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Week 7
  • 1 “Probative Similarity” and “Substantial Similarity”

    • 1.1 Three Boys Music v. Bolton (2000)

      1

      212 F.3d 477 (9th Cir. 2000)

      2
      THREE BOYS MUSIC CORPORATION, Plaintiff-Appellee,
      v.
      MICHAEL BOLTON, individually and d/b/a MR. BOLTON'S MUSIC, INC.; ANDREW GOLDMARK; NON-PAREIL MUSIC, INC.; WARNER-CHAPPELL MUSIC LIMITED; WARNER TAMERLANE PUBLISHING CORP.; WB MUSIC CORP.; and SONY MUSIC ENTERTAINMENT, INC., Defendants-Appellants.
      3

      Nos. 97-55150, 97-55154

      4

      UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT

      5

      Argued and Submitted October 5, 1999
      Filed May 9, 2000

      6

      [480] COUNSEL: Robert G. Sugarman, Weil, Gotshal & Manges, New York, New York, for the defendants-appellants.

      7

      Russell J. Frackman, Mitchell, Silberberg & Knupp, Los Angeles, California, for the defendant-appellant.

      8

      Pierce O'Donnell, O'Donnell & Shaeffer, Los Angeles, California, for the plaintiff-appellee.

      9

      John P. McNicholas, McNicholas & McNicholas, Los Angeles, California, for the plaintiff-appellee.

      10

      Louis Petrich, Leopold, Petrich, & Smith, Los Angeles, California, for amici, Recording Industry Association of America, Inc. and Motion Picture Association of America, Inc.

      11

      Appeals from the United States District Court for the Central District of California; Lourdes G. Baird, District Judge, Presiding. D.C. No. CV-92-01177 LGB

      12

      Before: Betty B. Fletcher, Dorothy W. Nelson, and Melvin Brunetti, Circuit

      13

      Judges.

      14
      OPINION
      15

      D.W. NELSON, Circuit Judge:

      16

      In 1994, a jury found that Michael Bolton's 1991 pop hit, "Love Is a Wonderful Thing," infringed on the copyright of a 1964 Isley Brothers' song of the same name. The district court denied Bolton's motion for a new trial and affirmed the jury's award of $5.4 million.

      17

      Bolton, his co-author, Andrew Goldmark, and their record companies ("Sony Music") appeal, arguing that the district court erred in finding that: (1) sufficient evidence supported the jury's finding that the appellants had access to the Isley Brothers' song; (2) sufficient evidence supported the jury's finding that the songs were substantially similar; (3) subject matter jurisdiction existed based on the Isley Brothers registering a complete copy of the song; (4) sufficient evidence supported the jury's attribution of profits to the infringing elements of the song; (5) Sony Music could not deduct its tax liability; and (6) the appellants' motion for a new trial based on newly discovered evidence was unwarranted.

      18

      We affirm.

      19
      I. BACKGROUND
      20

      The Isley Brothers, one of this country's most well-known rhythm and blues groups, have been inducted into the Rock and Roll Hall of Fame. They helped define the soul sound of the 1960s with songs such as "Shout," "Twist and Shout," and "This Old Heart of Mine," and they mastered the funky beats of the 1970s with songs such as "Who's That Lady, " "Fight the Power," and "It's Your Thing." In 1964, the Isley Brothers wrote and recorded "Love is a Wonderful Thing " for United Artists. The Isley Brothers received a copyright for "Love is a Wonderful Thing" from the Register of Copyrights on February 6, 1964. The following year, they switched to the famous Motown label and had three top-100 hits including "This Old Heart of Mine."

      21

      Hoping to benefit from the Isley Brothers' Motown success, United Artists released "Love is a Wonderful Thing" in 1966. The song was not released on an album, only on a 45record as a single. Several industry publications predicted that "Love is a Wonderful Thing" would be a hit -"Cash Box" on August 27, 1966, "Gavin Report" on August 26, 1966, and "Billboard" on September 10, 1966. On September 17, 1966, Billboard listed "Love is a Wonderful Thing" at number 110 in a chart titled "Bubbling Under the Hot 100. " The song was never listed on any other Top 100 charts. In 1991, the Isley Brothers' "Love is a Wonderful Thing" was released [481] on compact disc. See Isley Brothers, The Isley Brothers -The Complete UA Sessions, (EMI 1991).

      22

      Michael Bolton is a singer/songwriter who gained popularity in the late 1980s and early 1990s by reviving the soul sound of the 1960s. Bolton has orchestrated this soul-music revival in part by covering old songs such as Percy Sledge's "When a Man Love a Woman" and Otis Redding's"(Sittin' on the) Dock of the Bay." Bolton also has written his own hit songs. In early 1990, Bolton and Goldmark wrote a song called "Love Is a Wonderful Thing." Bolton released it as a single in April 1991, and as part of Bolton's album,"Time, Love and Tenderness." Bolton's "Love Is a Wonderful Thing" finished 1991 at number 49 on Billboard's year-end pop chart.

      23

      On February 24, 1992, Three Boys Music Corporation filed a copyright infringement action for damages against the appellants under 17 U.S.C. SS 101 et seq. (1988). The parties agreed to a trifurcated trial. On April 25, 1994, in the first phase, the jury determined that the appellants had infringed the Isley Brothers' copyright. At the end of second phase five days later, the jury decided that Bolton's "Love Is a Wonderful Thing" accounted for 28 percent of the profits from "Time, Love and Tenderness." The jury also found that 66 percent of the profits from commercial uses of the song could be attributed to the inclusion of infringing elements. On May 9, 1994, the district court entered judgment in favor of the Isley Brothers based on the first two phases.

      24

      The deadline for post-trial motions was May 25, 1994. On that day, the appellants filed a motion for judgment as a matter of law and a motion for new trial. The district court denied the motions on August 11, 1994. On June 8, 1994, the appellants filed a second motion for new trial based on newly discovered evidence on the issue of copyright ownership. The district court dismissed this motion as untimely.

      25

      On December 5, 1996, the district court adopted the findings of the Special Master's Amended Report about the allocation of damages (third phase). In the final judgment entered against the appellants, the district court ordered Sony Music to pay $4,218,838; Bolton to pay $932,924; Goldmark to pay $220,785; and their music publishing companies to pay $75,900. They timely appealed.

      26
      II. DISCUSSION
      27

      Proof of copyright infringement is often highly circumstantial, particularly in cases involving music. 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 Smith v. Jackson , 84 F.3d 1213, 1218 (9th Cir. 1996) (citation omitted). Absent direct evidence of copying, proof of infringement involves fact-based showings that the defendant had "access" to the plaintiff's work and that the two works are "substantially similar." Id.

      28

      Given the difficulty of proving access and substantial similarity, appellate courts have been reluctant to reverse jury verdicts in music cases. See, e.g., id. at 1221 (affirming a jury's verdict for the defendants in a copyright infringement case involving Michael Jackson and other musicians); Gaste v. Kaiserman, 863 F.2d 1061, 1071 (2d Cir. 1988) (affirming a jury's damages award against a defendant in a music copyright infringement case). Judge Newman's opinion in Gaste nicely articulated the proper role for an appeals court in reviewing a jury verdict:

      29

      The guiding principle in deciding whether to overturn a jury verdict for insufficiency of the evidence is whether the evidence is such that, without weighing the credibility of the witnesses or otherwise considering the weight of the evidence, there can be but one conclusion as to the verdict that reasonable men could have reached.

      30

      Id. at 1066 (internal quotations omitted). In Arnstein v. Porter, the seminal case [482] about musical copyright infringement, Judge Jerome Frank wrote:

      31

      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.

      32

      Arnstein v. Porter, 154 F.2d 464, 469 (2d Cir. 1946).

      33

      As a general matter, the standard for reviewing jury verdicts is whether they are supported by "substantial evidence" -that is, such relevant evidence as reasonable minds might accept as adequate to support a conclusion. See Poppell v. City of San Diego, 149 F.3d 951, 962 (9th Cir. 1998). The credibility of witnesses is an issue for the jury and is generally not subject to appellate review. See Gilbrook v. City of Westminster, 177 F.3d 839, 856 (9th Cir.), cert. denied, 120 S. Ct. 614 (1999).

      34

      We affirm the jury's verdict in this case in light of the standard of review and copyright law's "guiding principles." Although we will address each of the appellant's arguments in turn, we focus on access because it is the most difficult issue in this case. Our decision is predicated on judicial deference -finding that the law has been properly applied in this case, viewing the facts most favorably to the appellees, and not substituting our judgment for that of the jury.

      35
      A. Access
      36

      Proof of access requires "an opportunity to view or to copy plaintiff's work." Sid and 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 work. 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright, S 13.02[A], at 13-19 (1999); Jason v. Fonda, 526 F. Supp. 774, 775 (C.D. Cal. 1981), aff'd , 698 F.2d 966 (9th Cir. 1983). We have defined reasonable access as "more than a `bare possibility.' " Jason, 698 F.2d at 967. Nimmer has elaborated on our definition: "Of course, reasonable opportunity as here used, does not encompass any bare possibility in the sense that anything is possible. Access may not be inferred through mere speculation or conjecture. There must be a reasonable possibility of viewing the plaintiff's work -not a bare possibility." 4 Nimmer,S 13.02[A], at 1319. "At times, distinguishing a `bare' possibility from a `reasonable' possibility will present a close question. " Id. at 1320.

      37

      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 (such as through dealings with a publisher or record company), or (2) the plaintiff's work has been widely disseminated. See 4 Nimmer, S 13.02[A], at 13-20-13-21; 2 Paul Goldstein, Copyright: Principles, Law, and Practice S 8.3.1.1., at 90-91 (1989). Goldstein remarks that in music cases the "typically more successful route to proving access requires the plaintiff to show that its work was widely disseminated through sales of sheet music, records, and radio performances." 2 Goldstein, S 8.3.1.1, at 91. Nimmer, however, cautioned that "[c]oncrete cases will pose difficult judgments as to where along the access spectrum a given exploitation falls." 4 Nimmer, S 13.02[A], at 13-22.

      38

      Proof of widespread dissemination is sometimes accompanied by a theory that copyright infringement of a popular song was subconscious. Subconscious copying has been accepted since Learned Hand embraced it in a 1924 music infringement case: "Everything registers somewhere in our memories, and no one can tell what [483] may evoke it . . . . Once it appears that another has in fact used the copyright as the source of this production, he has invaded the author's rights. It is no excuse that in so doing his memory has played him a trick." Fred Fisher, Inc. v. Dillingham, 298 F. 145, 147-48 (S.D.N.Y. 1924). In Fred Fisher, Judge Hand found that the similarities between the songs "amount[ed] to identity" and that the infringement had occurred "probably unconsciously, what he had certainly often heard only a short time before." Id. at 147.

      39

      In modern cases, however, the theory of subconscious copying has been applied to songs that are more remote in time. ABKCO Music, Inc v. Harrisongs Music, Ltd., 722 F.2d 988 (2d Cir. 1983) is the most prominent example. In ABKCO, the Second Circuit affirmed a jury's verdict that former Beatle George Harrison, in writing the song "My Sweet Lord," subconsciously copied The Chiffons' "He's So Fine," which was released six years earlier. See id. at 997, 999. Harrison admitted hearing "He's So Fine" in 1963, when it was number one on the Billboard charts in the United States for five weeks and one of the top 30 hits in England for seven weeks. See id. at 998. The court found:"the evidence, standing alone, `by no means compels the conclusion that there was access . . . it does not compel the conclusion that there was not.' " Id. (quoting Heim v. Universal Pictures Co., 154 F.2d 480, 487 (2d Cir. 1946)). In ABKCO, however, the court found that "the similarity was so striking and where access was found, the remoteness of that access provides no basis for reversal." Id. Furthermore, "the mere lapse of a considerable period of time between the moment of access and the creation of defendant's work does not preclude a finding of copying." 4 Nimmer, S 13.02[A], at 13-20 (citing ABKCO, 722 F.2d at 997-98).

      40

      The Isley Brothers' access argument was based on a theory of widespread dissemination and subconscious copying. They presented evidence supporting four principal ways that Bolton and Goldmark could have had access to the Isley Brothers' "Love is a Wonderful Thing":

      41

      (1) Bolton grew up listening to groups such as the Isley Brothers and singing their songs. In 1966, Bolton and Goldmark were 13 and 15, respectively, growing up in Connecticut. Bolton testified that he had been listening to rhythm and blues music by black singers since he was 10 or 11,"appreciated a lot of Black singers," and as a youth was the lead singer in a band that performed "covers" of popular songs by black singers. Bolton also testified that his brother had a "pretty good record collection."

      42

      (2) Three disk jockeys testified that the Isley Brothers' song was widely disseminated on radio and television stations where Bolton and Goldmark grew up. First, Jerry Blavitt testified that the Isley Brothers' "Love is a Wonderful Thing" was played five or six times during a 13-week period on the television show, "The Discophonic Scene," which he said aired in Philadelphia, New York, and Hartford-New Haven. Blavitt also testified that he played the song two to three times a week as a disk jockey in Philadelphia and that the station is still playing the song today. Second, Earl Rodney Jones testified that he played the song a minimum of four times a day during an eight to 14 to 24 week period on WVON radio in Chicago, and that the station is still playing the song today. Finally, Jerry Bledsoe testified that he played the song on WUFO radio in Buffalo, and WWRL radio in New York was playing the song in New York in 1967 when he went there. Bledsoe also testified that he played the song twice on a television show, "Soul," which aired in New York and probably in New Haven, Connecticut, where Bolton lived.

      43

      (3) Bolton confessed to being a huge fan of the Isley Brothers and a collector of their music. Ronald Isley testified that when Bolton saw Isley at the Lou Rawls United Negro College Fund Benefit concert in 1988, Bolton said,"I know this guy.[484] I go back with him. I have all his stuff. " Angela Winbush, Isley's wife, testified about that meeting that Bolton said, "This man needs no introduction. I know everything he's done."

      44

      (4) Bolton wondered if he and Goldmark were copying a song by another famous soul singer. Bolton produced a work tape attempting to show that he and Goldmark independently created their version of "Love Is a Wonderful Thing." On that tape of their recording session, Bolton asked Goldmark if the song they were composing was Marvin Gaye's "Some Kind of Wonderful."[1] The district court, in affirming the jury's verdict, wrote about Bolton's Marvin Gaye remark:

      45

      This statement suggests that Bolton was contemplating the possibility that the work he and Goldmark were creating, or at least a portion of it, belonged to someone else, but that Bolton wasn't sure who it belonged to. A reasonable jury can infer that Bolton mistakenly attributed the work to Marvin Gaye, when in reality Bolton was subconsciously drawing on Plaintiff's song.

      46

      The appellants contend that the Isley Brothers' theory of access amounts to a "twenty-five-years-after-the-factsubconscious copying claim." Indeed, this is a more attenuated case of reasonable access and subconscious copying than ABKCO. In this case, the appellants never admitted hearing the Isley Brothers' "Love is a Wonderful Thing. " That song never topped the Billboard charts or even made the top 100 for a single week. The song was not released on an album or compact disc until 1991, a year after Bolton and Goldmark wrote their song. Nor did the Isley Brothers ever claim that Bolton's and Goldmark's song is so "strikingly similar" to the Isley Brothers' that proof of access is presumed and need not be proven.

      47

      Despite the weaknesses of the Isley Brothers' theory of reasonable access, the appellants had a full opportunity to present their case to the jury. Three rhythm and blues experts (including legendary Motown songwriter Lamont Dozier of Holland-Dozier-Holland fame) testified that they never heard of the Isley Brothers' "Love is a Wonderful Thing." Furthermore, Bolton produced copies of "TV Guide" from 1966 suggesting that the television shows playing the song never aired in Connecticut. Bolton also pointed out that 129 songs called "Love is a Wonderful Thing" are registered with the Copyright Office, 85 of them before 1964.

      48

      The Isley Brothers' reasonable access arguments are not without merit. Teenagers are generally avid music listeners. It is entirely plausible that two Connecticut teenagers obsessed with rhythm and blues music could remember an Isley Brothers' song that was played on the radio and television for a few weeks, and subconsciously copy it twenty years later. Furthermore, Ronald Isley testified that when they met, Bolton said, "I have all his stuff." Finally, as the district court pointed out, Bolton's remark about Marvin Gaye and "Some Kind of Wonderful" indicates that Bolton believed he may have been copying someone else's song.

      49

      Finally, with regard to access, we are mindful of Judge Frank's words of caution in Arnstein v. Porter: "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 the defendant's denial of access and copying . . . . [Y]et plaintiff's credibility, even as to those improbabilities, should be left to the jury." Arnstein, 154 F.2d at 469. In this case, Judge Baird heeded Judge Frank's admonition:

      50

      [T]his Court is not in a position to find that the only conclusion that a reasonable jury could have reached is that [485] Defendants did not have access to Plaintiff's song. One must remember that the issue this Court must address is not whether Plaintiff has proven access by a preponderance of evidence, but whether reasonable minds could find that Defendants had a reasonable opportunity to have heard Plaintiff's song before they created their own song.

      51

      Although we might not reach the same conclusion as the jury regarding access, we find that the jury's conclusion about access is supported by substantial evidence. We are not establishing a new standard for access in copyright cases; we are merely saying that we will not disturb the jury's factual and credibility determinations on this issue.

      52
      B. Substantial Similarity
      53

      Under our case law, substantial similarity is inextricably linked to the issue of access. In what is known as the "inverse ratio rule," we "require a lower standard of proof of substantial similarity when a high degree of access is shown." Smith, 84 F.3d at 1218 (citing Shaw v. Lindheim, 919 F.2d 1353, 1361-62 (9th Cir. 1990); Krofft, 562 F.2d at 1172). Furthermore, in the absence of any proof of access, a copyright plaintiff can still make out a case of infringement by showing that the songs were "strikingly similar." See Smith, 84 F.3d at 1220; Baxter v. MCA, Inc., 812 F.2d 421, 423, 424 n.2 (9th Cir. 1987).

      54

      Proof of the substantial similarity is satisfied by a twopart test of extrinsic similarity and intrinsic similarity. See Krofft, 562 F.2d at 1164. Initially, the extrinsic test requires that the plaintiff identify concrete elements based on objective criteria. See Smith, 84 F.3d at 1218; Shaw, 919 F.2d at 1356. The extrinsic test often requires analytical dissection of a work and expert testimony. See Apple Computer, Inc v. Microsoft Corp., 35 F.3d 1435, 1442 (9th Cir. 1994). Once the extrinsic test is satisfied, the factfinder applies the intrinsic test. The intrinsic test is subjective and asks "whether the ordinary, reasonable person would find the total concept and feel of the works to be substantially similar." Pasillas v. McDonald's Corp., 927 F.2d 440, 442 (9th Cir. 1991) (internal quotations omitted).

      55

      We will not second-guess the jury's application of the intrinsic test. See Krofft 562 F.3d at 1166 ("Since the intrinsic test for expression is uniquely suited for determination by the trier of fact, this court must be reluctant to reverse it.") (citations omitted). Furthermore, we will not reverse factual determinations regarding the extrinsic test absent a clearly erroneous application of the law. See id. It is well settled that a jury may find a combination of unprotectible elements to be protectible under the extrinsic test because " `the over-all impact and effect indicate substantial appropriation.' " Id. at 1169 (quoting Malkin v. Dubinsky, 146 F. Supp. 111, 114 (S.D.N.Y. 1956)).

      56
      1. Evidence of Substantial Similarity
      57

      Bolton and Goldmark argue that there was insufficient evidence of substantial similarity because the Isley Brothers' expert musicologist, Dr. Gerald Eskelin, failed to show that there was copying of a combination of unprotectible elements. On the contrary, Eskelin testified that the two songs shared a combination of five unprotectible elements: (1) the title hook phrase (including the lyric, rhythm, and pitch); (2) the shifted cadence; (3) the instrumental figures; (4) the verse/chorus relationship; and (5) the fade ending. Although the appellants presented testimony from their own expert musicologist, Anthony Ricigliano, he conceded that there were similarities between the two songs and that he had not found the combination of unprotectible elements in the Isley Brothers' song "anywhere in the prior art." The jury heard testimony from both of these experts and "found infringement based on a unique compilation of those elements." We refuse to interfere with the jury's credibility determination, nor do we find [486] that the jury's finding of substantial similarity was clearly erroneous.

      58
      2. Independent Creation
      59

      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).

      60

      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.

      61
      3. Inverse-Ratio Rule
      62

      Although this may be a weak case of access and a circumstantial case of substantial similarity, neither issue warrants reversal of the jury's verdict. An amicus brief on behalf of the recording and motion picture industries warns against watering down the requirements for musical copyright infringement. This case presents no such danger. The Ninth Circuit's inverse-ratio rule requires a lesser showing of substantial similarity if there is a strong showing of access. See Smith, 84 F.3d at 1218. In this case, there was a weak showing of access. We have never held, however, that the inverse ratio rule says a weak showing of access requires a stronger showing of substantial similarity. Nor are we redefining the test of substantial similarity here; we merely find that there was substantial evidence from which the jury could find access and substantial similarity in this case.

      63
      C. Sufficiency of the Deposit Copy
      64

      The appellants argue that the district court did not have jurisdiction over this case because the Isley Brothers failed to register a complete copy of the song upon which the lawsuit was based. Although the 1909 Copyright Act requires the owner to deposit a "complete copy" of the work with the copyright office, our definition of a "complete copy" is broad and deferential: "Absent intent to defraud and prejudice, inaccuracies in copyright registrations do not bar actions for infringement." Harris v. Emus Records Corp. , 734 F.2d 1329, 1335 (9th Cir. 1984) (citations omitted).

      65

      Bolton and Goldmark argue that in 1964 the Isley Brothers deposited sheet music ("deposit copy") of "Love is a Wonderful Thing" that differed from the recorded version of the song. Furthermore, they claimed that the deposit copy does not include the majority of the musical elements that were part of the infringement claim. At trial, the Isley Brothers' expert, Dr. Eskelin, testified that the deposit copy included all of the song's essential elements such as the title hook, chorus, and pitches. Dr. Eskelin even played the deposit copy for the jury on the keyboard. We refuse to disturb the jury's finding that the Isley Brothers deposited a "complete copy " because (1) there was no intent to defraud and prejudice and (2) any inaccuracies [487] in the deposit copy were minor and do not bar the infringement action.

      66
      D. Attribution of Profits
      67

      Sony Music claims that the district court improperly applied an assumption that all profits from Bolton and Goldmark's song go to the Isley Brothers, and that no evidence supported the jury's apportionment of profits. A successful copyright plaintiff is allowed to recover only those profits that are "attributable to infringement." 17 U.S.C.S 504(b) (1994). "In establishing the infringer's profits, the copyright owner is required to present proof only of the infringer's gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work." Id. See also Cream Records, Inc. v. Jos. Schlitz Brewing Co., 754 F.2d 826, 828 (9th Cir. 1985) (holding that when all profits do not clearly derive from the infringing material, the copyright owner is not entitled to recover all of the profits); Gaste , 863 F.2d at 1070 (finding that where there is "imprecision in the computation of expenses, a court should err on the side of guaranteeing the plaintiff a full recovery"). Thus, the statutory burden of proof lies with Sony Music to prove what percentage of their profits were not attributable to copying the Isley Brothers'"Love is a Wonderful Thing."

      68

      Sony Music presented evidence that Bolton's "Love Is a Wonderful Thing" produced only 5-10% of the profits from his album, "Time, Love and Tenderness," and that the song's infringing elements resulted in only 10-15% of the profits from the song. The Isley Brothers, however, attacked the credibility of one of Sony Music's experts. Furthermore, they presented evidence that Bolton's infringing song was the album's lead single, that it was released 19 days before the album, and that Bolton engaged in telephone promotion of the song. The jury found that 28% of the album's profits derived from the song, and that 66% of the song's profits resulted from infringing elements.

      69

      We affirm the jury's apportionment of the profits for several reasons. First, the jury instructions adequately conveyed the burden of proof. Second, the burden of proof was on Sony Music, and the jury chose not to believe Sony Music's experts. Finally, a jury verdict apportioning less than 100% of the profits but more than the percentage estimates of Sony Music's experts does not represent clear error.

      70
      E. Deduction of Tax Liability
      71

      Sony Music also argues that the district court erred in allowing Bolton and Goldmark, but not Sony Music, to deduct income taxes due to profits from the album. Whether income taxes are considered "deductible expenses " under S 504(b) is an issue of first impression in this circuit. The Supreme Court held that willful infringers could not deduct income taxes, but it left open the possibility that non-willful infringers could deduct their income taxes from the infringing profits. See L.P. Larson, Jr., Co. v. Wm. Wrigley, Jr., Co., 277 U.S. 97, 99-100 (1928). The circuits are split over whether non-willful infringers such as Bolton, Goldmark, and Sony Music can deduct income taxes from their infringing profits. Compare In Design v. K-Mart Apparel Corp., 13 F.3d 559, 567 (2d Cir. 1994) (allowing the deduction of income taxes) with Schnadig Corp. v. Gaines Mfg. Co., Inc., 620 F.2d 1166, 1169-70 (6th Cir. 1980) (not allowing the deduction of income taxes).

