Sedlik v. Von Drachenberg: The Right Way to Evaluate Wrongfulness (Guest Blog Post)

by guest bloggers Bruce Boyden (Marquette Law) & Zahr Said (Santa Clara Law)

As we mentioned in our previous post, the Ninth Circuit’s intrinsic-extrinsic framework for substantial similarity has a number of problems. Those problems include confusing terminology, misuse of the terms “objective” and “subjective,” the lack of a clear goal for the infringement determination, and an unnecessary division of the substantial similarity inquiry, which creates havoc not only at trial but on appellate review. (For more, see our brief at 10-13, 24-31.) It is a welcome development that the full Ninth Circuit is revisiting the question en banc this week.

In this post, we’re not going to dwell on what is wrong with the current framework. Instead, we’re going to explain what we think should replace it and why.

A test for copyright infringement has to make several discrete inquiries, many of which are uncontroversial. First, the plaintiff must first demonstrate that it is the owner of a valid copyright in a registered work. Second, the plaintiff must show that its copyright has been infringed in some way. So far, no one would disagree. For infringement through copying (as opposed to public performance or public display), even the Ninth Circuit now agrees (since Rentmeester v. Nike in 2018) that the plaintiff must prove both that the defendant actually copied material from the plaintiff’s work, and that the copying constituted wrongful appropriation.

It is the second sub-element of infringement–wrongful appropriation–where most of the confusion lies, and where we encourage the Ninth Circuit to focus the most attention in our amicus brief.

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Any successful test for wrongful appropriation must at a minimum achieve three critical goals. First, unprotected material must be filtered out from the comparison, to prevent defendants from being held liable for taking material that copyright policy clearly states is common property. Second, in cases where a jury has been requested, the inquiries that form an infringement determination need to be appropriately divided between those that are primarily legal in nature, and thus can be decided by the judge, and those that are primarily factual in nature, which usually must be reserved for the jury. Finally, the purpose of the “wrongful appropriation” element must be made clear to judges and juries alike, both to enable them to apply it consistently and to prevent it from collapsing into a determination of actual copying.

In our brief, we recommend consolidating the extrinsic and intrinsic tests and dividing the wrongful appropriation inquiry in a different way. Wrongful appropriation should be separated into (1) an initial step focused on identifying the protected expression in the material plaintiff claims has been copied, and (2) a subsequent step of assessing whether the copied expression takes a substantial amount of the appeal of the plaintiff’s work to its ordinary audience.

The first step is one that in many cases will be mostly legal in nature, and one that is appropriately assigned to the court, preferably based on a plaintiff-generated list of the protectable expression that has been copied.

The second step is likely to be a task for the trier of fact, based not on the individualized view of the works personal to each juror, but rather on an assessment of the copied expression from the perspective of the ordinary audience. That assessment would focus only on copied expression, not unprotected material, and would be based on a comparison of both the discrete elements of each work as well as overall similarities or dissimilarities between the two–in other words, both the forest and the trees.

This revised framework has several advantages over the current Ninth Circuit test. One thing that many infringement tests lack, including the Ninth Circuit’s extrinsic-intrinsic framework, is a clear stage at which the copyrightable expression present in the material allegedly copied from the plaintiff’s work is identified and separated from unprotected (but similar) material, which is then used in the ultimate comparison of the two works. This is a critical part of any infringement determination, but one that is often folded into other stages of the inquiry, such as the extrinsic test in the Ninth Circuit. Given the minimal amount of creativity that copyright law requires to register a work, it is essential that at some point, difficult as it may be, the copyrightable expression and the unprotected material alleged to have been copied are distinguished from each other, in order to avoid conflating the two in either direction (over-protecting or under-protecting the plaintiff’s copyright).

That is why we recommend that any revised infringement test clearly identify a “filtration” stage as a distinct initial step of the wrongful appropriation inquiry. This sort of prior delineation of the scope of protection occurs in patent law (through claiming) and trademark law (which insists on identifying classes of protection in advance), but is lacking in copyright. Filtering for protected expression requires some familiarity with the Copyright Act–a statute never accused of being excessively accessible to lawyers, let alone to lay jurors–as well as comfort navigating the case law interpreting it. Judicially formulated limitations, such as the scènes à faire and merger doctrines, play a vital role in protecting the interests of authors, competitors, audiences and the public domain. Their contours, as applied, are often metaphysical and complex in ways that are unquestionably challenging for judge and jury alike.

In other words, we think that judges are usually going to be the better entity to filter for protected expression, for several reasons. Judges, if new to copyright, can more quickly be brought up to speed on copyright’s utilitarian purposes and the ways in which it does not always track lay expectations. Understanding the correct intended scope of protection is an important first step to applying filtering mechanisms accurately. Additionally, judges are more likely to have repeated experiences with determinations of copyright’s protected expression, especially in the copyright-heavy dockets, whereas most jurors are unlikely to serve on a jury more than once or twice in their lifetimes, let alone serve in a copyright trial more than once. Greater familiarity with copyright’s quirks and requirements makes it easier to filter effectively while still also protecting artistic expression robustly. Finally, judges’ determinations of protected expression as a matter of law can be reviewed de novo, which facilitates appellate review of the important legal question of the scope of plaintiff’s copyright.

We believe the filtering step, when performed by a judge, should be performed at a preliminary stage of the case (to allow for possible early resolution of the dispute) and, to minimize workload on the court, should be based on a list of the claimed protected elements in the plaintiff’s work that have been alleged to have been copied, a list the plaintiff should be required to produce.

