72andSunny is an advertising agency that in October 2014 was developing an advertising and media campaign for Starbucks. On October 10, 2014, 72andSunny contacted Maya Hayuk by email to see if she was interested in creating artwork for the proposed Starbucks campaign. Maya Hayuk declined the offer.
Notwithstanding Hayuk’s decision “Starbucks brazenly created artwork that is substantially similar to one or more of Hayuk’s copyrighted Works and used the substantially similar art for the Frappuccino Campaign. The Frappuccino Campaign is essentially identical to the Starbucks campaign72andSunny proposed to Hayuk” (Hayuk complaint).
The paintings cited in Maya Hayuk complaint are:
Hands across the Universe
The Universe II
Kites # 1
And this is a comparision taken from the complaint between Maya Hayuks’s artworks and the Starbucks’ works
Hayuk sues Starbucks and 72andSunny in front of New York Southern District Court 1:2015cv04887 alleging she has suffered and continues to suffer damages and irreparable injury as a result of Starbucks’ infringement of her copyrights.
Hayuk asks the Court to
1. Issue a preliminary order enjoining Starbucks and its officers, agents, servants, employees, successors, assigns, affiliates, attorneys and all others acting in concert and privity with any of them from all further reproduction, display, distribution, and other uses of the Infringing Frappuccino Campaign Artwork during the pendency of this litigation;
2. Issue a preliminary order enjoining 72andSunny and its officers, agents, servants, employees, successors, assigns, affiliates, attorneys and all others acting in concert and privity with any of them from all further reproduction, display, distribution, and other uses of the Infringing Frappuccino Campaign Artwork during the pendency of this litigation;
3. Issue an order that Starbucks and its officers, agents, servants, employees, successors, assigns, affiliates, attorneys and all others acting in concert and privity with any of them be required to deliver up for impoundment all Infringing Frappuccino Campaign Artwork and all other infringing copies and/or derivatives of any works of art created by Hayuk, in all forms whatsoever, which are in Starbucks’ possession or under its control;
4. Issue an order that 72andSunny and its officers, agents, servants, employees, successors, assigns, affiliates, attorneys and all others acting in concert and privity with any of them be required to deliver up for impoundment all Infringing Frappuccino Campaign Artwork and all other infringing copies and/or derivatives of any works of art created by Hayuk, in all forms whatsoever, which are in 72andSunny’s possession or under its control;
5. Issue an order permanently enjoining Starbucks and its officers, agents, servants, employees, successors, assigns, affiliates, attorneys and all others acting in concert and privity with any of them and all other persons and business entities from using any and all of the Infringing Frappuccino Campaign Artwork in any way whatsoever, including but not limited to all further reproduction, distribution, display, manufacture, importation, exportation, sale, and advertising of all said manufactured products, printed and related materials, as well as all electronic and digital images containing any of the Infringing Frappuccino Campaign Artwork;
6. Issue an order permanently enjoining 72andSunny and its officers, agents, servants, employees, successors, assigns, affiliates, attorneys and all others acting in concert and privity with any of them and all other persons and business entities from using any and all of the Infringing Frappuccino Campaign Artwork in any way whatsoever, including but not limited to all further reproduction, distribution, display, manufacture, importation, exportation, sale, and advertising of all said manufactured products, printed and related materials, as well as all electronic and digital images containing any of the Infringing Frappuccino Campaign Artwork;
7. Award Hayuk all of her direct and consequential damages arising from Starbucks’ infringement of any of Hayuk’s copyrights;
8. Award Hayuk all of her direct and consequential damages arising from 72andSunny’s infringement of any of Hayuk’s copyrights
9. Award Hayuk all of her actual damages as well as all profits earned by Starbucks from the infringement of any of Hayuk’s copyrights in accordance with § 504(b) of the Copyright Act;
10. Award Hayuk all of her actual damages as well as all profits earned by 72andSunny from the infringement of any of Hayuk’s copyrights in accordance with § 504(b) of the Copyright Act;
11. Issue an order that Starbucks be required to pay Hayuk such statutory damages within the provisions of the Copyright Act in a sum not less than $750.00, nor more than $30,000.00, per infringed work, or if the Court finds that any of the infringements were committed willfully, such statutory damages within the provisions of the Copyright Act in a sum up to and including $150,000.00 per infringed work;
12. Issue an order that 72andSunny be required to pay Hayuk such statutory damages within the provisions of the Copyright Act in a sum not less than $750.00, nor more than $30,000.00, per infringed work, or if the Court finds that any of the infringements were committed willfully, such statutory damages within the provisions of the Copyright Act in a sum up to and including $150,000.00 per infringed work;
13. Award Hayuk her reasonable attorneys’ fees, costs of suit, and interest; and
14. Award Hayuk such other and further relief as the Court deems just and proper.
The Defendants argue that a proper comparison of Hayuk’s works to Defendants’ works shows that they are not substantially similar as a matter of law and that any similarities between the two sets of works extend only to unprotectible elements of Hayuk’s works. Accordingly, Hayuk’s claims should be dismissed in their entirety, with prejudice.
