Rogers v. Koons

Citations: 751 F. Supp. 474; 1990 WL 223134Docket: 89 Civ. 6707 (CSH)

Court: District Court, S.D. New York; December 13, 1990; Federal District Court

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Art Rogers, a professional photographer, filed a lawsuit against sculptor Jeff Koons and Sonnabend Gallery, alleging copyright infringement, violations of the Lanham Act, and unfair competition under New York and California law. Rogers sought summary judgment on his copyright infringement claim, while the defendants moved for dismissal of the complaint. 

The facts indicate that in 1980, Rogers was commissioned to photograph a litter of German Shepherd puppies, resulting in the image titled "Puppies," which was later published in a local newspaper and exhibited at the San Francisco Museum of Modern Art. Rogers licensed the photograph to Museum Graphics in 1984 for notecards, and it has been sold to private collectors. He also planned to use "Puppies" in a series of hand-tinted prints.

Defendant Jeff Koons, known for his sculptures, began creating works for his "Banality Show" in 1986, which opened in 1988 at Sonnabend Gallery. The exhibition included 20 sculptures, addressing themes of conspicuous consumption and self-indulgence. Koons produced multiple editions of each sculpture and obtained at least two notecards featuring Rogers' "Puppies" photograph, which were marked with Rogers' copyright, although the photograph itself was not registered at the time.

Koons utilized a photograph titled "Puppies" as a reference for creating a sculpture for the Banality Show, directing Demetz Arts Studio in Italy to replicate the image closely. He removed the copyright notice from the notecard associated with the photograph and provided specific instructions to ensure the sculpture mirrored the original photograph's details, including color and shading. The resulting piece, named "String of Puppies," measured 42 inches by 62 inches by 37 inches and was later sold in an edition of three for $367,000. The sales included two sculptures at $125,000 each and a third at $117,000, while Koons retained a fourth sculpture. Rogers, the original photographer, learned of Koons' use through a mutual acquaintance and subsequently registered his photograph with the U.S. Copyright Office, initiating a copyright infringement lawsuit against Koons and the Sonnabend Gallery. In his defense, Koons acknowledged using Rogers' photograph as source material but argued that his actions did not constitute copyright infringement, claiming that Rogers' copyright only protected the photograph itself and not the underlying ideas or facts. He also invoked the fair use doctrine, although he failed to clarify which non-copyrightable elements he believed he utilized from the photograph.

Mr. and Mrs. Scanlon's German Shepherd had a litter of eight puppies, which they found appealing and requested Rogers to photograph. Rogers' arrangement and artistic execution of the photographs constitute a protectible original expression, as confirmed by a Copyright Office certificate. Koons' sculpture, which reproduces Rogers' photograph, does not exempt him from copyright infringement findings. The Copyright Act grants copyright owners exclusive rights, including the creation of derivative works based on their original works. Koons' sculpture is classified as a derivative work, and Rogers, as the copyright owner, retains exclusive rights to authorize such works.

Case law supports that photographers' originality in their work is fully protected under copyright. Koons' argument to limit protection to the photograph itself contradicts established legal precedents, which affirm that a change in medium does not avoid infringement. Historical cases, such as Falk v. T.P. Howell Co. and King Features Syndicate v. Fleischer, illustrate that copying an original work in a different medium still constitutes infringement, focusing on the essence of the work rather than mere alterations in size or material. The interpretation of copyright law adheres to the principle that it protects against unauthorized copying across various media, ensuring the rights of the original creator are upheld.

A work copied from another medium still qualifies as a "copy" under copyright law. Koons fails to support his claim that a sculpture cannot infringe a copyrighted photograph, a position that contradicts the Copyright Act and established case law. He contends that substantial similarity must be demonstrated for infringement, arguing that differences in size, texture, and color negate this similarity. However, Rogers asserts that direct copying eliminates the need for substantial similarity analysis, citing Illinois Bell Telephone v. Haines Co. Inc. and Rural Telephone Service Company, Inc. v. Feist Publications, Inc. To prove copying, direct evidence suffices; substantial similarity is only necessary when direct evidence is lacking. The substantial similarity test requires that an average observer recognizes the copy as appropriated from the original work. In this case, it is evident that "String of Puppies" closely resembles Rogers' photograph "Puppies," supporting a finding of copyright infringement unless Koons can claim "fair use." 

