Bridgeman Art Library, Ltd. v. Corel Corp.

• Decision Date: 13 November 1998
• Docket Number: No. 97 Civ. 6232(LAK).,97 Civ. 6232(LAK).
• Citation: 25 F.Supp.2d 421
• Parties: THE BRIDGEMAN ART LIBRARY, LTD., Plaintiff, v. COREL CORPORATION, et ano., Defendants.
• Court: U.S. District Court — Southern District of New York

25 F.Supp.2d 421

THE BRIDGEMAN ART LIBRARY, LTD., Plaintiff, v. COREL CORPORATION, et ano., Defendants.

No. 97 Civ. 6232(LAK).

United States District Court, S.D. New York.

November 13, 1998.

COPYRIGHT MATERIAL OMITTED

Stephen A. Weingrad, Weingrad & Weingrad, New York City, for Plaintiff.

Kathryn J. Fritz, Fenwick & West LLP, Ira G. Greenberg, Edwards & Angell, LLP, New York City, for Defendants.

MEMORANDUM OPINION

KAPLAN, District Judge.

Plaintiff The Bridgeman Art Library, Ltd. ("Bridgeman") claims to have exclusive rights in photographic transparencies of a substantial number of well known works of art located in museums around the world and to have transformed those transparencies into digital images in which it also claims exclusive rights. It contends that defendant Corel Corporation ("Corel") is marketing in the United States and abroad compact disks containing digital images of a significant number of the same works of art which, Bridgeman claims, must have been copied from its transparencies and that Corel thus is infringing its copyrights in the United States, the United Kingdom and Canada. It claims as well that Corel's actions violated Sections 32(1) and 43(a) of the Lanham Act and are actionable at common law.¹ The matter now is before the Court on Corel's motion for summary judgment dismissing the complaint and Bridgeman's cross-motion for partial summary judgment.

Facts

Bridgeman

Bridgeman is an English company which has an office in New York.² It is in the business of acquiring rights to market reproductions of public domain works of art owned by museums and other collections³ which it obtains either from the owners of the underlying works of art or freelance photographers it hires.⁴ Bridgeman maintains a library of those reproductions in the form of large format color transparencies and digital files.⁵ Additionally, Bridgeman attaches a color correction strip to each transparency to ensure that the image is a genuine reflection of the original work as it existed in the circumstances in which it was photographed.⁶

Bridgeman distributes its images as transparencies and as digital files on CD-ROM. The high resolution transparencies are made available to clients through licensing arrangements,⁷ while the low resolution CD-ROM images generally are provided to Bridgeman's clients without charge as a digital catalog of available transparencies.⁸

Corel

Corel is a Canadian corporation engaged chiefly in the creation and marketing of computer software products. Among Corel's products is a set of seven CD-ROMs known as "Corel Professional Photos CD-ROM Masters I-VII" ("Masters CD-ROM").⁹ This product contains seven hundred digital reproductions of well known paintings by European masters. Corel maintains that it obtained the images for its Masters CD-ROM from 35 millimeter slides owned by OWI.¹⁰ Corel claims that it was told that the slides were created from lithograph images owned by OWI's president, Richard Friedman.¹¹

Bridgeman's Claim

Bridgeman here claims that Corel has infringed its rights in approximately 120 of its images. Its theory is that (1) the owners of the underlying works of art, all of which it concedes are in the public domain, strictly limit access to those works, (2) Bridgeman's transparencies of those works, from which it prepared its digital images and presumably other reproductions, are "the only authorized transparencies of some of these works of art,"¹² and (3) "[b]y inference and logical conclusion, the images in Corel's CD-ROMs must be copies of Bridgeman's transparencies because they have not proved legal [sic] source."¹³ The alleged infringements are said to have occurred in the United States, Canada and Great Britain.

Bridgeman contends that it enjoys copyright in the allegedly infringed transparencies on a number of theories. First, in 1997, after the dispute with Corel arose, Bridgeman obtained from the Register of Copyrights a certificate of registration for a derivative work entitled Old World Masters I, which consists of digital images and transparencies of all or substantially all of the reproductions allegedly infringed by Corel.¹⁴ Second, it contends that its transparencies enjoy copyright protection under the laws of the United Kingdom and Canada as well as the Convention for the Protection of Literary and Artistic Works, popularly known as the Berne Convention.

