Jessica McKinney | Bloomberg Law LaChapelle v. Fenty, No. 11-CV-00945, 2011 BL 192775 (S.D.N.Y. July 19, 2011) In an action brought by the photographer David LaChapelle against Robyn Rihanna Fenty, professionally known as Rihanna, and other defendants in connection with Rihanna's S&M music video, the U.S. District Court for the Southern District of New York denied defendants' motion to dismiss the copyright infringement claim, finding that LaChapelle sufficiently alleged that his copyrighted photographs contain protectable elements and that the S&M video is substantially similar to those elements. The court found the record insufficient to rule on defendants' fair use defense as a matter of law, but noted that defendants' main argument—i.e., that if they had used LaChapelle's photographs, it was to "critic[ize] how Rihanna is treated by the press and comment on her relationship with the media"—was "misguided." LaChapelle at 25. However, the court dismissed LaChapelle's federal trade dress infringement claim, as well as his state law claims of unfair competition and unjust enrichment. LaChapelle's Photographs and the S&M Video As alleged in the complaint, plaintiff David LaChapelle is an "artist, photographer, and director" with a "worldwide reputation for his unique body of work in fashion and editorial photography, defined by its saturating, vibrant colors and theatrical, often surreal composition." LaChapelle at 2. LaChapelle filed suit against Rihanna, Island Def Jam Music Group, Melina Matsoukas, and Black Dog Films, Inc., alleging that Rihanna's S&M music video (the "Video") copied protected elements from eight of his photographs (the "Photographs"). In addition to the copyright infringement claim, LaChapelle also asserted a federal trade dress infringement claim and state law claims of unfair competition and unjust enrichment. LaChapelle claimed that the defendants were aware of his work, as he filmed Rihanna in 2007 for an MTV advertisement and photographed Mariah Carey in 2010 for Def Jam. In addition, Rihanna (or persons acting on her behalf) purportedly asked Matsoukas to make a "LaChapelle-esque music video," and the storyboards for the Video allegedly contained prints of the Photographs. Id. at 3. The defendants moved to dismiss the complaint. Copyright Infringement Claim Survives Motion to Dismiss To prove copyright infringement, "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." Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir. 1995). LaChapelle submitted evidence of his copyrights in the Photographs, and the court readily found that he sufficiently alleged actual copying through both direct and indirect evidence. Thus, the main issue before the court was whether the Video was substantially similar to the protectable elements of the Photographs. In deciding this question, the court did not analyze each of the eight Photographs individually, but rather, "consider[ed] a limited sample of the Photographs to show that substantial similarity plausibly exists between the Video and the Photographs generally." LaChapelle at 20 n.77. The court initially noted that "the common theme of S&M and those elements that 'flow naturally and necessarily from the choice' of S&M as a subject" are not protectable elements of the Photographs. Id. at 19 (quoting Bill Diodato Photography, LLC v. Kate Spade, LLC, 388 F. Supp. 2d 382, 392 (S.D.N.Y. 2005)). In particular, the court found the following elements unprotectable: "leather- or latex-clad women, whips, ball gags, people in restraints, men on leashes, and other aggressive, sexually-charged motifs." Id. The court determined, however, that LaChapelle's decisions in creating and rendering the Photographs—such as his choices in lighting, poses, and angles, and his selection and arrangement of "the themes, props, settings, wardrobes and colors" of his subjects—was protectable. Id. The court next compared certain scenes in the Video to three of the Photographs: (1) the Video's "Pink Room Scene" and LaChapelle's Striped Face; (2) the Video's "Pink Hood Scene" and LaChapelle's Latex; and (3) the Video's "Press Scene" and LaChapelle's Noisy Fame. The court held that in each case, LaChapelle sufficiently alleged that the Photographs contain protectable elements and that the Video is substantially similar to those elements. — "Pink Room Scene" and Striped Face Photograph While the court found that certain aspects of the works—namely, their depiction of women in living room settings with bound men on the floor—flow naturally from the underlying idea of an S&M-inspired domestic scene, and thus are neither protectable nor probative of substantial similarity, it pointed to numerous similarities that do not necessarily follow from that idea. For example, both works feature, among other things, hot-pink and white-striped walls; a hot-pink ceiling; two windows with hot-pink casings and interior framework on the back wall; a hot-pink couch under the windows; women with frizzy red wigs; one woman posed on top of furniture; and a man bound in black tape. The court also found the total concept and feel of the works to be similar, in that both "share the frantic and surreal mood of women dominating men