Sunday, April 6, 2014

Class 26: Substantial Similarity


In Class 24, we began our discussion of infringement. We learned that the elements of an infringement claim are:
  1. Ownership
  2. Copying
  3. Improper Appropriation
We learned that ownership is an essential element of an infringement claim, because plaintiffs cannot bring an action for copyright infringement unless the allegedly infringed work has an original element that is protected by copyright and they own the copyright in that element.

We also learned that copying is an essential element of an infringement claim, because independently created works do not infringe. Plaintiffs can provide direct or circumstantial evidence of copying. In order to provide circumstantial evidence of copying, plaintiffs must show reasonable access and probative similarity.

In Class 25, we continued our discussion of infringement. We learned that improper appropriation is an essential element of an infringement claim, because a plaintiff's copyright is infringed only if the defendant's work is substantially similar. A new work is substantially similar to a prior work only if it is similar to one or more of the original elements of the prior work. A new work may be literally or abstractly similar to a prior work.

In this class, we will further continue our discussion of infringement. We will learn about improper appropriation and how courts apply the substantial similarity requirement.

Substantial Similarity

As we learned in Class 25, plaintiff's copyright in a work is infringed only if defendant copied enough original elements of plaintiff's work to make defendant's work substantially similar to plaintiff's work. Defendant's work may be literally similar to plaintiff's work if defendant exactly copied one or more original elements of plaintiff's work. Defendant's work may be abstractly similar to plaintiff's work if defendant copied the structure or sense of plaintiff's work.

Unfortunately, substantial similarity is hard to explain and difficult to determine. Most courts have adopted some version of an "ordinary observer" test, holding that defendant's work is substantially similar to plaintiff's work if an ordinary observer would find that the works are substantially similar:
Whether (if he copied) defendant unlawfully appropriated presents, too, an issue of fact. The proper criterion on that issue is not an analytic or other comparison of the respective musical compositions as they appear on paper or in the judgment of trained musicians. The plaintiff's legally protected interest is not, as such, his reputation as a musician but his interest in the potential financial returns from his compositions which derive from the lay public's approbation of his efforts. The question, therefore, is whether defendant took from plaintiff's works so much of what is pleasing to the ears of lay listeners, who comprise the audience for whom such popular music is composed, that defendant wrongfully appropriated something which belongs to the plaintiff.
Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946).

In other words, the fact-finder should find that plaintiff's and defendant's works are substantially similar if produce a similar experience. For example, some courts have held that works are substantially similar if they have the same "total concept and feel." Roth Greeting Cards v. United Card Co., 429 F.2d 1106, 1110 (9th Cir. 1970).

  1. Substantial similarity is a "mixed question of law and fact." What does that mean? Can you think of any other mixed questions of law and fact?
  2. Which theory of the justification of copyright is most consistent with the "ordinary observer test"?
  3. Who is an ordinary observer? The "reasonable person"? A person likely to purchase the work in question? A person likely to use the work?
Peter Pan Fabrics, Inc. v. Martin Weiner Corp.274 F.2d 487 (2d Cir. 1960)
Hand, Circuit Judge. 
This is an appeal from a preliminary injunction, granted by Judge Herlands, forbidding the defendant to copy an ornamental design, printed upon cloth. The plaintiffs—which for the purposes of this appeal are to be regarded as one—and the defendant are both “converters” of textiles, used in the manufacture of women’s dresses. A “converter” buys uncolored cloth upon which he prints ornamental designs, and which he then sells to dressmakers. The plaintiffs bought from a Parisian designer a design, known as “Byzantium,” which it registered as a “reproduction of a work of art,” (§ 5(h) of Title 17 , U.S. Code) and for which the Copyright Office issued Certificate No. H.7290. This design they print upon uncolored cloth, sold in bolts to dressmakers. The cloth, so “converted,” bears upon its edge at each repetition of the design printed “notices” of copyright which are concededly adequate under the Copyright Law. The buyers of the bolts cut the cloth into suitable lengths and use it to make women’s dresses; but in doing so, they either altogether cut off the selvage which bears the notices, or else they sew the adjacent edges of the cloth together at the seams in such a way that the notices are not visible unless the seams are pried, or cut, apart, or unless the dress is turned inside out. The appeal raises two questions: (1) whether the defendant has in fact copied so much of the registered design as to infringe the copyright; and (2) whether the design was dedicated to the public, because it was sold without adequate notice or copyright as required by § 10 of the statute. 
The test for infringement of a copyright is of necessity vague. In the case of verbal “works” it is well settled that although the “proprietor’s” monopoly extends beyond an exact reproduction of the words, there can be no copyright in the “ideas” disclosed but only in their “expression.” Obviously, no principle can be stated as to when an imitator has gone beyond copying the “idea,” and has borrowed its “expression.” Decisions must therefore inevitably be ad hoc. In the case of designs, which are addressed to the aesthetic sensibilities of an observer, the test is, if possible, even more intangible. No one disputes that the copyright extends beyond a photographic reproduction of the design, but one cannot say how far an imitator must depart from an undeviating reproduction to escape infringement. In deciding that question one should consider the uses for which the design is intended, especially the scrutiny that observers will give to it as used. In the case at bar we must try to estimate how far its overall appearance will determine its aesthetic appeal when the cloth is made into a garment. Both designs have the same general color, and the arches, scrolls, rows of symbols, etc. on one resemble those on the other though they are not identical. Moreover, the patterns in which these figures are distributed to make up the design as a whole are not identical. However, 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. That is enough; and indeed, it is all that can be said, unless protection against infringement is to be denied because of variants irrelevant to the purpose for which design is intended. 
The second question is whether the plaintiffs have forfeited their copyright. As we have said, there is no question that the bolts of cloth were adequately marked to comply with § 10, for a notice was “affixed to each copy * * * offered for sale” ; and, it appeared at intervals along the selvage, so that no one using the cloth could avoid seeing it. However, although the notices served the purpose of advising those who bought, or dealt with, the bolts, they did not give adequate notice to those who bought, or wore, dresses made of the cloth, for, when not altogether cut off, they were so placed as to be most unlikely to be detected. Section 21 of the act provides that the “omission by accident or mistake of the prescribed notice from a particular copy or copies shall not invalidate the copyright” ; but the effective suppression of this mark on dresses is neither accidental nor mistaken; and sales with a deliberate omission of notice will forfeit the copyright (National Comics Publications, Inc. v. Fawcett Publications, Inc.,191 F.2d 594, 90 USPQ 274;198 F.2d 927, 94 USPQ 289 (C.A. 2)). Therefore, if we construe the words of § 10 with relentless literalism, dresses made out of the “converted” cloth may be said to be “offered for sale” without any effective notice. In support of such an interpretation it may be argued that the doctrine, expressio unius, exclusio alterius, would apply: that is to say, since Congress made only “omission by accident or mistake” an excuse we must not enlarge the exemption. 
On the other hand, it is a commonplace that a literal interpretation of the words of a statute is not always a safe guide to its meaning. Indeed, in extreme situations this doctrine has been carried so far that language inescapably covering the occasion has been disregarded when it defeats the manifest purpose of the statute as a whole. Holy Trinity Church v. United States, 143 U.S. 457; Markham v. Cabell, 326 U.S. 404; Cawley v. United States, 2 Cir., November 23, 1959. We need not go so far in the case at bar. In the first place it is hard to see how “notice” can said to be “affixed” to a “design” when it is incorporated into it; the copyrighted “work” will itself be changed, even though the change be so immaterial as not to impair the aesthetic appeal of the “design.” Be that as it may, we do not hold that in no circumstances will it be possible to “affix notice” upon a “design” which will be still visible when the cloth has been made up into a garment. We do hold that at least in the case of a deliberate copyist, as in the case at bar, the absence of “notice” is a defense that the copyist must prove, and that the burden is on him to show that “notice” could have been embodied in the design without impairing its market value. The defendant asserts that this can be done but it has offered no evidence that it can be. Whatever may be shown at the trial, upon this record we hold that the “design” should be protected, pendente lite
Friendly, Circuit Judge (dissenting). 
I regret that I cannot join in the judgment of the Court. I would reverse. 
Section 10 of the Copyright Act, 17 U.S.C. § 10, provides that “Any person entitled thereto by this title may secure copyright for his work by publication thereof with the notice of copyright required by this title; and such notice shall be affixed to each copy thereof published or offered for sale in the United States by authority of the copyright proprietor.” The question is whether plaintiffs met the second requirement. 
Admittedly, the notice of copyright is not “affixed to each copy” of the copyrighted design on the dresses manufactured and sold by the purchasers that bought cloth from plaintiffs. Indeed, whether the notice remains affixed to any copy is fortuitous, since, as was conceded at the bar, plaintiffs cannot practically obtain any commitments from the manufacturers in this regard. I do not read the Court’s opinion as questioning that the manufacturers make and sell the dresses in this manner “by authority of the copyright proprietor.” Such sales were the very purpose of the purchases of the cloth; plaintiffs knew that the notices would generally be cut off; and I read § 10 as using “authority” in the broad sense of permission and not as requiring any technical agency relationship. It is unnecessary to debate whether the conversion of the designs into dresses was a republication; for it was an offer for sale unless we deny those words the sense they have in everyday speech. I take it no one would question that an authorized offer for sale occurred if the purchasers, with plaintiffs’ acquiescence, regularly cut off the selvage bearing the copyright notice and sold the cloth in strips; I think there was no less such an offer when the purchasers cut off the selvage and sold the cloth in dresses. 
I am not altogether clear whether my brothers say that the sale of the dresses was not an offer for sale with the authority of the copyright proprietor or that it was such an offer but that notice need not be affixed if this was not feasible. The latter construction seems borne out by the suggestion that plaintiffs will be denied a final decree if defendant proves that notice could have been affixed to each copy of the design in the dresses without impairing the market value; for, unless the sale of the dresses is within § 10, plaintiffs are under no requirement to have the notice affixed. In any event the result is plain enough. Plaintiffs receive copyright protection for enabling a multitude of ladies to be caparisoned in the purple of “Byzantium” although the copyright notices, instead of being “affixed to each copy” of the design on the dresses, pile up in the cutting rooms. It is of no moment that the Court now grants protection only pendente lite. For the record makes it evident that designs such as plaintiffs’ are anything but Byzantine in longevity—indeed, the moving affidavit gives this one but a few months of life—and in litigation of this sort the preliminary rather than the final injunction is the thing. 
I could reconcile the majority’s result with the language of § 10 if, but only if, there were clear evidence that the dominant intention of Congress was to afford the widest possible copyright protection whereas the notice requirement was deemed formal or at least secondary. I find nothing to support such a stratified reading of § 10. The notice requirement goes back to almost the earliest days of copyright under the constitutional grant, Act of April 29, 1802, ch. 36, 2 Stat. 171; its essentially has been emphasized by the highest authority, Mifflin v. R. H. White & Co.,190 U.S. 260 (1903), Mifflin v. Dutton, 190 U.S. 265 (1903), Dejonge v. Breuker, 235 U.S. 33, 37 (1914); and when Congress has wished to make an exception, it has known how to do so, see 17 U.S.C. § 21. The notice requirement serves an important public purpose; the copyright proprietor is protected so long and only so long as he gives effective warning to trespassers that they are entering on forbidden ground. Mifflin v. R. H. White & Co., supra, at 264 ; Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 161 F.2d 406, 409, 71 USPQ 286, 288 (2d Cir.), cert. denied, 331 U.S. 820, 73 USPQ 550 (1947). And if the statutory requirement of notice has not been met, it is immaterial whether a particular defendant had actual knowledge of a claim of copyright or not. Metro Associated Services v. Webster City Graphic, 117 F.Supp. 224, 234, 100 USPQ 88, 96 (D. Iowa 1953). 
I realize that the view I hold may seriously impair the use of copyright to prevent piracy in an area where this has been recognized to be rampant for thirty years. Cheney Bros. v. Doris Silk Corp.,35 F.2d 279, 3 USPQ 162 (2d Cir. 1929), cert. denied, 281 U.S. 728 (1930), and probably for much longer, since it may not be practicable to affix the notice to an inside seam on every repetition of the design. It can be argued also that this is to insist on a useless formality since, though there is reason for requiring notice on each copy of a book, one notice on a dress is as good as ten. But, as was held by the Supreme Court in Dejonge, it is not for the courts to say that something less than the statutory requirement will serve. Congress has not accompanied the broadening of the subjects of copyright in § 5 17 U.S.C. § 5 with a relaxation of the notice requirement of § 10 17 U.S.C. § 10, except as it has simplified the form of notice for certain subjects in § 19 17 U.S.C. § 19and has saved against accidental omission in § 21 17 U.S.C. § 21. Nothing gives me warrant for belief that Congress would be content with the proprietor’s simply affixing the copyright notice to each copy as it leaves him, when, as here, he knows that almost every notice will be removed before the copyrighted reproductions reach their intended market. As said in Dejonge v. Breuker, supra, at 37 , “The appellant is claiming the same rights as if this were one of the masterpieces of the world, and he must take them with the same limitations that would apply to a portrait, a holy family, or a scene of war.” To be sure, the precise defect held fatal in Dejonge is not present here since the notice was on “each copy” as it left plaintiffs, but Mr. Justice Holmes’ admonition remains pertinent. So also, while I do not contend decision to be controlled by National Comics Publications, Inc. v. Fawcett Publications, Inc., 191 F.2d 594, 600, 601, 90 USPQ 274, 278, (2d Cir. 1951), opinion clarified, 198 F.2d 927, 94 USPQ 289 , Deward & Rich, Inc. v. Bristol Savings & Loan Corp., 120 F.2d 537, 50 USPQ 1 (4th Cir. 1941), and Advertisers Exchange, Inc. v. Anderson, 144 F.2d 907, 63 USPQ 39 (8th Cir. 1944), these cases are at least closer than those relied on by the District Court in holding for plaintiffs. Perhaps my brothers are right in thinking that Congress wished literal compliance with § 10 to be excused under such circumstances as here; but the voice so audible to them is silent to me.

