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Lawsuit Could Clarify What Is Original in the Art World

By Kyle-Beth Hilfer
September 29, 2006

It is a well-settled copyright axiom that only an original expression of an idea is protectable. In the world of fine art, however, the concept of 'original expression' is often too vague to be defined. Dale Chihuly, a world famous glass artist known for designs inspired by sea life, filed a lawsuit in October 2005 that may clarify the concept. He is fighting to protect his distinctive style of glass art in the U.S. District Court for the Western District of Washington. Chihuly has accused former employee Brian Rubino of producing glass sculptures that infringe Chihuly's copyright-protected glass works. The suit also asserts that another individual, Robert Kaindl, is selling Rubino's copycat sculptures at prices below market value, thus injuring the market value of true Chihuly sculptures.

At the heart of the dispute is whether Chihuly's style of glass blowing is sufficiently original to be protected by copyright law. Chihuly depicts objects from nature in elaborate, lopsided shapes. The complaint discusses that the off-center nature of his sculptures, in particular, is distinctive. The defendants' counterclaim, filed in May 2006, contends that they are using methods of glass blowing that have been around for centuries and are not original. They claim that the lawsuit is Chihuly's attempt to monopolize the glass blowing market behind a smokescreen of copyright law.

The pleadings also question the authorship of Chihuly's works. Chihuly has been unable to blow glass since the 1970s when he was injured in a car accident. Nonetheless, Chihuly contends that Rubino worked for him, partly as an employee and then as an independent contractor, but always under Chihuly's direction and control, creating only works for hire.

Rubino, on the other hand, is asking the court to declare him the co-author of multiple Chihuly works and award him lost profits. Rubino claims that he never received more than minimal direction from Chihuly, and in fact, any glass sculptures made while working for Chihuly were really his own creations. Rubino has submitted evidence of Chihuly's lack of control in the form of a telefax drafted by Chihuly. The telefax contains some vague sketches of a piece to be blown and states, 'Here's a little sketch but make whatever you want.' Rubino and Kaindl also claim that Chihuly has routinely allowed others to sign his name to 'Chihuly' works, an allegation that Chihuly vociferously denies. If Rubino can convince the court that Chihuly is not really the author of his famous works, it could fatally damage Chihuly's claims and his reputation.

The lawsuit includes claims of copyright infringement, trademark infringement, trademark dilution, violation of the Washington Consumer Protection Act ('WCPA'), civil conspiracy, breach of contract, and intentional interference with contractual relations. In January 2006, the District Court denied the defendants' motion to dismiss, with the exception of the WCPA claims and trademark dilution claims. It dismissed the WCPA claim as being pre-empted by federal copyright law. It also dismissed the trademark dilution claims because the plaintiff corporations were not the trademark owners, but gave the plaintiffs the opportunity to cure the defect through an amended complaint. Subsequently, Chihuly has been added individually as a named party to the suit.

Two cases from the Ninth Circuit, both reported in 2003, serve as important potential precedents to guide the fact-finder in the Chihuly matter. First, in ETS-Hokin v. Skyy Spirits Inc., 323 F.3d 763 (9th Cir. 2003), the Ninth Circuit upheld the copyrightability of photographic product shots of Skyy Vodka bottles, but held the copyright to be narrow in scope. As a defense to the infringement claim, the court invoked the 'merger' and 'sc'nes ' faire' doctrines. Regarding 'merger,' the court explained that if there is only one way to express an idea, the idea and its expression merge, and the courts will not grant a monopoly on the underlying idea or protect it from infringement. Similarly, regarding the 'sc'nes ' faire' doctrine (French for 'scenes which must be done'), the court ruled out protection from infringement 'if the expression embodied in the work necessarily flows from a commonplace idea' (ETS-Hokin v Skyy Spirits Inc., 225 F.3d 1068 (9th Cir. 2000) and upheld in ETS-Hokin v. Skyy Spirits Inc., 323 F.3d 763 (9th Cir. 2003)).

