Music Licensing Transformed by the Passage of the Modernization Act

BY STEVEN R. ENGLUND, ALISON I. STEIN AND AVA U. MCALPIN

n October 11, 2018, the for public performance licenses products such as CDs and perma- president signed into administered by ASCAP and nent downloads and toward Internet law the Orrin G. Hatch– BMI, including randomized streaming. Digital music providers Bob Goodlatte Music assignment of judges to hear found it difficult and expensive to OModernization Act (MMA).1 This those proceedings and permit- obtain and administer mechanical major piece of bipartisan legisla- ting those judges to consider licenses for all the compositions in tion touches on nearly every aspect royalty rates for sound record- their vast libraries, while music pub- of U.S. law that relates ings; and lishers and songwriters believed that to licensing of either musical com- providers often did not obtain valid positions or sound recordings. The (5) Provision of statutory licenses or pay required royalties legislation is the result of many procedures for producers, mix- and began filing litigation against years of examination of reform ers, and sound engineers to streaming services on that basis.2 proposals by Congress and the receive royalties for the use of The goal of the MMA’s blan- Copyright Office and many years of sound recordings under a stat- ket license is to make compulsory negotiations among industry stake- utory license. mechanical license administra- holders. The lengthy MMA makes tion for digital uses simpler and five principal sets of changes to the Blanket License for Digital more efficient and to ensure that a Copyright Act: Reproduction and Distribution of higher proportion of usage results Musical Compositions in payment of statutory royal- (1) Creation of a blanket The MMA’s centerpiece is a major ties to the proper music publishers statutory mechanical license rewrite of the “mechanical” com- and songwriters. To do so, the for digital music providers, pulsory license provisions in section MMA establishes the Mechanical which will be administered by 115 of the Copyright Act. That Licensing Collective, a nonprofit a new “Mechanical Licensing license was originally created as organization that will administer the Collective”; part of the blanket license industrywide at the to provide a mechanism for licens- expense of digital music providers.3 (2) Substantial federaliza- ing reproduction and distribution of Among other things, the Mechani- tion of protection for pre-1972 musical compositions embodied in cal Licensing Collective will develop sound recordings, which gen- piano rolls. Even as recording tech- and provide a publicly accessible erally had been protected only nology progressed to vinyl records, database of current ownership infor- under state law; compact discs, and eventually down- mation for musical compositions.4 loaded digital files, the licensing The database will address a long-felt (3) Adoption of a “willing procedures remained substantially need for more accurate and timely buyer, willing seller” rate stan- the same. Under section 115, a com- ownership information for musical dard to be used when setting pulsory mechanical license was compositions, which should sim- rates for musical compositions available by serving on a copyright plify licensing of musical works for and sound recordings under owner a notice of intent (NOI) that all uses. statutory licenses; listed the individual musical com- Because it will take some time positions that the licensee intended to get the Collective up and run- (4) Changes to procedures to use, and then paying statutory ning, the blanket license will not be for “rate court” proceedings royalties on those individual compo- available until January 1, 2021.5 To sitions. In some cases, an NOI could obtain a blanket license once they be filed with the Copyright Office become available, a digital music Steven R. Englund, Alison I. Stein, instead. provider will need only submit a and Ava U. McAlpin are attorneys with However, after more than a notice to the Collective.6 During Jenner & Block. Jenner & Block advised century since the 1909 Act, the the transition period (i.e., prior to various clients in the industry negotiations mechanical license system was the availability of blanket licenses in connection with enactment of the under strain, as ownership of musi- on January 1, 2021), a digital music MMA. This article is based on an article cal composition became provider’s potential exposure to lia- that originally appeared in the MLRC increasingly fractured and the music bility for copyright infringement is MediaLawLetter. market migrated from the sale of limited, so long as the digital music

Winter 2019 n Communications Lawyer n 17 provider engages in good-faith, in pre-1972 sound recordings. How- protection for these works will pro- commercially reasonable efforts to ever, a last-minute compromise vide uniform legal treatment that identify, locate, and pay royalties to resulted in substantially full feder- should facilitate commerce involv- the owners of musical compositions, alization of protection of pre-1972 ing these recordings and result in and pays any remaining unpayable recordings in the enacted version of consistent payment for the use of royalties to the Collective once it is the MMA. these works. up and running.7 Now, under a new section 1401 Efforts to implement the new of Title 17, owners of pre-1972 Willing Buyer, Willing Seller mechanical licensing procedures sound recordings have federal pro- Rate Standard have begun in earnest. On Novem- tection against unauthorized use of Previously, some users of music ber 5, 2018, the Copyright Royalty their recordings that largely mir- under statutory licenses paid statu- Board published a notice in the Fed- rors the scope of federal copyright tory royalties set under a “willing eral Register soliciting comments on protection. That protection will con- buyer, willing seller” standard, “necessary and appropriate modi- tinue for the following periods: while others paid statutory royal- fications and amendments” to its • For recordings published ties set under an older standard regulations following enactment of before 1923, the term of pro- that had been interpreted to allow the MMA.8 Industry groups also tection ends on December 31, the to have begun the process of iden- 2021; set below-market rates. The MMA tifying proposed leaders for the • For recordings published establishes a “willing buyer, willing Collective.9 between 1923 and 1946, the seller” standard for setting royalty term of protection continues rates for mechanical licenses under Federal Protection for Pre-1972 until December 31 of the year section 115 of the Copyright Act18 Sound Recordings 100 years after publication; and for all users of sound record- A separate title of the MMA, • For recordings published ings under the statutory license in referred to as the “Classics Pro- between 1947 and 1956, the section 114 of the Copyright Act.19 tection and Access Act,” or the term of protection continues “Classics Act,” extends copyright- until December 31 of the year Changes to ASCAP and BMI Rate like federal protection to sound 110 years after publication; Court Proceedings recordings fixed before February 15, and For many decades, royalty rates 1972, commonly referred to as “pre- • For all other recordings under performance licenses for 1972 recordings.” Previously, such (including unpublished record- musical compositions issued by the recordings were largely excluded ings and ones published after performing rights organizations from the federal copyright system.10 1956), the term of protection ASCAP and BMI have been sub- Instead, prior to the enactment ends on February 15, 2067.14 ject to oversight by federal judges in of the MMA, pre-1972 record- While protection under section the Southern District of New York, ings were potentially protected 1401 largely mirrors federal copy- pursuant to consent decrees between under state statutory and common right protection, there are important those organizations and the Depart- law until February 15, 2067.11 As differences. For example, formali- ment of Justice dating back to a result, the law across the coun- ties such as registration do not 1941. Proceedings to set rates under try lacked uniformity. For example, apply, but there is a special statu- those consent decrees are com- while most states gave the owner tory process for rights owners to monly referred to as “rate court” of a pre-1972 recording the right record claims to works to be eligi- proceedings. Music publishers to control reproduction and dis- ble to recover statutory damages.15 and songwriters have long sought tribution of its recording, and one Additional provisions address set- changes to certain aspects of those federal district court found that a tlements of state law claims.16 The proceedings. The MMA makes two state statute provided a property Classics Act also includes a special such changes. right in the public performance of statutory process for seeking per- First, assignments of judges to a pre-1972 recording,12 the high- mission for noncommercial uses of hear rate-setting proceedings will est courts of two states determined pre-1972 recordings that are not now be made randomly, on a case- that their state law provided no pub- being commercially exploited.17 by-case basis.20 Previously, one lic performance right in pre-1972 The continuation of state protec- judge had retained jurisdiction over sound recordings.13 Some large digi- tion for pre-1972 recordings when each consent decree for many years. tal music services refused to pay the all other works were brought into The aim of this change is to neutral- artists who created those works for the federal system in the Copy- ize any perceived biases and bring a the use of their recordings. right Act of 1976 was a historical fresh perspective to each rate court The Classics Act was originally anomaly. That anomaly made case. It also means, however, that designed as a response to judicial increasingly less sense as the music the outcomes of proceedings may be decisions finding no public perfor- market migrated away from physi- less predictable. mance right under state law, and cal product distribution and toward Second, the MMA removes a earlier bills would have created only distribution by digital services provision in section 114(i) that pre- a federal public performance right with national reach. Federalizing viously prohibited the rate courts

