In Sedlik v. von Drachenberg, the jury had to decide whether a tattoo featuring Miles Davis was substantially similar to the photograph on which the tattoo was based. To do so, the court instructed the jury to exclude from consideration either work’s concept1 but to then to make “a holistic comparison that focuses on whether the works are substantially similar in the total concept and feel of the works.”2 How is a jury to exclude concepts from consideration only to then compare the works’ “total concept and feel?” In his article, Bruce Boyden persuasively explains how we got here and further argues that this is not the way to resolve questions of copyright infringement.
One of the article’s many contributions is to spotlight why developing a “substantial similarity” standard is complex because the issue bundles three distinct questions:
First, there is a question of amount: how much of the plaintiff’s material wound up in the defendant’s work? Second, there is a legal determination to be made: was the borrowed material the sort that the law should categorize as protected? And finally, there is a question of line-drawing: where is the threshold of impermissible borrowing, and did the defendant cross it? (P. 1101.)
Courts traditionally enjoyed great discretion when making these judgments because, prior to the 1950s, most suits sought equitable relief, allowing for case-by-case determinations. The article uses Learned Hand’s opinions in Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930), and Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49 (2d Cir. 1936), to illustrate the point. Each opinion provides the reader with an extensive comparison of the narrative elements of the relevant works followed by Hand’s conclusory remarks declaring non-infringement in Nichols and infringement in Sheldon. The article argues that Hand used his expertise to exclude unprotectible elements from consideration before relying on intuition to decide whether the second work had taken too much from the first.
The article argues that by the 1960s, this intuitive decision-making style came under pressure because the types of works in copyright litigation became more varied and less immediately familiar to judges and the rise of the Legal Process School challenged the legitimacy of unelected judges rendering judgment without explanation or justification. The initial judicial response was to treat similarity as a factual question to be decided by whether a lay observer would recognize the second work as having been taken from the first. The article illustrates why this recognition standard was problematic because it did not require filtration of unprotectible material.
This problem was on full display in the article’s central case, Roth Greeting Cards v. United Card Co., 429 F.2d 1106 (9th Cir. 1970). The article argues that similarities between the competing greeting cards’ use of the same jokes and similarities of general illustrative style were permissible copying of ideas. The court nonetheless held that the defendant had infringed because the cards conveyed the same mood, and “[i]t appears to us that in total concept and feel the cards of United are the same as the copyrighted cards of Roth.” Id. at 1110.
While initially treated as a throw-away line, the Ninth Circuit, and then others, embraced “total concept and feel” as their infringement standard after enactment of the 1976 Act. One reason was that this “standard” provided wide discretion while giving the appearance of a summative judgment based on analysis of predicate questions without requiring any explication of these steps. The other was that it avoided the normative judgment required by the Second Circuit’s earlier “improper appropriation” standard.
The article also shows how courts repurposed a standard that initially supported an infringement finding based on comparison of unprotectible elements, focusing on the concept and feel, into a standard that supported a finding of lack of substantial similarity because the two works’ total concept and feel was not the same. The article then tells the story in rich detail of how two developments in procedural law have put pressure on continued use of the total concept and feel standard.
The Supreme Court’s clarification of the summary judgment standard gave courts reason to delegate the infringement question to juries. This has been problematic because “total concept and feel” may work as a post-hoc justification for expert decision-making, but it fails as a jury instruction. The result has been infringement findings that have troubled appellate courts, which have nonetheless felt compelled to affirm.
But, some courts recently have reclaimed their discretion over infringement determinations by using the Supreme Court’s plausibility standard for pleadings to resolve weak infringement claims as a matter of law on motions to dismiss. The article concludes that this strategy is too limited and that the better way forward is to jettison total concept and feel and replace it with a jury-suitable standard that requires more specific determinations about protectability and contextual comparison.
I agree with the large majority of the article’s arguments and its conclusion. More could be said, but it’s important to keep in mind two confounding variables that complicate this story. One is that the sweat-of-the-brow theory of copyrightability was not fully put to rest until the Court’s 1990 decision in Feist. As a result, substantial similarity analysis has been inconsistent because of differences of opinion about what counts as the unit of comparison.
The other is that many judges, including Hand in Nichols, treated the issues of fair use and substantial similarity as being coterminous, placing more weight on the question of substantiality of use. Congress resolved the question in favor of fair use as a distinct doctrine in § 107, which relieves some of the pressure on the policy-laden question of whether the amount copied was excessive. But some courts are overrelying on fair use as a result.
I agree with the article’s central thesis that decisions about substantial similarity should be explicable, and that this standard should play a meaningful gatekeeping role in copyright infringement analysis.
- Sedlik v. von Drachenberg, Jury Instructions, No. 2:21-cv-01102-DSF-MRW (C.D. Cal. Jan. 26, 2024), at 18 (Instr. No. 14) (emphasis added).
- Id. at 25 (Instr. No. 21).
