II. COPYRIGHT PROTECTION
A. COPYING AND CREATING DERIVATIVE WORKS FROM VISUAL IMAGES
Copyright law provides the most effective tool against the unauthorized alteration of motion pictures, videotaped images and photographs, and can prevent an existing work from being used as the digital raw material to make subsequent works. Because the essential elements of the digital alteration process involve copying some parts of an original image and then altering those parts, the digital alteration process implicates two of the exclusive rights granted by copyright law: the exclusive right to permit others to reproduce sections of a copyrighted work, and the exclusive right to create altered versions of a copyrighted work.
Copyright law provides the owner of a copyright with several valuable tools that protect visual images from subsequent alteration. A copyright encompasses the exclusive right to: reproduce the work; prepare "derivative works"; distribute copies of the work; perform the work publicly; and display the work publicly. [FN36] One or more of these rights are implicated at many stages of the process of creating and marketing a digitally altered work.
The initial step in digitally transforming an image requires translating the existing image into digital form. To do so, as previously discussed, the image is scanned into a binary file of ones and zeros, and then the digitized work is copied into a computer's memory. [FN37] Copying a computer file containing a copyrighted work onto a computer's memory (such as copying to a hard disk, floppy disk, ROM or RAM, or other storage device) or copying a computer file from one computer to another (such as uploading or downloading a digital image file to a bulletin board system, or transferring the file from one computer network user to another) have all been held to create a "copy" that infringes upon the right of reproduction. [FN38] Because digital files are remarkably easy to reproduce and distribute, once a visual image has been translated into digital form additional copyright infringements become extraordinarily easy to accomplish. [FN39] Once in digital form, the image can be processed, manipulated and transformed, each of which implicates the derivative works right. [FN40] The derivative works right grants copyright owners the exclusive right to control the abridgment, adaptation, revision or other transformation of their works. [FN41] As discussed in Part I of this article, computer technology can create derivative images that amaze the eye by significantly modifying the original image, or by seamlessly combining bits and pieces from several different images into a new image. In fact, post- production digital artists can in some cases create the real value in an image, supplanting the role traditionally filled by the creator of the original image: The first, or base, image, may increasingly have no resale value.... The photographer may become, like a Third World country, counted on only as the supplier of raw materials -- the photographs -- to be somehow "refined" by those who control their publication. Processing of film, no longer necessary, may be replaced by image manipulation as a critical step in making a photograph, and the creator's decision-making will occur later in the "photographic" process. [FN42] Although digital technology has a remarkable ability to enhance the aesthetic and commercial appeal of the original image, the fact that the copier may have added commercial value to the original does not excuse the creation of an infringing derivative work. Congress grants copyright protection in order to provide the creators of pictorial, dramatic and other creative works with a limited monopoly over the works they create, and thereby to encourage the advancement of the arts and sciences. [FN43] The economic incentive provided by this monopoly would be rendered meaningless if others could take existing images without permission and use and manipulate them at will, even if their alterations add some value to the original. The question of copyright infringement thus does not turn on the aesthetic or economic value added by the copier. [FN44]
Instead, copyright infringement generally turns on the question of whether
portions of the second work are "substantially similar" to the original.
Copyright law has always had difficulty in distinguishing substantial (and
therefore unlawful) similarity from insubstantial (and therefore permissible)
copying. [FN45] Copyright law permits slight or trivial similarities between
two works and allows de minimis copying from the original work. [FN46]
However, two works need not be literally identical in order for infringement
to occur. As long as portions of the works are substantially similar, the
copyright in the original may have been violated. It is no excuse that
most or nearly all of the second work is original. [FN47] Nor does it generally
matter if only small portions of the original have been copied, particularly
if the copied portions represent
significant parts of the original creative expression of the copyrighted work. [FN48]
Defining the threshold at which similarity becomes "substantial" will continue to be difficult in the context of digital alteration. Modern technology has created a wide spectrum of types of alterations to visual images, spanning very minor changes on one end of the spectrum, to extensive, wholesale changes on the other end. Several types of minor changes certainly create substantially similar derivative works. For example, alterations such as changing the overall brightness, contrast, hue or sharpness of the entire image, or changing the brightness or contrast of selected portions of an image to enhance or subdue elements of original, all appear to result in a substantially similar derivative work.
