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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF HAWAII
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`CIVIL NO. 06-00489 JMS/LEK
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`ORDER DENYING PLAINTIFF’S
`MOTION FOR PRELIMINARY
`INJUNCTION
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`) ) ) ) ) ) ) ) ) ) )
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`KIM TAYLOR REECE,
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`Plaintiff,
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`vs.
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`ISLAND TREASURES ART
`GALLERY, INC. and GAIL ALLEN,
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`Defendants.
`_______________________________
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`ORDER DENYING PLAINTIFF’S MOTION FOR
`PRELIMINARY INJUNCTION
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`I. INTRODUCTION
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`Plaintiff Kim Taylor Reece (“Plaintiff”) brings this motion for
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`preliminary injunction against Defendants Island Treasures Art Gallery (“Island
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`Treasures”) and Island Treasures’ owner Gail Allen (collectively, “Defendants”).
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`Defendants’ art gallery currently displays a stained glass artwork entitled “Nohe,”
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`which Plaintiff alleges is an unauthorized copy of his photograph entitled
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`“Makanani.” Defendants assert that “Nohe” was independently created and does
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`not infringe upon Plaintiff’s copyright. Plaintiff seeks to preliminarily enjoin
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`Defendants from displaying or selling the stained glass artwork pending a final
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`resolution of the case. A hearing was held on December 11, 2006. Testifying at
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`the hearing were: Kim Taylor Reece, Kanoe Reece, Māpuana de Silva, Gail Allen,
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`Marylee Colucci and Joe Dwight. Based on the following, the court DENIES the
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`Plaintiff’s motion.
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`II. BACKGROUND
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`At the center of this copyright dispute are two artworks portraying a
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`woman performing a hula on the beach. Hula is a vital expression of Hawaiian
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`culture.1 For many, it is an articulation of nature and beauty, of respect for the
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`ancient gods and goddesses, of historical memory and legends and of daily life.
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`Hula plays a role in preserving Hawaiian culture and history.2 Although Hawaiian
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`was not originally a written language, Native Hawaiians have “an extensive
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`literature accumulated in memory, added to from generation to generation, and
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`handed down by word of mouth.” 1 Ralph S. Kuykendall, The Hawaiian Kingdom
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`10 (1938). Historically, “[i]t consisted of meles (songs) of various kinds,
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`genealogies and honorific chants, stories and traditional lore in which were
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`1 “The hula is a general name for many types of Hawaiian folk dances. Some originated
`in one locality and spread to others. Some were peculiar to one island, while others belonged to
`a whole group but had many versions.” Mary Kawena Pukui, The Hula, Hawaii’s Own Dance,
`in Hula: Historical Perspectives 70, 70 (Bonnie T. Clause ed. 1980). “Most of the ancient hulas
`are gone for all time, although many remain.” Id.
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`2 Kumu hula Victoria Takamine explains in her Declaration that, “For years hula was the
`incubator of all our cultural practices. At a time when many such practices were being destroyed,
`hula traditions provided a place where those cultural practices could be preserved and
`incubated.” Takamine Decl. at ¶ 20.
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`2
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`imbedded fragments of history and biography,” and which were “used as an
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`accompaniment to the hula, a large part of it being composed especially for that
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`purpose.” Id. at 10-11.
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`Hula kahiko is the ancient or old style of hula. The movements and
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`materials used in hula kahiko are historically standard. “Traditional hula draws
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`from a body of motions and has a definite framework in which it works. There are
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`limitations to hula kahiko whereas fewer limits are found in contemporary hula.
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`Hula is made up of foot patterns and hand gestures.” Declaration of Māpuana de
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`Silva3 (“de Silva Decl.”) at ¶ 21. A hula kahiko performance calls for the proper
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`dress. “A traditional performance required a pā`ū [cloth worn around the waist],
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`four kūpe`e [worn on wrists and ankles], a lei `ā`ī [worn around the neck], and a
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`lei po`o [worn on the head].” de Silva Decl. at ¶ 23. The materials in the lei have
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`significant meaning. “Certain plants are basic to hula kahiko, including maile and
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`ilima . . . . [M]aile is the lei of choice for any performance because it is a kinolau4
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`of Laka5 and it is the piko lei. The piko lei is a lei that ties us to our ancestors.”
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`3 At the December 11 hearing, de Silva was qualified by the court as an expert in the hula
`kahiko tradition.
