Kelley v. Chicago Park Dist., 635 F. 3d 290

Kelley v. Chicago Park Dist., 635 F. 3d 290 - Court of Appeals, 7th Circuit 2011 - Google Scholar

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635 F.3d 290 (2011)

Chapman KELLEY, Plaintiff-Appellant/Cross-Appellee,v.

CHICAGO PARK DISTRICT, Defendant-Appellee/Cross-Appellant.

Nos. 08-3701, 08-3712.

Argued September 10, 2009.Decided February 15, 2011.

United States Court of Appeals, Seventh Circuit.

*291 Alexander L. Karan, Micah E. Marcus (argued), Attorneys, Kirkland & Ellis LLP, Chicago, IL, for Plaintiff-Appellant.291

Annette M. McGarry (argued), Attorney, McGarry & McGarry, Jeanne G. Toft, Attorney, Chicago Park District Law Department, Chicago, IL,for Defendant-Appellee.

Before MANION, SYKES, and TINDER, Circuit Judges.

SYKES, Circuit Judge.

Chapman Kelley is a nationally recognized artist known for his representational paintings of landscapes and flowers—in particular,romantic floral and woodland interpretations set within ellipses. In 1984 he received permission from the Chicago Park District to install anambitious wildflower display at the north end of Grant Park, a prominent public space in the heart of downtown Chicago. "WildflowerWorks" was thereafter planted: two enormous elliptical flower beds, each nearly as big as a football field, featuring a variety of nativewildflowers and edged with borders of gravel and steel.

Promoted as "living art," Wildflower Works received critical and popular acclaim, and for a while Kelley and a group of volunteers tendedthe vast garden, pruning and replanting as needed. But by 2004 Wildflower Works had deteriorated, and the City's goals for Grant Park hadchanged. So the Park District dramatically modified the garden, substantially reducing its size, reconfiguring the oval flower beds intorectangles, and changing some of the planting material.

Kelley sued the Park District for violating his "right of integrity" under the Visual Artists Rights Act of 1990 ("VARA"), 17 U.S.C. § 106A, andalso for breach of contract. The contract claim is insubstantial; the main event here is the VARA claim, which is novel and tests theboundaries of copyright law. Congress enacted this statute to comply with the nation's obligations under the Berne Convention for theProtection of Literary and Artistic Works. VARA amended the Copyright Act, importing a limited version of the civil-law concept of the"moral rights of the artist" into our intellectual-property law. In brief, for certain types of visual art—paintings, drawings, prints, sculptures,and exhibition photographs—VARA confers upon the artist certain rights of attribution and integrity. The latter include the right of the artistto prevent, during his lifetime, *292 any distortion or modification of his work that would be "prejudicial to his . . . honor or reputation," andto recover for any such intentional distortion or modification undertaken without his consent. See 17 U.S.C. § 106A(a)(3)(A).

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The district court held a bench trial and entered a split judgment. The court rejected Kelley's moral-rights claim for two reasons. First, thejudge held that although Wildflower Works could be classified as both a painting and a sculpture and therefore a work of visual art underVARA, it lacked sufficient originality to be eligible for copyright, a foundational requirement in the statute. Second, following the FirstCircuit's decision in Phillips v. Pembroke Real Estate, Inc., 459 F.3d 128 (1st Cir.2006), the court concluded that site-specific art likeWildflower Works is categorically excluded from protection under VARA. The court then held for Kelley on the contract claim, but found hisevidence of damages uncertain and entered a nominal award of $1. Both sides appealed.

We affirm in part and reverse in part. There is reason to doubt several of the district court's conclusions: that Wildflower Works is a paintingor sculpture; that it flunks the test for originality; and that all site-specific art is excluded from VARA. But the court was right to reject thisclaim; for reasons relating to copyright's requirements of expressive authorship and fixation, a living garden like Wildflower Works is notcopyrightable. The district court's treatment of the contract claim is another matter; the Park District is entitled to judgment on that claim aswell.

I. Background

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Kelley is a painter noted for his use of bold, elliptical outlines to surround scenes of landscapes and flowers. In the late-1970s and 1980s,he moved from the canvas to the soil and created a series of large outdoor wildflower displays that resembled his paintings. He planted thefirst in 1976 alongside a runway at the Dallas-Fort Worth International Airport and the second in 1982 outside the Dallas Museum ofNatural History. The wildflower exhibit at the museum was temporary; the one at the airport just "gradually petered out."

In 1983 Kelley accepted an invitation from Chicago-based oil executive John Swearingen and his wife, Bonnie—collectors of Kelley'spaintings—to come to Chicago to explore the possibility of creating a large outdoor wildflower display in the area. He scouted sites by landand by air and eventually settled on Grant Park, the city's showcase public space running along Lake Michigan in the center of downtownChicago. This location suited Kelley's artistic, environmental, and educational mission; it also provided the best opportunity to reach a largeaudience. Kelley met with the Park District superintendent to present his proposal, and on June 19, 1984, the Park District Board ofCommissioners granted him a permit to install a "permanent Wild Flower Floral Display" on a grassy area on top of the undergroundMonroe Street parking garage in Daley Bicentennial Plaza in Grant Park. Under the terms of the permit, Kelley was to install and maintainthe exhibit at his own expense. The Park District reserved the right to terminate the installation by giving Kelley "a 90 day notice to removethe planting."

Kelley named the project "Chicago Wildflower Works I." The Park District issued a press release announcing that "a new form of `living' art"was coming to Grant Park—"giant ovals of multicolored wildflowers" created by Kelley, a painter and "pioneer in the use of naturalmaterials" who "attracted national prominence for his efforts to incorporate the landscape *293 in artistic creation." The announcementexplained that "[o]nce the ovals mature, the results will be two breathtaking natural canvases of Kelley-designed color patterns."

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In the late summer of 1984, Kelley began installing the two large-scale elliptical flower beds at the Grant Park site; they spanned 1.5 acresof parkland and were set within gravel and steel borders. A gravel walkway bisected one of the ovals, and each flower bed alsoaccommodated several large, preexisting air vents that were flush with the planting surface, providing ventilation to the parking garagebelow. For planting material Kelley selected between 48 and 60 species of self-sustaining wildflowers native to the region. The specieswere selected for various aesthetic, environmental, and cultural reasons, but also to increase the likelihood that the garden could withstandChicago's harsh winters and survive with minimal maintenance. Kelley designed the initial placement of the wildflowers so they wouldblossom sequentially, changing colors throughout the growing season and increasing in brightness towards the center of each ellipse. Hepurchased the initial planting material—between 200,000 and 300,000 wildflower plugs—at a cost of between $80,000 and $152,000. InSeptember of 1984, a battery of volunteers planted the seedlings under Kelley's direction.

When the wildflowers bloomed the following year, Wildflower Works was greeted with widespread acclaim. Chicago's mayor, the IllinoisSenate, and the Illinois Chapter of the American Society of Landscape Artists issued commendations. People flocked to see the lovelydisplay—marketed by the Park District as "living landscape art"—and admiring articles appeared in national newspapers. Wildflower Workswas a hit. Here's a picture:

*294 For the next several years, Kelley's permit was renewed and he and his volunteers tended the impressive garden. They pruned andweeded and regularly planted new seeds, both to experiment with the garden's composition and to fill in where initial specimen had notflourished. Of course, the forces of nature—the varying bloom periods of the plants; their spread habits, compatibility, and life cycles; andthe weather—produced constant change. Some wildflowers naturally did better than others. Some spread aggressively and encroached onneighboring plants. Some withered and died. Unwanted plants sprung up from seeds brought in by birds and the wind. Insects, rabbits, andweeds settled in, eventually taking a toll. Four years after Wildflower Works was planted, the Park District decided to discontinue theexhibit. On June 3, 1988, the District gave Kelley a 90-day notice of termination.

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Kelley responded by suing the Park District in federal court, claiming the termination of his permit violated the First Amendment. The partiesquickly settled; in exchange for dismissal of the suit, the Park District agreed to extend Kelley's permit for another year. On September 14,1988, the Park District issued a "Temporary Permit" to Kelley and Chicago Wildflower Works, Inc., a nonprofit organization formed by hisvolunteers. This permit authorized them "to operate and maintain a two ellipse Wildflowers Garden Display . . . at Daley Bicentennial Plazain Grant Park" until September 1, 1989. The permit stipulated that Kelley "will have responsibility and control over matters relating to theaesthetic design and content of Wildflower Works I," and Wildflower Works, Inc. "shall maintain the Wildflower Works I at no cost to theChicago Park District including, without limitation, weeding and application of fertilizer." Although it did not contain a notice-of-terminationprovision, the permit did state that "[t]he planting material is the property of Mr. Chapman Kelley" and that Kelley "may remove the plantingmaterial" if the permit was not extended. Finally, the permit provided that "[t]his agreement does not create any proprietary interest forChicago Wildflower Works, Inc., or Mr. Chapman Kelley in continuing to operate and maintain the Wildflower Garden Display afterSeptember 1, 1989."



The Park District formally extended this permit each succeeding year through 1994. After that point Kelley and his volunteers continued tocultivate Wildflower Works without a permit, and the Park District took no action, adverse or otherwise, regarding the garden's future. InMarch 2004 Kelley and Jonathan Dedmon, president of Wildflower Works, Inc., attended a luncheon to discuss the 20th anniversary ofWildflower Works. At the luncheon Dedmon asked Park District Commissioner Margaret Burroughs if Wildflower Works needed a newpermit. Commissioner Burroughs responded, "You're still there, aren't you? That's all you need to do."

Three months later, on June 10, 2004, Park District officials met with Kelley and Dedmon to discuss problems relating to inadequatemaintenance of the garden and forthcoming changes to Grant Park necessitated by the construction of the adjacent Millennium Park. Theofficials proposed reconfiguring Wildflower Works—decreasing its size from approximately 66,000 square feet to just under 30,000 squarefeet and remaking its elliptical flower beds into rectangles. The District's director of development invited Kelley's views on this proposal butmade it clear that the District planned to go forward with the reconfiguration with or without Kelley's approval. Kelley objected to theproposed changes, but did not request an opportunity to remove his planting material before the reconfiguration took place. A week laterthe *295 Park District proceeded with its plan and reduced Wildflower Works to less than half its original size. The elliptical borders becamerectilinear, weeds were removed, surviving wildflowers were replanted in the smaller-scale garden, and some new planting material wasadded. Dedmon sent a letter of protest to the Park District.

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Kelley then sued the Park District for violating his moral rights under VARA. He claimed that Wildflower Works was both a painting and asculpture and therefore a "work of visual art" under VARA, and that the Park District's reconfiguration of it was an intentional "distortion,mutilation, or other modification" of his work and was "prejudicial to his . . . honor or reputation." See 17 U.S.C. § 106A(a)(3)(A). He alsoalleged breach of contract; he claimed that Commissioner Burroughs's remark created an implied contract that the Park District had

breached when it altered Wildflower Works without providing reasonable notice.[1] On the VARA claim Kelley sought compensation for themoral-rights violation, statutory damages, and attorney's fees; on the contract claim he sought the fair-market value of the planting materialremoved in the reconfiguration. He later quantified his damages, estimating the value of the plants at $1.5 million and requesting astaggering $25 million for the VARA violation.

The case proceeded to a bench trial, and the district court entered judgment for the Park District on the VARA claim and for Kelley on thecontract claim. See Kelley v. Chi. Park Dist., No. 04 C 07715, 2008 WL 4449886 (N.D.Ill. Sept. 29, 2008). The judge first concluded thatWildflower Works could be classified as both a painting and a sculpture and therefore qualified as a work of visual art under VARA. Id. at*4-5. But he also held that Wildflower Works was insufficiently original for copyright, a prerequisite to moral-rights protection under VARA.Id. at *6. Alternatively, the judge concluded that Wildflower Works was site-specific art, and following the First Circuit's decision in Phillips,held that VARA did not apply to this category of art. Id. at *6-7. On the contract claim the court construed the Chicago Park District Act, 70ILL. COMP. STAT. 1505/7.01, to permit individual commissioners to enter into binding contracts on the Park District's behalf. Id. at *7-8.The judge found that Commissioner Burroughs's statement—"You're still there, aren't you? That's all you need to do."— created an impliedcontract that the Park District had breached by failing to give Kelley reasonable notice before altering Wildflower Works. Id. But the judgealso concluded that Kelley had failed to prove damages to a reasonable certainty and awarded $1 in nominal damages. Id. at *9.

Kelley appealed, challenging the adverse judgment on the VARA claim and the district court's treatment of the damages issue on thecontract claim. The Park District cross-appealed from the judgment on the contract claim.

II. Discussion

This case comes to us from a judgment entered after a bench trial; we review the district court's factual findings for clear error and itsconclusions of law de novo. Spurgin-Dienst v. United States, 359 F.3d 451, 453 (7th Cir.2004). In this circuit, questions of copyrighteligibility *296 are issues of law subject to independent review. Schrock v. Learning Curve Int'l, Inc., 586 F.3d 513, 517 (7th Cir.2009).296

A. Kelley's Moral-Rights Claim Under the Visual Artists Rights Act of 1990

1. A brief history of moral rights

That artists have certain "moral rights" in their work is a doctrine long recognized in civil-law countries but only recently imported into theUnited States. Moral rights are generally grouped into two categories: rights of attribution and rights of integrity. "Rights of attribution"generally include the artist's right to be recognized as the author of his work, to publish anonymously and pseudonymously, to preventattribution of his name to works he did not create, and to prevent his work from being attributed to other artists. Carter v. Helmsley-Spear,Inc.,









71 F.3d 77, 81 (2d Cir.1995) (citing RALPH E. LERNER & JUDITH BRESLER, ART LAW 419-20 (1989)). "Rights of integrity" includethe artist's right to prevent the modification, mutilation, or distortion of his work, and in some cases (if the work is of recognized stature), toprevent its destruction. Id. at 81-82 (citing ART LAW at 420-21).

