I thought I’d post some excerpts from a paper that I co-wrote for a presentation I gave with a friend of mine, Buck McKinney, at the State Bar of Texas’ 16th Annual Entertainment Law Institute entitled “Legal & Business Aspects of Music, Film and Digital Entertainment” in October 2006. The first excerpt is entitled “Elements of a Copyright Infringement Claim” and is one of my contributions to the paper. It is written in the vernacular of the Fifth Circuit Court of Appeals. Finally, it’s a bit sterile, yes, I know, but it delivers the message.
1.Elements of a Copyright Infringement Claim
A copyright infringement action requires a plaintiff to prove (1) ownership of a valid copyright, and (2) actionable copying by the defendant of constituent elements of the work that are original. Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991); Positive Black Talk Inc. v. Cash Money Records, Inc., 394 F.3d 357, 367 (5th Cir. 2004); R. Ready Productions, Inc. v. Cantrell, 85 F.Supp.2d 672, 682 (S.D. Tex. 2000).
2.Ownership of a Valid Copyright & the “Originality” Requirement
Ownership of a valid copyright is established by proving (i) the originality and copyrightability of the material, and (ii) compliance with the statutory formalities. Norma Ribbon & Trimming, Inc. v. Little, 51 F.3d 45, 47 (5th Cir. 1995); Cantrell, 85 F.Supp.2d at 682. A timely obtained certificate of registration creates a rebuttable presumption that a copyright is valid and that the registrant owns the copyright. The Copyright Act defines the scope of copyright protection: “Copyright protection subsists…in original works of authorship fixed in any tangible medium of expression.” 17 U.S.C. § 102(a) (emphasis added). Thus a work must be original to the author in order to be protected. See Feist Publications, 499 U.S. at 344 (“Originality is a constitutionally mandated prerequisite for copyright protection.”) . The term “original” as used in copyright law simply means (i) that the work was independently created by the author (as opposed to copied from other works), and (ii) that it possesses at least some minimal degree of creativity. Feist Publications, 499 U.S. at 351.
Courts employ three terms of art in analyzing allegations of unauthorized copying: probative similarity, substantial similarity and striking similarity. It is tempting to view these terms as a sort of sliding scale indicating increasing degrees of similarities between works, but to do so would be a mistake. As explained below, probative similarity and striking similarity are analytical tools to determine whether factual copying has occurred, whereas substantial similarity is the test used to determine whether factual copying, once established, is legally actionable.
3.Proof of Actionable Copying
Not all factual copying is legally actionable as copyright infringement. Feist Publications, 499 U.S. at 364; Cantrell, 85 F.Supp.2d at 682. To establish actionable copying a plaintiff must prove (i) the defendant factually copied the protected material, and (ii) that there is a “substantial similarity” between the two works. Bridgmon v. Array Systems, 325 F.3d at 576 (“The first question is whether the alleged infringer…actually used the copyrighted material in his own work.) (internal citation omitted). Factual copying can be proven by direct or circumstantial evidence. Positive Black Talk, 394 F.3d at 367-368. Direct evidence of copying is rare. Because there is typically no direct evidence of factual copying, copyright plaintiffs usually must rely upon circumstantial evidence to show factual copying. Circumstantial evidence may include either: (i) proof of access to the allegedly infringed work plus evidence of a “probative similarity” between the works; or (ii) in the absence of proof of access, evidence of a “striking similarity” between the works.
4.Factual Copying
A plaintiff may establish factual copying with evidence that (1) the defendant had access to the copyrighted work prior to creation of the allegedly infringing work, and (2) the two works are probatively similar to one another. Positive Black Talk, 394 F.3d at 368. “Access” means that the creator of the allegedly infringing work had a “reasonable opportunity to view” (or hear) the allegedly infringed work. Ferguson v. National Broadcasting Co., 584 F.2d 111, 113 (5th Cir. 1978). Importantly, because a finding of access cannot be based on speculation and conjecture, a bare possibility of access will not suffice. Id. In addition to demonstrating access, a plaintiff must prove the two works are probatively similar. General Universal Systems v. Lee, 379 F.3d at 141-142. Probative similarity “requires a showing that the works, when compared as a whole, are adequately similar to establish appropriation.” Id. at 142. Thus, an inference of copying arises only after a plaintiff submits competent proof of (i) access to the allegedly infringed work, and (ii) probative similarity between the works. Id.; Positive Black Talk, 394 F.3d at 368. A court may consider expert testimony to determine whether two works are probatively similar. See Ferguson, 584 F.2d at 113.
