The Time Judge Gorsuch Brought Copyright Law Into the 21st Century

Good news: the newest nominee to the U.S. Supreme Court gets copyright law, including how it does–and doesn’t–apply to emerging forms of digital media.

The 10th Circuit’s 2008 decision in Meshwerks v Toyota Motor Sales USA, Inc.–which Judge Neil Gorsuch wrote–is one I’ve cited in this blog several times. Of course, it’s one that comes to mind for me because I had the privilege of arguing the case for the successful Toyota defendants, both in the Utah district court and the 10th Circuit. But, as I’ve explained before, its subject matter is specifically relevant to augmented reality, virtual reality, and the other forms of emerging digital media I discuss here, because the case dealt with something crucial to all these new media: digital models.

Here’s a brief summary of the background. When Toyota and its advertisers decided to start using digital (rather than photographic) images of cars in their ads, they hired Meshwerks, a Utah-based a contractor, to create wire-frame digital scans of the vehicles. The marketing team could then colorize, animate, and tweak these images however they needed to. When the defendants altered the images to reflect adjustments to the car body designs, however, Meshwerks sued, arguing that it owned the copyright in the digital models it created.

The courts, however, agreed with us that Meshwerks couldn’t own a copyright, because the digital models were not copyrightable in the first place.

What? You’d be forgiven for having that reaction. A lot of commentators out there–including treatise author and copyright curmudgeon Bill Patry–certainly did. They groused about how much time and effort went into creating digital models, and lamented that the stodgy old courts just didn’t get new technology.

On closer examination, however, it was the critics who weren’t thinking precisely enough. The issue wasn’t whether digital models in general are protectable by copyright law. Of course they are. Copyright law protects expression regardless of the media in which it’s contained. But the law only protects original expression–that is, something that its author came up with rather than copied. The amount of effort and skill that goes into creating the work (what courts call “sweat of the brow”) is irrelevant to this analysis.  The fundamental flaw in plaintiff’s argument here was focusing on the skill it took to operate the 3D scanning machines and Maya modeling software but ignoring the fact that, at the end of the day, all they were doing was reproducing the exact dimensions of something that already existed. They created new digital files, but those files contained nothing conceptually new.

Although that makes good sense once you understand the issues, it can be a difficult distinction to draw and to explain–even to those already versed in copyright law.

That’s one reason Judge Gorsuch’s opinion in the case was so impressive. He threaded the needle very carefully, and explained his reasoning in a way designed to ease the fears of those who might be tempted to use the result to restrict the availability of copyright for digital media. Even Patry grudgingly came around, calling this opinion “a must for inclusion in casebooks for law school classes.”  Here’s an excerpt:

A Luddite might make the mistake of suggesting that digital modeling, as was once said of photography, allows for nothing more than “mechanical reproduction of the physical features or outlines of some object . . . and involves no originality of thought or any novelty in the intellectual operation connected with its visible reproduction in [the] shape of a picture.” Clearly, this is not so.

Digital modeling can be, surely is being, and no doubt increasingly will be used to create copyrightable expressions. Yet, just as photographs can be, but are not per se, copyrightable, the same holds true for digital models. There’s little question that digital models can be devised of Toyota cars with copyrightable features, whether by virtue of unique shading, lighting, angle, background scene, or other choices. The problem for Meshwerks in this particular case is simply that the uncontested facts reveal that it wasn’t involved in any such process, and indeed contracted to provide completely unadorned digital replicas of Toyota vehicles in a two-dimensional space. For this reason, we do not envision any “chilling effect” on creative expression based on our holding today, and instead see it as applying to digital modeling the same legal principles that have come, in the fullness of time and with an enlightened eye, to apply to photographs and other media.

This reasoning (which has already been cited more than 100 times by other courts) helped set the stage for protecting creators of original digital expression, while at the same time roping off a category of mere digital reproductions that will remain in the public domain. In this way, as I’ve written before, Judge Gorsuch’s opinion provides useful guidelines for those developing content in AR, VR, and similar emerging media.

This case, then, suggests that, if Judge Gorsuch is confirmed as our next Supreme Court Justice, the IP and digital media communities are likely to have one more friend on the bench.