Going (copyright) bananas: Maurizio Cattelan prevails in copyright infringement lawsuit over Comedian

“Perhaps I’ll be remembered in history as the banana imbecile”, summed up provocative and uber-creative artist Maurizio Cattelan in a recent interview with Italian newspaper Corriere della Sera.

I personally love everything by Cattelan and among other things I did enjoy the recent exhibition in Florence about his and other contemporary artists’ work. As the students I have had the pleasure of teaching to at several institutions in Europe know, I like using Cattelan's banana – or rather: Comedian, as the opus is titled – to illustrate the idea/expression dichotomy and explain how misleading the term ‘dichotomy’ indeed is. It unduly suggests a clear divide between idea and expression, while the truth is way more complex than that. It is indeed more realistic and correct to speak of an idea/expression spectrum: there are ‘objects’ that clearly fall on the ‘idea’ side of the spectrum and others on the ‘expression’ side, but there is plenty of other objects – Comedian being one – for which the dividing line between ‘idea’ and ‘expression’ looks quite blurry.

In all this, Cattelan is likely right in saying that Comedian is one of the best-known works of his. The recent ‘incident’ in Seoul, that is when an art student ate the banana that is part of Comedian, has also attracted quite a lot of attention and, likely, more than a smile.

Of course, that is not all: Comedian has in fact also sparked litigation in the USA. Would you say that Cattelan’s work (realized for an exhibition in Miami in 2019) is an unauthorized reproduction of the 2001 work below, titled Banana and Orange, and thus an infringement of the copyright vesting in it?

The one above is the question that a Florida judge (Robert N Scola, Jr) answered just a few days ago (Case 1:21-cv-20039-RNS) after fellow artist Joe Morford had gone – quite literally – bananas and sued Cattelan for copyright infringement.

The response of the US District Court for the Southern District of Florida was that, no, Cattelan’s “now-infamous, absurdist display of a banana duct-taped to a wall at Art Basel Miami in 2019” had not infringed Morford’s copyright. In so doing, the judge expressed relief that “the Court still need not attempt to answer that age-old (and frankly unanswerable) question” of “what art is” 😅.

Let’s see more in detail how the judge reasoned.

The decision

Having reviewed visual similarities and dissimilarities between the works in question (an intriguing difference is that, while Comedian employs an actual banana, Banana and Orange uses plastic fruits), the Court focused on how Cattelan came up with the idea for Comedian – so also to determine if Cattelan had had access to Morford’s work. Interestingly enough, there was no need to discuss if Morford’s work would be protectable at the outset also because the plaintiff had managed to register his work with the US Copyright Office in 2020.

After that, the Court focused on the cornerstones of the right of reproduction: (1) access (derivation) and (2) taking of protectable parts:

• Insofar as (1) is concerned, the Court concluded that Morford had failed to demonstrate adequately Cattelan’s access to his work. In this sense, the judge reminded that “mere availability, and therefore possibility of access, is not sufficient to prove access”. This alone would be dispositive of Morford’s claims.
• Nevertheless, the court also deemed it appropriate to consider (2) and explain why any similarities between Comedian and Banana and Orange are unprotected and therefore such as not to give rise of an actionable reproduction in accordance with the 11th Circuit’s ‘abstraction-filtration-comparison’ test. As regards the last step (comparison) in particular, the Court considered that Cattelan’s work would not reproduce any of the (few) protectable elements of Banana and Orange as identified and listed by the Court below:

Comment

The decision is a must-read for anyone – especially copyright students! – trying to understand what the right of reproduction under copyright law is about and how one goes about determining whether there is or not a potentially actionable third-party reproduction.

Milly also inadvertently 'destroyed' Comedian
while on a day out

While the decision is of course from the perspective of US law, the test is in essence the same as the one under both EU and UK laws.

EU law

The notion of reproduction ‘in part’ in relation to works (Article 2(a) of the InfoSoc Directive) was at the centre of the decision of the Court of Justice of the European Union (CJEU) in Infopaq [considered as one of the most relevant copyright cases of the past 20 years at the recently held IPKat’s 20th Anniversary Event]. 

Unsurprisingly, the CJEU gave an autonomous and uniform interpretation of that right, on consideration that the InfoSoc Directive does not refer the concepts of either ‘reproduction’ or reproduction ‘in part’ to the laws of Member States. Overall, the InfoSoc Directive does not differentiate between the taking of a work as a whole or in part for the sake of applying Article 2, so the concept of reproduction ‘in part’ should not be intended in a quantitative sense. Under EU law, there is reproduction ‘in part’ of a ‘work’ when what is reproduced is sufficiently original in the sense that it is its author’s own intellectual creation. In other words, the prima facie infringement test is in two steps:

• First, it requires determining whether the claimant’s work or part thereof is protected at the outset, i.e., it is its author’s own intellectual creation; if the answer is in the affirmative;
• The second step is to establish if the defendant has taken a protected work or a protected part thereof.

UK law

Turning to UK law, to establish prima facie infringement, a claimant needs to demonstrate – in accordance with section 16 CDPA – that the defendant has done any of the restricted acts in relation to the work as a whole or any substantial part of it. The notion of ‘substantial taking’ should not be intended in a quantitative sense.

Lord Millett set out the test in the context of the landmark decision in Designers Guild, concerning infringement of copyright in a fabric design. The House of Lords held that the test is whether the alleged infringer has incorporated a substantial part of the independent skill, labour and judgment (as per the 'old' UK understanding of originality) contributed by the original author in creating the copyright work. Overall, the question whether the defendant has copied a substantial part depends much more on the quality, rather than the quantity, of what they have taken, and is a question of degree.

In light of the CJEU decision in Infopaq, it is apparent that, while the UK test for infringement might have not been affected substantially, it still requires qualification by interpretation of the concept of ‘reproduction in part’ as provided by the CJEU. In this sense, there would be a substantial taking of a work when what is being reproduced is sufficiently original in the sense of being its author’s own intellectual creation.

The UK test remains informed by CJEU case law even following the completion of Brexit. This was also recently confirmed in Sheeran, a case concerning the alleged infringement of copyright in Oh Why by Shape of You (eventually resolved in favour of the defendants, also because no access to the claimants’ work was established) [IPKat here], and Pasternak.