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March 26, 2003


The opinion of the court was delivered by: Shadur, Senior District Judge.

Photographer Penny Gentieu and her corporation Penny Gentieu Studio, Inc (collectively "Gentieu," hereafter treated for convenience as a singular feminine noun) have brought this action against Tony Stone Images/Chicago, Inc. ("Stone") and Getty Images, Inc. (defendants are collectively referred to as "Getty," also treated as a singular noun), charging (1) copyright infringement, (2) breach of fiduciary duty and (3) breach of contract. Getty has filed a Fed.R.Civ.P. ("Rule") 56 motion for summary judgment, and both sides have complied with this District Court's LR 56.1.*fn1 For the reasons contained in this memorandum opinion and order, Getty's motion is granted in its entirety and this action is dismissed.

Summary Judgment Standards

Familiar Rule 56 principles impose on parties moving for summary judgment the burden of establishing the lack of a genuine issue of material fact (Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986)). For that purpose this Court must "consider the evidentiary record in the light most favorable to the non-moving party . . . and draw all reasonable inferences in his favor" (Lesch v. Crown Cork & Seal Co., 282 F.3d 467, 471 (7th Cir. 2002)). And Pugh v. City of Attica, 259 F.3d 619, 625 (7th Cir. 2001) has echoed the teaching of Anderson v. Liberty Lobby Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)

A genuine issue of triable fact exists only if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party."
As with any summary judgment motion, this Court accepts nonmovant Gentieu's version of any disputed facts, but only so long as it is supported by record evidence. What follows in the Background section is culled from the parties' submissions in that fashion.


Gentieu is a professional photographer specializing in images of babies (S.St.¶ 4). On September 30, 1993 Gentieu entered into a contributor's agreement (the "1993 Contract") with Stone, a stock photography agency*fn2 (id. ¶ 5). Under the 1993 Contract Gentieu appointed Stone as her exclusive agent for licensing images that she submitted and Stone accepted (id.). When she signed the 1993 Contract, Gentieu was aware that Stone also accepted images of babies from other photographers (id.). Stone was acquired by Getty Images, Inc. in 1995, and it is now a wholly-owned subsidiary (S.St.¶ 1).

Gentieu began taking photographs of babies in 1985, using a specific technique to create images that made the baby appear as though it were floating in white space (id. ¶ 43). For that purpose Gentieu shot the babies (centered directly under her camera) from overhead, with the baby positioned on plexiglass that was over diffused light (G.St.¶ 8). That lighting eliminated the baby's shadow, making the baby appear as if it glowed or floated and resulting in a background that has been described as "high white" (id., S. Ex. 114 at 37-38). In 1993 Gentieu also began to create photocompositions by using a computer to combine several photographic baby images digitally into a single image (S.St.¶ 44, G.St.¶ 41).

Gentieu, like every photographer under contract with Getty, was assigned an art director to whom she submitted images that would be accepted into the Getty collection of images at Getty's discretion (S.St.¶ 14). Once accepted, an image was "duped" and filed in the Getty collection, and in later years*fn3 images were "keyworded" and added to Getty's computerized research system called Compass (id. ¶ 15). In response to a request from a Getty customer for a certain type of image, the collection would be searched and a menu of image choices would be provided to the customer (id. ¶ 31). After reviewing those choices, the customer would communicate with a Getty account executive to advise as to its image selection and to negotiate the price and other terms and conditions of the license (id. ¶ 32). Images were often combined by customers with text and in ways that were not specified in the terms of the license (id. ¶ 33).

In addition to the initial review of photographers' images, art directors also helped to suggest and identify concepts for photographers to shoot (id. ¶ 13). Art directors sent shoot briefs to the photographers that communicated Getty's research findings about photographic trends and customer needs to identify potential new markets (id.). Those shoot briefs routinely contained ideas and art direction for new images as well as "tear sheets," rough photographs conveying the basic concept behind a proposed assignment (id.; see, e.g., S. Ex. 25).

Throughout her contract with Getty, Gentieu received such shoot briefs and ideas for images from her art director (id. ¶¶ 67, 148). In particular, in September 1996 she was sent a memorandum listing suggestions for baby images such as "baby shot straight on silhouettable clean white background" and referring to one of her earlier images as a best seller (G.St.¶ 37, G.Ex. 4).

