Filed: Jan. 07, 2013
Latest Update: Feb. 12, 2020
Summary: 3, Sony in fact created two new versions of the Photo, but the, differences between them are minor and the fact that there are two, images is irrelevant to our analysis. They, are not Harney's original expression, and they, are not copyrightable elements of his, photograph.in visual works.
United States Court of Appeals
For the First Circuit
No. 11-1760
DONALD A. HARNEY,
Plaintiff, Appellant,
v.
SONY PICTURES TELEVISION, INC., AND
A & E TELEVISION NETWORKS, LLC,
Defendants, Appellees.
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
[Hon. Rya W. Zobel, U.S. District Judge]
Before
Torruella, Lipez, and Howard,
Circuit Judges.
Andrew D. Epstein, with whom Barker, Epstein & Loscocco and
Keith E. Toms were on brief, for appellant.
Bruce P. Keller, with whom Michael J. Beam and Debevoise &
Plimpton LLP were on brief, for appellees.
January 7, 2013
LIPEZ, Circuit Judge. On a sunny April day in 2007,
freelancer Donald Harney snapped a photograph ("the Photo") of a
blond girl in a pink coat riding piggyback on her father's
shoulders as they emerged from a Palm Sunday service in the Beacon
Hill section of Boston. Just over a year later, the pair in the
Photo became a national media sensation. The father, soon-to-be
revealed as a German citizen who had assumed the name Clark
Rockefeller, had abducted his daughter during a parental visit and
was being sought by law enforcement authorities. Harney's father-
daughter photo was used in an FBI "Wanted" poster, and the image
was widely distributed in the media as the abduction saga
unfolded.1 Appellee Sony Pictures Television, Inc. ("Sony") later
produced a made-for-television movie based on Gerhartsreiter's
identity deception. Sony depicted the Photo in that movie using an
image that was similar in pose and composition to Harney's
original, but different in a number of details.
Harney subsequently filed this infringement action,
alleging that appellees' use of his photograph without permission
1
The episode lasted about a week and concluded with the
girl's safe return and the father's arrest. It was then discovered
that "Rockefeller" was actually Christian Karl Gerhartsreiter, and
he was convicted of child abduction in 2009. Gerhartsreiter is
currently being prosecuted for murder in connection with the 1985
death of his California landlady's son. News reports state that
the trial is scheduled to start in Los Angeles in January 2013.
See, e.g., Judge Sets Murder Trial Date for 'Clark Rockefeller,'
CBS Boston (April 15, 2012) boston.cbslocal.com/2012/04/15/judge-
sets-murder-trial-date-for-clark-rockefeller/.
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violated federal copyright law. Appellees moved for summary
judgment. Concluding that no reasonable jury could find
"substantial similarity" between Sony's recreated photo and
Harney's original, the district court held that Sony had not
violated Harney's exclusive rights to his work. After careful
review, we affirm the grant of summary judgment for appellees.
I.
Consistent with our approach in evaluating a summary
judgment ruling, we present the facts in the light most favorable
to appellant Harney. See Johnson v. Gordon, 409 F.3d 12, 17 (1st
Cir. 2005).
Harney spotted Gerhartsreiter and his daughter, Reigh, on
the morning of April 1, 2007 while on assignment for the Beacon
Hills Times, a neighborhood newspaper that had asked Harney to take
photos of people in and around Beacon Hill. A professional
photographer for more than two decades, Harney approached
Gerhartsreiter and his daughter as they left a service at the
Church of the Advent and obtained permission to photograph them for
the newspaper. The Photo was published on the front page of the
paper later that month, with the caption, "Parishioners Clark and
Reigh 'Snooks' Rockefeller of Pinckney Street celebrated Palm
Sunday at the Church of the Advent on March 31 [sic]."
In July 2008, Gerhartsreiter abducted his daughter during
a custodial visit. Without Harney's knowledge or consent, a
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portion of the Photo was placed on an FBI "Wanted" poster that was
distributed nationwide. Harney states that he did not object to
this use of the photograph because he did not want to impede the
search for the missing child.
The Photo of the seemingly happy father and child became
the iconic image of the bizarre saga of Gerhartsreiter,2 a
"professional" imposter who had been passing himself off as a
member of the high profile Rockefeller family and whose previous
false identities included descendant of British royalty, Wall
Street investment advisor and rocket scientist. He also was wanted
for questioning in connection with a twenty-year-old homicide in
California. Public interest in the story remained high long after
Reigh was safely returned to her mother, and interest likewise
remained high in Harney's photograph because of its prominent role
in the manhunt. Harney licensed the Photo for use in multiple
media outlets, including Vanity Fair magazine. In 2010, Sony
completed and released a made-for-television movie titled Who is
Clark Rockeller?, which was distributed to cable stations by
appellee A & E Television Networks, LLC. The ninety-minute
docudrama was based on Gerhartsreiter's life, "retell[ing] in
2
Harney repeatedly describes his Photo as an "iconic" image
of the Clark Rockefeller story. We understand him to mean that the
prominent role of the photograph in the publicity surrounding
Reigh's abduction converted his depiction of a happy father and
child into a widely recognized symbol of Gerhartsreiter's life of
deception.
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dramatic fashion Clark Rockefeller's story and the search for Clark
and Reigh." Rule 56.1 Statement of Undisputed Material Facts in
Support of Defendants' Motion for Summary Judgment, ¶ 15.
