Opinion by Judge McKEOWN; Dissent by Judge D.W. NELSON.
McKEOWN, Circuit Judge:
This case requires us to apply copyright principles to stylized photographs of a vodka bottle. Specifically, we must decide whether professional photographer Joshua Ets-Hokin's commercial photographs, dubbed "product shots," of the Skyy Spirits vodka bottle merit copyright protection. Given the Copyright Act's low threshold for originality generally and the minimal amount of originality required to qualify a photograph in particular, we conclude that Ets-Hokin's photographs are entitled to copyright protection.
We also conclude that the district court erred in analyzing this case through the lens of derivative copyright. The photographs at issue cannot be derivative works because the vodka bottle-the alleged underlying work-is not itself subject to copyright protection. Accordingly, we reverse the grant of summary judgment for Skyy Spirits and remand for consideration of whether infringement has occurred.
I. THE STORY
The centerpiece of this case and the subject of the photographs is a vodka bottle, shaped like a wine bottle, with boldly colored blue glass, a "pilfer-proof" cap, and a rectangular label. The label, which has a shiny blue background and a thin gold border, includes text that reads as follows:
The text is in various fonts and sizes, all colored gold, except for "VODKA," which is white. These are the label's only adornments; there are no pictures, illustrations, or other noteworthy features on the label or elsewhere on the bottle.
Ets-Hokin is a professional photographer who maintains a studio in San Francisco. Maurice Kanbar, the president of Skyy Spirits, Inc. ("Skyy"), and Daniel Dadalt, an employee of the company, visited his studio in the summer of 1993. During this visit, Kanbar and Dadalt reviewed Ets-Hokin's photograph portfolio and subsequently hired him to photograph Skyy's vodka bottle.
Under the terms of a confirmation of engagement, signed by Dadalt on Skyy's behalf, Ets-Hokin retained all rights to the photos and licensed limited rights to Skyy. The parties dispute the scope of the license, including whether Skyy was licensed to use the photographs in advertising or in publications distributed to the public. After the confirmation was executed, Ets-Hokin applied to the U.S. Copyright Office for a certificate of registration for his series of photos, and a certificate was issued effective on March 10, 1995. Section six of the registration form, which instructs the applicant to "[c]omplete both space 6a & 6b for a derivative work," was left blank.
Skyy claims that it found Ets-Hokin's photographs unsatisfactory and thus hired other photographers to photograph the bottle. In dealing with these photographers, Skyy sought to purchase all rights to the photographs of the bottle, as opposed to the license arrangement it had agreed to with Ets-Hokin. One photographer refused to sell his photograph outright, insisting on licensing. Two other photographers were apparently willing to sell all rights to their photographs.
Ets-Hokin brought suit against Skyy and three other defendants
II. THE DISTRICT COURT'S RULING
The defendants argued that Ets-Hokin's photographs were not subject to copyright protection. Contending that Ets-Hokin's photos of the Skyy bottle were derivative works, the defendants moved for summary judgment on the grounds that Ets-Hokin raised no genuine issue of material fact to support the validity of his copyright or his claim of infringement. The district court granted the defendants' motion on the ground that Ets-Hokin failed to establish the validity of his copyright. As a result, the court did not reach the question of infringement. The court also dismissed Ets-Hokin's claims of fraud and negligent misrepresentation. Ets-Hokin v. Skyy Spirits, Inc., No. C 96-3690 SI, 1998 WL 690856 (N.D.Cal. Sept.28, 1998). On appeal, only the copyright claims are at issue.
In analyzing whether Ets-Hokin had a valid copyright, the court noted that, by establishing that the photos were derivative works, the defendants could rebut the statutory presumption of validity that Ets-Hokin enjoyed by virtue of holding a copyright registration. The court then held that the product shots were derivative works, reasoning that the photos were based on a preexisting work, namely, the Skyy vodka bottle. Having found that "the Skyy bottle is clearly a preexisting work," the court further held that the bottle's "trade dress (the blue bottle, the gold label, etc.) and copyrighted material (the label and all non-utilitarian features of the bottle)" rendered it a "protected and copyrighted work."
