By , January 15, 2013.

The line between permissible copying and infringement — appropriation and misappropriation — is a difficult one to draw.

In part, this is because the statutes governing copyright offer relatively little guidance on the issue. In the US, 17 USC §106 provides that “the owner of copyright… has the exclusive right[]… to reproduce the copyrighted work in copies…”, while §501 states that “Anyone who violates any of the exclusive rights of the copyright owner… is an infringer of the copyright.” That’s it.

The difficult, and sometimes metaphysical, job of exactly defining reproduction and applying it to specific cases has been left to courts.

At the outset, it’s worth noting two very general points about reproduction. First, the definition is not limited to the copying of an entire work. “The entirety of the copyright is the property of the author; and it is no defence, that another person has appropriated a part, and not the whole, of any property.”

In some cases, a considerable portion of the materials of the original work may be fused, if I may use such an expression, into another work, so as to be undistinguishable in the mass of the latter, which has other professed and obvious objects, and cannot fairly be treated as a piracy; or they may be inserted as a sort of distinct and mosaic work, into the general texture of the second work, and constitute the particular excellence thereof, and then it may be a clear piracy. 1Folsom v Marsh, 9 F.Cas. 342 (D. Mass. 1841).

Second, the definition is not limited to literal copying. Infringement may occur through the copying of non-verbatim expression. This principle was explained most notably by Judge Learned Hand in the 1930 case Nichols v Universal Pictures:

It is of course essential to any protection of literary property, whether at common-law or under the statute, that the right cannot be limited literally to the text, else a plagiarist would escape by immaterial variations. That has never been the law, but, as soon as literal appropriation ceases to be the test, the whole matter is necessarily at large, so that, as was recently well said by a distinguished judge, the decisions cannot help much in a new case. When plays are concerned, the plagiarist may excise a separate scene; or he may appropriate part of the dialogue. Then the question is whether the part so taken is “substantial,” and therefore not a “fair use” of the copyrighted work; it is the same question as arises in the case of any other copyrighted work. But when the plagiarist does not take out a block in situ, but an abstract of the whole, decision is more troublesome. Upon any work, and especially upon a play, a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the play is about, and at times might consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his “ideas,” to which, apart from their expression, his property is never extended. 245 F.2d 119, 121 (2nd. Cir.).

Simple in theory, but, as Hand points out, “troublesome” in practice.

Harney v Sony Pictures

A recent First Circuit Court decision touches on these complex issues, with the added challenge of “newsworthy” subject matter. That decision is Harney v Sony Pictures Television, released January 7th, 2013.

Donald Harney is a freelance photographer. In April 2007, Harney snapped a photo of a happy father and daughter, her sitting on his shoulders, emerging from a church service in Boston. The photo would achieve iconic status after the father abducted the daughter in 2008 during a parental custody dispute. Adding to the drama, it was soon learned that the father, Christian Karl Gerhartsreiter, was a serial imposter, passing himself off at various times as a member of the Rockefeller family, a descendant of British royalty, a Wall Street investment advisor, and a rocket scientist. In addition, Gerhartsreiter was wanted for questioning in a twenty year old homicide case in California. 3Gerhartsreiter has since been charged with the murder, and a trial is set for March 11th. A portion of Harney’s photo was used by the FBI to create a wanted poster, which Harney did not object to, and Harney licensed the photo to various media outlets as public interest in the case grew.

In 2010, Sony Pictures released a made-for-television docudrama about the Gerhartsreiter saga. Harney’s photo was “recreated”, using the film’s actors, and appeared at several points during the film. Harney sued Sony Pictures for copyright infringement. Sony moved for summary judgment, arguing that the image in the film was not substantially similar to Harney’s photo, or, in the alternative, that it was a fair use of the photo. In May 2011, the District Court granted Sony’s motion, concluding that Sony’s image copied only the “factual content” and not the “expressive elements” of Harney’s photo (and since the court held there was no infringement, it did not need to address whether there was fair use).

Harney appealed, but the First Circuit affirmed the district court’s decision.