Defendants say that to evaluate substantial similarity, courts generally apply the “ordinary observer test,” which asks “whether an ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard [the] aesthetic appeal as the same.” Peter F. Gaito Architecture, LLC, 602 F.3d at 66 .
According to the Defendants, however, “when faced with works that have both protectible and unprotectible elements,” the Court should apply the “more discerning ordinary observer” test, in which it “must attempt to extract the unprotectible
elements from consideration and ask whether the protectible elements, standing alone, are substantially similar.”
In Defendants’ opinion the Hayuk Works make extensive use of standard geometric forms such as circles, rectangles, and rays, and the more discerning observer test applies here -citing Tufenkian Imp./Exp. Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127, 132 (2d Cir. 2003) (“the catalogue of standard geometric forms” falls within the public domain)-.
Defendants moreover add that courts routinely hold that works are not substantially similar when their dissimilarities substantially outweigh their similarities, as “dissimilarity in realization or expression can make clear . . . that the similarity extends only to unprotectible concepts or ideas.”
Defendants then consider that in their opinion plaintiff seeks protection for “her works in the aggregate, effectively for her artistic style“. So they argue that “style, independent of any particular expression of it, is not protectible and thus does not form a proper object of comparison to the Frappuccino Works“. And again that “neither plaintiff nor any other artist has a monopoly on the common idea or style of artwork that explores colors and shapes” citing “Dean, 53 F. Supp. 3d at 648 (finding on a motion to dismiss that “Plaintiff does not have a monopoly on the idea of floating or airborne land,” citing Jonathan Swift’s Gulliver’s Travels and Led Zeppelin’s Stairway to Heaven)“.
Defendants conclude that the “Hayuk Works and the Frappuccino Works share some similar basic geometric shapes and some similar colors. Neither of these elements, standing alone, are protectible under the copyright law (“The Copyright Act does not protect common geometric shapes” and “Mere coloration or mere variations in coloring alone are not eligible for copyright protection.”). Moreover, courts regularly dismiss infringement claims for lack of substantial similarity where, as here, the selection, coordination, and arrangement of unprotectible elements yields works that differ markedly in total concept and feel. See, e.g., Cameron, 338 F. App’x at 71“. Finally Defendant request that the Court “enter an order: (i) dismissing the complaint with prejudice, in its entirety, (ii) awarding Defendants’ their costs and attorneys’ fees and (ii) granting such other and further relief as the Court deems just and proper“.
Plaintiff opposes two arguments.
- The “ordinary observer test” shall be applied and not the more stringent “more discerning observer test“: in the Second Circuit, the “standard test for substantial similarity between two items is whether an ‘ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard [the] aesthetic appeal as the same.’” Peter F. Gaito, 602 F.3d at 66 (quoting Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 111 (2d Cir. 2001)). The ordinary observer test asks whether “an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.” Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir. 1995); Peter F. Gaito, 602 F.3d at 66“. The Plaintiff’s argument is that “contrary to what Defendants argue, the Hayuk Works are not composed of unpreotecable elements — they are works of fine art, creations of pure imagination. As original works of fine art, the Hayuk Works are incapable of being parsed into protectable and unprotectable elements. Rather, each Hayuk Work is protectable in its entirety“.
- Anyway, the court should not “dissect [the works] into their separate components and compare only those elements which are themselves entirely copyrightable“. Doing so would lead to a paradox: a) “we might have to decide that there can be no originality in a painting because all colors of paint have been used somewhere in the past.” Knitwaves, Inc., 71 F.3d at 1003; and b) “to do so would be to take the ‘more discerning’ test to an extreme, which would result in almost nothing being copyrightable because original works broken down into their composite parts would usually be little more than basic unprotectible elements like letters, colors and symbols.”Boisson, 273 F.3d at 272 .
So in plaintiff’s opinion the court should compare the works’ “total concept and overall feel . . . as instructed by [its] good eyes and common sense.” Peter F. Gaito, 602 F.3d at 66. So plaintiff argues that a visual comparison of the competing works shows there is remarkable similarity.
On January 12, 2016 the District Court decided to dismiss the complaint in its entirety.
In the memorandum and order the Court agrees with the Defendants’a arguments.
The Court firstly concedes that “apart from exact copying of a portion of a work, a defendant may infringe upon a plaintiff’s work by misappropriating the “total concept and feel” of the protectible elements of a particular work. The total concept and feel test functions as a reminder that infringement of a work can occur through not only literal copying but through “parroting properties that are apparent only when numerous aesthetic decisions embodied in the plaintiff’s work of art . . . are considered in relation to one another.” Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127, 134 (2d Cir. 2003)“.
