IP Law Daily, COPYRIGHT—C.D. Cal.: If a photograph imitates reality, and reality is wearing a pin-up girl design on her trousers, whose art wins?, (Mar 29, 2023)

By Matthew Hersh, J.D.

A photograph is not “derivative” of the artwork adorning its subjects, a court holds.

A photographer who snapped a picture of a model crossing a street while wearing a designer pair of pants was not required to register his photograph as a “derivative” of the design on the model’s outfit, the federal court in Los Angeles has held. The court, in affirming the validity of the registration, cleared the way for the photographer to prevail in his claim that the clothing designer infringed his copyright by posting the photo on its promotional social media pages (Vila v. Deadly Doll, Inc., March 27, 2023, Wright, O.).

At the center of the dispute is Deadly Doll, a punk-themed clothing merchandiser owned by musician and fashion designer (and Cher’s god-daughter, as it happens) Jesse Jo Stark. One of the many offerings designed by Ms. Stark, viewable on the home page of the clothing company’s website, is a series of “pin-up girl” motifs, which might best be described as a 2023 take on the 1950s classic cartoons.

The lawsuit arose when photographer Carlos Vila took a picture of a model crossing a street in New York City. The model was wearing at the time a pair of Deadly Doll pants featuring one of those pin-up girl designs. The photographer then licensed the work to the UK-based Daily Mail, which ran the photo in an online edition. Events moved quickly from there. The clothing manufacturer, no doubt happy to see its designs featured in a prominent photograph, then posted the same photograph to its website. The photographer, in turn, sued the clothing manufacturer for copyright infringement for using his work without permission. The clothing manufacturer responded by filing a countersuit alleging, in effect, that it was the photographer who infringed by reproducing a photo of its pin-up girl design in the first place.

After the court denied an earlier bid to dismiss the case on the pleadings, the photographer then moved for summary judgment, leading to this opinion.

Validity of registration. The court granted summary judgment for the photographer on all counts. The clothing manufacturer argued that the photographer’s registration of his copyright was invalid because he did not tell the Copyright Office that his photograph was “derivative” of the underlying pin-up design worn by the model. But was the photograph in fact derivative? The photographer argued that it was not. The court agreed.

The photograph in question was not “derivative” of the pin-up design, the court held, because it was not based upon a pre-existing work nor “recast, transformed, or adapted” from it. 17 U.S.C. § 101. A case about a colorful vodka bottle proved the point. In Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1078–80 (9th Cir. 2000), the court noted, a photographer took pictures of the blue-colored bottle of Skyy vodka. But those photographs could not have been “derivative” of the bottle because the bottle was a useful article—a utilitarian product—and therefore not eligible for copyright protection in the first place. The same rationale applied here, the court found: the pin-up design was worn by the model on a pair of pants, which is also a useful article.

Nor did it matter that the clothing manufacturer had a copyright in the specific pin-up design featured on the pants, the court noted. In the vodka bottle case, the court noted, the label might well have been copyrightable even if the bottle itself was not. But that did not undermine the validity of the copyright, the court of appeals noted in that case, because the photographs were “shots of the bottle as a whole,” and not merely of the label. The same logic applied here, the court held. The photograph in question did not focus mainly on the design, nor even on the pants on which the design featured, but rather on the model wearing the pants and the street in which she walked. The photograph was not derivative here.

Infringement. With the issue of the registration settled, the court had little difficulty ruling for the photographer on the broader issue of infringement. There was little question, of course, that the clothing manufacturer had copied the photograph by posting it on its website. And while the clothing manufacturer did suggest in its brief that its actions were protected by the fair use doctrine, it presented no meaningful argument to that end. The photographer was therefore entitled to summary judgment on his claim.

The Case is No. 2:21-cv-05837-ODW.

Attorneys: Craig B. Sanders (Sanders Law Group) for Carlos Vila. Mark Steven Lee (Rimon PC) for Deadly Doll, Inc.

Companies: Deadly Doll, Inc.

Cases: Copyright TechnologyInternet CaliforniaNews