Art

Through the Looking Glass: Photography and the Idea/Expression Dichotomy

Through the Looking Glass: Photography and the Idea/Expression Dichotomy
Download a pdf version of this article here. Copyright law has always expressed an idea/expression dichotomy, where copyright protection extends not to an idea of a work but only to work’s expression of that idea. Alas, this distinction walks a fine line with regard to non-textual and visual works. In particular, courts are prone to inconsistent outcomes and a violation of the fundamental precepts of copyright law because courts often succumb to shortcomings in grasping aesthetic theories of originality, realism, and ideas idiosyncratic to visual works. However, this dilemma may be solved within the existing framework of copyright law. This note argues that the solution should start by focusing less on visual works’ subject matter, but rather elements of the work, such as the originality and realism of the expression that clarify the author’s creativity. Moreover, the concept of an “idea” should be defined broadly as the residual locus of uncopyrightable elements in a work, rather than a cohesive concept that attempts to definitively pin down the “idea” behind that individual work. Taking this two-pronged solution would thus both recognize visual and photographic work’s unique niche within copyright as well as align these forms of art with copyright’s law’s ultimate objective of authorship protection.

Un-Blurring Substantial Similarity: Aesthetic Judgments and Romantic Authorship in Music Copyright Law

Un-Blurring Substantial Similarity: Aesthetic Judgments and Romantic Authorship in Music Copyright Law
Download a PDF version of this article here.

By Nicole Lieberman*

Introduction

By refusing to acknowledge[1] the aesthetic judgments inherent in determining copyright disputes,[2] American courts have plagued our copyright law with subjective bias[3] and doctrinal confusion. To avoid the appearance of impropriety, since at least 1903[4] courts have side-stepped clearly defining foundational concepts such as “originality,”[5] “authorship,” and “infringement.” As such, they have failed to provide a meaningful methodology for determining when a work infringes the copyright of another.[6] By instead relying on the impossibly vague “substantial similarity” test,[7] courts have crafted an impressionistic doctrine that has drifted far from copyright’s original economic purpose of incentivizing creation.

While copyright infringement requires proof of copying, mere copying is not the end of the inquiry, as “[t]rivial copying is a significant part of modern life.”[8] Thus, proof of copying, or “copying-in-fact,” is only a threshold issue for proving infringement.

Copying-in-fact can be shown through direct evidence, such as testimony, but with witnesses and honest thieves often lacking, copying is most often shown by circumstantial evidence. Indirect proof of copying is provided by evidence creating an inference that the defendant copied – typically a combination of evidence of access to the plaintiff’s work and similarities probative of copying. While courts allow expert analysis and dissection to aid them in inferring copying, the largely unguided impression of lay observers determines the more exacting question of misappropriation.[9]

Yet determining misappropriation requires an understanding of the “axiom of copyright law that the protection granted to a copyrightable work extends only to the particular expression of an idea and never to the idea itself.”[10] Application of the “idea/expression” distinction requires delicate line-drawing to decide the appropriate “‘level of abstraction’ at which one defines the ‘idea’ that merges with the subject’s expression.”[11] But fact finders are unlikely to understand on their own which “ideas” are excluded or what elements fall into the category of “ideas.” While jury instructions can theoretically work to inform jurors to exclude such elements, “in practice jurors aren’t going to know what things are, for example, scène à faire[12] in the music industry, without some testimony on standard chord progressions.”[13] Thus, jurors are not likely to understand such an ephemeral distinction between ideas and expression, especially when applied to areas in which they lack expertise, as is often the case with copyright.[14] Because the issue of misappropriation is so dependent on the interpretation of these underlying principles of copyright law, classifying the issue as purely a question of fact for the jury requires reconsideration.[15]

Courts recognize the need for expert analysis and dissection in determining infringement in cases involving computer software. Distinguishing computers as “complex” and having elements dictated by limited options, courts apply a special test to ensure only protected elements are considered for infringement purposes. Yet they proscribe such guidance when the “aesthetic arts” are at issue, failing to recognize traditions unique to genres, that all art is capable of being broken down into constituent elements, and that such elements are dictated by genre and functional constraints. Courts have assumed that art is intuitive, simply reflecting emotions, and capable of being understood by anyone. Their narrow understanding of art comes from our law’s founding.

Copyright arose in an era where the courts viewed creativity as coming from a place of pure autonomous genius,[16] but this romantic view of aesthetics is a relic of the past: a counteraction to the age of enlightenment and rationalization. The reality is that creative borrowing is almost unavoidable and results in widespread use of unprotected elements from preexisting works. Without expert guidance and the ability to dissect protectable and unprotectable elements, judges and jurors are “more likely to find infringement in dubious circumstances, because they aren’t properly educated on the difference between protectable and unprotectable elements.”[17]

Due to the prevalence of music copyright infringement suits, and the fact that music is more perceptively derivative than other media,[18] it seems disproportionately plagued by the courts’ bias for traditional aesthetics. But music, like all arts, is inherently complex and technical,[19] and few “ordinary observers” know the elements and factors that go into its creation,”[20] especially with works of less familiar genres. Thus, fact finders are easily misled into finding substantial similarity based on unprotectable elements.[21]

While music may be uniquely crippled by our current copyright regime, the problems plaguing music copyright stem directly from a lack of guidance where it is arguably most needed: the technical issue of misappropriation.[22] With fact finders less likely to detect similarities attributable to common sources in unfamiliar aesthetic, the current system results in a prejudice against lesser-known aesthetics, and a bias for the traditional. [23] The result is far from encouraging aesthetic progress.

This paper will argue that to create a more encompassing[24] and objective copyright law, that fosters progress in all arts, it is vital to expand the role of analytic dissection and expert testimony to the misappropriation prong of the infringement test.

Part I of this paper provides background on the history of court treatment of music copyright and lays out the two major approaches to copyright infringement. In addition, this part outlines the foundational principle that only the expression of an idea is protectable. Part II illustrates how the tests have veered away from the original purposes and values underlying the inquiry. It argues that by relying on the ordinary observer test for misappropriation, the tests fail to accurately account for the idea-expression distinction. In outlining the problems facing music under our current copyright regime, this section shows how the problems with the audience test are particularly problematic for music, a medium in which the line between idea and expression is often not “spontaneous and immediate” to the ordinary observer.[25] The recent “Blurred Lines”[26] lawsuit serves to illustrate how the lack of objectivity in our current law results in inconsistent application, thereby diminishing incentives to create new works. More broadly, this section considers that while the problems for music are often more noticeable than for other media, they merely expose the larger inaccuracies of the audience test. Finally, Part III considers proposals for creating a more guided and objective infringement analysis. Ultimately, this paper concludes that the best solution is adopting the test for computer software, the abstraction-filtration-comparison method (AFC),[27] as a uniform test for infringement.

Requiring careful dissection of unprotected elements by the court would ensure educated decisions, and reserving the intuitive question of whether the defendant copied those elements for the trier would preserve the economic rationale of the lay listener test.[28] Effectively reversing the analysis of proof “will likely result in greater attention to the limiting doctrines of copyright law”[29] and the evolution of reasoned rule of law.[30] By basing aesthetic nondiscrimination in objective and reasoned criteria, as opposed to the “anti-intellectual and book burning” philosophy[31] of visceral impressions, the courts can determine actual illicit copying while being receptive to unconventional aesthetics.[32]

I. Historical Background of Music in Copyright

While copyright law struggles to deal with the fine arts as a whole,[33] particular problems arise in the context of musical works. These issues are rooted in the history of copyright law. Many of the problems facing music copyright lie in the fact that creators are seeking protection under a scheme created for the distinct purpose of protecting works of literature.[34] However, these problems are not unique to music. American copyright law is based on a concept of authorship ill-suited to progress in general. This section will outline the evolution of our copyright infringement doctrine. In considering the historical application of the doctrine to musical works, this section analyzes the aesthetic norms embedded within judges’ and jurors’ findings of infringement.

A. Music’s Initial Encounters in Early Legislation and Case Law

Article 1, Section 8 of the Constitution authorizes federal legislation “[t]o promote the Progress of Science and useful Arts,”[35] but gives little guidance in defining the scope of the copyright system. The original Copyright Act of 1790 extended protection only to maps, charts, and books.[36] Though musical compositions were routinely registered under the 1790 Act as “books,”[37] it was not until the Copyright Act of 1831 that Congress expressly extended protection to musical compositions. Congress’s early failure to provide well-crafted protection for musical compositions is hardly surprising given the 1790 Act’s roots in Great Britain’s Statute of Anne, which covered only the distinct category of “books.”[38]

With no other protection available against infringers, composers naturally came to seek protection of their works through copyright.[39] Yet utilizing a scheme created for “written” works meant obtaining copyright protection solely with respect to the underlying composition, “the notated, written score, including the music and any lyrics.”[40] While seemingly analogous, music as a performing art is “often related in some way to performance” and must be understood by reference to its context, that is, elements outside the composition.[41] Though federal law since 1976 has applied copyright protection to musical recordings, including some performance elements such as percussion, recordings are treated as distinct expressions with separate copyright protection.[42] Consequently, musical compositions are protected only within the restrictive framework of the “musical work,” which is defined as a combination of melody and harmony.[43]

More problematically, courts analyzing music copyright cases tend to place undue weight on melody, rather than harmony and rhythm,[44] failing to consider the complexity of music and a realm of possible distinguishing features. Focusing on elements of music that “lend themselves to notation”[45] may seem adequate in analyzing works from European musical traditions, which typically have predominant harmonic and melodic structures,[46] but doing so fails to consider music in its totality. Because music is inherently relational,[47] our perception of musical works, and their meaning, is dependent on the context in which notes and pitches in the melody are played.[48] Elements such as timbre and spatial organization are also relevant to the way we hear music and to the similarities we perceive. Consequently, “originality is better viewed as a function of the interaction and conjunction of these elements than of any element alone.”[49]

Neglecting to consider the totality of elements in musical works, while ill-suited even to classical traditions, most drastically affects works outside of Western traditions. The main aesthetic features of non-Western music often fall outside the confines of the court’s emphasis on melody and notation. Most notably, hip-hop, which finds its roots in certain African musical traditions, features a dominant “oral tradition,” evidenced in the practice of rapping, and complex rhythmic structures with less emphasis on melodic and harmonic structures. Moreover, such traditions predominately feature the element of musical borrowing through the practice of sampling, looping, and interpolation. These features are also found in other African American musical genres, including blues, jazz, rhythm and blues, gospel, Soul, rock, reggae, funk, disco, and rap, and are found mixed with all types of music today.[50] Electronic music producers are now producing hip-hop tracks,[51] and even pop-country artists are making rhythm-centric tracks that reference hip-hop culture. Not surprisingly, entering the arena puts artists at risk of facing a copyright suit. Taylor Swift recently faced a $42 million infringement claim for using the lyric “haters gone hate,” a staple in hip-hop culture and music, [52] in her recent dance-pop track “Shake it Off.”[53] Despite the prevalence of non-notational elements, copyright’s bias for written work places works that do not fit the mold “at the bottom of the hierarchies of taste,”[54] making findings of original elements in allegedly infringing works more difficult to obtain.

Borrowing similarly conflicts with Western ideals of creativity and originality, with the result that music has historically been disvalued. Records from the time of the Statute of Anne’s enactment are telling of the hostile attitudes facing music. While literature was held in high esteem for its educative role, music was seen as an unnecessary luxury that served merely as entertainment.[55] In Pyle v. Falkener,[56] an early case brought under the Statute of Anne, defendant publishers argued that, in contrast to works of literature, authorship of music required “a high standard of originality to qualify for protection under any legal theory.”[57] Underlying their challenge was the commonly held notion that composers “merely borrowed” from “[o]ld [t]unes which had been [u]sed in [c]ommon by all persons for many years before…” and as such have no proprietary rights.[58]

Such disparaging views of music are less surprising when one considers the rise of the Romantic view of authorship in the nineteenth and twenties centuries.[59] Unlike the classical conception of authorship, which “conceives of art as imitating universal truths and ideas,” and thus contemplates the evolutionary nature of art, the Romantic view conceptualizes the creation of art “as a process that reflect[s] the emotions and personality of the individual artist.”[60] With the Romantic view informing cultural assumptions, originality often came to be defined as requiring independent creation, “which essentially appears to rule out or significantly limit borrowing.”[61]

With the functional and genre constraints inherent to music,[62] tensions existed early on in applying copyright to musical works. Yet “use of existing works has historically been a core feature of the musical composition process”[63] and the artistic process in general. The courts’ neglect to appreciate the reality of borrowing has often resulted in overbroad copyrights, extending protection to more than just the particular arrangement of the literal elements of a work.[64] Additionally, by failing to recognize distinguishing features of songs that lie outside the melody and notation, courts often find infringement based on unprotected elements. Genres that explicitly sample existing works, such as hip-hop, have been hit hardest. As a result, the courts are perpetuating a bias for traditional aesthetics at the expense of progressive and unfamiliar artistic movements.[65]

B. The Idea-Expression Distinction

Early on, courts using the idea-expression dichotomy to distinguish between unprotectable and protectable aspects of works did so on the basis of tangibility. Though the courts still use these terms in filtering out unprotectable elements, changing views on the nature of the artistic process have distorted the original tangibility basis, leading to ad hoc judicial determinations. With the rise of the Romantic view, artistic works in their entirety came to be regarded as reflecting the artist’s contributions.[66] As a result, perceptions regarding the moral (and thus, intellectual property) rights of an artist expanded to include more than just the particular arrangement of the literal elements of a work.

Originally, American copyright law viewed “ideas” as “intangible, unexpressed concept[s] that existed only in the author’s mind.”[68] Therefore, copyright protected only the tangible[69] “expression,” or the “arrangement of words which the author has selected to express the idea.”[70] The rationale served the purposes of the intellectual property clause well, since free access to ideas is critical to the development of creative works.[71] Moreover, the right granted did not include a right over certain words used, because “they are the common property of the human race.”[72] This early approach was consistent under the classical conception of the creative process, which views the artist as portraying an intangible idea or truth which “cannot and should not be captured or controlled by one artist.”[73]

However, with the rise of the Romantic view in the nineteenth and twenties centuries,[74] Congress no longer limited “expression” to the arrangement of the literal elements of the copyrighted work, but expanded it to include underlying “original” conceptual elements as well.[75] In 1909, Congress both enlarged the category of works eligible for protection and expanded the rights provided to copyright owners, including use of the work in a different medium.[76] Protection under the Act was no longer limited to the literal form or features of the expressed idea, but extended to elements of a work that are intangible and conceptual.[77] In applying the new act, the Supreme Court in Kalem Co. v. Harper Bros.[78] found the defendant’s film to infringe upon the plaintiff’s copyright in the book Ben Hur because the film expressed the same underlying idea, or plot, albeit in an entirely different medium.[79]

It became clear that balanced against the idea-expression distinctions is the countervailing consideration that copyright infringement cannot be limited to exact copying, “else a plagiarist would escape by immaterial variations.”[80] The problem is one of line-drawing: at what point is a variation distinguishable enough to “sufficiently alter a work’s substantial similarity to another so as to negate infringement,” without extending protection to the underlying idea of the plaintiff’s work?[81]

Views on the nature of art and the creative process have only continued to evolve and become more inconsistent with the idea-expression dichotomy.[82] The conceptual art movement advanced the rejection of any distinction between an artist’s idea and the ultimate expression.[83] As conceptual artist Sol LeWitt stated, “the idea or concept is the most important aspect of the work. When an artist uses a conceptual form of art, it means that all of the planning and decisions are made beforehand and the execution is a perfunctory affair. The idea becomes a machine that makes the art.”[84] In rejecting the Formalist tradition, which defined art by its form and structure, conceptual art judges art by what it contributes to the conception and definition of “art.”[85] Even an unchanged item from the grocery store, like a box of Brillo soap pads,[86] can be art if framed in a new way.

With Romantic and neo-romantic views challenging classical aesthetic theory, no universally accepted philosophical or objective basis remains for distinguishing ideas from expression in works of art. Continuing to use the terms leaves courts to make infringement decisions on the basis of their own subjective assessments of a work’s artistic value.[87] Judicial determinations of what constitutes the “idea” versus the “expression” have come to reflect personal assumptions and experiences. Courts tend to find elements of a work to be an “idea” when they are familiar with the work’s aesthetic tradition and can recognize the elements as commonplace.[88] Conversely, courts are more likely to find elements of works in less familiar traditions to be original “expression,” making them more inclined to find later uses infringing.[89] As the Ninth Circuit admitted, “‘At least in close cases, one may suspect, the classification [of idea and expression] the court selects may simply state the result reached rather than the reason for it.’”[90] Thus, with changing views on the creative process, “it is no longer necessary or valuable or even possible to dissect a work of art to uncover the universal truths or ideas which must remain freely available to all future authors.”[91]

Distinguishing between ideas and expression is perhaps most illusory in the context of music, due to the relatively limited number of compositional choices when compared with literary works.[92] Western music, at issue in most copyright suits, is primarily written in the tonal system, an organized and relational system of tones (e.g., the notes of a major or minor scale) in which one tone becomes “the central point to which the remaining tones are related.”[93] Because there are a limited number of possible pitch and harmonic relationships, options within tonal music are somewhat dictated by the system.[94] Moreover, because the tonal system is built on a hierarchy of predominate chords and pitches,[95] certain “patterns and tendencies are . . . common to virtually all musical works composed in the tonal system.”[96] The distinction between these unprotectable ideas and the original expression thereof is difficult to see, and thus the room for bias is most apparent.[97]

C. Evolution of the Copyright Infringement Tests

Courts since the nineteenth century have attempted to separate the issue of copyright infringement into two issues. First, “Copying-in-Fact”: did the defendant see and copy from the copyrighted work or did he create his work independently?; second, “Misappropriation”: did the defendant appropriate too much of the protected work?[98] The first question is used as an evidentiary tool to infer copying from access or “striking similarity,”[99] while the second focuses on the liability issue.[100] The degree of similarity between the two works is relevant to both the inquiries;[101] the phrase “probative similarity” is often used in reference to the first inquiry, while “illicit similarity” is used for the second.

Courts in the 1900s maintained the distinction between the copying-in-fact and misappropriation inquiries. A “substantial similarity” test was used for the copying-in-fact inquiry to determine whether the degree of similarity between the defendant’s and the plaintiff’s work was substantial to the point of being probative of actual copying. [102] The focus was solely on whether the defendant had copied “the labors of the original author.”[103] As such, before comparing the two works for similarities, the court filtered out unprotected elements from the plaintiff’s work, including those that were “well known and in common use.”[104]

In determining misappropriation—that is, whether the defendant copied enough of the plaintiff’s work to be held liable—courts looked to the economic or aesthetic value of what the defendant copied: if the portions extracted “embody the spirit and the force of the work…they take from it that in which its chief value consists.”[105] In this context, courts often used the adjective “substantial” to refer to the qualitative value of what was copied.[106]

As precedent evolved, courts began to combine the structure of these two prongs. As a result, courts have often confused the economic purpose of the misappropriation prong: finding infringement based solely on quantitative similarity without taking account of the unprotected elements in the original work. The analysis of the two major copyright tests below outlines how this confusion arose and focuses on the problems the misappropriation prong are causing for copyright.

1. Second Circuit Copying/Unlawful Appropriation Test

In Arnstein v. Porter,[107] the litigious Ira B. Arnstein sued the American songwriter and composer Cole Porter, alleging that many of Porter’s songs infringed the copyrights of songs written by Arnstein.[108] The Second Circuit conducted an influential bifurcated test,[109] which requires a plaintiff to prove (1) copying-in-fact and (2) illicit copying (unlawful appropriation) to establish infringement.[110]

i. Copying-in-Fact

The first prong of the Arnstein test is satisfied with the showing of (a) access; and (b) sufficient similarity, which is “probative” of copying: “The stronger the proof of similarity, the less the proof of access that is required.”[111] Thus, if similarities are so “striking” so as to “preclude the possibility that plaintiff and defendant independently arrived at the same result,” evidence of access may not be necessary.[112] Of course, the converse is not true because “access without similarity cannot create an inference of copying.” [113]

To evaluate the likelihood of copying versus independent creation, expert testimony and “analytic dissection”[114] are admissible.[115] However, the two works are to be compared in their entirety, including both protectable and non-protectable material.[116]

ii. Unlawful Appropriation

Only if the threshold issue of copying-in-fact is shown does the court move to the question of misappropriation.[117] Having established copying-in-fact, the issue of unlawful appropriation is a question of fact. Therefore, the fact finder must determine whether the taking went so far as to constitute infringement under the “substantial similarity” test.[118] That is, would the ordinary observer, unless he set out to detect the disparities, be disposed to overlook them and regard the aesthetic appeal of the two works as the same?[119] The second part of the Arnstein test is “related to the nineteenth century concern with the value of what the defendant had copied” as it asks whether the similarity “relates to material of substance and value in plaintiff’s work.”[120] However, the Arnstein test departs in some ways from earlier definitions of infringement by looking to the reaction of the “ordinary observer.”[121]

In determining misappropriation, the Arnstein test looks to “the response of the ordinary lay hearer.” That is, rather than making a purely subjective determination, the trier of fact is meant to determine the issue “in light of the impressions reasonably expected to be made upon the hypothetical ordinary observer.”[122] Because the court reasoned that the value of the work lay solely in the opinion of its intended audience, it held that expert testimony on the “impression made on the refined ears of musical experts” was “utterly immaterial.”[123] While seeming to realize the difficulty in discovering the views of the imaginary “ordinary observer,”[124] the court stated that expert testimony was permitted for the limited purpose of “assist[ing] in determining the reactions of lay auditors.”[125]

Moreover, because the court determined that the value of the works lay in their final form as impressed upon the ordinary observer, it instructed that detailed analysis and careful dissection were inappropriate.[126] Therefore, according to Arnstein, works were to be considered in their entirety, again including both protectable and non-protectable material.[127] The trier was left to depend on “some visceral reaction” as the basis for determining misappropriation.[128]

If the case involves “comprehensive non-literal similarity”[129] – that is, similarity in the overall structure of the works – the trier must make a value judgment of “whether defendant took from plaintiff’s works so much of what is pleasing to the ears of lay listeners, who comprise the audience for whom such popular music is composed, that defendant wrongfully appropriated something which belongs to the plaintiff.”[130] In a case of “fragmented literal similarity,” or verbatim copying of constituent elements, an analogous value judgment must be made, but here only with respect to the protectable portions of plaintiff’s work that have been taken.[131] Dissimilarities between materials alleged to be infringing are “significant because they mitigate any impression of similarity.”[132] Dissimilarities in other aspects of the defendant’s work, except to the extent they create an overall different impression, “typically are not significant.”[133] As Judge Learned Hand said, “no plagiarist can excuse his wrong by showing how much work he did not pirate.”[134] Thus, if the defendant copies from the plaintiff’s work, it does not matter if he adds significant material of his own,[135] resulting in what might be a transformative new work.

