Croak v. Toyota Motor Sales, U.S.A., Inc. et al
Filing
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OPINION AND ORDER: For the foregoing reasons, the Court, in its Order dated December 14, 2015, granted defendants' motion to dismiss. The Clerk of the Court is hereby directed to enter final judgment dismissing plaintiff's Complaint with prejudice and to close this case. (As further set forth in this Opinion and Order.) (Signed by Judge Jed S. Rakoff on 3/31/2016) (mro)
Complaint (“Compl.”) ¶¶ 6, 12, ECF No. 1. The Sculpture, entitled
“Pegasus, Some Loves Hurt More Than Others,” is a mixed-media, lifesized work that was first exhibited in 1983 at the Otis-Parsons Art
Gallery in Los Angeles, California. Id. ¶¶ 1, 13. The Sculpture
depicts a winged, taxidermied horse that appears to be in the
process of breaking through the roof of a sleek lowrider, as if
about to take flight. 1 According to the Complaint, the Sculpture is
“world famous” and has been widely used, including in a poster for
the 1984 Olympic Arts Festival. Id. ¶ 14; Compl., Ex. 2. Plaintiff
attaches the following depiction of the Sculpture to his Complaint:
1
The Complaint does not describe the Sculpture at all beyond
identifying it as a “mixed-media, life-sized work.” Compl. ¶ 13.
However, plaintiff’s brief opposing the instant motion repeatedly
describes the horse in the Sculpture as “stuffed.” Pl.’s Mem. of Law
in Opp. to Defs.’ Mot. to Dismiss the Compl. at 1, ECF No. 1.
2
Compl., Ex. 1.
In 2014, defendant Toyota hired defendant Saatchi & Saatchi, an
international advertising agency, to create an advertising and media
campaign to promote the sale of Toyota vehicles. Compl. ¶¶ 8, 16. As
part of that campaign, Saatchi & Saatchi developed and produced a
television commercial that prominently features a massive, pink
stuffed animal –- specifically, a hybrid of a unicorn and Pegasus –strapped to the roof of a Toyota RAV4. Id. ¶ 17; Compl., Ex. 4. The
commercial portrays a father who, while driving his family through a
leafy suburb, narrates the scene, via voice-over, as follows:
This is Lady. She’s a unicorn. And a Pegasus. And why is
she strapped to the roof of my RAV4? Well if you have
kids, then you know why. Now the real question. Where’s
this going in the house? The RAV4. Toyota. Let’s go
places.
Decl. of Andrew H. Bart dated Oct. 30, 2015, Ex. A, ECF No. 16-1. 2
The commercial includes images of the family smiling and
laughing with one another, as well as a man on the sidewalk who
flashes the driver a knowing thumbs-up, which the driver
acknowledges with a nod and wave. Upbeat jazz plays in the
2
Though plaintiff only attaches a still frame of the allegedly
infringing commercial to his Complaint, the complete commercial
submitted by defendants is properly before the Court on this motion
to dismiss. See Dunn v. Sederakis, 602 F. App’x 33, 34 n.1 (2d Cir.
2015) (“On a motion to dismiss, a court may consider both: (a)
documents incorporated by reference into the complaint and (b)
unincorporated documents that are integral to the complaint and upon
which the complaint heavily relies.”).
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background. As the voice-over concludes, the slogan “Let’s make
today fun.” appears above the car.
Toyota also used an image taken from the commercial to create a
print advertisement. See Compl. ¶ 18. Toward the top of the print
advertisement, the same slogan (“Let’s make today fun.”) appears in
white letters. Plaintiff attaches the following reproduction of the
print advertisement to his Complaint:
Compl., Ex. 5.
4
In addition, Toyota created a display featuring the stuffed
animal at the 2015 Chicago Auto Show, see Compl. ¶ 19, a photograph
of which plaintiff attaches to his Complaint:
Compl., Ex. 6.
On September 11, 2015, plaintiff filed this action, bringing
one claim of copyright infringement under the Copyright Act of 1976
against both defendants, and one claim of “vicarious and/or
contributory copyright infringement” against Toyota.
In the absence of direct evidence of copying, copyright
infringement requires showing “(a) that the defendant had access to
the copyrighted work and (b) the substantial similarity of
protectible material in the two works.” Kregos v. Associated Press,
3 F.3d 656, 662 (2d Cir. 1993). Defendants do not dispute access on
this motion, instead moving for dismissal on the ground that the
allegedly infringing works are not “substantially similar” to
plaintiff’s Sculpture as a matter of law.