Applying these doctrines to the sets of photographs at issue, the court noted their similarities, but called them 'inevitable' given that both sets of photographs were of the same subject, namely the uncopyrightable Skyy vodka bottle. The court went on to conclude that if all the 'sc'nes ' faire' or public domain, unoriginal elements were removed from the photographs, the plaintiff was 'left with only a 'thin' copyright which protect[ed] against only virtually identical copying.' Defendants' photographs, while of the same subject, namely the uncopyrightable Skyy vodka bottle, were not virtually identical, varying in their lighting, angles, shadows, highlighting, and reflections.

Only 1 week later, the Ninth Circuit issued another decision, Satava v. Lowry, 323 F.3d 805 (9th Cir. 2003), that applied the same concepts in a case involving glass sculptures. The court sought to 'locate the faint line between unprotected idea and original expression ' [and] decide whether an artist's lifelike glass-in-glass sculptures of jellyfish are protectable by copyright.' Citing to ETS-Hokin and other landmark precedent such as Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (dealing with whether a telephone directory was protected by copyright law), the court concluded that the plaintiff's glass-in-glass sculptures of jellyfish were composed predominantly of unprotectable elements.

The Satava court explained that glass-in-glass sculpture is an unprotected 'centuries-old art form' where an inner glass sculpture is encased in an outer glass shroud. In addition, the court noted that many characteristics of Satava's sculptures were innate to jellyfish, such as tendril-like tentacles, rounded bells, bright colors, or even the vertical placement of the jellyfish in the sculpture since
jellyfish naturally swim vertically in real life. The court went on to state that encasing a jellyfish in a glass sculpture is not sufficiently original to warrant protection because 'clear glass is the most appropriate setting for an aquatic animal.' Neither the proportion of the inner jellyfish sculpture to the outer glass sculpture nor the shape of the outer shroud was worthy of protection, according to the court, since each was standard for glass-in-glass sculpture.

The court noted that a combination of unprotectable elements could qualify for copyright protection if 'those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.' Satava's sculpture, however, '[fell] short of this standard ' [and] lack[ed] the quantum of originality needed to merit copyright protection.' The court refused to grant an injunction that 'effectively would give Satava a monopoly on lifelike glass-in-glass sculptures of single jellyfish with vertical tentacles.'

The court did acknowledge a 'thin' copyright in certain artistic contributions to Satava's sculptures, such as the distinctive curls of tendrils, the arrangement of colors, or the unique shape of the jellyfish bells. The court concluded that 'Satava may prevent others from [virtually identically] copying the original features he contributed, but he may not prevent others from copying elements of expression that nature displays for all observers, or that the glass-in-glass medium suggests to all sculptors ' These ideas, first expressed by nature, are the common heritage of humankind, and no artist may use copyright law to prevent others from depicting them.'

Conclusion

Taken as a package, the Ninth Circuit ETS-Hokin and Satava cases present formidable obstacles for Chihuly. The ETS-Hokin case explained that standard elements of sc'nes ' faire must be subtracted out of a piece of art before examining what artistic elements might be protected by the thin copyright that remains. Satava applied this principle to the glass blowing world and is a potential landmine for Chihuly's case. Chihuly, like Satava, is allegedly using centuries-old techniques of glass blowing to create works inspired by nature. Chihuly will have to demonstrate that his art should be protected by more than a 'thin' copyright or that the alleged infringers have virtually identically copied his work. The Chihuly court will have to wrestle with questions of fact as to the scope of any copyright held by Chihuly and whether the defendants have virtually identically copied specific works created by Chihuly, or were merely influenced by Chihuly in the same way that Impressionist painters, for example, influenced one another.

Although the press has reported volatile settlement discussions, the Chihuly case is expected to go to trial later this year. The case could have broad implications for the art world in its discussion of originality and its delineation of what aspects of artwork can be protected by copyright law.


Kyle-Beth Hilfer specializes in advertising, marketing, intellectual property, and licensing law. She has represented art licensors, licensees, and agents and has served as an arbitrator in cases involving art disputes. Hilfer also advises clients regarding advertising, promotions, trademarks, copyrights, licensing, new media, and interactive and multimedia technology issues in both off-line and Internet settings.