Consequently, under Arnstein, “[i]nstead of using some objective standards or criteria based on economic impact or quantity, courts [are] to determine infringement on an unpredictable, impressionistic basis.”[136]

iii. Further Developments and Confusions of the Arnstein Test

Although the Second Circuit in Arnstein conducted two separate inquiries into the level of similarity between the two works,[137] namely to establish copying-in-fact and then to determine misappropriation, confusion ensued from the dual use of the term “substantial similarity.” As a result of this confusion, in Ideal Toy Corp. v. Fab-Lu Ltd,[138] the Second Circuit essentially combined the issues into one subjective test. By misinterpreting the element of misappropriation identified in Arnstein as “merely an alternative way of formulating the issue of substantial similarity” rather than as an independent step, the Second Circuit stated that copyright infringement is shown solely by “substantial similarity” between the two works based on the reaction of the ordinary observer.[139] The court effectively reduced the test for prima facie copyright infringement to (1) access, and (2) misappropriation, thereby failing to consider copying-in-fact.[140] Therefore, the court rejected dissection, analysis, and expert testimony entirely and did not think it necessary to analyze the similarities between the works to determine the likelihood of independent creation.[141] By basing the entire copyright infringement inquiry on the subjective impression of those untrained in the arts, the court neglected to protect against a finding of infringement based on purely unprotectable and unoriginal elements. The Ideal Toy test fails to deal with the fundamental principle of copyright law that seeks to protect merely the expression of ideas rather than ideas themselves.[142] Unfortunately, Ideal Toy’s interpretation of the Arnstein test largely influenced the way modern courts use “substantial similarity” in determining infringement.[143]

Luckily, some courts have maintained the Arnstein two-part inquiry. In Universal Athletic Sales Co. v. Salkeld,[144] the Third Circuit restored Arnstein’s bifurcated approach in holding that a plaintiff must prove copying and “that copying went so far as to constitute improper appropriation.”[145] Moreover, the court recognized that “substantial similarity to show that the original work has been copied is not the same as substantial similarity to prove infringement.”[146]

More inherently problematic is the fact that the Salkeld court maintained Arnstein’s limits on expert analysis and dissection in determining misappropriation.[147] As a result, the Salkeldtest likewise fails to provide any objective standards or criteria for determining how much similarity is necessary to constitute misappropriation.[148]

Though courts instruct the fact finder to find misappropriation only if the defendant’s work copies not merely the idea, but ‘the expression of the idea,’ this “vague formula” is a reformulation, not a solution, to the problem of determining “what sort of similarity short of the verbatim will constitute substantial similarity.”[149] Thus, the ordinary observer continues to be left with “the impossible task of comparing only protected expression in determining substantial similarity without engaging in any thoughtful dissection or analysis of the works.”[150]

2. Ninth Circuit: “Total Concept and Feel”

The Ninth Circuit’s framework, laid out in Sid & Marty Krofft Television Prods., Inc. v. McDonald’s Corp,[151] represents the second main approach to determining copyright infringement. Although not a music infringement case, the “extrinsic/intrinsic” test developed by the Krofft court has been influential in many copyright disputes, including those involving music.[152] In recognizing that the ordinary observer is unlikely to be able to separate idea from expression in comparing two works without dissection or analysis, the Ninth Circuit proposed its own two-step test that attempts to ensure that there is “substantial similarity not only of the general ideas but of the expressions of those ideas as well.”[153] Though the test was later reformulated to include specific expressive elements during the extrinsic inquiry, as discussed in in Part I.ii.c., understanding the original formulation is key to examining its foundational flaws.

i. Extrinsic Test

The first step, or the “extrinsic” analysis, as originally cast by the Krofft court, was an objective comparison by the court for similarity in ideas.[154] Only if a substantial similarity of objective criteria under the “extrinsic” test is found do courts consider misappropriation under the “intrinsic” analysis.[155] Thus, the extrinsic test aims to limit protection to protectable elements by first filtering out unprotectable elements, including ideas, facts, and scènes à faire, and then determining whether the allegedly infringing work is “substantially similar to the protectable elements of the artist’s work.”[156]

According to the Ninth Circuit, in filtering out unprotected elements the extrinsic test incorporates the idea-expression dichotomy by limiting the scope of copyright protection to expression. As the court stated:

By creating a discrete set of standards for determining the objective similarity of literary works, the law of this circuit has implicitly recognized the distinction between situations in which idea and expression merge in representational objects and those in which the idea is distinct from the written expression of a concept….[157]

Courts conducting the extrinsic test “must take care to inquire only whether the protectable elements, standing alone, are substantially similar.”[158] Therefore, analytic dissection and expert testimony presented by the plaintiff on the similarities between the plaintiff’s work and defendant’s work are recommended.[159]

In performing the analytic dissection, courts are instructed to list and analyze the “measurable, objective elements” of the works,[160] including “the type of artwork involved, materials used, and the subject matter.”[161] For literary works, courts have listed such elements as “plot, theme, dialogue, mood, setting, pace, characters, and sequence of events.”[162] Because these factors do not readily apply to visual works of art, the court looks to the “objective details of the appearance.”[163] Without attempting to provide an exhaustive list of relevant factors, the court in Ninth Circuit listed such elements as “the subject matter, shapes, colors, materials, and arrangement of the representations.”[164]

Though described as a factual question, because it bases the question on objective criteria rather than the response of the trier, the extrinsic test may often be decided as a matter of law.[165]

ii. Intrinsic Test

Much like the Second Circuit’s ordinary observer test, the intrinsic test is entirely subjective and based on the “response of the ordinary reasonable person” to the “total concept and feel” of a work,[166] excluding expert testimony and dissection. Similar to the Arnstein court’s language of “lay [persons], who comprise the audience,”[167] the Krofft court suggested that the fact finder’s reaction be geared towards that of the intended or likely audience.[168] In a suit involving the characters in a children’s television show, the court stated, “The present case demands an even more intrinsic determination because both plaintiffs’ and defendants’ works are directed to an audience of children.”[169] Therefore, the court limited the inquiry to the understanding of a child and found substantial similarity despite noted differences. Without expert testimony to aid the trier in determining whether children might detect distinctions, the court relied on the triers’ subjective belief that children would be unlikely to notice minor distinctions.[170]

iii. Further Developments and Confusions of the Krofft Test

In Shaw v. Lindheim,[171] the Ninth Circuit modified the extrinsic/intrinsic test in recognition of the fact that district courts were not limiting the extrinsic test to a comparison of ideas.[172] Recognizing that the similarity of ideas prong is often shown by “focusing on the similarities in the objective details of the works,”[173] the Shaw court explained that the extrinsic/intrinsic test is no longer divided by an analysis of ideas and expression.[174] Rather, the extrinsic test is an objective analysis of specific “manifestations of expression,” while the intrinsic test is a subjective analysis of expression by the fact finder, which is no more than the lay observer’s visceral reaction which is “virtually devoid of analysis.”[175] Though the Shaw court recognized that the test was “more sensibly described as objective and subjective”[176] courts have confusingly continued to use the extrinsic/intrinsic language. Moreover, subsequent cases have left the analysis of improper appropriation to the jury analyzing the works as a whole.

In Swirsky v. Carey,[177] the Ninth Circuit applied the extrinsic/intrinsic test to a case involving musical works. Swirsky and his co-writer filed a copyright infringement suit claiming that Mariah Carey’s song “Thank God I Found You” plagiarized their song “One of Those Love Songs.”[178] The court rejected the district court’s approach to the extrinsic test, which involved a “measure-by-measure comparison of melodic note sequences.”[179] The Ninth Circuit felt comparing notes would fail to consider other relevant elements such as “harmonic chord progression, tempo, and key” as “it is these elements that determine what notes and pitches are heard in a song and at what point in the song they are found.”[180] precisely which elements the court should consider, explaining in dicta that the copyright framework is difficult to apply to aesthetic works such as music which are “not capable of ready classification into . . . constituent elements” the way literary work can be classified into “plot, themes, mood, setting, pace, characters, and sequence of events.”[181]

The Ninth Circuit’s opinion in Swirsky is also relevant for its proposition that substantial similarity can be found based on a combination of elements, “even if those elements are individually unprotected.”[182] For example, in Three Boys Music Corp. v. Bolton,[183] the Ninth Circuit upheld the jury’s finding that two songs were substantially similar due to the presence of the same five individually unprotectable elements: “(1) the title hook phrase (including the lyric, rhythm, and pitch); (2) the shifted cadence; (3) the instrumental figures; (4) the verse/chorus relationship; and (5) the fade ending.”[184] Even though courts filter out unprotected elements such as expression that are commonplace within a genre, they reconsider these elements in examining whether there is a unique combination of elements.[185] However, the protection granted to a unique combination of elements is “thin,” applying only to the combination itself, not the individual elements, and protecting only against “virtually identical” copying.[186]

II. The Roots, Flaws, and Legacy of Arnstein

Though Arnstein remains the majority approach to analyzing copyright infringement,[187] the opinion has attracted much criticism. This part will begin by detailing the flaws of Arnstein, and its progeny, including Krofft. Arguing that Arnstein lacks objectivity by relying on the “impression” of the lay observer and limiting the use of expert testimony,[188] this section will consider courts’ classification of misappropriation as a subjective factual question for the jury, rather than as a legal question with its own standard. This part will argue that the treatment of the “aesthetic arts” as incapable of technical analysis is the root of its subjective treatment of misappropriation. Finally, this part will argue that in relying on the general public, untrained in artistic assessment, the courts risk finding infringement based on similarities that are attributable to common sources.[189]

A. Problems with Arnstein and the Ordinary Observer

Without detailed analysis, filtering out unprotectable ideas, or guidance from experts on the artistic merits of the works at issue, little assurance remains that jurors will decide the issue of misappropriation in keeping with the law. This section will explore why relying on the reaction of laymen is problematic in the context of copyright law. While jury instructions attempt to solve the problem, this part will examine why such abstract guidance is often more confusing than helpful, as judges themselves seem baffled by the blurry line of where an idea ends and its expression begins.

While the ordinary observer test attempts to utilize the “reasonable person” standard found in other areas of the law, its application to copyright is not analogous. In areas such as tort law, the trier is capable of placing himself in the defendant’s shoes to assess the defendant’s actions.[190] In copyright, because the trier often lacks the defendant’s artistic background, the trier cannot reasonably put himself in the defendant’s shoes to consider whether he would have been constrained to copy from the plaintiff in order to achieve the given result.[191] Consequently, the trier is asked to assess the defendant’s actions as if he is an “average lay observer” reacting to whether the defendant’s work appears to have been copied from the plaintiff’s work.[192] Yet copyright is meant to protect artists from the theft of the fruits of their labor, not from the “impression” of theft.[193] While the “spontaneous and immediate” impression of theft is “important evidence,” it cannot be the end-all-be-all test.[194] Given the complexities of copyright law,[195] the ordinary observer simply is not capable of accurately detecting very real appropriation.[196]

While the ordinary observer test has logical value in protecting the artist’s interest in the potential fruits of his labor by looking to the response of the specific market from which those fruits would derive,[197] its methodology for making that determination is lacking. One problem is that it is not clear the trier has knowledge of what constitutes the “lay listener’s” response,[198] especially considering the multitude of possible reactions even among a “target” audience.[199] While expert testimony is permitted to inform the fact finder on the views of the target audience, it is questionable whether qualifying as a music expert establishes “an expertise in the aural perceptions of a lay hearer.”[200] Put another way, “whether an expert, highly educated in the field of music theory, analysis, and history, can in fact hear again as a lay listener is speculative at best.”[201]

Prohibiting expert dissection and analysis on the ultimate issue of misappropriation deprives the trier of information that may be helpful in hearing the music through the ears of the “audience for whom such popular music is composed.”[202] As Professor Nimmer pondered:

If what is to be protected is literary theft, and not the impression of literary theft per se, why, we may wonder, must the view be “uncritical,” and why must there be no suggestion and pointing to similarity, if that suggestion would prove helpful to the trier in seeing that all or a part of plaintiff’s work formed the basis for all or a part of defendant’s work?[203]

Experts could note similarities dictated by the particular type of work at issue that are “most likely insignificant to the ears of the targeted audience familiar with that form or type of work,”[204] thereby helping to ensure that infringement is not found based on common sources or coincidence,[205] and conversely, ensuring that very real appropriation does not go undetected.[206] As Justice Clark, dissenting in Arnstein, noted, the jury is not “‘pre-eminently fitted to decide questions of musical values,’ which are different from an ordinary fact-finding exercise.”[207]

Perhaps the outcome in Arnstein, and thus the bases of our modern law, can be explained by the views of Justice Frank, who wrote for the majority. Frank believed that some judicial decisional processes “like the artistic process, involve[d] feelings that words cannot ensnare” since they contain “overtones inexpressible in words.”[208] For Frank, music was the prime example “of a hunch that was intrinsically incapable of disaggregation.”[209] He wrote, “a melody does not result from the summation of its parts; thus to analyze a melody is to destroy it. It is a basic, primary unit.”[210] Similar language is found in opinions today, including the Ninth Circuit case Swirsky cited earlier.

Attempting to break down what was underlying Frank’s opinion, one commentator argued that the Arnstein court’s exclusion of expert testimony and dissection seemed rooted in the court’s fact-skepticism and unwillingness to entrust the explanation of similarities to experts, preferring instead a “subjective determination,” perhaps in the hopes that a lay-jury trial would confirm the judge’s own subjective hunches.[211]

While courts typically rely on lay jurors to apply the law to the facts of a case at hand,[212] it seems naïve to believe jurors are capable of understanding the complexities of copyright law, particularly the ever elusive idea-expression distinction.[213] Federal judges themselves have found the doctrine difficult to apply,[214] and for good reason as “precision in marking the boundary between the unprotected idea and the protected expression . . . is rarely possible.”[215] Determining what is an “idea” versus an “expression” requires more than mere application of the law; it requires interpretation of the law and consideration of policy. Even with a basic understanding of copyright law, applying the doctrine to music is still more difficult. “What of a song’s music is ‘idea’ and what is ‘expression’?”[216]

While jury instructions attempt to inform jurors of the law,[217] in practice instructions are often an inconsistent, “confusing welter of legal jargon” that may wrongly suggest that any copying, including copying of an idea, counts as infringement.[218] Moreover, clarity in keeping the two different “substantial similarity” inquiries distinct, both in purpose[219] and procedure, is often lacking. Because both the Arnstein and Krofft tests forbid expert testimony on the ultimate issue of misappropriation, fact finders will often have to consider expert analysis and dissection on alleged similarities during the copying-in-fact or extrinsic inquiries, but somehow disregard such testimony on the misappropriation or intrinsic inquiry.[220] “Especially in complex cases, [it is] doubt[ful] that the ‘forgetting’ can be effective when the expert testimony is essential to even the most fundamental understanding of the objects in question.”[221] Moreover, courts often fail to clearly explain the two-step inquiry and the need to disregard testimony presented on the first issue in determining the second.

For example, consider a well-known music plagiarism case, Selle v. Gibb,[222] where the plaintiff, a part-time musician and composer, sued the Bee Gees, alleging that the Bee Gees’ “How Deep is Your Love” infringed the copyright of his song, “Let It End.”[223] Without evidence of access, Selle sought to establish copying-in-fact by showing substantial similarity between the two songs, relying heavily on expert testimony.[224] Yet in making the misappropriation determination, the jury was neither instructed to disregard the expert’s testimony on substantial similarity, nor informed of the two distinct steps of the Arnstein test.[225] Instead, the jury instructions combined the copying-in-fact and misappropriation steps, explaining that “[t]o prove substantial similarity plaintiff must establish…that the average person would recognize [defendant’s song] as having been appropriated from parts of [plaintiff’s song].”[226]

Consider also the jury instructions in the recent “Blurred Lines” trial. Judge Kronstadt’s first instruction to the jury on the copyright infringement standard said that any copying of original elements is unlawful:

Anyone who copies original elements of a copyrighted work during the term of the copyright without the owner’s permission infringes the copyright….[If] 1. the Gaye Parties are the owner of a valid copyright; and 2. the Thicke Parties copied original elements from the copyright work….your verdict should be for the Gaye Parties.[227]

According to this instruction alone,[228] whether the copied element is an unprotectable idea is irrelevant. In attempting to explain the extrinsic/intrinsic analysis, Kronstadt further suggested that copying an idea can count as infringement. Kronstadt instructed the jury to consider similarities in ideas, as well as expression, on the extrinsic test, but he failed to tell the jurors to disregard any similarity in ideas when considering the “concept and feel” during the misappropriation inquiry.[229] Following this questionable guidance seems to be the exact mistake the jury made in finding that Robin Thicke and Pharrell Williams infringed the copyright in Marvin Gaye’s song “Got to Give it Up” by creating their stylistically similar song, “Blurred Lines.”[230]

Fundamentally, the problem with the audience test is that by wholeheartedly relying on the lay juror, the test erroneously treats the question of misappropriation as a pure question of fact. Infringement is far less intuitive, and more complex, than ordinary negligence. Just as the testimony of medical experts is necessary in negligence cases in the context of medical malpractice, copyright is dependent on a technical analysis of works which jurors know little about. Determinations of infringement necessarily involve ad hoc line-drawing that affects artistic incentives and the public’s access to art works. While it is possible to limit and tailor the test, as it stands, it has been disappointingly inaccurate and has been often used as a “verbal formula to explain results otherwise reached.”[231]

B. Krofft: Reconciling Arnstein and the Idea-Expression Dichotomy?

While the court in Krofft seemed to recognize the problems with the Arnstein test in its failure to ensure copyright infringement was only found on a similarity of expression, the Ninth Circuit neglected to explain how its own test would resolve any of the problems presented by the Second Circuit approach.[232] In laying out vague criteria for defining ideas versus expression, the Ninth Circuit left lower courts and artists to their own devices in figuring out where to draw the line.[233] The court itself noted that the extrinsic test is “turbid waters.” “Nevertheless,” it continued, “the test is our law and we must apply it.”[234] Applying the test to artistic works is even more problematic. As the court said in Swirsky, “the extrinsic test provides an awkward framework to apply to copyrighted works like music or art objects, which lack distinct elements of idea and expression.”[235]

By failing to state whether a lack of substantial similarity in ideas is relevant for copying or misappropriation, or both,[236] the extrinsic/intrinsic test fails to isolate the issue of copying from the issue of misappropriation. Focusing on the idea-expression distinction improperly frames the question. Similarity of ideas found during the extrinsic inquiry may be probative of copying, but such similarity does not prove copying of protected expression. Furthermore, the Ninth Circuit never made clear how the ordinary observer could determine if there is a similarity of expression while refraining from dissection and analysis. If anything, fact finders in the Ninth Circuit are left with less expert guidance than in the Second Circuit, as the Second Circuit at least allowed testimony to inform the trier of the intended audience’s likely views rather than leaving them guessing.