Peter Pan Fabrics, Inc. fabric design

Martin Weiner Corp. fabric design

  1. The court held, "Both designs have the same general color, and the arches, scrolls, rows of symbols, etc. on one resemble those on the other though they are not identical. Moreover, the patterns in which these figures are distributed to make up the design as a whole are not identical. However, 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." Do you agree?
  2. What if defendant copied both original and unoriginal elements of plaintiff's work? Would the ordinary observer be able to determine whether the works were substantially similar?
  3. Who is the relevant observer? The reasonable person? A person who buys designer dresses? A clothing designer?
  4. Who is the ordinary observer of a work of contemporary art? Who is the ordinary observer of an antique or collectable? Who is the ordinary observer of a technical work, like a computer program?
  5. Courts have held that expert testimony on substantial similarity is admissible only if the ordinary observer would lack relevant information. Kohus v. Mariol, 328 F.3d 848 (6th Cir. 2003). What kind of relevant information might the ordinary observer lack? Is this the proper test?
Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946)
FRANK, Circuit Judge. 
1. Plaintiff with his complaint filed a jury demand which defendant moved to strike out. Defendant urges that the relief prayed in the complaint renders a jury trial inappropriate. We do not agree. Plaintiff did not ask for an injunction but solely for damages. Such a suit is an action at "law."[1] That it is founded solely on a statute does not deprive either party of a right to a trial by jury;[2] an action for treble damages under the Sherman Act is likewise purely statutory,[3] but it is triable at "law" and by a jury as of right. 
2. The principal question on this appeal is whether the lower court, under Rule 56, properly deprived plaintiff of a trial of his copyright infringment action. The answer depends on whether "there is the slightest doubt as to the facts." Doehler Metal Furniture Co. v. United States, 2 Cir., 149 F.2d 130, 135; Sartor v. Arkansas Natural Gas Corp., 321 U.S. 620, 64 S.Ct. 724, 88 L.Ed. 967; Arenas v. United States, 322 U.S. 419, 434, 64 S.Ct. 1090, 88 L.Ed. 1363; Associated Press v. United States, 326 U.S. 1, 6, 7, 65 S.Ct. 1416; see discussion below, note 16. In applying that standard here, it is important to avoid confusing two separate elements essential to a plaintiff's case in such a suit: (a) that defendant copied from plaintiff's copyrighted work and (b) that the copying (assuming it to be proved) went so far as to constitute improper appropriation. 
As to the first — copying — the evidence may consist (a) of defendant's admission that he copied or (b) of circumstantial evidence — usually evidence of access — from which the trier of the facts may reasonably infer copying. Of course, if there are no similarities, no amount of evidence of access will suffice to prove copying. If there is evidence of access and similarities exist, then the trier of the facts must determine whether the similarities are sufficient to prove copying. On this issue, analysis ("dissection") is relevant, and the testimony of experts may be received to aid the trier of the facts. If evidence of access is absent, the similarities must be so striking as to preclude the possibility that plaintiff and defendant independently arrived at the same result. 
If copying is established, then only does there arise the second issue, that of illicit copying (unlawful appropriation.). On that issue (as noted more in detail below) the test is the response of the ordinary lay hearer; accordingly, on that issue, "dissection" and expert testimony are irrelevant. 
In some cases, the similarities between the plaintiff's and defendant's work are so extensive and striking as, without more, both to justify an inference of copying and to prove improper appropriation. But such double-purpose evidence is not required; that is, if copying is otherwise shown, proof of improper appropriation need not consist of similarities which, standing alone, would support an inference of copying. 
Each of these two issues — copying and improper appropriation — is an issue of fact. If there is a trial, the conclusions on those issues of the trier, of the facts — of the judge if he sat without a jury, or of the jury if there was a jury trial — bind this court on appeal, provided the evidence supports those findings, regardless of whether we would ourselves have reached the same conclusions. But a case could occur in which the similarities were so striking that we would reverse a finding of no access, despite weak evidence of access (or no evidence thereof other than the similarities); and similarly as to a finding of no illicit appropriation. 
3. We turn first to the issue of copying. After listening to the compositions as played in the phonograph recordings submitted by defendant, we find similarities; but we hold that unquestionably, standing alone, they do not compel the conclusion, or permit the inference, that defendant copied. The similarities, however, are sufficient so that, if there is enough evidence of access to permit the case to go to the jury, the jury may properly infer that the similarities did not result from coincidence. 
Summary judgment was, then, proper if indubitably defendant did not have access to plaintiff's compositions. Plainly that presents an issue of fact. On that issue, the district judge, who heard no oral testimony, had before him the depositions of plaintiff and defendant. The judge characterized plaintiff's story as "fantastic"; and, in the light of the references in his opinion to defendant's deposition, the judge obviously accepted defendant's denial of access and copying. Although part of plaintiff's testimony on deposition (as to "stooges" and the like) does seem "fantastic," yet plaintiff's credibility, even as to those improbabilities, should be left to the jury. If evidence is "of a kind that greatly taxes the credulity of the judge, he can say so, or, if he totally disbelieves it, he may announce that fact, leaving the jury free to believe it or not." If, said Winslow, J., "evidence is to be always disbelieved because the story told seems remarkable or impossible, then a party whose rights depend on the proof of some facts out of the usual course of events will always be denied justice simply because his story is improbable." 
We should not overlook the shrewd proverbial admonition that sometimes truth is stranger than fiction. 
But even if we were to disregard the improbable aspects of plaintiff's story, there remain parts by no means "fantastic." On the record now before us, more than a million copies of one of his compositions were sold; copies of others were sold in smaller quantities or distributed to radio stations or band leaders or publishers, or the pieces were publicly performed. If, after hearing both parties testify, the jury disbelieves defendant's denials, it can, from such facts, reasonably infer access. It follows that, as credibility is unavoidably involved, a genuine issue of material fact presents itself. With credibility a vital factor, plaintiff is entitled to a trial where the jury can observe the witnesses while testifying. 
Plaintiff must not be deprived of the invaluable privilege of cross-examining the defendant — the "crucial test of credibility" — in the presence of the jury. Plaintiff, or a lawyer on his behalf, on such examination may elicit damaging admissions from defendant; more important, plaintiff may persuade the jury, observing defendant's manner when testifying, that defendant is unworthy of belief. 
To be sure, plaintiff examined defendant on deposition. But the right to use depositions for discovery, or for limited purposes at a trial, of course does not mean that they are to supplant the right to call and examine the adverse party, if he is available, before the jury. For the demeanor of witnesses is recognized as a highly useful, even if not an infallible, method of ascertaining the truth and accuracy of their narratives. As we have said, "a deposition has always been, and still is, treated as a substitute, a second-best, not to be used when the original is at hand" for it deprives "of the advantage of having the witness before the jury." It has been said that as "the appearance and manner of the witness" is often "a complete antidote" to what he testifies, "we cannot very well overestimate the importance of having the witness examined and cross-examined in presence of the court and jury." Judge Lumpkin remarked that "the oral testimony of the witness, in the presence of the Court and Jury, is much better evidence than his deposition can be * * *" Coxe, J., noted that "a witness may convince all who hear him testify that he is disingenuous and untruthful, and yet his testimony, when read, may convey a most favorable impression." 
As a deposition "cannot give the look or manner of the witness: his hesitation, his doubts, his variations of language, his confidence or precipitancy, his calmness or consideration;" it "is * * * or it may be, the dead body of the evidence, without its spirit * * *" "It is sometimes difficult and impossible to get so full, explicit, and perspicuous a statement of facts from the witness through a deposition as it is by his examination before court and jury." "The right of a party, therefore, to have a witness subjected to the personal view of the jury, is a valuable right, of which he should not be deprived * * * except by necessity. And that necessity ceases whenever the witness is within the power of the court, and may be produced upon the trial." 
With all that in mind, we cannot now say — as we think we must say to sustain a summary judgment — that at the close of a trial the judge could properly direct a verdict. 
We agree that there are cases in which a trial would be farcical. If, in a suit on a promissory note, the defendant, pleading payment, sets forth in an affidavit his cancelled check to the order of the plaintiff for the full amount due on the note and a written receipt in full signed by the plaintiff, while plaintiff in a reply affidavit merely states that he did not receive payment and suggests no other proof, then to require a trial would be absurd; for cross-examination of the defendant in such circumstances clearly would be futile. But where, as here, credibility, including that of the defendant, is crucial, summary judgment becomes improper and a trial indispensable. It will not do, in such a case, to say that, since the plaintiff, in the matter presented by his affidavits, has offered nothing which discredits the honesty of the defendant, the latter's deposition must be accepted as true. We think that Rule 56 was not designed thus to foreclose plaintiff's privilege of examining defendant at a trial, especially as to matters peculiarly within defendant's knowledge. Illustrative of the dangers, in this respect, of summary judgments, if not cautiously employed, is a recent case in the court below. There the judge refused to grant summary judgment for defendants, despite a mass of impressive affidavits, containing copies of corporate records, the accuracy of which plaintiffs did not deny in their affidavits, and which on their face made plaintiffs' case seem nothing but a sham; at the trial, however, cross-examination of the defendants revealed facts, theretofore unknown by plaintiffs, that so riddled the defendants' case as it had previously appeared on the summary judgment motion that the judge entered judgment against them for several million dollars, from which they did not appeal. 
