225 F.3d 1068 (9th Cir. 2000), 98-17072, Ets-Hotkin v. Skyy Spirits

Docket Nº:98-17072
Citation:225 F.3d 1068
Party Name:JOSHUA ETS-HOKIN, Plaintiff-Appellant, v. SKYY SPIRITS, INC., a Delaware corporation; MAURICE KANBAR; DANIEL DADALT; NEEDHAM; DOES 1 through 50, Defendants-Appellees.
Case Date:August 18, 2000
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit

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225 F.3d 1068 (9th Cir. 2000)

JOSHUA ETS-HOKIN, Plaintiff-Appellant,


SKYY SPIRITS, INC., a Delaware corporation; MAURICE KANBAR; DANIEL DADALT; NEEDHAM; DOES 1 through 50, Defendants-Appellees.

No. 98-17072

United States Court of Appeals, Ninth Circuit

August 18, 2000

Argued and Submitted February 10, 2000--San Francisco, California

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[Copyrighted Material Omitted]

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COUNSEL: Charles D. Ossola and Jule L. Sigall, Arnold & Porter, Washington, D.C., and

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Christopher C. Welch, San Francisco, California, for the appellant.

James Wesley Kinnear and Karen D. Fineran, Makoff Kinnear Counsel PC, San Francisco, California, for the appellees.

Victor S. Perlman, Princeton Junction, New Jersey, for amicus American Society of Media Photographers, Inc.

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

Before: Procter Hug, Jr., Chief Judge, and Dorothy W. Nelson and M. Margaret McKeown, Circuit Judges.


McKEOWN, Circuit Judge:

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 follows:




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.1 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 plain 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,

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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 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 EtsHokin. 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 defendants2 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 bottle.


The defendants argued that Ets-Hokin's photographs were not subject to copyright protection. Contending that EtsHokin'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 defendants' 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, 1220-21 (9th Cir. 1997) [hereinafter ERG]. Specifically, the court stated:

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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...

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