Pieter Folkens v. Wyland Worldwide ( 2018 )


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  •                 FOR PUBLICATION
    UNITED STATES COURT OF APPEALS
    FOR THE NINTH CIRCUIT
    PIETER A. FOLKENS, DBA A Higher           No. 16-15882
    Porpoise Design Group,
    Plaintiff-Appellant,        D.C. No.
    2:14-cv-02197-
    v.                         JAM-CKD
    WYLAND WORLDWIDE, LLC, a
    California Corporation; WYLAND              OPINION
    GALLERIES, INC., a California
    Corporation; SIGNATURE GALLERY
    GROUP, INC., DBA Wyland
    Galleries, a Nevada Corporation;
    (NFN) WYLAND, AKA Robert
    Thomas Wyland,
    Defendants-Appellees.
    Appeal from the United States District Court
    for the Eastern District of California
    John A. Mendez, District Judge, Presiding
    Argued and Submitted November 14, 2017
    San Francisco, California
    Filed February 2, 2018
    2             FOLKENS V. WYLAND WORLDWIDE
    Before: Ronald M. Gould and Mary H. Murguia, Circuit
    Judges, and James E. Gritzner, * District Judge.
    Opinion by Judge Gould
    SUMMARY **
    Copyright
    The panel affirmed the district court’s summary
    judgment in favor of the defendant in an action under the
    Copyright Act.
    The plaintiff alleged that the defendant infringed on his
    pen and ink depiction of two dolphins crossing underwater.
    Applying the objective extrinsic test for substantial
    similarity, the panel held that this depiction was an idea that
    was found first in nature and was not a protectable element.
    Because the only area of commonality between the parties’
    works was an element first found in nature, expressing ideas
    that nature has already expressed for all, the district court
    properly granted summary judgment.
    *
    The Honorable James E. Gritzner, United States District Judge for
    the Southern District of Iowa, sitting by designation.
    **
    This summary constitutes no part of the opinion of the court. It
    has been prepared by court staff for the convenience of the reader.
    FOLKENS V. WYLAND WORLDWIDE                     3
    COUNSEL
    Geoffrey Wm. Steele (argued), Karl Folkens, Scott D. Reep,
    and Stephen Gizzi, Gizzi Reep Foley, Benicia, California,
    for Plaintiff-Appellant.
    Marc Dale Risman (argued), Henderson, Nevada, for
    Defendants-Appellees.
    OPINION
    GOULD, Circuit Judge:
    Plaintiff Peter A. Folkens (“Folkens”) alleges that
    Defendant Robert T. Wyland (“Wyland”) infringed on his
    pen and ink depiction of two dolphins crossing underwater.
    Folkens contends that Wyland’s depiction of an underwater
    scene infringes on his drawing by copying the crossing
    dolphins, and that the similar element of two dolphins
    crossing underwater is protectable under copyright law,
    entitling him to proceed to trial on the issue of whether
    Wyland’s painting violates his copyright. We consider
    whether two dolphins crossing underwater is a protectable
    element under the objective standard of this Court’s extrinsic
    test for substantial similarity. We hold that the depiction of
    two dolphins crossing underwater in this case is an idea that
    is found first in nature and is not a protectable element. We
    note, as we did in Satava v. Lowry, 
    323 F.3d 805
     (9th Cir.
    2003), that a collection of unprotectable elements—pose,
    attitude, gesture, muscle structure, facial expression, coat,
    and texture—may earn “thin copyright” protection that
    extends to situations where many parts of the work are
    present in another work. But when, as here, the only areas
    of commonality are elements first found in nature,
    4             FOLKENS V. WYLAND WORLDWIDE
    expressing ideas that nature has already expressed for all, a
    court need not permit the case to go to a trier of fact. We
    affirm the district court.
    I
    A
    Folkens states he is a “world-renowned wildlife artist,
    illustrator, photographer, researcher, and author best known
    for his work in the field of marine mammals.” He is the
    author and copyright owner of a pen and ink illustration
    titled “Two Tursiops Truncatus” also known as “Two
    Dolphins,” which he created in 1979. Two Dolphins is a
    black and white depiction of two dolphins crossing each
    other, one swimming vertically and the other swimming
    horizontally. No other subjects appear in the pen and ink
    illustration. The illustration has at least one copyright
    registration, VA 31-890.
    Folkens alleges that in 2011 Wyland created an
    unauthorized copy of Two Dolphins in a painting titled “Life
    in the Living Sea.” 1 Wyland’s Life in the Living Sea
    painting is a color depiction of an underwater scene
    consisting of three dolphins, two of which are crossing,
    various fish, and aquatic plants. Folkens alleges that in total
    Defendants 2 created enough prints to make $4,195,250 from
    1
    Folkens also filed a claim for infringement based on Defendants’
    sculpture known as the Wyland Dolphin, but the grant of summary
    judgment in favor of Defendants on that claim is not at issue on this
    appeal.
