Bill Diodato Photography, LLC v. Kate Spade, LLC
2005 WL 2351325, 388 F. Supp. 2d 382, 2005 U.S. Dist. LEXIS 21360 (2005)
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Rule of Law:
Copyright protection for a photograph extends only to its original, expressive elements, not to the underlying idea, concept, or elements that are standard or common for a given subject matter (scenes à faire).
Facts:
- In late 2001, photographer Bill Diodato created a photograph depicting the bottom of a bathroom stall, showing a woman's feet in stylish shoes, with underwear around her ankles and a handbag on the floor.
- The photograph was not commercially published but was included in the portfolio for his company, Bill Diodato Photography (BDP), beginning in late 2002.
- In January 2003, Kate Spade LLC requested BDP's portfolio, which was sent to them by messenger and returned approximately one week later.
- BDP's portfolio was sent to Kate Spade for a second time in February 2003 and returned later that month.
- In March 2003, Kate Spade hired photographer Jessica Craig Martin for its upcoming advertising campaign.
- In June 2003, Craig Martin took a photograph for Kate Spade that also depicted a woman's feet in stylish shoes and a handbag on the floor of a bathroom, as viewed from outside the stall.
- The concept of using an image of a woman's feet in a bathroom stall to showcase fashion accessories had been used previously in popular culture, including in other photographs and movies.
- In November 2003, Kate Spade used Craig Martin's photograph in its advertising campaign.
Procedural Posture:
- Bill Diodato Photography, LLC (BDP) filed a lawsuit against Kate Spade LLC in the U.S. District Court for the Southern District of New York.
- The complaint alleged copyright infringement under the Copyright Act and unfair competition under the Lanham Act.
- Following a period of discovery, defendant Kate Spade moved for summary judgment to dismiss all claims.
- Plaintiff BDP filed a cross-motion requesting additional discovery under Federal Rule of Civil Procedure 56(f).
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Issue:
Does a photograph infringe on another's copyright when the similarities between the two works consist of unprotectable elements, such as a common idea or elements that naturally flow from that idea (scenes à faire)?
Opinions:
Majority - Chin, J.
No. A photograph does not infringe another's copyright if the substantial similarities between the works relate only to non-protectible elements. To establish copyright infringement, a plaintiff must prove both actual copying and improper appropriation. While there may be a triable issue of fact as to whether Kate Spade actually copied BDP's photograph (based on access and probative similarities), the claim fails on the improper appropriation prong. The court must filter out unprotectable elements before comparing the works. The general idea of depicting a woman's feet in a bathroom stall to highlight fashion accessories is not protectible. Furthermore, elements that are standard or indispensable to that scene—such as the bathroom setting, the toilet, and the floor—are unprotectable under the doctrine of scenes à faire. Even the specific pose, with the model's toes pointed inward, is a common and unoriginal element in popular culture for such a scene. After filtering out these unprotectable elements, the protectible aspects of Diodato's photograph, such as his specific lighting, use of negative space, and overall 'airy and provocative feel,' are distinct from the Kate Spade photograph's tightly cropped, high-contrast, 'paparazzi-style' aesthetic. Because any similarities relate to unprotectible ideas and scenes à faire, and the protectible expressions of the two works are not substantially similar, there is no actionable copyright infringement.
Analysis:
This decision reinforces the fundamental copyright principle of the idea/expression dichotomy as applied to photography. It clarifies that a photographer cannot monopolize a subject or concept, only their particular, original expression of it. The court's application of the scenes à faire doctrine to a visual work provides a strong precedent for defendants in cases where a photograph's subject matter is common or popular. The ruling makes it more difficult for creators to win infringement claims based on a shared theme, requiring them to demonstrate that the defendant copied specific, unique expressive choices like lighting, angle, and composition, rather than just the general scene or idea.
