Law on Liability for Copyright Infringement
© 1999 Gorman & Williams
A claim of copyright infringement requires proof of (1) the ownership
of a valid copyright, and (2) defendants' violation of one of the owner's
exclusive rights under the Copyright Act. Sony Corp. of America v. Universal
City Studios, Inc., 464 U.S. 417, 433 (1984); 17 U.S.C. § 106;
3 Nimmer on Copyright, § 13.01. The exclusive rights entitled to protection
are set forth in § 106 of the Copyright Act. The exclusive rights
are copying, preparing derivative works, distribution to the public, public
performance, and public display. See Microsoft Corp. v. Grey Computer,
910 F. Supp. 1077, at 1083 (D.Md. 1995) (""iolation of any of the rights
granted under Sec. 106 constitutes infringement.").
There are three types of liability for copyright infringement -- direct,
vicarious, and contributory:
Although the Copyright Act does not expressly impose liability on
anyone other than direct infringers, courts have long recognized that in
certain circumstances vicarious or contributory liability will be imposed.
See Sony Corp. of America v. Universal City Studios, Inc., 464 U.S.
417, 435 (1984).
Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259 (9th
Cir. 1996). A defendant infringes directly when the defendant violates
one of the owner's exclusive rights without authorization. A defendant
vicariously infringes if that defendant has the right and ability
to supervise the infringing activity of the direct infringers and also
has a financial interest in the activity. A defendant contributorily
infringes if the defendant, with knowledge of the infringing activity,
induces, causes, or materially contributes to the infringing conduct. Innocent
infringement or lack of intent is no defense. Microsoft Corp. v. Grey
Computer, 910 F. Supp. 1077, 1083 (D.Md. 1995) ("Moreover, neither
lack of knowledge nor intent are defenses to a claim of copyright infringement.").
The Law On Access
Because direct evidence of copying is rare, a plaintiff can establish
a prima facie case of infringement by showing a valid copyright, the defendant's
access to the plaintiff's work, and substantial similarity between the
plaintiff's and defendant's works. Dawson v. Hinshaw Music, Inc.,
905 F.2d 731, 732-33 (4th Cir. 1990) cert. denied, 498
U.S. 981 (1990); see also Towler v. Sayles, 76 F.3d 579,
581 (4th Cir. 1996) (citing Dawson, 905 F.2d at 732-33).
Reasonable Possibility of Access
A plaintiff in a copyright infringement case is not required to produce
evidence catching one or more of the defendants "red-handed." Instead,
a plaintiff is required only to show evidence that a reasonable possibility
of access existed:
Because copiers are rarely caught red-handed, copying has traditionally
been proven circumstantially by proof of access and substantial similarity.
Novelty Textile Mills, Inc. v. Joan Fabrics Corp., 558 F.2d 1090,
1093 (2d Cir. 1977). In the context of copyright, it is well established
that there must be evidence of a reasonable possibility
of access.
Gaste v. Kaiserman, 863 F.2d 1061 (2d Cir. 1988) (emphasis added);
Towler, supra, at 582. Showing access does not mean showing that
the defendant actually saw the plaintiff's work.
What the law requires is "a reasonable opportunity to view":
For this reason, it is clear that even if evidence is unavailable
to prove the fact of actual viewing, if it can be shown that the Defendant
had the opportunity to view, this (when combined with substantial similarity)
is sufficient to permit the trier of facts to conclude that copying has
occurred.
3 Nimmer on Copyright, § 13.02 [A] at 13-17.
How Access Is Shown
Evidence that the paths of the infringer and the infringed work crossed
is proof of access. Towler, supra, at 582. In addition, evidence
that a third party, with whom both the plaintiff and defendant were dealing,
had possession of the plaintiff's work is sufficient to establish that
a defendant had access to plaintiff's work. 3 Nimmer on Copyright, §
13.01[A] at 13-11 (1981); Kamar Int'l. Inc. v. Russ Berrie & Co.,
657 F.2d 1059, 1062 (9th Cir. 1981); Russ Berrie & Co.,
Inc. v. Jerry Elsner Co., Inc., 482 F. Supp. 980, 989, n. 7 (S.D.N.Y.
