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September 27, 2005.

KATE SPADE, LLC, Defendant.

The opinion of the court was delivered by: DENNY CHIN, District Judge


In 2001, Bill Diodato took a photograph, shown here, of the bottom of a bathroom stall. Through the opening underneath the door, one can see a woman's feet, astride a toilet, in stylish, colorful shoes, her underwear hanging above her ankles, and a handbag resting on the floor. Diodato submitted the photograph to defendant Kate Spade LLC ("Kate Spade") in January 2003. Although representatives of Kate Spade deny they saw the photograph, Kate Spade's November 2003 advertising campaign included a photograph, shown below, of a woman's feet, astride a toilet, in stylish, colorful shoes, with a handbag on the floor. Diodato's company, plaintiff Bill Diodato Photography, LLC ("BDP"), sued for copyright infringement and unfair competition.

  Before the Court is Kate Spade's motion for summary judgment and BDP's motion for additional discovery pursuant to Fed.R.Civ.P. 56(f). As discussed more fully below, although the idea of using a woman sitting on a toilet to showcase stylish shoes and other fashion accessories is a clever one, it is an idea that has been used often in popular culture. Hence, Diodato's photograph contains elements that are not protected by the copyright laws. Even assuming there was copying here, Kate Spade's motion for summary judgment must be granted and the complaint dismissed. In addition, for the reasons set forth below, BDP's Rule 56(f) motion is denied.


  A. Facts

  The following facts are drawn from the pleadings and the parties' motion papers and supporting materials. All conflicts in the evidence have been resolved in favor of BDP, the party opposing summary judgment. 1. The BDP Photograph

  Diodato is a fashion accessory photographer and the principal of BDP. (Diodato Dep. at 7-9). In late 2001, BDP was hired by the magazine Angeleno to shoot a series of photographs featuring fashion accessories with New York City as a central theme. (Id. at 154-63, 167). Diodato chose to illustrate that "highly fashionable women can be somewhat tacky," and on December 14, 2001 he photographed models in a Burger King restaurant, on streets in New York City, and in a taxi cab. (Id. at 154, 158-61, 205). The photograph at issue here (the "BDP Photograph") was among the photographs in the series. (Id. at 159-60).

  The BDP Photograph was taken from the floor outside a bathroom stall. (See Diodato Aff. Ex. A; id. ¶ 5).*fn1 It depicts the bottom portion of the stall and a woman's feet in pink shoes decorated with green, yellow, and purple leaves, with thin pink straps criss-crossing up her legs. The woman's lime green underpants are taut just above her ankles. A light brown handbag rests on the floor next to the woman's left foot, and a white toilet is visible in the background. The woman's feet are on the floor, her heels raised at a stiff angle by the heels of her shoes. The woman's ankles are turned in, with her toes painted red.

  The BDP Photograph is taken from a distance, with the bathroom stall and door separating the subject and the camera. Almost the entire bottom half of the photograph consists of the light grey lines of the floor tiles, with virtually all of the floor out-of-focus.*fn2 The floor comes into focus halfway up the photograph, where the woman's feet touch the ground and the handbag sits. The photograph is framed at the top and on the left by the darker grey of the bathroom stall and door. A light seems to shine on the legs, toilet, and handbag, in contrast to the shadows in the foreground and background.*fn3 The overall tone of the photograph is whimsical, fun, and bright.

  Angeleno did not run the BDP Photograph as part of the series, and the BDP Photograph has not been published commercially. (Diodato Dep. at 164, 176-79). It has been a part of BDP's fashion accessory portfolio (the "Portfolio") from late 2002 to the present and is, in one form or another, on the BDP website. (Diodato Aff. ¶ 5; Diodato Dep. 146-47; Casey Dep. at 150).

  2. Interactions Between BDP and Kate Spade

  Since at least late 2002, BDP has been represented by a photography agency, Marge Casey & Associates ("MCA"). (Id. at 12, 20, 145). On January 13, 2003, MCA received a call from Kate Spade requesting the Portfolio, among other portfolios. (Id. at 157-61). According to Margaret Casey, an owner of MCA, the request was made by Julia Leach, Kate Spade's executive vice president of brand strategy/creative services, or someone on Leach's behalf. (Id. at 12, 159-60; Leach Aff. ¶ 1; see also Diodato Aff. Ex. E).*fn4 Notes taken by an MCA employee on an "MCA Photo Request Form" dated January 13, 2003 and referring to BDP portfolios include "Julia Leach" written next to "Contact" and "Kate Spade" written next to "Agency." (Id.).

