What does it take to prove copyright infringement?

Today, we are going with a very technical post about what it takes to prove copyright infringement.  There are many legal citations to cases in order to discuss the deeper issues involved.

“In order to make out a claim of copyright infringement for an architectural work … a plaintiff must establish three things: 1) that his work is protected by a valid copyright, 2) that the defendant copied his work, and 3) that the copying was wrongful.” Zalewski v. Cicero Builder Dev., Inc., 754 F.3d 95, 100 (2d Cir.2014).

1. Ownership

“The Copyright Act of 1976 provides that copyright ownership ‘vests initially in the author or authors of the work.’ 17 U.S.C. § 201(a). As a general rule, the author is the party who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection.” Cmty. for Creative Non–Violence v. Reid, 490 U.S. 730, 737, 109 S.Ct. 2166, 104 L.Ed.2d 811 (1989); accord, Shaul v. Cherry Valley–Springfield Cent. Sch. Dist., 363 F.3d 177, 185 (2d Cir.2004). “'[A]uthorship is a sine qua non for any claim of copyright …. That is, the person claiming copyright must either himself be the author, or he must have succeeded to the rights of the author.’ ” Sorenson v. Wolfson, 96 F.Supp.3d 347, 362 (S.D.N.Y.2015) (quoting 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 5.01[A] [1993] ). “A certificate of copyright registration is prima facie evidence of ownership of a valid copyright, but the alleged infringer may rebut that presumption.” Scholz Design, Inc. v. Sard Custom Homes, LLC, 691 F.3d 182, 186 (2d Cir.2012) (citing MyWebGrocer, LLC v. Hometown Info, Inc., 375 F.3d 190, 192 [2d Cir.2004] ).

Even if a Plaintiff in a copyright infringement lawsuit buys copyrights, it is acceptable.  Then the Plaintiff obtained “a bundle of discrete rights,” including the right to reproduce, prepare derivative works, distribute, or display work based upon the copyrights of the works purchased. Davis v. Blige, 505 F.3d 90, 98 (2d Cir.2007) (citing 17 U.S.C. § 106).

Sometimes, ownership of a copyright is at issue.

A certificate of registration constitutes prima facie evidence of the validity of a copyright and the facts stated in the certificate. 17 U.S.C. § 410(c). However, “the Copyright Office’s practice of summarily issuing registrations … counsels against placing too much weight on registrations as proof of a valid copyright.” Univ. Furniture Int’l, Inc. v. Collezione Europa USA, Inc., 618 F.3d 417, 428 (4th Cir.2010). Furthermore, “the failure to alert the Copyright Office to relationships between the work for which registration is sought and prior works of others endangers the presumption of validity.” Gibson Tex, Inc. v. Sears Roebuck & Co., 11 F.Supp.2d 439, 442 (S.D.N.Y.1998) (citing Russ Berrie & Co., Inc. v. Jerry Elsner Co., Inc., 482 F.Supp. 980, 988 [S.D.N.Y.1980] ); see also Santrayall v. Burrell, 993 F.Supp. 173, 176 (S.D.N.Y.1998) (noting that, “[w]hen a claimant fails to advise the Copyright Office of the reliance upon the work of another, the claimant does not afford the Office the fair opportunity to pass upon the question of originality in relation to the prior work”).

Section 409 of the Copyright Act requires an application for copyright registration to include “an identification of any preexisting work or works that [a derivative work] is based on or incorporates, and a brief, general statement of the additional material covered by the copyright claim being registered.” 17 U.S.C. § 409(9).  A court could find that if a registration certificate violates Section 409 of the Copyright Act, then there may be validity problems.

Is a work original? 

With respect to originality, the Supreme Court has stated that the requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, “no matter how crude, humble or obvious” it might be. … Originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying.

Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 345, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991); see also Waldman Publ’g Corp. v. Landoll, Inc., 43 F.3d 775, 782 (2d Cir.1994) (holding that “[t]he law requires more than a modicum of originality. This has been interpreted to require a distinguishable variation that is more than merely trivial.”). Therefore, in order to qualify for protection as a derivative work, and be separately copyrightable, the new contributions must, “when analyzed as a whole, … display sufficient originality so as to amount to an ‘original work of authorship.’ ” Matthew Bender & Co., Inc. v. West Publ’g Co., 158 F.3d 674, 680 (2d Cir.1998); see also Waldman, 43 F.3d at 782 (stating that “[a] derivative work is copyrightable if it is sufficiently original”). “For better or worse, courts have not required an ‘especially elevated’ level of originality in the architectural realm.” Axelrod & Cherveny Architects, P.C. v. Winmar Homes, 05–CV–0711, 2007 WL 708798, at *9 (E.D.N.Y. Mar. 6, 2007); see also Yankee Candle Co. v. New England Candle Co., 14 F.Supp.2d 154, 158 (D.Mass.1998) (noting that “[c]ourts have routinely protected modern architectural structures, such as commercial homes, that possess the minimal amount of originality that copyright law requires, as well as the plans from which owners built them”).

2. Did the defendant copy the work?

There is authority that the creative arrangement and coordination of textual and graphic elements is protectible. See Eagle Access Control Sys., Inc. v. USA Power Gate, Inc., No. CV 07-3789, 2008 WL 11334485, at *4 (C.D. Cal. Dec. 18, 2008) (discussing layouts of manuals in addressing substantial similarity); Livingstone, 949 F.Supp. at 1054 (stating that author’s selection and arrangement of illustrations in medical textbook can be creative and original); see also Sadhu Singh Hamdad Trust v. Ajit Newspaper Advertising, Mktg. & Commc’ns, Inc., 503 F.Supp.2d 577, 589-90 (E.D.N.Y. 2007) (collecting cases where layout and manner of presentation were considered in concluding that work was entitled to copyright protection). Thus, while an abstract book design may not, standing alone, provide grounds for infringement, the manner in which specific text and graphics are selected and arranged in the parties’ works may be considered in evaluating total concept and feel.

The Court is able to compare “the contested [work’s] ‘total concept and overall feel’ with that of the allegedly infringed work.” Gaito, 602 F.3d at 66 (quoting Tufenkian, 338 F.3d at 133). In doing so, the Court may not rely on amorphous notions of “feel” and “look,” but must instead “identify precisely the particular [creative] decisions—original to the plaintiff and copied by the defendant[s]—that might be thought to make the similar in the aggregate.” Tufenkian, 338 F.3d at 134.

3. That the copying was wrongful

Once copying has been established, a plaintiff must next demonstrate that the copying was unlawful by showing that there is a substantial similarity between the protectible elements in the two works.” Hogan v. DC Comics, 48 F.Supp.2d 298, 307 (S.D.N.Y.1999). “The appropriate test for substantial similarity is ‘whether an ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard [the] aesthetic appeal as the same.’ ” Sheldon Abend Revocable Trust v. Spielberg, 748 F.Supp.2d 200, 204 (S.D.N.Y.2010) (quoting Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 111 [2d Cir.2001] ). “The copied elements of the work must be original and nontrivial to constitute improper appropriation.” Jean v. Bug Music, Inc., 2002 WL 287786, at *5 (S.D.N.Y. Feb. 27, 2002). Therefore, where “a work is an amalgamation of protectible and unprotectible elements, a ‘more discerning’ ordinary observer test is employed …, which requires that the court first filter out from consideration any non-protectible elements. The remaining, protectible elements are then analyzed for substantial similarity.” Sheldon, 748 F.Supp.2d at 204 (citing Knitwaves, Inc. v. Lollytogs, Ltd., 71 F.3d 996, 1002 [2d Cir.1995] ). “Yet, infringement encompasses more than just literal copying. … ‘Where the alleged infringer has misappropriated the original way in which the author has selected, coordinated, and arranged elements of his or her work,’ this too constitutes unauthorized copying.” Zalewski v. T.P. Builders, Inc., 875 F.Supp.2d 135, 147 (N.D.N.Y.2012) (Sharpe, J.) (quoting Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 66 [2d Cir.2010] ), aff’d, 754 F.3d 95 (2d Cir.2014).


In summary, the three-part copyright infringement analysis tries to take something that feels subjective and graft objective tests on to it. But the plaintiff must prove the ownership. The plaintiff must prove that the work was copied by the defendant. The plaintiff must prove that the copying was wrongful.