Attorney Steve® Copyright Essentials - Proving "Substantial similarity" in infringement cases.  If you are facing an infringement action, or dealing with a DMCA copyright claim, call us at (877) 276-5084.

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To prove copyright infringement, a plaintiff must allege and ultimately prove OWNERSHIP of a valid copyright, and impermissible COPYING by a Defendant.  Copying can be proven by DIRECT EVIDENCE, or CIRCUMSTANTIAL EVIDENCE (proof that the Defendant had "access" to the copyrighted work, or that Defendant's work is STRIKINGLY SIMILAR to Plaintiffs copyrighted work, such that access can be presumed).  This blog discusses some of the finer details of what proving copyright infringement in the 9th circuit involves.

Proof of Ownership of an Original Work of Authorship Fixed in a Tangible Medium of Expresssion

In Schmitt v. VAG Group, Inc. (D.Or. Dec. 2, 2009, No. CV-09-380-HU) 2009 U.S.Dist.LEXIS 124004, at *1-2.) the Oregon District Court noted:

To prevail on a claim of copyright infringement, plaintiff must establish ownership of a valid copyright and copying of constituent elements of the work that are original. Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 360, 111 S. Ct. 1282, 113 L. Ed. 2d 358 (1991); see also Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1159 (9th Cir. 2007)  (two requirements for prima facie case of direct copyright infringement are proof of ownership of the allegedly infringed material and proof that the alleged infringers violated at least one exclusive right granted to copyright holders under 17 U.S.C. § 106). Pursuant to 17 U.S.C. § 410(c), registration of the copyrighted works is prima facie evidence of the validity of the copyright. Under 17 U.S.C. § 106, copyright holders have display and distribution rights. Display of a copyrighted photograph on a webpage can violate a copyright holder's rights. Perfect 10, 508 F.3d at 1160.

Not all things can be copyright protected.  From the Copyright office of the United States:

• Copyright does not protect names, titles, slogans, or short phrases.
  
  
• Copyright does not protect ideas, concepts, systems, or methods of doing something. You may express your ideas in writing or drawings and claim copyright in your description, but be aware that copyright will not protect the idea itself as revealed in your written or artistic work.
  
  
• Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed. See Circular 1, Copyright Basics, section "What Works Are Protected."

Attorney Steve® Tip: It is important to look at the Plaintiff's work, even if the copyright office granted registration, and see if it is really copyrightable.  If not, this can be raised as a potential defense.

Proof that Defendant Copied Plaintiff's Work (either by direct or circumstantial evidence).  

To prove defendant copied Plaintiff's copyrighted work, Plaintiff must allege and prove that Defendant had "access" to the Plaintiff's work, (which can be show by direct evidence or circumstantial evidence as described below) and that Defendant's copy is Substantially similar to Plaintiff's copyrighted work.

How to Prove Defendant had "Access" to Plaintiff's Copyrighted Work

A copyright Plaintiff can prove access with either direct evidence, or circumstantial evidence.

A. Direct evidence of access

B. Circumstantial evidence of access

What does "Strikingly Similar" Require?

The Courts employ the same extrinsic and intrinsic test in determining whether Plaintiff can prove "access" to their copyrighted work, given the "striking similiarity of their work as compared to the Defendant's allegedly infringing work.

To allege actionable copying, Malibu was required to plead facts plausibly showing either (1) "that the two works in question are strikingly similar," or (2) "that [the works] are substantially similar and that [Defendants] had access to the [Subject Work]." Label Lane, 668 F. App'x at 803 (citing Three Boys Music Corp. v. Bolton, 212 F.3d 477, 481, 485 (9th Cir. 2000)); H&M, 668 F. App'x at 801 (same).

Where two works are strikingly similar, access may be inferred. Unicolors, 853 F.3d at 987-88; see also Rentmeester, 883 F.3d at 1124 ("[I]f the similarities are 'striking' enough . . . such similarities can be sufficient on their own to establish that the defendant must have had access to the plaintiff's work."). 

