LaChapelle v. Fenty

• Decision Date: 20 July 2011
• Docket Number: No. 11 Civ. 945(SAS).,11 Civ. 945(SAS).
• Citation: 812 F.Supp.2d 434,101 U.S.P.Q.2d 1283
• Parties: David LaCHAPELLE, Plaintiff, v. Robyn Rihanna FENTY p/k/a Rihanna, Island Def Jam Music Group, a division of UMG Recordings, Inc., Melina Matsoukas, and Black Dog Films, Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

101 U.S.P.Q.2d 1283

812 F.Supp.2d 434

David LaCHAPELLE, Plaintiff,

v.Robyn Rihanna FENTY p/k/a Rihanna, Island Def Jam Music Group, a division of UMG Recordings, Inc., Melina Matsoukas, and Black Dog Films, Inc., Defendants.

No. 11 Civ. 945(SAS).

United States District Court, S.D. New York.

July 20, 2011.

Debra Anne Mayer, Esq., Shatzkin & Mayer, P.C., New York, NY, for David LaChapelle.

Brad David Rose, Esq., Tom J. Ferber, Esq., Jacob Boyd Radcliff, Esq., Pryor Cashman LLP, New York, NY, for Robyn Rihanna Fenty.

Amanda Marie Leith, Esq., Robert Penchina, Esq., Levine, Sullivan, Koch & Schulz, LLP, New York, NY, for Island Def Jam Music Group and Melina Matsoukas.Thomas Anthony Catalano, Esq., Lester, Schwab, Katz and Dwyer LLP, New York, NY, for Black Dog Films, Inc.

OPINION AND ORDER

SHIRA A. SCHEINDLIN, District Judge.I. INTRODUCTION

David LaChapelle brings this action against Robyn Rihanna Fenty (“Rihanna”), Island Def Jam Music Group (“Def Jam”), Melina Matsoukas, and Black Dog Films, Inc. (“Black Dog”), for copyright and trade dress infringement under federal law, and unfair competition and unjust enrichment under New York common law, relating to defendants' music video “S & M” (“the Video”) created for Rihanna's song of the same name. LaChapelle alleges that the defendants unlawfully used protected expressions from eight of his photographs (“the Photographs”) in the Video. In response, defendants now move to dismiss the complaint in its entirety. For the reasons set forth below, defendants' motion is granted in part, and denied in part.

II. BACKGROUND ¹

LaChapelle is an “artist, photographer, and director,” ² with a “world-wide reputation for his unique body of work in fashion and editorial photography, defined by its saturating, vibrant colors and theatrical, often surreal composition.” ³ He has photographed “top stars of music, sports, fashion and film.” ⁴ Although LaChapelle is known primarily for his photography, which is widely featured in museum exhibits and major publications, his career has recently expanded to include direction of live theatrical events, documentary films, advertising campaigns, and music videos. ⁵ He charges up to one million dollars to “direct/produce” a music video.⁶

Rihanna is a musical performing artist whose song “S & M” (“the Song”) was released on January 25, 2011, as the fourth single from her latest album “Loud.” ⁷ On February 1, 2011, Def Jam released the Video, a music video for the Song, which was produced by Black Dog and directed by Matsoukas. ⁸ Def Jam owns the copyright in the Video.⁹

Defendants were allegedly aware of plaintiff's work.¹⁰ For example, plaintiff filmed Rihanna in a day-long shoot in July 2007 for an MTV advertisement, and photographed Mariah Carey for Def Jam in 2010.¹¹ In fact, Matsoukas and other prospective directors were asked by Rihanna or persons acting on her behalf to make a “LaChapelle-esque music video,” and the storyboards for the Video consisted of or contained prints of the Photographs and other LaChapelle works.¹² The gravamen of the Complaint alleges defendants unlawfully used protected elements of LaChapelle's work in the Video, including but not limited to the Photographs upon which the Complaint primarily relies.¹³

III. LEGAL STANDARD

In deciding a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6), the court evaluates the sufficiency of the complaint under the “two-pronged approach” suggested by the Supreme Court in Ashcroft v. Iqbal. ¹⁴ First, a court “ ‘can choose to begin by identifying pleadings that, because they are no more than conclusions, are not entitled to the assumption of truth.’ ” ¹⁵ “Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice” to withstand a motion to dismiss.¹⁶ Second, “[w]hen there are well-pleaded factual allegations, a court should assume their veracity and then determine whether they plausibly give rise to an entitlement for relief.” ¹⁷ To survive a Rule 12(b)(6) motion to dismiss, the allegations in the complaint must meet a standard of “plausibility.” ¹⁸ A claim is facially plausible “when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” ¹⁹ Plausibility “is not akin to a probability requirement;” rather, plausibility requires “more than a sheer possibility that a defendant has acted unlawfully.” ²⁰