Discussion

I. Summary Judgment

Under Fed.R.Civ.P. 56(c), summary judgment is appropriate if there is no genuine issue of material fact and the moving party is entitled to a judgment as a matter of law.¹⁵ While the burden rests on the moving party to demonstrate the absence of a genuine issue of material fact¹⁶ and the Court must view the facts in the light most favorable to the non-moving party,¹⁷ a defendant may prevail if it can demonstrate that the plaintiff cannot establish an essential element of its claim.¹⁸

II. The Copyright Claim

United States Infringement

To establish copyright infringement under the Copyright Act of 1976,¹⁹ a plaintiff must establish ownership of a valid copyright and copying.²⁰ Corel contests both elements, alleging that Bridgeman has no valid copyright in its images and, in the alternative, that there is no evidence of copying. The Court therefore addresses each element in turn. A threshold matter, however, is the applicable choice of law for these questions.

1. Choice of Law

Bridgeman argues that its rights are to be determined entirely under British law on the theory that the copying and initial infringement occurred in England.²¹ The matter is not quite that simple. In view of the United States' accession to the Berne Convention²² and the Universal Copyright Convention ("UCC"),²³ a foreign national such as Bridgeman may seek copyright protection under the Copyright Act although the source of its rights lies abroad.²⁴ The Nimmers suggest that, under the Berne Convention's principle of national treatment, the law of the country of the alleged infringement controls.²⁵ The Second Circuit disagrees. The Circuit recently held that the principle of national treatment does not express any choice of law rule. It "simply requires that the country in which protection is claimed must treat foreign and domestic authors alike."²⁶

The next question, of course, is how to choose the applicable law. Itar-Tass says that the Berne Convention itself cannot be the source of law because it is not self-executing.²⁷ And since the Copyright Act has no choice of law provision, the matter is left to federal common law.²⁸ In consequence, the applicable law is not necessarily the same for each element of the copyright claim.²⁹ The Court therefore must determine which law governs copyrightability and the alleged infringements.

As copyright is a form of property, the Court determines the interests of the parties based on "the law of the state with `the most significant relationship' to the property and the parties."³⁰ According to Itar-Tass, relevant factors include the nationality of the authors, the place of initial publication, and the country of origin as determined under the Berne Convention.³¹

At issue here are nearly 120 photographs produced either by the museums owning the original works of art or by freelance photographers employed by Bridgeman, which is based in the United Kingdom. Many of the underlying works are in Britain.³² Bridgeman claims to own any literary property in all the photographs although the record arguably supports the view that Bridgeman in some instances is merely an exclusive licensing and sales agent for reproductions owned by the museums that own the original works of art.³³ In any case, however, the photographs first were published in the United Kingdom. In these circumstances, the Court concludes that the United Kingdom has the most significant relationship to the issue of copyrightability.

The applicable law for the second element of the copyright claim is simply that of the infringement situs.³⁴ Thus, whether an infringement has occurred in the United States is a matter of United States law.

2. Copyrightability

For the reasons discussed above, whether copyright subsists in Bridgeman's transparencies is a question of United Kingdom law. The result depends upon the Copyright, Designs and Patents Act 1988 (the "UK Act") which renders "original literary, dramatic, musical or artistic works" copyrightable.³⁵ To be original, a work "need not be original or novel in form, but it must originate with the author and not be copied from another work."³⁶ That is not to say that the author, in all circumstances, must create the entire work from scratch to be accorded copyright protection. "Protection of a derivative work turns on whether the [author's] skill, judgment and labour transforms the underlying work in a relevant way."³⁷ That is, the originality requirement is not met where the work in question "is wholly copied from an existing work, without any significant addition, alteration, transformation, or combination with other material."³⁸

This principle is exemplified in the Privy Council's oft quoted observation that although:

"[i]t takes great skill, judgment and labour to produce a good copy by painting or to produce an enlarged photograph from a positive print, ... no one would reasonably contend that the copy painting or enlargement was an `original' artistic work in which the copier is entitled to claim copyright. Skill, labor or judgment merely in the process of copying cannot confer originality.... There must in addition be some element of material alteration or embellishment which suffices to make the totality of the work an original work."³⁹

In light of the originality requirement, Bridgeman's images are not copyrightable under the UK Act. It is uncontested that Bridgeman's images are substantially exact reproductions of public domain works, albeit in a different medium. The images were copied from the underlying works without any...