William Fisher, CopyrightX: Lecture 7.2, The Rights to Reproduce and Modify: Improper Appropriation

Cases like Cablevision, in
which the parties struggle over whether what the defendant has
produced constitutes a copy, are rare. Much more common are cases in
which the parties struggle over whether the character
and amount of material copied by the defendant from
the plaintiff’s work rise to the level necessary to
constitute infringement. Once again, the burden
is on the plaintiff. The plaintiff must
show not only, as we’ve seen, that the defendant copied from
the plaintiff’s copyrighted work, but also that the copying,
assuming it to be proved, went so far as to constitute
improper appropriation. There are three more or less discreet
ways in which the plaintiff can do so. First, he could show
that the defendant made a verbatim copy of his entire work. This is what Melville Nimmer helpfully
refers to as comprehensive copying. This happens more often
than you might think. Examples include peer to peer
sharing of sound recordings and the comprehensive replication
of digital copies of films that were at issue in the Cablevision
case, which we just discussed. So long as the plaintiff’s work
qualifies for copyright protection, applying the standards we
discussed in the first lecture, comprehensive copying
of this sort easily gives rise to a violation
of section 106(1). Things get a bit more complicated when
what the defendant has copied verbatim is not the entire work but a piece
or slice of the plaintiff’s work. Nimmer refers to this as, quote,
“fragmented literal similarity,” close quote. An example can be found in this lecture. You’ll recall that I illustrated the
principle of subconscious copying by playing for you a segment of the
Chiffons recording of Donald Mack’s composition “He’s So Fine.” In order to enable you
to hear that recording, I had to create a copy of that segment
in the recording of this lecture, which you are now watching and listening to. I did not copy the entire song. So I’ve not engaged in
comprehensive copying. Instead, I copied a
piece of it, specifically a piece long enough for you to assess
the plausibility of the court’s conclusion that George Harrison had
innocently copied Mack’s composition. Thus I have engaged in, quote,
“fragmented literal copying,” both of Mack’s composition
and of the Chiffons sound recording of that composition. To prevail in a fragmented
literal similarity case, the plaintiff must show
two things in addition, as we’ve seen, to the fact of copying. First, he must show that
the slice the defendant took includes some copyrightable
expression, not merely ideas or facts. All the factors we discussed
in lecture number one concerning the idea-expression
distinction become relevant here. For example, if the
slice the defendant took consists of a sentence that is the
only effective way of conveying a particular idea, then
pursuant to the merger doctrine, the taking of that sentence does not
constitute a copyright infringement. Can I escape liability on this basis
for copying a slice of “He’s So Fine”? No, there’s plenty of copyrightable
expression in the 30 second slice that I appropriated. Second, the plaintiff must show that
the slice that the defendant took is big enough. How big is that? The adjective most often used
by the courts is substantial. The portion taken must be a substantial
part of the plaintiff’s work measured both qualitatively and quantitatively. Relatively small slices have been deemed
sufficient to pass this test provided that they’re sufficiently important
to the plaintiff’s creation. For example, in the 1980 Iowa State
research case, the defendant, ABC, broadcast as part of its
coverage of the Olympics two brief excerpts from the
plaintiff’s documentary film examining the life of a wrestler. One expert was 2 and 1/2 minutes
long, the other 12 seconds. In the judgment of the Second
Circuit, that was plenty. A willingness to find liability upon
the taking of relatively small excerpts is not limited to the United States. For example, the courts
in Australia have proven to be similarly
protective of plaintiffs. In a recent high profile
case, the plaintiff owned the copyright of “Kookaburra,”
a nursery rhyme originally written by Marion Sinclair in 1932. It was popular in Australia for decades. And indeed, I can remember my mother
singing it to me in the United States. The key segment of the
song goes like this. I’m going to do my best here. [MUSIC – “KOOKABURRA”] My
apologies to Ms. Sinclair. In the late 1970s, the
Australian rock group Men at Work composed and recorded an equally
famous, perhaps more famous, song called “Down Under.” I’m going to play a short
passage of that song. Listen carefully for the flute
riff that comes near the end. [MUSIC – MEN AT WORK, “DOWN UNDER”] The same riff appears several
other times in “Down Under,” and each time is equally short. George Ham, one of the members of Men
at Work, added this riff to the song in order to inject some, quote
“Australian flavor,” close quote, into it. In the ensuing copyright litigation, Ham
