Case 1:21-cv-20039-RNS Document 56 Entered on FLSD Docket 07/06/2022 Page 1 of 11
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`United States District Court
`for the
`Southern District of Florida
`
`
`
`Civil Action No. 21-20039-Civ-Scola
`
`Joe Morford, Plaintiff,
`
`v.
`
`Maurizio Cattelan, Defendant.
`
`)
`)
`)
`)
`)
`Order
`This matter is before the Court on the Defendant’s motion to dismiss.
`
`(ECF No. 49.) The pro se Plaintiff filed a response1 to the motion (ECF No. 50),
`and the Defendant filed a reply memorandum in support (ECF No. 53). After
`careful consideration of the briefing, the record, and the relevant legal
`authorities, the Court denies the motion. (ECF No. 49.)
`
`1. Background
`Can a banana taped to a wall be art? Must art be beautiful? Creative?
`
`Emotive? A banana taped to a wall may not embody human creativity, but it
`may evoke some feelings, good or bad. In any event, a banana taped to a wall
`recalls Marshall McLuhan’s definition of art—“anything you can get away with.”
`To that end, bananas have come to represent a type of irreverence in pop
`culture—from vaudeville to Andy Warhol, artists have wielded bananas to
`expand the boundaries of art.
`Add to that list Joe Morford, an artist from Glendale, California. In 2000,
`Morford registered his work “Banana & Orange” with the Copyright Office. (ECF
`No. 1 at 8.) While Morford does not allege how widely this work was
`disseminated, it appears that Banana & Orange was accessible on Morford’s
`website, as well as through the social media platforms Facebook and YouTube.
`(ECF No. 50 at 26.)
`
`In 2019, Maurizio Cattelan also tried his hand at banana-centric art—to
`much greater recognition. That year, Cattelan introduced his work “Comedian”
`at the art fair Art Basel in Miami Beach. (ECF No. 1 at 6.) The piece was a hit,
`garnering international press and heralding wide-ranging commentary.
`
`
`1 Morford filed a 69-page response, well exceeding the 20-page limit imposed by the Local
`Rules. Morford, as a pro se litigant, must comply with all Federal Rules of Civil Procedure and
`Local Rules for the Southern District of Florida. The Federal of Civil Procedure and Local Rules
`of the Southern District of Florida can be accessed from the Clerk of the Court’s website,
`available at: http://www.flsd.uscourts.gov. Failure to comply with the federal and local rules in
`the future may result in sanctions.
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`Comedian was a financial success too, as Cattelan sold three copies of the
`work, as well as two proofs, for over $390,000. (Id. at 4.)
`
`Morford now alleges that Cattelan plagiarized and copied Banana &
`Orange. The two works are provided below, with Morford’s Banana & Orange
`on the left and Cattelan’s Comedian on the right:
`
`
`Thankfully for the Court, the question of whether a banana taped to a
`
`wall can be art is more a metaphysical question than a legal one. But the legal
`question before the Court may be just as difficult—did Morford sufficiently
`allege that Cattelan’s banana infringes his banana?
`
`2. Legal Standard
`When considering a motion to dismiss under Federal Rule of Civil
`Procedure 12(b)(6), the Court must accept all of the complaint’s allegations as
`true, construing them in the light most favorable to the plaintiff. See Pielage v.
`McConnell, 516 F.3d 1282, 1284 (11th Cir. 2008). A pleading need only contain
`“a short and plain statement of the claim showing that the pleader is entitled to
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`relief.” Fed. R. Civ. P. 8(a)(2). “[T]he pleading standard Rule 8 announces does
`not require detailed factual allegations, but it demands more than an unadorned,
`the-defendant-unlawfully-harmed-me accusation.” Ashcroft v. Iqbal, 556 U.S.
`662, 678 (2009) (quotation omitted). A plaintiff must articulate “enough facts to
`state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550
`U.S. 544, 570 (2007).
`“A claim has facial plausibility when the plaintiff pleads factual content
`that allows the court to draw the reasonable inference that the defendant is
`liable for the misconduct alleged.” Iqbal, 556 U.S. at 678. “The plausibility
`standard is not akin to a ‘probability requirement,’ but it asks for more than a
`sheer possibility that a defendant has acted unlawfully.” Id. “Threadbare
`recitals of the elements of a cause of action, supported by mere conclusory
`statements, do not suffice.” Id. Thus, a pleading that offers mere “labels and
`conclusions” or “a formulaic recitation of the elements of a cause of action” will
`not survive dismissal. See Twombly, 550 U.S. at 555.
