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What does a defendant in a copyright case have to show to succeed in the independent creation defense?

Posted by Steve Vondran | May 26, 2022

Attorney Steve® Copyright Law Essentials - Defenses to Infringement - Independent Creation.  This can apply to Etsy art, NFTs, Logos, Music, Jewelry, Architect plans, Fabric design, and all other kinds of creative copyrighted works

fabric designs

 

Introduction

As a copyright defense lawyers, we are often asked to defend a client accused of copyright infringement. There are a limited number of defenses to copyright infringement, but one of them is known as the "independent creation" defense. If a Defendant can prove they independently created the work in question, they may be able to avoid liability. This defense can be difficult to establish, as it requires proving that Defendant had no access to Plaintiff's work. However, if you can successfully prove that your client independently created the work, it can be a powerful defense against a copyright infringement claim.  Here is more information including some case law to review.

Legal Issue:  What does a defendant in a copyright case have to show to succeed in the independent creation defense?

Facts

Plaintiff is an artist who has sued an Etsy store owner claiming that their canvas designs are substantially similar to Plaintiff's copyrighted designs.  The Defendants assert that they had no access to Plaintiff's work and instead independently created the design and claim this is a valid defense to copyright infringement.

Conclusion

Actual copying, or plagiarism, is a required element of copyright infringement. Independent creation negates copying and therefore is a defense to copyright infringement.  (Skidmore v. Led Zeppelin, 905 F.3d 1116 (9th Cir. 2018), Granite Music Corp. v. United Artists Corp., 532 F.2d 718 (9th Cir. 1976), Rentmeester v. Nike, Inc., 883 F.3d 1111 (9th Cir. 2018), Unicolors, Inc. v. Urban Outfitters, Inc., 853 F.3d 980 (9th Cir. 2017), Rottlund Co. v. Pinnacle Corp., 452 F.3d 726 (8th Cir. 2006), Roth Greeting Cards v. United Card Co., 429 F.2d 1106 (9th Cir. 1970))

To establish an independent creation defense to a copyright infringement claim, a defendant must show that any similarity or resemblance to (or duplication of) the copyrighted work is coincidental, rather than due to copying. Independent creation means that the defendant's work was created innocently, or in good faith, by independent thought. In other words, the work was created without the defendant having knowledge of the copyrighted work, having been exposed to the copyrighted work, having had access to the copyrighted work, or having seen or heard the copyrighted work.  (Granite Music Corp. v. United Artists Corp., 532 F.2d 718 (9th Cir. 1976), Roth Greeting Cards v. United Card Co., 429 F.2d 1106 (9th Cir. 1970), Baxter v. MCA, Inc., 812 F.2d 421 (9th Cir. 1987), Skidmore v. Led Zeppelin, 905 F.3d 1116 (9th Cir. 2018), Rentmeester v. Nike, Inc., 883 F.3d 1111 (9th Cir. 2018))

In addition to considering the defendant's access to the copyrighted work, courts may consider the defendant's training and the subject matter of their art, in order to assess whether an independent creation defense applies. (Granite Music Corp. v. United Artists Corp., 532 F.2d 718 (9th Cir. 1976))

Courts have indicated that even if a plaintiff shows the defendant had access to the copyrighted work, and that the defendant's work shares substantial similarities to the copyrighted work, the defendant can rebut the presumption of copying by proving independent creation. (Rentmeester v. Nike, Inc., 883 F.3d 1111 (9th Cir. 2018), Rottlund Co. v. Pinnacle Corp., 452 F.3d 726 (8th Cir. 2006))

However, in Unicolors, Inc. v. Urban Outfitters, Inc., 853 F.3d 980 (9th Cir. 2017) the Ninth Circuit held that if similarities between a copyrighted work and a defendant's work are so similar that they are nearly identical, an independent creation defense is precluded.

In contrast, in Rentmeester v. Nike, Inc., 883 F.3d 1111 (9th Cir. 2018), the Ninth Circuit held that no matter how similar two works are, there is no copyright infringement if the defendant created their work independently.

In Roth Greeting Cards v. United Card Co., 429 F.2d 1106 (9th Cir. 1970), the Ninth Circuit found there was copyright infringement when one company's greeting cards were remarkably similar to the greeting cards of another company, and the similarities were due to actual copying.

