Case Title and Citation: Harney v. Sony Pictures Television, Inc., 704 F.3d 173 (1st Cir. 2013)
Court: United States Court of Appeals for the First Circuit, Boston, MA
Document status: Court Order and Opinion (on appeal by Plaintiff)
Issue or relevant point: The Court looked at whether the district court’s grant of summary judgment for lack of ‘substantial similarity’ was supported by: i) proper dissection of protectable and non-protectable elements of a photograph, and ii) proper application of a ‘substantial similarity’ assessment as to the protectable elements.
Ruling or Findings: It is completely proper to dissect a copyrighted work into its protected and non-protected elements. If there is not substantial similarity between protected elements of the original work and the alleged infringing work, there is no copyright infringement.
The Court discussed the background as to the subject matter of the Plaintiff’s iconic photograph – a blond girl in a pink coat riding piggy back on her father’s shoulders (“Photo”) – and how the Defendant allegedly used a copy of the photograph in a made-for-TV movie (“Movie”). The Photo gained fame and recognition as it played a prominent role in a high profile abduction by the father of the daughter, as it was used in ‘Wanted’ posters and through other media outlets. In making the Movie, Sony recreated its own version of the Photo (“MoviePhoto”), which was also used in advertising and other media related to publicizing the Movie.
The Court reviewed the district court summary judgment finding that while comparison of the two photo’s shows they share factual elements, there was no substantial similarity with respect to the original (or protected) elements.
At the outset of its analysis, the Court made some important distinctions related to copyright protection, namely that even upon proof of copying it does not follow that copyright infringement occurs. The Court further clarified that a work may be sufficiently "original" to qualify for copyrightable subject matter, but may nonetheless contain unoriginal elements, with casual mention of Golan v. Holder.
Thus, in order for an infringement to occur there must be substantial similarity – substantial similarly is shown when an "`ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same.'" However, a proper assessment of ‘substantial similarity’ requires comparing protected elements to the elements used by Defendant. And to do so first requires dissecting protected elements of a work from those that are not protected.
The Court noted that on the merits dissection is usually a question of law, while substantial similarity is a question of fact, but at the summary judgment stage a court may handle both. Summary judgment is appropriate if a rational factfinder, correctly applying the pertinent legal standards, would be compelled to conclude no substantial similarity exists between the protected elements of the copyrighted work as compared to the elements of the alleged infringing work.
In the realm of photographs, protectable elements (or original expression) may arise from a photographer's selection of, for example, lighting, timing, positioning, angle, focus, pose of subjects, angle, selection of film and camera, shutter speed, evoking the desired expression, and almost any other variant involved.
On the other side of the spectrum, subject matter not created by the photographer may be considered mere ‘fact’, leaving these elements unprotected. The exclusion of fact from copyright protection arises from the constitutional requirement of "originality" – because facts are discovered, rather than part of original creation, they are part of the public domain.
As such, while a photograph may have ‘fact’ or public-domain subject matter, it may still be protected because it involves creative expression; however, the protection against copying is limited to the work's original elements.
The Court then reviewed what it believed were the expressive choices in the Photo that qualified for protection. Initially the Court conveyed there was no doubt the Photo was an original, expressive work. However, the Photo was found to consist primarily of subject matter (i.e., facts) that Harney had no role in creating, including the central element of the Photo – the father-daughter piggyback ride.
Ultimately the Court found the lower court dissection was sound, and that Harney could not claim protection in elements he had no creation in, such as a piggyback pose, clothing, items carried, the Church, or the blue sky. And, although the Photo was still protected to some degree, the scope of the protection was much narrower than that asserted by the Plaintiff.
ii) Substantial Similarity
The Court immediately indicated that the Plaintiff’s biggest hurdle was that none of the protected elements of the Photo were present in the MoviePhoto. Significantly, the two photographs were found as notably different in lighting and coloring, giving them aesthetically dissimilar impacts. Although the MoviePhoto did copy the placement of the father-daughter in the frame — a protected element of the Photo – the Court agreed with the district court that locating the subject of a photograph in the middle of a frame is "an element of minimal originality and an insufficient basis, without more, to find substantial similarity."
The Court compared the assessment of Harney’s photo with the photo assesments in Leigh v. Warner Bros. Inc. and Mannion v. Coors Brewing Co. In Leigh the photos were found to share numerous expressive elements, including distinctive lighting and angle, hanging Spanish moss, the statue frame position, and monochromatic shading. In Mannion, the photographer was found to have had significant input and orchestration in the subject matter of the photo. In contrast to those cases, the Photo and MoviePhoto shared little in common in regard to expressive elements, and Harney had no input or orchestration in the Photo when it was taken, as it was entirely spontaneous.
The Court recognized that even though the Photo and MoviePhoto were similar, the question of infringement is nevertheless governed by whether the similarity arises from protected elements of the original work. Here, although Sony was found to have copied a minor amount of the Photo, the Court affirmed no jury could conclude that the similarity resulting solely from that copying was substantial.
The copyright protection provided to a photograph has a varied scope – the more originality and creativity, as well as input by the photographer, the greater the scope. On the other hand, a photograph with very little originality, while still the subject of protection, has a narrowed scope. In assessing whether a copyrighted photograph has been infringed by another work, do not compare the works as a whole; instead, consider what the protected elements of the photograph are. The greater the creativity, the less exact copying necessary to cause an infringement.
 The girl and father were just leaving a religious service; before taking their photo Haney received permission to do so.
 Citing Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991) ("Not all copying... is copyright infringement.")
 132 S. Ct. 873, 181 L. Ed. 2d 835 (2012) (confirming "every idea, theory, and fact in a copyrighted work becomes instantly available for public exploitation at the moment of publication.")
 A list of cases discussing protectable element for a photograph may be found in Mannion v. Coors Brewing Co., 377 F.Supp.2d 444, 450-51 n. 37 (S.D.N.Y. 2005)
 ‘Originality’ being the sine qua non of copyright
 But compare to an arrangement or compilation of facts, which may be protected
 212 F.3d 1210 (11th Cir. 2000); 377 F.Supp.2d 444, 461 (S.D.N.Y.2005)