    2
    Wyland, Wyland Worldwide, LLC, Wyland Galleries, Inc, and
    Signature Gallery Group, Inc., d/b/a Wyland Galleries are collectively
    referred to as Defendants.
    FOLKENS V. WYLAND WORLDWIDE                    5
    sales of Life in the Living Sea. Folkens further alleges that
    Defendants have created other unauthorized copies of Two
    Dolphins for use in advertising on the internet. Folkens
    alleges that Defendants currently display the infringing
    works at galleries around the country. Folkens states that he
    found out about the infringement in October 2013, and that
    he informed Defendants about their infringing works on or
    about September 18, 2014. This lawsuit followed.
    B
    The district court granted summary judgment for
    Defendants after applying the Ninth Circuit’s extrinsic test
    of substantial similarity to assess whether the Defendants’
    work infringed Folkens’s copyright. Copyright protection
    only extends to original works and the district court had to
    first dissect the works, Two Dolphins and Life in the Living
    Sea, to determine what elements were original and
    protectable, and what elements were unprotectable. Then,
    under the extrinsic test, the district court properly only
    compared the works’ protectable elements to determine if
    the works were substantially similar as measured by
    external, objective criteria.
    The district court found that “the main similarity
    between Wyland’s ‘Life in the Living Sea’ and Folkens’s
    ‘Two Dolphins’ is two dolphins swimming underwater, with
    one swimming upright and the other crossing horizontally.”
    The district court concluded that “this idea of a dolphin
    swimming underwater is not a protectable element” because
    natural positioning and physiology are not protectable under
    Ninth Circuit precedent, citing Satava. The district court
    commented that “the cross-dolphin pose featured in both
    works results from dolphin physiology and behavior since
    dolphins are social animals, they live and travel in groups,
    and for these reasons, [dolphins] are commonly depicted
    6           FOLKENS V. WYLAND WORLDWIDE
    swimming close together.” The district court further found
    that Folkens had not identified any elements of his work that
    are not commonplace or dictated by the idea of two
    swimming dolphins. The district court concluded that no
    reasonable juror could find substantial similarity between
    the two works because the element of similarity between
    Two Dolphins and Life in the Living Sea was not a
    protectable element.
    II
    We review a district court’s decision to grant summary
    judgment de novo. L.A. Printex Indus., Inc. v. Aeropostale,
    Inc., 
    676 F.3d 841
    , 846 (9th Cir. 2012), as amended on
    denial of reh’g and reh’g en banc (June 13, 2012). Summary
    judgment is appropriate if “there is no genuine dispute of
    material fact” viewing the evidence in the light most
    favorable to the nonmoving party. 
    Id.
     (citing Fed. R. Civ. P.
    56(a)). A genuine dispute of a material fact is “one that
    could reasonably be resolved in favor of either party.”
    Ellison v. Robertson, 
    357 F.3d 1072
    , 1075 (9th Cir. 2004).
    III
    Folkens concedes that the idea of dolphins swimming
    underwater is not protected, but argues that his unique
    expression of that idea is protected. Folkens contends that
    the dolphins here do not exhibit behavior shown in nature
    because the dolphins in the photos that Two Dolphins was
    based upon were posed by professional animal trainers in an
    enclosed environment. Folkens contends that Defendants
    offered no evidence that the crossing of two dolphins in this
    FOLKENS V. WYLAND WORLDWIDE                              7
    way occurs in nature, and that fact alone should have
    precluded summary judgment. 3
    Defendants argue that the district court correctly
    concluded that scenes found in nature, such as dolphins
    crossing in the wild, are not protected by copyright laws and
    that there were no protectable elements that were similar
    based on the shared subject matter. Defendants further argue
    that Folkens’s reliance on the fact that the dolphins were
    posed is a red herring because animal trainers can pose
    animals to capture positions that naturally occur in the wild.
    To prove copyright infringement, a plaintiff must show:
    “(1) ownership of a valid copyright and (2) copying of
    constituent elements of the work that are original.” Feist
    Publ’ns, Inc. v. Rural Tel. Serv. Co., 
    499 U.S. 340
    , 361
    (1991). The parties do not dispute that Folkens owns a valid
    copyright, but instead focus on element two—whether
    Wyland copied constituent elements of the work that are
    original.
    Because direct evidence of copying is often not
    available, a plaintiff can establish copying by showing
    (1) that the defendant had access to the plaintiff’s work and
    (2) that the two works are substantially similar. L.A. Printex
    Indus., Inc., 
    676 F.3d at 846
    . Defendants do not contest
    access to the works, but argue, among other things, that “as
    a matter of law, there is no substantial similarity” between
    3
    Both parties offer other arguments that are not relevant to the main
    issue and this Court’s decision in this case. Folkens contends that Life
    in the Living Sea is a mere enlargement of Two Dolphins, and
    Defendants contend that Wyland drew dolphins crossing prior to when
    Folkens created Two Dolphins.
