Duty Free logo
infringes on photo,
judge rules

Judge Helen Gillmor orders the company
to stop using its 'Hawaii Market' logo, which
is similar to a Kim Taylor Reece photo

By Linda Hosek
Star-Bulletin

Photographer Kim Taylor Reece has waited since January for a federal judge to decide whether Duty Free Shoppers illegally used one of his best-selling hula images for its own profit.

He got the answer he wanted on his birthday.

U.S. District Judge Helen Gillmor yesterday agreed that Duty Free Shoppers illegally copied Reece's "Makanani" image of a female dancer in its "Hawaii Market" logo and ordered the company to stop using it.

"This tells not only photographers but all artists that when they create original work, it's protected," he said.

In her order, Gillmor found that Reece's photograph was sufficiently original to warrant protection under federal copyright law.

She found that the protectable elements of the photograph included Reece's selection of the female subject and her position, expression, attire and accessories. Other protectable elements included the lighting, timing, background, film, camera angle, perspective and general composition of the photo.

Duty Free Shoppers, which began using the "Hawaii Market" logo in May 1996, had argued that Reece had photographed a hula pose and that no one could own a pose.

Reece said it took him more than a year to get all the elements of the 1988 photo right and that he had altered a correct hula pose to enhance his image.

Gillmor noted the distinction between an idea and the expression of an idea, saying only the latter carries copyright protection.

She drew on Michaelangelo's "David" as described by the 9th U.S. Circuit Court of Appeals in San Francisco.

Copyright law doesn't protect the idea of a statue of a nude male, but it does protect Michaelangelo's artistic expression of it.

Lex Smith, a Duty Free Shoppers attorney, declined comment on the order, which requires the company to cease its use of the trademark until the parties resolve the matter.

He also said he didn't know it DFS would appeal to the 9th Circuit. Duty Free Shoppers has 30 days to appeal.

Paul Maki, Reece's attorney, said he was pleased with the ruling, but said it was a typical case. He said it confirms that the law protects individual expressions.

Maki said the court has set April 13 for a pretrial conference on Reece's complaint, filed in January. He said the parties may settle, based on the order. He previously said he would ask for monetary damages that reflect the profit of items sold under the logo.

Reece, a photographer for about 20 years, said the value of the "Makanani" image has increased since it was first published.

He said he sold original prints for about $200 to $300 each in 1988 and that he now sells an original print for $4,000 to $5,000.

He said any use of the image by Duty Free Shoppers should reflect its increase in value.