CITE:  225 F.3d 1068
CMON:  August 2000
PLAIN: Joshua Ets-Hokin
DEFND: Skyy Spirits; Maurice Kanbar; Daniel Dadalt; Needham; Does 1 - 50
COURT: United States Court of Appeals, Ninth Circuit
DATE:  August 18, 2000

Professional photographer who had entered into license agreement with
vodka producer brought action against producer and others, alleging that
producer's use of photographer's "product shots" constituted copyright
infringement, fraud, and negligent misrepresentation. The United States
District Court for the Northern District of California, Susan Yvonne
Illston, Jr., 1998 WL 690856, granted summary judgment for producer on
copyright claims and dismissed other claims. Photographer appealed.

The Court of Appeals, McKeown, Circuit Judge, held that: (1) "product shots"
of vodka bottle were sufficiently original to merit copyright protection;
(2) preexisting work underlying derivative work must itself by copyrightable;
(3) bottle was not copyrightable, so photographs of bottle could not be 
deemed derivative works, and (4) merger doctrine and scenes a faire doctrine
do not affect copyrightability but provide defenses to infringement.

Reversed and remanded.

Appeal from the United States District Court for the Northern District
of California; Susan Yvonne Illston, District Judge, Presiding,
D.C. No. CV-96-03690-SI.

  Derivative work copyrightable only if underlying work is copyrighted.
  Photograph of purely utilitarian object (bottle) with no artistic
  features is noncopyrightable derivative.  A work is a useful article,
  and therefore denied copyright for its shape as such, if it has an
  intrinsic utilitarian function, even though it may have other functions
  which are not utilitarian.  If idea of copyrighted work can be
  expressed in only one way, "merger doctrine" prevents copyright

JUDGE: McKEOWN, Circuit Judge
Before: HUG, Jr., Chief Judge, and D.W. NELSON and M. MARGARET McKEOWN,
Circuit Judges. Dissent by Judge D.W. NELSON.


This case requires us to apply copyright principles to stylized 
photographs of a vodka bottle. Specifically, we must decide whether 
professional photographer Joshua Ets-Hokin's commercial photographs, 
dubbed "product shots", of the Skyy Spirits vodka bottle merit copyright
protection. Given the Copyright Act's low threshold for originality
generally and the minimal amount of originality required to qualify a
photograph in particular, we conclude that Ets-Hokin's photographs are
entitled to copyright protection.

We also conclude that the district court erred in analyzing this case
through the lens of derivative copyright. The photographs at issue cannot
be derivative works because the vodka bottle - the alleged underlying work
- is not itself subject to copyright protection.  Accordingly, we reverse
the grant of summary judgment for Skyy Spirits and remand for consideration
of whether infringement has occurred.



The centerpiece of this case and the subject of the photographs is a vodka
bottle, shaped like a wine bottle, with boldly colored blue glass, a
"pilfer-proof" cap, and a rectangular label. The label, which has a shiny
blue background and a thin gold border, includes text that reads as

[ART here]

The text is in various fonts and sizes, all colored gold, except for "VODKA",
which is white. These are the label's only adornments; there are no pictures,
illustrations, or other noteworthy features on the label or elsewhere on
the bottle.

Ets-Hokin is a professional photographer who maintains a studio in San
Francisco. Maurice Kanbar, the president of Skyy Spirits, Inc. ("Skyy"),
and Daniel Dadalt, an employee of the company, visited his studio in the
summer of 1993. During this visit, Kanbar and Dadalt reviewed Ets-Hokin's
photograph portfolio and subsequently hired him to photograph Skyy's vodka 
bottle.  Ets-Hokin then shot a series of photographs and ultimately produced
and delivered three photographs of the bottle. In all three photos, the
bottle appears in front of a plaint white or yellow backdrop, with back
lighting. The bottle seems to be illuminated from the left (from the viewer's 
perspective), such that the right side of the bottle is slightly shadowed.
The angle from which the photos were taken appears to be perpendicular to
the side of the bottle, with the label centered, such that the viewer has
a "straight on" perspective. In two of the photographs, only the bottle is
pictured; in the third, a martini sits next to the bottle.

Under the terms of a confirmation of engagement, signed by Dadalt on Skyy's
behalf, Ets-Hokin retained all rights to the photos and licensed limited
rights to the photos and licensed limited rights to Skyy. The parties
dispute the scope of the license, including whether Skyy was licensed to
use the photographs in advertising or in publications distributed to the 
public. After the confirmation was executed, Ets-Hokin applied to the U.S.
Copyright Office for a certificate of registration for his series of photos,
and a certificate was issued effective on March 10, 1995.  Section six of
the registration form, which instructs the applicant to "[c]omplete both
space 6a & 6b for a derivative work", was left blank.

Skyy claims that it found Ets-Hokin's photographs unsatisfactory and thus
hired other photographers to photograph the bottle. In dealing with these
photographers, Skyy sought to purchase all rights to the photographs of the
bottle, as opposed to the license arrangement it had agreed to with
Ets-Hokin. One photographer refused to sell his photograph outright,
insisting on licensing. Two other photographers were apparently willing to 
sell all rights to their photographs.

Ets-Hokin brought suit against Skyy and three other defendants for copyright
infringement, fraud, and negligent misrepresentation. He alleged that the
company used his work in various advertisements, including in Deneuve
magazine and the San Francisco Examiner, and on the side of a bus, without
his permission and in violation of the limited license. He also alleged
that Skyy used photographs taken by the other photographers that mimicked
his own photos; specifically, he claimed that these photographers improperly
used his photographs to produce virtually identical photos of the vodka


The defendants argued that Ets-Hokin's photographs were not subject to
copyright protection. Contending that Ets-Hokin's photos of the Skyy bottle
were derivative works, the defendants moved for summary judgment on the
grounds that Ets-Hokin raised no genuine issue of material fact to support
the validity of his copyright or his claim of infringement. The district
court granted the defendant's motion on the ground that Ets-Hokin failed
to establish the validity of his copyright. As a result, the court did not
reach the question of infringement. The court also dismissed Ets-Hokin's
claims of fraud and negligent misrepresentation. Ets-Hokin v. Skyy Spirits,
Inc., No. C 96-3690 SI, 1998 WL 690856 (N.D.Cal. Sept.28, 1998). On appeal,
only the copyright claims are at issue.

