444 377 FEDERAL SUPPLEMENT, 2d SERIES - … · 444 377 FEDERAL SUPPLEMENT, 2d SERIES point to a single relevant section within the TWU Constitution. Nor has Local 100 ... Jonathan

444 377 FEDERAL SUPPLEMENT, 2d SERIES

point to a single relevant section within theTWU Constitution. Nor has Local 100explained how the actions of Hall or of theAppeals Committee constituted a breach ofcontract. Second, Local 100 fails to identi-fy any tort committed by the TWU. Lastly,although Local 100 seemingly raises aclaim under the LMRDA, it fails to explainhow any of the acts of Hall or the AppealsCommittee could ground a claim for dam-ages under the LMRDA. But it ultimate-ly is not necessary for the Court to deter-mine whether Local 100’s contentions arelegally sound. Local 100’s counterclaimfails in any event because Local 100 hasfailed to prove that any act by TWU proxi-mately caused Local 100’s injuries.

TWU did not cause Local 100 to spendmoney on Deinhardt. Local 100 appointedDeinhardt and made her available to hearall protests. It chose to spend its moneyin a particular way, as it concedes in itsmemorandum.29 The actions of Hall andthe Appeals Committee were not a proxi-mate cause of Local 100’s expenditure forDeinhardt’s time.

Second, the TWU Appeals Committeedid not cause Local 100 to hold the re-runelections. Local 100, remarkably, arguesthat the Committee caused Local 100 tohold re-runs in January 2004 in part be-cause it did not stay the re-elections whenso requested.30 This contention is base-less. Local 100 chose to hold those elec-tions, knowing that Deinhardt’s decisionswere on appeal. It took the risk that theAppeals Committee would reverse Dein-hardt, an eminently foreseeable event.The Appeals Committee’s inaction there-fore did not cause the January 2004 Elec-tions

In light of the foregoing, the TWU can-not be liable for any re-election caused by

the Burke letter because none of TWU’sactions proximately caused these re-elec-tions. Burke is not affiliated with TWU,and TWU cannot be liable for her actions.

Nor did TWU cause the new electionsrelated to Hall’s mailing. Even they wereheld at Local 100’s behest. The determi-nations of the DOL were not binding.Both the DOL and TWU left it up to Local100 to decide what it wanted to do: holdnew elections or face a civil action by theDOL. The outcome of such a suit wouldhave been far from certain, especially as itrelates to Hall’s mailing. Local 100 mustbear the costs of running the re-election itchose to run.31

Conclusion

Defendant’s counterclaim is dismissed.Upon entry of judgment, the Clerk shallclose the case.

The foregoing shall constitute theCourt’s findings of fact and conclusions oflaw.

SO ORDERED.

,

Jonathan MANNION, Plaintiff,

v.

COORS BREWING COMPANY andCarol H. Williams Advertising,

Defendants.

No. 04 Civ. 1187(LAK).

United States District Court,S.D. New York.

July 21, 2005.Background: Owner of copyright in pho-tograph sued billboard advertiser for in-

29. Def. Br. at 3 (‘‘The Local 100 ExecutiveBoard also chose to utilize the services of aNeutral Monitor to resolve election dis-putes.’’).

30. Def. Br. at 10.

31. Rule 56.1 St. ¶ 38.

445MANNION v. COORS BREWING CO.Cite as 377 F.Supp.2d 444 (S.D.N.Y. 2005)

fringement. Parties cross-moved for sum-mary judgment.Holdings: The District Court, Kaplan, J.,held that:(1) photograph was sufficiently original to

warrant copyright protection, and(2) fact issue existed as to whether photo-

graph and billboard advertisementwere substantially similar.

Plaintiff’s motion denied; defendant’s mo-tion granted in part and denied in part.

1. Federal Civil Procedure O2534Where cross-motions for summary

judgment are filed, court must evaluateeach party’s motion on its own merits,taking care in each instance to draw allreasonable inferences against party whosemotion is under consideration. Fed.RulesCiv.Proc.Rule 56(c), 28 U.S.C.A.

2. Copyrights and Intellectual PropertyO53(1)

To prove infringement, plaintiff withvalid copyright must demonstrate that: (1)defendant has actually copied plaintiff’swork, and (2) copying is illegal becausesubstantial similarity exists between defen-dant’s work and protectable elements ofplaintiff’s.

3. Copyrights and Intellectual PropertyO83(3.1)

‘‘Actual copying,’’ which is used asterm of art to mean that copyright in-fringement defendant, in creating its work,used plaintiff’s material as model, temp-late, or even inspiration, may be shown bydirect evidence, which rarely is available,or by proof of access and probative simi-larities between works.

See publication Words and Phras-es for other judicial constructionsand definitions.


Accused work will be considered de-rivative work only if it would be considered

copyright infringing work absent consent;that is, infringement inquiry logically pre-cedes or at least controls derivative workinquiry.


Sine qua non of copyright is originali-ty; copyright protection may extend onlyto those components of work that are orig-inal to author.


‘‘Original,’’ in copyright context meansonly that work was independently createdby author, as opposed to copied from otherworks, and that it possesses at least someminimal degree of creativity.


7. Copyrights and Intellectual PropertyO6

Nature and extent of photograph’scopyright protection differs depending onwhat makes that photograph original.


Copyright protection derives from fea-tures of work itself, not effort that goesinto making it.


Photograph may be original, for pur-pose of determining copyright protection,in three, related respects: (1) rendition, orhow subject is depicted; (2) timing, orwhen subject is depicted; and (3) creationof subject.


Insofar as photograph is original inrendition or timing, copyright protects im-age but does not prevent others from pho-


tographing same object or scene; to extentthat photograph is original in its creationof subject, however, copyright extends alsoto that subject.


Photograph of young black man wear-ing white T-shirt and large amount of jew-elry was sufficiently original to warrantcopyright protection; photographer usedrelatively unusual angle and distinctivelighting, posed subject against sky, andorchestrated subject’s clothing and facialexpression.

12. Copyrights and Intellectual PropertyO4.5

Copyright does not protect ideas, onlytheir expression.

13. Copyrights and Intellectual PropertyO4.5

When given idea is inseparably tied toparticular expression, so that there is‘‘merger’’ of idea and expression, courtmay deny copyright protection to expres-sion in order to avoid conferring monopolyon idea to which it inseparably is tied.



Merger doctrine did not precludegranting of copyright protection to photo-graph of young black man wearing whiteT-shirt and large amount of jewelry; itwas possible to imagine any number ofdepictions of such subject matter.


When determining copyright infringe-ment of photograph or other visual arts,idea/expression distinction is not useful orrelevant.


In looking for substantial similaritybetween copyrighted and allegedly infring-ing works, factfinder compares relevantelements of works, but does not view thoseelements in isolation.


Although addition of text and othervisual elements was irrelevant to analysisof similarity between copyrighted photo-graph and accused billboard advertise-ment, changes made to allegedly copiedimage were relevant.


If points of dissimilarity betweencopyrighted and allegedly infringing worksnot only exceed points of similarity, butindicate that remaining points of similarityare, within context of copyrighted work, ofminimal importance, then no infringementresults.


Issue of material fact as to whetherbillboard advertisement depicting youngblack man wearing white T-shirt and largeamount of jewelry was substantially simi-lar to copyrighted photograph of samesubject matter precluded summary judg-ment in infringement action.

Mary D. Dorman, for Plaintiff.

S. Raye Mitchell, The Mitchell LawGroup, PC, for Defendants.

MEMORANDUM OPINION

KAPLAN, District Judge.

The parties dispute whether a photo-graph used in billboard advertisements for


Coors Light beer infringes the plaintiff’scopyright in a photograph of a basketballstar. The defendants almost certainly imi-tated the plaintiff’s photograph. The ma-jor question is whether and to what extentwhat was copied is protected. The caserequires the Court to consider the natureof copyright protection in photographs.The matter is before the Court on crossmotions for summary judgment.