We do not believe that, in a case in which the decision must turn on the reliability of witnesses, the Supreme Court, by authorizing summary judgments, intended to permit a "trial by affidavits," if either party objects. That procedure which, so the historians tell us, began to be outmoded at common law in the 16th century, would, if now revived, often favor unduly the party with the more ingenious and better paid lawyer. Grave injustice might easily result. 
In the equity practice in the federal courts before 1912, extensive use had been made of deposition testimony. But Rules 46 and 47 of the Equity Rules of 1912, 28 U.S.C.A. § 723 Appendix, expressly provided that in "all trials in equity the testimony of witnesses shall be taken orally in open court" unless there was a "good and exceptional cause for departing from the general rule." The purpose was to ensure that the trial judge should have "the opportunity to see, hear and observe the actions of the witnesses." Surely the aim of present Rule 56 was not to restore in equity and introduce at "law" the old practices abolished in equity in 1912. That such was not the purpose appears from Rule 43(a) which provides that "the testimony of witnesses shall be taken orally in open court" except in unusual circumstances. Moore reports that this rule "has the obvious advantage of permitting the judge or jury to observe the appearance and demeanor of witnesses so as to determine more readily their veracity (or lack thereof) and 472*472 the weight to be given their testimony"; and states that "in the interest of oral testimony in open court, the use of depositions has been confined to situations that warrant departure from oral testimony." 
He writes that where it appears that "the moving party [if he be a plaintiff] has exclusive knowledge of the facts" the judge may deny a motion for summary judgment so that "the adverse party may be able to establish a defense if afforded the opportunity to cross-examine the moving party in court." 
Moore discusses in detail the provision of Clause 5 of Rule 26(d) (3), that, where a witness, including a party, is alive, does not reside more than a hundred miles from the place of trial, is not unable to attend the trial — because of age, sickness, infirmity or imprisonment — and there is no inability to subpoena him, then it is only upon a showing "that such exceptional circumstances exist as to make it desirable, in the interest of justice and with due regard to the importance of presenting the testimony of witnesses orally in open court" that his deposition may be used. Moore says that the words we have italicized "are a warning that this provision is not to be used as authority for trying cases generally upon depositions in the manner in which all equity cases were tried prior to the adoption of the Equity Rules of 1912. In the Advisory Committee's Preliminary Draft there was a provision that a deposition could be used for any purpose at the trial 'if the parties affected thereby consent thereto with the approval of the court.' This provision was dropped and the present provision was substituted therefor apparently because it was feared that the court would grant its approval whenever the parties consented to the use of depositions, and thereby to that extent nullify the salutary rule that testimony of witnesses shall be taken orally in open court." 
If defendant, who resides in the district and within a few miles of the place of trial, should seek to substitute his own deposition for his testimony on the stand at the trial, he could not do so under clause 2 of Rule 26(d) (3), but would be obliged to show "exceptional circumstances" under clause 5. Consequently, mere business convenience prompting his absence would be insufficient; the use of his deposition would have to be justified as desirable "with due regard to the importance of presenting the testimony * * * orally in open court." But no such question is now before us. As no one has suggested that defendant is likely to be absent, we cannot, on the record in this appeal, assume that "exceptional circumstances" will exist when this case comes to trial; no facts appeared to the court below which made it proper for it to proceed on that assumption and to shut off the plaintiff from open-court examination of defendant. 
4. Assuming that adequate proof is made of copying, that is not enough; for there can be "permissible copying," copying which is not illicit. Whether (if he copied) defendant unlawfully appropriated presents, too, an issue of fact. The proper criterion on that issue is not an analytic or other comparison of the respective musical compositions as they appear on paper or in the judgment of trained musicians. The plaintiff's legally protected interest is not, as such, his reputation as a musician but his interest in the potential financial returns from his compositions which derive from the lay public's approbation of his efforts. The question, therefore, is whether defendant took from plaintiff's works so much of what is pleasing to the ears of lay listeners, who comprise the audience for whom such popular music is composed, that defendant wrongfully appropriated something which belongs to the plaintiff. 
Surely, then, we have an issue of fact which a jury is peculiarly fitted to determine. Indeed, even if there were to be a trial before a judge, it would be desirable (although not necessary) for him to summon an advisory jury on this question. 
We should not be taken as saying that a plagiarism case can never arise in which absence of similarities is so patent that a summary judgment for defendant would be correct. Thus suppose that Ravel's "Bolero" or Shostakovitch's "Fifth Symphony" were alleged to infringe "When Irish Eyes Are Smiling." But this is not such a case. For, after listening to the playing of the respective compositions, we are, at this time, unable to conclude that the likenesses are so trifling that, on the issue of misappropriation, a trial judge could legitimately direct a verdict for defendant. 
At the trial, plaintiff may play, or cause to be played, the pieces in such manner that they may seem to a jury to be inexcusably alike, in terms of the way in which lay listeners of such music would be likely to react. The plaintiff may call witnesses whose testimony may aid the jury in reaching its conclusion as to the responses of such audiences. Expert testimony of musicians may also be received, but it will in no way be controlling on the issue of illicit copying, and should be utilized only to assist in determining the reactions of lay auditors. The impression made on the refined ears of musical experts or their views as to the musical excellence of plaintiff's or defendant's works are utterly immaterial on the issue of misappropriation; for the views of such persons are caviar to the general — and plaintiff's and defendant's compositions are not caviar. 
5. In copyright infringement cases cited by defendant, we have sustained judgments in favor of defendants based on findings of fact made by trial judges after trials, findings we held not to be "clearly erroneous." There we did not attempt to pass on the veracity or credibility of witnesses. To do so here would be to convert an appellate court into a trial court. The avowed purpose of those who sponsored the summary judgment practice was to eliminate needless trials where by affidavits it could be shown beyond possible question that the facts were not actually in dispute. In the attempt to apply that reform — to avoid what is alleged to be a needless trial in a trial court — we should not conduct a trial in this court. Where the facts are thus in real dispute, it is our function, after a trial in the lower court, to review its legal conclusions and, with reference to its findings of fact, to determine not whether we would ourselves have made them, but merely whether they rest on sufficient evidence in the record. When the trial occurs before a judge without a jury, we have his findings of fact separated from his legal conclusions; when it occurs before a jury, our task is somewhat different, especially when the jury returns a general (i.e., composite) verdict. But in reviewing a judgment after either type of trial, ours must be a limited function. This is not, and must not be, a trial court. Such a court has a duty more difficult and important than ours. We begin our task where it leaves off. Until the Supreme Court tells us that we err, we shall therefore adhere to the views stated in Doehler Metal Furniture Co. v. United States, supra, and to our belief, expressed in Dellar v. Samuel Goldwyn, Inc., 2 Cir., 104 F. 2d 661, 662 and MacDonald v. Du Maurier, 2 Cir., 144 F.2d 696, that generally there should be trials in plagiarism suits. 
6. Plaintiff has not copyrighted two of his compositions, "Twilight Waltz" and "Duet" from "Song of David." Accordingly, the judgment to that extent should be changed to one of dismissal for lack of jurisdiction. The same is true of the judgment concerning the alleged copying of the titles of plaintiff's songs, "What Is Love" and "Night and Day." A title cannot be copyrighted. The facts do not permit the joinder of these non-federal causes of action with the action for infringement of copyrights. 
7. Defendant's motion papers showed that plaintiff had assigned his copyright to his composition "A Mother's Prayer" to another person. Plaintiff alleged that, by an oral agreement with the assignee, the copyright was to revert to plaintiff on the assignee's death, and that the assignee was dead. Defendant contended that the parol evidence rule barred proof of such an oral agreement, and that, therefore, plaintiff, not being able to show his ownership of the copyright, could not maintain suit for its infringement. Defendant asked the judge to take judicial notice of the record of another infringement suit in the same court, Arnstein v. American Soc. of Composers, D.C., 29 F.Supp. 388, involving the same issue as to the same composition, brought by plaintiff against another person, not in privity with the defendant here, in which decision on that issue had been adverse to plaintiff. On that ground, the judge held that the present action, so far as based on "A Mother's Prayer," must be dismissed. In so holding, the judge erred. As no one in the assignee's chain of title is a party to this suit, the parol evidence rule does not apply. The adjudication in the previous suit is entirely irrelevant. 
8. Defendant disregarded that sort of irrelevance in moving in the court below not only for summary judgment but also for dismissal of plaintiff's action as "vexatious." For in aid of that latter motion, defendant asked the judge to take judicial notice of five previous copyright infringement actions, including the one just mentioned above, brought by the plaintiff in the same court against other persons, in which plaintiff had advanced some legal arguments like those he advances here, and in which he had been defeated. The judge in his opinion referred to but one of those suits, Arnstein v. American Soc. of Composers, and purported not to pass on the motion to dismiss for vexatiousness. But in his order for final judgment he specifically referred to the "records" of the court in the five cases, naming them, as constituting in part the basis of the judgment. 