`Yet, where the allegations “possess enough heft” to suggest a plausible
`entitlement to relief, the case may proceed. See Twombly, 550 U.S. at 557.
`“[T]he standard ‘simply calls for enough fact to raise a reasonable expectation
`that discovery will reveal evidence’ of the required element.” Rivell v. Private
`Health Care Sys., Inc., 520 F.3d 1308, 1309 (11th Cir. 2008). “And, of course, a
`well-pleaded complaint may proceed even if it strikes a savvy judge that actual
`proof of those facts is improbable, and ‘that a recovery is very remote and
`unlikely.’” Twombly, 550 U.S. at 556.
`In determining whether these standards are met, courts must “liberally
`construe pro se pleadings,” and the Court will hold Morford to “‘less stringent
`standards’ than [those applied] to formal pleadings that lawyers draft.” See
`Bilal v. Geo Care, LLC, 981 F.3d 903, 911 (11th Cir. 2020) (quoting Erickson v.
`Pardus, 551 U.S. 89, 94 (2007)).
`
`3. Analysis
`To ultimately succeed on his claim of copyright infringement, Morford
`must establish “(1) ownership of a valid copyright, and (2) copying of
`constituent elements of the work that are original.” See Compulife Software Inc.
`v. Newman, 959 F.3d 1288, 1301 (11th Cir. 2020) (quoting Bateman v.
`Mnemonics, Inc., 79 F.3d 1532, 1541 (11th Cir. 1996)).
`Copying requires both “factual and legal copying”—in other words, a
`plaintiff must show both that (1) the defendant “actually used” the copyrighted
`work and that (2) the copied elements are “protected expression” such that the
`appropriation is legally actionable. See Newman, 959 F.3d at 1301 (citing BUC
`Int’l Corp. v. Int’l Yacht Council Ltd., 489 F.3d 1129, 1148 n.40 (11th Cir. 2007)
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`and MiTek Holdings, Inc. v. Arce Eng’g Co., 89 F.3d 1548, 1554 (11th Cir.
`1996)). First, a plaintiff must show factual copying by either (1) direct evidence
`or (2) indirect evidence “demonstrating that the defendant had access to the
`copyrighted work and that there are probative similarities between the allegedly
`infringing work and the copyrighted work.” See Newman, 959 F.3d at 1301
`(quoting MiTek, 89 F.3d at 1554). Meanwhile, legal copying looks to whether
`the similarities between the two works extend to the work’s original,
`protectable elements. See Newman, 959 F.3d at 1306; see also Feist Publ’ns,
`Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 359 (1991).
`When are two works sufficiently similar? To establish the requisite
`similarity, courts apply different standards depending on the nature of the
`allegations. “In most cases,” courts look to whether “substantial similarity”
`exists between the allegedly infringing work and the protectable elements of the
`copyrighted work. See Newman, 959 F.3d at 1302; see also BUC Int’l, 489 F.3d
`at 1147–48 (citing Warren Publ’g, Inc. v. Microdos Data Corp., 115 F.3d 1509,
`1516 n.19 (11th Cir. 1997)). However, where a plaintiff cannot establish that
`the alleged infringer had access to the copyrighted work, the plaintiff must
`meet a higher standard and show that the works are “strikingly similar.” See
`Calhoun v. Lillenas Publ’g, 298 F.3d 1228, 1232 n.6 (11th Cir. 2002) (citing
`Herzog v. Castle Rock Ent., 193 F.3d 1241, 1249 (11th Cir. 1999)); see also
`Olem Shoe Corp. v. Wash. Shoe Corp., 591 F. App’x 873, 885 (11th Cir. 2015)
`(“Striking similarity exists where the proof of similarity in appearance is so
`striking that the possibilities of independent creation, coincidence and prior
`common source are, as a practical matter, precluded.”) (quoting Corwin v. Walt
`Disney Co., 475 F.3d 1239, 1253 (11th Cir. 2007)).2
`So how to determine whether works share a substantial similarity?
