CITE:  323 F.3d 763
CMON:  March 2003
PLAIN: Joshua Ets-Hokin
DEFND: Skyy Spirits et al.
COURT: United States Court of Appeals for the Ninth Circuit 
DATE:  March 14, 2003
Appeal from the United States District Court for the Northern District
of California. D.C. No. CV-96-03690-SI. Susan Yvonne Illston, District
Judge, Presiding. Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th
Cir. Cal., 2000).  AFFIRMED.

  A photograph has to be "virtually identical" to infringe another
  photograph if either there are a judge-determined limited number of
  ways to shoot the photograph (merger) or if there are many similar
  photographs (scenes a fair).

JUDGE: Mary M. Schroeder, Chief Judge
Mary M. Schroeder, Chief Judge, Alfred T. Goodwin and Richard R. Clifton,
Circuit Judges.


This long-running litigation is fundamentally about how many ways one can
create an advertising photograph, called a "product shot", of a blue vodka
bottle. We conclude there are not very many. We therefore affirm the district
court's summary judgment because the allegedly infringing photographs are
not "virtually identical" as required upon application of the defensive
doctrines of merger and scenes a faire. We agree fully with the district
court that such defenses were appropriately invoked.

Indeed, we held as much when this case was previously before this court.
See Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000).  The
facts and background of the case are contained in that opinion, and we
repeat them here only as necessary.

In 1993, photographer Joshua Ets-Hokin took a series of photographs of Skyy's
iconic blue vodka bottle for use in a marketing campaign. Skyy later hired
two other photographers to photograph the bottle and used these photographs
in advertising and other marketing materials. In 1996, Ets-Hokin filed this
action against Skyy alleging infringement of his copyrights in the 1993

The district court originally granted summary judgment in favor of Skyy on
the ground that Ets-Hokin's photographs were not sufficiently original to
merit copyright protection. We reversed, holding that the photographs met
the minimal threshold of originality required for copyright protection,
but noted that such protection was limited by the doctrines of merger and
scenes a faire, which apply because of the narrow range of artistic
expression available in the context of a commercial product shot. See
Ets-Hokin, 225 F.3d at 1082. We instructed the district court to consider
those defenses on remand, which it did, and they are now the subject of
this appeal.

While the previous [**3]  panel's majority opinion reflects that the
applicable defenses were not before the court at that stage of the litigation,
Judge Dorothy Nelson's dissent was prescient: "[A]s a matter of law, legal
defenses such as scenes a faire and the merger doctrine prevent Ets-Hokin from
prevailing on his copyright infringement claims." Ets-Hokin, 225 F.3d at 1083
(D.W. Nelson, dissenting). We agree, and we now affirm the district court.

In this appeal, Ets-Hokin argues that the district court's decision is
inconsistent with the principle recognized in Burrow-Giles Lithographic
Co. v. Sarony, 111 U.S. 53, at 58 (1884), that photographs are entitled
to copyright protection. This argument reflects a misconception of the
district court's ruling, and indeed of the prior ruling of this court,
neither of which questioned the copyrightability of photographs. Whether
Ets-Hokin's photographs are subject to copyright protection is not before
us either. We answered that question affirmatively in the previous
iteration of this case. See Ets-Hokin, 225 F.3d at 1077. Rather, the
question is the scope of Ets-Hokin's copyright within the limited
landscape of commercial product shots.

Ets-Hokin argues that Skyy's photographs are substantially similar to
those in which he holds the copyrights and that they are therefore infringing.
However, his claim fails upon application of the defensive doctrines of
merger and scenes a faire. As we previously explained:

    Under the merger doctrine, courts will not protect a copyrighted work
    from infringement if the idea underlying the work can be expressed
    only in one way, lest there be a monopoly on the underlying idea. In
    such an instance, it is said that the work's idea and expression
    "merge".  Under the related doc-trine of scenes a faire, courts will
    not protect a copy-righted work from infringement if the expression
    embodied in the work necessarily flows from a commonplace idea . . . .

Ets-Hokin, 225 F.3d at 1082. Likewise, when similar features of a work are
"as a practical matter indispensable, or at least standard, in the treatment
of a given idea, they are treated like ideas and are therefore not protected
by copyright".  Apple Computer Corp. v. Microsoft Corp., 35 F.3d 1435, 1444
(9th Cir. 1994) (internal quotation marks and citation omitted).

Though the Ets-Hokin and Skyy photographs are indeed similar, their
similarity is inevitable, given the shared concept, or idea, of photographing
the Skyy bottle. When we apply the limiting doctrines, subtracting the
unoriginal elements, Ets-Hokin is left with only a "thin" copyright, which
protects against only virtually identical copying. See Apple, 35 F.3d at 1442
(9th Cir. 1994). As we observed, in Apple, "[w]hen the range of protectable
expression is narrow, the appropriate standard for illicit copying is
virtual identity." Id. at 1439.

This principle has long been a part of copyright law. Indeed, as Judge
Learned Hand observed in the context of stock dramaturgy: "The less developed
the characters, the less they can be copyrighted; that is the penalty an
author must bear for marking them too indistinctly." Nichols v. Universal
Pictures  Corp., 45 F.2d 119, 121 (2d Cir. 1930). The same is true here,
where the range of protectable expression is con-strained by both the
subject-matter idea of the photograph and the conventions of the commercial
product shot.

Skyy's photographs are not virtually identical to those of Ets-Hokin.
Indeed, they differ in as many ways as possible within the constraints
of the commercial product shot. The lighting differs; the angles differ;
the shadows and highlighting differ, as do the reflections and background.
The only constant is the bottle itself. The photographs are therefore
not infringing.

Skyy cross-appeals the denial of attorney's fees it sought under 17 U.S.C.
Section 505 for fees incurred after remand from the Ninth Circuit. The
Supreme Court identified the following non-exclusive list of factors to
guide the award or denial of attorney's fees: "frivolousness, motivation,
objective unreasonableness (both in the factual and in the legal components
of the case), and the need in particular circumstances to advance
considerations of compensation and deterrence." Fogerty v. Fantasy, Inc.,
510 U.S. 517, 534 n. 19 (1994) (citation omitted). The Ninth Circuit has
added as additional considerations: the degree of success obtained, the
purposes of the Copyright Act, and whether the chilling effect of attorney's
fees may be too great or impose an inequitable burden on an impecunious
plaintiff. Fantasy, Inc. v. Fogerty, 94 F.3d 553, 559-60 (9th Cir. 1996).

The only factor to weigh in Skyy's favor is the degree of success obtained.
The remaining factors are either neutral or favor the denial of fees. "A
district court's fee award does not constitute an abuse of discretion unless
it is based on an inaccurate view of the law or a clearly erroneous finding
of fact." Fantasy, Inc., 94 F.3d at 556 (internal quotation marks and
citation omitted). The district court's denial of Skyy's fee request had
no such basis, and was not an abuse of discretion.