Originating in nineteenth-century France, moral rights—le droit moral [2]— are understood as rights inhering in the artist's personality,transcending property and contract rights and existing independently of the artist's economic interest in his work. See 3 MELVILLE B.NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT § 8D.01[A] (2010); 5 WILLIAM F. PATRY, PATRY ON COPYRIGHT §§ 16:1, 16:3(2010); John Henry Merryman, The Refrigerator of Bernard Buffet, 27 HASTINGS L.J. 1023, 1023-28 (1976). American copyright law, onthe other hand, protects the economic interests of artists; Article I of the Constitution authorizes Congress "To Promote the Progress ofScience and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings andDiscoveries." U.S. CONST. art. 1, § 8, cl. 8. Unlike other intellectual-property rights, moral rights are unrelated to the artist's pecuniaryinterests and are grounded in philosophical ideas about the intrinsic nature and cultural value of art rather than natural-property or utility

justifications.[3] See Carter, 71 F.3d at 81 (describing moral rights as "rights of a spiritual, non-economic and personal nature [that] . . .spring from a belief that an artist in the process of creation injects his spirit into the work and that the artist's personality, as well as theintegrity of the work, should therefore be protected and preserved"). VARA introduced a limited version of this European doctrine into

American law, but it is not an easy fit.[4]

*297 VARA was enacted as a consequence of the United States' accession to the Berne Convention for the Protection of Literary andArtistic Works. After many years of resistance, the Senate ratified the treaty in 1988, bringing the United States into the Berne Unioneffective the following year. See 4 NIMMER § 17.01[C][2] (2010); 5 PATRY §§ 16:1, 16:3. The Berne Convention dates to 1886, whenseven European nations (plus Haiti and Tunisia) joined together to extend copyright protection across their borders. See 4 NIMMER §17.01[B][1] nn. 10 & 17 (2002). During the course of the next century, many other nations joined, and the treaty underwent periodicrevisions, most notably for our purposes in 1928 when Article 6bis was added, incorporating the concept of moral rights. See 3 id. §8D.01[B] (2004); 5 PATRY §§ 16:1, 16:3. Article 6bis provides:

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(1) Independently of the author's economic rights, and even after the transfer of the said rights, the author shall have theright to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatoryaction in relation to, the said work, which would be prejudicial to his honor or reputation.

. . . .

(3) The means of redress for safeguarding the rights granted by this Article shall be governed by the legislation of thecountry where protection is claimed.

Berne Convention for the Protection of Literary and Artistic Works, art. 6bis, Sept. 9, 1886, as revised at Paris on July 24, 1971, S.TREATY DOC. NO. 99-27 (1986).

When the United States joined the Berne Union in 1989, the concept of moral rights was largely unknown in American law. See Lee v.A.R.T. Co., 125 F.3d 580, 582 (7th Cir.1997) ("[I]t was accepted wisdom [before VARA] that the United States did not enforce any claim ofmoral rights."); see also Weinstein v. Univ. of Ill., 811 F.2d 1091, 1095 n. 3 (7th Cir.1987) (The Continental principle of le droit moral is adoctrine that "no American jurisdiction follows as a general matter."); Merryman, The Refrigerator of Bernard Buffet, 27 HASTINGS L.J. at1035-36 ("The moral right of the artist, and in particular that component called the right of integrity of the work of art, simply does not existin our law."). Article 6bis was a major obstacle to Berne ratification. See Martin v. City of Indianapolis, 192 F.3d 608, 611 (7th Cir.1999)(The treaty's moral-rights concept "was controversial in this country" and was embraced post-Berne only "in a very limited way."); Carter,71 F.3d at 82-83 ("The issue of federal protection of moral rights was a prominent hurdle in the debate over whether the United Statesshould join the Berne Convention. . . ."); see also 3 NIMMER § 8D.02[A]-[D] (2004); 5 PATRY §§ 16:1, 16:3; Roberta Rosenthal Kwall,How Fine Art Fares Post VARA, 1 MARQ. INTELL. PROP. L.REV. 1, 1-4 (1997).

American unease with European moral-rights doctrine—more particularly, the obligations imposed by Article 6bis—persisted beyond Berneratification. Indeed, Congress initially took the position that domestic law already captured the concept in existing copyright and common-law doctrines and in the statutory law of some states. See Berne Convention Implementation Act of 1988, Pub.L. No. 100-568, §§ 2(2), (3),102 Stat. 2853; 3 NIMMER § 8D.02[D][1] (2009); 5 PATRY § 16:3. This was seen as an implausible claim. See 3 NIMMER § 8D.02[D][1]("Th[e] Congressional finding flies in the *298 face of numerous judicial and scholarly pronouncements. . . ."); 5 PATRY § 16:3 (TheAmerican position that existing federal and state laws satisfied minimum Berne obligations created "a web of fictional compliance."). "[A]question of international credibility existed," and "some Berne co-Unionists . . . expressed doubts regarding the accuracy or sincerity of theU.S. declaration that its law already afforded a degree of moral rights protection equivalent to Berne standards." Jane C. Ginsburg,

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Copyright in the 101st Congress: Commentary on the Visual Artists Rights Act and the Architectural Works Copyright Protection Act of1990, 14 COLUM.-VLA J.L. & ARTS 477, 478-79 (1990). VARA was enacted to fill this perceived gap, but its moral-rights protection isquite a bit narrower than its European counterpart.

2. VARA's scope

VARA amended the Copyright Act and provides a measure of protection for a limited set of moral rights falling under the rubric of "rights ofattribution" and "rights of integrity"—but only for artists who create specific types of visual art. 17 U.S.C. § 106A(a). The statutory coverageis limited to paintings, drawings, prints, sculptures, and photographs created for exhibition existing in a single copy or a limited edition of200 or less. See id. § 101 (defining "work of visual art"). The rights conferred by the statute exist independently of property rights; the artistretains them even after he no longer holds title to his work. Id. § 106A(a).

More specifically, VARA's attribution and integrity rights are as follows:

(a) Rights of attribution and integrity. Subject to section 107 and independent of the exclusive rights provided in section106, the author of a work of visual art—

(1) shall have the right—

(A) to claim authorship of that work, and

(B) to prevent the use of his or her name as the author of any work of visual art which he or she did not create;

(2) shall have the right to prevent the use of his or her name as the author of the work of visual art in the event of distortion,mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation; and

(3) subject to the limitations set forth in section 113(d), shall have the right—

(A) to prevent any intentional distortion, mutilation, or other modification of that work which would be prejudicial to his or herhonor or reputation, and any intentional distortion, mutilation, or modification of that work is a violation of that right, and

(B) to prevent any destruction of a work of recognized stature, and any intentional or grossly negligent destruction of thatwork is a violation of that right.

17 U.S.C. § 106A(a) (emphasis added). At issue here is the right of integrity conferred by subsection (a)(3)(A), which precludes anyintentional modification or distortion of a work of visual art that "would be prejudicial to [the artist's] honor or reputation."

A qualifying "work of visual art" is defined as:

(1) a painting, drawing, print, or sculpture, existing in a single copy, in a limited edition of 200 or fewer that are signed andconsecutively numbered by the author, or, in the case of a sculpture, in multiple cast, carved, or fabricated sculptures of 200or fewer that are consecutively *299 numbered by the author and bear the signature or other identifying mark of the author;or

299

(2) a still photographic image produced for exhibition purposes only, existing in a single copy that is signed by the author, orin a limited edition of 200 copies or fewer that are signed and consecutively number by the author.

Id. § 101 (emphasis added). This definition also contains a number of specific exclusions: e.g., posters, maps, and globes; books,newspapers, magazines, and other periodicals; "motion picture[s] or other audiovisual work[s]"; merchandising and promotional materials;"any work made for hire"; and "any work not subject to copyright protection under this title." Id.

This last exclusion simply reinforces the point that VARA supplements general copyright protection; to qualify for moral rights under VARA,a work must first satisfy basic copyright standards. Under the Copyright Act of 1976, copyright subsists in "original works of authorshipfixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwisecommunicated." Id. § 102(a). "Works of authorship" include "pictorial, graphic, and sculptural works." Id. § 102(a)(5). VARA's definition of"work of visual art" is limited to a narrow subset of this broader universe of "pictorial, graphic, and sculptural works" that are otherwiseeligible for copyright; only a select few categories of art get the extra protection provided by the moral-rights concept. 5 PATRY § 16:7(2010) ("Protected `works of visual art' is a narrower subcategory of `pictorial, graphic, and sculptural works,' protected in section



102(a)(5).").

Several exceptions limit the scope of the rights granted under the statute:

(c) Exceptions. (1) The modification of a work of visual art which is a result of the passage of time or the inherent nature ofthe materials is not a distortion, mutilation, or other modification described in subsection (a)(3)(A).

(2) The modification of a work of visual art which is the result of conservation, or of the public presentation, including lightingand placement, of the work is not a destruction, distortion, mutilation, or other modification described in subsection (a)(3)unless the modification is caused by gross negligence.

17 U.S.C. § 106A(c) (emphasis added). The second of these—the "public presentation" exception—is at issue here. Another exceptioninvoked by the Park District is found in a different section of the Copyright Act that defines the scope of a copyright owner's rights:

(d)(1) In a case in which—

(A) a work of visual art has been incorporated in or made part of a building in such a way that removing the work from thebuilding will cause the destruction, distortion, mutilation, or other modification of the work as described in section 106A(a)(3),and

(B) the author consented to the installation of the work in the building either before the effective date set forth in section610(a) of the Visual Artists Rights Act of 1990, or in a written instrument executed on or after such effective date that issigned by the owner of the building and the author and that specifies that installation of the work may subject the work todestruction, distortion, mutilation, or other modification, by reason of its removal,

then the rights conferred by paragraphs (2) and (3) of section 106A(a) shall not apply.

*300 Id. § 113 (emphasis added). This is known as the "building exception."300

VARA rights cannot be transferred or assigned, but they can be waived in a writing signed by the artist and "specifically identify[ing] thework, and uses of that work, to which the waiver applies." Id. § 106A(e)(1). Absent a written waiver, the artist retains VARA rights during his

lifetime even if he transfers ownership of the work or assigns his copyright.[5] Id. § 106A(d)(1), (e)(2).

3. Is Wildflower Works a painting or sculpture?

The district court held that Wildflower Works was both a painting and a sculpture but was insufficiently original to qualify for copyright.Alternatively, the court concluded that it was site-specific art and held that all site-specific art is implicitly excluded from VARA. Otherarguments—in particular, whether Wildflower Works satisfies additional threshold requirements for copyright and whether VARA's public-presentation or building exceptions applied—were not reached.

On appeal Kelley contests the district court's conclusions regarding originality and site-specific art. The Park District defends these holdingsand also reiterates the other arguments it made in the district court, except one: The Park District has not challenged the district court'sconclusion that Wildflower Works is a painting and a sculpture.

This is an astonishing omission. VARA's definition of "work of visual art" operates to narrow and focus the statute's coverage; only a"painting, drawing, print, or sculpture," or an exhibition photograph will qualify. These terms are not further defined, but the overall structureof the statutory scheme clearly illuminates the limiting effect of this definition. Copyright's broad general coverage extends to "original worksof authorship," and this includes "pictorial, graphic, and sculptural works." 17 U.S.C. § 102(a)(5). The use of the adjectives "pictorial" and"sculptural" suggests flexibility and breadth in application. In contrast VARA uses the specific nouns "painting" and "sculpture." To qualifyfor moral-rights protection under VARA, Wildflower Works cannot just be "pictorial" or "sculptural" in some aspect or effect, it must actuallybe a "painting" or a "sculpture." Not metaphorically or by analogy, but really.

That Kelley considered the garden to be both a painting and a sculpture—only rendered in living material—is not dispositive. He alsocharacterized it as an experiment in environmental theory, telling a reporter he was trying to "figure out the economic and ecological impactof introducing wildflowers into cities." In promoting Wildflower Works, Kelley variously described the project as a "living wildflower painting,"a "study on wildflower landscape and management," and "a new vegetative management system that beautifies [the] landscapeeconomically with low-maintenance wildflowers."



Kelley's expert, a professor of art history, reinforced his view that Wildflower Works was both a painting and a sculpture, but the district

court largely disregarded her testimony as unhelpful. [6] Kelley, *301 2008 WL 4449886, at *5. For its part the Park District initially marketedWildflower Works as "living art," but this adds little to the analysis. VARA plainly uses the terms "painting" and "sculpture" as words oflimitation. Even assuming a generous stance on what qualifies, see 5 PATRY § 16:7 (suggesting a "liberal attitude toward what may beconsidered a painting, drawing, print, or sculpture"), the terms cannot be read coextensively with the broader categories of "pictorial" and"sculptural" works that are generally eligible for copyright under § 102(a)(5). If a living garden like Wildflower Works really counts as both apainting and a sculpture, then these terms do no limiting work at all.

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The district judge worried about taking "too literalist an approach to determining whether a given object qualifies as a sculpture or painting."Kelley, 2008 WL 4449886, at *4. His concern was the "tension between the law and the evolution of ideas in modern or avant garden art;the former requires legislatures to taxonomize artistic creations, whereas the latter is occupied with expanding the definition of what weaccept to be art." Id. We agree with this important insight. But there's a big difference between avoiding a literalistic approach and

embracing one that is infinitely malleable. The judge appears to have come down too close to the latter extreme.[7]

*302 In short, this case raises serious questions about the meaning and application of VARA's definition of qualifying works of visual art—questions with potentially decisive consequences for this and other moral-rights claims. But the Park District has not challenged this aspectof the district court's decision, so we move directly to the question of copyrightability, which is actually where the analysis should start in thefirst place.

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4. Is Wildflower Works copyrightable?

To merit copyright protection, Wildflower Works must be an "original work[ ] of authorship fixed in a[ ] tangible medium of expression . . .from which [it] can be perceived, reproduced, or otherwise communicated." 17 U.S.C. § 102(a). The district court held that althoughWildflower Works was both a painting and a sculpture, it was ineligible for copyright because it lacked originality. There is a contradictionhere. As we have explained, VARA supplements general copyright protection and applies only to artists who create the specificsubcategories of art enumerated in the statute. VARA-eligible paintings and sculptures comprise a discrete subset of otherwisecopyrightable pictorial and sculptural works; the statute designates these works of fine art as worthy of special protection. If a work is solacking in originality that it cannot satisfy the basic requirements for copyright, then it can hardly qualify as a painting or sculpture eligiblefor extra protection under VARA. See Cronin, Dead on the Vine, 12 VAND. J. ENT. & TECH. L. at 239 ("[I]f a work does not evincesufficient original expression to be copyrightable, the work should belong in a category other than `visual art' as this term is contemplatedunder VARA.").

