United States District Court, Southern District of New York
December 13, 1990
ART ROGERS, PLAINTIFF,
JEFF KOONS AND SONNABEND GALLERY, INC., DEFENDANTS.
The opinion of the court was delivered by: Haight, District Judge:
MEMORANDUM OPINION AND ORDER
Plaintiff, a professional photographer, brings this action
against defendants, a sculptor and an art gallery, for
copyright infringement under the Copyright Act, Lanham Act
violations, and unfair competition under the laws of New York
and California. Plaintiff moves under Rule 56, Fed.R.Civ.P.,
for summary judgment on his first cause of action for copyright
infringement. Defendants cross-move for summary judgment
dismissing the complaint.
The facts are largely undisputed. Plaintiff Art Rogers is a
professional photographer resident in California. In 1980 Jim
Scanlon, another California resident familiar with Rogers'
work, commissioned Rogers to make a photographic portrait of
the Scanlons' new litter of eight German Shepherd puppies.
Rogers went to the Scanlon home. Rather than attempting to pose
the puppies alone, he included Scanlon and his wife Mary, who
were photographed sitting on a bench holding the puppies.
Rogers succeeded in getting two adults and eight puppies to
hold still long enough to produce a charming photograph which
Rogers named "Puppies." "Puppies" was published in Rogers'
photography column in a local newspaper in 1980. The photograph
was exhibited, along with other works by Rogers, at the San
Francisco Museum of Modern Art in 1982. In 1984 Rogers licensed
"Puppies" along with other works to Museum Graphics, a company
that produces and sells notecards and postcards with high
quality reproductions of photographs by American photographers,
including Ansel Adams. Museum Graphics has produced and
distributed the "Puppies" notecard since 1984. A signed print
of "Puppies" has been sold to a private collector. In 1989
Rogers licensed the photograph for use in an anthology called
"Dog Days." Rogers has stated in an affidavit that he plans to
use "Puppies" in a series of hand tinted prints of his works.
Defendant Jeff Koons is a well-known American artist and
sculptor resident in New York whose works are exhibited at
galleries and museums in the United States and elsewhere and
sold to the public. Defendant Sonnabend Gallery represents
Koons and serves as his agent in connection with the display
and sale of his works. In October 1986 Koons began the process
of creating sculptures for what he eventually termed his
"Banality Show." His work extended over two years. The
exhibition opened at Sonnabend Gallery on November 19, 1988.
The exhibition consisted of 20 sculptural works. In Koons'
perception, "the subject for the show would be Banality but the
message would be a spiritual
one. And while being uplifting, the also work would be [sic]
critical commentary on conspicuous consumption, greed, and self
indulgence." Defendants' Main Brief at 6. All the works were
sculptures in various media, including several in "polychromed
wood," which is wood painted different colors with oil paint.
Each work was produced in an "edition" of three, so that three
copies were available for sale to the public. An "artist's
proof" of each sculpture was also produced for Koons which he
could sell later if he wished.
During the fall and winter of 1986 and throughout 1987 Koons
collected material for possible sculptures. He then located and
contracted with workshops that could craft the desired
materials in the fashion that Koons desired.
At the end of 1987 or in 1988 Koons purchased at least two
Museum Graphics notecards displaying Rogers'"Puppies"
photograph. These cards were imprinted with Rogers' copyright,
although the photograph had not yet been registered. Koons
decided to use the photograph for one of the sculptures to be
exhibited in the Banality Show. He tore off that portion of the
notecard showing the copyright notice and sent the photograph
to the Demetz Arts Studio in Italy, with instructions to make
a polychromed wood sculptural version of the photograph, a work
that Koons instructed Demetz "must be just like photo." Ex. 15
to Koons deposition (notes Koons furnished to Demetz in
connection with producing the sculpture). Koons continued to
communicate with Demetz, reiterating that the features of the
humans and the puppies be reproduced "as per photo." Ex. 16. As
to the painting of the sculpture, Koons gave Demetz a chart
with an enlarged photocopy of "Puppies" in the center, and on
which he noted painting directions in the margin with arrows
drawn to various areas of the photograph. Koons instructed
Demetz to paint the puppies in shades of "blue," with
"variation of light-to-dark as per photo." The man's hair was
to be "white with shades of grey as per black and white
photo.") Ex. 14.
The end result was a polychromed wood sculpture 42 inches by
62 inches by 37 inches (not including the base which is 32
inches by 67 by 31 inches). Koons called the sculpture "String
Following the display of "String of Puppies" at the Sonnabend
Gallery in December 1988, Koons sold the edition of three
sculptures to collectors for a total of $367,000. Two were sold
for the price stated by the Gallery of $125,000. The third
buyer paid $117,000. Koons retains a fourth "String of Puppies"
sculpture at his storage facility.