Facts

Jonathan Mannion is a freelance photog-rapher who specializes in portraits of ce-lebrity athletes and musicians in the rapand rhythm-and-blues worlds.1 In 1999 hewas hired by SLAM, a basketball maga-zine, to photograph basketball star KevinGarnett in connection with an article thatthe magazine planned to publish abouthim.2 The article, entitled ‘‘Above theClouds,’’ appeared as the cover story ofthe December 1999 issue of the magazine.3

It was accompanied by a number of Mann-ion’s photographs of Garnett, including theone at issue here (the ‘‘Garnett Photo-graph’’), which was printed on a two-pagespread introducing the article.4

The Garnett Photograph, which is repro-duced below,5 is a three-quarter-lengthportrait of Garnett against a backdrop ofclouds with some blue sky shining through.The view is up and across the right side of

Garnett’s torso, so that he appears to betowering above earth. He wears a whiteT-shirt, white athletic pants, a black close-fitting cap, and a large amount of plati-num, gold, and diamond jewelry (‘‘blingbling’’ in the vernacular), including severalnecklaces, a Rolex watch and bracelet onhis left wrist, bracelets on his right wrist,rings on one finger of each hand, andearrings. His head is cocked, his eyes areclosed, and his heavily-veined hands, near-ly all of which are visible, rest over hislower abdomen, with the thumbs hookedon the waistband of the trousers. Thelight is from the viewer’s left, so thatGarnett’s right shoulder is the brightestarea of the photograph and his hands castslight shadows on his trousers. As repro-duced in the magazine, the photographcuts off much of Garnett’s left arm.6

In early 2001, defendant Carol H.Williams Advertising (‘‘CHWA’’) began de-veloping ideas for outdoor billboards thatwould advertise Coors Light beer to youngblack men in urban areas.7 One ofCHWA’s ‘‘comp boards’’—a ‘‘comp board’’is an image created by an advertising com-pany to convey a proposed design 8—useda manipulated version of the Garnett Pho-tograph and superimposed on it the words‘‘Iced Out’’ (‘‘ice’’ being slang for dia-monds 9) and a picture of a can of CoorsLight beer (the ‘‘Iced Out Comp Board’’).10

1. Mannion Decl. ¶ 1.

2. Id. ¶ 3.

3. See Pl.Ex. A.

4. See id.; Def. Ex. A; Am. Cpt. Ex. B.

5. Published opinions in copyright cases con-cerning graphical works do not often includereproductions of those works. Two excep-tions are Knitwaves, Inc. v. Lollytogs Ltd., 71F.3d 996, 1014–17 (2d Cir.1995) and Tufenki-an Import/Export Ventures, Inc. v. EinsteinMoomjy, Inc., 237 F.Supp.2d 376, 390–93(S.D.N.Y.2002). Such reproductions arehelpful in understanding the opinions, even if

the images are not ideal because the Westreporters print in black and white.

6. Def. Ex. A; Pl.Ex. A; Am. Cpt. Ex. B;Mannion Decl. ¶¶ 4–5, 7–8.

7. Cook Decl. ¶ 2.

8. See Mannion Decl. ¶ 12; Cook Decl. ¶ 4;Fournier v. Erickson, 202 F.Supp.2d 290, 292(S.D.N.Y.2002).

9. See, e.g., AMERICAN HERITAGE DICTIONARY 868(4th ed.2000).

10. See Cook Decl. ¶¶ 3, 5; Pl.Ex. B.


CHWA obtained authorization from Mann-ion’s representative to use the GarnettPhotograph for this purpose.11

The Iced Out Comp Board, reproducedbelow, used a black-and-white, mirror im-age of the Garnett Photograph, but withthe head cropped out on top and part ofthe fingers cropped out below.12 CHWAforwarded its comp boards to, and solicitedbids for the photograph for the Coors ad-vertising from, various photographers in-cluding Mannion, who submitted a bid butdid not receive the assignment.13

Coors and CHWA selected for a Coorsbillboard a photograph (the ‘‘Coors Bill-board’’), reproduced below, that resemblesthe Iced Out Comp Board.14 The CoorsBillboard depicts, in black-and-white, thetorso of a muscular black man, albeit amodel other than Garnett,15 shot against acloudy backdrop. The pose is similar tothat in the Garnett Photograph, and theview also is up and across the left side ofthe torso. The model in the billboardphotograph also wears a white T-shirt andwhite athletic pants. The model’s jewelryis prominently depicted; it includes anecklace of platinum or gold and dia-monds, a watch and two bracelets on the

right wrist, and more bracelets on the leftwrist. The light comes from the viewer’sright, so that the left shoulder is thebrightest part of the photograph, and theright arm and hand cast slight shadows onthe trousers.16

Mannion subsequently noticed the CoorsBillboard at two locations in the Los Ange-les area.17 He applied for registration ofhis copyright of the Garnett Photograph in2003 18 and brought this action for infringe-ment in February of 2004. The registra-tion was completed in May 2004.19 Theparties each move for summary judgment.

Discussion

A. Summary Judgment Standard

[1] Summary judgment is appropriateif there is no genuine issue of material factand the moving party is entitled to judg-ment as a matter of law.20 The movingparty has the burden of demonstrating theabsence of a genuine issue of materialfact,21 and the Court must view the facts inthe light most favorable to the nonmovingparty.22 ‘‘Where cross-motions for sum-mary judgment are filed, a court ‘mustevaluate each party’s motion on its ownmerits, taking care in each instance todraw all reasonable inferences against theparty whose motion is under consider-ation.’ ’’ 23

11. See Cook Decl. ¶ 5; Def. Ex. B.The authorization was for ‘‘[u]sage in inter-nal corporate merchandising catalog,’’ Def.Ex. B, which Mannion concedes extendedto the Iced Out Comp Board. See Pl. Open-ing Mem. 2; Pl. Reply Mem. 2.

12. See Pl.Ex. B.

13. Cook Decl. ¶ 6; Mannion Decl. ¶¶ 12, 17–19.

14. See Def. Ex. C; Am. Cpt. Ex. C.

15. Cook Decl. ¶ 7.

16. See Def. Ex. C; Am. Cpt. Ex. C.

17. Mannion Decl. ¶ 20.

18. Am. Cpt. Ex. A.

19. Id.

20. FED.R.CIV.P. 56(c); Anderson v. Liberty Lob-by, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91L.Ed.2d 202 (1986); White v. ABCO Eng’gCorp., 221 F.3d 293, 300 (2d Cir.2000).

21. Adickes v. S.H. Kress & Co., 398 U.S. 144,157, 90 S.Ct. 1598, 26 L.Ed.2d 142 (1970).

22. United States v. Diebold, Inc., 369 U.S.654, 655, 82 S.Ct. 993, 8 L.Ed.2d 176 (1962);Hetchkop v. Woodlawn at Grassmere, Inc., 116F.3d 28, 33 (2d Cir.1997).

23. Hotel Employees & Restaurant EmployeesUnion, Local 100 v. City of New York Dep’t ofParks & Recreation, 311 F.3d 534, 543 (2dCir.2002) (quoting Heublein, Inc. v. UnitedStates, 996 F.2d 1455, 1461 (2d Cir.1993)(internal quotation marks omitted)); accordMake the Road by Walking, Inc. v. Turner, 378F.3d 133, 142 (2d Cir.2004).


B. The Elements of Copyright Infringe-ment

[2, 3] ‘‘To prove infringement, a plain-tiff with a valid copyright must demon-strate that: (1) the defendant has actuallycopied the plaintiff’s work; and (2) thecopying is illegal because a substantialsimilarity exists between the defendant’swork and the protectible elements of plain-tiff’s.’’ 24 ‘‘Actual copying’’—which is usedas a term of art to mean that ‘‘the defen-dant, in creating its work, used the plain-tiff’s material as a model, template, oreven inspiration’’ 25—may be shown by di-rect evidence, which rarely is available, or

by proof of access and probative similari-ties (as distinguished from ‘‘substantialsimilarity’’) between the two works.26

[4] Mannion concededly owns a validcopyright in the Garnett photograph.27

Access is undisputed. There is ample evi-dence from which a trier of fact could findthat CHWA actually copied the GarnettPhotograph for the Coors Billboard.Thus, the major questions presented bythese motions are whether a trier of factcould or must find substantial similaritybetween protected elements of the GarnettPhotograph and the Coors Billboard.28 Ifno reasonable trier could find such similar-

24. Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d996, 1002 (2d Cir.1995) (second emphasisadded) (quoting Fisher–Price, Inc. v. Well–Made Toy Mfg. Corp., 25 F.3d 119, 122–23 (2dCir.1994)); accord Tufenkian Import/ExportVentures, Inc. v. Einstein Moomjy, Inc., 338F.3d 127, 131 (2d Cir.2003) (citing CastleRock Entm’t, Inc. v. Carol Publ’g Group, Inc.,150 F.3d 132, 137–38 (2d Cir.1998)); Boissonv. Banian, Ltd., 273 F.3d 262, 267–68 (2dCir.2001) (citing Feist Publ’ns, Inc. v. RuralTel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct.1282, 113 L.Ed.2d 358 (1991) and StreetwiseMaps, Inc. v. VanDam, Inc., 159 F.3d 739,747 (2d Cir.1998)); Fournier v. Erickson, 202F.Supp.2d 290, 294 (S.D.N.Y.2002).

25. 4 NIMMER ON COPYRIGHT § 13.01[B], at 13–8(‘‘NIMMER’’).

26. E.g., Jorgensen v. Epic/Sony Records, 351F.3d 46, 51 (2d Cir.2003); Boisson, 273 F.3dat 267–68 (citing Laureyssens v. Idea Group,Inc., 964 F.2d 131, 140 (2d Cir.1992)).

