Possibility of access to the artwork insufficient to prove access itself, says judge
A Miami federal judge has junked a lawsuit against Italian artist Maurizio Cattelan claiming copyright infringement for his Miami art fair sculpture – a banana on the wall with duct tape across it.
In Morford v. Cattelan, U.S. District Judge Robert Scola of the Southern District of Florida ruled against Joe Morford, a concept artist from California who developed an artwork entitled Banana and Orange in California in 2001. The artwork – Banana and Orange – consisted of a plastic orange and banana duct-taped to two bright green panels, with the orange placed above the banana on the wall.
Eighteen years later, Cattelan duct-taped a banana to a wall at the Art Basel Miami art show, named it “Comedian”, and charged US$120,000 for the ‘sculpture’, which Cattelan said “was meant to be ‘simple’, ‘banal’, and to reflect ‘absurdity’.”
Morford claimed Cattelan had copied Banana and Orange, which was posted on Facebook, Youtube, and a blog and had thus been available online since 2008. Cattelan denied being aware of either Banana and Orange or Morford before the lawsuit. He testified instead that his Comedian had been inspired by his previous work depicting a banana hanging from a billboard with red duct tape and displayed in the New York Magazine in 2018.
Scola dismissed Morford’s lawsuit in a summary judgment on three points:
“A plaintiff cannot prove access only by demonstrating that a work has been disseminated in places or settings where the defendant may have come across it,” Scola wrote. “[Mere] availability, and therefore possibility of access, is not sufficient to prove access.”
The judge observed that a single Facebook post, Youtube video, and blog post displaying Banana and Orange by themselves failed to demonstrate that Morford’s artwork “enjoyed any particular or meaningful level of popularity” or that Morford and Cattelan were connected in any other manner.
On the contrary, Scola observed that Morford’s Banana and Orange remained “a relatively obscure work with very limited publication or popularity”.
While this ruling would have been enough to dismiss the case against Cattelan, Scola delved deeper into the protectible elements of Banana and Orange to determine whether any of them had been copied in Comedian.
After reviewing both artworks, Scola concluded that the biggest and “most obvious” element of both artworks – the banana fixed to a vertical surface with a piece of silver duct tape “running vertically at a slight angle” – was an expression not protectible under the merger doctrine.
“This doctrine captures the understanding that ‘some expression may be so intrinsic to the communication of an idea – or procedure, process, etc. – that it is considered to have ‘merged’ into the idea,” Scola said. Ideas could not be the subject of copyright.
“[Under] the merger doctrine, expression is not protected in those instances 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,” Scola added, citing case law. He agreed with Cattelan’s lawyers that “the idea of duct-taping a banana to a vertical surface and the expression are essentially one and the same”.
While Banana and Orange had some protectible elements, including the solid green panel both eponymous plastic fruits were duct-taped and mounted on, Scola said that taken altogether, Cattelan’s Comedian was not similar enough to Morford’s Banana and Orange to support a finding of legal copying.
Finally, Scola said that Morford failed to rebut Cattelan’s defence of independent creation, which he proved with a “detailed description of the circumstances under which he created Comedian” corroborated by one of his employees.
“Therefore, even if Morford could prove factual and legal copying through reasonable opportunity for access and substantial similarity, the independent creation doctrine would prevent his recovery against Cattelan for copyright infringement,” Scola said.