Without reference to Gentieu's images, Getty art directors gave similar shoot briefs and discussed ideas for baby images with other Getty photographers, including six photographers based in London (collectively the "London photographers"): Vincent Oliver ("V. Oliver") (S.St.¶ 110), David Oliver ("D.Oliver") (S.St.¶ 120, S.R. St. ¶¶ 516-17), Tim Brown ("Brown") (S.R. St. ¶ 446), Andrew Hall ("Hall") (S.St.¶ 130, S.R. St.¶ 527-28), Andrew Olney ("Olney") (S.St.¶ 141, S.R. St.¶¶ 497-99) and Stuart McClymont ("McClymont") (S.St. ¶ 147, S.R. St.¶¶ 474, 476-78). That resulted in a number of baby images taken by those photographers and photocompositions made from their baby photographs also being accepted into the Getty collection. In May 1998 Gentieu's art director sent her a memorandum that listed new shoot ideas for non-baby images and certain baby images that Getty no longer needed at that time, including "babies in silhouette, white backgrounds" (G.St.¶ 86).

Over the years Getty accepted over 200 of Gentieu's images that were licensed in approximately 7000 transactions generating over $850,000 in realized revenue (id. ¶ 6). Under the 1993 Contract Gentieu received 50% of all money collected from licenses issued in North America and 30% of the money collected from licenses issued abroad (S.St.¶¶ 56-57). Against those amounts, the costs of producing printed catalogs were charged back to Gentieu from sales of her images that had been selected by Getty to appear in those catalogs (id. ¶ 73). Sales revenues for Gentieu's images varied widely depending on the image (id. ¶ 7). Payments to Gentieu were to be made on a cash accounting basis (id. ¶ 77).

Gentieu acknowledges that she made a lot of money from her images through Getty but counters that her revenues declined in the later years of the relationship (G.Resp.¶ 6). While sales of her images peaked in 1997, her revenues per picture did not grow at the same rate as they had in the first three years of her contract (id.). In 1998, while Getty accepted more of Gentieu's images than in previous years, sales per image dropped (id.). Gentieu's revenues continued to decline in 1999 and 2000 (id.).

According to Gentieu, that decline in sales and revenues from her images was due to Getty's approach to licensing her images. On that score she charges that Getty commissioned, accepted and licensed images of babies taken by photographers other than Gentieu, did not pursue unpaid and unlicensed uses, allowed increased cancellations of Gentieu's images, gave price discounts for her images and keyworded her images improperly (G.Resp.¶ 95).

In the late 1990s Getty was implementing plans to create a website and to allow digital delivery of images (S.St.¶ 72). At the same time contract revision discussions were under way between Getty and members of the Photographers Advisory Group ("PAG"), a rotating group of Getty photographers that was set up to provide input and advice to Getty and to address concerns of the general photographer population (S.St.¶ 72, S.R. St.¶¶ 102, 105). In those discussions Getty sought to standardize its agreements with its submitting photographers and to develop a contract that addressed the new issues raised by web licensing (S.R. St.¶ 188). Newsletters sent to Getty photographers, including Gentieu, mentioned the new agreement as early as July 1997, and in January 1998 discussed the need for a standard commission split for on-line sales (S.Exs.50, 85).

By August 1998 Getty developed a framework for the new contract ("1998 Contract") that was sent to Gentieu along with a cover letter on August 3 (S.St.¶ 74, G.St.¶ 94). In addition to a number of other changes, the 1998 Contract reduced the royalty percentage for on-line sales to 40% and changed to an accrual basis for payment, under which photographers would receive payments within 120 days after the license was issued, whether or not the customer had paid (S.St.¶¶ 75-76, 78). Two incentives for signing the 1998 Contract were identified in the cover letter: (1) those who signed would receive a lump sum payment from the switch to accrual accounting and (2) their photos would be on the website at its launch (G.St.¶ 94).