Defendant, in his brief in this court says, "This is perhaps the most significant" argument in "this case," and presses us to hold that affirmance of the dismissal should be based thereon. Coupled with this request is an implied suggestion that, with respect to the summary judgment, we should not so concern ourselves with fear of creating a "bad" precedent for the future that we reach an unjust decision in this particular case. With that suggestion we are in thorough accord. We decide against summary judgment here because we consider it improper in this case. Our decision to that effect will have precedential significance only to the extent that, in any future case, summary judgment is sought when the facts are not beyond the range of actual dispute. 
But, in the spirit of that suggestion, we regard it as entirely improper to give any weight to other actions lost by plaintiff. Although, as stated above, the judge in his opinion, except as to one of the previous actions, did not say that he rested his decision on those other suits, the language of his final judgment order indicates that he was probably affected by them. 
If so, he erred. Absent the factors which make up res judicata (not present here), each case must stand on its own bottom, subject, of course, to the doctrine of stare decisis. 
Succumbing to the temptation to consider other defeats suffered by a party may lead a court astray; see, e.g., Southern Pacific Co. v. Bogert, 250 U.S. 483, 489, 39 S.Ct. 533, 63 L.Ed. 1099, note 1. When a particular suit is vexatious, sometimes at its conclusion the court can give some redress to the victorious party. Perhaps the Legislature can and should meet this problem more effectively. But we surely must not do so, as defendant here would have us do, by prejudging the merits of the case before us. 
Modified in part; otherwise reversed and remanded. 
1. In the following cases, after a trial before a judge without a jury, the decision was for defendant because there was no copying, so that the issue of illicit copying was not reached. The judge found no access. On appeal the decision was affirmed for the following reasons: (a) The finding of no copying was supported by sufficient evidence so that it was not clearly erroneous. (b) The similarities were not sufficient to preclude coincidence since (1) there was no resemblance to the ear of the lay listener and/or (2) the plaintiff's contribution was too banal. Arnstein v. Edward B. Marks Music Corp., 2 Cir., 82 F. 2d 275; Darrell v. Joe Morris Music Co., Inc., 2 Cir., 113 F.2d 80; Arnstein v. Broadcast Music, Inc., 2 Cir., 137 F.2d 410, affirming, D.C., 46 F.Supp. 379. 
2. In Wilkie v. Santly Bros., 2 Cir., 91 F.2d 978, affirming, D.C., 13 F.Supp. 136, after a trial before a judge without a jury, the decision was for plaintiff. On appeal, this decision was affirmed for the following reasons: Although there was no proof of access, the similarities, both to the ear and on analysis, were striking, and plaintiff's contribution was so unique that the trial judge's conclusion of absence of coincidence could not be reversed. Copying having been thus established, the trial judge's conclusion as to illicit copying was supported by enough evidence. 
CLARK, Circuit Judge (dissenting). 
While the procedure followed below seems to me generally simple and appropriate, the defendant did make one fatal tactical error. In an endeavor to assist us, he caused to be prepared records of all the musical pieces here involved, and presented these transcriptions through the medium of the affidavit of his pianist. Though he himself did not stress these records and properly met plaintiff's claims as to the written music with his own analysis, yet the tinny tintinnabulations of the music thus canned resounded through the United States Courthouse to the exclusion of all else, including the real issues in the case. Of course, sound is important in a case of this kind, but it is not so important as to falsify what the eye reports and the mind teaches. Otherwise plagiarism would be suggested by the mere drumming of repetitious sound from our usual popular music, as it issues from a piano, orchestra, or hurdy-gurdy — particularly when ears may be dulled by long usage, possibly artistic repugnance or boredom, or mere distance which causes all sounds to merge. And the judicial eardrum may be peculiarly insensitive after long years of listening to the "beat, beat, beat" (I find myself plagiarizing from defendant and thus in danger of my brothers' doom) of sound upon it, though perhaps no more so than the ordinary citizen juror — even if tone deafness is made a disqualification for jury service, as advocated. 
Pointing to the adscititious fortuity inherent in the stated standard is, it seems to me, the fact that after repeated hearings of the records, I could not find therein what my brothers found. The only thing definitely mentioned seemed to be the repetitive use of the note e2 in certain places by both plaintiff and defendant, surely too simple and ordinary a device of composition to be significant. In our former musical plagiarism cases we have, naturally, relied on what seemed the total sound effect; but we have also analyzed the music enough to make sure of an intelligible and intellectual decision. Thus in Arnstein v. Edward B. Marks Music Corp., 2 Cir., 82 F. 2d 275, 277, Judge L. Hand made quite an extended comparison of the songs, concluding, inter alia: "* * * the seven notes available do not admit of so many agreeable permutations that we need be amazed at the re-appearance of old themes, even though the identity extend through a sequence of twelve notes." See also the discussion in Marks v. Leo Feist, Inc., 2 Cir., 290 F. 959, and Darrell v. Joe Morris Music Co., 2 Cir., 113 F.2d 80, where the use of six similar bars and of an eight-note sequence frequently repeated were respectively held not to constitute infringement, and Wilkie v. Santly Bros., 2 Cir., 91 F.2d 978, affirming D.C.S.D.N.Y., 13 F.Supp. 136, certiorari denied Santly Bros. v. Wilkie, 302 U.S. 735, 58 S.Ct. 120, 82 L.Ed. 568, where use of eight bars with other similarities amounting to over three-quarters of the significant parts was held infringement. 
It is true that in Arnstein v. Broadcast Music, Inc., 2 Cir., 137 F.2d 410, 412, we considered "dissection" or "technical analysis" not the proper approach to support a finding of plagiarism, and said that it must be "more ingenuous, more like that of a spectator, who would rely upon the complex of his impressions." But in its context that seems to me clearly sound and in accord with what I have in mind. Thus one may look to the total impression to repulse the charge of plagiarism where a minute "dissection" might dredge up some points of similarity. Hence one cannot use a purely theoretical disquisition to supply a tonal resemblance which does not otherwise exist. Certainly, however, that does not suggest or compel the converse — that one must keep his brain in torpor for fear that otherwise it would make clear differences which do exist. Music is a matter of the intellect as well as the emotions; that is why eminent musical scholars insist upon the employment of the intellectual faculties for a just appreciation of music. 
Consequently I do not think we should abolish the use of the intellect here even if we could. When, however, we start with an examination of the written and printed material supplied by the plaintiff in his complaint and exhibits, we find at once that he does not and cannot claim extensive copying, measure by measure, of his compositions. He therefore has resorted to a comparative analysis — the "dissection" found unpersuasive in the earlier cases — to support his claim of plagiarism of small detached portions here and there, the musical fillers between the better known parts of the melody. And plaintiff's compositions, as pointed out in the cases cited above, are of the simple and trite character where small repetitive sequences are not hard to discover. It is as though we found Shakespeare a plagiarist on the basis of his use of articles, pronouns, prepositions, and adjectives also used by others. The surprising thing, however, is to note the small amount of even this type of reproduction which plaintiff by dint of extreme dissection has been able to find. 
Though it is most instructive, it will serve no good purpose for me to restate here this showing as to each of the pieces in issue. As an example of the rest, we may take plaintiff's first cause of action. This involves his "A Modern Messiah" with defendant's "Don't Fence Me In." The first is written in 6/8 time, the second in common or 4/4 time; and there is only one place where there is a common sequence of as many as five consecutive notes, and these without the same values. Thus it goes. The usual claim seems to be rested upon a sequence of three, of four, or of five — never more than five — identical notes, usually of different rhythmical values. Nowhere is there anything approaching the twelve-note sequence of the Marks case, supra. Interesting is the fact that the closest tonal resemblance is to be found between a piece by defendant written back in 1930 and an uncopyrighted waltz by plaintiff (rejected here by my brothers because it is uncopyrighted) which was never published, but, according to his statement, was publicly performed as early as 1923, 1924, and 1925.
In the light of these utmost claims of the plaintiff, I do not see a legal basis for the claim of plagiarism. So far as I have been able to discover, no earlier case approaches the holding that a simple and trite sequence of this type, even if copying may seem indicated, constitutes proof either of access or of plagiarism. In addition to the cases already cited, see the fine statements of Bright, J., in Arnstein v. Broadcast Music, Inc., D.C.S.D.N.Y., 46 F.Supp. 379, 381, affirmed 2 Cir., 137 F.2d 410, supra, and of Yankwich, J., in Carew v. R. K. O. Radio Pictures, D.C.S.D.Cal., 43 F.Supp. 199. That being so, the procedure whereby the demonstration is made does not seem to me overimportant. A court is a court whether sitting at motion or day calendar; and when an issue of law is decisively framed, it is its judicial duty to pass judgment. Hence on the precedents I should feel dismissal required on the face of the complaint and exhibits. 
But of course as the record now stands, the case is still stronger, for it appears that access must rest only upon a showing of similarities in the compositions. Under the procedure employed, the parties were entitled to require discovery of the case relied on by the other. Madeirense Do Brasil S/A v. Stulman-Emrick Lumber Co., 2 Cir., 147 F.2d 399, 405, certiorari denied 325 U.S. 861, 65 S.Ct. 1201; Rotberg v. Dodwell & Co., 2 Cir., 152 F.2d 100; Wilkinson v. Powell, 5 Cir., 149 F.2d 335; Piantadosi v. Loew's, Inc., 9 Cir., 137 F.2d 534; Fox v. Johnson & Wimsatt, Inc., 75 U.S.App.D.C. 211, 127 F.2d 729; 45 Col.L. Rev. 964, 967. This they did by each taking the deposition of the other, resulting in a categorical denial by defendant of having ever seen or heard plaintiff's compositions and no showing by plaintiff of any evidence of access worthy of submission to any trier of fact. 