In analyzing whether Ets-Hokin had a valid copyright, the court noted that,
by establishing that the photos were derivative works, the defendants could
rebut the statutory presumption of validity that Ets-Hokin enjoyed by
virtue of holding a copyright registration. The court then held that the
product shots were derivative works, reasoning that the photos were based
on a preexisting work, namely, the Skyy vodka bottle. Having found that
"the Skyy bottle is clearly a preexisting work", the court further held
that the bottle's "trade dress (the blue bottle, the gold label, etc.);
and copyrighted material (the label and all non-utilitarian features of
the bottle)" rendered it a "protected and copyrighted work".

Once Ets-Hokin's photos were determined to be derivative of the vodka bottle,
the court applied the standard applicable to derivative works set forth
in Entertainment Research Group, Inc. v. Genesis Creative Group, Inc.,
122 F.3d 1211, 11220-21 (9th Cir.1997) [hereinafter ERG]. Specifically, the
court stated:


Skyy, Ets-Hokin did not name the other photographers as defendants.

Because plaintiff's work is a derivative work, to establish the validity
of his copyright, he must show both (1) that the differences between the
two works are more than trivial, i.e., that his photographs are
"sufficiently original," and (2) that his copyright will not interfere
with Skyy's rights to create derivative works based upon its own bottle.

In its analysis of the photographs as derivative works, the court found
that Ets-Hokin did not raise a genuine issue of material fact as to either
prong of the ERG test, concluding that (1) the photos were insufficiently
original to warrant copyright because the differences between the photos
and the bottle were not "more than trivial"; and (2) a copyright in the
photos would interfere with Skyy's right to create works based upon its
own bottle.


We review de novo the district court's decision to grant summary judgment.
See ERG, 122 F.3d at 1216; Worth v. Selchow & Righter Co., 827 F.2d 569,
571 (9th Cir.1987) ("Summary judgments in copyright infringement actions
are reviewed de novo."). We likewise interpret the Copyright Act de novo.
See generally Bay Area Addiction Research & Treatment, Inc. v. City of
Antioch, 179 F.3d 725, 730 (9th Cir.1999) (standard of review for
interpretation of a statute). Whether a particular photograph is protected
by copyright law is a mixed question of law and fact, also subject to
de novo review. Cf. Harper House, Inc. v. Thomas Nelson, Inc., 889 F.2d 197,
201 (9th Cir.1989) ("Issues involving the availability and extent of
copyright protection for Harper House's time management system present
mixed questions of law and fact" reviewed de novo)(citation omitted).


In order to establish copyright infringement, Ets-Hokin "must prove both
valid ownership of the copyright and infringement of that copyright by"
the defendants. ERG, 122 F.3d at 1217. To address Ets-Hokin's claim, we
must first address whether his photographs are entitled to copyright
protection. Only if they are do we turn to the issue of infringement.


Skyy argues, in a nutshell, that the commercial photographs of its vodka
bottle are not worthy of copyright protection. We disagree. The essence
of copyrightability is originality of artistic, creative expression. Given
the low threshold for originality under the Copyright Act, as well as the
longstanding and consistent body of case law holding that photographs
generally satisfy this minimal standard, we conclude that Ets-Hokin's
product shots of the Skyy vodka bottle are original works of authorship
entitled to copyright protection. The district court erred in analyzing
copyright protection under the rubric of derivative works. To put our
holding in context, we summarize the historical treatment of photographs
both as artistic expression and as the proper subject of copyright

A. History of Photography as Copyrightable Artistic Expression

It is well recognized that photography is a form of artistic expression,
requiring numerous artistic judgments. As one photojournalist wrote,

    [u]p to and including the instant of exposure, the photographer 
    is working in an undeniably subjective way. By his choice of technical 
    approach (which is a tool of emotional control), by his selection of 
    the subject matter to be held within the confines of his negative
    area, and by his decision as to the exact, climatic [sic] instant of 
    exposure, he is blending the variables of interpretation into an 
    emotional whole which will be a basis for the formation of opinions
    by the viewing public.

W. Eugene Smith, Photographic Journalism, PHOTO NOTES, June 1948, at 4, 
reprinted in PHOTOGRAPHERS ON PHOTOGRAPHY 103, 104 (Nathan Lyons ed., 
1966). But these judgments are not the only ones. As the well-known 
photographer Edward Weston wrote,

    [b]y varying the position of his camera, his camera angle, or the 
    focal length of his lens, the photographer can achieve an infinite 
    number of varied compositions with a single, stationary subject. By 
    changing the light on the subject, or by using a color filter, any or 
    all of the values in the subject can be altered. By varying the length 
    of exposure, the kind of emulsion, the method of developing, the 
    photographer can vary the registering of relative values in the 
    negative. And the relative values as registered in the negative can
    be further modified by allowing more or less light to affect certain
    parts of the image in printing. Thus, within the limits of his medium, 
    without resorting to any method of control that is not photographic 
    (i.e., of an optical or chemical nature), the photographer can depart 
    from literal recording to whatever extent he chooses.

Edward Weston, Seeing Photographically, 9 COMPLETE PHOTOGRAPHER 3200, 3203
(William D. Morgan ed., 1943), reprinted in PHOTOGRAPHERS ON PHOTOGRAPHY,
supra, at 159, 161.

Courts as well as photographers have recognized the artistic nature of
photography. Indeed, the idea that photograph is art deserving protection
reflects a longstanding view of Angle-American law. Under English law,
photographs first received statutory copyright protection under an 1862 law
that granted the author of "every original painting, drawing and photograph
 . . . the sole and exclusive right of copying, engraving, reproducing and
multiplying . . . such photograph, and the negative thereof." See Keith
Lupton, Photographs and the Concept of Originality in Copyright Law, 10(9)
EUR. INTELL. PROP. REV. 257, 257 & n.7 (1988) (quoting the Fine Arts
Copyright Act 1862 section 1).

