primary inquiries: (1) if the U.S. can obligate itself by treaty to enforce foreign copyright laws that differ from its own originality standards, and (2) whether such obligations have indeed been established. Professor Patry's argument against applying less restrictive foreign laws may be overly constrained, as it only considers the Copyright Clause.

The legal framework for treaties, as outlined in Article II, Section 2 of the Constitution, grants the President the power to make treaties with Senate consent, establishing treaties as 'supreme law of the land' under the Supremacy Clause. The Supreme Court has indicated that while the treaty power has broad scope, it is limited by constitutional constraints, particularly those in the Bill of Rights. Despite these limitations, the U.S. has a vested interest in protecting intellectual property, both domestically and internationally. As established in Missouri v. Holland, Congress can enact legislation to implement treaties even if such actions would normally exceed its powers.

The potential implications of the Conventions suggest they might allow the enforcement of foreign copyrights in the U.S. even if those copyrights do not meet U.S. standards. Therefore, Professor Patry's assertion that the Copyright Clause prohibits any choice of law regarding the validity of foreign works under the Berne Convention may not be conclusive. Ultimately, it is necessary to determine whether the Conventions mandate the application of foreign law in copyright cases and if there exists a real conflict of laws in this context, noting that choice of law issues typically do not arise under the Berne and Universal Copyright Conventions.

National treatment is established under the Berne Convention, specifically Article 5, which grants authors rights in countries outside their origin based on the host country's laws and the rights provided by the Convention. This means a British copyright holder suing in the U.S. is entitled to the same remedies as U.S. copyright holders, following the same legal standards for infringement. However, ambiguities exist regarding whether signatory nations must enforce foreign copyrights that would not be valid under their own laws. A critical issue is whether U.S. courts can enforce provisions of the Convention that require copyright validity to be determined by foreign law. The Supreme Court has not definitively ruled on this, but indications suggest the Berne Convention is not self-executing. The Berne Convention Implementation Act (BCIA) clarifies that its provisions are enforceable only through U.S. law and do not create independent rights. Section 104(c) asserts that no rights can be claimed based on the Convention's adherence. While the Copyright Act provides some protection for Berne works, it remains the exclusive source of that protection, focusing on original works of authorship as defined in Section 102(a). Therefore, the question of whether the Convention addresses copyrightability is moot, as Congress has established that U.S. courts cannot extend copyright protection to non-original foreign works based on the Convention. Additionally, the Universal Copyright Convention's self-executing nature is irrelevant here due to its limited practical significance. The Court previously noted that exact photographic copies of public domain art lack copyrightability under U.S. law due to their lack of originality.

U.S. law governs the issue of copyright in photographs, as established by the Supreme Court in Burrow-Giles Lithographic Co v. Sarony, which recognized photographs as 'writings' under the Copyright Clause. The Court determined that the specific portrait was original due to its unique pose, arrangement, lighting, and expression, but refrained from ruling on whether all photographs inherently meet the originality requirement. Judge Learned Hand's assertion that the 1909 Copyright Act protected photographs irrespective of originality was ultimately rejected by the Supreme Court. 

The Nimmers identify two scenarios where a photograph may lack copyright protection due to insufficient originality, particularly when it involves a mere replica of another image, termed 'slavish copying.' They argue that such copies do not possess the originality necessary for copyright, although a reproduction might claim protection as a 'reproduction of a work of art.' This viewpoint conflicts with the Second Circuit's decision in L. Batlin & Son, Inc. v. Snyder, which involved a plastic reproduction of a public domain coin bank. The court held that reproductions must demonstrate originality beyond mere technical skill to qualify for copyright, emphasizing that minuscule variations would not serve the public interest in artistic progress. 

The Supreme Court's ruling in Mazer v. Stein reiterated that copyrightable items must reflect the author's original expression of ideas, which is absent in mere reproductions. While many photographs likely exhibit sufficient originality through various factors like subject posing and lighting, 'slavish copying' does not meet the originality threshold. The Supreme Court in Feist emphasized that effort alone does not equate to creativity. Notably, an attorney for the Museum of Modern Art recently acknowledged that a photograph of a two-dimensional public domain artwork may lack the originality necessary for copyright eligibility.

