UNITED STATES COURT OF APPEALS

 

FOR THE NINTH CIRCUIT

 

 

JEFFREY HUNTER MENDLER,        )        No. 98-16061

dba JEFFREY HUNTER                 )

                                                )

        Plaintiff/Appellant,           )        CV-96-2624-TEH

                                                )      

         v.                                     )

                                                )

WINTERLAND PRODUCTION,         )

LTD., and SAN DIEGO YACHT        )

CLUB,                                     )

                                                )

        Defendants/Appellees.              )

_______________________________)

 

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ON APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF CALIFORNIA

HONORABLE THELTON E. HENDERSON, PRESIDING

(Case No. CV-96-2624-THE)

 

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APPELLANT HUNTER-MENDLER'S OPPOSITION TO

APPELLEE'S SUPPLEMENTAL BRIEF

 

                                                        JEFFREY A. BERCHENKO

                                                        ALAN KORN

                                                        Berchenko & Korn

                                                        240 Stockton Street, 3rd Floor

                                                        San Francisco, CA  94108

                                                        (415) 362-5700

 

                                                        Attorneys for Appellant

                                                        Jeffrey Hunter Mendler

INTRODUCTION

          On June 2, 1999, this Court granted Appellees Winterland Concessions Co. and San Diego Yacht Club's motion for leave to file supplemental brief following oral argument.  Pursuant to this Court's Order, Appellant Jeffrey Hunter Mendler, dba Jeffrey Hunter, hereby submits his response to the supplemental brief.

          There is no dispute here that Winterland and Hunter entered into an agreement pursuant to which Winterland was permitted to use Hunter's photographs "as guides, models, and examples, for illustrations to be used on screen printed T-Shirts and other sportswear" in connection with the 1992 America's Cup event.  There is also no dispute that this agreement required Winterland to make photocopies of these images and return Hunter's photographs as soon as possible, which Winterland failed to do.  Finally, it is undisputed that several years later Winterland digitally scanned the unreturned photograph into a computer, and using the software program Adobe Photographop digitally manipulated the Photograph to create the image used on 1995 America's Cup T-Shirts.

          Based on these undisputed facts, this Court is entitled to determine, as a matter of law, whether Winterland's digital manipulation and reproduction of the Photograph on 1995 America's Cup T-Shirts was a use outside the scope of the agreement.  Because Winterland and SDYC failed during oral argument to challenge the applicability of California Civil Code §988(c) and Civil Code §1654 in interpreting Winterland's ambiguous contract, it is now argued that this digitized image somehow constitutes a "pictorial illustration" for Copyright Office classification purposes, and thus an "illustration," notwithstanding the language of the agreement between Winterland and Hunter and the mutual intent of the parties when they entered their agreement.  For the reasons set forth below, Winterland's and SDYC's reliance on Copyright Office classification procedures under the 1909 Act are unavailing.

STANDARD OF REVIEW

          In their Supplemental Brief at footnote 1, Winterland and SDYC assert that the determination of the parties' use of the term "illustration" in their agreement is a question of fact, subject to a "clear error" standard of review.  However, as the Court acknowledged during oral argument, the court of appeals generally conducts de novo review of a district court’s interpretation of a contract.  Mastro v. Witt, 39 F.3d 238, 241 (9th Cir. 1994).  Thus, the appellate court reviews de novo principles of contract interpretation applied to the facts, including whether contract language is ambiguous. Aetna Cas. & Sur. Co. v. Pintlar Corp., 948 F.2d 1507, 1511 (9th Cir. 1991) (citing L.K. Comstock & Co. v. United Engineers and Constructors, Inc., 880 F.2d 219, 221 (9th Cir.1989) (Emphasis added).  The question of what the parties meant by the phrase "as guides, models, and examples, for illustrations" is therefore subject to de novo by this Court.