And I take it as conceded that these trifling bits of similarities will not permit of the inference of copying. My brothers, in a trusting belief in the virtues of cross-examination, rely upon a trial to develop more. But cross-examination can hardly construct a whole case without some factual basis on which to start. And they overlook, too, the operation of F.R. 26(d) (3) 2, as to the use of depositions, under which the defendant, if elsewhere on business, need not return for trial, but may rely upon his already clear deposition, and the plaintiff may not have the luxury of another futile cross-examination.[4] Further, my brothers reject as "utterly immaterial" the help of musical experts as to the music itself (as distinguished from what lay auditors may think of it, where, for my part, I should think their competence least), contrary to what I had supposed was universal practice, cf., e.g., Wilkie v. Santly Bros., Arnstein v. American Soc. of Composers, Authors and Publishers, and Carew v. R. K. O. Radio Pictures, all supra — thereby adding a final proof of the anti-intellectual and book-burning nature of their decision. Thus it seems quite likely that the record at trial will be the one now before us. 
Since the legal issue seems thus clear to me, I am loath to believe that my colleagues will uphold a final judgment of plagiarism on a record such as this. The present holding is therefore one of those procedural mountains which develop where it is thought that justice must be temporarily sacrificed, lest a mistaken precedent be set at large. The conclusion that the precedent would be mistaken appears to rest on two premises: a belief in the efficacy of the jury to settle issues of plagiarism, and a dislike of the rule established by the Supreme Court as to summary judgments. Now, as to the first, I am not one to condemn jury trials (cf. Keller v. Brooklyn Bus Corp., 2 Cir., 128 F.2d 510, 517; Frank, If Men Were Angels, 1942, 80-101; Frank, Law and the Modern Mind, 1930, 170-185, 302-309, 344-348), since I think it has a place among other quite finite methods of fact-finding. But I should not have thought it pre-eminently fitted to decide questions of musical values, certainly not so much so that an advisory jury should be brought in if no other is available. 
And I should myself hesitate to utter so clear an invitation to exploitation of slight musical analogies by clever musical tricks in the hope of getting juries hereafter in this circuit to divide the wealth of Tin Pan Alley. This holding seems to me an invitation to the strike suit par excellence. But be that as it may, discussion as to the use of the jury in this case must surely be a premature obiter dictum which forgets that we are a court of review, not an administrative or judicial director of the trial courts. We are not even in a position to decide whether the case is properly on the jury list — a point not raised on this appeal or clarified in either records or briefs. Compare, as to the possible problems, Rifkind, J., in Bercovici v. Chaplin, D.C.S.D.N.Y., 3 F.R.D. 409. And surely we cannot now say that a verdict should not be directed, or an advisory jury or special verdict should be had. The first is a matter of law at the end of the case, to be decided in the light of the precedents above cited; the others are matters primarily within the discretion of the trial court. F.R. 39(c), 49(a). 
The second premise — dislike of the summary-judgment rule — I find difficult to appraise or understand. Seemingly the procedure is not to be generally favored, but with certain exceptions, the extent of which is unclear, e.g., United States v. Associated Press, D.C.S.D.N.Y., 52 F.Supp. 362, affirmed Associated Press v. United States, 326 U.S. 1, 65 S.Ct. 1416, a plaintiff's judgment, and Milcor Steel Co. v. George A. Fuller Co., 2 Cir., 122 F.2d 292, affirmed 316 U.S. 143, 62 S.Ct. 969, 86 L.Ed. 1332, a defendant's judgment in a patent case. And perhaps it is not to be employed at all in plagiarism cases. 
Since, however, the clear-cut provisions of F.R. 56 conspicuously do not contain either a restriction on the kinds of actions to which it is applicable (unlike most state summary procedures) or any presumption against its use, it is necessary to refashion the rule. This was announced by way of a dictum in Doehler Metal Furniture Co. v. United States, 2 Cir., 149 F.2d 130, 135, which was specifically directed as a criticism of another decision of this court, Madeirense Do Brasil S/A v. Stulman-Emrick Lumber Co., supra (cf., however, 45 Col.L.Rev. 964). Now that dictum is definitely accepted as the "standard here," without reference to the rule itself. That is a novel method of amending rules of procedure. It subverts the plans and hopes of the profession for careful, informed study leading to the adoption and to the amendment of simple rules which shall be uniform throughout the country. Worse still, it is ad hoc legislation, dangerous in the particular case where first applied and disturbing to the general procedure. 
In fact, however, cases, texts, and articles without dissent accept and approve the summary judgment as an integral and useful part of the procedural system envisaged by the rules. 
And as the Advisory Committee's two drafts of proposed amendments show, the demand is not for limitation, but for at least a small extension, of the rule. It is, indeed, more necessary in the system of simple pleading now enforced in the federal courts; for under older procedures, useless and unnecessary trials could be avoided, in theory at least, by the then existing demurrer and motion practice. But that stressed pleading forms, rather than the merits, while summary judgment and its popular correlative, pre-trial procedure, F.R. 16, go directly to the merits. One unfortunate consequence of eliminating summary procedure is that it affords support for the plea of return to the old demurrer, which, however clumsily, did get rid of some of the cases which did not deserve a protracted and expensive trial. Of course it is error to deny trial when there is a genuine dispute of facts; but it is just as much error — perhaps more in cases of hardship, or where impetus is given to strike suits — to deny or postpone judgment where the ultimate legal result is clearly indicated. Plagiarism suits are not excepted from F. R. 56; and often that seems the most useful and direct procedure, since the cases so overwhelmingly turn ultimately and at long length upon an examination and a comparison of the challenged and the challenging compositions. Cf. MacDonald v. Du Maurier, 2 Cir., 144 F.2d 696, 701-703. Here I think we ought to assume the responsibility of decision now. If, however, we are going to the other extreme of having all decisions of musical plagiarism made by ear, the more unsophisticated and musically naive the better, then it seems to me we are reversing our own precedents to substitute chaos, judicial as well as musical.
  1. Ira Arnstein complained that his song "A Modern Messiah" was infringed by the Cole Porter's song "Don't Fence Me In." You can hear both songs here, and learn more about Arnstein here. Do you agree that Porter's song is substantially similar to Arnstein's?
  2. The court refers to "plagiarism." Are infringement and plagiarism equivalent? If not, how are they different?
  3. The court held that the fact-finder should determine whether defendant copied an original element of plaintiff's work, and then determine whether defendant improperly appropriated any elements of plaintiff's work. Do you agree?
Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157 (9th Cir. 1977)
JAMES M. CARTER, Circuit Judge: 
This is a copyright infringement action. Plaintiffs Sid and Marty Krofft Television Productions, Inc., and Sid and Marty Krofft Productions, Inc. were awarded $50,000.00 in their action against defendants McDonald's Corporation and Needham, Harper & Steers, Inc. Defendants were found to have infringed plaintiffs' "H. R. Pufnstuf" children's television show by the production of their "McDonaldland" television commercials. 
Plaintiffs argue on appeal that the district court erred in awarding damages pursuant to 17 U.S.C. § 101(b). They contend that the court should have ordered an accounting of profits by defendants or, alternatively, should have awarded statutory "in lieu" damages. 
Defendants cross-appeal. They contend that their television commercials did not infringe upon plaintiffs' television series as a matter of law. To find infringement, they suggest, would abridge their first amendment rights. They also refute plaintiffs' contentions as to damages. 
We believe that the district court's finding of infringement was not clearly erroneous, and see no merit to defendants' first amendment claims, We find, however, that the district court was in error in awarding damages. We therefore affirm in part, reverse in part, and remand for further proceedings. 
In 1968, Sid and Marty Krofft were approached by the NBC television network to create a children's television program for exhibition on Saturday morning. The Kroffts spent the next year creating the H. R. Pufnstuf television show, which was introduced on NBC in September 1969. The series included several fanciful costumed characters, as well as a boy named Jimmy, who lived in a fantasyland called "Living Island," which was inhabited by moving trees and talking books. The television series became extremely popular and generated a line of H. R. Pufnstuf products and endorsements. 
In early 1970, Marty Krofft, the President of both Krofft Television and Krofft Productions and producer of the show, was contacted by an executive from Needham, Harper & Steers, Inc., an advertising agency. He was told that Needham was attempting to get the advertising account of McDonald's hamburger restaurant chain and wanted to base a proposed campaign to McDonald's on the H. R. Pufnstuf characters. The executive wanted to know whether the Kroffts would be interested in working with Needham on a project of this type. 
Needham and the Kroffts were in contact by telephone six or seven more times. By a letter dated August 31, 1970, Needham stated it was going forward with the idea of a McDonaldland advertising campaign based on the H. R. Pufnstuf series. It acknowledged the need to pay the Kroffts a fee for preparing artistic designs and engineering plans. Shortly thereafter, Marty Krofft telephoned Needham only to be told that the advertising campaign had been cancelled. 
In fact, Needham had already been awarded McDonald's advertising account and was proceeding with the McDonaldland project. Former employees of the Kroffts were hired to design and construct the costumes and sets for McDonaldland. Needham also hired the same voice expert who supplied all of the voices for the Pufnstuf characters to supply some of the voices for the McDonaldland characters. In January 1971, the first of the McDonaldland commercials was broadcast on network television. They continue to be broadcast. 
Prior to the advent of the McDonaldland advertising campaign, plaintiffs had licensed the use of the H. R. Pufnstuf characters and elements to the manufacturers of toys, games, lunch boxes, and comic books. In addition, the H. R. Pufnstuf characters were featured in Kellogg's cereal commercials and used by the Ice Capades. After the McDonaldland campaign, which included the distribution of toys and games, plaintiffs were unable to obtain new licensing arrangements or extend existing ones. In the case of the Ice Capades, the H. R. Pufnstuf characters were actually replaced by the McDonaldland characters. 