In Reece v. Island Treasures Art Gallery, Inc., a case involving artwork, the United States District Court for the District of Hawaii found no copyright infringement because the defendant's stained glass artwork was not substantially similar to the plaintiff's copyrighted photograph.

Copyright Case Law

In Granite Music Corp. v. United Artists Corp., 532 F.2d 718 (9th Cir. 1976) ("Granite"), the United States Court of Appeals for the Ninth Circuit outlined the limitations of copyright protections, explaining that copyright only protects against actual copying, not coincidental resemblances between works created independently. There is no copyright infringement if a work is not copied; i.e., if it is created in good faith and its creator has not seen or otherwise observed the copyrighted work (at 720): 

We recognize that 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.

The Ninth Circuit explained that copyright infringement requires plagiarism (at 720):

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).

Factors a Court may consider

The Ninth Circuit indicated in Granite that the following evidence is relevant to the determination of whether a defendant's work is not a copy, but an independent creation (at 720):  

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.

The United States Court of Appeals for the Ninth Circuit outlined the elements of a copyright infringement claim in Baxter v. MCA, Inc., 812 F.2d 421 (9th Cir. 1987). First, the plaintiff must prove ownership of a copyright. Next, they must prove the defendant copied copyrighted content. Copying can be established by showing that the defendant had access to the copyrighted work and that there are substantial similarities between the copyrighted work and the work of the defendant. Alternatively, if the two works are strikingly similar, copying can be established even without a showing that the defendant had access (at 423-424): 

To establish a successful claim for copyright infringement, the plaintiff must prove:

(1) ownership of the copyright

and

(2) "copying" of protectible expression by the defendant. See Sid & Marty Krofft Television Productions, Inc., v. McDonald's Corp., 562 F.2d 1157, 1162 (9th Cir.1977) (citing Reyher v. Children's Television Workshop, 533 F.2d 87, 90 (2d Cir.1976), cert. denied, 429 U.S. 980, 97 S.Ct. 492, 50 L.Ed.2d 588 (1976); Universal Athletic Sales Co. v. Salkeld, 511 F.2d 904, 907 (3d Cir.1975), cert. denied, 423 U.S. 863, 96 S.Ct. 122, 46 L.Ed.2d 92 (1975); 2 M. Nimmer, Nimmer on Copyright Sec. 141 at 610-611 (1979) [hereinafter cited as "Nimmer"]. Because direct evidence of copying is rarely available, a plaintiff may establish copying by circumstantial evidence of: (1) defendant's access to the copyrighted work prior to the creation of defendant's work, and (2) substantial similarity of both general ideas and expression between the copyrighted work and the defendant's work. See Krofft, 562 F.2d at 1162. Absent evidence of access, a "striking similarity" between the works may give rise to a permissible inference of copying.

Selle v. Gibb, 741 F.2d 896, 901 (7th Cir.1984); Shultz v. Holmes, 264 F.2d 942 (9th Cir.1959); Nimmer Sec. 13.02[B] at 13-14 (1986). Baxter's ownership of the copyright to Joy is undisputed, and the defendants conceded access for the purpose of their summary judgment motion. Defendants further assumed for purposes of their motion that there was the substantial similarity of ideas between the two compositions. Therefore, the only question before us is whether the district court's finding, based on its ear, that substantial similarity of expression was "totally lacking and could not be submitted to a jury," can sustain a grant of summary judgment to the defendants.

In Skidmore v. Led Zeppelin, 905 F.3d 1116 (9th Cir. 2018), the United States Court of Appeals for the Ninth Circuit held that a work is not copied if it is independently created; therefore, independent creation is a complete defense to copyright infringement (at 1125):  

Whether Defendants copied protected expression contains two separate and distinct components: "copying" and "unlawful appropriation." Rentmeester, 883 F.3d at 1117. A plaintiff must be able to demonstrate that a defendant copied his work, as independent creation is a complete defense to copyright infringement. See FeistPubl'ns, 499 U.S. at 345–46, 111 S.Ct. 1282; see also Rentmeester, 883 F.3d at 1117. In cases such as this one where there is no direct evidence of copying, the plaintiff "an attempt to prove it circumstantially by showing that the defendant had access to the plaintiff's work and that the two works share similarities probative of copying." Rentmeester, 883 F.3d at 1117. "When a high degree of access is shown," a lower amount of similarity is needed to prove copying. Rice v. Fox Broadcasting Co., 330 F.3d 1170, 1178 (9th Cir. 2003) (citation omitted). "To prove copying, the similarities between the two works need not be extensive, and they need not involve protected elements of the plaintiff's work. They just need to be similarities one would not expect to arise if the two works had been created independently." Rentmeester, 883 F.3d at 1117.