Thus, a plaintiff must separately plead access only when alleging substantial similarity, not when alleging striking similarity. See, e.g., Three Boys Music, 212 F.3d at 485; Baxter v. MCA, Inc., 812 F.2d 421, 423-24 & n.2 (9th Cir. 1987); see also Astor-White v. Strong, 733 F. App'x 407, 407 (9th Cir. 2018).

"In assessing whether particular works are substantially similar, or strikingly similar, this Circuit applies a two-part analysis: the extrinsic test and the intrinsic test." Unicolors, 853 F.3d at 985. At the pleading stage, this Court considers only the extrinsic test. See Williams v. Gaye, 895 F.3d 1106, 1119 (9th Cir. 2018). The extrinsic test "is an objective comparison of specific expressive elements; it focuses on the articulable similarities between the two works." L.A. Printex Indus., Inc. v. Aeropostale, Inc., 676 F.3d 841, 848 (9th Cir. 2012) (internal quotation marks and citation omitted). The extrinsic test consists of two steps.

See Malibu Textiles, Inc. v. Label Lane Int'l, Inc. (9th Cir. 2019) 922 F.3d 946, 952.)

Test for Copyright Infringement - "substantial similarity" (the Extrinsic and Intrinsic test)

Here is some more case law.

To satisfy the “substantial similarity” prong, a plaintiff must satisfy a two-part test: an extrinsic test and an intrinsic test. Gray, 28 F.4th at 96; Skidmore, 952 F.3d at 1064. On summary judgment, the court considers only the extrinsic test; the intrinsic test is reserved exclusively for the trier of fact. Williams v. Gaye, 895 F.3d 1106, 1119 (9th Cir. 2018); Swirsky v. Carey, 376 F.3d 841, 844 (9th Cir. 2004) (explaining that the intrinsic test is subjective and is decided by a jury).

The extrinsic test is “an objective comparison of specific expressive elements focusing on articulable similarities between the two works.” Folkens, 882 F.3d at 776. “The extrinsic test requires . . . breaking the works down into their constituent elements, and comparing those elements for proof of copying as measured by substantial similarity. Because the requirement is one of substantial similarity to protected elements of the copyrighted work, it is essential to distinguish between the protected and unprotected material in a plaintiff's work.” Gray, 28 F.4th at 96 (quoting Swirsky, 376 F.3d at 845).

The court conducts an “analytic dissection.” Corbello v. Valli, 974 F.3d 965, 974 (9th Cir. 2020); Cavalier v. Random House, Inc., 297 F.3d 815, 822 (9th Cir. 2002) (describing that the court must “filter out and disregard the non-protectible elements in making its substantial similarity determination”). If all similarities in expression between the two works “arise from use of common ideas, then no substantial similarity can be found.” Corbello, 974 F.3d at 974 (quoting Data E. USA, Inc. v. Epyx, Inc., 862 F.2d 204, 208 (9th Cir. 1988)).

Applying the extrinsic test to music is challenging because “music is comprised of a large array of elements, some combination of which is protectable by copyright.” Swirsky, 376 F.3d at 849. When analyzing musical compositions, the court may consider a variety of elements, including melody, harmony, rhythm, pitch, tempo, phrasing, structure, chord progressions, timbre, instrumentation, meter, lyrics, overall song structure. “For one work to be substantially similar to another, more than incidental and occasional similarities are required.” Erickson v. Blake, 839 F. Supp. 2d 1132, 1139-40 (D. Or. 2012) (citing Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1439 n.6 (9th Cir. 1994) (noting that after filtering out the unprotected elements, the remaining similarities “do not comprise a core of protectable . . . similarities substantial enough to warrant a finding of illicit copying under a standard of substantial similarity”)). The extrinsic test is determined with the aid of expert testimony. Williams, 895 F.3d at 1119.

However, the court plays an important gatekeeping function in evaluating substantial similarity. Gray 28 F.4th at 96-97. For example, in Gray, the Ninth Circuit affirmed the district court's decision to grant defendants' motion for judgment as a matter of law, which overturned the jury's verdict awarding $2.8 million in damages to plaintiffs. The Gray court emphasized that “the extrinsic test is objective and is often resolved as a matter of law” and that the court must “ensure that whatever objective similarities the evidence establishes between two works are legally sufficient to serve as the basis of a copyright infringement claim regardless of the jury's views.”