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ANALYSIS

THE HISTORICAL DEFINITION OF PHOTOGRAPH INCLUDES DIGITIZED IMAGES CONTAINING SIGNIFICANT PHOTOGRAPHIC DETAIL

 

          In their Supplemental Brief, Winterland and SDYC first argue that "the historical definition of photograph is distinct from [that of a] pictorial illustration."  However, it is first necessary to examine what in fact constitutes a "photograph." [1]  Camera images have been readily available to the public ever since the camera obscura of the late Renaissance.  Newhall, The History of Photography, 5th Ed. at 9.  While the camera lucida, designed in 1807, enabled the operator to trace a virtual image of the camera subject on drawing paper, it took Thomas Wedgewood's experiments with silver nitrate and Nicephore Niepce's experiments with bitumen plates before a process was devised by which a camera's image could be mechanically reproduced.  Id. at 11-15.  While lithographic reproduction had previously enabled graphic artists to illustrate everyday life, this process of pictorial reproduction was accelerated enormously by photography, thereby shifting the artistic function from the hand and to the eye looking into a lens.  W. Benjamin,

"The Work of Art in the Age of Mechanical Reproduction," Illuminations, at 221.

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Further, the photographic process allowed the artist to capture images often too

subtle for the layman's eye to detect, so that a street photographer's decision when to press the shutter could separate a masterwork from a snapshot.  Goldstein, Copyright, 2nd Ed. §2.11.1 at 2:121.  As Judge Learned Hand correctly observed, "no photograph, however simple, can be unaffected by the personal influence of the author."  Jeweler's Circular Publishing Co. v. Keystone Publishing Co., 274 F. 932, 934 (SDNY 1921) aff'd, 281 F. 83 (2nd Cir.), cert denied, 259 U.S. 581 (1922).  "Although he did not create the mountain, the park, the seasons or the lighting, [Ansel Adams'] expression of those conditions is an artistic achievement."  Reed-Union Corp. v. Turtle Wax, Inc., 77 F.3d 909, 914 (7th Cir. 1996).

          There have been numerous methods of mechanically reproducing the photographic image throughout history.  The daguerreotype of the 1840s later gave way to the calotype negative (from the Greek, meaning "beautiful picture") printed on silver chloride paper, and other pictorial photographic methods such as photogravure (a means of reproducing the photographic image in printer's ink). Newhall, The History of Photography, 43 and 142.  Later, the invention of the halftone plate in the 1880s permitted the reproduction of photographic images in pictorial magazines, Id. at 251, and technological advances in the Twentieth Century, including the advent of digital scanners and digital cameras, have further enabled individuals to depict, re-present and re-produce detailed photographic images of everyday life.

          From the daguerreotype on, each of the above technologies permits the reproduction of an image that is "photographic" in detail.  Whether the image is taken by a digital camera, or taken from a pinhole camera and later digitally scanned, the image that is reproduced, copied or manipulated remains essentially photographic, regardless of which Adobe Photoshop tool is used.  This is particularly true if detail of the original survives so that the derivative image is recognizable as a work created from the original.  The process of posterization[2]  (or color compression) is similar to the use of a filter or any other simple photographic technique, whether in the darkroom or in a camera, that is used to create a desired coloration or contrast.  Ultimately, posterization, like brightness or color adjustment, is just another tool used to create subtle variation to an original photographic image.

II.      A DIGITIZED PHOTOGRAPH DOES NOT CONSTITUTE AN                     "ILLUSTRATION" UNDER COPYRIGHT LAW

 

          While Winterland and SDYC argue that "the historical definition of photograph is distinct from [that of a] pictorial illustration," this distinction is meaningless since any work constitutes a "pictorial illustration" under copyright law merely by virtue of its being a picture without accompanying text to be illustrated.  1 Nimmer on Copyright, §2.08[F][2] at 2-134.  In defining the meaning of "pictorial illustration" under the 1909 Act, Nimmer states as follows:

It apparently was the view of the Copyright Office that the original version of a picture is not a "pictorial illustration."  Only the reproduction of a picture, such as by lithography, photoengraving, or photography was deemed to be a pictorial illustration.  The wording of the 1909 Act did not require such a restrictive view, but there was little reason to challenge this construction because the original of virtually any "pictorial illustration" would qualify for registration as a "work of art."  It would further seem that any work that under the aforesaid Copyright Office view was eligible for registration as a "pictorial illustration" under Section 5(k) could also obtain registration as a "reproduction of a work of art" under Section 5(h).  There was no appreciable advantage in claiming registration under one or the other classification.  Id. (citations omitted) (Emphasis added).