Unlawful Appropriation [Extrinsic and Intrinsic Tests]

To prove "unlawful appropriation" a higher showing of substantial similarity is needed. Id. 

The works must share substantial similarities and those similarities must involve parts of the plaintiff's work that are original and therefore protected by copyright. Id. To determine whether an allegedly infringing work is substantially similar to the original work, we employ the extrinsic and intrinsic tests. The extrinsic test is an objective comparison of protected areas of work. This is accomplished by "breaking the works down into their constituent elements and comparing those elements" to determine whether they are substantially similar. Swirsky v. Carey, 376 F.3d 841, 845 (9th Cir. 2004).

Only elements that are protected by copyright are compared under the extrinsic test. Id. 

Intrinsic Test

The intrinsic test is concerned with a subjective comparison of the works, as it asks "whether the ordinary, reasonable person would find the total concept and feel of the works to be substantially similar.Three Boys Music Corp. v. Bolton, 212 F.3d 477, 485 (9th Cir. 2000) (citation omitted).

In Rentmeester v. Nike, Inc., 883 F.3d 1111 (9th Cir. 2018) ("Rentmeester"), the United States Court of Appeals for the Ninth Circuit explained that a plaintiff can show that copying occurred through direct evidence or circumstantial evidence of access and similarities (at 1117): 

When the plaintiff lacks direct evidence of copying, he can attempt to prove it circumstantially by showing that the defendant had access to the plaintiff's work and that the two works share similarities probative of copying. See Baxter v. MCA, Inc. , 812 F.2d 421, 423 (9th Cir. 1987) ; 4 Nimmer on Copyright § 13.01[B]. Such proof creates a presumption of copying, which the defendant can then attempt to rebut by proving independent creation. Three Boys Music Corp. v. Bolton, 212 F.3d 477, 486 (9th Cir. 2000).

In Rentmeester, the Ninth Circuit emphasized that no matter how similar work is to copyrighted material, there is no infringement if the work is created independently, i.e. without knowledge of or exposure to the copyrighted material (at 1116-1117): 

To state a claim for copyright infringement, Rentmeester must plausibly allege two things: (1) that he owns a valid copyright in his photograph of Jordan, and (2) that Nike copied protected aspects of the photo's expression. See Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991) ; Shaw v. Lindheim, 919 F.2d 1353, 1356 (9th Cir. 1990).

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, 111 S.Ct. 1282. Proof of unlawful appropriation—that is, illicit copying—is necessary because copyright law does not forbid all copying. The Copyright Act provides that copyright protection does not "extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in [the copyrighted] work." 17 U.S.C. § 102(b). Thus, a defendant incurs no liability if he copies only the "ideas" or "concepts" used in the plaintiff's work. To infringe, the defendant must also copy enough of the plaintiff's expression of those ideas or concepts to render the two works "substantially similar." Mattel, Inc. v. MGA Entertainment, Inc., 616 F.3d 904, 913–14 (9th Cir. 2010).

When the plaintiff lacks direct evidence of copying, he can attempt to prove it circumstantially by showing that the defendant had access to the plaintiff's work and that the two works share similarities probative of copying. See Baxter v. MCA, Inc. , 812 F.2d 421, 423 (9th Cir. 1987) ; 4 Nimmer on Copyright § 13.01[B]. Such proof creates a presumption of copying, which the defendant can then attempt to rebut by proving independent creation. Three Boys Music Corp. v. Bolton, 212 F.3d 477, 486 (9th Cir. 2000).