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`4 Kinolau are earthly forms, such as plants or forces of nature, taken by a supernatural
`being or spirit. Native Hawaiian Rights Handbook 360 (Melody Kapilialoha MacKenzie ed.
`1991).
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`5 Laka is a patron diety of the hula. See id. at 230.
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`3
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`de Silva Decl. at ¶ 24. A female dancer wearing maile lei and performing hula
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`kahiko is depicted in the two pieces of art, each presented in a distinctive medium.
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`Plaintiff is a professional fine art photographer who photographs and
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`licenses primarily hula images. His photograph “Makanani” is a sepia tone image
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`of a woman kneeling in the beach shorebreak, performing in the hula kahiko
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`tradition with the shoreline in the distant background. Plaintiff first published
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`“Makanani” in 1988 as a poster and has subsequently licensed the image for use
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`on greeting cards, t-shirts, and picture frame inserts. According to Plaintiff, the
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`photograph contained the appropriate copyright notice when first published.
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`Defendant Island Treasures currently displays “Nohe,” a stained glass
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`artwork created by Marylee Colucci in 1998. “Nohe,” which is 27 inches tall by
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`23 inches wide and is composed of over 200 pieces of colored glass, has been on
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`display at the Defendants’ art gallery since August 2004. It includes deep brown
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`mountains, blue ocean, light brown sand and green flora in the dancer’s lei. Like
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`“Makanani,” the stained glass portrays a female figure performing a hula
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`movement, dressed in the hula kahiko tradition. Both works depict, from the same
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`4
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`angle, a woman kneeling on Oahu’s Kailua beach6 performing an `ike motion7
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`from the hula noho (sitting) position. According to kumu hula Māpuana de Silva,
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`to perform an `ike motion, “a dancer raises one hand out and one arm is bent at the
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`elbow and the hand is open and placed behind the eye with the thumb facing
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`downwards and the finger to show the seeing motion.” de Silva Decl. at ¶ 32.
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`Plaintiff first became aware of the stained glass artwork in May 2006.
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`Plaintiff’s attorney contacted Colucci and Defendant Allen and demanded they
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`stop using an unauthorized copy of Plaintiff’s photograph. On June 10, 2006,
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`Defendants responded by letter that the stained glass artwork had been removed
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`from display. Ex. H attached to Maki Decl. By the end of July 2006, however,
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`Defendants put “Nohe” back on display, although they agreed with Colucci that it
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`would not be for sale. Allen Decl. at ¶ 15. On September 7, 2006, Plaintiff filed a
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`Complaint for copyright infringement and jury demand and the instant motion for
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`preliminary injunction was filed on October 24, 2006.
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`6 The setting is not apparent from the face of either “Makanani” or “Nohe,” but the record
`reflects that both artists used Kailua beach in Windward Oahu as the setting for their artworks.
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`7 `Ike means to “see, know, feel, greet, recognize, perceive, experience, be aware,
`understand[.]” Mary Kawena Pukui & Samuel H. Elbert, Hawaiian Dictionary 96 (Revised and
`Enlarged ed. 1986). “The `ike motion is used in many hālau to mean to see, to view, to behold
`and can be done on three levels: sitting, kneeling and standing. The motion has been used for
`generations by hula practitioners . . . . The angle of the motion depends on the mele and what the
`dancer is looking towards. However, the dancer is most often looking upwards.” Takamine
`Decl. at ¶ 31.
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`5
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`At the December 11, 2006 hearing, the court viewed an 11 inch by 14
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`inch print of the sepia “Makanani,” as well as the original stained glass artwork
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`“Nohe.” Colucci testified that she did not copy Plaintiff’s photograph, but drew
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`from her own memories as a hula dancer, from memories and photographs of her
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`niece (“Nohe’s” namesake) dancing hula and from pictures of other hula
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`performances. She said she has created other stained glass works of hula dancers
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`on the beach and that the dancers are always faceless, with similar skin and hair
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`color and with a lei or flower in their hair. Colucci explained that she includes
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``ilima in her dancers’ lei because the flower is her hālau’s signature. Allen also
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`confirmed at the hearing that “Nohe” is currently not for sale, but is on display at
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`the gallery.
