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A Case of Variations on a Theme

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by Arthur H. Seidel

Spring 2001, Vol. 64, No. 1

While recently attending the Van Gogh exhibition at the Philadelphia Museum of Art, my mind went back almost a quarter of a century to a case that I had tried. Van Gogh lacked money for models. Hence, he repeatedly painted the same subjects-himself, his friends and his immediate surroundings. I couldn't help but wonder, if Van Gogh had been fortunate enough (which he was not) to have sold a painting that the new owner copyrighted, would he be liable for copyright infringement if he again painted the same subject in his distinctive style? In other words, was Van Gogh a plagiarist for repainting the same subject matter if he had sold the copyright to a similar painting?

I was faced with a similar question twenty-five years ago. Our client, The Franklin Mint, wished to do a series of four bird paintings to commemorate the 150th anniversary of John J. Audubon's Birds of America. The original paintings would be watercolors from which elephant folio engravings would be made.

The mint made inquiries about the best young bird artists in the United States and finally selected Albert Earl Gilbert. The four birds that were chosen were two raptors (an owl and an eagle) and two songbirds (cardinals and blue jays). The paintings would present the raptors as individual birds, while the songbird paintings would show a male and female. This was Gilbert's most important commission. The engravings would be heavily advertised by The Franklin Mint, giving Gilbert a cachet and wide recognition previously not available to him. Furthermore, not only was Gilbert paid for the original paintings, but he signed each of the engravings in pencil and received a fee for each.

Among wildlife artists, the annual Federal Migratory Bird Hunting and Conservation Stamp Design Competition for the so-called Duck stamp is the closest analogy to a Pulitzer Prize. The winner frequently makes more than one million dollars from the sale of lithographs of the Duck Stamp art for which he retains the copyright rights. A few years after the trial, Gilbert won the 1978/1979 Duck Stamp Award, thereby obtaining the highest possible imprimatur for his work.

Some background on bird art is essential. Bird art is judged by the accuracy of the reproduction, which includes coloring, details of plumage, bodily attitude, bird positioning, and accuracy of background (if present).

All good bird art requires the artist to do field studies and make sketches. Working from preserved specimens, while enabling certain details to be drawn accurately, is of little value in respect to plumage color, which fades shortly after the bird's death. It is also of no value when it comes to stance or bodily attitude. An ornithologist or a bird lover can tell in an instant whether the attitude of a particular species of bird is accurately represented. While color photographs are a great aid to a bird artist, they do not replace the need for field sketches because a camera's high-speed shutter freezes the bird in a particular stance or attitude that may not be typical of the species. And so, it is quite common for bird artists, as well as wildlife artists, to keep libraries of their field sketches for future reference.

Gilbert had done numerous paintings of cardinals before being commissioned by The Franklin Mint. Probably for that reason, he did not bother mentioning to The Franklin Mint when he was retained that four years earlier he had sold a painting of male and female cardinals standing amid apple blossoms titled "Cardinals on Apple Blossom" to a small Florida gallery, National Wildlife Art Exchange, along with the reproduction rights. The painting carried Gilbert's copyright notice. The Florida gallery obtained a copyright registration for Gilbert's "Cardinals on Apple Blossom." The Florida gallery produced a limited edition of 300 prints of "Cardinals on Apple Blossom," and all were sold.

Gilbert believed that of the many cardinal paintings he had done prior to The Franklin Mint commission, "Cardinals on Apple Blossom" was his best treatment of cardinals. He also believed that apple blossoms formed the best background for a painting of cardinals. For these reasons, he used some of the same source materials, namely his field sketches, photographs and 35mm slides of apple blossom foliage, for both paintings. He also used some different source materials for The Franklin Mint painting, which was called "The Cardinal."

The opening shots in Franklin Mint Corp. v. National Wildlife Art Exchange, Inc. involved the venue. Fortunately, the Southern District of Florida, then as now, was crammed full of pending cases, which resulted in the trial being held in Allentown before District Judge Edward N. Cahn. This case placed a great deal of pressure on me because the then-governing copyright statute, the Act of 1909, provided for damages "in the case of a painting, statue or sculpture of ten dollars for every infringing copy made or sold."¹ The Franklin Mint painting had been reproduced in advertising in the National Geographic and other widely read publications, and the National Wildlife Art Exchange was claiming damages in excess of eleven million dollars.

