The opinion of the court was delivered by: Owen, District Judge.
Plaintiff Thomas Kerr is a freelance illustrator who primarily
works in pen and ink, but also "illustrates in color media." He
teaches at the Art Institute of Boston at Leslie College. His
works have appeared in the Washington Post, New York Newsday,
Boston Globe, Fortune Magazine, the New York Times, among others,
but they have never appeared on the cover of a national magazine
nor been published in the New Yorker. The New Yorker Magazine did
commission three drawings for which Kerr was paid, but these were
never published. Kerr has also done several pictures with the New
York skyline in strange places — the back of a dragon eating its
own tail; and the inside of a crocodile's mouth.
Defendant, Anita Kerr, is a well-known Canadian illustrator who
generally works in watercolor and gouache.*fn2 Her works have
appeared on the covers of magazines like Time, Newsweek, Rolling
Stone, Sports Illustrated, Business Week, and the Sunday magazine
of the New York Times, the Boston Globe and the Washington Post,
among others. She has won a number of prestigious illustration
awards, and has taught at various universities. She has done
several pictures which show objects coming out of people's heads
— including a television antennae on top of a profile of a man's
head (Boston Globe, 1988); the Eiffel tower coming out of a
woman's head (Time-Out Paris, 1990); and a lighthouse coming out
of a woman's head (LA Style, 1991). In addition, she did a
brochure advertising Mohawk Paper Mills, Inc., which depicted the
profile of a Native American with a Mohawk hairstyle in 1994.
Plaintiff Kerr's picture ("New York Skyline") is a pen-and-ink
drawing depicting a male figure facing his viewer at a
three-quarter view with a "Mohawk" hairstyle which forms the
silhouette of the Manhattan skyline. Both eyes are visible and
seem to watch the viewer. The figure has a long nose, a full
bottom lip, and has a goatee in the shape of the Statute of
Liberty. He wears a leather jacket and a t-shirt, and has
shoulders in a realistic proportion to his head. The figure wears
no jewelry, and the background is blank.
Defendant Kunz's picture ("Mohawk Manhattan") is in color and
depicts a clean-shaven male figure with dark olive skin in
profile wearing four earrings and a chain running from a pierced
nostril to a pierced earlobe. The figure's head is tilted
slightly downward, and the one eye that is visible is looking
downward. The figure has full lips, a smooth, rounded chin, and a
long, straight nose. The figure has a Mohawk hairstyle, which
forms a silhouette of the Manhattan skyline with the buildings in
a different order than in Kerr's image. It has a thick neck, with
steeply sloped shoulders without clothing. The background is a
night sky in several shades of blue and green, with faint images
of clouds, a crescent moon, and many stars.
Kerr testified that he created "New York Skyline" sometime in
1989 or 1990, and registered it for copyright in January, 1996.
In September, 1990, Kerr orally licensed "New York Hairline" to
his business partner Joel Cohen to create postcards in return for
half of the total cards printed to use as promotional mailers.
Cohen testified that he printed about 1500-2000 cards, of which
22 were sold to SOHO stores in 1991-92. The card was also
included in a catalogue called "Unusual Quill" that was
distributed by Cohen in 1992, but discontinued because so few
orders (about 25) were received. Kerr also testified that he
received space on Cohen's website, money for entertainment
expenses, and royalties as a result of the oral
license. Kerr claims that he sent out about 1200 postcards
between 1991 and early 1993, at least three of which were sent to
New Yorker employees, none of whom remember receiving it.*fn3 In
1993, Kerr gave one of his students oral permission to use the
image on a t-shirt in return for a dozen of the t-shirts.
At some point in either 1994 or 1995, Kerr also gave a copy of
the postcard to an acquaintance of his, James Yang, who was also
an illustrator and a friend of Kunz. Kerr claims that Kunz saw
the postcard when she visited Yang's studio, but Yang testified
that he did not show the postcard to Kunz and that the only time
she ever toured his studio was before he met Kerr. Kunz testified
that she visited Yang's studio once or twice between June 1994
and November 1994. Kerr is unsure when he met Yang, but he thinks
it could have been as early as 1994.
On November 10, 1994, Kerr attended the opening of Kunz's
exhibition at the Foreign Press Center. He contends that he wore
a "New York Hairline" t-shirt under an open jacket to the
opening. Apparently, Kerr spoke briefly with Kunz on that
occasion, so she had the opportunity to view the image.
Defendants claim that Kunz would not have focused on the image
because she spoke to more than a hundred people that night and
only spoke to Kerr for a few moments. Kerr claims that he spoke
with her at the beginning, before it was crowded, so she would
have remembered. Although there is testimony that Kerr was a
casual dresser who would have worn a t-shirt to an opening, only
his own testimony supports the fact that he was wearing the
t-shirt that night.