    8            FOLKENS V. WYLAND WORLDWIDE
    Two Dolphins and Life in the Living Sea. We must
    determine whether the two works are substantially similar.
    Summary judgment is “not highly favored” on questions
    of substantial similarity, but it is appropriate if we can
    conclude that “no reasonable juror could find substantial
    similarity of ideas and expression.” Shaw v. Lindheim,
    
    919 F.2d 1353
    , 1355 (9th Cir. 1990). To determine whether
    works are substantially similar, we apply a two-part test: an
    extrinsic test and an intrinsic test. L.A. Printex, Indus. Inc.,
    
    676 F.3d at 848
    . On summary judgment, we consider only
    the extrinsic test—an objective comparison of specific
    expressive elements focusing on articulable similarities
    between the two works. Smith v. Jackson, 
    84 F.3d 1213
    ,
    1218 (9th Cir. 1996). Analytic dissection of a work and
    expert testimony are appropriate for the extrinsic test. 
    Id.
    “Where a high degree of access is shown, we require a lower
    standard of proof of substantial similarity.” Swirsky v.
    Carey, 
    376 F.3d 841
    , 844 (9th Cir. 2004), as amended on
    denial of reh’g (Aug. 24, 2004). However, “[b]ecause the
    requirement is one of substantial similarity to protected
    elements of the copyrighted work, it is essential to
    distinguish between the protected and unprotected material
    in a plaintiff’s work.” 
    Id. at 845
    . “The key question always
    is: Are the works substantially similar beyond the fact that
    they depict the same idea?” Mattel, Inc. v. MGA Entm’t,
    Inc., 
    616 F.3d 904
    , 917 (9th Cir. 2010), as amended on
    denial of reh’g (Oct. 21, 2010).
    The parties agree that the element of similarity is the two
    dolphins crossing. The key inquiry is whether the crossing
    dolphins are a protectable element. Swirsky, 
    376 F.3d at 845
    .
    Folkens contends that his expression of two dolphins
    crossing is a protectable element, while Defendants argue,
    and the district court concluded, that it was a naturally
    FOLKENS V. WYLAND WORLDWIDE                       9
    occurring element and therefore not protectable under
    copyright law.
    First, we observe that the fact that a pose can be achieved
    with the assistance of animal trainers does not in itself dictate
    whether the pose can be found in nature. For example, an
    animal trainer may be used to get a dog to sit still while a
    photograph is taken or a painting is done, but no one would
    argue that the position of a dog sitting was not an idea first
    expressed in nature. In that case, the trainer’s purpose was
    not to create a novel pose, but to induce the dog to hold that
    pose for a period of time. Similarly, here, the dolphin trainer
    got one dolphin to swim upwards while its photo was taken,
    and got another to swim horizontally while its picture was
    taken. Neither of these swimming postures was novel. The
    positioning of the dolphins by a trainer does not entitle
    Folkens to survive summary judgment.
    Further, we have held that ideas, “first expressed in
    nature, are the common heritage of humankind, and no artist
    may use copyright law to prevent others from depicting
    them.” Satava, 
    323 F.3d at 813
    . We reaffirm that basic
    principle. An artist may obtain a copyright by varying the
    background, lighting, perspective, animal pose, animal
    attitude, and animal coat and texture, but that will earn the
    artist only a narrow degree of copyright protection. 
    Id.
    There is no question that the other aspects of Two Dolphins
    and Life in the Living Sea, beyond the two dolphins
    crossing, are different—Life in the Living Sea is in color,
    includes a third dolphin, has different lighting, and includes
    several species of fish and marine plants.
    In Satava, we considered a case where a plaintiff
    attempted to assert a copyright infringement claim for glass-
    in-glass sculptures of jellyfish rising in the ocean. 
    Id. at 807
    .
    The sculpture was described as a “vertically oriented,
    10           FOLKENS V. WYLAND WORLDWIDE
    colorful, fanciful jellyfish with tendril-like tentacles and a
    rounded bell encased in an outer layer of rounded clear glass
    that is bulbous at the top and tapering toward the bottom to
    form a roughly bullet shape;” the jellyfish appeared
    “lifelike.” 
    Id.
     We were asked to determine whether the
    district court erred in enjoining the defendant from making
    sculptures similar to the plaintiff’s jellyfish. 
    Id.
     at 809–10.