The best comparison of the two paintings is contained in Findings 50 and 51 from Judge Cahn's opinion reported in Franklin Mint Corp. v. National Wildlife Art Exchange, Inc.² as detailed at the end of this article.

Our research showed only one reported U.S. case involving the question of whether an artist who had repainted a copyrighted picture would be a copyright infringer, namely the dictum in Gross v. Seligman,³ which was dead set against us: "If the copyrighted pictures were produced with colors on canvas, and were then copyrighted and sold by the artist, he would infringe the purchaser's rights if thereafter the same artist, using the same model, repainted the same picture with only trivial variations of detail and offered it for sale."

Gross relied on a House of Lords decision, Hanfstaengl v. Baines & Co.,⁴ as its authority for finding copyright infringement. In what must be ranked as unique judicial research, Judge Cahn advised both parties during trial that he had personally verified by telephone conference with the office of the Clerk for the Second Circuit Court of Appeals that there was no typographical error on this point in the printed opinion, from the original typewritten version, because he had found that the Second Circuit had incorrectly relied on Hanfstaengl, as that case had found no infringement. The probable reason for the Second Circuit's error lies in a peculiarity of the reporting of House of Lords opinions in the nineteenth century. In the case of multiple opinions, the opinions were reported in the order of the seniority of the panel's members. The Second Circuit undoubtedly assumed that the first reported opinion represented the majority, when in fact, as Judge Cahn noted, it was the dissent.

My case included the testimony of prestigious academicians specializing in art history, in cabinet art painting and in ornithology, the most prominent art dealer in Philadelphia, numerous bird artists, Gilbert, and the involved Franklin Mint people.⁵ I decided that the best way to demonstrate both artistic variation and the absence of copying in "The Cardinal" was to have Gilbert do another painting of a male and female cardinal on apple blossoms in open court within six feet of the bench and the witness stand during trial without referring to either of his earlier paintings.

I had Gilbert testify and thereafter paint a third watercolor of a pair of cardinals on apple blossoms for five days during the trial. This was to be of the same size and of similar content as the paintings at issue.

Prior to doing his painting, Gilbert stated under oath to Judge Cahn that he would not refer to either "Cardinals on Apple Blossom" or "The Cardinal." He confirmed that he had made no reference to these works when he finished his painting in open court. Gilbert was allowed to use his field sketches, his color photographs and dead cardinal specimens borrowed from a museum for reference.

Weeks before the trial I had discussed this approach with Gilbert. I explained to him that he would be under tremendous pressure, as he would be attempting to create the most important painting of his career while listening to his artistic reputation being attacked and defended. Gilbert said he could do it, and he performed brilliantly.

It is hard to conceive of an artist painting under more difficult circumstances than when he is a defendant accused of plagiarism and is working on a canvas a few feet in front of witnesses who are testifying against him, with his reputation hanging in the balance. Judge Cahn found in favor of The Franklin Mint. This was affirmed by a unanimous Third Circuit panel, per Judge Weis.⁶ Certiorari was denied.⁷ A few excerpts from the Court of Appeals opinion⁸ lay down the law on artistic variation on a theme:

"Moreover, in the world of fine art, the ease with which a copyright may be delineated may depend on the artist's style. A painter like Monet when dwelling upon impressions created by light on the facade of the Rouen Cathedral is apt to create a work that can make infringement attempts difficult. On the other hand, an artist who produces a rendition with photograph-like clarity and accuracy may be hard-pressed to prove unlawful copying by another who uses the same subject matter and the same technique.