The First Circuit’s decision

The Circuit Court began by noting the elements a plaintiff in a copyright infringement suit must establish: ownership of a valid copyright and illicit copying. However, as the Court stated, not all copying is illicit; the copying must be “sufficiently extensive” to make the two works substantially similar. At the same time, said the court, “it is permissible to mimic the non-copyrightable elements of a copyrighted work” — a principle commonly described as the idea/expression distinction.

So the analysis of illicit copying in cases like this involve two levels of scrutiny: first, the factfinder must separate the “original expressive elements” of a work from its unprotected content, and second, the two works are “compared holistically”, but only as to the protected elements of the original. Each Circuit Court has evolved slightly different approaches to substantial similarity; in the First Circuit, the test is whether “the ordinary observer, unless he set out to detect the disparities [between the two works], would be disposed to overlook them, and regard their aesthetic appeal as the same.”

Finally, the court pointed out the challenges of such an analysis with news photography. Artists have no right to the “reality” of their subject matter, said the First Circuit, but reality is the “news photographer’s stock-in-trade.” While copyright protects the creative choices of such photographers, it does not extend to the subject matter of which a photographer is uninvolved in — the court likens this subject matter to unprotected facts or ideas.

The court then applied these rules to the facts of the case. It first concluded that Harney’s photo consisted largely of factual subject matter, rejecting the photographer’s claim that this dissection of the photo’s protectable elements would result in “throwing out the work’s expressive content with the bathwater of `independently existing facts.'” The court replied that such an approach would not only run against existing precedent, but also “enlarge the scope of his copyright protection by attributing to the [p]hoto an idea” that did not originate with Harney — the idea of Gerhartsreiter’s deception that emerged after the photo was taken. As the court states:

While Harney should benefit from the added interest in his photograph, as he did through the payments from Vanity Fair and other publications, such newfound interest does not change the originality vel non of the individual components of the work. It does not, in other words, change Harney’s creative contributions to the Photo. Moreover, recalibrating a work’s originality based on a new idea of what it expresses would undermine the distinction that remains between ideas and expression in visual works. In short, we do not see how subsequent events can fortuitously transform unoriginal elements of a visual work into protectible subject matter.

(In a footnote, the court points out that “originality in timing” can sometimes be protected by copyright, citing the famous photo of a sailor kissing a nurse in Times Square on VJ day — however, “[t]his case does not involve a unique or unusual moment fortuitously captured by a photographer.”)

In the end, the court held that the “piggyback pose” of the father and daughter, their clothing, the items they held, and the church in the background were all unprotected elements of the photo. That left the framing, tones, and composition of the image as protected expressive elements. After the court struck the pose, the analysis is all but over, since that element dominates both the original photo and Sony’s image. The court found that other than the pose of the father and daughter, there were few similarities between the two photos as far as framing, tones, and composition. Thus, since Sony had only copied the unprotected elements of Harney’s photo, there was no infringement, and the district court’s grant of summary judgment was affirmed by the First Circuit.

The decision does not break too much new legal ground. But it does, no doubt, involve a set of facts that should spark the interest of copyright buffs, and the First Circuit’s opinion is fairly clear and straightforward. (For an opposing view, see the 1709 Blog’s Originality in photographs: follow-up to Harney v Sony decision, with comments by Donald Harney himself.)


1 Folsom v Marsh, 9 F.Cas. 342 (D. Mass. 1841).
2 45 F.2d 119, 121 (2nd. Cir.).
3 Gerhartsreiter has since been charged with the murder, and a trial is set for March 11th.

1 Comment

  1. The Court in its’ decision neglected to cite how copyright law defines “derivative work” which is defined as “a work based upon one or more pre-existing works, such as translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgement, condensation, or any other form in which a work may be recast, transformed or adapted.”17 USC 101
    Only copyright owners have exclusive rights to produce derivative works based on their original copyrighted works. If the original isn’t yours and you don’t get permission to use the original from its’ creator, then you are infringing that author’s copyright.
    The simple fact is that Sony undeniably “translated, dramatized, fictionalized and made a motion picture version” of my copyrighted image and “recast, transformed and adapted” their own derivative work to create and sell their Lifetime docudrama, “Who is Clark Rockefeller”.
    The Court should have held them responsible for the infringement.

    Donald A. Harney