R.A.R.I.N.   Bridgeman Art Library v. Corel Corporation

Excerpts from April 1999 American Association of Museums Annual Meeting Presentation, "What's Happening in Washington"

Barry G. Szczesny, Esq., AAM Government Affairs Counsel*

First Litigation, Bridgeman Art Library v. Corel Corporation, a case in which we have been closely monitoring developments for over a year.

This is one of the most relevant copyright decisions for museums in years. A Federal district court in New York in November held that photographic reproductions of two-dimensional works, which themselves are in the public domain, do not have the requisite amount of originality to be protected by copyright.

While this ruling was under British copyright law, the court noted it would have come to the same conclusion under U.S. law. At Bridgeman's request, this same district court revisited its decision and issued a revised opinion in February reaching the same conclusion, but doing so under U.S. law. Thus, this new ruling is more damaging to the status quo than the original.

The case was initiated by The Bridgeman Art Library, a British company that licenses transparencies of public domain artwork owned by museums and collectors. Bridgeman, which has an office in New York, acquires reproduction rights for reproductions from owners and free-lance photographers and distributes them as transparencies and digital files on CD-ROM. The defendant, Corel, is a Canadian corporation that is selling a CD-ROM containing 700 digital reproductions of well-known paintings by European masters, including 120 for which Bridgeman claimed to have sole authorization to control. Corel neither licensed nor asked for permission from Bridgeman to use the reproductions.

In its complaint, Bridgeman argued that the images on Corel's CD-ROM must have been copies of Bridgeman's transparencies and, therefore, Corel had violated the British company's copyright. Corel responded that Bridgeman had no valid copyrights to the individual images, making any copyright infringement impossible, because the transparencies of the two-dimensional works lacked any original authorship as required by U.S. copyright law. (Generally, works are protected by copyright from the moment of their creation, if they are both original works of authorship and fixed in a tangible medium of expression.)

In the February opinion similar to the previous, the court stated "There is little doubt that many photographs, probably the overwhelming majority, reflect at least the modest amount of originality required for copyright protection. . . But 'slavish copying,' although doubtless requiring technical skill and effort, does not qualify."

Of note, the court in the context of citing several cases in support of its position quoted from an article by a former general counsel at the Museum of Modern Art, New York: "It is therefore not entirely surprising that an attorney for the Museum of Modern Art, an entity with interests comparable to plaintiff's [Bridgeman] and its clients, not long ago presented a paper acknowledging that a photograph of a two-dimensional public domain work of art 'might not have enough originality to be eligible for its own copyright.'"

Two caveats here: First, Bridgeman concerns only public domain works. Reproductions of works to which the museum holds copyright or has permission to reproduce are still protected. Second, this decision only concerns reproductions of two-dimensional works; three-dimensional works were not discussed. Under the court's reasoning, however, photographic reproductions of three-dimensional objects, because they involve choice of angle, lighting, backdrop, and other creative choices likely would be found to be copyrightable.

Since such a case had never before arisen, many museums for years have operated under the assumption that they hold copyright in such reproductions and invoke it to control the use of images of works in their collections.

In September, we learned that the oral arguments had gone so badly for Bridgeman that the judge stated he was inclined to rule in favor for Corel on the spot. We tried, to no avail, to convince Bridgeman to withdraw from the suit before the expected harmful opinion could be issued. As it turns, Art Resource (whose business includes licensing of reproductions), also tried to talk Bridgeman into dropping the case. We also had been keeping the AAM Copyright Group, composed of museum general counsels and others experienced with museum copyright issues, apprised of developments.

In short, Bridgeman wasn't persuaded. It is worth noting that Bridgeman's attorney, as reported in the New York Law Journal, was recently fined $30,000 by the court to which the Bridgeman case would be appealed (U.S. Court of Appeals for the Second Circuit). Ironically, the attorney was fined for filing a deficient brief in a copyright case. Let me just add that this type of sanction is extremely rare.

Although Bridgeman retained an alternative and reputable counsel for an appeal, we were recently informed that it will not go forward, citing a lack of financial resources. This is good news. We already had decided (with validating advice from a number of museum general counsels) to stay away from any appeal, and were prepared to encourage Bridgeman not to appeal, for the following reasons:

Just about every museum attorney looking at the case objectively thinks it came out the correct way according to U.S. copyright law ­ that's why no museum had ever brought such a suit. The U.S. Copyright Office informally agrees. Thus, no one saw any real chance for reversal on appeal. In addition, an affirmation by the Second Circuit, arguably the most influential court on copyright issues, would be even more damaging.