As in other jurisdictions using the term, courts applying Krofft struggle to define “substantial.” The focus ranges from audience confusion,[237] to the substantiality relative to the overall work,[238] to the aesthetic or financial value of the portion of the work copied.[239] In the Krofft decision itself, because the works at issue were directed at children, the court focused on the impact of the “total concept and feel” of the works “upon the minds and imaginations of young people.”[240] Thus, some courts adopting the extrinsic/intrinsic framework utilize an “intended audience” test for works that appeal to an audience with “specialized expertise,”[241] therefore allowing the use of expert testimony. Yet such works have been narrowly construed and usually only include computer software.[242] Most courts applying the Ninth Circuit test determine the likelihood of audience confusion by simply comparing the “total concept and feel” of the works to the ordinary observer as determined by jurors with no specialized training or expertise.[243]

Courts that look to the value of the elements at issue criticize the “total concept and feel” approach for failing to maintain the idea-expression distinction during the misappropriation analysis. As the Ninth Circuit stated in Cooling Systems & Flexibles, Inc. v. Stuart Radiator,[244] “What is important is not whether there is substantial similarity in the total concept and feel of the works . . . but whether the . . . amount of protectable expression in Cooling Systems’ catalog is substantially similar to the equivalent portions of [the defendant’s] catalog.”[245] The court in Cooling Systems stated that the intrinsic test must take into consideration the nature of the elements that were allegedly infringed,[246] reasoning that “the fewer the methods of expressing an idea, the more the allegedly infringing work must resemble the copyrighted work in order to establish substantial similarity. . . .”[247] Yet the court continued to prohibit the aid of dissection, analysis, and expert testimony, failing to explain how an ordinary observer lacking expertise could make such a determination.[248]

C. The Modern Music Dilemma

While creators of musical works have struggled to extend copyright beyond its natural borders since the Statute of Anne was enacted, the inexact fit of music in our copyright doctrine has only become more obvious with the invention and popularity of sampling technology. Since the advent of digital sampling technology in the 1960s, the art of taking a portion, or sample, of a sound recording and repurposing it to make a different song has become engrained in nearly every popular musical genre.[249] Yet, after the industry-shattering decisions in Grand Upright Music, Ltd. v. Warner Brothers Records Inc.,[250] and Bridgeport Music, Inc. v. Dimension Films,[251] which resulted in a bright-line rule against de minimis copying of even three notes of a sound recording,[252] artists need to seek licensing rights to sample a sound recording. However, the costs to do so are often prohibitive, both in terms of negotiating fees and contacting often-elusive copyright owners.[253] Consequently, many artists have turned to re-creating segments of prior musical compositions for use in their own works, a practice known, at least in the hip-hop industry, as “interpolation.”[254] Though creative borrowing of this type is deeply embedded in art history, after the Blurred Lines verdict it seems songs that interpolate prior works are also at risk of extinction.

While we may be lacking strong evidence that copyright actually encourages creativity,[255] copyright can suppress the creation of works of a specific nature.[256] After Grand Upright put “the fear of God” in recording companies, artists releasing a record on a major label were forced to clear every sample used.[257] As a result, songs composed of various samples from multiple sources were no longer possible. Records like Paul’s Boutique by the Beastie Boys, which is almost entirely composed of 104 samples, would be “financially and bureaucratically impossible” today.[258] Each sample would have to be cleared by obtaining two different licenses from two different rights holders: the owner of the sound recording and the owner of the underlying composition. To make matters more complicated, additional licenses are needed if the sampled song contains samples itself, as is increasingly the case today.

While artists can obtain a compulsory license to create a cover of a prior song, using only a portion of a song while substantially altering “the melody or fundamental character of a work” falls outside of the range of the statutory license,[259] even though doing so entails more originality and less substantial similarity.[260] Newcomers are back in the position of having to seek permission and pay whatever rights holders demand,[261] or face the risk of hefty legal judgments and court costs.

For well-known songs, the costs to license are often as high as 100% of the royalties generated by the new song, and sometimes higher. Mark Ronson, a music producer and sampling guru, analogizes the process of creating his debut album, Here Comes the Fuzz, to the process of producing the fictional musical in the play, The Producers. In creating the track, “Ooh Wee,” Ronson wanted to sample two different songs by two different artists: a drum sample from Dennis Coffey’s song “Scorpio,” and a string sample from a cover of Boney M’s song “Sunny.” Collectively, the owners of the rights wanted 125% of the song’s royalties. Believing the samples to be necessary to the “emotional effect” and “toughness of the beat,” Ronson said he had to do it: “I had to pro-rate my entire album down so I could rob this song to pay that guy….”[262] In hindsight, the decision may have made his career, as the song ended up being the lead single and a chart-topper.[263]

Rights holders can always refuse clearance entirely, as they often do. When musician and producer Danger Mouse put out The Grey Album, which splices together samples from The White Album[264] by the Beatles with an a cappella version of The Black Album by rapper Jay-Z, the recording company that holds the Beatles’ copyright was able to prevent the album’s distribution, despite approval from both Jay-Z and the surviving members of the Beatles.[265]

Since Grand Upright, it has become largely impossible to create songs using more than one or two samples. As a result, industry practice and the sound of hip-hop music abruptly changed. Artists turned to heavily interpolating a few samples per song, particularly from artists who are amenable to having their music sampled. Dr. Dre’s production style, which was highly influential in spawning an entire era in hip-hop, changed from outright sampling to heavily interpolating the 1970s funk band, Parliament.[266] Dre’s style changed hip-hop forever, as G-funk, defined by Parliament’s influence, became the most popular genre in hip-hop during the 1990s.[267]

While some artists are still producing heavily-sampled albums, it seems only those with the most obvious fair use defense are confident enough to do so without a license, perhaps recognizing the strength of their defense and realizing record companies would rather not risk setting bad precedent.[268] The D.J. Gregg Gillis, better known as Girl Talk, is perhaps the most notorious sampler; he uses hundreds of small samples on a single album, never licenses anything, generates tons of publicity, and is never sued. As Gillis put it, with so many samples, “[i]t would take you hundreds of hours of work and hundreds of thousands of dollars to clear the rights to this album even if you wanted to.”[269] Yet, Girl Talk’s business is not without harm. Both iTunes and a CD distributer refused to carry his most recent album, Night Ripper, because of legal concerns.[270]

While Girl Talk might feel confident in his defense, anyone using a sample in a more qualitatively and quantitatively significant way is likely to fear settlement fees, or worse, high statutory damages. Even with a seemingly good defense, those with less fame than Girl Talk, or Pharrell Williams, are less likely to take the risk. When part of the beauty of digital sampling technology lies in its removal of bars to entry, allowing a twenty-year-old kid to create a critically acclaimed album with cheap technology,[271] cases like Grand Upright and “Blurred Lines” leave the next Dr. Dre on the margins.

Although Dr. Dre’s debut album immortalized Parliament’s style as an entire hip-hop genre in and of itself, and the release of “Blurred Lines” landed “Got to Give it Up” back on the Billboard 200 after a decade’s long hiatus,[272] the courts have ignored the economic reality of homage and have placed it on par with theft. A justified reason for deeming musical borrowing as theft is lacking when artists of all mediums, from classic literature to appropriations art, have borrowed from their predecessors without anyone taking notice, or under the defense of “fair use.”[273] One rationale is that our copyright law is based in the romantic conception of authorship, that is, the notion that the author has the right to control the context of his work and should be able to object to “her work [being] sampled and added into a work she finds repugnant.”[274] However, applying moral rights arguments to the issue does not serve the Intellectual Property Clause’s purpose of striking a balance between economically incentivizing the production of creative works and maintaining public access to those works.[275]

The current tests do not adequately balance the impact of copyright on creativity. Rather, courts focus more on the potential harm to the plaintiff’s market[276] than on assuring “access to the raw materials that artists need to create in the first place.”[277] Progress and culture depend on the accumulation of aesthetic works. By granting property rights in creative building blocks and requiring new works to be wholly different from prior works, the courts are treating the arts like science and technology, where progress means improving. However, progress in the arts is valued for reasons beyond efficiency. Society benefits from the accumulation of artistic works and the mere experience of making them.[278] “Culture . . . is a social phenomenon. It is not the creation of one or another artist, but of many doing somewhat similar things.”[279] The scènes à faire doctrine is one way of protecting free access to artistic materials. But with jurors unable to appreciate the balance of these competing interests, we risk skewing it in a way that stifles creativity.

1. Scènes à Faire in Music: “Blurred Lines” as a Case in Point

Credited as a Billboard’s Song of the Summer for 2013,[280] and the best-selling single of 2013,[281] it is no wonder the controversies over Robin Thicke and Pharrell Williams’s song “Blurred Lines” made so many headlines. The song was controversial from its release date, featuring arguably misogynistic, “rapey” lyrics,[282] and a music video that was removed from, and then censored on, YouTube for violating the site’s policies regarding nudity.[283] Then came the copyright controversy. Marvin Gaye’s family accused Thicke and Williams of copying the “feel” and “sound” of Gaye’s “Got to Give It Up,” [284] the song Thicke even publicly noted as the influence for “Blurred Lines.”[285] Therefore, the issue in the “Blurred Lines” case revolves around whether Thicke and Williams illegally interpolated original elements of Marvin Gaye’s musical composition.

In response to the allegations, Thicke and Williams sought a declaratory judgment that “Blurred Lines” did not infringe upon “Got to Give It Up.”[286] When that failed, and inevitably backfired with the Gaye family filling a cross-complaint, the plaintiffs moved for summary judgment, claiming that the eight alleged similarities between the songs are based on elements of Gaye’s sound recording that are not part of the copyright that Gaye’s family claims to own.[287] According to the Gaye family’s expert report, these eight“substantially similar features” include: (1) the signature phrase; (2) hooks; (3) hooks with backup vocals; (4) the core theme in “Blurred Lines” and the backup hook in “Got to Give It Up”; (5) backup hooks; (6) bass melodies; (7) keyboard parts; and (8) unusual percussion choices.[288] The family’s expert also alleged that the songs share similar “departures from convention such as the unusual cowbell instrumentation, omission of guitar and use of male falsetto.”[289]

Though most of these elements are not part of the underlying composition, and the melodies of the two songs are arguably completely different (“one’s minor and one’s major. And not even in the same key”[290]), the court found that the Gaye family made a sufficient showing of substantial similarity to satisfy the extrinsic test and the issue went to trial.[291] The jury found against Thicke and Williams with a judgment topping $7.3 million, one of the largest ever in music copyright history.[292] While Thicke’s and Williams’s fortune and fame seem unlikely to be tarnished, with each of them earning over $5 million for the song itself, [293] the verdict shows how misguided results can be under our infringement tests. In misapplying the already confusing Ninth Circuit test for substantial similarity, the court protected musical style and genre under the guise of protecting an original combination of elements. As one composer and producer put it, the court “made it illegal to reference previous material. . . . I’m never going to come up with something so radically different that it doesn’t contain references to something else.”[294] While the creators of “Blurred Lines” have already decided to appeal the verdict,[295] if it is upheld, artists on the margin, who are less willing to take on legal fees and whose work is less in tune with romantic authorship, will be discouraged from “creating any new songs that evoke the feel of the music that inspired them in their youth.” Further, “with the length of copyright we have these days, artists who want to feel confident that their musical influences are in the public domain are going to have to go all the way back to ragtime.”[296]

The verdict reached is procedurally problematic for a few reasons. Under the current Ninth Circuit test, the court erred in allowing the jury to hear excerpts of the sound recordings for “Got to Give It Up” and “Blurred Lines,”[297] which contained elements that are not part of Gaye’s written composition and, therefore, not part of his copyright.[298] Though the background chatter, party noise, and percussion, are common to both songs and contribute to the instinctive feeling that “Blurred Lines” “reminds” us of “Got to Give It Up,” they are totally irrelevant to the issue of substantial similarity.[299] Yet, these elements seemed to sway the jury in reaching its verdict.

Many, if not all, of the elements in “Got to Give It Up” are unoriginal staples in funk music, from the walking down funky bass line to the falsetto and melisma hook,[300] but Judge Kronstadt, applying the extrinsic test on summary judgment, held that a genuine issue of material fact existed either on the similarity to protectable elements, or on the similarity to an original combination of elements.[301] To show that the allegedly infringing elements are unprotectable scènes à faire, the defendants’ expert cited multiple prior songs that used many of the same allegedly infringing elements.[302] Judge Kronstadt still ruled that the testimony was not sufficient, citing Swirsky for the idea that the defendants failed to show that the plaintiff’s work is “more similar” to prior works than it is to the defendants’ work.[303] Yet the issue in Swirsky, and here, was whether the individual elements are scènes à faire, not whether the works as a whole are unoriginal.[304] Thus, Kronstadt’s reliance on Swirsky’s “more similar to prior works” language is misplaced, and bypasses actual consideration of the protectability of the elements themselves.[305] The court thereby failed to dispose of the issue of whether the defendants copied original elements on summary judgment, leaving the question to the jury.

In erroneously applying the “more similar” to prior works test to the works as a whole, Kronstadt further failed to consider the actual test for copying a combination of unprotectable elements: whether the works are “virtually identical.” As Pharrell and Thicke argued, the requirement for originality in a combination of unoriginal elements is much more stringent than the usual “some minimal level of creativity.”[306] The elements need to be “numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.”[307] Furthermore, infringement can only be found if the defendant’s work is “virtually identical” to the copyrighted work.[308] While many might say the two songs sound similar, with entirely different melodies and lyrics, one cannot maintain that the songs are “virtually identical,” especially when the misappropriation inquiry is supposed to be based solely on the written melodies, chords, and lyrics.[309] Even still, copying that is virtually identical may fall within the merger doctrine – that is, it may be an unavoidable product of using the same idea, which as discussed above is not a protectable interest.[310]

Because Judge Kronstadt determined that Pharrell and Thicke failed to meet the stifling burden of “more similar” to prior works on summary judgment, the final decision went to the jury to be based on their spontaneous reaction unguided by musicologists and uninstructed by the court on the “virtually identical” standard. Thus, the simple instinct that “Blurred Lines” felt like “Got To Give It Up” determined the verdict, regardless of the law. Yet, if the “feel of a work is sacrosanct,” many songs would be illegal for simply being a part of a “derivative and rigid genre,” as is often the case in music.[311]

When genres and subgenres have been inspired by one song, privatizing common elements can only do harm. Musicians like Marvin Gaye still have the incentive to create, especially with the notoriety and revitalized publicity that comes with a new artist referencing an old song. A reference from today’s stars can make a music legend. Snoop Dogg’s cover of Slick Rick’s 1985 hit “La Di Da Di,” and Notorious B.I.G.’s sample of it in “Hypnotize Me,” made Slick Rick’s song the most sampled rap song of all time. Dr. Dre’s use of the drum-break from The Wintons’ “Amen, Brother” started a narrative that led this little known band to have arguably the most sampled song of all time. The Amen Break has been used in over 1,700 songs and has become the basis for drum-and-bass and jungle music.[312]

Despite the notoriety and financial benefits of being sampled, by looking to our skewed notions of authorship, both judges and juries alike are trigger-happy to find copyright infringement when there is so much as a waft of homage. Their intentions are well wrought in a desire to protect the “genius” of artists loved by generations. However, that desire is based on notions of fairness, and copyright was never meant to protect artists’ moral rights in their works. Incentives to create have always been the only concern, balanced against maintaining public access to creative works. Yet “discussions of copyright and its goals frequently conflate the compensatory and control aspects of copyright on the incentive side.”[313]

If we expand the copyright in an original selection and arrangement to find infringement when any song includes just some of its elements, the blurry standard determining how many elements count as copying will result in risk-averse content creators. When nothing is truly original or avant-garde in music, the safe route in creating content is not clearly laid out either. Even if artists can be completely progressive, it is not clear they will be rewarded for doing so. Popular content is popular for a reason, and the benefits of creating it will be limited to the lucky first comers who hold a monopoly on elements they did not even create simply because they strung them together first. The success of “Blurred Lines” might be due, at least in part, to its ability to incorporate so many nostalgic funk clichés at once, all in the context of a modern pop song. Moreover, the enjoyment derived by the public from having an expanse of options to choose from will be lost. Of course, the effects of prohibiting “inspired works” will touch on industries beyond music, covering the fine arts, dance, and anything covered by copyright.

III. Considering Dissection and Reversed Questions of Law and Fact

When copyright infringement is meant to prohibit the copying of protectable elements of a work, it seems that the audience test, unguided as it is, can “play no useful role” in fulfilling the goals of copyright law.[314] Expert testimony and analytic dissection are necessary to maintain the distinction, both at the copying and misappropriation stages of the inquiry. More specifically, courts should be informed fully of the broader contexts within which specific artistic works are created.

While some courts recognize Arnstein’s limits and allow expert testimony when works are of a “highly technical nature,” thus far only computer software has met this characterization.[315]

The courts’ unwillingness to see “aesthetic arts, such as music, visual works or literature” as sufficiently complex to warrant the aid of expert guidance is merely an artifact of indoctrinated opinions on the nature of aesthetics. Yet with culture becoming ever more aware of its recombinant nature,[316] and the arts becoming increasingly technical in the age of digitalization, it is necessary to alter the current infringement tests in order to encompass varying artistic theories.

Courts need to act as gatekeepers, preventing an onslaught of needless and threatening litigation by deciding whether there is a cognizable claim of misappropriation and identifying the unprotectable elements in a work before sending the intuitive issue of copying to the trier. There have been many scholarly suggestions for reforming the two-part test. This part considers adoption of a proposal first suggested by Nimmer and expanded by Professor Lemley: extending the “abstraction-filtration-comparison” (AFC) test for computer software to all cases deciding copyright infringement.[317]

First adopted by the Second Circuit in Computer Associates v. Altai,[318] the AFC test requires the court to identify which aspects of the program constitute its expression versus ideas (“abstraction”), remove from consideration unprotectable ideas (“filtration”), and only then compare whether the defendant copied the protectable elements (“comparison”).[319]

Following Altai, the AFC test was widely adopted in determining substantial similarity in the non-literal aspects of computer programs. However, as Nimmer notes, “there is no reason to limit it to that realm.”[320] In fact, the AFC method is more consistent with the Supreme Court’s definition of infringement (along with ownership of a valid copyright) as the “copying of constituent elements of the work that are original.”[321] Whether expert testimony is permitted, and to what extent, is left to the discretion of the district court.[322] This approach allows the court flexibility in determining the necessity of expert testimony depending on the complexity and nature of the works at issue. A court might therefore determine that the issue of substantial similarity in a case involving generic pop songs would best be determined by lay jurors, but in most cases where songs mix genres and traditions, the court would need the testimony of experts well versed in the nature of the art at issue.

Given that nearly every circuit already permits expert testimony on both prongs of the copyright infringement test in software cases,[323] adopting the AFC test wholeheartedly seems like a more feasible path to altering the current framework than other suggested reforms.[324] In fact, the Tenth Circuit already applies the AFC test for all copyright infringement cases, and the Sixth Circuit uses a variation of the Tenth Circuit test.[325] As discussed above, expanding the role of analytic dissection and expert testimony will result in better maintenance of the idea-expression distinction and respect for the limits to copyright protection. Moreover, allowing expert testimony in guiding the jury will solve the problem of juries having trouble disregarding the testimony they hear on the copying-in-fact prong in deciding misappropriation.

Professor Lemley suggests a further change: reserving the issue of misappropriation to the court as a question of law, to be determined on summary judgment. The role of the jury would be preserved in leaving the intuitive issue of whether the defendant copied as a question of fact.[326] According to Lemley, this seems to be the “practical import” of the AFC test.[327] Reversing the judge-jury role would better serve the interests of copyright, as the issue of which elements are protectable and unprotectable in any given work implicates substantial policy considerations and interpretation of the law better suited for a judge well-versed in the law.

Moreover, by providing written judicial opinions, this altered framework would allow a reasoned jurisprudence to develop on the issue of which elements are protected. The transparency and predictability of the law would allow artists a safe harbor and guaranteed protections in creating new works, thereby preventing the chilling effects of a potentially devastating lawsuit.

Taking reform a step further, Professor Balganesh suggests reversing the order of the test.[328] That is, have the court determine misappropriation as a question of law on summary judgment, filter out what is sent to the jury, and then have the jury determine the question of copying-in-fact of “protected expression.” The jury would still hear evidence on the issue of “protected expression,” including expert testimony on whether elements are scènes à faire or original in the area or genre, and even on the ultimate issue of similarity between the works and probative similarity. The jury would also hear the judge’s own dissection from the first step.[329] Balganesh argues that reversing the framework would encourage disposition on summary judgment, providing judges with a real gate-keeping role.[330] Moreover, it removes the subjectivity of the audience test, which he argues was based in mere skepticism towards rules, judges, and the law.[331]

While reversing the ordering might offer the benefit of preventing the judge’s determination of misappropriation from improperly influencing the jury’s probative similarity analysis, almost every court has adopted some version of the Arnstein-Krofft test,[332] which might make it difficult to persuade courts to do exactly the opposite.

At least preliminarily, extending the AFC approach seems more feasible and the need for dissection and expert testimony most ripe. Allowing the judge to determine the question of misappropriation as a matter of law, while preserving the issue of copying-in-fact for the jury, removes the inherent subjectivity and messiness of the audience test while complying with the constitutional mandate of jury trials in copyright lawsuits.[333] Furthermore, it uses juries for the role they are best suited for: the intuitive and fact-dependent question of whether the defendant copied.

On both questions, expert testimony can aid the court in understanding the nature of the work at issue. The controversy over sampling, for example, focuses on the taking rather than the contribution. Yet, experts in musicology know that sampling can be transformative. As D.J. Shadow put it, sampling is a way to reintroduce a person’s music to people “in a completely different context than the way they originally intended.”[334] Mark Ronson similarly explained that through sampling artists insert themselves in a narrative and push that narrative forward.[335]

An expert might testify that sampling extends an African American oral tradition known as “signifying,” a type of word play that draws attention to the cultural significance of the words.[336] For example, an expert could explain that the Beastie Boys’ line “I shot a man in Brooklyn just to watch him die” places Johnny Cash’s line “I shot a man in Reno just to watch him die” in a new setting – a hip-hop anthem called “Hello Brooklyn” – thereby removing the ideas of consequences and regret found in the context of Cash’s murder ballad.[337] An expert could note that while sampling might intuitively seem like theft, it is no more so theft than quoting a passage from another book in a novel.[338] Rather, sampling is a form of textual revision and a literary device through which text speaks to text.[339] Through sampling, 2 Live Crew relied on repetition of the key elements of “Oh, Pretty Woman” to achieve a parody of the song.[340]

Our current framework for copyright infringement fails to inform courts of the artistic merits behind our most illustrative and progressive artistic movements. In perpetuating the courts’ biases, copyright is its own worst enemy, stifling innovation where it is most likely to happen: on the margins.

