They’re apples and oranges. That’s the message, at least, that U.S. District Judge Robert N. Scola, Jr. sent on June 9, 2023 by granting Italian artist Maurizio Cattelan’s motion for summary judgment in a copyright lawsuit fellow artist Joseph Morford brought against him in the Southern District of Florida.[1]; The claim, which the Hughes Hubbard Art Law blog first reported on in December 2022,[2] arose from an art installation Cattelan created for Art Basel Miami Beach in December 2019 that consisted of a banana duct-taped onto a white wall.[3] The work, named Comedian, sold for $120,000 and quickly went viral[4]—not only because a Georgian performance artist grabbed one of the copies of the work off the wall and ate the banana.[5] (A university student in Seoul ate yet another copy of the work on April 27, 2023; the student subsequently told workers at the museum where Comedian was displayed that he had skipped breakfast that day and was hungry.)[6]
The case began on January 4, 2021, when Morford filed a pro se complaint in the Southern District of Florida claiming that Cattelan’s Comedian infringed Morford’s preexisting work, Banana & Orange.[7] On July 6, 2022, Judge Scola denied Cattelan’s motion to dismiss, holding that Morford adequately alleged that Comedian had a substantial similarity to the protected elements of Banana & Orange.[8] After Cattelan filed his answer and affirmative defenses to Morford’s complaint,[9] the parties attempted to resolve their dispute through mediation, as permitted by the court’s local rules. According to the mediator’s report, the parties engaged in an in-person mediation on October 13, 2022, but the matter did not settle.[10] On March 6, 2023, both artists filed motions for summary judgment.[11] Cattelan and Morford responded to each other’s motions[12] and replied in support of their own motions.[13]
The Works
Cattelan’s Motion for Summary Judgment
Cattelan moved for summary judgment on four grounds[14]:
- Morford cannot establish that Cattelan had access to Morford’s work as a matter of law.
- There is no substantial similarity between the parties’ works at the level of protectable expression.
- Morford cannot overcome the undisputed and cogent evidence of Cattelan’s independent creation of his work.
- Morford’s claim is barred by the copyright doctrine of merger.
Morford’s Motion for Summary Judgment
Morford moved for summary judgment on three grounds[15]:
- Morford established ownership of a valid copyright.
- Cattelan copied constituted elements of Morford’s work that are original.
- There is no dispute of material fact that Cattelan had access to Morford’s work.
Undisputed Facts
The court noted several undisputed facts in its decision granting Cattelan’s motion for summary judgment. Both works are three-dimensional wall sculptures depicting bananas duct-taped to a vertical surface.[16] They both include a single piece of plain gray duct tape crossing a yellow banana at an angle, and the duct tape affixes the banana to a vertical surface.[17] In both works, the banana’s stalk is oriented at the top, left-hand side of the work from the viewer’s perspective. [18]
The court then noted several differences between the works. Banana and Orange depicts a banana and an orange, with the orange taped above the banana.[19] The banana and orange are placed in the center of solid green rectangular panels, and the panels feature a border of plain masking tape.[20] Both the banana and orange are made of plastic.[21] The banana sits at a slight angle less than forty-five degrees from horizontal, with the stalk of the banana rising and pointing slightly toward the left. Comedian, in contrast, depicts only a banana duct-taped directly to a wall.[22] The banana is a real banana.[23] The work does not specify a specific color for its background – any wall will do.[24] There is no border around the banana.[25] The banana is placed with the stalk to the left at an angle greater than forty-five degrees from horizontal, with the stalk rising and pointing toward the right.[26]
The Court’s Analysis
The court began its analysis of the parties’ positions by articulating the elements a plaintiff must prove to succeed on a claim of copyright infringement: “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.”[27] Copying, in particular, requires both factual copying and legal copying.[28] “[I]n other words, a plaintiff must show both that (1) the defendant ‘actually used’ the copyrighted work and that (2) the copied elements are ‘protected expression’ such that the appropriation is legally actionable.[29] Factual copying must be shown by either (1) direct evidence or (2) indirect evidence “demonstrating that the defendant had access to the copyrighted work and that there are probative similarities between the allegedly infringing work and the copyrighted work.”[30] Legal copying, meanwhile, “looks to whether the similarities between the two works extend to the work’s original, protectible elements.”[31] Generally, “a substantial similarity” between the alleged copy and the protectable, original elements of the copyrighted work establishes actionable copying.[32]
Access