Once Ets-Hokin's photos were determined to be derivative of the vodka bottle, the court applied the standard applicable to derivative works set forth in Entertainment Research Group, Inc. v. Genesis Creative Group, Inc., 122 F.3d 1211, 1220-21 (9th Cir.1997) [hereinafter ERG]. Specifically, the court stated:
In its analysis of the photographs as derivative works, the court found that Ets-Hokin did not raise a genuine issue of material fact as to either prong of the ERG test, concluding that (1) the photos were insufficiently original to warrant copyright because the differences between the photos and the bottle were not "more than trivial"; and (2) a copyright in the photos would interfere with Skyy's right to create works based upon its own bottle.
STANDARD OF REVIEW
We review de novo the district court's decision to grant summary judgment. See ERG, 122 F.3d at 1216; Worth v. Selchow & Righter Co., 827 F.2d 569, 571 (9th Cir.1987) ("Summary judgments in copyright infringement actions are reviewed de novo."). We likewise interpret the Copyright Act de novo. See generally Bay Area Addiction Research & Treatment, Inc. v. City of Antioch, 179 F.3d 725, 730 (9th Cir.1999) (standard of review for interpretation of a statute). Whether a particular photograph is protected by copyright law is a mixed question of law and fact, also subject to de novo review. Cf. Harper House, Inc. v. Thomas Nelson, Inc., 889 F.2d 197, 201 (9th Cir.1989) ("Issues involving the availability and extent of copyright protection for Harper House's time management system present mixed questions of law and fact" reviewed de novo) (citation omitted).
In order to establish copyright infringement, Ets-Hokin "must prove both valid ownership of the copyright and infringement of that copyright by" the defendants. ERG, 122 F.3d at 1217. To address Ets-Hokin's claim, we must first address whether his photographs are entitled to copyright protection. Only if they are do we turn to the issue of infringement.
I. VALIDITY OF THE COPYRIGHT
Skyy argues, in a nutshell, that the commercial photographs of its vodka bottle are not worthy of copyright protection. We disagree. The essence of copyrightability is originality of artistic, creative expression. Given the low threshold for originality under the Copyright Act, as well as the longstanding and consistent body of case law holding that photographs generally satisfy this minimal standard, we conclude that Ets-Hokin's product shots of the Skyy vodka bottle are original works of authorship entitled to copyright protection. The district court erred in analyzing copyright protection under the rubric of derivative works. To put our holding in context, we summarize the historical treatment of photographs both as artistic expression and as the proper subject of copyright protection.
A. History of Photography as Copyrightable Artistic Expression
It is well recognized that photography is a form of artistic expression, requiring numerous artistic judgments. As one photojournalist wrote,
W. Eugene Smith, Photographic Journalism, PHOTO NOTES, June 1948, at 4, reprinted in PHOTOGRAPHERS ON PHOTOGRAPHY 103, 104 (Nathan Lyons
Edward Weston, Seeing Photographically, 9 COMPLETE PHOTOGRAPHER 3200, 3203 (William D. Morgan ed., 1943), reprinted in PHOTOGRAPHERS ON PHOTOGRAPHY, supra, at 159, 161.
Courts as well as photographers have recognized the artistic nature of photography. Indeed, the idea that photography is art deserving protection reflects a longstanding view of Anglo-American law. Under English law, photographs first received statutory copyright protection under an 1862 law that granted the author of "every original painting, drawing and photograph . . . the sole and exclusive right of copying, engraving, reproducing and multiplying . . . such photograph, and the negative thereof." See Keith Lupton, Photographs and the Concept of Originality in Copyright Law, 10(9) EUR. INTELL. PROP. REV. 257, 257 & n.7 (1988) (quoting the Fine Arts Copyright Act 1862 § 1).
Three years later, President Abraham Lincoln signed into law a similar statute that made "photographs and the negatives thereof" copyrightable.