27. See Def. Opening Mem. 7; Def. Supp.Mem. 5.

28. Contrary to the implication in some of theplaintiff’s papers, see Am. Cpt. ¶¶ 27–29; Pl.Opening Mem. 6; Pl. Supp. Mem. 6–10; seealso Tr. (1/27/05) 8–11, 14–19, 25, 30–32, 34–36 (‘‘Tr.’’), this case does not require a deter-mination whether the defendants have violat-ed the plaintiff’s exclusive right under 17U.S.C. § 106(2) to prepare derivative worksbased upon the Garnett Photograph. The im-age used on the Iced Out Comp Board mayhave been a derivative work based upon the

Garnett Photograph, see 17 U.S.C. § 101(2005), but CHWA obtained the right to usethe Garnett Photograph in connection withthe Iced Out Comp Board.

The question whether the Coors Billboard isa derivative work based upon the GarnettPhotograph is immaterial. ‘‘[A] work willbe considered a derivative work only if itwould be considered an infringing work’’absent consent. 1 NIMMER § 3.01, at 3–4.That is, the infringement inquiry logicallyprecedes or at least controls the derivativework inquiry.Finally—again contrary to the plaintiff’ssuggestion, see Pl. Opening Mem. 9; Pl.Reply Mem. 2–4; Tr. 21–24—also immateri-al is the question whether the Coors Bill-board may infringe Mannion’s copyright ifthe Coors Billboard is not substantially sim-ilar to the Garnett Photograph but is sub-stantially similar to the Garnett Photo-graph’s hypothesized derivative on the IcedOut Comp Board. Mannion has no regis-tered copyright in the image on the IcedOut Comp Board, which precludes a suitfor infringement based upon that image.Well–Made Toy Mfg. Corp. v. Goffa Int’lCorp., 354 F.3d 112, 115–117 (2d Cir.2003);17 U.S.C. § 411(a) (2005).The only question in this case is whetherthe Coors Billboard infringes the copyrightin the Garnett Photograph. The only mate-rial comparison therefore is between thosetwo images. Accordingly, the complaint isdismissed to the extent that it asserts aviolation of Mannion’s exclusive right toprepare derivative works.


ity, the defendants’ motion must be grant-ed and the plaintiff’s denied. If any rea-sonable trier would be obliged to find suchsimilarity (along with actual copying), theplaintiff’s motion must be granted and thedefendants’ denied. If a reasonable triercould, but would not be required to, findsubstantial similarity (and actual copying),both motions must be denied.

C. Determining the Protectible Elementsof the Garnett Photograph

The first question must be: in whatrespects is the Garnett Photograph protec-tible?

1. Protectible Elements of Photographs

[5, 6] It is well-established that ‘‘[t]hesine qua non of copyright is originali-ty’’ 29 and, accordingly, that ‘‘copyrightprotection may extend only to those com-ponents of a work that are original to theauthor.’’ 30 ‘‘Original’’ in the copyrightcontext ‘‘means only that the work wasindependently created by the author (asopposed to copied from other works), and

that it possesses at least some minimaldegree of creativity.’’ 31

It sometimes is said that ‘‘copyright inthe photograph conveys no rights over thesubject matter conveyed in the photo-graph.’’ 32 But this is not always true. Itof course is correct that the photographerof a building or tree or other pre-existingobject has no right to prevent others fromphotographing the same thing.33 That isbecause originality depends upon indepen-dent creation, and the photographer didnot create that object. By contrast, if aphotographer arranges or otherwise cre-ates the subject that his camera captures,he may have the right to prevent othersfrom producing works that depict that sub-ject.34

Almost any photograph ‘‘may claim thenecessary originality to support a copy-right.’’ 35 Indeed, ever since the SupremeCourt considered an 1882 portrait by thecelebrity photographer Napoleon Saronyof the 27–year–old Oscar Wilde,36 courtshave articulated lists of potential compo-nents of a photograph’s originality.37

29. Feist Publ’ns, Inc. v. Rural Tel. Serv. Co.,499 U.S. 340, 345, 111 S.Ct. 1282, 113L.Ed.2d 358 (1991).

30. Id. at 348, 111 S.Ct. 1282.

31. Id. at 345, 111 S.Ct. 1282 (citing 1 NIMMER

§§ 2.01[A], [B] (1990)).

32. 1 NIMMER § 2.08[E][1], at 2–130.

33. E.g., Caratzas v. Time Life, Inc., No. 92 Civ.6346(PKL), 1992 WL 322033, at *4 (S.D.N.Y.Oct.23, 1992) (observing, in the context ofphotographs of historic sites, that ‘‘JusticeHolmes made it clear almost ninety years agothat actionable copying does not occur wherea photographer takes a picture of the subjectmatter depicted in a copyrighted photograph,so long as the second photographer does notcopy original aspects of the copyrighted work,such as lighting or placement of the sub-ject.’’).

34. See Rogers v. Koons, 960 F.2d 301 (2dCir.1992); Gross v. Seligman, 212 F. 930 (2dCir.1914).

35. 1 NIMMER § 2.08[E][1], at 2–129; see alsoBridgeman Art Library, Ltd. v. Corel Corp., 36F.Supp.2d 191, 196 (S.D.N.Y.1999).

36. See Burrow–Giles Lithographic Co. v. Saro-ny, 111 U.S. 53, 4 S.Ct. 279, 28 L.Ed. 349(1884); SHL Imaging, Inc. v. Artisan House,Inc., 117 F.Supp.2d 301, 307–08 (S.D.N.Y.2000) (recounting the history of Burrow–Gileswith reference to THE WAKING DREAM: PHOTOG-

RAPHY’S FIRST CENTURY 339–40 (Met. Museum ofArt 1993)).

The photograph at issue in Burrow–Giles isreproduced in MELVILLE B. NIMMER ET AL.,

CASES AND MATERIALS ON COPYRIGHT 11 (6th ed.2000) (‘‘CASES AND MATERIALS ON COPYRIGHT’’).

37. See Burrow–Giles Lithographic Co., 111U.S. at 60, 4 S.Ct. 279 (originality of Wildeportrait founded upon overall composition,including pose, clothing, background, light,and shade, ‘‘suggesting and evoking the de-sired expression’’); Leibovitz v. ParamountPictures Corp., 137 F.3d 109, 116 (2d Cir.1998) (‘‘Leibovitz is entitled to protection for


These lists, however, are somewhat unsat-isfactory.

[7] First, they do not deal with theissue, alluded to above, that the nature andextent of a photograph’s protection differsdepending on what makes that photographoriginal.

[8] Second, courts have not always dis-tinguished between decisions that a pho-tographer makes in creating a photographand the originality of the final product.Several cases, for example, have includedin lists of the potential components of pho-tographic originality ‘‘selection of film andcamera,’’ 38 ‘‘lens and filter selection,’’ 39

and ‘‘the kind of camera, the kind of film,[and] the kind of lens.’’ 40 Having consid-ered the matter fully, however, I think thisis not sufficiently precise. Decisions aboutfilm, camera, and lens, for example, oftenbear on whether an image is original. Butthe fact that a photographer made such

choices does not alone make the imageoriginal. ‘‘Sweat of the brow’’ is not thetouchstone of copyright.41 Protection de-rives from the features of the work itself,not the effort that goes into it.

This point is illustrated by BridgemanArt Library, Ltd. v. Corel Corp.,42 in whichthis Court held that there was no copy-right in photographic transparencies thatsought to reproduce precisely paintings inthe public domain. To be sure, a greatdeal of effort and expertise may have beenpoured into the production of the plaintiff’simages, including decisions about camera,lens, and film. But the works were ‘‘slav-ish copies.’’ They did not exhibit the origi-nality necessary for copyright.43

The Court therefore will examine moreclosely the nature of originality in a photo-graph. In so doing, it draws on the help-ful discussion in a leading treatise onUnited Kingdom copyright law,44 which is

such artistic elements as the particular light-ing, the resulting skin tone of the subject, andthe camera angle that she selected.’’); Rogersv. Koons, 960 F.2d 301, 307 (2d Cir.1992)(‘‘Elements of originality in a photograph mayinclude posing the subjects, lighting, angle,selection of film and camera, evoking thedesired expression, and almost any other vari-ant involved.’’); Gross v. Seligman, 212 F.930, 931 (2d Cir.1914) (‘‘exercise of artistictalent’’ reflected in ‘‘pose, light, and shade,etc.’’); SHL Imaging, Inc. v. Artisan House,Inc., 117 F.Supp.2d 301, 311 (S.D.N.Y.2000)(‘‘What makes plaintiff’s photographs originalis the totality of the precise lighting selection,angle of the camera, lens and filter selec-tion.’’); E. Am. Trio Prods., Inc. v. Tang Elec.Corp., 97 F.Supp.2d 395, 417 (S.D.N.Y.2000)(‘‘The necessary originality for a photographmay be founded upon, among other things,the photographer’s choice of subject matter,angle of photograph, lighting, determinationof the precise time when the photograph is tobe taken, the kind of camera, the kind of film,the kind of lens, and the area in which thepictures are taken.’’); Kisch v. Ammirati &Puris Inc., 657 F.Supp. 380, 382 (S.D.N.Y.1987) (copyrightable elements of a photo-graph ‘‘include such features as the photogra-

pher’s selection of lighting, shading, position-ing and timing.’’).