Gentieu refused to sign the 1998 Contract and communicated her objections to Getty (S.St.¶ 82). She joined with a group of other photographers (known as the "G40") who objected to the new contract and hired counsel to negotiate modifications (id. ¶ 83). Although at its launch Getty's website did not include images by members of the G40, during the contract negotiations their images, including Gentieu's, were placed on the web (G.Resp.St.¶ 84). By spring 1999 most of the G40 had reached an agreement with Getty, but Gentieu refused to sign the modified contract and declined Getty's offer to terminate her 1993 Contract by consent (S.St.¶¶ 86-88, G.St.¶ 188). Although Gentieu believes that her images should have remained on the web under the 1993 Contract (G.St.¶¶ 189, 97-99), Getty removed Gentieu's images from its website because she had not signed the 1998 Contract (S.St.¶ 89, S.R. St.¶ 189).

In March 2001 Getty exercised its right under the 1993 Contract to terminate Gentieu (S.St.¶ 91). Getty waived its right under the 1993 Contract to re-license or extend licenses for Gentieu's images for five years and began to remove her images from its licensing system (G.St.¶ 375).

As stated earlier, Gentieu has sued Getty for copyright infringement, breach of fiduciary duty and breach of contract. First she alleges that many of the baby images in the Getty collection taken by the London photographers or created from their photographs, as well as images by three United States photographers (Ed Honowitz ("Honowitz"), Philip Condit ("Condit") and Eric Tucker ("Tucker")), infringe her copyrighted images. Relatedly she argues that Getty's practices in licensing her images exceeded the scope of the 1993 Contract and therefore constitute infringement. Second, Gentieu asserts that Getty's relationship with the London and other photographers along with its failure to promote her images electronically, its claimed withholding of contract renegotiation information and its licensing practices breached Getty's fiduciary duty as Gentieu's agent. Third, Gentieu contends that all of the conduct by Getty that forms the basis of her other claims constituted breaches of either specific provisions of the 1993 Contract or its "best efforts" clause, or of an implied covenant of good faith and fair dealing. Getty responds that all of those claims fail as a matter of law. This opinion addresses the claims in turn.

Copyright Infringement

Gentieu urges that Getty violated her rights under the copyright laws in two ways. First, it copied, distributed and made derivatives of her images and caused or commissioned the London and other photographers to do so. Second, its conduct in licensing Gentieu's images exceeded the scope of its licensing agreement.

Alleged Copying of Gentieu Images

Gentieu contends that Getty commissioned photographs of babies from the London and other photographers and participated in the creation of baby images from those photographs that infringed on her copyrighted works. Susan Wakeen Doll Co. v. Ashton-Drake Galleries, 272 F.3d 441, 450 (7th Cir. 2001) quotes the test set out in Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991):

To establish copyright infringement, a plaintiff must prove two elements: "1) ownership of a valid copyright, and 2) copying of constituent elements of the work that are original."
Gentieu's ownership of valid copyrights in her images is uncontested, but the parties disagree about the second element: whether Getty copied or directed other photographers to copy 15*fn4 of Gentieu's copyrighted images.

Because direct evidence of copying is typically unavailable, "copying may be inferred where the defendant had access to the copyrighted work and the accused work is substantially similar to the copyrighted work" (Susan Wakeen, id., quoting Atari, Inc. v. N. Am. Philips Consumer Elec. Corp., 672 F.2d 607, 614 (7th Cir. 1982)). Because Gentieu offers no direct evidence, she must try to establish a prima facie case of infringement by demonstrating (1) that Getty and the photographers who created the allegedly infringing images had access to her images and (2) that the works they created are substantially similar to her copyrighted works.

In turn, such a prima facie case raises a presumption of copying that can then be rebutted by defendant's showing that the allegedly infringing works were independently created (Susan Wakeen, id.). If as a matter of law the similarities between works are insufficient to prove copying, or if it is established that the accused work was independently created without copying, Gentieu cannot prevail (Wildlife Express Corp. v. Carol Wright Sales, Inc., 18 F.3d 502, 508 (7th Cir. 1994)).

1. Access

For prima facie purposes Gentieu has raised a reasonable inference that Getty and its photographers had access to her works. Proof of access can be established by demonstrating that the creators of the allegedly infringing works had the "opportunity to view the protected item" (id. at 508 n. 5). Further, Selle v. Gibb, 741 F.2d 896, 901 (7th Cir. 1984) has explained that access can be established by evidence that the copyrighted work was sent to a close associate of the defendant or that the material was widely disseminated.