Rogers learned of the sculpture through Scanlon. A friend of
Scanlon's familiar with the notecard called Scanlon and said
that the photograph "Puppies" was on the front page of the
calendar section of the Sunday Los Angeles Times, but had been
"colorized." Scanlon, having obtained and read the article,
realized that it was not a tinted version of the photograph
"Puppies," but rather was a photograph of Koons' sculpture
"String of Puppies," then on exhibition at the Los Angeles
Museum of Contemporary Art. Scanlon told Rogers about it.
Rogers registered his photograph "Puppies" with the United
States Copyright Office, obtaining registration number VA
352/001. The effective date of the registration is July 6,
1989. The certificate recites a date of first publication in
the United States of November 20, 1980.
Rogers filed this action against Koons and Sonnabend Gallery
on October 11, 1989.
It is common ground that Koons did not inform Rogers of his
intended use of the photograph, and that Rogers had no
knowledge of that use until Scanlon informed him.
Rogers now moves for summary judgment on the first cause of
action in the complaint, for copyright infringement. Defendants
cross-move for summary judgment dismissing all causes of
Koons concedes, as he must, that he "used" Rogers' photograph
"source material" for his sculpture "String of Puppies." Koons
prefers to avoid the verb "copied." Semantics do not decide the
issue, which is whether or not Koons' conduct constitutes
Koons says it does not for two principal reasons. First, he
argues that Rogers' copyright protection "is strictly limited
to the work as a photograph." Main Brief at 21 fn. (emphasis
added). At oral argument, Koons' counsel carried that argument
to its logical conclusion and contended that any sculptor could
"use" or "copy" any copyrighted photograph without incurring
liability as an infringer. Secondly, Koons relies upon the
doctrine of fair use. I discuss these contentions in turn.
Koons' main contention under this heading is that the use he
made of the Rogers photograph related only to non-copyrightable
elements. Koons relies upon the familiar rule that copyright
protection extends only to original acts of expression, so that
purely factual information is in the public domain. See, e.g.
Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 979 (2d
That rule has no meaningful application here. Koons does not
articulate what non-protectible factual information he regards
himself as having used. It is of course the fact that Mr. and
Mrs. Scanlon's German Shepherd produced a litter of eight
puppies; that the Scanlons thought the puppies were cute; and
that they asked Rogers to photograph them. But the manner in
which Rogers arranged his subjects and carried out his
photographer's art constitutes a protectible original act of
expression, as the certificate issued by the Copyright Office
Koons' reproduction of the Rogers photograph in sculpture
form does not preclude a finding of copyright infringement. The
Copyright Act, 17 U.S.C. § 106, confers upon the copyright
owner "the exclusive rights to do and to authorize," inter
alia, the preparation of "derivative works based upon the
copyrighted work." § 106(2). The statute defines a "derivative
work" as a work "based upon one or more preexisting works, such
as [an] . . . art reproduction, . . . or any other form in
which a work may be recast, transformed, or adapted." § 101.
Under the plain wording of the statute, Koons' sculpture is a
derivative work based upon Rogers' photograph; and Rogers as
copyright owner had the exclusive right to authorize derivative
work. It is well settled that a photographer's originality in
photographic expression is entitled to full copyright
protection. See Burrow-Giles Lithographic Co. v. Sarony,
111 U.S. 53, 55, 4 S.Ct. 279, 279-80, 28 L.Ed. 349 (1884).
Koons' effort to limit that protection to the photograph "as
a photograph" runs counter to caselaw. In copyright law the
medium is not the message, and a change in medium does not
preclude infringement. That has long been the rule of this
Court and the Second Circuit. In Falk v. T.P. Howell & Co., 37
F. 202 (S.D.N.Y. 1988), defendant, a chair manufacturer, copied
plaintiff's copyrighted photograph "and stamped a raised
figure, like the picture, on the leather of which the bottoms
and backs of chairs are made." Judge Coxe cited Burrow-Giles
Co. v. Sarony, supra, for the proposition that a photograph may
be the subject of a copyright, and then said:
The only question is, do the defendants infringe?
That their design is copied directly from the
copyrighted photograph is not denied, but it is
urged that infringement is avoided, because it is
larger than the photograph, and is stamped on
leather, and is intended for the bottom or back of
a chair. It is thought that this proposition
cannot be maintained. Differences which relate
merely to size and material are not important.