That point aside, the district court's conclusion misunderstands the originality requirement. Originality is "the touchstone of copyrightprotection today," an implicit constitutional and explicit statutory requirement. Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 347,346, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991) ("Originality is a constitutional requirement."); id. at 355 (The Copyright Act of 1976 made theoriginality requirement explicit.); see also Schrock, 586 F.3d at 518-19 ("As a constitutional and statutory matter, `[t]he sine qua non ofcopyright is originality.'" (quoting Feist, 499 U.S. at 345, 111 S.Ct. 1282)). Despite its centrality in our copyright regime, the threshold fororiginality is minimal. See Feist, 499 U.S. at 345, 111 S.Ct. 1282; Am. Dental Ass'n v. Delta Dental Plans Ass'n, 126 F.3d 977, 979 (7thCir.1997) ("The necessary degree of `originality' is low. . . ."). The standard requires "only that the work was independently created by theauthor (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity." Feist, 499 U.S. at 345,111 S.Ct. 1282 (citation omitted). The "requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority ofworks make the grade quite easily, as they possess some creative spark." Id. (citation omitted).

The district court took the position that Wildflower Works was not original because Kelley was not "the first person to ever conceive of andexpress an arrangement of growing wildflowers in ellipse-shaped enclosed area[s]." Kelley, 2008 WL 4449886, at *6. This mistakenlyequates originality with novelty; the law is clear that a work can be original even if it is not novel. Feist, 499 U.S. at 345, 111 S.Ct. 1282("Originality does not signify *303 novelty; a work may be original even though it closely resembles other works so long as the similarity isfortuitous, not the result of copying."). No one argues that Wildflower Works was copied; it plainly possesses more than a little creativespark.

303

The judge was also at a loss to discover "what about the exhibit is original. Is it the elliptical design? The size? The use of native instead ofnon-native plants? The environmentally-sustainable gardening method to which `vegetative management system' apparently refers?"Kelley, 2008 WL 4449886, at *6. It is true that common geometric shapes cannot be copyrighted. See U.S. COPYRIGHT OFFICE,COMPENDIUM II: COPYRIGHT OFFICE PRACTICES § 503.02(a)-(b) (1984); 2 PATRY § 4:17 (2010). And "[i]n no case does copyrightprotection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or




















discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such a work." 17 U.S.C. § 102(b).

The Park District suggests that Wildflower Works is an uncopyrightable "method" or "system," and is also ineligible because its design usessimple elliptical shapes. The first of these arguments is not well-developed; the second is misplaced. Although Wildflower Works wasdesigned to be largely self-sustaining (at least initially), it's not really a "method" or "system" at all. It's a garden. And Kelley is seekingstatutory protection for the garden itself, not any supposed "system" of vegetative management encompassed within it. Regarding the useof elliptical shapes, an author's expressive combination or arrangement of otherwise noncopyrightable elements (like geometric shapes)may satisfy the originality requirement. Roulo v. Russ Berrie & Co., 886 F.2d 931, 939 (7th Cir.1989); 2 PATRY § 4:17 (Geometric shapesor symbols cannot themselves be protected, but an original creative arrangement of them can be.).

The real impediment to copyright here is not that Wildflower Works fails the test for originality (understood as "not copied" and "possessingsome creativity") but that a living garden lacks the kind of authorship and stable fixation normally required to support copyright. Unlikeoriginality, authorship and fixation are explicit constitutional requirements; the Copyright Clause empowers Congress to secure for"authors" exclusive rights in their "writings." U.S. CONST. art 1, § 8, cl. 8; see also 2 PATRY § 3:20 (2010) ("[T]he Constitution uses theterms `writings' and `authors;' `originality' is not used."); id. § 3:22 (2010); 1 NIMMER § 2.03[A]-[B] (2004). The originality requirement isimplicit in these express limitations on the congressional copyright power. See Feist, 499 U.S. at 346, 111 S.Ct. 1282 (The constitutionalreference to "authors" and "writings" "presuppose[s] a degree of originality."). The Supreme Court has "repeatedly construed all three termsin relation to one another [or] perhaps has collapsed them into a single concept"; therefore, "[w]ritings are what authors create, but for oneto be an author, the writing has to be original." 2 PATRY § 3:20.

"Without fixation," moreover, "there cannot be a `writing.'" Id. § 3:22. The Nimmer treatise elaborates:

Fixation in tangible form is not merely a statutory condition to copyright. It is also a constitutional necessity. That is, unless awork is reduced to tangible form it cannot be regarded as a "writing" within the meaning of the constitutional clauseauthorizing federal copyright legislation. Thus, certain works of conceptual art stand outside of copyright protection.

*304 1 NIMMER § 2.03[B]. A work is "fixed" in a tangible medium of expression "when its embodiment in a copy or phonorecord . . . issufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitoryduration." 17 U.S.C. § 101. As William Patry explains:

304

Fixation serves two basic roles: (1) easing problems of proof of creation and infringement, and (2) providing the dividing linebetween state common law protection and protection under the federal Copyright Act, since works that are not fixed areineligible for federal protection but may be protected under state law. The distinction between the intangible intellectualproperty (the work of authorship) and its fixation in a tangible medium of expression (the copy) is an old and fundamentaland important one. The distinction may be understood by examples of multiple fixations of the same work: A musicalcomposition may be embodied in sheet music, on an audio-tape, on a compact disc, on a computer hard drive or server, oras part of a motion picture soundtrack. In each of the fixations, the intangible property remains a musical composition.

2 PATRY § 3:22 (internal quotation marks omitted).

Finally, "authorship is an entirely human endeavor." Id. § 3:19 (2010). Authors of copyrightable works must be human; works owing theirform to the forces of nature cannot be copyrighted. Id. § 3:19 n. 1; see also U.S. COPYRIGHT OFFICE, COMPENDIUM II: COPYRIGHTOFFICE PRACTICES § 503.03(a) ("[A] work must be the product of human authorship" and not the forces of nature.) (1984); id. §202.02(b).

Recognizing copyright in Wildflower Works presses too hard on these basic principles. We fully accept that the artistic community mightclassify Kelley's garden as a work of postmodern conceptual art. We acknowledge as well that copyright's prerequisites of authorship andfixation are broadly defined. But the law must have some limits; not all conceptual art may be copyrighted. In the ordinary copyright case,authorship and fixation are not contested; most works presented for copyright are unambiguously authored and unambiguously fixed. Butthis is not an ordinary case. A living garden like Wildflower Works is neither "authored" nor "fixed" in the senses required for copyright. SeeToney v. L'Oreal USA, Inc., 406 F.3d 905, 910 (7th Cir.2005) ("A person's likeness—her persona—is not authored and it is not fixed."); seealso Cronin, Dead on the Vine, 12 VAND. J. ENT. & TECH. L. at 227-39.

Simply put, gardens are planted and cultivated, not authored. A garden's constituent elements are alive and inherently changeable, notfixed. Most of what we see and experience in a garden—the colors, shapes, textures, and scents of the plants—originates in nature, not inthe mind of the gardener. At any given moment in time, a garden owes most of its form and appearance to natural forces, though thegardener who plants and tends it obviously assists. All this is true of Wildflower Works, even though it was designed and planted by an









artist.

Of course, a human "author"—whether an artist, a professional landscape designer, or an amateur backyard gardener—determines theinitial arrangement of the plants in a garden. This is not the kind of authorship required for copyright. To the extent that seeds or seedlingscan be considered a "medium of expression," they originate in nature, and natural forces—not the intellect of the gardener—determine theirform, growth, and appearance. Moreover, a garden is simply too changeable *305 to satisfy the primary purpose of fixation; its appearanceis too inherently variable to supply a baseline for determining questions of copyright creation and infringement. If a garden can qualify as a"work of authorship" sufficiently "embodied in a copy," at what point has fixation occurred? When the garden is newly planted? When itsfirst blossoms appear? When it is in full bloom? How—and at what point in time—is a court to determine whether infringing copying hasoccurred?

305

In contrast, when a landscape designer conceives of a plan for a garden and puts it in writing—records it in text, diagrams, or drawings onpaper or on a digital-storage device—we can say that his intangible intellectual property has been embodied in a fixed and tangible "copy."This writing is a sufficiently permanent and stable copy of the designer's intellectual expression and is vulnerable to infringing copying,giving rise to the designer's right to claim copyright. The same cannot be said of a garden, which is not a fixed copy of the gardener'sintellectual property. Although the planting material is tangible and can be perceived for more than a transitory duration, it is not stable orpermanent enough to be called "fixed." Seeds and plants in a garden are naturally in a state of perpetual change; they germinate, grow,bloom, become dormant, and eventually die. This life cycle moves gradually, over days, weeks, and season to season, but the real barrierto copyright here is not temporal but essential. The essence of a garden is its vitality, not its fixedness. It may endure from season toseason, but its nature is one of dynamic change.

We are not suggesting that copyright attaches only to works that are static or fully permanent (no medium of expression lasts forever), orthat artists who incorporate natural or living elements in their work can never claim copyright. Kelley compares Wildflower Works to theCrown Fountain, a sculpture by Spanish artist Jaume Plensa that sits nearby in Chicago's Millennium Park. The surfaces of Plensa'sfountain are embedded with LED screens that replay recorded video images of the faces of 1,000 Chicagoans. Seehttp://www.explorechicago.org/city/en/ things_see_do/attractions/dca_tourism/ Crown_Fountain.html (last visited Feb. 10, 2011). But theCopyright Act specifically contemplates works that incorporate or consist of sounds or images that are broadcast or transmittedelectronically, such as telecasts of sporting events or other live performances, video games, and the like. See 17 U.S.C. § 101 (defining"fixed" as including a "work consisting of sounds, images, or both, that are being transmitted. . . if a fixation of the work is being madesimultaneously with its transmission"); see also Balt. Orioles, Inc. v. Major League Baseball Players Ass'n, 805 F.2d 663, 675 (7thCir.1986); Midway Mfg. Co. v. Artic Int'l, Inc., 704 F.2d 1009, 1013-14 (7th Cir.1983). Wildflower Works does not fit in this category; theCrown Fountain is not analogous.

Though not addressing the requirement of fixation directly, the district court compared Wildflower Works to "[t]he mobiles of AlexanderCalder" and "Jeff Koons' `Puppy,' a 43-foot flowering topiary." Kelley, 2008 WL 4449886, at *4. These analogies are also inapt. Althoughthe aesthetic effect of a Calder mobile is attributable in part to its subtle movement in response to air currents, see http://en.wikipedia.org/wiki/Alexander_Calder (last visited Feb. 10, 2011), the mobile itself is obviously fixed and stable. In "Puppy" the artist assembled a hugemetal frame in the shape of a puppy and covered it with thousands of blooming flowers sustained by an irrigation system within the frame.See http://en.wikipedia.org/wiki/Jeff_Koons (last visited Feb. 10, 2011). This may be *306 sufficient fixation for copyright (we venture noopinion on the question), but Wildflower Works is quite different. It is quintessentially a garden; "Puppy" is not.

306

In short, Wildflower Works presents serious problems of authorship and fixation that these and other examples of conceptual or kinetic artdo not. Because Kelley's garden is neither "authored" nor "fixed" in the senses required for basic copyright, it cannot qualify for moralrightsprotection under VARA.

5. Site-specific art, and the public-presentation and building exceptions

This case also raises some important questions about the application of VARA to site-specific art, as well as the statute's public-presentation and building exceptions. Though we need not decide these questions, we do have a few words of caution about the districtcourt's treatment of the issue of VARA and site-specific art. The court classified Wildflower Works as a form of site-specific art; we see noreason to upset this factual finding. The court then adopted the First Circuit's holding in Phillips that site-specific art is categoricallyexcluded from VARA. This legal conclusion is open to question.

Phillips involved a VARA claim brought by artist David Phillips in a dispute over a display of 27 of his sculptures in Boston's Eastport Parkacross from Boston Harbor. Phillips v. Pembroke Real Estate, Inc., 459 F.3d 128, 130 (1st Cir.2006). A planned redesign of the park called










for the removal and relocation of Phillips's sculptures; he sought an injunction under VARA, claiming the removal of his sculptures wouldviolate his right of integrity. Id. at 131. The district court held that although the sculptures qualified as a single integrated work of visual art,park administrators were entitled to remove them under VARA's public-presentation exception. Id. at 138-39. The First Circuit affirmed onalternative grounds, holding that VARA does not apply to any site-specific art.

The court based this holding on a perceived irreconcilable tension between the public-presentation exception and the purpose of site-specific art: "By definition, site-specific art integrates its location as one of its elements. Therefore, the removal of a site-specific work fromits location necessarily destroys that work of art." Id. at 140. Under the public-presentation exception, a modification of a work of visual artstemming from a change in its "public presentation, including lighting or placement," is not actionable unless it is caused by grossnegligence. If VARA applied to site-specific art, the First Circuit reasoned, then the statute would "purport[ ] to protect site-specific art" butalso "permit its destruction by the application" of the public-presentation exception. Id. The court held that "VARA does not protect site-specific art and then permit its destruction by removal from its site pursuant to the statute's public presentation exception. VARA does notapply to site-specific art at all." Id. at 143.

There are a couple of reasons to question this interpretation of VARA. First, the term "site-specific art" appears nowhere in the statute.Nothing in the definition of a "work of visual art" either explicitly or by implication excludes this form of art from moral-rights protection. Nordoes application of the public-presentation exception operate to eliminate every type of protection VARA grants to creators of site-specificart; the exception simply narrows the scope of the statute's protection for all qualifying works of visual art. The exception basically providesa safe harbor for ordinary changes in the public presentation of VARA-qualifying artworks; the artist has no cause of action *307 unlessthrough gross negligence the work is modified, distorted, or destroyed in the process of changing its public presentation.

307

Second, Phillips 's all-or-nothing approach to site-specific art may be unwarranted. Site-specific art is not necessarily destroyed if moved;modified, yes, but not always utterly destroyed. Moreover, some of VARA's protections are unaffected by the public-presentation exception.An artist's right of integrity can be violated in ways that do not implicate the work's location or manner of public presentation; site-specificart—like any other type of art—can be defaced and damaged in ways that do not relate to its public display. And the public-presentationexception does nothing to limit the right of attribution, which prevents an artist's name from being misappropriated.

Then there is the matter of the building exception, which applies to works "incorporated in or made part of a building in such a way thatremoving the work from the building will cause the destruction, distortion, mutilation, or other modification of the work." 17 U.S.C. §113(d)(1)(A). These works do not get moral-rights protection if the artist: (1) consented to the installation of his work in the building (if pre-VARA); or (2) executed a written acknowledgment that removal of the work may subject it to destruction, distortion, mutilation, ormodification (if post-VARA). Id. § 113(d)(1)(B). On its face this exception covers a particular kind of site-specific art. Its presence in the

statute suggests that site-specific art is not categorically excluded from VARA.[8]

These observations are of course general and not dispositive. Because we are resolving the VARA claim on other grounds, we need notdecide whether VARA is inapplicable to site-specific art.

