I receive many questions from Artists about their right to paint from a photograph which was not taken by the Artists themselves. This question involves the doctrine known as "derivative works" in copyright law. The new work is literally derived or taken from the first or original work. This issue is also applicable to other images which may be readily available to an Artist such as images in magazines, postcards, and other such media which we come across in our daily lives. While many Artists are aware that the creator of an image owns the copyright, or right to reproduce their own work, most Artists are unaware about the extent of the right when composing their own portrait images for a commission project. Indeed, it is common for a customer to pull out other favorite photos of a subject and stuff them into the artist arms urging "these eyes" or "this hair" or "this overall soft expression."

How far can this go? What part of a portrait can be taken from another work, and what part may not? Unfortunately, the answer has never been definitively settled in our courts or by the legislature. However, there are a few sound legal principals in this area which the Artist should be familiar.

U.S. Copyright statues and accompanying case law state clearly that a copyright protection exists in "original works of authorship fixed in any tangible medium of expression . . . which can be perceived, reproduced or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include. . .(5) pictorial, graphic and sculptural works. . ." 17 U.S.C. ¤102 (a). For the visual artist, there is no question that the standard set forth most certainly applies to all original, visual works. That is, the Artist who created the original work [first] owns the copyright. Case law is more illuminating on the subject where you will find the basic theme of the courts to be: the unauthorized reproduction of a copyrighted photograph whether [by another photo] or any other medium is an infringing copy. Epic Metals Corp. v. Condec, Inc. 867 F. Supp. 1009 (M.D. Fla. 1994) (emphasis added.) "Defendants may copy the ideas presented by the Plaintiff's photos, but may not simply make copies of the photograph." Time, Inc. v. Barnard Geis Assoc., 293 F. Supp. 130 (S.D.N.Y. 1968) (emphasis added.) An artist may avoid infringement by intentionally making sufficient changes so that the works at issue undercut substantial similarity. Warner Bros. v. ABC, 720 F.2d 231, 241 (2d Cir. 1983).

A 1992 New York case serves as a sound study of the basic principles for artists when copying from photographs while rendering their projects. In Rogers v. Koons, 751 F. Supp. 474 (S.D.N.Y. 1990) aff'd 960 F.2d 301 (2d Cir. 1992) the Appellate Court held that a reproduction of a photograph in a sculpture form constituted an infringement. As applied to the law, the Court found that the facts in this case supported an unauthorized copying on the part of Koons, the Defendant.

Photographer Rogers was hired to photograph his customers, Mr. & Mrs. Scanlon, holding their new German Shepherd puppies in their arms in a black and white format. After the Scanlons purchased their commissioned photograph, Rogers placed the work in his catalog of images for sale as is customary in the trade. Rogers later licensed the work for note cards to Museum Graphics of which 10,000 reproductions were made.

New York sculptor, Jeff Koons, was in the midst of creating a group of 20 sculptures for a gallery exhibit entitled "Banality Show." He was also apparently in the habit of seeking out familiar images from photographs from which to work. In 1987, he came across Roger's note card in a souvenir shop and determined it contained good composition from which to sculpt. The note card was very similar to other images [of people holding animals] in Koons' file of resource materials. He believed the photograph to be typical, commonplace and familiar. . .and viewed the image as part of the mass culture—"resting in the collective sub-consciousness of people regardless of whether the card had actually ever been seen by such people." Rogers at page 305.

Koons tore off that portion of the note card showing Roger's copyright of "Puppies" and gave it to one of his wood carving workshops in Italy. He then instructed his artisans to copy the photograph in a three-dimensional work. Throughout the fabrication process, Koons oversaw the carving and even gave the workers "production notes" which stated, in no uncertain terms: "work must be just like the photo—-features of the photo must be captured;" later, "Puppies need detail in fur. Details—Just Like Photo!"; other notes instruct the artisans to keep man in angle of photo. . .Girl's nose is too small. Please make larger as per photo." Rogers at page 305. To paint the polychromed wood "String of Puppies" sculptures, Koons provided artisans with an enlarged photocopy of "Puppies." Painting directions were noted with arrows pointing to the photograph. He writes in his notes: "Paint realistic as per photo, but in blues." and "Man's hair, white with shades of gray as per black and white photo. . . !" (emphasis added.)

When the work was finished, "String of Puppies" was displayed at the Sonnabend Gallery in New York which opened the Banality Show on November 19, 1988. Three of the four copies made were sold to collectors for a total of $367,000; the fourth or artist's copy was kept by Koons.
Koons' use of "Puppies" was not authorized by Rogers. Rogers learned of the unauthorized use of his work through his customers, the Scanlons. A friend who was familiar with the work called to tell the Scanlons that a "colorized" version of "Puppies" was on the front page of the activities section of the May 7, 1989 Los Angeles Times. In fact, the newspaper actually depicted Koons' "String of Puppies" in connection with an article about its exhibition at the Los Angeles Museum of Contemporary Art.