The court’s reasoning for denying Morford’s motion for summary judgment and granting Cattelan’s motion for summary judgment began with access.[33] “Access may not be proven by showing that a defendant simply had some possible opportunity to review a plaintiff’s copyrighted work.”[34] The Eleventh Circuit Court of Appeals, which has territorial jurisdiction over the Southern District of Florida, requires a plaintiff to demonstrate that a defendant had a “reasonable opportunity to view” the copyrighted work.[35] The court noted that, although Morford argued his work had been posted online for approximately ten years prior to the appearance of Cattelan’s piece, “mere availability, and therefore possibility of access, is not sufficient to prove access.”[36] A work’s presence on the internet is not by itself sufficient “to demonstrate access without some additional proof that the defendant had some relevant nexus to the plaintiff’s work or that the plaintiff’s work enjoyed some meaningful level of popularity.”[37] Morford submitted no evidence that Cattelan had a reasonable opportunity to have viewed Morford’s work.[38] Morford also failed to demonstrate that his work enjoyed any meaningful level of popularity, and in fact, the evidence showed that Morford’s piece “remained a relatively obscure work with very limited publication or popularity.”[39] Therefore, Morford failed to demonstrate that Cattelan had access to Morford’s work.[40] This finding alone would be dispositive of Morford’s claims, but the court further addressed the works’ similarities and Cattelan’s asserted defenses.[41]
Legal Copying
To determine whether material is protected and therefore conclude that two works are substantially similar in a legally protectable manner, the Eleventh Circuit uses the “abstraction-filtration-comparison” test.[42] Under that test, the court begins with abstraction by breaking down the allegedly infringing work into its constituent structural parts.[43] Next is filtration, which involves the court sifting out all non-protectable material.[44] Finally, the “last step is to compare any remaining kernels of creative expression with the allegedly infringing [work] to determine if there is in fact a substantial similarity—comparison.”[45]
The court applied the abstraction-filtration-comparison test and determined that Cattelan had established that Comedian is not substantially similar to Banana and Orange.[46] The court made this determination primarily at the filtration and comparison stages.[47]
Abstraction
Courts originally developed the abstraction test to review copyright claims regarding novels and plays but have also applied it in contexts like software programming.[48] The test involves “dissect[ing] the allegedly copied work’s structure and isolate[ing] each level of abstraction contained within it.”[49] The court quoted from its order denying the motion to dismiss in its discussion of abstraction:
Morford’s Banana & Orange features two green rectangular panels, each seemingly attached to a vertical wall by masking tape. The panels are stacked on top of each other, with a gap between each. Roughly centered on each green panel is a fruit: an orange on the top panel and a banana on the lower panel. The orange is surrounded by masking tape, and a piece of silver duct tape crosses the orange horizontally. The banana is at a slight angle, with the banana stalk on the left side pointing up. The banana appears to be fixed to the panel with a piece of silver duct tape running vertically at a slight angle, left to right.[50]
The court determined that it would review the filtration test and would apply the abstracted elements, this time with the benefit of the parties’ undisputed facts after discovery.[51]
Filtration
Addressing the filtration step of the abstraction-filtration-comparison test, the court noted that filtration is based on the idea that “copyright protection extends only to a work’s expressive elements, not to any underlying idea, procedure, process, system, method of operation, concept, principle, or discovery expressed therein.”[52] The filtration step also incorporates the merger doctrine, which the court mentioned but did not consider in its order denying the motion to dismiss.[53] The merger doctrine is based on the idea that “some expression may be so intrinsic to the communication of an idea—or procedure, process, etc.—that it is considered to have ‘merged’ into the idea.”[54] Generally, the defendant bears the burden of demonstrating that a particular element of a work should be filtered out during this stage.[55] In its order denying Cattelan’s motion to dismiss, the court held that (1) “Morford cannot claim a copyright in the idea of affixing a banana to a vertical plane using duct tape,” and (2) “Morford cannot claim a copyright in bananas or duct tape.[56]
While Morford argued that the merger doctrine did not apply because the artists’ chosen method of expression was a “creative choice” that could be copied,[57] Cattelan advocated that “the idea of duct-taping a banana to a vertical surface and the expression are essentially one and the same.”[58]
Ultimately, the court concluded that the merger doctrine applied, but not as broadly as Cattelan argued.[59] The court noted that “[t]he method chosen by both Morford and Cattelan—the ‘X’ shape of the duct tape crossing the banana in a perpendicular manner—essentially merges with the concept of taping a banana to a wall.”[60] That concept is, the court concluded, “the obvious choice,” and [a]n artist seeking to tape a banana (or really, any oblong fruit or other household object) to a wall is therefore left with ‘only a few ways of visually presenting the idea’—all of which involve a piece of tape crossing the banana at some non-parallel angle.”[61]
This conclusion determines that the “largest and most obvious abstracted element” of Morford’s work—a banana that appears to be fixed to a panel with silver duct tape running vertically at a slight angle, from left to right—is not protected under the merger doctrine.[62] Yet, the court noted that there are other protectable elements of Banana and Orange: “(1) the green rectangular panel on which the fruit is placed; (2) the use of masking tape to border the panels; (3) the orange on the top panel and banana on the bottom panel, both of which are centered; (4) the banana’s placement at a slight angle, with the banana stalk on the left side pointing up.”[63]