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`Plaintiff argues that “Nohe” is a virtually identical copy of
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`“Makanani” and that Plaintiff’s business of selling and creating original
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`photographs will be irreparably harmed if Defendants are not enjoined from
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`displaying and selling the stained glass work. Defendants claim that Plaintiff will
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`not succeed on the merits of his action because: (1) Plaintiff fails to prove
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`ownership of a valid copyright; (2) Plaintiff has not established “copying”; (3)
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`“Nohe” was independently created; and (4) Plaintiff’s claim is likely barred by the
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`statute of limitations. Further, Defendants assert that Plaintiff has not
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`6
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`demonstrated irreparable injury, that the balance of hardships tips in Defendants’
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`favor, and that the public interest will be harmed if the injunction is granted.
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`III. STANDARD OF REVIEW
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`“Preliminary injunctive relief is available to a party who demonstrates
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`either: (1) a combination of probable success on the merits and the possibility of
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`irreparable harm; or (2) that serious questions are raised and the balance of
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`hardships tips in its favor.” LGS Architects, Inc. v. Concordia Homes of Nevada,
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`434 F.3d 1150, 1155 (9th Cir. 2006). These two formulations “represent two
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`points on a sliding scale in which the required degree of irreparable harm increases
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`as the probability of success decreases.” Id. (citing A & M Records, Inc. v.
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`Napster, Inc., 239 F.3d 1004, 1013 (9th Cir. 2001)). “Under federal copyright
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`law, however, a plaintiff that demonstrates a likelihood of success on the merits of
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`a copyright infringement claim is entitled to a presumption of irreparable harm.”
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`Sun Microsystems, Inc. v. Microsoft Corp., 188 F.3d 1115, 1119 (9th Cir. 1999).
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`IV. ANALYSIS
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`The Plaintiff is not entitled to a preliminary injunction because he has
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`not demonstrated a likelihood of success on the merits or the possibility of
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`irreparable harm. Each of these factors is considered in turn.
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`7
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`A.
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`The Plaintiff will not likely succeed on the merits of his copyright
`infringement claim
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`To prevail on his claim for copyright infringement, Plaintiff must
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`prove ownership of a valid copyright and copying of constituent elements of the
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`work that are original. Twentieth Century Fox Film Corp. v. Entm’t Distrib., 429
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`F.3d 869, 876 (9th Cir. 2005); Three Boys Music Corp. v. Bolton, 212 F.3d 477,
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`481 (9th Cir. 2000) (“A copyright plaintiff must prove (1) ownership of the
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`copyright; and (2) infringement -- that the defendant copied protected elements of
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`the plaintiff’s work.”); see also 17 U.S.C. § 106 (granting copyright holders the
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`exclusive right to reproduce the copyrighted work, to distribute copies of the
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`work, and to display the work publicly). The court concludes that Plaintiff owns a
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`valid copyright in his photograph “Makanani,” but that the stained glass artwork
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`“Nohe” is not a copy of the protected elements of Plaintiff’s photograph.
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`1.
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`Ownership of a valid copyright
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`Plaintiff is the author of the photograph and must establish the
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`following elements of copyright ownership: (1) originality in the author;
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`(2) copyrightability of the subject matter; (3) a national point of attachment of the
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`work, such as to permit a claim of copyright; and (4) compliance with applicable
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`statutory formalities. See Melville B. Nimmer & David Nimmer, Nimmer on
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`8
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`Copyright, § 13.01 at 13-6 (2006).8 Defendants contend that Plaintiff has failed to
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`prove elements 1, 2, and 4 -- originality, copyrightability and compliance with
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`statutory formalities. Each is discussed in turn.
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`a.
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`Originality
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`A work is original to the author and thus qualifies for copyright
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`protection if the work is independently created by the author and possesses some
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`minimal degree of creativity. Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc., 499
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`U.S. 340, 344 (1991). Almost any photograph “may claim the necessary
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`originality to support a copyright merely by virtue of the photographer’s personal
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`choice of subject matter, angle of photograph, lighting, and determination of the
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`precise time when the photograph is to be taken.” Los Angeles News Serv. v.
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`Trullo, 973 F.2d 791, 794 (9th Cir. 1992). Plaintiff’s photograph is sufficiently
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`original to be copyrightable.
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`b.
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`Copyrightability
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`Not all elements of Plaintiff’s photograph are copyrightable.
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`Copyright protection does not extend to the idea underlying the work; only the
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`8 “There is a statutory presumption that Copyright Office registrations within five years of
`publication constitutes prima facie evidence of ownership.” Television Digest, Inc. v. U.S. Tel.