"Expert testimony described conventions in ornithological art that tend to limit novelty in depictions of the birds. For example, minute attention to detail of plumage and other physical characteristics is required and the stance of the birds must be anatomically correct. "There was also testimony on the tendency of some painters to return to certain basic themes time and time again. Winslow Homer's schoolboys, Monet's facade of Rouen Cathedral, and Bingham's flatboat characters were cited. The Franklin Mint relied upon these examples of 'variations on a theme' as appropriate examples of the freedom that must be extended to artists to utilize basic subject matter more than once. National vigorously objects to the use of such a concept as being contrary to the theory of copyright. We do not find the phrase objectionable, however, because a 'variation' probably is not a copy and if a 'theme' is equated with an 'idea,' it may not be monopolized. We conceive of 'variation on a theme,' therefore, as another way of saying that an 'idea' may not be copyrighted and only its 'expression' may be protected.

"The similarities here are of a nature not calculated to discourage an artist in the development of a specialty yet sufficiently distinguishable to protect his creativity in that sphere. Just as Justice Holmes would not ban the ballerinas of Degas, we may not excommunicate the cardinals. The district court had the opportunity to hear the testimony from the artist and found credible his statement that he did not copy. For further support, Gilbert painted a third picture while in the courtroom and without referring to either of his earlier paintings. The court determined that although some of the same source materials were used in all three paintings, similarity between the works necessarily reflected the common theme or subject, and each painting was a separate artistic effort."

After serving as Chief Judge for the Eastern District, Judge Cahn has now retired and returned to private practice. Although I have been involved in many hundreds of intellectual property litigations, I never had the pleasure of trying another case before him. His work in running down the mistake in Gross v. Seligman ranks with the highest judicial work product I have seen in more than half a century at the bar.

Finding 50
There are similarities between "Cardinals on Apple Blossom" and "The Cardinal" including:

1. Both depict two cardinals, one male and the other female.
2. The cardinals in both are perched on forked apple branches that are in blossom.
3. In both pictures, the beak of one of the birds is open.
4. The presentation of the birds in both pictures is similar in that one bird is above the other and they are facing to the viewer's right.
5. Some of the foliage in both pictures is similar.
6. The legs of the birds in both pictures are similar.

Finding 51
There are differences between "Cardinals on Apple Blossom" and "The Cardinal" including:

1. "Cardinals on Apple Blossom" has as one of its three focal points a large yellow butterfly while there is no butterfly in "The Cardinal," which has only two focal points.
2. The female cardinal is at the top of "Cardinals on Apple Blossom" and at the bottom of "The Cardinal."
3. The male cardinal in "Cardinals on Apple Blossom" is leaning toward the large butterfly with his beak open, his tail feathers fanned and his crest erect. The male cardinal in "The Cardinal" is less agitated.
4. There is a small leafhopper near the female cardinal in "Cardinals on Apple Blossom" while there are no insects depicted in "The Cardinal."
5. The blossoms shown in "The Cardinal" are in a later stage of development than in "Cardinals on Apple Blossom."
6. "The Cardinal" is complementary to "The Blue Jay" while "Cardinals on Apple Blossom" is not.
7. The attitude or posture of the cardinals in the two pictures is dissimilar. (h) Some of the foliage in "The Cardinal" is different from the foliage in "Cardinals on Apple Blossom."
8. There are discernible differences in the color and feathers between the birds in "The Cardinal" and the birds in "Cardinals on Apple Blossom."
9. "The Cardinal," being engraved, contains numerous black lines illustrating body feathers. These lines do not appear on "Cardinals on Apple Blossom."

Notes

1. 17 U.S.C. 101.
2. 195 U.S.P.Q. 31, 34-35 (E.D.Pa. 1977).
3. 212 F.2d 930, 931 (2d Cir. 1914).
4. (L.R. 1895) A.C. 20.
5. It did not help my case that the Allentown Morning Call, which featured a front-page article on the case each day throughout the trial, once mislabeled its photographs of the paintings, showing "The Cardinal" as "Cardinals on Apple Blossom" and vice versa. This was called to Judge Cahn's attention by opposing counsel as proof of substantial similarity and, hence, infringement.
6. 575 F.2d 62 (3rd Cir. 1978).
7. 439 U.S. 880 (1978).
8. 575 F.2d, at 65, 66 (3d Cir. 1978).