## Facts

- Paul Natkin and Stephen Green were freelance photographers who regularly photographed Oprah Winfrey on the set of *The Oprah Winfrey Show* for Harpo Productions.
- The parties had no written agreement addressing copyright ownership or the scope of permissible uses of the photographs.
- The photographers operated independent businesses, controlled their methods and equipment, received no employee benefits, were paid as non-employees, and could hire substitutes.
- In 1996, Oprah Winfrey and Bob Greene co-authored *Make the Connection*, published by Buena Vista/Hyperion.
- The book reproduced eleven photographs taken by Natkin and Green, allegedly without the photographers’ express permission and without a written license covering book use.
- The photographers sued for copyright infringement and asserted additional federal and Illinois statutory/common-law claims; defendants counterclaimed seeking declaratory relief regarding rights in the photographs.
- The case was before the court on cross-motions for summary judgment on the copyright claim and defendants’ motion for summary judgment on the remaining counts.

## Issues

1. Whether defendants were authors or joint authors of the photographs, or otherwise owned the copyrights (including under a work-for-hire theory).
2. Whether defendants had an express or implied license broad enough to permit reproduction of the photographs in a commercial book.
3. Whether plaintiffs’ Lanham Act and Illinois statutory/common-law claims were preempted by the Copyright Act.
4. Whether the bailment, conversion, tortious-interference, and declaratory-judgment counts could proceed on the summary judgment record.

## Decision

- The court held there was no genuine dispute that defendants did not author the photographs, either solely or jointly; defendants’ authorship/co-authorship theory failed as a matter of law.
- The court found a genuine issue of material fact as to whether defendants had a valid license that covered the book use; summary judgment was denied to both sides on that aspect of the copyright claim.
- The court granted summary judgment for defendants on Counts II–V, holding those claims were preempted by the Copyright Act.
- The court held bailment and conversion claims (Counts VI–VII) were not preempted and could proceed, but granted summary judgment against the tortious-interference claim (Count VIII).
- The court dismissed declaratory-judgment counts (Counts IX–X) as duplicative.
- The court denied summary judgment on plaintiffs’ request for attorney’s fees, reserving the issue for later disposition.

## Legal Principles

- Authorship of photographs generally lies with the photographer who controls the creative process; a defendant’s participation as subject or commissioner does not, without more, create sole or joint authorship.
- Work-for-hire ownership depends on an employment or qualifying commissioned-work relationship; indicia such as independent business operation, control over methods/equipment, lack of benefits, and non-employee tax treatment weigh against employee status.
- A copyright license may be express or implied, but its scope is limited to the parties’ mutual understanding and course of dealing; conflicting evidence about scope creates a triable fact issue.
- The Copyright Act preempts state and federal claims that are equivalent to exclusive rights within copyright (e.g., claims effectively seeking to control reproduction, distribution, or attribution) absent an extra element that makes the claim qualitatively different.
- Bailment and conversion claims based on wrongful possession or failure to return tangible property may avoid preemption because they require elements beyond unauthorized copying.
- Declaratory-judgment counts may be dismissed when they merely mirror and add no independent relief beyond substantive claims already pleaded.

## Conclusion

The court rejected defendants’ attempt to claim authorship in the photographs but required trial on whether defendants’ prior dealings created a license broad enough to permit book publication, while narrowing the case by dismissing preempted and duplicative claims and allowing only certain non-preempted property-based tort theories to proceed.


Natkin v. Winfrey, 111 F. Supp. 2d 1003 (N.D. Ill. 2000)