5
“The test for infringement of a copyright is of necessity
vague.” Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d
487, 489 (2d Cir. 1960). Works are substantially similar if an
“ordinary observer, unless he set out to detect the disparities,
would be disposed to overlook them, and regard [the] aesthetic
appeal as the same.” Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101,
111 (2d Cir. 2001) (internal quotation marks omitted). In applying
the test, courts ask whether “an average lay observer would
recognize the alleged copy as having been appropriated from the
copyrighted work,” Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996,
1001 (2d Cir. 1995) (internal quotation marks omitted), and
“compar[e] the contested design’s total concept and overall feel
with that of the allegedly infringed work . . . as instructed by our
good eyes and common sense,” Peter F. Gaito Architecture, LLC v.
Simone Dev. Corp., 602 F.3d 57, 66 (2d Cir. 2010) (internal
quotation marks omitted). “[I]n the end, [the] inquiry necessarily
focuses on whether the alleged infringer has misappropriated the
original way in which the author has ‘selected, coordinated, and
arranged’ the elements of his or her work.” Peter F. Gaito
Architecture, 602 F.3d at 66 (internal quotation marks omitted).
Though often a fact-intensive question, the Second Circuit has
“repeatedly recognized that, in certain circumstances, it is
entirely appropriate for a district court to resolve [substantial
similarity] as a matter of law, ‘either because the similarity
between two works concerns only non-copyrightable elements of the
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plaintiff’s work, or because no reasonable jury, properly
instructed, could find that the two works are substantially
similar.’” Id. at 63 (quoting Warner Bros. Inc. v. Am. Broad. Cos.,
720 F.2d 231, 240 (2d Cir. 1983)). Indeed, “[w]hen a court is called
upon to consider whether the works are substantially similar, no
discovery or fact-finding is typically necessary, because what is
required is only a visual comparison of the works.” Id. at 64
(internal quotation marks omitted).
Before embarking on the substantial similarity analysis, it is
critical to bear in mind what does not amount to infringement under
the Copyright Act. Specifically, because ideas are not protectible
under the Copyright Act, see 17 U.S.C. § 102(b), “the similarity
between two works must concern the expression of ideas, not the
ideas themselves.” Peter F. Gaito Architecture, 602 F.3d at 67
(“This principle, known as the ‘idea/expression dichotomy,’ ‘assures
authors the right to their original expression, but encourages
others to build freely upon the ideas and information conveyed by a
work.’” (quoting Feist Publ’ns., Inc. v. Rural Tel. Serv. Co., 499
U.S. 340, 349-50 (1991))). Without a doubt, “[t]he problem of
defining the boundaries of ‘idea’ can be as vexing as any other
aspect of substantial similarity,” as ideas can be defined at
varying levels of generality. 4 Melville B. Nimmer & David Nimmer,
Nimmer on Copyright § 13.03[B][2]. But there can be no question that
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plaintiff does not have a monopoly on all depictions of a Pegasus, 3
even those juxtaposed with the roof of an automobile, no matter the
form in which such juxtaposition is accomplished or the differences
in the artists’ creative choices and the resulting aesthetic appeal
of each work. 4 As the Second Circuit explained in a case in which an
3
Croak, of course, is not the first artist to have been inspired by
the Pegasus, one of the most oft-invoked beasts of Greek mythology.
See Thomas Bulfinch, Bulfinch’s Mythology 133 (Walking Lion Press
2006) (1855) (“Pegasus, being the horse of the Muses, has always
been at the service of the poets.”). Shakespeare, for one, preceded
him in Henry IV, Part I, when he compared Prince Harry taking his
saddle to “an angel dropped down from the clouds, To turn and wind a
fiery Pegasus, And witch the world with noble horsemanship.” William
Shakespeare, The First Part of King Henry the Fourth act 4, sc. 1.
Several centuries later, Longfellow penned Pegasus in Pound, an ode
to the Pegasus that appeared in the poet’s 1849 collection of poems.
Henry Wadsworth Longfellow, Pegasus in Pound, in The Seaside and the
Fireside (1849) (“Then, with nostrils wide distended, Breaking from
his iron chain, And unfolding far his pinions, To those stars he
soared again.”). But given that Pegasus was depicted on
Protocorinthian pottery dating back to the 7th Century B.C.E., both
Shakespeare and Longfellow may be considered latecomers as well. See
Betsey A. Robinson, Histories of Peirene 35 (2011). Conversely,
given modern genetic synthesis, it may only be a matter of time
before the Bronx Zoo displays a live example.