To depict the role that the Photo played in the abduction
events, Sony recreated it using the actors who were cast in the
roles of Clark and Reigh.3 The new photo ("the Image") was
displayed for a total of about forty-two seconds in five scenes
demonstrating the Photo's use during the manhunt in three different
contexts: (1) as the image in the Wanted poster, (2) in a law
enforcement briefing room, and (3) in television news reports about
the abduction. The Image also appears, for less than one second,
in one of the twenty-two television commercials publicizing the
movie.
The Photo and the Image share several important
features.4 Both show a young blond girl wearing a long pink coat
and light-colored tights riding piggyback on a man's shoulders. The
pair are smiling in both photographs, and they are looking straight
at the camera at roughly the same angle. Although Gerhartsreiter
and Reigh are closer to the camera in the Photo than the actors are
in the Image, both pictures show only the father's upper body. In
3
Sony in fact created two new versions of the Photo, but the
differences between them are minor and the fact that there are two
images is irrelevant to our analysis. We therefore analyze the
issues as if appellees had created only one new image.
4
The two photographs are reproduced in an appendix to this
opinion.
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both, the father is holding papers in his left arm with the text of
the first page facing the camera.
Some of the differences are minor. Reigh's coat is a
darker pink than the coat worn by the child actor, and its buttons
are placed higher on the garment. Although both men are wearing
jackets and ties, Gerhartsreiter's jacket is a dark tweed while the
actor's is a solid tan. Several of the distinctions, however, are
more significant. The background behind Gerhartsreither and Reigh
consists of a leafless tree, the church spire, and a bright blue
sky. In the Image, nearly all of the background consists of dark
leaves on the branches of a tree, with bits of white-grey sky
peeking through in spots. The papers in Gerhartsreiter's hand are
easily identifiable as the program for the service at the Church of
the Advent, while the writing on the front of the papers in the
actor's hand is not legible. Its text, however, plainly does not
resemble the program held by Gerhartsreiter. Reigh is holding up
a palm leaf in her left hand, but both of the child actor's hands
are by her sides, resting on her legs.
Shortly after answering Harney's complaint, which was
filed in July 2010, appellees moved for summary judgment on the
ground that the Image was not "substantially similar" to the Photo,
a necessary element of a copyright violation. They further argued
that their incorporation of the Image in the docudrama was, in any
event, a permissible "fair use" under copyright law. See 17 U.S.C.
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§ 107. Following a hearing, the district court granted summary
judgment for appellees and dismissed the case. The court ruled
that the Image was not substantially similar to Harney's photograph
because "[w]hen the Harney Photograph and the Sony Image[] are
compared, they share the factual content" of the scene captured by
the Photo, "but not Harney's expressive elements." The court
concluded that the "limited sharing" between the works was "not
enough to establish substantial similarity and copyright
infringement." The court thus did not need to reach appellees'
fair use argument, and it did not discuss that issue.
On appeal, Harney argues that the district court
misapplied the applicable test for assessing substantial
similarity. He asserts that the court "over-dissect[ed] Harney's
Photograph, and thereby overlook[ed] significant aspects of its
originality and protected expression." He further maintains that
the appellees are not protected by the fair use doctrine.
II.
To establish copyright infringement, a plaintiff must
prove "both ownership of a valid copyright and illicit copying."
Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 33 (1st
Cir. 2001); see also Coquico, Inc. v. Rodríguez-Miranda,
562 F.3d
62, 66 (1st Cir. 2009). Copying another's work does not, however,
invariably constitute copyright infringement. Feist Publ'ns, Inc.
v. Rural Tel. Serv. Co.,
499 U.S. 340, 361 (1991) ("Not all copying
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. . . is copyright infringement."); Johnson, 409 F.3d at 17-18. The
copying must be sufficiently "extensive that it render[s] the
infringing and copyrighted works 'substantially similar.'"
Johnson, 409 F.3d at 18 (quoting Segrets, Inc. v. Gillman Knitwear
Co.,
207 F.3d 56, 60 (1st Cir. 2000)) (internal quotation mark
omitted).
Moreover, it is permissible to mimic the non-
copyrightable elements of a copyrighted work. Copyright protection
"extend[s] only to those components of a work that are original to
the author," and a work that is sufficiently "original" to be
copyrighted may nonetheless contain unoriginal elements. Feist
Publ'ns, 499 U.S. at 348; see also, e.g.,
Johnson, 409 F.3d at 18-
19.5 The Supreme Court recently confirmed that "every idea,
theory, and fact in a copyrighted work becomes instantly available
for public exploitation at the moment of publication." Golan v.
Holder,
132 S. Ct. 873, 890 (2012) (quoting Eldred v. Ashcroft,
537
U.S. 186, 219 (2003)) (internal quotation mark omitted); see also
Johnson, 409 F.3d at 19 ("[C]opyright law protects original
expressions of ideas but it does not safeguard either the ideas
themselves or banal expressions of them."). Hence, assessing
substantial similarity requires close consideration of which
5
This principle applies to all types of creative works. See
17 U.S.C. § 102(a) (stating that "[w]orks of authorship" include
literary works, dramatic works, pantomimes, "pictorial, graphic,
and sculptural works," sound recordings, and architectural works).