Plaintiffs filed suit in September 1971. The complaint alleged, inter alia, that the McDonaldland advertising campaign infringed the copyrighted H. R. Pufnstuf television episodes as well as various copyrighted articles of Pufnstuf merchandise. By way of relief, plaintiffs sought compensatory damages of $250,000, an order for an accounting of profits attributable to the infringements, or, in the alternative, statutory "in lieu" damages, as provided by 17 U.S.C. § 101(b). Prior to trial, the district court signed a Pre-Trial Conference Order that was "approved as to form and content" by counsel for both sides. It provided that "[t]he prayer for relief raises issues of injunctive relief and an accounting which are questions for the Court." 
The three week jury trial began on November 27, 1973. The jurors were shown for their consideration on the question of infringement: (1) two H. R. Pufnstuf television episodes; (2) various items of H. R. Pufnstuf merchandise, such as toys, games, and comic books; (3) several 30 and 60 second McDonaldland television commercials; and (4) various items of McDonaldland merchandise distributed by McDonald's, such as toys and puzzles. The jury was instructed that it was not to consider defendants' profits in determining damages, but could consider the value of use by the defendants of plaintiffs' work. 
A verdict in favor of plaintiffs was returned and damages of $50,000.00 assessed. After the verdict, the parties briefed the question of whether plaintiffs were entitled to additional monetary recovery in the form of profits or statutory "in lieu" damages. The district court denied plaintiffs' claim for such relief. The court found that these matters were properly for the jury to consider so that it would not exercise its discretion in hearing further evidence. 
These appeals followed. 
Proof of Infringement 
It has often been said that in order to establish copyright infringement a plaintiff must prove ownership of the copyright and "copying" by the defendant. See, e.g., Reyher v. Children's Television Workshop, 533 F.2d 87, 90 (2 Cir. 1976); Universal Athletic Sales Co. v. Salkeld, 511 F.2d 904, 907 (3 Cir. 1975); 2 M. Nimmer on Copyright § 141 at 610-11 (1976) (hereinafter "Nimmer"). "Copying," in turn, is said to be shown by circumstantial evidence of access to the copyrighted work and substantial similarity between the copyrighted work and defendant's work. Reyher v. Children's Television Workshop, supra, 533 F.2d at 90; 2 Nimmer § 141.2 at 613. But an analysis of the cases suggests that these statements frequently serve merely as boilerplate to copyright opinions. 
Under such statements, infringement would be established upon proof of ownership, access, and substantial similarity. Application of this rule, however, would produce some untenable results. For example, a copyright could be obtained over a cheaply manufactured plaster statue of a nude. Since ownership of a copyright is established, subsequent manufacturers of statues of nudes would face the grave risk of being found to be infringers if their statues were substantially similar and access were shown. The burden of proof on the plaintiff would be minimal, since most statues of nudes would in all probability be substantially similar to the cheaply manufactured plaster one. 
Clearly the scope of copyright protection does not go this far. A limiting principle is needed. This is provided by the classic distinction between an "idea" and the "expression" of that idea. It is an axiom of copyright law that the protection granted to a copyrighted work extends only to the particular expression of the idea and never to the idea itself. Mazer v. Stein, 347 U.S. 201, 217-18, 74 S.Ct. 460, 98 L.Ed. 630 (1954); Baker v. Selden, 101 U.S. 99, 102-03, 25 L.Ed. 841 (1879). This principle attempts to reconcile two competing social interests: rewarding an individual's creativity and effort while at the same time permitting the nation to enjoy the benefits and progress from use of the same subject matter. 
The real task in a copyright infringement action, then, is to determine whether there has been copying of the expression of an idea rather than just the idea itself. "[N]o one infringes, unless he descends so far into what is concrete [in a work] as to invade . . . [its] expression." National Comics Publications v. Fawcett Publications, 191 F.2d 594, 600 (2 Cir. 1951). Only this expression may be protected and only it may be infringed.[6]
The difficulty comes in attempting to distill the unprotected idea from the protected expression. No court or commentator in making this search has been able to improve upon Judge Learned Hand's famous "abstractions test" articulated in Nichols v. Universal Pictures Corporation, 45 F.2d 119 (2 Cir. 1930), cert. denied, 282 U.S. 902, 51 S.Ct. 216, 75 L.Ed. 795 (1931): 
"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 is about, and at times might consist of only its title; but there is 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." 45 F.2d at 121. See also Chafee, Reflections on the Law of Copyright, 45 Colum.L.Rev. 503 (1945); Esezobar, Concepts in Copyright Protection, 23 Bull.Cprt.Soc. 258 (1976); Note, "Expression" and "Originality" in Copyright Law, 11 Washburn L.J. 400 (1972). 
The test for infringement therefore has been given a new dimension. There must be ownership of the copyright and access to the copyrighted work. But there also must be substantial similarity not only of the general ideas but of the expressions of those ideas as well. Thus two steps in the analytic process are implied by the requirement of substantial similarity. 
The determination of whether there is substantial similarity in ideas may often be a simple one. Returning to the example of the nude statue, the idea there embodied is a simple one — a plaster recreation of a nude human figure. A statue of a horse or a painting of a nude would not embody this idea and therefore could not infringe. The test for similarity of ideas is still a factual one, to be decided by the trier of fact. See International Luggage Registry v. Avery Products Corp., 541 F.2d 830, 831 (9 Cir. 1976); Williams v. Kaag Manufacturers, Inc., 338 F.2d 949, 951 (9 Cir. 1964). 
We shall call this the "extrinsic test." It is extrinsic because it depends not on the responses of the trier of fact, but on specific criteria which can be listed and analyzed. Such criteria include the type of artwork involved, the materials used, the subject matter, and the setting for the subject. Since it is an extrinsic test, analytic dissection and expert testimony are appropriate. Moreover, this question may often be decided as a matter of law. 
The determination of when there is substantial similarity between the forms of expression is necessarily more subtle and complex. As Judge Hand candidly observed, "Obviously, no principle can be stated as to when an imitator has gone beyond copying the 'idea,' and has borrowed its `expression.' Decisions must therefore inevitably be ad hoc." Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2 Cir. 1960). If there is substantial similarity in ideas, then the trier of fact must decide whether there is substantial similarity in the expressions of the ideas so as to constitute infringement. 
The test to be applied in determining whether there is substantial similarity in expressions shall be labeled an intrinsic one — depending on the response of the ordinary reasonable person. See International Luggage Registry v. Avery Products Corp., supra, 541 F.2d at 831; Harold Lloyd Corp. v. Witwer, 65 F.2d 1, 18-19 (9 Cir. 1933). See generally Nimmer § 143.5. It is intrinsic because it does not depend on the type of external criteria and analysis which marks the extrinsic test. As this court stated in Twentieth Century-Fox Film Corp. v. Stonesifer, 140 F.2d 579, 582 (9 Cir. 1944): 
"The two works involved in this appeal should be considered and tested, not hypercritically or with meticulous scrutiny, but by the observations and impressions of the average reasonable reader and spectator." 
Because this is an intrinsic test, analytic dissection and expert testimony are not appropriate. 
This same type of bifurcated test was announced in Arnstein v. Porter, 154 F.2d 464, 468-69 (2 Cir. 1946), cert. denied, 330 U.S. 851, 67 S.Ct. 1096, 91 L.Ed. 1294 (1947). The court there identified two separate elements essential to a plaintiff's suit for infringement: copying and unlawful appropriation. Under the Arnstein doctrine, the distinction is significant because of the different tests involved. 
"[T]he trier of fact must determine whether the similarities are sufficient to prove copying. On this issue, analysis ('dissection') is relevant, and the testimony of experts may be received to aid the trier of facts. * * * If copying is established, then only does there arise the second issue, that of illicit copying (unlawful appropriation). On that issue . . . the test is the response of the ordinary lay hearer; accordingly, on that issue, 'dissection' and expert testimony are irrelevant." 154 F.2d at 468 (footnotes omitted). 
We believe that the court in Arnstein was alluding to the idea-expression dichotomy which we make explicit today. When the court in Arnstein refers to "copying" which is not itself an infringement, it must be suggesting copying merely of the work's idea, which is not protected by the copyright. To constitute an infringement, the copying must reach the point of "unlawful appropriation," or the copying of the protected expression itself. We analyze this distinction in terms both of the elements involved — idea and expression — and of the tests to be used — extrinsic and intrinsic — in an effort to clarify the issues involved. 
The Tests Applied 
In the context of this case, the distinction between these tests is important. Defendants do not dispute the fact that they copied the idea of plaintiffs' Pufnstuf television series — basically a fantasyland filled with diverse and fanciful characters in action. They argue, however, that the expressions of this idea are too dissimilar for there to be an infringement. They come to this conclusion by dissecting the constituent parts of the Pufnstuf series — characters, setting, and plot — and pointing out the dissimilarities between these parts and those of the McDonaldland commercials. 
This approach ignores the idea-expression dichotomy alluded to in Arnstein and analyzed today. Defendants attempt to apply an extrinsic test by the listing of dissimilarities in determining whether the expression they used was substantially similar to the expression used by plaintiffs. That extrinsic test is inappropriate; an intrinsic test must here be used. As the court in Arnstein stated: 
"Whether (if he copied) defendant unlawfully appropriated presents, too, an issue of fact. The proper criterion on that issue is not an analytic or other comparison of the respective . . . compositions . . . . The plaintiff's legally protected interest in the potential financial return from his compositions which derive from the lay public's approbation of his efforts. The question, therefore, is whether defendant took from plaintiff's works so much of what is pleasing to the [eyes and] ears of lay [persons], who comprise the audience for whom such popular [works are] composed, that defendant wrongfully appropriated something which belongs to the plaintiff. Surely, then, we have an issue of fact which a jury is peculiarly fitted to determine." 154 F.2d at 472-73 (footnotes omitted). 