Unfortunately, we have used the same term—"substantial similarity"—to describe both the degree of similarity relevant to proof of copying and the degree of similarity necessary to establish unlawful appropriation. The term means different things in those two contexts. To prove copying, the similarities between the two works need not be extensive, and they need not involve protected elements of the plaintiff's work. They just need to be similarities one would not expect to arise if the two works had been created independently. Laureyssens v. Idea Group, Inc., 964 F.2d 131, 140 (2d Cir. 1992); 4 Nimmer on Copyright § 13.01[B]. To prove unlawful appropriation, on the other hand, the similarities between the two works must be "substantial" and they must involve protected elements of the plaintiff's work. Laureyssens, 964 F.2d at 140.

Unicolors Lawsuit Defense

However, in Unicolors, Inc. v. Urban Outfitters, Inc., 853 F.3d 980 (9th Cir. 2017) the United States Court of Appeals for the Ninth Circuit held that an independent creation defense is precluded when the allegedly copied work is overwhelmingly similar to the copyrighted work. In this case, the Court found that summary judgment for the plaintiff was appropriate because the works in question were so similar that they were nearly identical (at 987): 

We conclude that a district court may grant summary judgment for plaintiffs on the issue of copying when the works are so overwhelmingly similar that the possibility of independent creation is precluded. The works at issue in this case meet this standard. The objective similarities between the works are stark: the shapes, motifs, arrangements, spacing, and colors of the images in each design are nearly identical. Because of the decisive objective overlap between the works, no reasonable juror could conclude under the intrinsic test that the works are not substantially similar in total concept and feel. Therefore, the district court properly granted summary judgment.

In a case from the United States Court of Appeals for the Eighth Circuit, Rottlund Co. v. Pinnacle Corp., 452 F.3d 726 (8th Cir. 2006), the Court explained that after a plaintiff establishes a presumption of copying by showing access and similarity, a defendant can rebut the presumption by showing independent creation. Independent creation means that the defendant created a work without copying, or that the defendant copied something other than the plaintiff's work (at 732): 

To prove direct copying is to disprove independent creation.

Direct evidence of copying is rarely available because it includes evidence such as party admissions, witness accounts of the physical act of copying, and common errors in the works of plaintiffs and the defendants. See, e.g., Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119, 123 (2nd Cir. 1994) (defendant's former employee testified that she heard the president say that he was sending the plaintiff's dolls to a factory in China for copying and that the president bragged that the finished product was indistinguishable from the plaintiff's doll); Rogers v. Koons, 960 F.2d 301, 307 (2nd Cir. 1992) (defendant gave a copy of plaintiff's photograph to Italian artisans and instructed them to copy it); Koontz v. Jaffarian, 617 F.Supp. 1108, 1113-15 (E.D.Va. 1985), aff'd, 787 F.2d 906 (4th Cir. 1986) (defendant's former employee testified that the defendant made a page by page display of the plaintiff's electrical estimating labor manual, making some modifications and including the same errors). Independent creation, on the other hand, can rebut a presumption of copying after the copyright plaintiff establishes access and substantial similarity. Taylor Corp. v. Four Seasons Greetings, LLC, 403 F.3d 958, 967 (8th Cir. 2005). Independent creation exists when a defendant created its own work without copying anything or if it copied something other than the plaintiff's material. See Susan Wakeen Doll Co. v. Ashton-Drake Galleries, 272 F.3d 441, 450 (7th Cir. 2001).

In Roth Greeting Cards v. United Card Co., 429 F.2d 1106 (9th Cir. 1970) ("Roth"), the United States Court of Appeals for the Ninth Circuit outlined two elements of copyright infringement: that there is a substantial similarity between the two works, and that the similarity was caused by the defendant copying the copyrighted work. Coincidental duplication of the copyrighted material is not protected, only actual copying (at 1110): 

To constitute an infringement under the Act there must be a substantial similarity between the infringing work and the work copyrighted, and that similarity must have been caused by the defendant's having copied the copyright holder's creation. The protection is thus against copying — not against any possible infringement caused when an independently created work coincidentally duplicates copyrighted material. Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 54 (2d Cir. 1936).

The Court in Roth went on to examine the similarities between the two sets of greeting cards at issue in the case. The Court found that the works were very similar in concept, feel, mood, and message, noting that the lettering and the arrangement of words on each set of greeting cards was similar. The Court held that the similarities were remarkable and that the cards would appear similar even to a casual observer:

It appears to us that in total concept and feel the cards of United are the same as the copyrighted cards of Roth. With the possible exception of one United card (Exhibit 6), the characters depicted in the artwork, the mood they portrayed, the combination of artwork conveying a particular mood with a particular message, and the arrangement of the words on the greeting card are substantially the same as in Roth's cards. In several instances the lettering is also very similar.