Even these lists are not complete. Theyomit such features as the amount of theimage in focus, its graininess, and the levelof contrast.

38. Rogers v. Koons, 960 F.2d 301, 307 (2dCir.1992).

39. SHL Imaging, Inc. v. Artisan House, Inc.,117 F.Supp.2d 301, 311 (S.D.N.Y.2000).

40. E. Am. Trio Prods., Inc. v. Tang Elec. Corp.,97 F.Supp.2d 395, 417 (S.D.N.Y.2000) (Kap-lan, J.)

41. Feist, 499 U.S. at 359–60, 111 S.Ct. 1282.

42. 36 F.Supp.2d 191 (S.D.N.Y.1999).

43. Id. at 197; Bridgeman Art Library, Ltd. v.Corel Corp., 25 F.Supp.2d 421, 427 & nn. 41,47 (S.D.N.Y.1998).

44. HON. SIR HUGH LADDIE ET AL., THE MODERN LAW

OF COPYRIGHT AND DESIGNS (3d ed. Butter-worths 2000) (‘‘LADDIE’’).


similar to our own with respect to the re-quirement of originality.45

[9] A photograph may be original inthree respects.46 They are not mutuallyexclusive.

a. Rendition

First, ‘‘there may be originality whichdoes not depend on creation of the sceneor object to be photographed TTT andwhich resides [instead] in such specialtiesas angle of shot, light and shade, exposure,effects achieved by means of filters, devel-oping techniques etc.’’ 47 I will refer tothis type of originality as originality in therendition because, to the extent a photo-graph is original in this way, copyrightprotects not what is depicted, but ratherhow it is depicted.48

It was originality in the rendition thatwas at issue in SHL Imaging, Inc. v.Artisan House, Inc.49 That case concernedphotographs of the defendants’ mirroredpicture frames that the defendants com-missioned from the plaintiff. The photo-graphs were to be used by the defendants’sales force for in-person pitches. Whenthe defendants reproduced the photo-

graphs in their catalogues and brochures,the court found infringement: ‘‘Plaintiffcannot prevent others from photographingthe same frames, or using the same light-ing techniques and blue sky reflection inthe mirrors. What makes plaintiff’s pho-tographs original is the totality of the pre-cise lighting selection, angle of the camera,lens and filter selection.’’ 50 Again, whatmade the photographs original was not thelens and filter selection themselves. Itwas the effect produced by the lens andfilters selected, among other things. Inany case, those effects were the basis ofthe originality of the works at issue inSHL Imaging.

By contrast, in Bridgeman Art Library,the goal was to reproduce exactly otherworks. The photographs were entirelyunoriginal in the rendition, an extremelyunusual circumstance. Unless a photo-graph replicates another work with total ornear-total fidelity, it will be at least some-what original in the rendition.

b. Timing

A photograph may be original in a sec-ond respect. ‘‘[A] person may create aworthwhile photograph by being at theright place at the right time.’’ 51 I will

45. See Copyright, Designs and Patents Act1988, c. 48, § 1(1)(a); 1 LADDIE § 1.8.

46. See 1 LADDIE § 4.57, at 229.

47. Id.

48. See Caratzas v. Time Life, Inc., No. 92 Civ.6346(PKL), 1992 WL 322033, at *4 (S.D.N.Y.Oct.23, 1992); Leigh v. Warner Bros., 212F.3d 1210, 1214 (11th Cir.2000); see alsoBleistein v. Donaldson Lithographing Co., 188U.S. 239, 249, 23 S.Ct. 298, 47 L.Ed. 460(1903) (‘‘It is obvious also that the plaintiff’scase is not affected by the fact, if it be one,that the pictures represent actual groups—visible things. They seem from the testimonyto have been composed from hints or descrip-tion, not from sightTTTT But even if they hadbeen drawn from the life, that fact would notdeprive them of protection. The oppositeproposition would mean that a portrait by

Velasquez or Whistler was common propertybecause others might try their hand on thesame face. Others are free to copy the origi-nal. They are not free to copy the copy.’’);Franklin Mint Corp. v. Nat’l Wildlife Art Ex-change, Inc., 575 F.2d 62, 65 (3d Cir.1978)(same); F.W. Woolworth Co. v. ContemporaryArts, 193 F.2d 162, 164 (1st Cir.1951) (‘‘It isthe well established rule that a copyright on awork of art does not protect a subject, butonly the treatment of a subject.’’); BENJAMIN

KAPLAN, AN UNHURRIED VIEW OF COPYRIGHT 56(1967) (observing that, with respect to ‘‘worksof ‘fine art,’ ’’ ‘‘the manner of execution isusually of more interest than the subject pic-tured.’’).

49. 117 F.Supp.2d 301 (S.D.N.Y.2000).

50. Id. at 311.

51. 1 LADDIE § 4.57, at 229.


refer to this type of originality as originali-ty in timing.

One case that concerned originality intiming, among other things, was Pagano v.Chas. Beseler Co.,52 which addressed thecopyrightability of a photograph of a scenein front of the New York Public Library atFifth Avenue and Forty–Second Street:

‘‘The question is not, as defendant sug-gests, whether the photograph of a pub-lic building may properly be copyright-ed. Any one may take a photograph ofa public building and of the surroundingscene. It undoubtedly requires original-ity to determine just when to take thephotograph, so as to bring out the prop-er setting for both animate and inani-mate objectsTTTT The photographercaught the men and women in not mere-ly lifelike, but artistic, positions, and thisis especially true of the traffic police-manTTTT There are other features,which need not be discussed in detail,such as the motor cars waiting for thesignal to proceed.’’ 53

A modern work strikingly original in tim-ing might be Catch of the Day, by notedwildlife photographer Thomas Mangelsen,which depicts a salmon that appears to bejumping into the gaping mouth of a brownbear at Brooks Falls in Katmai NationalPark, Alaska.54 An older example isAlfred Eisenstaedt’s photograph of a sailorkissing a young woman on VJ Day inTimes Square,55 the memorability of whichis attributable in significant part to thetiming of its creation.

Copyright based on originality in timingis limited by the principle that copyright ina photograph ordinarily confers no rightsover the subject matter. Thus, the copy-right in Catch of the Day does not protectagainst subsequent photographs of bearsfeasting on salmon in the same location.Furthermore, if another photographerwere sufficiently skilled and fortunate tocapture a salmon at the precise momentthat it appeared to enter a hungry bear’smouth—and others have tried, with vary-ing degrees of success 56—that photogra-pher, even if inspired by Mangelsen, wouldnot necessarily have infringed his workbecause Mangelsen’s copyright does notextend to the natural world he captured.

In practice, originality in timing givesrise to the same type of protection asoriginality in the rendition. In each case,the image that exhibits the originality, butnot the underlying subject, qualifies forcopyright protection.

c. Creation of the Subject

The principle that copyright confers noright over the subject matter has an im-portant limitation. A photograph may beoriginal to the extent that the photogra-pher created ‘‘the scene or subject to bephotographed.’’ 57 This type of originality,which I will refer to as originality in thecreation of the subject, played an essentialrole in Rogers v. Koons58 and Gross v.Seligman.59

52. 234 F. 963 (S.D.N.Y.1916).

53. Id. at 964.

54. A digital image of the photograph may befound at http://www .fulcrumgal-lery.com/print—38089.aspx (last visited July20, 2005).

55. A digital image appears at http://www.gal-lerym.com/work.cfm?ID=69 (last visited July20, 2005).

56. See, e.g., http://www.raydoan.com/6140.asp(last visited July 20, 2005); http://www .shust-erimages.net/BearsatlBrookslFalls.htm (last vis-ited July 20, 2005).

57. 1 LADDIE § 4.57, at 229.

58. 960 F.2d 301 (2d Cir.1992).

59. 212 F. 930 (2d Cir.1914).