Three years later, President Abraham Lincoln signed into law a similar
statute that made "photographs and the negative thereof" copyrightable.
Act of March 3, 1865, 13 Stat. 540. The impetus for this act was likely
due in part to the "prominent role [of photos] in bringing the horrors of
the Civil War to the public."  WILLIAM PATRY, COPYRIGHT LAW & PRACTICE
244 (1996). In fact, many photographers, most notably Matthew Brady,
attained notoriety for their graphic depictions of battle on the front
lines; Brady's photographs were some of the first registered for copyright.
Id. at 248 n. 560. Some twenty years later, the Supreme Court held the
statute constitutional. See Burrow-Giles Lithographic Co. v. Sarony,
111 U.S. 53, 58, 4 S.Ct. 279, 28 L.Ed. 349 (1884) ("[T]he Constitution
is broad to cover an act authorizing copyright of photographs, so far as
they are representatives of original intellectual conceptions of the

Burrow-Giles, a landmark case involving a photograph of Oscar Wilde, is
the first of a line of cases establishing that photography entails
creative expression warranting copyright protection, that photography is
"an art", and that an individual photograph may be a "work of art".
Id. at 58, 60, 4 S.Ct. 279. Of particular import here, the Court held
that several specific decisions made by the photographer rendered his
photograph "an original work of art . . . of a class of inventions for
which the Constitution intended that Congress should secure to him the
exclusive right to use, publish and sell, as it has done . . .." Id. at
60, 4 S.Ct. 279. Decisions rendering the photograph a protectable
"intellectual invention" included: the posing and arrangement of Wilde
"so as to present graceful outlines"; the selection and arrangement of
background and accessories; the arrangement and disposition of light and
shade; and the evocation of the desired expression. Id. Courts today
continue to hold that such decisions by the photographer - or, more
precisely, the elements of photographs that result from these decisions -
are worthy of copyright protection. See, e.g., Rogers v. Koons, 960 F.2d
301, 307 (2d Cir.1992)  ("Elements of originality in a photograph may
include posing the subjects, lighting, angle, selection of film and
camera, evoking the desired expression, and almost any other variant
involved.") (citations omitted); Eastern America Trio Prods., Inc. v.
Tang Elec. Corp., 97 F.Supp.2d 395, 417 (S.D.N.Y. 2000).

Twenty years after Burrow-Giles, the Supreme Court laid to rest the notion
that use of a picture in advertising would preclude its copyrightability.
See Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 23 S.Ct. 298,
47 L.Ed. 460 (1903). Writing for the Court, Justice Holmes stated:

    Certainly works are not the less connected with the fine arts 
    because their pictorial quality attracts the crowd and therefore gives 
    them a real use-if use means to increase trade and to help to make 
    money. A picture is none the less a picture and none the less a subject
    of copyright that it is used for an advertisement. And if pictures
    may be used to advertise soap, or the theatre, or monthly magazines, 
    as they are, they may be used to advertise a circus.

Id. at 251, 23 S.Ct. 298. Thus, whether a photograph is used in (or
intended for) a museum, an art gallery, a mural, a magazine, or an
advertisement does not bear on its copyrightability. We have ourselves 
rejected the notion that copyright law treats works intended for advertising
differently from other works:

    It is true that a pictorial work is no less a subject of copyright
    protection because it is used to sell goods. Fabrica attempts to make
    it appear, however, that advertising materials constitute some separate
    and distinct subject matter of copyright. That is not and has never
    been the law. Items otherwise copyrightable will not be denied
    copyright simply because of their advertising purpose, but they do
    not gain any greater protection than non-advertising materials.

Fabrica Inc. v. El Dorado Corp., 697 F.2d 890, 894 (9th Cir. 1983)(internal
quotations and citation omitted). See also National Cloak & Suit Co. v.
Kaufman, 189 F. 215, 217 (1911) (finding copyrightable "pictorial
illustrations" of "ladies attired in the latest . . . styles" that appeared
in a catalog). Instead of looking to the intended or actual use of the
photograph, or considering whether its subject matter has commercial value,
we evaluate whether it has copyrightable elements.

Cases after Burrow-Giles and Bleistein confirmed that a photograph of an
object is copyrightable. See, e.g., Rogers, 960 F.2d at 307 (2d Cir. 1992)
(photograph of puppies); Eastern America Trio, 97 F.Supp.2d at 417
(photographs of "common industrial items" including electrical products);
Pagano v. Chas. Beseler Co., 234 F. 963, 964 (S.D.N.Y.1916) (photograph of
a scene including the New York Public Library).

These are the foundations of copyright applicable to photographs.

B. Contemporary Standards for Copyright Protection of Photographs

Under the copyright laws, Ets-Hokin's certificate of registration from the
U.S. Copyright Office entitled him to a "rebuttable presumption of
originality" with respect to the photographs at issue. Smith v. Jackson,
84 F.3d 1213, 1219 (9th Cir. 1996) (quoting North Coast Indus. V. Jason
Maxwell, Inc., 972 F.2d 1031, 1033 (9th Cir. 1992)); 17 U.S.C. section
410c. In moving for summary judgment, the defendants thus initially had
the burden of showing the invalidity of Ets-Hokin's copyright:

    Under the copyright laws, the registration of a copyright 
    certificate constitutes prima facie evidence of the validity of a 
    copyright in a judicial proceeding commenced within five years of 
    the copyright's first publication. A certificate of copyright 
    registration, therefore, shifts to the defendant the burden to 
    prove the invalidity of the plaintiff's copyrights. An accused 
    infringer can rebut this presumption of validity, however. To 
    rebut the presumption, an infringement defendant must simply 
    offer some evidence or proof to dispute or deny the plaintiff's 
    prima facie case of infringement.

ERG, 122 F.3d at 1217 (citations and internal quotations omitted). See 
also Harper House, Inc. v. Thomas Nelson, Inc., 889 F.2d 197, 201 (9th 
Cir.1989) (stating that the presumption "shifts the burden of proof to 
the defendants to demonstrate why plaintiff's organizers are not 
copyrightable."). In short, to overcome the presumption of validity, 
defendants must demonstrate why the photographs are not copyrightable. 
This they have failed to do, primarily because the degree of 
originality required for copyrightability is minimal. 

