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On July 22, 2005, in Mannion v. Coors Brewing Co., [FOOTNOTE 1] Judge Lewis A. Kaplan of the U.S. District Court for the Southern District of New York issued a decision noteworthy for its examination of the copyrightability of photographs. The question of what is, and is not, protectable in photographs has long vexed the courts, including the U.S. Supreme Court in Burrow-Giles Lithographic Co., v. Sarony [FOOTNOTE 2] (photographic portrait of Oscar Wilde) and Bleistein v. Donaldson Lithographing Co. [FOOTNOTE 3] (chromolithograph of a circus performance). In these seminal decisions, the Court upheld the copyrightability of the works, although in Burrow-Giles it limited its holding to a photograph, such as the Wilde portrait, exhibiting the creative choices of its author, and did not reach the question of whether an “ordinary photograph” would be protected. Judge Kaplan had also grappled with the issue in a 1999 decision, Bridgeman Art Library v. Corel Corp., [FOOTNOTE 4] involving the copyrightability of exact photographic reproductions of public domain paintings. [FOOTNOTE 5] However, unlike Bridgeman, in which Kaplan denied protection for sui generis photographic works which he found completely lacking in creative choices, Mannion involved a typical commercial use of a photograph containing various creative choices, as well as a number of elements flowing from the nature of the assignment. ‘IDEA/EXPRESSION DICHOTOMY’ Mannion is of interest for at least two reasons: Judge Kaplan’s thoughtful analysis of the nature of creativity in, and the resulting level of protection for, different genres of photography and their constituent elements. This, in turn, led Kaplan to a more widely applicable discussion of whether the “idea/expression dichotomy” is a useful distinction when considering the copyrightability of works of the visual arts. The idea/expression dichotomy is a term of art, or perhaps is more akin to a term of lore, in copyright jurisprudence. It is meant to convey the principle that copyright only protects expression, not ideas. However, as Kaplan reminds us, the term itself is not a test for what is protectable, but is merely a way to describe the conclusion of a court’s copyrightability analysis. Moreover, Kaplan maintains that the idea/expression dichotomy, which was initially applied to literary works, is not helpful in considering works of the visual arts because they are not susceptible to the same type of dissection. ‘MANNION’ PHOTOGRAPHS In Mannion, the plaintiff photographer, Jonathan Mannion, had shot a picture of the basketball star Kevin Garnett (the Garnett photograph) which was featured by SLAM magazine in an article on Garnett. The article was entitled “Above the Clouds” and was introduced both by the photo and a headline stating: “As Garnett’s game — and his bank account — have soared higher and higher, his feet have remained planted firmly on the ground.” The photograph showed Kevin Garnett from his head to his hips in an angled profile about halfway towards a frontal view, with his hands overlapping just below his waist and his neck, chest, wrists and fingers covered in extravagant jewelry. The photo was taken from an upward looking perspective so that Garnett appears even more than usually dominating. A prominent feature of the photograph was Garnett’s head, bent slightly down and looking to his left side, with an expression that would make the reader think twice before attempting to drive to the basket. Garnett was set against a background of mostly clouds and some blue sky. He wore a white T-shirt and white athletic shorts against which his jewelry was all the more impressive. One of the defendants, the Carol H. Williams Advertising agency, noticed the photograph and thought it could be useful as part of a proposed billboard designed to promote Coors Light beer to young men in urban markets. CWHA obtained a limited permission from Mannion to use the Garnett photograph as part of a “comp board,” or mock-up, of the proposed advertisement, which also prominently displayed a Coors Light beer can and the words “ICED OUT.” These words were chosen because “ice” is a slang term for diamonds and thus the phrase reinforced the image in the photograph. Except for his fingers, which were bare, the model was wearing essentially the same type of jewelry in the same positions as in the Garnett photograph. The torso and overall pose of the model was angled to the same degree as in the Garnett photograph, but it was shown facing toward the right, rather than the left, from the viewer’s perspective. The photograph on the comp board was cropped by eliminating Garnett’s head and part of