Other types of alterations create derivative images increasingly distant
from the original. The question of substantial similarity therefore becomes
more difficult to assess as applied to techniques such as rearranging or
distorting the elements within an image, cutting elements from an image,
combining and cloning elements from two or more images, distorting portions
of the original to create stylized or bizarre images, or combining photographic
images with nonphotographic media or computer-generated images. Each of
these techniques takes the second work further and further from the original.
At a certain point, sufficiently substantial alterations to the second
work will take it far beyond the point of substantial similarity, and the
second work will appear to owe little or nothing to the creative expression
of the original.
However, even if the second work incorporates relatively small portions of the original, the works may still be considered substantially similar. For example, many of the above-mentioned methods of altering images involve verbatim copying of small portions of an image, which can fit into the category of infringement articulated as "fragmented literal similarity." [FN49] Fragmented literal similarity involves situations in which a small portion of the original is copied in its entirety into a second work. [FN50] For example, cloning and combining elements from one image into another image requires verbatim copying of those elements of the original and therefore involves fragmented literal similarity.
It is very difficult to set forth definitive rules for the particular quantity of fragmented literal similarity necessary to constitute an infringement. However, cases involving the digital sampling of musical works provide some guidance. In these cases, courts have held that songs that incorporated short digital "samples" of previous songs constituted copyright infringement through fragmented literal similarity, even if those digital samples constituted relatively small portions of the respective works. [FN51] These cases represent an application of the existing principle of copyright law that "no plagiarist can excuse the wrong by showing how much of his work he did not pirate." [FN52] Even if the second artist takes only a quantitatively small amount of material, it may still be considered qualitatively important to the original.[FN53]
On the other hand, copyright law permits a copier to intentionally change an existing image sufficiently in order to avoid infringement. [FN54] Merely using an original work as a model, template or inspiration does not by itself constitute an infringement. [FN55] In fact, courts have suggested that, as long as the second work is not substantially similar to the original, it may be appropriate to permit those who copy visual images (as opposed to literary works) to make substantial modifications to an original in order to avoid infringement. [FN56] Nonetheless, the analysis of substantial similarity focuses upon the similarities between the two works, and not the dissimilarities. [FN57] Even if a derivative visual image does not incorporate any verbatim sections from the original, substantial similarity can be found if "the fundamental essence or structure of one work is duplicated in another." [FN58] Such situations are referred to as "comprehensive non-literal similarity," which, as applied to works of visual art, finds substantial similarity where the "total concept and feel" of the second work is the same as that of the original work. [FN59]
Copyright law (and the total concept and feel test) does not, however,
provide the creator of the original image with any exclusive rights in
the uncopyrightable aspects of his or her work, such as the general appearance
of the persons and things depicted in the image. A copyright protects only
the original, creative expression of the copyrighted work. For visual images,
the creative expression of an artist includes the composition and posing
of the subjects of the image, the
lighting, the combination and editing of sequences of individual images into a motion picture, and the many subjective and technical judgments that go into developing a finishing print from a negative. [FN60] No artist can obtain an exclusive copyright in the appearance of a physical object created by nature. [FN61]
B. FAIR USE OF VISUAL IMAGES
The fair use doctrine recognizes that not every use or modification
of a visual image constitutes a copyright infringement. Even if the second
image is substantially similar to the original image, the creator of the
second image may still claim that its use of the first image is a permissible
fair use. The fair use doctrine is an affirmative defense to a claim of
infringement, which acknowledges that some uses of a copyrighted work,
such as those for the purposes of commentary, criticism or
parody, should be permitted. Determination of whether a particular use is a fair use requires analysis of four factors: (1) the purpose and character of the copier's use of the original; (2) the amount taken from the original; (3) the nature of the original; and, (4) the effect of the use upon the market for the original. [FN62] Many courts have held that the most important of these factors is how the use affects the current or potential markets for the original. [FN63]