18 n Communications Lawyer n Winter 2019 from considering evidence of roy- 5. 17 U.S.C. § 115(b)(2)(B), (d)(2) 950 (9th Cir. 2017). As of this writing, alty rates for sound recordings when (B), (e)(15), as amended by Pub. L. No. the case is pending before the California setting rates for public performances 115-264, tit. I, § 102, 132 Stat. at 3678, Supreme Court. of musical compositions. When 3685–86, 3720. 13. See, e.g., Flo & Eddie, Inc. v. Sir- Congress created the digital perfor- 6. 17 U.S.C. § 115(d)(2)(A), as ius XM Radio, Inc., 229 So. 3d 305 (Fla. mance right in sound recordings, amended by Pub. L. No. 115-264, tit. I, § 2017); Flo & Eddie, Inc. v. Sirius XM that provision was intended to pro- 102, 132 Stat. at 3684. Radio, Inc., 28 N.Y.3d 583 (N.Y. 2016). tect musical composition rates from 7. 17 U.S.C. § 115(d)(10), as amended 14. 17 U.S.C. § 1401, as amended by erosion. However, more than twenty by Pub. L. No. 115-264, tit. I, § 102, 132 Pub. L. No. 115-264, tit. II, § 202, 132 years later, it seemed like an unnec- Stat. at 3713–16. Stat. at 3728–3737. essary constraint on the conduct of 8. Modification and Amendment of 15. 17 U.S.C. § 1401(f)(5), as amended rate court proceedings. Regulations to Conform to the MMA, by Pub. L. No. 115-264, tit. II, § 202, 132 83 Fed. Reg. 55,334 (Nov. 5, 2018); see Stat. at 3735. The Copyright Office has Payment of Statutory Royalties also Extension of Comment Period, 83 announced interim rules for the recor- to Producers, Mixers, and Sound Fed. Reg. 60,384 (Nov. 26, 2018). dation of claims to pre-1972 recordings Engineers 9. E.g., Ed Christman, Licens- by rights owners. Filing of Schedules by Yet another title of the MMA is ing Experts Wanted: Now That the Rights Owners and Contact Informa- referred to as the “Allocation for Is Law, tion by Transmitting Entities Relating Music Producers Act” or “AMP Who Will Lay It Down?, Billboard to Pre-1972 Sound Recordings, 83 Fed. Act.” The AMP Act codifies proce- (Oct. 19, 2018), https://www.bill- Reg. 52,150 (Oct. 11, 2018) (to be codi- dures used to pay producers, mixers, board.com/articles/business/8480843/ fied at 27 C.F.R. pt. 201). and sound engineers who partici- music-modernization-act-law-licens- 16. 17 U.S.C. § 1401(d)(2)(B), (e)(1), pated in the creative process that ing-experts-wanted; Nat’l Music as amended by Pub. L. No. 115-264, tit. created a sound recording their Publishers’ Ass’n, Music Publishers: II, § 202, 132 Stat. at 3732, 3733–34. share of section 114 statutory roy- Please Read the Music Moderniza- 17. 17 U.S.C. § 1401(c), as amended alties.21 It also creates a new process tion Act (MMA) Mechanical Licensing by Pub. L. No. 115-264, tit. II, § 202, for such persons who contributed to Collective (MLC) Board Submission 132 Stat. at 3729–32. The Copyright pre-1995 recordings to claim a share Guide: Apply to Serve on the MLC Office has commenced a rulemaking of royalties when they are not able Board and Committees, http://nmpa.org/ proceeding to provide details concern- to obtain a “letter of direction” of music-publishers-please-read-the-music- ing this process. Noncommercial Use of the kind now contemplated by many modernization-act-mma-mechanical- Pre-1972 Sound Recordings That Are producer agreements.22 Finally, the licensing-collective-mlc-board-submis- Not Being Commercially Exploited, 83 AMP Act simplifies the tax treat- sion-guide-apply-to-serve-on-the-mlc- Fed. Reg. 52,176 (Oct. 11, 2018); see ment of situations where a producer -board-and-committees/. also Extension of Comment Period, 83 is paid out of the artist’s share of 10. Sound recordings did not receive Fed. Reg. 57,386 (Nov. 15, 2018). statutory royalties.23 n any protection under federal law at all 18. 17 U.S.C. § 115(c)(1)(F), as until the Sound Recording Amendment amended by Pub. L. No. 115-264, tit. I, § Endnotes of 1971. Sound Recordings Act, Pub. L. 102, 132 Stat. at 3680. 1. Orrin G. Hatch–Bob Goodlatte No. 140, 85 Stat. 39 (1971). Even then, 19. 17 U.S.C. § 114(f)(1)(B), as Music Modernization Act, Pub. L. No. the Sound Recording Amendment of amended by Pub. L. No. 115-264, tit. I, § 115-264, 132 Stat. 3676 (2018). 1971 excluded protections for sound 103, 132 Stat. at 3723. 2. See, e.g., Wixen Music Publ’g, Inc. recordings that were made prior to Feb- 20. 28 U.S.C. § 137(b), as amended by v. Spotify USA, Inc., consolidated with ruary 15, 1972. Id. Some foreign-origin Pub. L. No. 115-264, tit. I, § 104, 132 Ferrick v. Spotify USA, Inc., 16-cv- pre-1972 recordings were “restored” to Stat. at 3726. 08412-AJN (S.D.N.Y.). federal protection during the 1990s. 17 21. 17 U.S.C. § 114(g), as amended by 3. 17 U.S.C. § 115(d)(3), as amended U.S.C. § 104A. Pub. L. No. 115-264, tit. II, § 301, 132 by Pub. L. No. 115-264, tit. I, § 102, 132 11. See 17 U.S.C. § 301(c), prior to Stat. at 3737–3741. Stat. at 3686–88. amendment by Pub. L. No. 115-264. 22. Id. 4. 17 U.S.C. § 115(d)(3)(C)(i)(IV) & 12. Flo & Eddie, Inc. v. Pandora 23. Id. (E), as amended by Pub. L. No. 115-264, Media, Inc., 113 U.S.P.Q.2d 2031 (C.D. tit. I, § 102, 132 Stat. at 3687, 3692. Cal. 2015), question certified, 851 F.3d

