http://ipkitten.blogspot.com/2020/06/academy-logo-featuring-oscar-statue.html
What happens when the work that you wish to register is a derivative of your own earlier work? This is the slightly unusual quandary that the Academy of Motion Picture Arts and Sciences (‘the Academy’) found itself in when it tried to register its logo (the ‘Work’) – which prominently features a silhouette of the Oscar statuette – for copyright protection in the US. Further to an initial registration refusal and an appeal to the US Copyright Office Review Board (‘the Board’), last month the latter upheld the refusal, stating that the Work did not contain the requisite authorship necessary for it to be eligible for copyright protection.
| The Academy logo |
Background
The Work (referred to as the ‘Academy logo’) is described as a “black and white two-dimensional graphic consisting of the Oscar statuette on a pedestal surrounded by a triangle”. In June 2017, the Academy filed an application to register the work for copyright protection. This was denied in June 2018, on the basis that the work “lack[ed] the authorship necessary to support a copyright claim”. The First Request for Consideration also concluded with a finding that the “combination of the [Work’s] component elements to be insufficiently creative to support a claim in copyright”.
In response, the Academy claimed that the work “conveyed sufficient copyrightable authorship” as originality was involved in its creation, such as “the overall shape of the Oscar silhouette base and the orientation of the side of the base made to align with the sides of the stylized overhead spotlight that forms the overall shape of the Work, the use, design, and orientation of the overhead spotlight and the sizing of each element for aesthetic proportionality”.
Originality and derivative works
The Board began by illustrating the current legal framework in relation to originality and derivative works.
A work may be registered for copyright protection in the US when it is an “original work of authorship fixed in any tangible medium of expression (17 U.S.C. §102(a)). As per the landmark decision in Feist Publications v Rural Telephone Services, the term original consists of two components: independent creation and sufficient creativity, with only a modicum of creativity necessary for a work to be eligible for copyright protection. It may be found that combinations of non-protectable elements qualify for such protection; however, as set out in Satava v Lowry, “only if those elements are numbers enough and their selection and arrangement original enough that their combination constitutes an original work of authorship”. Further case law has also illustrated that the attractiveness of a design, the intentions of the author, the design’s visual effect, symbolism and commercial success in the marketplace will not be factors in a finding of eligibility for copyright protection (Bleistein v Donaldson Lithographing Co).
In relation to derivative works, it is stated that the registration of such works would not cover any previously published or registered works (17 U.S.C. §103(b)) and that the new authorship contributed to the derivative work must contain a sufficient amount of original expression (Compendium (Third) §311.2). The author of the new work would have to contribute “something more than a ‘merely trivial’ variation” (Albert Bell v Catalda Fine Arts), such that it would make the derivative work “distinguishable from the [preexisting] work in some meaningful way” (Schrock v Learning Curve International). Further, the Board emphasised that a derivative work which only adds non-copyrightable elements to a prior product would not be entitled to copyright protection – ultimately, the addition made must be independently protectable for the derivative work to be registered.
The Board’s decision
In light of the foregoing, the Board [inevitably] came to the conclusion that the work lacked the authorship requisite to sustain a claim for copyright protection.
It was undisputed that the Oscar statuette was a preexisting work protected by copyright. However, the new expressions (a black isosceles triangle surrounding the Oscar silhouette with white trapezoid placed underneath) were only “merely trivial” combinations of standard shapes and colours, thus not possessing the “modicum of creativity” required for the derivative work to be protectable.
Similarly, the combination and arrangement of the Academy logo as a whole was found to be insufficiently creative. Use of a standard black and white colour combination, with a trapezium placed under the statue silhouette where a statue base would be expected and the Oscar silhouette oriented along the black triangle’s line of symmetry resulted in the finding that the new contributions “were too few and their use too standard to make the work distinctive from the pre-existing Oscar silhouette in a meaningful way”, thus inconsistent with the requirements of Satava.
This would not be offset by the Academy’s related arguments that many artistic choices had gone into the work itself, with input from a Creative Director and professional design firm. On the contrary, the intended or subjective meaning of the work would play no role when the Copyright Office relied on objective criteria to determine eligibility for copyright protection.
Comment
Requiring that a derivative work is sufficiently original to be protected does make sense from both a technical and policy perspective. First, a self-standing copyright title can indeed only arise upon fulfilling copyright’s subsistence requirement, including originality. Secondly, protection of derivative works should not serve to unduly and artificially extend the lifetime of earlier copyrights. In any case, as is apparent from the Academy’s very thorough legal regulations page, the Oscar statuette is highly protected, and that should be enough. The logo’s protection as a US and an EU trade mark also doesn’t hurt.
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