Vodka Firm Did Not Infringe Photographer’s Copyright

Monday, March 17, 2003

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Vodka Firm Did Not Infringe Photographer’s Copyright—Court

By ROBERT GREENE, Associate Editor

A decade of legal squabbling over a photograph of a blue vodka bottle may have concluded Friday with the Ninth U.S. Circuit Court of Appeals’ rejection of the photographer’s copyright infringement claim.

Skyy Spirits Inc. was within its rights to hire other photographers and use their shots of its distinctive blue bottle in an advertising campaign, the appeals court ruled, even after it rejected the original blue bottle photographs taken by plaintiff Joshua Ets-Hokin’s.

It did not matter that Ets-Hokin’s artistic depiction of the glass container sparked the whole notion of using bottle pictures, Chief Judge Mary Schroeder said. There are only so many ways to shoot a bottle, and since the later shots were not identical to Ets-Hokins’ photographs, they did not infringe his copyright, Schroeder said.

Scenes a Faire

The three-judge panel’s ruling upheld a decision by U.S. District Judge Susan Yvonne Illston of the Northern District of California, who applied the doctrines of merger and scenes a faire and ruled that there could be no copyright in Ets-Hokins’ idea of a blue bottle photo, and that the photo itself just flowed necessarily from the idea.

“Skyy’s photographs are not virtually identical to those of Ets-Hokin,” Schroeder said. “Indeed, they differ in as many ways as possible within the constraints of the commercial product shot. The lighting differs; the angles differ; the shadows and highlighting differ, as do the reflections and background. The only constant is the bottle itself. The photographs are therefore not infringing.”

It was the second time the fight over the blue bottle appeared before the Ninth Circuit.

In 2000, the court awarded a round to Ets-Hokin when it ruled it was indeed possible to copyright an image of the “iconic” container. Skyy argued that the photo was simply a derivative image of the true original work of art—the bottle itself—but the court ruled that there could be no copyright in such an everyday object, even if it was blue.

Judge Dorothy W. Nelson offered a dissent in that opinion, saying the other photographers’ work must also be considered original and non-infringing.

This time around, Schroeder called Nelson’s dissent prescient.

Photographer Quest

The origin of the lawsuit was a 1993 visit by company President Maurice Kanbar and employee Daniel Dadalt to Ets-Hokin’s San Francisco studio in search of the right photographer to enhance the image of the Skyy vodka bottle.

Ets-Hokin and the company signed a licensing agreement under which the photographer retained all rights while Skyy received a limited license for use.

He delivered three shots of the bottle, all in front of a plain backdrop with backlighting, illuminated from the left with shadows on the right. Ets-Hokin registered his photos with the U.S. Copyright Office.

Skyy rejected the photos and hired two photographers who agreed to sell their photos outright without a licensing agreement.

Ets-Hokin alleged that Skyy’s campaign of ads in the newspaper, a magazine and the side of a bus used photos that infringed his copyright, because they were so similar to his own, and in some cases violated his license agreement because they were in fact his own.

The U.S. District Court for the Northern District of California granted Skyy’s motion for summary judgment, but the Ninth Circuit reversed, citing the law’s very low threshold for creativity when it comes to photographs.

The case Ets-Hokin v. Skyy Spirits, Inc., 01-17411.