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aspects of the plaintiff's work are protectible and whether the
defendant's copying substantially appropriated those protected
elements. Johnson, 409 F.3d at 18-19; see also Soc. of Holy
Transfiguration Monastery, Inc. v. Gregory,
689 F.3d 29, 51 (1st
Cir. 2012) ("'No infringement claim lies if the similarity between
two works rests necessarily on non-copyrightable aspects of the
original . . . .'" (quoting TMTV Corp. v. Mass Prods., Inc., 645
F.3d 464, 470 (1st Cir. 2011)).
We have thus described the inquiry into substantial
similarity as embracing two different types of scrutiny. The court
initially "dissect[s]" the earlier work to "separat[e] its original
expressive elements from its unprotected content." Coquico, 562
F.3d at 68. The two works must then be compared holistically to
determine if they are "substantially similar," but giving weight
only to the protected aspects of the plaintiff's work as determined
through the dissection. See
Johnson, 409 F.3d at 19 ("While a
finding of substantial similarity vel non derives from an
examination of the juxtaposed works as a whole, that examination
must focus on 'what aspects of the plaintiff's work are protectible
under copyright laws and whether whatever copying took place
appropriated those [protected] elements.'" (alteration in original)
(quoting Matthews v. Freedman, 157 F.3d 25, 27 (1st Cir. 1998)));
Yankee
Candle, 259 F.3d at 33 (noting that determining substantial
similarity "is not so simple a task . . . as a strict visual
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comparison of the two items" because "only the protected expression
is relevant" to the inquiry (internal quotation marks omitted)
(quoting Leigh v. Warner Bros., Inc., 212 F.3d 1210, 1214 (11th
Cir. 2000))). We have explained that two works are substantially
similar if "'the ordinary observer, unless he set out to detect the
disparities, would be disposed to overlook them, and regard their
aesthetic appeal as the same.'" Concrete Mach. Co. v. Classic Lawn
Ornaments, Inc.,
843 F.2d 600, 607 (1st Cir. 1988) (quoting Peter
Pan Fabrics, Inc. v. Martin Weiner Corp.,
274 F.2d 487, 489 (2d
Cir. 1960) (Learned Hand, J.))). This assessment, of course, must
be informed by the dissection analysis.
Although the dissection analysis typically is performed
by the court as a matter of law, see infra note 9, the
determination of substantial similarity is ordinarily assigned to
the factfinder, see, e.g., T-Peg, Inc. v. Vermont Timber Works,
Inc., 459 F.3d 97, 112 (1st Cir. 2006).6 Faced with a motion for
summary judgment, however, a court may be asked both to dissect a
protected work and to determine whether a reasonable jury could
conclude that "an ordinary observer" examining the two works would
6
The jury necessarily would be instructed on the unprotectible
elements of the plaintiff's work and told that it could not
consider those elements in evaluating substantial similarity. See,
e.g., Oracle America, Inc. v. Google Inc., No. 3-10-cv-03561, Doc.
1018, Final Charge to the Jury, at 12; Fed. Civil Jury Instructions
of the Seventh Circuit (2009), at 274, available at
http://www.ca1.uscourts.gov/Pattern_Jury_Instr/7th_cir_instruc_20
09.pdf.
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see the defendant's version as a wrongful appropriation of the
plaintiff's protected expression. See, e.g., T-Peg, Inc., 459 F.3d
at 112;
Johnson, 409 F.3d at 18. We have cautioned that "the
court should not lose sight of the forest for the trees" when
making these determinations.
Coquico, 562 F.3d at 68. The court
must "be careful not to over-dissect the plaintiff's work, causing
it to ignore the plaintiff's protectable expression." Situation
Mgmt. Sys., Inc. v. ASP. Consulting LLC,
560 F.3d 53, 59 (1st Cir.
2009). Likewise, in making the holistic assessment, the court
"should take pains not to focus too intently on particular
unprotected elements at the expense of a work's overall protected
expression."
Coquico, 562 F.3d at 68; see also CMM Cable Rep, Inc.
v. Ocean Coast Props., Inc.,
97 F.3d 1504, 1515 (1st Cir. 1996)
(recognizing "the potential 'danger . . . that courts . . . will so
"dissect" the work as to classify all its elements as unprotectable
. . . [thereby possibly] blind[ing it] to the expressiveness of
their ensemble'" (alterations in original) (quoting Jane C.
Ginsburg, Four Reasons and a Paradox: The Manifest Superiority of
Copyright over Sui Generis Protection of Computer Software, 94
Colum. L. Rev. 2259, 2561 (1994))).
Applying these principles to news photography, which
seeks to accurately document people and events, can be especially
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challenging.7 "[A]rtists [ordinarily] have no copyright in the
'reality of [their] subject matter,'" Leigh, 212 F.3d at 1214
(quoting Franklin Mint Corp. v. Nat'l Wildlife Art Exch., Inc.,
575
F.2d 62, 65 (3d Cir. 1978)) (third alteration in original), and the
news photographer's stock-in-trade is depicting "reality." Yet
"the photographer's original conception of his subject" is
copyrightable. Kisch v. Ammirati & Puris Inc.,
657 F. Supp. 380,
382 (S.D.N.Y. 1987) (internal quotation marks omitted). Courts
have recognized originality in the photographer's selection of,
inter alia, lighting, timing, positioning, angle, and focus. See,
e.g.,
Leigh, 212 F.3d at 1215; Mannion v. Coors Brewing Co., 377 F.
