Originality is a constitutional requirement and is part of a two-prong test for copyrightability: (1) independent creation by the author and (2) minimal degree of creativity. Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991). The level of creativity necessary for a work to qualify for copyright protection is very low. See Atari Games v. Oman, 888 F.2d 878 (DC Cir. 1989) (also holding that the work has to be considered as a whole in qualifying for protection). Even a reproduction (not a derivative work, but a reproduction) of a work is copyrightable if the claimant can demonstrate that the reproduction contains an original contribution not present in the underlying work. Rabbani v. Fisch, 1998 U.S. Dist. LEXIS 5126, at *9 (S.D.N.Y. 1998) (holding that the defendants failed to produce evidence to establish lack of originality in plaintiffs’ Roman coin jewelry because they submitted no evidence that compares plaintiffs’ jewelry with an original Roman coin).
To prove that the plaintiff’s designs are not original, the burden is on the defendant to overcome the certificates of registration that are prima facie evidence of validity and, therefore, of originality. Mulberry Thai Silks v. K & K Neckwear, 897 F. Supp. 789, 792 (S.D.N.Y. 1995) (internal citations omitted). However, if the defendant offers proof of lack of originality by the plaintiff through evidence that the plaintiff copied from prior works (or even from the defendant itself), the burden shifts to the plaintiff to overcome that evidence. 3-12 Nimmer on Copyright § 12.11.
It is not enough for the defendant to offer evidence of prior similar works without the evidence that the plaintiff copied from such works. See R. Dakin & Co. v. A&L Novelty Co., 444 F. Supp. 1080, 1083-84 (E.D.N.Y. 1978) (finding plaintiff’s works sufficiently original because the court found no clear evidence that the plaintiff copied from works previously in the public domain and on the market).
Proof that the plaintiff copied from prior works should involve the same elements as are required to establish copying by the defendant from the plaintiff: (1) access to the prior works[1] and (2) probative similarity between the copyrighted works and prior works. 3-12 Nimmer on Copyright § 12.11; Psihoyos v. Nat’l Geographic Soc’y, 409 F. Supp. 2d 268, 279 (S.D.N.Y. 2005) (internal citations omitted) (holding that “[A] defendant can prove copying if he can show that the plaintiff had access to another’s creation, and that the works are similar enough to support an inference that copying occurred.”). See also, Boisson v. Banian, Ltd, 273 F.3d 262, 269-70 (2d Cir. 2001) (leaving open the question of whether “a defendant may also rely on circumstantial evidence to show that a plaintiff copied from the public domain,” but applying that analysis, arguendo, to single element of plaintiff’s work).”
The plaintiff has the burden of proving both access and substantial similarity, which are independent requirements. 3-12 Nimmer on Copyright § 12.11; Prince Group v. MTS Prods., 967 F. Supp. 121, 125 (S.D.N.Y. 1997) (holding that, in the absence of direct copying, an inference of copying can be made by either showing the two designs are substantially similar and the infringer had access to the design or by showing the two designs are strikingly similar). If the designs are strikingly similar, there is no need to show access. See, Judith Ripka Designs v. Preville, 935 F. Supp. 237, 247 (S.D.N.Y. 1996).
[1] Since access to the original work can rarely be shown, access to publications in which the work was pictured is good evidence of access, especially if the plaintiff subscribed to or routinely used the publication, or if it is still in plaintiff’s possession as determined in discovery. For example, if the prior works were published in a widely-circulated magazine, to which the plaintiff had access, access can be proven. Showing access may not be required if the plaintiff’s copyrighted work is one-for-one with the prior works (i.e., they are strikingly similar).
“Plaintiff bears the burden of producing ‘significant, affirmative, and probative evidence’ to demonstrate that defendant had access to its claimed work.” Prince Group v. MTS Prods., 967 F. Supp. 121, 127 (S.D.N.Y. 1997). The test for substantial similarity is whether “the ordinary observer, unless he is set out to detect disparities would be disposed to overlook them, and regard their aesthetic appeal as the same.” Id. at 126 (also discussing the standard for “striking similarity”).
Discussing the meaning of “substantial similarity”, the Southern District of New York has explained that ”what is protectible…is ‘the author’s original contributions,’ … the original way in which the author has ‘selected, coordinated, and arranged’ the elements of his or her work.” Judith Ripka Designs v. Preville, 935 F. Supp. 237, 247 (S.D.N.Y. 1996) (citing Knitwaves, Inc. v. Lollytogs, Ltd. (Inc.) d/b/a French Toast, 71 F.3d 996 (2d Cir. 1995) as providing insight into the meaning of “substantial similarity” in determining infringement).
Defendant’s copying of plaintiff’s idea but not of his expression is not infringement, but by the same measure, plaintiff’s copying of the idea but not the expression from a prior work does not derogate from plaintiff’s originality.[2]Leeds Music, Ltd. v. Robin, 358 F. Supp. 650 (S.D. Ohio 1973); 3-12 Nimmer on Copyright § 12.11.
Generally, the courts will not analyze the work element by element, but the overall “look and feel”, almost like in a trademark case. The courts look at the overall design and arrangement rather than individual elements. Some important cases:
Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 489 F. Supp. 174 (N.D. Ga. 1980), aff’d, 684 F.2d 821 (11th Cir. 1982) (where the court held that the plaintiff’s dolls exhibited the requisite degree of originality to support a valid copyright because the court found numerous differences between plaintiff’s dolls and the prior works).
Merit Diamond Corp. v. Frederick Goldman, Inc., 376 F. Supp. 2d 517, 523 (S.D.N.Y. 2005) (where the court found that none of the prior art shown by defendants rebuts the presumption of copyright validity because “none of it anticipates the unique combination of elements contained in the design for the Three Stones pendant.”).
[1] Since access to the original work can rarely be shown, access to publications in which the work was pictured is good evidence of access, especially if the plaintiff subscribed to or routinely used the publication, or if it is still in plaintiff’s possession as determined in discovery. For example, if the prior works were published in a widely-circulated magazine, to which the plaintiff had access, access can be proven. Showing access may not be required if the plaintiff’s copyrighted work is one-for-one with the prior works (i.e., they are strikingly similar).
[2] Rather than get into a discussion of the idea-expression dichtonomy, as it is called, consider this example: it’s OK to see a jeweled bumble bee pin and make your own version (it’s a bee, just an idea), but it’s not OK to take the original bee and make a mold from it to create a copy. The courts have found infringement when the defendant made a mold copy.