Conclusion

Though the problems with copyright pose unique problems for music, these problems reflect the larger difficulties in our current copyright law. Our infringement doctrine inhibits progress by making “substantial similarity” the end-all-be-all test. The generalized focus on substantial similarity leaves homages and similarities inherent in the genre subject to findings of infringement because the law, like our culture, sees derivative works as unworthy. But what is originality? As music producer and sampling guru Mark Ronson said in an interview with NPR: “Well, what’s the T.S. Eliot quote, which apparently he even stole from Picasso, about ‘Genius steals…?’ ‘Good artists borrow, great artists steal.’”[341] How we define “Progress of Science and useful Arts” is rooted in the dominant cultural beliefs of aesthetic value, but innovation comes with embracing progressive ideas and more of them.[342] The law needs to protect a new kind of originality, one that might not fit the Romantic mold, but that re-conceptualizes and re-frames preexisting works and provides listeners with a different experience than the original. The most important question should be what the newcomer added: how they took influences to make something new, because progress never involves creating something from nothing.



* J.D. Class of 2016, New York University School of Law; B.A. Philosophy, Politics, and Law, magna cum laude, Binghamton University. The author would like to thank Professor Christopher Sprigman for his inspiration and guidance and the 2016-2017 Editorial Board of the NYU Journal of Intellectual Property and Entertainment Law for their encouragement.

[1] See Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903) (“It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits.”).

[2] See generally Alfred C. Yen, Copyright Opinions and Aesthetic Theory, 71 S. Cal. L. Rev. 247, 251, 285–86 (1998) (arguing that “judges necessarily make decisions of aesthetic significance in copyright” as implicit in determining whether elements are “public domain,” or if they are “protected material.” Moreover, substantiality rests on “how sensitive” courts are to the degree of quantitative and qualitative similarity between two works).

[3] Id. at 251 (“[S]ince no aesthetic perspective can be neutral and all-encompassing, aesthetic bias becomes inherent in copyright decisionmaking . . . .”).

[4] See, e.g., Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930); Brandir Int’l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142 (2d Cir. 1987); Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411, 415–18, 420 (2d Cir. 1985).

[5] See Olufunmilayo B. Arewa, From J.C. Bach to Hip Hop: Musical Borrowing, Copyright and Cultural Context, 84 N.C. L. Rev. 547, 565(2006) (“Although originality is not explicitly included in the Intellectual Property Clause of the U.S. Constitution, it is a fundamental assumption of current copyright law that originality is implicitly mandated by the Constitution’s references to ‘authors’ and their ‘writings.’”) (citations omitted); see also U.S. Const. art. I, § 8, cl. 8 (“The Congress shall have Power . . . To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”).

[6] See generally Amy B. Cohen, Masking Copyright Decisionmaking: The Meaninglessness of Substantial Similarity, 20 U.C. Davis L. Rev. 719, 720 (1987).

[7] H.R. Rep. no. 94-1476, at 61-62 (1976); S. Rep. No. 94-473, at 71 (1975) (“[A] copyrighted work would be infringed by reproducing it in whole or in any substantial part, and by duplicating it exactly or by imitation or simulation.”) (emphasis added).

[8] Davis v. Gap, Inc., 246 F.3d 152, 173 (2d Cir. 2001).

[9] Shyamkrishna Balganesh, The Questionable Origins of the Copyright Infringement Analysis, 68 Stan. L. Rev. 791, 805 (Forthcoming 2016).

[10] Atari, Inc. v. N. Am. Phillips Consumer Electric Corp., 672 F.2d 607, 614-15 (7th Cir. 1982).

[11] Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03[a][i] (2002).

[12] Scène à faire is the notion that certain similarities in the basic idea will require similarities in the expressions used to develop that idea. For example, “if two scenarios wish to treat the unprotected idea of police life in the South Bronx, one court has determined it would only be natural to depict ‘drunks, prostitutes, vermin and derelict cars,’ juxtaposed against hard drinking Irish cops chasing fleeing criminals.” Id. (citations omitted).

[13] Mark A. Lemley, Our Bizarre System for Proving Copyright Infringement, 57 J. Copyright Soc’y U.S.A. 719, 738 (2009) (alteration in original).

[14]See infra Part II.A (discussing how this need for, and lack of, special expertise in copyright makes the “ordinary observer” test a poor extension of the rationale underlying the negligence standard used in areas such as tort law).

[15] Balganesh, supra note 9, at 805 (explaining that the misappropriation inquiry requires procedural, substantive, and theoretical considerations).

[16] See generally Arewa, supra note 5 (noting that American copyright law is founded on the unrealistic conception that creativity necessarily comes from a place of pure autonomous genius).

[17] Lemley, supra note 13, at 739 (citing Ann Bartow, Copyrights and Creative Copying, 1 U. Ottawa L. & Tech. J. 77 (2003) (suggesting that this has been the result)).

[18] See generally Jeffrey Cadwell, Expert Testimony, Scenes A Faire, and Tonal Music: A (Not So) New Test for Copyright Infringement, 46 Santa Clara L. Rev. 137 (2005) (arguing functional constraints make music prone to tendencies and commonalities).

[19] See generally Alice Kim, Expert Testimony and Substantial Similarity: Facing the Music in (Music) Copyright Infringement Cases, 19 Colum.-VLA J.L. & Arts 109, 124–125 (Fall 1994/Winter 1995) (arguing that music operates by such complexities and intricacies, especially in today’s technological world as “all pieces of music, contain elements of ‘melody, harmony, . . . rhythm [,] . . . [t]imbre (tonal quality), tone, pitch, tempo, spatial organization, consonance, dissonance, phrasing, accents, note choice, combinations, interplay of instruments, . . . bass lines, and the new technological sounds.’”) (quoting Debra Presti Brent, The Successful Music Copyright Infringement Suit: The Impossible Dream, 7 U. Miami Ent. & Sports L. Rev. 229, 248–49 (1990)).

[20] See id. at 124.

[21] Callie L. Pioli, Copyright: Infringement v. Homage, (September 17, 2015, 8:11 AM), http://www.mbbp.com/news/blurred-lines-copyright (noting that the lesson from the Blurred Lines decision is that “creating music ‘reminiscent’ of an era or paying homage to the genre-creating greats of past decades may not hold as a defense to copyright infringement under the current substantial similarity framework.”).

[22] See Cadwell, supra note 18, at 127 (arguing that an analogy between music and software does not seem inappropriate and thus proposing that the substantial similarity test does not suit the technical nature of music as well as permitting expert testimony would).

[23] See generally Arewa, supra note 5, at 581, 584-85 (arguing that in viewing classical composers as artistic geniuses, failing to appreciate their practice of borrowing from the past, and hip-hop artists as mere craftsmen, legal discourse is perpetuating culturally rooted prejudices against the “other,” as most modern genres originated in African cultures).

[24] Id. at 587(“this vision of musical authorship based upon notions of creativity, invention, originality and even genius is far too restrictive a representation of musical creation.”).

[25] Harold Lloyd Corp. v. Witwer, 65 F.2d 1, 18 (9th Cir. 1933), cert. denied, 296 U.S. 669 (1933).

[26] Eriq Gardner, ‘Blurred Lines’ Jury Orders Robin Thicke and Pharrell Williams to Pay $7.4 Million, Hollywood Rep. (March 10, 2015, 2:33 PM), http://www.hollywoodreporter.com/thr-esq/blurred-lines-jury-orders-robin-779445.2.

[27] This test is currently reserved for computer software cases. See Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 707 (2d Cir. 1992) (“Professor Nimmer suggests, and we endorse, a ‘successive filtering method’ for separating protectable expression from non-protectable material.”).

[28] Cf. id.

[29] Lemley, supra note 13, at 741.

[30] Balganesh, supra note 9, at 855-58.

[31] Arnstein v. Porter, 154 F.2d 464, 478 (2d Cir. 1946) (Clark, J., dissenting) (“Further, my brothers reject as ‘utterly immaterial’ the help of musical experts as to the music itself (as distinguished from what lay auditors may think of it, where, for my part, I should think their competence least), contrary to what I had supposed was universal practice . . . .”).

[32] See generally Robert Kirk Walker & Ben Depoorter, Unavoidable Aesthetic Judgments in Copyright Law: A Community of Practice Standard, 109 Nw. U.L. Rev. 343, 376 (2015) (proposing that experts brief the court on the aesthetic norms and traditions that inform the works at issue so that the hypothetical viewer is not limited to any specific aesthetic theory and can react sensitively to the nature of the work presented).

[33] See Barton Beebe, Intellectual Property Law and the Problem of Aesthetic Progress, Inaugural Lecture of the John M. Desmarais Professorship of Intellectual Property Law, NYU Law News (Feb. 3, 2014), http://www.law.nyu.edu/news/barton-beebe-inaugural-desmarais-lecture.html (discussing the courts’ failure to recognize that the framers intended to quarantine the fine arts from copyright law, as evident in the progress clause specifying “useful arts,” and the resulting lack of a developed idea of what aesthetic expression means); see also Walker & Depoorter, supra note 32, at 344-45 (explaining how courts shy away from judging art for fear that they are “incompetent to do so”) (citing Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903)(“It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits.”)).

[34] Michael W. Carroll, The Struggle for Music Copyright, 57 Fla. L. Rev 907, 934 (2005).

[35] U.S. Const. art. I, § 8, cl. 8 (alteration in original).

[36] See Act of May 31, 1790, ch. 15, 1 Stat. 124.

[37] William F. Patry, Copyright Law and Practice, The Bureau of National Affairs (2000), available at http://digital-law-online.info/patry/patry5.html.

[38] 8 Anne, ch. 19 (1710) (Eng.), http://www.copyrighthistory.com/anne.html.

[39] The first copyright action for a musical work, Bach v. Longman, 98 Eng. Rep. 1274, 1275 (K.B. 1777), was brought under the Statute of Anne by Johann Christian Bach on account of unauthorized editions, published by music publishers Longman & Lukey, of two Bach works, a lesson and a sonata. “Bach brought the suits seeking to effect legal changes to provide composers with copyright protection equal to that of authors.” Arewa, supra note 5, at 557–58.

[40] Arewa, supra note 5, at 568.

[41] Id. at 556.

[42] See 17 U.S.C. § 102(a)(7) (2000) (granting copyright protection to sound recordings).

[43] Paul Théberge, Technology, Creative Practice and Copyright, in Music and Copyright at 140 (Lee Marshall and Simon Frith eds., 2nd ed. 2004).

[44] Arewa, supra note 5, at 556.

[45] Id. at 625.

[46] Id.

[47] Id. at 556-57.

[48] Id. at 557.

[49] Id. at 626 n.445 (citing Aaron Keyt, Comment, An Improved Framework for Music Plagiarism Litigation, 76 Cal. L. Rev. 421, 432 (1988)).

[50] Id. at 614.

[51] See, e.g., LIVELOVEASAPVEVO, A$AP ROCKY – Wild For The Night (Explicit) ft. Skrillex, Birdy Nam Nam, YouTube (Feb. 10, 2016), https://www.youtube.com/watch?v=1eWdbMBYlH4.

[52] Youyoung Lee, OVER IT: It’s Time To Retire The Word “Haters,” The Huffington Post: The Blog (June 25, 2013, 4:50 PM), http://www.huffingtonpost.com/youyoung-lee/over-it-its-time-to-retire-haters_b_3492129.html (citing as an example the song “Players Gon’ Play,” by the all-girl group 3LW).

[53] Michael Epstein, Taylor Swift Is Being Sued for $42 Million for Singing “Haters Gonna Hate” in “Shake it Off,” Flavorwire (Nov. 2, 2015), http://flavorwire.com/545712/taylor-swift-is-being-sued-for-42-million-for-singing-haters-gonna-hate-in-shake-it-off.

[54] See Arewa, supra note 5, at 622.

[55] Carroll, supra note 34, at 949 (citing Charles Burney, A General History of Music (Dover 2d ed. 1957)); see also id. at 952 (arguing that by limiting protection to books, as opposed to single songs, the Statute of Anne was enacted only to protect “those who had advanced the cause of learning by producing books.”).

[56] C33/442 London Public Record Office (1772), reprinted in Ronald J. Rabin & Steven Zohn, Arne, Handel, Walsh, and Music as Intellectual Property: Two Eighteenth-Century Lawsuits, in 120 J. of the Royal Musical Ass’n 112, 140-45 (1995).

[57] Carroll, supra note 34, at 950.

[58] Id. (citing Pyle, C33/442 London Public Record Office, at 143).

[59] Peter Jaszi, Contemporary Copyright and Collective Creativity, in The Construction of Authorship: Textual Appropriation in Law and Literature 29, 40 (Martha Woodmansee & Peter Jaszi eds., 1994) (“Eighteenth-century theorists . . . minimized the element of craftsmanship . . . in favor of the element of inspiration, and they internalized the source of that inspiration. That is, the inspiration for a work came to be regarded as emanating not from outside or above, but from within the writer himself.”).

[60] Amy B. Cohen, Copyright Law and the Myth of Objectivity: The Idea-Expression Dichotomy and the Inevitability of Artistic Value Judgments, 66 Ind. L.J. 175, 203 (1990); see also Arewa, supra note 5, at 566 n.80 (Romantic ideals emphasize “original ideas rather than ‘successive elaborations of an idea or text by a series of creative workers.’”).

[61] Arewa, supra note 5, at 566.

[62] At least music composed in the twelve-tone scale.

[63] Arewa, supra note 5, at 590.

[64] As a consequence, “inspired work was made peculiarly and distinctively the product – and the property – of the writer.” Id. at 566-67 n.82.

[65] Arewa, supra note 5, at 592.

[66] Cohen, supra note 60, at 204.

[67] Id. at 201.

[68] Holmes v. Hurst, 174 U.S. 82, 86 (1899).

[69] See, e.g., White-Smith Music Publ’g Co. v. Apollo Co., 209 U.S. 1, 17 (1908) (holding that a perforated piano roll used to create the sounds of a musical composition did not infringe the copyright in the underlying musical composition because “[a] musical composition is an intellectual creation which first exists in the mind of the composer. . . It is not susceptible of being copied until it has been put in a form which others can see and read. The statute has not provided for the protection of the intellectual conception apart from the thing produced . . . .”).

[70] Holmes, 174 U.S. at 86.

[71] Cohen, supra note 60, at 206.

[72] Holmes, 174 U.S. at 86 (“[C]ertain words . . . are as little susceptible of private appropriation as air or sunlight[.]”); see also Johnson v. Donaldson, 3 F. 22, 24 (S.D.N.Y. 1880) (“A copyright secures the proprietor against the copying, by others, of the original work, but does not confer upon him a monopoly in the intellectual conception which it expresses.”).

[73] Cohen, supra note 60, at 231.

[74] Id.

[75] Id. at 204–206 (“If art was no longer viewed as the formal expression of fundamental, abstract ideas, but rather as the expression of the individual feelings of the particular artist, then the view that copyright should protect only the author’s specific way of expressing the ideas, but not those fundamental, abstract ideas themselves, had lost its philosophical basis.”).

[76] Act of Mar. 4, 1909, ch. 320, § 1(b), (d), (e), 35 Stat. 1175 (providing the copyright owner with the exclusive right to transform the protected work into different formats, including the right to dramatize a nondramatic work, to translate a literary work or “to make any other version thereof,” to perform works publicly, and to "make any arrangement or setting of it or of the melody of it in any system of notation or any form of record in which the thought of an author may be recorded and from which it may be read or reproduced.”).

[77] Cohen, supra note 60, at 206 (citing Benedetto Croce’s view that “the essence of artistic activity is not the production of an external physical object, but an internalized aesthetic synthesis of impressions and sensations.”).

[78] Kalem Co. v. Harper Bros., 222 U.S. 55 (1911).

[79] Id. at 63.

[80] Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930).

[81] Nimmer, supra note 11, at § 13.03[a][i].

[82] See Cohen, supra note 60, at 207.

[83] Id. (citing John Dewey, Art as Experience 8, 49-52, 56, 64-65 (1934)).

[84] Sol LeWitt, Paragraphs on Conceptual Art, Artforum (June 1967), http://radicalart.info/concept/LeWitt/paragraphs.html.

[85] See id.

[86] Take, for example, Andy Warhol’s Brillo Boxes. By reframing the household-cleaning product as art, Warhol instilled in the Brillo box an entirely different meaning. Instead of representing a product or brand identity, Warhol’s Brillo Boxes stood for the Pop Art movement’s challenge to the dominant view of elitist aesthetics, and represented the idea that anything can be art. As philosopher Arthur Danto put it, the Brillo Boxes were the “end of art” as we know it because they marked the point at which art became so conscious of itself that it became apparent that in art “anything goes…that there were no stylistic or philosophical constraints.” Id.

[87] See Cohen, supra note 60, at 232.

[88] Id. at 212; see, e.g., Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930), cert. denied, 282 U.S. 902 (1931) (finding stories of star-crossed lovers too common to be protectable, despite both stories involving a relationship between a Jewish family and an Irish family, a secret marriage between the son and daughter of these two families, a conflict between the two fathers, and an ultimate reconciliation); Steinberg v. Columbia Pictures, 663 F. Supp. 706, 708–09 (S.D.N.Y. 1987) (discussing the plaintiff’s fame and the popularity of his work in finding the defendant’s work infringing); Cohen supra note 60, at 229 (“[A]nother factor that affects a court’s determination of where to draw the line between idea and expression in a given case involving literary works is the relative commercial success of the works at issue and the reputations of their creators.”).

[89] See, e.g., the recent Blurred Lines verdict discussed infraat Part II.C.1.

[90] Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (2d Cir. 1982).

[91] Cohen, supra note 60, at 231.

[92] Cadwell, supra note 18, at 157; see also Arewa, supra note 5, at 556.

[93] Bruce Benward & Marilyn Saker, Music: In Theory and Practice (7th ed., McGraw Hill 2003).

[94] See generally Cadwell, supra note 18, at 155–57.

[95] Id. See generally Carol L. Krumhansl & Lola L. Cuddy, A Theory of Tonal Hierarchies in Music, in Music Perception 51 (M.R. Jones et al. eds., 2003).

[96] Cadwell, supra note 18, at 158.

[97] Id.

[98] See Yen, supra note 2, at 284.

[99] “Striking similarity” is similarity that is “so striking that the possibilities of independent creation, coincidence and prior common source are, as a practical matter, precluded.” Selle v. Gibb, 741 F.2d 896, 897 (7th Cir. 1984).

[100] Cohen, supra note 6, at 724.

[101] Id. at 728.

[102] Id. at 724–27 (comparing the use of phrases such as “substantial identity” or “substantial copy” by the courts to “signify a degree or type of similarity that would be relevant” to proving whether the defendant had in fact used the plaintiff’s work, versus the use of the adjective “substantial” in relation to the economic or aesthetic value of the copyright owner’s work to determine whether the defendant could be liable for copyright infringement.). Cf. Arnstein v. Porter, 154 F.2d 464, 473 (2d Cir. 1946) (inquiring “whether defendant took from plaintiff’s works so much of what is pleasing to the ears of lay listeners, who comprise the audience for whom such popular music is composed, that defendant wrongfully appropriated something which belongs to the plaintiff.”).

[103] Cohen, supra note 6, at 725–26 (“The focus was not principally on how much or what aspects of the plaintiff’s work defendant had borrowed, but on whether defendant had copied the plaintiff’s work rather than doing his own work. The concern was with whether ‘the labors of the original author are substantially to an injurious extent appropriated by another.’”) (quoting Greene v. Bishop, 10 F. Cas. 1128, 1134 (C.C.D. Mass. 1858) (No. 5763)).

[104] Emerson v. Davies, 10 F. Cas. 615, 622 (C.C.D. Mass. 1845) (No. 4436) (noting, in comparing the similarities between tables in two arithmetic textbooks, that “[t]he question is not in what part of one or more pages the matter is found, but whether it is borrowed or pirated from the plaintiff, without any substantial alteration or difference.”). The court went on to state that “[a] copy is one thing, an imitation or resemblance another…. It is very clear that any use of materials…which are well known and in common use, is not the subject of a copy-right, unless there be some new arrangement thereof.” Id.

[105] See Story v. Holocombe, 23 F. Cas. 171, 173 (C.C.D. Ohio 1847) (No. 13497) (stating that infringement “does not depend so much upon the length of the extracts as upon their value.”).

[106] Cohen, supra note 6, at 727 (citing Folsom v. Marsh, 9 F. Cas. 342, 348 (C.D.D. Mass. 1841) (No. 4901) (stating that infringement may exist “if so much is taken, that … the labors of the original author are substantially to an injurious extent appropriated by another”) (emphasis added).

[107] Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946). See also Nimmer, supra note 11, at § 13.03[a][i].