In Rogers, the court held that the copy-right in the plaintiff’s photograph Puppies,which depicted a contrived scene of thephotographer’s acquaintance, Jim Scanlon,and his wife on a park bench with eightpuppies on their laps, protected againstthe defendants’ attempt to replicate pre-cisely, albeit in a three dimensional sculp-ture, the content of the photograph.60 Al-though the Circuit noted that Puppies wasoriginal because the artist ‘‘made creativejudgments concerning technical matterswith his camera and the use of naturallight’’ 61—in other words, because it wasoriginal in the rendition—its originality inthe creation of the subject was more sa-lient.62 The same is true of the works atissue in Gross v. Seligman, in which theCircuit held that the copyright in a photo-graph named Grace of Youth was infringedwhen the same artist created a photographnamed Cherry Ripe63 using ‘‘the samemodel in the identical pose, with the singleexception that the young woman nowwears a smile and holds a cherry stembetween her teeth.’’ 64

* * * * * *

[10] To conclude, the nature and ex-tent of protection conferred by the copy-right in a photograph will vary dependingon the nature of its originality. Insofar asa photograph is original in the rendition or

timing, copyright protects the image butdoes not prevent others from photograph-ing the same object or scene. Thus, thecopyright at issue in SHL Imaging doesnot protect against subsequent photo-graphs of the picture frames because theoriginality of the plaintiffs’ photographswas almost purely in the rendition of thoseframes, not in their creation or the timingof the scene captured. In Pagano, thetiming of the capture of the scene in frontof the New York Public Library and itsrendition were original, but the copyrightin the Pagano photograph does not protectagainst future attempts to capture a scenein front of the same building, just as acopyright in Catch of the Day would notprotect against other photographers cap-turing images of salmon-eating bears.

By contrast, to the extent that a photo-graph is original in the creation of thesubject, copyright extends also to that sub-ject. Thus, an artist who arranges andthen photographs a scene often will havethe right to prevent others from duplicat-ing that scene in a photograph or othermedium.65

2. Originality of the Garnett Photo-graph

[11] There can be no serious disputethat the Garnett Photograph is an original

60. For a reproduction of the works at issue inRogers v. Koons, see ROBERT C. OSTERBERG &

ERIC C. OSTERBERG, SUBSTANTIAL SIMILARITY IN

COPYRIGHT LAW A–24, A–25 (Practising LawInstitute 2003).

61. 960 F.2d at 304.

62. See id. (‘‘When Rogers went to [JimScanlon’s] home TTT he decided that taking apicture of the puppies alone [as Scanlon orig-inally had requested] would not work suc-cessfully, and chose instead to include [theScanlons] holding themTTTT [Rogers] selectedthe light, the location, the bench on whichthe Scanlons are seated and the arrangementof the small dogs.’’).

63. The two photographs are reproduced inCASES AND MATERIALS ON COPYRIGHT 211.

64. 212 F. at 930–31.

Also part of the court’s analysis was theobservation that there were ‘‘many closeidentities of TTT light[ ] and shade.’’ Id.

65. I recognize that the preceding analysis fo-cuses on a medium—traditional print photog-raphy—that is being supplanted in significantdegree by digital technology. These advance-ments may or may not demand a differentanalytical framework.


work. The photograph does not resultfrom slavishly copying another work andtherefore is original in the rendition.Mannion’s relatively unusual angle and dis-tinctive lighting strengthen that aspect ofthe photograph’s originality. His composi-tion—posing man against sky—evidencesoriginality in the creation of the subject.Furthermore, Mannion instructed Garnettto wear simple and plain clothing and asmuch jewelry as possible, and ‘‘to look‘chilled out.’ ’’ 66 His orchestration of thescene contributes additional originality inthe creation of the subject.

Of course, there are limits to the photo-graph’s originality and therefore to theprotection conferred by the copyright inthe Garnett Photograph. For example,Kevin Garnett’s face, torso, and hands arenot original with Mannion, and Manniontherefore may not prevent others fromcreating photographic portraits of Garnett.Equally obviously, the existence of a clou-dy sky is not original, and Mannion there-fore may not prevent others from using acloudy sky as a backdrop.

The defendants, however, take this lineof reasoning too far. They argue that itwas Garnett, not Mannion, who selectedthe specific clothing, jewelry, and pose. Inconsequence, they maintain, the GarnettPhotograph is not original to the extent ofGarnett’s clothing, jewelry, and pose.67

They appear to be referring to originalityin the creation of the subject.

There are two problems with the defen-dants’ argument. The first is that Mann-ion indisputably orchestrated the scene,

even if he did not plan every detail beforehe met Garnett, and then made the deci-sion to capture it. The second difficulty isthat the originality of the photograph ex-tends beyond the individual clothing, jew-elry, and pose viewed in isolation. It isthe entire image—depicting man, sky,clothing, and jewelry in a particular ar-rangement—that is at issue here, not itsindividual components. The Second Cir-cuit has rejected the proposition that:

‘‘in comparing designs for copyright in-fringement, we are required to dissectthem into their separate components,and compare only those elements whichare in themselves copyrightableTTTT [I]fwe took this argument to its logical con-clusion, we might have to decide that‘there can be no originality in a paintingbecause all colors of paint have beenused somewhere in the past.’ ‘D’ ’’ 68

3. The Idea / Expression Difficulty

Notwithstanding the originality of theGarnett Photograph, the defendants arguethat the Coors Billboard does not infringebecause the two, insofar as they are simi-lar, share only ‘‘the generalized idea andconcept of a young African American manwearing a white T-shirt and a largeamount of jewelry.’’ 69

[12, 13] It is true that an axiom ofcopyright law is that copyright does notprotect ‘‘ideas,’’ only their expression.70

Furthermore, when ‘‘a given idea is insep-arably tied to a particular expression’’ sothat ‘‘there is a ‘merger’ of idea and ex-

66. Mannion Decl. ¶¶ 4–7, 9.

67. Def. Reply Mem. 10–11.

The defendants complain as well thatMannion’s declaration does not mention,among other things, the type of film, cam-era, and filters that he used to produce theGarnett Photograph. Id. at 11. Theseomissions are irrelevant. As discussedabove, originality in the rendition is as-

sessed with respect to the work, not theartist’s specific decisions in producing it.

68. Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d996, 1003 (2d Cir.1995) (citation omitted).

69. Def. Br. 6.

70. See 4 NIMMER § 13.03[B][2][a]; 17 U.S.C.§ 102(b).


pression,’’ courts may deny protection tothe expression in order to avoid conferringa monopoly on the idea to which it insepa-rably is tied.71 But the defendants’ reli-ance on these principles is misplaced.

[14] The ‘‘idea’’ (if one wants to call itthat) postulated by the defendants doesnot even come close to accounting for allthe similarities between the two works,which extend at least to angle, pose, back-ground, composition, and lighting. It ispossible to imagine any number of de-pictions of a black man wearing a white T-shirt and ‘‘bling bling’’ that look nothinglike either of the photographs at issuehere.

This alone is sufficient to dispose of thedefendants’ contention that Mannion’sclaims must be rejected because he seeksto protect an idea rather than its expres-sion. But the argument reveals an analyt-ical difficulty in the case law about whichmore ought to be said. One of the maincases upon which the defendants rely isKaplan v. Stock Market Photo Agency,Inc.,72 in which two remarkably similarphotographs of a businessman’s shoes andlower legs, taken from the top of a tallbuilding looking down on a street below

(the plaintiff’s and defendants’ photo-graphs are reproduced below), were heldto be not substantially similar as a matterof law because all of the similarities flowedonly from an unprotected idea rather thanfrom the expression of that idea.

But what is the ‘‘idea’’ of Kaplan’s pho-tograph? Is it (1) a businessman contem-plating suicide by jumping from a building,(2) a businessman contemplating suicide byjumping from a building, seen from thevantage point of the businessman, with hisshoes set against the street far below, orperhaps something more general, such as(3) a sense of desperation produced byurban professional life?

If the ‘‘idea’’ is (1) or, for that matter,(3), then the similarities between the twophotographs flow from something muchmore than that idea, for it have would beenpossible to convey (1) (and (3)) in anynumber of ways that bear no obvious simi-larities to Kaplan’s photograph. (Exam-ples are a businessman atop a buildingseen from below, or the entire figure of thebusinessman, rather than just his shoes orpants, seen from above.) If, on the otherhand, the ‘‘idea’’ is (2), then the two workscould be said to owe much of their similari-ty to a shared idea.73

71. 4 NIMMER § 13.03[B][3].

72. 133 F.Supp.2d 317 (S.D.N.Y.2001).