Winter 2019 n Communications Lawyer n 19 The Photograph That Broke the Internet…

Continued from page 1 Wilde. He posed Wilde, selected the didn’t want to be spotted taking the costume and other accessories in the photograph. photograph, arranged the light and The photograph was eventually shade, and suggested the “desired screenshotted by Goldman’s friend, expression.”8 posted to Twitter without permission, Burrow-Giles appealed. In the and embedded in news articles cov- Supreme Court, it continued to argue ering the Brady-Durant news. Then that “a photograph being a reproduc- came the copyright lawsuit. The suit tion . . . of the exact features of some is now well-known because, on an natural object or of some person, is early summary judgment motion, a not a writing of which the producer judge surprisingly ruled that the news is the author.”9 The argument was organizations could not hide behind again rejected. Initially, the Court embedding as a workaround to copy- noted that there was “no doubt that right liability. the Constitution is broad enough to But maybe this case should be cover an act authorizing copyright of about something else surprising: The photographs, so far as they are rep- photograph isn’t creative enough to resentatives of original intellectual be subject to copyright. Admittedly, conceptions of the author.”10 On that anyone who took Intro to Intellectual later point, it explained that it “may Property knows that the Copyright be true in regard to the ordinary pro- Act doesn’t demand much creativ- duction of a photograph” that the ity to merit protection, but it does subject, Sarony or one of his assis- photographer is merely creating a require a spark. And maybe under tants had to remove the lens cap for “mechanical reproduction of the that standard, low as it may be, my just the right amount of time so as to physical features or outlines of some photographs or your photographs or not over—or underexpose the glass object animate or inanimate, and Goldman’s, most of them snapped plate (the precursor to film). Making involves no originality of thought” at a moment’s notice and without things even more difficult, there was and that “in such case” there may be thought, aren’t creative enough to be no artificial light, so natural light was “no protection.”11 For that reason, deserving of copyright protection. carefully controlled with blinds on the Court stressed the importance Maybe the vast majority of us are not the large windows in Sarony’s studio that “the existence of those facts of “sharp-shooters” but what Sarony along with mirrors to direct it where it originality, of intellectual production, derisively called “careless sportsmen.” needed to go.3 of thought, and conception on the Sarony sold tens of thousands of part of the author should be proved.”12 The Making of Oscar Wilde the photographs of Wilde. “His face Sarony had carried that eviden- Sarony made Oscar Wilde famous. is well known to our readers through tiary burden.13 Based on the lower In January 1882, Wilde sat for a ses- the thousands of pictures that have court’s findings of fact that he posed sion with Sarony in his Union Square been scattered over the county,” Wilde, selected and arranged his cos- studio in New York City. Sarony had one Ohio reporter remarked during tume and other accessories, controlled just paid Wilde’s friend, the French Wilde’s year-long visit to the States the light and shade, and suggested an stage actress Sarah Bernhardt, $1,500 in 1882.4 Almost overnight, Wilde expression, the Court found that the (around $40,000 today) to sit—a com- became a superstar. photograph demonstrated sufficient mon practice for photographers at the Seeking to capitalize on the popu- originality to be covered by copy- time who turned around and sold the larity of Wilde, the Ehrich Brothers right.14 Oscar Wilde No. 18 was “an photographs as trading cards. Wilde, department store commissioned original work of art, the product of not yet a name in America, sat for Burrow-Giles to print 85,000 cop- plaintiff’s intellectual invention.”15 free.2 ies of Oscar Wilde No. 18 stamped Although Burrow-Giles lost, it The session resulted in twenty- with “Compliments of Ehrich did seem to convince the Court that seven photographs. Photography, then Bros.”5 Sarony sued Burrow-Giles at least some class of photographs is a new technology, was different back for infringement.6 In a short opinion, not necessarily “original intellectual then. (The first rudimentary photo- the New York circuit court rejected conceptions of the author.”16 Photo- graph of a person had been taken Burrow-Giles’s argument that “a pho- graphs, the Court noted, were covered less than 50 years earlier in Paris.) tographer is not an author” for the by the Copyright Act but only to the Cameras didn’t have a mechanical purposes of copyright.7 According extent they are original. It juxtaposed shutter, let alone an automatic one. to the court, Sarony was the author those original photographs with ones So in addition to posing, staging, of “a useful, new, harmonious, char- that are merely “mechanical” copies and coaxing an expression from the acteristic, and graceful picture” of of the real world.17

20 n Communications Lawyer n Winter 2019 Courts at the time read Bur- the prints from the Courier Litho- He added, dubiously, that the novel row-Giles as requiring proof of graphing Company. Apparently, “etchings of Goya” “or the paint- originality—even in Sarony’s age Wallace was something of a cheap- ings of Manet” might not have been of photography. In 1896, for exam- skate and when he ran out of copies considered “original” had judges had ple, one of Sarony’s contemporaries, of the ads, he had Donaldson Lith- their say.27 Nose turned up, he went Benjamin J. Falk, sued for the repro- ographing Co. print more without on to say that permitting judges to duction of a photograph of Loie Courier’s permission. decide what is copyrightable would Fuller, a pioneer of modern dance.18 exclude “pictures which appealed to a The court dismissed the lawsuit, find- public less educated than a judge.”28 ing that Falk failed sufficiently to Holmes’ sweeping rhetoric about plead originality: “[O]ne may be the personality innate in authorship was author of a photograph of a person a striking departure from Burrow- or natural object without intellectual Giles. It collapsed the two prongs of effort involving invention or origi- the originality requirement (inde- nality.” Thus, to be an author of a pendent creation and creativity) into copyrighted photograph, the court a single question: whether the work explained, “one must necessarily have was an independent creation, and, so injected some intellectual effort into long as it was, it was subject to pro- the production.” Yet, Falk only pled Today, the case, Bleistein v. Don- tection. It was simply unnecessary, that he was “the author, inventor, aldson Lithographing Co., is cited under a broad reading of Bleistein, designer, and proprietor of [the] pho- as an early commercial speech case. to consider creativity because every tograph.” That was not enough. The main argument that Donaldson work contains a part of the author’s Where Falk specified what he did advanced below was that works that personality. Maybe, then, it’s not to create the photograph, however, were advertisements had no “intrin- surprising that Holmes mentioned he had better luck. In one case, Falk sic merit or value” and thus did not Burrow-Giles just once. explained: “I tried to produce an “promote the progress of science and On the other hand, maybe Holmes ideal portrait of the Greek maiden the useful arts.”21 The newly minted didn’t think Burrow-Giles was rele- of the play. I posed [the woman] . Justice Holmes, writing for six others, vant. The work at issue in Bleistein, . . , arranged the illumination and emphatically rejected that idea: “A after all, wasn’t a photograph—it was the background, . . . and secured the picture is none the less a picture and a drawing. Holmes himself seemed expression . . . and, outside of that, none the less a subject of copyright focused on drawing, quoting John did the mechanical work of attend- that it is used for an advertisement.”22 Ruskin’s Elements of Drawing to dem- ing to the camera, focusing, and But he didn’t stop there. Holmes onstrate the skill required to draw.29 exposing the image.”19 Based on that spent the rest of the opinion riff- And he made reference not to the description, the court held that the ing on originality, concluding that photographs of Sarony but to the photograph was original. It was as creativity wasn’t a requirement for “paintings” of Manet and “etchings” much a “mental conception of the copyright so long as the work was an of Goya. Whether Holmes intended character” produced “by the use of independent creation. Although there his opinion to leach out into classes lights and shades, and various acces- was testimony that the plaintiff had of works beyond drawings, Bleistein sories” as Sarony’s Oscar Wilde No. “composed [the illustrations] from did soon metastasize. 18. hints or description, not from sight By the end of the century then, of performance,” Holmes said that After the Circus courts were requiring photographers even if they had been copies of the The Court’s opinion in Bleistein, to demonstrate independent creation real world composed from sight, they which even Holmes admitted he just and creativity for a photograph to be still would be protectable because the “fired off,” reads a bit like a late-night copyrightable. If the author failed to drawings could not be divorced from missive composed after a drink or provide that proof, a loss was inevita- their author.23 “Personality always two. Nevertheless, it went on to have ble, but a new justice on the Supreme contains something unique,” Holmes a drastic effect on how lower courts Court was about to change that. explained. “[A] very modest grade of enforced the originality requirement art has in it something irreducible, for photographs—and it’s mostly Cue the Copyright Circus which is one man’s alone.”24 Judge Learned Hand’s fault.30 Some 20 years after Burrow-Giles, the Holmes also didn’t want judges In 1921, Hand extended Bleistein’s Supreme Court was asked to consider deciding what was art and what logic to photographs. In Jewelers’ Cir- the copyrightability of chromolitho- wasn’t (or, as he later put it, what was cular Pub. Co. v. Keystone Pub. Co., graphs or, as the Court characterized “low art” and what was “high art”).25 he declared that “no photograph, them, “pictorial illustrations.”20 Those “It would be a dangerous undertak- however simple, can be unaffected by illustrations were made to advertise ing for persons trained only to the law the personal influence of the author, the Wallace Circus—the main com- to constitute themselves final judges and no two will be absolutely alike.”31 petitor of Ringling’s The Greatest of the worth of pictorial illustrations, (It seemed lost on Hand that pho- Show on Earth. Initially, the Circus’s outside of the narrowest and most tographs of the same object, while owner, E.B. Wallace, commissioned obvious limits,” Holmes cautioned.26 distinct, may both lack creativity.)

