• Roy H. Gordon, Esq., MBA

Does Your Copyright Actually Protect Your Work?

Updated: Apr 4, 2019

Unlawful copying of a copyrighted work is called copyright infringement. Copyright infringement claims are valid when three elements are met. Although the elements of the cause of action are always the same, circuit courts differ slightly regarding how they assess the facts and the works in question in relation to the elements.

The elements necessary to bring a valid copyright infringement are:

  1. a showing that there is a valid copyright in a work,

  2. someone other than the copyright holder “actually copied” the work, and

  3. what was actually copied was an original, protected expression.1

Proving The Elements

To have a successful claim, you must prove all three elements. The first element is easily proven by producing evidence of ownership of a copyright in the work at issue.

To meet the second and third elements of the offense, plaintiffs must show that the two works are “substantially similar”. As described by the Third Circuit (the federal appellate court which covers both Pennsylvania and New Jersey), “’[s]ubstantial similarity’ can be broken down into two tests, both of which must be met.”2

Substantial Similarity: Test 1

The first test (relating to element number 2), sometimes referred to as the “extrinsic test” or “actual copying”, is “whether there is sufficient similarity between the two works in question to conclude that the alleged infringer used the copyrighted work in making his own.”3

Proof of actual copying is achieved through expert testimony, dissection, and analysis of the works’ parts.4 This test can also be satisfied by showing that the defendant had access to the copyrighted work. It should be noted that actual copying is assumed on a motion to dismiss.5

Substantial Similarity: Test 2

The second test, often termed the “intrinsic test”, is whether, from the perspective of a lay observer, the copying was an “unlawful appropriation” of the copyrighted work. Id. “Unlawful appropriation” has been defined as “a taking of the independent work of the copyright owner which is entitled to the statutory protection.”6 This analysis is fact intensive and viewed from the eyes of a lay observer.7

Unlawful appropriation is committed when the defendant copied elements of the work that are original works of art.8 Copyright law protects work that “was independently created by the author . . . and that . . . possesses at least some minimal degree of creativity.”9 Unlawful appropriation occurs when the accused infringer has taken a portion of the independent work of the copyright holder that is protected by copyright law and the two works are substantially similar.10

The Scene A Faire Doctrine

Generally, to be protectable, expressions must fall outside the realm of the scene a faire doctrine. Under this doctrine, standard or stock expressions, which are common to a particular topic or that necessarily follow from a common theme or setting, are generally outside of the protection of copyright law.11 In other words, “incidents, characters or settings which are as a practical matter indispensable in the treatment of a given topic” are considered scene a faire and are not protected.12

The scene a faire doctrine may offer a defendant protection if they establish that there is a limited, if not singular, manner to express the ideas presented in the works.13 The doctrine applies only to an idea or the expression of an idea that is so closely tied to the concept that the concept and the expression are merged and unprotectable as a matter of law.14 It includes “elements of a work that necessarily result from external factors inherent in the subject matter of the work.”15 The doctrine denies copyright protection to an idea that is capable of expression only in a stereotyped form.16

A Sequence of scene a faire expressions May Be Copyrightable

However, even if the copied ideas or expressions are all scene a faire or are otherwise unprotected by copyright law, the sequence of scene a faire ideas and themes may be original expression and therefore protectable.17

Moreover, “copyright law protects the pattern of the work, the sequence of events, the development of the interplay of characters, and the way in which an author strings a significant number of unprotectable elements.”18 Protection “is available for the association, presentation, and combination of the ideas and thought which go to make up the author’s literary composition.”19

Whether copyright law may be used as a shield for protection against copiers rests on whether the similarities are due to protected aesthetic expressions original to the alleged infringed work.20

To make a decision as to what is entitled to copyright protection and what is not, the fact-finder (either the judge or a jury) will look beyond the separate components of the works, “and must compare the contested work’s total concept and overall feel with that of the allegedly infringing work” from the point of view of a lay observer.21

This should be examined “in such aspects as the total concept and feel, theme, characters, plot, sequence, pace, and setting. . . . It is only where the points of dissimilarity exceed those that are similar and those similar are – when compared to the original work – of small import quantitatively or qualitatively that a finding of no infringement is appropriate.”22

In deciding whether unlawful appropriation has taken place, the fact-finder will concentrate on the total features of the works rather than the minutiae.23 Other considerations are the amount of creativity and originality, the nature of the protected material, and the setting in which it appears.24

The Tenth Circuit has further explained that a sliding scale is used – if the amount of originality in the copyrighted work is plentiful, less substantial similarity is needed for there to be infringement.25

Substantial Similarity Is A Fact Intensive Analysis

In the Third Circuit, the standard to prove substantial similarity is met by finding that the two works are deemed to be substantially similar from the view of the ordinary lay observer.26 In other words, the fact finder must decide whether an ordinary person (not an expert) would detect substantial similarity between the two works.27

“[D]etermining what extent of similarity will constitute a substantial, and therefore infringing, similarity presents one of the most difficult questions in copyright law and is one that is the least susceptible of helpful generalization.”28