 

          Thus, even an exact photographic reproduction of a photograph constitutes a "pictorial illustration" under the above classification scheme.  As a result, Winterland could equally argue that its digital scan of the Photograph using Adobe Photoshop would be categorized as a "reproduction of a work of art" by the Copyright Office under the 1909 Act.  Such a categorization is ultimately more realistic, given that Hunter's distinctive photographic image (previously sold as a work of fine art) was digitally scanned and reproduced on T-Shirts by Winterland with only minor manipulation to the underlying image itself.  Conversely, the initial "line drawings" used on Winterland's 1992 America's Cup T-Shirts more accurately constitute a "pictorial illustration" in that this "cartoon-style" shirt is based on the use of Hunter's image as "guides, models, and examples, for illustrations."   If anything, the line drawing originally produced by Winterland on 1992 America's Cup T-Shirts brings to mind those images created by hand in the 17th and 18th Centuries using a camera obscura or camera lucida, whereby the operator traced a virtual image (as a "guide, model and example") on drawing paper. 

          Winterland's reliance on Campbell v. Acuff-Rose Music, Inc. to argue that digital technology (like mechanical or manual technology) can "add something new" to the image is also unavailing.[3]  The Supreme Court decision in Campbell v. Acuff-Rose Music, Inc. 510 U.S. 569, 579 (1994) concerned whether 2 Live Crew's musical parody of the Roy Orbison composition "Oh Pretty Woman" constituted a fair use of copyrighted material under §107 of the Copyright Act.  In their supplemental brief, Winterland and SDYC cite to the first element of a fair use analysis under §107 of the Act (whether the defendant's use "adds something new, with a further purpose or different character"), but this cite is inapposite since Winterland does not argue that its use of the Hunter Photograph constituted a fair use of copyrighted material, nor did the Supreme Court in Campbell v. Acuff-Rose address whether there was any "digital sampling"[4] of the underlying Roy Orbison sound recording by 2 Live Crew.  

          On the other hand, Appellant believes it is instructive to look at other cases in which copyrighted material has been "digitally sampled" in a manner similar to the way in which Winterland "digitally scanned" Hunter's Photograph.  See, e.g., Grand Upright Music, Ltd. v. Warner Bros. Records, Inc., 780 F.Supp. 182, 183 (S.D.N.Y. 1991) ("Thou shalt not steal"); Jarvis v. A&M Records, 827 F.Supp. 282, 290-91 (D.N.J. 1993) (infringement may be found if there is similarity of qualitatively important portions of plaintiff's digitally sampled song in defendant's recording).  The analogy to the unauthorized digital sampling of music is particularly apt here.  In essence, Winterland's appropriation of Hunter's photograph is akin to a singer-songwriter licensing a musical composition (or arrangement of that composition) to a recording artist, who then proceeds to digitally sample the singer-songwriter's actual recording of that composition.  In such an instance, the licensee would have exceeded the limited scope of the license, just as Winterland's digital scan of the Hunter's Photograph exceeded the scope of that agreement.

          By digitally scanning the Hunter Photograph and reproducing that photographically detailed image on T-Shirts three years after the underlying photograph was to be photocopied and returned, Winterland went far beyond the scope of the license to use the Photograph "as guides, models, and examples, for illustrations[.]"  Because a copyright license is assumed to prohibit any use not authorized, S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1088 (9th Cir. 1989), Winterland's digitization of this image for use on 1995 America's Cup T-Shirt merchandise constituted an infringement of Hunter's photograph as a matter of law. 

II.               WHETHER THE DIGITIZED PHOTOGRAPH CONSTITUTES AN "ILLUSTRATION" ULTIMATELY REQUIRES REFERENCE TO THE UNDERLYING CONTRACT, INCLUDING THE INTENT OF THE PARTIES WHEN THEY ENTERED INTO THE CONTRACT

 

          Even assuming a digitized photograph would be categorized as a "pictoral illustration" under earlier copyright laws, such a categorization is not determinative of Hunter's claim.  In analyzing whether Winterland's digitized photograph constituted an "illustration" under the contract, the court must instead examine the intent of the parties at the time they entered into the agreement.  Here, there was ample testimony that Winterland employee John Crist and Hunter "discussed Winterland's bias against reproducing Hunter's photographs on apparel."  (Winterland/SDYC Opposition at 20).  The 1992 T-shirts manufactured by Winterland also affirm that Hunter's Photograph was to be reproduced in the form of line drawn "cartoon"-style illustrations.

