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Noted photographer and music video director David LaChapelle's claims of infringement of his works in a video by R&B singer Rihanna sufficiently established claims of copyright infringement to avoid a motion to dismiss the claims under Rule 12(b)(6), the U.S. District Court for the Southern District of New York ruled July 20 (LaChapelle v. Fenty, S.D.N.Y., No. 1:11-cv-00945-SAS, 7/20/11).
Partially denying a motion to dismiss for failure to state a claim, the court, however, did dismiss a trade dress infringement claim and state law claims as mere repackaging of the copyright claims.
S&M Photographs Used as Models for Video Scenes
David LaChapelle is a American photographer, fashion and advertising director, and director and producer of films, videos, and other theatrical programs. Robyn Rihanna Fenty is a Barbadian rhythm and blues singer and recording artist known popularly as “Rihanna.” LaChapelle and Rihanna worked together on at least one occasion, in a 2007 film shoot for MTV.
In late 2010, Island Def Jam Music Group released Rihanna's fifth studio album, Loud and in January 2011, a single from that album, “S&M.” Malina Matsoukas directed a music video produced by Black Dog Films Inc., which was released in February to promote the single.
During the production of the video, Rihanna indicated her intent to make a “LaChapelle-esque music video,” and the producers used prints of LaChapelle works in creating a storyboard for the video. According to LaChapelle, the video copied protected elements of his works, including eight specific photographs.
LaChapelle sued Rihanna, Def Jam, Matsoukas, and Black Dog, alleging copyright infringement and trade dress infringement under federal law, as well as unfair competition and unjust enrichment under New York state law.
Rihanna and the other defendants moved for dismissal under Fed. R. Civ. P. 12(b)(6) for failure to state a claim.
Judge Shira A. Scheindlin first determined that LaChapelle had adequately alleged actual copying of the photographs by the defendants, complete with circumstantial evidence of access. The court said:
LaChapelle alleges he does not “simply observe[ ] a pre-existing scene and mechanically record[ ] it.” Rather, he “selects and orchestrates the themes, props, settings, wardrobes and colors” of his photographic subjects, while also controlling the “angles, poses and lighting.” Similar allegations supported the court's finding in Mannion [v. Coors Brewing Co., 377 F. Supp. 2d 444, 75 USPQ2d 1529 (S.D.N.Y. 2005) (143 PTD, 07/27/05)] that a photograph contained original elements. In that case, a photograph was taken from a low angle, featuring a man wearing a white T-shirt, athletic pants, and jewelry, posed against a cloudy sky. The court held that the “relatively unusual angle and distinctive lighting,” “posing man against sky,” with a wardrobe and look that the subject adopted at the photographer's express instruction, all contributed to the photograph's originality that was protectible against copyright infringement. Because LaChapelle alleges he made comparable decisions in creating and rendering the Photographs, he successfully alleges that they contain protectible elements.
The court then reviewed some instances in which LaChappelle alleged that the video had appropriated protectable expression to determine whether there was substantial similarity between LaChapelle's work and the defendant's videos.
For example, the LaChapelle work “Striped Face” and the video's “Pink Room Scene” are similar in theme, but also contain similar elements that do not necessarily flow from the concept, the court said. Furthermore, to the extent that there were differences between the two also did not preclude a finding of substantial similarity. Quoting from Novelty Textile Mills Inc. v. Joan Fabrics Corp., 558 F.2d 1090, 195 USPQ 1 (2d Cir. 1977), the court said, “by definition copying need not be of every detail so long as the copy is substantially similar to the copyrighted work.”
Given the similarities—“both works share the frantic and surreal mood of women dominating men in a hyper-saturated, claustrophobic domestic space”—the court said that there was a prima facie establishment of sufficient similarity.
The court reached similar conclusions with respect to the LaChapelle's works “Latex,” and “Noisy Fame.” Comparing “Noisy Fame” and the video scene “Press Scene,” both depicting a celebrity accosted by members of the press, the court said:
The specific choices concerning staging and color are not necessary to express the concept of a helpless female celebrity being preyed upon by the media. Moreover, they contribute significantly to the overall feel of the image: 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.
The addition of other decorative elements in the video did not necessarily void such similarities, the court said.
Turning to the defendants' assertion of fair use as a defense to infringement, the court said that the “defendants' central argument on this point is misguided.” The fair use argument was based on the proposition that LaChapelle's works were used to comment on the treatment of Rihanna at the hands of the press.
“Commenting on and criticizing Rihanna's treatment by the media is unrelated to the Photographs and does not require copying protectible elements of LaChapelle's work,” the court said. Thus, this defense was not available against LaChapelle's claim.
Furthermore, according to the court, scenes in the video were sufficiently similar to the photographs to establish a prima facie case of actual copying.
However, the court did grant the defendants' motion with respect to the trade dress infringement claim and the unfair competition claims, calling them out as a “successful repackag[ing]” of the copyright infringement claim.
Thus, the court denied the defendants' motion to dismiss with respect to the copyright infringement claims but granted the motion with respect to the other claims.
LaChapelle was represented by Debra Anne Mayer of Shatzkin & Mayer, New York. Rihanna was represented by Brad David Rose of Pryor Cashman, New York. Matsoukas and Island Def Jam Music Group were represented by Amanda Marie Leith of Levine, Sullivan, Koch & Schultz, New York. Black Dog Films was represented by Thomas Anthony Catalano of Lester, Schwab, Katz & Dwyer, New York.
By Anandashankar Mazumdar
Opinion at http://pub.bna.com/ptcj/1100945Jul20.pdf
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