by Aaron Lichter*
Is the test for copyright infringement necessarily vague and ad hoc, as Judge Learned Hand once said, or can the test be made rigorous? Based on his experience in the 2016 Cardozo BMI Moot Court Competition, Aaron Lichter (’17) explores this question by discussing the various copyright infringement tests that courts use to determine liability. Specifically, the “total concept and feel” test assesses copyright infringement based on contextual, abstract concepts rather than specific details such as plot elements or characters. The Contribution concludes that, despite its ambiguity, the “total concept and feel” test provides protections that outweigh potential problems with its vagueness.
Copyright infringement claims ordinarily present extremely close questions of fact.2 Indeed, as Judge Learned Hand once stated, “[t]he test for infringement of a copyright is of necessity vague,” and any decisions “must therefore inevitably be ad hoc.”3 This article discusses the tests courts use when considering questions of copyright infringement, and identifies some aspects of these tests that would benefit from some clarification. First, I discuss the framework of copyright law and the tests courts have developed to determine issues of copyright infringement. Second, I focus on the “total concept and feel test,” and analyze differences in how the test has been applied to various types of creative works. I conclude by arguing that courts should clarify how the “total concept and feel” test should be applied when considering works of complex fiction.
In order to establish that copyright infringement has occurred, a plaintiff must demonstrate that: (1) it has ownership of a valid copyright; and (2) the defendant copied “constituent elements of the work that are original.”4 Under the Copyright Act of 1976, the existence of a valid copyright is presumed once the fixation requirement is met.5 “Originality requires only that the author make the selection or arrangement [of elements] independently . . . and that it display some minimal level of creativity.”6
To prove infringement of the original work, a plaintiff must provide evidence either that the defendant directly copied protectable material, or that the defendant created a work with elements that are “substantially similar” to protectable material.7 For copyright infringement to be actionable, the unauthorized use of a copyrighted work must rise above a de minimis threshold.8
The Second and Ninth Circuits, which hear a substantial proportion of all copyright infringement cases, have adopted analogous tests for determining when two works are substantially similar. The Second Circuit has adopted the “ordinary observer test,” which asks “whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.”9 In instances where a work contains both protectable and non-protectable elements, the Second Circuit applies the “discerning ordinary observer test,”10 which requires the court to “attempt to extract the unprotectable elements from [its] consideration and ask whether the protectable elements, standing alone are substantially similar.”11 The court must also consider the “total concept and feel” of the two works.12
The Ninth Circuit uses a two-part analysis, consisting of an “extrinsic test and an intrinsic test” to determine whether two works are substantially similar.13 The extrinsic test objectively compares “specific expressive elements” of the works, such as their dialogue and characters.14 The intrinsic test is a subjective evaluation of whether an “ordinary, reasonable audience” would conclude that two works have a substantially similar total concept and feel.15
The “total concept and feel” test exists as a means for courts to ensure that works that are primarily compilations of unprotectable elements are not found to be infringing.16 This aligns with the Supreme Court’s statement in Feist Publications, where the Court held that such compilations can be protected by copyright if the “selection, coordination, and arrangement [of unprotectable elements] are sufficiently original to merit protection.”17
The test’s application and overall importance depend on the nature of the works being examined. For works of fiction, the “total concept and feel” analysis requires that courts scrutinize works for similarities in how they express more abstract concepts, such as their “structure, mood, details, and characterization,” rather than specific plot elements or characters.18 The test is far more important when comparing works that are primarily created for children, since children’s works are often less complex than those geared towards adults.19 For creative works outside the literary realm, such as textiles, courts look at whether the works being compared used the same unprotectable elements so similarly as to constitute infringement.20
Despite the somewhat amorphous nature of the “total concept and feel” test, it serves a very important purpose in protecting against copyright infringement. As the Second Circuit noted in Tufenkian, “infringement analysis is not simply a matter of ascertaining similarity between components viewed in isolation”; if this were the case, then an appropriating party could use the same underlying unprotectable elements in an almost identical manner, but would avoid running afoul of the copyright laws simply by avoiding directly copying more than a de minimis portion of the original’s protectable elements.21 The “total concept and feel” test prevents this outcome.
The biggest trouble with the “total concept and feel” test comes from figuring out how to apply it to works of fiction. Unlike creative works such as textiles, which consist primarily of arrangements of unprotectable elements, even the most banal work of fiction will contain some original, protectable elements. Would it be possible for the total concept and feel of two works of complex fiction to be similar enough to amount to infringement, even when they otherwise do not share any substantially similar protectable elements? Neither the Second nor Ninth Circuits have clarified this issue. Perhaps there is an extremely low probability of this issue ever arising: if two complex works of fiction shared the same total concept and feel, it also would be likely that they share some protectable elements.
