Thank You For Submiting Feedback!
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 shifts to the defendant the burden to prove the invalidity of the plaintiff's copyrights. An accused infringer can rebut this presumption of validity. 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.
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 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, 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 "complete 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 bottle.
Did Ets-Hokin's commercial photographs, dubbed "product shots," of the Skyy Spirits vodka bottle merit copyright protection?
The court held that a certificate of registration created a rebuttable presumption of originality and that appellees had the burden to demonstrate why the photos were not copyrightable. Ets-Hokin's photos were entitled to copyright protection because they met the Copyright Act's low threshold for originality. The district court erred in applying derivative copyright principles because the vodka bottle, the alleged underlying work, was a utilitarian object and not itself subject to copyright protection. The court remanded the case for consideration of the infringement claim.