testified that, like George Harrison, he was not aware that he was lifting
this segment from “Kookaburra.” Somewhat more specifically, here’s how
Judge Jacobson, who oversaw this case, summarized Ham’s affidavit. Quote, “He said that the
flute section, which he added, fitted rhythmically to ‘Down
Under’ and the percussion drum section at the start of the song,
which is in fact played on beer bottles with different amounts of water in them. Mr. Ham pointed out that the lyrics,
vocal melody, chords, and bass lines were already established
when he heard “Down Under.” He looked for a complimentary
part for his instruments, and especially one which fell into the,
quote, ‘tongue in cheek,’ close quote, nature of the song. He described the flute line as an
Aussie cliche melody, or what he thought was an Irish Australian style melody.” Now, Judge Jacobson did not
definitively resolve the question of whether Ham had been aware
when he inserted the riff that had been taken from
“Kookaburra,” apparently assuming that, as we saw in the
George Harrison case, subconscious copying is actionable. The decisive issue in Judge Jacobson’s
judgment was the amount taken. Here’s how the court expressed
the relevant standard. Copyright infringement arises
when a defendant, quote, “has copied a substantial
part of the copyrighted work. The question whether he has
copied a substantial part depends much more on the quality than
on the quantity of what he has taken,” close quote. That standard, the judge ruled,
had been met in this case. The remedy? The defendants had to
pay the plaintiffs 5% of the royalties they had earned on the
song since 2002 and into the future. In 2011, the highest
court in Australia refused to hear an appeal from the ruling,
leaving Jacobson’s decision intact. This case had a tragic coda. In April of 2012, George Ham died at
age 58 of an apparent drug overdose. It seems that one factor in
his decline was his dismay that his legacy had been permanently
tarnished by the judgment that he had copied another musical work,
suggesting that, more important for him than the financial liability
arising out of this case was the reputational harm it generated. So to summarize, in a case involving
fragmented literal similarity, the plaintiff must prove that the
defendant took a substantial portion of the plaintiff’s work measured
qualitatively and quantitatively. In practice, that requirement
is forgiving, permitting plaintiffs to recover for the
taking of quite small pieces. There’s a limit, however. That limit is sometimes referred to
as the, quote, “de minimis doctrine.” An excellent description
and illustration of this doctrine to be found in Judge
Leval’s 2001 opinion in the case of Davis versus The Gap. Quote, “The de minimis doctrine is
rarely discussed in copyright opinions. Because suits are rarely brought
over trivial instances of copying. Nevertheless, it’s an important
aspect of the law of copyright. Trivial copying is a
significant part of modern life. Most honest citizens in
the modern world frequently engage without hesitation
in trivial copying that, but for the de minimis
doctrine, would technically constitute a violation of the law. We do not hesitate to make
a photocopy of a letter from a friend to show to another
friend, or of a favorite cartoon to post on the refrigerator. Waiters at a restaurant sing “Happy
Birthday” at a patron’s table. When we do such things,
it’s not that we are breaking the law, but unlikely to be
sued given the high cost of litigation. Because of the de minimis doctrine
in trivial instances of copying, we are in fact not breaking the law. If a copyright owner were to sue
the makers of trivial copies, judgment would be for the defendants. The case would be dismissed. Because trivial copying
is not an infringement.” Now, one warning about this
otherwise illuminating passage. Judge Leval’s example in the middle
of this paragraph about recording television programs while we are
out is not, strictly speaking, an example de minimis copying. Rather, as I mentioned in connection
with the Cablevision case, that’s an example of fair use, a
doctrine that Judge Leval himself has done more to reshape and
invigorate than any other judge. But if you exclude that one
instance, the passage in front of you nicely illustrates the general
and unsurprising principle. The law will not penalize the
taking of trivial amounts. There’s one important exception
to the de minimis doctrine. It’s illustrated by the facts of
the 2005 case of Bridgeport Music. The plaintiff in that
case owned the copyright in a sound recording of the
song “Get Off Your Ass and Jam,” which was originally made by George
Clinton Jr. and the Funkadelics. Clinton is pictured in
the slide on your screen. The Funkadelics’ recording of
“Get Off” opens with a solo guitar riff that contains three notes
and lasts a total of four seconds. Here it is. [MUSIC FUNKADELICS, “GET OFF YOUR ASS
AND JAM”] Gangsta rap group NWA,
depicted on this slide, subsequently recorded a song
entitled “100 Miles and Runnin,” which contained a sample from
the Funkadelics recording. Specifically, NWA copied two