Addressing the threshold for copyrightability, in Feist Publications, Inc.
v. Rural Telephone Service Co., Inc., 499 U.S. 340, 111 S.Ct. 1282,
113 L.Ed.2d 358 (1991), the Supreme Court held that "[t]he sine qua non
of copyright[ability] is originality" and that "[o]riginal, as the term
is used in copyright, means only that the work was independently created
by the author (as opposed to copied from other works), and that it
possesses at least some minimal degree of creativity." Id. at 345,
111 S.Ct. 1282 (citation omitted). Here there is not dispute over the
independent creation of the photographs - they are the result of Ets-Hokin's
work alone - so what we must decide is whether the photographs of Skyy's
vodka bottle posses "at least some minimal degree of creativity".

Feist, which involved listings in a telephone directory, described the
requisite degree of creativity as "extremely low; even a slight amount
will suffice. The vast majority of works make the grade quite easily, as
they possess some creative spark, 'no matter how crude, humble or obvious'
it might be." Id. (citation omitted). When this articulation of the minimal
threshold for copyright protection is combined with the minimal standard
of originality required for photographic works, the result is that even
the slightest artistic touch will meet the originality test for a photograph.

In assessing the "creative spark" of a photograph, we are reminded of Judge
Learned Hand's comment that "no photograph, however simple, can be
unaffected by the personal influence of the author."  Jewelers' Circular
Pub. Co. v. Keystone Pub. Co., 274 F. 932, 934 (S.D.N.Y.1921). This approach,
according to a leading treatise in the copyright area, "has become the
prevailing view", and as a result, "almost any[ ] photograph may claim the
necessary originality to support a copyright merely by virtue of the
photographers' [sic] personal choice of subject matter, angle of photograph,
lighting, and determination of the precise time when the photograph is to
2.08[E][1], at 2-130 (1999) [hereinafter NIMMER]. This circuit is among 
the majority of courts to have adopted this view. Thus, we have noted that
"courts have recognized repeatedly that the creative decisions involved
in producing a photograph may render it sufficiently original to be
copyrightable and have carefully delineated selection of subject, 
posture, background, lighting, and perhaps even perspective alone as 
protectable elements of a photographer's work.'" Los Angeles News Serv. 
V. Tullo, 973 F.2d 791, 794 (9th Cir. 1992) (quoting United States v. 
Hamilton, 583 F.2d 448, 452 (9th Cir. 1978).

In view of the low threshold for the creativity element, and given that
the types of decisions Ets-Hokin made about lighting, shading, angle,
background, and so forth have been recognized as sufficient to convey
copyright protection, we have no difficulty in concluding that the
defendants have not me their burden of showing the invalidity of
Ets-Hokin's copyright, and that Ets-Hokin's product shots are sufficiently
creative, and thus sufficiently original, to merit copyright protection.
See also Bleistein, 188 U.S. at 250, 23 S.Ct. 298 ("The least pretentious
picture has more originality in it than directories and the like, which may
be copyrighted."). Finally, although Ets-Hokin took photos that undoubtedly
resemble many other product shots of the bottle-straight-on, centered, with
back lighting so that the word "Skyy" on the bottle is clear - the potential
for such similarity does not strip his work of the modicum of originality 
necessary for copyrightability. Indeed, the fact that two original 
photographs of the same object may appear similar does not eviscerate 
their originality or negate their copyrightability. See Feist, 499 U.S. at
345-46, 111 S.Ct. 1282 ("Originality does not signify novelty; a work may
be original even though it closely resembles other works so long as the
similarity is fortuitous, not the result of copying. To illustrate, assume
that two poets, each ignorant of the other, compose identical poems.
Neither work is novel, yet both are original and, hence, copyrightable.").

Having concluded that Ets-Hokin's are entitled to copyright protection,
we leave to the district court the scope of Ets-Hokin's copyright in the
photographs vis-a-vis the claimed infringement.

C. Derivative Copyright

We next address the issue of derivative copyright because the district
court analyzed the photographs as derivative works. For the reasons set
forth below, this is not a derivative works case.

The Copyright Act defines a "derivative work" as "a work based upon one
or more preexisting works."  Copyright Act of 1976 section 101, 90 Stat.
2541, 2542, 17 U.S.C. section 101. The district Court held, and Skyy argues,
that Ets-Hokin's photographs are derivative works. The court reasoned that
the photographs fell within the statutory definition because they were
based on or derived from the Skyy vodka bottle, which the court concluded,
without explanation, qualified as an original "preexisting work." After
determining that "an original work must be protected, copyrighted or
protectable in order for a subsequent work to be 'derivative,'" the district
court concluded as follows:

    Here, the Skyy bottle is clearly a preexisting work by the statutory 
    definition. In addition, the bottle includes its trade dress (the blue 
    bottle, gold label, etc.) and copyrighted material (the label and all 
    non-utilitarian features of the bottle) and is thus a protected and 
    copyrighted work.

We have never previously addressed whether a photograph can be a derivative
work, and specifically, whether a derivative work must be based upon a
copyrightable work. In a colloquial sense, of course, a photograph is
derived from the object that is its subject matter. As such, one teacher
of photography wrote of a photo as being an image "derived from . . . the
object pictured." Henry Holmes Smith, Photography In Out Time, in KALAMAZOO
ART CTR., THREE PHOTOGRAPHERS (catalog of exhibition) (Feb.1961) reprinted
in PHOTOGRAPHERS ON PHOTOGRAPHY, supra, at 99, 102. But simply because
photographs are in this colloquial sense "derived" from their subject
matter, it does not necessarily follow that they are derivative works
under copyright law.

As discussed below, the district court erred in adopting the derivative
work framework for two reasons: (1) a derivative work must be based on a
preexisting work that is copyrightable; and (2) the Skyy vodka bottle is
a utilitarian object that is not protected by. Copyright.

1. Preexisting Work Must Be Copyrightable

Under the Copyright Act, a work is not a "derivative work" unless it is
"based upon one or more preexisting works" and, in order to qualify as a
"preexisting work," the underlying work must be copyrightable.  The Act
does not make this point explicitly, nor does it define "work", but a
reading of the statute as a whole and its legislative history compel this

Turning first to the statute, several provisions point to the requirement
for the underlying, "preexisting work" to be copyrightable. Under section
106, the "owner of copyright" has "exclusive rights" to "prepare derivative
works based upon the copyrighted work." Id. section 106(2) (emphasis
added). The statute thus presupposes that the preexisting work - that is,
the work that underlies the derivative work - is copyrightable. Other
provisions buttress this reading.