4
Plaintiff’s counsel conceded as much at oral argument on the motion
to dismiss, where the following colloquy took place:
THE COURT: Let’s assume for the sake of argument that
someone at Toyota goes to an art show and sees this or
sees a picture of it and says, That’s a great idea, a
Pegasus on a vehicle. We can . . . produce an ad with a
totally different feel. We’re going to not have a bloody
Pegasus straining to disassociate itself; we’re going to
take a sort of fluffy kind of kid-friendly Pegasus and
we’ll even add a little unicorn because you know how kids
love unicorns. And we’ll put it on one of our brand-new
vehicles to convey the idea of fun.
MR. KLEINMAN:
Sure.
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artist was alleged to have infringed a copyright in a photograph of
a couple holding eight puppies on a bench, “[i]t is not . . . the
idea of a couple with eight small puppies seated on a bench that is
protected, but rather [plaintiff’s] expression of this idea -- as
caught in the placement, in the particular light, and in the
expressions of the subjects -- that gives the photograph its
charming and unique character, that is to say, makes it original and
copyrightable.” 5 Rogers v. Koons, 960 F.2d 301, 308 (2d Cir. 1992);
see also Arden v. Columbia Pictures Indus., Inc., 908 F. Supp. 1248,
1259 (S.D.N.Y. 1995) (“Because the copyright law only protects the
expression of ideas, rather than ideas themselves, it is clear that
the idea of a repeating day, even if first conceived by plaintiff,
is not protectible.”).
If plaintiff’s infringement claim is to be viable, then, it
must be plaintiff’s expression of his idea –- including through the
selection and arrangement of the elements of his work -- that has
been misappropriated by defendants. Focusing here on such
THE COURT: So the fact that they took the idea would not
make them copyright infringers, would it?
MR. KLEINMAN: No, certainly not. But it’s the arrangement
and the positioning and selection of those two objects.
. . .
Transcript dated Dec. 10, 2015, at 11-12 (emphasis added).
5
In Rogers, the alleged infringer (the artist Jeff Koons) employed
the “identical expression of the idea that [plaintiff] created” and
was thus held to have infringed. Rogers, 960 F.2d at 308. But “had
[Koons] simply used the idea presented by the photo, there would not
have been infringing copying.” Id.
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expression, there is almost nothing similar between plaintiff’s
Sculpture, on the one hand, and defendants’ allegedly infringing
works, on the other. Indeed, the disparities between the works in
terms of their authors’ creative choices and their total concept and
overall feel overwhelm any superficial similarities.
Beginning with a comparison of the “Pegasus” component of the
works, plaintiff employed the stuffed body of what appears to be an
actual horse with wings affixed to it to create the Sculpture.
Plaintiff’s Pegasus is strikingly realistic and life-like. In
defendants’ works, by contrast, the Pegasus is a pink, smiling,
oversized stuffed animal. In the allegedly infringing commercial,
she is named “Lady.” Lady deviates from an actual horse (or a lifelike Pegasus, for that matter) in virtually all respects, including
appearance and posture. Defendants’ Pegasus is not remotely
realistic or life-like. It appears to be a child’s toy because it is
a child’s toy.
The vehicles in the works are also highly dissimilar. The
Sculpture features a vintage lowrider, 6 the back half of which is
bright red and the front half of which is blue. It exudes cool. The
6
Plaintiff’s use of a lowrider invokes a particular subculture. See
Sophia Kercher, Lowriding Culture Goes Global, N.Y. Times, Dec. 4,
2015, at ST12, http://www.nytimes.com/2015/12/06/fashion/lowridingculture-goes-global.html (“Lowriding, rooted in the Mexican-American
subculture, emerged in the ’40s and ’50s, when car customization
took off after World War II, and it hasn’t slowed since. It is
common for lowriders to have hydraulics that make the cars gyrate
and dance, plush velvet upholstery and murals that often reflect
images from Mexican culture . . . .”).
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RAV4 in defendants’ works by contrast is a modern, family-friendly
SUV in a glossy blue. Aside from the fact that both vehicles employ
a shade of blue and that both the lowrider in the Sculpture and the
RAV4 in the print advertisement are presented to viewers at an
angle, there is virtually nothing similar about the vehicles in the
works. No one could reasonably view them as sharing an aesthetic
appeal.