      72

      The Second Circuit allowed the deduction of income taxes because if infringers are liable for pre-tax profits, they may end up paying more money than they ever received. See In Design, 13 F.3d at 567. Under the Second Circuit's rule, the infringer receives a windfall by (1) paying a smaller damages award and (2) deducting the entire, pre-tax award from gross income on a subsequent tax return. The Sixth Circuit rejected the deduction of income taxes because the increased pre-tax [488] profits paid to the copyright holder will be balanced out by an eventual tax refund based on the pre-tax award. See Schnadig, 620 F.2d at 1169-70. Under the Sixth Circuit's rule, the copyright holder receives a windfall by receiving a larger, pre-tax award.

      73

      During the third phase of this trial, the district court adopted the findings of the special master's report regarding the deduction of income taxes. The district court followed the Second Circuit rule and allowed Bolton and Goldmark, as non-willful infringers, to deduct the income taxes and management fees that they paid relating to the infringing song. The district court, however, refused to allow Sony Music to deduct its Net Operating Loss Carry-forward (NOL) because the NOL did not have a "concrete financial impact."

      74

      We uphold the district court's decision to allow non-willful infringers to deduct income taxes, but not NOL. In this case, Bolton and Goldmark actually paid income taxes and management fees on the infringing profits. Sony Music, however, never actually paid income taxes on its infringing profits. Rather, Sony Music claimed it offset nearly $1.7 million in taxes on the infringing profits against its parent company's NOL. No court has ever found that NOL is a deductible expense under S 504(b). Furthermore, we find that the district court's distinctions between taxes actually paid and taxes not actually paid was a fair one. Thus, we affirm the district court's calculation of a $4,218,838 damages award against Sony Music.

      75
      F. Second New Trial Motion
      76

      Finally, Bolton and Goldmark claim that the district court erred in rejecting their second motion for new trial. The district court's denial of a motion for a new trial pursuant to Federal Rule of Civil Procedure 60(b) is reviewed for an abuse of discretion. See Browning-Ferris Indus. v. Kelco Disposal, Inc., 492 U.S. 257, 278 (1989); Scott v. Ross, 140 F.3d 1275, 1281 (9th Cir. 1998). The abuse of discretion standard applies particularly when the district court's denial is based on the motion's untimeliness. See E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1294-96 (9th Cir. 1992).

      77

      Bolton and Goldmark's second motion for a new trial was based on the discovery of new evidence that disputed the Isley Brothers' claim of authorship. A day before the deadline for post-trial motions, the appellees discovered evidence alleging that the Turkcords, a group that played with the Isley Brothers in the mid-1960s, claimed to have written the 1964 song, "Love is a Wonderful Thing." Bolton and Goldmark did not immediately notify the district court of this new evidence. Instead, fourteen days after the deadline for post-trial motions had passed, they filed an additional motion for new trial. The district court rejected the second motion for new trial as untimely filed.

      78

      We affirm the district court's denial of the second motion for new trial because the evidence, if true, goes at most to the weight and credibility of the evidence before the jury. At trial, Ronald Isley claimed to have written the song with the deceased guitar legend, Jimi Hendrix. (As a young man, Hendrix played in the Isley Brothers' band.) The Turkcords' claims of authorship are dubious for several reasons. The Turkcords knew about the re-release of "Love is a Wonderful Thing" by United Artists in 1991, yet they claimed that the Isley Brothers had agreed to share the song's royalties with them only after hearing about the damages award in this case on "Inside Edition." Furthermore, Bolton and Goldmark knew about this new evidence before the deadline for the post-trial motions, yet they did not immediately notify the district court.

      79

      Even if the Turkcords' claims of authorship are true, a new trial is not warranted in the interests of justice because the Isley Brothers' copyright ownership is not jeopardized. Registration is [489] prima facie evidence of the validity of a copyright. See 17 U.S.C. S 410(c) (1994). This presumption can be rebutted by the defendant's showing that the plaintiff's work is not original. See North Coast Indus. v. Jason Maxwell, Inc., 972 F.2d 1031, 1033 (9th Cir. 1992). North Coast 's definition of originality is broad: " `All that is needed to satisfy both the Constitution and the statute is that the "author " contributed something more than a "merely trivial" variation, something recognizably "his own." Originality in this context means "little more than a prohibition of actual copying." ' " Id. (quoting Krofft, 562 F.2d at 1163 n.5 (quoting Alfred Bell & Co. v. Catalda Fine Arts, 191 F.2d 99, 102-03 (2d Cir. 1951))). See also Kamar Int'l Inc. v. Russ Berrie and Co., 657 F.2d 1059, 1061 (9th Cir. 1981) (employing a broad definition of originality relating to toy stuffed animals).

      80

      In this case, the Isley Brothers undoubtedly contributed something original to "Love is a Wonderful Thing. " Their proteges, the Turkcords, purportedly wrote the song, then gave the Isley Brothers' permission to record it after the voice of the Turkcords' lead singer allegedly "cracked. " Members of the Turkcords allegedly sang back-up on the record. Yet the Turkcords never copyrighted their song. They relied on the Isley Brothers' alleged promise to share the royalties with them.

      81

      The district court did not abuse its discretion in rejecting Bolton and Goldmark's second motion for a new trial based on this evidence. The Turkcords' claims of authorship would not have affected the outcome of the case and at most go to the weight and credibility of the evidence. Bolton and Goldmark's second motion was a last-ditch attempt to discredit the jury's verdict. The district court heard all of the evidence in this case, instructed the jury on the applicable law, yet refused to reverse the jury's verdict pursuant to motion for a judgment as a matter of law. Having found that the law was properly applied in this case, we leave the district court's decisions and the jury's credibility determinations undisturbed.

      82

      AFFIRMED.

      83

      [1] Marvin Gaye also referred to the song's chorus, "She's some kind of wonderful," in his song, "Too Busy Thinking About My Baby." See Marvin Gaye, Too Busy Thinking About My Baby, on MPG, (Motown 1969). 

    • 1.2 Steinberg v. Columbia Pictures Industries (1987)

      1

      663 F.Supp. 706 (1987)

      2
      Saul STEINBERG, Plaintiff,
      v.
      COLUMBIA PICTURES INDUSTRIES, INC.; RCA Corporation; Diener Hauser Bates Co., Inc.; Columbia Pictures International Corporation; Columbia Pictures Home Video, Inc.; RCA International Audio-Visuals, Inc.; CPT Holdings, Inc.; Gold Col Productions, Inc.; RCA/Columbia Pictures Home Video; RCA/Columbia Pictures International Video; the New York Times Company; New York News, Inc.; Newsday, Inc.; News Group Publications, Inc.; the Times Mirror Company; the Hearst Corporation; Chicago Tribune Company; Field Enterprises, Inc.; the Washington Post Co.; A.H. Belo Corporation; Globe Newspaper Company; Philadelphia Newspapers, Inc.; A.S. Abell Publishing Co.; and Knight-Ridder Newspapers, Inc., Defendants.
      Saul STEINBERG, Plaintiff,
      v.
      COLUMBIA-DELPHI PRODUCTIONS, Columbia-Delphi Productions II, Delphi Film Associates, Delphi Film Associates II, News Group Boston, Inc., and News Group Chicago, Inc., Defendants.

      Nos. 84 Civ. 9208 (LLS), 87 Civ. 1750 (LLS).

      3

      United States District Court, S.D. New York.

      June 24, 1987.

      4

      [707] [708] Rembar & Curtis, New York City, for plaintiff; Charles Rembar, Frank R. Curtis, Mark W. Budwig, of counsel.

      5

      Pryor, Cashman, Sherman & Flynn, New York City, for defendants; Stephen F. Huff, Philip R. Hoffman, Tom J. Ferber, of counsel.

      6
      OPINION AND ORDER
      7
      STANTON, District Judge.
      8

      In these actions for copyright infringement, plaintiff Saul Steinberg is suing the producers, promoters, distributors and advertisers of the movie "Moscow on the Hudson" ("Moscow"). Steinberg is an artist whose fame derives in part from cartoons and illustrations he has drawn for The New Yorker magazine. Defendant Columbia Pictures Industries, Inc. (Columbia) is in the business of producing, promoting and distributing motion pictures, including "Moscow." Defendant RCA Corporation (RCA) was involved with Columbia in promoting and distributing the home video version of "Moscow," and defendant Diener Hauser Bates Co. (DHB) acted as an advertising agent for "Moscow." The other defendants were added to the complaint pursuant to a memorandum decision of this court dated November 17, 1986. These defendants fall into two categories: (1) affiliates of Columbia and RCA that were involved in the distribution of "Moscow" here and/or abroad, and (2) owners of major newspapers that published the allegedly infringing advertisement.

      9

      The defendants in the second-captioned action either are joint ventures affiliated with Columbia or are newspapers that published the allegedly infringing advertisement for "Moscow." This action was consolidated with the first by stipulation dated April 3, 1987.

      10

      Plaintiff alleges that defendants' promotional poster for "Moscow" infringes his copyright on an illustration that he drew [709] for The New Yorker and that appeared on the cover of the March 29, 1976 issue of the magazine, in violation of 17 U.S.C. §§ 101-810. Defendants deny this allegation and assert the affirmative defenses of fair use as a parody, estoppel and laches.

      11

      Defendants have moved, and plaintiff has cross-moved, for summary judgment. For the reasons set forth below, this court rejects defendants' asserted defenses and grants summary judgment on the issue of copying to plaintiff.

      12
      I
      13

      To grant summary judgment, Fed.R. Civ.P. 56 requires a court to find that "there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." In reaching its decision, the court must "assess whether there are any factual issues to be tried, while resolving ambiguities and drawing reasonable inferences against the moving party." Knight v. U.S. Fire Ins. Co., 804 F.2d 9, 11 (2d Cir.1986), citing Anderson v. Liberty Lobby, 477 U.S. 242, 106 S.Ct. 2505, 2509-11, 91 L.Ed.2d 202 (1986).

      14

      Summary judgment is often disfavored in copyright cases, for courts are generally reluctant to make subjective comparisons and determinations. Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 977 (2d Cir.1980), citing Arnstein v. Porter, 154 F.2d 464, 474 (2d Cir.1946). Recently, however, this circuit has "recognized that a court may determine non-infringement as a matter of law on a motion for summary judgment." Warner Brothers v. American Broadcasting Cos., 720 F.2d 231, 240 (2d Cir.1983), quoting Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905, 918 (2d Cir.1980). See also Hoehling, 618 F.2d at 977; Walker v. Time-Life Films, Inc., 615 F.Supp. 430, 434 (S.D.N.Y. 1985), aff'd, 784 F.2d 44 (2d Cir.1986), cert. denied, ___ U.S. ___, 106 S.Ct. 2278, 90 L.Ed.2d 721 (1986). "When the evidence is so overwhelming that a court would be justified in ordering a directed verdict at trial, it is proper to grant summary judgment." Silverman v. CBS Inc., 632 F.Supp. 1344, 1352 (S.D.N.Y.1986) (awarding summary judgment to defendant on counterclaim of copyright infringement).

      15

      The voluminous submissions that accompanied these cross-motions leave no factual issues concerning which further evidence is likely to be presented at a trial. Moreover, the factual determinations necessary to this decision do not involve conflicts in testimony that would depend for their resolution on an assessment of witness credibility. In addition, this case is different from most copyright infringement actions, in which it is preferable to leave the determination of the issue to a jury: each party has implied that its case is complete by moving for summary judgment, and as neither side has requested a jury, the court would be the trier of fact at trial. Finally, the interests of judicial economy are also served by deciding the case at its present stage. Summary judgment is therefore appropriate.

      16
      II
      17

      The essential facts are not disputed by the parties despite their disagreements on nonessential matters. On March 29, 1976, The New Yorker published as a cover illustration the work at issue in this suit, widely known as a parochial New Yorker's view of the world. The magazine registered this illustration with the United States Copyright Office and subsequently assigned the copyright to Steinberg. Approximately three months later, plaintiff and The New Yorker entered into an agreement to print and sell a certain number of posters of the cover illustration.

      18

      It is undisputed that unauthorized duplications of the poster were made and distributed by unknown persons, although the parties disagree on the extent to which plaintiff attempted to prevent the distribution of those counterfeits. Plaintiff has also conceded that numerous posters have been created and published depicting other localities in the same manner that he depicted New York in his illustration. These facts, however, are irrelevant to the merits of this case, which concerns only the relationship [710] between plaintiff's and defendants' illustrations.

      19

      Defendants' illustration was created to advertise the movie "Moscow on the Hudson," which recounts the adventures of a Muscovite who defects in New York. In designing this illustration, Columbia's executive art director, Kevin Nolan, has admitted that he specifically referred to Steinberg's poster, and indeed, that he purchased it and hung it, among others, in his office. Furthermore, Nolan explicitly directed the outside artist whom he retained to execute his design, Craig Nelson, to use Steinberg's poster to achieve a more recognizably New York look. Indeed, Nelson acknowledged having used the facade of one particular edifice, at Nolan's suggestion that it would render his drawing more "New York-ish." Curtis Affidavit ¶ 28(c). While the two buildings are not identical, they are so similar that it is impossible, especially in view of the artist's testimony, not to find that defendants' impermissibly copied plaintiff's.[1]

      20

      To decide the issue of infringement, it is necessary to consider the posters themselves. Steinberg's illustration presents a bird's eye view across a portion of the western edge of Manhattan, past the Hudson River and a telescoped version of the rest of the United States and the Pacific Ocean, to a red strip of horizon, beneath which are three flat land masses labeled China, Japan and Russia. The name of the magazine, in The New Yorker's usual typeface, occupies the top fifth of the poster, beneath a thin band of blue wash representing a stylized sky.

      21

      The parts of the poster beyond New York are minimalized, to symbolize a New Yorker's myopic view of the centrality of his city to the world. The entire United States west of the Hudson River, for example, is reduced to a brown strip labeled "Jersey," together with a light green trapezoid with a few rudimentary rock outcroppings and the names of only seven cities and two states scattered across it. The few blocks of Manhattan, by contrast, are depicted and colored in detail. The four square blocks of the city, which occupy the whole lower half of the poster, include numerous buildings, pedestrians and cars, as well as parking lots and lamp posts, with water towers atop a few of the buildings. The whimsical, sketchy style and spiky lettering are recognizable as Steinberg's.

      22

      The "Moscow" illustration depicts the three main characters of the film on the lower third of their poster, superimposed on a bird's eye view of New York City, and continues eastward across Manhattan and the Atlantic Ocean, past a rudimentary evocation of Europe, to a clump of recognizably Russian-styled buildings on the horizon, labeled "Moscow." The movie credits appear over the lower portion of the characters. The central part of the poster depicts approximately four New York city blocks, with fairly detailed buildings, pedestrians and vehicles, a parking lot, and some water towers and lamp posts. Columbia's artist added a few New York landmarks at apparently random places in his illustration, apparently to render the locale more easily recognizable. Beyond the blue strip labeled "Atlantic Ocean," Europe is represented by London, Paris and Rome, each anchored by a single landmark (although the landmark used for Rome is the Leaning Tower of Pisa).

      23

      The horizon behind Moscow is delineated by a red crayoned strip, above which are the title of the movie and a brief textual introduction to the plot. The poster is crowned by a thin strip of blue wash, apparently a stylization of the sky. This poster is executed in a blend of styles: the three characters, whose likenesses were copied from a photograph, have realistic faces and somewhat sketchy clothing, and the city blocks are drawn in a fairly detailed but sketchy style. The lettering on the drawing is spiky, in block-printed handwritten capital letters substantially identical to plaintiff's, while the printed texts at the top and bottom of the poster are in the [711] typeface commonly associated with The New Yorker magazine.[2]

      24
      III
      25

      To succeed in a copyright infringement action, a plaintiff must prove ownership of the copyright and copying by the defendant. Reyher v. Children's Television Workshop, 533 F.2d 87, 90 (2d Cir.1976); Durham Industries, 630 F.2d at 911; Novelty Textile Mills, Inc. v. Joan Fabrics Corp., 558 F.2d 1090, 1092 (2d Cir.1977). There is no substantial dispute concerning plaintiff's ownership of a valid copyright in his illustration. Therefore, in order to prevail on liability, plaintiff need establish only the second element of the cause of action.

      26

      "Because of the inherent difficulty in obtaining direct evidence of copying, it is usually proved by circumstantial evidence of access to the copyrighted work and substantial similarities as to protectible material in the two works." Reyher, 533 F.2d at 90, citing Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir.1946). See also Novelty Textile Mills, 558 F.2d at 1092. "Of course, if there are no similarities, no amount of evidence of access will suffice to prove copying." Arnstein v. Porter, 154 F.2d at 468. See also Novelty Textile Mills, 558 F.2d at 1092 n. 2.

      27

      Defendants' access to plaintiff's illustration is established beyond peradventure. Therefore, the sole issue remaining with respect to liability is whether there is such substantial similarity between the copyrighted and accused works as to establish a violation of plaintiff's copyright. The central issue of "substantial similarity," which can be considered a close question of fact, may also validly be decided as a question of law. Berkic v. Crichton, 761 F.2d 1289, 1292 (9th Cir.1985), citing Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corp., 562 F.2d 1157 (9th Cir.1977).

      28

      "Substantial similarity" is an elusive concept. This circuit has recently recognized that

      29

      [t]he "substantial similarity" that supports an inference of copying sufficient to establish infringement of a copyright is not a concept familiar to the public at large. It is a term to be used in a courtroom to strike a delicate balance between the protection to which authors are entitled under an act of Congress and the freedom that exists for all others to create their works outside the area protected by infringement.

      30

      Warner Bros., 720 F.2d at 245.

      31

      The definition of "substantial similarity" in this circuit is "whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work." Ideal Toy Corp. v. Fab-Lu Ltd., 360 F.2d 1021, 1022 (2d Cir.1966); Silverman v. CBS, Inc., 632 F.Supp. at 1351-52. A plaintiff need no longer meet the severe "ordinary observer" test established by Judge Learned Hand in Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir.1960). Uneeda Doll Co., Inc. v. Regent Baby Products Corp., 355 F.Supp. 438, 450 (E.D.N.Y.1972). Under Judge Hand's formulation, there would be substantial similarity only where "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." 274 F.2d at 489.

      32

      Moreover, it is now recognized that "[t]he copying need not be of every detail so long as the copy is substantially similar to the copyrighted work." Comptone Co. v. Rayex Corp., 251 F.2d 487, 488 (2d Cir. 1958). See also Durham Industries, 630 F.2d at 911-12; Novelty Textile Mills, 558 F.2d at 1092-93.

      33

      In determining whether there is substantial similarity between two works, it is crucial to distinguish between an idea and its expression. It is an axiom of copyright law, established in the case law and since codified at 17 U.S.C. § 102(b), that only the [712] particular expression of an idea is protectible, while the idea itself is not. See, e.g., Durham Industries, 630 F.2d at 912; Reyher, 533 F.2d at 90, citing Mazer v. Stein, 347 U.S. 201, 217, 74 S.Ct. 460, 470, 98 L.Ed. 630 (1954); Baker v. Selden, 101 U.S. (11 Otto) 99, 25 L.Ed. 841 (1879). See also Warner Bros., 720 F.2d at 239.

      34

      "The idea/expression distinction, although an imprecise tool, has not been abandoned because we have as yet discovered no better way to reconcile the two competing societal interests that provide the rationale for the granting of and restrictions on copyright protection," namely, both rewarding individual ingenuity, and nevertheless allowing progress and improvements based on the same subject matter by others than the original author. Durham Industries, 630 F.2d at 912, quoting Reyher, 533 F.2d at 90.

      35

      There is no dispute that defendants cannot be held liable for using the idea of a map of the world from an egocentrically myopic perspective. No rigid principle has been developed, however, to ascertain when one has gone beyond the idea to the expression, and "[d]ecisions must therefore inevitably be ad hoc." Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir.1960) (L. Hand, J.). As Judge Frankel once observed, "Good eyes and common sense may be as useful as deep study of reported and unreported cases, which themselves are tied to highly particularized facts." Couleur International Ltd. v. Opulent Fabrics, Inc., 330 F.Supp. 152, 153 (S.D.N.Y.1971).

      36

      Even at first glance, one can see the striking stylistic relationship between the posters, and since style is one ingredient of "expression," this relationship is significant. Defendants' illustration was executed in the sketchy, whimsical style that has become one of Steinberg's hallmarks. Both illustrations represent a bird's eye view across the edge of Manhattan and a river bordering New York City to the world beyond. Both depict approximately four city blocks in detail and become increasingly minimalist as the design recedes into the background. Both use the device of a narrow band of blue wash across the top of the poster to represent the sky, and both delineate the horizon with a band of primary red.[3]

      37

      The strongest similarity is evident in the rendering of the New York City blocks. Both artists chose a vantage point that looks directly down a wide two-way cross street that intersects two avenues before reaching a river. Despite defendants' protestations, this is not an inevitable way of depicting blocks in a city with a grid-like street system, particularly since most New York City cross streets are one-way. Since even a photograph may be copyrighted because "no photograph, however simple, can be unaffected by the personal influence of the author," Time Inc. v. Bernard Geis Assoc., 293 F.Supp. 130, 141 (S.D.N.Y. 1968), quoting Bleistein, supra, one can hardly gainsay the right of an artist to protect his choice of perspective and layout in a drawing, especially in conjunction with the overall concept and individual details. Indeed, the fact that defendants changed the names of the streets while retaining the same graphic depiction weakens their case: had they intended their illustration realistically to depict the streets labeled on the poster, their four city blocks would not so closely resemble plaintiff's four city blocks. Moreover, their argument that they intended the jumble of streets and landmarks and buildings to symbolize their Muscovite protagonist's confusion in a new city does not detract from the strong similarity between their poster and Steinberg's.

      38

      [713] While not all of the details are identical, many of them could be mistaken for one another; for example, the depiction of the water towers, and the cars, and the red sign above a parking lot, and even many of the individual buildings. The shapes, windows, and configurations of various edifices are substantially similar. The ornaments, facades and details of Steinberg's buildings appear in defendants', although occasionally at other locations. In this context, it is significant that Steinberg did not depict any buildings actually erected in New York; rather, he was inspired by the general appearance of the structures on the West Side of Manhattan to create his own New York-ish structures. Thus, the similarity between the buildings depicted in the "Moscow" and Steinberg posters cannot be explained by an assertion that the artists happened to choose the same buildings to draw. The close similarity can be explained only by the defendants' artist having copied the plaintiff's work. Similarly, the locations and size, the errors and anomalies of Steinberg's shadows and streetlight, are meticulously imitated.

      39

      In addition, the Columbia artist's use of the childlike, spiky block print that has become one of Steinberg's hallmarks to letter the names of the streets in the "Moscow" poster can be explained only as copying. There is no inherent justification for using this style of lettering to label New York City streets as it is associated with New York only through Steinberg's poster.

      40

      While defendants' poster shows the city of Moscow on the horizon in far greater detail than anything is depicted in the background of plaintiff's illustration, this fact alone cannot alter the conclusion. "Substantial similarity" does not require identity, and "duplication or near identity is not necessary to establish infringement." Krofft, 562 F.2d at 1167. Neither the depiction of Moscow, nor the eastward perspective, nor the presence of randomly scattered New York City landmarks in defendants' poster suffices to eliminate the substantial similarity between the posters. As Judge Learned Hand wrote, "no plagiarist can excuse the wrong by showing how much of his work he did not pirate." Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir.), cert. denied, 298 U.S. 669, 56 S.Ct. 835, 80 L.Ed. 1392 (1936).

      41

      Defendants argue that their poster could not infringe plaintiff's copyright because only a small proportion of its design could possibly be considered similar. This argument is both factually and legally without merit. "[A] copyright infringement may occur by reason of a substantial similarity that involves only a small portion of each work." Burroughs v. Metro-Goldwyn-Mayer, Inc., 683 F.2d 610, 624 n. 14 (2d Cir.1982). Moreover, this case involves the entire protected work and an iconographically, as well as proportionately, significant portion of the allegedly infringing work. Cf. Mattel, Inc. v. Azrak-Hamway Intern., Inc., 724 F.2d 357, 360 (2d Cir.1983); Elsmere Music, Inc. v. National Broadcasting Co., 482 F.Supp. 741, 744 (S.D.N.Y.), aff'd, 623 F.2d 252 (2d Cir. 1980) (taking small part of protected work can violate copyright).

      42

      The process by which defendants' poster was created also undermines this argument. The "map," that is, the portion about which plaintiff is complaining, was designed separately from the rest of the poster. The likenesses of the three main characters, which were copied from a photograph, and the blocks of text were superimposed on the completed map. Nelson Deposition at 21-22; Nolan Deposition at 28.