[108] Arnstein, 154 F.2d at 467. See also Cadwell,supra note 18, at 139 n.19.

[109] Cadwell,supra note 18, at 139 n.19.

[110] Eric C. Osterberg & Robert C. Osterberg, Substantial Similarity in Copyright Law § 3.2.1.A (PLI 2015).

[111] Arnstein, 154 F.2d at 468. See also Osterberg, supra note 110, at § 3.1.1; Cohen, supra note 6, at 729 (“Although some dispute still exists as to whether the plaintiff must prove actual access or only opportunity for access, courts generally agree that showing some possibility of access is very much a part of the plaintiff’s case.”).

[112] Arnstein, 154 F.2d at 468.

[113] Nimmer, supra note 11, at § 13.03[a][i].

[114] A piece-by-piece examination of the works’ constituent parts or elements. See Osterberg, supra note 110, at § 3.4.

[115] Cohen, supra note 6, at 731.

[116] Nimmer, supra note 11, at § 13.03[a][i].

[117] Id.

[118] See Castle Rock Entm’t, Inc. v. Carol Pub. Group, Inc., 150 F.3d 132, 137 (2d Cir. 1998). See also Osterberg, supra note 110, at §§ 3-4.

[119] Osterberg, supra note 110, at § 3.1.2 (citing Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960)).

[120] Cohen, supra note 6, at 732.

[121] Id.

[122] Carol Barnhart, Inc. v. Econ. Cover Corp., 773 F.2d 411, 422 (2d Cir. 1985) (Newman, J. dissenting) (emphasis added).

[123] Arnstein v. Porter, 154 F.2d 464, 473 (2d Cir. 1946).

[124] See Yen, supra note 2, at 291 (“[D]ifficulties arise because the ordinary observer is not a real person whose views may be discovered.”).

[125] Arnstein, 154 F.2d at 473.

[126] Id. at 468.

[127] Nimmer, supra note 11, at §13.03[a][i].

[128] Cohen, supra note 6, at 732.

[129] Nimmer, supra note 11, at § 13.03[a][i]. The terms “comprehensive non-literal similarity” and its counterpart, “fragmented literal similarity,” emerge from this treatise but they have gained widespread judicial acceptance.

[130] Id. See also Arnstein, 154 F.2d at 473 (deeming it “an issue of fact which a jury is peculiarly fitted to determine.”).

[131] Nimmer, supra note 11, at § 13.03[a][i].

[132] Eric Osterberg, Copyright Litigation: Analyzing Substantial Similarity, 1, 7 Practical Law Intellectual Property & Technology, available at http://www.osterbergllc.com/wp-content/uploads/2013/09/Practical-Law-Article.pdf.

[133] Id.

[134] Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir. 1936).

[135] Osterberg, supra note 132, at 7.

[136] Nimmer, supra note 11, at §13.03[a][i].

[137] Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946).

[138] See Ideal Toy Corp. v. Fab-Lu Ltd., 266 F. Supp. 755 (S.D.N.Y. 1965), aff’d, 360 F.2d 1021 (2d Cir. 1966).

[139] Id. at 1022 (stating that the plaintiff need only show substantial similarity between the two works, which is present when “an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.”).

[140] See Cohen, supra note 6, at 733.

[141] Id. at 737.

[142] The idea-expression dichotomy is essential to copyright law, as only the expression of ideas is protectable. 17 U.S.C. § 102(b) (1982) (excluding from the subject matter of copyright “any idea, procedure, process, system, method of operation, concept, principle, or discovery.”).

[143] Cohen, supra note 6, at 735 (deeming the court’s test in Ideal Toy the “Traditional Approach”) (citing Novelty Textile Mills v. Joan Fabrics Corp., 558 F.2d 1090, 1093 (2d Cir. 1977). Novelty Textile Mills found infringement because to lay eyes, the fabrics were “almost identical;” however, the court never analyzed the similarities to determine the likelihood of independent creation or the likelihood of copying.

[144] Universal Athletic Sales Co. v. Salkeld, 511 F.2d 904, 907 (3d Cir. 1975), cert. denied, 423 U.S. 863 (1975) (“[S]ubstantial similarity to show that the original work has been copied is not the same as substantial similarity to prove infringement.”).

[145] Cohen, supra note 6, at 747 (citing Salkeld, 511 F.2d at 907).

[146] Id.

[147] Id.

[148] Id. at 737 (“By relying upon the ordinary observer test alone and thus rejecting dissection, analysis, and expert testimony, the courts were deprived of the evidence necessary to analyze properly the likelihood of independent creation.”).

[149] Nimmer, supra note 11, at § 13.03[A][1].

[150] Cohen, supra note 6, at 749; cf. Nimmer, supra note 11, at § 13.03[A][1][a] (“Obviously, no principle can be stated as to when an imitator has gone beyond the ‘idea,’ and has borrowed its ‘expression.’ Decisions must therefore inevitably be ad hoc.”) (citing Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960)).

[151] See generally Sid & Mart Krofft Television Prods., Inc. v. McDonald’s Corp., 562 F.2d 1157 (9th Cir. 1977).

[152] Cadwell, supra note 18, at 150.

[153] See Krofft, 562 F.2d at 1164 (“We believe that the court in Arnstein was alluding to the idea-expression dichotomy which we make explicit today.”); see also Cohen, supra note 6, at 753 (“The Ninth Circuit recognized that the ordinary observer is unlikely to be able to separate idea from expression in comparing two works without dissection or analysis.”).

[154] Krofft, 562 F.2d at 1164.

[155] Id. at 1165 (establishing that the question is whether the defendant took “so much of what is pleasing to the audience” to be held liable).

[156] Osterberg, supra note 110, at § 3-3-3.

[157] Shaw v. Lindheim, 919 F.2d 1353, 1360 (9th Cir. 1990).

[158] Cavalier v. Random House, Inc., 297 F.3d 815, 822 (9th Cir. 2002).

[159] Id.

[160] Shaw, 919 F.2d at 1359.

[161] Cadwell, supra note 18, at 151.

[162] Shaw, 919 F.2d at 1359.

[163] McCulloch v. Albert E. Price, Inc., 823 F.2d 316, 319 (9th Cir. 1987) (noting that a conclusion that two works are “‘confusingly similar in appearance’ is tantamount to finding substantial similarities in the objective details of the [works].”) (citing Litchfield v. Spielberg, 736 F.2d 1352, 1356 (9th Cir. 1984)).

[164] Cavalier, 297 F.3d at 826; see also Smith v. Jackson, 84 F.3d 1213, 1218 (9th Cir. 1996) (applying Shaw‘s rule to musical motifs).

[165] Cavalier, 297 F.3d at 826.

[166] Sid & Mart Krofft Television Prods., Inc. v. McDonald’s Corp., 562 F.2d 1157, 1164 (9th Cir. 1977).

[167] Arnstein v. Porter, 154 F.2d 464, 473 (2d Cir. 1946).

[168] Krofft, 562 F.2d at 1166–67. (“We do not believe that the ordinary reasonable person, let alone a child, viewing these works will even notice that Pufnstuf is wearing a cummerbund while Mayor McCheese is wearing a diplomat’s sash.”) (emphasis added).

[169] Id.

[170] See Julie E. Cohen et al., Copyright in a Global Information Economy, Companion Website, http://coolcopyright.com/contents/chapter-5/sid-marty-krofft-television-productions-v-mcdonalds.

[171] 919 F.2d 1353 (9th Cir. 1990); see also Cavalier v. Random House, Inc., 297 F.3d 815, 822 (9th Cir. 2002).

[172] Shaw, 919 F.2d at 1357 (explaining that they were comparing “every element that may be considered concrete”).

[173] Litchfield v. Spielberg, 736 F.2d 1352, 1356 (9th Cir. 1984).

[174] See Shaw, 919 F.2d at 1357.

[175] Id.

[176] Id.

[177] Swirsky v. Carey, 376 F.3d 841, 844–45 (9th Cir. 2004).

[178] Id. at 843.

[179] Id. at 847.

[180] Id. at 848.

[181] Id. at 849 n.15 (quoting Metcalf v. Bochco, 294 F.3d 1069, 1073 (9th Cir. 2002) (quoting Kouf v. Walt Disney Pictures & Television, 16 F.3d 1042, 1045 (9th Cir. 1994))).

[182] Id. at 848.

[183] Three Boys Music Corp. v. Bolton, 212 F.3d 477 (9th Cir. 2000).

[184] Id. at 485.

[185] Swirsky, 376 F.3d at 850; see also Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 349 (1991) (extending copyright protection to the original selection and arrangement of otherwise uncopyrightable components).

[186] Apple Computer v. Microsoft Corp., 35 F.3d 1436, 1442, 1447 (9th Cir. 1994).

[187] Dawson v. Hinshaw Music Inc., 905 F.2d 731, 733 (4th Cir. 1990) (describing Arnstein as “the source of modern theory”); see also Lemley, supra note 13, at 719.

[188] Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946).

[189] As Professor Nimmer suggests, conversely, it may also cause very real appropriation to go undetected. Nimmer, supra note 11, at § 13.03[E][2].

[190] Id.

[191] Id.

[192] Id.

[193] Id.

[194] Id.

[195] See Balganesh, supra note 9, at 794 (“Copyright’s infringement analysis has been variously described as ‘bizarre,’ ‘mak[ing] no sense,’ ‘viscid,’ and ‘problematic.’”); see also Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1232 (3d Cir. 1986) (noting the doubtful value of the ordinary observer test in cases involving complex subject matter unfamiliar to most members of the public).

[196] Especially when applied to complex works, such as computer software and music and with complicating circumstances of the transformation of a work into a different medium. Nimmer, supra note 11 at § 13.03[E][2].

[197] Id.; cf. Hein v. Harris, 175 F. 875, 876 (C.C.S.D.N.Y. 1910) (explaining that the ultimate inquiry is whether the average person’s ear would find the two melodies substantial similar because the pecuniary value of a composition rests in the public taste).

[198] Michael Der Manuelian, The Role of the Expert in Music Copyright Infringement Cases, 57 Fordham L. Rev. 126, 131 (1988) (describing how the trier must determine, not his own personal reaction to the similarities between the two works, but the reaction of the “average lay hearer.”); see id. at n.145 (citing Copyright Infringement Actions: The Proper Role for Audience Reactions in Determining Substantial Similarity, 54 S. Cal. L. Rev. 385 (1981) (“[Q]uestioning value of lay observer test when copyrighted matter is targeted for a particular, identified audience”)).

[199] Cohen, supra note 6, at 765.

[200] Manuelian, supra note 198, at 133.

[201] Id.

[202] Id. at 146.

[203] Nimmer, supra note 11, at § 13.03 [E][2].

[204] Manuelian, 198, at 146.

[205] Id. at 145.

[206] Nimmer, supra note 11, at § 13.03 [E][2].

[207] Balganesh, supra note 9, at 810 (citing Arnstein v. Porter, 154 F.2d 464, 479 (2d Cir. 1946) (Clark, J. dissenting)).

[208] Id. at 845.

[209] Id.

[210] Id.

[211] Id. at 846.

[212] Id. at 810. This was a practice Justice Clark said he generally promoted, unlike his adversary Justice Frank (citing Judge Frank’s two extrajudicial writings).

[213] Id. at 800; see also Nimmer, supra note 11, at § 13.03 [E][2] (“[T]he idea/expression dichotomy…depends on the level of abstraction at which one defines the “idea” that merges with the subject expression).

[214] Manuelian, supra note 198, at 139.

[215] Id. (citing Franklin Mint Corp. v. National Wildlife Art Exch., Inc., 575 F.2d 62, 65 (3d Cir. 1978)).

[216] Id.

[217] See, e.g., Williams v. Bridgeport Music, 2:13-cv-06004-JAK-AGR (2015), available at http://www.scribd.com/doc/258437531/Blurred-Lines-jury-instructions#scribd (hereinafter, Blurred Lines Jury Instructions).

[218] Wendy Gordon, “How the jury in the ‘Blurred Lines’ case was misled,” THE CONVERSATION (March 17, 2015, 5:47 AM), http://theconversation.com/how-the-jury-in-the-blurred-lines-case-was-misled-38751; see, e.g., Balganesh, supra note 9, at 794 (“[T]he Ninth Circuit chose to "withdraw" its model jury instructions on the analysis recognizing that no amount of abstract guidance could resolve the indelible complexity that the [copyright infringement] analysis routinely engenders.”).

[219] Gordon, supra note 218 (“Instruction 28 makes it looks like ‘substantiality’ only matters for proof of the first criterion – ‘Did they copy?’ But if a juror thinks she already has the answer to that first question – from evidence such as Thicke’s own words to GQ – she might conclude that she doesn’t need to assess ‘substantiality’ as well. (That is, she might ignore the second criterion.) So, again, it could look to a careful juror as if any copying of the Gaye composition brings liability.”).

[220] See Manuelian, supra note 198, at 139.

[221] Id. at 145.

[222] Selle v. Gibb, 741 F.2d. 896 (7th Cir. 1984).

[223] See Manuelian, supra note 198, at 140.

[224] Id. (citing Gibb, 741 F.2d at 901).

[225] Id. at 143, n.137 (“The instructions to the jury do not distinguish the similarities evidencing copying from the substantial similarity from which "the average person would recognize ‘How Deep Is Your Love’ as having been appropriated from parts of ‘Let It End.’”) (citing Gibb, 741 F.2d at 1079).

[226] Id. at 144.

[227] See Gordon, supra note 218 (citing Instruction 27); see also Blurred Lines Jury Instructions, supra note 217 at 28.

[228] Gordon, supra note 218 (alluding to Blurred Lines Jury Instructions at 31, where eventually Instruction No. 30 corrects this mistake, noting the jury “must not consider in your comparison (1) ideas, as distinguished from the expression of those ideas” but stating “[n]onetheless, the distorted message of Instruction 27 echoes throughout.”).

[229] Id.

[230] See Nimmer, supra note 11, at §13.03[A][1].

[231] Id. at §13.03[E][b] (suggesting that the courts discard the audience test entirely and adopt the abstraction-filtration-comparison method used in cases involving infringement of computer programs and factual compilations.).

[232] Cohen, supra note 6, at 757.

[233] Id. at 754-755.

[234] Swirsky v. Carey, 376 F.3d 841, 848 (9th Cir. 2004) (citing Metcalf v. Bochco, 294 F.3d 1069, 1071 (9th Cir. 2002)).

[235] Swirsky, 376 F.3d at 848.

[236] Cohen, supra note 6, at 745 n.81.

[237] Id. at 742.

[238] Id.

[239] Thus, in the music context, taking the “heart” of a song, or the portion that makes the song appealing and valuable, is a substantial taking. See id.; Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (overturning the district court’s finding of infringement where the defendant used the “heart” of the plaintiff’s song under the fair use defense); Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946) (asking “whether defendant took from plaintiff’s works so much of what is pleasing to the ears of lay listeners, who comprise the audience for whom such popular music is composed, that defendant wrongfully appropriated something which belongs to the plaintiff.”); Eisenman Chem. Co. v. NL Indus., 595 F. Supp. 141, 146 (D. Nev. 1984) (holding that the defendant’s manual copied “virtually verbatim” from the plaintiff’s manual and thereby appropriated the plaintiff’s labor and skill to publish a rival work).

[240] Sid & Marty Krofft TV Prods. v. McDonald’s Corp., 562 F.2d 1157, 1166 (9th Cir. 1977).

[241] Nimmer, supra note 11, at § 13.03[E][4].

[242] Id.

[243] Cohen, supra note 6, at 756; see, e.g., Three Boys Music v. Bolton, 212 F.3d 477, 485 (9th Cir. 2000) (upholding the jury’s determination that the defendant’s song has a substantially similar “total concept and feel” to the plaintiff’s song); see also Osterberg, supra note 110, at 3-37.

[244] Cooling Sys. & Flexibles, Inc. v. Stuart Radiator, 777 F.2d 485 (9th Cir. 1985).

[245] Id. at 493.

[246] Cohen, supra note 6, at 756–57.

[247] Cooling Sys., 777 F.2d at 491.

[248] Cohen,supra note 6, at 757.

[249] See, e.g. How Hip-Hop Works, Stuff You Should Know: The Podcast, http://www.stuffyoushouldknow.com/podcasts/hip-hop-works/ (tracing the birth of hip-hop to Jamaica, where DJs began using two turntables at once to play extended doctored versions of popular songs that isolated the percussive breaks, while “toasting” or rapping over the beat).

[250] Grand Upright Music, Ltd. v. Warner Brothers Records Inc., 780 F. Supp. 182 (S.D.N.Y. 1991) (ruling that sampling without permission can qualify as copyright infringement in holding rapper Biz Markie liable for sampling Gilbert O’Sullivan’s song “Alone Again (Naturally)” in his song “Alone Again.”).

[251] Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2005) (holding that the Beastie Boys’ three note sampling of George Clinton’s song “Get Off Your Ass and Jam” infringed the sound recording and creating a bright line rule that de minimis analysis does not apply to sound recordings).

[252] Id. at 801; see generally Mark R. Carter, Applying the Fragmented Literal Similarity Test to Musical-Work and Sound-Recording Infringement: Correcting the Bridgeport Music, Inc. v. Dimension Films Legacy, 14:2 Minn. J. L. Sci. & Tech (2013) (arguing that courts should engage in an analysis of the quantitative and qualitative significance of a sampled sound recording rather than creating a bright line rule); cf. Lesley Grossberg, A Circuit Split at Last: Ninth Circuit Recognizes De Minimis Exception to Copyright Infringement of Sound Recordings (June 21, 2016), https://www.copyrightcontentplatforms.com/2016/06/a-circuit-split-at-last-ninth-circuit-recognizes-de-minimis-exception-to-copyright-infringement-of-sound-recordings/ (a recent circuit split arose after the Ninth Circuit ruled in VMG Salsoul, LLC v. Ciccone, 824 F. 3d 817 (9th Cir. 2016), that the de minimis exception to copyright infringement applies to sound recordings. Though Salsoul may offer hope to samplers by tipping “the weight of the authorities heavily on the side of recognizing a de minimis exception,” litigious copyright holders can still find a favorable forum in circuits bound by Bridgeport. Moreover, it remains to be seen if courts will extend Salsoul to use of the underlying composition.).

[253] See Neil Weinstock Netanel, Copyright’s Paradox 21 (2008).

[254] Mickey Hess, Is Hip Hop Dead?: The Past, Present, and Future of America’s Most Wanted Music 106 (2007); interpolation allows the artist to simply pay the holder of the rights in the composition, usually a songwriter, without needing to pay the artist and the record company as well.

[255] Copyright’s failure to encourage creativity may simply be proof that its protection is overreaching, since creative incentives and normative protections exist regardless of the law as it stands. See, e.g., Jodie Griffin, The Economic Impacts of Copyright, PUBLIC KNOWLEDGE, https://www.publicknowledge.org/files/TPP%20Econ%20Presentation.pdf (last accessed Feb. 7, 2016) (“evidence suggests ‘most sound recordings sell in the ten years after release.’”).

[256] Arewa, supra note 5, at 630.

[257] Id.

[258] Joe Fassler, How Copyright Law Hurts Music, From Chuck D to Girl Talk, THE ATLANTIC, Apr. 12, 2011, http://www.theatlantic.com/entertainment/archive/2011/04/how-copyright-law-hurts-music-from-chuck-d-to-girl-talk/236975/ (“Capitol Records would lose 20 million dollars on a record that sold 2.5 million units.”).

[259] Arewa, supra note 5, at 638; see also 17 U.S.C. § 115(a)(2) (2000) (requiring that the compulsory licensing arrangement not change the basic melody or fundamental character of the work).

[260] See HESS, supra note 254, at 106 (“Dr. Dre, one of hip hop’s biggest producers, says that he prefers [sheet music] interpolation to sampling because working from sheet music allows him more control of the sound: he can ask studio musicians to play it the way he wants it.”).

[261] Guy Raz & Mark Ronson, Why Would More Than 500 Artists Sample The Same Song?, NPR (June, 2014, 9:57 AM), http://www.npr.org/2014/06/27/322721353/why-would-more-than-500-artists-sample-the-same-song. Explaining the process of seeking sampling rights, producer Mark Ronson said,

Basically, you go to the person that wrote it, or maybe the person that owns that song now – because it could have been sold, the rights to it, years ago. You have to play them your song, and then you guys kind of come to agreement about how much you’re going to give them. I mean, if you use a tiny two seconds of a Led Zeppelin song, it doesn’t matter how important it is to your song – you can pretty much guarantee you’re going to give up 100 percent of your publishing to Jimmy Page and Robert Plant. Id.

[262] Id.

[263] The song charted at number 15 on the UK Singles Chart. Billboard, May 26, 2007.

[264] This is the commonly used name for their LP, The Beatles.

[265] Jillian C. York, The Fight to Protect Digital Rights Is an Uphill Battle, but not a Silent One, THE GUARDIAN (Apr. 24, 2010, 12:38 AM) http://www.theguardian.com/commentisfree/2014/apr/24/the-fight-to-protect-digital-rights-is-an-uphill-battle-but-not-a-silent-one.

[266] Dr. Dre, ‘The Chronic’ at 20: Classic Track-By-Track Review, BILLBOARD (Dec. 15, 2012), http://www.billboard.com/articles/review/1537948/dr-dre-the-chronic-at-20-classic-track-by-track-review.