It is a well-settled copyright axiom that only an original expression of an idea is protectable. In the world of fine art, however, the concept of 'original expression' is often too vague to be defined. Dale Chihuly, a world famous glass artist known for designs inspired by sea life, filed a lawsuit in October 2005 that may clarify the concept. He is fighting to protect his distinctive style of glass art in the U.S. District Court for the Western District of Washington. Chihuly has accused former employee Brian Rubino of producing glass sculptures that infringe Chihuly's copyright-protected glass works. The suit also asserts that another individual, Robert Kaindl, is selling Rubino's copycat sculptures at prices below market value, thus injuring the market value of true Chihuly sculptures.

At the heart of the dispute is whether Chihuly's style of glass blowing is sufficiently original to be protected by copyright law. Chihuly depicts objects from nature in elaborate, lopsided shapes. The complaint discusses that the off-center nature of his sculptures, in particular, is distinctive. The defendants' counterclaim, filed in May 2006, contends that they are using methods of glass blowing that have been around for centuries and are not original. They claim that the lawsuit is Chihuly's attempt to monopolize the glass blowing market behind a smokescreen of copyright law.

The pleadings also question the authorship of Chihuly's works. Chihuly has been unable to blow glass since the 1970s when he was injured in a car accident. Nonetheless, Chihuly contends that Rubino worked for him, partly as an employee and then as an independent contractor, but always under Chihuly's direction and control, creating only works for hire.

Rubino, on the other hand, is asking the court to declare him the co-author of multiple Chihuly works and award him lost profits. Rubino claims that he never received more than minimal direction from Chihuly, and in fact, any glass sculptures made while working for Chihuly were really his own creations. Rubino has submitted evidence of Chihuly's lack of control in the form of a telefax drafted by Chihuly. The telefax contains some vague sketches of a piece to be blown and states, 'Here's a little sketch but make whatever you want.' Rubino and Kaindl also claim that Chihuly has routinely allowed others to sign his name to 'Chihuly' works, an allegation that Chihuly vociferously denies. If Rubino can convince the court that Chihuly is not really the author of his famous works, it could fatally damage Chihuly's claims and his reputation.

The lawsuit includes claims of copyright infringement, trademark infringement, trademark dilution, violation of the Washington Consumer Protection Act ('WCPA'), civil conspiracy, breach of contract, and intentional interference with contractual relations. In January 2006, the District Court denied the defendants' motion to dismiss, with the exception of the WCPA claims and trademark dilution claims. It dismissed the WCPA claim as being pre-empted by federal copyright law. It also dismissed the trademark dilution claims because the plaintiff corporations were not the trademark owners, but gave the plaintiffs the opportunity to cure the defect through an amended complaint. Subsequently, Chihuly has been added individually as a named party to the suit.

Two cases from the Ninth Circuit, both reported in 2003, serve as important potential precedents to guide the fact-finder in the Chihuly matter. First, in ETS-Hokin v. Skyy Spirits Inc ., 323 F.3d 763 (9th Cir. 2003), the Ninth Circuit upheld the copyrightability of photographic product shots of Skyy Vodka bottles, but held the copyright to be narrow in scope. As a defense to the infringement claim, the court invoked the 'merger' and 'sc'nes ' faire' doctrines. Regarding 'merger,' the court explained that if there is only one way to express an idea, the idea and its expression merge, and the courts will not grant a monopoly on the underlying idea or protect it from infringement. Similarly, regarding the 'sc'nes ' faire' doctrine (French for 'scenes which must be done'), the court ruled out protection from infringement 'if the expression embodied in the work necessarily flows from a commonplace idea' ( ETS-Hokin v Skyy Spirits Inc. , 225 F.3d 1068 (9th Cir. 2000) and upheld in ETS-Hokin v. Skyy Spirits Inc., 323 F.3d 763 (9th Cir. 2003)).