`Ass’n, 841 F. Supp. 5, 8 (D.D.C. 1993) (citing 17 U.S.C. § 401(c)). Plaintiff first published
`“Makanani” in 1988, but obtained a certificate of copyright registration in 1997 -- nine years after
`publication.
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`9
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`

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`expression of the idea by the artist is protected. See 20 U.S.C. § 102(b). Some
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`general ideas are not protected by copyright law; instead, “they remain forever the
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`common property of artistic mankind.” Metcalf v. Bochco, 294 F.3d 1069, 1074
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`(9th Cir. 2002) (citation and quotation signals omitted). Further, everyone is free
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`to use materials in the public domain, and no one can obtain the exclusive right to
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`them by incorporating them in a literary, musical or artistic work. See Harold
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`Lloyd Corp. v. Witwer, 65 F.2d 1, 23-25 (9th Cir. 1933). A “combination of
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`unprotectable elements is eligible for copyright protection only if those elements
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`are numerous enough and their selection and arrangement original enough that
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`their combination constitutes an original work of authorship.” Satava v. Lowry,
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`323 F.3d 805, 811 (9th Cir. 2003).
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`Under Los Angeles News Service, “the creative decisions involved in
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`producing a photograph may render it sufficiently original to be copyrightable and
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`[courts] have carefully delineated selection of subject, posture, background,
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`lighting, and perhaps even perspective alone as protectible elements of a
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`photographer’s work.” 973 F.2d at 794 (citation and quotation signals omitted).
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`The court concludes, for the purposes of the instant motion, that Plaintiff’s
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`photograph is copyrightable, although elements derived from the public domain or
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`otherwise unprotected by copyright cannot serve as the basis of Plaintiff’s claim.
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`10
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`c.
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`Compliance with statutory formalities
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`Plaintiff’s photograph, first published in 1988, is subject to the
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`requirements of 17 U.S.C. § 401. See 17 U.S.C. § 405(a). The form of notice
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`required includes: the symbol © (or the word “copyright”); the year of the first
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`publication of the work; and the name of the owner of the copyright. 17 U.S.C.
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`§ 401(b). Plaintiff testified at the hearing that, in 1988 when “Makanani” was first
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`published, it contained a copyright notice with the copyright symbol, the year
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`(1988) and Plaintiff’s name.9 The court concludes, for the purposes of this motion
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`for preliminary injunction, that Plaintiff complied with the statutory formalities.
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`Plaintiff therefore owns a valid copyright in his photograph.
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`Finding that Plaintiff has established ownership of a valid copyright,
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`the court next turns to whether the stained glass artwork is an unauthorized copy
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`of the protected elements of Plaintiff’s copyright.
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`2.
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`Copying of elements of the work that are original
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`“Copying requires evidence that a defendant literally copied the
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`designs or, alternatively, that a defendant had access to the protected designs
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`9 For works published after March 1, 1989, the effective date of the Berne Convention
`Implementation Act, the statute does not require publication with the prescribed copyright notice.
`Therefore, Plaintiff’s republication of the image after that date did not require the statutory form
`of notice or affect the validity of the copyright.
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`11
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`before creating the accused designs with an additional showing of ‘substantial
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`similarity not only of the general ideas but of the expression of those ideas as
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`well.’” Amini Innovation Corp. v. Anthony California, Inc., 439 F.3d 1365, 1368
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`(Fed. Cir. 2006) (quoting Shaw v. Lindheim, 919 F.2d 1353, 1356 (9th Cir. 1990)).
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`See also Three Boys Music Corp., 212 F.3d at 481 (“Absent direct evidence of
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`copying, proof of infringement involves fact-based showings that the defendant
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`had ‘access’ to the plaintiff’s work and that the two works are ‘substantially
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`similar.’”).
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`a.
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`Access
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`“Proof of access requires ‘an opportunity to view or to copy
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`plaintiff’s work.’” Three Boys Music Corp., 212 F.3d at 482 (quoting Sid & Marty
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`Krofft Television Prods., Inc. v. McDonald’s Corp., 562 F.2d 1157, 1172 (9th Cir.
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`1977)). This is often described as providing a “reasonable opportunity” or
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`“reasonable possibility” of viewing the plaintiff’s work. Id. (citing 4 Melville B.