    We reasoned that the plaintiff could not prevent others from
    depicting jellyfish within a clear outer layer of glass because
    that was an appropriate setting for an aquatic animal and he
    could not prevent others from depicting jellyfish with
    tendril-like tentacles or rounded bells because many jellyfish
    possess those parts. 
    Id. at 811
    . More generally, we held that
    no artist may use copyright law to prevent others from
    depicting ideas first expressed by nature, but cautioned that
    this did not mean that no realistic depiction of live animals
    can be protected by copyright. 
    Id.
     at 812–13. We indicated
    that an artist can protect the “original expression he or she
    contributes to these ideas” and “may earn copyright
    protection,” but that “the scope of [his or her] copyright is
    narrow.” 
    Id. at 813
    .
    We make a similar distinction today. We conclude that
    a depiction of two dolphins crossing under sea, one in a
    vertical posture and the other in a horizontal posture, is an
    idea first expressed in nature and as such is within the
    common heritage of humankind. See 
    id.
     No artist may use
    copyright law to prevent others from depicting this
    ecological idea. See id.; see also George S. Chen Corp. v.
    Cadona Intern., Inc., 266 F. App’x 523, 524 (9th Cir. 2008)
    (holding that an ornament of a dolphin with “an open mouth
    and an uplifted, twisted tail” follows from the idea of a
    swimming dolphin and is not protectable). Folkens’s Two
    Dolphins arises from the fact that dolphins are social
    animals, often depicted swimming in groups—as they are
    FOLKENS V. WYLAND WORLDWIDE                    11
    found in nature. Two Dolphins also represents dolphins
    swimming vertically and horizontally, ideas requiring no
    stretch of the average person’s imagination because dolphins
    do this in nature. Nature provides us with numerous iconic
    depictions of animals: ants marching in a straight line; geese
    flying in a “V” as they migrate; a mother duck being
    followed by her ducklings out of a pond; a hummingbird
    hovering as it sucks nectar from a flower; and bats hanging
    upside down from a cave ceiling, to name a few illustrative
    examples. As a general rule, under our copyright law, an
    artist may not use copyright law to prevent others from
    depicting such ideas first expressed by nature. See Satava,
    
    323 F.3d at 813
    . The basic idea of copyright law is to protect
    unique expression, and thereby to encourage expression; it
    is not to give to the first artist showing what has been
    depicted by nature a monopoly power to bar others from
    depicting such a natural scene.
    Folkens holds a thin copyright in his expression of the
    two dolphins in dark water, with ripples of light on one
    dolphin, in black and white, but that copyright is narrow. See
    
    id.
     The protectable elements that form Folkens’s thin
    copyright in Two Dolphins are not substantially similar to
    Wyland’s crossing dolphins in Life in the Living Sea.
    Wyland’s dolphins are in color, do not show light ripples off
    the body of a dolphin, and the dolphins cross at different
    angles. Based on our careful consideration of the total
    circumstances presented, we conclude that Folkens’s thin
    copyright is not infringed by Wyland’s picture.
    While Folkens tries to make the argument that Wyland
    copied his expression of two dolphins swimming, it is clear
    from precedent that protectable expression must be more
    specific than just the natural element of crossing dolphins;
    here, it necessarily includes their exact positioning, the
    12           FOLKENS V. WYLAND WORLDWIDE
    stippled light, the black and white depiction, and other
    specific and unique elements of expression. See 
    id.
    (recognizing that an artist “may, however, protect the
    original expression he or she contributes to these ideas”
    including “the pose, attitude, gesture, muscle structure,
    facial expression, coat, or texture of [the] animal . . . and the
    background, lighting, or perspective”); cf. Mattel, Inc.,
    
    616 F.3d at
    915–16 (concluding that that the concept of
    depicting a young, fashionable female with exaggerated
    features is unoriginal and an unprotectable idea while
    particular expressions including hair, eye, and skin color,
    outfit, and shoes may be protectable).
    We hold that under the circumstance of this case, the
    district court did not err by granting summary judgment for
    Defendants because the similar element of Two Dolphins
    and Life in the Living Sea, two dolphins crossing one
    another, one vertical and the other horizontal, is not
    protectable and the other particularities of the scene depicted
    are not the same.
    IV
    When determining whether a copyright infringement
    claim will survive summary judgment, the court must
    analyze whether there is substantial similarity between the
    works under the extrinsic test. The extrinsic test considers
    only the protectable elements of a work. In Satava, we made
    clear that those protectable elements could not be ideas
    expressed in nature subject to a thin copyright that may
    extend only to the pose, attitude, gesture, muscle structure,
    facial expression, coat, or texture of the animal. Because the
    depictions of two dolphins crossing here share no similarities
    FOLKENS V. WYLAND WORLDWIDE                  13
    other than in their non-protectable elements of the dolphins
    crossing, we affirm the judgment of the district court.
    AFFIRMED.