Burrow-Giles, a landmark case involving a photograph of Oscar Wilde, is the first of a line of cases establishing that photography entails creative expression warranting copyright protection, that photography is "an art," and that an individual photograph may be a "work of art." Id. at 58, 60, 4 S.Ct. 279. Of particular import here, the Court held that several specific decisions made by the photographer rendered his photograph "an original work of art . . . of a class of inventions for which the Constitution intended that Congress should secure to him the exclusive right to use, publish and sell, as it has done. . . ." Id. at 60, 4 S.Ct. 279. Decisions rendering the photograph a protectable "intellectual invention" included: the posing and arrangement of Wilde "so as to present graceful outlines"; the selection and arrangement of background and accessories; the arrangement and disposition of light and shade; and the evocation of the desired expression. Id. Courts today continue
Twenty years after Burrow-Giles, the Supreme Court laid to rest the notion that use of a picture in advertising would preclude its copyrightability. See Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 23 S.Ct. 298, 47 L.Ed. 460 (1903). Writing for the Court, Justice Holmes stated:
Id. at 251, 23 S.Ct. 298. Thus, whether a photograph is used in (or intended for) a museum, an art gallery, a mural, a magazine, or an advertisement does not bear on its copyrightability. We have ourselves rejected the notion that copyright law treats works intended for advertising differently from other works:
Fabrica Inc. v. El Dorado Corp., 697 F.2d 890, 894 (9th Cir.1983) (internal quotations and citation omitted). See also National Cloak & Suit Co. v. Kaufman, 189 F. 215, 217 (1911) (finding copyrightable "pictorial illustrations" of "ladies attired in the latest . . . styles" that appeared in a catalog). Instead of looking to the intended or actual use of the photograph, or considering whether its subject matter has commercial value, we evaluate whether it has copyrightable elements.
Cases after Burrow-Giles and Bleistein confirmed that a photograph of an object is copyrightable. See, e.g., Rogers, 960 F.2d at 307 (2d Cir.1992) (photograph of puppies); Eastern America Trio, 97 F.Supp.2d at 417 (photographs of "common industrial items" including electrical products); Pagano v. Chas. Beseler Co., 234 F. 963, 964 (S.D.N.Y.1916) (photograph of a scene including the New York Public Library).
These are the foundations of copyright applicable to photographs.
B. Contemporary Standards for Copyright Protection of Photographs
Under the copyright laws, Ets-Hokin's certificate of registration from the U.S. Copyright Office entitled him to a "rebuttable presumption of originality" with respect to the photographs at issue. Smith v. Jackson, 84 F.3d 1213, 1219 (9th Cir.1996) (quoting North Coast Indus. v. Jason Maxwell, Inc., 972 F.2d 1031, 1033 (9th Cir.1992)); 17 U.S.C. § 410(c). In moving for summary judgment, the defendants thus initially had the burden of showing the invalidity of Ets-Hokin's copyright:
ERG, 122 F.3d at 1217 (citations and internal quotations omitted). See also Harper House, Inc. v. Thomas Nelson, Inc., 889 F.2d 197, 201 (9th Cir.1989) (stating that the presumption "shifts the burden of proof to the defendants to demonstrate why plaintiff's organizers are not copyrightable."). In short, to overcome the presumption of validity, defendants must demonstrate why the photographs are not copyrightable. This they have failed to do, primarily because the degree of originality required for copyrightability is minimal.
Addressing the threshold for copyrightability, in Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991), the Supreme Court held that "[t]he sine qua non of copyright[ability] is originality" and that "[o]riginal, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity." Id. at 345, 111 S.Ct. 1282 (citation omitted). Here there is no dispute over the independent creation of the photographs-they are the result of Ets-Hokin's work alone-so what we must decide is whether the photographs of Skyy's vodka bottle possess "at least some minimal degree of creativity."
Feist, which involved listings in a telephone directory, described the requisite degree of creativity as "extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, `no matter how crude, humble or obvious' it might be." Id. (citation omitted). When this articulation of the minimal threshold for copyright protection is combined with the minimal standard of originality required for photographic works, the result is that even the slightest artistic touch will meet the originality test for a photograph.