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`Nimmer & David Nimmer, Nimmer on Copyright, § 13.02[A], at 13-19 (1999)).
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`Circumstantial evidence of reasonable access is proven in one of two ways: (1) a
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`particular chain of events is established between the plaintiff’s work and the
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`defendant’s access to that work, or (2) the plaintiff’s work has been widely
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`disseminated. Three Boys Music Corp., 212 F.3d at 482.
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`12
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`Plaintiff’s “Makanani” photograph has been widely disseminated.
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`From 1995 through 2003, the image was used as an insert in koa picture frames
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`sold at all Hawaii Longs, Walmart and Kmart stores. The photograph has been
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`published in several magazines and newspapers in Hawaii. Further, Plaintiff
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`approximates that 10,000 posters and 20,000 greeting cards bearing the image
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`have been sold. The court concludes that there was a “reasonable opportunity” or
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`“reasonable possibility” of viewing the Plaintiff’s work.10
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`b.
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`Substantial similarity
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`The next step is to determine whether there is a sufficient level of
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`similarity between the copyrightable elements of Plaintiff’s photograph and the
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`stained glass “Nohe.” See Feist Publ’ns, Inc., 499 U.S. at 361. A two-part test is
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`used: an extrinsic test and an intrinsic test. See Rice v. Fox Broad. Co., 330 F.3d
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`1170, 1174 (9th Cir. 2003).
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`At first glance, these works appear to be images of the same likeness,
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`that is, they could each be renditions of the same performance. Each captures a
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`woman performing hula on the beach, kneeling in the sand in the midst of an `ike
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`movement, with the right arm outstretched and an open left hand against the face.
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`10 The court does not find that Plaintiff’s work is so widely disseminated that the inverse
`ratio rule is applicable. The rule holds that a lower standard for “substantial similarity” may be
`applied when a “high degree of access is shown.” See Three Boys Music Corp., 212 F.3d at 485.
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`13
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`The women are each adorned in the traditional hula kahiko fashion and their long
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`dark hair flows behind them. And each image presents the woman from the same
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`angle and orientation, from a perspective that is facing the left side of her body, as
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`if in profile. Yet aside from these similarities, the court cannot say that these two
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`images are “substantially similar” under established legal principles.
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`i.
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`Extrinsic test and copyrightable elements
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`Under the extrinsic test, the court performs an “analytic dissection,”11
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`or a process which filters and isolates each of the constituent elements of the
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`copyrighted works to the exclusion of other elements. Rice, 330 F.3d at 1174; Dr.
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`Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1398 (9th Cir.
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`1997) (“‘Analytic dissection’ focuses on isolated elements of each work to the
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`exclusion of the other elements, combination of elements, and expressions
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`therein.”).12 Plaintiff (the party claiming infringement), “may place no reliance
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`11 In applying this test to works of art, “a court looks to the similarity of the objective
`details in appearance. Although we do not attempt here to provide an exhaustive list of relevant
`factors for evaluating art work, the subject matter, shapes, colors, materials, and arrangement of
`the representations may be considered in determining objective similarity in appearance.”
`Cavalier v. Random House, Inc., 297 F.3d 815, 826 (9th Cir. 2002) (citation omitted).
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`12 Among the unprotectable elements which the court must filter out are: ideas, as
`distinguished from expression; elements borrowed from another artists or from the public
`domain; instances in which a particular expression “merges” with the idea being expressed; and
`the degree to which the form of the expression is so standard in the treatment of a given idea that
`is constitutes a scenes a faire, or a “scene which must be done.” See Idema v. Dreamworks, Inc.,
`162 F. Supp. 2d 1129, 1176-77 (C.D. Cal. 2001) (discussing the filtration process).
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`14
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`upon any similarity in expression resulting from unprotectable elements.” Apple
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`Computer, Inc., 35 F.3d at 1446 (citation and quotation signals omitted).
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`Under the Ninth Circuit’s extrinsic test:
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`(1) The plaintiff must identify the source(s) of the alleged
`similarity between his work and the defendant’s work.
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`(2) Using analytic dissection, and, if necessary, expert
`testimony, the court must determine whether any of the
`allegedly similar features are protected by copyright. Where,
`as in this case, a license agreement is involved, the court must
`also determine which features the defendant was authorized to
`copy. Once the scope of the license is determined,
`unprotectable ideas must be separated from potentially
`protectable expression; to that expression, the court must then
`apply the relevant limiting doctrines in the context of the
`particular medium involved, through the eyes of the ordinary
`consumer of that product.