Plaintiff complains that comparing and contrasting these
elements of the works in isolation obscures the “glaringly obvious
similarit[y]” that the works share of a “winged-horse and [] its
arrangement/staging on top of an automobile.” Pl.’s Mem. of Law in
Opp. to Defs.’ Mot. to Dismiss the Compl. (“Pl.’s Opp.”) at 13, ECF
No. 18. In plaintiff’s telling, “the animal figure atop [each] car
. . . is staged and presented to the viewer in the exact same
manner.” Id. at 14. If that were correct, the outcome on defendants’
motion might have been different. The problem for plaintiff is that
while it is true that the (very different) Pegasus-like figures are
juxtaposed with the roofs of the (very different) vehicles in each
work, the similarities in presentation end there. The Pegasus in the
Sculpture is presented as bursting forcefully through the roof of a
now severely damaged car, as it unfurls its body in preparation for
flight. It radiates exertion, dynamism, and sheer power. In
contrast, defendants’ Pegasus is strapped to the intact roof of an
SUV and carries no suggestion of life, movement, or vitality.
Plaintiff asserts that the stuffed animal’s pose “strongly suggests
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the same freedom of movement that is depicted in Plaintiff’s Pegasus
Sculpture” and that the “overall look and feel of the [print] Ad
instantly gives the viewer the surreal impression that the horse is
in flight and transporting/guiding the RAV4.” Id. at 16. While this
is a creative characterization –- which conveniently disregards the
fact that the stuffed animal is strapped to the car 7 -- it is not an
accurate one and thus not a relevant one. Peter F. Gaito
Architecture, 602 F.3d at 64 (“In copyright infringement actions,
the works themselves supersede and control contrary descriptions of
them, including any contrary allegations, conclusions or
descriptions of the works contained in the pleadings.” (internal
quotation marks and citations omitted)). No reasonable jury would
share plaintiff’s self-serving view.
The settings of the works are strikingly different as well. The
smoke billowing in the background of the Sculpture is in stark
contrast to the sunny, suburban setting that defendants employ in
the allegedly infringing advertisements. And while the indoor
display at the Chicago Auto Show obviously lacks the idealized
7
Plaintiff dismisses the fact that the stuffed animal is tethered to
the RAV4 in the print advertisement as “hardly perceptible.” Pl.’s
Opp. at 16. To the contrary, the straps -- while not the focus of
the advertisement –- would be immediately perceptible to anyone
pausing over the advertisement even briefly. In addition, the
allegedly infringing commercial explicitly refers to the stuffed
animal being “strapped” to the roof of the narrator’s RAV4. And
while the stuffed animal does not appear strapped to the roof of the
car in the Chicago Auto Show display, the staging of the Pegasus and
the car in that setting remains radically different from that of the
Sculpture.
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suburban context of defendants’ commercial and print advertisement,
its surroundings also share nothing in common with the Sculpture.
Plaintiff objects that the Sculpture has been staged in various
settings -- not all of which are ominous and smoke-filled -- but
that assertion is outside the four corners of the Complaint and the
Court has no basis on which to infer that the Sculpture was
presented in settings similar to that of defendants’ works. 8
In a strained effort to make out a plausible case for
substantial similarity, plaintiff manufactures commonalities by
noting, for example, that both animals in the relevant works are
“stuffed,” that both are juxtaposed with hoods of cars that
“contrast[] sharply with [their] soft fur,” and that both have wings
that “are different colors than the rest of their respective
bodies.” Pl.’s Opp. at 14. As noted, the test for substantial
similarity is whether an “ordinary observer, unless he set out to
detect the disparities, would be disposed to overlook them, and
regard [the] aesthetic appeal as the same.” Yurman, 262 F.3d at 111.
In drumming up such “similarities” -- several of which amount to
mere wordplay -- plaintiff is seeking to turn that test on its head,
8
Plaintiff pleads that, in addition to those uses specifically cited
in the Complaint, the Sculpture has been the subject of “several
hundred other uses and mentions.” Compl. ¶ 14. But plaintiff does
not plead that the Sculpture lacks the billowing smoke in any of
these iterations, and the Court has no basis to infer as much. In
each of the three depictions of the Sculpture that plaintiff
attaches to his Complaint, smoke billows behind the Sculpture in an
indistinguishable way. In any case, even if the Court excluded the
works’ surroundings from the substantial similarity analysis, it
would reach the same result.