      43

      I also reject defendants' argument that any similarities between the works are unprotectible scenes a faire, or "incidents, characters or settings which, as a practical matter, are indispensable or standard in the treatment of a given topic." Walker, 615 F.Supp. at 436. See also Reyher, 533 F.2d at 92. It is undeniable that a drawing of New York City blocks could be expected to include buildings, pedestrians, vehicles, lampposts and water towers. Plaintiff, however, does not complain of defendants' mere use of these elements in their poster; rather, his complaint is that defendants [714] copied his expression of those elements of a street scene.

      44

      While evidence of independent creation by the defendants would rebut plaintiff's prima facie case, "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." Roth Greeting Cards v. United Card Co., 429 F.2d 1106, 1110 (9th Cir.1970). See also Novelty Textile Mills, 558 F.2d at 1092 n. 2.

      45

      Moreover, it is generally recognized that "... 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, quoted in Krofft, 562 F.2d at 1172. As defendants have conceded access to plaintiff's copyrighted illustration, a somewhat lesser degree of similarity suffices to establish a copyright infringement than might otherwise be required. Here, however, the demonstrable similarities are such that proof of access, although in fact conceded, is almost unnecessary.

      46
      IV
      47

      I find meritless defendants' assertion that, to the extent that the "Moscow" poster evokes Steinberg's, that evocation is justified under the parody branch of the "fair use" doctrine, codified at 17 U.S.C. § 107. As this circuit has held, the copyrighted work must be "at least in part an object of the parody," MCA, Inc. v. Wilson, 677 F.2d 180, 185 (2d Cir.1981). The record does not support a claim that defendants intended to satirize plaintiff's illustration; indeed, the deposition testimony of Columbia's executive art director tends to contradict such a claim. Moreover, an assertion that defendants consciously parodied the idea of a parochial view of the world is immaterial: ideas are not protected by copyright, and the infringement alleged is of Steinberg's particular expression of that idea. Defendants' variation on the visual joke of plaintiff's illustration does not, without an element of humor aimed at some aspect of the illustration itself, render it a parody and therefore a fair use of plaintiff's work.

      48

      In codifying the case law on determining whether one work constitutes a fair use of another, Congress instructed the courts to consider certain factors, the first of which is whether the intended use of the allegedly infringing work is "of a commercial nature or is for nonprofit educational purposes." 17 U.S.C. § 107(1). As the Second Circuit said in a different artistic context, "We are not prepared to hold that a commercial [artist] can plagiarize a ... copyrighted [work], substitute [certain elements] of his own, [produce] it for commercial gain, and then escape liability by calling the end result a parody or satire on the mores of society." MCA, Inc., 677 F.2d at 185.

      49

      In analyzing the commercial or noncommercial nature of the "Moscow" poster, it is useful to distinguish between two conceptually different situations: advertising material that promotes a parody of a copyrighted work, and advertising material that itself infringes a copyright. In the first case, the fact that the advertisement uses elements of the copyrighted work does not necessarily mean that it infringes the copyright, if the product that it advertises constitutes a fair use of the copyrighted work. See, e.g., Warner Bros., 720 F.2d at 242-44 (promotional broadcasts for television series legally parodying the Superman comic strip character did not infringe copyright in Superman character).

      50

      In the second case, the work being advertised bears no relationship to the copyrighted work, but the advertisement itself infringes the copyright. In such a case, the owners of the copyright can prevent the advertisement from being used. As the Second Circuit has said, "[n]o matter how well known a copyrighted phrase becomes, its author is entitled to guard against its appropriation to promote the sale of commercial products." Warner Bros., 720 F.2d at 242. See, e.g., D.C. Comics, Inc. v. Crazy Eddie, Inc., 205 [715] U.S.P.Q. 1177 (S.D.N.Y.1979) (discount electronics chain not permitted to advertise its stores using parody of well-known lines associated with copyrighted Superman character).

      51

      This situation fits the second case. Neither the "Moscow" movie nor the poster was designed to be a parody of the Steinberg illustration. The poster merely borrowed numerous elements from Steinberg to create an appealing advertisement to promote an unrelated commercial product, the movie. No parody of the illustration is involved, and defendants are not entitled to the protection of the parody branch of the fair use doctrine.

      52

      The other factors mandated by 17 U.S.C. § 107 do nothing to mitigate this determination. The copyrighted work at issue is an artistic creation, 17 U.S.C. § 107(2), a very substantial portion of which was appropriated in the defendants' work, 17 U.S.C. § 107(3). As for the value of the copyrighted work, 17 U.S.C. § 107(4), plaintiff submitted testimony to the court to show that his reputation was injured by having the public believe that he voluntarily lent his work to a profit-making enterprise.

      53
      V
      54

      In their motion, defendants raised the affirmative defenses of estoppel and laches. Although Fed.R.Civ.P. 8(c) generally requires affirmative defenses to be pleaded, courts have been more lenient in the context of motions for summary judgment. "[A]bsent prejudice to the plaintiff, a defendant may raise an affirmative defense in a motion for summary judgment for the first time." Rivera v. Anaya, 726 F.2d 564, 566 (9th Cir.1984). See 2A, 6 J. Moore, Moore's Federal Practice ¶¶ 8.28, 56.02[2], 56.17[4] (2d ed. 1986). It is therefore appropriate for this court to consider these defenses on the merits.

      55

      Defendants base their assertions of these equitable defenses on the following factual claims: (1) plaintiff's alleged "deliberate inaction" for eight years in the face of numerous counterfeits of his poster and adaptations of his idea to various other localities; (2) plaintiff's alleged failure to act in response to the newspaper advertisements that appeared to promote "Moscow"; and (3) defendants' assertion that Steinberg waited six months before even complaining to Columbia about their alleged infringement of his copyright on the poster, which defendants claim in their brief was a tactic on plaintiff's part to maximize the damages he hoped to receive.

      56

      The record, however, does not support defendants' claims. First, Steinberg specifically requested that The New Yorker magazine attempt to identify the sources of the counterfeit posters and prevent their continued distribution. As for the so-called adaptations of Steinberg's idea, there is no evidence that they infringed his copyright or that anyone ever believed that they did. As plaintiff freely and necessarily admits, the law does not protect an idea, but only the specific expression of that idea. The examples that defendants use to support their defense can at most be considered derivative of Steinberg's idea; none is a close copy of the poster itself, as defendants' is. Finally, defendants' last two assertions are rebutted by evidence that The New Yorker protested to The New York Times on plaintiff's behalf and at his request when "Moscow" opened, and that Columbia learned of this protest only a few weeks later.

      57

      Moreover, even were defendants' factual assertions borne out by the record, their equitable defenses would have to be rejected because they have failed to establish the elements of either estoppel or laches.

      58

      "A party seeking to invoke the doctrine of estoppel must plead and prove each of the essential elements: (1) a representation of fact ...; (2) rightful reliance thereon; and (3) injury or damage ... resulting from denial by the party making the representation." Galvez v. Local 804 Welfare Trust Fund, 543 F.Supp. 316, 317 (E.D.N. Y.1982), citing Haeberle v. Board of Trustees, 624 F.2d 1132 (2d Cir.1980).

      59

      Defendants have not established even the first of these elements. They argue that plaintiff's alleged silence [716] during the course of their advertisement campaign constitutes a sufficient representation of his acquiescence to meet the first requirement of the doctrine. As noted above, however, plaintiff did not remain silent, and the record shows that defendants, despite their awareness of his objections, continued to promote the film with the same advertisements and subsequently released a videocassette version of "Moscow" using the same promotional design. See Lottie Joplin Thomas Trust v. Crown Publishers, 592 F.2d 651, 655 (2d Cir.1978) (defense of estoppel falls where defendants fail to produce any evidence of detrimental reliance on plaintiff's alleged representations). Defendants overlook, moreover, that silence or inaction, in the absence of any duty or relationship between the parties, cannot give rise to an estoppel. Whiting Corp. v. Home Ins. Co., 516 F.Supp. 643, 656 (S.D.N.Y.1981). Cf. Columbia Broadcasting System, Inc. v. Stokely-Van Camp, Inc., 522 F.2d 369, 378 (2d Cir.1975). No such duty existed here.

      60

      Defendants have likewise failed to establish the defense of laches. The party asserting laches must show that the opposing party "did not assert her or their rights diligently, and that such asserted lack of diligence ... resulted in prejudice to them." Lottie Joplin, 592 F.2d at 655, citing, inter alia, Costello v. United States, 365 U.S. 265, 282, 81 S.Ct. 534, 543, 5 L.Ed.2d 551 (1961). In Lottie Joplin, the Second Circuit held that a gap of approximately half a year between the publication of the allegedly infringing work and the institution of the lawsuit did not constitute a delay sufficient to establish a claim of laches. In this case, defendants were informed within weeks of plaintiff's disapproval of their poster; moreover, they have presented no evidence that, even if they had acknowledged any awareness of plaintiff's reaction, they would in any way have modified their subsequent actions. Consequently, they have failed to prove prejudice to themselves.

      61
      VI
      62

      For the reasons set out above, summary judgment is granted to plaintiffs as to copying.

      63

      A pretrial conference will be held on September 11, 1987, at 2 o'clock P.M., in Courtroom 35, to determine the proper measure and allocation of damages, other appropriate matters, and the parties' proposed schedule of further proceedings. The parties are to confer in advance of this conference, with the goal of reaching agreement on these matters, if possible.

      64

      [1] Nolan claimed also to have been inspired by some of the posters that were inspired by Steinberg's; such secondary inspiration, however, is irrelevant to whether or not the "Moscow" poster infringes plaintiff's copyright by having impermissibly copied it.

      65

      [2] The typeface is not a subject of copyright, but the similarity reinforces the impression that defendants copied plaintiff's illustration.

      66

      [3] Defendants claim that since this use of thin bands of primary colors is a traditional Japanese technique, their adoption of it cannot infringe Steinberg's copyright. This argument ignores the principle that while "[o]thers are free to copy the original ... [t]hey are not free to copy the copy." Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 250, 23 S.Ct. 298, 300, 47 L.Ed. 460 (1903) (Holmes, J.). Cf. Dave Grossman Designs, Inc. v. Bortin, 347 F.Supp. 1150, 1156-57 (N.D.Ill.1972) (an artist may use the same subject and style as another "so long as the second artist does not substantially copy [the first artist's] specific expression of his idea.")

    • 1.3 Boisson v. Banian (2001)

      1

      273 F.3d 262 (2nd Cir. 2001)

      2
      JUDI BOISSON, PLAINTIFF-APPELLANT,
      3
      AMERICAN COUNTRY QUILTS AND LINENS, INC., D/B/A/ JUDI BOISSON AMERICAN COUNTRY, PLAINTIFF-COUNTER-DEFENDANT-APPELLANT,
      v.
      BANIAN, LTD., & VIJAY RAO, DEFENDANTS-COUNTER-CLAIMANTS-APPELLEES,
      4
      JOHN DOES I-V, DEFENDANTS.
      5

      Docket No. 00-7300.
      August Term, 2000.
      UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT
      Argued November 15, 2000.
      Decided December 3, 2001.

      6

      Plaintiff Judi Boisson and plaintiff/counter-defendant American Country Quilts and Linens, Inc., d/b/a Judi Boisson American Country, appeal from a judgment entered February 28, 2000 in the United States District Court for the Eastern District of New York (Platt, J.), which dismissed plaintiffs' claims of copyright infringement following a bench trial.

      7

      Affirmed in part; reversed in part; and remanded.

      8

      [265] Paul R. Levenson, New York, New York (Kaplan Gottbetter & Levenson, Llp, New York, New York, of counsel), for Plaintiff Judi Boisson and American Country Quilts and Linens, Inc.

      9

      G. Roxanne Elings, New York, New York (Sudipta Rao, Greenberg Traurig, Llp, New York, New York, of counsel), for Defendants Banian, Ltd. and Vijay Rao.

      10

      Before: Cardamone, Calabresi, Circuit Judges, and HAIGHT[1], District Judge.

      11

      Cardamone, Circuit Judge.

      12

      Plaintiffs Judi Boisson and her wholly-owned company, American Country Quilts and Linens, Inc., d/b/a Judi Boisson American Country, brought suit in the United States District Court for the Eastern District of New York (Platt, J.), alleging that defendants Vijay Rao and his wholly-owned company Banian Ltd., illegally copied two quilt designs for which plaintiffs had obtained copyright registrations. Following a bench trial, the trial court, in [266] denying the claims of copyright infringement, ruled that defendants' quilts were not substantially similar to what it deemed were the protectible elements of plaintiffs' works. Plaintiffs have appealed this ruling. Copying the creative works of others is an old story, one often accomplished by the copyist changing or disfiguring the copied work to pass it off as his own. Stealing the particular expression of another's ideas is rightly condemned in the law because pirating the expression of the author's creative ideas risks diminishing the author's exclusive rights to her work, or as a poet said, taking all that she may be or all that she has been.

      13

      In reviewing this decision, we find plaintiffs' copyrights cover more elements than were recognized by the trial court, and that though the trial court articulated the proper test when comparing the contested works, its application of that test was too narrow. It failed not only to account for the protectible elements we identify, but also to consider the overall look and feel brought about by the creator's arrangement of unprotectible elements. Hence, we disagree with part of the district court's ruling and find some instances of copyright infringement. The trial court's disposition of those claims must therefore be reversed and remanded for a determination as to what remedies should be awarded.

      14
      BACKGROUND
      15

      Judi Boisson has been in the quilt trade for over 20 years, beginning her career by selling antique American quilts -- in particular, Amish quilts -- she purchased in various states throughout the country. By the late 1980s, having difficulty finding antique quilts, she decided to design and manufacture her own and began selling them in 1991 through her company. Boisson published catalogs in 1993 and 1996 to advertise and sell her quilts. Her works are also sold to linen, gift, antique, and children's stores and high-end catalog companies. Various home furnishing magazines have published articles featuring Boisson and her quilts.

      16

      In 1991 plaintiff designed and produced two alphabet quilts entitled "School Days I" and "School Days II." Although we later describe the quilts in greater detail, we note each consists of square blocks containing the capital letters of the alphabet, displayed in order. The blocks are set in horizontal rows and vertical columns, with the last row filled by blocks containing various pictures or icons. The letters and blocks are made up of different colors, set off by a white border and colored edging.

      17

      Boisson testified at trial that she worked on these quilts at home where she drew the letters by hand, decided on their placement in the quilts, picked out the color combinations and chose the quilting patterns. She obtained certificates of copyright registration for each quilt on December 9, 1991. All of her quilts, as well as the catalogs advertising them, include a copyright notice.

      18

      Defendant Vijay Rao is the president and sole shareholder of defendant Banian Ltd., incorporated in November 1991. Rao is an electrical engineer in the telecommunications industry who became interested in selling quilts in February 1992. To that end, he imported from India each of the three alphabet quilts at issue in this case. He sold them through boutique stores and catalog companies. The first quilt he ordered was "ABC Green Version I," which he had been shown by a third party. Defendants have not sold this pattern since 1993. "ABC Green Version II" was ordered in September 1994, based upon modifications to "ABC Green Version I" requested by Rao. Defendants reordered this quilt once in April 1995, and then [267] stopped selling it in March 1997. Regarding "ABC Navy," Rao testified that he designed the quilt himself based upon "ABC Green Version II" and imported finished copies in November 1995. Defendants voluntarily withdrew their "ABC Navy" quilts from the market in November 1998 following the initiation of this litigation.

      19

      Plaintiffs filed their suit in March 1997 seeking relief from defendants for copyright infringement, false designation of origin and unfair competition. Plaintiffs also alleged causes of action pertaining to a quilt involving a star design, but the parties agreed to dismiss those claims. Defendants counterclaimed against American Country Quilts and Linens for interference with commercial relations.

      20

      The district court held a three-day bench trial in October 1999 at which documentary evidence was received and a number of witnesses testified. The witnesses were Boisson; her daughter, who related having seen and photographed one of defendants' alphabet quilts at a trade show; plaintiffs' expert witness, who testified regarding the similarities between plaintiffs' and defendants' quilts; defendant Rao; and defendants' expert witness, who testified as to the history of alphabet quilts. At the conclusion of the trial, the district court dismissed all of plaintiffs' claims, dismissed defendants' counterclaim and denied defendants' motion for attorney's fees in a memorandum and order dated February 14, 2000. Plaintiffs have appealed from the judgment entered February 28, 2000, challenging only that part of the order and judgment that dismissed their copyright infringement claims.

      21
      DISCUSSION
      22

      Copyright infringement is established by proving "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, 361 (1991). Throughout the following analysis the key consideration is the extent to which plaintiffs' work is original. See id. at 361-64, 111 S. Ct. 1282.

      23
      I. Ownership of a Valid Copyright
      24

      The Copyright Act provides that a "certificate of [copyright] registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright." 17 U.S.C. § 410(c) (1994). Boisson secured certificates of registration for both "School Days" quilts in 1991, the same year in which she designed them, so that we must presume she holds valid copyrights. Although such a presumption may be rebutted, Folio Impressions, Inc. v. Byer Cal., 937 F.2d 759, 763 (2d Cir. 1991), the district court found there was insufficient proof to support defendants' argument that plaintiffs deliberately misled the Copyright Office when submitting their applications. By not challenging that finding on appeal, defendants concede the validity of plaintiffs' copyrights.

      25
      II. Actual Copying of Plaintiffs' Work
      26

      The element of copying breaks down into two parts. Plaintiffs must first show that defendants "actually copied" their quilts. Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739, 747 (2d Cir. 1998). Actual copying may be established by direct or indirect evidence. Laureyssens v. Idea Group, Inc., 964 F.2d 131, 140 (2d Cir. 1992). Indirect evidence may include proof of "access to the copyrighted work, similarities that are probative of copying between the works, and expert testimony." Id. The district court made a finding that actual copying had occurred, and because defendants do not dispute that finding, [268] actual copying is also established. But not all copying results in copyright infringement, even if the plaintiff has a valid copyright. Feist Publ'ns, 499 U.S. at 361. Plaintiffs must also demonstrate "substantial similarity" between defendants' quilts and the protectible elements of their own quilts. Streetwise Maps, 159 F.3d at 747; accord Laureyssens, 964 F.2d at 140.

      27
      III. Originality
      28

      Plaintiffs' certificates of registration constitute prima facie evidence of the validity not only of their copyrights, but also of the originality of their works. Gaste v. Kaiserman, 863 F.2d 1061, 1066 (2d Cir. 1988) ("We also note that on the issue of originality, as compared to the issue of compliance with statutory formalities, it is even clearer that copyright registration created a presumption of validity."). Yet copyright protection extends only to a particular expression of an idea, and not to the idea itself. Folio Impressions, 937 F.2d at 765; accord Beaudin v. Ben & Jerry's Homemade, Inc., 95 F.3d 1, 2 (2d Cir. 1996); Reyher v. Children's Television Workshop, 533 F.2d 87, 91 (2d Cir. 1976). Simply because a work is copyrighted does not mean every element of that work is protected.

      29

      "The threshold question is what characteristics of [plaintiffs'] design have gained copyright protection." Herbert Rosenthal Jewelry Corp. v. Honora Jewelry Co., 509 F.2d 64, 65 (2d Cir. 1974) (per curiam); see also Folio Impressions, 937 F.2d at 762-65 (determining at the outset which elements of a fabric design were copyrightable). Inasmuch as protection extends only to those components of a work that are original to the author, originality is "the sine qua non of copyright." Feist Publ'ns, 499 U.S. at 348. We now review Boisson's works to determine the extent to which they are original.

      30

      Copyright law does not define the term "originality." Rather, courts have derived its meaning from art. I, § 8, cl. 8 of the United States Constitution, which authorizes Congress "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." See Feist Publ'ns, 499 U.S. at 346. Originality does not mean that the work for which copyright protection is sought must be either novel or unique, Trade-Mark Cases, 100 U.S. 82, 94 (1879), it simply means a work independently created by its author, one not copied from pre-existing works, and a work that comes from the exercise of the creative powers of the author's mind, in other words, "the fruits of [the author's] intellectual labor." Id. The Supreme Court gave an example when it said, in upholding the validity of a copyright to a photo of Oscar Wilde, the photographer made a "'useful, new, harmonious, characteristic, and graceful picture... entirely from his own mental conception, to which he gave visible form by posing the [subject] and arranging the costume, draperies, and other various accessories... so as to present graceful outlines.'" Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 60 (1884).

      31

      If a work is not original, then it is unprotectible. Likewise an element within a work may be unprotectible even if other elements, or the work as a whole, warrant protection. Some material is unprotectible because it is in the public domain, which means that it "is free for the taking and cannot be appropriated by a single author even though it is included in a copyrighted work." Computer Assocs. [269] Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 710 (2d Cir. 1992).

      32
      Ruling of the Trial Court
      33

      Following the bench trial, the district court found some elements of plaintiffs' quilts were unprotectible (i.e., not original) because they were in the public domain: (1) the alphabet, (2) formation of the alphabet using six rows of five blocks across and four icons in the last row, and (3) color. Although that court expressed doubt as to whether copyright protection would extend to the shapes of the letters used in the quilts, it did not rule on that issue. These determinations as to originality may be overturned only if clearly erroneous. See Matthew Bender & Co. v. West Publ'g Co., 158 F.3d 674, 681 (2d Cir. 1998). A finding is clearly erroneous if, upon reviewing the entire record, we are left with "the definite and firm conviction" that a mistake was made. Anderson v. City of Bessemer, 470 U.S. 564, 573 (1985).

      34
      1. Use of Alphabet
      35

      Passing now to the court's ruling, it correctly determined that the alphabet is in the public domain, a finding plaintiffs do not dispute. Nor could they object, considering the applicable regulations provide no copyright protection for "familiar symbols or designs" or "mere variations of... lettering." 37 C.F.R. § 202.1(a) (2000).

      36
      2. Layouts of Alphabet
      37

      To support its finding that the layouts of plaintiffs' quilts were not protected by copyright, the district court relied upon evidence submitted by defendants showing that alphabet quilts have been in existence for over a century, suggesting that such layouts were also in the public domain. One circa 1900 quilt displayed letters and icons in blocks arranged in the same format used in "School Days I." From this evidence the court reasoned that such formation belonged to the public domain. Although it made specific findings only as to the block formation in "School Days I," we presume for purposes of our discussion that, in the absence of a specific finding as to the "School Days II" format, the trial court intended its findings on unprotectibility to extend to the layouts of both of plaintiffs' quilts.

      38

      These findings are clearly erroneous. Not only did plaintiffs obtain valid certificates of copyright registration, but also the alphabetical arrangement of the letters in the five-by-six block format required some minimum degree of creativity, which is all that is required for copyrightability. Moreover, unlike the use of letters, no federal regulation establishes that the use of this layout is unprotectible. These factors create a presumption that the layout is original and therefore a protectible element. Therefore, if defendants want to contest this presumption, they bear the burden of proving that this particular layout is not original. Cf. Gaste, 863 F.2d at 1064 (explaining that burden of proof is on defendant in infringement action who claims the plaintiff's copyright registration is invalid). At trial, defendants asserted that the particular layout of plaintiffs' quilts was copied from the public domain, but they presented insufficient proof to establish that proposition.

      39

      As noted earlier, a plaintiff attempting to prove actual copying on the part of a defendant is entitled to use direct or indirect evidence. Indirect evidence of access and substantial similarity to the plaintiff's work can "support an inference" that copying took place. Streetwise Maps, 159 F.3d at 747. Scholars disagree as to whether a defendant may also rely upon circumstantial evidence to show that a plaintiff copied from the public domain. [270] Compare Jessica Litman, The Public Domain, 39 Emory L.J. 965, 1002-03 (1990) (explaining that a defendant is not entitled to any inference that a plaintiff copied from the public domain simply by showing access and substantial similarity to the public domain work), with Russ VerSteeg, Rethinking Originality, 34 Wm. & Mary L. Rev. 801, 874-75 & n.328 (1993) (permitting a defendant to show copying on the part of the plaintiff through circumstantial evidence that the plaintiff had access and created a work substantially similar to a public domain work). Assuming arguendo that an inference is allowable, defendants in the case at hand nevertheless fall short of proving Boisson copied from the public domain.

      40

      Access may be established directly or inferred from the fact that a work was widely disseminated or that a party had a reasonable possibility of viewing the prior work. See generally 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright, § 13.02[A] (2001) (describing the ways in which access can be shown). Defendants proffered no evidence that Boisson owned an alphabet quilt prior to designing "School Days I" or "School Days II." Instead they point to Boisson's affirmative answer when asked at her deposition whether she had "seen an alphabet design in any other quilts." Boisson was not asked what these quilts looked like or when she saw them relative to designing her own quilts, or whether they bore any resemblance to her own designs.