According to defendants, Francoise Mouly, the New Yorker Art
Director, first contacted Kunz in the spring or summer of 1993,
requesting Kunz to submit ideas for the cover of a special issue
of the New Yorker. Mouly was familiar with Kunz's work and style,
which "portrayed surrealistic worlds in meticulous detail." Kunz
submitted several ideas, but another artist was chosen to do the
cover. Mouly did send Kunz the New Yorker's publication schedule
and invited her to submit ideas for covers. In March, 1995, Kunz
jotted down some ideas for covers; these ideas included "NY on
turtle back," "Statute of Liberty hailing a cab," "punk with
skyline `Mohawk.'" In May, 1995, Kunz faxed four sketches to
Mouly, including a punk with a skyline Mohawk. Mouly was
interested in the sketch — which she saw as a "hip" and "ethnic"
"visual pun" — and the New Yorker editor approved it, and a
finished rendering in acrylic was published on the cover of the
July 10, 1995 issue.*fn4
Summary judgment under Fed. R.Civ.P. 56(c) is appropriate only
if "there is no genuine issue as to any material fact and the
moving party is entitled to judgment as a matter of law." The
moving party has the burden of demonstrating the absence of any
material factual dispute and the court must make all reasonable
inferences in favor of the non-moving party. See Anderson v.
Liberty Lobby, 477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202
(1986). Summary judgment on a copyright claim is appropriate if
the works share only unprotectible ideas, or if no reasonable
jury could find that the works are substantially similar. See
Arica Institute v. Palmer, 970 F.2d 1067, 1072 (2d Cir. 1992).
The most basic proposition of copyright law is that the law
does not protect an idea itself, but only a particular expression
of that idea. See 17 U.S.C.
§ 102(b); Williams v. Crichton, 84 F.3d 581, 587 (2d Cir.
1996). So, in order to prevail on a claim for copyright
infringement under 17 U.S.C. § 101, plaintiff must prove "two
elements: `(1) ownership of a valid copyright, and (2) copying of
constituent elements of the work that are original.'" Matthew
Bender & Co., Inc. v. West Publishing Co., 158 F.3d 674, 679 (2d
Cir. 1998) (citing Feist Publications, Inc. v. Rural Telephone
Service Co., Inc., 499 U.S. 340, 361, 111 S.Ct. 1282, 113
L.Ed.2d 358 (1991)). Here, defendants concede for the sake of
this motion that plaintiff owns a valid copyright.*fn5 So, to
prove infringement, "a plaintiff must demonstrate first that a
copyrighted work was actually copied, and second, that the
copying amounted to an improper or unlawful appropriation."
Nihon Keizai Shimbun, Inc. v. Comline Business Data, Inc.,
166 F.3d 65, 69-70 (2d Cir. 1999). Because direct evidence of copying
is rare, copying may be proven circumstantially, either by (1) a
showing that (a) defendant had access to the plaintiff's work,
and (b) that the two works are similar in way that is probative
of copying; or (2) by a showing of striking similarity. See
Williams, 84 F.3d at 587; Gaste v. Kaiserman, 863 F.2d 1061,
1066 (2d Cir. 1988). Once a plaintiff has proven copying, he must
then show that the copying rises to the level of unlawful
appropriation of copyrightable elements. See Fisher-Price, Inc.
v. Well-Made Toy Mfg. Corp., 25 F.3d 119, 123 (2d Cir. 1994). If
the plaintiff is able to make out a prima facie claim for
copyright infringement, the defendant may then offer proof of
independent creation as an affirmative defense. See Repp. v.
Webber, 132 F.3d 882, 889 (2d Cir. 1997); Folio Impressions v.
Byer CA, 937 F.2d 759, 765 (2d Cir. 1991).
Here, plaintiff does not claim "striking similarity". Instead,
Kerr contends that the two images are substantially similar.*fn6
Thus, plaintiff must prove that (1) Kunz had access to his work,
and (2) that the works are substantially similar. "Access must be
more than a bare possibility and may not be inferred through
speculation or conjecture." Gaste, 863 F.2d at 1066. However,
it is sufficient to show "access through third parties connected
to both a plaintiff and a defendant." Id., at 1066. Kerr
contends that Kunz had access to his image on a number of
different occasions: (1) through postcards sent to the New
Yorker, (2) through seeing Cohen's postcard at a store in SOHO or
in the catalogue, (3) through Yang, or (4) at Kunz's opening.
Although these theories barely rise above "mere allegations that
someone known to the defendant possessed the work in question,"
Palmieri v. Estefan, No. 91 Civ. 3098, 1995 WL 331719 (S.D.N Y