Bruce Boyden, Marquette University Law School
Substantial Similarity, from Equity to Legal Process
Multistep tests as recent inventions. Test for infringement
was created in a very different legal environment and many of its current
problems stem from the fact that the environment is quite different today. Arnstein: copying in fact + wrongful appropriation
(aka substantial similarity). Trial court can determine copying in fact, but
jury mostly has to determine wrongful appropriation. Many have criticized incomplete separation of
copying and infringement.
was created in a very different legal environment and many of its current
problems stem from the fact that the environment is quite different today. Arnstein: copying in fact + wrongful appropriation
(aka substantial similarity). Trial court can determine copying in fact, but
jury mostly has to determine wrongful appropriation. Many have criticized incomplete separation of
copying and infringement.
Arnstein was attempt to bring order to disjointed set of
opinions for deciding infringement in the Second Circuit, which was deciding
the vast majority of © cases. New flood
of nonliteral infringement cases based on new tech/media. One test: was the sequence
of events the same; another test: whether ordinary audience would recognize accused
work as having been taken from the other. Arnstein combines these two. There’s a dissent saying that there wasn’t a
two part test in previous cases, which is true.
You get copying in fact out of the sequence of events test, and wrongful
appropriation from the audience test. Judge Frank is skeptical of the jury, but
more skeptical of judges, especially in ©. Opinion is written to send stuff to
the jury. Why does Learned Hand sign on? He’s not a judicial skeptic. Jury
trials were rare at time; they were almost always equity cases that had no
right to a jury and that were seeking injunctions. Hand’s concern was that judges were deciding
cases based on prepared synopses by the parties; he wanted to make sure that
courts were first deciding whether actual copying had occurred before
evaluating infringement.
opinions for deciding infringement in the Second Circuit, which was deciding
the vast majority of © cases. New flood
of nonliteral infringement cases based on new tech/media. One test: was the sequence
of events the same; another test: whether ordinary audience would recognize accused
work as having been taken from the other. Arnstein combines these two. There’s a dissent saying that there wasn’t a
two part test in previous cases, which is true.
You get copying in fact out of the sequence of events test, and wrongful
appropriation from the audience test. Judge Frank is skeptical of the jury, but
more skeptical of judges, especially in ©. Opinion is written to send stuff to
the jury. Why does Learned Hand sign on? He’s not a judicial skeptic. Jury
trials were rare at time; they were almost always equity cases that had no
right to a jury and that were seeking injunctions. Hand’s concern was that judges were deciding
cases based on prepared synopses by the parties; he wanted to make sure that
courts were first deciding whether actual copying had occurred before
evaluating infringement.
Arnstein was pretty much ignored through the 1950s; not
cited by other Second Circuit cases; regarded as a test for music infringement.
Generational turnover in judges; shift comes in 1960s. Consistent w/shift to Legal
Process. 3 key values: Institutional settlement: each institution has its role,
including trial court v. court of appeals. Suspicion of standardless discretion used to achieve
policy as close to totalitarianism. “Reasoned elaboration”: judges should
explain their decisions and give basis for reviewing that decision. 5 years
after Hand dies, 2d Cir adopts Arnstein as the general infringement test, explaining
that it’s copying plus substantial similarity. That’s not a normative search
for wrongfulness, but for whether the average observer would recognize the
appropriation from the © work. But that looks a lot like the test for copying
in fact, which seems to get rid of “substantial” too, in theory if not in
fact. Where did they get this idea?
Probably from Nimmer’s reading of Arnstein, his first © treatise in 1963, which
read improper out almost entirely. He
told the 9th Circuit this was the test too in Sid & Marty
Krofft.
cited by other Second Circuit cases; regarded as a test for music infringement.
Generational turnover in judges; shift comes in 1960s. Consistent w/shift to Legal
Process. 3 key values: Institutional settlement: each institution has its role,
including trial court v. court of appeals. Suspicion of standardless discretion used to achieve
policy as close to totalitarianism. “Reasoned elaboration”: judges should
explain their decisions and give basis for reviewing that decision. 5 years
after Hand dies, 2d Cir adopts Arnstein as the general infringement test, explaining
that it’s copying plus substantial similarity. That’s not a normative search
for wrongfulness, but for whether the average observer would recognize the
appropriation from the © work. But that looks a lot like the test for copying
in fact, which seems to get rid of “substantial” too, in theory if not in
fact. Where did they get this idea?
