Written by Mark Terry   

In 2008, photographer Mike Hipple took a photo of a famous sculpture by Jack Mackie in Seattle. The photo at issue was sold to a stock photo company subsequently used in its for-pay catalog. As a Miami Copyright Attorney, this case interests me because it brings up subtle copyright issues.

This not an issue of direct copyright infringement. The copyright in the sculpture is directed to a 3D work of art. The photographer did not make a 3D copy of the sculpture. Instead, the photographer made a 2D derivative work of the sculpture. Thus, if there is any infringement it is infringement of the right to make derivative works.

The Copyright Act defines “derivative work” in 17 U.S.C. § 101: “a “derivative work” is a work based upon one or more pre-existing works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted.” Thus, the Hipple work is clearly a derivative work of the Mackie sculpture.

17 U.S.C. § 106 provides: “the owner of copyright under this title has the exclusive rights to do and to authorize any of the following: … (2) to prepare derivative works based upon the copyrighted work.” Thus, the Hipple work clearly infringes upon Mackie exclusive right to make a derivative work of the Mackie sculpture.

The copyright to the photo at issue, however, is owned by Hipple. But there is the issue of how much of the derivative work was created (and thereby owned) by Mackie and how much was created (and thereby owned) by Hipple. 17 U.S.C. § 103(b) provides:”The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material.” Thus, it behooves the parties in this suit to do an analysis to determine how much of the photo was seemingly created by Mackie and how much by Hipple, in his choice of lighting, composition, angle, etc.

The moral of this story is that artists, especially photographers, must be careful when creating works, or photos, based on the works of others, when those works will be used for financial gain. To avoid legal problems, one should ask permission from the owner of the work.