Supp. 2d 444, 450-51 n.37 (S.D.N.Y. 2005);
Kisch, 657 F. Supp. at
382. Photographers make choices about one or more of those
elements even when they take pictures of fleeting, on-the-spot
7
Indeed, courts and commentators have noted that copyright
concepts developed for written works imperfectly fit the visual
arts, including photography. See, e.g., Mannion v. Coors Brewing
Co., 377 F. Supp. 2d 444, 458 (S.D.N.Y. 2005) (noting that "the
[idea/expression] distinction breaks down" in the context of non-
verbal media); Rebecca Tushnet, Worth a Thousand Words: The Images
of Copyright, 125 Harv. L. Rev. 683, 740 (2012) (noting that
"copyright's core doctrines don't work for images"); Hon. Jon O.
Newman, New Lyrics for an Old Melody: The Idea/Expression Dichotomy
in the Computer Age, 17 Cardozo Arts & Ent. L.J. 691, 703 (1999)
("[W]hat we must strive for is a recognition that the differences
among modes of expression oblige us to eschew anything like 'tests'
that can yield answers across all fields."); cf. Franklin Mint
Corp. v. Nat'l Wildlife Art Exch., Inc., 575 F.2d 62, 65 (3d Cir.
1978) ("Isolating the idea from the expression and determining the
extent of copying required for unlawful appropriation necessarily
depend to some degree on whether the subject matter is words or
symbols written on paper, or paint brushed onto canvas.").
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events. Additional factors are relevant when the photographer does
not simply take her subject "as is," but arranges or otherwise
creates the content by, for example, posing her subjects or
suggesting facial expressions. See, e.g., Rogers v. Koons, 960
F.2d 301, 307 (2d Cir. 1992) ("Elements of originality in a
photograph may include posing the subjects, lighting, angle,
selection of film and camera, evoking the desired expression, and
almost any other variant involved."); Mannion, 377 F. Supp. 2d at
450 & n.37 (collecting cases listing "potential components of a
photograph's originality").
Although the comparison is not perfect, the division
between protected and unprotected elements of a photograph could be
likened to the separation drawn by copyright law between protected
expression and unprotected ideas. See Yankee Candle, 259 F.3d at
33 (noting the "key theoretical foundation of copyright law[] that
[i]deas cannot be copyrighted" (internal quotation marks omitted)
(quoting Concrete
Mach., 843 F.2d at 606)). Where the photographer
is uninvolved in creating his subject, that subject matter --
whether a person, a building, a landscape or something else -- is
equivalent to an idea that the law insists be freely available to
everyone. See Feist
Publ'ns, 499 U.S. at 349-50 ("[C]opyright
assures authors the right to their original expression, but
encourages others to build freely upon the ideas and information
conveyed by a work."); Concrete Mach., 843 F.2d at 606 ("An artist
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can claim to own only an original manner of expressing ideas, not
the ideas themselves." (internal quotation marks omitted) (quoting
Cooling Sys. & Flexibles v. Stuart Radiator, 777 F.2d 485, 491 (9th
Cir. 1985)).8 The choices made by the photographer to generate a
particular image depicting that subject matter, however, ordinarily
transform "the idea" of the subject into a protectible expressive
work. See 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright
["Nimmer"] § 2.08[E][1], at 2-129 (2008) (noting that "almost any[]
photograph may claim the necessary originality to support a
copyright merely by virtue of the photographers' personal choice of
8
The merger and scènes à faire doctrines limit the
availability of copyright protection even for expression. The
former "'denies copyright protection when . . . there is only one
way to express a particular idea.'" Soc. of Holy Transfiguration
Monastery, 689 F.3d at 53 (quoting
Coquico, 562 F.3d at 68). The
doctrine of "scènes à faire" "denies copyright protection to
elements of a work that are for all practical purposes
indispensable, or at least customary, in the treatment of a given
subject matter."
Coquico, 562 F.3d at 68; Beal v. Paramount
Pictures Corp.,
20 F.3d 454, 459 (11th Cir. 1994) (describing
scènes à faire as "stock scenes that naturally flow from a common
theme," such as "'foot chases and the morale problems of policemen,
not to mention the familiar figure of the Irish cop'" in police
fiction (quoting Walker v. Time Life Films, Inc.,
784 F.2d 44, 50
(2d Cir. 1986))).
In Coquico, we held that the two doctrines together foreclosed
copyright protection for elements of a tree frog plush toy that are
"ineluctably and inextricably intertwined with the idea of
producing a realistic depiction" of the frog. 562 F.3d at 68; see
also CMM Cable
Rep, 97 F.3d at 1522 n.25 (noting that the
rationales for both doctrines are similar "in that both are
concerned with preventing a monopoly on commonplace ideas," but
differ because "merger applies when the idea and expression are
inseparable while scenes a faire applies when the similarity of
expression results from stock scenes or elements that necessarily
flow from a common idea").
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subject matter, angle of photograph, lighting, and determination of
the precise time when the photograph is to be taken").
