Copyright Is Bananas: Case Over Copyright Of A Banana Taped To A Wall Allowed To Move Forward

How many times can we write about bananas and copyright? Even assuming the monkey selfie case doesn’t count, it’s come up surprisingly often here on Techdirt. A few years ago, there was a high profile copyright case about whether or not a banana Halloween costume was covered by copyright (it was). But, this latest case is about whether or not there’s copyright in the, um, artistic display of taping a banana to a wall. Believe it or not, this is not the first case we’ve even written about regarding copyright questions around bananas taped to walls. Two years ago, we wrote about a different case, involving the copyright on photographs of bananas taped to walls, but that seemed like a pure trolling case.

As you may recall, back in late 2019, in those pre-pandemic blissful years, at Art Basel in Florida, there was a ridiculous amount of attention paid to a piece of art that was literally just a banana taped to the wall. It sold for $120,000. And there was some controversy when someone stepped in and ate the banana. The banana on the wall artwork was called “Comedian” and was created by artist Maurizio Cattelan.

But, this lawsuit was filed by Joe Morford in early 2021, claiming that “Comedian” infringed on his own work, “Banana & Orange.” The case has taken some twists and turns, including an initial default judgment against Cattelan, who did not respond to the case. Cattelan showed up in November to argue that the reason for this was that he was not properly served (the initial complaint was sent to his NYC apartment building, but Cattelan had left it and spent the first year and a half of the pandemic in Italy).

Morford, who is representing himself pro se, whined that this was all unfair and even sought to disqualify the judge for bias (generally, not a good idea) because the judge had once worked with the lawyer Cattelan had hired. None of that worked, and the default was set aside, moving the case forward.

So, this May, Cattelan filed a pretty compelling motion to dismiss noting (correctly), that copyright covers expression, not ideas, and you cannot copyright the “idea” of a banana taped to a wall.

This purports to be an action for copyright infringement. In previous filings with this Court, Plaintiff asserted unequivocally that, “I do not assert a copyright claim to the idea of a banana duct taped to a wall. People are free to duct-tape all the bananas they want to a wall.” (Doc 37, at 21) (emphasis added). Yet, the Complaint tries to do exactly that: to stop Defendant from duct-taping a real banana to a wall. In fact, Plaintiff’s only complaint is that Defendant’s art piece, Comedian, which consists entirely of a real banana duct-taped to a wall, infringes Plaintiff’s copyright in a diptych work of art comprised of a synthetic sculptural banana and orange fixed to green painted paper and surrounded by masking tape. But, Plaintiff cannot own the idea of a real banana duct-taped to a wall. Based on well-settled principles of law, the Complaint must be dismissed because: (1) the copyright laws do not permit “ownership” of a natural element that exists in the world (a fruit) or a utilitarian, functional component (duct tape), neither of which contain any original expression; (2) there is no substantial similarity between the protectable aspects of Plaintiff’s work and Defendant’s work; and (3) Plaintiff has not – and cannot – adequately allege Defendant’s access to Plaintiff’s work

All of this strikes me as broadly correct as copyright goes. You can’t copyright the idea of a banana taped to a wall. In theory, the only copyright protectable elements of a banana taped to the wall are the specific expressive choices that were made — perhaps the angle of the banana (weakly) and maybe some elements about how the duct tape was torn or something like that. Even then, it would seem to be a very thin layer of copyright protection.

And, again, Morton’s artwork appeared to be quite different. It did include a (not real) banana duct taped to a wall, but almost all of the actual expressive choices were different, as you can see:

Morton’s response repeats over and over again that he’s not seeking to copyright the idea, but rather is focused on the “substantial similarity” doctrine using the “extrinsic test” and the “intrinsic test.”

Now, in the past, we’ve discussed the substantial similarity doctrine, and what an absolute clusterfuck it is. Copyright infringement is only supposed to apply to actual copying. If two people come up with the same thing entirely independently, it is not supposed to be infringement at all. But, perhaps because some judges were worried that those who copied would just plead ignorance, some courts embraced these tests around substantial similarity, and an argument about whether or not the accused had access to the original work to effectively say they must have copied it. It’s a problematic doctrine, but one still used by many courts.