Probably from Nimmer’s reading of Arnstein, his first © treatise in 1963, which
read improper out almost entirely. He
told the 9th Circuit this was the test too in Sid & Marty
Krofft.
Increasing rationalization in the courts: opinions get much
longer in the 1980s as courts work through each doctrine/subdoctrine in detail.
Courts become more attentive to the trial/appellate distinction. Alan Latman writes an article; Second Circuit
becomes aware that Arnstein was supposed to have two parts. Laureyssens v. Idea Group, 1992, “restate” or
really change everything and go back to its original formulation of copying
plus wrongful appropriation. But resurrecting Arnstein in this area, with
suspicion of judicial discretion and trial/appellate divide, leads to the issue
of uncopyrightable elements being entirely dropped from the analysis. How do you do substantial similarity when
there are uncopyrightable elements? Maybe a more discerning inquiry? No, total
concept and feel. There’s also a big
shift to jury trials. © lawyers had continued to request bench trials until the
late 90s. Hard as it might be for judges to both filter out uncopyrightable material
and measure total concept and feel, it’s much harder for juries. Jury instruction in Blurred Lines case:
terrible; didn’t define substantial similarity.
longer in the 1980s as courts work through each doctrine/subdoctrine in detail.
Courts become more attentive to the trial/appellate distinction. Alan Latman writes an article; Second Circuit
becomes aware that Arnstein was supposed to have two parts. Laureyssens v. Idea Group, 1992, “restate” or
really change everything and go back to its original formulation of copying
plus wrongful appropriation. But resurrecting Arnstein in this area, with
suspicion of judicial discretion and trial/appellate divide, leads to the issue
of uncopyrightable elements being entirely dropped from the analysis. How do you do substantial similarity when
there are uncopyrightable elements? Maybe a more discerning inquiry? No, total
concept and feel. There’s also a big
shift to jury trials. © lawyers had continued to request bench trials until the
late 90s. Hard as it might be for judges to both filter out uncopyrightable material
and measure total concept and feel, it’s much harder for juries. Jury instruction in Blurred Lines case:
terrible; didn’t define substantial similarity.
No complete solutions, but jury can’t do better unless it
has better instructions, and juries need to be brought under control. Nguyen’s dissent in Blurred Lines: we should
do more deciding issues as a matter of law, even after a jury trial, though
majority correctly points out that they don’t do that in © cases (or other
cases) now.
has better instructions, and juries need to be brought under control. Nguyen’s dissent in Blurred Lines: we should
do more deciding issues as a matter of law, even after a jury trial, though
majority correctly points out that they don’t do that in © cases (or other
cases) now.
Buccafusco: some old cases in the 20s: courts do copying in
fact, then move into fair use—the two step inquiry existed as
access/similarity, but after that direct move into fair use.
fact, then move into fair use—the two step inquiry existed as
access/similarity, but after that direct move into fair use.
A: that’s one way to do it.
[I don’t like this when it happens in cases that should be lack of
substantial similarity cases, but I guess you could lean in more heavily to
fair use, though many think it’s overstuffed.]
[I don’t like this when it happens in cases that should be lack of
substantial similarity cases, but I guess you could lean in more heavily to
fair use, though many think it’s overstuffed.]
Carys Craig: sounds like an English case. Unconscious
copying case, but the point is: access is required no matter how similar the
works are; otherwise it’s just coincidence.
copying case, but the point is: access is required no matter how similar the
works are; otherwise it’s just coincidence.
Q: Zahr Said has been thinking about jury instructions. Juries are better representatives of the
public than judges. Wants to make them
simpler.
public than judges. Wants to make them
simpler.
A: Simpler may be inconsistent with what he wants, which is
more detailed.
more detailed.
Rebecca Curtin: why the change in jury trials?
A: no clear answer; may be that until the 90s there was a
stable © bar; after that you get Silicon Valley lawyers and other players. [I suspect it’s plaintiff-driven though I’d
be interested in the data; it may have something to do with the increasing idea
that creativity is behind most value generated.]
stable © bar; after that you get Silicon Valley lawyers and other players. [I suspect it’s plaintiff-driven though I’d
be interested in the data; it may have something to do with the increasing idea
that creativity is behind most value generated.]