Koons maintains he creates his work in an art tradition dating back to the beginning of the Twentieth Century. This tradition defines its efforts as follows: when the artist finishes his work, the meaning of the original object has been extracted and an entirely new meaning is set in its place. An example of this tradition is Andy Warhol's reproduction of multiple images of Campbell Soup cans. Koons' most famous work in this genre is a stainless steel casting of an inflatable rabbit holding a carrot. Rogers at page 304.

To show an infringement of a copyright, a Plaintiff must show ownership of a copyright; that the Defendant copied the protected material without authorization; and, that the copying was infringing by showing a substantial similarity between the works as relating to the portion of the protected expression. Laureyssens v. Idea Group, 964 F. 2d 131 (2d Cir 1992) see also Feist Publications v. Rural Telephone Service, 111 S. Ct. 1282. The Court first deals with the original authorship/ownership issue. Koons maintains that the portion of Rogers' work allegedly infringed is not [necessarily] an original work of authorship protected under the 1976 Copyright Act. Since that law protects authors' exclusive rights to their works, the cornerstone is that the work must first be original. While a whole work may be copyrighted, this does not mean that every element of it is copyrighted. Copyright protection extends only to those components of the work that are original to the creator. Elements of originality in a photographic image include posing the subjects, lighting, angle, selection of film and camera, evoking the desired expression, and almost any other [creative] variant involved. Rogers at page 307. The quantity of originality that need be shown is modest—only a dash of it will do.

1 M. Nimmer & D., Nimmer, Nimmer on Copyright ¤1.08 (1991).
Roger's inventive efforts in posing the group for the photo, taking the picture, and printing "Puppies" suffices to meet the original work of art criteria. Thus, in terms of a unique expression of the subject matter captured in a photograph, Rogers establishes a valid ownership of a copyright in an original work of art.

The next issue considered is whether there is an unauthorized copying of the photograph by sculptor Koons. The Court has no trouble in finding blatant copying by Koons as was supported by the very unusual evidence [for such a case] of the production notes stressing "copy as per photo. . ." Moreover, the importance of copying the very details of the photograph that embodied Rogers' original contribution, such as: the poses, the shading, the expressions, was stressed by Koons throughout the production of the work.

The more complex issue of substantial similarity is then taken up by the Court. Substantial similarity does not require literally identical copying of every detail. Such similarity is determined by the ordinary observer test: the inquiry is "whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work." Ideal Toy Corp. v. Fab-Lu Ltd., 360 F. 2d 1021, 1022 (2d Cir. 1966) Or, stated by another Court, whether "the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same." Peter Pan Fabrics v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960).

What is protected [under our copyright laws] is the original or unique way that an author expresses his ideas, concepts, principles or processes. In looking at the two works of art to determine whether they are substantially similar, focus must be on the similarity of expression of an idea or a fact, not on the similarity of the ideas or concepts themselves. Durham Indus. v. Tomy Corp. 630 F.2d 905 (2d Cir. 1980). It is not, therefore, the idea of a couple with eight small puppies seated on a bench which is protected, but rather Roger's expression of this idea — as caught in placement, in the particular light, and in the expressions of the subjects — that gives the photograph its charming and unique character, that is to say, makes it original and copyrightable.
Had Koons simply used the idea presented by the photo, there would not have been an infringing copy. But Koons used the identical expression of the idea that Rogers created; the composition, the poses, and the expressions were all incorporated into the sculpture to the extent that, under the ordinary observer test, no reasonable jury could have differed on the issue of substantial similarity. For this reason, the Court held that Koons copied the original photograph in a manner that is substantially similar to the original.

The Court goes on to say that Koons may not defend his act of plagiarism by pointing out how much of the copy he has not pirated. Sheldon v. Metro-Goldwyn Pictures Corp. 81 F. 2d 49, 56 (1936). Where substantial similarity is found, small changes here and there made by the copier are not availing to allow the copy. It is only where the points of dissimilarity exceed those that are similar and those similar are— when compared to the original work—of small import quantitatively or qualitatively that a finding of no infringement is appropriate. Nimmer ¤13.03 [B][1][a]. This is not the case here. Koons' additions, such as flowers in the hair of the couple and the bulbous nose of the puppies, are insufficient in light of the overwhelming similarity to the protected expression of the original work.

The Court then turns to Koons' defense of "fair use" of the image, which is a valid defense in a copyright infringement case. This equitable doctrine permits other people to use copyrighted material without the owner's consent in a reasonable manner for certain purposes. Codified in ¤107 of the 1976 Copyright Act. Section 107 states that an original work copied for purposes such as criticism or comment may not constitute infringement, but instead may be a fair use. The section provides an illustrative—-but not exhaustive—-list of factors for determining when a use is "fair." These factors include (1) the purpose and character of the use, (2) the nature of the copyrighted work, (3) the amount and substantiality of the work used, and (4) the effect of the use on the market value of the original 17 U.S.C. ¤107. citing Rogers at page 308

The "purpose and character of the use" asks whether the original was copied in good faith to benefit the public or was it copied primarily for the commercial interests of the infringer. Because it is an equitable doctrine, conduct which intentionally exploits another's work may prevent an artist from using this fair use defense. 3 Nimmer, ¤13.05[A](1). Relevant to this issue is Koons' conduct, especially his action in tearing the copyright mark off of the Roger's note card prior to sending it to the Italian artisans. This action suggests bad faith in Koons' use of Roger's work and militates against a finding [by the Court] of fair use on behalf of Koons. The Supreme Court has previously held that copies made for commercial or profit-making purposes are presumptively unfair. Sony Corp v. Univ. City Studios, Inc. 464 U.S. 417 (1984). The Court also adds that the profit/non-profit distinction is not the only test. But one should also determine whether the user stands to profit from exploitation of the copyrighted material without paying the customary price to the original author. It is obvious in this case that Koons had no intention of paying Rogers for the image in the photograph. citing Rogers at page 209.