The plaintiff has admitted to creating 'slavish copies' of public domain artworks, asserting that while skill and effort were involved, the lack of originality precludes copyright protection. The court emphasizes that copyright cannot apply in cases of exact reproduction. Even under UK law, the plaintiff's claim would likely fail. The plaintiff challenges the court's previous ruling regarding the originality of its color transparencies, arguing a misapplication of "Graves' Case," an earlier decision that the plaintiff did not reference in their opposition to the defendant's summary judgment motion. Graves' Case involved determining copyright status for photographs of engravings, with Justice Blackburn acknowledging the difficulty of defining originality in photography, since all photographs are copies of something. The court notes that while a photographer can obtain copyright by taking a photograph of a well-known subject, they do not gain exclusive rights to represent that subject. The scope of photographic copyright hinges on originality, which requires significant independent skill and judgment. The text elaborates that originality can manifest in three ways: through the photographer's technique (angle, light, exposure), the creation of the subject (e.g., photo-montage), or the timing of the photograph capturing a unique moment. The authors of a British copyright treatise suggest that the relevance of Graves' Case may be questioned in light of these considerations.

Graves' Case (1869) LR 4 QB 715 does not establish a contrary principle regarding copyright in photographs, as the potential skill involved in setting up photographic equipment might not have been discussed in detail but was likely understood at the time. If this interpretation is incorrect, Graves' Case may no longer be valid law, particularly as the concept of originality has evolved. Most photographs are generally considered 'original' and copyrightable. However, the plaintiff's claim for protection of photographs of existing two-dimensional works of art faces challenges; these photographs closely replicate the originals, akin to photocopies, and thus do not demonstrate the originality necessary for copyright. The plaintiff argues that photography demands more skill than photocopying and involves a change of medium, but this reasoning lacks persuasiveness under both British and U.S. law. The Privy Council in Interlego AG v. Tyco Industries, Inc. clarified that mere skill in copying does not equate to originality. 

While a change of medium can sometimes warrant copyright protection, it must involve identifiable original contributions beyond mere reproduction. The plaintiff's expert acknowledges that copyright could exist in a photograph if the medium change results in a material alteration, but in this case, the images are recognized as nearly exact reproductions of public domain works. Therefore, the change of medium does not confer originality, as the images do not significantly differ from the original works.

The amicus argues against the claim that public art collections in the UK charging fees for reproducing photographic images indicates those images are copyright protected. Instead, the focus should be on the originality requirement under the British Copyright Act, with ambiguity surrounding the actual understanding of British art collections' stance on copyright. Some art in these collections is indeed protected by copyright, allowing for reproduction rights exploitation. The court maintains its prior conclusion that Bridgeman's transparencies lack copyright eligibility under both British and U.S. law. 

Regarding the Certificate of Registration for The Laughing Cavalier, the plaintiff contends it proves copyrightability under U.S. law; however, this assertion is flawed since the registration does not universally guarantee originality or copyright validity. The court reiterates that the undisputed facts reveal the plaintiff's works are not original per the laws of either jurisdiction. 

The court grants the plaintiff's motion for reargument but simultaneously grants the defendant Corel Corporation's motion for summary judgment, dismissing the complaint.

Key legal citations and cases are presented, focusing on copyright law and its limitations. Notable references include the Fine Arts Copyright Act of 1862 and various court rulings that establish principles surrounding copyrightability, particularly regarding slavish copies of public domain works (e.g., Hearn v. Meyer and Rogers v. Koons). The excerpt emphasizes that mere photographic reproductions or non-original works lack copyright protection, regardless of the effort involved in their creation. It mentions that the plaintiff acknowledged photocopies are not original. Additionally, it discusses the implications of the court's holding on public art collections and the discretion courts have regarding copyright certificates under 17 U.S.C. 410(c). Overall, the text underscores the legal framework governing copyright, particularly the distinction between original works and copies.