      41

      Moreover, having seen an alphabet design would not conclusively establish that Boisson saw one from which she copied the arrangement of letters for her "School Days" quilts. As defendants' own proof reveals, alphabet quilts are not limited to the formations found in either the 1900 quilt or plaintiffs' quilts. Some quilts display letters out of order; some display three letters in the first and last rows with five letters in each of the middle rows; one has six letters in rows with icons placed in the border; another has varying numbers of letters in each row with icons or quilting designs in the remaining blocks; while still others have five rows of five letters with the "Z" by itself in a corner or followed by numbers representing the year the quilt was made. Nor are all letters of the alphabet always displayed or even displayed with each letter in its own block.

      42

      Defendants also failed to show that quilts with layouts similar to the "School Days" quilts were so widely disseminated or known as to infer that Boisson reasonably would have seen one before designing her own works. In particular, bearing in mind that Boisson testified as to her specialty in Amish quilts, among the books submitted by defendants into evidence for purposes of showing copying on the part of plaintiffs, only two pertained specifically to Amish designs -- Rachel & Kenneth Pellman, The World of Amish Quilts (1998) and Rachel & Kenneth Pellman, A Treasury of Amish Quilts (1998). Neither book, however, contains an alphabet quilt, although they do contain photographs of other quilts owned by Boisson. Further, Boisson testified at her deposition that she was unaware of any Amish alphabet quilts and had never seen one.

      43

      Absent evidence of copying, an author is entitled to copyright protection for an independently produced original work despite its identical nature to a prior work, because it is independent creation, and not novelty that is required. See 1 Nimmer & Nimmer, supra, § 2.01[A], at 2-9; see also Feist Publ'ns, 499 U.S. at 345 (explaining that a work is "original" for the purposes of copyright law so long as it was "independently created"). Judge Jerome Frank said that an "'author' is entitled to a copyright if he independently [271] contrived a work completely identical with what went before." Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 103 (2d Cir. 1951).

      44
      3. Shapes of Letters
      45

      The trial judge made no explicit finding with respect to the shapes of the letters of the alphabet. Instead, the court stated it was "questionable" whether plaintiffs could copyright the shapes of the letters used, and it cited the regulation that provides "mere variations of typographic ornamentation" are not copyrightable. 37 C.F.R. § 202.1(a). At this juncture, we hesitate to say that letter shapes are unprotectible in this context, but in the absence of a trial court finding, it is not necessary for us to reach this issue.

      46
      4. Color
      47

      Color by itself is not subject to copyright protection. See 37 C.F.R. § 202.1(a). Nevertheless, "[a]n original combination or arrangement of colors should be regarded as an artistic creation capable of copyright protection." 1 Nimmer & Nimmer, supra, § 2.14, at 2-178.4. We have previously declined to single out color as an individual element when conducting a copyright infringement analysis. In Streetwise Maps, 159 F.3d at 748, we determined that "instead of examining the [plaintiff's and defendants'] maps feature-by-feature, viewing the individual colors chosen by [plaintiff] as the protected elements upon which defendants encroached, we focus on the overall manner in which [plaintiff] selected, coordinated, and arranged the expressive elements in its map, including color, to depict the map's factual content" (emphasis added). We reached this conclusion after considering the following two Circuit precedents.

      48

      Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996 (2d Cir. 1995), involved the copyrightability of children's sweater designs. In finding copyright violations, we considered the plaintiff's original contributions to include: "(1) selecting leaves and squirrels as its dominant design elements; (2) coordinating these design elements with a 'fall' palette of colors and with a'shadow-striped'... or a four-paneled... background; and (3) arranging all the design elements and colors into an original pattern for each sweater." Id. at 1004. Similarly, in Novelty Textile Mills, Inc. v. Joan Fabrics Corp., 558 F.2d 1090, 1093 n.5 (2d Cir. 1977), we viewed color in conjunction with the plaid fabric designs utilized by the parties.

      49

      Taken together, these cases teach that even though a particular color is not copyrightable, the author's choice in incorporating color with other elements may be copyrighted. This lesson is in accord with the holding of Feist Publications. See 499 U.S. at 348 ("[C]hoices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity, are sufficiently original that Congress may protect such compilations through the copyright laws."). Boisson testified that she selected on a trial-and-error basis what colors to use, without reference to any existing work. This approach, combined with Boisson's other creative choices, leads us to conclude it was clear error for the district court to find that plaintiffs' choice of colors in the "School Days" quilts was an unprotectible element.

      50
      IV. Substantial Similarity: Ordinary Observer v. More Discerning Observer
      51

      Having found that plaintiffs' quilts are entitled to copyright protection and that defendants actually copied at least some elements of plaintiffs' quilts, we turn [272] our analysis to defendants' contention that its quilts were not substantially similar to plaintiffs'. We review de novo the district court's determination with respect to substantial similarity because credibility is not at stake and all that is required is a visual comparison of the products -- a task we may perform as well as the district court. Folio Impressions, 937 F.2d at 766; accord Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, Inc., 166 F.3d 65, 70 (2d Cir. 1999).

      52

      Generally, an allegedly infringing work is considered substantially similar to a copyrighted work if "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." Folio Impressions, 937 F.2d at 765. Yet in Folio Impressions, the evidence at trial showed the plaintiff designer had copied the background for its fabric from a public domain document and "contributed nothing, not even a trivial variation." 937 F.2d at 764. Thus, part of the plaintiff's fabric was not original and therefore not protectible. We articulated the need for an ordinary observer to be "more discerning" in such circumstances.

      53

      [T]he ordinary observer would compare the finished product that the fabric designs were intended to grace (women's dresses), and would be inclined to view the entire dress -- consisting of protectible and unprotectible elements -- as one whole. Here, since only some of the design enjoys copyright protection, the observer's inspection must be more discerning.

      54

      Id. at 765-66. Shortly after Folio Impressions was decided, we reiterated that a "more refined analysis" is required where a plaintiff's work is not "wholly original," but rather incorporates elements from the public domain. Key Publ'ns, Inc. v. Chinatown Today Publ'g Enters., Inc., 945 F.2d 509, 514 (2d Cir. 1991). In these instances, "[w]hat must be shown is substantial similarity between those elements, and only those elements, that provide copyrightability to the allegedly infringed compilation." Id. In contrast, where the plaintiff's work contains no material imported from the public domain, the "more discerning" test is unnecessary. Hamil Am., Inc. v. GFI, 193 F.3d 92, 101-02 (2d Cir. 1999), cert. denied, 528 U.S. 1160 (2000). In the case at hand, because the alphabet was taken from the public domain, we must apply the "more discerning" ordinary observer test.

      55

      In applying this test, a court is not to dissect the works at issue into separate components and compare only the copyrightable elements. Knitwaves, 71 F.3d at 1003. To do so would be to take the "more discerning" test to an extreme, which would result in almost nothing being copyrightable because original works broken down into their composite parts would usually be little more than basic unprotectible elements like letters, colors and symbols. Id. This outcome --affording no copyright protection to an original compilation of unprotectible elements -- would be contrary to the Supreme Court's holding in Feist Publications.

      56

      Although the "more discerning" test has not always been identified by name in our case law, we have nevertheless always recognized that the test is guided by comparing the "total concept and feel" of the contested works. Knitwaves, 71 F.3d at 1003. For example, in Streetwise Maps, 159 F.3d at 748, we found no infringement -- not because the plaintiff's map consisted of public domain facts such as street locations, landmasses, bodies of water and landmarks, as well as color -- but rather "because the total concept and overall feel created by the two works may not be said to be substantially similar." In Nihon [273] Keizai Shimbun, 166 F.3d at 70-71, we conducted a side-by-side comparison of the articles and abstracts at issue to determine whether a copyright infringement had occurred. Looking beyond the unprotected facts, we analyzed how alike or different the abstracts were in their structure and organization of the facts. Id. at 71.

      57

      Likewise, when evaluating claims of infringement involving literary works, we have noted that while liability would result only if the protectible elements were substantially similar, our examination would encompass "the similarities in such aspects as the total concept and feel, theme, characters, plot, sequence, pace, and setting of the [plaintiff's] books and the [defendants'] works." Williams, 84 F.3d at 588; see also id. at 590 ("[A] scattershot approach cannot support a finding of substantial similarity because it fails to address the underlying issue: whether a lay observer would consider the works as a whole substantially similar to one another."). But see Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119, 123-24 (2d Cir. 1994) (pre-dating Knitwaves and comparing feature-by-feature only the protectible elements of copyrighted dolls).

      58

      In the present case, while use of the alphabet may not provide a basis for infringement, we must compare defendants' quilts and plaintiffs' quilts on the basis of the arrangement and shapes of the letters, the colors chosen to represent the letters and other parts of the quilts, the quilting patterns, the particular icons chosen and their placement. Our analysis of the "total concept and feel" of these works should be instructed by common sense. Cf. Hamil Am., 193 F.3d at 102 (noting that the ordinary observer test involves an examination of "total concept and feel," which in turn can be guided by "good eyes and common sense"). It is at this juncture that we part from the district court, which never considered the arrangement of the whole when comparing plaintiffs' works with defendants'. With this concept in mind, we pass to a comparison of the quilts at issue.

      59
      V. Comparison
      60
      A. "School Days I" v. "ABC Green" Versions
      61

      "School Days I" consists of six horizontal rows, each row containing five blocks, with a capital letter or an icon in each block. The groupings of blocks in each row are as follows: A-E; F-J; K-O; P-T; U-Y; and Z with four icons following in the last row. The four icons are a cat, a house, a single-starred American flag and a basket. "ABC Green Version I" displays the capital letters of the alphabet in the same formation. The four icons in the last row are a cow jumping over the moon, a sailboat, a bear and a star. "ABC Green Version II" is identical to "ABC Green Version I," except that the picture of the cow jumping over the moon is somewhat altered, the bear is replaced by a teddy bear sitting up and wearing a vest that looks like a single-starred American flag, and the star in the last block is represented in a different color.

      62

      All three quilts use a combination of contrasting solid color fabrics or a combination of solid and polka-dotted fabrics to represent the blocks and letters. The following similarities are observed in plaintiffs' and defendants' designs: "A" is dark blue on a light blue background; "B" is red on a white background; "D" is made of polka-dot fabric on a light blue background; "F" on plaintiffs' "School Days I" is white on a pink background, while the "F" on defendants' "ABC Green" versions is pink on a white background; "G" has a green background; "H" and "L" are each a shade of blue on a white background; "M" in each quilt is a shade of yellow on a [274] white background. "N" is green on a white background; "O" is blue on a polka-dot background; "P" is polka-dot fabric on a yellow background; "Q" is brown on a light background; "R" is pink on a gray/purple background. "S" is white on a red background; "T" is blue on a white background; "U" is gray on a white background; "V" is white on a gray background; "W" is pink on a white background; "X" is purple in all quilts, albeit in different shades, on a light background; "Y" is a shade of yellow on the same light background; and "Z" is navy blue or black, in all the quilts.

      63

      Boisson also testified that defendants utilized the same unique shapes as she had given to the letters "J," "M," "N," "P," "R" and "W." With respect to the quilting patterns, "School Days I" and the "ABC Green" versions feature diamond-shaped quilting within the blocks and a "wavy" pattern in the plain white border that surrounds the blocks. The quilts are also edged with a 3/8" green binding.

      64

      From this enormous amount of sameness, we think defendants' quilts sufficiently similar to plaintiffs' design as to demonstrate illegal copying. In particular, the overwhelming similarities in color choices lean toward a finding of infringement. See 1 Nimmer & Nimmer, supra, § 2.14, at 2-178.4 ("[S]imilarity of color arrangements may create an inference of copying of other protectible subject matter."), quoted in Primcot Fabrics, Dep't of Prismatic Fabrics, Inc. v. Kleinfab Corp., 368 F. Supp. 482, 485 (S.D.N.Y. 1974). Although the icons chosen for each quilt are different and defendants added a green rectangular border around their rows of blocks, these differences are not sufficient to cause even the "more discerning" observer to think the quilts are other than substantially similar insofar as the protectible elements of plaintiffs' quilt are concerned. See Williams, 84 F.3d at 588 ("[D]issimilarity between some aspects of the works will not automatically relieve the infringer of liability." (emphasis removed)); Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir. 1936) ("[I]t is enough that substantial parts were lifted; no plagiarist can excuse the wrong by showing how much of his work he did not pirate."). Moreover, the substitution in "ABC Green Version II" of the teddy bear wearing a flag vest as the third icon causes this version of defendants' quilt to look even more like plaintiffs' quilt that uses a single-starred American flag as its third icon. Consequently, both of defendants' "ABC Green" quilts infringed plaintiffs' copyright on its "School Days I" quilt.

      65
      B. "School Days I" v. "ABC Navy"
      66

      We agree with the district court, however, that Rao did not infringe on plaintiffs' design in "School Days I" when he created "ABC Navy." While both quilts utilize an arrangement of six horizontal rows of five blocks each, "ABC Navy" does not have its four icons in the last row. Rather, the teddy bear with the flag vest is placed after the "A" in the first row, the cow jumping over the moon is placed after the "L" in the third row, the star is placed after the "S" in the fifth row, and the sailboat is placed after the "Z" in the last row. Further, the colors chosen to represent the letters and the blocks in "ABC Navy" are, for the most part, entirely different from "School Days I." Defendants dropped the use of polka-dot fabric, and plaintiffs did not even offer a color comparison in their proposed findings of fact to the district court, as they had with each of the "ABC Green" versions. The quilting pattern in the plain white border is changed to a "zig-zag" in "ABC Navy," as opposed to plaintiffs' "wavy" design. Finally, although defendants use a binding [275] around the edge of their quilt, in this instance it is blue instead of green.

      67

      Looking at these quilts side-by-side, we conclude they are not substantially similar to one another. Just as we rejected defendants' earlier argument and held that what few differences existed between "School Days I" and the "ABC Green" quilts could not preclude a finding of infringement, plaintiffs' emphasis on the similarity in style between some of the letters between "School Days I" and "ABC Navy" cannot support a finding of infringement. See Williams, 84 F.3d at 588 ("[W]hen the similarities between the protected elements of plaintiff's work and the allegedly infringing work are of'small import quantitatively or qualitatively[,]' the defendant will be found innocent of infringement."). Because no observer, let alone a "more discerning" observer, would likely find the two works to be substantially similar, no copyright violation could properly be found.

      68
      C. "School Days II" v. "ABC Green" Versions
      69

      Boisson modified her design in "School Days II" in that she utilized seven horizontal rows of four blocks each. The capital letters are displayed A-D, E-H, I-L, M-P, Q-T, U-X, and Y-Z followed by two blocks showing a single-starred American flag and a house. In addition, she framed the rows of blocks with a red rectangular border and vertical blue stripes located off to the left and right sides. The remainder of the quilt is white, with a blue binding on the edge.

      70

      The quilting patterns and the colors used to display the letters and the blocks are substantially the same as those used in "School Days I," as are the shapes of the letters. These similarities between "School Days II" and "School Days I" mean the same similarities are shared with both of defendants' "ABC Green" quilts. Nevertheless, the "total concept and feel" of the quilts are not substantially similar. As in Streetwise Maps, where the maps at issue each depicted geographical facts pertaining to New York City but were found to do so in ways that were not alike, defendants' "ABC Green" quilts depict the alphabet in a manner different from "School Days II." Beyond the difference in how the letters are arranged, this version of plaintiffs' quilt uses the colors red, white and blue to depict a look and feel of American patriotism, while defendants' predominant use of green in their borders and edging do not create the same impression.

      71
      D. "School Days II" v. "ABC Navy"
      72

      As has been explained, although "School Days II" shares the same color combinations in its display of letters and blocks as in "School Days I," defendants' "ABC Navy" quilt does not share the same color combinations as "School Days I." Defendants' quilt is therefore different from "School Days II" in this regard as well. Combined with the varying number of rows and blocks, the placement of icons, the different use and color of rectangular borders around the blocks and the choice of quilting patterns, we agree with the district court that defendants have committed no copyright infringement in their design of "ABC Navy" when compared to plaintiffs' "School Days II." The similarity in letter design and the use of a blue edge are so trivial in the overall look of the two quilts that defendants did not infringe on plaintiffs' copyright.

      73
      VI. Remedies
      74

      The district court, having dismissed all of plaintiffs' claims for infringement, never reached the question of what remedies should be awarded. Plaintiffs seek the maximum statutory damages under 17 U.S.C. § 504, as well as attorney's fees, costs and the issuance of a permanent injunction. Because these matters are [276] better first decided in the trial court, we remand plaintiffs' successful claims to that court for consideration of appropriate remedies. See Scribner v. Summers, 84 F.3d 554, 559 (2d Cir. 1996) (remanding for damages calculations after determining liability on the part of defendants, because "[t]his task is better left to the district court in the first instance").

      75
      CONCLUSION
      76

      For the reasons stated above, we affirm the judgment of the district court insofar as it found no infringement on the part of defendants with respect to their "ABC Navy" quilt as compared to plaintiffs' "School Days I" and "School Days II" quilts and their "ABC Green Version I" and "ABC Green Version II" quilts as compared to plaintiffs' "School Days II" quilt. We reverse the judgment of the district court with respect to plaintiffs' remaining claims, and find defendants' versions I and II of their "ABC Green" quilts infringed on plaintiffs' "School Days I" quilt. Accordingly, we remand the case to the district court for it to determine the appropriate remedies.

      77

      ---------------

      78

      NOTE:

      79

      [1] Hon. Charles S. Haight, Jr., Senior United States District Court Judge for the Southern District of New York, sitting by designation. 

    • 1.4 Swirsky v. Carey (2004)

      1
      376 F.3d 841
      2
      Seth SWIRSKY, an individual d/b/a Julian's Dad; Warryn Campbell, Plaintiffs-Appellants,
      v.
      Mariah CAREY; James Harris, III; Terry Lewis; Flyte Time Productions, Inc., an entity of unknown designation, e/s/a Flyte Tyme Tunes, Inc.; ATV Songs LLC; Rye Songs; Columbia Records; Sony Music Entertainment, Inc.; EMI April Music, Defendants-Appellees.
      3
      No. 03-55033.
      4
      United States Court of Appeals, Ninth Circuit.
      5
      Argued and Submitted February 3, 2004.
      6
      Filed July 12, 2004.
      7
      As Amended on Denial of Rehearing August 24, 2004.
      8

      [843] Jonathan D. Freund (argued), Craig A. Huber, Freund & Brackey LLP, Beverly Hills, CA, for the plaintiffs-appellants.

      9

      Robert M. Dudnik, Mitchell, Silberberg & Knupp, LLP, Los Angeles, CA, for the defendants-appellees.

      10

      Appeal from the United States District Court for the Central District of California; Christina A. Snyder, District Judge, Presiding. D.C. No. CV-00-09926-CAS.

      11

      Before CANBY, JR., NOONAN, and THOMAS, Circuit Judges.

      12

      CANBY, Circuit Judge.

      13

      The plaintiffs, Seth Swirsky and Warryn Campbell, brought this action in district court, alleging that a song produced by the defendants infringed the plaintiffs' copyright in the song, "One of Those Love Songs." The defendants moved for summary judgment, contending that the plaintiffs' evidence failed to meet this circuit's threshold "extrinsic test" for substantial similarity of works. The district court granted the motion, holding that the plaintiffs' expert had failed to show by external, objective criteria that the two songs shared a similarity of ideas and expression. Plaintiffs appeal. We conclude that the plaintiffs' expert's evidence was sufficient to present a triable issue of the extrinsic similarity of the two songs, and that the district court's ruling to the contrary was based on too mechanical an application of the extrinsic test to these musical compositions. We also conclude that the district court erred in ruling portions of plaintiffs' song to be unprotectable by copyright as a matter of law. We accordingly reverse the summary judgment.

      14
      Factual Background
      15

      This case concerns the alleged similarity between the choruses of two popular and contemporary rhythm and blues ("R & B") songs: plaintiffs'"One of Those Love Songs" ("One") and Mariah Carey's "Thank God I Found You" ("Thank God"). One was jointly composed by plaintiffs Seth Swirsky and Warryn Campbell (collectively "Swirsky") in 1997. Pursuant to a licensing agreement, One was recorded [844] by the musical group Xscape and released in May 1998 on Xscape's album "Traces of My Lipstick." Thank God was composed by defendants Carey, James Harris III, and Terry Lewis in 1999 and was released on Carey's album "Rainbow" in November 1999.

      16

      One and Thank God have generally dissimilar lyrics and verse melodies, but they share an allegedly similar chorus that Swirsky claims as an infringement of One's copyright.[1] Swirsky filed this action in district court against Carey, Harris, Lewis, and a number of music companies that had financial interests in Thank God (collectively "Carey") for copyright infringement and related claims.[2] The defendants moved for summary judgment, contending that Swirsky had failed to present a triable issue on the required first, or "extrinsic," part of our circuit's two-part test for the establishment of substantial similarity necessary to sustain a claim of copyright infringement. The defendants also contended that portions of One were not protectable by copyright. The district court agreed with both contentions and granted summary judgment to Carey. Swirsky moved for reconsideration, which the district court denied. This appeal followed.

      17
      Substantial Similarity
      18

      We review de novo the district court's grant of summary judgment. See Smith v. Jackson, 84 F.3d 1213, 1218(9th Cir.1996). We may uphold the summary judgment only if we find that "no reasonable juror could find substantial similarity of ideas and expression [between One and Thank God], viewing the evidence in the light most favorable to the nonmoving party." Id. (quoting Kouf v. Walt Disney Pictures & Television, 16 F.3d 1042, 1045 (9th Cir.1994)); Narell v. Freeman, 872 F.2d 907, 909-910 (9th Cir.1989). If Swirsky presented "indicia of a sufficient disagreement concerning the substantial similarity of [the] two works," then the case must be submitted to a trier of fact. Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1472 (9th Cir.1992) (internal quotations and citation omitted).

      19

      To establish a successful copyright infringement claim, Swirsky must show that (1) he owns the copyright in One and (2) Carey copied protected elements of One. See Rice v. Fox Broad. Co., 330 F.3d 1170, 1174 (9th Cir.2003) (Rice I); Smith, 84 F.3d at 1218. For purposes of summary judgment, Carey conceded that Swirsky owns a valid copyright in One. The element of copying is rarely the subject of direct evidence; Swirsky may establish copying by showing that Carey had access to One and that Thank God was substantially similar to One in One's protected elements. See Smith, 84 F.3d at 1218; Metcalf v. Bochco, 294 F.3d 1069, 1072(9th Cir.2002). Where a high degree of access is shown, we require a lower standard of proof of substantial similarity. See Three Boys Music Corp. v. Bolton, 212 F.3d 477, 485(9th Cir.2000); Smith, 84 F.3d at 1218. For the purposes of summary judgment, Carey conceded that she had a high degree of access to One.[3] Swirsky's [845] burden of proof of substantial similarity is thus commensurately lowered.

      20

      In determining whether two works are substantially similar, we employ a two-part analysis: an objective extrinsic test and a subjective intrinsic test. For the purposes of summary judgment, only the extrinsic test is important because the subjective question whether works are intrinsically similar must be left to the jury. See Rice I, 330 F.3d at 1174; Smith, 84 F.3d at 1218. If Swirsky cannot present evidence that would permit a trier of fact to find that he satisfied the extrinsic test, he necessarily loses on summary judgment because a "jury may not find substantial similarity without evidence on both the extrinsic and intrinsic tests." Rice I, 330 F.3d at 1174 (quoting Kouf, 16 F.3d at 1045).

      21

      The extrinsic test considers whether two works share a similarity of ideas and expression as measured by external, objective criteria.[4] See Smith, 84 F.3d at 1218. The extrinsic test requires "analytical dissection of a work and expert testimony." Three Boys, 212 F.3d at 485. "Analytical dissection" requires breaking the works "down into their constituent elements, and comparing those elements for proof of copying as measured by `substantial similarity.'" Rice v. Fox Broad. Co., 148 F.Supp.2d 1029, 1051 (C.D.Cal.2001), reversed on other grounds, 330 F.3d 1170 (9th Cir.2003) (Rice II). 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. See Rice I, 330 F.3d at 1174; Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1443(9th Cir.1994); Brown Bag, 960 F.2d at 1475-76.

      22

      The expert testimony on which Swirsky relied was that of Dr. Robert Walser, chair of the Musicology Department at the University of California at Los Angeles. On the basis of his aural assessment[5] of One and Thank God, Dr. Walser opined that the two songs had substantially similar choruses.

      23

      Dr. Walser admitted that the lyrics and verse melodies of the two songs differed "clearly and significantly," but stated that the two songs' choruses shared a "basic shape and pitch emphasis" in their melodies, which were played over "highly similar basslines[6] and chord changes, at very nearly the same tempo and in the same generic style."[7] Dr. Walser also noted that it was a "suspicious coincidence" that the two songs' choruses were both sung in B-flat. Dr. Walser further testified that the choruses in both One and Thank God shared a similar structure in that measures five through seven of each chorus were "almost exactly" the same as the first three measures of each chorus.