On the other side the court reminds that “it is an axiom of copyright law that copyright does not protect “ideas,” only their expression and, when “a given idea is inseparably tied to a particular expression” so that “there is a ‘merger’ of idea and expression,” courts may deny protection to the expression “in order to avoid conferring a monopoly on the idea to which it inseparably is tied.” citing Mannion v. Coors Brewing Co., 377 F. Supp. 2d 444, 455-56 (S.D.N.Y. 2005), and that “raw materials” such as colors, letters, descriptive facts and “the catalogue of geometric forms” are a part of the public domain, and not protectible” citing Tufenkian, 338 F.3d at 132.
So the court chooses the “more discerning test” because the works have, in the court point of view, both protectible and unprotectible elements (standard geometric forms such as circles, lines and rays, as well as colors and textures), and clarifies that:
a) the analysis involves an “attempt to extract the unprotectible elements from . . . consideration and ask[s] whether the protectible elements, standing alone, are substantially similar.” and
b) that the “more discerning” test is not a directive to “dissect [the works] into their separate components” and simply compare only those elements which are in themselves copyrightable“. So “the inquiry remains principally guided by a comparison of the “total concept and overall feel” of the works in question and, in the end, “necessarily focuses on whether the alleged infringer has misappropriated the original way in which the author has selected, coordinated, and arranged the elements of his or her work.” and
c) “at the same time, the “total concept and feel” inquiry “is not carte blanche to rest findings of infringement on vague or amorphous determinations.” Mena v. Fox Entm’t Grp., Inc., No. 11 Civ. 5501, 2012 WL 47441389, at 6 (S.D.N.Y. Sept. 29, 2012)“.
The court refuses the plaintiff ‘s argument when she “urges the Court to apply the “ordinary observer” test, asserting that “the Hayuk Works are not composed of unprotectable elements – they are fine art, creations of pure imagination” and “incapable of being parsed into protectable and unprotectable elements.”
The court replies that “the mere status of being “fine art,” does not, however, confer automatic protection over the entirety of the works“, while courts “routinely have distinguished protectible and unprotectible elements in analyzing claims for infringement of works of “fine art.” See, e.g., Dean v. Cameron, 53 F. Supp. 3d 641, 648 (S.D.N.Y. 2014) (comparing paintings to the movie Avatar)“.
So the court concludes:
The Court finds, as a matter of law, that none of the Frappuccino Works is substantially similar to “the total concept and feel” of protectible elements of any of the Hayuk Works. Although the two sets of works can be said to share the use of overlapping colored rays in a general sense, such elements fall into the unprotectible category of “raw materials” or ideas in the public domain. The far more dominant dissimilarities in the specific aesthetic choices embodied in the particular works distinguish them in total concept and feel and preclude a finding of substantial similarity (….).
Likewise, what the Plaintiff has described as the “core” of her work in the aggregate, namely the use of overlapping colored rays, and colors and shapes, is tantamount to a set of unprotectible concepts or methods over which there can be no copyright monopoly conferred. See Mannion, 377 F. Supp. 2d at 455-56. The total concept and feel of the protectible expression of those ideas in the Hayuk Works and the expression of those ideas in the Frappuccino Works are not substantially similar (…) the differences between each of the Hayuk Works and each of the Frappuccino Works “overwhelm any superficial similarity.” See Dean, 53 F. Supp. 3d at 650. No reasonable jury, properly instructed, could find the works substantially similar. See Peter F. Gaito Architecture, 602 F.3d at 64. Plaintiff has thus failed to allege facts framing plausibly any cause of action for copyright infringement and her Complaint fails to state any direct infringement claim upon which relief may be granted.
In Hayuk v. Urban Outfitters (see here) the Defendant filed an expert report to support the argument that the similarities between Hayuk’s works and the infringing works can be found in ideas fallen in public doman only.
The expert report by Chana Messer from UCLA exposes the history of geometric abstract expressionism, arguing that in Western art was developed around the turn of the 20th Century. The expert cites as early pioneers, Wassily Kandinsky and Piet Mondrian.
The expert adds:
“As the genre developed, many artists infused it with a sense of expressionism going beyond self-containment to trying to express a certain feeling or concept using these abstract geometric patterns. Geometric abstraction is a form of abstract art, based on the use of different geometric forms, placed in the space in either realistic or non-realistic ways. Geometric abstraction is characterized by its use of geometric shapes, especially a heavy reliance on intersecting lines and linear shapes such as triangles and squares. Color can be used either as an exercise in abstraction, or to infuse the geometric abstraction with a sense of expressionism“.