B. The Park District's Cross-Appeal on the Contract Claim

The Park District challenges the judgment against it for breach of contract even though damages were assessed at a nominal $1. Thedistrict court held that Commissioner Burroughs's casual remark—"You're still there, aren't you? That's all you need to do."—created animplied-in-fact contract requiring the Park District to give Kelley reasonable notice before reconfiguring Wildflower Works. Although factualfindings about the existence of a contract are reviewed for clear error, ReMapp Int'l Corp. v. Comfort Keyboard Co., 560 F.3d 628, 633 (7thCir.2009), there is a threshold legal question here about the commissioner's unilateral authority to bind the Park District to a contract. Ourreview is de novo. See Manning v. United States, 546 F.3d 430, 432 (7th Cir.2008).

Two statutes guide our analysis. The first is the Chicago Park District Act, which provides in relevant part that "[t]he commissioners of [thePark District] constitute the corporate authorities thereof, and have full power to manage and control all the officers and property of thedistrict, and all parks, driveways, boulevards and parkways maintained by such district or committed to its care and custody." 70 ILL.COMP. STAT. 1505/7.01. The district court noted the statute's use of the plural "commissioners" and "authorities" and concluded from thisthat each individual commissioner was a separate corporate *308 "authority" with the power to unilaterally bind the Park District.308

This conclusion strains the statutory language and ignores how public bodies customarily operate. It also contradicts another provision inthe Illinois Park District Code, which applies to all Illinois park districts and must be read in conjunction with the Chicago Park District Act.The Illinois Park District Code states:








No member of the board of any park district . . . shall have power to create any debt, obligation, claim or liability, for or onaccount of said park district. . . except with the express authority of said board conferred at a meeting thereof and dulyrecorded in a record of its proceedings.

70 ILL. COMP. STAT. 1205/4-6 (emphasis added). When read together, these statutes confirm that there is only one corporate authority ofthe Chicago Park District—its Board of Commissioners—and that individual commissioners cannot unilaterally bind the Park District'sBoard to a contract without express Board approval.

There is no evidence that the Park District's Board of Commissioners authorized Commissioner Burroughs to enter into a contract withKelley. Moreover, Illinois law provides that ultra vires contracts entered into by municipal corporations are invalid, see, e.g., McMahon v.City of Chicago, 339 Ill.App.3d 41, 273 Ill.Dec. 447, 789 N.E.2d 347, 350 (2003), so Commissioner Burroughs's offhand remark cannothave created a valid implied-in-fact contract. The judgment for Kelley on the contract claim was premised on legal error; the Park Districtwas entitled to judgment on this claim.

For the foregoing reasons, we AFFIRM the judgment in favor of the Park District on the VARA claim; we REVERSE the judgment in favor ofKelley on the contract claim and REMAND with instructions to enter judgment for the Park District.

[1] The complaint also alleged that the Park District's actions constituted an unlawful taking, but the district court dismissed this count prior to trial. Thetakings claim is not at issue on appeal.

[2] The use of the French singular "connotes an indivisible package of rights, as distinguished from the plural `moral rights,' reflective of the currentAmerican concept of divisibility." 3 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT § 8D.01 [A] n. 4 (2010).

[3] For different views on the theoretical foundations of moral-rights doctrine, see Charles Cronin, Dead on the Vine: Living and Conceptual Art andVARA, 12 VAND. J. ENT. & TECH. L. 209, 215-18 (2010); Amy M. Adler, Against Moral Rights, 97 CALIF. L.REV. 263, 266-71 (2009); RobertaRosenthal Kwall, Inspiration and Innovation: The Intrinsic Dimension of the Artistic Soul, 81 NOTRE DAME L.REV. 1945, 1976-83 (2006); Burton Ong,Why Moral Rights Matter: Recognizing the Intrinsic Value of Integrity Rights, 26 COLUM. J.L. & ARTS 297, 299-301 (2003); and J.H. Merryman, ThePublic Interest in Cultural Property, 77 CALIF. L.REV. 339 (1989).

[4] For economic and pragmatic analysis of moral-rights doctrine, see William M. Landes & Richard A. Posner, The Economic Structure of IntellectualProperty Law, Ch. 10, "Moral Rights and the Visual Artists Rights Act," 270-93 (2003); Henry Hansmann & Marina Santilli, Authors' and Artists' MoralRights: A Comparative Legal and Economic Analysis, 26 J. LEGAL STUD. 95 (1997); and Thomas F. Cotter, Pragmatism, Economics, and the DroitMoral, 76 N.C. L.REV. 1 (1997).

[5] VARA applies to works created after its effective date (June 1, 1991, six months after its December 1, 1990 date of enactment) and works createdbefore its effective date "but title to which has not, as of such effective date, been transferred from the author." Visual Artists Rights Act of 1990, Pub.L.No. 101-650, § 610, 104 Stat. 5132. Wildflower Works was created before VARA's effective date, but the parties stipulated that Kelley owns theplanting material. Kelley has not executed a written waiver of VARA rights.

[6] Among other things, the expert testified that Wildflower Works was both a painting and a sculpture because "three dimensional objects become twodimensional paintings when viewed from airplanes," an assertion the district court characterized as "strange." Kelley v. Chi. Park Dist., No. 04 C 07715,2008 WL 4449886, at *5 (N.D.Ill. Sept. 29, 2008).

[7] The district court basically concluded that the term "sculpture" included any three-dimensional art form—that is, any "non-two dimensional" workthat can be called "art." Kelley, 2008 WL 4449886, at *5. As we have noted, this expansive approach fails to distinguish between "sculptural works,"included in the broad subject matter of copyright, and VARA's use of the more limited term "sculpture." As for "painting," the judge consulted this verbdefinition for "paint": "`[1] to apply color, pigment, or paint to . . . [2] to produce in lines and colors on a surface by applying pigments, [3] to depict bysuch lines and colors, [4] to decorate, adorn, or variegate by applying lines and colors.'" Id. (quoting Merriam-Webster's Online Dictionary, http://www.m-w.com/dictionary/paint[1] (last visited September 25, 2008)). The judge then characterized Wildflower Works as "[a]n exhibit that corrals thevariegation of wildflowers into pleasing oval swatches" and concluded from this that the garden "could certainly fit within some of the[se] . . . definitionsof a painting." Id.

As we have explained, however, VARA's definition of a "work of visual art" uses nouns, not verbs. The noun "painting" is more precise than the verb"paint." A "painting" is:

1.a. Painted matter; that which is painted;. . . a representation on a surface executed in paint or colours; a painted picture or likeness. b. Therepresenting of a subject on a surface by the application of paint or colours; the art of making such representations; . . . the practice of applying paintto a canvas, etc., for any artistic purpose.

Painting Definition, OXFORD ENGLISH DICTIONARY, http://www.oed.com/viewdiction aryentry/Entry/136092 (last visited Feb. 10, 2011). The noun"sculpture" means:

1.a . . . . the process or art of carving or engraving a hard material so as to produce designs or figures in relief, in intaglio, or in the round. In modernuse, that branch of fine art which is concerned with the production of figures in the round or in relief, either by carving, by fashioning some plastic






substance, or by making a mould for casting in metal; the practice of this art . . . . 2. concr. a. The product of the sculptor's art; that which is sculptured(or engraved); sculptured figures in general. b. In particularized sense: A work of sculpture; a sculptured (or engraved) figure or design.

Sculpture Definition, id., http://www.oed.com/ viewdictionaryentry/Entry/173877 (last visited Feb. 10, 2011). A living garden might be said to have"painterly" or "sculptural" attributes, but it's hard to classify a garden as a "painting" or "sculpture" as these terms are commonly understood.

[8] The Park District argued that the building exception applied to Wildflower Works because the garden is located on top of the Monroe Street parkinggarage and accommodates the air vents that provide ventilation to the garage below. This strikes us as something of a reach. Wildflower Works is not"incorporated into" or "made part of" the parking garage; it is situated on top of it.

Save trees - read court opinions online on Google Scholar.

Kelley v. Chicago Park District, Dist. Court, ND Illinois 2008 - Google Scholar

http://scholar.google.com/...4,112,127,268,269,270,271,272,314,315,331,332,333,334,335,377,378&case=12516790079186183537&scilh=0[5/21/2013 12:21:10 PM]

CHAPMAN KELLEY, Plaintiff,v.

CHICAGO PARK DISTRICT, Defendant.

No. 04 C 07715.

September 29, 2008.

United States District Court, N.D. Illinois, Eastern Division.

MEMORANDUM OPINION AND ORDER

DAVID H. COAR, District Judge.

Plaintiff Chapman Kelley ("Kelley") brought this action against Defendant Chicago Park District ("Park District"), alleging in Counts I and IIof the Complaint that the Park District violated the Visual Artists Rights Act, 17 U.S.C. § 106A, when it removed his wildflower plantings thatwere existing as an exhibit in Grant Park in Chicago, Illinois. He seeks damages to his reputation and integrity as well as statutorydamages and attorneys' fees for the allegedly willfully destructive acts of the Park District pursuant to Section 504 of the United States

Copyright Act. In Count IV of the complaint,[1] Kelley alleges breach of a contract existing between him and the Park District and he seeksthe fair market value of materials removed from the Wildflower Works display. The instant matter proceeded to bench trial on September 24,2007. At the close of trial, both parties submitted post-trial memoranda. Based on the trial and parties' pre-trial and post-trial submissions,the Court makes the following findings of fact and conclusions of law. To the extent that any findings may be deemed conclusions of law,they shall also be considered conclusions. To the extent that any conclusions may be deemed findings of fact, they shall also beconsidered findings. See Miller v. Fenton, 474 U.S. 104, 113-14 (1985).

1. FINDINGS OF FACT[2]

a. The parties

Plaintiff Chapman Kelley is an artist by training and by trade. He has painted on various media and his work is represented in public andprivate collections in at least eighteen states and three foreign countries. Compl. ¶ 5-6.

Defendant Park District is a duly created public agency organized and existing under the laws of the State of Illinois for the purpose ofcontrolling and supervising the operations of all parks, boulevards, and public ways under its jurisdiction. Final Pretrial Order AgreedStipulations ("FPTO Stip.") ¶ 2.

b. Wildflower Works

In March 1984, the Park District granted a permit to Kelley to create an exhibit called "Wildflower Works I" ("Wildflower Works") in Chicago'sGrant Park. The permit was granted subject to several provisions, including one that gave the Park District the option of terminating theinstallation with adequate notice:

This installation is subject to a 90 day notice to remove the planting upon written notice from the General Superintendent.Pl.'s Ex. 12. Under the terms of the permit, Kelley was to install and maintain Wildflower Works at his expense in exchangefor the Park District's allowance for the exhibit on its property. Id. Kelley initially financed the project himself and purchased

between 200,000 and 380,000 wildflower plugs at a cost of between $80,000 and $152,000.[3]

In June 1984, Kelley began installing Wildflower Works in an area of Grant Park designated as the Daley Bicentennial Plaza, which is theroof of the East Monroe Street Parking Garage. Grant Park is public land, codified at 70 ILCS 1580, 1585, 1590, and is under thesupervision of the Park District. The location is bordered by Monroe and Randolph Streets to the north and south, and Columbus and NorthLake Shore Drives to the west and east, and is near the heart of Chicago's central business district. The exhibit consisted of two elliptical

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http://scholar.google.com/scholar_case?case=2129138529315074091&q=chapman+kelley+chicago&hl=en&as_sdt=4,112,127,268,269,270,271,272,314,315,331,332,333,334,335,377,378&scilh=0




shapes, formed by gravel and metal edging, that enclosed two beds of wildflowers, laid out in accordance to Kelley's design. Itsapproximate size was 1.5 acres, or 66,000 square feet. FPTO Stip. ¶ 17. Kelley planted the wildflower seeds and plugs, cultivated andpruned the plants, and organized volunteers to maintain the gardens. Kelley did maintenance work on the exhibit eight months a year foreach of the twenty years it was installed.

After its completion, Wildflower Works attracted the attention of national news outlets, including the New York Times and the ChristianScience Monitor, which published articles that commented positively on the exhibit. Wildflowers as Art For a Chicago Park, N.Y. Times,June 20, 1985, at 21; Lucia Mouat, Artist Finds His Wildflowers Are Growing On Chicago, Christian Science Monitor, June 6, 1985, at 1.Kelley was also commended by various state and local officials for the installation. In a letter inviting the press to a preview of WildflowerWorks in 1984, Chicago Park District General Superintendent Edmund L. Kelly lauded Kelley as "an internationally renowned artist . . . apioneer in the use of natural materials for `living' art [who] has achieved national prominence for his efforts to incorporate landscape inartistic creation." The Illinois Senate recognized Wildflower Works as "a new form of living art . . . [in] the first park district in the UnitedStates to display a live wildflower work of art of this scale" and commended Kelley for "his vast artistic contribution to Grant Park." Pl.'s Ex.4, Illinois Senate Resolution No. 420 (June 29, 1985).

c. Expiration of the temporary permit

In 1988, the Park District notified Kelley that his permit for Wildflower Works was to be terminated within ninety days. Pl.'s Ex. 13, Letterfrom Jesse Madison, Executive Vice President, Park District, to Chapman Kelley (June 3, 1988). Kelley responded with a lawsuit in theNorthern District of Illinois, No. 88 CV 6619, alleging inter alia that his First Amendment rights were being infringed upon. On September14, 1988, as part of the settlement of that lawsuit, the Park District renewed Kelley's temporary permit for one year. FPTO Stip. ¶ 30, 31;Pl.'s Ex. 14. The 1988 permit did not include the ninety day notice of termination provision of the 1984 permit, supra. Pl.'s Ex. 14. Itincluded instead the following provisions:

The planting material is the property of Mr. Chapman Kelley. If the Chicago Park District does not extend the Permit bySeptember 1, 1989, Mr. Kelley may remove the planting material. If this Permit is not extended by September 1, 1989, thepermittees are not required to restore the planted area to its original condition . . . . This agreement does not create anproprietary interest for Chicago Wildflower Works, Inc. [a non-profit corporation associated with the exhibit], and/or Mr.Chapman Kelley in continuing to operate and maintain the Wildflower Garden Display after September 1, 1989.

Id. The 1988 permit was renewed in 1989, 1990 and 1992. Pl.'s Exs. 15, 17, 19; FPTO Stip. ¶ 33, 34.