In assessing the "creative spark" of a photograph, we are reminded of Judge Learned Hand's comment that "no photograph, however simple, can be unaffected by the personal influence of the author." Jewelers' Circular Pub. Co. v. Keystone Pub. Co., 274 F. 932, 934 (S.D.N.Y.1921). This approach, according to a leading treatise in the copyright area, "has become the prevailing view," and as a result, "almost any photograph may claim the necessary originality to support a copyright merely by virtue of the photographers' [sic] personal choice of subject matter, angle of photograph, lighting, and determination of the precise time when the photograph is to be taken." 1 MELVIN B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT § 2.08[E], at 2-130 (1999) [hereinafter NIMMER]. This circuit is among the majority of courts to have
In view of the low threshold for the creativity element, and given that the types of decisions Ets-Hokin made about lighting, shading, angle, background, and so forth have been recognized as sufficient to convey copyright protection, we have no difficulty in concluding that the defendants have not met their burden of showing the invalidity of Ets-Hokin's copyright, and that Ets-Hokin's product shots are sufficiently creative, and thus sufficiently original, to merit copyright protection. See also Bleistein, 188 U.S. at 250, 23 S.Ct. 298 ("The least pretentious picture has more originality in it than directories and the like, which may be copyrighted."). Finally, although Ets-Hokin took photos that undoubtedly resemble many other product shots of the bottle-straight-on, centered, with back lighting so that the word "Skyy" on the bottle is clear-the potential for such similarity does not strip his work of the modicum of originality necessary for copyrightability. Indeed, the fact that two original photographs of the same object may appear similar does not eviscerate their originality or negate their copyrightability. See Feist, 499 U.S. at 345-46, 111 S.Ct. 1282 ("Originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying. To illustrate, assume that two poets, each ignorant of the other, compose identical poems. Neither work is novel, yet both are original and, hence, copyrightable.").
Having concluded that Ets-Hokin's photos are entitled to copyright protection, we leave to the district court the scope of Ets-Hokin's copyright in the photographs vis-a-vis the claimed infringement.
C. Derivative Copyright
We next address the issue of derivative copyright because the district court analyzed the photographs as derivative works. For the reasons set forth below, this is not a derivative works case.
The Copyright Act defines a "derivative work" as "a work based upon one or more preexisting works."
We have never previously addressed whether a photograph can be a derivative
As discussed below, the district court erred in adopting the derivative work framework for two reasons: (1) a derivative work must be based on a preexisting work that is copyrightable; and (2) the Skyy vodka bottle is a utilitarian object that is not protected by copyright.
1. Preexisting Work Must Be Copyrightable
Under the Copyright Act, a work is not a "derivative work" unless it is "based upon one or more preexisting works" and, in order to qualify as a "preexisting work," the underlying work must be copyrightable.
Turning first to the statute, several provisions point to the requirement for the underlying, "preexisting work" to be copyrightable. Under section 106, the "owner of copyright" has "exclusive rights" to "prepare derivative works based upon the copyrighted work." Id. § 106(2) (emphasis added). The statute thus presupposes that the preexisting work-that is, the work that underlies the derivative work-is copyrightable. Other provisions buttress this reading.
Under section 102, titled "[s]ubject matter of copyright: [i]n general," copyright protection "subsists ... in original works of authorship." 17 U.S.C. § 102(a). Such "original works of authorship" include not only underlying (preexisting) works but also derivative works and compilations. See id. § 103(a) ("The subject matter of copyright . . . includes compilations and derivative works"). It is significant that the term "works" is used in defining the "subject matter of copyright" and that all of these types of works are subject to copyright.
It is also significant that the Copyright Act specifically limits the scope of copyright protection for derivative works (and compilations). Under section 103, copyright protection "for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully." Id. § 103(a). It would make little sense to specify that a derivative work's copyright does not extend to any part of that work using "preexisting material in which copyright subsists" if that material "has been used unlawfully" unless the material is itself copyrightable.
A comparison of how the Copyright Act defines "derivative works" and "compilations" provides an explanation for the use
These statutory sections, read together,
We view the statute's meaning as plain on its face, but to the extent there is any ambiguity, the legislative history also confirms our reading of the Act. A House report accompanying the Copyright Act states that "[a] derivative work . . . requires a process of recasting, transforming, or adapting one or more preexisting works; the preexisting work must come within the general subject matter of copyright set forth in section 102, regardless of whether it is or was ever copyrighted." H.R. REP. NO. 94-1476, at 57 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5670 (emphasis added and internal quotations omitted). See also Phillip Edward Page, The Works: Distinguishing Derivative Creations Under Copyright, 5 CARDOZO ARTS & ENT. L.J. 415, 418 (1986) ("To be derivative, a work must be `based upon' a preexisting work which could itself come within the general subject matter of copyright.").