73. The Kaplan decision itself characterizedthe ‘‘idea’’ as ‘‘a businessperson contemplat-ing a leap from a tall building onto the citystreet below,’’ see id. at 323, but this charac-terization does not fully account for the dispo-sition of the case. The court agreed with thedefendants that:

‘‘in order to most accurately express th[is]idea TTT, the photograph must be takenfrom the ‘jumper’s’ own viewpoint, whichwould (i) naturally include the sheer side ofthe building and the traffic below, and (ii)logically restrict the visible area of the busi-nessperson’s body to his shoes and a certainportion of his pants legsTTTT Thus, the an-gle and viewpoint used in both photographsare essential to, commonly associated with,

and naturally flow from the photograph’sunprotectable subject matterTTTT [T]hemost common, and most effective, view-point from which the convey the idea of the‘jumper’ TTT remains that of the ‘jumper’himself.’’ Id. at 326.The Kaplan court’s observations about theangle and viewpoint ‘‘essential to’’ and‘‘commonly associated with,’’ that ‘‘natural-ly flow from,’’ ‘‘most accurately express,’’and ‘‘most effective[ly]’’ convey the ‘‘idea ofa businessperson’s contemplation of a leap’’are unpersuasive. Thus, the opinion is bestread to hold that the ‘‘idea’’ expressed wasthat of a businessperson contemplating sui-cide as seen from his own vantage pointbecause only this reading explains the out-come.


To be sure, the difficulty of distinguish-ing between idea and expression long hasbeen recognized. Judge Learned Handfamously observed in 1930:

‘‘Upon any work, and especially upon aplay, a great number of patterns of in-creasing generality will fit equally well,as more and more of the incident is leftout. The last may perhaps be no morethan the most general statement of whatthe play is about, and at times mightconsist only of its title; but there is apoint in this series of abstractions wherethey are no longer protected, since oth-erwise the playwright could prevent theuse of his ‘ideas,’ to which, apart fromtheir expression, his property is neverextended. Nobody has ever been ableto fix that boundary, and nobody evercan.’’ 74

Three decades later, Judge Hand’sviews were essentially the same: ‘‘The testfor infringement of a copyright is of neces-sity vagueTTTT Obviously, no principle canbe stated as to when an imitator has gonebeyond copying the ‘idea,’ and has bor-rowed its ‘expression.’ Decisions musttherefore inevitably be ad hoc.’’ 75 Sincethen, the Second Circuit and other authori-ties repeatedly have echoed these senti-ments.76

But there is a difference between thesort of difficulty Judge Hand identified inNichols and Peter Pan Fabrics and theone presented by the Kaplan rationale andthe defendants’ argument about ideas inthis case. The former difficulty is essen-tially one of line-drawing, and, as JudgeHand taught, is common to most cases inmost areas of the law.77 The latter diffi-

74. Nichols v. Universal Pictures Corp., 45 F.2d119, 121 (2d Cir.1930) (citation omitted).

This passage is often referred to as theabstractions test, but it is no such thing.Judge Newman has lamented this parlanceand the underlying difficulty it elides:‘‘Judge Hand manifestly did not think of hisobservations as the enunciation of anythingthat might be called a ‘test.’ His disclaimer(for himself and everyone else) of the abilityto ‘fix the boundary’ should have been suffi-cient caution that no ‘test’ capable of yield-ing a result was intended.’’ Hon. Jon O.Newman, New Lyrics for an Old Melody:The Idea/Expression Dichotomy in the Com-puter Age, 17 CARDOZO ARTS & ENT. L.J. 691,694 (1999).

75. Peter Pan Fabrics, Inc. v. Martin WeinerCorp., 274 F.2d 487, 489 (2d Cir.1960).

76. See, e.g., Attia v. Soc’y of the N.Y. Hosp.,201 F.3d 50, 54 (2d Cir.1999) (quoting PeterPan Fabrics ); Williams v. Crichton, 84 F.3d581, 587–588 (2d Cir.1996) (‘‘The distinctionbetween an idea and its expression is an elu-sive one.’’); Durham Indus., Inc. v. TomyCorp., 630 F.2d 905, 912 (2d Cir.1980) (quot-ing Peter Pan Fabrics and characterizing ‘‘theidea/expression distinction’’ as ‘‘an imprecisetool’’); Reyher v. Children’s Television Work-shop, 533 F.2d 87, 91 (2d Cir.1976) (acknowl-

edging that ‘‘the demarcation between ideaand expression may not be susceptible to ov-erly helpful generalization’’); Herbert Rosen-thal Jewelry Corp. v. Kalpakian, 446 F.2d 738,742 (9th Cir.1971) (‘‘At least in close cases,one may suspect, the classification the courtselects may simply state the result reachedrather than the reason for it.’’); Fournier v.Erickson, 202 F.Supp.2d 290, 295 (S.D.N.Y.2002) (‘‘the distinction between the conceptand the expression of a concept is a difficultone’’); see also BENJAMIN KAPLAN, AN UNHURRIED

VIEW OF COPYRIGHT 48 (1967) (‘‘We are in aviscid quandary once we admit that ‘expres-sion’ can consist of anything not close aboardthe particular collocation in its sequential or-der. The job of comparison is not mucheased by speaking of patterns, nor is the taskof deciding when the monopoly would be toobroad for the public convenience made muchneater by speaking of ideas and expression.The polarity proposed by Hand is indeed re-lated geneologically to the ancient oppositionof idea to form, but the ancestor is not readilyrecognized in the ambiguous and elusive des-cendant.’’).

77. ‘‘[W]hile we are as aware as any one thatthe line, whereever it is drawn, will seemarbitrary, that is no excuse for not drawing it;it is a question such as courts must answer innearly all cases.’’ Nichols, 45 F.2d at 122.


culty, however, is not simply that it is notalways clear where to draw the line; it isthat the line itself is meaningless becausethe conceptual categories it purports todelineate are ill-suited to the subject mat-ter.

The idea/expression distinction arose inthe context of literary copyright.78 Forthe most part, the Supreme Court has notapplied it outside that context.79 The clas-sic Hand formulations reviewed above alsowere articulated in the context of literaryworks. And it makes sense to speak ofthe idea conveyed by a literary work andto distinguish it from its expression. Totake a clear example, two different authorseach can describe, with very differentwords, the theory of special relativity.The words will be protected as expression.The theory is a set of unprotected ideas.

In the visual arts, the distinction breaksdown. For one thing, it is impossible in

most cases to speak of the particular‘‘idea’’ captured, embodied, or conveyed bya work of art because every observer willhave a different interpretation.80 Further-more, it is not clear that there is any realdistinction between the idea in a work ofart and its expression. An artist’s idea,among other things, is to depict a particu-lar subject in a particular way. As ademonstration, a number of cases fromthis Circuit have observed that a photogra-pher’s ‘‘conception’’ of his subject is copy-rightable.81 By ‘‘conception,’’ the courtsmust mean originality in the rendition,timing, and creation of the subject—forthat is what copyright protects in photog-raphy. But the word ‘‘conception’’ is acousin of ‘‘concept,’’ and both are akin to‘‘idea.’’ In other words, those elements ofa photograph, or indeed, any work of visu-al art protected by copyright, could just as

78. There appears to be no Supreme Courtcase explicitly making the distinction any ear-lier than Holmes v. Hurst, 174 U.S. 82, 19S.Ct. 606, 43 L.Ed. 904 (1899), in which theCourt observed that the Copyright Act pro-tects ‘‘that arrangement of words which theauthor has selected to express his ideas.’’ Id.at 86, 19 S.Ct. 606.

79. One non-literary case in which the Su-preme Court referred to the idea/expressiondistinction was Mazer v. Stein, 347 U.S. 201,217–18, 74 S.Ct. 460, 98 L.Ed. 630 (1954),which is described below in footnote 80.

80. In cases dealing with toys or products thathave both functional and design aspects,courts sometimes use ‘‘idea’’ to refer to agimmick embodied in the product. See, e.g.,Mazer v. Stein, 347 U.S. 201, 217–18, 74 S.Ct.460, 98 L.Ed. 630 (1954) (court, after intro-ducing idea/expression dichotomy, stated thatplaintiffs, who had copyrights in statuettes ofhuman figures used as table lamps, ‘‘may notexclude others from using statuettes of humanfigures in table lamps; they may only preventuse of copies of their statuettes as such or asincorporated in some other article.’’); HerbertRosenthal Jewelry Corp. v. Kalpakian, 446F.2d 738, 742 (9th Cir.1971) (bejeweled gold

pin in the shape of a bee was an unprotected‘‘idea’’); Herbert Rosenthal Jewelry Corp. v.Honora Jewelry Co., 509 F.2d 64, 65–66 (2dCir.1974) (same for turtle pins); Great Impor-tations, Inc. v. Caffco Int’l, Inc., No. 95 Civ.0514, 1997 WL 414111, at *4 (S.D.N.Y. July24, 1997) (M.J.) (‘‘To the degree the similari-ties between the two sculptures herein aresimply because they are both three-piece setsof candleholders in the shape of the letters J,O and Y with baby angels and holly, thosesimilarities are non-copyrightableideasTTTT’’).