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`(3) Having dissected the alleged similarities and considered the
`range of possible expression, the court must define the scope of
`the plaintiff's copyright--that is, decide whether the work is
`entitled to “broad” or “thin” protection. Depending on the
`degree of protection, the court must set the appropriate
`standard for a subjective comparison of the works to determine
`whether, as a whole, they are sufficiently similar to support a
`finding of illicit copying.
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`Id. The parties here agree that “Makanani” is entitled to “thin” protection. “When
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`the range of protectable and unauthorized expression is narrow, the appropriate
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`standard for illicit copying is virtual identity.” Id. at 1439; see also id. at 1442
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`15
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`(“[W]e conclude that only ‘thin’ protection, against virtually identical copying, is
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`appropriate.”).
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`Plaintiff has identified the following sources of alleged similarity
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`between his work and the stained glass piece: the expression of the idea of “hula
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`dancers in an identical pose,” “both dancers have their arms, hands, heads and
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`shoulders in the same position,” both have “kupe`e (bracelets) of identical
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`thickness, position and make-up on both wrists,” and “[b]oth images are shown at
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`the same angle, with the dancers in the same posture.” Plaintiff’s Mem. in Sup. at
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`12. At the hearing, Plaintiff asserted that the works are “identical” and, as an
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`example, pointed to the position and shape of the fabric that falls behind the
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`dancer toward her feet. Plaintiff failed to identify any additional sources of
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`similarity during the hearing.
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`Using analytic dissection, the court must determine whether any of
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`the allegedly similar features are protected by copyright. Copyright protection
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`does not extend to any “idea” or “concept,” “regardless of the form in which it is
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`described, explained, illustrated, or embodied in such work.” 20 U.S.C. § 102(b).
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`“It is an axiom of copyright law that the protection granted to a copyrighted work
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`extends only to the particular expression of the idea and never to the idea itself.”
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`Sid & Marty Krofft Television Prods., Inc., 562 F.2d at 1163. The line between
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`16
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`idea and expression in copyright infringement cases is often blurry and difficult to
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`identify in the context of a photograph.13
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`The protectable elements of a photograph generally include lighting,
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`selection of film and camera, angle of photograph, and determination of the
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`precise time when the photograph is to be taken. See 1 Melville B. Nimmer &
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`David Nimmer, Nimmer on Copyright, § 2.08[E][1], at 2-130 (1999).14 In the
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`Ninth Circuit, “courts have recognized repeatedly that the creative decisions
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`involved in producing a photograph may render it sufficiently original to be
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`13 In fact, one court determined that, “[i]n the context of photography, the idea/expression
`distinction is not useful or relevant.” Mannion v. Coors Brewing Co., 377 F. Supp. 2d 444, 461
`(S.D.N.Y. 2005). “The cases agree that the relevant comparison is between the protectible
`elements” in the two works. Id. at 462.
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`14 Generally, a “copyright does not give to the owner thereof an exclusive right to use the
`basic material, but only the exclusive right to reproduce his individual presentation of the
`material.” Kisch v. Ammirati & Puris Inc., 657 F. Supp. 380, 382 (S.D.N.Y. 1987) (citation
`omitted). Accordingly, “the fact that the same subject matter may be present in two paintings
`does not prove copying or infringement.” Id. (quoting Franklin Mint Corp. v. National Wildlife
`Art Exchange, Inc., 575 F.2d 62, 65 (3d Cir. 1978)). “As Justice Holmes stated: ‘Others are free
`to copy the original [subject matter]. They are not free to copy the copy.’” Id. (citation and
`quotation signals omitted). Kisch concluded that:
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`in cases involving photographs, a “[p]laintiff’s copyrights cannot
`monopolize the various poses used,” and “can protect only [p]laintiff’s
`particular photographic expression of these poses and not the underlying
`ideas therefor.” The copyrightable elements of a photograph have been
`described as the photographer’s “original” “conception” of his subject, not
`the subject itself. In particular, the copyrightable elements include such
`features as the photographer’s selection of lighting, shading, positioning
`and timing.
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`Id. (citations omitted).