The Copyright Act also provides that comment on (parody) or criticism of a copyrighted work may be a valid use under the fair use doctrine. Koons therefore argues his sculpture is a satire or parody of society at large. To support his argument Koons maintains he belongs to a school of American artists who believe that media images and mass production of commodities has caused a deterioration of society. This particular school proposes to incorporate these images into works which comment critically both on the incorporated object as well as the political and economic system which created it. These themes, Koons urges, draw upon the artistic movements of Cubism and Dadaism with particular influence attributed to Marcel Duchamp, who, in 1913, became the first to incorporate manufactured objects (readymades) into a work of art. Duchamp has directly influenced Koons' work and the work of other contemporary American artists.
Parody or satire is when one artist, for comic effect or social commentary, closely imitates the style of another artist and in so doing creates a new art work that makes ridiculous the style and expression of the original.

Parody and satire are valued forms of expressions which are encouraged because this sort of criticism fosters the creativity protected by the copyright law. A parody entitles its creator, under the fair use doctrine, to more extensive use of the copied work than is ordinarily allowed under the substantial similarity test. The copied work must be, at least in part, an object of the parody, otherwise there would be no need to conjure up the original work. citing Rogers at page 310. This requirement insists that the audience be aware that, underlying the parody, there is an original and separate expression which is attributable to a different artist. This could come from the fact that the copied work is publicly known or because its existence is in some manner acknowledged by the parodist in connection with the parody. The Court goes to the heart of the problem with Koons' parody defense: "even given that ÔString of Puppies' is a satirical critique of our materialistic society, it is difficult to discern any parody of the photograph of "Puppies" itself." The photograph is not the object of a distinct parody from which the audience can draw upon.

The next fair use element asks what is the "nature of the work" that has been copied. The Court considers whether the work is creative, imaginative, or represents an investment of time in anticipation of a financial return. It finds that "Puppies" is indeed creative and imaginative. It is obvious by his actions that Rogers hopes to gain financial return for his efforts with the photograph. Therefore, the Court is unable to support a finding of fair use as to the "nature of the work" aspect of Koons argument. (As an aside, where the original is factual rather than fiction—such as in copying a telephone book compilation—the scope of fair use becomes much broader.)

The Court then turns to the "amount and substantiality" element. It is not fair use when more of the original is copied than is necessary. Even more critical than the quantity is the qualitative degree of copying, that is: what degree of the essence is copied in relation to its whole. In this particular set of facts, the essence of Rogers' photograph was copied nearly in toto, much more than would have been necessary even if the sculpture had been a parody of Roger's work. "In short, it is not really the parody flag that Koons attempts to set sail under, but rather the flag of piracy." citing Rogers at page 309.

As for effect of the use on the market value of the original, the Court refers to its previous finding that Koons intended his copy of Rogers' work be created solely for commercial gain. An owner of a copyright need only show that the unauthorized use of a copy could potentially become so widespread so as to prejudice the potential market for the original work. The reason for this rule relates to a central concern of copyright law: that unfair copying undercuts demand for the original work and, as an inevitable consequence, chills creation of such works.

The Rogers v. Koons opinion represents the prevailing view on derivative works. Rogers was successful in showing: 1) ownership of a valid copyright in an original work; 2) unauthorized copying by Koons; and 3) that the copying was substantially similar and therefore an infringement on Roger's photographic work. The fair use defense was not available to Koons on any one of the four factors enumerated. The most likely factor which he could have prevailed upon would have been the parody or satire element. However, as his copying was so blatant and ill-intentioned, the Court was not able to find any indices of parody in his work.

As an artist, it is important to be aware of the elements of a valid copyright ownership. Your work is valuable and you should always strive to protect its value in any situation. Additionally, you should be thinking about what resources can be utilized, without an infringement, from other creative works, should the need arise. You might ask yourself when utilizing another's work for resource material: would you be in violation of any of the elements of a copyright infringement as stated above? Do you need to seek appropriate authorization from the creator of the work? Does the situation warrant calling in a legal expert?

Stay "tuned in" to where you stand when using resource material that you did not create yourself. Portraiture is an area where it is important to know these distinctions and draw upon them as necessary in rendering your projects. Do not put yourself in a position where you must guess which is appropriate for use in your work, and which is not. Consult an expert when in doubt, and always enter into a written agreement with your clients/agents setting forth the details of your commission works.

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Mary Ann Fergus is a Texas attorney specializing in Art Law.