Under section 102, titled "[s]ubject matter of copyright: [i]n general,"
copyright protection "subsists . . . in original works of authorship."
17 U.S.C. section 102(a). Such "original works of authorship" include
not only underlying (preexisting) works but also derivative works and
compilations. See id. section 103(a) ("The subject matter of copyright
subsists" if that material "has been used unlawfully" unless the material
is itself copyrightable. 

A comparison of how the Copyright Act defines "derivative works" and
"compilations" provides an explanation for the use of the term "preexisting
material" in section 103 as well as further support for the proposition
that the underlying "preexisting work" must be copyrightable. A derivative
work, as noted above, is defined as a work based upon one or more
preexisting works," whereas a "compilation" is defined as "a work formed
by the collection and assembling of preexisting materials or of data.."
Id. section 101 (emphasis added). By specifying that a derivative work is
based upon a "preexisting work" -- as opposed to "preexisting materials or
 . . . data," the basis for a compilation -- Congress has set forth a
distinction to which we must give meaning. We agree with Nimmer that
"[t]he reference to 'preexisting works' in this definition, as compared
with the reference to 'preexisting materials' in the definition of a
'compilation' implies that a derivative work, unlike a compilation, must
incorporate that which itself is the subject of copyright." 1 NIMMER
section 3.01, at 3-3 n.10.  This implication becomes even clearer when
one considers that the term "work" or "works" is used throughout the
Copyright Act to refer to the "subject matter" that the act is designed
to protect: "original works of authorship." See id. section 3.06, at
3-34.23 ("The pre-existing work or works upon which a given derivative
or collective work is based must be capable of copyright in the sense
that it must constitute an original work of authorship within the meaning
of section 102.").  These statutory sections, read together, and coupled
with the fact that the term "derivative work" appears only in the
Copyright Act, and not, for example, in the patent or trademark statutes,
indicate that for a work to qualify as a derivative work, the work from
which is derives must itself be within the ambit of copyright.

We view the statute's meaning as plaint on its face, but to the extent
there is any ambiguity, the legislative history also confirms our reading
of the Act. A House report accompanying the Copyright Act states that
"[a] derivative work . . . requires a process of recasting, transforming,
or adapting one or more preexisting works; the preexisting work must come
within the general subject matter of copyright set forth in section 102,
regardless of whether it is or was ever copyrighted." H.R. REP. NO. 94-1476,
at 57 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5670 (emphasis added and
internal quotations omitted). See also Phillip Edward Page, The Works:
Distinguishing Derivative Creations Under Copyright, 5 CARDOZO ARTS &
ENT. L.J. 415, 418 (1986) ("To be derivative, a work must be 'based upon'
a preexisting work which could itself come within the general subject 
matter of copyright.").

We need only comment briefly on the district court's assertion that the
bottle's trade dress -- its blue color, gold label, etc. -- renders the
bottle a protected work. Although it is true that trade dress may arguably
afford Skyy some intellectual property protection with regard to its bottle
 -- an issue we need not decide here -- that protection is irrelevant to
deciding whether the bottle is a preexisting work under the Copyright Act.
As noted above, this concept is one peculiar to the copyright law, and its
scope must be defined within the contours of that law. The Copyright Act
speaks to copyright, not trade dress, and its subject matter, as defined
in section 102, is "original works of authorship."

2. The Bottle Is Not Copyrightable

Recognizing that the preexisting work must be copyrightable, we turn then
to the so-called preexisting work -- the Skyy vodka bottle. The district
court treated the bottle as a whole as the underlying, "preexisting work",
even though the bottle as a whole is a utilitarian object that cannot be

Under the Copyright Act, the design of a useful article, such as a bottle,
is not protected unless the design includes features that exist separately
from utilitarian ones:

    Such works shall include works of artistic craftsmanship insofar
    as their form but not their mechanical or utilitarian aspects are 
    concerned; the design of a useful article, as defined in this section, 
    shall be considered a pictorial, graphic or sculptural work only if, 
    and only to the extent that, such design incorporates pictorial, 
    graphic, or sculptural features that can be identified of existing 
    independently of, the utilitarian aspects of the article.

17 U.S.C. section 101. As Nimmer notes, "[a] work is a 'useful article',
and therefore denied copyright for its shape as such, if it has 'an
intrinsic utilitarian function,' even though it may have other functions
which are not utilitarian." 1 NIMMER section 2.08[B][3], at 2-97 (footnotes

In this case, the district court did not identify any artistic features of
the bottle that are separable from its utilitarian ones. We also find none.
Although it is "difficult [to] determin[e] when pictorial, graphic, or
sculptural features 'can be identified separately from, and are capable
of existing independently of, the utilitarian aspects of the article,'"
Id. at 2-98, we conclude that the bottle has no "artistic features [that]
can be identified separately and [that] are capable of existing
independently as a work of art." Fabrica, 697 F.2d at 893.  The Skyy vodka
bottle, although attractive, has no special design or other features that
could exist independently as a work of art. It is essentially a functional
bottle without a distinctive shape.

Turning next to the bottle's label, which the district court also cited
in part in categorizing Ets-Hokin's photos as derivative works, we note
that "[a] claim to copyright cannot be registered in a print or label
consisting solely of trademark subject matter and lacking copyrightable
matter." 37 C.F.R. section 202.10(b).  Although a label's "graphical
illustrations" are normally copyrightable,  "textual matter" is not --
at least not unless the text "aid[s] or augment[s]" an accompanying
graphical illustration. 1 NIMMER section 2.08[G][2], at 9-136.  The label
on Skyy's vodka bottle consists only of text and does not include any
pictorial illustrations.

We need not, however, decide whether the label is copyrightable because
Ets-Hokin's product shots are based on the bottle as a whole, not on the
label. The whole point of the shots was to capture the bottle in its
entirety. The defendants have cited no case holding that a bottle of this
nature may be copyrightable, and we are aware of none. Indeed, Skyy's
position that photographs of everyday, functional, noncopyrightable
objects are subject to analysis as derivative works would deprive both
amateur and commercial photographers of their legitimate expectations of
copyright protection. Because Ets-Hokin's product shots are shots of the
bottle as a whole -- a useful article not subject to copyright protection
-- and not shots merely, or even mainly, of its label, we hold that the
bottle does not qualify as a "preexisting work" within the meaning of the
Copyright Act. As such, the photos of Ets-Hokin took of the bottle cannot
be derivative works.  The district court erred in so concluding.