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`17
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`

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`Case 1:06-cv-00489-JMS-BMK Document 35 Filed 12/22/06 Page 18 of 28 PageID #:
` 300
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`copyrightable and ‘have carefully delineated selection of subject, posture,
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`background, lighting, and perhaps even perspective alone as protectable elements
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`of a photographer’s work.’” Los Angeles News Serv., 973 F.2d at 794 (quoting
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`United States v. Hamilton, 583 F.2d 448, 452 (9th Cir. 1978)).15
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`The idea of a hula dancer performing an `ike movement in the hula
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`kahiko style from the noho position is not protected. Further, the parties agree that
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`the `ike motion itself is not protected. Instead, the protected elements of
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`Plaintiff’s “Makanani” are limited to those that derive from the Plaintiff’s
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`expression of the idea of a hula dancer performing the `ike motion. Plaintiff’s
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`expression of those ideas include the angle, timing, and lighting of the photograph,
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`as well as the expression of the hula kahiko performance and dress. Unprotected
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`elements of the photograph are those that are not original, but are part of the
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`public domain, including natural elements like the ocean and shoreline. See
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`15 Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1074-75 (9th Cir. 2000), explained that:
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`Courts today continue to hold that such decisions by the photographer--or,
`more precisely, the elements of photographs that result from these
`decisions--are worthy of copyright protection. 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.”) (citations omitted); Eastern America Trio Prods., Inc. v. Tang
`Elec. Corp., 97 F. Supp. 2d 395, 417 (S.D.N.Y. 2000).
`
`18
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`Case 1:06-cv-00489-JMS-BMK Document 35 Filed 12/22/06 Page 19 of 28 PageID #:
` 301
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`Satava, 323 F.3d at 813 (“These ideas, first expressed by nature, are the common
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`heritage of humankind, and no artist may use copyright law to prevent others from
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`depicting them. An artist may, however, protect the original expression he or she
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`contributes to these ideas.”).
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`Once the court separates the protectable from the unprotectable
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`elements, the court “must then apply the relevant limiting doctrines. Under the
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`doctrine of scenes a faire, when similar features are indispensable and naturally
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`associated with, or at least standard, in the treatment of given idea, they are treated
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`like ideas and are therefor not protected by copyright. See Rice, 330 F.3d at 1175;
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`Apple Computer, Inc., 35 F.3d at 1444.
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`Elements particular to the hula kahiko tradition are scenes a faire.
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`Hula movements have standard forms and to perform an `ike motion, “a dancer
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`raises one hand out and one arm is bent at the elbow and the hand is open and
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`placed behind the eye with the thumb facing downwards and the finger to show
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`the seeing motion.” de Silva Decl. at ¶ 32. At the hearing, de Silva testified that
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`the right hand would naturally be up -- “always up because your knowledge does
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`not come from yourself. It comes from your kupuna.[16] It comes from everything
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`16 Kupuna means ancestor, grandparent, relative or close friend of the grandparent’s
`generation. See Pukui & Elbert, supra, at 186.
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`19
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`Case 1:06-cv-00489-JMS-BMK Document 35 Filed 12/22/06 Page 20 of 28 PageID #:
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`that’s come before you and that’s always up towards the heavens.” To the extent
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`the dancers in the artworks are performing an `ike motion from the noho position,
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`their similar features are indispensable, naturally associated with the motion, or at
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`least standard. Further, the dancer’s hula kahiko dress is scenes a faire; the proper
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`dress required a pā`ū, four kūpe`e, and a lei `ā`ī and lei po`o. See de Silva Decl. at
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`¶ 23. Because these elements are scenes a faire, they not protected by copyright.
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`When the protected elements of Plaintiff’s “Makanani,” viewed in
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`isolation, are compared to the stained glass artwork, their differences are clear.
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`The angle and perspective of the pieces are very similar (both viewed in profile
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`from the dancer’s left side), but the position of the subject dancer relative to her
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`setting is not. The dancer in “Makanani” kneels in the shorebreak with waves
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`splashing her knees, facing the ocean, and appears large and tightly focused in
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`relation to the unfocused shoreline distant in the background. On the other hand,
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`the dancer in “Nohe” kneels on the beach, but does not face the ocean -- which is
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`directly behind her -- and the top portion of the piece is dominated by the smaller
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`island jetting out of the ocean. The angle and position of the dancers’ bodies are
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`in the standard `ike position, but even those angles vary slightly. P