seconds of the four second riff, lowered the pitch, looped that
slice, and extended it to 16 beats. The loop, created by NWA,
lasts a total of seven seconds. That seven second segment derived
from the original recording appears in five places in “100 Miles.” I’m going to play one of
those five appearances. Listen carefully, because the
segment appears in the background. And it’s hard to hear. A word of warning, in the
foreground of this excerpt are some explicit lyrics that
may offend some listeners. If you don’t wish to hear
them, you should skip over the next 20 seconds of this lecture. [MUSIC – NWA, “100 MILES AND RUNNIN”] Despite the brevity of the sample
taken from the Funkadelics recording, the copyright owner brought
an infringement suit. Really, you may think. To be sure, as the district court
that heard the case observed, the segment taken by the
defendants, though tiny, was arguably important
to the defendant’s work. In the court’s words, quote,
“The portion of the song at issue here is an arpeggiated chord, that is
three notes that, if struck together, comprise a chord, but
are instead played one at a time in very quick
succession, that is repeated several times at the
opening of ‘Get Off.” The arpeggiated chord is played on
an unaccompanied electric guitar. The rapidity of the notes
and the way they are played produce a high pitched whirling sound
that captures the listener’s attention and creates anticipation of
what is to follow,” close quote. Well maybe, but the fact remains that
the excerpt taken is very short– to repeat, two seconds
long, much shorter than the excerpt in the Kookaburra
case, and much less distinctive. Indeed, if I hadn’t pointed
it out, almost surely you would not have noticed it. This would thus seem to be an easy
case of de minimis copying, taking an amount too small to warrant
the attention of the law. And the district court so ruled. Surprisingly, the Sixth
Circuit Court of Appeals reversed, holding broadly that
the de minimis defense is not available to a defendant who
samples sound recordings. Taking even a tiny piece of someone’s
sound recording will trigger a violation of section 106(1). ) The
rule, announced in Bridgeport Music, was widely denounced. And it may well be a bad rule. But it’s somewhat less
shocking than it first appears. The reason is that in US law, sound
recordings get narrower protection than other sorts of copyrights. Here’s the relevant provision. As you can see, imitating
a sound recording does not constitute infringement. With respect to all other types
of copyrighted works, including musical compositions, imitation
does constitute infringement, but not for sound recordings. Only capturing the actual
sounds fixed in the recording gives rise to liability. Dubbing is actionable,
but not imitation. This provision explains why, as we
discussed in lecture number three, musicians are free to make covers
of commercially released songs. As we saw there, musicians have to
pay the composers of those songs or their assignees a
modest compulsory fee. But they don’t have to get
the composer’s permission. Even more strikingly, they
don’t have to pay anything to the owners of the copyrights
in the sound recordings embodying the original rendition of the song. Because they’re not
capturing its actual sounds. Now, the reason why this rule
is relevant to digital sampling is that, as the Sixth
Circuit observes, it creates an inexpensive
alternative to sampling. As the court explained,
quote, “It must be remembered that if an
artist wants to incorporate a riff from another work
in his or her recording, he’s free to duplicate the sound
of that riff in the studio. The market will control the license
price and keep it within bounds. The sound recording copyright owner
cannot exact a license fee greater than what it would cost the person
seeking the license to just duplicate the sample in the course of making
the new recording,” close quote. In other words, the
court argues, a blanket rule that all digital
sampling, no matter how small, gives rise to liability
would not, quote, “stifle creativity,” close quote. Because rap artists and others
can either imitate the sounds they want or can obtain a license,
the fee for which will be low. Because the licensor is aware
that imitation is lawful. The court’s last argument in
support of its ruling is different. Not only would a blanket prohibition
on sampling not stifle creativity, said the court. It’s fair. Why? Because, quote, “Sampling
is never accidental. It’s not like the case of a composer
who has a melody in his head, perhaps not even realizing that
the reason he hears the melody is that it’s the work of another
which he had heard before. When you sample a sound
recording, you know you are taking another’s
work product,” close quote. Notice here the echoes of the fairness
theory of copyright in general. Intentionally taking someone
else’s, quote, “work product,” the court suggests, is wrong, morally
wrong, and deserves to be punished. I leave to you the question of
whether these arguments in combination are convincing. I hasten to add that the