We need only comment briefly on the district court's assertion that the bottle's trade dress—its blue color, gold label, etc.—renders the bottle a protected work. Although it is true that trade dress may arguably afford Skyy some intellectual property protection with regard to its bottle
2. The Bottle Is Not Copyrightable
Recognizing that the preexisting work must be copyrightable, we turn then to the so-called preexisting work—the Skyy vodka bottle. The district court treated the bottle as a whole as the underlying, "preexisting work," even though the bottle as a whole is a utilitarian object that cannot be copyrighted.
Under the Copyright Act, the design of a useful article, such as a bottle, is not protected unless the design includes features that exist separately from utilitarian ones:
In this case, the district court did not identify any artistic features of the bottle that are separable from its utilitarian ones. We also find none. Although it is "difficult [to] determin[e] when pictorial, graphic, or sculptural features `can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article,'" Id. at 2-98, we conclude that the bottle has no "artistic features [that] can be identified separately and [that] are capable of existing independently as a work of art." Fabrica, 697 F.2d at 893.
Turning next to the bottle's label, which the district court also cited in part in categorizing Ets-Hokin's photos as derivative works, we note that "[a] claim to copyright cannot be registered in a print or label consisting solely of trademark subject matter and lacking copyrightable matter." 37 C.F.R. § 202.10(b). Although a label's "graphical illustrations" are normally copyrightable,
We need not, however, decide whether the label is copyrightable because Ets-Hokin's product shots are based on the bottle as a whole, not on the label. The whole point of the shots was to capture the bottle in its entirety. The defendants have cited no case holding that a bottle of this nature may be copyrightable, and we are aware of none. Indeed, Skyy's position that photographs of everyday, functional, noncopyrightable objects are subject to analysis as derivative works would deprive both amateur and commercial photographers of their legitimate expectations of copyright protection. Because Ets-Hokin's product shots are shots of the bottle as a whole-a useful article not subject to copyright protection-and not shots merely, or even mainly, of its label, we hold that the bottle does not qualify as a "preexisting work" within the meaning of the Copyright Act. As such, the photos Ets-Hokin took of the bottle cannot be derivative works.
Having determined that Ets-Hokin's photos are copyrightable works, we move to the question of infringement. Ets-Hokin claims infringement with regard to Skyy's use of his product shots and with regard to solicitation and use of shots produced by other photographers who, Ets-Hokin contends, unlawfully mimicked his work.
We note that Skyy has invoked the doctrines of merger and scenes a faire. Under the merger doctrine, courts will not protect a copyrighted work from infringement if the idea underlying the copyrighted work can be expressed in only one way, lest there be a monopoly on the underlying idea. See CDN Inc. v. Kapes, 197 F.3d 1256, 1261 (9th Cir.1999). In such an instance, it is said that the work's idea and expression "merge." Under the related doctrine of scenes a faire, courts will not protect a copyrighted work from infringement if the expression embodied in the work necessarily flows from a commonplace idea;
REVERSED AND REMANDED.
D.W. NELSON, dissenting:
The majority opinion errs in reversing the district court's summary judgment order because there is no way that Ets-Hokin can prove infringement given the low standard of originality for photographs. I agree with the majority opinion that under this standard that Ets-Hokin's photographs are original. By the same token, however, so are the other allegedly infringing photographs of Skyy's vodka bottle.
I also agree with the majority opinion that the district court erred by basing its summary judgment order solely on a derivative works analysis. The majority opinion, however, fails to acknowledge that it is a much closer question (and a question that lacks clear statutory or judicial authority) whether a photograph of a vodka bottle can be subject to derivative works analysis. A derivative work is defined as "a work based upon one or more preexisting works such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted." 17 U.S.C. § 101. Although we have recognized that the statutory definition of a derivative work is "hopelessly over broad," see Micro Star v. Formgen, Inc., 154 F.3d 1107, 1110 (9th Cir.1998), the definition is limited by additional non-statutory requirements. Micro Star recognized that a derivative work "must substantially incorporate protected material from the preexisting work." See id. (citing Litchfield v. Spielberg, 736 F.2d 1352, 1357 (9th Cir.1984)) (emphasis added).
