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How "Thin" Is Your Copyright?

By James Juo

(originally published in the Los Angeles Daily Journal on September 22, 2009)

To be eligible for copyright protection, a work must be "original." That is, it was not copied and it exhibits a minimal amount of creativity. The Supreme Court in Feist Publications v. Rural Telephone Service Co., held that the degree of creativity necessary for copyright protection is "extremely low," so the vast majority of works make the grade quite easily. Several courts have noted that, in practice, the requirement of originality has become little more than a prohibition against actual copying. While the minimum level of creativity is extremely low, just meeting the bare minimum may entitle the work to only "thin" copyright protection which prevents virtually identical copying. For these works, the range of possible expression is narrow, driven more by the limitations of the medium or the subject matter.

The Ninth Circuit in Satava v. Lowry, addressed the scope of copyright protection available to a glass-in-glass jellyfish sculpture created by Richard Satava. A glass-in-glass sculpture is a glass sculpture (here, a lifelike glass sculpture of a jellyfish) that has been dipped into molten glass, which encases the sculpture in a solid outer glass shroud. The Ninth Circuit found that Sativa could not assert a copyright over typical features of a jellyfish such as tendril-like tentacles, or the standard shapes and proportions used in glass-in-glass sculptures. These elements were so commonplace that to recognize copyright protection would give Satava a monopoly on lifelike glass-in-glass sculptures of jellyfish. In general, copyrights are intended to protect expressions of an idea, not the naked idea in and of itself. The Ninth Circuit noted, however, that Satava may have made some copyrightable contributions, such as the distinctive curls of particular jellyfish tendrils. To the extent these choices were not governed by jellyfish physiology or the glass-in-glass medium, Satava's sculpture could be entitled to "a thin copyright that protects against only virtually identical copying."

The scope of thin copyrights was also discussed by the Ninth Circuit in Ets-Hokin v. Skyy Spirits Inc., with respect to photographs of a blue vodka bottle. Ets-Hokin had taken a series of photographs of Skyy's blue vodka bottle for use in a marketing campaign. Ets-Hokin retained the rights to those photographs, and Skyy only had a license to use the photographs. Apparently dissatisfied, Skyy later hired other photographers to take similar photographs of the same bottle for its marketing materials. Ets-Hokin then sued Skyy for copyright infringement.

In an earlier appeal regarding whether Ets-Hokin's photographs were eligible for a copyright, the Ninth Circuit held that the photographs were "sufficiently creative, and thus sufficiently original, to merit copyright protection." On remand, the district court granted summary judgment of no infringement, which Ets-Hokin appealed. For this second appeal, the Ninth Circuit rhetorically asked how many ways one can create a "product shot" of a blue vodka bottle, and concluded "there are not very many."

Although the Ets-Hokin photographs and the accused Skyy photographs were similar, the court found that the similarity resulted from the shared idea of photographing the Skyy bottle, and an idea, in and of itself, is not protected by copyright. The court noted that the photographs differ in as many ways as possible within the conventions of a commercial product shot, and that the only constant was the bottle itself. After subtracting the unoriginal elements from the photographic work, Ets-Hokin was left with a "thin" copyright that would prevent only virtually identical copying. The Ninth Circuit then affirmed the district court's grant of summary judgment because the allegedly infringing photographs were not "virtually identical."

In both Satava and Ets-Hokin, only "thin" copyright protection was available because apparently, only the minimum level of creativity was present. The range of possible expressions for each, whether sculpting jellyfish in glass or photographing a vodka bottle, was driven more by the limitations of the medium or the subject matter. Nonetheless, a thin copyright is still enforceable against virtually identical copying.

Virtually identical copying need not be exact, and may be found when there are slight differences. For example, in L.A. Printex Industries, Inc. v. Global Gold, Inc., which involved floral patterns for clothing, the defendant moved to dismiss the claim for copyright infringement because of the differences between the plaintiff's "thin" copyright and the accused designs, such as the shape of the flower petals. The court, however, found that there were many "striking" similarities. Both contained flowers of five or six different sizes that were clustered and arranged in a similar fashion, as well as nine-petaled flowers. The court held that a reasonable observer could find these particular flower representations to be "virtually identical," and denied the motion to dismiss the copyright claim.

In Express, LLC v. Fetish Group, Inc., the scope of virtually identical copying for a thin copyright on summary judgment was addressed. Express was accused of violating Fetish's copyright for a camisole having scalloped lace edging and a three-flower embroidery design below the right hip. The court first sought to identify the elements in which Fetish could claim a copyright. The placement of lace trim and the use of cut-out lace flowers were found to be "standard elements" of camisoles, such that it would be "a disservice to creativity" to allow Fetish a monopoly on their use. The court, however, did find that the floral embroidery design established "some small amount of creativity beyond the standard combination of standard elements" because the design did not represent the only way that stems and leaves can be depicted. Accordingly, Fetish was entitled to "thin" copyright protection against virtually identical copying.

To prevail on its motion for summary judgment of copyright infringement, Fetish had to establish that there was no genuine issue of fact that Fetish's and Express' camisoles were "substantially similar." To determine substantial similarity, the Ninth Circuit uses both an extrinsic test and an intrinsic test. The extrinsic test focuses on several objective criteria, while the intrinsic test asks whether the ordinary, reasonable person would find the total concept and feel of the works to be substantially similar. Although the intrinsic test is a subjective test that is often not amenable to summary judgment, where the works are so "overwhelmingly identical" that the possibility of independent creation is precluded, there would be no genuine issue of fact raised by the intrinsic test.

The court found that Fetish's and Express' camisoles were "virtually identical" because the slight discrepancies between them were eclipsed by the almost total likeness in the arrangement and placement of the two designs on the garments, and granted summary judgment. This suggests that the "virtually identical" standard for a thin copyright may be comparable with the "overwhelmingly identical" standard for granting summary judgment under the Ninth Circuit's intrinsic test for copyright infringement. Thus, infringement of a thin copyright may present an almost binary question for summary judgment.

James Juo is a partner at Fulwider Patton LLP, a Los Angeles law firm specializing in all aspects of intellectual property law, including the litigation, prosecution, and licensing of patents, trademarks and copyrights.