Tuesday, April 1, 2014

Class 24: Infringement


So far, we have studied both Congress's constitutional authority to grant copyright protection and the scope of copyright protection granted by the Copyright Act. In other words, we have learned about the kinds of works Congress can protect, the kinds of works it has chosen to protect, and the scope of protection it has granted those works.

For the last several weeks, we have been learning about the scope of the exclusive rights granted to copyright owners by the Copyright Act: reproduction, adaptation, distribution, performance, and display. In the next several classes, we will learn about how copyright owners can enforce those rights when they are infringed.


In order to make out a prima facie infringement claim, plaintiffs must prove three elements:
  1. Ownership of a valid copyright in the work
  2. Copying of the work by the defendant
  3. Improper appropriation of the work by the defendant.

First, plaintiffs must show that they own a valid copyright in the allegedly infringed work. Plaintiffs can bring an infringement action only if the allegedly infringed work is protected by copyright, and the plaintiff owns the copyright.

Plaintiffs can show that a valid copyright exists by proving originality, copyrightable subject matter, and compliance with any required statutory formalities. In other words, a plaintiff must prove that the allegedly infringed work has an original element that can be protected by copyright, that it falls into a category of works protected by copyright, and that any statutory requirements for copyright protection were observed.

In addition, plaintiffs must prove that they own the copyright in a work. Authors generally own the copyright in their works, but may transfer their copyright to another. Plaintiffs who are not authors must show a transfer of copyright, or some other authority to pursue an infringement claim. While copyright registration generally provides prima facie evidence of copyright ownership, it can be rebutted. 17 U.S.C. § 401(d).


Second, plaintiffs must show that the defendant actually copied an original element of their copyrighted work. Actual copying is an essential element of an infringement claim, because originality only requires independent creation, not novelty. As we noted in Class 3, an independently created work is original and protected by copyright, even if it is identical to a prior work. A new work does not infringe a prior work unless the author of the prior work shows that the author of the new work actually copied a protected element of the prior work. While it may seem unlikely that an independently created new work could be identical to a prior work, simple works or works based on elements in the public domain may contain few original elements, and may be susceptible to independent creation.

Proof of Copying

Plaintiffs can show copying by direct or circumstantial evidence. Direct evidence of copying is evidence that the defendant actually copied the work. Indirect evidence is evidence that that the defendant had access to the work, and that the new work is similar to the prior work.

Plaintiffs rarely show copying by direct evidence because it is difficult to prove. Defendants rarely admit that they copied a prior work, and generally copy works in private, from an existing copy or from memory.

As a consequence, plaintiffs generally show copying by circumstantial evidence, which requires them to prove both access and probative similarity.


In order to prove access, plaintiffs must show that the defendant had enough opportunity to view or copy the allegedly infringed work that a fact-finder could reasonably infer access. While plaintiffs need not show actual access, they must show more than the possibility of access. Courts have generally found access when plaintiffs show a nexus between the defendant and the allegedly infringed work, but have not found access when the relationship is tenuous or speculative. Compare Taylor Corp. v. Four Seasons Greetings, LLC, 315 F.3d 1039 (8th Cir. 2003) with Jones v. Blige, 558 F.3d 485 (6th Cir. 2009).

Probative Similarity

In order to prove probative similarity, plaintiffs must show that the prior work and the allegedly infringing work are sufficiently similar to suggest actual copying. In other words, plaintiffs must show not only that defendant had access to plaintiff's work, but also that defendant actually copied plaintiff's work.

Notably, probative similarity can be proven by any similarities between the two works, even if the similar elements are not or cannot be protected by copyright. For example, if the prior work includes facts or public domain elements that cannot be protected by copyright, the presence of those elements in the allegedly infringing work can support probative similarity, even if they are not an infringing use.

In some cases, courts have inferred copying on the basis of probative similarity alone, because the similarities between the works could not be explained by coincidence, independent creation, or a common source. For example, courts have inferred copying when complex works were extremely similar. And some courts have inferred copying when simpler works were extremely similar.

However, access and similarity cannot support an inference of copying when the prior work is extremely simple or derivative.