Koons argues that even if his usage of Rogers' photograph is unauthorized, it qualifies as fair use, a doctrine established by the 1976 Copyright Act and interpreted through various Supreme Court cases. Fair use allows for flexibility in copyright application to encourage creativity, as described in the cases of Stewart v. Abend, Harper & Row Publishers, Inc. v. Nation Enterprises, and Sony Corp. of America v. Universal Studios, Inc. The fair use doctrine is fact-specific; while Congress did not define it exhaustively, it provided examples including criticism, comment, news reporting, teaching, scholarship, and research.

Four non-exclusive factors guide courts in assessing whether unauthorized use constitutes infringement: 1) the purpose and character of the use, distinguishing between commercial and nonprofit educational uses; 2) the nature of the copyrighted work; 3) the amount and substantiality of the portion used relative to the entire work; and 4) the effect of the use on the potential market for or value of the copyrighted work. 

In this case, Koons' sculpture does not fit statutory examples of fair use. Although there was a suggestion that the sculpture aimed to satirically comment on contemporary values, it does not specifically critique or comment on the Rogers photograph but rather appropriates it. Regarding the first factor, Koons' use is clearly commercial, as he actively markets his sculptures and sells them for significant sums. This contrasts with non-commercial uses, such as those by religious institutions for spiritual inspiration.

The second factor, based on Supreme Court precedent, indicates that fair use is less likely with creative works, which applies to Rogers' photograph. The third factor is unfavorable for Koons, as he used the entire photograph. The fourth factor, considered the most crucial, focuses on the impact of Koons' use on the market for Rogers' work. Koons argues his sculpture does not compete directly with the photograph, but precedent shows that even indirect effects can be detrimental to the original creator's rights. Thus, Koons’ commercial use adversely affects Rogers’ potential market and adaptation rights.

The Supreme Court affirmed the Court of Appeals' finding that the re-release of the film negatively affected the market for new versions of the story. Expert affidavits indicated that photographers could earn additional income through "art rendering" rights, which are based on photographs but created in different mediums. Despite Rogers' claims of contemplating new uses for his photograph, the case hinges on the existence of a recognized market for new uses that unauthorized uses threaten. The Court concluded that Koons' use of the photograph did not qualify as fair use, leading to a recommendation for injunctive relief against both defendants.

Rogers seeks summary judgment for $367,000 in damages, representing "infringing profits" under 17 U.S.C. § 504(b). Under this statute, a copyright owner can recover actual damages and any profits from infringement. The burden of proof for deductible expenses lies with the infringer; however, Koons did not provide sufficient detail in his summary judgment papers. While he referenced evidence related to expenses, Rogers disputes their deductibility, indicating factual issues remain. Thus, the Court allows Koons the opportunity to present proof of deductible expenses at trial.

Rogers also claims damages against Sonnabend Gallery, Koons' principal gallery that displayed the infringing works. The basis for this claim is unclear, but it appears to rely on the principle of contributory infringement, as established in Gershwin Publishing Corp. v. Columbia Artists Management, Inc., which holds that one who knowingly contributes to infringing activity may be liable.

Sonnabend's advertising and display of the infringing sculptures contributed to Koons' infringement; however, liability requires knowledge of the infringing activity, which was not evidenced in the record regarding Sonnabend's responsible personnel. Consequently, the plaintiff's motion for summary judgment for monetary damages against both defendants is denied. The defendants' cross-motion for summary judgment to dismiss the complaint is also denied for reasons outlined earlier. The plaintiff's motion for summary judgment is granted in part and denied in part, while the defendants' cross-motion is denied. Plaintiff’s counsel is instructed to prepare an Order and Judgment within 30 days, with a further status conference to follow. The case highlights the potential for both sculptures and photographs to infringe each other's copyrights.