      24

      [846] Dr. Walser also noted a number of differences between the two songs' choruses. Dr. Walser found that the fourth measures of the choruses were "dramatically different" from each other and noted that while the "basic, emphasized pitches and rhythms" of the basslines were alike, the basslines to both choruses were "ornamented and played slightly differently from chorus to chorus." Dr. Walser also found that certain "text-setting choices"[8] created differences between the two songs' choruses. For example, he noted that in Thank God, Carey sings "D, scale degree three, for a full beat on the first beat of the first measure" while Xscape in One sings the same pitch "divided into two eight-note pulses." Dr. Walser ultimately concluded, however, that these differences were not enough to differentiate the songs because the overall emphasis on musical notes was the same, which "contribute [d] to the impression of similarity one hears when comparing the two songs."

      25

      Dr. Walser transcribed his aural impressions into a series of visual "transcriptions." Dr. Walser created a transcription of each chorus' pitch sequence, melody,[9] and bassline. Dr. Walser labeled his transcription of the basslines a"reduction" because he transcribed only the "basic, emphasized pitches and rhythms." Dr. Walser thus did not include any bassline notes or pitches he found to be "ornamented" in his transcriptions.[10]

      26

      The district court found this evidence insufficient to survive a motion for summary judgment for four reasons. First, the district court found that Dr. Walser's expert methodology was flawed. Second, the district court, using its own analysis, found that no triable issue was raised as to the substantial similarity of measures two, three, six, seven, and eight of the two choruses. Third, the district court held that measures one and five of One were scenes a faire,[11] and thus incapable of supporting a finding of infringement. Finally, the district court discounted any similarity between the two choruses based on key, harmony, tempo, or genre because it found no precedent for substantial similarity to be "founded solely on similarities in key, harmony, tempo or genre, either alone or in combination." We disagree with much of the district court's reasoning on all four points and conclude that Swirsky has satisfied the extrinsic test because he has provided "indicia of a sufficient disagreement concerning the substantial similarity of [the] two works." Brown Bag, 960 F.2d at 1472 (internal quotations and citation omitted).

      27
      A. Dr. Walser's Methodology
      28

      There is nothing inherently unsound about Dr. Walser's musicological methodology in this case. The district court is correct that Dr. Walser's methodology is "selective," in as much as it discounts notes that he characterizes as "ornamental." Dr. Walser, however, explained [847] that the melody (pitch and rhythm) and bassline of a song cannot be divorced from the harmonic rhythm of a song. According to Dr. Walser, notes falling on the beat will be more prominent to the ear than notes falling off the beat. Thus, Dr. Walser opined that, even though measure three of both choruses were not identical in numerical pitch sequence or note selection, they both "emphasize [d] the second scale degree, C, over an A in the bass, resolving to the third scale degree, D, over a D in the bass in the last half of the measure." Dr. Walser provided a comparable analysis for measures one, three, and eight.

      29

      Similarly, Dr. Walser explained that some artists will ornament their notes in ways that others do not. Dr. Walser testified at deposition that both Carey and Xscape ornament their notes with "melismas" and "appoggiaturas," both of which are technical terms for moving up to the next note and then back again. Dr. Walser testified that he did not notate these ornaments in his transcriptions, or take them into account in his opinion, because he "took that to be a matter of the singer customizing the song and regarded those notes as not structural; they are ornamental." As we said in Newton v. Diamond, 349 F.3d 591 (2003), we can "consider only [the defendant's] appropriation of the song's compositional elements and must remove from consideration all the elements unique to [Plaintiff's] performance." Id. at 595. Dr. Walser's methodology sought to remove notes he perceived as performance-related.

      30

      To a certain extent, Dr. Walser's methodology does concentrate on how the two choruses sound to his expert ears, which led the district court to conclude that his testimony related to intrinsic and not extrinsic similarity. We do not agree, however, that Dr. Walser's testimony was an intrinsic rather than extrinsic analysis. He was not testifying, as the intrinsic test would require, as to whether subjectively the "ordinary, reasonable person would find the total concept and feel of the [two choruses] to be substantially similar." Three Boys, 212 F.3d at 485(quoting Pasillas v. McDonald's Corp., 927 F.2d 440, 442 (9th Cir.1991)). Instead, he was stating that, although the two choruses are not exactly identical on paper, when examined in the structural context of harmony, rhythm, and meter, they are remarkably similar. We, therefore, cannot accept the district court's conclusion that Dr. Walser did not "adequately explain, based on objective criteria, why [his] particular subset of notes is more important, or more appropriately analyzed, than the other notes present in the songs." The district court erred in completely discounting Dr. Walser's expert opinion.

      31
      B. The District Court's Measure-by-Measure Analysis
      32

      The district court also erred by basing its comparison of the two choruses almost entirely on a measure-by-measure comparison of melodic note sequences from the full transcriptions of the choruses.[12] Objective analysis of music under the extrinsic test cannot mean that a court may simply compare the numerical representations of pitch sequences and the visual representations of notes to determine that two choruses are not substantially similar, without regard to other elements [848] of the compositions. Under that approach, expert testimony would not be required at all, for any person untrained in music could conclude that "2-2-2-2-2-2-1-2-1-3" did not match "2-2-4-3-2-3" or that a half-note is not identical to an eighth-note. Certainly, musicological experts can disagree as to whether an approach that highlights stressed notes, as Dr. Walser's does, is the most appropriate way to break down music for substantial-similarity comparison, but no approach can completely divorce pitch sequence and rhythm from harmonic chord progression, tempo, and key, and thereby support a conclusion that compositions are dissimilar as a matter of law. It is these elements that determine what notes and pitches are heard in a song and at what point in the song they are found. To pull these elements out of a song individually, without also looking at them in combination, is to perform an incomplete and distorted musicological analysis.[13]

      33

      Furthermore, to disregard chord progression, key, tempo, rhythm, and genre is to ignore the fact that a substantial similarity can be found in a combination of elements, even if those elements are individually unprotected. See Satava v. Lowry, 323 F.3d 805, 811 (9th Cir.2003); Apple Computer, 35 F.3d at 1445. Thus, although chord progressions may not be individually protected, if in combination with rhythm and pitch sequence, they show the chorus of Thank God to be substantially similar to the chorus of One, infringement can be found. See Three Boys, 212 F.3d at 485; Satava, 323 F.3d at 811.[14]

      34

      We recognize the difficulties faced by the district court in this case. We have referred to "the turbid waters of the `extrinsic test' for substantial similarity under the Copyright Act." Metcalf, 294 F.3d at 1071. The application of the extrinsic test, which assesses substantial similarity of ideas and expression, to musical compositions is a somewhat unnatural task, guided by relatively little precedent. Music is an art form that "produces sounds and expresses moods," Debra Presti Brent, The Successful Musical Copyright Infringement Suit: The Impossible Dream, 7 U. Miami Ent. & Sports. L.Rev. 229, 244 (1990), but it does not necessarily communicate separately identifiable ideas. The extrinsic test provides an awkward framework to apply to copyrighted works like music or art objects, which lack distinct elements of idea and expression. Nevertheless, the test is our law and we must apply it. See Smith, 84 F.3d at 1218. The extrinsic test does serve the purpose of permitting summary judgment in clear cases of non-infringement, and it informs [849] the fact-finder of some of the complexities of the medium in issue while guiding attention toward protected elements and away from unprotected elements of a composition.

      35

      In analyzing musical compositions under the extrinsic test, we have never announced a uniform set of factors to be used. We will not do so now. Music, like software programs and art objects, is not capable of ready classification into only five or six constituent elements; music is comprised of a large array of elements, some combination of which is protectable by copyright.[15] For example, in Three Boys we upheld a jury finding of substantial similarity based on the combination of five otherwise unprotectable elements: (1) the title hook phrase (including the lyric, rhythm, and pitch); (2) the shifted cadence; (3) the instrumental figures; (4) the verse/chorus relationship; and (5) the fade ending. Three Boys, 212 F.3d at 485. Other courts have taken account of additional components of musical compositions, including melody, harmony, rhythm, pitch, tempo, phrasing, structure, chord progressions, and lyrics. See Ellis v. Diffie, 177 F.3d 503, 506(6th Cir.1999) (noting that the district court had compared idea, phraseology, lyrics, rhythms, chord progressions, "melodic contours," structures, and melodies under "ordinary observer" test); Cottrill v. Spears, 2003 WL 21223846, at *9 (E.D.Pa. May 22, 2003) (unpublished disposition) (comparing pitch, chord progression, meter, and lyrics under extrinsic test); Tisi v. Patrick, 97 F.Supp.2d 539, 543 (S.D.N.Y.2000) (analyzing structure, melody, harmony, and rhythm under"striking similarity" test); McKinley v. Raye, 1998 WL 119540, at *5 (N.D.Tex. March 10, 1998) (mem.) (analyzing lyrics, melodies, and song structure); Damiano v. Sony Music Entm't, Inc., 975 F.Supp. 623, 631 (D.N.J.1996) (analyzing instrumentation and melody under the extrinsic test); Sylvestre v. Oswald, 1993 WL 179101, at *4 (S.D.N.Y. May 18, 1993) (analyzing melody and lyrics under "striking similarity" test); Intersong-USA v. CBS, Inc., 757 F.Supp. 274, 280 (S.D.N.Y.1991) (analyzing chord progression, structure, pitch, and harmony under substantial similarity[16] test). In addition, commentators have opined that timbre, tone, spatial organization, consonance, dissonance, accents, note choice, combinations, interplay of instruments, basslines, and new technological sounds can all be elements of a musical composition. See Brent, supra, at 248-89; Stephanie J. Jones, Music Copyright in Theory and Practice: An Improved Approach for Determining Substantial Similarity, 31 Duq. L.Rev. 277, 294-95 (1993).

      36

      There is no one magical combination of these factors that will automatically substantiate a musical infringement suit; each allegation of infringement will be unique. So long as the plaintiff can demonstrate, through expert testimony that addresses some or all of these elements and supports its employment of them, that the similarity was "substantial" and to "protected elements" of the copyrighted work, the extrinsic test is satisfied. Swirsky has met that standard here.

      37
      C. Scenes a Faire Analysis
      38

      The district court erred in finding the first and fifth measures of One to [850] be unprotectable by reason of the scenes a faire doctrine.[17] Scenes a faire analysis requires the court to examine whether "motive"[18] similarities that plaintiffs attribute to copying could actually be explained by the common-place presence of the same or similar "motives" within the relevant field. See Smith, 84 F.3d at 1219. Under the scenes a faire doctrine, when certain commonplace expressions are indispensable and naturally associated with the treatment of a given idea, those expressions are treated like ideas and therefore not protected by copyright. See Rice I, 330 F.3d at 1175. The district court held that the first and fifth measures of One were not protected by copyright because Dr. Walser admitted in his deposition that the pitch sequence of the first measure of One' s chorus was more similar to the pitch sequence in the first measure of the folk song "For He's a Jolly Good Fellow" ("Jolly Good") than to the pitch sequence in the first measure of Thank God's chorus.[19]

      39

      The evidence does not support the district court's ruling that the first measure of One is a scene a faire as a matter of law. The songs One and Jolly Good are not in the same relevant "field" of music; One is in the hip-hop/R & B genre and Jolly Good is in the folk music genre. Thus, comparing the first measure of One' s chorus to the first measure of Jolly Good does not tell the court whether the first measure of One' s chorus is an indispensable idea within the field of hip-hop/R & B. Further, even if One and Jolly Good were in the same genre of music, a musical measure cannot be "common-place" by definition if it is shared by only two songs.[20] One and Jolly Good are also written in different time signatures; One is in 4/4 while Jolly Good is in 6/8. Their chord progressions also differ (B-flat to B-flat(sus4) to B-flat in One and G in Jolly Good). This difference further undermines Carey's argument that the two measures are the same as a matter of law.

      40

      The district court also erred in finding the fifth measure of One to be a scene a faire as a matter of law. Carey introduced no independent evidence showing that measure five of One was more similar to Jolly Good than Thank God; she relied exclusively on Dr. Walser's opinion that measure five was "almost identical" to measure one of One. As we have already pointed out, on summary judgment, "almost identical" and "identical" are not equivalents, especially in light of Dr. Walser's transcriptions showing that measure five of One is different in pitch sequence from measure one of One. It is inappropriate to grant summary judgment on the basis of scenes a faire without independent evidence, unless the allegation of scenes a faire is uncontested. See Smith, 84 F.3d at 1220. It was contested here.

      41
      Other Claims of Lack of Copyright Protection
      42

      Because we may affirm the grant of summary judgment on any basis supported [851] by the record, see Newton, 349 F.3d at 594, Carey offers two additional arguments, not reached by the district court, why the summary judgment should be affirmed. Carey first argues that, wholly apart from the scenes a faire doctrine, the first measure of One' s chorus is not protectable because it lacks originality as a matter of law. Because One has a valid certificate of registration with the copyright office, however, Swirsky is entitled to a presumption of originality. See 17 U.S.C. § 410(c) (2003) (citing that presumption of originality extends for five years from date of copyright registration);[21] Three Boys, 212 F.3d at 488-89. Carey can overcome this presumption only by demonstrating that Swirsky's chorus is not original. See id.

      43

      In this circuit, the definition of originality is broad, and originality means "little more than a prohibition of actual copying." Three Boys, 212 F.3d at 489(quoting North Coast Indus. v. Jason Maxwell, Inc., 972 F.2d 1031, 1033(9th Cir.1992)). All that is needed to satisfy originality is for the author to contribute "something more than a `merely trivial' variation." Id.; see also ETS-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1073 (9th Cir.2000)(referring to "the low threshold for originality under the Copyright Act"). Carey argues that the first measure of One's chorus is not original because it is "substantially similar" to the first measure of Jolly Good.[22] See North Coast, 972 F.2d at 1033-34. The two measures may share the same pitch sequence, but they are not identical in meter, tempo, or key. There is, therefore, a triable issue whether there are more than "merely trivial" differences between the two works. Carey's contention that the first measure of Swirsky's chorus is not original as a matter of law accordingly fails.

      44

      Although the first measure of One' s chorus and the first measure of Jolly Good may share the same pitch sequence, they are not identical in meter, tempo, or key. There is, therefore, a triable issue whether there are more than "merely trivial" differences between the two works. Carey's contention that the first measure of Swirsky's chorus is not original as a matter of law fails.

      45

      Carey next argues that the first measure of One is a mere "musical idea," not protectable under the Copyright Act. Carey relies on Dr. Walser's testimony that the first measure of One was a "short musical idea." Carey's reasoning is fallacious for a number of reasons, the most basic being that a musicologist is not an expert on what the term "idea" means under the copyright laws. Labeling something as a "musical idea" does not necessarily bear on whether it is also an "idea" under the copyright laws and unprotectable for that reason.

      46

      No federal court has stated that a musical motive is not protectable because it is an idea. Nor does the "musical idea" of the first measure of Swirsky's chorus lack protection because of its brevity. Although it is true that a single musical note would be too small a unit to attract copyright protection (one would not want to give the first author a monopoly over the note of B-flat for example), an arrangement of a limited number of notes can garner copyright protection. See Elsmere Music, Inc. v. Nat'l Broad. Co., 482 F.Supp. 741, 744 (S.D.N.Y.1980) (finding that four notes were substantial enough to be protected by copyright); Santrayll v.[852] Burrell, 1996 WL 134803, at *2 (S.D.N.Y. Mar.25, 1996) (mem.order) (finding that the repetition of the word "uh-oh" four times in a distinctive rhythm for one measure is sufficiently original to render it protectable under the copyright laws). This Court has stated that "[e]ven if a copied portion be relatively small in proportion to the entire work, if qualitatively important, the finder of fact may properly find substantial similarity." Baxter v. MCA, Inc., 812 F.2d 421, 425(9th Cir.1987). The melodic line in the first measure of One is seven notes long. It cannot be said as a matter of law that seven notes is too short a length to garner copyright protection. We therefore reject this challenge to the protection of the first measure of One's chorus.

      47
      Evidentiary Arguments
      48

      Swirsky challenges two evidentiary rulings of the district court, which we address because the issues may arise again in further proceedings on remand. We review for abuse of discretion the district court's decision to admit or exclude evidence. See Los Angeles News Serv. v. Tullo, 973 F.2d 791, 800 (9th Cir.1992).

      49
      A. The Work Session Tape
      50

      The district court did not abuse its discretion in refusing to admit a tape of Carey's "work session" that Swirsky offered as evidence of direct copying. Although there is no explicit ruling by the district court on Swirsky's offer to introduce the tape other than a passing reference in the minute order denying Swirsky's motion for reconsideration, that omission is not in and of itself an abuse of discretion. See GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1209-1210 (9th Cir.2000) (stating that a district court's silence in regard to a ruling is not abuse of discretion if the record supports the court's decision).

      51

      The work session tape that Swirsky sought to introduce demonstrated only that Carey came into the studio with the melody to the chorus of Thank God in her head. The fact that a composer or singer has a melody in her head does not necessarily demonstrate direct copying; the melody could easily be the product of her own creative processes, conscious or subconscious. It was thus not a clear error of judgment for the district court to refuse to admit the work session tape.

      52
      B. The Bassline Transcriptions
      53

      The district court did not abuse its discretion in admitting defense expert Anthony Ricigliano's bassline transcriptions of One and Thank God. Swirsky objected to the admission of Ricigliano's transcriptions on the grounds of lack of personal knowledge or foundation, hearsay, lack of authentication, and relevance. Ricigliano's transcriptions, however, appear to have been admitted for the limited purpose of showing what the two choruses' basslines "looked like" before being reduced by Dr. Walser.[23] In his deposition, Dr. Walser testified that Ricigliano's bassline transcriptions were accurate. Whether Dr. Walser's methodology was complete and accurate in comparing the two songs' choruses is obviously relevant. Further, Ricigliano's transcriptions were not introduced to prove the truth of the matter asserted, but simply to give the court a complete transcription of the basslines. The transcriptions are therefore not hearsay. See Fed.R.Evid. 801(c). Finally, because Swirsky's own expert, Dr. Walser, admitted the accuracy of Ricigliano's transcriptions, there was no foundation or authentication [853] problem. See Fed.R.Evid. 901(a) and (b)(1); Fed.R.Civ.P. 56(e). We therefore reject Swirsky's evidentiary challenges.

      54
      Conclusion
      55

      We conclude that Swirsky's expert adequately explained his methodology and provided "indicia of a sufficient disagreement concerning the substantial similarity of two works" so that the issue of the substantial similarity of the two choruses should have been presented to a jury. Brown Bag, 960 F.2d at 1472 (internal quotations and citation omitted). We further conclude that the district court erred in ruling as a matter of law that measures one and five of One were scenes a faire. Finally, we reject Carey's contention that these measures were unprotectable as a matter of law on the grounds that they were unoriginal or mere musical ideas. We therefore reverse the summary judgment and remand this case to the district court for further proceedings consistent with this opinion.[24]

      56

      REVERSED and REMANDED.

      57

      [1] Swirsky also claims that the piano introduction to Thank God infringes Swirsky's copyright because the introduction is essentially a piano version of Thank God' s chorus. To the extent this is the case, Swirsky's claim that the introduction infringes his copyright depends on whether Thank God's chorus is substantially similar to One' s chorus.

      58

      [2] On this appeal the parties present issues related only to the copyright infringement claim.

      59

      [3] A number of the people involved in recording One were also involved in the recording of Thank God. Both songs were mastered by Bob Ludwig at Gateway Mastering, produced by Sony Music Entertainment, and distributed through Columbia Records. Jermaine Dupri served as a producer to both albums and Kandi Burress, one of the former members of Xscape, co-wrote the song "X-Girlfriend" with Carey for the "Rainbow" album.

      60

      [4] Although the extrinsic test examines the similarity of ideas and expression, it must be kept in mind that ideas by themselves are not subject to copyright protection; only the expression of ideas is. See Rice I, 330 F.3d at 1174.

      61

      [5] Dr. Walser did not compare sheet music in arriving at his expert opinion. Neither One nor Thank God was originally composed using sheet music.

      62

      [6] A bassline (often written "bass line") is defined as "[t]he succession of the lowest notes in a passage (or composition) which `support' the other parts and are mainly responsible for the harmonic progression." Grove Music Online, at http://www.grovemusic.com.

      63

      [7] Dr. Walser identified the style as "contemporary R & B or `urban' music."

      64

      [8] Dr. Walser stated that text-setting choices mean that some pitches are repeated in one song while they are held in another.

      65

      [9] Melody is a function of both pitch (i.e. the steps, or tones, on the scale) and rhythm (i.e. time values and relationships between the notes) of a series of notes.

      66

      [10] Carey introduced bassline transcriptions of the two choruses made by Carey's expert, Anthony Ricigliano, to show the notes that Dr. Walser had omitted from his reduction.

      67

      [11] As we discuss more fully below, scenes a faire are common expressions indispensable to the expression of particular ideas in a relevant field; they are treated as unprotectable by copyright, in the manner of ideas. See Smith, 84 F.3d at 1219.

      68

      [12] The district court did not separately analyze measures four, six and seven. The district court accepted Dr. Walser's testimony that the fourth measures of the two songs' choruses were "dramatically different." The district court found that it did not need to analyze measures six and seven separately because Dr. Walser had opined that they were "almost identical" to measures one, two and three.

      69

      [13] In fact, concentration solely on pitch sequence may break music down beyond recognition. If a musician were provided with a group of notes identified only by numerical pitch sequences, he or she could play that music a number of different ways, none of them being substantially similar to each other. In order to perform a song exactly, the musician would need information about key, harmony, rhythm, and tempo — the type of information not included in the district court's comparison.

      70

      [14] The district court also erred in not separately analyzing measures six and seven of both choruses. Although Dr. Walser stated in his opinion that measures six and seven of One were "almost identical" to measures two and three of One, the district court was bound to view the evidence in the light most favorable to Swirsky. See Smith, 84 F.3d at 1218. The court was not free to conclude that, because measures two and three of Thank God were not substantially similar to corresponding measures of One, measures six and seven could not be substantially similar to those of One. In that sense, "almost identical" cannot be equated with "identical," especially when Dr. Walser's transcriptions showed measure six of One to be different in pitch sequence from measure two of One.

      71

      [15] Literary works, such as books, film, and television shows, are more easily broken into a small number of discrete elements to analyze, namely "plot, themes, dialogue, mood, setting, pace, characters and sequence of events." Metcalf, 294 F.3d at 1073 (quoting Kouf, 16 F.3d at 1045).

      72

      [16] The Southern District of New York's substantial similarity test does not differentiate between extrinsic and intrinsic analysis.

      73

      [17] The district court did not separately analyze measure five because Dr. Walser had opined that it was "almost identical" to measure one.

      74

      [18] Motive as used here means "an element or a component in a decorative composition." ROGET'S II: THE NEW THESAURUS, THIRD EDITION (1995), available at http://www.bartleby.com/62/47/M1004700.html (last visited May 4, 2004).

      75

      [19] Carey's attorney told Dr. Walser to ignore rhythm when comparing One to Jolly Good.

      76

      [20] Although Carey also argues that the pitch sequence of the first measure of One' s chorus was highly similar to the first measure of the folk song "The Bear Went Over the Mountain" ("Bear Went"), we note that Bear Went and Jolly Good are musically identical songs.

      77

      [21] The copyright was registered in August 1998 and this action was filed in November 2000.

      78

      [22] Carey also argues that the first measure of One is substantially similar to the first measure of Bear Went. Because Bear Went is exactly the same musically, albeit not lyrically, to Jolly Good, the comparison of One to Jolly Good applies with equal force to the comparison between One and Bear Went as well.

      79

      [23]> The district court never "directly" used Ricigliano's transcriptions to compare the choruses of One and Thank God, only to discount Dr. Walser's expert methodology.

      80

      [24] Because we reverse the district court's grant of summary judgment, Swirsky's challenge to the denial of his motion to reconsider is moot. See Flowers v. First Hawaiian Bank, 295 F.3d 966, 969 (9th Cir.2002).

  • 2 March 12: Derivative Works

    • 2.1 Castle Rock Entertainment v. Carol Pub. Group (1998)

      1
      150 F.3d 132 (1998)
      2
      CASTLE ROCK ENTERTAINMENT, INC., Plaintiff-Appellee,
      v.
      CAROL PUBLISHING GROUP, INC., Defendant-Cross Claimant-Appellant,
      Beth B. Golub, Defendant-Cross Defendant-Appellant.
      3
      No. 97-7992.
      4

      United States Court of Appeals, Second Circuit.

      5
      Argued January 8, 1998.
      6
      Decided July 10, 1998.
      7

       

      8

      [133] [134] Melvin L. Wulf, Beldock, Levine & Hoffman, LLP, New York City, for Defendants-Appellants.

      9

      David Dunn, Davis, Weber & Edwards, P.C., New York City, for Plaintiff-Appellee.