[267] See P-Funk, RATE YOUR MUSIC, https://rateyourmusic.com/genre/P-Funk/ (last visited Sept. 20, 2015).

[268] Mike Masnick, Why Hasn’t The Recording Industry Sued Girl Talk?, TECHDIRT (July 8, 2009, 8:32 AM), https://www.techdirt.com/articles/20090707/0237205466.shtml.

[269] Alex Mayyasi, The Economics Of Girl Talk, PRICENOMICS (Apr. 11, 2013) (quoting David Post, Girl Talk:, Volokh Conspiracy (Nov. 19, 2010, 7:10 PM), http://volokh.com /2010/11/19/girl-talk/), http://priceonomics.com/post/47719281228/the-economics-of-girl-talk.

[270] Eryc Eyl, Ripper Offer, THE PITCH (Oct.4, 2007, 4:00 AM), http://www.pitch.com/kansascity/ripper-offer/Content?oid=2187141.

[271] See, e.g., Mayyasi, supra note 269 (stating Girl Talk’s main instrument is a laptop); RZA, RZA on Gear, SKULL THEFT (citing So You Wanna Be a Record Producer, RAP PAGES, Mar. 1995), http://skulltheft.tumblr.com/post/256038796/rza-on-gear (last visited Feb. 10, 2016) (describing early hip-hop producers, like RZA of the group Wu-Tang Clan, who used basic sampling equipment, stating “‘[b]ack in ’89…all I had was a four-track, some turntables, and a drum machine.’”).

[272] Keith Caulfield, Billboard 200 Chart Moves: Marvin Gaye Sales Up 246% After ‘Blurred Lines’ Trial, BILLBOARD (Mar. 20, 2015), http://www.billboard.com/articles/columns/chart-beat/6509353/marvin-gaye-got-to-give-it-up-sales.

[273] See, e.g., Cariou v. Prince, 714 F. 3d 694 (2d Cir. 2013); Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (finding the defendant’s use of plaintiff’s song to be fair use because the new work was a parody); Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006) (finding defendant’s use of the plaintiff’s music posters in a biographical coffee table book to be fair use because of the new purpose).

[274] George Howard, Should There Be a Compulsory License for Derivative Works?, TUNECORE (Apr. 17, 2013), http://www.tunecore.com/blog/2013/04/should-there-be-a-compulsory-license-for-derivative-works.html.

[275] H.R. REP. NO. 60-2222, at 7 (1909), reprinted in 6 LEGISLATIVE HISTORY OF THE 1909 COPYRIGHT ACT, Part S (E. Fulton Brylawski & Abe Goldman eds., 1976).

[276] Nicole K. Roodhuyzen, Do We Even Need a Test? A Reevaluation of Assessing Substantial Similarity in a Copyright Infringement Case, 15 J. L. & POL’Y, 1375, 1418-19 (2008), http://brooklynworks.brooklaw.edu/cgi/viewcontent.cgi?article=1217&context=jlp.

[277] Jennifer Jenkins, The “Blurred Lines” of the Law, CENTER FOR THE STUDY OF THE PUBLIC DOMAIN, http://web.law.duke.edu/cspd/blurredlines/ (last visited Oct. 16, 2016).

[278] Beebe, supra note 33 (explaining that aesthetic progress doesn’t mean that the works of Picasso are better than cave drawings).

[279] Simon Waxman, ‘Blurred Lines’ Ruling Makes Influence Illegal, AL JAZEERA AMERICA (Apr.l 4, 2015, 2:00AM), http://america.aljazeera.com/opinions/2015/4/blurred-lines-ruling-makes-influence-illegal.html.

[280] Gary Trust, Robin Thicke’s ‘Blurred Lines’ Is Billboard’s Song of the Summer, BILLBOARD (Sept. 5, 2013), http://www.billboard.com/articles/news/5687036/robin-thickes-blurred-lines-is-billboards-song-of-the-summer.

[281] Stuart Dredge, Global Music Sales Fell in 2013 Despite Strong Growth for Streaming Services, THE GUARDIAN (March 18, 2014 9:00 AM), http://www.theguardian.com/technology/2014/mar/18/music-sales-ifpi-2013-spotify-streaming (reporting that “Blurred Lines” sold 14.8 million units in track downloads and equivalent streams).

[282] Geeta Dayal, The Music Club, 2013, SLATE (Dec. 19, 2013, 2:44 PM), http://www.slate.com/articles/arts/the_music_club/features/2013/music_club_2013/robin_thicke_s_blurred_lines_it_s_sexist_and_awful.html (citing lyrics like “I know you want it” and “I hate these blurred lines”).

[283] ‘Blurred Lines’ Banned by YouTube as Robin Thicke’s Video Features Nude Models, Huffington Post (April 1, 2013 5:28 PM), http://www.huffingtonpost.com/2013/04/01/blurred-lines-banned-by-youtube-robin-thicke-nude-models_n_2994676.html.

[284] Zoe Chace, Robin Thicke’s Song Sounds Like Marvin Gaye. So He’s Suing Gaye’s Family, NPR PLANET MONEY (Aug. 19, 2013, 1:05 PM), http://www.npr.org/sections/money/2013/08/19/213471083/robin-thickes-song-sounds-like-marvin-gaye-so-thicke-is-suing-gayes-family.

[285] Eriq Gardner, Robin Thicke Sues to Protect ‘Blurred Lines’ from Marvin Gaye’s Family (Exclusive), THE HOLLYWOOD REP. (Aug. 15, 2013, 6:13 PM), http://www.hollywoodreporter.com/thr-esq/robin-thicke-sues-protect-blurred-607492.

[286] Id.

[287] Williams v. Bridgeport Music, Inc., No. LA CV13-06004 JAK (AGRx), 2014 WL 7877773, at *18-19 (C.D. Cal. Oct. 30, 2014).

[288] Frankie Christian Gaye and Nona Marvisa Gaye First Amended Counterclaims Preliminary Expert Report for Defendants at ¶ 9, 43, Williams v. Bridgeport Music, Inc., No. CV13-06004-JAK (AGRx) (C.D. Cal. Oct. 30, 2013) [hereinafter Counterclaim].

[289] Emily Miao & Nicole E. Grimm, The Blurred Lines of Copyright Infringement of Music Become Even Blurrier as the Robin Thicke v. Marvin Gaye’s Estate Lawsuit Continues, MBHB ACCESS MEDIA (Winter 2014) (quoting Counterclaim, supra note 288, http://www.mbhb.com/pubs/xpqPublicationDetail.aspx?xpST=PubDetail&pub=271.

[290] Pharrell Denies ‘Blurred Lines’ Copies Marvin Gaye: ‘It’s Completely Different,’ BILLBOARD (Sept. 13, 2013), http://www.billboard.com/articles/news/5695041/pharrell-denies-blurred-lines-copies-marvin-gaye-its-completely-different.

[291] Miao & Grimm, supra note 289.

[292] Lauretta Charlton, A Copyright Expert Explains the ‘Blurred Lines’ Ruling, VULTURE (Mar. 11, 2015, 3:11 PM), http://www.vulture.com/2015/03/what-the-blurred-lines-ruling-means-for-music.html.

[293] Eriq Gardner & Austin Siegemund-Broka, ‘Blurred Lines’ Trial Reveals How Much Money Robin Thicke’s Song Made, HOLLYWOOD REP. (Mar. 3, 2015, 10:54 AM), http://www.hollywoodreporter.com/thr-esq/blurred-lines-trial-reveals-how-778884.

[294] Kit Walsh, The Blurred Lines Copyright Verdict is Bad News for Music, ELECTRONIC FRONTIER FOUNDATION (Mar. 11, 2015), https://www.eff.org/deeplinks/2015/03/blurred-lines-copyright-verdict-bad-news-music (quoting Gregory Butler).

[295] Amar Toor, Robin Thicke and Pharrell Appeal ‘Blurred Line’’ Copyright Ruling, THE VERGE (Dec. 9, 2015, 3:30 AM), http://www.theverge.com/2015/12/9/9877706/robin-thicke-pharrell-blurred-lines-marvin-gaye-appeal.

[296] Walsh, supra note 294; see also Toor, supra note 295 (“The verdict handicaps any creator out there who is making something that might be inspired by something else….This applies to fashion, music, design . . . anything. If we lose our freedom to be inspired we’re going to look up one day and the entertainment industry as we know it will be frozen in litigation. This is about protecting the intellectual rights of people who have ideas.”) (quoting Pharrell Williams).

[297] Ed Christman, ‘Blurred Lines’ Verdict: How It Started, Why It Backfired on Robin Thicke and Why Songwriters Should Be Nervous, BILLBOARD (Mar. 13, 2015), http://www.billboard.com/articles/business/6502023/blurred-lines-verdict-how-it-started-why-it-backfired-on-robin-thicke-and.

[298] Williams v. Bridgeport Music, Inc., No. LA CV13-06004 JAK, 2014 WL 7877773, at *10 (C.D. Cal. Oct. 30, 2014) (“[T]he lead sheets are deemed to define the scope of Defendants’ copyrighted compositions.”).

[299] Kal Raustiala & Christopher Jon Sprigman, Squelching Creativity, SLATE (Mar. 12, 2015, 12:27 PM), http://www.slate.com/articles/news_and_politics/jurisprudence/2015/03/_blurred_lines_verdict_is_wrong_williams_and_thicke_did_not_infringe_on.html.

[300] See infra, note 302.

[301] Williams, 2014 WL 7877773, at *19.

[302] Id. at *4, *13, and *15 (including “Low Rider” by War from 1975, “Superfly” by Curtis Mayfield from 1972 and “Funkytown” by Lipps Inc. from 1980).

[303] Id. at *19.

[304] Swirsky v. Carey, 376 F.3d 841, 850 (9th Cir. 2004).

[305] Kronstadt confuses the issue of whether the elements themselves are protected versus the issue of whether the work as a whole is a unique combination of unprotected elements, applying the test for the former in attempting to determine the latter, thereby failing to decide either issue.

[306] Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 358 (1991).

[307] Satava v. Lowry, 323 F.3d 805, 811 (9th Cir. 2003).

[308] Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1439, 1442 (9th Cir. 1994), cert. denied, 513 U.S. 1184; see also Mattel, Inc. v. MGA Entm’t, Inc., 616 F.3d 904, 915-917 (9th Cir. 2010) (finding that the district court erred in applying the substantial similarity standard for unprotectable elements, as opposed to the heightened virtually identical standard, in comparing defendant’s “Bratz” dolls to Mattel’s iconic Barbie because “small plastic dolls that resemble young females is a staple of the fashion doll market”).

[309] Chris Richards, It’s Okay if You Hate Robin Thicke but the ‘Blurred Lines’ Verdict is Bad for Pop Music, Wash. Post (March 11, 2015), https://www.washingtonpost.com/news/style-blog/wp/2015/03/11/the-blurred-lines-of-the-blurred-lines-verdict/.

[310] Nimmer, supra note 11, at § 13.03[B][3][d], [B][3][c].

[311] Waxman, supra note 279 (citing bluegrass as an example).

[312] Landon Proctor, Video Explains the World’s Most Important 6-Sec Drum Loop, YOUTUBE (Feb. 21, 2006), https://www.youtube.com/watch?v=5SaFTm2bcac.

[313] Arewa, supra note 5, at 628.

[314] Nimmer, supra note 11, at § 13.03[E][1][b].

[315] Id. at § 13.03[E][4].

[316] See Erin Geiger Smith, What’s the (Fair) Use?, NYU Law Mag. (2014), http://blogs.law.nyu.edu/magazine/2014/whats-the-fair-use/ (discussing the “latest incarnation of the Internet…the phenomenon of user-generated content” and Barton Beebe’s views that “[o]pening up the conversation about aesthetic progress and what it means could lead to tweaks to copyright law that are more in line with today’s hands-on approach to cultural commentary.”).

[317] Nimmer, supra note 11, at § 13.03[F][1]; see also Lemley, supra note 13, at 734.

[318] Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 713 (2d Cir. 1992).

[319] Nimmer, supra note 11, at § 13.03[F].

[320] Id.

[321] Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).

[322] Altai, 982 F.2d at 713.

[323] Lemley, supra note 13, at 726, 733.

[324] Id.

[325] Osterberg, supra note 110, at § 3.

[326] Lemley, supra note 13, at 741.

[327] Id.

[328] Balganesh, supra note 9, at 859.

[329] Id.

[330] Id. at 860.

[331] Id. at 849.

[332] Lemley, supra note 13, at 725.

[333] U.S. CONST. amend. VII.

[334] DJ Shadow On Sampling As A ‘Collage Of Mistakes,’ NPR (Nov. 17, 2012 7:04 PM), http://www.npr.org/2012/11/17/165145271/dj-shadow-on-sampling-as-a-collage-of-mistakes.

[335] Raz & Ronson, supra note 261.

[336] HESS, supra note 254, at 98.

[337] Id. at 99.

[338] Fassler, supra note 258 (noting that author David Shields’s novel, Reality Hunger, is made up of passages from other books, but musicians can’t make a record made up from other records).

[339] HESS, supra note 254, at 98.

[340] Id. at 99.

[341] Raz & Ronson, supra note 261.

[342] See Beebe, supra note 33.

How Rings Fit into the Copyright Scheme: Assessing Their Intrinsic Utilitarian Function

How Rings Fit into the Copyright Scheme: Assessing Their Intrinsic Utilitarian Function
By Adine Mitrani* Download a PDF version of this article here.  

Introduction

Jewelry is considered “one of the oldest art forms,”[1] dating further back than the history of painting and more vibrant than the history of sculpture.[2] Due to rampant imitation—or inspiration as some refer to it—in the fashion industry,[3] many jewelry designers seek to use the copyright system to protect their artistic designs.[4] In the past few years, retail stores such as Nasty Gal and Urban Outfitters have been “slapped with lawsuits by jewelry designers who are crying foul over their work being mimicked without any credit and sold at fast fashion prices.”[5] Under the Copyright Act of 1976, many courts consider rings ornamental sculptures entitled to copyright protection as a pictorial, graphic or sculptural (PGS) work. With the objective of protecting artistic works and excluding functional designs from protection, the Copyright Act explicitly distinguishes useful articles. Specifically if a PGS qualifies as a useful article—defined as “having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information”[6]—then it is subject to a separability test. While courts have differed in their analysis in applying separability,[7] the test will essentially render the functional aspects of a PGS unprotectable. Fashion designs are considered useful articles mostly unprotectable by Copyright system; their purpose to clothe people is utilitarian and the designs do not meet the Copyright Act’s separability test.[8] Jewelry pieces are often lumped together with fashion articles and accessories, leading some to question their status as purely ornamental sculptures. This Note focuses exclusively on rings as they seemingly possess numerous functional purposes as compared to other pieces of jewelry. For example, rings have been used for mystical and talismanic reasons. They are still used today as portable bank accounts, as the nature of small-scale jewelry allows wealth to be hidden easily and safely, to display socially meaningful codes, such as class rings and engagements rings, and to adorn one’s hand.[9] Moreover, jewelry designers inevitably consider functional concerns when creating a ring; it is supposed to fit comfortably around one’s finger. This raises the question that if a design is created with functional concerns, does it possess an intrinsic utilitarian function? Furthermore, there are diverging opinions in the federal district courts as to whether rings are considered sculptural works subject to a separability test.[10] While most courts hold that rings are purely artistic works, this Note seeks to examine why there has been confusion as to whether the useful articles doctrine applies specifically to rings. Part I of this Note examines the history of jewelry in copyright, describing how courts have attempted to define intrinsic utilitarian function in light of the separability analysis. This section also compares case law that has expressly assessed rings in relation to the useful articles doctrine. Part II next considers rings as sculptural works not subject to a useful articles analysis. After briefly describing the evolution of jewelry in the 1960-80s, this section reinforces why rings qualify as ornamental sculpture for purposes of the Copyright Act. Part III considers rings as useful articles subject to a separability test, examining certain uses of rings as well as functional consideration in the design process. Lastly, this section analyzes critical reception in connection with rings, and explains how museum display is not a prerequisite for copyrightability. In the copyright spectrum with useful articles on one end and aesthetic objects on the other, this Note concludes that rings lie more on the artistic side. Rings do not possess an intrinsic utilitarian function for purposes of the Copyright Act, and therefore should not undergo a useful articles analysis.

I. Historical Background of Jewelry in the Copyright Act

Copyright law has included a variety of designs that are seemingly useful while simultaneously purporting to exclude any utilitarian products. Beginning in 1870, through a series of acts, Congress drew from piecemeal administrative and judicial formulations, in an attempt to reconcile the differences between protectable applied arts and unprotectable utilitarian designs. In 1949, Congress explicitly included “artistic jewelry” as within the scope of copyright protection. This section examines the history of jewelry in the copyright scheme, explains judicial attempts at defining intrinsic utilitarian function, and highlights district court cases that have expressly assessed rings in light of the useful articles doctrine.

A. Initial Encounters in Early Legislation and Case Law

Article 1, Section 8 of the Constitution authorizes federal legislation “[t]o promote the Progress of Science and useful Arts,”[11] but gives little guidance in defining the scope of the copyright system. The original Copyright Act of 1790 extended protection only to maps, charts, and books.[12] It was not until 1870 when Congress explicitly extended copyright protection to three-dimensional objects: “painting, drawing, chromo, statute, statutary, and of models or designs intended to be perfected as works of the fine arts.”[13] This statute purposefully used the term “fine art” in order to “maintain a respectable distance between copyright and useful articles.”[14] The Copyright Act of 1909 eliminated this distinction, and seemingly allowed copyright coverage to apply to the designs of useful articles.[15] Specifically, the 1909 Act broadened the category of “fine arts” to include “[w]orks of art; models or designs for works of art.”[16] One year later, however, the Copyright Office quickly corrected itself, amending the statute to expressly exclude “industrial arts utilitarian in purpose and character … even if artistically made or ornamented.”[17] With the advent of new useful articles in the early 20th century, such as television sets and new cosmetic products, it became harder to define the contours of industrial design. In 1917, the Copyright Act was reworded to cover “artistic drawings notwithstanding they may afterwards be utilized for articles of manufacture.”[18] The Copyright Office promulgated a regulation in 1949 to expand its coverage and explicitly included “artistic jewelry.”[19] Specifically, the regulation defined works of art as a class which “includes works of artistic craftsmanship, in so far as their form but not their mechanical or utilitarian aspects are concerned, such as artistic jewelry, enamels, glassware, and tapestries, as well as all works belonging to the fine arts, such as paintings, drawings and sculpture.”[20] Thus, Congress established copyrightable categories with protection only covering the artistic elements of the designs. In 1954, the Supreme Court decided Mazer v. Stein,[21] a seminal case for the useful articles doctrine, holding that copyright protection could be extended to sculptural figures that were used as bases for lamps.[22] Mazer attempted to distinguish artistic design, which qualifies for copyright protection, from ornamental features of useful articles, which belong to the design patent regime: “[t]he dichotomy of protection for the aesthetic is not beauty and utility but art for the copyright and the invention of original and ornamental design for design patents.”[23] Based on the 1949 Regulation promulgated by the Copyright Office, Mazer supported the idea that artistic elements in useful articles would be entitled to Copyright protection as long as they remain physically separable from the utilitarian components. Robert Denicola suggests that Rosenthal v. Stein[24] articulated a better approach to determine the Copyright Act’s scope at the time.[25] Specifically, the Ninth Circuit in Rosenthal stated, “[a] thing is a work of art if it appears to be within the historical and ordinary conception of the term art.”[26] Based on this definition, numerous cases upheld copyrights in jewelry, drawing on the historical conception of jewelry as a work of art.[27] Overall, before the Copyright Act of 1976, many courts considered artistic jewelry as a copyrightable category not subject to a separability test.