Winter 2019 n Communications Lawyer n 21 At any rate, Hand didn’t need to his photograph was “his own original specifically, names, towns, and num- rely on his sweeping pronouncement conception” because he “select[ed] the bers, in alphabetical order. Feist was because he concluded that there was position and place from which to take a publishing company. It created no “personality” requirement at all said picture and the moment when area-wide telephone books that cov- for photographs under the 1909 Act. the light, shade, cloud and sky effects ered substantially larger swaths of the (The Supreme Court would clarify upon said New York Public Library region than individual providers. It some seven decades later that Hand and its surroundings combined to bought the rights to use the informa- was wrong on this latter point too.32) make a new, harmonious, and artistic tion in ten of the eleven providers in picture.” northwest Kansas, but Rural refused The court, however, refused to to sell. Not to be deterred, Feist took assume that the photograph was the information anyway using 1,309 per se creative. In fact, it expressly entries that were identical to Rural’s. rejected the allegation that the pho- Rural sued. tograph was a “new harmonious, and Feist presented a problem for the artistic picture” as conclusory. So it Court because, as O’Connor pointed went on to consider the creative ele- out, facts like names, addresses, and ments of photograph, many of which telephone numbers are not subject to were pleaded. After recounting how copyright, but compilations of those the photographer used “light, shade, facts may be. Noting the “undeniable [and] the position” of the animate and tension” there, O’Connor admitted inanimate objects, including timing that “[c]ommon sense tells us that the photograph well to capture “artis- 100 uncopyrightable facts do not tic” positions of the subjects in the magically change their status when Although Hand’s language was scene, the court concluded that the gathered together in one place.”39 The dicta, other courts adopted it. In “work . . . comes well within what the “key” to making sense of this ten- Time Inc. v. Bernard Geis Associ- authorities have held to be the subject sion, O’Connor explained, was in ates, the court found that frames of matter of copyright.” how we think about original works of the Zapruder film showing President In the end, the court in Pagano was authorship.40 Kennedy being assassinated were faithful to Burrow-Giles by requiring “Original,” in the copyright con- protected as a matter of law.33 After proof of creativity, but Pagano was text, had two distinct requirements, recounting Hand’s opinion, including largely relegated to the jurisprudential she said. First, it meant that the work erroneously adopting Hand’s con- trash heap. Hand’s opinion in Jewelers must be independently created by the clusion that the 1909 Act protected Circular Pub. Co., however, went on author.41 Second, O’Connor said, it photographs “without regard to the to be vastly influential and was cited meant that the work also must pos- degree of ‘personality’ which enters frequently, even outside of the Second sess a minimal degree of creativity.42 into them,” the court held that the Circuit. Eventually, it was ensconced In other words, some works may be frames were per se copyrightable.34 as gospel by Professor Nimmer, who independent creations but not creative Maybe disquieted by its own con- said it had “become the prevailing (a short phrase, for example), while clusion, the court still went on to view.”37 others may be creative but nonethe- consider whether the frames had less not independent creations (a hallmarks of creativity: “Zapruder Feist and the Constitutional highly technical copy of the Mona selected the kind of camera (mov- Requirement of Originality Lisa). ies, not snapshots), the kind of film A century after Burrow-Giles, tele- But what did creativity mean? It (color), the kind of lens (telephoto), phone books, of all things, forced didn’t mean novelty, O’Connor wrote. the area in which the pictures were the Supreme Court to reassess the Two poets could write the same poem to be taken, the time they were to be originality requirement. In that case, ignorant of the other and neither taken, and (after testing several sites) Feist Publications, Inc. v. Rural Tele- would be novel, but both would be the spot on which the camera would phone, Justice O’Connor, writing for copyrightable.43 Pulling from Bur- be operated.”35 a unanimous Court, rejected Holmes’ row-Giles, O’Connor pointed out, Not all courts though were so sweeping language in Bleistein. Inde- however, that the Court had long quick to adopt Hand’s Cartesian pendent creation alone, O’Connor “stressed the importance of requir- view of copyright: I am a photograph; explained, was insufficient to merit ing an author who accuses another therefore, I am creative. copyright protection.38 For a work of infringement to prove ‘the exis- In 1916, just over a decade after to be “original,” it also had to be tence of those facts of originality, of Bleistein but before Hand’s exten- creative. intellectual production, of thought, sion of Bleistein in Jewelers Circular Rural was a telephone service and conception.’”44 And relying on Pub. Co., a district court in Pagano provider for northwest Kansas. In The Trade-Mark Cases, she added v. Charles Beseler Co. considered exchange for its monopoly, Kansas that creativity required evidence of whether a photograph of the New required Rural to issue a telephone the “fruits of intellectual labor,” i.e., York Public Library was subject to book. For Rural, that meant print- the use of the “creative powers of the copyright.36 The plaintiff alleged that ing subscriber information on file, mind.”45 Creativity, she said, was not