in a hyper-saturated, claustrophobic domestic space." LaChapelle at 22. The court discounted the differences cited by the defendants, including "the pattern on the walls, the shape of the room, the taped man's clothing and positioning, the focus on Rihanna over the rest of the subjects, and the absence of witches," noting that "'by definition copying need not be of every detail so long as the copy is substantially similar to the copyrighted work.'" Id. (quoting Novelty Textile Mills, Inc. v. Joan Fabrics Corp., 558 F.2d 1090, 1093 (2d Cir. 1977)). — "Pink Hood Scene" and Latex Photograph The court observed that each work features a woman wearing a latex hood, which is a non-protectable element because it is symbolic of the underlying idea of S&M attire. The court concluded, however, that other actionable similarities existed, such as: "the woman in profile from close- up, with the frame cropped tight on her head; striking, direct lighting with no shadow; a highly saturated blue background; and the woman's mouth open and a small object on her tongue." LaChapelle at 22. — "Press Scene" and Noisy Fame Photograph The court noted that the idea of these works is to portray "a female celebrity helpless before the predatory gaze of the media," and that certain elements—e.g., harsh illumination of the women as if by flashbulbs or a spotlight, and peripheral cameras, microphones, photographers, and reporters—are unprotectable because they flow naturally from the idea. LaChapelle at 23. The court pointed to other similarities between protectable elements, however. For instance, "both works also feature the woman with her back against a bright teal-blue wall, upon which the elbow of her raised arm casts a sharp dark shadow," which "contribute[s] significantly to the overall feel . . . the teal-blue background is vivid and consumes most of the frame in both works, thereby establishing an unusual, even ethereal mood, while the presence of a wall directly behind the woman emphasizes and intensifies her victimization." Id. at 24. The court rejected defendants' argument that the presence of a transparent plastic sheet in "Press Scene" distinguished it from Noisy Fame. "'[A]dding on' to a copy of protected expression," the court explained, "does not, in itself, negate the plausibility of substantial similarity." Id. at 24-25. Fair Use Defense "Unavailing" In support of their fair use defense to LaChapelle's copyright infringement claim, defendants mainly argued that, if they had used the Photographs, it was to "critic[ize] how Rihanna is treated by the press and comment on her relationship with the media." LaChapelle at 25. The court observed that this argument was "misguided," and citing the recent decision in Cariou v. Prince, No. 08-CV-11327, 2011 BL 91626 (S.D.N.Y. Mar. 18, 2011), stated: "'All of the precedent this Court can identify imposes a requirement that the new work in some way comment on, relate to the historical context of, or critically refer back to the original works.'" Id. (quoting Cariou, 2011 BL 91626 at *6). For further analysis of the Cariou opinion, see Richard Prince's Paintings Not a Fair Use of Patrick Cariou's Copyrighted Photographs, S.D.N.Y. Rules, Bloomberg Law Reports – Intellectual Property, Vol. 5, No. 15 (Apr. 11, 2011). While the court noted that the record was insufficient to decide the question of fair use as a matter of law, it also stated that the defense was "unavailing." LaChapelle at 26. "Commenting on and criticizing Rihanna's treatment by the media is unrelated to the Photographs," the court elaborated, "and does not require copying protectible elements of LaChapelle's work." Id. at 25. The court therefore denied defendants' motion to dismiss LaChapelle's copyright infringement claim. Remaining Claims Dismissed The court dismissed LaChapelle's federal trade dress infringement claim and state law claims of unfair competition and unjust enrichment, however. The court determined that LaChapelle's trade dress claim ran afoul of Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), insofar as he alleged that viewers mistakenly believed he was involved in the Video's "creation," i.e., that he was the "'author of [the] idea[s], concept[s], or communication[s] embodied [therein].'" LaChapelle at 26 (quoting Dastar, 539 U.S. at 29). The unfair competition claim under New York law was dismissed for the same reason, as such claims mirror those asserted under Section 43(a) of the Lanham Act (which encompasses federal trade dress claims). Finally, although none of the parties addressed the unjust enrichment claim in their briefs, the court noted that the claim was "based solely on defendants' copying of  protected expression in the Photographs," and as such, was preempted by Section 301 of the Copyright Act. Disclaimer This document and any discussions set forth herein are for informational purposes only, and should not be construed as legal advice, which has to be addressed to particular facts and circumstances involved in any given situation. Review or use of the document and any discussions does not create an attorney-client relationship with the author or publisher. 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