elimination of the de minimis defense for sound recordings
does not necessarily mean that all digital
sampling is unlawful. It’s still in principle
possible for samplers to avoid liability on
the basis of fair use. We’ll take up that option in two weeks. Incidentally, the fair use
doctrine as you’ll see also provides the best line of defense
for me if the Funkadelics or NWA or the Chiffons object to my use in this
lecture of pieces of their recordings. The seemingly absolute position, taken
by the Sixth Circuit Court of Appeals in the Bridgeport case, is not
limited to the United States. In the 2008 Metall auf Metall case,
the Federal Supreme Court of Germany similarly ruled that the sampling
of any part of a digital recording gives rise to infringement of the
neighboring right in the recording. If you follow this link
on your screen, you can read an English translation
of the German decision. So the Bridgeport Music doctrine, for
better or worse, seems to be spreading. The third path to a demonstration
of improper appropriation is the most interesting and complicated. It involves situations in
which the defendant has not copied any portion of the
plaintiff’s work verbatim, but has instead created a
different but similar work. Such cases of, to use Nimmer’s phrase,
comprehensive nonliteral similarity, are governed in the United
States by the so-called, quote, “substantial similarity,”
close quote, test. As you might expect, the defendant is
liable under this approach if and only if his work is substantially
similar to the plaintiff’s. Before considering what
that phrase might mean, we need to confront two
threshold questions. First, are additions relevant? In other words, can a
defendant escape liability by showing that he added sufficient
things to the plaintiff’s work to make the two works different? The canonical answer is no. As Judge Hand once put
it, quote, “No plagiarist can excuse the wrong by showing how
much of his work he did not pirate,” close quote. However, as we’ll see,
courts don’t always adhere strictly to that guideline. Second, what happens when the
plaintiff’s work contains some material protected by copyright law
and some material that’s not protected, for example that
consists of facts or scenes a faire? Cases of this sort present courts
with an analytical challenge. Similarity that arises because
the defendant has mimicked unprotected material should of
course not give rise to liability. On the other hand, if the courts or
juries ignore the unprotected material altogether, they may fail to give
the plaintiff appropriate protection for the original way in which he
has arranged the unprotected pieces. No single way of handling this
problem governs all cases. Instead, one can find in the case
law a spectrum of approaches. At one extreme is what is sometimes
called the totality approach. As that label suggests, it
urges the trier of fact, whether a judge or a jury, to compare
the two works in their totality and decide if they are, viewed in
this way, substantially similar. At the opposite extreme is the
so-called filtration approach. The essence of this strategy is that the
trier of fact is instructed to remove all unprotected material from the
plaintiff’s work before comparing it to the defendant’s. The context in which the filtration
approach is most consistently applied is computer software. I’ll spend a bit of time exploring
how filtration works in that setting. You’ll recall from lecture three
that some, not all, software firms seek to control four sorts
of behavior– reproduction by consumers of the object
code embodying their works, reproduction by commercial enterprises
of the object code of their works, incorporation of parts of their
source code into new programs, and finally, nonliteral copying,
namely the production and distribution of programs that have the
same structure, sequence, or organization, even though they have
none of the original source or object code. The first two of these
activities, I hope you now see, are forms of comprehensive
literal similarity. The third is an example of
fragmented literal similarity. And the fourth is an example of
comprehensive nonliteral similarity. It’s in this fourth and last setting
that the question of filtration arises. When does a program that resembles
another program in structure and function, but contains
none of the same source code, give rise to infringement? The courts that first
addressed this issue analyzed it using essentially
the same tools that they employed when analyzing nonliteral similarity
between two films or photographs. As a result, the plaintiffs,
with some frequency, won. Then in 1992, the influential
Second Circuit Court of Appeals adopted a sharply new approach. In the Altai case, the
Second Circuit adopted what has come to be called the
abstraction filtration comparison test for cases involving
nonliteral similarity of software. As its name suggests,
this test has three parts. Part one, abstraction, is adapted from
the test formulated by Judge Learned Hand long ago for determining
when the plot of one literary work is too close to the plot of another. Here’s how Judge Hand described