Yvette Liebsman: rather take chances with uninformed jury? Judges now have access to Westlaw and word
processing (which also helps explain their opinions getting longer).
processing (which also helps explain their opinions getting longer).
Rebecca Curtin, Suffolk University Law School
Locke’s (Own) Literary Property
May 1689, Locke negotiated a contract for Essay Concerning
Human Understanding. At age 56, he’d
published little, and less under his own name.
He’d just returned to England from exile in Holland after death of his
patron; his anxieties over close brush w/prosecution for treason by James II.
His correspondence had been full of initials and other workarounds to shield
his opinions. Publishing in England must have required a significant shift. Complained
about how hard it is to wait for the press, to deal w/the whole process. Writing
and publishing are not the same thing. Nonetheless, w/in a year of his return,
3 major works appear in print, Treatises of Gov’t, Letter Concerning Toleration,
but only the Essay was signed. Locke destroyed the correspondence relating to
the first two. Only the documents around
the Essay survive. Emerging sense of authorial rights; case study in how
sophisticated author of the day who knew theory and also practice managed “literary
property.” Not a full record, but still an
antidote to canonizing authors as if they didn’t have any engagement with the
real market for their work (e.g., Lord Camden’s speech in Donaldson v. Becket,
where he says it wasn’t for “gain that Bacon, Newton, Milton, Locke instructed
and delighted the world; it would be unworthy for such men to traffic with a
dirty bookseller…”).
Human Understanding. At age 56, he’d
published little, and less under his own name.
He’d just returned to England from exile in Holland after death of his
patron; his anxieties over close brush w/prosecution for treason by James II.
His correspondence had been full of initials and other workarounds to shield
his opinions. Publishing in England must have required a significant shift. Complained
about how hard it is to wait for the press, to deal w/the whole process. Writing
and publishing are not the same thing. Nonetheless, w/in a year of his return,
3 major works appear in print, Treatises of Gov’t, Letter Concerning Toleration,
but only the Essay was signed. Locke destroyed the correspondence relating to
the first two. Only the documents around
the Essay survive. Emerging sense of authorial rights; case study in how
sophisticated author of the day who knew theory and also practice managed “literary
property.” Not a full record, but still an
antidote to canonizing authors as if they didn’t have any engagement with the
real market for their work (e.g., Lord Camden’s speech in Donaldson v. Becket,
where he says it wasn’t for “gain that Bacon, Newton, Milton, Locke instructed
and delighted the world; it would be unworthy for such men to traffic with a
dirty bookseller…”).
His entry point into the Licensing Act debate is about the
ownership of literary property: care for book buyers as well as book sellers:
the effects of perpetual © on buyers. Avoid
fairer and more correct editions; ignorant and lazy booksellers benefit
(despite not having labored). He that prints them best deserves best and should
have the sale of them. Focus on printing privileges, but the same concerns
arise from perpetual © on the Stationers Register. Discusses both censorship and need for monopoly
termination after 50 years, as well as the problem of titles that lie dormant,
leading many good books to be lost. What
about authors who write and sell copies to booksellers? He’s keeping in mind
that living authors want to get paid—that’s different, but it’s absurd that any
person should have title to Livy’s works.
Suggests death of the author/first printing + 50 or 70 years.
ownership of literary property: care for book buyers as well as book sellers:
the effects of perpetual © on buyers. Avoid
fairer and more correct editions; ignorant and lazy booksellers benefit
(despite not having labored). He that prints them best deserves best and should
have the sale of them. Focus on printing privileges, but the same concerns
arise from perpetual © on the Stationers Register. Discusses both censorship and need for monopoly
termination after 50 years, as well as the problem of titles that lie dormant,
leading many good books to be lost. What
about authors who write and sell copies to booksellers? He’s keeping in mind
that living authors want to get paid—that’s different, but it’s absurd that any
person should have title to Livy’s works.
Suggests death of the author/first printing + 50 or 70 years.