Generally, less similarity is required to prove infringement of artistic works than is required to prove infringement of commercial documents.29 The Fifth Circuit has further explained the analysis stating that “the substantiality of the similarity is measured by considering the qualitative and quantitative significance of the copied portion in relation to the plaintiff’s work as a whole.”30

Dissimilarities Do Not Eradicate A Work’s Copyright Protection

Just because two works have dissimilarities does not mean that the original work is not protected. In other words, infringement may still be found even though there are dissimilarities between the works. Courts focus on the overall similarities rather than the minute differences.31 “[I]nfringement may be found where the similarity relates to a matter which constitutes a substantial portion of plaintiff’s work – i.e., a matter which is of value to plaintiffs.”32

Analyzing whether or not someone has committed copyright infringement on your work can be dizzying. If you have a valid copyright and feel that your work has been infringed upon, contact Roy H. Gordon to discuss your particular situation and your options.

Roy H. Gordon Law, LLP

Roy H. Gordon, Esquire, MBA


telephone: (856) 209-3425

Facebook: royhgordonlaw

1. See Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991); Kay Berry, Inc. v. Taylor Gifts, Inc., 421 F.3d 199, 203 (3rd Cir. 2005).

2. Ford Motor Co. v. Summit Motor Prods., Inc., 930 F.2d 277, 291 (3rd Cir.), cert. denied, 502 U.S. 939 (1991).

3. Id.

4. Dam Things from Denmark v. Russ Berrie & Co., 290 F.3d 548, 562 (3rd Cir. 2002); Universal Athletic Sales Co. v. Salkeld, 511 F.2d 904, 907 (3rd Cir. 1975).

5. Winstead v. Jackson, 509 F. App’x at 144-45 (3rd Cir. 2013).

6. Id.

7. Id.

8. Tristar Prods. V. SAS Group, Inc., 2009 U.S. Dist. LEXIS 94592, 14 (Sept. 9, 2009, N.J. Dist. 2009).

9. Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991).

10. Dam Things from Denmark, 290 F.3d at 562; Ford Motor Co., 930 F.2d at 290.

11. Dun & Bradstreet Software Servs., Inc., v. Grace Consulting, Inc. 307 F.3d 197, 215 (3rd. Cir. 2002).

12. Whelan Assocs., Inc., v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1236 (3rd Cir. 1986).

13. Webloyalty. com, Inc. v. Consumer Innovations, U.S. Dist. LEXIS 791 (Del. Dist. Ct. Jan. 13, 2005).

14. Autodesk Can. Co. v. Assimilate, Inc., 2009 U.S. Dist. LEXIS 89794, 4 (Del. Dist. Ct., Sept. 29, 2009).

15. Id.

16. Atari Inc. v. N. Am. Philips Consumer Elecs. Corp., 672 F.2d 607, 616 (7th Cir. 1982).

17. See Tristar Prods. V. SAS Group, Inc., 2009 U.S. Dist. LEXIS 94592, 14 (Sept. 9, 2009, N.J. Dist. 2009).

18. Herzog v. Castle Rock Entm’t, 193 F.3d 1241, 1249 (11th Cir. 1999); Metcalf v. Bochco, 294 F.3d 1069, 1074 (9th Cir. 2002).

19. Satava v. Lowry, 323 F.3d 805, 811 (9th Cir. 2003).

20. Effie Film LLC v. Pomerance, 909 F. Supp. 273, 291 (S. Dist. N.Y. 2012).

21. Horizon Comics Productions, Inc. v. Marvel Entertainment LLC, 246 F. Supp. 3d 937, 941 (S. Dist. N.Y. 2017) (Holding that a group of unprotectable ideas or expressions were enough to warrant a denial of a motion to dismiss because a reasonable jury could find the total concept and overall feel of the works to be substantially similar.)

22. Effie Film LLC, 909 F. Supp. at 292.

23. Universal Athletic Sales Co. v. Salkeld, 511 F.2d 904, 907 (3rd Cir. 1975).

24. Ford Motor Co., 930 F.2d at 291.

25. Country Kids and City Slicks, Inc. v. Sheen, 77 F.3d 1280, 1284 (10th Cir. 1996).

26. Dam Things From Denmark, 290 F.3d at 362.

27. Id.

28. Latele TV, C.A. v. Telemundo Communs. Group, LLC, 2015 U.S. Dist. LEXIS 11849, 27 (Fla. So. Dist. Ct. Feb. 2, 2015) (internal quotations omitted).

29. Universal Athletic Sales Co., 511 F.2d at 907; Nat’l Risk Mgmt., Inc. v. Bramwell, 819 F. Supp. 417, 427 (E.D. Pa. 1993).

30. Positive Black Talk Inc. v. Cash Money Records, Inc., 394 F.3d 357, 373 (5th Cir. 2004) (internal citations omitted).

31. Id. citing Atari, Inc. v. Am. Philips Consumer Elecs. Corp., 672 F.2d 607, 618 (7th Cir.) 459 U.S. 880 (1982).

32. CMM Cable Inc. v. Keymarket Communs., Inc., 870 F. Supp. 631, 636 (M.D. Pa. 1994).

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