The last permit renewal expired on September 30, 1994. After its expiration, Kelley did not apply for a permit, and the Park District did notrenew the temporary permit. FPTO Stip. ¶ 35-38. From October 1, 1994 until June 9, 2004, Kelley and his volunteers continued to maintainand install plants in Wildflower Works, and the Park District did not remove the installation. Id. at ¶ 41. In March of 2004, Kelley attended alunch meeting with Wildflower Works, Inc. President Jonathan Dedmon, Wildflower Works, Inc. Secretary Maurine Slavin, and Park Districtcommissioner Margaret Burroughs. At the meeting, Dedmon asked Burroughs whether Kelley or Wildflower Works, Inc. needed to file a

permit for the exhibit. Burroughs responded something to the effect of, "You're still there, aren't you? That's all you need to do."[4] Theothers interpreted Burroughs' statement mean that no further action for a permit was required. Trial Tr. vol. 1, 77.

d. Reconfiguration of Wildflower Works

In May of 2004, ongoing issues with the maintenance of Wildflower Works and the oncoming opening of a new adjacent park spaceprompted the Park District to conclude that changes would have to be made to Wildflower Works. Trial Tr. vol. 2, 293. On June 10, 2004,Kelley met with persons from the Park District who presented plans to reduce the size and to change the shape and design of WildflowerWorks. FPTO Stip. ¶ 45. At the meeting, Arnold Randall, then Director of Development and Planning for the Park District, told Kelley thatthe Park District intended to move forward with the reconfiguration plan but wanted Kelley's input. Trial Tr. vol. 2, 307. Kelley did notapprove of either the reconfigured new shape or the design, but did not request to be given an opportunity to remove any of his wildflowerplants from Wildflower Works. FPTO Stip. ¶ 47, 49.

Despite Kelley's disapproval, the Park District went forward with the reconfiguration plans. During the summer of 2004, the Park Districtreduced the wildflower-planted spaces in Daley Bicentennial Plaza from roughly 66,000 square feet to under 30,000 square feet, andreconfigured the two ellipses as rectilinear shapes. The wildflower beds were edged with new evergreen hedges. FPTO Stip. ¶ 46.



2. CONCLUSIONS OF LAW

a. Jurisdiction and venue are both appropriate.

Jurisdiction over this action is appropriate under this Court's federal question jurisdiction, pursuant to 28 U.S.C. § 1331, and supplementaljurisdiction, pursuant to 28 U.S.C. § 1367. Venue is proper pursuant to 28 U.S.C. § 1391(b).

b. Wildflower Works is not protected by VARA.

Kelley's first two claims assert his rights under the Visual Artists Rights Act ("VARA"), 17 U.S.C. § 106A. Under that statute, an "author of awork of visual art" is entitled to certain rights of attribution (the right of the artist to be recognized by name as the author of the work) andintegrity (the right of the artist to prevent distortion or mutilation of the work), subject to exceptions and limitations. 17 U.S.C. § 106A(a).

To be protected by VARA, an object must (1) meet the statutory definition of "a work of visual art" and (2) be subject to copyrightprotection. 17 U.S.C. § 101. The Court will consider the two prongs of the analysis separately.

i. Wildflower Works is a "work of visual art."

VARA defines a "work of visual art" as, inter alia,

(1) a painting, drawing, print, or sculpture, existing in a single copy, in a limited edition of 200 copies or fewer that are signedand consecutively numbered by the author, or, in the case of a sculpture, in multiple cast, carved, or fabricated sculptures of200 or fewer that are consecutively numbered by the author and bear the signature or other identifying mark of the author . ..

17 U.S.C. § 101. Kelley advances two theories under which Wildflower Works could be a "work of visual art": the exhibit is either a paintingor a sculpture.

Nowhere in the Copyright Act are the terms "painting" or "sculpture" defined. The Park District cites legislative history to support itscontention that VARA only applies to a narrow range of artwork, but a closer reading of the cited legislative history reveals only that thespeaker was concerned with differentiating visual art from films and other kinds of intellectual property. Def.'s Resp. Br. 6, May 31, 2007.Absent a statutory definition or a clearly expressed legislative intent to the contrary, words are to be given their plain and ordinary meaning.United States v. Lock, 466 F.3d 594, 598 (7th Cir. 2006) (citing Am. Tobacco Co. v. Patterson, 456 U.S. 63, 68 (1982). However, this Courtis loath to take too literalist an approach to determining whether a given object qualifies as a sculpture or a painting. There is a tensionbetween the law and the evolution of ideas in modern or avant garde art; the former requires legislatures to taxonomize artistic creations,whereas the latter is occupied with expanding the definition of what we accept to be art. While Andy Warhol's suggestion that "art iswhatever you can get away with" is too nihilistic for the law to accommodate, neither should VARA be read so narrowly as to protect onlythe most revered work of the Old Masters. In other words, the "plain and ordinary" meanings of words describing modern art are stillslippery. With these concerns in mind, the Court turns to the task of determining whether the two elliptical gardens of Kelley's creation couldbe considered a painting or a sculpture under VARA.

The Wildflower Works exhibit consisted of arrangements of living plants within two elliptical spaces. Those spaces were circumscribed bythree feet of gravel and a band of steel edging. At trial, Kelley likened the gravel and metal band in Wildflower Works to the figurative areasin his paintings; indeed, many of Kelley's paintings depict banded elliptical forms enclosing colorful wildflowers. Pl.'s Ex. 2. The displayrequired Kelley and his volunteers to plant, cultivate and prune the wildflowers in the gardens, activities typically associated withlandscaping, not art.

Defendant's insistence that an artifact that changes over time, requires ongoing maintenance, or contains living matter cannot beconsidered a work of visual art protected by VARA is misplaced. The mobiles of Alexander Calder are undoubtedly art, even though thedynamic forms they create are ephemeral by their nature. An example of art that changes or requires maintenance can be found less thanhalf a mile away from Wildflower Works, in the Art Institute of Chicago, alongside such works as Seurat's "Sunday Afternoon on the Islandof La Grande Jatte" and Van Gogh's "Bedroom at Arles." Felix Gonzalez-Torres' "Untitled (Portrait of Ross in L.A.)" consists of 175 poundsof individually-wrapped multicolored candies laid on the floor of the museum. Viewers are invited to take candies from the artwork, which isintended to represent the weight loss due to illness of the artist's partner, who died of causes related to AIDS. The candy pile dwindles







each day; each morning, the candies are replenished by museum staff. Although arguably no two viewers of "Untitled (Portrait of Ross inL.A.)" see the same work, there is no argument that its mutability precludes it from being described as a work of art. Finally, this Court willnot conclude that such an arrangement of living plants can never be a work of visual art per se; Jeff Koons' "Puppy," a 43-foot floweringtopiary, comes to mind.

(1) Wildflower Works as sculpture

According to one common dictionary, a sculpture is "a work of art created by the practice of shaping figures or designs in the round or inrelief, as by chiseling marble, modeling clay, or casting in metal." The American Heritage Dictionary of the English Language (4th Ed.2004). Another dictionary defines a sculpture as the "[1] action or art of processing (as by carving, modeling, or welding) plastic or hardmaterials into works of art: [2] work produced by sculpture, [or] [3] a three-dimensional work of art (as a statue)." Merriam-Webster's OnlineDictionary, http://www.m-w.com/dictionary/sculpture (last visited September 25, 2008). Kelley's expert witness Jane Jacob, a fine artadvisor and appraiser and a professor of art history at New York University, testified that "since World War II and since the 1960s inparticular, sculpture [has been] defined as any non-two dimensional art form . . . including environmental art and some conceptual art."Trial Tr. vol. 1, 15-16. At a minimum, the manipulation of the flowers, metal, and gravel into an elliptical shape fits within the broadest of thedefinitions of sculpture cited above. Accordingly, this Court finds that Wildflower Works is a sculpture within the definition of VARA.

(2) Wildflower Works as painting

Jacob also testified that she considered Wildflower Works to be a painting, under her definition of a painting as "two dimensionalrepresentations, where a picture is executed by applying colored matter to various surfaces as decoration, among other things . . . ." TrialTr. vol 1, 18. She noted that while Wildflower Works appeared as a garden from ground level, it was conceived as a painting to be viewedfrom a height, and that many paintings are, in fact, three dimensional. Id. This Court need not pass on Jacob's strange assertion that threedimensional objects become two dimensional paintings when viewed from airplanes, because a widely-used dictionary offers a moreaccommodating definition of "painting." According to Merriam-Webster, to "paint" is " [1] to apply color, pigment, or paint to . . . [2] toproduce in lines and colors on a surface by applying pigments, [3] to depict by such lines and colors, [4] to decorate, adorn, or variegate byapplying lines and colors." Merriam-Webster's Online Dictionary, http://www.m-w.com/dictionary/paint[1] (last visited September 25, 2008).An exhibit that corrals the variegation of wildflowers in bloom into pleasing oval swatches, as Wildflower Works did, could certainty fit withinsome of the above definitions of a painting. Accordingly, Wildflower Works could be considered either a painting or a sculpture underVARA.

ii. Wildflower Works was not copyrightable.

An object is subject to copyright protection if it is an

original [work] of authorship fixed in any tangible medium of expression, now known or later developed, from which [it] canbe perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.

17 U.S.C. § 102. "Works of authorship include . . . (5) pictorial, graphic, and sculptural works . .. ." Id. Excluded from copyright protection is"any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described,explained, illustrated, or embodied in such work." 17 U.S.C. § 102(b) (emphasis added).

For the same reasons that it can be considered a painting or a sculpture under the definition of "work of visual art" under 17 U.S.C. § 101,Wildflower Works qualifies as a "pictorial, graphic, and sculptural [work]." However, the Park District challenges the copyrightability ofWildflower Works on three grounds: it contains living elements, so it cannot be "fixed in a tangible medium of expression"; Kelley hasdescribed it as a "vegetative management system," Trial Tr. vol. 3, 382 (emphasis added), so it is excluded under 17 U.S.C. § 102(b); andit is not an "original work of authorship."

On the last point, this Court agrees with the Park District. It is not clear what about the exhibit is original. Is it the elliptical design? The size?The use of native instead of non-native plants? The environmentally-sustainable gardening method to which "vegetative management

system" apparently refers?[5] Kelley leaves this Court to assume that he is the first person to ever conceive of and express anarrangement of growing wildflowers in ellipse-shaped enclosed area in the manner in which he created his exhibit. He has submitted noevidence or argument on the copyrightability of Wildflower Works, except for the conclusory, tautological statement that "Wildflower Works



is copyrightable under the Copyright Act because the arrangement, coordination or selection displayed by Plaintiff is copyrightable." Pl.'sProposed Findings of Fact and Conclusions of Law 40. Without any evidence differentiating Kelley's work from, for example, the ovalwildflower beds of Monticello, see http://www.monticello.org/gardens/flower/ovalbeds.html, this Court can only find that Wildflower Works isnot subject to copyright protection. Therefore, it is not protected under VARA.

iii. Even if Wildflower Works was copyrightable, it would still not be protected underVARA because it is site-specific.

Even if Wildflower Works was copyrightable, it would not be protected by VARA because the statute does not protect "site-specific" art.Phillips v. Pembroke Real Estate, Inc., 459 F.3d 128 (1st Cir. 2006). Site-specific art is artwork in which "one of the component physicalobjects is the location of the art." Id., 459 F.3d at 129. According to Kelley's expert Jane Jacob, "Site-specific art usually takes intoconsideration the natural environment in which a work of art is installed. It could be anything from a mural that is put into a public building,to a lobby in a hotel, to a hill." Trial Tr. vol. 1, 34.

VARA is silent on the issue of site-specific art. There are few published decisions dealing with VARA; the Seventh Circuit has onlypublished two decisions on the statute. No court in this circuit has dealt with the issue of VARA's coverage of site-specific art. This Courtwill therefore follow the persuasive reasoning set forth by the First Circuit in Phillips. In that case, an artist sued to prevent the removal ofhis artwork from a public park. The artwork at issue integrated the artist's sculptures with the large granite stones of the park and thenearby granite sea walls of Boston harbor. 459 F.3d at 137. The district court held that VARA protected such site-specific artwork fromalteration or distortion, but that under the public presentation exception at 17 U.S.C. § 106A(c)(2), the defendant could move the artist'ssculptures to a different location. The First Circuit disagreed with the district court's reasoning, because "the removal of a site-specific workfrom its location necessarily destroys that work of art." 459 F.3d 129. Instead, the First Circuit concluded that VARA does not protect site-specific art at all.

Wildflower Works is clearly a site-specific artwork. Kelley admitted at his deposition that it was site-specific. Trial Tr. vol. 3, 383. Kelley'sexpert Jane Jacob stated unequivocally that Wildflower Works was site-specific. Trial Tr. vol. 1, 34 ("Q: Mr. Kelley's work is site-specific,isn't it? A: Yes, it is. It is site-specific, yes."). In addition, the theoretical concepts that motivated Kelley's design and placement ofWildflower Works required that it be placed in Grant Park; Kelley wanted a location that would create a contrast between the linearity of theurban grid, the rondure of the elliptical gardens, and the entropy of the wildflower beds. FPTO Stip. 25; Trial Tr. vol. 1, 91-93; vol. 2, 251.Before choosing the location, Kelley hired helicopters and airplanes so that he could survey Chicago from the air, and drove around the cityextensively to find a place that would be express his artistic vision. Trial Tr. vol. 2, 247-48. In Grant Park, the gardens were set against abackdrop of Chicago's skyscrapers and grid system. Prior to the first lawsuit, the Park District and Kelley discussed relocating the exhibit,but Kelley rejected all other locales as incompatible with his artistic vision for the exhibit. Trial Tr. vol. 2, 251-52.

Finally, Wildflower Works incorporated pre-existing elements of the environment into its display. It is situated on the roof of the East MonroeStreet Parking Garage. Air vents from the garage were incorporated into the artwork: each ellipse had three large square vents spacedevenly along its major axis, which worked as figurative elements in the "painting" just as the band of gravel and steel around the ellipsesdid. Kelley testified that he designed Wildflower Works around those vents:

Q: When you did Wildflower Works, when you did that, did you design it to include those air ducts?

Kelley: Well, of course, yes, they were part of it. They were considered because I wouldn't have done it there if I couldn'thave, you know, included them as part of it . . . . So they became, in essence, I guess, a certain element.

Trial Tr. vol. 1, 123. Therefore, Wildflower Works was site-specific and not protected under VARA.