Given the importance in the fair use analysis of the effect upon the potential market for the original, the fair use doctrine does not necessarily excuse the use of small "samples" of portions of existing images, even if those images form only a small portion of the second image. Photographers may soon exploit a market for such "stock" images (such as background images, pleasant swatches of grass or sky, cars, buildings or other figures), that can be cut and pasted or "cloned" into new images. Such a market already exists for computer "clip art" (stock illustrations that can be incorporated into computer documents) and stock photographs and film footage (which can be incorporated in unaltered form into print media or motion pictures). Permitting the unauthorized use and alteration of bits and pieces of existing visual images to create new images may prevent copyright owners from developing these new markets for their works. [FN64]
The question of fair use is always fact-specific. [FN65] Some cases have turned upon whether the use of the original work is significant to the second work, or whether the second work only "incidentally" uses the original. For example, in a case involving the movie 12 Monkeys, the court found that featuring a copyrighted sculpture in a few minutes of that 130-minute long movie did not constitute a fair use because those few minutes of footage featured the sculpture prominently. [FN66] Other factual situations have led to the opposite result, and have held that a particular use of an existing visual image in a later audiovisual work constituted a fair use where the use of the previous work was only incidental and not a significant part of the second work. [FN67] Other cases have focused upon the nature of the original work. For example, in one recent case involving documentary film footage incorporated into a film biography of Muhammad Ali, the court indicated that fair uses of images captured from historically significant events may be far broader than uses of other types of visual images. [FN68]
The manner in which the copier uses the original work is also significant
in the fair use analysis. Existing law recognizes that sufficiently "transformative"
uses of an original qualify as a fair use. One of the most powerful creative
tools for altering images is the new-found ability to transform the meaning
of existing images by placing those images into a new context. Computer
artists may therefore claim that placing an existing work (or a portion
of an existing work) into a new context
transforms the original and is a fair use.
Analyzing whether a particular use is sufficiently transformative to qualify as a fair use is highly fact-specific, and depends upon an analysis of all four of the fair use factors. There are certainly some situations in which digitally recontextualizing an image may be sufficiently trans-formative to constitute a fair use of the original. For example, using digital technology to parody an original work appears to be a strong candidate for fair use. Distorting, cutting and pasting, or otherwise changing images for the purpose of making a humorous or critical commentary upon the original work can be sufficiently transformative to constitute a fair use, even if the parody is created for a commercial purposes. [FN69] For example, in one case, the court found that a movie advertisement for the comedy film The Naked Gun 33 1/3 featuring a photograph of actor Leslie Nielsen that had been digitally manipulated to look like the famous Annie Leibovitz Vanity Fair photograph of the pregnant and naked Demi Moore constituted a non-infringing fair use parody. [FN70] The court reasoned that because the photograph of the naked and pregnant Nielsen made some critical commentary upon the substance of the original composition, this use of digital manipulation technology should be considered a fair use. However, other cases indicate that visual artists who transform existing works of art by using computer technology solely to put existing works into a new context may have difficulty establishing a fair use defense. Two cases involving copyrighted pop-culture images that the artist Jeff Koons recontextualized into three-dimensional sculptures held that translating these existing works into a new medium constituted copyright infringement, even though the artist used those recontextualizations to make a legitimate artistic statement. [FN71]
-------------------------------- Footnotes -----------------------------------
FN36. 17 U.S.C. s 106.
FN37. See supra text accompanying notes 29 to 31.
FN38. U.S. DEP'T OF COMMERCE, INTELLECTUAL PROPERTY AND THE NATIONAL INFORMATION INFRASTRUCTURE: REPORT OF THE WORKING GROUP ON INTELLECTUAL PROPERTY RIGHTS, at 65-67 (the "WHITE PAPER"); MAI Systems Corp. v. Peak Computer, Inc., 991 F.2d 511, 519 (9th Cir. 1993); Playboy Enters, Inc. v. Frena, 839 F.Supp. 1552 (S.D. Fla. 1993). These acts may also infringe upon the exclusive right to distribute the work.
FN39. WHITE PAPER, supra note 38, at 12 ("Advances in digital technology and the rapid development of electronic networks and other communications systems raise the stakes considerably.").
FN40. MITCHELL supra note 1, at 53.
FN41. 17 U.S.C. s 106(2); W. PATRY, COPYRIGHT LAW AND PRACTICE at 822-26 (1994).
FN42. RITCHIN supra note 8, at 68.
FN43. U.S. CONST., art. I, s 8, cl. 8.
