Copyright and Photography: Vila v. Deadly Doll Holds That Photo of a Useful Article of Clothing with Copyrighted Artwork Is Not a Derivative Work

By Carolyn Wimbly Martin and Dana Sussman

This post is the fifth in a series on Copyright and Photography. Read the first post here, the second post here, the third post here, the fourth post here and the sixth post here.

On March 27, 2023, photographer Carlos Vila won a double victory in the United States District Court for the Central District of California in his lawsuit against Deadly Doll, a clothing manufacturer that incorporates various graphics, including artwork and song lyrics, into its designs. Vila v. Deadly Doll, Inc., Case No. 2:21-cv-05837-ODW (MRWx) (C.D. Cal. 2023). Vila is a paparazzi photographer and photojournalist who took a photograph of model Irina Shayk crossing the street while wearing Deadly Doll pants. The United States Copyright Office issued Vila’s copyright registration in the photograph on May 5, 2020. Vila subsequently licensed the image to the Daily Mail, which published the photograph, within five years of the registration, providing a rebuttable presumption of the validity of Vila’s copyright in the photograph under 17 USC §410(c).

On February 10, 2020, Vila saw that Deadly Doll had posted his photograph on their Instagram account without his permission. Vila sued for copyright infringement on the basis of his registration of the photograph and Deadly Doll countersued, alleging that the photograph was a derivative work based on the artwork on the pants.

On his direct infringement claim, Vila claimed that Deadly Doll infringed his copyright by posting his photograph without permission. Vila’s valid copyright registration established ownership of the copyright in the photograph, and it was undisputed that Deadly Doll posted Vila’s photograph without Vila’s permission and without altering the photograph in any way. Deadly Doll failed in defending its use under the fair use doctrine, as the Court noted the defense was undeveloped despite a comment that the posting of the photograph “on Instagram [was] for public comment.” Thus the Court granted summary judgment on Deadly Doll’s liability for copyright infringement.

In rejecting Deadly Doll’s counterclaim that Vila’s photograph was a derivative work infringing its own copyright, the Court relied on Star Athletica, L.L.C v. Varsity Brands, 580 U.S. 405, 409 (2017) and Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1078-80 (9th Cir. 2000). Star Athletica held that useful articles are not copyrightable but a feature of a useful article can be “eligible for copyright protection if…it can be perceived as a work of art separate from the useful article” and qualify as a tangible medium of expression separate from the useful article into which it is incorporated. Ets-Hokin dealt with a photograph of a vodka bottle, which is a useful article, that featured a potentially copyrightable label. The Court in Ets-Hokin held that because the photographs at issue featured the bottle as a whole and did not focus on the vodka label, the bottle did not “qualify as a preexisting work” and thus the photograph at issue was not derivative. 

Similarly, the Court here ruled that Vila’s photograph is not a derivative work. The photograph featured the model as she was crossing the street wearing pants, a “useful article,” that included the art at issue. The focus of the photograph was not the artwork on the pants but the model who just happened to be wearing the Deadly Doll pants. Therefore the pants do not qualify as a preexisting work and thus the photograph cannot be considered a derivative work.

This case is a reminder to photographers of the value of registering their works with the Copyright Office. This is particularly true when copyrighted photographs can so easily find their way into social media without permission or the payment of a license fee. Lutzker & Lutzker is available to provide counsel to creatives to protect their livelihood and defend their intellectual property.