      10

      Before: VAN GRAAFEILAND and WALKER, Circuit Judges, and RAKOFF, District Judge.[*]

      11

      [135] JOHN M. WALKER, Jr., Circuit Judge:

      12

      This case presents two interesting and somewhat novel issues of copyright law. The first is whether The Seinfeld Aptitude Test, a trivia quiz book devoted exclusively to testing its readers' recollection of scenes and events from the fictional television series Seinfeld, takes sufficient protected expression from the original, as evidenced by the book's substantial similarity to the television series, such that, in the absence of any defenses, the book would infringe the copyright in Seinfeld. The second is whether The Seinfeld Aptitude Test (also referred to as The SAT) constitutes fair use of the Seinfeld television series.

      13

      Defendants-appellants Carol Publishing Group, Inc. and Beth B. Golub appeal from the July 23, 1997 judgment of the United States District Court for the Southern District of New York (Sonia Sotomayor, District Judge) granting, pursuant to Fed.R.Civ.P. 56, plaintiff-appellee Castle Rock Entertainment, Inc.'s ("Castle Rock") motion for summary judgment; denying defendants' cross-motion for summary judgment; awarding Castle Rock $403,000 for defendants' copyright infringement; and permanently enjoining defendants from publishing The Seinfeld Aptitude Test.

      14

      We conclude that The SAT unlawfully copies from Seinfeld and that its copying does not constitute fair use and thus is an actionable infringement. Accordingly, we affirm the judgment in favor of Castle Rock.

      15
      Background
      16

      The material facts in this case are undisputed. Plaintiff Castle Rock is the producer and copyright owner of each episode of the Seinfeld television series. The series revolves around the petty tribulations in the lives of four single, adult friends in New York: Jerry Seinfeld, George Costanza, Elaine Benes, and Cosmo Kramer. Defendants are Beth Golub, the author, and Carol Publishing Group, Inc., the publisher, of The SAT, a 132-page book containing 643 trivia questions and answers about the events and characters depicted in Seinfeld. These include 211 multiple choice questions, in which only one out of three to five answers is correct; 93 matching questions; and a number of short-answer questions. The questions are divided into five levels of difficulty, labeled (in increasing order of difficulty) "Wuss Questions," "This, That, and the Other Questions," "Tough Monkey Questions," "Atomic Wedgie Questions," and "Master of Your Domain Questions." Selected examples from level 1 are indicative of the questions throughout The SAT:

      17
      1. To impress a woman, George passes himself off as
      18
      a) a gynecologist
      19
      b) a geologist
      20
      c) a marine biologist
      21
      d) a meteorologist
      22
      11. What candy does Kramer snack on while observing a surgical procedure from an operating-room balcony?
      23
      12. Who said, "I don't go for those nonrefundable deals ... I can't commit to a woman ... I'm not committing to an airline."?
      24
      a) Jerry
      25
      b) George
      26
      c) Kramer[2]
      27

      The book draws from 84 of the 86 Seinfeld episodes that had been broadcast as of the [136] time The SAT was published. Although Golub created the incorrect answers to the multiple choice questions, every question and correct answer has as its source a fictional moment in a Seinfeld episode. Forty-one questions and/or answers contain dialogue from Seinfeld. The single episode most drawn upon by The SAT, "The Cigar Store Indian," is the source of 20 questions that directly quote between 3.6% and 5.6% of that episode (defendants' and plaintiffs calculations, respectively).

      28

      The name "Seinfeld" appears prominently on the front and back covers of The SAT, and pictures of the principal actors in Seinfeld appear on the cover and on several pages of the book. On the back cover, a disclaimer states that "This book has not been approved or licensed by any entity involved in creating or producing Seinfeld."[3] The front cover bears the title "The Seinfeld Aptitude Test" and describes the book as containing "[h]undreds of spectacular questions of minute details from TV's greatest show about absolutely nothing." The back cover asks:

      29
      Just how well do you command the buzz-words, peccadilloes, petty annoyances, and triflingly complex escapades of Jerry Seinfeld, Elaine Benes, George Costanza, and Kramer — the fabulously neurotic foursome that makes the offbeat hit TV series Seinfeld tick?
      30
      ....
      31
      If you think you know the answers — and really keep track of Seinfeld minutiae — challenge yourself and your friends with these 550 trivia questions and 10 extra matching quizzes. No, The Seinfeld Aptitude Test can't tell you whether you're Master of Your Domain, but it will certify your status as King or Queen of Seinfeld trivia. So twist open a Snapple, double-dip a chip, and open this book to satisfy your between-episode cravings.
      32

      Golub has described The SAT as a "natural outgrowth" of Seinfeld which, "like the Seinfeld show, is devoted to the trifling, picayune and petty annoyances encountered by the show's characters on a daily basis." According to Golub, she created The SAT by taking notes from Seinfeld programs at the time they were aired on television and subsequently reviewing videotapes of several of the episodes, as recorded by her or various friends.

      33

      The SAT's publication did not immediately provoke a challenge. The National Broadcasting Corporation, which broadcasted Seinfeld, requested free copies of The SAT from defendants and distributed them together with promotions for the program. Seinfeld's executive producer characterized The SAT as "a fun little book." There is no evidence that The SAT's publication diminished Seinfeld's profitability, and in fact Seinfeld's audience grew after The SAT was first published.

      34

      Castle Rock has nevertheless been highly selective in marketing products associated with Seinfeld, rejecting numerous proposals from publishers seeking approval for a variety of projects related to the show. Castle Rock licensed one Seinfeld book, The Entertainment Weekly Seinfeld Companion, and has licensed the production of a CD-ROM product that includes discussions of Seinfeld episodes; the CD-ROM allegedly might ultimately include a trivia bank. Castle Rock claims in this litigation that it plans to pursue a more aggressive marketing strategy for Seinfeld-related products, including "publication of books relating to Seinfeld."

      35

      In November 1994, Castle Rock notified defendants of its copyright and trademark infringement claims. In February 1995, after defendants continued to distribute The SAT, Castle Rock filed this action alleging federal copyright and trademark infringement and state law unfair competition. Subsequently, both parties moved, pursuant to Fed.R.Civ.P. 56, for summary judgment on both the copyright and unfair competition claims.

      36

      The district court granted summary judgment to Castle Rock on the copyright claim. It held that defendants had violated plaintiff's copyrights in Seinfeld and that such copying did not constitute fair use. See Castle Rock Entertainment v. Carol Publ'g Group, Inc., 955 F.Supp. 260, 274 (S.D.N.Y. 1997). The district court did not grant summary [137] judgment to either party on the unfair competition claim. See id. The parties then stipulated to damages and attorneys' fees on the copyright infringement claim and, presumably to facilitate the appeal, to the dismissal without prejudice of all remaining claims. Carol Publishing's cross-claims against Golub were dismissed with prejudice. The district court entered final judgment on the copyright infringement claim, awarded Castle Rock $403,000 with interest, permanently enjoined defendants from publishing or distributing The SAT, and ordered defendants to destroy all copies of The SAT in their custody or control. Defendants now appeal.

      37
      Discussion
      38
      Standard of Review
      39

      Summary judgment is appropriate only if the moving party can show that there is "no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). The court "must draw all reasonable inferences and resolve all ambiguities in favor of the non-moving party." Garza v. Marine Transp. Lines, Inc., 861 F.2d 23, 26 (2d Cir.1988). Although "[f]air use is a mixed question of law and fact," Harper & Row, Publishers, Inc. v. Nation Enter., 471 U.S. 539, 560, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985), this court has on a number of occasions "resolved fair use determinations at the summary judgment stage" where, as here, there are no genuine issues of material fact. Wright v. Warner Books, Inc., 953 F.2d 731, 735 (2d Cir.1991); Leibovitz v. Paramount Pictures Corp., 137 F.3d 109 (2d Cir.1998) (affirming summary judgment awarded to defendants on basis of fair use defense); Harper & Row, 471 U.S. at 560, 105 S.Ct. 2218. We review the district court's legal conclusions de novo and its findings of fact for clear error. See American Geophysical Union v. Texaco Inc., 60 F.3d 913, 918 (2d Cir.1994).

      40
      Copyright Infringement
      41

      The Copyright Act of 1976 ("Copyright Act"), 17 U.S.C. §§ 101-803, grants copyright owners a bundle of exclusive rights, including the rights to "reproduce the copyrighted work in copies" and "to prepare derivative works based upon the copyrighted work." Id. § 106. "Copyright infringement is established when the owner of a valid copyright demonstrates unauthorized copying." Repp v. Webber, 132 F.3d 882, 889 (2d Cir.1997); see Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). There are two main components of this prima facie case of infringement: "a plaintiff must first show that his work was actually copied .... [and] then must show that the copying amounts to an improper or unlawful appropriation." Laureyssens v. Idea Group, Inc., 964 F.2d 131, 139-40 (2d Cir.1992) (quotation marks and citations omitted). Actual copying may be established "either by direct evidence of copying or by indirect evidence, including access to the copyrighted work, similarities that are probative of copying between the works, and expert testimony." Id. at 140. As we have noted before, "probative," rather than "substantial" similarity is the correct term in referring to the plaintiff's initial burden of proving actual copying by indirect evidence. See Webber, 132 F.3d at 889 n. 1; Laureyssens, 964 F.2d at 140. "It is only after actual copying is established that one claiming infringement" then proceeds to demonstrate that the copying was improper or unlawful by showing that the second work bears "substantial similarity" to protected expression in the earlier work. Webber, 132 F.3d at 889; Laureyssens, 964 F.2d at 140.

      42

      In the instant case, no one disputes that Castle Rock owns valid copyrights in the Seinfeld television programs and that defendants actually copied from those programs in creating The SAT. Golub freely admitted that she created The SAT by taking notes from Seinfeld programs at the time they were aired on television and subsequently reviewing videotapes of several of the episodes that she or her friends recorded. Since the fact of copying is acknowledged and undisputed, the critical question for decision is whether the copying was unlawful or improper in that it took a sufficient amount of protected expression from Seinfeld as evidenced by its substantial similarity to such expression.

      43

      [138]

      44

       

      45
      Substantial Similarity
      46

      We have stated that "substantial similarity"

      47
      requires that the copying [be] quantitatively and qualitatively sufficient to support the legal conclusion that infringement (actionable copying) has occurred. The qualitative component concerns the copying of expression, rather than ideas [, facts, works in the public domain, or any other non-protectable elements].... The quantitative component generally concerns the amount of the copyrighted work that is copied,
      48

      which must be more than "de minimis." Ringgold v. Black Entertainment Television, Inc., 126 F.3d 70, 75 (2d Cir.1997) (emphasis added).

      49

      As to the quantitative element, we conclude that The SAT has crossed the de minimis threshold. At the outset, we observe that the fact that the copying appears in question and answer form is by itself without particular consequence: the trivia quiz copies fragments of Seinfeld in the same way that a collection of Seinfeld jokes or trivia would copy fragments of the series. In order to determine the quantitative extent of the defendants' copying, we must then decide whether to analyze separately the amount of expression copied from each individually copyrighted Seinfeld episode, or to analyze in the aggregate the amount copied from the eighty-four Seinfeld episodes. As defendants observe, 17 U.S.C. § 106 speaks throughout in the singular, referring to the allegedly infringed "work," thus bolstering an individual-episode analysis. Our precedents, however, tend to support the aggregate analysis. See Twin Peaks Prods., Inc. v. Publications Int'l, Ltd., 996 F.2d 1366, 1372-73, 1381 (2d Cir.1993) (finding substantial similarity between infringing book and 8 episodes of Twin Peaks weekly television series seen as a whole, but awarding statutory damages on per-episode basis); Wainwright Secs. Inc. v. Wall St. Transcript Corp., 558 F.2d 91, 94 (2d Cir.1977) (abstracts of a number of research reports treated cumulatively in fair use analysis); see also Craft v. Kobler, 667 F.Supp. 120, 124-25 (S.D.N.Y.1987) (passages taken from 15 separate books of copyright holder treated cumulatively in finding infringement); cf. New Era Publications Int'l, ApS v. Carol Publ'g Group, 904 F.2d 152, 158 (2d Cir.1990) (in analyzing whether critical biography was fair use of 48 original writings, court noted that biography "uses overall a small percentage of [plaintiff's] works" but also noted that percentage of copying taken from each individual work was not "unfair") (emphasis added); but see Salinger v. Random House, Inc., 811 F.2d 90, 98 (2d Cir.1987) (copying of Salinger letters not fair use because, among other factors, secondary work copied one-third of 17 letters and 10 percent of 42 letters).

      50

      As in Twin Peaks, for the purposes of the quantitative copying analysis we shall treat Seinfeld — a discrete, continuous television series — as a single work.[4] Where the secondary work focuses on an entire continuous television series such as Seinfeld, there is no basis for looking in isolation at the amount copied from each separately copyrighted episode. Although 17 U.S.C. § 106 speaks in terms of a singular copyrighted "work," it would elevate form over substance to conclude that The SAT's copying of 643 fragments from 84 individually copyrighted Seinfeld episodes is indistinguishable from a case in which a 634-question trivia quiz book poses a few questions from each of 84 unrelated television programs, books, movies, or any combination of creative works that do not constitute a discrete series of works. Had The SAT copied a few fragments from each of 84 unrelated television programs (perhaps comprising the entire line-up on broadcast television), defendants would have a stronger case under the de minimis doctrine. By copying not a few but 643 fragments from the Seinfeld television series, however, The SAT has plainly crossed the quantitative copying threshold under Ringgold.

      51

      As to Ringgold's qualitative component, each SAT trivia question is based directly upon original, protectable expression in Seinfeld. As noted by the district court, The SAT did not copy from Seinfeld unprotected [139] facts, but, rather, creative expression. Cf. Feist, 499 U.S. at 364, 111 S.Ct. 1282 (finding no infringement where defendant produced a multi-county phone directory, in part, by obtaining names and phone numbers from plaintiffs' single-county directory). Unlike the facts in a phone book, which "do not owe their origin to an act of authorship," id. at 347, 111 S.Ct. 1282, each "fact" tested by The SAT is in reality fictitious expression created by Seinfeld's authors. The SAT does not quiz such true facts as the identity of the actors in Seinfeld, the number of days it takes to shoot an episode, the biographies of the actors, the location of the Seinfeld set, etc. Rather, The SAT tests whether the reader knows that the character Jerry places a Pez dispenser on Elaine's leg during a piano recital, that Kramer enjoys going to the airport because he's hypnotized by the baggage carousels, and that Jerry, opining on how to identify a virgin, said "It's not like spotting a toupee." Because these characters and events spring from the imagination of Seinfeld's authors, The SAT plainly copies copyrightable, creative expression.[5] See Feist, 499 U.S. at 347, 111 S.Ct. 1282 (discussing distinction between discovered facts, which do not "owe their origin to an act of authorship" and therefore are not protected by copyright, and created facts, which constitute original, protected expression).

      52

      We find support for this conclusion in a previous case in which we held that a series of still photographs of a ballet may in some cases infringe the copyright in an original choreographic work. See Horgan v. Macmillan, Inc., 789 F.2d 157, 163 (2d Cir.1986). The defendants in Horgan claimed that still photographs could not "capture the flow of movement, which is the essence of dance," that "the staged performance could not be recreated from the photographs," and thus, that the photographs were not substantially similar to the choreographic work. Id. at 161-62 (quotation marks omitted). Although noting that the issue "was not a simple one," this court rejected that argument, holding that "the standard for determining copyright infringement is not whether the original could be recreated from the allegedly infringing copy, but whether the latter is substantially similar to the former." Id. at 162 (quotation marks omitted). That observation applies with equal force to the trivia quiz fragments in this case. Although Seinfeld could not be "recreated" from The SAT, Castle Rock has nevertheless established both the quantitative and qualitative components of the substantial similarity test, establishing a prima facie case of copyright infringement.

      53
      Other Tests
      54

      As defendants note, substantial similarity usually "arises out of a claim of infringement as between comparable works .... [where] because of the equivalent nature of the competing works, the question of similarity can be tested conventionally by comparing comparable elements of the two works." Because in the instant case the original and secondary works are of different genres and to a lesser extent because they are in different media, tests for substantial similarity other than the quantitative/qualitative approach are not particularly helpful to our analysis.

      55

      Under the "ordinary observer" test, for example, "[t]wo works are substantially similar where `the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard [the] aesthetic appeal [of the two works] as the same.'" Arica Inst., Inc. v. Palmer, 970 F.2d 1067, 1072 (2d Cir.1992) (quoting Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir.1960) (L.Hand, J.) (comparing dress designs)) (alterations in original). Undoubtedly, Judge Hand did not have in mind a comparison of aesthetic appeal as between a television series and a trivia quiz and, in the usual case, we might [140] question whether any "ordinary observer" would "regard [the] aesthetic appeal" in a situation-comedy television program as being identical to that of any book, let alone a trivia quiz book, about that program. Cf. Laureyssens, 964 F.2d at 132, 141 (applying "ordinary observer" test to compare two sets of foam rubber puzzles). We note here, however, that plaintiff has a plausible claim that there is a common aesthetic appeal between the two works based on The SAT's plain copying of Seinfeld and Golub's statement on the back cover that the book was designed to complement the aesthetic appeal of the television series. See The SAT ("So twist open a Snapple, double-dip a chip, and open this book to satisfy your between episode cravings.").

      56

      Under the "total concept and feel" test, urged by defendants, we analyze "the similarities in such aspects as the total concept and feel, theme, characters, plot, sequence, pace, and setting" of the original and the allegedly infringing works. Williams v. Crichton, 84 F.3d 581, 588 (2d Cir.1996) (comparing children's books with novel and movie); Reyher v. Children's Television Workshop, 533 F.2d 87, 91 (2d Cir.1976) (comparing children's book with story in Sesame Street Magazine). Defendants contend that The SAT and the Seinfeld programs are incomparable in conventional terms such as plot, sequence, themes, pace, and setting. For example, The SAT has no plot; "[t]he notion of pace ... cannot be said even to exist in the book"; The SAT's "sequence has no relationship to the sequences of any of the Seinfeld episodes, since it is a totally random and scattered collection of questions relating to events that occurred in the shows"; and The SAT's only theme "is how much a Seinfeld fan can remember of 84 different programs." The total concept and feel test, however, is simply not helpful in analyzing works that, because of their different genres and media, must necessarily have a different concept and feel. Indeed, many "derivative" works of different genres, in which copyright owners have exclusive rights, see 17 U.S.C. § 106, may have a different total concept and feel from the original work.

      57

      Finally, we do not apply the "fragmented literal similarity" test,[6] which focuses upon copying of direct quotations or close paraphrasing, or the "comprehensive nonliteral similarity" test, which examines whether "the fundamental essence or structure of one work is duplicated in another." 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03[A][1], at 13-29, § 13.03[A][2], at 13-45 (1997) (hereafter "Nimmer"); Twin Peaks, 996 F.2d at 1372-73(applying Nimmer test); Warner Bros. Inc. v. American Broad. Cos., 720 F.2d 231, 240, 242 (2d Cir.1983) (applying Nimmer test to compare Superman and The Greatest American Hero). In the instant case, because the direct quotations or close paraphrases that The SAT copied from the Seinfeld series are few and almost irrelevant to The SAT, undue focus upon these isolated quotations could improperly distract us from inquiring as to whether substantial similarity exists between Seinfeld and The SAT.

      58

      Castle Rock's comprehensive nonliteral similarity argument — that the defendants "literally constructed the SAT with 643 fragments of Seinfeld's creative whole" — is also unhelpful to our analysis and unnecessary to our determination that The SAT is substantially similar to Seinfeld. Without having viewed Seinfeld itself, no SAT reader could plausibly "construct" in his or her mind the plot of any Seinfeld episode, nor any of Seinfeld's settings (the Seinfeld and Kramer apartments, the foursome's restaurant hangout, George Steinbrenner's office, etc.), nor even the four principal Seinfeld characters. Nor does The SAT "[duplicate] the fundamental essence or structure" of Seinfeld. 4 Nimmer § 13.03[A][1], at 13-29; cf. Twin Peaks, 996 F.2d 1372-73 (finding "substantial similarity through comprehensive nonliteral similarity" where chapter of infringing book "is essentially a detailed recounting of the first eight episodes of the [television] series" and "[e]very intricate plot twist and element of character development appear in the Book [141] in the same sequence as in the teleplays"). However, "[t]he standard for determining copyright infringement is not whether the original could be recreated from the allegedly infringing copy, but whether the latter is `substantially similar' to the former," Horgan, 789 F.2d at 162, and in copying a sufficient amount of protected expression from the Seinfeld television series, The SAT easily passes the threshold of substantial similarity between the contents of the secondary work and the protected expression in the original.

      59
      Fair Use
      60

      Defendants claim that, even if The SAT's copying of Seinfeld constitutes prima facie infringement, The SAT is nevertheless a fair use of Seinfeld. "From the infancy of copyright protection," the fair use doctrine "has been thought necessary to fulfill copyright's very purpose, `[t]o promote the Progress of Science and useful Arts.'" Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994) (quoting U.S. Const., art. I, § 8, cl. 8). As noted in Campbell, "in truth, in literature, in science and in art, there are, and can be, few, if any, things, which in an abstract sense, are strictly new and original throughout. Every book in literature, science and art, borrows, and must necessarily borrow, and use much which was well known and used before." Id. (quotation marks omitted). Until the 1976 Copyright Act, the doctrine of fair use grew exclusively out of the common law. See id. at 576, 114 S.Ct. 1164; Folsom v. Marsh, 9 F.Cas. 342, 348 (C.D.Mass.1900) (CCD Mass. 1841) (Story, J.) (stating fair use test); Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L.Rev. 1105, 1105 (1990) ("Leval").

      61

      In the Copyright Act, Congress restated the common law tradition of fair use:

      62
      [T]he fair use of a copyrighted work ... for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include —
      63
      (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
      64
      (2) the nature of the copyrighted work;
      65
      (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
      66
      (4) the effect of the use upon the potential market for or value of the copyrighted work.
      67

      17 U.S.C. § 107. This section "intended that courts continue the common law tradition of fair use adjudication" and "permits and requires courts to avoid rigid application of the copyright statute, when, on occasion, it would stifle the very creativity which that law is designed to foster." Campbell, 510 U.S. at 577, 114 S.Ct. 1164 (quotation marks omitted). Fair use analysis, therefore, always "calls for case-by-case analysis." Id. The fair use examples provided in § 107 are "illustrative and not limitative" and "provide only general guidance about the sorts of copying that courts and Congress most commonly had found to be fair uses." Id. at 577-78, 114 S.Ct. 1164. Similarly, the four listed statutory factors in § 107 guide but do not control our fair use analysis and "are to be explored, and the results weighed together, in light of the purposes of copyright." Id.; see 4 Nimmer § 13.05[A], at 13-153 ("[T]he factors contained in Section 107 are merely by way of example, and are not an exhaustive enumeration."). The ultimate test of fair use, therefore, is whether the copyright law's goal of "promot[ing] the Progress of Science and useful Arts," U.S. Const., art. I, § 8, cl. 8, "would be better served by allowing the use than by preventing it." Arica, 970 F.2d at 1077.

      68
      Purpose/Character of Use
      69

      The first fair use factor to consider is "the purpose and character of the [allegedly infringing] use, including whether such use is of a commercial nature or is for nonprofit educational purposes." 17 U.S.C. § 107(1). That The SAT's use is commercial, at most, "tends to weigh against a finding of fair use." [142] Campbell, 510 U.S. at 585, 114 S.Ct. 1164 (quotation marks omitted); Texaco, 60 F.3d at 921. But we do not make too much of this point. As noted in Campbell, "nearly all of the illustrative uses listed in the preamble paragraph of § 107, including news reporting, comment, criticism, teaching, scholarship, and research ... are generally conducted for profit in this country," 510 U.S. at 584, 114 S.Ct. 1164 (quotation marks omitted), and "no man but a blockhead ever wrote, except for money," id. (quoting 3 Boswell's Life of Johnson 19 (G. Hill ed.1934)). We therefore do not give much weight to the fact that the secondary use was for commercial gain.

      70

      The more critical inquiry under the first factor and in fair use analysis generally is whether the allegedly infringing work "merely supersedes" the original work "or instead adds something new, with a further purpose or different character, altering the first with new ... meaning [] or message," in other words "whether and to what extent the new work is `transformative.'" Id. at 579, 114 S.Ct. 1164 (quoting Leval at 1111). If "the secondary use adds value to the original — if [copyrightable expression in the original work] is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings — this is the very type of activity that the fair use doctrine intends to protect for the enrichment of society." Leval at 1111. In short, "the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works." Campbell, 510 U.S. at 579, 114 S.Ct. 1164.