If the court finds that there are no “individual musical component[s]” that are copyrightable, it still must consider whether the unprotectable elements that make up Phrases 1, 2, and 3, taken in combination, could be protectable (quoting Satava v. Lowry, 323 F.3d 805, 811 (9th Cir. 2003)); see also Swirsky, 376 F.3d at 848 (“[A] substantial similarity can be found in a combination of elements, even if those elements are individually unprotected.”). The court may find otherwise unprotectable elements are entitled to copyright protection “only if ‘selection and arrangement' of those elements is original in some way.” Gray, 28 F.4th at 101 (quoting Satava, 323 F.3d at 811).

With those principles in mind, the court begins its analysis by identifying the claimed similarities and then filters out the unprotected elements to see what, if anything, qualifies as protected expression. The court observes that Ambrosetti's briefing and Ferrara's Rebuttal Report do little to aid the court's well-defined task of filtering out the unprotectable elements from the protectable elements. And Ambrosetti has not presented a selection and arrangement theory.

Extrinisic Test: Protected v. Unprotected Elements

 “[T]he unprotectable elements have to be identified, or filtered, before the works can be considered as a whole.” Apple Computer, 35 F.3d at 1446. As stated in Gray, the threshold issue for the court is determining what is protected and what is unprotected in Phrases 1, 2, and 3 of “Emmanuel” that “qualif[y] as original expression that can serve as the basis for a copyright infringement claim.” Gray, 28 F.4th at 97; Skidmore, 952 F.3d at 1070 (stating that factfinders in a copyright infringement analysis ask “whether the protectible elements, standing alone, are substantially similar and disregard the non-protectible elements” (quotations and citations omitted).) “Where music is concerned, fundamental building blocks, such as individual notes and chords, do not warrant copyright.” Swirsky, 376 F.3d at 848, 851 (recognizing that key, tempo, rhythm, and genre are unprotected elements). While the level of creativity required is low, “copyright does require at least a modicum of creativity and does not protect every aspect of a work; ideas, concepts, and common elements are excluded.” Skidmore, 952 F.3d at 1069. Common musical elements or musical building blocks belong in the public domain and are unprotectable. Id.; Gray, 28 F.4th at 98 (“Plainly, no person may copyright the minor scale, as such scales are common musical building blocks belonging to the public.”); Lois v. Levin, Case No. 2:22-cv-00926-SVW-ADS, 2022 WL 4351968, at *5 n.5 (C.D. Cal. Sept. 16, 2022) (stating that common musical elements are not protectable, including key, tempo, the use of four dyads in a chord progression, the use of a guitar slide, and the use of guitar feedback are “common or trite elements” in music).

Regardless of the type of copyrighted work at issue, the court will apply a similar analysis, for example in fashion design infringement cases, the Court will see what is original in the Plaintiff's design, and filter our generic things (like a zigzag, which is not original).

Here is another infringement case involving the similarity between graphic user interface:

"We have traditionally determined whether copying sufficient to constitute infringement has taken place under a two-part test having "extrinsic" and "intrinsic" components. As originally adopted in Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corp., 562 F.2d 1157, 1164 (9th Cir. 1977), the extrinsic prong was a test for similarity of ideas based on external criteria; analytic dissection and expert testimony could be used, if helpful. The intrinsic prong was a test for similarity of expression from the standpoint of the ordinary reasonable observer, with no expert assistance. 

As it has evolved, however, the extrinsic test now objectively considers whether there are substantial similarities in both ideas and expression, whereas the intrinsic test continues to measure expression subjectively. Brown Bag, 960 F.2d at 1475; Shaw v. Lindheim,  [*1443]  919 F.2d 1353, 1357 (9th Cir. 1990). Because only those elements of a work that are protectable and used without the author's permission can be compared when it comes to the ultimate question of illicit copying, we use analytic dissection to determine the scope of copyright protection before works are considered "as a whole." See, e.g., Brown Bag, 960 F.2d at 1475-76 (explaining that purpose of analytic dissection is to define scope of copyright protection); Pasillas v. McDonald's Corp., 927 F.2d 440, 443 (9th Cir. 1991) (copyright holder cannot rely on standard elements to show substantial similarity of expression); Harper House, Inc. v. Thomas Nelson, Inc., 889 F.2d 197, 207-08 (9th Cir. 1989) (trier of fact cannot base infringement decision on unprotectable aspects of plaintiff's work).

