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.
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 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, ...