his fingers. Coors reacted positively to the proposal and CWHA thereafter solicited bids from various photographers, including Mannion, to take the photograph to be used in the actual billboard ad. Mannion, however, was not chosen. Instead, Coors and CWHA selected a photograph that closely resembled Mannion’s Garnett photograph, although it substituted a muscular black male of similar build as Garnett, and it cropped out the model’s head and the lower portion of his fingers (as did the comp board). The similarities between the billboard photo and the Garnett photograph were much more salient than the differences. As in the comp board photo, the torso was angled halfway toward the front; the photo was taken from an upward looking perspective which made the model appear more dominating; the jewelry appeared to be of the same type and was worn in the same positions; the model was wearing a plain white T-shirt and plain white shorts which accentuated the jewelry; and the background was a cloudy sky. To what extent these similarities, and the overall impression they created, resulted in the “substantial similarity” required to find copyright infringement was the focus of Kaplan’s opinion. SUBSTANTIAL SIMILARITY The first two elements of copyright infringement — plaintiff’s ownership of a valid copyright and defendant’s copying — having been clearly established, Judge Kaplan focused his analysis on the third element: substantial similarity. This element requires proof that defendant’s work copied a substantial amount of protected expression from plaintiff’s. A particularly insightful point made by Kaplan, which is applicable not just to photography but to many forms of expression, is that “the nature and extent of a photograph’s protection differs depending on what makes that photograph original.” This principle is familiar with respect to written works (e.g., the originality of compilations lies in the selection and arrangement of their contents, the originality of a novel arises from character and plot development), but it is not intuitive when applied to photographs. Kaplan describes three types of originality that can be found in photographs: (i) in their rendition; (ii) in their timing; and (iii) in the creation of their subject matter. There are numerous cases addressing whether photographic techniques can give rise to copyrightable elements. It is not possible in this short column to delve into this issue; but, in general, it is not how a photograph is shot that is copyrightable, but the resulting original content. The subject matter of a photograph is a more easily understood category and would include, for example the posing of the Oscar Wilde photograph in Burrow-Giles or the posing of Kevin Garnett in Mannion’s photograph. It is the creativity of the manner in which the person is posed and the juxtaposition of that pose against other elements of the photographs that create the originality and are protected. In contrast, a straight-on photo of Derek Jeter in a Yankee uniform would not be considered to have any originality of subject matter. Equally unoriginal, or perhaps more so, as subject matter, would be a picture of the Empire State Building or a photo of “Old Faithful” rising in Yellowstone Park. There are numerous types of similarities whose presence would not give rise to “substantial similarity” because they do not consist of material protected by copyright law. Thus, the analysis of what types of expression are protected in any given medium is often the crucial determinant of whether infringement will be found. This determination, like one’s view of a painting or photograph, is greatly influenced by the viewer’s perspective. For example, those who view copyright as crucial to our cultural advancement will be more inclined to find expression to be protected than those who consider a capacious public domain to be more important to that end. In Kaplan’s view, the first step to take in deciding what is protected expression in a photograph is to jettison the familiar idea/expression dichotomy (copyright protects expression but not ideas), which arose in the context of literary works, but “in the context of photography is not useful or relevant.” [FOOTNOTE 6] Thus, he asserts, quoting a law review article written by 2nd U.S. Circuit Court of Appeals Judge Jon O. Newman, that “one cannot divide a visual work into neat layers of abstraction in precisely the same manner one could with a text.” [FOOTNOTE 7] Moreover, according to Kaplan, when considering photographs or other works of the visual arts, the elements of such works “could just as easily be labeled ‘idea’ as ‘expression.’” [FOOTNOTE 8] Not all observers would agree with Kaplan’s