`Courts have developed several names for the elusive test to be applied. See
`
`
`2 The Defendant argues that in cases involving a “thin copyright,” a third standard applies—
`“virtual identity.” (ECF No. 49 at 12.) However, the Eleventh Circuit has held that the “virtual
`identity” standard is limited to “claims of compilation copyright infringement of nonliteral
`elements of a computer program.” See BUC Int’l, 489 F.3d at 1149 (quoting MiTek, 89 F.3d
`at 1558). In all other cases, whether a work has a “thin copyright” does not affect the standard
`applied; rather, it merely denotes that a work has few protectable elements and necessarily
`requires that the few protectable elements that exist must share a substantial similarity to the
`alleged infringing work. See Feist, 499 U.S. at 349 (noting that, given the abundant non-
`protectable elements in a factual compilation, such compilations “inevitably” enjoy a “thin”
`copyright); see also Home Design Servs., Inc. v. Turner Heritage Homes Inc., 825 F.3d 1314,
`1330 (11th Cir. 2016) (Rosenbaum, J., concurring) (noting that “thin” copyright “is just another
`way of saying that the factfinder must consider whether ‘substantial similarity’ exists at the
`level of protectable expression—original content—only, and the amount of protectable
`expression relative to total content in a compilation is less than in a more original type of
`work”).
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`Sieger Suarez Arch. P’ship, Inc. v. Arquitectonica Int’l Corp., 998 F. Supp. 2d
`1340, 1350 (S.D. Fla. 2014) (King, J.) (noting that “[t]he term ‘substantial
`similarity’ has lived a shadowy life in the courts”). The Eleventh Circuit
`previously nodded to what was called the “extrinsic” and “intrinsic” test. See
`Lil’ Joe Wein Music, Inc. v. Jackson, 245 F. App’x 873, 877 (11th Cir. 2007)
`(explaining that under the extrinsic and intrinsic test, courts first look to the
`similarities in the protected expressions in a work and then compare these
`components and determine whether a jury could find that the works are
`substantially similar) (citing Herzog, 193 F.3d at 1257). However, the Eleventh
`Circuit later opined that this formulation was “something of an anomaly.” See
`Oravec v. Sunny Isles Luxury Ventures, L.C., 527 F.3d 1218, 1224 n.5 (11th
`Cir. 2008); see also Off Lease Only, Inc. v. Lakeland Motors, LLC, 825 F. App’x
`722, 727 (11th Cir. 2020). In Oravec, the Eleventh Circuit appeared to return
`to the “lay observer” test, which looks to whether “an average lay observer
`would recognize the alleged copy as having been appropriated from the
`copyrighted work.” See id. at 1224 (quoting Original Appalachian Artworks, Inc.
`v. Toy Loft, Inc., 684 F.2d 821, 829 (11th Cir. 1982)). More recently, the
`Eleventh Circuit in Newman invoked neither the extrinsic/intrinsic test nor the
`lay observer test; instead, it applied the “abstraction-filtration-comparison”
`test. See Newman, 959 F.3d at 1303 (citing Comput. Assocs. Int’l, Inc. v. Altai,
`Inc., 982 F.2d 693 (2d Cir. 1992)).
`Ultimately, any disagreement on the appropriate test is “more of a matter
`of semantics than substance.” See Bateman, 79 F.3d at 1545. In all cases—no
`matter the title given to the controlling test—courts must determine “whether a
`reasonable jury could find the [works at issue] substantially similar at the level
`of protected expression” See Oravec, 527 F.3d at 1224 n.5. Following Newman,
`this Court will apply the “abstraction-filtration-comparison” test. While this
`test was initially formulated for computer-software copyright cases, it comports
`with Feist’s directive to view a copyrighted work in its component pieces and
`strip away unprotectable elements, ultimately comparing only the work’s
`protected elements to the alleged infringing work. See Feist, 499 U.S. at 348;
`see also Country Kids ‘N City Slicks, Inc. v. Sheen, 77 F.3d 1280, 1284 n.5
`(10th Cir. 1996) (noting that there is “no reason” to limit the abstraction-
`filtration-comparison test to computer software cases) (citing 3 Nimmer on
`Copyright, § 13.03[E], at 13-96 to 13-97 (providing that the test “should be
`considered not only for factual compilations and computer programs, but
`across the gamut of copyright law”)).