It is true, as the trial court found, that each of United's cards employed art work somewhat different from that used in the corresponding Roth cards. However, "The test of infringement is whether the work is recognizable by an ordinary observer as having been taken from the copyrighted source." White-Smith Music Pub. Co. v. Apollo Company, 209 U.S. 1, 17, 28 S.Ct. 319, 323, 52 L.Ed. 655 (1907), Bradbury v. Columbia Broadcasting System, Inc., 287 F.2d 478, 485 (9th Cir. 1961).

The remarkable similarity between the Roth and United cards in issue (with the possible exception of exhibits 5 and 6) is apparent to even a casual observer. For example, one Roth card (exhibit 9) has, on its front, a colored drawing of a cute moppet suppressing a smile and, on the inside, the words "i wuv you." With the exception of minor variations in color and style, the defendant's card (exhibit 10) is identical. Likewise, Roth's card entitled "I miss you already," depicts a forlorn boy sitting on a curb weeping, with an inside message reading "* * * and You Haven't even Left * * *" (exhibit 7), is closely paralleled by United's card with the same caption, showing a forlorn and weeping man, and with the identical inside message.

The Court then turned to the question of whether the similarities were due to copying. The Court found that the defendant did copy the plaintiff's work, relying on evidence that the defendant had access to the plaintiff's work and that the defendant had a company policy of making greeting cards similar to the greeting cards of other companies:

The question remains whether United did in fact copy the Roth cards. Since direct evidence of copying is rarely available, copying may be established by proof of access and substantial similarity. NIMMER § 141.2 at 613. Although in some circumstances the mere proof of access and substantial similarity will not demand that the trier automatically find copying, the absence of any countervailing evidence of creation independent of the copyrighted source may well render clearly erroneous a finding that there was not copying.

In the present case, there was clear and uncontradicted testimony establishing United's access to the Roth cards. United brought Roth cards to its offices. It sent its employees out to gift shows and retail stores where the Roth cards were on display to observe "what the competition was doing." In addition, there was testimony almost compelling the inference that it was United's practice to look at the cards produced by other companies and make similar cards for sale under the United label. These circumstances, together with the marked similarity between the cards on which this suit was brought, with the possible exception of one card, convince us that each of United's cards in question, considered as combined compositions of art and text, were in fact copied from the Roth cards. It follows that there was infringement. See Detective Comics, Inc. v. Bruns Publications, Inc., 111 F.2d 432 (2d Cir. 1940).

In Reece v. Island Treasures Art Gallery, Inc., 468 F.Supp.2d 1197 (D. Haw. 2006) ("Reece"), the United States District Court for the District of Hawaii assessed whether copying occurred in a case involving an allegation that stained glass artwork copied a copyrighted photograph. The Court ultimately found there was no copying and thus no infringement (at 1202): 

"To prevail on his claim for copyright infringement, Plaintiff must prove ownership of a valid copyright and copying of constituent elements of the work that are original. Twentieth Century Fox Film Corp. v. Entm't Distrib., 429 F.3d 869, 876 (9th Cir. 2005); Three Boys Music Corp. v. Bolton, 212 F.3d 477, 481 (9th Cir. 2000) ("A copyright plaintiff must prove (1) ownership of the copyright; and (2) infringement — that the defendant copied protected elements of the plaintiff's work."); see also 17 U.S.C. § 106 (granting copyright holders the exclusive right to reproduce the copyrighted work, to distribute copies of the work, and to display the work publicly). The court concludes that Plaintiff owns a valid copyright in his photograph "Makanani," but that the stained glass artwork "Nohe" is not a copy of the protected elements of Plaintiffs photograph.

In Reece, the District Court assessed the defendant's access to the plaintiff's photograph, as well as the similarities between the photograph and the stained glass artwork, to determine whether copying occurred. The Court found that the defendant had access to the photograph because it had been widely disseminated. However, the Court found that the stained glass artwork was not substantially similar to the copyrighted photograph, after examining the features of each work in detail (at 1203-1208):

"Proof of access requires `an opportunity to view or to copy plaintiff's work.'" Three Boys Music Corp., 212 F.3d at 482 (quoting Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1172 (9th Cir.1977)). This is often described as providing a "reasonable opportunity" or "reasonable possibility" of viewing the plaintiff's workId. (citing 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright, § 13.02[A], at 13-19 (1999)).