Comparison
Having broken down the work into relevant parts and having found four protectable elements, the court proceeded to the comparison step and outlined the comparable elements of each work as follows[64]:
| Element | Banana and Orange | Comedian |
| Background: | Solid green, rectangular panel | No specified background, any wall space may be used; white wall used in example |
| Border: | Plain masking tape | No border |
| Placement: | Banana roughly centered in bottom panel, below orange, with the stalk placed to the left-hand side | Banana placed at specified height above the floor, with the stalk placed to the lefthand side |
| Angle: | A slight angle (less than 45° from horizontal), with the stalk of the banana rising and pointing slightly towards the left | A strong angle (greater than 45° from horizontal), with the stalk of the banana rising and pointing back towards the right |
The court concluded that Banana and Orange and Comedian shared only one protectable common feature: both bananas are situated in the works with their stalks on the left-hand side of the sculpture.[65] This was, on its own, “insignificant and insufficient to support a finding of legal copying.”[66]
The works’ remaining features “are simply too disparate to support a finding of substantial similarity.”[67] Those remaining features include: “Banana and Orange’s background is green and is not a part of the wall itself. . . . Comedian’s background is always the wall itself; it just so happens that in the (in)famous Art Basel display, the wall was white. . . . Banana and Orange has a border of masking tape around the piece; Comedian has no border—it is simply a banana on a wall. . . . The banana in Banana and Orange is roughly centered on the green backing and placed below a similarlycentered orange. . . . The banana in Comedian is placed relative to the floor, rather than relative to a piece of backing or another object taped to the wall. . . . Finally, Banana and Orange’s banana is placed at a different angle than Comedian’s, and the bananas’ stalks ultimately point in different directions due to the different angles.”[68]
Morford’s argument that the bananas’ angles are relatively similar did not persuade the court: “There are only so many angles at which a banana can be placed on a wall” and a ruling that “Morford’s and Cattelan’s selections of different angles were ‘close enough’ to reach substantial similarity would necessarily place a significant legal limit on the number of ways that a banana can be taped to a wall without copying another artist’s work.”[69] The court also rejected Morford’s argument that the differences were “intentional dissimilarities” because that theory would require the court “to find that Morford could essentially copyright the idea of a banana taped to a wall,” which the court refused to do.[70]
Although the court was unwilling to rule conclusively that Comedian was not substantially similar to Banana and Orange at the motion to dismiss stage, with the benefit of discovery and an opportunity to fully address the applicability of the merger doctrine, the court concluded that “the lack of similarity between the two works [was] clear and inescapable.”[71] The court thus found that the works were not substantially similar, and therefore, Cattelan did not copy Morford’s work.[72]
Cattelan’s Independent Creation of Comedian
The court’s final piece of analysis considered whether Morford could rebut Cattelan’s evidence that the latter independently created Comedian.[73] “Proof of access and substantial similarity raises only a presumption of copying which may be rebutted by [the defendant] with evidence of independent creation.”[74] After the defendant has offered competent evidence of independent creation, “the burden shifts to the plaintiff to prove that the defendant in fact copied the original work.”[75]
Here, the court concluded that Cattelan provided “sufficient evidence supporting his defense of independent creation, and Morford fail[ed] to rebut any of it.”[76] For instance, Cattelan provided a declaration from one of his employees confirming the artist’s recollections of the process he used to create Comedian.[77] That process included conceiving of the idea of displaying a banana taped to a wall in 2018, in response to an invitation from New York magazine.[78] Cattelan also affirmatively stated he had never heard of Morford or Banana and Orange prior to this lawsuit.[79]
Morford, for his part, failed to rebut any of Cattelan’s or his employee’s statements.[80] Nor did Morford cite to any evidence in the record that raised a genuine dispute of material fact regarding Cattelan’s expression of independent creation.[81] Thus, only Cattelan “put forward any evidence addressing the defense of independent creation,” and the court “credit[ed] his declaration and the declaration of his employee.”[82] The court therefore concluded that, “even if Morford could prove factual and legal copying through reasonable opportunity for access and substantial similarity, the independent creation doctrine would prevent his recovery against Cattelan for copyright infringement.”[83]
Conclusion
Having found no dispute of material fact with regard to “Cattelan’s lack of access to Banana and Orange, the lack of legal similarities between Comedian and Banana and Orange, and Cattelan’s proof of his independent creation of Comedian,”[84] the court granted Cattelan’s motion for summary judgment and denied Morford’s motion for summary judgment. Morford has until July 12 to file a notice of appeal.
