We’ve got a mouse living under our kitchen sink. I’ve been trying to kill it, but now I’m wondering if I couldn’t use as it pet therapy. It doesn’t seem to be helping with my anger management.
We also have a gopher! It’s ruining the back yard. I bought some device to kill it: basically a smoke bomb that you light and then quickly bury into the sucker’s hole. It has a fuse that lights — and progresses — remarkably and comically quickly. After buried, you can hear the device fizzing and smoking in the hole for seems like a really long time. It’s suppose to suffocate the rodent. I’ve tried 3 of them. They don’t work, but they’re really fun.
Speaking of pests and the fun they can bring, back to the plaintiff one of my music copyright cases. We’ve moved for summary judgment, and plaintiff has opposed (naturally). One of plaintiff’s arguments is interesting. Although I told the court to assume access for purposes of this motion, the plaintiff has tried to make an issue out of access, and more particularly out of access in light of the 9th Circuit’s unique take on the “inverse ratio rule.”
Now, some foundation. (While you already know this, I repeat it merely to give you an excuse for reading this blog when your boss asks what the hell you think you’re doing, surfing the web when you’re supposed to be billing.)
To establish a claim for copyright infringement, a plaintiff must prove “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 361 (1991); Three Boys Music Corp. v. Bolton, 212 F.3d 477, 481 (9th Cir. 2000) (“A copyright plaintiff must prove (1) ownership of the copyright; and (2) infringement-that the defendant copied protected elements of the plaintiff’s work.”). A plaintiff must prove that the infringer copied the plaintiff’s work either through evidence of: (1) direct copying or (2) circumstantial evidence of copying, i.e. access and substantial similarity. Murray Hill Publications, Inc. v. Twentieth Century Fox Film Corp., 361 F.3d 312, 316 (9th Cir. 2004).
The Ninth Circuit uses a bifurcated extrinsic/intrinsic test to determine whether two works are substantially similar. Swirsky v. Carey, 376 F.3d 841, 845 (9th Cir. 2004) (“In determining whether two works are substantially similar, we employ a two-part analysis: an objective extrinsic test and a subjective intrinsic test.”). Proof of access, however, “has no bearing on whether two works are substantially similar.” Smith v. Jackson, 84 F.3d 1213, 1220 (9th Cir. 1996).
Now, against this legal backdrop, assume a plaintiff attempts to create a question of fact by raising the issue of access. Specifically, assume the following “plaintiff-four-step,” which goes like this: plaintiff randomly and broadly sends a CD with plaintiff’s music to, among other, various record company execs (step one); record company execs allegedly have “close relationship” (their conclusion, not mine) with artists/defendants (step two); and therefore plaintiff concludes that defendants had a “high degree” of access to plaintiff’s work (the third step in this clumsy dance). Then, like a square dance gone out of control, under the Ninth Circuit’s version of the inverse ratio rule, step four is â€“ according to plaintiff â€“ that they have a lower burden of proof on substantial similarity for purposes of establishing infringement. A bit circular, yes, but full marks for creativity.
Which brings me to the inverse ratio rule. Now, all circuits have addressed the inverse ratio rule , albeit from a more standard approach. That is, they have held that if a striking similarity is shown to exist between two works such that the only possible explanation for this is copying, access may be presumed. That makes sense.
The Ninth Circuit, however, flips this rule on its head, having ruled that when a high degree of access is shown, evidence of similarity may lowered. Lowered by how much? Hey! Don’t go getting technical. The answer is no one knows. Under the Ninth Circuit’s lopsided articulation of that rule, “it is impossible to quantify this standard.” Sid & Marty Krofft Television Productions, Inc. v. McDondald’s Corp., 562 F.2d 1157, 1172 (9th Cir. 1977) (emphasis added); see also Gable v. NBC, 727 F. Supp. 2d 815, 824 n. 3 (C.D. Cal. 2010), aff’d, — F.3d — (9th Cir. 2011) (“Even in cases in which the inverse ratio rule applies, it is not clear just how much less the showing of substantial similarity need be, given the high degree of access shown.”) (emphasis added). That’s part of the problem with this rule in the Ninth Circuit. Another is that the Ninth Circuit’s interpretation is based in part on an incomplete quotation from Nimmer on Copyright found in Shaw v. Lindheim, 919 F.2d 1353, 1361 (9th Cir. 1990). In that case, court cited to Nimmer for the proposition that: “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.” However, two sentences later, Nimmer says that “[n]either may a showing of substantial similarity ever be avoided.” Melville B. Nimmer & David Nimmer, NIMMER ON COPYRIGHT Â§ 13.03 [D] (2011). In other words, even with a “high degree”of access, a plaintiff must still establish substantial similarity between the works at issue.
The rule as applied in the Sunny Circuit has no logical application and illogically assumes that any degree of access necessarily results in some degree of copying. As William F. Patry notes: “while it is true that one cannot copy something to which one does not have access, it is also true that one can have complete access to a copyrighted work (indeed have it pasted on the wall of your office when creating your own work) but not copy that work. No degree of access necessarily leads to any degree of copying. The inverse ratio theory is based on a false postulate.” William F. Patry, Patry on Copyright, § 9:91 (2011) (emphasis added).
Patry hits the nail on the head. Here’s my own analogy: In my office, I have hanging several pieces of artwork. One piece, measuring about 4 feet x 4 feet, is a work of photorealism dating to the late 1960s. Its subject: a VW smashing through a Shell Oil logo (e.g. as if it were a still taken from the Shell Oil television commercials of the late 1960s â€“ some of you will remember them). Another, measuring about 4 inches by 4 inches, hangs on an adjacent wall. It is an illustration done by a friend which appeared in the Wall Street Journal in 2008. My friend had seen the VW painting on my wall prior to creating his work in 2008. He had seen it many times, in fact.
My friend’s work does bear some similarities to the VW piece: it uses a light blue for the background, it has points where the black in the image is immediately adjacent to the white in the image; it conveys a sense of movement, speed and surprise. Other than that, they are dissimilar: my friend’s piece shows a man falling off a cliff, holding an umbrella, with an anvil falling just above him, on which the word “Taxes” appears. (The image was published in the midst of the early on-set of the financial crisis.) In other words, although my friend had full, 100% access to the VW painting, it does not mean that when comparing the works we can assume copying or substantial similarity. Looking at them, and not withstanding the similarities I mentioned, they are nothing alike. If one were to accept the loopy notion that 100% access concomitantly drops the necessary showing of substantial similarity to prove infringement, you would have to conclude that my friend infringed the VW painting when creating his work. Makes no sense. Well, that’s litigation.
And now we wait to hear what the judge says. In the meantime, I’m going to buy some more mouse traps, maybe hire an exterminator, and — just in case — take down all the artwork in my office.
Jonathan Pink is an intellectual property attorney specializing in copyright, trademark, entertainment and media matters. He chairs the Entertain and Media group at Bryan Cave, LLP. He can be reached at 310-576-2100 or 949-223-7173, or by email at firstname.lastname@example.org