What Makes Derivative Works Copyrightable?

What Are Derivative Works?

Their very name suggests they’re somehow inferior. When it comes to copyrights, however, some derivative works are entitled to much of the same protection as original works. After a photographer’s relationship with a toy company ended but the company continued to use his photos of toys, he registered the photos for copyright protection, and sued for infringement. An appeals court explained why he had a good case.


HIT Entertainment owns the copyright to the “Thomas & Friends” train characters. It licensed Learning Curve to make toy figures of the characters, and Learning Curve hired Daniel Schrock to take photos of the toys for promotional materials.

Learning Curve used Schrock’s services regularly for about four years. After the relationship ended, the company continued to use some of his photos in ads and on packaging. Schrock registered his photos for copyright protection after Learning Curve stopped sending him work and sued the company and HIT for infringement.

The district court granted summary judgment for the defendants, holding that Schrock didn’t hold a copyright on the photos. It found that the photos were derivative works of the characters copyrighted by HIT and, thus, Schrock needed permission from HIT’s licensee to copyright them. The Seventh Circuit disagreed.


While accepting for the purposes of its opinion that the photos were indeed derivative works, the court held that Schrock wasn’t required to obtain authorization from Learning Curve to copyright them. As long as he was authorized to make the photos, he owned the copyright on them to the extent of their “incremental original expression.”

The appellate court explained that copyright in a derivative work arises by operation of law, not through authority from the owner of the copyright in the underlying work. The court noted, however, that the parties can agree to alter this default rule. Because Schrock created the photos with permission, he owned any copyright in the photos absent any alternative arrangement between the parties. Further, the record from the district court was insufficient to determine whether the parties here agreed to alter the default rule or whether Learning Curve had an implied license to continue use of the photos, so the appellate court remanded the case to the district court for further proceedings.


The court also took the opportunity to tackle some confusion about the degree of originality necessary for a derivative work to become copyrightable. It cited an earlier Seventh Circuit opinion inGracen v. Bradford Exchange that stated “a derivative work must be substantially different from the underlying work to be copyrightable.”

The court here declared that the statement doesn’t require a heightened standard of originality for copyright in a derivative work, and “nothing in the Copyright Act suggests that derivative works are subject to a more exacting originality requirement than other works of authorship.” Rather, the only originality required “is enough expressive variation from the public domain or other existing works to enable the new work to be readily distinguished from its predecessors.”

In the context of photos, it’s sufficient “if the photographer’s rendition of a copyrighted work varies enough from the underlying work to enable the photograph to be distinguished from the underlying work.” Schrock’s photos contained minimally sufficient variation in angle, perspective, lighting and dimension to be distinguishable from the underlying works and qualified for copyright protection.


Photos of copyrighted works aren’t necessarily subject to the same protections as the works themselves. When authorizing a third party to take such photos, copyright holders should protect their rights by contract.

About the copyright law firm:

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. 

Klemchuk LLP hosts Culture Counts, a blog devoted to the discussion of law firm culture and corporate core values with frequent topics about positive work environment, conscious capitalism, entrepreneurial management, positive workplace culture, workplace productivity, and corporate core values.