call to jettison the idea/expression distinction for works of the visual arts. For example, professor David Lange of the Duke Law School suggests that the difficulty of distinguishing ideas from expression in photographs is not a ground for abandoning the distinction but instead is a reason to apply it and to err on the side of “idea.” In Lange’s words: “[I]t is true that our ability to articulate the distinction [between idea and expression] is blurred as we move from the literary to graphic works. We have a rule for dealing with that phenomenon: it is called the merger doctrine. … It is just where we cannot speak with conviction about the distinction … that we are bound to forsake copyright in favor of the public domain.” [FOOTNOTE 9] After rejecting the idea/expression distinction as not useful when comparing two works of the visual arts, Kaplan goes on to apply what he views as a less-confusing test: to compare the protected elements in each photograph. It is not clear that this would lead to a different result, but Kaplan maintains that by defining and comparing categories of protected expression, “even if their precise boundaries are sometimes difficult to delineate,” [FOOTNOTE 10] the inquiry at least will not be clouded by the even more imprecise terms “idea” and “expression.” It may be, however, that Kaplan has set up, and cast aside, a “straw man” unnecessarily. After all, categorizing one element of expression as an “idea” and another as “expression” was never meant to be a method of analysis, but instead was a way of describing the conclusion. It has always been necessary, before reaching that conclusion, to conduct a detailed analysis of what elements of plaintiff’s work constitute copyrightable expression and whether those elements are also present in defendant’s. Often it is the case that it is not the individual elements themselves, but their original combination, that gives rise to copyrightable expression, and the question then is whether defendant has combined these elements in substantially the same way. In comparing the Garnett and Coors photographs, Kaplan stated: “[T]he relevant comparison is between the protectible elements in the Garnett Photograph and the Coors Billboard, but that those elements are not to be viewed in isolation.” [FOOTNOTE 11] He found the Garnett photograph to be protectible “to the extent of the rendition and the creation of the subject” [FOOTNOTE 12] However, he found that other elements were in the public domain, including Kevin Garnett’s likeness (which, in any event was not in the Coors billboard), a cloudy sky, Garnett’s pose, the white T-shirt and the specific jewelry. But Kaplan cautioned that while each of these elements may be unprotectible individually, their combination and arrangement could be protected. The ultimate question, therefore, was whether their overall aesthetic appeal was the same. CONCLUSION In Mannion, Judge Kaplan provided his analysis of the methodology that should be used in determining what is protected photographic expression. He did not, however, decide the issue as applied to the Garnett and Coors photographs. Instead, he denied the parties’ cross-motions for summary judgment and has left its resolution to a jury. It will be interesting to see not only how the jury comes out, but also how Kaplan translates his analytic methodology into instructions readily comprehensible by a jury of our fellow citizens. Robert Jay Bernstein practices law in the Law Office of Robert J. Bernstein and is a past president of the Copyright Society of the USA. Robert W. Clarida is a partner at Cowan, Liebowitz & Latman, and is the chairperson of the Copyright and Literary Property Committee of the Association of the Bar of the City of New York. :::::FOOTNOTES::::: FN1 Mannion v. Coors Brewing Co. and Carol H. Williams Advertising, 377 FSupp2d 444, 2005 U.S. Dist. LEXIS 14686 (July 21, 2005 SDNY) (Mannion). FN2 111 U.S. 53 (1884). FN3 188 U.S. 239 (1903). FN4 36 F. Supp. 2d 191 (S.D.N .Y. 1999). FN5 The authors wrote about the Bridgeman decision in their March 19, 1999 NYLJ Copyright Law Column entitled “Art Reproductions: What’s Wrong With This Picture?” FN6 Mannion, supra, 2005 U.S. Dist. LEXIS 14686 at *44. FN7 Id. at *38-*39 (quoting Jon O. Newman, “New Lyrics for an Old Melody: The Idea/Expression Dichotomy in the Computer Age,” 17 Cardozo Arts & Ent. L.J. 691, 694 (1999). FN8 Id. at *36. FN9 Comments of professor David L Lange, Duke University School of Law , in an e-mail to Robert J. Bernstein, dated Sept. 2, 2005, commenting on the Mannion decision. FN10 Mannion, supra, 2005 U.S. Dist. LEXIS 14686 at *44. FN11 Id. at *48. FN12 Id.

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