      71

      Defendants claim two primary "transformative" qualities of The SAT. First, as noted by the district court, "a text testing one's knowledge of Joyce's Ulysses, or Shakespeare's Hamlet, would qualify as `criticism, comment, scholarship, or research,' or such. The same must be said, then, of a text testing one's knowledge of Castle Rock's Seinfeld." Castle Rock, 955 F.Supp. at 268 (citing Twin Peaks, 996 F.2d at 1374 ("A comment is as eligible for fair use protection when it concerns `Masterpiece Theater' and appears in the New York Review of Books as when it concerns `As the World Turns' and appears in Soap Opera Digest.")). In other words, the fact that the subject matter of the quiz is plebeian, banal, or ordinary stuff does not alter the fair use analysis. Criticism, comment, scholarship, research, and other potential fair uses are no less protectable because their subject is the ordinary.

      72

      Second, defendants style The SAT as a work "decod[ing] the obsession with ... and mystique that surround[s] `Seinfeld,'" by "critically restructur[ing] [Seinfeld's mystique] into a system complete with varying levels of `mastery' that relate the reader's control of the show's trivia to knowledge of and identification with their hero, Jerry Seinfeld." Citing one of their own experts for the proposition that "[t]he television environment cannot speak for itself but must be spoken for and about," defendants argue that "The SAT is a quintessential example of critical text of the TV environment .... expos[ing] all of the show's nothingness to articulate its true motive forces and its social and moral dimensions." (Quotation marks omitted). Castle Rock dismisses these arguments as post hoc rationalizations, claiming that had defendants been half as creative in creating The SAT as were their lawyers in crafting these arguments about transformation, defendants might have a colorable fair use claim.

      73

      Any transformative purpose possessed by The SAT is slight to non-existent. We reject the argument that The SAT was created to educate Seinfeld viewers or to criticize, "expose," or otherwise comment upon Seinfeld. The SAT's purpose, as evidenced definitively by the statements of the book's creators and by the book itself, is to repackage Seinfeld to entertain Seinfeld viewers. The SAT's back cover makes no mention of exposing Seinfeld to its readers, for example, as a pitiably vacuous reflection of a puerile and pervasive television culture, but rather urges SAT readers to "open this book to satisfy [their] between-episode [Seinfeld] cravings." Golub, The SAT's author, described the trivia quiz book not as a commentary or a Seinfeld research tool, but as an effort to "capture Seinfeld's flavor in quiz book fashion." Finally, even viewing The SAT in the light most favorable to defendants, we find scant [143] reason to conclude that this trivia quiz book seeks to educate, criticize, parody, comment, report upon, or research Seinfeld, or otherwise serve a transformative purpose.[7] The book does not contain commentary or analysis about Seinfeld, nor does it suggest how The SAT can be used to research Seinfeld; rather, the book simply poses trivia questions. The SAT's plain purpose, therefore, is not to expose Seinfeld's "nothingness," but to satiate Seinfeld fans' passion for the "nothingness" that Seinfeld has elevated into the realm of protectable creative expression.

      74

      Although a secondary work need not necessarily transform the original work's expression to have a transformative purpose, see, e.g., 4 Nimmer § 13.05[D][2], at 13-227-13-228 (discussing reproduction of entire works in judicial proceedings), the fact that The SAT so minimally alters Seinfeld's original expression in this case is further evidence of The SAT's lack of transformative purpose. To be sure, the act of testing trivia about a creative work, in question and answer form, involves some creative expression. While still minimal, it does require posing the questions and hiding the correct answer among three or four incorrect ones.[8] Also, dividing the trivia questions into increasing levels of difficulty is somewhat more original than arranging names in a telephone book in alphabetical order. See Feist, 499 U.S. at 362-63, 111 S.Ct. 1282. The SAT's incorrect multiple choice answers are also original. However, the work as a whole, drawn directly from the Seinfeld episodes without substantial alteration, is far less transformative than other works we have held not to constitute fair use. See, e.g., Twin Peaks, 996 F.2d at 1378 (book about Twin Peaks television series that discusses show's popularity, characters, actors, plots, creator, music, and poses trivia questions about show held not to be fair use).

      75

      Finally, we note a potential source of confusion in our copyright jurisprudence over the use of the term "transformative." A "derivative work," over which a copyright owner has exclusive control, is defined as

      76
      a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted.
      77

      17 U.S.C. §§ 101, 106(2) (emphasis added). Although derivative works that are subject to the author's copyright transform an original work into a new mode of presentation, such works — unlike works of fair use — take expression for purposes that are not "transformative."[9] In the instant case, since The SAT has transformed Seinfeld's expression into trivia quiz book form with little, if any, transformative purpose, the first fair use factor weighs against defendants.

      78
      Nature of the Copyrighted Work
      79

      The second statutory factor, "the nature of the copyrighted work," 17 U.S.C. § 107(2), "calls for recognition that some works are closer to the core of intended copyright protection than others, with the consequence that fair use is more difficult to establish when the former works are copied." Campbell, 510 U.S. at 586, 114 S.Ct. 1164. Defendants concede that the scope of fair use is somewhat narrower with respect to fictional works, such as Seinfeld, than to factual works. See Stewart v. Abend, 495 U.S. 207, 237, 110 S.Ct. 1750, 109 L.Ed.2d 184 (1990) ("In general, fair use is more [144] likely to be found in factual works than in fictional works"); Twin Peaks, 996 F.2d at 1376 (second factor "favor[s] ... creative and fictional work"). Although this factor may be of less (or even of no) importance when assessed in the context of certain transformative uses, see, e.g., Campbell, 510 U.S. at 586, 114 S.Ct. 1164 (creative nature of original "Pretty Woman" song "not much help" to fair use analysis "since parodies almost invariably copy ... expressive works"), the fictional nature of the copyrighted work remains significant in the instant case, where the secondary use is at best minimally transformative. Thus, the second statutory factor favors the plaintiff.

      80
      Amount and Substantiality of the Portion Used in Relation to the Copyrighted Work as a Whole
      81

      As a preliminary matter, the district court held that its determination that The SAT is substantially similar to Seinfeld "`should suffice for a determination that the third fair use factor favors the plaintiff.'" Castle Rock, 955 F.Supp. at 269-70 (quoting Twin Peaks, 996 F.2d at 1377). However, because secondary users need invoke the fair use defense only where there is substantial similarity between the original and allegedly infringing works, and thus actionable copying, the district court's analysis is of little if any assistance. Under the district court's analysis, the third fair use factor would always and unfairly favor the original copyright owner claiming no fair use. See 4 Nimmer § 13.05[A], at 13-152 ("[F]air use is a defense not because of the absence of substantial similarity but rather despite the fact that the similarity is substantial.").

      82

      In Campbell, a decision post-dating Twin Peaks, the Supreme Court clarified that the third factor — the amount and substantiality of the portion of the copyrighted work used — must be examined in context. The inquiry must focus upon whether "[t]he extent of ... copying" is consistent with or more than necessary to further "the purpose and character of the use." 510 U.S. at 586-87, 114 S.Ct. 1164; see Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 449-50, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984) (reproduction of entire work "does not have its ordinary effect of militating against a finding of fair use" as to home videotaping of television programs); Harper & Row, 471 U.S. at 564, 105 S.Ct. 2218 ("[E]ven substantial quotations might qualify as fair use in a review of a published work or a news account of a speech" but not in a scoop of a soon-to-be-published memoir.). "[B]y focussing [sic] on the amount and substantiality of the original work used by the secondary user, we gain insight into the purpose and character of the use as we consider whether the quantity of the material used was reasonable in relation to the purpose of the copying." Texaco, 60 F.3d at 926 (quotation marks omitted). In Campbell, for example, the Supreme Court determined that a "parody must be able to `conjure up' at least enough of [the] original [work] to make the object of its critical wit recognizable" and then determined whether the amount used of the original work was "no more than necessary" to satisfy the purpose of parody. 510 U.S. at 588-89, 114 S.Ct. 1164.

      83

      In the instant case, it could be argued that The SAT could not expose Seinfeld's "nothingness" without repeated, indeed exhaustive examples deconstructing Seinfeld's humor, thereby emphasizing Seinfeld's meaninglessness to The SAT's readers. That The SAT posed as many as 643 trivia questions to make this rather straightforward point, however, suggests that The SAT's purpose was entertainment, not commentary. Such an argument has not been advanced on appeal, but if it had been, it would not disturb our conclusion that, under any fair reading, The SAT does not serve a critical or otherwise transformative purpose. Accordingly, the third factor weighs against fair use.

      84
      Effect of Use Upon Potential Market for or Value of Copyrighted Work
      85

      Defendants claim that the fourth factor favors their case for fair use because Castle Rock has offered no proof of actual market harm to Seinfeld caused by The SAT. To the contrary, Seinfeld's audience grew after publication of The SAT, and Castle Rock has evidenced no interest in publishing Seinfeld [145] trivia quiz books and only minimal interest in publishing Seinfeld-related books.

      86

      The Supreme Court has recently retreated from its earlier cases suggesting that the fourth statutory factor is the most important element of fair use, see Harper & Row, 471 U.S. at 566, 105 S.Ct. 2218, recognizing instead that "[a]ll [factors] are to be explored, and the results weighed together, in light of the purposes of copyright," Campbell, 510 U.S. at 578, 114 S.Ct. 1164; see Texaco, 60 F.3d at 926 (applying Campbell approach). Under this factor, we "consider not only the extent of market harm caused by the particular actions of the alleged infringer, but also whether unrestricted and widespread conduct of the sort engaged in by the defendant ... would result in a substantially adverse impact on the potential market for the original." Campbell, 510 U.S. at 590, 114 S.Ct. 1164 (quotation marks and citation omitted). The fourth factor must also "take account ... of harm to the market for derivative works," id., defined as those markets "that creators of original works would in general develop or license others to develop," id. at 592, 114 S.Ct. 1164.

      87

      In considering the fourth factor, our concern is not whether the secondary use suppresses or even destroys the market for the original work or its potential derivatives, but whether the secondary use usurps or substitutes for the market of the original work. Id. at 593, 114 S.Ct. 1164. The more transformative the secondary use, the less likelihood that the secondary use substitutes for the original. Id. at 591, 114 S.Ct. 1164. As noted by the district court, "[b]y the very nature of [transformative] endeavors, persons other than the copyright holder are undoubtedly better equipped, and more likely, to fill these particular market and intellectual niches." Castle Rock, 955 F.Supp. at 271. And yet the fair use, being transformative, might well harm, or even destroy, the market for the original. See Campbell, 510 U.S. at 591-92, 114 S.Ct. 1164 ("[A] lethal parody, like a scathing theater review, kills demand for the original, [but] does not produce a harm cognizable under the Copyright Act."); New Era Publications, 904 F.2d at 160 ("a critical biography serves a different function than does an authorized, favorable biography, and thus injury to the potential market for the favorable biography by the publication of the unfavorable biography does not affect application of factor four").[10]

      88

      Unlike parody, criticism, scholarship, news reporting, or other transformative uses, The SAT substitutes for a derivative market that a television program copyright owner such as Castle Rock "would in general develop or license others to develop." Campbell, 510 U.S. at 592, 114 S.Ct. 1164.[11] Because The SAT borrows exclusively from Seinfeld and not from any other television or entertainment programs, The SAT is likely to fill a market niche that Castle Rock would in general develop. Moreover, as noted by the district court, this "Seinfeld trivia game is not critical of the program, nor does it parody the program; if anything, SAT pays homage to Seinfeld." Castle Rock, 955 F.Supp. at 271-72. Although Castle Rock has evidenced little if any interest in exploiting this market for derivative works based on Seinfeld, such as by creating and publishing Seinfeld trivia books (or at least trivia books that endeavor to "satisfy" the "between-episode [146] cravings" of Seinfeld lovers), the copyright law must respect that creative and economic choice. "It would ... not serve the ends of the Copyright Act — i.e., to advance the arts — if artists were denied their monopoly over derivative versions of their creative works merely because they made the artistic decision not to saturate those markets with variations of their original." Castle Rock, 955 F.Supp. at 272; see Salinger, 811 F.2d at 99 ("The need to assess the effect on the market for Salinger's letters is not lessened by the fact that their author has disavowed any intention to publish them during his lifetime."). The fourth statutory factor therefore favors Castle Rock.

      89
      Other Factors
      90

      As we have noted, the four statutory fair use factors are non-exclusive and serve only as a guide to promote the purposes underlying the copyright law. One factor that is of no relevance to the fair use equation, however, is defendants' continued distribution of The SAT after Castle Rock notified defendants of its copyright infringement claim, because "[i]f the use is otherwise fair, then no permission need be sought or granted.... [B]eing denied permission to use a work does not weigh against a finding of fair use." Campbell, 510 U.S. at 585 n. 18, 114 S.Ct. 1164; see Wright, 953 F.2d at 737 (rejecting as irrelevant to fair use analysis argument that defendant failed to get plaintiff's permission to create work).

      91

      We also note that free speech and public interest considerations are of little relevance in this case, which concerns garden-variety infringement of creative fictional works. See 4 Nimmer § 13.05[B][4], at 13-205 ("The public interest is also a factor that continually informs the fair use analysis."); cf. Time Inc. v. Bernard Geis Assocs., 293 F.Supp. 130, 146 (S.D.N.Y.1968) (discussing importance of access to information about President Kennedy assassination in fair use analysis of home video of assassination).

      92
      Aggregate Assessment
      93

      Considering all of the factors discussed above, we conclude that the copyright law's objective "[t]o promote the Progress of Science and useful Arts" would be undermined by permitting The SAT's copying of Seinfeld, see Arica, 970 F.2d at 1077, and we therefore reject defendants' fair use defense. Finally, we note that defendants do not assert that Castle Rock abandoned, forfeited, or misused copyrights in Seinfeld, and that defendants have asserted no defense on appeal other than that of fair use.

      94
      Conclusion
      95

      Undoubtedly, innumerable books could "expose" the "nothingness" or otherwise comment upon, criticize, educate the public about, or research Seinfeld and contemporary television culture. The SAT, however, is not such a book. For the reasons set forth above, the judgment of the district court is affirmed.[12]

      96

      [*] The Honorable Jed S. Rakoff, of the United States District Court for the Southern District of New York, sitting by designation.

      97

      [2] An example of the trivia quiz book's matching questions (entitled "Family Trees") is as follows:

      98

      1. Cousin Jeffrey 2. Uncle Leo 3. Manya 4. Isaac 5. Mr. Seinfeld 6. Mrs. Seinfeld 7. Mr. Benes 8. Mr. Costanza 9. Mrs. Costanza 10. Mrs. Kramer.

      99

      (a) Former condo association president

      100

      (b) Drinks Colt 45 in the nude

      101

      (c) Arm-grabbing, loquacious garbage can picker

      102

      (d) Leaves a rent-controlled New York City apartment for the Phoenix sunshine

      103

      (e) Gruff-talking, well-known novelist

      104

      (f) New York City employee who watches the Nature Channel

      105

      (g) Wears sneakers in the swimming pool and has to "get the good spot in front of the good building in the good neighborhood"

      106

      (h) Enjoys the heat and never uses air conditioning

      107

      (i) Elderly immigrant whose beloved pony was "the pride of Krakow"

      108

      (j) Nagging, shrill-voiced Glamour magazine reader who was hospitalized for a back injury

      109

      [3] As noted later, this opinion does not address issues of trademark or unfair competition.

      110

      [4] Because the parties have stipulated to damages, we need not address, as did Twin Peaks, whether damages should be assessed on a perepisode basis.

      111

      [5] We appreciate that the line between unprotected fact and protected creative expression may in some instances be less clear. Where a "fictional" single mother in a popular television series engages in real political discourse with a real Vice-President of the United States, for example, it is less clear whether the television "script" is fiction — in the sense that it is only a television script, or fact — in the sense that it is a real dialogue with a real political figure about contemporary issues. Whatever the line between historical fact and creative expression, however, Seinfeld is securely on the side of creative expression.

      112

      [6] We do not understand Ringgold's quantitative analysis to be the same as a fragmented similarity analysis. The former considers the amount of copying not only of direct quotations and close paraphrasing, but also of all other protectable expression in the original work.

      113

      [7] Had The SAT's incorrect answer choices attempted to parody Seinfeld, for example, defendants would have a stronger case for fair use. See Campbell, 510 U.S. at 588, 114 S.Ct. 1164.

      114

      [8] In the time it took to write this last sentence, for example, one could have easily created the following trivia question about the film trilogy Star Wars: "Luke Skywalker was aghast to learn that Darth Vader was Luke's (a) father (b) father-in-law (c) best friend (d) Jerry Seinfeld," and innumerable other such trivia questions about original creative works.

      115

      [9] Indeed, if the secondary work sufficiently transforms the expression of the original work such that the two works cease to be substantially similar, then the secondary work is not a derivative work and, for that matter, does not infringe the copyright of the original work. See 1 Nimmer § 3.01, at 3-3 (stating that "a work will be considered a derivative work only if it would be considered an infringing work" if it were unauthorized).

      116

      [10] By the same token, because a "film producer's appropriation of a composer's previously unknown song that turns the song into a commercial success" is a market substitute, that use is not made fair because it increases the market for the original work. Campbell, 510 U.S. at 591 n. 21, 114 S.Ct. 1164.

      117

      [11] Just as secondary users may not exploit markets that original copyright owners would "in general develop or license others to develop" even if those owners had not actually done so, copyright owners may not preempt exploitation of transformative markets, which they would not "in general develop or license others to develop," by actually developing or licensing others to develop those markets. Thus, by developing or licensing a market for parody, news reporting, educational or other transformative uses of its own creative work, a copyright owner plainly cannot prevent others from entering those fair use markets. See 4 Nimmer § 13.05[A][4], at 13-181-13-182 (recognizing "danger of circularity" where original copyright owner redefines "potential market" by developing or licensing others to develop that market); Texaco, 60 F.3d at 930 ("Only an impact on potential licensing revenues for traditional, reasonable, or likely to be developed markets" is relevant to fourth factor.).

      118

      [12] For any reader of this opinion still possessed by post-Seinfeld "cravings," the answers to the trivia questions posed supra, at 3-4 & n. 2, are: 1-c, 11-"Junior Mints," 12-a; matching: 1-f, 2-c, 3-i, 4-d, 5-a, 6-h, 7-e, 8-g, 9-j, 10-b.

    • 2.2 Lee v. A.R.T. Company

      1

      125 F.3d 580
      235 Copr.L.Dec. P 27,686, 44 U.S.P.Q.2d 1153

      Annie LEE and Annie Lee & Friends Company, Inc., Plaintiffs-Appellants,
      v.
      A.R.T. COMPANY, also known as Albuquerque A.R.T. Company,
      Defendant-Appellee.

      No. 96-2522.
      United States Court of Appeals, Seventh Circuit.
      Argued Feb. 10, 1997.
      Decided Sept. 18, 1997.

      [580] P. Scott Neville, Jr., Howse, Howse, Neville & Gray, Geraldine C. Simmons (argued), Salone, Simmons & Murray, Chicago, IL, for Plaintiffs-Appellants.

      2

      Joan Pennington, Joseph Krieger, Philip M. Kolehmainen, Mason, Kolehmainen, Rathburn & Wyss, Chicago, IL, George J. Netter (argued), Pasadena, CA, for Defendant-Appellee.

      3

      Before BAUER, EASTERBROOK, and DIANE P. WOOD, Circuit Judges.

      4

      EASTERBROOK, Circuit Judge.

      5

      Annie Lee creates works of art, which she sells through her firm Annie Lee & Friends. Deck the Walls, a chain of outlets for modestly priced art, is among the buyers of her works, which have been registered with the Register of Copyrights. One Deck the Walls store sold some of Lee's notecards and small lithographs to A.R.T. Company, which mounted the works on ceramic tiles (covering the art with transparent epoxy resin in the process) and resold the tiles. Lee contends that these tiles are derivative works, which under 17 U.S.C. § 106(2) may not be prepared without the permission of the copyright proprietor. She seeks both monetary and injunctive relief. Her position has the support of two cases holding that A.R.T.'s business violates the copyright laws. Munoz v. Albuquerque A.R.T. Co., 38 F.3d 1218 (9th Cir. 1994), affirming without published opinion 829 F. Supp. 309 (D. Alaska 1993); Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 (9th Cir. 1988). Mirage Editions, the only full appellate discussion, dealt with pages cut from books and mounted on tiles; the court of appeals' brief order in Muoz concludes that the reasoning of Mirage Editions is equally applicable to works [581] of art that were sold loose. Our district court disagreed with these decisions and entered summary judgment for the defendant. 925 F. Supp. 576 (N.D. Ill. 1996).

      6

      Now one might suppose that this is an open and shut case under the doctrine of first sale, codified at 17 U.S.C. § 109(a). A.R.T. bought the work legitimately, mounted it on a tile, and resold what it had purchased. Because the artist could capture the value of her art's contribution to the finished product as part of the price for the original transaction, the economic rationale for protecting an adaptation as "derivative" is absent. See William M. Landes & Richard A. Posner, An Economic Analysis of Copyright Law, 17 J. Legal Studies 325, 353-57 (1989). An alteration that includes (or consumes) a complete copy of the original lacks economic significance. One work changes hands multiple times, exactly what § 109(a) permits, so it may lack legal significance too. But § 106(2) creates a separate exclusive right, to "prepare derivative works", and Lee believes that affixing the art to the tile is "preparation," so that A.R.T. would have violated § 106(2) even if it had dumped the finished tiles into the Marianas Trench. For the sake of argument we assume that this is so and ask whether card-on-a-tile is a "derivative work" in the first place. 

      7

      "Derivative work" is a defined term:

      8

      A "derivative work" is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a "derivative work".

      9

      17 U.S.C. § 101. The district court concluded that A.R.T.'s mounting of Lee's works on tile is not an "original work of authorship" because it is no different in form or function from displaying a painting in a frame or placing a medallion in a velvet case. No one believes that a museum violates § 106(2) every time it changes the frame of a painting that is still under copyright, although the choice of frame or glazing affects the impression the art conveys, and many artists specify frames (or pedestals for sculptures) in detail. Munoz and Mirage Editions acknowledge that framing and other traditional means of mounting and displaying art do not infringe authors' exclusive right to make derivative works. Nonetheless, the ninth circuit held, what A.R.T. does creates a derivative work because the epoxy resin bonds the art to the tile. Our district judge thought this a distinction without a difference, and we agree. If changing the way in which a work of art will be displayed creates a derivative work, and if Lee is right about what "prepared" means, then the derivative work is "prepared" when the art is mounted; what happens later is not relevant, because the violation of the § 106(2) right has already occurred. If the framing process does not create a derivative work, then mounting art on a tile, which serves as a flush frame, does not create a derivative work. What is more, the ninth circuit erred in assuming that normal means of mounting and displaying art are easily reversible. A painting is placed in a wooden "stretcher" as part of the framing process; this leads to some punctures (commonly tacks or staples), may entail trimming the edges of the canvas, and may affect the surface of the painting as well. Works by Jackson Pollock are notoriously hard to mount without damage, given the thickness of their paint. As a prelude to framing, photographs, prints, and posters may be mounted on stiff boards using wax sheets, but sometimes glue or another more durable substance is employed to create the bond.

      10

      Lee wages a vigorous attack on the district court's conclusion that A.R.T.'s mounting process cannot create a derivative work because the change to the work "as a whole" is not sufficiently original to support a copyright. Cases such as Gracen v. The Bradford Exchange, Inc., 698 F.2d 300 (7th Cir. 1983), show that neither A.R.T. nor Lee herself could have obtained a copyright in the card-on-a-tile, thereby not only extending the period of protection for the images but also eliminating competition in one medium of display. After the ninth circuit held that its [582] mounting process created derivative works, A.R.T. tried to obtain a copyright in one of its products; the Register of Copyrights sensibly informed A.R.T. that the card-on-a-tile could not be copyrighted independently of the note card itself. But Lee says that this is irrelevant--that a change in a work's appearance may infringe the exclusive right under § 106(2) even if the alteration is too trivial to support an independent copyright. Pointing to the word "original" in the second sentence of the statutory definition, the district judge held that "originality" is essential to a derivative work. This understanding has the support of both cases and respected commentators. E.g., L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (2d Cir. 1976); Melville B. Nimmer & David Nimmer, 1 Nimmer on Copyrights § 3.03 (1997). Pointing to the fact that the first sentence in the statutory definition omits any reference to originality, Lee insists that a work may be derivative despite the mechanical nature of the transformation. This view, too, has the support of both cases and respected commentators. E.g., Lone Ranger Television, Inc. v. Program Radio Corp., 740 F.2d 718, 722 (9th Cir. 1984); Paul Goldstein, Copyright: Principles, Law and Practice § 5.3.1 (2d ed. 1996) (suggesting that a transformation is covered by § 106(2) whenever it creates a "new work for a different market").