“In considering a motion to dismiss for failure to state a claim pursuant to Rule 12(b)(6), a district court may consider the facts alleged in the complaint, documents attached to the complaint as exhibits, and documents incorporated by reference in the complaint.” ²¹ However, the court may also consider a document that is not incorporated by reference, “where the complaint ‘relies heavily upon its terms and effect,’ thereby rendering the document ‘integral’ to the complaint.” ²²

IV. APPLICABLE LAWA. Copyright Infringement

To prove infringement under the Copyright Act,²³ “ ‘a plaintiff with a valid copyright must demonstrate that: (1) the defendant has actually copied the plaintiff's work; and (2) the copying is illegal because a substantial similarity exists between the defendant's work and the protectible elements of plaintiff's.’ ” ²⁴

1. Actual Copying

The first element—actual copying—may be established by direct or indirect evidence.²⁵ In the absence of direct evidence, “a plaintiff may establish copying circumstantially by demonstrating that the person who composed the defendant's work had access to the copyrighted material, and that there are similarities between the two works that are probative of copying.” ²⁶

2. Substantial Similarity to Protectible Elements

“[C]opyright protection may extend only to those components of a work that are original to the author.” ²⁷ “Original, as the term is used in copyright, means only that the work was independently created by the author ..., and that it possesses at least some minimal degree of creativity.” ²⁸ Of course, it is axiomatic that copyright protection only extends to the particular expression of an idea—not the idea itself.²⁹ Thus, under the doctrine of scenes a faire, “elements of an image that flow naturally and necessarily from the choice of a given concept cannot be claimed as original.” ³⁰

A photograph may be original in the rendition of a subject. Rendition concerns not “ what is depicted, but rather how it is depicted.” ³¹ Originality in rendition may reside in the photographer's selection of lighting, shade, lens, angle, depth of field, composition, and other choices, such as manipulation of color balance, saturation, or contrast, that have an aesthetic effect on the final work.³²

A photograph may also be original in the creation of its subject, when a photographer orchestrates the situation that is photographed, rather than simply photographing a ready-made scene or thing.³³ Thus, “if a photographer arranges or otherwise creates the object that his camera captures, he may have the right to prevent others from producing works that depict that subject.” ³⁴

“ ‘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.’ ” ³⁵ “In applying the so-called ‘ordinary observer test,’ we ask whether ‘an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.’ ” ³⁶ However, “in looking at ... two works of art to determine whether they are substantially similar, focus must be on the similarity of the expression of an idea or fact, not on the similarity of the facts, ideas or concepts themselves.” ³⁷

“[W]hen faced with works ‘that have both protectible and unprotectible elements,’ ” the usual “ordinary observer” test becomes “more discerning,” ³⁸ and the Court “must attempt to extract the unprotectible elements from ... consideration and ask whether the protectible elements, standing alone, are substantially similar.” ³⁹ “No matter which test we apply, however, we have disavowed any notion that ‘we are required to dissect [the works] into their separate components, and compare only those elements which are in themselves copyrightable.’ ” ⁴⁰ Instead, the court is principally guided “by comparing the contested design's ‘total concept and overall feel’ with that of the allegedly infringed work.” ⁴¹ “Accordingly, the Second Circuit has recognized that ‘the defendant may infringe on the plaintiff's work not only through literal copying of a portion of it, but also by parroting properties that are apparent only when numerous aesthetic decisions embodied in the plaintiff's work ... are considered in relation to one another.’ ” ⁴² In fact, substantial similarity may be found even where the protected work and the accused work exist in entirely different media.⁴³ Ultimately, the inquiry 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.” ⁴⁴

3. Fair Use Defense

“[T]he fair use of a copyrighted work ... for purposes such as criticism, comment, news reporting, teaching ... scholarship, or research, is not an infringement of copyright.” ⁴⁵ Section 107 of the Copyright Act sets forth the factors that a Court should consider in assessing the fair use defense:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

Fair use is an affirmative defense to a claim of infringement; thus, the burden of proof is on its proponent.⁴⁶ “[T...