FN44. For example, in 1987 and 1988, Congress held extensive hearings
on proposed amendments to the Copyright Act to prevent the colorization
of black and white motion pictures (the amendments were never enacted due
to the perceived disruption that these rights might cause to the existing
contractual relationships between directors and film studios). While most
participants in these hearings agreed that colorization added substantial
commercial value to these
existing works, almost all of the participants also agreed that these computer-created colorized works would constitute infringing derivative works if they were created without the consent of the copyright owners. See REPORT OF THE REGISTER OF COPYRIGHTS ON TECHNOLOGICAL ALTERATIONS TO MOTION PICTURES AND OTHER AUDIOVISUAL WORKS (March 1989), reprinted in, 10 LOYOLA ENT. L.J. 1 (1990) (summarizing those Congressional debates).
FN45. See Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960) ("the test for infringement of a copyright is of necessity vague") (Hand, J.).
FN46. 3 M. NIMMER & D. NIMMER, NIMMER ON COPYRIGHT s 13.03[A] (1990).
FN47. Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir. 1936) (Hand, J.).
FN48. See Harper & Row Publ'g, Inc. v. The Nation Enters., 471 U.S. 539 (1985) (copying 300 words out of 200,000 word manuscript infringed copyright); PATRY, supra note 41, at 707 n.830 (reviewing numerous cases holding that copying small parts from a work can constitute a copyright infringement).
FN49. NIMMER, supra note 46, s 13.03[A]; Twin Peaks Prods., Inc. v. Publications, Int'l, Ltd., 996 F.2d 1366, 1372 (2d Cir. 1993).
FN50. NIMMER, supra note 46, s 13.03[A].
FN51. See Grand Upright Music Ltd. v. Warner Bros. Records, Inc., 780 F.Supp. 182 (S.D.N.Y. 1991); Jarvis v. A&M Records, 827 F.Supp. 282, 289 (D.N.J. 1993); Tin Pan Apple Inc. v. Miller Brewing Co., 30 U.S.P.Q.2d 1791, 1795 (S.D.N.Y. 1994); Frost Belt Int'l Recording v. Cold Chillin' Records, 758 F.Supp. 131 (S.D.N.Y. 1990).
FN52. Sheldon, 81 F.2d at 56 (Hand, J.).
FN53. See Roy Export Co. v. CBS, Inc., 672 F.2d 1095 (one minute segment of film substantially similar); see also supra note 48.
FN54. NIMMER, supra note 46, s 13.03[B][b] & n.128.
FN55. Id. s 13.01[B]; Wallace Computer Serv., Inc. v. Adams Business
Forms, Inc. 837 F.Supp. 1413, 1416 (N.D. Ill. 1993). However, some courts
have recognized the doctrine of "interim" or "intermediate" copying, which
presents a possibility that infringement may still occur even if a digitized
original has been changed and distorted so significantly that the final
product is no longer substantially similar to the original. See Walker
v. University Books, Inc., 602 F.2d 859 (9th Cir. 1979) Walt Disney Productions
v. Filmation Assocs., 628 F.Supp. 871 (C.D. Cal. 1986), Sega Enters. Ltd.
v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992) (all holding that interim
copying of original could constitute infringement, even if the final product
was not substantially similar to original). However, other courts have
rejected the notion of interim
or intermediate copying, and compare only the completed work. See Walker v. Time-Life Films, 615 F.Supp. 430 (S.D.N.Y. 1985), aff'd, 784 F.2d 44 (2d Cir. 1986); See v. Durang, 711 F.2d 141 (9th Cir. 1983) (both holding that relevant question was whether the final works presented to the public were substantially similar, and not whether interim copying occurred); see also Joseph Beard, Casting Call At Forest Lawn: The Digital Resurrection of Deceased Entertainers, 41 J. COPYRIGHT SOC'Y 19, 32-34 (1993) (analyzing issue of interim copying).
FN56. See Warner Bros. v. American Broadcasting Co., 720 F.2d 231, 241
(2d Cir. 1983) ("A story has linear dimension; it begins, continues, and
ends. If a defendant copies substantial portions of a plaintiff's sequence
of events, he does not escape infringement by adding original episodes
somewhere along the line. [In contrast,] [a] graphic or three-dimensional
work is created to be perceived as an entirety. Significant dissimilarities
between two works of this sort
inevitably lessen the similarity that would otherwise exist between the total perceptions of the two works.").