Despite the low probability of the issue ever arising, courts should clarify the role that the “total concept and feel” test should play when considering two works of complex fiction. Case law regarding children’s books supply the most logical extension: courts could treat the “total concept and feel” test as one factor in its infringement analysis of adult works of fiction, and simply place less emphasis on it than when considering children’s literature.22 This approach would reflect the ad hoc nature of copyright decisions. Alternatively, courts could limit using the “total concept and feel” test to specific types of works where its use is particularly appropriate, such as textiles and children’s books. However, this would undermine copyright protections—as described above, the “total concept and feel” test provides a form of protection that a comparison of individual elements cannot. Overall, the protective power of the “total concept and feel” test outweighs some concerns regarding its relative ambiguity.
* The following article reflects my experience in the 2016 Cardozo BMI Moot Court Competition. The competition’s factual background concerned a fan of the Charlie Trotter series (a fictionalized Harry Potter) who created a screenplay for a movie that made use of many elements similar to elements from Charlie Trotter, and that directly referenced a protectable element from Charlie Trotter. This year’s problem presented the question of whether the defendant’s fan-fiction film infringed the plaintiffs’ copyright in Charlie Trotter by misappropriating protectable elements. As a part of the inquiry, I examined whether the fact pattern supported an inference of copyright infringement under well-established tests for “substantial similarity,” and the less often applied “total concept and feel” test. A lack of highly relevant case law made it difficult to say for certain whether the “total concept and feel” test did or did not support that inference.
2. Peter F. Gaito Architecture LLC v. Simone Dev. Corp., 602 F.3d 57, 63 (2d Cir. 2010).
3. Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960).
4. Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).
5. Matthew Bender & Co. v. West Pub. Co., 158 F.3d 693, 702 (2d Cir. 1998).
6. Feist, 499 U.S. at 358.
7. See Funky Films, Inc. v. Time Warner Entm’t Co., 462 F.3d 1072, 1076 (9th Cir. 2006); Walker v. Time Life Films, Inc., 784 F.2d 44, 48 (2d Cir. 1986).
8. E.g., Gordon v. Nextel Commc’ns., 345 F.3d 922, 924 (6th Cir. 2003); Newton v. Diamond, 388 F.3d 1189, 1192–93 (9th Cir. 2003); Ringgold v. Black Entm’t Television, 126 F.3d 70, 74–75 (2d Cir. 1997).
9. Warner Bros. Inc. v. American Broadcasting Companies, Inc., 654 F.2d 204, 208 (2d Cir. 1981) (internal quotation marks omitted).
10. Hogan v. DC Comics, 48 F. Supp. 2d 298, 309 (S.D.N.Y. 1999).
11. Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir. 1995) (emphasis added).
12. Id. at 1003.
13. Cavalier v. Random House, Inc., 297 F.3d 815, 822 (9th Cir. 2002).
15. Kouf v. Walt Disney Pictures & Television, 16 F.3d 1042, 1045 (9th Cir. 1994).
16. Knitwaves, 71 F.3d at 1003.
17. Feist Publ’ns, 499 U.S. at 358.
18. Allen v. Scholastic, Inc., 739 F. Supp. 2d 642, 656–58 (S.D.N.Y. 2011) (contrasting “structure, mood, details, and characterization” of children’s book and Harry Potter and the Goblet of Fire). See also Mena v. Fox Entm’t Group, No. 11 Civ. 5501 BSJ RLE, 2012 WL 4741389, at *14-15 (S.D.N.Y. Sept. 29, 2012) (examining “selection, coordination, and arrangement of scenes and elements”). For an example of application of the “total concept and feel” test in the Ninth Circuit under its extrinsic test, see Cavalier, 297 F.3d at 824–25.
19. Williams v. Crichton, 84 F.3d 581, 589 (2d Cir. 1996) (comparing children’s book about a dinosaur amusement park to Jurassic Park).
20. E.g., Tufenkian Imp./Exp. Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127, 133–34 (2d Cir. 2003) (Persian rugs); Knitwaves, 71 F.3d at 1004 (sweaters). See also Boisson v. Banian, Ltd., 273 F.3d 262, 273–74 (2d Cir. 2001) (finding infringement on the basis of protectable and highly similar combinations of patterns, colors, and letters in two alphabet rugs).
21. Tufenkian, 338 F.3d at 133, 135.
22. See Williams, 84 F.3d at 589.