Analytic dissection, as defendants have done, is therefore improper. 
Defendants contest the continued viability of Arnstein. It is true that Arnstein's alternative holding that summary judgment may not be granted when there is the slightest doubt as to the facts has been disapproved. See, e.g., First National Bank of Arizona v. Cities Service Co., 391 U.S. 253, 288-90, 88 S.Ct. 1575, 20 L.Ed.2d 569 (1968); Beal v. Lindsay, 468 F.2d 287, 291 (2 Cir. 1972); Janis v. Wilson, 385 F.Supp. 1143, 1147 (D.S.D. 1974); Keller v. California Liquid Gas Corp., 363 F.Supp. 123, 126 (D.Wyo.1973). But the case's tests for infringement have consistently been approved by this court. See, e.g., Goodson-Todman Enterprises, Inc. v. Kellogg Co., 513 F.2d 913, 914 (9 Cir. 1975); Overman v. Loesser, 205 F.2d 521, 523 (9 Cir. 1953). They have also been accepted by other courts. See, e.g., Universal Athletic Sales Co. v. Salkeld, supra, 511 F.2d at 907; Scott v. WKJG, Inc., 376 F.2d 467, 469 (7 Cir. 1967). We believe Arnstein is still good law. 
Since the intrinsic test for expression is uniquely suited for determination by the trier of fact, this court must be reluctant to reverse it. See International Luggage Registry v. Avery Products Corp., supra, 541 F.2d at 831; Caddy-Imler Creations, Inc. v. Caddy, 299 F.2d 79, 82 (9 Cir. 1962). As this court said in Williams v. Kaag Manufacturers, Inc., supra, 338 F.2d at 951: 
"We have commented frequently on the inappropriateness of substituting our judgment for that of the trial judge on questions of fact. The more vague the test, the less inclined we are to intervene." 
As a finding of fact, a conclusion as to the question of copying is subject to the "clearly erroneous" standard. Fed.R.Civ.P. 52(a). But it follows that this court will be less likely to find clear error when the subjective test for copying of expression has been applied. 
The present case demands an even more intrinsic determination because both plaintiffs' and defendants' works are directed to an audience of children. This raises the particular factual issue of the impact of the respective works upon the minds and imaginations of young people. As the court said in Ideal Toy Corp. v. Fab-Lu Ltd., 261 F.Supp. 238, 241-42 (S.D.N.Y.1966), aff'd, 360 F.2d 1021 (2 Cir. 1966): 
"In applying the test of the average lay observer, [children] are not to be excluded — indeed they are the `far-flung faithful . . . audience.' The television advertising campaign of plaintiff was directed toward acquainting these youngsters with . . . its new teenage and pre-teen dolls. The impression of the faces and general appearance of the dolls was upon them. . . . [T]he dolls create the same impression, both with respect to their appearances and the play — uses for which they are suited. It is the youngsters who, on the basis of this impression, go to the stores with their parents or at home make their wishes known for the dolls they desire after television has made its impact upon them. In their enthusiasm to acquire . . . [the dolls] they certainly are not bent upon `detecting disparities' or even readily observing upon inspection such fine details as the point at which the necks are molded" (citations and footnotes omitted). 
The H. R. Pufnstuf series became the most popular children's show on Saturday morning television. This success led several manufacturers of children's goods to use the Pufnstuf characters. It is not surprising, then, that McDonald's hoped to duplicate this peculiar appeal to children in its commercials. It was in recognition of the subjective and unpredictable nature of children's responses that defendants opted to recreate the H. R. Pufnstuf format rather than use an original and unproven approach. 
Defendants would have this court ignore that intrinsic quality which they recognized to embark on an extrinsic analysis of the two works. For example, in discussing the principal characters — Pufnstuf and Mayor McCheese — defendants point out: 
"'Pufnstuf' wears what can only be described as a yellow and green dragon suit with a blue cummerband from which hangs a medal which says `mayor'. `McCheese' wears a version of pink formal dress — 'tails' — with knicker trousers. He has a typical diplomat's sash on which is written `mayor', the 'M' consisting of the McDonald's trademark of an 'M' made of golden arches." 
So not only do defendants remove the characters from the setting, but dissect further to analyze the clothing, colors, features, and mannerisms of each character. We do not believe that the ordinary reasonable person, let alone a child, viewing these works will even notice that Pufnstuf is wearing a cummerbund while Mayor McCheese is wearing a diplomat's sash. 
Duplication or near identity is not necessary to establish infringement. Runge v. Lee, 441 F.2d 579, 582 (9 Cir. 1971); Williams v. Kaag Manufacturers, Inc., supra, 338 F.2d at 951. As this court stated in Universal Pictures Co., Inc. v. Harold Lloyd Corp., infra, 162 F.2d 354, at 360:
"[A]n infringement is not confined to literal and exact repetition or reproduction; it includes also the various modes in which the matter of any work may be adopted, imitated, transferred, or reproduced, with more or less colorable alterations to disguise the piracy."
And, as Judge Learned Hand put it, copyright "cannot be limited literally to the text, else a plagiarist would escape by immaterial variations." Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2 Cir. 1930). 
We have viewed representative samples of both the H. R. Pufnstuf show and McDonaldland commercials. It is clear to us that defendants' works are substantially similar to plaintiffs'. They have captured the "total concept and feel" of the Pufnstuf show. Roth Greeting Cards v. United Card Co., 429 F.2d 1106, 1110 (9 Cir. 1970). We would so conclude even if we were sitting as the triers of fact. There is no doubt that the findings of the jury in this case are not clearly erroneous. 
Unity of Idea and Expression 
Defendants argue that dissection is proper and that duplication or near identity is necessary because the competing works are things, rather than dramatic works. They cite numerous cases in which infringement was found because the defendants' works were nearly identical to those of the plaintiffs. See, e.g., Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 250, 23 S.Ct. 298, 47 L.Ed. 460 (1903) (circus posters); Sunset House Distributing Corp. v. Doran, 304 F.2d 251, 252 (9 Cir. 1962) (plastic Santa Claus); King Features Syndicate v. Fleischer, 299 F. 533, 534 (2 Cir. 1924) (doll). Defendants fail to perceive, however, that near identity may be required in some cases not because the works are things, but because the expression of those works and the idea of those works are indistinguishable. 
Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738 (9 Cir. 1971), upon which defendants rely, is illustrative of this point. In that case, plaintiff sued for infringement of its jeweled bee pin, claiming it should be protected against the manufacture of any substantially similar object. This court responded: 
"What is basically at stake is the extent of the copyright owner's monopoly — from how large an area of activity did Congress intend to allow the copyright owner to exclude others? We think the production of jeweled bee pins is a larger private preserve than Congress intended to be set aside in the public market without a patent. A jeweled bee pin is therefore an idea that defendants were free to copy. Plaintiff seems to agree, for it disavows any claim that defendants cannot manufacture and sell jeweled bee pins and concedes that only plaintiffs' particular design or expression of the jeweled bee pin idea is protected under its copyright. The difficulty, as we have noted, is that on this record the idea and its expression appear to be indistinguishable. There is no greater similarity between the pins of plaintiff and defendants than is inevitable from the use of jewel-encrusted bee forms in both. 
"When the idea and its expression are thus inseparable, copying the expression will not be barred, since protecting the expression in such circumstances would confer a monopoly of the idea upon the copyright owner free of the conditions and limitations imposed by the patent law." Id. at 742. 
See also Herbert Rosenthal Jewelry Corp. v. Honora Jewelry Co., Inc., 509 F.2d 64, 65 (2 Cir. 1974). 
The idea and the expression will coincide when the expression provides nothing new or additional over the idea. Thus, the expression of a jeweled bee pin contains nothing new over the idea of a jeweled bee pin. Returning to our own example, the idea of a plaster statute of a nude will probably coincide with the expression of that idea when an inexpensive manufacturing process is used. There will be no separately distinguishable features in the statute's expression over the idea of a plaster nude statute. 
The complexity and artistry of the expression of an idea will separate it from even the most banal idea. Michaelangelo's David is, as an idea, no more than a statute of a nude male. But no one would question the proposition that if a copyrighted work it would deserve protection even against the poorest of imitations. This is because so much more was added in the expression over the idea. 
When idea and expression coincide, there will be protection against nothing other than identical copying of the work. When other defendants made jeweled bees from the same molds as plaintiffs, they were held liable. See Herbert Rosenthal Jewelry Corp. v. Grossbardt, 436 F.2d 315 (2 Cir. 1970). Therefore, the scope of copyright protection increases with the extent expression differs from the idea. 
The coincidence of idea and expression may occur in works other than "things." Baker v. Selden, supra, held that blank accounting books are not subject to copyright protection. Yet if any information is contained in those blanks, copyright protection is available. See Edwin K. Williams & Co. v. Edwin K. Williams, etc., 542 F.2d 1053, 1060-61 (9 Cir. 1976) (account books with explanation); Guthrie v. Curlett, 36 F.2d 694 (2 Cir. 1929) (index of freight tariffs); American Code Co. v. Bensinger, 282 F. 829 (2 Cir. 1922) (codes). 
There is no special standard of similarity required in the case of "things." Nor is any such standard suggested by any of the cases cited by defendants. For example, in Monogram Models, Inc. v. Industro Motive Corp., 492 F.2d 1281, 1284 (6 Cir. 1974), the issue was one of copyright infringement of scale model airplane kits. Defendant admitted copying, but argued lack of substantial copying. The court affirmed a jury finding of infringement, citing the ordinary reasonable observer test. Id. at 1286. See also Williams v. Kaag Manufacturing, Inc., supra, 338 F.2d at 951 (cowboy statuettes); Day-Brite Lighting, Inc. v. Sta-Brite Flourescent Manufacturing Co., 308 F.2d 377, 380 (5 Cir. 1962) (catalogue). 
No standard more demanding than that of substantial similarity should be imposed here. This is not a case where the idea is indistinguishable as a matter of law from the expression of that idea. See Goodson-Todman Enterprises, Inc. v. Kellogg Co., supra, 513 F.2d at 914. The expression inherent in the H. R. Pufnstuf series differs markedly from its relatively simple idea. The characters each have developed personalities and particular ways of interacting with one another and their environment. The physical setting also has several unique features. 