  1. Why do courts allow plaintiffs to prove copying by circumstantial evidence? Is it fair to defendants?
  2. How much evidence of access and probative similarity should courts require to prove copying? Ty, Inc. manufactures the "Beanie Babies" brand of stuffed animals. In 1993, Ty created a Beanie Baby called "Squealer the Pig." In 1996, GMA Accessories, Inc. created a line of stuffed animals, which included "Preston the Pig." Ty filed an infringement action against GMA. In Ty Inc. v GMA Accessories, Inc., 132 F.3d 1167 (7th Cir. 1997), the court held that GMA copied Ty, and inferred copying based on the "striking similarity" of the stuffed animals. Do you agree?

Preston the Pig (1996) (L) and Squealer the Pig (1993) (R)

Bright Tunes Music Corp. v. Harrisongs Music, Ltd., 420 F.Supp. 177 (S.D.N.Y. 1976)
OWEN, District Judge. 
This is an action in which it is claimed that a successful song, My Sweet Lord, listing George Harrison as the composer, is plagiarized from an earlier successful song, He's So Fine, composed by Ronald Mack, recorded by a singing group called the "Chiffons," the copyright of which is owned by plaintiff, Bright Tunes Music Corp. 
He's So Fine, recorded in 1962, is a catchy tune consisting essentially of four repetitions of a very short basic musical phrase, "sol-mi-re," (hereinafter motif A), altered as necessary to fit the words, followed by four repetitions of another short basic musical phrase, "sol-la-do-la-do," (hereinafter motif B). While neither motif is novel, the four repetitions of A, followed by four repetitions of B, is a highly unique pattern. In addition, in the second use of the motif B series, there is a grace note inserted making the phrase go "sol-la-do-la-re-do." 
My Sweet Lord, recorded first in 1970, also uses the same motif A (modified to suit the words) four times, followed by motif B, repeated three times, not four. In place of He's So Fine's fourth repetition of motif B, My Sweet Lord has a transitional passage of musical attractiveness of the same approximate length, with the identical grace note in the identical second repetition. The harmonies of both songs are identical. 
George Harrison, a former member of The Beatles, was aware of He's So Fine. In the United States, it was No. 1 on the billboard charts for five weeks; in England, Harrison's home country, it was No. 12 on the charts on June 1, 1963, a date upon which one of the Beatle songs was, in fact, in first position. For seven weeks in 1963, He's So Fine was one of the top hits in England. 
According to Harrison, the circumstances of the composition of My Sweet Lord were as follows. Harrison and his group, which include an American black gospel singer named Billy Preston, were in Copenhagen, Denmark, on a singing engagement. There was a press conference involving the group going on backstage. Harrison slipped away from the press conference and went to a room upstairs and began "vamping" some guitar chords, fitting on to the chords he was playing the words, "Hallelujah" and "Hare Krishna" in various ways. During the course of this vamping, he was alternating between what musicians call a Minor II chord and a Major V chord. 
At some point, germinating started and he went down to meet with others of the group, asking them to listen, which they did, and everyone began to join in, taking first "Hallelujah" and then "Hare Krishna" and putting them into four part harmony. Harrison obviously started using the "Hallelujah," etc., as repeated sounds, and from there developed the lyrics, to wit, "My Sweet Lord," "Dear, Dear Lord," etc. In any event, from this very free-flowing exchange of ideas, with Harrison playing his two chords and everybody singing "Hallelujah" and "Hare Krishna," there began to emerge the My Sweet Lord text idea, which Harrison sought to develop a little bit further during the following week as he was playing it on his guitar. Thus developed motif A and its words interspersed with "Hallelujah" and "Hare Krishna." 
Approximately one week after the idea first began to germinate, the entire group flew back to London because they had earlier booked time to go to a recording studio with Billy Preston to make an album. In the studio, Preston was the principal musician. Harrison did not play in the session. He had given Preston his basic motif A with the idea that it be turned into a song, and was back and forth from the studio to the engineer's recording booth, supervising the recording "takes." Under circumstances that Harrison was utterly unable to recall, while everybody was working toward a finished song, in the recording studio, somehow or other the essential three notes of motif A reached polished form. 
"Q. [By the Court]: . . . you feel that those three notes . . . the motif A in the record, those three notes developed somewhere in that recording session? 
"Mr. Harrison: I'd say those three there were finalized as beginning there." 