that test in the 1930 Nichols case. Quote, “Upon any work, and
especially upon a play, a great number of patterns
of increasing generality will fit equally well as more and
more of the incident is left out. The last may perhaps be no more than
the most general statement of what the play’s about, and at times
might consist only of its title. But there’s a point in
this series of abstractions where they are no longer protected since
otherwise the playwright could prevent the use of his ideas, to which,
apart from their expression, his property is never extended. Nobody has been able
to fix that boundary. And nobody ever can. In some cases, the
question has been treated as though it were analogous to lifting
a portion out of the copyrighted work. But the analogy is not a good one. Because though the skeleton
is a part of the body, it pervades and supports the whole. In such cases, we are rather concerned
with the line between expression and what is expressed.” Graphically, this approach
might be represented as follows. At the lowest level of
abstraction, in other words the level with the most detail, the plot
of a play might be depicted like this. Long lines represent major events,
shorter lines minor events. Abstracted one level, in other words
removing some of the minor incidents, the plot would look like this. Abstracted another level, it would
look like this, and so forth. At the highest level of
abstraction, the plot is extremely general, something like boy
meets girl, they quarrel and separate, they make up, and live
happily ever after. Somewhere in this sequence
of nested patterns lies a line, hard to discern
but nevertheless present. Formulations of the plot sufficiently
abstract to fall above the line constitute, within the language
of copyright law, mere ideas. Formulation sufficiently
detailed to fall below the line consist of protected expression. Only if the defendant’s plot parallels
the plaintiff’s at a level of detail below the line has the defendant
infringed the plaintiff’s work. In the Altai case, the Second Circuit
adapted the so-called pattern test, originally develop to deal
with plots, to software. A software program,
the court held, can be arranged into levels of
abstraction just like a plot. The highest level consists
of a general description of the function of the program. At the next level down are
major modules or subroutines. At the next level are finer
divisions among parts of modules, until one reaches at the
lowest level the source code. Once the various levels of the program
have been separated in this fashion, the Altai test requires the trier
of fact to remove, in other words to filter out, features that do
not enjoy copyright protection. With respect to software,
the court ruled, there are many reasons for
disqualifying features. First, the court should
identify and then filter out elements of the plaintiff’s program
that are necessary for the program to operate efficiently. For example, anything necessary to
enable the program to sort and search efficiently should be removed. Next to go are features that are
dictated by external factors. These include features necessary
to meet mechanical specifications of the computer, the compatibility
requirements of other programs, the design standards of
the computer manufacturers, demands of the industry being
served– in other words, the demands of customers– and widely
accepted programming practices. Finally, and least surprisingly, it
should identify and eliminate features that the original programmer had
taken from the public domain. The net result is an
abridged pattern of features, like a comb missing many teeth. The third and last step in
the Altai test is comparison. The features of the
defendant’s program are laid alongside the now filtered
version of the plaintiff’s program. And the two are compared. If and only if they appear substantially
similar is the defendant liable. Since 1992, most courts confronted
with cases of this general sort have employed the Altai test. It’s not quite universal. And the Supreme Court has never
lent Altai its imprimatur. But it is surely dominant. As you might surmise, the Altai
approach favors defendants. Its adoption made it significantly
more difficult for software developers to recover against competitors who
deployed structurally similar programs. The Altai approach has many critics. Executives in major
software firms sometimes point to this decision
as one of the reasons why they’ve turned
increasingly to patent law to protect their innovations. And some scholars, like
Dennis Karjala, point out that the relationship between the
idea-expression distinction that underlies the abstraction
portion of the test and the filtration portion of
the test is far from clear. But for better or worse,
the test seems here to stay. Now, let’s return to the main road. The fundamental problem
I’ve noted is how to separate protected
from unprotected material when applying the
substantial similarity test. The approach most generous to
copyright owners is totality analysis. The least generous approach is the