22 n Communications Lawyer n Winter 2019 just a requirement of copyright law; it for the proposition that all works are courts returned to assessing the cre- was the “touchstone.”46 necessarily creative but for the oppo- ative choices photographers made. At Applying these principles, site proposition—that some works are issue in Oriental Art Printing, Inc. v. O’Connor concluded that facts are not.57 Although O’Connor didn’t lin- Goldstar Printing Corp., for example, not subject to copyright because they ger on Bleistein, commentators have were several photographs of plates of “do not owe their origin to an act of concluded that her opinion for the Chinese food that were used on res- authorship”: “The distinction is one Court “effectively . . . overruled” it by taurant menus.65 Relying on Feist, between creation and discovery.”47 A demanding both independent creation the court explained that “this is the census taker, for example, holds no and creativity.58 rare case where the photographs con- copyright in the data he collects. tained in plaintiffs’ work lack the Compilations of those unpro- Creativity After Feist creative or expressive elements that tected facts, however, “may possess After Feist, challenges to the copy- would render them original works the requisite originality” because the rightability of photographs ticked subject to protection under the Copy- compilation itself may be an inde- up. While not all came out the same right Act.”66 Indeed, the photographs pendent creation and creative.48 In way, taken together, they suggest the “were not designed with creativity or addition to the facts, an author of slow death of Hand’s per se rule that art in mind.”67 The plaintiff could not a compilation “typically chooses photographs must be creative. As even provide a “description of either which facts to include, in what order then–Tenth Circuit Judge Gorsuch in the lighting or angles employed, or to place them, and how to arrange deciding a case of infringement over any desired expression.”68 Instead, the the collected data so that they may a “wire frame” representation of an photographs served a “purely utilitar- be used effectively by readers.”49 But automobile wrote: “It is . . . not the ian purpose: to identify for restaurant even then, not all choices made by a case, . . . that ‘no photograph, how- customers those dishes on a take-out compiler will necessarily be creative: ever simple, can be unaffected by the menu.”69 “These choices . . . , so long as they personal influence of the author, and are made independently by the com- no two will be absolutely alike,’ that piler and entail a minimal degree of photographs (or any other works, for creativity, are sufficiently original . . that matter) are per se protectable.”59 . .”50 Most of these post-Feist cases To put a fine point on it, O’Connor were brought by professional photog- explained that an author like Pres- raphers. Despite the status of these ident Ford in Harper & Row, contemporaries of Sarony (admit- Publishers, Inc. v. Nation Enterprises tedly of varying degrees), Feist could not protect the “bare historical pushed courts to question whether facts” underlying his autobiography— the photographs were creative enough a compilation of sorts in its own to merit protection. And, at least in right—but could protect his “subjec- some cases, they concluded that they Following suit, in Custom Dynam- tive descriptions and portraits” of were not. ics, LLC v. Radiantz LED Lighting, those facts.51 But where the author In SHL Imaging, Inc. v. Arti- Inc., the District Court for the East- adds no personal expression of facts san House, Inc., a case concerning ern District of North Carolina in the world, “but rather lets the facts the originality of product shots held that product shots of various speak for themselves, the expressive of mirrored frames, Judge Pau- automotive parts were likely not suffi- element is more elusive.”52 This “fact/ ley of the Southern District of New ciently creative to be protected.70 The expression dichotomy,” O’Connor York rejected Hand’s per se rule.60 court threw out altogether Hand’s noted, “limited severely the scope of He explained that, although Bur- idea that all photographs are sub- protection in fact-based works.”53 row-Giles ultimately lost its battle, ject to copyright. Instead, it adopted Based on this, O’Connor held that the Supreme Court “did not reject its own categorical rule that “there Rural’s alphabetical compilation was [its] attack [on the copyright of the is no ‘creative spark’ involved in a not sufficiently creative and thus not photographs] entirely” but rather purely descriptive picture of a prod- original. The creativity requirement, “observ[ed] that a lack of originality uct.”71 The court emphasized that the while not a “stringent standard,” may be ‘true in regard to the ordi- photographs at issue were “purely could not be satisfied by that which is nary production of a photograph.’”61 utilitarian” in their depiction of the “so mechanical or routine to require It was only that Oscar Wilde No. 18 product and compared the prod- no creativity whatsoever”: The “stan- “was no ‘ordinary’ photograph.”62 uct shots to the insufficiently creative dard of originality is low, but it does And, although Judge Pauley recog- arrangements of “names alphabeti- exist.”54 Rural’s compilation, far from nized the “broad sweep” of Holmes’ cally in a whitepages directory.”72 meeting the “minimal degree of cre- decision in Bleistein, he made clear The SHL Imaging, Inc. court, while ativity” required,55 was “entirely that Feist had “augmented” Bleis- rejecting a per se rule that all photo- typical,” “garden variety.”56 tein by requiring a sufficient “spark” graphs were creative, went on to find O’Connor cited Bleistein just once of creativity.63 Under this augmented the pictures of the mirrored frames (much as Holmes cited Burrow-Giles test, “no work is per se protectable.”64 to be adequately creative. Recogniz- just once). She did so, ironically, not Without a per se rule to lean on, ing that creativity could be found in

Winter 2019 n Communications Lawyer n 23 camera, lens, film, shutter speed, and Two years later, Coors Brewing may support an argument that a pho- filter choice, the court cautioned that was hoping to create an ad cam- tograph is creative. the question was not the potential cre- paign targeting young black men. On the first point, Judge Kaplan ativity of the medium, but rather how One advertising agency created a sam- explained that the rendition of a pho- “to gauge [creativity] as one moves ple image for a billboard and “used a tograph could be sufficiently creative from sublime expression to simple [cropped] version of the Garnett Pho- to merit protection. By rendition, he reproduction.”73 The works there tograph and superimposed on it the meant those choices relating to “angle were sufficiently creative because the words ‘Iced Out’ . . . and a picture of [the] shot, light and shade, expo- plaintiff purposefully “use[d a] sin- of a can of Coors Light beer.”78 It sure, effects achieved by means of gle light source with a ‘reflector to fill used the photograph with permission. filters, developing techniques,” so long out the shadows’ in order to ‘give a Once the billboard was approved, as they evinced in the photograph chiaroscuro effect,” “employed artistic rather than license the photograph for some degree of creativity.86 judgment in determining the amount further use, the agency hired a differ- Timing also could be the basis of of shadowing for each individual ent photographer to recreate the idea creativity. Reaching back to the 1916 frame that would emphasize the detail of the Garnett photograph: namely, decision in Pagano, Judge Kaplan without obscuring it,” and “creat[ed] “the torso of a muscular black man, explained that it “undoubtedly a ‘unique light design on a reflector albeit a model other than Garnett, requires originality to determine just that would appear in the mirror with- shot against a cloudy backdrop.”79 when to take the photograph, so as to out showing any part of the room or Mannion sued, asserting that the bring out the proper setting for both [himself] in the mirror.’”74 That was copycat photograph infringed upon animate and inanimate objects.”87 enough.75 his copyright in the original. In deny- In Pagano, after all, the photogra- ing summary judgment to both the pher caught the “men and women in defendant and the plaintiff, the court not merely lifelike, but artistic, posi- undertook an extended discussion tions.”88 A more modern example of the originality of the photo- offered by the court was the Times graph. But unlike the courts in SHL Square photograph of a sailor kissing Imaging, Inc., Oriental Art Print- a woman on V.J. Day, “the memo- ing, and Custom Dynamics, LLC, rability of which is attributable in Judge Kaplan concluded that listing significant part to the timing of its “potential components of a photo- creation.”89 graph’s originality” was “somewhat Finally, on the third point, a pho- unsatisfactory.”80 tographer’s creation of the subject The problem, he explained, was could be creative. As an example, that “courts have not always distin- Judge Kaplan used the “contrived guished between [1] decisions that scene of the photographer’s acquain- a photographer makes in creating tance . . . and his wife on a park a photograph and [2] the original- bench with eight puppies on their ity of the final product.”81 As Judge laps” at issue in Rogers v. Koons.90 Kaplan put it, “[d]ecisions about Because the author created the sub- film, camera, and lens, for example, ject itself, protection would extend to often bear on whether an image is “attempt[s] to replicate precisely . . . original,” but “that a photographer the content of the photograph.”91 made such choices does not alone Turning back to the Garnett pho- make the [resulting] image original.”82 tograph, Judge Kaplan concluded Looking for a Test for Creativity That must be the case, he explained, that there “can be no serious dis- It wasn’t until 2006 that a court finally because otherwise courts risk grant- pute that it was an original work.”92 stepped away from the laundry list ing copyright protection based on the The rendition in the purposeful use of choices about lenses and shadow discredited sweat-of-the-brow doc- of an “unusual angle” and “dis- and angles to try to bring some cer- trine. Rather, protection “derives from tinctive lighting” strengthened “the tainty to the creativity inquiry. In the features of the work itself, not the photograph’s originality.”93 More- that case, Mannion v. Coors Brewing effort that goes into it.”83 over, Mannion’s orchestration of the Co., freelance photographer Jonathan Pulling from a decision he had scene—the entire scene: the plain Mannion was hired by SLAM maga- written years earlier, Judge Kaplan clothes, the hands folded across the zine to photograph basketball player turned to UK law to create a more waist, the jewelry—added to the origi- Kevin Garnett to run along a feature definitive test for creativity.84 Specifi- nality in the creation of the subject.94 article about the athlete.76 Mannion cally, he borrowed a three-part test The existence of a copyright eventually met with Garnett and cre- from a British copyright treatise, isn’t determined based on whether ated “a three-quarter-length portrait which contended that a photograph a Napoleon Sarony or a Jonathan of Garnett against a backdrop of may be sufficiently creative in its (1) Mannion or a Justin Goldman took clouds with some blue sky shining rendition, (2) timing, and/or (3) cre- a photograph. Copyright does not through.”77 ation of the subject.85 Each, he noted, distinguish between the professional

