## Facts

- A photographer created a fashion-themed photograph showing a view from outside the bottom of a bathroom stall: a woman’s feet positioned on either side of a toilet, stylish shoes, underwear near her ankles, and a handbag on the floor.
- The photographer later submitted the photograph to a fashion accessories company as part of a portfolio; the company denied reviewing or seeing that specific image.
- The company later released an advertisement using a different photograph depicting a similar bathroom-stall viewpoint with a woman’s feet on either side of a toilet, fashionable shoes, and a handbag on the floor.
- The photographer sued, alleging the company had access to and copied the earlier photograph and that the advertisement was substantially similar.
- The company moved for summary judgment, arguing no actionable similarity in protectable expression and asserting independent creation and lack of access.
- The photographer sought additional discovery under Federal Rule of Civil Procedure 56(f) to develop evidence of access and copying.

## Issues

1. Whether the advertisement photograph was substantially similar to protectable elements of the plaintiff’s photograph, such that it infringed copyright even assuming some copying.
2. Whether a false designation of origin claim under Lanham Act § 43(a) could proceed when the alleged “origin” confusion concerned authorship/source of a photograph.
3. Whether the plaintiff was entitled to additional pre-decision discovery under Rule 56(f) on access and copying.

## Decision

- Granted summary judgment for the defendant on the copyright claim.
- Granted summary judgment for the defendant on the Lanham Act § 43(a) claim.
- Denied the plaintiff’s Rule 56(f) request for additional discovery.
- Dismissed the complaint in its entirety.

## Legal Principles

- Copyright protects original expression, not ideas, concepts, or stock elements that naturally flow from a premise (scènes à faire).
- In substantial-similarity analysis for visual works, courts may filter out unprotectable ideas and conventional elements and compare only remaining protectable expression (including the overall look and feel after filtration).
- Even if copying is assumed, there is no infringement absent substantial similarity in protectable expression.
- Lanham Act § 43(a) “origin” does not provide an alternative cause of action for alleged misattribution of authorship of communicative content; it targets confusion about the producer of goods, not ownership of creative expression.
- Rule 56(f) discovery may be denied where additional evidence on access/copying would not affect the dispositive issue (lack of substantial similarity in protectable expression).

## Conclusion

The court held that the shared toilet-stall fashion concept and related common elements were unprotectable ideas and scènes à faire, and that any remaining expressive similarities were insubstantial; it also rejected an authorship-based Lanham Act theory and denied further discovery because proof of copying would not cure the absence of protectable substantial similarity.


Bill Diodato Photography, LLC v. Kate Spade, LLC, 388 F. Supp. 2d 382 (S.D.N.Y. 2005)