And yet, unfortunately, last week, the judge rejected the motion to dismiss and allowed the case to move forward. That doesn’t mean that Morford will win in the long run, but it’s not great for Cattelan. I’ve seen some copyright lawyers suggesting they were convinced by the judge’s reasoning, but I think it’s very, very mistaken. It also includes some factual errors.

Can a banana taped to a wall be art? Must art be beautiful? Creative? Emotive? A banana taped to a wall may not embody human creativity, but it may evoke some feelings, good or bad. In any event, a banana taped to a wall recalls Marshall McLuhan’s definition of art—“anything you can get away with.” To that end, bananas have come to represent a type of irreverence in pop culture—from vaudeville to Andy Warhol, artists have wielded bananas to expand the boundaries of art.

Add to that list Joe Morford, an artist from Glendale, California. In 2000, Morford registered his work “Banana & Orange” with the Copyright Office. (ECF No. 1 at 8.) While Morford does not allege how widely this work was disseminated, it appears that Banana & Orange was accessible on Morford’s website, as well as through the social media platforms Facebook and YouTube. (ECF No. 50 at 26.)

So, first off, in what may feel inconsequential, the judge is wrong about the registration date of Morford’s work. While he claims it was created in 2000, the registration only happened in 2020 (after Cattelan’s artwork went viral):

The registration was included with the lawsuit, and it seems weird for the judge to miss that fact. Of course, it’s possible that doesn’t actually matter as much in this case. Normally, in many copyright cases arguing for statutory damages, it would matter, but Morford is explicit that he’s asking for actual damages (though how he defines them is weird), so in theory it doesn’t matter as much. Still a weird one for the judge to miss.

As for the actual analysis, the judge properly notes that Morford needs to show that Cattelan actually copied his work and that the parts that were copied were protectable under copyright. The judge then goes on a long discussion about the substantial similarity doctrine and both the extrinsic and intrinsic tests. However, the court does properly note that the court has to break down the work into its structural parts, and then determine which parts are protectable elements and which are not. This is correct… and it should have resulted in the judge noting that nothing protectable was copied here. There are bananas, but they are different. There is duct tape, but it is different. There is fruit taped to a wall, but that is an idea, and not protectable. There is the angle of the banana and the duct tape, but they are different. There are walls, but they are different.

I don’t see how any protectable elements are copied here. But… the court says otherwise, basically arguing that even if the idea of taping a banana to a wall is not protectable… the “absurd and farcical” nature of taping a banana to a wall is a form of creative expression. Really.

Copyright protection only extends to arrangements that are unique and original. See Corwin, 475 F.3d at 1251 (“[A] work may be protected by copyright law when its otherwise unprotectable elements are arranged in a unique way.”). Heralded as the “sine qua non of copyright,” originality requires consideration of the creativity involved in the arrangement of unprotectable elements, as well as whether the arrangement is “firmly rooted in tradition” or too “commonplace.” See BellSouth, 999 F.2d at 1440 (discussing Feist, 499 U.S. at 348, 363). But judges are not deputized art critics, and the originality bar is appropriately low. See Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903) (“It would be a dangerous undertaking for persons trained only to the law to constitute themselves the final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits.”); see also Original Appalachian, 684 F.2d at 824 (“No matter how poor artistically the author’s addition, it is enough if it be his own.”) (quoting Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 103 (2d Cir. 1951)). Therefore, the “requisite level of creativity is extremely low; even a slight amount will suffice.” See Feist, 499 U.S. at 345.

While using silver duct tape to affix a banana to a wall may not espouse the highest degree of creativity, its absurd and farcical nature meets the “minimal degree of creativity” needed to qualify as original. See Feist, 499 U.S. at 345; see also Kevin Harrington Enters., Inc. v. Bear Wolf, Inc., No. 98-CV1039, 1998 WL 35154990, at *6 (S.D. Fla. Oct. 8, 1998) (Ungaro, J.) (noting that originality involves “the author’s subjective judgment in giving visual form to his own mental conception”) (citing Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 60 (1884)). While the Court cannot—and need not—give meaning to Banana & Orange, at this stage the Court holds that Morford’s choices in giving form to Banana & Orange are sufficiently original.

This seems both wrong and potentially very problematic for copyright law. Basically, it’s creating an exception to the idea/expression dichotomy in copyright law, by saying that if the idea is particularly absurd, literally, then it gets copyright protection.