  On January 15, 2003, the Portfolio was sent by messenger to Kate Spade. (Casey Dep. at 167, 183-84; Diodato Aff. Ex. E, F). It was returned to MCA on January 22, 2003, after a Kate Spade employee told MCA that Kate Spade liked the Portfolio and wanted to see it again in three or four weeks when Kate Spade planned to create concepts and shoot photographs for an advertising campaign. (Casey Dep. at 166, 171, 175, 184; Diodato Aff. Ex. E, F). The Portfolio was sent again to Kate Spade on February 13, 2003. (Casey Dep. at 186; Diodato Aff. Ex. E, F). While Kate Spade had the Portfolio, Casey called to inquire whether Kate Spade was interested in using BDP as a photographer. (Casey Dep. at 175). Casey was told by a Kate Spade "assistant" that Kate Spade only worked with important or well-known photographers. (Id. at 175, 188). The Portfolio was returned to MCA on February 24, 2003. (Id. at 187; Diodato Aff. Ex. E, F). Kate Spade did not contact MCA or BDP further about the advertising campaign.

  3. The Kate Spade Photograph

  Photographer Jessica Craig Martin was contacted by Kate Spade in March 2003 about the company's fall 2003 advertising campaign. (Craig Martin Aff. ¶¶ 1, 15). Craig Martin met with principals of Kate Spade in April or May 2003, at which time Craig Martin's portfolio was reviewed and ideas for the advertising campaign were discussed. (Id. ¶ 16; Leach Aff. ¶¶ 2, 5, 7). It was agreed that Kate Spade would throw a party to celebrate its tenth anniversary and that Craig Martin would take candid, paparazzi-style photographs at the party. (Id. ¶ 5). According to Kate Spade, ideas for potential images were discussed at the meeting, and Kate Spade officials referenced photographs in Craig Martin's portfolio as exemplifying what they wanted. (Id. ¶ 7). Among those photographs was one taken by Craig Martin in 2000 from the floor of a bathroom, featuring a side view of the feet and gold shoes of two women in bathroom stalls (the "2000 Craig Martin Photograph"). (Id.; see Craig Martin Aff. ¶ 8, Ex. D). In that photograph, one of the women is wearing fishnet stockings and bright light reflects from the women's shoes and the floor. (Id., Ex. D). The 2000 Craig Martin Photograph has been exhibited publicly and distributed as a postcard, and copies of the photograph have been sold. (Id. ¶¶ 10-14).

  Kate Spade eventually hired Craig Martin to conceptualize and shoot photographs for the advertising campaign. (Leach Aff. ¶ 6). In early June 2003, Craig Martin took photographs at Kate Spade's anniversary party at the Explorers' Club in New York City, as planned. (Craig Martin Aff. ¶ 17). Among those was the allegedly infringing photograph, taken in the bathroom of the Explorers' Club (the "Kate Spade Photograph"). (Id. ¶ 18; see Compl. Ex. C). It was among the thirty to fifty images that Kate Spade ordered from Craig Martin after the shoot, and it ultimately was one of the approximately fourteen photographs used in Kate Spade's fall 2003 advertising campaign. (Craig Martin Aff. ¶ 25; 1/6/05 Martin Aff. Ex. A, B).

  The Kate Spade Photograph is taken from the tiled floor in front of a toilet. (Compl. Ex. C). A woman's legs are visible from just below the knees; she wears purple-tinted fishnet stockings and satin pink shoes with straps criss-crossing once around her ankle, and her light tulle petticoats fall to the side of the toilet. A shiny, silver square handbag sits next to her left foot. The Kate Spade Photograph is cropped close to the woman, the toilet between her legs, and the handbag, so that little of the surrounding area is visible, aside from square tiles on the wall. The bottom portion of the Kate Spade Photograph consists of smaller floor tiles, mottled in color and texture.

  With the exception of the extreme foreground, the floor and other images are in focus, grounding the photograph. In addition, there seems to be a spotlight shining on the center of the frame, creating sharp contrasts in light.*fn5 The entire photograph is detail-rich and textured. The purse has a metallic shine and creases; light reflects off the bows on the satin shoes; and the distinct patterns of the wide-net stockings and the tile floor add energy to the photograph. The woman's feet are pointed toward each other, her left foot is slightly raised and leaning on its side. The image seems to be of an evening event, as the woman is dressed in party attire and the shadows are dark. According to Kate Spade, Craig Martin created all the photographs for the advertising campaign without direction or instruction from Kate Spade, except that Kate Spade provided direction as to which Kate Spade products were to appear in the campaign. (Leach Aff. ¶ 8; Craig Martin ¶¶ 27-28). ...

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