This case does not concern any kind of gim-mick, and the Court ventures no opinionabout the applicability of the idea/expressiondichotomy to any product that embodies agimmick, including toys or other objects thatcombine function and design.

81. See Gross v. Seligman, 212 F. 930, 931 (2dCir.1914); Kaplan v. Stock Market PhotoAgency, Inc., 133 F.Supp.2d 317, 323(S.D.N.Y.2001); Andersson v. Sony Corp. ofAm., No. 96 Civ. 7975(RO), 1997 WL 226310,at *2 (S.D.N.Y. May 2, 1997); Kisch v. Ammi-rati & Puris Inc., 657 F.Supp. 380, 382(S.D.N.Y.1987); Pagano v. Chas. Beseler Co.,234 F. 963, 964 (S.D.N.Y.1916).


easily be labeled ‘‘idea’’ as ‘‘expression.’’ 82

This Court is not the first to questionthe usefulness of the idea/expression ter-minology in the context of non-verbal me-dia. Judge Hand pointed out in Peter PanFabrics that whereas ‘‘[i]n the case of ver-bal ‘works’, it is well settled that TTT therecan be no copyright in the ‘ideas’ disclosedbut only in their ‘expression[,]’ ’’ ‘‘[i]n thecase of designs, which are addressed to theaesthetic sensibilities of the observer, thetest is, if possible, even more intangible.’’ 83

Moreover, Judge Newman has written:‘‘I do not deny that all of these subjectmatters [computer programs, woodendolls, advertisements in a telephone di-rectory] required courts to determinewhether the first work was copyrighta-ble and whether the second infringedprotectable elements. What I questionis whether courts should be makingthose determinations with the samemodes of analysis and even the samevocabulary that was appropriate forwritingsTTTT [I]t is not just a matter ofvocabulary. Words convey concepts,and if we use identical phrases from onecontext to resolve issues in another, werisk failing to notice that the relevant

concepts are and ought to be somewhatdifferent.’’ 84

He then referred to dicta from his owndecision in Warner Bros. v. AmericanBroadcasting Companies,85 explaining: ‘‘Iwas saying TTT [that] one cannot divide avisual work into neat layers of abstractionin precisely the same manner one couldwith a text.’’ 86 The Third Circuit hasmade a similar point:

‘‘Troublesome, too, is the fact that thesame general principles are applied inclaims involving plays, novels, sculpture,maps, directories of information, musicalcompositions, as well as artistic paint-ings. Isolating the idea from the ex-pression and determining the extent ofcopying required for unlawful appropria-tion necessarily depend to some degreeon whether the subject matter is wordsor symbols written on paper, or paintbrushed onto canvas.’’ 87

For all of these reasons, I think little isgained by attempting to distinguish an un-protectible ‘‘idea’’ from its protectible ‘‘ex-pression’’ in a photograph or other work ofvisual art. It remains, then, to considerjust what courts have been referring to

82. The terminology can be still more con-fused. Consider this sentence, in a section ofan opinion analyzing what was original, andhence protectible, in a photograph created bya freelancer in accordance with instructionsfrom a defendant: ‘‘[D]efendants concludethat Fournier cannot assert copyright protec-tion, to the extent that he does, over theexpression of businessmen in traditional dresson their way to work, an idea which originat-ed with McCann in any event.’’ Fournier v.Erickson, 202 F.Supp.2d 290, 295 (S.D.N.Y.2002) (emphases added).

83. 274 F.2d at 489.

84. Newman, New Lyrics for an Old Melody,supra, at 697.

85. 720 F.2d 231 (2d Cir.1983).In that case, which considered the questionwhether the protagonist of the television

series The Greatest American Hero infringedthe copyright in the Superman character,Judge Newman observed that a tension be-tween two different propositions dealingwith the significance of differences betweenan allegedly infringing work and a copy-righted work ‘‘perhaps results from [thosepropositions’] formulation in the context ofliterary works and their subsequent applica-tion to graphic and three-dimensionalworks.’’ Id. at 241.

86. Newman, New Lyrics for an Old Melody,supra, at 698.

87. Franklin Mint Corp. v. Nat’l Wildlife ArtExchange, Inc., 575 F.2d 62, 65 (3d Cir.1978);accord Kisch v. Ammirati & Puris Inc., 657F.Supp. 380, 383 (S.D.N.Y.1987).


when they have spoken of the ‘‘idea’’ in aphotograph.

A good example is Rogers v. Koons, inwhich the court observed that ‘‘[i]t is notTTT the idea of a couple with eight smallpuppies seated on a bench that is protect-ed, but rather Rogers’ expression of thisidea—as caught in the placement, in theparticular light, and in the expressions ofthe subjectsTTTT’’ 88 But ‘‘a couple witheight small puppies seated on a bench’’ isnot necessarily the idea of Puppies, whichjust as easily could be ‘‘people with dogson their laps,’’ ‘‘the bliss of owning pup-pies,’’ or even a sheepishly ironic thoughtsuch as ‘‘Ha ha! This might look cutenow, but boy are these puppies going to bea lot of work!’’

Rather, ‘‘a couple with eight small pup-pies seated on a bench’’ is nothing more orless than what ‘‘a young African Americanman wearing a white T-shirt and a largeamount of jewelry’’ 89 is: a description ofthe subject at a level of generality suffi-cient to avoid implicating copyright protec-tion for an original photograph. Othercopyright cases that have referred to the‘‘idea’’ of a photograph also used ‘‘idea’’ tomean a general description of the subjector subject matter.90 The Kaplan decisioneven used these terms interchangeably:‘‘The subject matter of both photographs isa businessperson contemplating a leapfrom a tall building onto the city streetbelow. As the photograph’s central idea,rather than Kaplan’s expression of theidea, this subject matter is unprotectablein and of itself.’’ 91 Thus another photog-

88. 960 F.2d at 308 (first emphasis added).

89. Def. Br. 6. See supra.

90. See SHL Imaging, Inc. v. Artisan House,Inc., 117 F.Supp.2d 301, 314 (S.D.N.Y.2000)(‘‘defendants’ instructions were so general asto fall within the realm of unprotectible ideas.Thus, they cannot substantiate a work-for-hireauthorship defense.’’ (emphasis added)); An-dersson v. Sony Corp., No. 96 Civ. 7975(RO),1997 WL 226310, at *3 (S.D.N.Y. May 2,1997) (‘‘What these two photos may arguablyshare, the idea of a woman in futuristic garbbecoming fascinated with an object held inher hand, is simply not protectible.’’ (empha-sis added)); Gentieu v. Tony Stone Im-ages/Chicago, Inc., 255 F.Supp.2d 838, 849(N.D.Ill.2003) (‘‘Gentieu cannot claim a copy-right in the idea of photographing naked ordiapered babies or in any elements of expres-sion that are intrinsic to that unprotectedidea. Clearly the ‘poses’ at issue in Gentieu’simages capture the natural movements andfacial expressions of infantsTTTT Such posesare implicit in the very idea of a baby photo-graph and are not proper material for protec-tion under Gentieu’s copyrights.’’ (emphasesadded)).

It is interesting to note that United Kingdomlaw faces a similar terminological problemand that the solution of Laddie and support-ing authorities is to conclude that the general-

ity of an ‘‘idea’’ is what determines its pro-tectability:

‘‘Confusion is caused in the law of copy-right because of the use of the catchphrase‘There is no copyright in ideas but only inthe form of their expression’. Unless oneunderstands what this means its utility isnon-existent, or it is positively misleading.An artistic work of the imagination presup-poses two kinds of ingredients: the concep-tion of one or more ideas, and artistic dex-terity and skill in their representation in thechosen medium. It is not the law thatcopyright protects the second kind of ingre-dient only. If that were so a debased copywhich failed to capture the artist’s dexterityand skill would not infringe, which plainlyis not the case. Unless an artist is contentmerely to represent a pre-existent object (ega building) or scene, it is part of his task asartist to exercise his imagination and in sodoing he may create a pattern of ideas forincorporation in his finished work. Thisidea-pattern may be as much part of hiswork, and deserving of copyright protec-tion, as the brushstrokes, pencil-lines, etc.The true proposition is that there is nocopyright in a general idea, but that anoriginal combination of ideas may [be pro-tected].’’ 1 LADDIE § 4.43, at 212 (footnoteomitted).

91. 133 F.Supp.2d at 323 (emphases added).


rapher may pose a couple with eight pup-pies on a bench, depict a businessmancontemplating a leap from an office build-ing onto a street, or take a picture of ablack man in white athletic wear andshowy jewelry. In each case, however,there would be infringement (assuming ac-tual copying and ownership of a valid copy-right) if the subject and rendition weresufficiently like those in the copyrightedwork.