1980). As Nimmer states:
Thus, evidence that a third party with whom both the Plaintiff and
the Defendant were dealing had possession of Plaintiff's work is sufficient
to establish access by Defendant.
3 Nimmer on Copyright, § 13.02 [A] at 13-18.
If a defendant is a corporation, the fact that one employee has possession
of the plaintiff's work warrants a finding that another employee had access
to the plaintiff's work, where by physical propinquity between the employees,
the latter had the opportunity to view the work in the possession of the
former. See Nordstrom v. Radio Corporation of America., 251
F. Supp. 41, 42-43 (D. Colo. 1965); Bevan v. Columbia Broadcasting
329 F. Supp. 601, 609-10 (S.D.N.Y. 1971); Morrissey v. Proctor &
Gamble, 379 F.2d 675, 677 (1st Cir. 1967).
Where existence of a channel of communication is denied by the defendant,
but supported by some evidence from the plaintiff, it has been held that
summary judgment for defendant on the ground of lack of access must be
denied. See Sanford v. CBS, Inc., 594 F. Supp. 711, 712 (N.D.
Ill. 1984) (summary judgment denied); Nordstrom v. Radio Corporation
of America, 251 F. Supp. 41 (D. Colo. 1965) (summary judgment denied).
The Law On Substantial Similarity
There are two prongs to the substantial similarity analysis. The first
prong is called the "extrinsic test" in which the court reviews the works,
typically with the aid of expert testimony, to determine whether there
is substantial similarity between the ideas of the two works. The second
prong is called the "intrinsic test" which tests for substantial similarity
in how those ideas are expressed. The Fourth Circuit has published two
leading opinions since 1990 discussing the extrinsic and intrinsic tests
-- Dawson v. Hinshaw Music, Inc., 905 F.2d 731 (4th Cir.
1990) and Towler v. Sayles, 76 F.3d 579 (4th Cir. 1996).
An original combination of even unprotectible elements can constitute
protectible expression. See Roth Greeting Cards v. United Card Co.,
429 F.2d 1106, 1109 (9th Cir. 1970) Apple Computer v. Microsoft,
779 F. Supp. 133, 136 (N.D. Cal. 1991); Barris Fraser v. Goodson-Todman,
5 U.S.P.Q. 2d 1887, 1891 (S.D.N.Y. 1988); Baldine v Furniture Comfort
Corporation, 956 F. Supp. 580, 587 (M.D.N.C. 1996); Barris-Fraser
Enterprises v. Goodson-Todman Enterprises, 5 U.S.P.Q. 2d 1887
(S.D.N.Y. 1988) (motions for summary judgment denied).
The Fourth Circuit has not held that both the intrinsic and extrinsic
test must be satisfied in order to survive summary judgment. See Baldine
v. Furniture Comfort Corp., 956 F. Supp. 580, 586 (M.D.N.C. 1996) (denying
summary judgment on extrinsic similarity and leaving the determination
of intrinsic similarity to the jury). Most authorities hold that if the
judge determines that a reasonable jury could find that the two works are
extrinsically similar, the question of intrinsic similarity must also be
left to the trier of fact. See, e.g., Shaw v. Lindheim, 919
F.2d 1353, 1359-61 (9th Cir. 1990) (reversing grant of summary
judgment and holding that "satisfaction of the extrinsic test creates a
triable issue of fact in a copyright infringement action involving a literary
work"). Zervitz v. Hollywood Pictures, Inc., 989 F. Supp 727, 729-30
(D. Md. 1995) ("Defendants argue persuasively that many of the similarities
Plaintiff alleges are simply scenes a faire or scenes that naturally flow
from a common theme. These arguments, however, are more appropriately addresses
to the trier of fact and cannot be disposed of as a matter of law."
(emphasis added)).
The courts have rejected "innocent infringement" as a defense. See Ford
Motor Company v. B & H Supply, Inc., 646 F. Supp., 975, 989 (D.Minn.
1986). 3 Nimmer on Copyright, § 13.08 at 13-282 (emphasis added).
See also Shapiro, Bernstein & Co. v. H. L. Green Company,
316 F.2d 304, 308 (2d Cir. 1963) (innocent infringer has ability to guard
against infringement by indemnity agreement).