Alternatively, subject matter that the photographer did
not create could be viewed as "facts" that, like ideas, are not
entitled to copyright protection. The Supreme Court has observed
that "[t]he most fundamental axiom of copyright law is that '[n]o
author may copyright his ideas or the facts he narrates.'" Feist
Publ'ns, 499 U.S. at 344-45 (quoting Harper & Row, Publishers, Inc.
v. Nation Enters.,
471 U.S. 539, 556 (1985)) (alteration in
original). The exclusion of facts from copyright protection arises
from the constitutional requirement of "originality" -- "[t]he sine
qua non of copyright."
Id. at 345. Facts are "not 'original' in
the constitutional sense" because they "do not owe their origin to
an act of authorship."
Id. at 347 (citing Nimmer § 2.03[E]
(1990)). Because facts are discovered, rather than created, they
are "part of the public domain available to every person."
Id. at
347-48 (internal quotation mark omitted). Compilations of facts,
however, ordinarily are entitled to copyright protection,
id. at
344, "'limited to those aspects of the work -- termed "expression"
-- that display the stamp of the author's originality.'"
Id. at
350 (quoting Harper & Row,
Publishers, 471 U.S. at 547-48). A
photograph that consists of public-domain subject matter may thus
be protected from copying because it involves creative expression,
but with the protection limited to the work's original elements.
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In sum, in reviewing a grant of summary judgment for the
defendant based on the absence of substantial similarity, where
neither the subject matter of the earlier work nor its arrangement
are attributable to the photographer, as is the case here, we first
must look closely to identify the expressive choices in the
plaintiff's work that qualify as original. After performing that
dissection, we must consider whether any reasonable jury focusing
solely on those original elements could find that the defendant's
work is substantially similar to the plaintiff's. Summary judgment
is "'appropriate only when a rational factfinder, correctly
applying the pertinent legal standards, would be compelled to
conclude that no substantial similarity exists between the
copyrighted work and the allegedly infringing work.'" T-Peg, Inc.,
459 F.3d at 112 (quoting
Johnson, 409 F.3d at 18).
III.
It is undisputed both that Harney owns a valid copyright
in the Photo and that Sony copied the Photo. The sole contested
element of Harney's infringement claim is whether the Image "can
fairly be regarded as appropriating the original expression of the
earlier (protected) work" to such an extent that the Image and the
Photo are properly described as "substantially similar." Coquico,
562 F.3d at 67. Sony emphasizes that it copied "only the bare
minimum of the elements needed to conjure up the original" for the
purpose of depicting the Photo's prominent role in Gerhartsreiter's
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story. The company argues that the only similarity between the two
works is "essentially the [unprotectible] idea of a young girl atop
her father's shoulders," with "the other details in the Photo
either . . . significantly altered or omitted entirely." With the
unprotectible elements excluded, Sony asserts, "there is no
substantial similarity in the respective expressions . . ., and
therefore no infringement."
Unsurprisingly, Harney sees a much closer relationship
between the two works. He asserts that the Photo "captivated the
public's imagination" because of "its haunting depiction of the lie
that was Clark Rockefeller's life," and he argues that "[t]he works
are substantially similar because Sony took the expressive heart
from Harney's Photograph." He notes Sony's admission that it
intended to replicate the Photo and points out that Sony copied
"numerous elements" of his image, including "the angle from which
the picture was taken, the pose, the wardrobe, and even the color
and type of Reigh's coat and the paper Rockefeller has clenched to
his chest in his right hand." Harney maintains that the
alterations Sony made to "details around the periphery" of his
image "do not change the core similarity between the works" and,
"most importantly, the alterations made no change to what these
works express about the Rockefeller story." Therefore, he states,
"a reasonable juror could find that the works are substantially
similar."
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The parties thus agree that the two photographs bear a
resemblance. Indeed, Sony sought to create just such an impression
of similarity. The question before us is whether the equivalence
between the works can support a copyright infringement claim.
A. Standards of Review
We review de novo the district court’s identification of
the protectible elements of a copyrighted work. See Soc. of Holy
Transfiguration Monastery, 689 F.3d at 51 ("Our review as to the
carved out originality components of a work is de novo.");
Coquito, 562 F.3d at 68 (same).9 Although the ultimate question of
substantial similarity requires a factual judgment, it may be
resolved on summary judgment "where reasonable minds cannot
differ." Yankee
Candle, 259 F.3d at 37; see also, e.g., Soc. of
Holy Transfiguration
Monastery, 689 F.3d at 54 (affirming grant of
summary judgment for the plaintiff);
Kisch, 657 F. Supp. at 382
9
As described above, we have treated dissection as a legal
determination in which the court identifies which parts of a
copyrighted work constitute original expression. Although we have
observed that "originality can be a question of fact for the jury,"
CMM Cable Rep, 97 F.3d at 1517, the dissection analysis here does
not depend on resolving factual disputes -- for example, whether
particular elements of the Photo were "independent creations"
rather than copied from another source. See Feist
Publ'ns, 499
U.S. at 346 (noting that "originality requires independent creation
plus a modicum of creativity"). The district court therefore
properly performed the dissection as a matter of law, see Soc. of
Holy Transfiguration
Monastery, 689 F.3d at 47 ("Assessing whether
a work is original is a matter of law."), and we accordingly follow
our precedents stating that de novo review applies to "the
originality vel non of the constituent elements of the copyrighted
work," Coquico, 562 F.3d at 68.