B. Further Defining Useful Articles

1. The Copyright Act of 1976
In § 102 of the Copyright Act of 1976, Congress approved these earlier precedents—specifically attempting to codify Mazer[28]—and enumerated eight categories of copyrightable subject matter. Section 102(a)(5) specifically included “pictorial, graphic and sculptural works” (PGS), thereby abandoning 1909’s Act “works of art” categorization. While the new Act did not include specific examples, such as “artistic jewelry” from the 1949 regulation, many courts have held that jewelry is still a copyrightable sculptural work.[29] Furthermore, one court explained, “the explicit congressional adoption of the Copyright Office’s definition indicates that jewelry remains within the scope of copyright protection.”[30] The 1976 Act also formulated the scope of useful articles: if a PGS meets the useful articles definition in § 101, “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information,”[31] that article qualifies as useful. The design is not copyrightable unless its particular aesthetic elements satisfy the separability test. Section 101 defines the separability test as whether “such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”[32] According to the legislative history, copyright protection for features of useful articles depended on whether the elements of the design are physically or conceptually separable from the utilitarian elements, such as the carving on the back of a chair or a floral relief design on silver flatware.[33] If the object is not separable, it does receive copyright protection. The following section identifies judicial attempts at defining intrinsic utilitarian function and determining a separability test. The last section examines how case law has treated rings in light of the useful articles doctrine.
2. Judicial Attempts at Defining “Intrinsic Utilitarian Function” and Separability
Many critics claim that the 1976 Act and its legislative history do not provide sufficient instructions to determine what the term “intrinsic utilitarian function” means.[34] While the House Report accompanying the 1976 Act identifies examples of “utilitarian articles such as textile fabrics, wallpaper, containers, and the like,” it fails to define what constitutes an “intrinsic utilitarian function.”[35] Courts have struggled to articulate an exact definition for intrinsic utilitarian function. Gay Toys, Inc. v. Buddy L Corp. attempted to distinguish the term from other useful purposes, which may not rise to an intrinsic utilitarian function.[36] Other courts, such as Brandir Int’l v. Cascade Pac. Lumber Co. and Poe v. Missing Persons,[37] identified factors to determine usefulness. Moreover, courts have conveyed different approaches for establishing separability in a useful articles analysis. The Second Circuit in Kieselstein-Cord v. Accessories by Pearl, Inc. employed a consumer-based approach, focusing how the consumer uses the object to determine conceptual separability.[38] Five years later, the Second Circuit in Carol Barnhart v. Economy Cover Corp. established an object-based approach, assessing whether the function of the object drives the form to determine separability.[39] And in Brandir, the Second Circuit laid out a process-based approach, examining whether the form and function merge during the creation process to determine separability.[40] Below is a detailed analysis of how each case defines intrinsic utilitarian function in light of a separability analysis, and a brief overview of academic definitions. In trying to determine whether belt buckles are copyrightable, Judge Oakes in Kieselstein-Cord did not delve into what, if any, intrinsic utilitarian function subsisted in the designs. Rather, he noted, “[t]he primary ornamental aspect of the [belt] buckles is conceptually separable from their subsidiary utilitarian function.”[41] Throughout the opinion though, Judge Oakes failed to elaborate on what “subsidiary utilitarian function” means.[42] Ultimately, he upheld copyright protection for the etched metal belt buckles because some people wore them as jewelry, which the court determined was copyrightable subject matter.[43] In Carol Barnhart, the Second Circuit looked at the function of the object to determine if four life-size polystyrene mannequins of human torsos were protectable sculptural works under the Copyright Act.[44] In fact, Judge Newman’s dissent expressly noted the “intrinsic” functional purpose of the mannequins: to “serv[e] as a means of displaying clothing and accessories to customers of retail stores.”[45] After evaluating the legislative history and prior case law, the court held that the mannequins were not copyrightable because their function drove their form; mannequin surfaces are inextricably intertwined with the utilitarian purpose of displaying clothes.[46] Therefore, the court ruled that the mannequins were unprotectable as useful articles.[47] Two years later, in Brandir, the Second Circuit looked at a number of different factors to determine whether the plaintiff’s bike rack was useful: the differences in design between the wire sculptural work and the ultimate bike rack, the utilitarian reasons in implementing the design changes, manufacturing concerns, advertising costs, and promotional or marketing objectives.[48] To determine separability, the court mainly looked at the design process.[49] It held that even though the bike rack is worthy of admiration for its aesthetic qualities alone, utilitarian concerns during the creation process significantly influenced the design.[50] Specifically, the plaintiff expanded the undulating “sine-curve” of an artistic sculpture in order to accommodate it for bikes; accordingly, the court could not establish separability for purposes of the Copyright Act.[51] In Gay Toys, the Sixth Circuit attempted to carve out a definitional difference between utilitarian function and intrinsic utilitarian function to determine whether toys, specifically model airplanes, are copyrightable.[52] Judge Brown stated that designs might have uses that go beyond portraying the appearance of the object or conveying information, but those uses do not necessarily constitute the intrinsic utilitarian function of the object.[53] He acknowledged that toys are designed for children to play with.[54] Yet in terms of the Copyright Act, between unprotectable useful articles and protectable paintings, “[t]he function of toys is much more similar to that of works of art than it is to the ‘intrinsic utilitarian function’ of industrial products.”[55] The court held that toys are copyrightable subject matter as a PGS, and are not subject to a useful articles analysis.[56] A year later, in Poe, the Ninth Circuit reinforced Gay Toys definitional difference between usefulness and intrinsic utilitarian function.[57] Specifically, Judge Alarcon acknowledged that the swimsuit in question might have uses that go beyond portraying its own appearance, and remanded the case to the district court to determine whether such uses constitute an intrinsic utilitarian function.[58] The Ninth Circuit identified four factors that are relevant to the usefulness inquiry:
(1) expert evidence may be offered concerning the usefulness of the article and whether any apparent functional aspects can be separated from the artistic aspects…(2) evidence of Poe’s intent in designing the article may be relevant in determining whether it has a utilitarian function…(3) testimony concerning the custom and usage within the art world and the clothing trade concerning such objects also may be relevant;…and (4) the district court may also consider the admissibility of evidence as to Aquatint No. 5’s marketability as a work of art.[59]
Similar to Brandir, these factors highlight the object’s functionality in light of its aesthetic elements. After analyzing relevant case law to determine the meaning of intrinsic utilitarian function, Professor Hick defines the term as objects that are designed with a specific function in mind (a factor mentioned in Brandir and Poe), such as a hammer that is designed to drive nails into a surface.[60] The extrinsic function, however, is derived from how consumers interact with the product—if one uses a hammer as a paperweight, that would constitute an extrinsic function of the hammer.[61] Furthermore, Thomas Byron explains how one might affix a coiled extension cord to a wall or use a Van Gogh painting to swat flies.[62] Yet, displaying the extension cord as art, does not eradicate the primary purpose of the object; nor does using a famous artwork for a mundane task implicate that the art piece is less intrinsically artistic.[63] Therefore, he concludes, while many objects “may serve both aesthetic and utilitarian ends, different objects intrinsically serve these ends in varying degrees.”[64] In sum, courts and academics have treated utility and aesthetics as operating on a spectrum. At one end, there are objects that are purely functional, such as certain types of hardware. At the other end, there are inherently aesthetic works, such as a painting. In between, there are more questionable works, namely belt buckles and toys, which incorporate both aesthetic and utilitarian features in the design. In determining whether the design is subject to a separability test, the Copyright Act stipulates that it must possess an intrinsic utilitarian function, which courts have failed to adequately define. While Kisselstein Cord explicitly identifies jewelry as a protectable aesthetic category of the Copyright Act (not subject to useful articles analysis), the latter four cases seem to question the categorization of jewelry as a purely sculptural work.

C. Cases Assessing Ring Design Against the Useful Articles Doctrine

Based on courts’ interpretations of the Copyright Act, it seems that rings are copyrightable subject matter as long as they meet requirements of authorship and originality, with the latter being the more difficult to prove.[65] While one district court held that rings are useful articles, two district courts explicitly rejected this argument and instead categorized rings as protectable ornamental sculptural pieces. In DBC of New York, Inc. v. Merit Diamond Corp.,[66] the Southern District of New York took the position that rings are useful articles and proceeded with a useful articles analysis.[67] The court explained how the rings’ configuration—marquis stones flanked in a trillion ring setting—did not exist independently of its utilitarian counterparts.[68] The court did not include a reason why it categorized the diamond rings as useful articles; rather, the court, citing Carol Barnhart, reasoned, “the design of a useful article … shall be considered a pictorial, graphic or sculptural work only if, and only to the extent that such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.[69] After briefly conducting a separability analysis, the court held that the plaintiff’s rings did not warrant copyright protection.[70] Two district courts explicitly disagreed with the court’s treatment of rings as a useful article in DBC of New York. Nearly a decade after, the Southern District in Weindling Int’l, Corp. v. Kobi Katz, Inc. stated that rings are “chiefly works of art, or more precisely ornamental sculptures, even if mass-produced.”[71] After examining the combination of the rings’ unoriginal elements—flaring supports, channel setting, triangle cut-outs, and sharp-edged apexes—it concluded that, in combination, the bridge ring merited copyright protection (specifically known as compilation protection).[72] Additionally, the Northern District Court of Illinois in Donald Bruce & Co. v. B. H. Multi Com Corp. stated that it did not agree with the defendant’s reliance on the incorrect ruling in DBC of New York.[73] In determining whether plaintiff’s Skalet Ring Line was copyrightable, the court flatly rejected the defendant’s argument that rings can serve as useful articles saying, “[t]he [r]ing is purely ornamental, its sole purpose is to portray its appearance.”[74] Accordingly, the court concluded that since the ring is not a useful article under § 101 of the Copyright Act, it therefore did not need to “determine whether the utilitarian aspects of the mount are separable from the sculptural elements.”[75] After looking at the Skalet Ring Line’s originality and assessing the validity of the copyright, the court dismissed defendant’s motion for summary judgment. While the Copyright Act of 1976 did not expressly include the term “artistic jewelry,” for the most part, rings are considered sculptural works. The absence of any reasoning behind the useful articles analysis for the diamond rings in DBC of New York further demonstrates that rings should be treated on the aesthetic end of the copyright spectrum.

II. Considering Rings as Sculptural Works Not Subject to a Useful Articles Analysis

This section examines how rings are considered works of art from jewelry designers’ perspective and subsequently not subject to a useful articles analysis. After delineating a brief history on jewelry, this section will bolster what it means to be an “ornamental sculpture” for purposes of the Copyright Act, looking at three relevant factors in ring designs: artistic creativity, how jewelry designers view themselves and their creations, and how rings differ from clothing, a useful article.

A. A Brief History on Jewelry: The Rise of Artistic Expression

Jewelry is an old tradition steeped in the artistic world,[76] predating the history of sculpture and even painting.[77] Yet, rings can be considered useful in many senses. Rings have taken the forms of seals for legal documents, contracts, and international treaties, have been used for talismanic reasons and amuletic properties,[78] and are still used today as portable bank accounts and to display socially meaningful codes.[79] Paul Greenhalgh delineates how the “design” category emerged from the “decorative arts.” Specifically, in the 19th century, “[t]he decorative arts steadily congealed into a salon de refuse of genres that cohered only by virtue of their exclusion [from the category of fine arts]. Outside the fine arts, there was no fixed nomenclature or hierarchy. Variously—and interchangeably—known as the decorative, useful, industrial, applied or ornamental arts, they struggled to maintain a place in intellectual life ….”[80] At the end of the nineteenth century, artists engaged in craft ethic differentiated themselves from those who produced large-scale manufacturing creations, which became known as design.[81] One of the purposes of rings is to adorn,[82] and therefore rings can remain as a decorative art, distinguished from a fine art. Yet, because many jewelry designers mass-produce their creations, rings can also be considered designs. Interestingly, though, in the height of the Arts and Crafts revolution from 1970-1980 in the United States, “jewelry had begun to take a new meaning in the art world.”[83] This period has been compared to the “new painting” age that developed throughout Europe between 1880-1910 and subsequently in the United States from 1940-1960.[84] The late 1960s generated revolutionary jewelry students, especially potent in the art world, who challenged longstanding conventions and questioned the very notion of jewelry.[85] With the advent of new materials and metals, jewelry designers were tooled with new ways to create “individualistic art.”[86] Specifically, jewelry designers employed non-precious metals and other soft metals as well as recycled materials, new plastics, and other refractory metals that could be colored in novel ways.[87] For instance, Crangi explained how she was one of the first designers to employ rugged brass in her creations when the company launched in 2001.[88] These innovative changes in jewelry design resulted in an invigorating and challenging debate whether jewelry was still “Art with a capital A”[89],[90] Overall, jewelry has evolved to a forum for “conceptual exploration and personal expression.”[91]

B. Considering Rings as Works of Art

In terms of the 1976 Copyright Act, many courts have articulated that rings are not useful articles because they are ornamental sculptures with a sole purpose to convey appearance.[92] Moreover, artistic expression lies in how designers choose materials, how they work the materials to transform an object, and ultimately breathe new life into it.[93] Jewelry design is said to be the “highest level of craftsmanship and creativity—not blindly making [jewelry pieces] to preordained templates, but thinking through making, applying individual philosophies, personal intellect, active intuition, sensitivity, continuously inquiring and experimenting, and immense passion ….”[94] By including perspectives from jewelry designers, this section will further explain how a ring is an ornamental sculpture for purposes of the Copyright Act. Specifically, it will examine three relevant factors in ring design: artistic creativity and how the Copyright Act has aimed to protect that process; jewelry designers’ perspectives and infusion of artistic concepts; and how rings differ from clothing, a useful article.
1. Artistic Creativity: Discovery in the Process
The history of the Copyright Act illustrates Congress’s purpose in protecting artistic works. The Act has a rich history of explicitly including “fine art”[95] and “work[s] of art.”[96] While the Act currently stipulates that PGSs qualify as a category of copyrightable subject matter, it further explains the phrase with references to art in the definitions section, saying PGS include: “works of fine, graphic, and applied art, photographs, prints and art reproductions …. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned ….”[97] There are also policy concerns behind the Copyright Act that seek to incentivize “authors” to create artistic works. Many academics have supported the utilitarian justification for copyright protection: the Constitution authorized copyright legislation “to promote the Progress of Science and useful Arts,”[98] thereby suggesting an incentive rationale to encourage innovative activity through a system that promotes exclusive rights for the tangible results of creative efforts.[99] Accordingly, Professor Fromer argues that while the drafters of copyright legislation may not have had “artistic creativity” in mind, “[copyright]’s standard of originality for protectability, principally aligns with our understanding of how creativity proceeds and is valued in the artistic realm.”[100] Specifically, the low bar for originality incentivizes authors to create works that are not “highly original,” rather drawing on previous artistic works, which are typically in line with consumers’ tastes.[101] Many ring designers employ artistic creativity, which further supports the notion that rings are sculptural works not subject to a useful articles analysis. While scientific creativity seeks to find practical solutions for problems, artistic creativity focuses on the problem, posing questions to an audience to provoke debate and discussion.[102] The spirit of open-ended inquiry coincides with the Copyright Act’s requirement of originality, as the author identifies a problem and fixes it in a work of art.[103] While jewelry is not considered a fine art in the strict sense, many jewelry designers see themselves as using artistic creativity in the process.[104] Norman Cherry interviewed seventeen jewelry designers, many who describe their creative process in artistic terms. For example, Simon Cottrell creates his designs in a structured form of improvisation, similar to how a jazz musician develops an initial theme and, through a complex combination of prior knowledge, experience, and intuition, eventually reaches a final destination.[105] Additionally, Ruudt Peters conveys that alchemy is a process in jewelry design that transmutes “prosaic materials into a visual poetry.”[106] Moreover, jewelry designers are actively engaged in a method referred to as “discovery of the problem,” which involves both “deciding which artistic medium, materials, and represented objects will be used” and “harnessing experiences and themes for artistic expression.”[107] Most jewelry artists do not rigidly follow a blueprint in the design process; they employ a number of different methodologies for their creations.[108] Gruenberg states that “[m]uch of what I do is instinctive … I don’t consciously follow a step-by-step process to construct a ring.”[109] When creating the ring template for 3D printing, she says that she designs, experiments with components, reacts, and then redesigns—like drawing through materials.[110] During the process new problems may arise and the artist is tempted to reframe that problem.[111] For instance, Peter Skubik designed a mercury ring by creating a mold, pouring liquid mercury into the mold and cooling the mercury in carbon dioxide snow to solidify it.[112] Once he removed the solidified ring from the mold, the ring melted a little and lost its form.[113] It created a dripping effect, calling attention to the malleable metal in relation to the sturdy mold.[114] Lastly, Courtney Crangi commented on her brother Phillip Crangi’s designs saying that during college he noticed how “steel and gold love to live together;” he has since created a fine jewelry line that includes rings that combine the two materials.[115]
Mitrani Figure 1
Figure 1: Phillip Crangi’s Fine Jewelry Line[116]
  Accordingly, copyright law rewards many artists and writers for articulating a particular emotion or subjective concept into a tangible work, rather than “only one problem solution receives the prize of copyright,” as in the patent regime.[117] Overall, the Copyright Act’s low originality threshold is designed to award the use of artistic creativity. Many jewelry designers describe their creation process in poetic terms and focus on the discovery of a problem, which mirrors the creative process of other artists, musicians, and writers. Thus, jewelry should be considered on the aesthetic side of the copyright spectrum not subject to a useful articles analysis as it incentivizes jewelry designers to engage in artistic creativity.
2. Designers’ Perspectives
As the Brandir and Poe courts noted, one factor in determining usefulness is the designer’s intent in creating the object. Specifically, Professor Hick explains that the intrinsic utilitarian function is mainly derived from how the designer purposed the object.[118] Accordingly, it is important to see how jewelry designers view their pieces to determine whether rings qualify as useful articles. To many designers and academics, jewelry is considered “one of the most vibrant, exciting and challenging contemporary art forms.”[119] Many jewelry designers see themselves as artists.[120] In line with the 1976 Copyright Act’s objectives, jewelry designers have compared their work to that of a sculptor.[121] Similar to sculptural objects, rings “consist of a physical object that has its own discrete existence.”[122] In fact, Skubik views his rings in isolation from the body and sees them as art even when it is not worn.[123] While there is a commercial component to jewelry design, Tanya Gruenberg, the creator of Studio Grun jewelry designs, states that she manages the production as a businesswoman, yet creates as an artist.[124] For sales, she has to think formulaically, keeping track of her cash flow and inventory.[125] As an artist, she sees her rings as a platform for investigating the interplay of a diverse range of mixed media—3D printing, plastic molds, and gemstones—to highlight a “unique degradation aesthetic while maintaining elegant accents.”[126] Other jewelry designers infuse different art world concepts into their designs, such as abstraction, minimalism, and color schemes. Along with her husband, Emmy van Leersum creates pieces in an abstract manner that “rejected the craft tradition of the silversmith and strove instead to eradicate any trace of personal expression from their creations.”[127] Additionally, Otto Künzli highlights social critique, frequently disparaging the pretentions of jewelry in his pieces.[128]
Mitrani Figure 2
Figure 2: Emmy van Leersum – Broken Lines Ring[129]
 
Mitrani Figure 3
Figure 3: Otto Künzli – Seal Ring[130]
  Lastly, Irene Neuwirth, a native from South California, explains that her inspiration is the ocean: “[i]ts purity, power and colors are all key elements at the origin of her designs.”[131]
Mitrani Figure 4
Figure 4: Irene Neuwirth – Gemstone Hexagonal Ring[132]
  Overall, many jewelry designers see themselves as artists and incorporate many artistic themes into their pieces, thereby highlighting how jewelry is more of an art form for purposes of the Copyright Act.
3. Adornment Purposes of Rings: Distinct from Clothing
While other useful articles certainly incorporate artistic styles in their designs,[133] rings are inherently different from other industrial designs. As mentioned, the copyright system treats fashion pieces as useful articles,[134] and most jewelry designs as sculptural ornamental pieces.[135] However, many designers would submit that the nature of rings is innately tied to the human finger as rings are made—and imagined—to be worn.[136] In this regard, rings are similar to garments in that the body is the site of the creative work. However, rings are remarkably different in the sense that they do not protect people from cold temperatures, which could be considered an intrinsic utilitarian function of clothing.[137] Additionally, clothing is used for modesty purposes in many cultures,[138] whereas rings could be said to have a complete opposite function—they mainly serve an adornment purpose: “it beautifies, within the value system of the local culture, and sometimes renders the wearer socially or sexually desirable.”[139] Of course, fashion designs can accomplish the same objective, but the copyright system does not treat that as a primary objective of clothing.[140] Unlike clothing, which in most parts of the world you are legally required to wear, donning rings is a choice.[141] Many jewelry designers would submit that the primary purpose of rings is to decorate fingers and convey a specific style.[142] Similar to clothing, though, jewelry designers must cater to trends, and in order “to be complete,” their designs should be purchased and worn by others.[143] Many traditional artists are generally free from those “constraints of commerce,”[144] whereas many jewelry designers have to develop a business sense. Furthermore, English and Dormer argue that art “confers a status upon an object that is currently higher than and different from the status of craft or design” seen in jewelry.[145] However, the Copyright Act still considers many sculptural works as works of art, even if they are mass-produced or marketed for commercial purposes.[146] Judge Rakoff in Weindling International, points out “[a]rtistic design, after all, is at the very heart of the jewelry business, even in its crasser commercial forms.”[147] Furthermore, some designers see their rings as a more “intimate” art form between the creator and audience.[148] The weight of a ring combined with its “texture and size” on one’s finger and size serves as a tactile “constant reminder of its presence.”[149] Moreover, a ring, after being worn for years, “acquires a patina of age and even conforms itself to the shape of the finger.”[150] While clothing and jewelry share similar elements, a ring’s primary purpose is to adorn, which makes it more of an ornamental sculptural work for purposes of the Copyright Act. Additionally, the copyright system and its low threshold for originality is designed to afford tangible rights to the artistic creative efforts of designers. Since, many jewelry designers engage in artistic creativity (focusing on the problem) and infuse their designs with artistic concepts (expressing a particular problem), their designs should be protected as aesthetic works.

III. Considering Rings as Useful Articles Subject to a Separability Test

As mentioned, jewelry is considered a sculptural work under the Copyright Act. The Copyright Act of 1976 further distinguishes between sculptural works and sculptural works that are useful articles with an “intrinsic utilitarian function,” and affords protection to the latter as long as their artistic features “can be identified separately from, and are capable of existing independently of, the useful design.”[151] Given that rings do possess some functional uses, this section assesses whether those uses constitute an “intrinsic utilitarian function” in terms of the Copyright Act. Both Gay Toys and Poe have explained that not all uses rise to the level of intrinsic utilitarian function.[152] Continuing, this section examines functional aspects underlying ring designs, such as those considered in Brandir, and assess whether that is an important factor in determining intrinsic utilitarian function. Lastly, the section analyzes critical reception of rings, and how the copyright system considers museum display.

