On June 17, 2008, the Tenth Circuit handed both good news and bad news to creators of new media works, with the bad news coming first.

In Meshworks, Inc. v. Toyota Motor Sales U.S.A., the Court found uncopyrightable and, hence, not protected against an alleged copyright infringement, the "unadorned, digital wire-frames of Toyota’s vehicles" which had been commissioned by the car manufacturer’s ad agency, Saatchi & Saatchi, which was also a defendant. The motivating factor for the suit was, of course, Meshworks’ failure to receive payment for anything more than the first use of the digital wire-frames so that such additional, unbargained for uses would have constituted infringement. In this case, the Court acknowledged the presumption of validity flowing from the copyright registration awarded by the Copyright Office to Meshworks but proceeded to conduct its own de novo review on copyrightability. Under the Supreme Court’s decision in the Feist case (Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991)), a work must be original to qualify for copyright protection. By original, the work must be both 1) independently created by the author and 2) possess at least a minimal degree of creativity. Mere technical skill, no matter how great, is sufficient to justify virtually exact replication of a preexisting form.

Meshworks had clearly contributed substantially to the wire frames, which resulted from a two-step process of digitizing (collecting physical data points from the portrayed object) and modeling (generating an image from these data points). About 90 percent of the data points contained in each final Toyota model were the results of the skill and efforts of manually sculpting at the second, modeling step, which took nearly 80 to 100 hours for each modeled vehicle. Nevertheless, the Court found that Meshworks contributed nothing incrementally original to the preexisting Toyota designs or, in the words of the Court, "But the models, reflect, that is, ‘express,’ no more than the depiction of the vehicles as vehicles." (Emphasis in original.)

The Court analogized this situation to the early cases dealing with photography. At one point, many thought that a photograph could not be copyrightable. A photograph, some said, "copies everything and explains nothing." Although many photographs may, in fact, be mere recordings of their subject matter, they have now been readily accepted as a medium for copyrightable works where the photographic image, "…reflects the photographer’s decisions regarding pose, positioning, background, lighting, shading, and the like…" And this is where the Court’s good news arrives. "(W)e do not turn a blind eye to the fact that digital imaging is a relatively new and evolving technology and that Congress extended copyright protection to ‘original works of authorship fixed in any tangible medium of expression, now known or later developed.’ 17 U.S.C. Section 102(a) (emphasis added)….Digital modeling can be, surely is being, and no doubt increasingly will be used to create copyrightable expressions. Yet, just as photographs can be, but are not per se copyrightable, the same holds true for digital models."

The Meshwerks decision is far from unusual. It is, in fact, entirely consistent with similar decisions in Bridgeman Art Library, Ltd. v. Corel Corp., 36 F.Supp. 2d 191 (S.D.N.Y. 1999) (no copyright for photographic transparencies of public domain works of art in an art museum where the "creator" merely intended to replicate, as faithfully as possible, the original artwork), and Gracen v. The Bradford Exchange, 698 F.2d 300 (7th Cir. 1983) (painting on collector’s plates of images from the MGM film "Wizard of Oz" held not copyrightable since nothing original added to image of Dorothy character (portrayed by Judy Garland) as depicted in the film).

In short, the Tenth Circuit has clearly and unambiguously proven the rule by illustrating the exception and, in the process of denying protection to a single digital work, extended such protection to works created and embodied solely in digital media. These works may be as humble as a single digital "painting" or as complex as the latest Pixar animated feature such as "Wall-E." However, the overwhelming majority of new media works will undoubtedly reflect the originality and creativity of their authors sufficient to enjoy the many protections afforded under the copyright laws.

Click here for a PDF copy of the judgement.

Authored by:

Edwin Komen

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