On August 16, 2024, the United States Court of Appeals for the Eleventh Circuit affirmed Italian artist Maurizio Cattelan’s legal victory in the copyright lawsuit fellow artist Joe Morford brought against him alleging that Comedian (2019), Cattelan’s famous duct-taped banana installation at Art Basel Miami Beach in 2019, infringed on Morford’s work entitled Banana and Orange (2000).[1]
Cattelan created Comedian in an edition of three, each priced at $120,000 and sold at Art Basel Miami Beach in 2019 (one of which the Solomon R. Guggenheim Museum in New York later received as an anonymous donation). According to Cattelan, he chose the work’s title, Comedian, to reflect the absurdity of assigning a $120,000 list price to a work consisting of a “simple” and “banal” banana duct-taped to a wall.[2] The absurdism continues—as reported in The Art Newspaper on October 24, 2024, Sotheby’s New York will offer one of the three Comedians for sale at auction on November 20. Sotheby’s estimates that the duct-taped banana may sell for between $1 million and $1.5 million.[3]
Like Cattelan’s Comedian (on the left, below), Morford’s Banana and Orange (on the right, below), features “the application of duct tape to a banana against a flat surface.”[4] However, Cattelan’s Comedian consists of a real banana duct-taped onto a white wall, in contrast to Morford’s Banana and Orange, a diptych which features a synthetic sculptural banana and orange duct-taped to green painted paper.
As previously reported on this blog, in July 2022, the United States District Court for the Southern District of Florida denied Cattelan’s motion to dismiss Morford’s infringement claim, holding that Morford adequately alleged a substantial similarity between Comedian and Banana and Orange to sustain his lawsuit at the pleading stage.
In March 2023, after the close of discovery and an unsuccessful attempt at mediation, each artist moved for summary judgment. As we also previously reported, in June of that year, U.S. District Judge Robert N. Scola, Jr. granted Cattelan’s summary judgment motion, finding that Cattelan established that (i) as a matter of fact, he lacked access to Banana and Orange and independently created it, and (ii) as a matter of law, Comedian and Banana and Orange are not sufficiently similar to sustain a copyright infringement claim.[5] Morford appealed.
On August 16, 2024, the Eleventh Circuit issued a short, unpublished opinion upholding the District Court’s decision on de novo review. [6]
The Eleventh Circuit’s Opinion
On appeal, Morford argued that he could demonstrate striking similarity between Banana and Orange and Comedian, and therefore he was not required to proffer direct evidence of copying or that Cattelan had a reasonable opportunity to access Morford’s work to prevail on his copyright infringement claim. In the alternative, Morford argued that he could show both substantial similarity and that Cattelan had a reasonable opportunity to access Banana and Orange because it was widely disseminated and readily discoverable online.
The Eleventh Circuit agreed with the District Court that Morford failed to submit sufficient evidence to create a jury issue on whether Cattelan had access to Morford’s Banana and Orange. The Eleventh Circuit also agreed with the District Court that Cattelan’s Comedian, while similar to Banana and Orange, does not meet the high standard for “striking similarity” required to establish a copyright claim absent a showing of access.
The Eleventh Circuit observed that establishing access to a copyrighted work sufficient to prevail on an infringement claim requires proof of a “reasonable opportunity to view” the copyrighted work. Morford established that his work was available on his public Facebook page for nearly ten years and was featured in one of his YouTube videos and in a blog post. However, the court held that mere availability, and thus possibility of access, was not adequate to demonstrate the requisite nexus between Morford’s work and Cattelan to establish an inference of access.[7] The Eleventh Circuit further observed that, even if it were to adopt a “widespread dissemination” approach used in some of the other circuits (e.g., the Fifth Circuit covering Mississippi, Louisiana and Texas), Morford failed to establish that his Banana and Orange “enjoyed considerable success or publicity,” as the widespread dissemination approach requires.[8] The Eleventh Circuit did not indicate what would satisfy the “considerable success or publicity,” standard required under the “widespread dissemination” approach, but held that “mere availability on the internet, without more,” is not enough.[9]
The Eleventh Circuit acknowledged that, “where a plaintiff cannot demonstrate access, he or she may ‘establish copying by demonstrating that [the] original work and the putative infringing work are strikingly similar.’”[10] However, in doing so, the court rejected Morford’s assertion that he “established striking similarity based on the same two incongruous items being chosen, grouped, and presented in the same manner within both works,” observing that “even ‘identical expression does not necessarily constitute infringement.”[11] Rather, the Eleventh Circuit found that, although “the use of the same two incongruous items (a banana and duct tape) are indeed similar, there are sufficient differences in the two displays to preclude a finding of striking similarity,” including that Banana and Orange “contains both a banana and orange held by duct tape,” whereas Comedian “only contains a banana held by duct tape.”[12]
Conclusion
This case illustrates that, in the Eleventh Circuit (which includes Alabama, Florida and Georgia), the mere fact that a work is publicly available on the internet cannot support a finding of access sufficient to sustain a copyright infringement claim. There must be additional proof that the alleged infringer had some relevant nexus to the original work or that the original work “enjoyed considerable success or publicity.” Absent a showing of access, a plaintiff may establish copying by proving that a “striking similarity” exists between the two works that is “so great it precludes the possibility of coincidence, independent creation or common source.” But that is a high bar to clear.
[1] Morford v. Cattelan, No. 23-12263, 2024 WL 3857453 (11th Cir. Aug.16, 2024) (Jordan, Pryor, Branch, JJ.) (per curiam).
[2] Morford v. Cattelan, No. 1:21-cv-20039-RNS (S.D. Fla.), ECF 74-1 (Decl. of Maurizio Cattelan in Supp. of His Mot. for Summ. J., Mar. 6, 2023) at ¶¶ 14-16 (“Without the price, the piece did not work and would be nothing more than an ordinary banana hanging on a wall. Specifically, the list price had to be high enough to create astonishment and disbelief, but not too high to prevent the piece from being sold. After considering various selling prices, I chose $120,000 as a retail list price. Several days later, I decided on the title, Comedian, to reflect the absurdity of a $120,000 list price for a simple banana duct-taped to a wall.”). See also id. ECF 78 (Def.’s Statement of Undisputed Material Facts, Mar. 6, 2023) at ¶ 22 (“[Cattelan] decided that the selling price of the work could transform the banana/duct tape into an artistic expression.”).
[3] Carlie Porterfield, Maurizio Cattelan’s famous duct-taped banana could bring more than $1m at auction, The Art Newspaper (Oct. 24, 2024), https://www.theartnewspaper.com/2024/10/24/maurizio-cattelan-banana-at-auction.
[4] Morford, 2024 WL 3857453, at *1.
[5] Morford v. Cattelan, No. 21-20039, 2023 BL 201301 (S.D. Fla. June 9, 2023).
[7] Id. at *2.
[8] Id.
[9] Id.
[10] Id. (citing Corwin v. Walt Disney World Co., 475 F.3d 1239, 1253 (11th Cir. 2007)).
[11] Id. (citing Calhoun v. Lillenas Publishing, 298 F.3d 1228, 1232 & n.9 (11th Cir. 2002), Cf. Orig. Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 829 n.11 (11th Cir. 1982); Franklin Mint Corp. v. Nat’l Wildlife Art Exchange, Inc., 575 F.2d 62, 66-67 (3d Cir. 1978)).
[12] Id.