24 n Communications Lawyer n Winter 2019 and the amateur, or between high art cannot be considered an aspect of and low art. But, as Judge Kaplan originality, unless a photographer explained, creativity is determined by puts it to use in some nontrivial way.100 the degree of the effect that choices as Were it otherwise, creativity, through to rendition, timing, and the creation timing, would equate to happenstance of the subject have in a photograph. and not any “intellectual produc- For that reason, even professional tion,” “thought,” or intent.101 Even photographers may create garden Judge Kaplan, relying on the scene variety photographs that are not outside the New York Public Library copyrightable—no matter how much in Pagano, recognized that timing was work they put in before they click not protectable simply because the the shutter. And if even professional photograph was taken at that time photographers can fail to clear this but because of the effect that the tim- hurdle, so too can Justin Goldman. ing was put to use by Pagano, i.e., to capture the “artistic[] positions” of The Goldman Photograph Isn’t the pedestrians.102 Copyrightable The kiss on V.J. Day example Goldman’s photograph isn’t original. raised by Judge Kaplan proves the Although his registration provides point. Alfred Eisenstaedt’s photo- prima facie evidence of originality, graph wouldn’t be protectable simply discovery will no doubt reveal what because he was at the right place at choices Goldman made when he took the right time. It’s protectable because the photograph.95 If Goldman can- he used timing to his advantage to not explain how those choices are gain a particular effect in the pho- sufficiently original—and for the rea- tograph. As he described it, “I was sons set out below it seems unlikely he with point-and-shoot functional- walking through the crowds on V-J will—then the defendants may be able ity. In other words, it seems unlikely Day, looking for pictures. I noticed a to show a lack of what Burrow-Giles that Goldman put any thought at all sailor coming my way. He was grab- called those requisite “facts of origi- into the rendition of the photograph, bing every female he could find and nality, of intellectual production, of equipped with a smartphone camera kissing them all—young girls and thought, and conception on the part that automatically made all sorts of old ladies alike.”103 At that point, he of the author.”96 decisions that Sarony had to perfect. explained, “I noticed the nurse, stand- As an initial matter, Goldman Goldman also did not control ing in that enormous crowd. I focused did not create the subject of the shadows. The photograph was taken on her, and just as I’d hoped, the photograph, and, thus, his photo- outside in the sun. In fact, the only sailor came along, grabbed the nurse, graph cannot be protected on those aspect of rendition that is anywhere and bent down to kiss her.”104 And grounds. Unlike Sarony, who pains- detectible in the photograph is the then he took the picture. takingly posed Wilde against an angle. Apparently when Goldman In Goldman’s case, it doesn’t arranged background, Goldman took the photograph, he did so at an appear that he made any use of simply “noticed Tom Brady, Danny angle because he didn’t want Brady timing like that. Goldman offered Ainge, and others on the street” and seeing him take the photograph. But nothing in his pleading or in his sum- “took a photograph of them.” That that angle isn’t the product of a cre- mary judgment declaration regarding is not enough to claim protection for ative choice, it’s the unremarkable how he used time except in the most the subject itself. As the First Circuit byproduct of a utilitarian one that basic sense: Both he and Brady were explained, “Where the photographer copyright does not protect. In sum, in the same town around 2:30 p.m. is uninvolved in creating his sub- his rendition is far less than that at one day and he took a photo. But if ject, that subject matter—whether issue in Oriental Arts, Inc., where that alone is enough, if timing is suf- a person, a building, a landscape or the court found creativity lacking, ficiently creative in the broadest sense, something else—is equivalent to an and far, far less than at issue in SHL then any photograph would be pro- idea that the law insists be freely avail- Imagining, Inc., where the court found tectable because it was taken at a able to everyone.”97 sufficient creativity. particular time.105 But as now-Jus- Goldman’s photograph also lacks Timing is also a problem for tice Gorsuch cautioned, the Supreme any meaningful rendition. While it’s Goldman. While Judge Kaplan char- Court’s jurisprudence makes clear currently impossible to know what acterized timing as “being at the right that not all photographs are per se Goldman will ultimately claim his place at the right time,” the timing protectable.106 intentions were when taking the pho- must be something more than just For all these reasons, Goldman’s tograph, we can make some educated that pithy phrase. As David Nimmer photograph, taken as it was with- guesses.98 Goldman likely noticed observed, “it would seem that intent out regard to creation of the subject, Brady, as he has said, then passed him is a necessary element of the act of rendition, and timing, is not copy- on the sidewalk and took the photo- authorship.”99 Timing alone thus can- rightable. It is, as Justice O’Connor graph on his smartphone, equipped not be an element of authorship and explained, nothing more than an