This discussion of course prompts thequestion: at what point do the similaritiesbetween two photographs become suffi-ciently general that there will be no in-fringement even though actual copyinghas occurred? But this question is pre-cisely the same, although phrased in theopposite way, as one that must be ad-dressed in all infringement cases, namelywhether two works are substantially simi-lar with respect to their protected ele-ments. It is nonsensical to speak of onephotograph being substantially similar toanother in the rendition and creation ofthe subject but somehow not infringingbecause of a shared idea. Conversely, ifthe two photographs are not substantiallysimilar in the rendition and creation of thesubject, the distinction between idea andexpression will be irrelevant because therecan be no infringement. The idea/expres-sion distinction in photography, and prob-ably the other visual arts, thus achievesnothing beyond what other, clearer copy-right principles already accomplish.

[15] I recognize that those principlessometimes may pose a problem like thatJudge Hand identified with distinguishing

idea from expression in the literary con-text. As Judge Hand observed, however,such line-drawing difficulties appear in allareas of the law. The important thing isthat the categories at issue be useful andrelevant, even if their precise boundariesare sometimes difficult to delineate. Inthe context of photography, the idea/ex-pression distinction is not useful or rele-vant.

D. Comparison of the Coors Billboardand the Garnett Photograph

The next step is to determine whether atrier of fact could or must find the CoorsBillboard substantially similar to the Gar-nett Photograph with respect to their pro-tected elements.

[16] Substantial similarity ultimately isa question of fact. ‘‘The standard test forsubstantial similarity between two items iswhether an ‘ ordinary observer, unless heset out to detect the disparities, would bedisposed to overlook them, and regard[the] aesthetic appeal as the same.’ ’’ 92

The Second Circuit sometimes has applieda ‘‘more discerning observer’’ test when awork contains both protectible and unpro-tectible elements. The test ‘‘requires thecourt to eliminate the unprotectible ele-ments from its consideration and to askwhether the protectible elements, standingalone, are substantially similar.’’ 93 TheCircuit, however, is ambivalent about thistest. In several cases dealing with fabricand garment designs, the Circuit has cau-tioned that:

92. Yurman Design, Inc. v. PAJ, Inc., 262 F.3d101, 111 (2d Cir.2001) (quoting Hamil Amer-ica, Inc. v. GFI, 193 F.3d 92, 100 (2d Cir.1999) (quoting Peter Pan Fabrics, Inc. v. Mar-tin Weiner Corp., 274 F.2d 487, 489 (2d Cir.1960)) (internal quotation marks omitted));accord Boisson v. Banian, Ltd., 273 F.3d 262,272 (2d Cir.2001) (quoting Folio Impressions,

Inc. v. Byer California, 937 F.2d 759, 765 (2dCir.1991)).

93. Hamil America, Inc., 193 F.3d at 101; ac-cord Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d996, 1002 (2d Cir.1995); Folio Impressions,937 F.2d at 765–66; see also Boisson, 273F.3d at 272.


‘‘a court is not to dissect the works atissue into separate components and com-pare only the copyrightable ele-mentsTTTT To do so would be to take the‘more discerning’ test to an extreme,which would result in almost nothingbeing copyrightable because originalworks broken down into their compositeparts would usually be little more thanbasic unprotectible elements like letters,colors and symbols.’’ 94

Dissecting the works into separate compo-nents and comparing only the copyrighta-ble elements, however, appears to be ex-actly what the ‘‘more discerning observer’’test calls for.

The Circuit indirectly spoke to this ten-sion in the recent case of Tufenkian Im-port/Export Ventures, Inc. v. EinsteinMoomjy, Inc.95 There the trial court pur-ported to use the more discerning observertest but nonetheless compared the ‘‘total-concept-and-feel’’ of carpet designs.96 TheCircuit observed that the more discerningobserver test is ‘‘intended to emphasizethat substantial similarity must exist be-tween the defendant’s allegedly infringingdesign and the protectible elements in theplaintiff’s design.’’ 97 In making its owncomparison, the Circuit did not mentionthe ‘‘more discerning observer’’ test at all,but it did note that:

‘‘the total-concept-and-feel locution func-tions as a reminder that, while the in-fringement analysis must begin by dis-secting the copyrighted work into itscomponent parts in order to clarify pre-cisely what is not original, infringementanalysis is not simply a matter of ascer-taining similarity between componentsviewed in isolationTTTT The court, con-fronted with an allegedly infringing

work, must analyze the two works close-ly to figure out in what respects, if any,they are similar, and then determinewhether these similarities are due toprotected aesthetic expressions originalto the allegedly infringed work, orwhether the similarity is to something inthe original that is free for the tak-ing.’’ 98

In light of these precedents, the Courtconcludes that it is immaterial whether theordinary or more discerning observer testis used here because the inquiries wouldbe identical. The cases agree that therelevant comparison is between the protec-tible elements in the Garnett Photographand the Coors Billboard, but that thoseelements are not to be viewed in isolation.

The Garnett Photograph is protectibleto the extent of its originality in the rendi-tion and creation of the subject. Key ele-ments of the Garnett Photograph that arein the public domain—such as Kevin Gar-nett’s likeness—are not replicated in theCoors Billboard. Other elements arguablyin the public domain—such as the exis-tence of a cloudy sky, Garnett’s pose, hiswhite T-shirt, and his specific jewelry—may not be copyrightable in and of them-selves, but their existence and arrange-ment in this photograph indisputably con-tribute to its originality. Thus the factthat the Garnett Photograph includes cer-tain elements that would not be copyright-able in isolation does not affect the natureof the comparison. The question is wheth-er the aesthetic appeal of the two imagesis the same.

The two photographs share a similarcomposition and angle. The lighting issimilar, and both use a cloudy sky as back-

94. Boisson, 273 F.3d at 272 (citing Knitwaves,71 F.3d at 1003); accord Hamil America, 193F.3d at 101.

95. 338 F.3d 127 (2d Cir.2003).

96. See 237 F.Supp.2d 376, 386–88 (S.D.N.Y.2002).

97. 338 F.3d at 130 (emphasis in original).

98. Id. at 134–35 (emphasis in original).


drop. The subjects are wearing similarclothing and similar jewelry arranged in asimilar way. The defendants, in otherwords, appear to have recreated much ofthe subject that Mannion had created andthen, through imitation of angle and light-ing, rendered it in a similar way. Thesimilarities here thus relate to the GarnettPhotograph’s originality in the renditionand the creation of the subject and there-fore to its protected elements.

[17] There of course are differencesbetween the two works. The similarityanalysis may take into account some, butnot all, of these. It long has been the lawthat ‘‘no plagiarist can excuse the wrongby showing how much of his work he didnot pirate.’’ 99 Thus the addition of thewords ‘‘Iced Out’’ and a can of Coors Lightbeer may not enter into the similarityanalysis.

[18] Other differences, however, are inthe nature of changes rather than addi-tions. One image is black and white anddark, the other is in color and bright. Oneis the mirror image of the other. Onedepicts only an unidentified man’s torso,the other the top three-fourths of KevinGarnett’s body. The jewelry is not identi-

cal. One T-shirt appears to fit more tightlythan the other. These changes may enterthe analysis because ‘‘[i]f the points ofdissimilarity not only exceed the points ofsimilarity, but indicate that the remainingpoints of similarity are, within the contextof plaintiff’s work, of minimal importanceTTT then no infringement results.’’ 100

[19] The parties have catalogued atlength and in depth the similarities anddifferences between these works. In thelast analysis, a reasonable jury could findsubstantial similarity either present or ab-sent. As in Kisch v. Ammirati & PurisInc.,101 which presents facts as close to thiscase as can be imagined, the images aresuch that infringement cannot be ruledout—or in—as a matter of law.

Conclusion

The defendants’ motion for summaryjudgment dismissing the complaint (docketitem 18) is granted to the extent that thecomplaint seeks relief for violation of theplaintiff’s exclusive right to prepare deriv-ative works and otherwise denied. Theplaintiff’s cross motion for summary judg-ment is denied.

SO ORDERED.

99. Id. at 132–33 (quoting Sheldon v. Metro–Goldwyn Pictures Corp., 81 F.2d 49, 56 (2dCir.1936)) (internal quotation marks omitted).

100. 4 NIMMER § 13.03[B][1][a], at 13–63.

101. 657 F.Supp. 380, 384 (S.D.N.Y.1987).






,

Mansa A. MUNIR, Plaintiff,

v.

Rick KEARNEY, Mike Deloy, VeronicaL. Burke, and S/Lt. M. Hennessy

Defendants.

No. CIV.03–305–SLR.

United States District Court,D. Delaware.

July 18, 2005.

Documents

444 377 FEDERAL SUPPLEMENT, 2d SERIES - … · 444 377 FEDERAL SUPPLEMENT, 2d SERIES point to a single relevant section within the TWU Constitution. Nor has Local 100 ... Jonathan