The Second Circuit cited that language with approval in
King Features Syndicate v. Fleischer, 299 F. 533 (2d Cir.
1924), where the defendant copied plaintiff's cartoon character
for the manufacture of a toy. The court of appeals said
generally at 535:
We do not think it avoids the infringement of the
copyright to take the substance or idea, and
produce it through a different medium, and
picturing in shape
and details insufficient imitation to make a true
copy of the character thought of by the
appellant's employee. Doing this is omitting the
work of the artisan, but appropriating the genius
of the artist.
After quoting the indicated language from Falk, the court of
appeals then observed at 536:
A piece of statuary may be infringed by the
picture of the statuary for the Copyright Act
secured to the author the original and natural
rights, and it is the intendment of the law of
copyrights that they shall have a liberal
construction in order to give effect to what may
be considered as an inherent right of the author
in his work.*fn1
The Second Circuit reached the same result without discussion
in Fleischer Studios, Inc. v. Ralph A. Freundlich, Inc.,
73 F.2d 276
(2d Cir. 1934), where the defendant manufactured dolls
copying the plaintiff's copyrighted book of cartoons.
These cases are closely analogous to the case at bar.
Three-dimensional toys or dolls copied from two-dimensional
cartoons are the functional equivalents of a three-dimensional
sculpture copied from a two-dimensional photograph. Such cases
are consistent with the general principle stated in 1 M. and D.
Nimmer, Nimmer on Copyright, (1989) § 2.08(E) at 2-123 to
2-124, where the authors state that it is
fundamental that copyright in a work protects
against unauthorized copying not only in the
original medium in which the work was produced,
but also in any one medium as well. . . . The fact
that a work in one medium has been copied from a
work in another medium does not render it any less
By way of contrast, Koons cites no authority for his blanket
proposition that a sculpture cannot in law infringe a
copyrighted photograph. That proposition seems to me contrary
to the Copyright Act and these cases construing the statute,
and I reject it.
Koons argues that Rogers must show substantial similarity
between the photograph and the sculpture to sustain a claim of
infringement, and that the differences in size, texture and
color preclude such a finding. This is really the discredited
"substitute medium" argument in a different form. Rogers says
that where direct copying is conceded, substantial similarity
drops out of the analysis. He cites Illinois Bell Telephone v.
Haines & Co., Inc. 905 F.2d 1081, 1086 (7th Cir. 1990) ("To
satisfy the copying element of infringement, direct evidence of
copying will suffice. . . . Establishing substantial similarity
is necessary only when direct evidence of copying is
unavailable"), and Rural Telephone Service Company, Inc. v.
Feist Publications, Inc., 663 F. Supp. 214, 218 (D.Kan. 1987)
("The 'substantial similarity' test is used when there is no
direct evidence of copying.") For that proposition the district
court in Rural Telephone cited Durham Industries, Inc. v. Tomy
Corp., 630 F.2d 905, 911-12 (2d Cir. 1980). I do not find that
particular rule clearly stated in Durham Industries, but the
case does demonstrate that the present test of substantial
similarity in the Second Circuit is "whether an average lay
observer would recognize the alleged copy as having been
appropriated from the copyrighted work." See discussion at 630
F.2d at 911-12 (citing and quoting Ideal Toy Corp. v. Fab-Lu
Ltd., 360 F.2d 1021, 1022 (2d Cir. 1966)).
There is no question in the case at bar that "an average lay
observer" would recognize the sculpture "String of Puppies" as
"having been appropriated from" the photograph "Puppies."
Questions of size and color aside, the sculpture is as exact a
copy of the photograph as Koons' hired artisans could fashion,
which is precisely what Koons told them to do. Indeed,
Scanlon's friend, having observed a newspaper picture of the
sculpture, assumed that it was Rogers' photograph, having been
Koons' copying of Rogers' photograph constitutes copyright
infringement, unless Koons' conduct may be characterized as
Koons asserts that even if his use of Rogers' photograph
constituted unauthorized copying, it is a fair use and
therefore not infringing.
The fair use doctrine, which is incorporated into the 1976
Copyright Act, has been considered in three recent Supreme
Court decisions: Stewart v. Abend, ___ U.S. ___, 110 S.Ct.
1750, 109 L.Ed.2d 184 (1990); Harper & Row Publishers, Inc. v.