Having determined that Ets-Hokin's photos were copyrightable works, we move
to the question of infringement. Ets-Hokin claims infringement with regard
to Skyy's use of his product shots and with regard to solicitation and use
of shots produced by other photographers who, Ets-Hokin contends, unlawfully
mimicked his work.  This issue, which the district court did not reach in
view of its holding that Ets-Hokin failed to establish the validity of his
copyright, should be addressed in the first instance by that court. Although
Ets-Hokin has won the battle of copyrightability, the winner of the
infringement war has yet to be determined.

We note that Skyy has invoke the doctrines of merger and scenes a faire.
Under the merger doctrine, courts will not protect a copyrighted work from
infringement if the idea underlying the copyrighted work can be expressed
in only one way, lest there be a monopoly on the underlying idea. See CDN
Inc. v. Kapes, 197 F.3d 1256, 1261 (9th Cir.1999). In such an instance, it
is said that the work's idea and expression "merge".  Under the related
doctrine of scenes a faire, courts will not protect a copyrighted work from
infringement if the expression embodied in the work necessarily flows from
a commonplace idea;  like merger, the rationale is that there should be no
monopoly on the underlying unprotectable idea. See Landsberg v. Scrabble
Crossword Game Players, Inc., 735 F.2d 485, 489 (9th Cir. 1984); See v.
Durang, 711 F.2d 141, 143 (9th Cir.1983) (per curiam). Although there is
some disagreement among courts as to whether these two doctrines figure
into the issue of copyrightability or are more properly defenses to
infringement, see Mason v. Montgomery Data, Inc., 967 F.2d 135, 138 n. 5
(5th Cir. 1992) (noting a split as to the doctrine of merger); 4 NIMMER
section 13.03[B][3], at 13-69 - 13-70 & nn.164, 165 (same); id. at section
13.03[B][4], at 13-73 n.182 (noting a split as the doctrine as scenes a
faire), we hold that they are defenses to infringement. Accord Kregos v.
Associated Press, 937 F.2d 700, 705 (2d Cir. 1991) (holding that the merger
doctrine relates to infringement, no copyrightability); Reed-Union Corp.
v. Turtle Wax, Inc. 77 F.2d 909, 914 (7th Cir.1996) (explaining why the
doctrine of scenes a faire is separate from the validity of a copyright);
see also 4 NIMMER sections 13.03[B][3], at 13-69 - 13-70, 13.03[B][4],
at 13-73. Accordingly, these defenses should be addressed in the first
instance by the district court in the context of the infringement claims.



D.W. NELSON, dissenting:

The majority opinion errs in reversing the district court's summary 
judgment order because there is no way that Ets-Hokin can prove 
infringement given the low standard of originality for photographs. I
agree with the majority opinion that under this standard that Ets-Hokin's
photographs are original. By the same token, however, so are the other
allegedly infringing photographs of Skyy's vodka bottle.{1}  These
subsequent photographs are based on slightly different angles, different
shadows, and different highlights of the bottle's gold label. Thus, even
if the district court had applied the proper standard of originality,
Ets-Hokin's lawsuit would not have survived summary judgment because
the subsequent photographs also possess originality.{2}  Furthermore, as
a matter of law, legal defenses such as scenes a faire and the merger
doctrine prevent Ets-Hokin from prevailing on his copyright
infringement claims.

I also agree with the majority opinion that the district court erred by
basing its summary judgment order solely on a derivative works analysis.
The majority opinion, however, fails to acknowledge that it is a much
closer question (and a question that lacks clear statutory or judicial
authority) whether a photograph of a vodka bottle can be subject to
derivative works analysis. A derivative work is defined as "a work based
upon one or more preexisting 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." 17 U.S.C.
section 101. Although we have recognized that the statutory definition of
a derivative work is "hopelessly over broad," see Micro Star v. Formgen,
Inc., 154 F.3d 1107, 1110 (9th Cir.1998), the definition is limited by
additional non-statutory requirements. Micro Star recognized that a
derivative work "must substantially incorporate protected material from
the preexisting work." See id. (citing Litchfield v. Spielberg, 736 F.2d
1352, 1357 (9th Cir.1984)) (emphasis added).

It is not clear from the plain meaning of the copyright statute that a
preexisting work must be copyrighted or whether the underlying work merely
must be protectable. The majority opinion relies on inferences in the
copyright statute and absence of references to derivative works in the
trademark and patent statutes. The opinion's only other authority is based
on selective quotations from Nimmer's treatise. See, e.g., Micro Star,
154 F.3d at 1112 (quoting Mirage Editions, Inc. v. Albuquerque A.R.T. Co.,
856 F.2d 1341, 1343 (1988) (quoting 1 Nimmer on Copyright section 3.01
(1986 ed.))) ("'"A work will be considered a derivative work only if it
would be considered an infringing work if the material which it has
derived from a preexisting work has been taken without the consent of a
copyright proprietor of such preexisting work."'").

Yet neither the majority opinion nor Ets-Hokin cites any cases that say
preexisting works protected by trade dress and trademarks cannot be
protected from derivative works. But see Theotokatos v. Sara Lee Personal
Prods., 971 F.Supp. 332, 338 (N.D.Ill.1997) (finding a derivative work
based on preexisting logos and trademarks); Moore Publishing, Inc. v.
Big Sky Mktg., Inc., 756 F.Supp. 1371, 1375 (D.Idaho 1990) (finding a
derivative work based on logos). Although in a dissent to a case about
unlicensed photographs of Cleveland's Rock and Roll Hall of Fame, Chief
Judge Boyce Martin assumed for the purposes of his argument that a
photograph of a Coke bottle was a derivative work:

    When a Coke bottle is photographed it loses a dimension, but the 
    subject of the picture remains recognizable as one of a trademarked, 
    three-dimensional figure. If a photograph of a trademark -- for 
    example, one of the Coke bottle -- can be sold by the owner of the 
    trademark in a poster form, that poster naturally must be recognized
    as one of the owner's "goods", albeit a derivative good.

Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Prods., 134 F.3d 
749, 757 (6th Cir.1998) (Martin, C.J., dissenting). Martin's analysis 
mirrors the analysis in this case and in derivative works cases in other
circuits.3 Suffice to say, in order to trigger a derivative works analysis,
some aspect of the preexisting work must be protected, either by copyright
or by trademark and trade dress.

The flaw in the majority opinion's derivative works analysis is that it
consistently understates the protected elements of Skyy's vodka bottle,
beginning with the opinion's attempt to reproduce Skyy's label in the
statement of facts. The opinion's rough, non-scale, black-and-white
depiction ignores the way Skyy's gold label contrasts with its electric
blue bottle. Vodka bottles are often the subject of highly-competitive
print advertising campaigns. For example, Absolut Vodka is famous for its
clever ads featuring its bottle. The majority opinion overlooks the Skyy
bottle's copyrightable elements -- its non-utilitarian features (such as
the color and shape of the bottle) and its label. Furthermore, the bottle
and label also are subject to trademark and trade dress protection. If
derivative works analysis is limited solely to copyrighted works (as
opposed to works protected by trademark and trade dress), it is up to
Congress, not the Ninth Circuit, to say so. As it currently stands,
derivative works analysis may be another means of preventing Ets-Hokin
from obtaining a monopoly over product shots of Skyy's bottle.

The district court should not have dismissed this case solely based on
a derivative works analysis because this case could have been dismissed
on firmer legal grounds -- the originality of the allegedly infringing
photographs and the merger doctrine. The majority opinion, however,
compounds the district court's error with a blanket rejection of a
derivative works analysis in this case. Thus, I would affirm the district
court's summary judgment order, albeit on slightly different grounds.
I respectfully dissent.

Ets-Hokin was also hired to take photographs of mixed drinks containing
Skyy vodka, but on appeal he does not raise any claims with regard to
those photographs.

The other named defendants are Kanbar, Dadalt, and the advertising firm
hired by Skyy. Ets-Hokin did not name the other photographers as defendants.

Protection for photographs in the current copyright statute is under
17 U.S.C. Section 102(a)(5), which covers "pictorial works."

In light of the historical connection between copyright in photographs
under American and English law, it is noteworthy that the requirement
of originality for copyright in photographs is low also under English law, 
as one commentator observed:

The requirement of originality for photographs has existed since the fine
arts copyright act of 1862 . . From the beginning, however, the standard
of originality was minimal. The issue is considered in Graves' case,
[L.R. 4 Q.B. 715 (1869),] where the applicant argued that an independent
copyright could not subsist in photographs of pre-existing engravings.
In holding that such photographs were entitled to an independent copyright
registration under the act of 1862. Blackburn, J, reasoned that: all
photographs are copies of some object, such as a painting or a statue.
And it seems to me that a photograph taken from a picture is an original
photograph, insofar that to copy it is an infringement of this statute."
[Id. at 723].

KEITH LUPTON, Photographs and the Concept of Originality in Copyright Law,
10(9) Eur. Intell. Prop. Rev. 257, 257 & n.8 (1988).

The full statutory definition states:
A "derivative work" is a work based upon one or more preexisting 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. A work consisting of editorial revisions, annotations,
elaborations, or other modifications which, as a whole, represent an
original work of authorship, is a "derivative work."

This issue does not typically arise. Ordinarily in derivative works cases
the underlying work is copyrightable, and courts implicitly recognize
copyrightability as a prerequisite to invocation of a derivative rights
claim. See, e.g., Stewart v. Abend, 495 U.S. 207, 110 S.Ct. 1750,
109 L.Ed.2d 184 (1990) (discussing a motion picture based upon a magazine
story); Pickett v. Prince, 207 F.3d 402 (7th Cir.2000) (discussing a
guitar based upon the copyrighted symbol associated with the rock legend
Prince); Micro Star v. Formgen Inc., 154 F.3d 1107 (9th Cir.1998)
(discussing video games software based upon other video game software);
ERG, 122 F.3d 1211 (discussing costumes based upon cartoon characters);
Russell v. Price, 448 F.Supp. 303 (C.D.Cal. 1977) (discussing a movie
based upon the play "Pygmalion").

Interpreting the term "unlawfully" to refer to a violation of the copyright
act rather than any other statute is consistent with the legislative
history of the act, which speaks of unlawful use only in connection with 
copyright violations. See H. Rep. No. 94-1476, AT 57 (1976), reprinted in
1976 U.S.C.C.A.N. 5659, 5670-71 ("Unlawfully employing preexisting
copyrighted material"); S. Rep. No. 94-473, at 55 (1975) (SAME); see also
1 Nimmer Section 3.06, at 3-34.26 & n.26.

By contrast, the "preexisting materials" that are the basis of a
compilation "may or may not in themselves be capable of being protected
by copyright." 1 Nimmer Section 3.02, at 3-5.

See generally United States v. Wells, 519 U.S. 482, 490, 117 S.Ct. 921,
137 L.Ed.2d 107 (1997) (stating that in interpreting statutes "the first
criterion in the interpretive hierarchy [is] a natural reading of the full
text."); Stewart v. Abend, 495 U.S. 207, 235, 110 S.Ct. 1750,
109 L.Ed.2d 184 (1990) (interpreting the Copyright Act by "read[ing]
the plaint language of [two different sections] together").

See, for example, the following cases addressing trade dress and trademark
protection in bottles: Paddington Corp. v. Attiki Importers & Distributors,
Inc., 996 F.2d 577 (2d Cir.1993); Faberge, Inc. v. Saxony Prods., Inc.,
605 F.2d 426 (9th Cir.1979); Carillon Importers Ltd. v. Frank Pesce Group,
Inc., 913 F.Supp. 1559 (S.D.Fla.1996).

Were we to old, as the district court did, that the preexisting work must
imply be "protectable" and that trade dress protection was sufficient to
invoke the underlying, "preexisting work" requirement, it would only stand
to reason that underlying works protected by trademarks and patents could
also be the basis for derivative works. Following such a path, however,
would be contrary to the Copyright Act and would disrupt divisions basic
to intellectual property law. For good reason, the Supreme Court cautions
against mixing the doctrines of trademark and copyright. See Sony Corp.
of America v. Universal City Studios, Inc., 464 U.S. 417, 439 & n. 19,
104 S.Ct. 774, 78 L.Ed.2d 574 (1984); United Drug Co. v. Theodore Rectanus
Co., 248 U.S. 90, 97-98, 39 S.Ct. 48, 63 L.Ed. 141 (1918); Trade-Mark
Cases, 100 U.S. 82, 93-95, 25 L.Ed. 550 (1879).

