taking a Bite out of originaLity
Intellectual Property Section
Chairs:RyanCorbett-Burr&FormanLLPandPatrickReid-Burr&FormanLLP
originality is a low
hurdle to overcome,
but what remains
may be so minimal
O
that enforcement
may be difficult.
wnership of a valid
copyright requires
that the work be
independently created
by the author and have some
“minimal degree of creativity,”
as required by Feist Publ’ns, Inc. v.
Rural Tel. Serv. Co., Inc. 1 The
Eleventh Circuit recently waded
into this area of law in May 2019
when it decided Pohl v. MH Sub I
LLC. 2 The question is: Did the
Court get it right?
Dr. Mitchell Pohl is a dentist
based in Florida who took before
and after photographs of his
patient’s teeth to show his efforts
in cosmetic dentistry. Dr. Pohl
personally took these photographs.
After performing a reverse image
search, Dr. Pohl determined that
the defendant published certain
images of his patients without
authorization. Dr. Pohl
subsequently filed suit.
The district court, in a decision
on summary judgment riddled with
puns about teeth and dentistry,
determined that the images lacked
the creativity and originality to be
entitled to copyright protection.
Specifically, the district court found
that the photographs served “a
utilitarian end — to identify goods
or services that a viewing customer
can expect from the business.” Of
particular importance to the district
court was that the photographs
did not have some “creative spark,”
as delineated in Feist, because
Dr. Pohl did not know whether he
used a digital or film camera, did
not know whether the patient was
sitting or standing, did minimal
posing, and made no specific
lighting choices. The district court
concluded that there was nothing
remotely creative about Dr. Pohl’s
photographs.
The Eleventh Circuit strongly
disagreed. It explained that
originality is not difficult to
establish because the author need
only independently create the work
(as opposed to copying it from other
works) and imbue it with “some
minimal degree of creativity.”
Indeed, the Court found that the
“vast majority” of photographs
qualify, so long as there is some
showing that the author “exercised
some personal choice in the
rendition, timing, or creation of the
subject matter,” including decisions
concerning posing, lighting and
evoking an expression.
Looking at the district court’s
decision, the Eleventh Circuit
critiqued the failure to credit
certain evidence that contradicted
the conclusion reached by the
district court. Specifically, the Court
highlighted evidence that Dr. Pohl
staged the subject and set the
lighting, albeit not in a professional
manner, as well as selected the
timing and subject matter of the
photographs. These facts taken
together showed that Dr. Pohl
had “something in mind when he
took the pictures,” which created
a genuine issue of material fact
concerning the creativity of the
photographs “no matter how crude,
humble or obvious” the choice may
have been. As a result, the Eleventh
Circuit reversed and remanded to
the district court.
This decision shows that
originality is a low hurdle to
overcome, but what remains may
be so minimal that enforcement
may be difficult. It is important
for copyright holders and accused
infringers to take a step back and
look at the whole work when
mounting a challenge to or defense
of originality. n
499 U.S.
340 (1991).
2 770 Fed.
Appx. 482 (11th
Cir. 2019).
1
Author:
Cole Carson –
GrayRobinson,
P.A.
JOIn tHe Ip SeCtIOn tHrOUGH YOUr OnLIne MeMBer prOfILe.
32
MAR - APR 2020
|
HCBA LAWYER