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(holding that non-infringement may be decided as a matter of law
"either because the similarity between two works concerns only non-
copyrightable elements of the plaintiff's work, or because no
reasonable jury, properly instructed, could find that the two works
are substantially similar" (emphasis omitted) (quoting Warner Bros.
Inc. v. Am. Broad. Cos., 720 F.2d 231, 240 (2d Cir. 1983))
(internal quotation marks omitted)). The district court's decision
to grant summary judgment is reviewed de novo. TMTV,
Corp., 645
F.3d at 469.
B. The District Court's Ruling
In performing the dissection analysis required by our
precedent, the district court observed that Harney did not
prearrange the subject matter of the Photo:
Harney captured a moment in time of a
father and daughter passing through Beacon
Hill. The Rockefellers were not models.
Harney did not select their clothes, give them
a church program and palm leaf as props, or
ask them to pose. Those aspects of the
Rockefellers' appearance are factual realities
that exist independently of any photo. They
are not Harney's original expression, and they
are not copyrightable elements of his
photograph.
The court acknowledged Harney's "significant creative input" in
combining various elements -- Gerhartsreiter and Reigh in the
foreground, holding the program and palm leaf, and the church in
the background -- to "evok[e] the essence of Beacon Hill on Palm
Sunday." The court also observed that "[t]he lighting in the
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photograph highlights the church and the young daughter and
displays the long shadows of early spring." The court noted,
however, that the Image did not share Harney's expressive elements,
pointing in particular to elimination of the palm leaf and church.
The court thus concluded that the only common element of
the two photographs for which Harney could take credit was "the
position of the individuals relative to the boundaries of the
photo, although in the original Clark Rockefeller's face is closer
to the camera and less of his body is visible." It concluded that
"[t]his limited sharing" did not infringe Harney's copyright. It
explained:
The message conveyed by the Sony Images is the
factual information about the Rockefellers'
appearance. There is nothing suggestive of
Beacon Hill or a religious context. The
positioning of the Rockefellers in the middle
of the frame, visible from mid-chest upward,
is an element of minimal originality and an
insufficient basis, without more, to find
substantial similarity.
C. Dissection
We note at the outset of our discussion that Harney
undisputedly produced an original, expressive work. Indeed, it is
possible to identify multiple ideas creatively expressed through
the Photo's combination of images. The district court noted one:
"the essence of Beacon Hill on Palm Sunday." In addition, the
piggyback pose of the smiling father and child as they exited
church on a bright sunny day -- the Photo's dominant image --
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suggests the idea of close family ties and, in particular, father-
daughter bonding. Over time, as Harney argues, the Photo also came
to represent a specific father-daughter story and the deception at
its foundation.
These ideas are expressed with artistic flair: the
framing of Gerhartsreiter and Reigh against the backdrop of the
church reflects a distinctive aesthetic sensibility, and Harney's
artistry also is reflected in the shadows and vibrant colors in the
Photo -- perhaps the result of his use of an electronic flash and
professional editing software. Positioning the pair in the middle
of the frame as they look straight into the camera, and at a close
distance, also involves aesthetic judgments that contribute to the
impact of the photograph.
Inescapably, however, Harney's creation consists
primarily of subject matter -- "facts" -- that he had no role in
creating, including the central element of the Photo: the daughter
riding piggyback on her father's shoulders. Harney nonetheless
asserts that there are "no unprotectable elements that ordinary
observers should exclude from their analysis" of substantial
similarity. He argues that, rather than separating out the
"independently existing facts" contained in the Photo, the district
court should have focused on the photograph's unique expression of
the Rockefeller saga. He claims that the court's dissection
analysis "failed to cut fine[ly] enough, throwing out the work's
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expressive content with the bathwater of 'independently existing
facts.'" Under a "proper dissection," he argues, "the fact finder
should be allowed to consider the similarities in the pose of the
Rockefellers because Sony copied the pose for its expressiveness,
not [its] factual value." Simply stated, Harney's view appears to
be that ordinary dissection analysis is inapposite because Sony
copied the Photo's expression of "the Rockefeller Story" and not
simply the factual content of his photograph.
For multiple reasons, we are unpersuaded that this is an
appropriate way to evaluate Harney's infringement claim. First,
Harney's argument leaves no room for the dissection analysis that
our precedent prescribes. The premise of the dissection analysis
is that protectible expression is sometimes constructed from
components that are free for the taking. The Supreme Court has
noted that "facts themselves do not become original through
association," Feist Publ'ns, 499 U.S. at 349, confirming the need
to identify the unprotected elements in a protected work so that
only unlawful copying is penalized. Although the Supreme Court
made its observation in a very different context -- determining the
copyright protection available for telephone directory white pages,
id. at 342 -- the same principle is inherent in the proposition,
accepted as applicable to photography, that artists may not
copyright the "reality of [their] subject matter,"
Leigh, 212 F.3d
at 1214 (internal quotation marks omitted) (quoting Franklin Mint
-22-
Corp., 575 F.2d at 65) (alteration in original). We therefore
reject Harney's assertion that we should not catalog the
protectible and unprotectible elements of the Photo.
A second problem with Harney's argument is that he seeks
to enlarge the scope of his copyright protection by attributing to
the Photo an idea -- Gerhartsreiter's deception -- that is not
discernible from the image itself and did not originate with him.
The idea of the deception, of course, is not itself protectible.