Circumstantial Evidence of Access

Circumstantial evidence of reasonable access is proven in one of two ways:

1) a particular chain of events is established between the plaintiff's work and the defendant's access to that work,

or

(2) the plaintiff's work has been widely disseminated. Three Boys Music Corp., 212 F.3d at 482.

Plaintiff's "Makanani" photograph has been widely disseminated. From 1995 through 2003, the image was used as an insert in koa picture frames sold at all Hawaii Longs, Walmart and Kmart stores. The photograph has been published in several magazines and newspapers in Hawaii. Further, Plaintiff approximates that 10,000 posters and 20,000 greeting cards bearing the image have been sold. The court concludes that there was a "reasonable opportunity" or "reasonable possibility" of viewing the Plaintiffs work. The next step is to determine whether there is a sufficient level of similarity between the copyrightable elements of Plaintiff's photograph and the stained glass "Nohe." See Feist Publ'ns, Inc., 499 U.S. at 361, 111 S.Ct. 1282. A two-part test is used: an extrinsic test and an intrinsic test. See Rice v. Fox Broad. Co., 330 F.3d 1170, 1174 (9th Cir.2003).

At first glance, these works appear to be images of the same likeness, that is, they could each be renditions of the same performance. Each captures a woman performing hula on the beach, kneeling in the sand in the midst of a `like movement, with the right arm outstretched and an open left hand against the face. The women are each adorned in the traditional hula kahiko fashion and their long dark hair flows behind them. And each image presents the woman from the same angle and orientation, from a perspective that is facing the left side of her body, as if in profile. Yet aside from these similarities, the court cannot say that these two images are "substantially similar" under established legal principles.  When the protected elements of Plaintiff's "Makanani," viewed in isolation, are compared to the stained glass artwork, their differences are clear. The angle and perspective of the pieces are very similar (both viewed in profile from the dancer's left side), but the position of the subject dancer relative to her setting is not. The dancer in "Makanani" kneels in the shore-break with waves splashing her knees, facing the ocean, and appears large and tightly focused in relation to the unfocused shoreline distant in the background. On the other hand, the dancer in "Nohe" kneels on the beach, but does not face the ocean — which is directly behind her — and the top portion of the piece is dominated by the smaller island jetting out of the ocean. The angle and position of the dancers' bodies are in the standard Ike position, but even those angles vary slightly. Plaintiff's Exhibit 2 is a transparent black and white overlay of the "Makanani" model, placed over a color copy of "Nohe," which shows that the dancers' outstretched right arms are not perfectly aligned (the top of the "Makanani" right arm is higher and does not appear to bend at the elbow, as "Nohe's" does). Exhibit 2 also shows that the position of the dancer's left foot is different, and that "Makanani's" foot and heel are larger and extend farther along the sand. Exhibit 2 demonstrates the difference in the angle and thickness of the dancer's bent left arm and hand ("Makanani's" left elbow and forearm extend farther to the left and are thicker than "Nohe's," and "Makanani's" left hand appears to be open, exposing the palm, while "Nohe's" left hand appears closed). Finally, although difficult to discern from Exhibit 2, Plaintiff's "Makanani" appears to be bending further backward than "Nohe," with her back in a more arched position.

Plaintiff's timing and decision when to take the photograph is protected, but these elements are not relevant to any similarities found in the stained glass piece. Plaintiff's decision to take the shot at the moment the wave reached the model so that the water can be seen splashing into her knees, is unique to "Makanani." There is no wave crashing up against the dancer in "Nohe;" in fact, the dancer is positioned well away from the ocean. The lighting element is unique to the photograph. The striking contrast between dark and light and the shading of the sepia "Makanani" is absent from the stained glass. For example, the light coloring of the dancer's left arm and hand in "Makanani" is completely absent in "Nohe." Instead, the flesh color in "Nohe" appears to be monotone throughout.