      12

      Fortunately, it is not necessary for us to choose sides. Assume for the moment that the first sentence recognizes a set of non-original derivative works. To prevail, then, Lee must show that A.R.T. altered her works in one of the ways mentioned in the first sentence. The tile is not an "art reproduction"; A.R.T. purchased and mounted Lee's original works. That leaves the residual clause: "any other form in which a work may be recast, transformed, or adapted." None of these words fits what A.R.T. did. Lee's works were not "recast" or "adapted". "Transformed" comes closer and gives the ninth circuit some purchase for its view that the permanence of the bond between art and base matters. Yet the copyrighted note cards and lithographs were not "transformed" in the slightest. The art was bonded to a slab of ceramic, but it was not changed in the process. It still depicts exactly what it depicted when it left Lee's studio. See William F. Patry, Copyright Law and Practice 823-24 (1994) (disapproving Mirage Editions on this ground).[1] If mounting works a "transformation," then changing a painting's frame or a photograph's mat equally produces a derivative work. Indeed, if Lee is right about the meaning of the definition's first sentence, then any alteration of a work, however slight, requires the author's permission. We asked at oral argument what would happen if a purchaser jotted a note on one of the note cards, or used it as a coaster for a drink, or cut it in half, or if a collector applied his seal (as is common in Japan); Lee's counsel replied that such changes prepare derivative works, but that as a practical matter artists would not file suit. A definition of derivative work that makes criminals out of art collectors and tourists is jarring despite Lee's gracious offer not to commence civil litigation.

      14

      If Lee (and the ninth circuit) are right about what counts as a derivative work, then the United States has established through the back door an extraordinarily broad version of authors' moral rights, under which artists may block any modification of their works of which they disapprove. No European version of droit moral goes this far. Until recently it was accepted wisdom that the United States did not enforce any claim of moral rights; even bowdlerization of a work was permitted unless the modifications produced a new work so different that it infringed the exclusive right under § 106(2). Compare WGN Continental Broadcasting Co. v. United Video, Inc., 693 F.2d 622 (7th Cir. 1982), with Gilliam v. American Broadcasting Companies, Inc., 538 F.2d 14, 24 (2d Cir. 1976). The Visual Artists Rights Act of 1990, Pub. L. 101-650, 104 Stat. 5089, 5123-33, moves federal law in the direction of moral rights, but the cornerstone of the new statute, 17 U.S.C. § 106A, does not assist [583] Lee. Section 106A(a)(3)(A) gives an artist the right to "prevent any intentional distortion, mutilation, or other modification of that work which would be prejudicial to his or her honor or reputation". At oral argument Lee's lawyer disclaimed any contention that the sale of her works on tile has damaged her honor or reputation. What is more, § 106A applies only to a "work of visual art", a new term defined in § 101 to mean either a unique work or part of a limited edition (200 copies or fewer) that has been "signed and consecutively numbered by the author". Lee's note cards and lithographs are not works of visual art under this definition, so she could not invoke § 106A even if A.R.T.'s use of her works to produce kitsch had damaged her reputation. It would not be sound to use § 106(2) to provide artists with exclusive rights deliberately omitted from the Visual Artists Rights Act. We therefore decline to follow Munoz and Mirage Editions.[2]

      15

      AFFIRMED.

      16

      [1] Scholarly disapproval of Mirage Editions has been widespread. Goldstein § 5.3 at 5:81-82; Nimmer & Nimmer § 3.03; Wendy J. Gordon, On Owning Information: Intellectual Property and the Restitutionary Impulse, 78 Va. L. Rev. 149, 255 n. 401 (1992).

      17

      [2] Because this opinion creates a conflict among the circuits, it has been circulated to all judges in active service. See Circuit Rule 40(e). No judge requested a hearing en banc.

    • 2.3 Micro Star v. FormGen Inc. (1998)

      1

      154 F.3d 1107

      2

      1998 Copr.L.Dec. P 27,820, 48 U.S.P.Q.2d 1026,
      98 Cal. Daily Op. Serv. 7130,
      98 Daily Journal D.A.R. 9859

      3
      MICRO STAR, Plaintiff-Appellant,
      v.
      FORMGEN INC., a corporation; GT Interactive Software Corp.;
      3D Realms Entertainment, aka 3D Realms
      Entertainment; DOES, 1 through 100,
      inclusive., Defendants-Appellees.
      MICRO STAR, Plaintiff-Appellant/Cross-Appellee,
      v.
      FORMGEN INC., a corporation; GT Interactive Software Corp.;
      3D Realms Entertainment, aka 3D Realms
      Entertainment; Does, 1 through 100,
      inclusive., Defendants-Appellees/Cross-Appellants.
      4

      Nos. 96-56426, 96-56433.

      5

      United States Court of Appeals,
      Ninth Circuit.

      6

      Argued and Submitted Nov. 4, 1997.
      Decided Sept. 11, 1998.

      7

      [1109] Philip H. Stillman, Flynn, Sheridan, Tabb & Stillman, San Diego, CA, for plaintiff-appellant/cross-appellee.

      8

      Michael S. Oberman, Kramer, Levin, Naftalis & Frankel, New York City, for defendants-appellees/cross-appellants.

      9

      Mark E. Nebergall, Mark Traphagen, Software Publishers Association, Washington, DC, for defendants-appellees/cross-appellants.

      10

      Gail E. Markels, Interactive Digital Software Association, New York City, for defendants-appellees/cross-appellants.

      11

      Appeal from the United States District Court for the Southern District of California Marilyn L. Huff, District Judge, Presiding. D.C. No. CV-96-03435-MLH.

      12

      Before: KOZINSKI, THOMPSON[*] and TROTT, Circuit Judges.

      13

      KOZINSKI, Circuit Judge.

      14

      Duke Nukem routinely vanquishes Octabrain and the Protozoid Slimer. But what about the dreaded Micro Star?

      15
      I
      16

      FormGen Inc., GT Interactive Software Corp. and Apogee Software, Ltd. (collectively FormGen) made, distributed and own the rights to Duke Nukem 3D (D/N-3D), an immensely popular (and very cool) computer game. D/N-3D is played from the first-person perspective; the player assumes the personality and point of view of the title character, who is seen on the screen only as a pair of hands and an occasional boot, much as one might see oneself in real life without the aid of a mirror.[1] Players explore a futuristic city infested with evil aliens and other hazards. The goal is to zap them before they zap you, while searching for the hidden passage to the next level. The basic game comes with twenty-nine levels, each with a different combination of scenery, aliens, and other challenges. The game also includes a "Build Editor," a utility that enables players to create their own levels. With FormGen's encouragement, players frequently post levels they have created on the Internet where others can download them. Micro Star, a computer software distributor, did just that: It downloaded 300 user-created levels and stamped them onto a CD, which it then sold commercially as Nuke It (N/I). N/I is packaged in a box decorated with numerous "screen shots," pictures of what the new levels look like when played.

      17

      Micro Star filed suit in district court, seeking a declaratory judgment that N/I did not infringe on any of FormGen's copyrights. FormGen counterclaimed, seeking a preliminary injunction barring further production and distribution of N/I. Relying on Lewis Galoob Toys, Inc. v. Nintendo of Am., Inc., 964 F.2d 965 (9th Cir.1992), the district court held that N/I was not a derivative work and therefore did not infringe FormGen's copyright. The district court did, however, grant a preliminary injunction as to the screen shots, finding that N/I's packaging violated FormGen's copyright by reproducing pictures of D/N-3D characters without a license. The court rejected Micro Star's fair use claims. Both sides appeal their losses.

      18
      II
      19

      A party seeking a preliminary injunction must show "either a likelihood of success on the merits and the possibility of irreparable injury, or that serious questions going to the merits were raised and the balance of hardships tips sharply in its favor." Johnson Controls, Inc. v. Phoenix Control Systems, Inc., 886 F.2d 1173, 1174 (9th Cir.1989). Because "in a copyright infringement claim, a showing of a reasonable likelihood of success on the merits raises a presumption of irreparable harm," id., FormGen need only show a likelihood of success on the merits to get the preliminary injunction it seeks (barring the manufacture and distribution of N/I) and to preserve the preliminary injunction it already won (barring the screen shots on N/I's packaging).

      20
      III
      21

      To succeed on the merits of its claim that N/I infringes FormGen's copyright, FormGen must show (1) ownership of the copyright to D/N-3D, and (2) copying of protected expression by Micro Star. See Triad Systems Corp. v. Southeastern Express Co., 64 F.3d 1330, 1335 (9th Cir.1995). FormGen's [1110] copyright registration creates a presumption of ownership, see id., and we are satisfied that FormGen has established its ownership of the copyright. We therefore focus on the latter issue.

      22

      FormGen alleges that its copyright is infringed by Micro Star's unauthorized commercial exploitation of user-created game levels. In order to understand FormGen's claims, one must first understand the way D/N-3D works. The game consists of three separate components: the game engine, the source art library and the MAP files.[2] The game engine is the heart of the computer program; in some sense, it is the program. It tells the computer when to read data, save and load games, play sounds and project images onto the screen. In order to create the audiovisual display for a particular level, the game engine invokes the MAP file that corresponds to that level. Each MAP file contains a series of instructions that tell the game engine (and, through it, the computer) what to put where. For instance, the MAP file might say scuba gear goes at the bottom of the screen. The game engine then goes to the source art library, finds the image of the scuba gear, and puts it in just the right place on the screen.[3] The MAP file describes the level in painstaking detail, but it does not actually contain any of the copyrighted art itself; everything that appears on the screen actually comes from the art library. Think of the game's audiovisual display as a paint-by-numbers kit. The MAP file might tell you to put blue paint in section number 565, but it doesn't contain any blue paint itself; the blue paint comes from your palette, which is the low-tech analog of the art library, while you play the role of the game engine. When the player selects one of the N/I levels, the game engine references the N/I MAP files, but still uses the D/N-3D art library to generate the images that make up that level.

      23

      FormGen points out that a copyright holder enjoys the exclusive right to prepare derivative works based on D/N-3D. See 17 U.S.C. § 106(2) (1994). According to FormGen, the audiovisual displays generated when D/N-3D is run in conjunction with the N/I CD MAP files are derivative works that infringe this exclusivity. Is FormGen right? The answer is not obvious.

      24

      The Copyright Act defines a derivative work as

      25

      a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a "derivative work."

      26

      Id. § 101. The statutory language is hopelessly overbroad, however, for "[e]very book in literature, science and art, borrows and must necessarily borrow, and use much which was well known and used before." Emerson v. Davies, 8 F. Cas. 615, 619 (C.C.D.Mass.1845) (No. 4436), quoted in 1 Nimmer on Copyright, § 3.01, at 3-2 (1997). To narrow the statute to a manageable level, we have developed certain criteria a work must satisfy in order to qualify as a derivative work. One of these is that a derivative work must exist in a "concrete or permanent form," Galoob, 964 F.2d at 967 (internal quotation marks omitted), and must substantially incorporate protected material from the preexisting work, see Litchfield v. Spielberg, 736 F.2d 1352, 1357 (9th Cir.1984). Micro Star argues that N/I is not a derivative work because the audiovisual displays generated when D/N-3D is run with N/I's MAP files are [1111] not incorporated in any concrete or permanent form, and the MAP files do not copy any of D/N-3D's protected expression. It is mistaken on both counts.

      27

      The requirement that a derivative work must assume a concrete or permanent form was recognized without much discussion in Galoob. There, we noted that all the Copyright Act's examples of derivative works took some definite, physical form and concluded that this was a requirement of the Act. See Galoob, 964 F.2d at 967-68; see also Edward G. Black & Michael H. Page, Add-On Infringements, 15 Hastings Comm/Ent. L.J. 615, 625 (1993) (noting that in Galoob the Ninth Circuit "re-examined the statutory definition of derivative works offered in section 101 and found an independent fixation requirement of sorts built into the statutory definition of derivative works"). Obviously, N/I's MAP files themselves exist in a concrete or permanent form; they are burned onto a CD-ROM. See ProCD, Inc. v. Zeidenberg, 86 F.3d 1447, 1453 (7th Cir.1996) (computer files on a CD are fixed in a tangible medium of expression). But what about the audiovisual displays generated when D/N-3D runs the N/I MAP files--i.e., the actual game level as displayed on the screen? Micro Star argues that, because the audiovisual displays in Galoob didn't meet the "concrete or permanent form" requirement, neither do N/I's.

      28

      In Galoob, we considered audiovisual displays created using a device called the Game Genie, which was sold for use with the Nintendo Entertainment System. The Game Genie allowed players to alter individual features of a game, such as a character's strength or speed, by selectively "blocking the value for a single data byte sent by the game cartridge to the [Nintendo console] and replacing it with a new value." Galoob, 964 F.2d at 967. Players chose which data value to replace by entering a code; over a billion different codes were possible. The Game Genie was dumb; it functioned only as a window into the computer program, allowing players to temporarily modify individual aspects of the game. See Lewis Galoob Toys, Inc. v. Nintendo of Am., Inc., 780 F.Supp. 1283, 1289 (N.D.Cal.1991).

      29

      Nintendo sued, claiming that when the Game Genie modified the game system's audiovisual display, it created an infringing derivative work. We rejected this claim because "[a] derivative work must incorporate a protected work in some concrete or permanent form." Galoob, 964 F.2d at 967 (internal quotation marks omitted). The audiovisual displays generated by combining the Nintendo System with the Game Genie were not incorporated in any permanent form; when the game was over, they were gone. Of course, they could be reconstructed, but only if the next player chose to reenter the same codes.[4]

      30

      Micro Star argues that the MAP files on N/I are a more advanced version of the Game Genie, replacing old values (the MAP files in the original game) with new values (N/I's MAP files). But, whereas the audiovisual displays created by Game Genie were never recorded in any permanent form, the audiovisual displays generated by D/N-3D from the N/I MAP files are in the MAP files themselves. In Galoob, the audiovisual display was defined by the original game cartridge, not by the Game Genie; no one could possibly say that the data values inserted by the Game Genie described the audiovisual display. In the present case the audiovisual display that appears on the computer monitor when a N/I level is played is described--in exact detail--by a N/I MAP file.

      31

      This raises the interesting question whether an exact, down to the last detail, description of an audiovisual display (and--by definition--we know that MAP files do describe audiovisual displays down to the last detail) [1112] counts as a permanent or concrete form for purposes of Galoob. We see no reason it shouldn't. What, after all, does sheet music do but describe in precise detail the way a copyrighted melody sounds? See 1 William F. Patry, Copyright Law and Practice 168 (1994) ("[A] musical composition may be embodied in sheet music...."). To be copyrighted, pantomimes and dances may be "described in sufficient detail to enable the work to be performed from that description." Id. at 243 (citing Compendium II of Copyright Office Practices § 463); see also Horgan v. Macmillan, Inc., 789 F.2d 157, 160 (2d Cir.1986). Similarly, the N/I MAP files describe the audiovisual display that is to be generated when the player chooses to play D/N-3D using the N/I levels. Because the audiovisual displays assume a concrete or permanent form in the MAP files, Galoob stands as no bar to finding that they are derivative works.

      32

      In addition, "[a] work will be considered a derivative work only if it would be considered an infringing work if the material which it has derived from a preexisting work had been taken without the consent of a copyright proprietor of such preexisting work." Mirage Editions v. Albuquerque A.R.T. Co., 856 F.2d 1341, 1343 (quoting 1 Nimmer on Copyright § 3.01 (1986)) (internal quotation marks omitted). "To prove infringement, [FormGen] must show that [D/N-3D's and N/I's audiovisual displays] are substantially similar in both ideas and expression." Litchfield v. Spielberg, 736 F.2d 1352, 1356 (9th Cir.1984) (emphasis omitted). Similarity of ideas may be shown by comparing the objective details of the works: plot, theme, dialogue, mood, setting, characters, etc. See id. Similarity of expression focuses on the response of the ordinary reasonable person, and considers the total concept and feel of the works. See id. at 1356-57. FormGen will doubtless succeed in making these showings since the audiovisual displays generated when the player chooses the N/I levels come entirely out of D/N-3D's source art library. Cf. Atari, Inc. v. North Am. Philips Consumer Elec. Corp., 672 F.2d 607, 620 (7th Cir.1982) (finding two video games substantially similar because they shared the same "total concept and feel").

      33

      Micro Star further argues that the MAP files are not derivative works because they do not, in fact, incorporate any of D/N-3D's protected expression. In particular, Micro Star makes much of the fact that the N/I MAP files reference the source art library, but do not actually contain any art files themselves. Therefore, it claims, nothing of D/N-3D's is reproduced in the MAP files. In making this argument, Micro Star misconstrues the protected work. The work that Micro Star infringes is the D/N-3D story itself--a beefy commando type named Duke who wanders around post-Apocalypse Los Angeles, shooting Pig Cops with a gun, lobbing hand grenades, searching for medkits and steroids, using a jetpack to leap over obstacles, blowing up gas tanks, avoiding radioactive slime. A copyright owner holds the right to create sequels, see Trust Co. Bank v. MGM/UA Entertainment Co., 772 F.2d 740 (11th Cir.1985), and the stories told in the N/I MAP files are surely sequels, telling new (though somewhat repetitive) tales of Duke's fabulous adventures. A book about Duke Nukem would infringe for the same reason, even if it contained no pictures.[5]

      34

      Micro Star nonetheless claims that its use of D/N-3D's protected expression falls within the doctrine of fair use, which permits unauthorized use of copyrighted works "for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research." 17 U.S.C. § 107; see Narell v. Freeman, 872 F.2d 907, 913 (9th Cir.1989). Section 107 instructs courts "determining whether the use made of a work in any particular case is a fair use" to consider four factors: (1) the purpose and character of the use, including whether it is commercial in nature; (2) the nature of the copyrighted work; (3) the amount and substantiality of the copied material in relation to the copyrighted work as a whole; and (4) the effect of the use on the potential market for the copyrighted work. 17 U.S.C. § 107.

      35

      [1113] As a preliminary matter, Micro Star asks us to focus on the player's use of the N/I CD in evaluating the fair use claim, because-according to Micro Star-the player actually creates the derivative work. In Galoob, after we assumed for purposes of argument that the Game Genie did create derivative works, we went on to consider the fair use defense from the player's point of view. See Galoob, 964 F.2d at 970. But the fair use analysis in Galoob was not necessary and therefore is clearly dicta. More significantly, Nintendo alleged only contributory infringement--that Galoob was helping consumers create derivative works; FormGen here alleges direct infringement by Micro Star, because the MAP files encompass new Duke stories, which are themselves derivative works.

      36

      Our examination of the section 107 factors yields straightforward results. Micro Star's use of FormGen's protected expression was made purely for financial gain. While that does not end our inquiry, see Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 584, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994), "every commercial use of copyrighted material is presumptively an unfair exploitation of the monopoly privilege that belongs to the owner of the copyright." Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 451, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984).[6] The Supreme Court has explained that the second factor, the nature of the copyrighted work, is particularly significant because "some works are closer to the core of intended copyright protection than others, with the consequence that fair use is more difficult to establish when the former works are copied." Campbell, 510 U.S. at 586, 114 S.Ct. 1164. The fair use defense will be much less likely to succeed when it is applied to fiction or fantasy creations, as opposed to factual works such as telephone listings. See United Tel. Co. v. Johnson Publ'g Co., 855 F.2d 604, 609 (8th Cir.1988); see also Stewart v. Abend, 495 U.S. 207, 237, 110 S.Ct. 1750, 109 L.Ed.2d 184 (1990). Duke Nukem's world is made up of aliens, radioactive slime and freezer weapons-clearly fantasies, even by Los Angeles standards. N/I MAP files "expressly use[ ] the [D/N-3D] story's unique setting, characters, [and] plot," Stewart, 495 U.S. at 238, 110 S.Ct. 1750; both the quantity and importance of the material Micro Star used are substantial. Finally, by selling N/I, Micro Star "impinged on [FormGen's] ability to market new versions of the [D/N-3D] story." Stewart, 495 U.S. at 238, 110 S.Ct. 1750; see also Twin Peaks Productions, Inc. v. Publications Int'l, Ltd., 996 F.2d 1366, 1377 (2d Cir.1993). Only FormGen has the right to enter that market; whether it chooses to do so is entirely its business. "[N/I] neither falls into any of the categories enumerated in section 107 nor meets the four criteria set forth in section 107." Stewart, 495 U.S. at 237, 110 S.Ct. 1750. It is not protected by fair use.

      37

      Micro Star also argues that it is the beneficiary of the implicit license FormGen gave to its customers by authorizing them to create new levels. Section 204 of the Copyright Act requires the transfer of the exclusive rights granted to copyright owners (including the right to prepare derivative works) to be in writing. See 17 U.S.C. § 204(a); Effects Assocs., Inc. v. Cohen, 908 F.2d 555, 556 (9th Cir.1990). A nonexclusive license may, however, be granted orally or implied by conduct. See Effects, 908 F.2d at 558. Nothing indicates that FormGen granted Micro Star any written license at all; nor is there evidence of a nonexclusive oral license. The only written license FormGen conceivably granted was to players who designed their own new levels, but that license contains a significant limitation: Any new levels the players create "must be offered [to others] solely for free." The parties dispute whether the license is binding, but it doesn't matter. If the license is valid, it clearly prohibits commercial distribution of levels; if it doesn't, FormGen hasn't granted any written licenses at all.[7]

      38

      [1114] In case FormGen didn't license away its rights, Micro Star argues that, by providing the Build Editor and encouraging players to create their own levels, FormGen abandoned all rights to its protected expression. It is well settled that rights gained under the Copyright Act may be abandoned. But abandonment of a right must be manifested by some overt act indicating an intention to abandon that right. See Hampton v. Paramount Pictures Corp., 279 F.2d 100, 104 (9th Cir.1960). Given that it overtly encouraged players to make and freely distribute new levels, FormGen may indeed have abandoned its exclusive right to do the same. But abandoning some rights is not the same as abandoning all rights, and FormGen never overtly abandoned its rights to profit commercially from new levels. Indeed, FormGen warned players not to distribute the levels commercially and has actively enforced that limitation by bringing suits such as this one.

      39
      IV
      40

      Because FormGen will likely succeed at trial in proving that Micro Star has infringed its copyright, we reverse the district court's order denying a preliminary injunction and remand for entry of such an injunction. Of course, we affirm the grant of the preliminary injunction barring Micro Star from selling N/I in boxes covered with screen shots of the game. [8]

      41

      AFFIRMED in part, REVERSED in part, and REMANDED. Micro Star to bear costs of both appeals.

      42

      ---------------

      43

      [*] Judge Thompson was drawn to replace Judge Floyd Gibson who became unavailable after the case was submitted.

      44

      [1] This form of play was pioneered by a company called id Software with its classic Wolfenstein 3D character.

      45

      [2] So-called because the files all end with the extension ".MAP". Also, no doubt, because they contain the layout for the various levels.

      46

      [3] Actually, this is all a bit metaphorical. Computer programs don't actually go anywhere or fetch anything. Rather, the game engine receives the player's instruction as to which game level to select and instructs the processor to access the MAP file corresponding to that level. The MAP file, in turn, consists of a series of instructions indicating which art images go where. When the MAP file calls for a particular art image, the game engine tells the processor to access the art library for instructions on how each pixel on the screen must be colored in order to paint that image.

      47

      [4] A low-tech example might aid understanding. Imagine a product called the Pink Screener, which consists of a big piece of pink cellophane stretched over a frame. When put in front of a television, it makes everything on the screen look pinker. Someone who manages to record the programs with this pink cast (maybe by filming the screen) would have created an infringing derivative work. But the audiovisual display observed by a person watching television through the Pink Screener is not a derivative work because it does not incorporate the modified image in any permanent or concrete form. The Game Genie might be described as a fancy Pink Screener for video games, changing a value of the game as perceived by the current player, but never incorporating the new audiovisual display into a permanent or concrete form.

      48

      [5] We note that the N/I MAP files can only be used with D/N-3D. If another game could use the MAP files to tell the story of a mousy fellow who travels through a beige maze, killing vicious saltshakers with paper-clips, then the MAP files would not incorporate the protected expression of D/N-3D because they would not be telling a D/N-3D story.

      49

      [6] Of course, transformative works have greater recourse to the fair use defense as they "lie at the heart of the fair use doctrine's guarantee of breathing space within the confines of copyright ... and the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use." Campbell, 510 U.S. at 579, 114 S.Ct. 1164 (citations omitted). N/I can hardly be described as transformative; anything but.

      50

      [7] We would have no reason to sever the limitation from the license; the limitation is plainly stated in the User License, unambiguous, and not the least bit unreasonable. Indeed, it is precisely the sort of term we would expect to see in such a license.

      51

      [8] Micro Star raises various other claims alleging copyright misuse and abuse of the discovery process. However, nothing indicates that FormGen abused its copyright. See Triad Systems Corp. v. Southeastern Express Co., 64 F.3d 1330, 1337 (9th Cir.1995). And we are at a loss to understand why Micro Star complains about the discovery process; certainly the district court did not abuse its discretion. See Sopcak v. Northern Mountain Helicopter Serv., 52 F.3d 817, 819 (9th Cir.1995).

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