Cite as 117 F.Supp.2d 301 (S.D.N.Y. 2000)
no material issue of fact is in dispute and the losing party was on notice that it had to come forward with all of its evidence. See Celotex Corp. v. Catrett, 477 U.S. 317, 326, 106 S.Ct. 2548, 2554, 91 L.Ed.2d 265 (1986) (“district courts are widely acknowledged to possess the power to enter summary judgments sua sponte ”); Bridgeway Corp., 201 F.3d at 139 (“District courts are well advised to give clear and express notice before granting summary judgment sua sponte, even against parties who have themselves moved for summary judgment.”). This Court notified defendants that it was considering a grant of summary judgment for plaintiff on liability and afforded defendants additional time to submit further arguments or evidence. Accordingly, the absence of a motion by plaintiff is inconsequential. See Bridgeway, 201 F.3d at 139.
II. Prima Facie Case of Infringement
Plaintiff claims that defendants infringed its copyrights in the photographs. The Copyright Act does not define “infringement,” but rather states in conclusory fashion that “anyone who violates one of the exclusive rights of the copyright owner … is an infringer of copyright.” 17 U.S.C. § 501(a)(1996). Congress left the courts free to flesh out the outlines of a cause of action. Fundamentally, the elements required to establish a prima facie case of copyright infringement are: “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” Feist Publications, Inc. v. Rural Telephone Serv. Co., 498 U.S. 340, 361, 111 S.Ct. 1282, 1296, 118 L.Ed.2d 358 (1991).
Plaintiff obtained a certificate of registration from the Copyright Office within five years from the date of the photographs’ publication. (Lindner Aff. Ex. 2. Registration No. VA 855–059.) Under 17 U.S.C. § 410(c), the certificate constitutes prima facie evidence of the facts stated therein and of the originality of the work. Here the certificate states that plaintiff is the sole author of the photographs, and therefore, the owner of the copyrights. Defendants bear the burden of overcoming this statutory presumption. See Langman Fabrics v. Graff Californiawear, Inc., 160 F.3d 106, 111 (2d Cir.1998) (noting that “[t]he statutory presumption is by no means irrebutable, but it does order the burden of proof”).
III. Derivative Works
In evaluating whether plaintiff has established ownership of a valid copyright, defendants argue that plaintiff’s photographs are derivative works that must satisfy a higher standard of “substantial originality.” (See Defs.’ Reply Br. at 5–11.) The nub of defendants’ argument is that the photographs are derivative works because they depict the defendants’ frames. (See, e.g., Defs.’ Br. at 4–13; Defs.’ Reply at 1–9.)
The Copyright Act defines a derivative work 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. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a “derivative work”.
17 U.S.C. § 101. Thus, a derivative work must incorporate a substantial element of a preexisting work of authorship and recast, transform, or adapt those elements.
Recently, the Ninth Circuit addressed the question of whether a photograph is a derivative work of the object it depicts. See Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1077–1082 (9th Cir.2000). Although the Ninth Circuit concluded that a photograph of a vodka bottle was not a derivative work of the bottle, it reached that holding only after determin-
