The Tale of the Art World's Most Famous Banana Continues: Citing Lack of Substantial Similarity, Court Rejects Infringement Claims Against Cattelan
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  • The Tale of the Art World's Most Famous Banana Continues:
    Citing Lack of Substantial Similarity, Court Rejects Infringement Claims Against Cattelan
    Artist Maurizio Cattelan arguably created the most talked-about work at Art Basel Miami in 2019.  But in 2020, fellow visual and conceptual artist Joe Morford sued Cattelan for copyright infringement, alleging that Cattelan’s work, Comedian—which consisted of a banana duct-taped to a wall—unfairly copies one of Morford’s creations, a piece titled Banana and Orange.  This summer, a Florida federal court rejected Morford’s claims, holding on summary judgment that the two works are not “substantially similar” enough to support an infringement claim. 
    To prevail on his claims, Morford had to show that Cattelan actually had access to Morford’s copyrighted work, and also that there is "a substantial similarity" between the infringing work and the protectable, original elements of his own copyrighted work.  Morford ran into trouble on both fronts, and federal judge Robert Scola, Jr. granted summary judgment for Cattelan.

    Analyzing the question of access, the court held that it was not enough for Morford to show Cattelan might theoretically have come across online images of his earlier work; rather, he must have had a “reasonable opportunity to view” it.  The court clarified that the mere presence of pictures of Morford’s Banana and Orange on the internet was insufficient to demonstrate access, especially where there was no evidence that it had achieved any meaningful level of popularity.  Further, Cattelan presented evidence that he created his work independently; he offered his own and a studio assistant’s recollections of his process and the circumstances under which he created Comedian.
    As to the works’ substantial similarity, the court held that, once it identified which parts of Banana and Orange were protectible, and compared those parts to Comedian, it was “clear that there is no dispute of material fact that Comedian is too dissimilar to Banana and
    Orange” to be actionable.  The court emphasized that copyright only protects the expression of ideas, not the ideas themselves, and thus “Morford cannot claim a copyright in the idea of affixing a banana to a vertical plane using duct tape.”  It also noted that using a single strip of duct tape perpendicular to the banana was “the obvious choice” and not protectible.  The other protectible elements of Morford’s work—such as his work’s use of background and borders (while Cattelan’s had none), his use of two plastic fruits (compared to Cattelan’s single real banana), and their placement and angle—were not, overall, highly similar to Cattelan’s.
    This case highlights the challenges that courts face in separating an idea (which is not protectible by copyright) from a particular expression of that idea (which is protectible).  We have written before about that idea-expression dichotomy as an ongoing theme in copyright law (see here and here for examples).  The court’s discussion of access is also a useful reminder that, in today’s overwhelmingly online media environment, a copyright plaintiff will need to put forth something more than a showing that their work appears somewhere in the vastness of the internet. 
    Cattelan’s victory here also presents an interesting juxtaposition with the recent Supreme Court decision in Andy Warhol Foundation for the Visual Arts v. Goldsmith.  Both cases involve one artist accused of “ripping off” another artist’s work.  But while the fair use defense has been a hot topic in such cases in recent years, the Cattelan case did not implicate fair use at all.  Rather, Morford’s claims failed for entirely different reasons: lack of substantial similarity and lack of evidence of access.  In contrast, in the Warhol case, access was not disputed; Warhol admittedly had accessed Goldsmith’s work.  And substantial similarity was at issue early in the Warhol dispute, when the case was working its way through the lower courts; as we explained here, the parties in Warhol had briefed the question of substantial similarity, but the district court declined to rule on it (instead ruling solely on fair use), while on appeal, the Second Circuit concluded that the two works were substantially similar.  By the time the case reached the Supreme Court, the parties had agreed to narrow the scope of the issues in the case significantly, and the Supreme Court granted certiorari to consider only one statutory factor within the larger fair use analysis; thus, the Supreme Court never addressed the question of whether the Warhol and Goldsmith works at issue there were substantially similar.  Indeed, at least one legal scholar has argued that perhaps the Warhol Foundation had a better argument for lack of substantial similarity. 
    Taken together, the two cases illustrate the way a copyright claim may hit a stumbling block at multiple analytical steps; and copyright infringement litigants and their counsel may need to take a careful look at several thorny legal questions to decide whether a copyright claim or defense is worth litigating to its conclusion, given the unique facts of a dispute.  This is particularly true because courts are often reluctant to make a decisive ruling on these difficult issues in the early stages of a case, and instead prefer to wait until after discovery in order to consider a full factual record; that means that many parties to copyright disputes will have to bear the expense of discovery before a court is willing to opine on the merits of the claims.  In Cattelan’s case, for example, Morford’s claims had already survived a motion to dismiss, but failed at the summary judgment phase of the case.  Substantial similarity, like fair use, can be a complex question that does not lend itself to bright-line rules, and courts continue to grapple with how to give future litigants useful guidance. 
    Note: This blog post was co-authored by Jacqueline Jakimowicz and Kate Lucas.  Jacquie was a legal intern at Grossman LLP this summer and is now entering her 3L year at the University of Miami Law School.