"Makanani's" expression of the traditional hula kahiko dress is different from "Nohe's." Although both wear the traditional kupe`e on wrists and ankles and lei around the head and neck, the leaves in the stained glass are bright green and clearly delineated, in contrast to the photograph's darker, fuller, less clearly delineated leaves. Significantly, although the lei are worn in the same position around the neck and down the bare torso, the lei around "Nohe's" neck is thinner and composed of maile interwoven with colorful `ilima. "Makanani" appears to wear multiple strands of maile around her neck, which are denser and without `ilima interwoven. The meaning of this lei — and therefore its expression — is distinct, because the kinolau represent different ideas.17 With respect to Plaintiff's expression of the traditional lei po`o around the head, "Nohe's" is visible only on the front and top of her head, while "Makanani's" is composed of more leaves and is more clearly visible all around the head. Finally, the cloth worn by the dancers is worn in the same style, but expressed in a different fabric; the model in the photograph wears a printed fabric with designs in contrast to the plain, off-white fabric in the stained glass.

The facial expression of the dancer in "Makanani" — a serious, contemplative appearance — is fully absent from the featureless face in "Nohe." Colucci testified that in all of her work, including "Nohe," she omitted facial features in an effort to represent all Hawaiian hula dancers, not just a single dancer. The remaining similarity is the dancers' dark, windblown hair. Plaintiffs Exhibit 2 clearly shows the differences in the dancers' hair. "Makanani's" is shorter, more bluntly cut and reaches to the waistline. On the other hand, the hair in the stained glass flows all the way to the left edge of the piece and extends beyond the dancer's hips, with clearly outlined strands and pointy, sharp ends.

Upon careful examination, for the purposes of this motion, the court concludes that Plaintiff has failed to demonstrate that the protected elements of Plaintiff's photograph are substantially similar to the stained glass artwork. In the context of "thin" protection, "Makanani" and "Nohe" are not virtually identical. Although the position of the dancer in the `like motion is common to both artworks and both are set on Kailua beach, they cannot be described as substantially or virtually identical. The appearance of the dancers is different; notably, the absence of detail in the stained glass. The dancer represented in "Nohe" has no facial features, hand details, or muscular differentiation, but simply shows the outline of the body. The mountains and ocean dominate the upper half of the stained glass, but not the photograph. The dancers' hairstyles are notably different lengths and shapes. Finally, the sepia tone of the photograph is markedly contrasted by the vibrant colors of the stained glass.

_______________________________________________

Legal Authorities

Granite Music Corp. v. United Artists Corp., 532 F.2d 718 (9th Cir. 1976)

Baxter v. MCA, Inc., 812 F.2d 421 (9th Cir. 1987)

Skidmore v. Led Zeppelin, 905 F.3d 1116 (9th Cir. 2018)

Rentmeester v. Nike, Inc., 883 F.3d 1111 (9th Cir. 2018)

Unicolors, Inc. v. Urban Outfitters, Inc., 853 F.3d 980 (9th Cir. 2017)

Rottlund Co. v. Pinnacle Corp., 452 F.3d 726 (8th Cir. 2006)

Roth Greeting Cards v. United Card Co., 429 F.2d 1106 (9th Cir. 1970)

Reece v. Island Treasures Art Gallery, Inc., 468 F.Supp.2d 1197 (D. Haw. 2006)

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Copyright a Copyright Infringement Defense Law Firm (California and Arizona Federal District Court cases)

Since 2004, we have appeared in over 300 federal copyright actions making us one of the most experienced copyright litigation law firms in the nation.  Call us to discuss your case at (877) 276-5084, or leave us a message through our contact form.

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Steve Vondran

Thank you for viewing our blogs, videos and podcasts. As noted, all information on this website is Attorney Advertising. Decisions to hire an attorney should never be based on advertising alone. Any past results discussed herein do not guarantee or predict any future results. All blogs are written by Steve Vondran, Esq. unless otherwise indicated. Our firm handles a wide variety of intellectual property and entertainment law cases from music and video law, Youtube disputes, DMCA litigation, copyright infringement cases involving software licensing disputes (ex. BSA, SIIA, Siemens, Autodesk, Vero, CNC, VB Conversion and others), torrent internet file-sharing (Strike 3 and Malibu Media), California right of publicity, TV Signal Piracy, and many other types of IP, piracy, technology, and social media disputes. Call us at (877) 276-5084. AZ Bar Lic. #025911 CA. Bar Lic. #232337

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