We already were leaning heavily against submitting an amicus on substantive grounds, regardless of cost. It would have been unwise for AAM to be on Bridgeman's side in this case because it would have undermined our credibility. The copyright and the public domain exist together for a reason: To provide an incentive for creators to create and then have the works fall into the public domain for the free use of all -- the dissemination of knowledge being critical for democracy to thrive. To have museums who argue vigorously (and rightly) on the one hand for "fair use" and on the other to assert perpetual copyright (by taking photos over and over again) over works which have fallen into the public domain would be seen by some as a bit of a double standard and would be all the more troubling coming from institutions with educational missions who hold their collections in the public trust.

Everyone is still digesting the case and its full implications will remain to be seen. From what we have gathered, Bridgeman does not pose as great a threat to practices in the analog world as it does in the digital realm. Museums can still do much to protect their interests through carefully drafted licensing contracts. In addition, museums will need to be more vigilant in controlling the use of their transparencies. In the near term, Bridgeman is not expected to harm museums' greater income source in providing high quality images to commercial publishers. Many believe publishers will still want a very high quality image with the museum's imprimatur and will go to the source. And museums will always control access to the original. With regard to images on the Web, many believe that even before Bridgeman, putting images on the Web was akin to leaving your suitcase in Times Square and expecting to find it the next day, i.e. they're going to be taken, copyright or not.

But Bridgeman raises concerns for proposed enterprises such as Museum Digital Library Collection (MDLC) and the Art Museum Image Consortium (AMICO). Geoff Samuels, head of MDLC, asked a Harvard law school teaching fellow to produce a legal memorandum on this issue to see what options are out there for legally protecting digital images of public domain works in a post-Bridgeman world. In short he recommends a combination of:

1. introducing creative variations into the digitization process to increase the chances of the digital copies qualifying for copyright protection (but this would defeat the purpose of provided a true reproduction);
2. assembling digitized images in a collection may provide copyright protection to the collection as a whole, just as would providing value-added text and documentation, but will not protect the underlying works if they are not independently protected;
3. seeking to impose contractual restrictions upon subsequent use of the digital copies through licensing (but note a contract will not bind a third-party user who obtains the digital image); and
4. exploring the possibility of placing technological restrictions on copying. This is the most practical measure.

What may be most important for museums is to do a better job of educating the public about the rights and reproductions enterprise. As one experienced rights and reproductions specialist recently stated:

Photographing works of art is a costly business. Besides the specialist
photographer, film, and developing, the man-hours of professional staff
involved must also be included in the total cost: art handlers who
remove the painting from (costly climate-controlled) storage or (costly
climate-controlled) display and bring it to the studio and remove
it from its frame, conservators who check the lighting to be used and
vet it vis-a-vis the painting for UV, heat, and light absorption levels,
curators who discuss the painting with the photographer so that he/she
understands the importance of certain elements, colors, shadows,
textures, varnish, etc., and the visual resources staff who coordinate
all this, oversee the work and post-production, as well as re-framing
and return to storage or display. Then there are the times we have
to re-photograph again and again, using different photographers or
different films, because the photographs didn't come out satisfactorily.

To put it simply, we cannot afford to photograph a work in our
collection unless we can hope to get a return on that investment.

This principle of return on investment and others are contained in the handout entitled the National Humanities Alliance "Basic Principles for Managing Intellectual Property in the Digital Environment," which is the result of an effort to build a consensus within the educational community on the uses of copyrighted works in the electronic age. AAM is a long-time board member of the National Humanities Alliance, a member of its intellectual property committee and helped to draft these principles which the AAM Board endorsed last year.

Immediately following the recent American Law Institute/American Bar Association (ALI-ABA) "Legal Problems of Museum Administration" conference in Seattle, there was a fairly extensive discussion of Bridgeman, where there was a general consensus that the decision was not surprising. This is not to say the implications are not problematic for museums and that people wish Bridgeman had not forged ahead with the lawsuit without carefully consulting the American museum community. It is also not to say that we support the opinion, but if such images are to be protected, some other regime other than copyright, such as "unfair competition" needs pursuit.

In addition to economic concerns, an additional Bridgeman problem that Steve Weil (Emeritus Senior Scholar at the Smithsonian's Center for Museum Studies) raised is the potential for a museum to run afoul of the criminal provisions of Section 506 of the Copyright Act for the fraudulent use of a copyright notice. However, it was generally agreed that museums would be safe with notices placed on public domain works prior to Bridgeman, because to run afoul of the criminal provisions you need to have fraudulent intent.

* The article presented here is not necessarily the official position of the American Association of Museums or the U.S. museum community. It also should in no way be considered to constitute formal legal advice.