“Taken together, there is at least one aspect of Dr. Pohl’s photographs that have sufficient creativity to be protectable. However, most aspects of the photographs either relate to the subject of the photographs or necessarily flow from such a subject; an analysis the Eleventh Circuit appears to have overlooked.”

Ownership 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. The Eleventh Circuit recently waded into this area of law in May of 2019 when it decided Pohl v. MH Sub I LLC. The question is: did they 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 Dr. Pohl’s patients without authorization. Dr. Pohl subsequently filed suit.

Defining “Creative Spark”

The district court, in a decision on summary judgment riddled with puns about teeth and dentistry, determined that the images lacked creativity and originality to subsequently receive 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 was 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, that Dr. Pohl staged the subject and set the lighting, albeit not in a professional manner, as well as selecting 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.

What’s Protectable?

Was the Eleventh Circuit right? As the court in Pohl recognized in a footnote, the Southern District of New York is known as a district with substantial expertise in copyright law. Indeed, as recently as July of this year, the Southern District of New York weighed in on the originality of photographs. At issue in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith was the use of a photograph of the musician Prince which had been made into other artistic works by the artist Andy Warhol seemingly without the original photographer’s knowledge. After Prince’s death, the magazine Vanity Fair reproduced one of Warhol’s pieces of work on its cover without giving credit to the photographer. Andy Warhol’s foundation then brought suit for declaratory judgment that the prints do not infringe the copyright in the photograph.

As part of its analysis, the Southern District of New York stated that “[t]he protectable, original elements of a photograph include ‘posing the subjects, lighting, angle, selection of film and camera, evoking the desired expression, and almost any other variant involved’ . . . [b]ut aspects of [a photograph] that necessarily flow” from the photograph’s idea or the photographer’s ‘choice of a given concept’ are not protectable,” concluding that the subject of the photograph, including the general features of that subject, are not protectable. Then, as part of its substantial similarity analysis, the court found that where a protected work contained protectable and unprotectable elements, a court must extract the unprotectable elements when considering substantial similarity.

In Pohl, the subject of the photograph was the patient’s teeth, not the patient herself. That the Eleventh Circuit gave credence to the factual issue of how close Dr. Pohl was to the patient, getting just her teeth as opposed to her full face, belies the issue of what the subject of the photograph was. Similarly, that the Eleventh Circuit gave any weight to the factual issue of the “before” picture being in a seated position versus the “after” picture in a standing one is also questionable given that the images themselves do not reveal anything in the background; the only things shown in each image is the patient’s mouth, teeth and a portion of the patient’s face surrounding the mouth.

Another issue that “necessarily flows” from taking a close-up image of a patient’s mouth is having them open their mouth wide enough to be able to see the whole row of teeth. Whether the subject smiles or simply retracts their lips is but one of a few ways to makes sure such a photograph is achieved, which implicates the merger doctrine because there “is only one or so few ways of expressing an idea that protection of the expression would effectively accord protection to the idea itself.” New York Mercantile Exchange, Inc. v. IntercontinentalExchange, Inc. Given there are but one of a few ways to show a close-up expression of a person’s mouth showing all of their teeth, that aspect of the photographs should have little if any protection. Additionally, the timing of the photographs was not a creative choice but a utilitarian one; Dr. Pohl could not get an image of the fruits of his labor until his dentistry was complete. As such, these aspects should not have been considered protectable to further survive summary judgment.

By the Skin of Its Teeth

The one aspect of Dr. Pohl’s photographs that arguably should receive protection is the lighting. As explained by the Eleventh Circuit, the choice of the lighting display at the location where Dr. Pohl took the photographs was “sufficient” because he had a desired result in mind when taking the photographs, but the fact that he did not carefully stage the patient so as to adjust the lighting like a professional typically would does not change the fact that the lighting in the room was one of his creative choices. As a result, the lighting used for the photographs are an arguably creative aspect of the photographs.

Taken together, there is at least one aspect of Dr. Pohl’s photographs that have sufficient creativity to then be protectable. However, most aspects of the photographs either relate to the subject of the photographs or necessarily flow from such a subject; an analysis the Eleventh Circuit appears to have overlooked. At the end of the day, the originality of a work is a factual issue, so the Eleventh Circuit was right to reverse and remand the dismissal from summary judgment due solely to the lighting issue but, in the author’s opinion, the analysis was wrong for crediting the wrong aspects as being sufficiently original. In other words, the Eleventh Circuit’s opinion got it right, but just by the skin of its teeth.

Image Source: Deposit Photos

Image ID: 7839859

Copyright: Seprimoris