See Apple Computer, Inc. v. Microsoft Corp. (9th Cir. 1994) 35 F.3d 1435, 1442-1443.)

Intrinsic Test - 'Work as a Whole'

Here is a case that discussed how the "substantial similarity" of two works must be considered looking at the whole (look and feel) of the overall competing works.

The jury's task did not end there, because while it found that EA copied some of Antonick's code, not all copying of protected expression is copyright infringement. See, e.g., Newton v. Diamond, 388 F.3d 1189, 1193 (9th Cir. 2004) ("The principle that trivial copying does not constitute actionable infringement has long been a part of copyright law."). "For an unauthorized use of a copyrighted work to be actionable, the use must be significant enough to constitute infringement."

To determine whether the copying of the source code that expressed "plays and formations" amounts to infringement, Question 2 required the jury to compare "the works to determine whether, as a whole, they are sufficiently similar to support a finding of illicit copying." See Mattel, Inc. v. MGA Entm't, Inc., 616 F.3d 904, 913-14 (9th Cir. 2010); Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1442-43 (9th Cir. 1994). This second step, called the intrinsic test, "which examines an ordinary person's subjective impressions of the similarities between two works, is exclusively the province of the jury." Funky Films, Inc. v. Time Warner Entm't Co., L.P., 462 F.3d 1072, 1077 (9th Cir. 2006) (citation omitted).

The works must be compared as a whole because the relevant inquiry is "whether a substantial portion of the protectable material in the plaintiff's work was appropriated—not whether a substantial portion of defendant's work was derived from plaintiff's work." Newton, 388 F.3d at 1195. The sheer amount of protected information copied from plaintiff's work is not necessarily dispositive. Rather, courts are to focus on the significance of the protected expression to plaintiff's entire work. See InDyne, Inc. v. Abacus Tech. Corp., 876 F. Supp. 2d 1278, 1284 (M.D. Fla. 2012), aff'd, 513 Fed. Appx. 858 (11th Cir. 2013) (explaining that the relevant inquiry for the second prong of the infringement inquiry is "whether the elements of [plaintiff's] software copied are protected expression and 'of such importance to the copied work that the appropriation is actionable.'"). If the copying of the protected expression is so extensive that it renders the plaintiff's work and the allegedly infringing work virtually identical, then the copying is actionable and the resulting work infringing.

Here, because the Court determined that Apple II Madden was entitled to thin—rather than broad—copyright protection, a work would be infringing only if an ordinary reasonable observer comparing Apple II Madden as a whole to Sega Madden as a whole would consider the works virtually identical. See Phase II Order at 3-4. The jury found all seven versions of Sega Madden at issue virtually identical to Apple II Madden, indicating its conclusion that all seven versions of Sega Madden at issue are infringing works, and therefore derivative works under the 1986 Contract for which Antonick is owed royalties.

See Antonick v. Elec. Arts Inc. (N.D.Cal. Jan. 22, 2014, No. C 11-1543 CRB) 2014 U.S.Dist.LEXIS 7924, at *17-19.)

In another case, a court noted:

Summary judgment for a defendant accused of copyright infringement is appropriate when the plaintiff fails to show a genuine issue regarding whether the ideas and expressive elements of the works are substantially similar. Frybarger v. International Business Machs. Corp., 812 F.2d 525, 528 (9th Cir. 1987). This is so because the plaintiff bears the burden of proving that the allegedly infringing work is substantially similar to the work protected by plaintiff's copyright. Id. A "genuine issue" exists when the plaintiff provides indicia of "a sufficient disagreement" concerning the substantial similarity of two works "to require submission to a jury." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986); see id. at 248-52.  See Brown Bag Software v. Symantec Corp. (9th Cir. 1992) 960 F.2d 1465, 1472.)

Contact a California Copyright Law Firm

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