Below is the third excerpt from a presentation I gave at the State Bar of Texas’ 16th Annual Entertainment Law Institute entitled “Legal & Business Aspects of Music, Film and Digital Entertainment” in October 2006. Again, this was written for a court in the Fifth Circuit Court of Appeals, and other circuits treat some of these defenses differently. As always, this is not intended to be, and should not be construed as, legal advice.
Defenses to Allegations of Copyright Infringement
There are numerous defenses available to a copyright infringement defendant. Some of these include: independent creation, lack of originality, invalid copyright, fraud on the Copyright Office, fair use, abandonment, innocent infringement, common source, public domain, misuse of copyright, unclean hands, license, limitations, laches, scènes à faire and de minimis use. A detailed discussion of each of these defenses in detail is beyond the scope of this article, but a few of them are touched on below.
Independent Creation
An inference of copying may arise when there is “significant probative evidence” of proof of access and probative similarities between two works. But, even a plaintiff who establishes an inference of copying cannot prevail when the defendant submits evidence that the work was independently created. Positive Black Talk, Inc. v. Cash Money Records, Inc., 394 F.3d 354, 367 and 373 (5th Cir. 2004) (“…a defendant need only prove independent creation if the plaintiff successfully establishes factual copying.”). Rather, if a plaintiff can establish a prima facie case of copying, then after the defendant introduces evidence of independent creation, the burden of proof shifts back to the plaintiff to prove actual copying with “significant probative evidence”; that is, significant probative evidence of actual copying of the protected elements of the plaintiff’s work. Calhoun v. Lillenas Publishing, 298 F.3d 1228, 1233 (11th Cir. 2002). Evidence of independent creation typically requires testimony from the authors of the allegedly infringing work that track the creative process and demonstrate that the work was created without reference to the plaintiff’s work. Documentary evidence, such as drafts of a manuscript, preliminary sketches of a visual work, or session files tracking the development of a song, may also be critical in demonstrating the independent creation of a work.
Lack of Originality
The threshold case in any copyright infringement case is whether the plaintiff’s work is “original.” In the context of copyright law, “original” means (i) that the work was independently created by the author, and (ii) that it possesses at least some minimal degree of creativity. Feist Publications, 499 U.S. at 351. Examples of circumstances that undermine a claim of originality are the use of common musical elements or devices, see Johnson v. Gordon, 409 F.3d 12 (1st Cir. 2005); common phrases, see Emanation Inc. v. Zomba Recording, Inc., 72 Fed. Appx. 187, 190 (5th Cir. 2003); alphabetical listings, factual recitations, and ideas; and works consisting solely of standard calendars, height and weight charts, tape measures and rulers, schedules of sporting events, and lists or tables taken from public documents or other common sources.
Invalid Copyright
Failure to comply with the statutory formalities for obtaining a copyright registration may be a defense to a claim for infringement under certain circumstances, such as when the plaintiff fails to obtain a registration, which–at the time or writing this article–was considered by most courts to be a subject matter jurisdictional prerequisite. As discussed in a prior post on this blog, the Supreme Court recently decided that § 411(a) is not jurisdictional in nature but is more akin to a claims processing rule. The courts had been split on the question of whether a pending application for registration satisfies the requirements of § 411(a). The Fifth Circuit holds that a pending application satisfies § 411(a), see Apple Barrel Productions, Inc. v. Beard, 730 F.2d 384, 386-87 (5th Cir.1984), but the courts in the Ninth and Second Circuits follow the rule that the § 411(a) requirement is not met until the moment a certificate of registration has been issued by the Copyright Office, see Wings Digital Corp. v. Capitol Records, Inc., 218 F. Supp. 2d 280 (E.D.N.Y. 2002); Corbis Corp. v. Amazon.com, Inc., 351 F.Supp.2d 1090, 1111-1112 (W.D. Wash. 2004). The failure to comply with the deposit requirements of the statute will also invalidate a copyright registration. See Corbis Corp., 351 F.Supp.2d at 1114-1115 (a comparison of the works on deposit is required to resolve the infringement question).
Common Source
When the similarities between two works are traceable to a common source, such as a pre-existing musical work or screenplay, there is no infringement. Walker v. Time Life Films, Inc., 615 F.Supp. 430, 435 (S.D.N.Y. 1985).
Fair Use
Fair use is a statutory defense which allows the use of a copyrighted work “for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research.” 17 U.S.C. § 107. The fact finder must consider the following factors in assessing whether any given use of copyrighted material qualifies as a fair use under the act: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.
Scènes à Faire
The scènes à faire defense overlaps with the lack of originality defense. It provides a defense to an infringement claim when the alleged similarities are merely the use of (i) common scenes or themes, see Reed-Union Corp. v. Turtle Wax, Inc., 77 F.3d 909, 914 (7th Cir. 1996); (ii) “[c]liched language, metaphors and the very words of which the language is constructed,” see Alexander v. Haley, 460 F.Supp. 40, 46 (S.D.N.Y. 1978); or (iii) “expressions that are standard, stock or common to a particular subject matter or are dictated by external factors,” see Engineering Dynamics, 26 F.3d at 1344.