FN57. NIMMER, supra note 46, s 13.03[B].
FN58. Id. s 13.03[A]; see Knitweaves, Inc. v. Lollytogs, Ltd., 71 F.3d 996, 1003-04 (2d Cir. 1995); Ruolo v. Russ Berrie & Co., 886 F.2d 931, 939 (7th Cir. 1989); CSM Investors, Inc. v. Everest Development, Ltd., 840 F.Supp. 1304, 1311 (D. Minn. 1994).
FN59. Knitwaves, 71 F.3d at 1003-04; Ruolo, 886 F.2d at 939; CSM Investors, 840 F.Supp. at 1311; see NIMMER, supra note 46, s 13.03[A][c].
FN60. See PATRY, supra note 41, at 248-54; See also Burrow-Giles Lithographing, 111 U.S. at 57-58; Bleistein, 188 U.S. at 250.
FN61. Bleistein, 188 U.S. at 249; Caratzas v. Time Life, Inc., 1993 CCH Copyright L. Dec. P27,012 (S.D.N.Y. 1992).
FN62. 17 U.S.C. s 107.
FN63. Harper & Row, 471 U.S. at 566-68; see New Boston Television, Inc. v. ESPN, Inc., 215 U.S.P.Q. 755 (D. Mass. 1981) (use of videotaped highlights of sporting events on news program interfered with potential new market for sports footage).
FN64. See Iowa State Univ. v. Am. Broad. Co., 621 F.2d 57 (2d Cir. 1980) (use of excerpts of film footage interfered with potential new market for that footage and was not a fair use); Barbara Hoffman, The Legal Web and Virtual Gallery, N.Y.L.J., March 22, 1996, at 5 (discussing emerging markets for digital versions of fine art from museums); Bob Nandell, It's a Brave New Photo World, DES MOINES REGISTER, Nov. 27, 1994, at 4 (stating that digital-image photo banks for stock images are blossoming).
FN65. Mura v. CBS, Inc. 245 F.Supp. 587 (S.D.N.Y. 1965); Amsinck v. Columbia Pictures Indus., Inc., 862 F.Supp. 1044 (S.D.N.Y. 1994); Triangle Publications, Inc. v. Knight-Ridder Newspapers, Inc., 626 F.2d 1171 (5th Cir. 1980).
FN66. Woods v. Universal City Studios, Inc., 920 F.Supp. 62, 65 (S.D.N.Y. 1996).
FN67. See Ringgold v. Black Entertainment Television, Inc., 40 U.S.P.Q.2d 1299 (S.D.N.Y. 1996).
FN68. Monster Communications Inc. v. Turner Broad. Sys. Inc., 40 U.S.P.Q.2d 1259, 1262 (S.D.N.Y. 1996): Anyone who has seen any of the great pieces of photojournalism ... must acknowledge that photographic images of actual people, places or events may be as creative and deserving of protection as purely fanciful creations. Nevertheless, history has its demands. There is a public interest in receiving information concerning the world in which we live. The more newsworthy the person or event depicted, the greater the concern that too narrow a view of the fair use defense will deprive the public of significant information. Moreover, only a finite number of photographers capture images of a given historical event. Hence without denying for a moment the creativity inherent in the film clips of actual events relating to the Zaire fight, the degree of protection that properly may be afforded to them must take into account that too narrow a view of the fair use defense could materially undermine the ability of other Ali biographers to tell, in motion picture or perhaps still photographic form, an important part of his story. But see, Los Angeles News Serv. v. KCAL-TV Channel 9, 42 U.S.P.Q.2d 1080 (9th Cir. 1997) (despite "extraordinary" significance of videotape footage of beating of motorist during Rodney King riots, reuse of that footage could not be held to be a fair use at the summary judgment stage).
FN69. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994).
FN70. Leibovitz v. Paramount Pictures Corp., 1996 WL 733015 (S.D.N.Y.).
FN71. Rogers v. Koons, 960 F.2d 301 (2d Cir.); United Features Syndicate, Inc. v. Koons, 817 F.Supp. 370 (S.D.N.Y. 1993).