The Photo of the smiling pair may be understood as an expression of
that idea only when we take into account the subsequent events that
revealed the falsity underlying the specific father-daughter
relationship that Harney randomly documented. Indeed, expanding a
photograph's copyright protection based on later events appears to
be what Harney has in mind when he asserts that "we cannot penalize
authors who are fortunate enough to have once obscure works
suddenly become important due to their relevance to changing
circumstances." Harney warns that rejecting copyright protection
for photographs whose significance the photographer "could not have
foreseen . . . when he snapped the shutter [would cause] every
stock photograph ever taken [to] enter[] the public domain."
We have sympathy for Harney's concern about the
protection afforded to spontaneous photography, which by its nature
consists primarily of "[i]ndependently existing facts." Indeed,
assuring copyright protection for fleeting images of newsworthy
-23-
persons or events encourages freelance photographers to continue
creating new images, advancing the goal of the Constitution's
copyright clause "to promote the Progress of . . . useful Arts,"
U.S. Const., art. I, § 8, cl.8. See Fitzgerald v. CBS Broad.,
Inc., 491 F. Supp. 2d 177, 189 (D. Mass. 2007) ("It is hard to
imagine that freelance photojournalists would continue to seek out
and capture difficult to achieve pictures if they could not expect
to collect any licensing fees."). We disagree, however, that
application of the ordinary dissection analysis will deny copyright
protection for such works. As described above, Harney created an
original protectible image. His photograph may not be reproduced
in its entirety without his permission unless the copier is able to
prove fair use. Nor may the original components noted above,
including the particular juxtaposition of the father-daughter and
the church, be freely copied if an ordinary observer would view the
resulting image as "substantially similar" to his original.
Certainly, the value of an image can change over time
along with observers' attitudes toward its subject matter.
Photographs of celebrities as children or unusual images of notable
buildings later demolished may become of wide interest decades
after they were taken. Likewise, the actual identity of the father
and child in Harney's photograph became important only after
Reigh's abduction. While Harney should benefit from the added
interest in his photograph, as he did through the payments from
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Vanity Fair and other publications, such newfound interest does not
change the originality vel non of the individual components of the
work. It does not, in other words, change Harney's creative
contributions to the Photo. Moreover, recalibrating a work's
originality based on a new idea of what it expresses would
undermine the distinction that remains between ideas and expression
in visual works. In short, we do not see how subsequent events can
fortuitously transform unoriginal elements of a visual work into
protectible subject matter.10
For similar reasons, we also reject the argument that
failing to classify the piggyback pose of Clark and Reigh as a
protectible aspect of the Photo is an instance of "los[ing] sight
of the forest for the trees." Coquico, 562 F.3d at 68. Harney
describes this central image of the photograph as its "expressive
heart." Yet, as we have explained, any expression of the
Gerhartsreiter story seen in the Photo is attributable not to the
photograph itself but to unrelated news events that associated the
Photo with the new idea of deception. That new association did
10
We note that originality in timing has been recognized as
one aspect of news photography worthy of protection. See Mannion,
377 F. Supp. 2d at 452-53 (stating that "'[a] person may create a
worthwhile photograph by being at the right place at the right
time'" (quoting 1 Hon. Sir Hugh Laddie, et al., The Modern Law of
Copyright and Designs (3d ed. Butterworths 2000) § 4.57, at 229));
id. at 453 (citing as an example of "originality in timing" the
photograph by Alfred Eisenstaedt "of a sailor kissing a young woman
on VJ Day in Times Square"). This case does not involve a unique
or unusual moment fortuitously captured by a photographer.
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not, however, change the character of the Photo's unprotectible
factual components.
Hence, we agree with the district court's application of
the dissection analysis and its recitation of the unprotected and
protected elements of the Photo. Harney may not claim exclusive
rights to the piggyback pose of Gerhartsreiter and Reigh, their
clothing, the items they carried, or the Church of the Advent shown
with bright blue sky behind it. However, the framing of
Gerhartsreiter and Reigh against the background of the church and
blue sky, with each holding a symbol of Palm Sunday, creates a
distinctive, original image. Harney's creativity is further
reflected in the tones of the Photo: the bright colors alongside
the prominent shadows. Finally, the placement of the father and
daughter in the center of the frame, with only parts of their
bodies depicted, is composition both notable and protectible.
We thus turn to consider whether the Image unlawfully
appropriated an impermissible portion of the plaintiff's "original
expressive elements," Coquico, 562 F.3d at 68.
D. Substantial Similarity
Harney's difficulty in alleging infringement is that
almost none of the protectible aspects of the Photo are replicated
in the Image. Without the Palm Sunday symbols, and without the
church in the background -- or any identifiable location -- the
Sony photograph does not recreate the original combination of
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father-daughter, Beacon Hill and Palm Sunday. Although the two
photographs appear similar upon a first glance, that impression of
similarity is due largely to the piggyback pose that was not
Harney's creation and is arguably so common that it would not be
protected even if Harney had placed Gerhartsreiter and Reigh in
that position. See Mannion, 377 F. Supp. 2d at 462 (suggesting
that the subject's pose was "arguably in the public domain"); cf.
