Caseflicks

Court of Appeals for the Seventh Circuit • 1997

Annie Lee and Annie Lee & Friends Company, Inc. v. A.R.T. Company, Also Known as Albuquerque A.R.T. Company

125 F.3d 580 | 1997 U.S. App. LEXIS 25238

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Takeaway

In short, this case holds that attaching a lawfully purchased artwork to a ceramic tile changes its display but does not transform the copyrighted work into an infringing derivative work.

Background

Artist Annie Lee created copyrighted notecards and small lithographs, which her company sold to buyers including Deck the Walls. A.R.T. Company bought some of Lee’s works from a Deck the Walls store, affixed them to ceramic tiles with transparent epoxy resin, and resold the finished tiles.

Lee sued, alleging that the tiles were unauthorized derivative works in violation of her exclusive right under 17 U.S.C. § 106(2). She relied on Ninth Circuit decisions holding that A.R.T.’s similar tile-mounting business infringed copyrights. The district court disagreed with those decisions and entered summary judgment for A.R.T., concluding that mounting the art on tiles did not create derivative works. Lee appealed.

Issues

Issue #1

Whether permanently mounting lawfully purchased copyrighted notecards and lithographs on ceramic tiles creates an unauthorized derivative work under 17 U.S.C. § 106(2).

Holding

No. A.R.T.’s tile mounting did not recast, transform, or adapt Lee’s art and therefore did not create a derivative work.

Reasoning

The court assumed, without deciding, that A.R.T. “prepared” something when it affixed the works to tiles. The dispositive question was instead whether the resulting card-on-a-tile qualified as a statutory “derivative work.” Although § 101 lists examples and includes a residual category for works that are “recast, transformed, or adapted,” A.R.T. did not create an art reproduction because it bought and used Lee’s original copies rather than reproducing them.

A.R.T. did not recast or adapt Lee’s images, and it did not transform the copyrighted art itself. The images continued to depict exactly what they depicted before the mounting process. The ceramic tile changed the work’s method of display, but it did not alter the artistic content of the notecards or lithographs.

Mounting art on tile is functionally comparable to ordinary framing, matting, or display techniques. A frame, mat, or backing can affect how a work appears and may sometimes cause physical changes or use durable adhesives, but no one treats those commonplace acts as the preparation of derivative works. The Ninth Circuit’s reliance on the epoxy bond’s permanence therefore drew a distinction without a legally meaningful difference.

The court declined to resolve the broader debate over whether every derivative work must itself contain enough originality to qualify for independent copyright protection. Even assuming that § 101 covers some nonoriginal derivative works, Lee still had to show a recasting, transformation, or adaptation of her art. Because A.R.T.’s mounting did none of those things, Lee could not prevail under either view of the originality requirement.

Lee’s contrary interpretation would make nearly any modification of a purchased work—writing on a notecard, using it as a coaster, cutting it, or placing a collector’s seal on it—a derivative work requiring the artist’s permission. The court found that result implausibly broad and declined to follow the Ninth Circuit’s contrary decisions in Mirage Editions and Muñoz.

Issue #2

Whether § 106(2) should be read to give Lee a broad right to prevent unwanted modifications of her works, even though the Visual Artists Rights Act does not cover them.

Holding

No. Section 106(2) cannot be used to supply moral-rights protections that Congress deliberately limited in the Visual Artists Rights Act.

Reasoning

Lee’s interpretation of derivative works would effectively create an expansive federal moral right, allowing artists to prohibit any modification they disliked. The court explained that American copyright law historically did not recognize such a broad right, and § 106(2) should not be stretched to create one indirectly.

Congress did enact limited moral-rights protection in the Visual Artists Rights Act, codified principally at § 106A. That statute permits an artist to prevent intentional distortion, mutilation, or modification prejudicial to the artist’s honor or reputation, but Lee disclaimed any claim of reputational harm from A.R.T.’s tiles.

In any event, Lee’s notecards and lithographs were not statutory “works of visual art” covered by § 106A. The statute generally protects unique works or limited editions of 200 or fewer copies that are signed and consecutively numbered. The court reasoned that it would be unsound to use § 106(2) to grant Lee rights that Congress had chosen not to provide through § 106A.