abstraction filtration comparison test now applied by most US courts
in the context of software. In between these two is the, quote,
“more discerning observer test.” The way in which that
approach works is best explained after we’ve explored the
meaning of substantial similarity. So to that troublesome
concept we now turn. The courts have had great difficulty
defining exactly how much similarity between a defendant’s work
and a plaintiff’s work is necessary to trigger liability. They’re agreed that it’s
not a mathematical question. The percentage of
overlap is not decisive. The standard is much more
impressionistic than that. But the courts have trouble capturing
in words the level required. Various formulations can
be found in the case law. Listed on a map in front of
you are the most important. You should not think
of these formulations as distinct tests analogous to
the avowedly distinct tests that are used to determine conceptual
separability with respect to useful articles. Rather, they at least
purport to be different ways of describing the same standard. Often, courts say that two works are
substantially similar if they have, quote, “the same aesthetic
appeal,” close quote. For example, in the 2001
Boisson case, the Second Circuit said, quote, “Generally, an
allegedly infringing work is consider substantially
similar to a copyrighted work if the ordinary observer, unless he
set out to detect the disparities, would be disposed to overlook them
and regard their aesthetic appeal as the same.” You may recall that in
the 2005 Mannion case, the district court relied
on this test to rule that a jury could find substantial
similarity between this magazine photo of Kevin Garnett and this photo
prepared for a billboard advertising Coors beer. Here they are side by side. Another slightly different
formulation– in the Ideal Toy case, the same court defined
the relevant test as, quote, “whether an
average lay observer would recognize the alleged copy as having
been appropriated from the copyrighted work,” close quote. Applying this language, a lower
court in the 1987 Steinberg case concluded that this famous
magazine cover, suggesting the myopia of residents
of New York City, was infringed by this poster publicizing
the movie Moscow on the Hudson. Again, here they are side by side. Yet another variation–
sometimes courts contend that attention should
be focused on, quote, “the overall concept and
feel of the two works.” For example, in the Kroft
case, the Ninth Circuit relied on that phrase in ruling
that the characters, flora, fauna, and layout of an imaginary land depicted
in an advertisement for McDonald’s restaurants resembled sufficiently
the corresponding features of the imaginary land depicted
in the Fun Stuff children’s show, sufficiently closely to
give rise to liability. Individual features, the court
noted, were very similar. For example, quote,
“both lands are governed by mayors who have disproportionately
large round heads dominated by long, wide mouths,” close quote. But the real basis of liability
was the overall judgment that McDonaldland, quote,
“captured the total concept and feel of the Fun
Stuff show,” close quote. In a similar vein, a district
court in the Kisch case concluded that a rational jury
might find substantial similarity in the, quote, “underlying tone
or mood,” close quote, of the two photos depicted on your screen. From what perspective should
these judgments be made? In other words, through whose
eyes should the trier of fact view the two works when determining
whether they’re substantially similar? The dominant answer to that question
is the average lay observer– in other words, not an expert in the
field of art or literature at issue, but an ordinary lay person. That answer is subject to
two qualifications, however. First, on occasion, courts
will adopt the perspective of the members of the intended
audience for the two works. For example, in the Kroft
case, which I just mentioned, the Ninth Circuit at one
point sought to assess the degree to which the Fun
Stuff show and McDonaldland would have looked similar to the children at
which both works were primarily aimed. For those of you familiar
with trademark law, this maneuver should remind you of
the ways in which courts sometimes assess the likelihood
of consumer confusion that arises when two
trademarks are similar. The second qualification is
that courts will occasionally adjust their glasses when
the plaintiff’s work contains some unprotected material, as
well as some protected material. As you’ll recall, I described
the two polar positions taken by courts when dealing with such
cases– the so-called totality analysis and the filtration approach
exemplified by the Altai case. In between those two positions is the
so-called more discerning observer test. The Second Circuit in the Boisson case
explained this approach as follows. “In the Folio Impressions case,
part of the plaintiff’s fabric was not original, and
therefore not protectable. We articulated the need for an
ordinary observer to be, quote, ‘more discerning in such circumstances.’