          Although the phrase "illustration" in the License Agreement is undefined and ambiguous as used in the "Artist Release Form" drafted by Winterland, Hunter submitted substantial evidence showing the parties actual intent in using the term "illustration" was the creation of derivative line-drawing based drawings based on the Photograph.  The District Court ruling failed to address the evidence regarding the intent of the parties or apply California Civil Code §998(c), California Civil Code §1654 and other general contract law principles in interpreting the meaning of this non-integrated agreement.  Regardless of the varying artistic practices used throughout the years by Warhol, Rauschenberg or the portrait artist for the Wall Street Journal, it is evident from the facts here that the District Court committed reversible error in concluding that Winterland's digital scan of Hunter's Photograph in 1995 was a use within the scope of the License Agreement.  See e.g., S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1085 (9th Cir. 1989); Apple Computers, Inc. v. Microsoft Corp., supra, 759 F.Supp. at 1451; Flotations Systems v. U.S., for Use of Pollia, 136 F.2d 483, 484 (9th Cir. 1943); Warner Bros. Pictures v. Columbia Broadcasting System, supra, 102 F.Supp. at 146; 3 Nimmer on Copyright, §10-08 at 10-71.

CONCLUSION

    Because merely changing the medium in which a Photograph is reproduced will not protect against a finding of infringement, Winterland's digital scan and reproduction of Hunter's Photograph on America's Cup 1995 T-Shirts constituted a use beyond the scope of the license.  Because Hunter bargained for his Photograph to be photocopied and immediately returned so that it could be used only "as guides, models, and examples, for illustrations" on cartoon-style America's Cup T-Shirts in 1992, it is ultimately irrelevant whether the Copyright Office at one time categorized reproductions of Photographs as "pictorial illustrations."  Accordingly, this Court should rule that Winterland's impermissive retention and digital reproduction of this Photograph for use on 1995 Winterland T-Shirts constitutes an infringement as a matter of law, and reverse the District Court's decision in this matter.

 

Date: June 15, 1998                                            _______________________________

                                                            Alan Korn

                                                            Attorney for Appellant

                    Jeffrey Hunter

 


[1] Under §102(a)(5) of the 1976 Act photographs clearly fall under the classification of "pictorial, graphic and sculptural works."  "The [1976] Copyright Act does not contain a definition of a photograph, but subject to the fixation requirement, it would appear to include any product of the photographic process, whether in print or negative form, including film strips, slide films and individual slides.  1 Nimmer on Copyright §2.08[E] at 2-128.

[2] The Adobe Photoshop Manual at page 140 describes posterization as follows:  "Using the Posterize command:  The Posterize command lets you specify the number of tonal levels (or brightness values) for an image and then map pixels to the level that is the closest match.  This command is useful for creating special effects, such as large, flat areas in a photograph.  The effects of this command are most evident when you reduce the number of gray levels in a grayscale image; however, you can also use this command to produce some interesting effects in color images.  Posterize can also be useful for reducing the number of colors in an image you want to distribute over the Web."

[3]  For instance, it is settled law that merely changing the medium in which a Photograph is reproduced will not protect against a finding of infringement.  Rogers v. Koons, 960 F.2d 301, 312-13 (2nd Cir. 1992), cert. denied, 506 U.S. 934 (1992).  Thus, copyright in a photograph will preclude unauthorized copying by drawing or in any other form.  See Lumiere v. Pathe Exch., 275 F. 428 (2nd Cir. 1921); Time, Inc. v. Bernard Geis Assocs., 293 F.Supp. 130 (S.D.N.Y. 1968).

[4]  Defined as "the conversion of analog sound waves into digital code.  The digital code that describes the sampled music can then be reused, manipulated or combined with other digitalized or recorded sounds using a machine with digital data processing capabilities, such as a computerized synthesizer."  Jarvis v. A&M Records, 827 F.Supp. 282, 286 (D.N.J. 1993).