This case illustrates the basic legal point that copyright does not protect ideas, but only the particular expression of an idea. The idea to duct-tape a banana to a vertical surface is too abstract to be owned by any one artist.
[1] Morford v. Cattelan, 2023 BL 201301 (S.D. Fla. June 9, 2023).
[2] Clara Cassan & Sigrid Jernudd, Copyright Goes Bananas: District Court Rejects Maurizio Cattelan’s Motion to Dismiss Copyright Claim Against His Taped Banana, HHR ART LAW (Dec. 7, 2022), https://www.hhrartlaw.com/2022/12/copyright-goes-bananas-district-court-rejects-maurizio-cattelans-motion-to-dismiss-copyright-claim-against-his-taped-banana.
[3] Born in 1960, Cattelan is best known for his provocative sculptures. His oeuvre includes La Nona Hora (1999), a wax statue of Pope John Paul II being hit by a meteorite, and Him (2001), a wax figure of Adolf Hitler in a prayer position.
[4] Sarah Cascone, Maurizio Cattelan Is Taping Bananas to a Wall at Art Basel Miami Beach and Selling Them for $120,000 Each, ARTNET NEWS (Dec. 4, 2019), https://news.artnet.com/market/maurizio-cattelan-banana-art-basel-miami-beach-1722516 [https://web.archive.org/web/20230623235702/https://news.artnet.com/market/maurizio-cattelan-banana-art-basel-miami-beach-1722516].
[5] Angela Moore, Man who ate $120,000 banana at art show says ‘I’m not sorry’, REUTERS (Dec. 9, 2019, 5:35 PM), https://www.reuters.com/article/us-art-basel-artist-idUSKBN1YD2F2 [https://web.archive.org/web/20230623211137/https://www.reuters.com/article/us-art-basel-artist-idUSKBN1YD2F2]
[6] Benjamin Sutton, Hungry art student eats Maurizio Cattelan’s banana work, THE ART NEWSPAPER (May 1, 2023), https://www.theartnewspaper.com/2023/05/01/art-student-eats-maurizio-cattelan-banana-leeum-museum-seoul [https://web.archive.org/web/20230623235555/https://www.theartnewspaper.com/2023/05/01/art-student-eats-maurizio-cattelan-banana-leeum-museum-seoul].
[7] Complaint, Morford v. Cattelan, No. 1:21-cv-20039-RNS (S.D. Fla. Jan. 4. 2021) (No. 1),
[8] Morford v. Cattelan, 2022 BL 234215 (S.D. Fla. July 6, 2022).
[9] Defendant’s Answer and Affirmative Defenses, Morford v. Cattelan, No. 1:21-cv-20039-RNS (S.D. Fla. Aug. 9, 2022) (No. 57).
[10] Mediator’s Report, Morford v. Cattelan, No. 1:21-cv-20039-RNS (S.D. Fla. Oct. 17, 2022) (No. 59).
[11] Defendant’s Motion for Summary Judgment, Morford v. Cattelan, No. 1:21-cv-20039-RNS (S.D. Fla. March 6, 2023) (No. 79); Plaintiff’s Motion for Summary Judgment, Morford v. Cattelan, No. 1:21-cv-20039-RNS (S.D. Fla. March 6, 2023) (No. 81).
[12] Defendant’s Response to Plaintiff’s Motion for Summary Judgment, Morford v. Cattelan, No. 1:21-cv-20039-RNS (S.D. Fla. March 20, 2023) (No. 88); Plaintiff’s Response to Defendant’s Motion for Summary Judgment, Morford v. Cattelan, No. 1:21-cv-20039-RNS (S.D. Fla. March 20, 2023) (No. 90).
[13] Defendant’s Reply in Support of Defendant’s Motion for Summary Judgment, Morford v. Cattelan, No. 1:21-cv-20039-RNS (S.D. Fla. March 27, 2023) (No. 95); Plaintiff’s Reply to Defendant’s Opposition to Plaintiff’s Motion for Summary Judgment, Morford v. Cattelan, No. 1:21-cv-20039-RNS (S.D. Fla. March 28, 2023) (No. 96).
