Andrew Masson is an IPilogue writer and a 2L JD candidate at Osgoode Hall Law School.
In 2019, artist Maurizio Cattelan went viral for taping a banana to a wall for a piece known as The Comedian at the Basel Miami Beach art fair. It garnered international headlines and Cattelan profited over $390,000 from the sale of pieces based on The Comedian. However, he was not the first to tape a banana to the wall and call it art. Almost 20 years earlier, Joe Morford registered a very similar work of art, “Banana & Orange”, with the California copyright office. Banana & Orange [figure below] is two composed of a plastic banana and an orange duct taped to a wall.
Given the similarities, Morford filed a civil action against Cattelan alleging that The Comedian infringed on his copyright and claims damages of $390,000. Cattelan’s lawyers filed a motion to dismiss the case, but on July 6th Judge Scola denied the motion. It is important to note that this was not a statement on the likelihood of success of the claim. Judge Scola was cautious in his analysis stating that “questions of substantial similarity are typically best left to the trier of fact.” This means the standard to approve a motion to dismiss in this type of case is very high.
Components of a Copyright Claim?
Against the challenge of Cattelan’s lawyers, the judge found that Morford was able to show to some degree that 1) he had a valid copyright and 2) there could be copying.
The case was somewhat complicated by the fact that Morford was self-represented. The judgement mentioned multiple times that Morford did not follow rules or state legal principles. One example of this is Morford stating that he “does not assert copyright claim to the idea of a banana duct-taped to a wall.” The defendants jumped on this and argued that by Morford’s statements, he could not claim copyright. However, Judge Scola appropriately granted leniency and accordingly, found that Morford was correct in that he cannot claim copyright for the idea of a banana taped to a wall; it is the expression of that idea that he is claiming copyright over.
Cattelan also argued that it was not a valid copyright because copyright only extends to arrangements that are unique and original. Nonetheless, Judges are not art critics and the bar for originality is justifiably low. Judge Scola expressed that “[w]hile 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.”
For the claim that it was copied two elements must be present, 1) access and 2) substantial similarity. Regarding access Morford provided evidence that Blood & Orange has been available on multiple different online platforms since at least 2008 and has been accessed in multiple countries. For the substantial similarity, there is a test for three elements: 1) abstraction, 2) filtration, and 3) comparison. The court found that
“Morford sufficiently alleges that there is similarity in the (few) protected elements of Banana & Orange. In both works, a single piece of silver duct tape runs upward from left to right at an angle, affixing a centered yellow banana, angled downward left to right, against a wall. In both works, the banana and the duct tape intersect at roughly the midpoints of each, although the duct tape is less centered on the banana in Morford’s work than in Comedian.”
This was the appropriate decision on a motion to dismiss as Morford’s claim is not entirely meritless. If this moves to trial, Cattelan’s lawyers will likely have more luck arguing on the merger doctrine: that this expression should not be protected because there are so few ways to tape a banana to a wall that protection of expression accords protection to the idea itself.