`Under this formulation, the substantial similarity test has three steps:
`“(1) abstraction, (2) filtration, and (3) comparison.” See Newman, 959 F.3d
`at 1303 (discussing Bateman, 79 F.3d at 1544). First, abstraction: the court
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`must “break down the allegedly infringed [work] into its constituent structural
`parts.” See id.; see also Herzog, 193 F.3d at 1257 (noting the need for an
`“analytic dissection” of the allegedly infringed work). Second, the court must
`“filter” out the unprotectable elements, a notoriously tricky step that depends
`on the level of abstraction practiced in the first step. See Newman, 959 F.3d
`at 1303–04; see also Oravec, 527 F.3d at 1224 (holding that the “substantial
`similarity analysis must focus on similarity of expression, i.e., material
`susceptible of copyright protection”). Filtration is built on the “fundamental
`axiom” of copyright law: ideas are not protectable. See Oravec, 527 F.3d at
`1224 (citing 17 U.S.C. § 102(b)); see also Herzog, 193 F.3d at 1248 (“It is an
`axiom of copyright law that the protection granted to a copyrightable work
`extends only to the particular expression of an idea and never to the idea
`itself.”) (quoting Reyher v. Children’s Tel. Workshop, 533 F.2d 87, 91 (2d Cir.
`1976)). Therefore, factfinders must filter out the underlying idea itself, as well
`as other unprotectable elements, such as “processes, facts, public domain
`information, merger material, [and] scenes a faire material [standard features
`of a scene].” See Bateman, 79 F.3d at 1545. Last, the court compares the
`“remaining kernels of creative expression” in the alleged infringed work to the
`alleged infringing work. See Newman, 959 F.3d at 1303–04.
`To recap: Morford must plausibly allege that Cattelan had access to
`Banana & Orange and that—after dissecting Banana & Orange and stripping
`(or filtering) away the non-protected elements of it—there is a substantial
`similarity between the two works.
`Before digging in, the Court notes that questions of substantial similarity
`are typically best left to the trier of fact. See Leigh v. Warner Bros., Inc., 212
`F.3d 1210, 1213 (11th Cir. 2000) (“Copyright infringement is generally a
`question of fact for the jury to decide[.]”). Deciding questions of infringement at
`the motion-to-dismiss stage, let alone at the summary-judgment stage, should
`be approached cautiously. See Beal v. Paramount Pictures Corp., 20 F.3d 454,
`459 (11th Cir. 1994) (noting that “[s]ome courts have observed that summary
`judgment is peculiarly inappropriate in copyright infringement cases due to
`their inherent subjectivity”); see also Rentmeester v. Nike, Inc., 883 F.3d 1111,
`1127 (9th Cir. 2018) (Owens, J., concurring in part and dissenting in part)
`(noting that substantial similarity is “an inherently factual question which is
`often reserved for the jury, and rarely for a court to decide at the motion to
`dismiss stage”). However, where courts only face a “visual comparison” of the
`works and where “no discovery or fact-finding is typically necessary,” courts
`will determine whether substantial similarity exists as a matter of law. See
`Tanksley v. Daniels, 902 F.3d 165, 171–72 (3d Cir. 2018) (noting that while
`“[s]uch dismissals [] were formerly rare,” they are “now more common”); Seven
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`Oaks Millwork, Inc. v. Royal Foam US, LLC, 483 F. Supp. 3d 1192, 1196 n.3
`(M.D. Fla. 2020); see also Sieger Suarez, 998 F. Supp. 2d at 1350 (holding that
`“it is appropriate for this Court to determine whether the works are
`substantially similar and therefore, whether [p]laintiff can plausibly
`demonstrate entitlement to relief”) (collecting cases); cf. Home Design, 825 F.3d
`at 1326 (holding that judges “can, in certain cases, remove the question of
`substantial similarity from jury consideration”). Therefore, the Court will
`proceed, although the Court is mindful that judge-observed similarities and
`differences between two works are “inherently subjective and unreliable” and
`that unless such similarities and differences render a plaintiff’s case bunk as a
`matter of law, such questions should go to the trier of fact. See Leigh, 212 F.3d
`at 1215.