Lest we fall prey to defendants' invitation to dissect the works, however, we should remember that it is the combination of many different elements which may command copyright protection because of its particular subjective quality. Reyher v. Children's Television Workshop, Inc., supra, 533 F.2d at 91-92; Ideal Toy Corp. v. Sayco Doll Corp., 302 F.2d 623, 624 (2 Cir. 1962). As the court said in Malkin v. Dubinsky, 146 F.Supp. 111, 114 (S.D.N.Y.1956): "While any one similarity taken by itself seems trivial, I cannot say at this time that it would be improper for a jury to find that the over-all impact and effect indicate substantial appropriation." The same is true here. 
Copyright and the First Amendment 
Defendants argue that the first amendment operates in this case to limit the protection for plaintiffs' works. They seem to suggest that a more demanding standard than that of substantial similarity should be imposed, and that the threshold question about copying becomes one of "constitutional fact" to be reviewed de novo on appeal. Defendants attempt to analogize the copyright area to those of obscenity and defamation in suggesting that prior law must be modified to accommodate expanding first amendment rights. 
The constitutionality of the copyright law was settled long ago by the Supreme Court. In Kalem Co. v. Harper Brothers, 222 U.S. 55, 32 S.Ct. 20, 56 L.Ed. 92 (1911), the defendant argued that the copyright law could not grant an author an exclusive right to dramatize his works. In rejecting this contention, the Court stated: 
"It is argued that the law, construed as we have construed it, goes beyond the power conferred upon Congress by the Constitution, to secure to authors for a limited time the exclusive right to their writings. Art. I, § 8, cl. 8. It is suggested that to extend the copyright to a case like this is to extend it to the ideas, as distinguished from the words in which the ideas are clothed. But there is no attempt to make a monopoly of the ideas expressed. The law confines itself to a particular, cognate, and well-known form of reproduction. If to that extent a grant of monopoly is thought a proper way to secure the right to the writings, this court cannot say that Congress was wrong." Id. at 63, 32 S.Ct. at 22. 
The Court recognized that the protection of the copyright laws is necessary to provide an incentive for artistic creation which ultimately advances the public good. See Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156, 95 S.Ct. 2040, 45 L.Ed.2d 84 (1975). 
But the impact, if any, of the first amendment on copyright has not been discussed by the Court. We believe this silence stems not from neglect but from the fact that the idea-expression dichotomy already serves to accommodate the competing interests of copyright and the first amendment. The "marketplace of ideas" is not limited by copyright because copyright is limited to protection of expression. As one commentator has stated: 
"[T]he idea-expression line represents an acceptable definitional balance as between copyright and free speech interests. In some degree it encroaches upon freedom of speech in that it abridges the right to reproduce the `expression' of others, but this is justified by the greater public good in the copyright encouragement of creative works. In some degree it encroaches upon the author's right to control his work in that it renders his `ideas' per se unprotectible, but this is justified by the greater public need for free access to ideas as part of the democratic dialogue." 
Nimmer, Does Copyright Abridge the First Amendment Guarantees of Free Speech and Press?, 17 U.C.L.A.L.Rev. 1180, 1192-93 (1970). Cf. Lee v. Runge, 404 U.S. 887, 892-93, 92 S.Ct. 197, 30 L.Ed.2d 169 (1971) (Douglas, J., dissenting). 
Ideas which may be of public interest are not subject to copyright; the specific form of expression of these ideas are. Thus, the political views of Dr. Martin Luther King may be widely disseminated. But the precise expression of these views in a speech may be protected. King v. Mister Maestro, Inc., 224 F.Supp. 101 (S.D.N.Y.1963). See also Public Affairs Associates, Inc. v. Rickover, 177 F.Supp. 601 (D.D.C.1960), rev'd, 109 U.S.App.D.C. 128, 284 F.2d 262 (1960), rev'd, 369 U.S. 111, 82 S.Ct. 580, 7 L.Ed.2d 604 (1962), on remand, 268 F.Supp. 444 (D.D.C.1967); Atlantic Monthly Co. v. Post Pub. Co., 27 F.2d 556 (D.Mass.1928). Similarly, the facts about a historical figure are available to all to use. But if the expression of those facts in a biography is substantially copied infringement will be found. See, e.g., Toksvig v. Bruce Publishing Co., 181 F.2d 664 (7 Cir. 1950); Marvin Worth Productions v. Superior Films Corp., 319 F.Supp. 1269 (S.D.N.Y.1970); Holdredge v. Knight Publishing Corp., 214 F.Supp. 921 (C.D.Cal.1963). 
With the law of copyright permitting the free use of ideas, it is not surprising that the few courts addressing the issue have not permitted defendants who copy a work's expression to hide behind the first amendment. See, e.g., Duchess Music Corp. v. Stern, 458 F.2d 1305, 1310-11 (9 Cir. 1972); United States v. Bodin, 375 F.Supp. 1265, 1267-68 (W.D.Okl.1974); McGraw Hill, Inc. v. Worth Publishers, Inc., 335 F.Supp. 415, 422 (S.D.N.Y.1971). In Walt Disney Productions v. Air Pirates, 345 F.Supp. 108 (N.D.Cal.1972), plaintiff sued for infringement of several of its famous cartoon characters by defendants, who used them for purposes of literary criticism. Defendants claimed that the first amendment limited the scope of plaintiff's copyright protection. The court responded: 
"However defendants would have it, the hard fact remains that both parties are dealing in cartoon series, comic books or strips, and that the mode which the defendants have chosen for the expression of their concepts amounts to a substantial taking of plaintiff's expression of its concepts, even assuming vast difference in the content of those concepts. It can scarcely be maintained that there is no other means available to defendants to convey the message they have, nor is it even clear that other means are not available within the chosen genre of comics and cartoons. To paraphrase, it is true that it would be easier to copy substantial portions of the expression as distinguished from the idea itself of the Disney works, but the value of such labor-saving utility is far outweighed by the copyright interest in encouraging creation by protecting expression." Id. at 115 (footnotes omitted). 
The district court in Disney recognized that the expression inherent in plaintiff's works differs from the mere idea of those works. The "idea" of Mickey Mouse is, after all, no more than a mouse. Yet the particular expression of that mouse has phenomenal commercial value and is recognized worldwide. Defendants there could have chosen any number of ways to express their idea of a mouse, but chose to copy Disney's. So too the defendants in this case had many ways to express the idea of a fantasyland with characters, but chose to copy the expression of plaintiffs'. The first amendment will not protect such imitation. 
There may be certain rare instances when first amendment considerations will operate to limit copyright protection for graphic expressions of newsworthy events. For example, in Time, Inc. v. Bernard Geis Associates, 293 F.Supp. 130 (S.D.N.Y.1968), Life magazine sued a historian for copying frames of the Zapruder films of the assassination of John F. Kennedy. Although the court did not expressly invoke the first amendment, it did justify the defendant's right to copy frames of the film on the ground of the "public interest in having the fullest information available on the murder of President Kennedy." Id. at 146. Plaintiffs' work in this case is neither a graphic expression nor concerning newsworthy events. Therefore, no first amendment considerations operate. 
In addition to substantial similarity, a plaintiff must show access in order to prove infringement. Reyher v. Children's Television Workshop, supra, 533 F.2d at 90; 2 Nimmer § 141.2 at 613. Access is proven when the plaintiff shows that the defendant had an opportunity to view or to copy plaintiff's work. Arrow Novelty Co. v. Enco National Corp., 393 F.Supp. 157, 160 (S.D.N.Y.), aff'd, 515 F.2d 504 (2 Cir. 1975); Universal Athletic Sales Co. v. Salkeld, 340 F.Supp. 899, 901 (W.D.Pa.1972). In this case, there is no dispute as to defendants' access to plaintiffs' work. Indeed, defendants were engaged in negotiations with plaintiffs for licensing of the works even while preparing the McDonaldland commercials. 
No amount of proof of access will suffice to show copying if there are no similarities. Williams v. Kaag Manufacturers, Inc., supra, 338 F.2d at 951; Arnstein v. Porter, supra, 154 F.2d at 468. This is not to say, however, that where clear and convincing evidence of access is presented, the quantum of proof required to show substantial similarity may not be lower than when access is shown merely by a preponderance of the evidence. As Professor Nimmer has observed: 
"[C]lear and convincing evidence of access will not avoid the necessity of also proving substantial similarity since access without similarity cannot create an inference of copying. However, this so-called 'Inverse Ratio Rule' . . . would seem to have some limited validity. That is, since a very high degree of similarity is required in order to dispense with proof of access, it must logically follow that where proof of access is offered, the required degree of similarity may be somewhat less than would be necessary in the absence of such proof." 2 Nimmer § 143.4 at 634. 
Accord, Fink v. Goodson-Todman Enterprises, Ltd., 9 Cal.App.3d 996, 1013, 88 Cal.Rptr. 679 (1970). We agree. But see Arc Music Corp. v. Lee, 296 F.2d 186 (2 Cir. 1961). 
In this case, representatives of Needham actually visited the Kroffts' headquarters in Los Angeles to discuss the engineering and design work necessary to produce the McDonaldland commercials. They did this after they had been awarded the contract by McDonald's and apparently with no intention to work with the Kroffts. We believe that this degree of access justifies a lower standard of proof to show substantial similarity. Since the subjective test applies, it is impossible to quantify this standard. But there is no question it is met here. 
* * * 
In view of the holdings set forth in both portions of this opinion the judgment of the district court finding infringement is affirmed. The district court's denial of plaintiffs' motion for an accounting is reversed. The case is remanded for an accounting, after which the district court may, in its discretion, award statutory "in lieu" damages. 
Affirmed in part and Reversed in part.

Sid & Marty Krofft, H.R. Pufnstuf (1969)

McDonald's Advertisement (1970)

  1. How does Krofft change the Arnstein test. Do you agree with the change?
  2. Can juries apply the improper appropriation test after applying the copying test?
  3. In 2014, McDonald's released the following advertisement. Compare it to the following excerpt from a Wes Anderson film. Is the advertisement substantially similar to the film. How do the different tests affect your answer?

The Life Aquatic with Steve Zissou (2004)

McDonald's, Filet O'Fish Advertisement (2014)

No comments:

Post a Comment

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