The judgment of the U.S. Court of Appeals for 10th Circuit in case Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc., No. 06-4222 (10th Cir. Jul. 17 2008), made me thinking a lot lately and it would be a cause for a heart attack of one of my good clients (although it is a legal entity) if analogical case was decided in a similar fashion by a Polish court. You may ask what has happened?

Plaintiff – Meshwerks, Inc., was hired by defendant – Grace & Wild, Inc. to create digital models of several cars manufactured by Toyota. Meshwerks obtained copyright registration certificates covering the models. Meshwerks contended that Toyota Motor Sales U.S.A., Inc., Grace & Wild, 3D Recon, L.L.C., and Saatchi & Saatchi North America, Inc. impermissibly used the models that Meshwerks created. Meshwerks also alleged that Grace & Wild failed to fully pay Meshwerks for the digital modeling that it has performed. United States District Court,D. Utah,Central Division simply ruled.

Although a great deal of skill and effort was involved in the creation of Meshwerks’s three-dimensional digital models, those models do not meet the originality requirement established by copyright law. Accordingly, the models are not entitled to copyright protection. As a result, the Toyota Defendants are entitled to summary judgment on Meshwerks’s copyright claims. Further, the court declines to exercise supplemental jurisdiction over Meshwerks’s breach of contract claim and that claim is therefore dismissed.

The U.S. Court of Appeals for 10th Circuit has affirmed above mentioned judgment.

Although we hold that Meshwerks’ digital, wire-frame models are insufficiently original to warrant copyright protection, we do not turn a blind eye to the fact that digital imaging is a relatively new and evolving technology and that Congress extended copyright protection to “original works of authorship fixed in any tangible medium of expression, now known or later developed.” 17 U.S.C. § 102(a) (emphasis added). 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.” Burrow-Giles, 111 U.S. at 59. 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.

Originality is the sine qua non of copyright. If the basic design reflected in a work of art does not owe its origin to the putative copyright holder, then that person must add something original to that design, and then only the original addition may be copyrighted. In this case, Meshwerks copied Toyota’s designs in creating digital, wire-frame models of Toyota’s vehicles. But the models reflect, that is, “express,” no more than the depiction of the vehicles as vehicles. The designs of the vehicles, however, owe their origins to Toyota, not to Meshwerks, and so we are unable to reward Meshwerks’ digital wire-frame models, no doubt the product of significant labor, skill, and judgment, with copyright protection. The judgment of the district court is affirmed, and defendants’ request for attorneys’ fees is denied.

As usually, both Bill Patry and Marty Schwimmer provide useful and helpful comments.