Applying these doctrines to the sets of photographs at issue, the court noted their similarities, but called them 'inevitable' given that both sets of photographs were of the same subject, namely the uncopyrightable Skyy vodka bottle. The court went on to conclude that if all the 'sc'nes ' faire' or public domain, unoriginal elements were removed from the photographs, the plaintiff was 'left with only a 'thin' copyright which protect[ed] against only virtually identical copying.' Defendants' photographs, while of the same subject, namely the uncopyrightable Skyy vodka bottle, were not virtually identical, varying in their lighting, angles, shadows, highlighting, and reflections.

Only 1 week later, the Ninth Circuit issued another decision, Satava v. Lowry , 323 F.3d 805 (9th Cir. 2003), that applied the same concepts in a case involving glass sculptures. The court sought to 'locate the faint line between unprotected idea and original expression ' [and] decide whether an artist's lifelike glass-in-glass sculptures of jellyfish are protectable by copyright.' Citing to ETS-Hokin and other landmark precedent such as Feist Publ'ns, Inc. v. Rural Tel. Serv. Co ., 499 U.S. 340 (1991) (dealing with whether a telephone directory was protected by copyright law), the court concluded that the plaintiff's glass-in-glass sculptures of jellyfish were composed predominantly of unprotectable elements.

The Satava court explained that glass-in-glass sculpture is an unprotected 'centuries-old art form' where an inner glass sculpture is encased in an outer glass shroud. In addition, the court noted that many characteristics of Satava's sculptures were innate to jellyfish, such as tendril-like tentacles, rounded bells, bright colors, or even the vertical placement of the jellyfish in the sculpture since
jellyfish naturally swim vertically in real life. The court went on to state that encasing a jellyfish in a glass sculpture is not sufficiently original to warrant protection because 'clear glass is the most appropriate setting for an aquatic animal.' Neither the proportion of the inner jellyfish sculpture to the outer glass sculpture nor the shape of the outer shroud was worthy of protection, according to the court, since each was standard for glass-in-glass sculpture.

The court noted that a combination of unprotectable elements could qualify for copyright protection if 'those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.' Satava's sculpture, however, '[fell] short of this standard ' [and] lack[ed] the quantum of originality needed to merit copyright protection.' The court refused to grant an injunction that 'effectively would give Satava a monopoly on lifelike glass-in-glass sculptures of single jellyfish with vertical tentacles.'

The court did acknowledge a 'thin' copyright in certain artistic contributions to Satava's sculptures, such as the distinctive curls of tendrils, the arrangement of colors, or the unique shape of the jellyfish bells. The court concluded that 'Satava may prevent others from [virtually identically] copying the original features he contributed, but he may not prevent others from copying elements of expression that nature displays for all observers, or that the glass-in-glass medium suggests to all sculptors ' These ideas, first expressed by nature, are the common heritage of humankind, and no artist may use copyright law to prevent others from depicting them.'

Conclusion

Taken as a package, the Ninth Circuit ETS-Hokin and Satava cases present formidable obstacles for Chihuly. The ETS-Hokin case explained that standard elements of sc'nes ' faire must be subtracted out of a piece of art before examining what artistic elements might be protected by the thin copyright that remains. Satava applied this principle to the glass blowing world and is a potential landmine for Chihuly's case. Chihuly, like Satava, is allegedly using centuries-old techniques of glass blowing to create works inspired by nature. Chihuly will have to demonstrate that his art should be protected by more than a 'thin' copyright or that the alleged infringers have virtually identically copied his work. The Chihuly court will have to wrestle with questions of fact as to the scope of any copyright held by Chihuly and whether the defendants have virtually identically copied specific works created by Chihuly, or were merely influenced by Chihuly in the same way that Impressionist painters, for example, influenced one another.

Although the press has reported volatile settlement discussions, the Chihuly case is expected to go to trial later this year. The case could have broad implications for the art world in its discussion of originality and its delineation of what aspects of artwork can be protected by copyright law.


Kyle-Beth Hilfer specializes in advertising, marketing, intellectual property, and licensing law. She has represented art licensors, licensees, and agents and has served as an arbitrator in cases involving art disputes. Hilfer also advises clients regarding advertising, promotions, trademarks, copyrights, licensing, new media, and interactive and multimedia technology issues in both off-line and Internet settings.

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