[14] Defendant’s Motion for Summary Judgment, at 1-2, Morford v. Cattelan, No. 1:21-cv-20039-RNS (S.D. Fla. March 6, 2023) (No. 79).
[15] Defendant’s Memorandum of Law in Support of Motion for Summary Judgment, at 1-2, Morford v. Cattelan, No. 1:21-cv-20039-RNS (S.D. Fla. March 6, 2023) (No. 82).
[16] Morford v. Cattelan, 2022 BL 234215, at *3 (S.D. Fla. July 6, 2022).
[17] Id.
[18] Id.
[19] Id.
[20] Id.
[21] Id.
[22] Id.
[23] Id.
[24] Id.
[25] Id.
[26] Id., at *3-4.
[27] Morford v. Cattelan, 2023 BL 201301, at *4 (quoting Compulife Software Inc. v. Newman, 959 F.3d 1288, 1301 (11th Cir. 2020)).
[28] Morford v. Cattelan, 2023 BL 201301, at *4.
[29] Id. (citing Newman, 959 F.3d at 1301; MiTek Holdings, Inc. v. Arce Eng’g Co., 89 F.3d 1548, 1554 (11th Cir. 1996)).
[30] Id. (citing Newman, 959 F.3d. at 1301).
[31] Id.
[32] Id. (citing Newman, 959 F.3d. at 1302).
[33] Id. at *5
[34] Id.
[35] Id. (citing Herzog v. Castle Rock Ent., 193 F.3d 1239, 1249 (11th Cir. 2007)).
[36] Id.
[37] Id. at *6 (citing Herzog, 193 F.3d at 1249; Watt v. Butler, 457 F. App’x 856, 859-60 (11th Cir. 2012))..
[38] Id. at *6.
[39] Id.
[40] Id.
[41] Id.
[42] Id.
[43] Id. (citing Newman, 959 F.3d. at 1303).
[45] Id.
[45] Id.
[46] Id.
[47] Id.
[48] Id. at *7 (citing Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 707 (2d Cir. 1992)).
[49] Id.
[50] Id. (citing Morford v. Cattelan, 2022 BL 234215, at *6-7 (S.D. Fla. July 6, 2022)).
[51] Id. at *7.
[52] Id. at *7-8 (citing Newman, 959 F.3d at 1304)).
[53] Morford v. Cattelan, 2022 BL 234215 at *7 (S.D. Fla. July 6, 2022).
[54] Morford v. Cattelan, 2023 BL 201301 at *8 (S.D. Fla. June 9, 2023) (quoting Newman, 959 F.3d at 1304)).
[55] Id. (citing Newman, 959 F.3d at 1305).
[56] Morford v. Cattelan, 2022 BL 234215 at *7 (S.D. Fla. July 6, 2022).
[57] Id. (quoting Plaintiff’s Response to Defendant’s Motion for Summary Judgment, Morford v. Cattelan, No. 1:21-cv-20039-RNS, at 18 (S.D. Fla. March 20, 2023) (No. 90)).
[58] Id. (quoting Defendant’s Motion for Summary Judgment, Morford v. Cattelan, No. 1:21-cv-20039-RNS, at 20 (S.D. Fla. March 6, 2023) (No. 79)).
[59] Morford v. Cattelan, 2023 BL 201301 at *9 (S.D. Fla. June 9, 2023).
[60] Id. (citing BUC Intl. Corp. v. Intl. Yacht Council Ltd., 489 F.3d 1129, 1143 (11th Cir. 2007)).
[61] Id.
[62] Morford v. Cattelan, 2023 BL 201301 at *9 (S.D. Fla. June 9, 2023).
[63] Id. at *10.
[64] Id. at *10 (footnote omitted).
[65] Id.
[66] Id. (citing Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 710 (2d Cir. 1992)).
[67] Id. at *11.
[68] Id. (citations omitted).
[69] Id. (citing BUC Intl., 489 F.3d at 1143)).
[70] Id. at *11.
[71] Id. at *12.
[72] Id.
[73] Id.
[74] Id. (quoting Calhoun v. Lillenas Publ’g, 298 F.3d 1228, 1232 (11th Cir. 2002)).
[75] Id. (citing Calhoun, 298 F.3d at 1233)).
[76] Id. at *12.
[77] Id. at *13.
[78] Id. at *12 (citation omitted).
[79] Id. at *13.
[80] Id.
[81] Id.
[82] Id. (citing Calhoun, 298 F.3d at 1233-34)).
[83] Id.
[84] Id. at *13