Attorney Steve® Copyright Essentials - Affirmative Defenses - Independent Creation 

Introduction

In this blog we discuss the affirmative defense of "independent creation" in the context of copyright law.  When one party accuses another of infringing on copyright with a "substantially similar" song, photograph, art work, or other creative content, the Defendant (or party being accused of infringement) may need to step forward an assert the defense that they independently created their own work, and thus, did not engage in any copying of the Plaintiff's work.  If this can be proven, there is no copyright infringement.

9th Circuit Case Law

In one case from the 9th Circuit Court of Appeal involving sports manufacturer Nike (RentMeester v. Nike), the Court noted:

"Although our cases have not always made this point explicit, the second element has two distinct components: “copying” and “unlawful appropriation.” Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corp., 562 F.2d 1157, 1164–65 (9th Cir. 1977); Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946); 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.01[B] (2017). Proof of copying by the defendant is necessary because independent creation is a complete defense to copyright infringement. No matter how similar the plaintiff's and the defendant's works are, if the defendant created his independently, without knowledge of or exposure to the plaintiff's work, the defendant is not liable for infringement. See Feist, 499 U.S. at 345–46. 

In another case Three Boys Music Corp. v. Bolton, 212 F.3d 477, 486 (9th Cir. 2000) the Court noted:

Bolton and Goldmark also contend that their witnesses rebutted the Isley Brothers' prima facie case of copyright infringement with evidence of independent creation. By establishing reasonable access and substantial similarity, a copyright plaintiff creates a presumption of copying. The burden shifts to the defendant to rebut that presumption through proof of independent creation. See Granite Music Corp. v. United Artists Corp.,532 F.2d 718, 721 (9th Cir.1976).  The appellants' case of independent creation hinges on three factors: the work tape demonstrating how Bolton and Goldmark created their song, Bolton and Goldmark's history of songwriting, and testimony that their arranger, Walter Afanasieff, contributed two of five unprotectible elements that they allegedly copied. The jury, however, heard the testimony of Bolton, Goldmark, Afanasieff, and Ricigliano about independent creation. The work tape revealed evidence that Bolton may have subconsciously copied a song that he believed to be written by Marvin Gaye. Bolton and Goldmark's history of songwriting presents no direct evidence about this case. And Afanasieff's contributions to Bolton and Goldmark's song were described by the appellants' own expert as "very common." Once again, we refuse to disturb the jury's determination about independent creation. The substantial evidence of copying based on access and substantial similarity was such that a reasonable juror could reject this defense.

In the Ganite case cited above the Court noted:

We recognize that a statutory copyright does not give a monopoly over an idea or a musical phrase, but merely protects against the unlawful reproduction of an original work. A. Weil, Copyright Law 383 (1917). A composer's copyright is an absolute right to prevent others from copying his work. Fred Fisher, Inc. v. Dillingham, 298 F. 145, 148 (S.D.N.Y.1924).

This protection is subject to definite limitations. As stated by Learned Hand in Fisher, at 147, "[T]he law imposes no prohibition upon those who, without copying, independently arrive at the precise combination of words or notes which have been copyrighted." Stated another way, "If A produces identically the same work as B, by independent thought, in good faith, without hearing, or seeing, B's work, both A and B would be entitled to individual copyrights in their individual works." Weil at 384.

Thus a copyright differs from a patent. Patents are monopolies of the contents of a work as well as the right to reproduce the work itself — one may therefore infringe a patent by innocent and independent reproduction. To the contrary, an "independent reproduction of a copyrighted musical work is not infringement; nothing short of plagiarism will serve." Arnstein v. Marks Corp., 82 F.2d 275 (2 Cir. 1936).

Therefore, a copyright infringement action depends upon whether the defendant copied from the plaintiff, or whether he independently created his composition. Any evidence pertaining to the manner in which the defendant created his composition is logically relevant: his training, the subject matter of the art, his access to other works or to the plaintiff's composition.

Evidence of similar musical phrases appearing in prior works is also logically relevant to rebut the inference of copying. Such evidence demonstrates that the musical language was of such ordinary and common occurrence that the probability of independent, coincidental production was great.

While this court has not found any cases which have expressly discussed the relevancy or admissibility of prior works in these circumstances, the law is replete with cases which assumed, sub silentio, that prior works were relevant. One example is the case of Stevenson v. Harris, 238 F. 432 (S.D.N.Y.1917), which involved a plaintiff's novel and a defendant's play. The two works had many common elements. Both stories take place in Europe at the beginning of World War I and involve a female spy, a stolen passport, an American man and woman, an inn, the use of shadows on a screen, and an unexpected marriage.

The court held:

"Of necessity, certain kinds of incidents must be found in many books and plays, and originality, when dealing with incidents familiar in life or fiction, lies in the association and grouping of those incidents in such a manner that the work under consideration presents a new conception of a novel arrangement of events.

"It will never do to hold that, because an incident here or there is used in the later production which was used . . in the former copyrighted book or play, therefore the later production infringes the copyright of the former." Id.,at 436.

  See Granite Music Corp. v. United Artists Corp., 532 F. 2d 718 - Court of Appeals, 9th Circuit 1976. 