Commenting on a draft bill requiring permission to print the
name of any person as author or publisher: he says: to secure the author’s property,
that will do, joined with (1) a term of protection for the author to have the right
to authorize additional publication, apparently conditioned on author/publisher
taking on credit/liability for the initial work, or (2) deposit of copies w/specific
libraries that confers a privilege of reprinting/publishing book for a term of
years (an opt in regime).
name of any person as author or publisher: he says: to secure the author’s property,
that will do, joined with (1) a term of protection for the author to have the right
to authorize additional publication, apparently conditioned on author/publisher
taking on credit/liability for the initial work, or (2) deposit of copies w/specific
libraries that confers a privilege of reprinting/publishing book for a term of
years (an opt in regime).
Locke’s contract for the Essay is a pretty standard contract.
Very specific: narrowly defines what bookseller can do, specifying good paper
and size of a comparator book that was well-done, which was a common. Printer is required to print at least 4
sheets a week—he’s learned from past frustration to control how printing
happens. Paid 10 shilling/sheet,
counting what’s on a sheet as a specific book comparator counted. 10 shillings/sheet was not real money to him,
so Camden wasn’t wrong about his motivations; the money was desired to make the
printer take care with every page. Locke
learned for later editions that he’d transferred full right and title and it
passed through bankruptcy to other printers.
Later contracts: copyright returned to Locke after first edition was
published. Opposite of common form of receipts of the day, which typically said
that the publisher got sole right & title of the complete copy.
Very specific: narrowly defines what bookseller can do, specifying good paper
and size of a comparator book that was well-done, which was a common. Printer is required to print at least 4
sheets a week—he’s learned from past frustration to control how printing
happens. Paid 10 shilling/sheet,
counting what’s on a sheet as a specific book comparator counted. 10 shillings/sheet was not real money to him,
so Camden wasn’t wrong about his motivations; the money was desired to make the
printer take care with every page. Locke
learned for later editions that he’d transferred full right and title and it
passed through bankruptcy to other printers.
Later contracts: copyright returned to Locke after first edition was
published. Opposite of common form of receipts of the day, which typically said
that the publisher got sole right & title of the complete copy.
Another contract: 5 pounds for every impression of a book
and 10 shilling per sheet for all additions; not to exceed 1400 books; 24 books
bound copies provided to him. Covenants
not to dispose of right or title to work w/o his consent—so there’s a transfer,
but a certain amount of remaining control.
He limits the claims of his estate, which is interesting in light of his
discussion of the deleterious effects of perpetual ©.
and 10 shilling per sheet for all additions; not to exceed 1400 books; 24 books
bound copies provided to him. Covenants
not to dispose of right or title to work w/o his consent—so there’s a transfer,
but a certain amount of remaining control.
He limits the claims of his estate, which is interesting in light of his
discussion of the deleterious effects of perpetual ©.
Betsy Rosenblatt: what presumptions would have surrounded
these contracts? We now expect a contract to leave silent what is presumed, but
some of these contracts say this is a transfer and others say this isn’t a
transfer.
these contracts? We now expect a contract to leave silent what is presumed, but
some of these contracts say this is a transfer and others say this isn’t a
transfer.
A: expectations of publisher were certainly to get
title. She isn’t sure that Locke
understood that consequence about control of reprints. Publisher did ask him to
do a deal on the second edition of the Essay with additions; a blurring of the
lines about whether permission was required for a second edition, but on the
Stationers rules probably not if nothing new from Locke was added.
title. She isn’t sure that Locke
understood that consequence about control of reprints. Publisher did ask him to
do a deal on the second edition of the Essay with additions; a blurring of the
lines about whether permission was required for a second edition, but on the
Stationers rules probably not if nothing new from Locke was added.
Boyden: is Locke anticipating exclusive rights in author, or
limiting rights of printers?
limiting rights of printers?
A: His best known writing is the latter, but comments on a
draft bill propose to secure property in the copy for the author.
draft bill propose to secure property in the copy for the author.
Craig: why do we care what Locke thinks about his contracts
or about the licensing law? It’s the
theory that matters. What he did in his
contracts is neither here nor there unless you use it to modify/discredit the
theory as applied to authorship.
or about the licensing law? It’s the
theory that matters. What he did in his
contracts is neither here nor there unless you use it to modify/discredit the
theory as applied to authorship.
A: history for history’s sake is a fine thing!
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Rebecca Tushnet 