Then the expert considers Paul Klee use of geometric shapes to emphasize particular combinations and progressions of colors within those shapes (intersecting and overlapping triangles) and the New York School artists in the 1950s and 1960s that made heavy use of geometric abstractionism. For example Frank Stella and Kenneth Noland took the idea of a stacked series of V’s .
Paul Klee, Double Tent, 1923 Wassily Kandinsky, Color Studies, 1913
Frank Stella, Itafa I, 1968 Kenneth Noland, Bridge, 1964
“As a result” the expert says “of this prevalent use of V’s as the subject of geometric abstract work by many prominent artists, by the end of the 1960s, use of multi-colored rows of V’s was pervasive and a generic idea in geometric abstraction“.
So the expert concludes that “the idea of taking stacks of V’s and intersecting them, either side by side, top to bottom, or overlapped, was within the public domain well before any of the artwork here was created. The further idea of applying a multivariant array of colors to the V’s within the stack of V’s is also an idea in the public domain, and has been since artists such a Paul Klee and Kenneth Noland made revalent use of the basic idea. If anything, use of the idea of multi-colored stacked V’s leads me to conclude at most that each of the artists shared common inspiration in this earlier geometric abstractionist artwork, ideas which are free for the taking and were not laid exclusive claim to evenby those artists” and “any similarities between the two pieces of work relate only to basic ideas that are fully within the public domain, and very common in the field of Adobe Illustrator design, and the actual way these ideas are expressed in the two works is completely different. It is my opinion that there is no probative similarity between the two works, and ultimately the Panic Rainbow design is not a copy or plagiarism of the Pilgrim design no matter how carefully or cursorily the two are compared“.
Ralph E. Lerner and Judith Bresler (Art Law – The Guide for Collectors, Investors, Dealers and Artists – 4th Ed. – 2012 – Vol. II – 994 – 998) remind how the term “substantial similarity” started to be applied in copyright infringement trials starting with the two pronged test established by the leading case on copyright infringement (Arnstein v. Porter, 1946, even if the term substantial similiarity does not appear in Arnstein test)
a) are the similarities sufficient to prove that the defendant copied the plaintiff’s work
b) if so, is such copying an improper appropriation of plaintiff’s protected expression?
Lernet and Bresler point out that in addressing the first prong of Arnstein “courts analyze the two works in toto, comparing their protected expression and their unprotectable underlying ideas (…) and if the defendant’s work does contain probative similarities, Arnstein’s second prong must be addressed“.
About improper appropriation, the courts “must be able to distinguish the protectable elements from the unprotectable elements” and have developed a number of tests among which Lerner and Bresler remind these:
- Abstractions test – The process requires the court to first identify the increasing levels of abstraction of the work. At some point on the spectrum of abstraction, the elements are no longer protected as they enter in the realm of ideas rather than expression, but the test cannot pinpoint the line of demarcation between protectable expression and unprotectable ideas;
- Total concept and feel – Developed by the Ninth Circuit in the 70s compares elements of the works but has been criticized because, considering the total concept, this test could subvert the very essence of copyright;
- Aesthetic appeal -Developed by the Seventh Circuit in 1994 compares the works both in their entirety and disassembled, element by element, considering if the ordinary lay observer would regard their aesthetic appeal as the same.
- Successive filtering approach – The test takes the copyrighted work and distilles from it a core of protectable elements denying the infringement if the defendant copied only unprotectable material.
Another test has emerged, the abstraction filtration comparison: the process requires the court to first identify the increasing levels of abstraction of the work. Then, at each level of abstraction, material that is not protectable by copyright is identified and filtered out from further examination. The final step is to compare the defendant’s work to the plaintiff’s, looking only at the copyright-protected material as identified in the previous two steps, and determine whether the plaintiff’s work was copied.
An interesting reading is Lippman, Katherine. “Beginning of the End: Preliminary Results of an Empirical Study of Copyright Substantial Similarity Opinions in the US Circuit Courts, The.” Mich. St. L. Rev. (2013): 513 that compares the results of trials where the substantial similarity tests occurred.
For example (the figures are taken from Lippman):
So despite the different standards adopted by the the Circuits, the different success rates for the plaintiffs depending on the Court and the chosen similarity test, the question should be whether in contemporary art an artist’s work is protected enough when the similarity test is based on the extraction of the so called unprotectible elements: “raw materials” such as colors, letters, geometric forms.
In abstract art after the extraction of colors and geometric forms (the so called raw materials), considered unprotectible elements, which protectible elements do remain to allow a copyright infringement lawsuit?
And in broader terms in contemporary art -where ideas have overcome the importance of expression: just think to Yves Klein’s Blue Monochromes; John Cage’s composition 4′33, described as four minutes thirty-three seconds of silence; Martin Creed’s Work No. 227: The lights going on and off an empty room in which the lights switched on and off at 5 second intervals- has still sense to mantain as an axiom of copyright law that copyright does not protect “ideas,” only their expression?