Another example of lack of substantial similarity lacking (the dueling banana art case)

Even if Plaintiff could establish access, he cannot demonstrate that the parties' works are substantially similar as to any original, protectable elements in Banana and Orange. In the Eleventh Circuit, Courts use the abstraction-filtration-comparison test to determine substantial similarity. See Compulife Software, Inc. v. Newman, 959 F.3d 1288, 1302–03 (11th Cir. 2020) Thus, “[b]efore comparing two works to determine if they display the required substantial similarity, a court must eliminate from comparison the unprotectable elements of the copyrighted work.” Id. “This process…is necessary because even substantial similarity between a copyrighted work's unprotectable elements and a purportedly infringing work isn't actionable, regardless of how many unprotectable elements are copied or how important they may be.” Id. Courts must determine “whether a reasonable [fact-finder] could find the [works at issue] substantially similar at the level of protected expression.” ECF 56 at p. 5 (quoting Oravec v. Sunny Isles Luxury Ventures, L.C., 527 F.3d 1218, 1224, n.5 (11th Cir. 2008)). In applying this test, the fact-finder “must filter out the underlying idea itself, as well as other unprotectable elements, such as “process, facts, public domain information, merger material, [and] scenes a faire material…” Id. at p. 6 (citing Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1545 (11th Cir. 1996)). The court “then compares the ‘remaining kernels of creative expression' in the alleged infringed work to the alleged infringing work.” Id. (citing Newman, 959 F.3d at 1303–04).5 If the works are similar only as to unprotectable material, plaintiff's copyright infringement claim fails. (This “abstraction-filtration-comparison” “comports with Feist's directive to view a copyrighted work in its component pieces and strip away unprotectable elements, ultimately comparing only the work's protected elements to the alleged infringing work”) (citations omitted). 

"Thin" Copyright Discussed

Before conducting the required substantial similarity analysis, it is important to reiterate that any copyright protection for Banana and Orange does not extend to (1) the idea of affixing a banana to a vertical surface using duct tape; or (2) a banana (real or fabricated) or duct tape – the two primary elements in Comedian. See ECF 56 at pp. 9–10 (“Morford cannot claim a copyright in the idea of affixing a banana to a vertical plane using duct tape. Nor can Morford claim a copyright in bananas or duct tape”) (quoting Folkens v. Wyland Worldwide, LLC, 882 F.3d 768, 775 (9th Cir. 2018) (no copyright in “idea[s] first expressed in nature,” which are “within the common heritage of humankind”) and Norris Indus., Inc. v. Int'l Tel. & Tel. Corp., 696 F.2d 918, 923-24 (no copyright protection to “functional components of useful articles”)). Accordingly, any copyright protection Plaintiff has in Banana and Orange may only cover the work as a compilation. Such works have ‘thin' copyright protection, extending only to the “specific selection, coordination or arrangement” of otherwise unprotectable elements. Intervest Const., Inc. v. Canterbury Estate Homes, Inc., 554 F.3d 914, 919 (11th Cir. 2008). A “thin copyright” “denotes that a work has few protectable elements and necessarily requires that the few protectable elements that exist must share a substantial similarity to the alleged infringing work.” (ECF 56 at p. 4 n.2) (citing Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. at 349 (“given the abundant non-protectable elements in a factual compilation, such compilations ‘inevitably' enjoy a ‘thin' copyright”); see also Home Design Servs., Inc. v. Turner Heritage Homes Inc., 825 F.3d 1314, 1330 (11th Cir. 2016) (with “thin” copyright, “substantial similarity” must exist as to original content only, “and the amount of protectable expression relative to total content in a compilation is less than in more original type of work”).

Independent Creation Case Law

Even if Plaintiff could establish access and substantial similarity, such proof “raises only a presumption of copying which may be rebutted by…evidence of independent creation.” Watt v. Butler, 457 F. App'x 856, 861 (11th Cir. 2012) (citing Calhoun v. Lillenas Publishing, 298 F.3d 1228, 1233 (11th Cir. 2002)). In Calhoun, although the Court found that the two compositions at issue were “practically identical,” 298 F.3d at 1232, it held that “in the realm of copyright, identical expression does not necessarily constitute infringement” and that defendant “can fully negate any claim of infringement if he can prove…independent creation.” Id. at 1232–33 (quoting Benson v. CocaCola Co., 795 F.2d 973, 975 (11th Cir. 1976) (en banc) (“testimony [of defendants] constitutes uncontradicted evidence of independent creation, fully negating any claim of infringement”)). The Calhoun Court dismissed the case on summary judgment, finding that defendant offered uncontroverted evidence of independent creation through affidavits and that defendant did not use any pre-existing material as a basis for the song. Id. at 1233.10 See also Watt v. Butler, 457 F. App's 856, 861 (11th Cir. 2012) (defendant's testimony of independent creation was plausible and negated any presumption of infringement resulting from access and substantial similarity warranting summary judgment); Simmons v. Western Pub. Co., 834 F. Supp. 393, 397 (N.D. Ga. 1993) (summary judgment granted where similarity of board games was commonplace and did not rebut defendant's evidence of independent creation).

Contact a copyright infringement attorney

We can help Plaintiff and Defendants in music infringement, photographs, videos, fonts, jewelry, fabric design, software and other copyrighted content cases.  We can analyze the viability of a claim for independent creation. Call us at (877) 276-5084 or fill out the contact form.