Winter 2019 n Communications Lawyer n 25 amalgam of “bare historical facts” photographers, there is no reason the development of photography as art, and in no way contains any “subjec- to believe that the next wave won’t see Haight Farley, The Lingering Effects tive descriptions and portraits” of be photographs taken by random of Copyright’s Response to the Invention 107 those facts. Because it “lets the facts people, on the street, with their smart- of Photography, 65 U. Pitt. L. Rev. 385 speak for themselves,” the photograph phones (especially because it’s already (2004). is not subject to copyright protection. begun).110 But whether professional or 14. Burrow-Giles Lithographic Co., 111 Were there any doubt, one need look not, it is worth challenging plaintiffs U.S. at 60. no further than the caption Goldman on originality to stem the rising tide 15. Id. wrote for the photograph: “Celt- of vexatious infringement suits. 16. Id. at 58. ics and Tom Brady roll thru to get I have little doubt that most pho- 17. Id. at 59–60. Durant #Hamptons.” Goldman cared tographs—even as the production of 18. Falk v. City Item Printing Co., 79 about sharing the fact that Brady was them has dramatically increased— F. 321 (C.C.E.D. La. 1897). there; the photograph was proof of will be found to be original even if 19. Falk v. Donaldson, 57 F. 32, 34 that fact, not a creative endeavor. defendants start fighting on this front. (C.C.S.D.N.Y. 1893); see also, e.g., Falk v. Courts have, historically, been afraid Brett Lithographing Co., 48 F. 678, 679 The Age of the Ordinary Photograph to distinguish between high art and (C.C.S.D.N.Y. 1891) (same). It’s estimated that more photographs low art. Yet, it should be defense law- 20. Bleistein v. Donaldson Lithograph- are taken every two minutes than yers’ mission to remind courts that ing Co., 188 U.S. 239 (1903). were taken in the entirety of the 1880s creativity has nothing to do with dis- 21. Courier Lithographing Co. v. Don- when Sarony took his photograph of tinguishing good art from bad art. aldson Lithographing Co., 104 F. 996 (6th Wilde. By 2020, there will be nearly Rather, it asks courts only to decide Cir. 1900). 3 billion smartphone users walking what photographs are “entirely typi- 22. Bleistein, 188 U.S. at 250. around the world snapping photo- cal” and what photographs are not. 23. Id. at 249–50. graphs here and there.108 If 2017 is And line drawing, whether in negli- 24. Id. at 250. any indication, where it’s estimated gence or copyright or any other area, 25. Oren Bracha, Commentary on Ble- that 1.2 trillion photographs were is exactly what the law requires courts istein v. Donaldson Lithographing Co. taken, the number of photographs by to do. n (1903), Primary Sources on Copyright 2020 will trend toward 2 trillion.109 (1450–1900) (Lionel Bently & Martin Hundreds of millions more photo- Endnotes Kretschmer eds., 2008), htttp://www.copy- graphs are taken today than Hand 1. Gilson Willets, The Art of Not Pos- righthistory.org. could have ever imagined when he ing—An Interview with Napoleon Sarony, 26. Bleistein, 188 U.S. at 251. declared that no photograph will ever 10 Am. Annual of Photography & Pho- 27. Id. lack creativity. If we are not in the tographic Times Almanac 188 (1896). 28. Id. at 252. age of, as the Supreme Court put it, 2. See generally David M. Friedman, 29. Id. at 250. the “ordinary production of a photo- Wilde in America: Oscar Wilde and the 30. See Bracha, supra note 25; see also graph,” then it’s hard to know when Invention of Modern Celebrity (2014). Craig Joyce & Tyler T. Ochoa, Reach we ever would be. 3. Id. out and Touch Someone: Reflections on Under Burrow-Giles, Feist, and 4. Oscar Wilde, Oscar Wilde in the 25th Anniversary of Feist Publica- Mannion, not all of these billions of America: The Interviews 141 (2010). tions, Inc. v. Rural Telephone Service Co., photographs—taken without thought 5. Burrow-Giles Lithographic Co. v. 54 Hous. L. Rev. 257, 270 (2016–2017) by smartphone users around the Sarony, 111 U.S. 53, 54 (1884). (“Bleistein was widely interpreted as low- world—should be considered suf- 6. Wilde apparently was unaware of the ering the standard of originality that had ficiently creative to merit copyright lawsuit, and a right of publicity wouldn’t been established in the late 18th-century protection. Goldman’s photograph is be recognized in New York for twenty cases.”). a perfect example. It’s “entirely typi- years. Upon learning of Sarony’s lawsuit, 31. 274 F. 932, 934 (S.D.N.Y. 1921). cal,” “garden variety,” run-of-the-mill; Wilde was incensed at Sarony, so much 32. See Feist Publ’ns, Inc. v. Rural Tel. it is nothing more than all of these so that he worked it into The Canter- Serv. Co., 499 U.S. 340, 359–60 (1991). things. In the end, over a hundred field Ghost, where he recounts a character 33. 293 F. Supp. 130 (S.D.N.Y. 1968); years of case law demonstrate that “amusing himself by making satirical see also Cleland v. Thayer, 121 F. 71 (8th being so obviously ordinary is simply remarks on the large Saroni photographs.” Cir. 1903) (noting, in light of Bleistein, not enough for a copyright to attach. Oscar Wilde, The Canterfield Ghost that the photographs at issue were copy- Reinvigorating the requirement (1887); see also Friedman, supra note 2. rightable without considering creativity). of originality in an age of billions of 7. Sarony v. Burrow-Giles Lithographic 34. The court in Time Inc. charac- photographs is important doctrinally, Co., 17 F. 591, 592 (C.C.S.D.N.Y. 1883). terized Judge Hand as recognizing that but it is doubly important in a world 8. Burrow-Giles Lithographic Co., 111 Bleistein “held” that “no photograph” was where copyright trolls have made a U.S. at 54. unoriginal. But, of course, Bleistein wasn’t cottage industry out of alleged trifling 9. Id. at 56. a case about photographs. infringements of everyday photo- 10. Id. at 59 (emphasis added). 35. Other courts similarly noted the graphs. While many of the copyright 11. Id. per se rule, but nevertheless went on to trolls have limited their cases to 12. Id. at 59–60 (emphasis added). say why the work in question was creative. photographs taken by professional 13. For an expanded discussion of See, e.g., Vitaphone Corp. v. Hutchinson