Like probative similarity, “striking similarity” is simply an analytical tool for determining whether factual copying may be inferred from circumstantial evidence. The concept is that if the two works “are so strikingly similar as to preclude the possibility of independent creation, copying may be proved without a showing of access.” Ferguson, 584 F.2d at 113. Thus, whereas the probative similarity inquiry requires proof of access before an inference of factual copying may arise, the striking similarity inquiry does not.
Only after factual copying is established does the analysis proceed to the second prong of the infringement inquiry, e.g., whether the copying is legally actionable
5.Legally Actionable Copying
Many courts have improperly used the phrase “substantial similarity” to describe both “the similarity needed to prove factual copying [i.e., what the Fifth Circuit terms ‘probative similarity’] and the similarity needed to prove that the copying is legally actionable [i.e., what the Fifth Circuit terms ‘substantial similarity’].” Positive Black Talk, 394 at 368 n. 7. But as the Fifth Circuit explained in Bridgmon, “‘[p]robative similarity’ and ‘substantial similarity’ are analytically distinct inquiries.” Bridgmon, 325 F.3d at 576. The “probative similarity inquiry…is not the same as the question of substantial similarity, which dictates whether the factual copying, once established, is legally actionable.” Positive Black Talk, 394 F.3d at 370; Bridgmon, 325 F.3d at 577 n. 7. In other words, probative similarity exists if there are “any similarities between the two works (whether substantial or not) that, in the normal course of events, would not be expected to arise independently in the two works and that therefore might suggest that the defendant copied part of the plaintiff’s work.” Positive Black Talk, 394 F.3d at 370 (parenthetical in original).
Whether two works are substantially similar, and, thus, legally actionable, is an entirely different question that entails a separate analysis. See id. The question of substantial similarity arises only after proof of factual copying has been adduced by either (1) direct evidence of copying, or (2) circumstantial evidence demonstrated by (i) proof of access and probative similarity, or (ii) striking similarity. See General Universal Systems, 379 F.3d at 142; Bridgmon, 325 F.3d at 577 n. 7. To “determine whether an instance of copying is legally actionable, a side-by-side comparison must be made between the original and the copy to determine whether a layman would view the two works as ‘substantially similar.’” Creations Unlimited. v. McCain, 112 F.3d at 816. This comparison “is an issue to be determined by comparison of works, not credibility,” and may be decided as a matter of law on summary judgment. See General Universal Systems, 379 F.3d at 142; Peel & Co., Inc. v. The Rug Market, 238 F.3d 391, 395 (5th Cir. 2001); Warner Bros. Inc. v. American Broadcasting Companies, Inc., 720 F.2d 231, 240 (2d Cir. 1983) (“…we have recognized that a court may determine non-infringement as a matter of law on a motion for summary judgment, either because the similarity between two works concerns only noncopyrightable elements of the plaintiff’s work, or because no reasonable jury, properly instructed, could find that the two works are substantially similar.”).
In the Fifth Circuit, the question of whether two works are substantially similar is answered by applying the “ordinary observer” test. Cantrell, 85 F.Supp.2d at 683. Under the ordinary observer test, there is substantial similarity only if the plaintiff can show that “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.” Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960) (J., Hand). In order to “determine substantiality of any portion found arguably to have been copied, a court must determine the copied portion’s relative importance with respect to the [copyrighted] over-all work.” Cantrell, 85 F.Supp.2d at 683. Consequently, “if the similar material in [the alleged infringer’s] work is not a substantial part of [the copyrighted] work, there is no substantial similarity and hence no infringement.” Id.
Where there are both protectable and unprotectable elements of a copyrighted work, courts in the Fifth Circuit apply the “more discerning ordinary observer test,” requiring the court to separate the protectable and unprotectable elements of the plaintiff’s work and apply the ordinary observer test only to the protectable elements. See Cantrell, 85 F.Supp.2d at 683. A trial court should not consider expert witness testimony or evidence in applying the ordinary observer test to determine whether two works are substantially similar. See Peel, 238 F.3d at 398. To the contrary, the Fifth Circuit has made it clear that the hypothetical ordinary observer must be able to detect the alleged infringement “without any aid or suggestion or critical analysis by others,” and noted that “the reaction of the public to the [allegedly infringed] matter should be spontaneous and immediate.” Id. This is particularly so in cases where the works in dispute involve popular musical works intended for the general public, as opposed to highly technical or complex computer programs or mechanical devices.
That’s it for the first section. The next section is entitled “Theories of Liability,” which provides an overview of the theories of direct infringement, contributory infringement and vicarious liability.