And that can’t be correct.

Later, in the substantial similarity analysis, there’s another chance for the court to note that there were no protectable elements copied, but again, the court chooses not to:

While Morford is afforded no protection for the idea of a duct-taped banana or the individual components of his work, Morford may be able to claim some degree of copyright protection in the “selection, coordination, [and] arrangement” of these otherwise unprotectable elements. See Off Lease, 825 F. App’x at 726 (discussing copyrighted works “formed by the collection and assembling of preexisting materials . . . that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship”) (quoting 17 U.S.C. § 101)). In particular, Morford can claim some copyright protection in the combination of his choices in color, positioning, and angling. See Off Lease, 825 F. App’x at 727 (holding that copyright protection extended to “the outline, the [component’s] shape, and the elaborate color scheme”); see also Corwin v. Walt Disney Co., No. 6:02-cv-1377, 2004 WL 5486639, at *16 (M.D. Fla. Nov. 12, 2004) (holding that an “artist’s selection as to how the [model pieces] were arranged in the painting, the colors associated with the elements, and the overall structure and arrangement of the underlying ideas” are protectable) (citing Leigh, 212 F.3d at 1216).

But once we’ve hit that point, Cattelan has basically already lost. The court notes that from there, the substantial similarity test is generally an issue of fact, meaning that it should go to a jury. The court still does a quick analysis of the rest of the substantial similarity test, including whether or not Cattelan had “access” to Morford’s work, and again that’s problematic. Morford says his artwork has been online in various places, starting with YouTube in 2008, and then Facebook in 2015, and then his own website in 2016. Cattelan points out that just putting your work on the internet doesn’t mean that he had access to it. But the court basically says it’s too early to make that call.

Indeed, it seems like the court should have taken more notice of the fact that just putting things on the internet does not automatically mean everyone viewed it. Aaron Moss points out Morford’s claims regarding access are without much support, and Moss himself shows that while Morford’s work was online, it certainly does not appear that very many people ever viewed them:

In addition to the 2015 Facebook post that I showed above (which was “liked” by five people), I also found a 2008 YouTube video featuring Morford’s work on a YouTube channel page for an account called “lobsterparlorart.” The channel has all of 11 subscribers, and the video featuring Banana & Orange is one of dozens of artworks displayed on the nine minute video. You can check it out below at about one minute and eight seconds in, but the banana is displayed for less than a second, so don’t blink or you’ll miss it:

Below is a screenshot of Morford’s banana making its big reveal. At the time I watched, the video had received only 499 views in the past 14 years, three of which were from me as I was trying to find the banana:

While it’s possible that Cattelan was one of a vanishingly small number of people to see Morford’s work, it seems… unlikely at best. And, at the very least, the court should have required more than just “it was online” to hit the “access” part of the substantial similarity test.

The court also notes that Cattelan’s lawyers probably should have raised the merger doctrine, which basically says there are only a few ways in which this particular idea can be expressed — which would seem to apply here. But… Cattelan didn’t raise the issue and so the court refuses to consider it:

Of course, there are only so many choices an artist can make in colors, positioning, and angling when expressing the idea of a banana taped to a wall. In general, this is called the merger doctrine—where the idea and the expression of that idea merge. See BUC Int’l, 489 F.3d at 1142 (holding that the merger doctrine “provides that ‘expression is not protected . . . 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’”) (quoting BellSouth, 999 F.2d at 1442)). However, Cattelan did not argue that the merger doctrine applies (ECF No. 53 at 14 n.8), so the Court will not consider whether the merger doctrine precludes any finding of infringement here.

But that also seems wrong to me. The merger doctrine is considered part of the idea/expression dichotomy, which Cattelan did raise, so it seems that the court could have and should have looked at it. Though, yeah, it might have been better if Cattelan’s lawyers brought up that doctrine directly, it still seems that the court could have noted it as part of its idea/expression analysis.

Anyway, the court decides that there’s enough here for the case to move forward, and thus… it moves forward. It seems like a bad situation for the whole idea/expression dichotomy, so what happens next will be worth paying attention to. Of course, this is the stage where many similar cases settle, but it would be useful to get a court to really point out how bad this decision actually is.