* * * * * * 
"Q. [By the Court]: Is it possible that Billy Preston hit on those [notes comprising motif A]? 
"Mr. Harrison: Yes, but it's possible also that I hit on that, too, as far back as the dressing room, just scat singing." 
Similarly, it appears that motif B emerged in some fashion at the recording session as did motif A. This is also true of the unique grace note in the second repetition of motif B. 
"Q. [By the Court]: All I am trying to get at, Mr. Harrison, is if you have a recollection when that [grace] note popped into existence as it ends up in the Billy Preston recording. 
* * * * * * 
"Mr. Harrison: . . . [Billy Preston] might have put that there on every take, but it just might have been on one take, or he might have varied it on different takes at different places." 
The Billy Preston recording, listing George Harrison as the composer, was thereafter issued by Apple Records. The music was then reduced to paper by someone who prepared a "lead sheet" containing the melody, the words and the harmony for the United States copyright application. 
Seeking the wellsprings of musical composition —why a composer chooses the succession of notes and the harmonies he does—whether it be George Harrison or Richard Wagner—is a fascinating inquiry. It is apparent from the extensive colloquy between the Court and Harrison covering forty pages in the transcript that neither Harrison nor Preston were conscious of the fact that they were utilizing the He's So Fine theme. However, they in fact were, for it is perfectly obvious to the listener that in musical terms, the two songs are virtually identical except for one phrase. There is motif A used four times, followed by motif B, four times in one case, and three times in the other, with the same grace note in the second repetition of motif B. 
What happened? I conclude that the composer, in seeking musical materials to clothe his thoughts, was working with various possibilities. As he tried this possibility and that, there came to the surface of his mind a particular combination that pleased him as being one he felt would be appealing to a prospective listener; in other words, that this combination of sounds would work. Why? Because his subconscious knew it already had worked in a song his conscious mind did not remember. Having arrived at this pleasing combination of sounds, the recording was made, the lead sheet prepared for copyright and the song became an enormous success. Did Harrison deliberately use the music of He's So Fine? I do not believe he did so deliberately. Nevertheless, it is clear that My Sweet Lord is the very same song as He's So Fine with different words, and Harrison had access to He's So Fine. This is, under the law, infringement of copyright, and is no less so even though subconsciously accomplished. Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 54 (2d Cir. 1936); Northern Music Corp. v. Pacemaker Music Co., Inc., 147 U.S.P.Q. 358, 359 (S.D.N.Y. 1965). 
Given the foregoing, I find for the plaintiff on the issue of plagiarism, and set the action down for trial on November 8, 1976 on the issue of damages and other relief as to which the plaintiff may be entitled. The foregoing constitutes the Court's findings of fact and conclusions of law. 
So Ordered.

The Chiffons, He's So Fine (1963)

George Harrison, My Sweet Lord (1970)

Comparison of He's So Fine and My Sweet Lord

The Chiffons, My Sweet Lord (1975)

  1. What was the basis for the court's conclusion that Harrison had access to He's So Fine? Could Harrison have rebutted that conclusion?
  2. What was the basis for the court's conclusion that He's So Fine and My Sweet Lord are similar? Do you find it convincing?
Improper Appropriation

Third, plaintiffs must show improper appropriation of their copyrighted work. In other words, plaintiffs must show that the defendant copied enough protected elements of their work to make the prior work and the allegedly infringing work substantially similar.

The improper appropriation requirement imposes two limitations on infringement claims. First, improper appropriation exists only if the defendant copies protected elements of the prior work. Accordingly, copying facts or public domain elements is not an improper appropriation. Second, improper appropriation exists only if the the prior work and the allegedly infringing work are substantially similar in some respect. In other words, immaterial copying is not infringement.

As a result, plaintiffs can show actual copying by direct or circumstantial evidence, but fail to show improper appropriation. At least in theory, some copying is permitted.

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Copyright Law Casebook by Brian L. Frye is licensed under a Creative Commons Attribution 4.0 International License.
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