Joshua ETS-HOKIN, Plaintiff-Appellant,
v.
SKYY SPIRITS INC., a Delaware corporation; Maurice Kanbar; Daniel Dadalt, aka Daniel Dadait, Defendants-Appellees, and
John P. Benson; Unidigital-TX; Loretta J. Needham; Needham, Defendants.
Joshua Ets-Hokin, Plaintiff-Appellee,
v.
Skyy Spirits Inc., a Delaware corporation; Maurice Kanbar, Defendants-Appellants, and
Daniel Dadalt, aka Daniel Dadait; Needham, Defendants.
No. 01-17411.
No. 02-15126.
United States Court of Appeals, Ninth Circuit.
Argued and Submitted January 16, 2003.
Filed March 14, 2003.
Christopher C. Welch, Newport, RI, for the plaintiff-appellant-appellee.
James Wesley Kinnear, Holme Roberts & Owen, LLP, San Francisco, CA, for the defendants-appellees-appellants.
Appeal from the United States District Court for the Northern District of California; Susan Yvonne Illston, District Judge, Presiding. D.C. No. CV-96-03690-SI.
Before SCHROEDER, Chief Judge, GOODWIN and CLIFTON, Circuit Judges.
SCHROEDER, Chief Judge.
This long-running litigation is fundamentally about how many ways one can create an advertising photograph, called a "product shot," of a blue vodka bottle. We conclude there are not very many. We therefore affirm the district court's summary judgment because the allegedly infringing photographs are not "virtually identical" as required upon application of the defensive doctrines of merger and scenes a faire. We agree fully with the district court that such defenses were appropriately invoked.
Indeed, we held as much when this case was previously before this court. See Ets-Hokin v. Skyy Spirits, Inc.,
In 1993, photographer Joshua Ets-Hokin took a series of photographs of Skyy's iconic blue vodka bottle for use in a marketing campaign. Skyy later hired two other photographers to photograph the bottle and used these photographs in advertising and other marketing materials. In 1996, Ets-Hokin filed this action against Skyy alleging infringement of his copyrights in the 1993 photographs.
The district court originally granted summary judgment in favor of Skyy on the ground that Ets-Hokin's photographs were not sufficiently original to merit copyright protection. We reversed, holding that the photographs met the minimal threshold of originality required for copyright protection, but noted that such protection was limited by the doctrines of merger and scenes a faire, which apply because of the narrow range of artistic expression available in the context of a commercial product shot. See Ets-Hokin,
While the previous panel's majority opinion reflects that the applicable defenses were not before the court at that stage of the litigation, Judge Dorothy Nelson's dissent was prescient: "[A]s a matter of law, legal defenses such as scenes a faire and the merger doctrine prevent Ets-Hokin from prevailing on his copyright infringement claims." Ets-Hokin,
In this appeal, Ets-Hokin argues that the district court's decision is inconsistent with the principle recognized in Burrow-Giles Lithographic Co. v. Sarony,
Ets-Hokin argues that Skyy's photographs are substantially similar to those in which he holds the copyrights and that they are therefore infringing. However, his claim fails upon application of the defensive doctrines of merger and scenes a faire. As we previously explained:
Under the merger doctrine, courts will not protect a copyrighted work from infringement if the idea underlying the work can be expressed only in one way, lest there be a monopoly on the underlying idea. In such an instance, it is said that the work's idea and expression "merge." Under the related doctrine of scenes a faire, courts will not protect a copyrighted work from infringement if the expression embodied in the work necessarily flows from a commonplace idea....
Ets-Hokin,
Though the Ets-Hokin and Skyy photographs are indeed similar, their similarity is inevitable, given the shared concept, or idea, of photographing the Skyy bottle. When we apply the limiting doctrines, subtracting the unoriginal elements, Ets-Hokin is left with only a "thin" copyright, which protects against only virtually identical copying. See Apple,
This principle has long been a part of copyright law. Indeed, as Judge Learned Hand observed in the context of stock dramaturgy: "The less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly." Nichols v. Universal Pictures Corp.,
Skyy's photographs are not virtually identical to those of Ets-Hokin. Indeed, they differ in as many ways as possible within the constraints of the commercial product shot. The lighting differs; the angles differ; the shadows and highlighting differ, as do the reflections and background. The only constant is the bottle itself. The photographs are therefore not infringing.
Skyy cross-appeals the denial of attorney's fees it sought under 17 U.S.C. § 505 for fees incurred after remand from the Ninth Circuit. The Supreme Court identified the following non-exclusive list of factors to guide the award or denial of attorney's fees: "frivolousness, motivation, objective unreasonableness (both in the factual and in the legal components of the case), and the need in particular circumstances to advance considerations of compensation and deterrence." Fogerty v. Fantasy, Inc.,
The only factor to weigh in Skyy's favor is the degree of success obtained. The remaining factors are either neutral or favor the denial of fees. "A district court's fee award does not constitute an abuse of discretion unless it is based on an inaccurate view of the law or a clearly erroneous finding of fact." Fantasy, Inc.,
AFFIRMED.