There’s another issue addressed by our proposal, which has to do with distinguishing between the two parts of the inquiry to determine infringement, actual copying and wrongful appropriation. Frequently, these two steps are conflated in copyright cases. Many decisions seem to treat “substantial similarity”–the way wrongful appropriation is demonstrated–as a way of proving that the defendant actually copied something from the plaintiff. We recommend clarifying the distinction through both terminology and substance. With respect to terminology, the phrase often used for the second part of the infringement test––“substantial similarity”–is both unhelpful and potentially misleading. Similarity, as we say in the brief, is meaningless when considered by itself. Whether two objects are similar depends on what the goal of the comparison is. In the brief, we give the example of similar but not identical outfits–they may be too similar for evening wear, but not similar enough for a uniform.

We propose giving some shape to the substantial similarity inquiry by clarifying the goal. The purpose is not to determine similarity vel non, but to evaluate whether the defendant’s copying of protected expression was wrongful. We thus refer to the second part of the test not as “substantial similarity,” but as “wrongful appropriation”–although other phrases have been used (“unlawful appropriation,” “improper appropriation,” “illicit copying,” “actionable copying”), and those are consistent with our understanding. The point is that something other than simple copying of expression is being evaluated. Drawing on language from earlier cases, we connect the wrongfulness of the appropriation to whether it takes a substantial part of the appeal of the plaintiff’s work to the ordinary audience (e.g., ordinary observer, reasonable observer, or lay listener). In other words, the appropriation has to be significant enough to cause some harm to the plaintiff, whether that is monetary harm, harm to the plaintiff’s market share or potential audience, or some other cognizable injury.

Crucially, and worth repeating: injury has to be evaluated from an objective standpoint. The “ordinary observer,” like the reasonable person in tort law, is a legal fiction, an abstracted hypothetical entity meant to operate as a proxy. But a proxy for what? It is often unclear what it does and doesn’t do. The reasonable person standard symbolizes what an ordinary person ought to have done or known under similar circumstances, and thus helps define the boundaries of acceptable behavior versus unreasonable risk-taking or carelessness. That standard draws on ordinary experience common to the collective, rather than particularized to an individual decisionmaker. This distinction is why it is considered “objective” rather than “subjective.”

Similarly, the ordinary observer in copyright law helps locate the boundaries around certain behaviors through the adoption of a given perspective. From that vantage point, the trier of fact identifies when copying is unacceptable (“substantial appropriation”) and thus becomes legally cognizable as copyright infringement. Yet, adopting the ordinary observer perspective (or audience test) does not by itself yield the descriptively correct answer any better than any other test. As with the reasonable person standard, application of the ordinary observer standard inevitably integrates normative elements; there is no absolute “substantial similarity” that can be found, if we could only figure out the right decisionmaker. No matter what test is used, wrongful appropriation requires a normative determination, and the ordinary observer fiction is simply the framework through which to conduct that normative inquiry (a view captured in the Goldstein treatise and reflective of the modern trend since Arnstein v. Porter).

Often, the normative elements of the test are not fully acknowledged by courts, or they are wrongly characterized and even pilloried as undermining the jury’s ultimate conclusion. The problem is that there has been a pernicious slippage from objective to subjective conceptions of the ordinary observer, from ordinary observer as a fictional construct to ordinary observer as the jurors’ interior mental responses to the works. This slippage is a mistake; the second step of the substantial similarity determination should be treated as a device, like the reasonable person fiction–a device that formalizes the adoption of a lay perspective. The ordinary observer perspective is thus instrumental, a means to an end, and a means “peculiarly fitted” for a jury (to quote Arnstein v. Porter).

The problem with the slide from an objective to a subjective inquiry is that, in the Ninth Circuit, it would appear that jury verdicts on substantial similarity, precisely because they allegedly rest on jurors’ subjective views of the works, are treated as though they are a form of unshakeable truth accessible only to empaneled jurors and are thus inappropriate to consider on appeal. Now the ordinary observer test becomes something else altogether: not a helpful perspective to adopt, but the answer, and, what is more, a conclusion that cannot be revisited on appellate review. Put another way, courts are not merely expressing appropriate appellate deference in refusing to set aside or even review the jury’s view of the ultimate question of substantial similarity; they are giving voice to an unsupported, and ultimately untenable, view of epistemological supremacy. Under this view, the jury is a source of precious epistemic certainty, and its determinations must be presumed to be correct–and allowed to remain as they are.

Copyright’s ordinary observer standard resembles tort’s reasonable person standard, and it ought to be treated as an objective test, one that abstracts to a fictionalized entity in order to produce a normative conclusion about what is reasonable versus wrongful, whether the subject matter is a slippery sidewalk or a highly similar screenplay. As such, the ordinary observer standard, and the jury’s decision applying it, ought to be susceptible to sufficiency challenges like other jury decisions based on objective standards. Treating the jury’s conclusion as appellate Teflon represents a form of copyright exceptionalism and, as Prof. Sepehr Shahshahani argued in his amicus brief in Sedlik, a departure from longstanding rules and norms about the jury’s function. Whatever else it does in this case, the Ninth Circuit should ensure that copyright jury verdicts are treated no differently than jury verdicts in other areas of civil law.

The post appeared first on Technology & Marketing Law Blog.