`
`A. Valid Copyright
`As an initial matter, Cattelan argues that Morford has no valid copyright
`in Banana & Orange. First, Cattelan contends that Morford must be estopped
`from arguing that he has any copyright, as Morford has stated, in various
`filings, that he “does not assert copyright claim to the idea of a banana duct-
`taped to a wall.” (ECF No. 37 at 21.) Cattelan avers that this amounts to an
`admission that Morford cannot claim a copyright in his work and that he must
`be estopped from doing so now. (ECF No. 49 at 9.) Putting aside the propriety
`of estopping a pro se plaintiff because of inartful legal argument, Morford’s
`statement is largely correct: Morford cannot claim copyright in the idea of a
`banana taped to a wall. However, as discussed below, Morford may be able to
`claim copyright in the expression of that idea.
`Second, Cattelan argues that the coordination and arrangement in
`Banana & Orange is “not sufficiently original” to warrant protection. (ECF
`No. 49 at 9.) Copyright protection only extends to arrangements that are
`unique and original. See Corwin, 475 F.3d at 1251 (“[A] work may be protected
`by copyright law when its otherwise unprotectable elements are arranged in a
`unique way.”). Heralded as the “sine qua non of copyright,” originality requires
`consideration of the creativity involved in the arrangement of unprotectable
`elements, as well as whether the arrangement is “firmly rooted in tradition” or
`too “commonplace.” See BellSouth, 999 F.2d at 1440 (discussing Feist, 499
`U.S. at 348, 363). But judges are not deputized art critics, and the originality
`bar is appropriately low. See Bleistein v. Donaldson Lithographing Co., 188 U.S.
`239, 251 (1903) (“It would be a dangerous undertaking for persons trained only
`to the law to constitute themselves the final judges of the worth of pictorial
`illustrations, outside of the narrowest and most obvious limits.”); see also
`Original Appalachian, 684 F.2d at 824 (“No matter how poor artistically the
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`author’s addition, it is enough if it be his own.”) (quoting Alfred Bell & Co. v.
`Catalda Fine Arts, Inc., 191 F.2d 99, 103 (2d Cir. 1951)). Therefore, the
`“requisite level of creativity is extremely low; even a slight amount will suffice.”
`See Feist, 499 U.S. at 345.
`While using silver duct tape to affix a banana to a wall may not espouse
`the highest degree of creativity, its absurd and farcical nature meets the
`“minimal degree of creativity” needed to qualify as original. See Feist, 499 U.S.
`at 345; see also Kevin Harrington Enters., Inc. v. Bear Wolf, Inc., No. 98-CV-
`1039, 1998 WL 35154990, at *6 (S.D. Fla. Oct. 8, 1998) (Ungaro, J.) (noting
`that originality involves “the author’s subjective judgment in giving visual form
`to his own mental conception”) (citing Burrow-Giles Lithographic Co. v. Sarony,
`111 U.S. 53, 60 (1884)). While the Court cannot—and need not—give meaning
`to Banana & Orange, at this stage the Court holds that Morford’s choices in
`giving form to Banana & Orange are sufficiently original.3
`
`B. Copying
`Holding that Morford has a valid copyright in Banana & Orange, or at
`least in some elements of Banana & Orange, the Court continues to the next
`step: whether Morford sufficiently alleged that Cattelan copied the protected
`elements of Banana & Orange. But first, the Court must decide which standard
`(substantial similarity or striking similarity) to apply, which depends on
`whether Morford alleges that Cattelan had access to Banana & Orange.
`
`1. Access
`In his complaint, Morford generally alleged that Cattelan had access to
`Banana & Orange. (ECF No. 1 at 4.) In his opposition to Cattelan’s motion to
`dismiss, Morford expands. (ECF No. 50 at 64.) Morford argues that Banana &
`Orange has been available on YouTube since July 18, 2008, on Facebook since
`July 29, 2015, and on his personal website since July 2, 2016.4 (Id.) Morford
`
`
`3 Moreover, Morford registered Banana & Orange with the Copyright Office, which provides
`additional support in favor of the validity of Morford’s copyright. See Norris Indus., Inc. v. Int’l
`Tel. & Tel. Corp., 696 F.2d 918, 922 (11th Cir. 1983).