Rogers, 960 F.2d at 304 (noting that "[s]ubstantial creative effort
went into both the composition and production" of a photograph
where the photographer, inter alia, selected the light, the
location, and the arrangement of the couple and their eight puppies
on a bench). Significantly, the two photographs are notably
different in lighting and coloring, giving them aesthetically
dissimilar impacts. Harney's features vivid colors and distinct
shadows, while the Image is washed out and is far less attractive
or evocative.11
The Image does copy the placement of Gerhartsreiter and
Reigh in the frame -- which was Harney's choice and thus an element
of original composition. We agree with the district court,
however, that locating the subject of a photograph in the middle of
a frame is "an element of minimal originality and an insufficient
basis, without more, to find substantial similarity."
11
In his affidavit, Harney stated that he "used fill-in flash
to separate the subjects from the background and to reduce the
shadows on their faces."
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Two other cases addressing the alleged infringement of
distinctive photographs are instructive by comparison. The
plaintiff's photograph in Leigh was of a statue known as the "Bird
Girl" that appears on the cover of the book Midnight in the Garden
of Good and Evil. 212 F.3d at 1212. Defendant Warner Brothers
created still photos of a replica of the statue for use in
promoting a movie based on the book.
Id. at 1212-13. In
concluding that the issue of substantial similarity was a jury
question, the Eleventh Circuit noted that the plaintiff's and
defendant's photographs shared a number of expressive elements:
distinctive lighting and angle, hanging Spanish moss bordering
their tops, the statue close to center of the frame, and
monochromatic shading.
Id. at 1216. The court stated that
"[t]hese expressive elements all make the pictures more effective,"
observing that "[t]he location of the statue and the lighting in
the pictures together draw the viewer's attention."
Id. Here, by
contrast, the important differences in lighting and backdrop render
the photos aesthetically more dissimilar than similar,
notwithstanding the common positioning of the father and daughter
within the frame.
The defendant's image in Mannion similarly incorporated
multiple distinctive elements of the plaintiff's photograph. See
377 F. Supp. 2d at 447-48. Jonathan Mannion created a three-
quarter-length portrait of basketball star Kevin Garnett, with a
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background of clouds. The defendants' photo depicts the torso of
a muscular black man, not Garnett, also shot against a cloudy
backdrop. In each photo, the subject is wearing a white t-shirt
and white athletic pants, and large amounts of jewelry. The
lighting, pose and angle are similar. The court noted that Mannion
had "orchestrated the scene" of his photograph by, inter alia,
telling Garnett how to dress and pose. Id. at 455. It further
observed that the defendants had "recreated much of the subject
that Mannion had created and then, through imitation of angle and
lighting, rendered it in a similar way."
Id. at 463. The photos,
however, also had some differences: one was black and white, and
the other was color; the jewelry was not identical; and one t-shirt
appeared more tightly fitted.
Given the similarities and differences, the court in Mannion
concluded that a reasonable jury "could find substantial similarity
either present or absent." Id. Although Harney argues that here,
too, there are similarities and differences that warrant a jury
judgment, this case is notably distinguishable from Mannion.
Harney happened upon Gehartsreiter and Reigh. Unlike Mannion, he
did not "create" his subject by "orchestrat[ing] the scene."
We recognize that Sony's Image and Harney's Photo are
similar, as Sony intended. But as we have explained, the question
of infringement is governed not merely by whether the copy mimics
the plaintiff's work, but also, more importantly, by whether the
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similarity arises from protected elements of the original. See,
e.g., Johnson, 409 F.3d at 19 (noting that "an overall impression
of similarity may not be enough" "[i]f such an impression flows
from similarities as to elements that are not themselves
copyrightable"); see also Warner
Bros., 720 F.2d at 241 (noting
that "'a defendant may legitimately avoid infringement by
intentionally making sufficient changes in a work which would
otherwise be regarded as substantially similar to that of the
plaintiff's'" (quoting 3 Nimmer § 13.03[B] at 13-38.1 to -38.2
(1983))).
Sony copied little of Harney's original work -- only the
placement of Gerhartsreiter and Reigh in the photograph -- and no
jury could conclude that the similarity resulting solely from that
copying is substantial. Moreover, given the differences in
background, lighting and religious detail, a reasonable jury
comparing the entirety of the two works could not conclude that the
ordinary observer would "regard their aesthetic appeal as the
same." Peter Pan Fabrics, 274 F.2d at 489.
IV.
We can understand the frustration of photographers such as
Harney whose works are afforded a limited copyright because they
are comprised substantially of unprotected content. As the Supreme
Court has emphasized, however, "this is not 'some unforeseen
byproduct of a statutory scheme.'" Feist Publ'ns, 499 U.S. at 349
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(quoting Harper & Row, Publishers, 471 U.S. at 589 (Brennan, J.,
dissenting)).
It is, rather, "the essence of copyright," and a
constitutional requirement. The primary objective of
copyright is not to reward the labor of authors, but
"[t]o promote the Progress of Science and useful Arts."
Art. I, § 8, cl. 8. To this end, copyright assures
authors the right to their original expression, but
encourages others to build freely upon the ideas and
information conveyed by a work.
Id. at at 349-50 (alteration in original) (citations omitted).
For the reasons we have explained, no jury could properly
conclude that Sony's adaptation of the Photo infringed Harney's
copyright in his work. Accordingly, we affirm the judgment of the
district court.
So ordered.
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APPENDIX
Harney Photo Sony Image
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