Nation Enterprises, 471 U.S. 539, 85 L.Ed.2d 588 (1985); and
Sony Corp. of America v. Universal Studios, Inc., 464 U.S. 417,
104 S.Ct. 774, 78 L.Ed.2d 574 (1984). The fair use doctrine
evolved in response to the rigid and inflexible common law rule
that the author's property in his intellectual creation was
absolute until he voluntarily parted with it. Stewart, 110
S.Ct. at 1768. The doctrine is an "equitable rule of reason",
Sony, 464 U.S. at 448, 104 S.Ct. at 792, which "permits courts
to avoid rigid application of the copyright statute when, on
occasion, it would stifle the very creativity which that law is
designed to foster." Stewart, 110 S.Ct. at 1768 (citing and
quoting Iowa State University Research Foundation, Inc. v.
American Broadcasting Companies, 621 F.2d 57, 60 (2d Cir.
17 U.S.C. § 107 provides "that fair use of a copyrighted work
. . . is not an infringement of copyright." The statute
attempts no generally applicable definition of fair use, since
the doctrine, an equitable rule of reason, is fact-oriented.
But Congress did provide in § 107 examples of fair use, and
factors to be considered in determining whether a particular
case falls within the doctrine. The examples are copying "for
purposes such as criticism, comment, news reporting, teaching
(including multiple copies for classroom use), scholarship, or
research." The four non-exclusive factors the courts must
consider in determining whether an unauthorized use is not
(1) the purpose and character of the use,
including whether such use is of a commercial
nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion
used in relation to the copyrighted work as a
(4) the effect of the use upon the potential
market for or value of the copyrighted work.
Koons' sculpture does not fall within any statutory examples.
There was a faint suggestion in his argument that the
sculpture, together with the other works in the "Banality Show,
were intended to comment satirically upon contemporary values.
But I construe the words "criticism" and "comment" as used in
§ 107 to refer to such usage specifically addressed to the
copyrighted work. Koons' sculpture does not criticize or
comment upon Rogers' photograph. It simply appropriates it.
Turning from the statutory examples to § 107's four factors,
the first involves consideration of whether Koons' use of the
Rogers photograph "is of a commercial nature or is for
non-profit educational purposes . . ." Clearly Koons' sculpture
is not for "non-profit educational purposes." But I do not
think Congress intended that phrase to embrace all
non-commercial use. Use of a copyrighted work by a church,
synagogue or mosque for purposes of spiritual inspiration would
not, I should think, be regarded as use "of a commercial
nature." However, the Koons sculpture does not fall in that
category either; and, notwithstanding its unquestioned status
as a work of art, the sculpture is not unsullied by
considerations of commerce. Koons actively markets his
sculptures, by displaying them at galleries and through
published advertisements, and they bring considerable sums from
the public, as the sale of the "String of Puppies" sculptures
indicates. In Stewart v. Abend the infringing use was a motion
picture based upon a copyrighted story. The re-release of the
motion picture earned the defendants $12 million. The Ninth
Circuit rejected defendants'"bold proposition that a work's
popularity may make its value educational rather than
commercial. Clearly, the defendants' 'use is of a commercial
nature.'" Abend v. MCA, Inc., 863 F.2d 1465, 1481 (2d Cir.
1988). The Supreme Court approved that conclusion at 110 S.Ct.
[Defendants] asserted before the Court of Appeals
that their use was educational rather than
commercial. The Court of Appeals found nothing in
the record to support this assertion, nor do we.
In the case at bar, given the plain wording of the statute
and this recent construction, I conclude that Koons' use of the
Rogers photograph was of a commercial nature.
As to the second factor, the Supreme Court in
Stewart approved the observation of the Ninth Circuit that "[a]
use is less likely to be deemed fair when the copyrighted work
is a creative product," 863 F.2d at 1481, adding: "In general,
fair use is more likely to be found in factual works than that
in fictional works." 110 S.Ct. at 1769. Rogers' photograph is a
creative work, more closely akin to fiction.
The third factor considers the amount and substantiality of
the portion used in relation to the copyrighted work as a
whole. Koons appropriated the entire photograph.
The fourth factor, the effect of the use upon the potential
market for or value of the copyrighted work, is regarded as
"the most important, and indeed, central fair use factor."
Stewart at 1769, quoting the Nimmer text. Koons argues that
this factor militates in favor of fair use because his
sculpture does not compete directly in the market place with
Rogers' photograph. But it need not do so. In Stewart the
owners of the infringing motion picture argued that the film
would not prejudice the story's sale in book form, and that the
re-release of the film may even "have promoted sales of the
underlying story in the book medium." 863 F.2d at 1482. That
argument failed because, in the Ninth Circuit's view, the film
distributors' commercial use of a copyrighted story "adversely
affects the story owner's adaptation rights." Ibid. The Supreme
Court accepted that conclusion as well, stating 110 S.Ct. at
The record supports the Court of Appeals'
conclusion that re-release of the film impinged on
the ability to market new versions of the story.