Because the Court concludes that Wildflower Works is both site-specific and not copyrightable and therefore not protected under VARA, itneeds not reach the Park District's additional arguments that Kelley waived his VARA rights or that Wildflower Works is a work installed ona building before 1991 and therefore not subject to VARA protection.

c. Commissioner Burroughs' statement created an implied contract, which wasbreached by the Park District.

In his final claim, Kelley contends that the Park District breached a contract between the parties by failing to provide reasonable notice to








Kelley regarding the reconfiguration of Wildflower Works. The final temporary permit expired in 1994, so this Court presumes that Kelleyadvances some sort of implied contract theory based on prior course of dealing to support this claim.

In a contract implied in fact, a contractual duty is imposed by reason of a promissory expression inferred from facts, circumstances andexpressions by the promisor showing an intent to be bound. In re Estate of Milborn, 461 N.E.2d 1075 (Ill. App. Ct. 1984). Such contractmay be proved by circumstances showing that the parties intended to contract and by the general course of dealing between them.However, there can be no promise implied where the relation between the parties excludes the inference that they were dealing on afooting of contract. South Suburban Safeway Lines, Inc. v. Regional Transportation Authority, 519 N.E.2d 1005, 1008 (Ill. App. Ct. 1988).Under Illinois law, "no contract or liability may be implied against a municipal corporation where there has been a failure to comply with astatute or ordinance prescribing the method by which an officer or agent can bind such corporation by contract." Id., 519 N.E.2d at 1007(citation omitted). The City of Chicago's power to contract is limited by law; only "corporate authorities" can execute contracts that bind themunicipal entity unless there has been an express delegation of that power. Chicago Food Mgmt. v. City of Chicago, 516 N.E.2d 880 (Ill.App. Ct. 1987); 65 ILCS 5/2-2-12.

The Park District argues that under 70 Ill. Comp. Stat. 1505/7.01, which delineates the powers of the Park District, only the Board ofCommissioners of the Park District (rather than the commissioners individually) has the power to issue a renewal permit involving morethan a limited, short-term use of Park District property. But the statute actually provides that "[t]he commissioners of such district constitutethe corporate authorities thereof, and have full power to manage and control all the officers and property of the district, and all parks,driveways, boulevards and parkways maintained by such district or committed to its care and custody" (emphasis added). From thelanguage of the statute it is possible that because Burroughs was a commissioner, she was a "corporate authority" capable of binding the

Park District in contract and she could do so orally.[6] See Chicago Food Mgmt. v. City of Chicago, 516 N.E.2d 880. An implied agreementto extend the date of the temporary permit was therefore created when Burroughs told Kelley, "You're still there, aren't you? That's all youneed to do" when queried about the state of the permit for Wildflower Works.

Even though the post-1988 permits did not include the ninety day notice provision, they did provide Kelley the right to remove hiswildflowers upon the expiration of the permits. Accordingly, under the implied permit extension, the Park District should have given Kelleyreasonable time to remove his wildflowers. Based on the terms of the first permit, this Court finds that ninety days would have been areasonable time for the removal of those plants. Because the Park District did not provide the requisite ninety days, it is in breach of theimplied contract.

i. Kelley did not prove his damages to a reasonable degree of certainty.

Although he is entitled to damages under Count IV of the complaint, Kelley failed to meet his burden of proving the amount of his damagesto a reasonable degree of certainty. CSC Holdings, Inc. v. Redisi, 309 F.3d 988, 995 (7th Cir. 2002) ("While we have no problem with thebasic premise that uncertainties as to damages should be resolved against the wrongdoer, this does not give an injured party carteblanche to provide wild guesses at its damages. A reasonable estimate . . . must be grounded in some record evidence, not numberspulled from thin air.") (citations omitted). When a party establishes that it is entitled to damages but fails to prove the amount of thosedamages to a reasonable degree of certainty, a trial court may award the plaintiff only nominal damages. Fidelity Ins. Agencies v. CitizensCas. Co of New York, 194 F.2d 43, 47 (7th Cir. 1952). Kelley has not sought nominal damages.

Kelley seeks damages in "compensation for the materials removed by the Park District." Compl. ¶ 54. The measure of damages wouldtherefore be the value of the plants that Kelley could have removed, less the costs of removal. The only evidence adduced by Kelley withregard to the issue of damages was presented by his expert witness J. Randall Ismay, who calculated the total cost of wildflower plugsrequired to fill 66,000 square feet to be $1.5 million, based on his estimate of the amount of wildflowers in a square inch or square foot ofsoil. However, Ismay's evaluation fails to take into account the approximately 30,000 square feet of Kelley's wildflowers that remain in GrantPark, the percentage of Wildflower Works that had been overtaken by invasive weeds by 2004, the wildflowers removed during thegarden's reconfiguration but replanted afterward, or the cost to Kelley of removing and transporting those wildflowers for which he seeksdamages today. The last factor alone could have proved more costly to Kelley than the value of all of his wildflowers. Given Kelley's failureto provide evidence to dispel these unknowns, this Court concludes that he has not proven his damages to a reasonable degree ofcertainty.

3. CONCLUSION

After carefully reviewing the evidence in this case, this Court concludes that judgment on Counts I and II will be entered in favor of




















Defendant, and Count IV for breach of contract will be entered in favor of Plaintiff. Nominal damages in the amount of one dollar will beawarded on Count IV.

[1] Count III was dismissed in a separate order of this Court.

[2] Made pursuant to Federal Rule of Civil Procedure 52(a).

[3] Although Kelley's complaint lists the higher figure as only $120,000, this Court arrives at the $152,000 figure based on Kelley's testimony that hepurchased 380,000 wildflower plugs at approximately $.40 apiece. Compl. ¶ 16; Trial Tr. vol. 1, 129, Sept. 24, 2007.

[4] The parties dispute whether Burroughs made this remark, but the weight of the evidence favors Kelley's position. Slavin and Dedman testified,consistent with each other, that Burroughs made the comment. On the other hand, Burroughs testified that she did not say anything to Kelley regardingthe permit for Wildflower works, but could not remember other details from the meeting, and could not remember that she had signed an affidavit in thecourse of this litigation regarding the matter. Trial Tr. vol. 1, 76, Sept. 24, 2007; vol. 2, 276, Sept. 25, 2007; vol. 3, 326-38, Sept. 26, 2007. The Courtcredits Slavin and Dedman's testimony.

[5] If indeed the only original element of Kelley's exhibit was this "vegetative management system," then Wildflower Works would be excluded fromcopyright protection under 17 U.S.C. § 102(b).

[6] Notwithstanding the statute, the record is unclear as to whether a Parks District commissioner indeed has the power to act unilaterally in grantingan extension of a permit. If not, Kelley's contract claim fails; if so, Kelley's claim for damages under the contract claim still fails for reasons discussedbelow.


Kim Seng Co. v. J & A IMPORTERS, INC., 810 F. Supp. 2d 1046 - Dist. Court, CD California 2011 - Google Scholar

http://scholar.google.com/scholar_case?q=kim+seng+v+j%26a&hl=en&as_sdt=3,24&case=6340553110739610158&scilh=0[5/21/2013 12:28:54 PM]

810 F.Supp.2d 1046 (2011)

KIM SENG COMPANY, Plaintiff,v.

J & A IMPORTERS, INC., et al., Defendants.

Case No. CV10-742 CAS (MANx).

August 30, 2011.

United States District Court, C.D. California, Western Division.

*1049 Ernest E. Price, Arnold E. Sklar, Ropers Majeski Kohn and Bentley, Los Angeles, CA, for Plaintiff.1049

Daniel Miles Cislo, Mark D. Nielsen, Peter S. Veregge, Cislo and Thomas LLP, Santa Monica, CA, for Defendants.

ORDER GRANTING DEFENDANT J & A'S MOTION FOR SUMMARY JUDGMENT ANDDENYING PLAINTIFF KIM SENG'S MOTION FOR PARTIAL SUMMARY JUDGMENT

CHRISTINA A. SNYDER, District Judge.

I. INTRODUCTION

On February 2, 2010, plaintiff Kim Seng Company ("Kim Seng") filed a complaint against defendants J & A Importers, Inc. ("J & A") andDoes 1-50. The complaint alleges trade dress infringement, 15 U.S.C. § 1125(a), copyright infringement, 17 U.S.C. § 501(a), unfair

competition pursuant to Cal. Bus. & Prof.Code §§ 17200 et seq., and common law unfair competition.[1]

On August 1, 2011, Kim Seng filed a motion for partial summary judgment as to copyright infringement and J & A filed a cross motion for

summary judgment as to *1050 all claims, or in the alternative, for partial summary adjudication.[2] After carefully considering thearguments set forth by both parties, the Court finds and concludes as follows.

1050

II. BACKGROUND

Kim Seng and J & A are competing Chinese-Vietnamese food supply companies. The gravamen of their dispute centers on the intellectualproperty rights as they relate to their respective rice stick food packages. Compl. ¶ 13. Each package depicts a photograph of a bowl filledwith rice sticks, topped by foodstuffs such as egg rolls, grilled meat, and assorted garnishes. See Pl. Mot. at 1. Both packages have ayellow background with red trimming and contain various Chinese, Vietnamese, and English words. Id. The Kim Seng Package advertises"Bun Cha Gio Thit Nuong" and the J & A Package advertises "Bun Thit Nuong Cha Gio," which, according to the parties, roughly translatesinto "rice stick, egg roll, grilled meat." Def. Mot. at 18; Def. Reply at 7.

Kim Seng asserts that it began using its packaging ("Kim Seng Package") in 2002. Plaintiff's Statement of Uncontroverted Facts ("Pl. SUF")¶ 5. J & A began using its packaging ("J & A Package") in 2009. Defendant's Statement of Genuine Issues ("DSGI") ¶ 7. Shortly thereafter,Kim Seng sent a cease and desist letter to J & A, alleging that the J & A Package infringed on both the trade dress and copyrightscontained in the Kim Seng Package. Plaintiff's Statement of Genuine Issues ("PSGI") ¶ 11. Kim Seng copyrighted its package designeffective March 10, 2003, with a "first publication" date of January 5, 1998. DSGI ¶ 31; Reg. No. VA-1-190-640; Decl. of Daniel Cislo inSupport of J & 's Motion ("Cislo Decl.") Exh. 9. On January 12, 2010, Kim Seng filed a "Form CA" to amend its registration by listing thefirst publication date as July 3, 2002, and by adding "3-Dimensional sculpture" in lieu of "photograph" as the nature of authorship. CisloDecl. Exh. 7; Bates Nos. KS 000014-20. On September 1, 2010, the U.S. Copyright Office rejected the supplementary registration becauseKim Seng's copyright claim on the 3-dimensional sculpture would "fundamentally change the original registration" of a 2-dimensionalpackaging design. Cislo Decl. Exh. 22.

Kim Seng contends that it owns the copyrights to both the underlying bowl-of-food "sculpture" and the photograph depicting the bowl. Pl.Mot. at 9. Kim Seng asserts that the underlying sculpture was "created" by Yiyong Tsai, a Kim Seng employee, during the course of her

http://scholar.google.com/scholar?scidkt=3989975036365883849&as_sdt=2&hl=en



employment. Id. at 7. Specifically, Kim Seng claims that Tsai dictated the layout and details of the bowl of food to a third party, Yen Khuu,who physically purchased the bowl and food and constructed it. Id. Khuu is employed by Fortune Asian, the company that commissioned

independent contractor Amy Peng to photograph the bowl of food.[3] Id. at 3-4. According to *1051 Kim Seng, Peng purportedly "intendedto convey ownership" of her copyright in the photograph by "delivering the photographic negative" to Fortune Asian. Id. at 8. Kim Sengnotes that "[e]fforts to locate and communicate with [Amy Peng] have been fruitless," but that nevertheless her delivery of the negativeconstituted an effective conveyance. Id. at 8 n. 1. Subsequently, Fortune Asian allegedly "intended to assign all right to Kim Seng andexecuted a written confirmation of assignment effective in . . . 2002." Id. at 10.

1051

Although "J & A ultimately disputes the origin of the Kim Seng Package," for the purposes of Kim Seng's motion J & A accepts the abovefacts. Def. Mot. at 6 n. 1. J & A separately notes that Kim Seng's copyright registration for the Kim Seng Package was issued on March 10,

2003, more than five years after January 5, 1998, the date listed on the registration of first publication.[4] Furthermore, J & A observes thatKim Seng's "Form CA" claims that "Kim Seng obtained ownership of the copyright in the photograph by assignment." Id. at 7.

III. LEGAL STANDARD

Summary judgment is appropriate where "there is no genuine dispute as to any material fact and the movant is entitled to judgment as amatter of law." Fed.R.Civ.P. 56(a). The moving party has the initial burden of identifying relevant portions of the record that demonstratethe absence of a fact or facts necessary for one or more essential elements of each cause of action upon which the moving party seeksjudgment. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

If the moving party meets its initial burden, the opposing party must then set out specific facts showing a genuine issue for trial in order todefeat the motion. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); see also Fed.R.Civ.P.56(c), (e). The nonmoving party must not simply rely on the pleadings and must do more than make "conclusory allegations [in] anaffidavit." Lujan v. Nat'l Wildlife Fed'n, 497 U.S. 871, 888, 110 S.Ct. 3177, 111 L.Ed.2d 695 (1990); see also Celotex, 477 U.S. at 324, 106S.Ct. 2548. Summary judgment must be granted for the moving party if the nonmoving party "fails to make a showing sufficient to establishthe existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Id. at 322, 106S.Ct. 2548; see also Abromson v. Am. Pac. Corp., 114 F.3d 898, 902 (9th Cir. 1997).

In light of the facts presented by the nonmoving party, along with any undisputed facts, the Court must decide whether the moving party isentitled to judgment as a matter of law. See T.W. Elec. Serv., Inc. v. Pac. Elec. Contractors Ass'n, 809 F.2d 626, 631 & n. 3 (9th Cir.1987).When deciding a motion for summary judgment, "the inferences to be drawn from the underlying facts . . . must be viewed in the light mostfavorable to the party opposing the motion." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89L.Ed.2d 538 (1986) (citation omitted); Valley Nat'l Bank of Ariz. *1052 v. A.E. Rouse & Co., 121 F.3d 1332, 1335 (9th Cir.1997). Summaryjudgment for the moving party is proper when a rational trier of fact would not be able to find for the nonmoving party on the claims at issue.See Matsushita, 475 U.S. at 587, 106 S.Ct. 1348.