`
` 4
`
` It is settled that plaintiffs may not amend their pleadings through opposition briefs. See
`Gilmour v. Gates, McDonald and Co., 382 F.3d 1312, 1315 (11th Cir. 2004) (“A plaintiff may not
`amend her complaint through argument in a[n] [opposition] brief[.]”). However, courts—
`cognizant of their duty to liberally construe pro se plaintiff’s pleadings—will consider factual
`allegations made for the first time in a pro se plaintiff’s opposition brief, to the extent that such
`allegations are not inconsistent with the complaint. See Hosey-Bey v. Gordy, No. 2:13-CV-838,
`2017 WL 1130883, at *2 n.1 (M.D. Ala. Feb. 22, 2017); see also Guity v. Uniondale Union Free
`Sch. Dist., CV 15-5693, 2017 WL 9485647, at *1 n.1 (E.D.N.Y. Feb. 23, 2017) (collecting cases).
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`also points to some undisclosed analytics that purport to show that Banana &
`Orange has been digitally accessed in twenty-five countries. (Id.)
`Cattelan cites a multitude of cases for the proposition that access cannot
`be established by mere Internet publication. (ECF No. 49 at 15.) However, all
`but one of the cases cited were decided at summary judgment. At the motion-
`to-dismiss stage, Morford need not establish that Cattelan had access, but only
`plausibly allege that he had access. And courts in this District have held that
`plaintiffs must have the opportunity to establish evidence showing the extent of
`internet presence in support of access. See Kelly Tracht, LLC v. Dazzle Up, LLC,
`No. 17-80434-CIV, 2017 WL 4681329, at *3 (S.D. Fla. Oct. 18, 2017) (Marra,
`J.) (holding that the plaintiff “should be afforded [an] opportunity to provide
`evidence about its internet presence”); cf. Green Bullion Fin. Servs., LLC v.
`Money4Gold Holdings, Inc., 639 F. Supp. 2d 1356, 1361 (S.D. Fla. 2009) (Zloch,
`J.) (holding that, in a motion for a preliminary injunction, access was
`sufficiently alleged as “anyone with access to the internet had access to
`Plaintiff’s website”). Therefore, liberally construing Morford’s allegations, the
`Court holds that Morford’s allegations that his Banana & Orange were available
`on multiple websites and accessed in multiple countries is sufficient to plead
`access at this time.
`
`2. Substantial Similarity
`Finding that Morford has sufficiently alleged access, the Court moves on
`to the substantial similarity analysis. The Court starts at the abstraction step,
`breaking apart Banana & Orange into its component parts. Morford’s Banana
`& Orange features two green rectangular panels, each seemingly attached to a
`vertical wall by masking tape. The panels are stacked on top of each other, with
`a gap between each. Roughly centered on each green panel is a fruit: an orange
`on the top panel and a banana on the lower panel. The orange is surrounded
`by masking tape, and a piece of silver duct tape crosses the orange
`horizontally. The banana is at a slight angle, with the banana stalk on the left
`side pointing up. The banana appears to be fixed to the panel with a piece of
`silver duct tape running vertically at a slight angle, left to right.
`Next, filtering. As stated above, no one can claim a copyright in ideas, so
`Morford cannot claim a copyright in the idea of affixing a banana to a vertical
`plane using duct tape. Nor can Morford claim a copyright in bananas or duct
`tape. See Folkens v. Wyland Worldwide, LLC, 882 F.3d 768, 775 (9th Cir. 2018)
`(holding that plaintiffs cannot claim copyrights in “idea[s] first expressed in
`
`
`Therefore, the Court will consider the expanded factual allegations concerning access made in
`Morford’s opposition.
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`nature,” which are “within the common heritage of humankind”); Norris Indus.,
`696 F.2d at 924 (holding that “functional components of useful articles” cannot
`claim copyright protection).
`While Morford is afforded no protection for the idea of a duct-taped
`banana or the individual components of his work, Morford may be able to claim
`some degree of copyright protection in the “selection, coordination, [and]
`arrangement” of these otherwise unprotectable elements. See Off Lease, 825 F.
`App’x at 726 (discussing copyrighted works “formed by the collection and
`assembling of preexisting materials . . . that are selected, coordinated, or
`arranged in such a way that the resulting work as a whole constitutes an
`original work of authorship”) (quoting 17 U.S.C. § 101)). In particular, Morford
`can claim some copyright protection in the combination of his choices in color,
`positioning, and angling. See Off Lease, 825 F. App’x at 727 (holding that
`copyright protection extended to “the outline, the [component’s] shape, and the
`elaborate color scheme”); see also Corwin v. Walt Disney Co., No. 6:02-cv-1377,
`2004 WL 5486639, at *16 (M.D. Fla. Nov. 12, 2004) (holding that an “artist’s
`selection as to how the [model pieces] were arranged in the painting, the colors
`associated with the elements, and the overall structure and arrangement of the
`underlying ideas” are protectable) (citing Leigh, 212 F.3d at 1216).