See Lester Horwitz & Ethan Horwitz, 1 Intellectual Property Counseling
and Litigation Section 3.03[1][a], at 3-43 n.9 (1999), for additional
examples of cases in which courts have found features to be separable
- or inseparable - from the utilitarian features of an article.

See 1 Nimmer Section 2.08[G][2], AT 2-136 & N.234.1. As to the requirement
of originality, it bears noting that "there is some tendency to require a
somewhat greater degree of originality in labels than in other works."
1 Nimmer section 2.08[G][3], at 2-140 & n.252 (citing several cases).

Nimmer Explains:  However categorized, certain copyright limitations on
the protection available for such textual material should be observed.
In Kitchens of Sara Lee, Inc. v. Nifty Foods Corp., [266 F.2d 541 (2d Cir.
1959)], The court expressly endorsed the following passage from [a]
copyright office circular . . . relating to commercial prints and labels;
"Brand names, trade names, slogans, and other short phrases or expressions
cannot be copyrighted, even if they are distinctively arranged or printed."
This confirms an earlier trend discernible in the cases that such short
phrases placed upon labels cannot claim copyright protection, at least if
the textual matter does not aid or augment an accompanying pictorial

1 Nimmer section 2.08[G][2], at 2-136 (footnotes omitted). See also
Alberto-Culver Co. v. Andrea Dumon, Inc., 466 F.2d 705, 710 (7th Cir. 1972)
(citing Kitchens of Sara Lee and holding that the phrase "most personal
sort of deodorant" which appeared on the back of a deodorant spray can
was not subject to copyright protection).

Throughout its briefing, Skyy relies heavily on a Seventh Circuit Case,
Gracen v. Bradford Exchange, 698 F.2d 300 (7th Cir.1983), which involved
a painting of a photograph of Judy Garland. Gracen is inapposite, however,
because it involved a work based upon unquestionably copyrightable
material, which this does not. It also bears noting that Rock and Roll Hall
of Fame and Museum, Inc. v. Gentile Productions, 134 F.3d 749 (6th Cir.
1998), has no applicability here. Not only is it a trademark case but 
nowhere does the majority, or for that matter, the dissent, analyze the
issue - relating to a museum's unique building design - under the copyright
statute, let alone under the rubric of derivative copyright.

In his complaint, Ets-Hokin alleged both of these theories of infringement:
(1) Skyy illegally used Ets-Hokin's work for various advertisements,
including in Deneuve magazine, in the San Francisco Examiner, and on the
side of a bus; and (2) Skyy used photographs taken by others that mimicked
Ets-Hokin's photographs. Skyy argues on appeal that, based primarily on a
brief parenthetical reference in summary judgment briefing, Ets-Hokin
argues on appeal that there was no abandonment. Reading the statement in
context-namely as a response to Skyy's efforts to minimize the nature of
the claims, along with other explicit statements arguing both infringement
theories-and given that the district court did not reach the issue of
infringement, we conclude that Ets-Hokin preserved both infringement

The dissent suggests that there is no way that Ets-Hokin could prove
infringement. Base on the record before us, we believe that this is an
issue to be addressed in the first instance by the district court. For
example, the district court has yet to address whether there has been
outright copying as alleged by Ets-Hokin.

Nimmer Explains: [F]or example, if two scenarios wish to treat the
unprotected idea of police life in the South Bronx, for each it will be
only natural to depict [certain stereotypical, stock scenes]. Judge Leon 
Yankwich has called such [scenes] "scenes a faire" -- i.e., "scenes which
'must' be done." That language is often invoked to immunize from liability
similarity of incidents or plot that necessarily follows from a common
theme or setting. Moreover, beyond mere "plot" incidents applicable to
works of fiction, the scenes a faire doctrine can be invoked throughout
other copyright contexts as well. 4 Nimmer section 13.03[B][4],
at 13-72 - 13-73.


{1} Although it may be Ets-Hokin's best argument, this is not a licensing
case about the unauthorized use of Ets-Hokin's photographs. See Mendler
v. Winterland Prod., 207 F.3d 1119 (9th Cir.2000). The district court made
an unambiguous factual finding (which we review for clear error) that
Ets-Hokin abandoned his claims about the unauthorized use of his
photographs in advertisements. Nor does Ets-Hokin attempt to rebut the
district court's finding of abandonment in his appellate briefs. The
majority opinion attempts to ignore the district court's factual findings
and the lack of argument by Ets-Hokin on this issue. Nonetheless, the only
remaining issue in this case is whether the subsequent photographs of 
Skyy's bottle infringe on Ets-Hokin's copyright. As a matter of law,
there cannot be infringement because of the low standard of originality.

{2} We have recognized two exceptions to this broad rule of originality:
(1) a photograph of a copyrighted photograph; and (2) a photograph that
duplicated every single element of a copyrighted photograph. See Los
Angeles New Serv. v. Tullo, 973 F.2d 791, 794 n. 2 (9th Cir.1992)
(citing Nimmer on Copyright, section 2.08[E][1], at 2-126.3 - 2.126.7
(1992 ed)). Neither of these exceptions applies to this case. Given the
different angles, shadows, and highlights of the subsequent photographs,
they are not virtually identical and therefore do not infringe on
Ets-Hokin's photographs.

{3} The majority's attempt to distinguish Judge Posner's decision in
Gracen v. Bradford Exch., 698 F.2d 300 (7th Cir. 1983) -- because Gracen
is a derivative works case based on a "unquestionably" copyrighted work -
- is unpersuasive. Gracen, 698 F.2d at 302 (finding a painting copied from
still-life photographs of Dorothy from the movie "The Wizard of Oz" to be
a derivative work) appears to be on point with this case, especially given
that the Skyy bottle's label and non-utilitarian features are
copyrightable. Nor does the majority opinion specifically address Chief
Judge Martin's coke bottle analogy in Rock and roll Hall of Fame and
Museum. Together, Gracen and the coke bottle analogy suggest that a
derivative works analysis may be appropriate in this case, though not as
a means of granting summary judgment.