Under those principles Getty's argument that the photographers never viewed her works may fall short—if only in the Rule 56 inference-drawing context. Getty's own access to the Gentieu's images is undisputed: Gentieu's submitted images were accessible in all of Getty's worldwide offices. And it may perhaps be reasonable to infer access on the part of the photographers. At least several of Gentieu's protected images were included in Getty catalogs that were available for review by Getty photographers. Moreover, the Getty art directors had close working relationships with submitting photographers that involved regular communications about photographic needs and shooting ideas. As a result of their close association with Getty, it may be inferred arguendo at this stage that the other photographers had an "opportunity to view the protected item[s]."

2. Substantial Similarity

But Gentieu falls at the second essential hurdle—substantial similarity—as to which her evidentiary efforts require a much more in-depth analysis. Substantial similarity is determined by applying the ordinary observer test: "whether the accused work is so similar to the plaintiff's work that an ordinary reasonable person would conclude that the defendant unlawfully appropriated the plaintiff's protectible expression by taking material of substance and value" (Wildlife Express, 18 F.3d at 509, quoting Atari, 672 F.2d at 614).

Atari, id. has endorsed a substantial similarity inquiry that compares the "total concept and feel" of the works rather than an analytic dissection of their differences. But Atari, id. at 615 also made clear that "the ordinary observer test, in application, must take into account that the copyright laws preclude appropriation of only those elements of the work that are protected by copyright." And so any comparison of images must be preceded by an analysis of the scope of Gentieu's copyrights to identify what elements are included in her protected expression (as Sweet v. Chicago, 953 F. Supp. 225, 229 (N.D.Ill.1996) has put it, "the `total concept and feel' analysis may be applied only after the scope of copyright protection is determined").

It is axiomatic that copyrights protect the expression of ideas but not the ideas themselves (Feist, 499 U.S. at 349-50, 111 S.Ct. 1282; 17 U.S.C. § 102(b)). Feist, id. at 348, 111 S.Ct. 1282 also teaches that originality is the sine qua non of copyright, so that protection extends only to an author's original expression of an idea.

It follows that for photographs a copyright does not extend to the subject matter of the image itself, but instead protects the expression of the subject as contained in such elements of the author's composition as the selection of lighting, shading, camera angle, background and perspective (Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 60, 4 S.Ct. 279, 28 L.Ed. 349 (1884); Wallace Computer Servs., Inc. v. Adams Business Forms, Inc., 837 F. Supp. 1413, 1417 (N.D.Ill. 1993)). Although in some cases the contrived positioning of a subject has been protected (see, e.g., Burrow-Giles, 111 U.S. at 60, 4 S.Ct. 279), the poses are not copyrightable elements where they follow necessarily from the choice of the subject matter or are otherwise unoriginal Kaplan v. Stock Market Photo Agency, Inc., 133 F. Supp.2d 317, 324-25 (S.D.N.Y.2001); Int'l Biotical Corp. v. Assoc. Mills, 239 F. Supp. 511, 513 (N.D.Ill.1964) ("copy-rights cannot monopolize the various poses used in these photographs since its copyrights can protect only Plaintiff's particular photographic expression of these poses and not the underlying ideas therefor").

It takes only a little thought to recognize, and this Court holds, that Gentieu cannot claim a copyright in the idea of photographing naked or diapered babies or in any elements of expression that are intrinsic to that unprotected idea. Clearly the "poses" at issue in Gentieu's images capture the natural movements and facial expressions of infants, as opposed to the contrived or directed positioning of a photographic model. Such poses are implicit in the very idea of a baby photograph and are not proper material for protection under Gentieu's copyrights.*fn5 It is not enough to establish infringement that the accused photographs were of naked babies in various poses. Rather Gentieu must show that the accused images are substantially similar to particular compositional elements of her expression that do not necessarily flow from the idea of photographing naked babies.