`Of course, there are only so many choices an artist can make in colors,
`positioning, and angling when expressing the idea of a banana taped to a wall.
`In general, this is called the merger doctrine—where the idea and the
`expression of that idea merge. See BUC Int’l, 489 F.3d at 1142 (holding that the
`merger doctrine “provides that ‘expression is not protected . . . where there is
`only one or so few ways of expressing an idea that protection of the expression
`would effectively accord protection to the idea itself’”) (quoting BellSouth, 999
`F.2d at 1442)). However, Cattelan did not argue that the merger doctrine
`applies (ECF No. 53 at 14 n.8), so the Court will not consider whether the
`merger doctrine precludes any finding of infringement here.
`Last, the comparison step. The Court finds, at the motion-to-dismiss
`stage, that Morford sufficiently alleges that there is similarity in the (few)
`protected elements of Banana & Orange. In both works, a single piece of silver
`duct tape runs upward from left to right at an angle, affixing a centered yellow
`banana, angled downward left to right, against a wall. In both works, the
`banana and the duct tape intersect at roughly the midpoints of each, although
`the duct tape is less centered on the banana in Morford’s work than in
`Comedian.
`Cattelan argues that the presence of additional elements in Banana &
`Orange—namely, an orange, the green background, and the use of masking
`tape borders—weigh against a finding of substantial similarity. (ECF No. 49
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`Case 1:21-cv-20039-RNS Document 56 Entered on FLSD Docket 07/06/2022 Page 11 of 11
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`at 13.) However, when determining copyright infringement, courts look to “the
`relative portion of the copyrighted work—not the relative portion of the
`infringing work[.]” See Peter Letterese and Assocs., Inc. v. World Inst. of
`Scientology Enters., 533 F.3d 1287, 1307 (11th Cir. 2008) (noting that
`otherwise defendants would be permitted to copy verbatim as long as they did
`not copy an entire work). In other words, “[t]he extent of copying must be
`assessed with respect to both the quantitative and the qualitative significance
`of the amount copied to the copyrighted work as a whole.” Id. (citing MiTek, 89
`F.3d at 1560 & n.26); see also Newman, 959 F.3d at 1302 (“Quantitatively
`insubstantial copying may still be actionable if it is qualitatively substantial.”).
`Here, while Banana & Orange contains additional elements that Morford does
`not allege were copied, Morford’s duct-taped banana constitutes half of his
`work, meaning that it is quantitatively significant to Banana & Orange.
`Moreover, given its prominent positioning in Banana & Orange, Morford’s
`banana is qualitatively significant as well. See Newman, 959 F.3d at 1310
`(holding that “[q]ualitative significance is often apparent on the face of the
`copied portion of a copyrighted work”) (citing Peter Letterese, 533 F.3d at 1315).
`Therefore, the alleged infringement of Morford’s banana is sufficient,
`quantitatively and qualitatively, to state a claim.
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`4. Conclusion
`As courts and commentators have recognized, the question of substantial
`similarity is largely a “problem of ‘line drawing.’” See generally Latele Tel., C.A.
`v. Telemundo Commc’ns Grp., LLC, No. 12-22539-CIV, 2015 WL 427817, at *10
`(S.D. Fla. Feb. 2, 2015) (Goodman, M.J.) (citing 4 Nimmer § 13.03[A] and
`Nichols v. Universal Pictures Co., 45 F.2d 119, 122 (2d Cir. 1930) (Hand, J.)). At
`the motion-to-dismiss stage, the Court need not decide exactly where to draw
`the line, but only that some plausible line exists. Therefore, after application of
`the abstraction-filtration-comparison test, the Court holds—at this stage in the
`litigation—that Morford has adequately alleged that Cattelan’s Comedian has a
`substantial similarity to the protected elements of Banana & Orange. For the
`reasons set out above, the Court denies the Defendant’s motion to dismiss.
`(ECF No. 49.)
`Done and ordered at Miami, Florida on July 6, 2022.
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`________________________________
`Robert N. Scola, Jr.
`United States District Judge
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