1052

IV. DISCUSSION

As an initial matter, the Court finds that Kim Seng's copyright registration does not give rise to prima facie evidence of copyright validity.Under 17 U.S.C. § 410(c), a copyright holder is entitled to prima facie evidence of the validity of the copyright if it had been registered withinfive years after first publication of the work. Id. Kim Seng's copyright registration indicates that it was issued March 10, 2003, and listsJanuary 5, 1998, as the first date of publication. Cislo Decl. Exh. 9; Reg. No. VA-1-190-640. Although Kim Seng has filed a Form CA toamend the first publication date to July 2002 and to add "3-Dimensional sculpture" to the registration's ambit, the U.S. Copyright Officerejected the proposed amendments on September 1, 2010, for the reasons set forth above. As of August 23, 2011, Kim Seng's copyrightmaintains January 5, 1998 as the date of first publication. Accordingly, Kim Seng's copyright registration presently does not constitute primafacie evidence of copyright validity, and its evidentiary weight is left to the Court's discretion. 17 U.S.C. § 410(c).

1. Copyright Claims

In order to establish copyright infringement, a plaintiff must prove two elements: "(1) ownership of a valid copyright, and (2) copying ofconstituent elements of the work that are original." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113L.Ed.2d 358 (1991).

http://scholar.google.com/scholar_case?case=774572446857633137&q=kim+seng+v+j%26a&hl=en&as_sdt=3,24&scilh=0




























Kim Seng claims to own copyrights in both the bowl-of food sculpture and the photograph of the food.[5] Pl. Mot. at 8. As to the photographspecifically, Kim Seng asserts that it is either a derivative work of its underlying sculpture pursuant to 17 U.S.C. § 103, or alternatively, thatAmy Peng assigned her interest in the photograph to Fortune Asian, which then assigned that interest to Kim Seng. Id. J & A contends thatthe food sculpture is not copyrightable, that the photograph is not a derivative work, and that Kim Seng cannot demonstrate ownership ofthe photograph. Opp. at 9, 12, 14. Each copyright claim is addressed below.

A. The Bowl of Food Sculpture[6]

Kim Seng contends that it owns the underlying copyright to the bowl of food because its employee, Yiyong Tsai, directed Fortune Asianemployee Yen Khuu to *1053 create it. Mot. at 3-4. Assuming this to be true, the bowl of food must still meet the requirements for a "valid"copyright. A sculptural work is copyrightable if it is a work of original authorship fixed in a tangible medium of expression, demonstratessufficient creativity, and contains artistic aspects that are separable from its utilitarian functions. 17 U.S.C. § 101; Feist, 499 U.S. at 346,111 S.Ct. 1282.

1053

i. Original Work of Authorship

Copyright protection extends only to "original works of authorship." 17 U.S.C. § 102. "Although the amount of creative input by the authorrequired to meet the originality standard is low, it is not negligible." Satava v. Lowry, 323 F.3d 805, 810 (9th Cir.2003). "[A] combination ofunprotectable elements is eligible for copyright protection only if those elements are numerous enough and their selection and arrangementoriginal enough that their combination constitutes an original work of authorship." Id. at 811.

Kim Seng claims that Yiyong Tsai "chose the foods out of thousands of possibilities, and directed their arrangement to be in a certainfashion out of infinite possibilities." Pl. Opp. at 7. It notes that "[t]he egg rolls or meat rolls could have been angled at any of 360 degrees."Id. at 7-8. Such selection and arrangement, Kim Seng contends, constitute originality and a basis for infringement. Id. at 8.

J & A argues that the combination of "two preexisting, non-original elements," a bowl and the contents of a common Vietnamese dish,"lacks the quantum of originality needed to merit copyright protection." Def. Reply at 8 (quoting Lamps Plus, Inc. v. Seattle Lighting FixtureCo., 345 F.3d 1140, 1147 (9th Cir.2003)).

In Satava, the Ninth Circuit held on originality grounds that plaintiff Satava could not copyright his jellyfish-in-glass sculptures. 323 F.3d at810-11. Specifically, the court ruled that "[t]he selection of the clear glass, oblong shroud, bright colors, proportion, vertical orientation, andstereotyped jellyfish form, considered together, lacks the quantum of originality needed to merit copyright protection." Id. at 811.

In Lamps Plus, the Ninth Circuit similarly held that the combination of "four preexisting ceiling-lamp elements with a preexisting table-lampbase did not result in the expression of an original work of authorship." 345 F.3d at 1147. The court noted that "when determining whethera sculpture contains sufficient originality to qualify for copyright protection it makes no sense to include the utilitarian aspects of the objectin the analysis." Id. at 1146 (internal quotation marks and citation omitted).

Here, like Satava and Lamps Plus, Kim Seng purports to copyright a combination of unprotectable elements—a common bowl, and theingredients of a traditional Vietnamese dish. The food items cannot be separated from their utilitarian function, which is to be eaten. Id. InSatava, the artist's decisions to use clear glass, brightly colored jellyfish, and vertical orientation, "though beautiful," did not satisfy § 101'soriginality requirement because the elements were unprotectable; by direct analogy, regardless of which angle, quantity, or positioning ofthe various food items Kim Seng utilized, the unprotectable nature of the ingredients indicates a lack of originality. 323 F.3d at 811; LampsPlus, 345 F.3d at 1147.

Accordingly, Kim Seng's purported copyright in the bowl of food must fail for want of originality.

ii. Fixed in a Tangible Medium

Even assuming the bowl of food is an original work of authorship, it must still satisfy the Copyright Act's fixation requirement. "A work is`fixed' in a tangible *1054 medium of expression when its embodiment. . . is sufficiently permanent or stable to permit it to be perceived,reproduced, or otherwise communicated for a period of more than transitory duration." 17 U.S.C. § 101.

1054

Kim Seng offers no evidence that its bowl of food satisfies the Copyright Act's fixation requirement. J & A contends that, because the food


















is perishable, it cannot be considered "fixed" for copyright purposes.

In Kelley v. Chicago Park Dist., the Seventh Circuit, as a matter of first impression, analyzed whether an artistically arranged garden("Wildflower Works") was constitutionally "fixed" for the purposes of the Copyright Act. 635 F.3d 290, 303 (7th Cir.2011). It held that a livinggarden "lacks the kind of authorship and stable fixation normally required to support copyright." Id. Although recognizing that "the artisticcommunity might classify [Wildflower Works] as a work of postmodern conceptual art," and that "copyright's prerequisites of authorship andfixation are broadly defined," the garden nonetheless "owes most of its form and appearance to natural forces" and "is not stable orpermanent enough" to be a work of fixed authorship. Id. at 104.

Kim Seng admits the bowl of food here is comprised of a perishable Vietnamese dish purchased by Yen Khuu from a local restaurant.Decl. of Yen Khuu ("Khuu Decl.") in Support of Pl. Mot. at 45. Like a garden, which is "inherently changeable," a bowl of perishable foodwill, by its terms, ultimately perish. Indeed, if the fact that the Wildflower Works garden reviving itself each year was not sufficient toestablish its fixed nature, a bowl of food which, once it spoils is gone forever, cannot be considered "fixed" for the purposes of § 101.Kelley, 635 F.3d at 304-05.

Although a garden is distinguishable from a bowl of food, in that the garden itself may be considered alive and self-cultivating, the purposesunderlying the fixation requirement—to "ease[] problems of proof of creation and infringement"—apply with equal force to a garden and abowl of perishable food. 2 Patry, Patry on Copyright, § 3:22. Accordingly, a bowl of perishable food is not "fixed" for the purposes of the

Copyright Act.[7] Although the fixation requirement is read broadly, "the law must have some limits; not all conceptual art may becopyrighted. In the ordinary copyright case, authorship and fixation are not contested; most works presented for copyright areunambiguously authored and unambiguously fixed." Kelley, 635 F.3d at 304. This case, however, like the garden in Kelley, is "not an

ordinary case." Id.[8]

iii. Sufficient Creativity

To the extent Kim Seng asserts that its bowl of food is a compilation of items, a compilation must embody more than a trivial degree ofcreative selection. Feist, 499 U.S. at 362, 111 S.Ct. 1282. "While this requirement is sometimes characterized as modest, or a lowthreshold, it is not without effect." Id. "[T]he selection or arrangement of facts cannot be so mechanical or routine as to require no creativitywhatsoever." Id. In Feist, a telephone book company's mechanical arrangement of the telephone numbers and addresses of *1055 its area-wide populous did not establish sufficient creativity. Id.

1055

In its papers Kim Seng does not directly address creativity, though its arguments regarding originality apply here. Specifically, Kim Sengasserts that Ms. Tsai "chose the foods out of thousands of possibilities, and directed their arrangement to be in a certain fashion out ofinfinite possibilities." Pl. Opp. at 7.

J & A responds that the Kim Seng Package belies Kim Seng's assertion, because "Bun Cha Gio Thit Nuong," in English, translates roughlyto "rice stick, egg roll, grilled meat." Def. Reply at 7. J & A contends, therefore, that "the choice of foods was entirely mechanical." Id.

The Court agrees with J & A that Kim Seng's food "choices" were dictated by the plain meaning of the bold Vietnamese words on thepackage. However, the arrangement in the bowl itself was not "so mechanical or routine as to require no creativity whatsoever." Feist, 499U.S. at 362, 111 S.Ct. 1282. Assuming Kim Seng's assertions are true, i.e. that Ms. Tsai dictated to Khuu the arrangement of the variousfoodstuffs in the bowl, her actions might demonstrate sufficient creativity to surpass the low threshold established in Feist.

Nevertheless, for the reasons set forth above, Kim Seng's asserted copyright in the bowl of food must fail because it is not an originalauthorship fixed in a tangible medium of expression.

B. The Photograph

Assuming, arguendo, that the sculpture is copyrightable and owned by Kim Seng, Kim Seng asserts that the photograph is a derivativework of the sculpture pursuant to 17 U.S.C. § 101. Pl. Mot. at 8.

Alternatively, Kim Seng contends that Amy Peng assigned her ownership rights in the photograph to Fortune Asian, which then assigned itsrights to Kim Seng. Id.

i. Derivative Work








Kim Seng asserts that it "contributed an element of creativity (the subject matter) to the photo" and that it authorized Amy Peng to take thephotograph. Pl. Mot. at 8. In other words, Kim Seng claims that because the photograph is based on the sculpture—which itself ispurportedly valid copyrightable subject matter owned by Kim Seng—the photograph must be a derivative, and therefore owned by KimSeng. Id.

Kim Seng's argument misses a fundamental point, which is that in order to create a derivative work, the underlying work must becopyrightable. In Ets-Hokin v. Skyy Spirits, Inc., the Ninth Circuit held that photographs of a blue vodka bottle could not be consideredderivative works because the bottle, "although attractive," had no special design or other features that could exist independently a work ofart. 225 F.3d 1068, 1080 (9th Cir.2000).

As discussed above, the Court finds that the underlying bowl of food is not copyrightable. Accordingly, Amy Peng's photograph cannot be

considered a derivative work.[9]

ii. Assignment

Even if Peng's photograph is not considered a derivative work of the underlying *1056 sculpture, it is itself a copyrightable work. 17 U.S.C. §102(a)(5) ("pictorial, graphic, and sculptural works" constitute one category of copyrightable subject matter). Copyright in a work "vestsinitially in the author . . . of the work." 17 U.S.C. § 201(a). "Absent an express transfer of ownership, a contributor who is not an employeeretains ownership of his copyright." Effects Assocs., Inc. v. Cohen, 908 F.2d 555, 558 (9th Cir.1990). Peng, an independent photographernot employed by Kim Seng or Fortune Asian, is the original owner of her food bowl photograph. Pl. SUF ¶ 3.

1056

Kim Seng alleges that Amy Peng transferred her rights in the photograph to Fortune Asian, which then purportedly executed a writtenassignment to Kim Seng. Pl. Mot. at 8. Kim Seng claims that Peng accomplished this transfer by "delivering the photographic negative" toFortune Asian. Id. By way of logic, Fortune Asian's purported transfer to Kim Seng may be valid only if it owned rights in the photographitself. Thus, the question is whether Peng's alleged transfer to Fortune Asian was valid.

"The ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law." 17 U.S.C. §201(d)(1). "A transfer of copyright ownership . . . is not valid unless an instrument of conveyance, or a note or memorandum of the transfer,is in writing and signed by the owner of the rights conveyed." 17 U.S.C. § 204(a). "The [§ 204(a)] rule is really quite simple: If the copyrightholder agrees to transfer ownership to another party, that party must get the copyright holder to sign a piece of saying so." RadioTelevision Espanola S.A. v. New World Entm't, Ltd., 183 F.3d 922, 927 (9th Cir.1999) (internal quotation marks and citations omitted)."Transfer of ownership of any material object . . . does not itself convey any rights in the copyrighted work embodied in the object." 17U.S.C. § 202. "[T]his includes transfer of . . . the photographic negative. . . in which the work was first fixed." H.R. No. 94-1476 at 124. "[I]thas long been recognized that the sale or other transfer of a material object embodying a work protected by statutory copyright does not initself constitute an assignment or license of such copyright." 3 Nimmer, Nimmer on Copyright § 10.09[A] at 10-78.3.

Here, Kim Seng admits that Amy Peng "intended to convey ownership" of the photograph to Fortune Asian "by delivering the photographicnegative" and offers no evidence that her intention was memorialized in writing. Pl. Mot. at 8. Kim Seng acknowledges that any efforts tolocate Peng have been fruitless, and that "we are left with the statements and understanding of the person that communicated with thephotographer at the time and the photographer's act of delivering over the negative." Id. at n. 1. Kim Seng claims that Peng's delivery ofthe negative "was a `writing'" within the meaning of § 204(a), and if not a writing, it is "assuredly evidence [of] an exclusive license." Id. at 8-9 (emphasis in original).