It is of course possible in appropriate cases that the substantial similarity of copyrighted and allegedly infringing works can devolve into a fact-intensive inquiry requiring a trial. But the non-trial alternative of summary judgment is the appropriate route where the court "concludes either that any similarity between the works concerns only noncopyrightable elements or that no reasonable jury could find the works substantially similar" (Wavelength Film Co. v. Columbia Pictures Indus., Inc., 631 F. Supp. 305, 306 (N.D.Ill. 1986)). Where as here the works are attached to the parties' submissions, the court may make a visual comparison of the images to determine as a matter of law whether they are substantially similar to copyrightable material (Theotokatos v. Sara Lee Personal Prods., 971 F. Supp. 332, 340-41 (N.D.Ill.1997)).

Gentieu's 15 assertedly infringed images fall into three groups: (a) close-up head shots of naked babies on white backgrounds, (b) digital photocompositions of baby photographs and (c) images of a frightened child in a corner. Those will be compared to the purportedly infringing works.

(a) Close-up head shots

First Gentieu says that four of her close-ups of naked babies are infringed by eight photographs taken by other Getty photographers and accepted into the Getty collection.*fn6 Each of Gentieu's protected images is of a naked baby's head, neck and shoulders shot using diffused lighting so as to appear on a "high white" background.

Getty argues correctly that because Gentieu's images reflect only the idea of a photograph of a naked baby, her copyright in them is limited to protecting against exact replication of her images. It is true that exact copying or near identity of expression is generally not necessary to establish copyright infringement (Wildlife Express, 18 F.3d at 511). Some ideas, however, can be expressed only in a limited number of ways, and where the gap between the idea of a work and its expression merge so the two become nearly inseparable, copyright protection must likewise narrow to avoid granting an effective monopoly of the idea itself (Atari, 672 F.2d at 616, discussing idea-expression unity and quoting at length from Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971), which held a jeweled bee pin was not copyrightable).

Wildlife Express, 18 F.3d at 508 (internal quotation marks and citations omitted, emphasis in original) has explained that sliding scale of protection:

When reproduction of a lifelike object is at issue, a copyright holder must then prove substantial similarity to those few aspects of the work that are expression not required by the idea. One court has found that the design of a jewelled [sic] bee pin provided nothing new to the idea of the pin; therefore, since copying the pin necessarily would entail copying the idea as well as the expression, copying the expression was not barred. However, as a work embodies more in the way of particularized expression, it moves away from the bee pin . . ., and receives broader copyright protection. At the other end of the spectrum, creative complex artistic expressions are more fully protected.
Under that doctrine of merger, where the "works at issue deal with the reproduction of a lifelike object," substantial similarity must be shown as "to those few aspects of the work that are expression not required by the idea" (Susan Wakeen, 272 F.3d at 451, quoting Wildlife Express, 18 F.3d at 508 (emphasis in original)). And where nothing has been added to the expression of the work over the idea such that idea and expression become indistinguishable, there will be no protection against anything other than identical copying (Atari, 672 F.2d at 616).

At issue here is the idea of a photographic portrait of a naked baby, and just such a merger of expression and idea is evident in Gentieu's simple close-up shots of babies on a white background. All aspects of her particular expression follow necessarily from the idea of taking a baby photograph. Gentieu v. John Muller & Co., 712 F. Supp. 740, 744 (W.D.Mo.1989) discussed the scope of protection for Gentieu's "floating baby" images*fn7 in an earlier and unrelated copyright lawsuit:

In the case at bar, the plaintiff, in using her copyrighted expression (lighting, choice background, camera angle, etc.) has not expanded on the idea of a photograph of a naked baby any more than the sculptor who adds nothing to the idea of a plaster nude statute. This is not meant to minimize the plaintiff's work in any way; its simplicity is its creativity. However, by utilizing her expression in such a way as to create a naked baby and nothing else the plaintiff limits her copyright protection to the identical copying of the copyrightable elements of her work.
This Court concurs with that well-reasoned approach: Gentieu's copyright over the four protected head-shot images is exceedingly thin in scope. By expressing her artistry through images that can best be described as photographs of naked babies devoid of any other detail, she has added nothing protectible by copyright to the idea of a baby photograph. Because idea and expression have so merged, the scope of Gentieu's copyright protection in these ...

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