26 n Communications Lawyer n Winter 2019 Amusement Co., 28 F. Supp. 526, 528 65. 175 F. Supp. 2d 542 (S.D.N.Y. Butterworths 2000). (D. Mass. 1939) (“[T]hese pictures were 2001). 86. Id. at 452. ‘shorts’ and the subjects were comedy, but 66. Id. at 546. 87. Id. at 452–53. they had a story, not of great intellectual 67. Id. at 547. 88. Id. at 453. value, to be sure, but it must be admitted 68. Id. 89. Id. they showed originality.”). 69. Id. Although the court discussed 90. Id. (citing Rogers v. Koons, 960 36. 234 F. 963 (S.D.N.Y. 1916); see also the “purpose” of the photograph as util- F.2d 301 (2d Cir. 1992)). Gross v. Seligman, 212 F. 930, 931 (2d itarian, Bleistein held that purpose (at 91. Id. at 454. Cir. 1914) (discussing “exercise of artistic least commercial purpose) was irrelevant 92. Id. at 454–55. talent” as evidenced by “pose, light, and to the originality inquiry. See Bleistein v. 93. Id. shade, etc.”). Donaldson Lithographing Co., 188 U.S. 94. Id. at 455. 37. L.A. News Serv. v. Tullo, 973 F.2d 239, 251 (1903). Nevertheless, it’s bet- 95. Hasbro Bradley, Inc. v. Sparkle 791, 794 (9th Cir. 1992) (citing 1 Melville ter to understand the court’s utilitarian Toys, Inc., 780 F.2d 189 (2d Cir. 1985). B. Nimmer & David Nimmer, Nimmer point as a proxy for the lack of the hall- 96. Burrow-Giles Lithographic Co. v. on Copyright (Nimmer) § 2.08[E][1], at marks of creativity courts normally look Sarony, 111 U.S. 53, 59–60 (1884). 2-126.3 (1992 ed.)). for like angle, light, shadow, etc. See Ori- 97. Harney v. Sony Pictures Television, 38. 499 U.S. 340 (1991). ental Art Printing, Inc., 175 F. Supp. 2d at Inc., 704 F.3d 173 (1st Cir. 2013) (citing 39. Id. at 345. 547–48 (comparing the utilitarian nature Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 40. Id. of the photograph to those in cases like 499 U.S. 340, 349–50 (1991)); see also Int’l 41. Id. Burrow-Giles and Pagano and their dis- News Serv. v. Associated Press, 248 U.S. 42. Id. cussions of creative choices made by the 215, 254 (1918) (Brandeis, J., dissenting) 43. Id. at 345–46. photographer). As the Copyright Office (“The mere record of isolated happenings, 44. Id. at 347–48. has explained, “The Office may register a whether in words or by photographs not 45. Id. at 346 (quoting Trade-Mark photograph of food if the photographer involving artistic skill, are denied [copy- Cases, 100 U.S. 82, 94 (1879)). exercised some minimal level of creativ- right] protection.”). 46. Id. at 347. ity in taking the picture.” See Compendium 98. Watts v. Indiana, 338 U.S. 49, 52 47. Id. of U.S. Copyright Office Practices § 312.1 (1949) (courts “should not be ignorant as 48. Id. at 348. (2017) (emphasis added). judges of what [they] know as men [and 49. Id. 70. 535 F. Supp. 2d 542 (E.D.N.C. women]”). 50. Id. (emphasis added). 2008). 99. David Nimmer, Copyright in the 51. Id. (citing Harper & Row, Publish- 71. Id. at 549. Dead Sea Scrolls: Authorship and Origi- ers, Inc. v. Nation Enter., 471 U.S. 539, 72. Id. (“there is no ‘creative spark’ nality, 38 Hous. L. Rev. 1, 204 (2001). 556–57, 563 (1985)). involved in a purely descriptive picture of 100 Cf. Trade-Mark Cases, 100 U.S. 52. Id. at 349. a product”). 82, 94 (1879) (explaining that, unlike 53. Id. at 350. 73. SHL Imaging, Inc. v. Artisan trademarks, the creativity requirement of 54. Id. at 362. House, Inc., 117 F. Supp. 2d 301, 310 copyright demands some “work of the 55. Id. (S.D.N.Y. 2000). brain”). 56. Id. 74. Id. 101. Alan R. Durham, The Random 57. Id. at 359 (citing Bleistein v. Don- 75. See also Schrock v. Learning Muse: Authorship and Indeterminacy, 44 aldson Lithographing Co., 188 U.S. 239, Curve Int’l, Inc., 586 F.3d 513 (7th Cir. Wm. & Mary L. Rev. 569, 574 (2002) 251 (1903)). 2009) (finding sufficient originality after (“Wholly indeterminate works have been 58. See Joyce & Ochoa, supra note 30, expressly considering the issue); E. Am. held uncopyrightable because some cog- at 308. Trio Prods. v. Tang Elec., 97 F. Supp. 2d nitive component essential to an original 59. Meshwerks, Inc. v. Toyota Motor 395 (S.D.N.Y. 2000) (same); Decker Inc. work of authorship is missing: mental Sales USA, Inc., 528 F.3d 1258, 1263 v. G&N Equip. Co., 438 F. Supp. 2d 734 effort, intention, personality, or meaning.” n.5 (10th Cir. 2008). But see Ets-Hokin (E.D. Mich. 2006) (same). (emphasis added)). v. Skyy Spirits, Inc., 225 F.3d 1068, 1076 76. 377 F. Supp. 2d 444 (S.D.N.Y. 102. This understanding of timing is (9th Cir. 2000) (endorsing, despite Feist, 2005). in line with Judge Kaplan’s understand- Judge Hand’s admonition that all pho- 77. Id. at 447. ing of rendition. See Mannion v. Coors tographs are necessarily creative) and 78. Id. at 447–48. Brewing Co., 377 F. Supp. 2d 444, 452 Morris v. Young, 925 F. Supp. 2d 1078 79. Id. at 448. (S.D.N.Y. 2005) (“Again, what made the (C.D. Cal. 2013) (seeming to assume suf- 80. Id. at 451. photographs original was not the lens and ficient originality in a photograph), where 81. Id. filter selection themselves. It was the effect Bleistein haunts copyright law like a 82. Id. produced by the lens and filters selected, zombie. 83. Id. among other things.” (emphasis added)). 60. 117 F. Supp. 2d 301, 309 (S.D.N.Y. 84. Id. at 451–52 (citing Bridgeman Art 103. V-J Day in Times Square, 2000). Library, Ltd. v. Corel Corp., 36 F. Supp. Wikipedia, https://en.wikipedia.org/ 61. Id. at 308. 2d 191 (S.D.N.Y. 1999)). wiki/V-J_Day_in_Times_Square. 62. Id. 85. Id. at 452–54 (citing Hon. Sir 104. Id. 63. Id. at 309. Hugh Laddie et al., The Modern 105. That timing requires something 64. Id. Law of Copyright and Designs (3d ed. more than serendipity does not destroy

Winter 2019 n Communications Lawyer n 27 protection for photographs of breaking news events. Breaking news photography may still be protected as a result of a pho- tographer’s use of timing. It’s just that THANK YOU their use of timing must be more than I was in the right place at the right time. TO THOSE WHO FINANCIALLY SUPPORT THE FORUM Raising the Flag at Ground Zero isn’t cre- THE FORUM ON COMMUNICATIONS LAW WOULD LIKE TO ACKNOWLEDGE OUR ative simply because Thomas Franklin APPRECIATION FOR THE GENEROUS SUPPORT OF OUR SPONSORS. was in the right place at the right time. It The Forum would be unable to function without the fnancial support of its PASSPORT is creative because he captured the pre- SPONSORS that fund all of the Forum’s activities, including the 24th Annual Conference, cise moment that each firefighter looked 39th Annual Representing Your Local Broadcaster Conference, 14th Annual Data Privacy up toward the flag while hoisting it—a Symposium, the 22nd Annual Media Advocacy Workshop, 12th Annual First Amendment moment in time that Franklin said had and Media Law Diversity Moot Court Competition, and all Women In Communications the effect of symbolizing “patriotic soli- Law activities throughout the 2018-19 Conference Year. Thank you Passport Sponsors. darity.” You probably don’t remember PASSPORT SPONSORS the other photographs he took in the same burst because the timing didn’t have the same effect. See Remembering 9/11 with Thomas E. Franklin, YouTube (Aug. 3, 2017), https://www.youtube. com/watch?v=XAlNtlaAgDc. Moreover, breaking news photographs also may be protectable on the grounds of the pho- tographer’s chosen rendition. See, e.g., Harney v. Sony Pictures Television, Inc., Thank you to our ANNUAL CONFERENCE SPONSORS for 704 F.3d 173, 182 (1st Cir. 2013) (explain- helping to fund this 24th Annual Conference. ing the protectable elements of “news ANNUAL CONFERENCE SPONSORS photography, which seeks to accurately document people and events”). 106. Meshwerks, Inc. v. Toyota Motor Sales USA, Inc., 528 F.3d 1258, 1263 n.5 (10th Cir. 2008). 107. Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 348 (1991). 108. Number of Smartphone Users Worldwide from 2014 to 2020 (in bil- lions), Statista (2018), https:// www.statista.com/statistics/330695/ number-of-smartphone-users-worldwide. 109. QuHarrison Terry, More Than 1.2 Trillion Photos Were Taken in 2017. What to Do with All These Memories?, *QT Thank you to those sponsors who contribute to the funding for the 11th Annual (Mar. 20, 2018), https://quharrison.com/ First Amendment and Media Law Diversity Moot Court Competition. buying-conversations. FIRST AMENDMENT AND MEDIA LAW DIVERSITY MOOT COURT COMPETITION SPONSORS 110. Otto v. Hearst Comm’cns, Inc., No. 17-cv-4712 (Dec. 10, 2018) (copyright suit over photographer of Donald Trump brought by a Vice President at Deust- Thank you to our 22ND Annual Media Advocacy Workshop Sponsors for sche Bank who “self-described as just a helping the Forum to provide training to young lawyers and law students. ‘guy with an iPhone’” who “is not and has MEDIA ADVOCACY WORKSHOP FOR YOUNG LAWYERS SPONSORS never been a professional photographer”).

The Forum would like to extend a special thank you to QBE North America for serving as the Women in Communications Law 2018-2019 Conference Year Presenting Sponsor. WOMEN IN COMMUNICATIONS LAW SPONSORS

28 n Communications Lawyer n Winter 2019