Kim Seng's arguments are unavailing. By its very terms, the Copyright Act explicitly requires any transfer of copyright ownership orexclusive license to be memorialized in a signed, written document. 17 U.S.C. § 204(a). Kim Seng does not cite, and the Court has notfound, any case law that deviates from this principle. See, e.g., Radio Television, 183 F.3d at 927; Effects Assocs., 908 F.2d at 558. KimSeng admits there is no written agreement between Amy Peng and Fortune Asian. As a matter of law, Peng never validly transferred hercopyright interest in the photograph or granted an exclusive license to Fortune Asian. Accordingly, Fortune *1057 Asian's purported

assignment of the photograph to Kim Seng must fail on the grounds that Fortune Asian never owned rights in the photograph.[10]1057

Without submitting any facts tending to show Amy Peng validly assigned her interests in the photograph to Fortune Asian, Kim Seng couldnever have had a valid copyright in the photograph and its copyright infringement claim must fail.

iii. Scenes a Faire














Even if Kim Seng owns a copyright in the photograph, J & A's use of the photograph may be protected under the doctrine of scenes a faire.Scenes a faire, roughly translated as "scenes which `must' be done," rationalizes that there should be no monopoly on an underlyingunprotectable idea. Ets-Hokin, 225 F.3d at 1082. "The Ninth Circuit treats scenes a faire as a defense to infringement rather than as abarrier to copyrightability." Satava, 323 F.3d at 810 n. 3.

In Oriental Art Printing, Inc. v. Goldstar Printing Corp., the plaintiff, a printing company that specialized in printing Chinese restaurantmenus, owned copyrights in several photographs of "common, but unlabeled, Chinese food dishes, arranged in various patterns" on themenu. 175 F.Supp.2d 542, 544 (S.D.N.Y.2001). The court held that such menus were uncopyrightable subject matter because they lackedoriginality and creativity. Id. at 546. The court further opined that even if the photographs were original works capable of being copyrighted,"each of the potentially protectable elements, i.e. the photographs' lighting, angle, and the choice of plates, flow necessarily from thesubject matter of the photographs" and therefore would be unprotectable under scenes a faire. Id. at 547 n. 3.

Like Oriental Art, allowing copyright protection for a photograph of a common Vietnamese dish might give Kim Seng a monopoly over usingsuch photographs on food packages. Any protectable elements of the photograph at issue "flow[s] necessarily from the subject matter ofthe photograph," *1058 i.e., the Vietnamese dish, and provides J & A with a defense to infringement. Id.1058

iv. Conclusion

In light of the foregoing, the Court GRANTS J & A's motion for summary judgment as to the copyright claims on the bowl of food andphotograph.

2. Trade Dress Claims

To succeed on an unregistered trade dress infringement claim under the Lanham Act, a plaintiff must prove that (1) the defendant's tradedress creates a likelihood of consumer confusion, and (2) that the plaintiff's trade dress is protectable. Wal-Mart Stores, Inc. v. SamaraBros., Inc., 529 U.S. 205, 210, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000). Product-packaging trade dress is protectable if it is eitherinherently distinctive or has acquired a secondary meaning. Id. at 215, 12 S.Ct. 1339; Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763,766, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992).

J & A moves for summary judgment on Kim Seng's trade dress claims. Def. Mot. at 18. Specifically, J & A contends that Kim Seng has

offered no evidence of inherent distinctiveness of its package nor evidence of an acquired secondary meaning. Id. at 19-21.[11] J & Anotes that it is the moving party and does not bear the burden of proof on the claim at trial, meaning Kim Seng must present evidenceupon which a reasonable jury could reasonably find in Kim Seng's favor. Def. Reply at 23; Anderson v. Liberty Lobby, 477 U.S. 242, 252,106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

The Court must determine whether Kim Seng has adduced enough evidence tending to show that the Kim Seng Package is eitherinherently distinctive or has acquired a secondary meaning.

A. Inherent Distinctiveness

"Marks are often classified in categories of generally increasing distinctiveness." Two Pesos, 505 U.S. at 768, 112 S.Ct. 2753. "[T]hey maybe (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful." Id. "[I]f an unregistered mark is deemed merely descriptive. . .proof of secondary meaning is required; however, suggestive marks are eligible for protection without any proof of secondary meaning." Id.at 773, 112 S.Ct. 2753 (internal quotation marks and citation omitted).

The primary criterion for distinguishing between a suggestive and descriptive trade dress "is the imaginativeness involved in thesuggestion, that is, how immediate and direct is the thought process from the [trade dress] to the particular product." Lahoti v. VeriCheck,Inc., 586 F.3d 1190, 1198 (9th Cir.2009) (internal quotation marks and citation omitted). A trade dress is suggestive "if imagination or amental leap is required in order to reach a conclusion as to the nature of the product being referenced . . . [b]y contrast, a mark isdescriptive if it defines a particular characteristic of the product in a way that does not require any exercise of the imagination." Id. (internalquotation marks and citation omitted). "Deciding whether a mark is distinctive or merely descriptive is far from an exact *1059 science andis a tricky business at best." Id. (internal quotation marks and citation omitted).

1059



















Here, Kim Seng asserts that the bowl of food depiction on the Kim Seng Package "may suggest, with some thought, that the contents areuncooked rice noodles, but that does not immediately come to mind by the picture alone." Pl. Opp. at 20 (emphasis in original). In otherwords, Kim Seng argues that a consumer would need to use more than a small amount of imagination to make the association betweenthe Kim Seng Package and the bare rice sticks it contains.

Furthermore, Kim Seng offers expert testimony from Kristina Sing, a senior brand strategist of Dog Bollocks 5, LLC, an opinion researchfirm. Pl. Opp. Exh. 2 ("Sing Decl.") at 2. Specifically, Sing's survey revealed that 45 percent of respondents felt that the Kim Seng Packageand J & A Package were from the same company or from affiliated companies. Id. at 14. Of those, 80 percent said that the yellow color ofthe packages confused them, while 89 percent indicated the photograph as the reason why they thought the two packages came from thesame or affiliated companies. Id.

Kim Seng offers no evidence that the Kim Seng Package has acquired a secondary meaning.

J & A counters that Kim Seng has produced no expert report and no documentary evidence to support a finding if inherent distinctiveness.Def. Mot. at 20. J & A contends that Sing's survey should be given weight only as to the question of consumer confusion, and not as to thequestion of inherent distinctiveness. Id. According to J & A, the only evidence of inherent distinctiveness is Kim Seng's counsel'sarguments, which is improper. Def. Reply at 24.

The Court finds that while Kim Seng has offered Sing's consumer survey demonstrating consumer confusion, it has failed to show whetherthe Kim Seng Package is inherently distinctive or has acquired a secondary meaning. Specifically, Kim Seng offers nothing in response to J& A's contentions that Kim Seng has produced no expert report and no documentary evidence to support a finding of inherentdistinctiveness and that numerous other packages of Asian noodles feature bowls of noodles topped with egg rolls, grilled meat,Vietnamese and Chinese writing, and bright colors. See PSGI ¶¶ 76, 78. Although Kim Seng claims that Sing's survey bears on bothinherent distinctiveness and consumer confusion, the very basis of the survey—"to determine whether there was a greater likelihood ofsource confusion between the packages of two brands of dry rice noodles"—belies that assertion. Sing Decl. at 3.

Furthermore, mere attorney argument does not defeat a properly supported summary judgment motion. British Airways Bd. v. Boeing Co.,585 F.2d 946, 952 (9th Cir.1978) ("The only statements we can find in the record that the crash was caused by a defective fin attachmentfitting were made by counsel for [plaintiffs]. But legal memoranda and oral argument are not evidence, and they cannot themselves createa factual dispute sufficient to defeat a summary judgment motion.") Accordingly, Kim Seng has failed to raise a basis for finding a disputedissue of material fact as to the first requirement of its trade dress claim.

Finally, notwithstanding Kim Seng's failure to provide sufficient evidence tending to show inherent distinctiveness *1060 or an acquiredsecondary meaning, the Court finds that the Kim Seng Package is descriptive. It is true that the photograph on the package contains foodother than what is found inside the package; however, the package also clearly states "Bun Cha Gio Thit Nuong," a common Vietnamesedish, which roughly translates to "rice stick, egg roll, grilled meat"; i.e., precisely what the bowl of food depicts. Moreover, the package itselfcontains a see-through window through which any consumer can see its contents. The totality of the circumstances reveals that the KimSeng Package is descriptive, and there is no evidence proffered to enable the Court to find a triable issue of fact as to whether the KimSeng package has acquired a secondary meaning. Kim Seng's trade dress claim, therefore, fails as a matter of law. Accordingly, its thirdand fourth claims for unfair competition arising under Cal. Bus. & Prof.Code § 17200 and at common law, which arise out of its copyrightand trade dress claims, must also fail.

1060

V. CONCLUSION

In light of the foregoing, Kim Seng's motion is DENIED. J & A's motion is GRANTED in its entirety.

IT IS SO ORDERED.

[1] The third and fourth claims for relief, respectively for violations of Cal. Bus. & Prof. Code § 17200 and common law unfair competition, incorporateby reference, and are based solely on, those allegations in the complaint that allege copyright and trade dress infringement. See compl. ¶¶ 52, 55.

[2] In addition, the parties filed evidentiary objections to evidence submitted by the opposing party. The Court sustains J & A's objections as to theKhuu Declaration Nos. 4 and 5 as hearsay pursuant to Fed R. Evid. 802; No. 6 as a lack of personal knowledge pursuant to Fed R. Evid. 602; and No.9 as irrelevant pursuant to Fed R. Evid. 402. The Court sustains J & A's objection as to the Tsai Declaration No. 1 as an improper legal conclusion.The Court sustains J & A's objection as to the Price Declaration No. 1 as irrelevant pursuant to Fed R. Evid. 402. Because the Court does not rely onthe evidence to which the remainder of defendant's or plaintiff's objections are addressed, the Court denies those objections as moot.

[3] The photographer's last name is listed as both Peng and Pang at various points in the moving papers. Because Kim Seng lists "Peng" in its initial





motion for summary judgment, the Court uses that spelling herein.

[4] Kim Seng claims to have corrected its registration to reflect a first publication date of July 3, 2002. PGSI ¶ 32. J & A's response includes ascreenshot from the U.S. Copyright Office that indicates the "first publication" date remains January 5, 1998. Def. Reply to PGSI ¶ 32. J & A notes that"[s]ubmitting a supplemental registration application that never issued is not evidence that the registration itself was amended." Id. at 21. On August24, 2011, the Court independently verified that the U.S. Copyright website reflects a first publication date of January 5, 1998.

[5] It is unclear whether Kim Seng separately claims a copyright in the cooking instructions on its packaging. It appears that Kim Seng cites the cookinginstructions in its motion to demonstrate copying by J & A, and not because it believes the instructions are independently copyrightable. See Pl. Mot. at11. The Court will address only the purported copyrights in the bowl of food and photograph.

[6] It is questionable whether the copyrightability of the bowl-of-food is relevant for purposes of the present motions. Based on Kim Seng's registeredcopyright, it could not sue for copyright infringement based on the "sculpture" alone. See Cislo Declr. Exh. 7; Reg. No. VA X-XXX-XXX (describing thenature of authorship as "2-Dimensional artwork" and "Photograph"; the boxes for "3-Dimensional sculpture" and "Text" are not checked). It is wellestablished that the Copyright Act requires copyright holders to register their works before suing for copyright infringement. 17 U.S.C. § 411(a); ReedElsevier, Inc. v. Muchnick, ___ U.S. ___, 130 S.Ct. 1237, 1241, 176 L.Ed.2d 18 (2010). Because Kim Seng asserts that the photograph is a derivativeof the underlying sculpture, however, an analysis of the bowl's copyrightability is appropriate.

[7] Kim Seng does not cite, and the Court cannot find, any cases standing for the proposition that a perishable bowl of food—especially a commondish—is "fixed" for the purposes of copyright law.

[8] Obviously, a photograph of the bowl of food might be "fixed" within the Act's definition; but that does not establish that its underlying subject matter,the perishable bowl of food, is equally capable of being "fixed." The photograph is discussed infra.

[9] Assuming, arguendo, that Kim Seng owns a valid copyright in the underlying sculpture, the photograph may not constitute a "derivative work" for thepurposes of § 103. The courts are split on the issue. Compare Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1077-1082 (9th Cir.2000) (a photographmight be a derivative of the underlying work) with SHL Imaging, Inc. v. Artisan House, Inc., 117 F.Supp.2d 301, 305 (S.D.N.Y.2000) (a photographcannot be a derivative of the underlying work). Because the Court finds that the bowl is not copyrightable, however, it need not address this issue.

[10] The Court recognizes that the Ninth Circuit has noted, in dicta, that "[w]hen there is no dispute between the copyright owner and transferee, itwould be unusual and unwarranted to permit a third-party infringer to invoke § 204(a) to avoid suit for copyright infringement." Jules Jordan Video, Inc.v. 144942 Canada Inc., 617 F.3d 1146, 1157 (9th Cir.2010). The court explained that § 204(a) "is designed to resolve disputes between owners andtransferees and to protect copyright holders from persons mistakenly or fraudulently claiming oral licenses or copyright ownership." Id.

In Jules, the plaintiff Gasper, an adult movie star, was the president and sole owner of Jules Jordan Video ("JJV"), the company that created thevideos in which Gasper appeared. Id. at 1149. Defendants argued that because Gasper never memorialized in writing any purported transfer ofcopyright ownership in his adult films to JJV, he could not sue them for copyright infringement. Id. at 1156. The Ninth Circuit logically noted that "therewas no need [for Gasper] to defraud anyone with respect to ownership" of the copyrights, because "[a] simple written note or memorandum of transfersigned by himself on behalf of JJV would have been sufficient." Id. Accordingly, it would have been "unwarranted" for the defendants to invoke § 204(a)to avoid a copyright infringement suit.

Kim Seng asserts that, like Jules, here there is no dispute between the copyright owner (Peng) and transferee (Kim Seng, via Fortune Asian), and thatJ & A should therefore not be able to avoid suit on those grounds. Kim Seng's arguments are unpersuasive. Unlike Jules, Peng is unavailable to testifyas to her purported intent to convey ownership in her copyright and the only evidence of her intent to convey her interest are several hearsaystatements made by Kim Seng. Permitting Kim Seng to claim ownership of the photograph's copyright based on its own submitted facts is contrary to §204(a)'s implicit purpose of preventing entities from mistakenly or fraudulently claiming oral licenses or copyright ownership. Thus, Jules is inapposite.

[11] At oral argument, J & A indicated that, based on a recent survey, it disputes whether its package creates a likelihood of consumer confusion.However, because Kim Seng has failed to allege facts tending to show inherent distinctiveness or an acquired secondary meaning, J & A has notrelied on this evidence for purposes of the present motion. See Def. Mot. at 18-22; Def. Reply at 23-24. Accordingly, the Court declines to address ithere.












Kelley v. Chicago Park Dist., 635 F. 3d 290

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Transcript of Kelley v. Chicago Park Dist., 635 F. 3d 290