Common sense would yield the same conclusion.
The focus, in other words, is upon potential markets. In the
case at bar, Rogers has shown through the affidavits of
competent experts that photographers may earn additional income
through the sale of "art rendering" rights, namely, creating an
art work based on the photograph in a medium other than
photography. See affidavits of Arnold Newman and Jane S. Kinne.
Counsel for Koons said at oral argument that Rogers had
expressed no prior interest in the art rendering submarket
prior to this litigation. Rogers states in his affidavit that
he is contemplating additional uses for his photograph. I do
not think the case turns upon Rogers' past conduct or present
intention as much as it does upon the existence of a recognized
market for new versions or new uses of the photograph, which
unauthorized use clearly undermines.
I conclude that this factor, together with the others,
militates against fair use.
In Stewart the Supreme Court said:
The motion picture neither falls into any of the
categories enumerated in § 107 nor meets the four
criteria set forth in § 107. "[E]very
[unauthorized] commercial use of copyrighted
material is presumptively an unfair exploitation of
the monopoly privilege that belongs to the owner of
the copyright." Sony Corp. of America v. Universal
Studios, Inc., supra, 464 U.S., at 451, 104 S.Ct.,
In those circumstances the Court held that defendants' use of
the motion picture was not fair use. I reach the same
conclusion with respect to Koons' use in his sculpture of the
Accordingly plaintiff is entitled to injunctive relief
against both defendants.
Claim for Money Damages
Rogers seeks summary judgment against both defendants for
money damages in the amount of $367,000. He contends that
amount constitutes the "infringing profits" as specified by
17 U.S.C. § 504(b), which provides:
The copyright owner is entitled to recover the
actual damages suffered by him or her as a result
of the infringement, and any profits of the
infringer that are attributable to the
infringement and are not taken into account in
computing the actual damages. In establishing the
infringer's profits, the copyright owner is
required to present proof only of the infringer's
gross revenue, and the infringer is required to
prove his or her deductible expenses and the
elements of profit attributable to factors other
than the copyrighted work.
As to "deductible expenses," Rogers contends that Koons has not
sufficiently quantified them in his summary judgment papers.
I agree that Koons did not attempt in his motion papers a
detailed accounting of deductible expenses. But he did refer in
his brief to deposition and documentary evidence addressing the
issue. Rogers' reply brief quarrels with the deductibility of
some of the expenses referred to in the documents produced in
discovery. That demonstrates the existence of triable factual
issues on the point. I decline to construe Rule 56 so as to
preclude Koons from an opportunity to prove at trial the amount
of deductible expenses, where it is clear that they must have
been incurred in some amount and Koons has indicated in
discovery the sort of proof upon which he will rely.
Rogers also seeks damages against Sonnabend Gallery, Inc.,
Koons' principal gallery which displayed the infringing
sculptures. Plaintiff's claim against Sonnabend is not
addressed in the briefs. His theory of recovery against
Sonnabend is not entirely clear. There is no contention that
Sonnabend had anything to do with the creation of the
sculpture. Presumably Rogers proceeds against Sonnabend on the
theory that "one who, with knowledge of the infringing
activity, induces, causes or materially contributes to the
infringing conduct of another, may be held liable as a
'contributory' infringer." Gershwin Publishing Corp. v.
Columbia Artists Management, Inc., 443 F.2d 1159, 1162 (2d Cir.
1971) (footnote omitted). I accept that Sonnabend's conduct in
advertising and displaying the infringing sculptures materially
contributed to Koons' infringing conduct. But Sonnabend must
have had knowledge of the infringing activity to be liable on
this theory. Plaintiff does not call my attention to any
evidence in the record that responsible persons at Sonnabend
knew Koons had copied the Rogers photograph.
On this record, therefore, plaintiff's motion for summary
judgment for money damages is denied as to both defendants.
Defendants' cross-motion for summary judgment dismissing the
complaint is denied for reasons that appear sufficiently from
the foregoing discussion.
Plaintiff's motion summary judgment is granted in part and
denied in part. Defendants' cross-motion for summary judgment
is denied. Plaintiff's counsel is directed to settle an Order
and Judgment on seven (7) days' notice within thirty (30) days
of the date of this Opinion. The case will thereafter be called
for further status conference.
It is SO ORDERED.