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asking the Court to focus on a laundry list of technical
similarities (as opposed to disparities) that an ordinary observer
would be disposed to overlook. But technical similarities that have
little to no effect on the aesthetic appeal of a given work, and
which pale in comparison to the works’ disparities, are of little
relevance to the analysis. See Dean v. Cameron, 53 F. Supp. 3d 641,
650 (S.D.N.Y. 2014) (“[T]he differences between each of
[plaintiff’s] works and [the allegedly infringing work] overwhelm
any superficial similarity.”); Segal v. Paramount Pictures, 841 F.
Supp. 146, 149 (E.D. Pa. 1993) (“[T]he existence of some common
features in the face of overwhelming differences between the works
is insufficient to show substantial similarity.”). Indeed, the
Pegasus in the Sculpture, while necessarily made of stuffing, is
plainly designed to give the “feel” of a living animal, whereas the
stuffed quality of the animal in defendants’ advertisements is
central to its depiction and message as a child’s toy.
Finally, no reasonable jury could find that the “total concept
and overall feel” of plaintiff’s Sculpture and the allegedly
infringing works are substantially similar. Defendants’ works –featuring a friendly-looking, oversized stuffed animal -- evoke
feelings of warmth, family, and fun. The mood of the works is lighthearted and playful. These associations are explicit in defendants’
commercial and -- though they must be considered standing alone 9 --
9
Plaintiff is correct that defendants cannot rely on the allegedly
infringing commercial to supply a frame of reference for the other
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implicit in the print advertisement and the Chicago Auto Show
display. This “total concept and overall feel” is dramatically
different from that of the Sculpture, which, on the view that
plaintiff favors, is a “celebration of the intrepid spirit, and
particularly the adventurous energy that is enabled by the modern
automobile.” Pl.’s Opp. at 2. The Sculpture evokes raw power,
independence, and escape. It depicts the supernatural by animating a
mythological creature, while defendants’ works are situated in the
real world. To be sure, different observers could reasonably
interpret the Sculpture in different ways. Some might see violence
where others perceive spirit. That is the nature of art. But no
reasonable juror would find the Sculpture light-hearted in nature,
evoking family and children.
Plaintiff, as if evaluating an entirely different set of works
than those before the Court, argues that “no ordinary observer could
reasonably conclude that the overall look and feel of [defendants’
print advertisement] conveys feelings of ‘togetherness, safety, and
comfort,’” and that, rather, “it is far more plausible that an
ordinary observer could conclude that this advertisement conveys the
same feelings of ‘escape’ and ‘the force of individual spirit’ that
Defendants contend are evoked by Plaintiff’s Sculpture.” Id. at 17.
allegedly infringing works, given that it cannot be assumed that
viewers of defendants’ print advertisement or the Chicago Auto Show
display were familiar with defendants’ commercial. The Court has not
conflated defendants’ works in its analysis, but rather found that
each is not substantially similar to the Sculpture on its own terms
and as a matter of law.
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Similarly, plaintiff submits that defendants’ works could “elicit
the same ‘desire to break free’ Defendants’ [sic] claim is evoked by
plaintiff’s Sculpture.” Id. at 18. Again, that plaintiff declares it
does not make it so. Conclusory rhetoric aside, no reasonable jury
would regard the total concept and overall feel of the works as
substantially similar to one another.
For that reason, and because an ordinary observer would not
regard the “aesthetic appeal” of the works at issue as the same,
Yurman, 262 F.3d at 111, or perceive defendants as having
“misappropriated the original way in which [plaintiff] ‘selected,
coordinated, and arranged’ the elements of his . . . work,” Peter F.
Gaito Architecture, 602 F.3d at 66, plaintiff’s copyright
infringement claim fails as a matter of law. Since “there can be no
contributory infringement absent actual infringement,” Faulkner v.
Nat’l Geographic Enters., 409 F.3d 26, 40 (2d Cir. 2005),
plaintiff’s vicarious and contributory infringement claims against
Toyota also fail as a matter of law. See BroadVision, Inc. v. Med.
Protective Co., 2010 WL 5158129, at *4 (S.D.N.Y. Nov. 23, 2010) (“A
party claiming vicarious liability must establish that direct
infringement occurred . . . .”).
For the foregoing reasons, the Court, in its Order dated
December 14, 2015, granted defendants’ motion to dismiss. The Clerk
of the Court is hereby directed to enter final judgment dismissing
plaintiff’s Complaint with prejudice and to close this case.
SO ORDERED.
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