It is not clear from the plain meaning of the copyright statute that a preexisting work must be copyrighted or whether the underlying work merely must be protectable. The majority opinion relies on inferences in the copyright statute and absence of references to derivative works in the trademark and patent statutes. The opinion's only other authority is based on selective quotations from Nimmer's treatise. See, e.g., Micro Star, 154 F.3d at 1112 (quoting Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341, 1343 (1988) (quoting 1 Nimmer on Copyright § 3.01 (1986 ed.))) ("`"A work will be considered a derivative work only if it would be considered an infringing work if the material which it has derived from a preexisting work has been taken without the consent of a copyright proprietor of such preexisting work."'").
Yet neither the majority opinion nor Ets-Hokin cites any cases that say preexisting works protected by trade dress and trademarks cannot be protected from derivative works. But see Theotokatos v. Sara Lee Personal Prods., 971 F.Supp. 332, 338 (N.D.Ill.1997) (finding a derivative work based on preexisting logos and trademarks); Moore Publishing, Inc. v. Big Sky Mktg., Inc., 756 F.Supp. 1371, 1375 (D.Idaho 1990) (finding a derivative work based on logos). Although in a dissent to a case about unlicensed photographs of Cleveland's Rock and Roll Hall of Fame, Chief Judge Boyce Martin assumed for the purposes of his argument that a photograph of a Coke bottle was a derivative work:
Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Prods., 134 F.3d 749, 757 (6th Cir.1998) (Martin, C.J., dissenting). Martin's analysis mirrors the analysis in this case and in derivative works cases in other circuits.
The flaw in the majority opinion's derivative works analysis is that it consistently understates the protected elements of Skyy's vodka bottle, beginning with the opinion's attempt to reproduce Skyy's label in the statement of facts. The opinion's rough, non-scale, black-and-white depiction ignores the way Skyy's gold label contrasts with its electric blue bottle. Vodka bottles are often the subject of highly-competitive print advertising campaigns. For example, Absolut Vodka is famous for its clever ads featuring its bottle. The majority opinion overlooks the Skyy bottle's copyrightable elements—its non-utilitarian features (such as the color and shape of the bottle) and its label. Furthermore, the bottle and label also are subject to trademark and trade dress protection. If derivative works analysis is limited solely to copyrighted works (as opposed to works protected by trademark and trade dress), it is up to Congress, not the Ninth Circuit, to say so. As it currently stands, derivative works analysis may be another means of preventing Ets-Hokin from obtaining a monopoly over product shots of Skyy's bottle.
The district court should not have dismissed this case solely based on a derivative works analysis because this case could have been dismissed on firmer legal grounds—the originality of the allegedly infringing photographs and the merger doctrine. The majority opinion, however, compounds the district court's error with a blanket rejection of a derivative works analysis in this case. Thus, I would affirm the district court's summary judgment order, albeit on slightly different grounds. I respectfully dissent.
KEITH LUPTON, Photographs and the Concept of Originality in Copyright Law, 10(9) Eur. Intell. Prop. Rev. 257, 257 & n.8 (1988).
17 U.S.C. § 101.
1 Nimmer § 2.08[G], at 2-136 (footnotes omitted). See also Alberto-Culver Co. v. Andrea Dumon, Inc., 466 F.2d 705, 710 (7th Cir.1972) (citing Kitchens of Sara Lee and holding that the phrase "most personal sort of deodorant" which appeared on the back of a deodorant spray can was not subject to copyright protection).
The dissent suggests that there is no way that Ets-Hokin could prove infringement. Based on the record before us, we believe that this is an issue to be addressed in the first instance by the district court. For example, the district court has yet to address whether there has been outright copying as alleged by Ets-Hokin.
4 Nimmer § 13.03[B], at 13-72-13-73.