The ordinary observer would compare the finished product that the fabric
designs were intended to grace, women’s dresses, and would be
inclined to view the entire dress, consisting of protectable and
unpredictable elements, as one whole. Here, since only some of the
design enjoys copyright protection, the observer’s inspection
must be more discerning. Shortly after Folio Impressions was
decided, we reiterated that a, quote, ‘more refined analysis,’ close quote,
is required where a plaintiff’s work is not wholly original, but rather
incorporates elements from the public domain. In these instances, quote, ‘What must be
shown is substantial similarity between those elements and only those
elements that provide copyrightability to the allegedly infringed compilation.’ In contrast, where the plaintiff’s
work contains no material imported from the public domain, the more
discerning test is unnecessary. In applying this test, a court
is not to dissect the works at issue, and to separate
components and compare only the copyrightable elements. To do so would be to take the more
discerning test to an extreme, which would result in almost
nothing being copyrightable. Because original works broken
down to their composite parts would usually be little more than
basic unprotectable elements, like letters, colors, and symbols. This outcome, affording
no copyright protection to an original compilation
of unpredictable elements, would be contrary to the Supreme
Court’s holding in Feist Publications.” OK, that’s a lot of language. And after all that, it’s
still not entirely clear what the court has in mind. The bottom line seems to be
when comparing the two works, don’t filter out the unprotected
material as the court did with software in Altai,
but instead adopt a more skeptical stance than the
hypothetical ordinary observer. As we’ve seen, the emphasis
in all of these cases is on some variant of an
ordinary lay observer. Does that mean that expert witnesses
have no role in substantial similarity determinations? Not quite. Although the ultimate
judgment must always be made from the standpoint
of an ordinary observer, experts can help in framing
the ultimate judgment. The Court of Appeals
for the Ninth Circuit has developed the most
elaborate– some scholars say, convoluted– system for combining
expert and lay analysis. In the Ninth Circuit,
there are now two steps to a determination of
substantial similarity– an extrinsic test and an intrinsic test. With respect to the
first, expert opinion is relevant, but not with
respect to the second. To win, the plaintiff
has to satisfy both. So what do these two terms,
extrinsic and intrinsic, mean? It’s not entirely clear, in part
because the Ninth Circuit’s usage has changed over time. In the Kroft case, where this
approach was first deployed, the extrinsic test was defined
as, quote, “similarity in ideas.” Intrinsic was defined as, quote,
“similarity in expression.” This formulation, you
probably noticed, is hard to reconcile with
the fundamental principle that copyright law doesn’t
protect ideas at all. Perhaps sensing that
problem, in subsequent cases the Ninth Circuit has formulated
the approach differently. For example, in the
Cavalier case, extrinsic is treated as, quote, “an objective
comparison of specific expressive elements,” close quote,
while intrinsic is, quote, “a subjective comparison of
the total concept and feel,” close quote, of the two works. In the Swirsky case, the
court backed up a bit, defining the issue addressed
by the extrinsic test as, quote, “whether the two works share
a similarity of ideas and expression as measured by external
objective criteria,” while the intrinsic test again
focused on total concept and feel. Even the Ninth Circuit acknowledges
the clumsiness of these maneuvers. In Swirsky, for example,
the judges admitted, quote, “The extrinsic test provides
an awkward framework to apply to copyrighted works
like music or art objects, which lack distinct elements
of idea and expression. Nevertheless, the test is our law,
and we must apply it,” close quote. So too must litigants when they appear
in the courts of the Ninth Circuit. This concludes our review of the
doctrine of substantial similarity. In closing, I would urge you
not to put too much stock in the language the courts
employ when setting forth these various formulations. At least as good a guide
to the law in this area is the pattern of results
reached in the cases. That’s the main reason, aside
from simple entertainment, that during our tour, I’ve been telling
you the central facts of several of these cases and how
they were resolved. This is not to say, of course,
that the results in these cases are entirely consistent. They surely are not. But from them, you can
distill an impression of the degree or kind of similarity
that will likely get you in trouble, and the degree or kind that will not. More guidance than
that may be impossible.

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