A. The Purposes of Rings: Examining Their Intrinsic Functionality

A ring can possess a number of functional purposes; it can be used as an amuletic power, a portable bank account, a signifier of status, and an allurement to one’s hands. After examining each of these uses, this section will conclude that some of these uses are more extrinsic functions, not rising to the level of intrinsic utilitarian function for purposes of the Copyright Act. Some people buy rings for the talismanic power of the gemstones. In line with popular culture, the American Gem Society designates a different gemstone that contains a unique mystic meaning to each calendar month. For instance, Garnet, the birthstone of January, is “known to promote romantic love, passion, sensuality, and intimacy.”[153] Accordingly, Jewelry by December 1967, a designer on Etsy, lists a Mozambique Garnet Ring and explains “[g]arnet is said to be the stone of romantic love and passion, enhancing sensuality, sexuality, and intimacy.”[154]
Mitrani Figure 5
Figure 5: Jewelry by December 1967 – Mozambique Garnet Ring[155]  Additionally, the Mystical Maven, another seller on Etsy, presents a Golden Garnet Ring, which she describes as a ring that will allure the opposite sex if the other person touches the ring while the owner is wearing it.[156]Moreover, certain cultures attach mystic powers to certain gemstones, such as the Chinese who consider the rich luster of jade to be very lucky.[157] In illustrating the talismanic forces of the jade stone, Melissa Chang conveys, “[w]hen [my dad] first started wearing [the jade ring], he told me that the deeper the green was, the more good luck it brought. He always wore it to Vegas and as far as I know, he did pretty well on the craps table.”[158] While these amuletic powers of rings can qualify as a function, it would be quite difficult to prove actual, intrinsic utilitarian function from anecdotes. The question also remains: to what extent should mystic powers qualify as utilitarian? Indeed, the Gay Toys court stated “[t]he intention of Congress was to exclude from copyright protection industrial products such as automobiles, food processors, and television sets.”[159] Mystical purposes do not seem to be in line with Copyright Act’s intention of excluding useful industrial objects.Rings are still used today as portable bank accounts because the nature of small-scale jewelry allows wealth to be hidden easily and safely.[160] While this may not be the traditional use, this use constitutes an extrinsic function of a ring, in the same manner as when a person uses a hammer as a paperweight.[161] Jewelry designers generally do not design a ring so that it can be quickly converted into cash. As mentioned in Part II.B.ii, jewelry designers see themselves as artists and incorporate many artistic elements into their designs. Moreover, various paintings could be said to serve as portable bank accounts in the form of investment art, yet, that feature does not prevent courts from categorizing paintings as purely aesthetic and entitled to copyright protection. Rings can also be used to display socially meaningful codes.[162] For the most part, though, rings have shifted from conveying class identity, to being more stylistic choices that can distinguish the wearer or merge the wearer with a particular style.[163] According to the Copyright Act’s definition of a useful article, though, social identity markers can be analyzed as merely conveying information, and therefore jewelry should not be considered useful in that sense. Moreover, a number of objects convey social status and identity, such as a handbag or a car, but that does not necessarily speak to their intrinsic utilitarian function; a handbag is known to hold items and a car is known as a method of transportation. Lastly, donning rings certainly draws attention to one’s hands, “appeal[ing] to potential mates.”[164] As Gay Toys alluded to, many purely aesthetic objects can have some uses.[165] Art pieces do not only serve informational or decorative purposes; they can also arouse passions, offer escape, and serve as a forum of dialogue and contemplation.[166] Drawing attention to one’s hands can serve as an aesthetic experience, heightening the artistic essence of the ring. Furthermore, that visual experience bolsters the idea that rings fall more on the aesthetic side of the copyright spectrum. After all, even though an art piece can have functional characteristics derived from emotive power or historical meaning, such characteristics do not make it a useful article under copyright law.[167] In light of the legislative history behind the Copyright Act and case law, these aforementioned uses do not rise to the level of intrinsic utilitarian function. The legal doctrine of functionality should not be broadened to include extrinsic functions or further aesthetic functions, as that can render even an art piece a useful article.

B. Functional Considerations Behind Ring Design

While jewelry designers take into account a number of considerations in designing a ring, they inevitably take function into account. Alice Sprintzen, a jewelry designer who wrote an instructive book on basic jewelry techniques, emphasized the importance in accounting for functional concerns in the design process.[168] Specifically, a designer should consider the weight of the item, flexibility of the material, any protrusions on a piece that might catch clothing, and external circumstances.[169] In the section about wax casting a ring, Sprintzen instructs designers to slightly enlarge wide band rings to allow for finger swelling in hotter seasons.[170] Danielle Frankel Nemiroff, one of the co-designers for Phillips House fine jewelry said, “functionality and comfort are not the leading concerns in the design process, but definitely are important” in the design process.[171] Nemiroff’s design philosophy is to create “pretty pieces” that one can wear comfortably; she mentioned that she will not create a ring with a sharp spike that can potentially hurt a young child or damage an evening gown.[172]
Mitrani Figure 6
Figure 6: Phillips House – No. 3 Hexagon Ring[173]  While Gruenberg sees herself as artist, she says she also takes ergonomics and negative space into account when designing a ring, especially for her King Crown Ring that goes above and below the knuckle.[174]
Mitrani Figure 7
Figure 7: Studio Grun – King Crown Ring[175]  Specifically, she tries to create lighter, more comfortable rings.[176] Additionally, Jennie Kwon, another jewelry designer, stated that she does not want women to be burdened in removing her pieces when washing their hands; rather she creates delicate designs that will not be cumbersome to the wearer.[177]
Mitrani Figure 8
Figure 8: Jennie Kwon – Black Diamond Mini Deco Point Rings[178]  Yet, does accounting for functional concerns during the design process bestow an intrinsic utilitarian function on the object? While the Brandir court analyzed the creation process as a main factor in determining separability,[179] it does not necessarily indicate that the object has an intrinsic utilitarian function. Due to the nature of the ribbon bike rack, which was derived from a wire sculpture, the Brandir court collapsed the useful article inquiry with the separability analysis in trying to establish copyrightable subject matter.[180] Thus, whether the design process was heavily influenced by utilitarian concerns should be more of a question for separability, especially when considering the primary purpose of the object. In essence, ring designers are creating for a finger, their canvas, and are naturally limited by that medium’s constraints. Rings are worn on the human finger, which imposes functional considerations of weight, height, and scale, but there still remains considerable room for creativity and expression.[181]

C. Critical Reception: Does It Matter?

Art collectors, art museums and critics in the art market do not typically think of jewelry as a fine art, such as a painting or a sculpture.[182] Specifically, English and Dormer maintain that the Museum of Modern Art or the Venice Biennale do not feature jewelry prominently in their collections, and it rarely appears in art periodicals such as Art Forum.[183] The Museum of Art and Design, however, recently presented a “stunning array of extravagant fashion jewelry” from June 2013–April 2014.[184] Additionally, from November 2013–March 2014, the Metropolitan Museum of Art had an exhibit titled Jewels by JAR (Joel A. Rosenthal) with bedazzled, vibrant jewelry pieces using the pavé technique.[185] It was the first retrospective at the Museum tailored to a contemporary artist of gems.[186] Yet, these examples perhaps highlight jewelry as more of a craft, rather than an art. Indeed, the Museum of Art and Design, formerly known as the Museum of Contemporary Crafts, has exhibits that feature other useful articles such as “Ralph Pucci: The Art of the Mannequin.”[187] Olaf Skoogfors, one of the main jewelry designers involved in the evolution of the abstractionist, formal approach, said, “I consider myself to be an artists as well as a craftsperson. The same efforts that go into painting or sculpture go into my jewelry. If this medium is a lesser art, than I am a lesser artist.”[188] Even though jewelry can be considered a craft, it still falls more on the aesthetic side of the copyright system, which is perhaps bolstered by a recent expanded notion of art in the museum world. Furthermore, whether jewelry is featured in a museum is not a primary concern for purposes of the Copyright Act. While the Kieselstein court noted that two of the belt buckles at issue in the case were placed on display in the Metropolitan Museum of Art in ruling that the buckles were protected by copyright,[189] museum placement merely serves as an additional argument for copyright protection rather than a prerequisite. Judge Rakoff in Weindling International commented that it was highly doubtful that the bridge ring in question would appear in the Met, but noted how “the law of copyright protects the modest creations of the humble versifier who churns out greeting cards as much as it does the thrilling inventions of a poet laureate.”[190] After all, the Supreme Court in Feist Publications v. Rural Telephone Co. defined the originality requirement as merely “some minimal degree of creativity…some creative spark, ‘no matter how crude, humble, or obvious’ it might be.”[191] Because mass-produced jewelry will inevitably be designed in non-original ways, it still may warrant copyright protection “if the creative spark behind a commercial jewelry design is more like a flickering match than a bolt a lightning.”[192] Therefore, originality remains a primary prerequisite for aesthetic works. In sum, rings should not be considered useful articles subject to a separability test. While rings certainly have uses, these uses do not qualify as an intrinsic utilitarian function in light of case law and the legislative history behind the Copyright Act. While jewelry designers generally account for functional considerations in the design process, these considerations serve more as a factor for determining separability. While the designer is inevitably going to run into practical issues by designing a ring for a finger, a great deal of artistic expression can exist within those confines. Lastly, museum placement is an added benefit in asserting copyrightability, and rings can still be an aesthetic work despite some historical notions that it served as a craft.

Conclusion

Ring design is an art in many senses: many jewelry designers use artistic creativity in making these ornamental sculptural pieces that leave an intimate relationship between the maker and bearer. At the same time, though, rings have been considered useful, especially when they were used as seals or to signify a class. Given the new wave of “individualistic art” during the height of the Arts and Craft Revolution, some of the old purposes of rings were diminished. As inventiveness has become a prominent objective in jewelry design, functionality is often neglected.[193] With the advent of new metals available during the 1960–80s, jewelry designers began to use a number of different materials and tools, employing new methods to create “individualistic art.”[194] Considering themselves as artists, jewelry designers seldom create “straight ‘social jewelry’” with familiar meanings such as class rings or wedding/engagement rings; “[s]tripped of familiar codes and functions, jewelry has become a vehicle for purely artistic issues”[195] in line with the Copyright Act’s objectives. After examining the purposes behind the Copyright Act and conversing at length with designers, I argue that jewelry rings lie more on the aesthetic side of the copyright spectrum. Since they do not possess an intrinsic utilitarian function, they should not be subject to a useful articles analysis. The process of designing rings certainly takes functional features into account,[196] and could seem confusing against the backdrop of the useful articles doctrine. Yet, courts have pointed out that the primary purpose of rings is to adorn. Designers employ artistic creativity in creating rings, which the Copyright Act is designed to protect. Also, designers see themselves and their creations as art, which further indicates that rings do not contain an intrinsic utilitarian function. Categorizing the functions of a ring as intrinsically utilitarian would unduly expand the functionality doctrine and could render works of art as useful articles. While jewelry designers consider how a ring fits comfortably around a finger, they incorporate artistic elements to convey a personal story through the details. In articulating a particular expression in a tangible form, jewelry designers should be entitled to robust copyright protection for their rings—specifically, as sculptural works not subject to a useful articles analysis.
* J.D. Candidate, New York University School of Law, 2016; B.A. International Relations, magna cum laude, University of Pennsylvania, 2012. The author would like to thank Professor Jeanne Fromer and the 2015-16 Editorial Board of the NYU Journal of Intellectual Property & Entertainment Law for their invaluable assistance throughout the editing process. The author would also like to acknowledge Courtney Crangi of Giles & Brother, Danielle Frankel Nemiroff of Phillips House, Tanya Gruenberg of Studio Grun, and Jeffry Aronsson of the Aronsson Group for speaking about their experiences with the jewelry design process and copyright protection.
[1] Norman Cherry, Jewelry Design and Development: From Concept to Object 6 (Susan James et al. eds., 2013).
[2] Bruce Metcalf, On the Nature of Jewelry, Jewelry Australia Now (1989), http://www.brucemetcalf.com/pages/essays/nature_jewelry.html.
[3] See generally Kal Raustiala & Christopher Jon Sprigman, The Piracy Paradox: Innovation and Intellectual Property in Fashion Design, 92 Va. L. Rev. 1696-99, 1725–32 (2006).
[4] Interview with Courtney Crangi, CEO, Philip Crangi Jewelry and Giles & Brother, in New York City, N.Y. (Mar. 30, 2015) (explaining how she was quite upset when she saw a knockoff of a Giles & Brother signature necklace sold at a certain multinational retail store).
[5] Kathryn Dachille, Bling It On: Copyright & The Rise of Jewelry Infringement Lawsuits, Creative Arts Advocate (2014), http://creativeartsadvocate.com/bling-it-on-copyright-the-rise-of-jewelry-infringement-lawsuits.
[6] 17 U.S.C. § 101 (2006).
[7] See infra Part I.B.2.
[8] Fashion designs do not meet the conceptual separability test because it is hard to distinguish their expressive and functional components. Hemphill & Suk, The Law, Culture, and Economics of Fashion, 61 Stan. L. Rev. 1147, 1185 (2009).
[9] Cherry, supra note 1 at 6. See also Metcalf, supra note 2.
[10] See infra Part I.C.
[11] U.S. Const. art. I, § 8, cl. 8.
[12] See Act of May 31, 1790, ch. 15, 1 Stat. 124.
[13] Act of July 8, 1870, ch. 230, § 86, 16 Stat. 198, 212 (repealed 1916).
[14] Robert C. Denicola, Applied Art and Industrial Design: A Suggested Approach to Copyright in Useful Articles, 67 Minn. L. Rev. 707, 711 (1983).
[15] See Act of March 4, 1909, 60th Cong., 2d Sess., 35 Stat. 1075. See also, Shira Perlmutter, Conceptual Separability and Copyright in the Designs of Useful Articles, 37 J. Copyright Soc’y U.S.A. 339, 365 (1990).
[16] Act of March 4, 1909, 60th Cong., 2d Sess., 35 Stat. 1075.
[17] Copyright Off., Rules and Regulations for the Registration of Claims to Copyright, Bulletin No. 15, at 8 (1910).
[18] Mazer v. Stein, 347 U.S. 201, 212 n.24 (1954) (quoting 37 C.F.R. § 201.4(7) (1917)).
[19] Id. at 212-213 (quoting 37 C.F.R. § 202.10(a) (1949)).
[20] Id. (emphasis added).
[21] Id. at 201.
[22] Id. at 214.
[23] Id. at 218.
[24] 205 F.2d 633 (9th Cir. 1953).
[25] Denicola, supra note 14, at 17.
[26] 205 F.2d at 635.
[27] See generally Boucher v. Du Boyes, Inc., 253 F.2d 948 (2d Cir.), cert. denied, 357 U.S. 936 (1958); Dan Kasoff, Inc. v. Palmer Jewelry Mfg. Co., 171 F. Supp. 603, 606 (S.D.N.Y. 1959); Trifari, Krussman & Fishel, Inc. v. B. Steinberg-Kaslo Co., 144 F. Supp. 577 (S.D.N.Y. 1956); Trifari, Krussman & Fishel, Inc. v. Charel Co., 134 F. Supp. 551, 553 (S.D.N.Y. 1955).
[28] See H.R. Rep. No. 94-1476, at 54 [hereinafter House Report] (“In accordance with [Mazer] works of ‘applied art’ encompass all original pictorial, graphic, and sculptural works that are intended to be or have been embodied in useful articles, regardless of factors such as mass production, commercial exploitation, and the potential availability of design patent protection.”).
[29] “It is undisputed that jewelry is included within the sculptural works classification of Section 102(a)(5).” Donald Bruce & Co. v. B. H. Multi Com Corp., 964 F. Supp. 265, 266 (N.D. Ill. 1997).
[30] Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 n.5 (2d Cir. 1980).
[31] 17 U.S.C. § 101 (2006).
[32] Id. (emphasis added).
[33] House Report, supra note 28, at 55 (1976).
[34] See, e.g., Stephen Langs, The Definitional Scope of an Intrinsic Utilitarian Function Under the 1976 Copyright Act: One Man’s Use Is Another Man’s Art, 20 W. New Eng. L. Rev. 143, 171-72 (1998).
[35] House Report, supra note 28 at 55 (1976).
[36] 703 F.2d 970, 973 (6th Cir. 1983) (noting that while a toy airplane may have other uses, its intrinsic purpose is to portray a real airplane).
[37] 834 F.2d 1142 (2d Cir. 1987) (examining the differences in design between the wire sculptural work and the ultimate bike rack, the utilitarian reasons in implementing the design changes, manufacturing concerns, advertising costs, and promotional or marketing objectives to determine whether the bike rack was a useful article); 745 F.2d 1238 (9th Cir. 1984) (looking at expert evidence, the designer’s intent, testimony regarding industry practice in the art world and clothing trade, and marketing data to assess whether the bathing suit was a useful article).
[38] 632 F.2d 989, 993–94 (2d Cir. 1980).
[39] 773 F.2d 411, 419 (2d Cir. 1985).
[40] 834 F.2d at 1148.
[41] 632 F.2d at 994.
[42] Stephen Langs, The Definitional Scope of an Intrinsic Utilitarian Function Under the 1976 Copyright Act: One Man’s Use Is Another Man’s Art, 20 W. New Eng. L. Rev. 143, 155-56 (1998)
[43] Kieselstein-Cord, 632 F.2d at 993–94.
[44] 773 F.2d at 412.
[45] Id. at 420. Ultimately, Judge Newman found the design features of the mannequins could constitute “conceptual separability.” Id. at 426.
[46] See id. at 419. See also Shira Perlmutter, Conceptual Separability and Copyright in the Designs of Useful Articles, 37 J. Copyright Soc’y U.S.A. 339, 365 (1990).
[47] 773 F.2d at 419.
[48] 834 F.2d 1142, 1146–48 (2d Cir. 1987).
[49] Id.
[50] Id.
[51] Id.
[52] 703 F.2d 970 (6th Cir. 1983).
[53] Id. at 973.
[54] Id.
[55] Id.
[56] Id. at 974.
[57] 745 F.2d 1238 (9th Cir. 1984).
[58] Id. at 1243.
[59] Id.
[60] Darren Hudson Hick, Conceptual Problems of Conceptual Separability and the Non-Usefulness of the Useful Articles Distinction, 57 J. Copyright Soc’y U.S.A. 37, 53 (2010).
[61] Id.
[62] Thomas M. Byron, As Long as There’s Another Way: Pivot Point v. Charlene Products as an Accidental Template for a Creativity-Driven Useful Articles Analysis, 49 IDEA: The Intell. Prop. L. Rev. 147, 181 (2008).
[63] Id.
[64] Id.
[65] Compare Weindling International, Corp. v. Kobi Katz, Inc., No. 00 Civ 2022, 2000 WL 1458788, *2 (S.D.N.Y. Sep. 29, 2000) (determining that combination of unoriginal elements in design of diamond “bridge” rings were original), and Diamond Direct, LLC v. Star Diamond Group, 116 F. Supp. 2d 525, 529 (S.D.N.Y. 2000) (considering the originality of diamond ring designs), with Vogue Ring Creations, Inc. v. Hardman, 410 F. Supp. 609, 611 (D.R.I. 1976) (holding that the ring design was “utterly devoid of any ‘original creativity’” and therefore not protectable).
[66] 768 F. Supp. 414 (S.D.N.Y. 1991).
[67] See id. at 416-417.
[68] Id. at 416.
[69] Id.
[70] See id. at 417.
[71] Weindling Int’l, Corp. v. Kobi Katz, Inc., No. 00 Civ. 2022, 2000 WL 1458788, at *4 (S.D.N.Y. Sep. 29, 2000).
[72] Id.
[73] 964 F. Supp. 265, 267 (N.D. Ill. 1997).
[74] Id.
[75] Id.
[76] Cherry, supra note 1, at 6.
[77] Metcalf, supra note 2.
[78] Cherry, supra note 1, at 6.
[79] Metcalf, supra note 2.
[80] Paul Greenhalgh, The History of Craft, in The Design History Reader 329 (Grace Lees, Maffei & Rebecca Houze, eds., 2010).
[81] Id. at 333.
[82] Helen W. Drutt English & Peter Dormer, Jewelry of Our Time: Art, Ornament and Obsession 12 (1995).
[83] Cherry, supra note 1, at 9.
[84] English & Dormer, supra note 82, at 12.
[85] Cherry, supra note 1, at 9.
[86] English & Dormer, supra note 82, at 12.
[87] Cherry, supra note 1, at 9.
[88] Interview with Courtney Crangi, supra note 4.
[89] Andy Warhol and others challenged the notion of what is art, namely “Art with a capital A.” Many artists, philosophers, and writers began to take the view that art is how the viewer experienced the work, rather than the conventional rules prescribed to the creative piece: “if the artist offered a work of art and a viewer saw and understood it as art, then it must be art.” Cherry, supra note 1, at 10.
[90] Id.
[91] Metcalf, supra note 2.
[92] 17 U.S.C. § 101. See also Weindling Int’l v. Kobi Katz Inc., No. 00 Civ. 2022, 2000 WL 1458788 at *4 (S.D.N.Y. Sep. 29, 2000); Donald Bruce & Co. v. B. H. Multi Com Corp., 964 F. Supp. 265, 267 (N.D. Ill. 1997).
[93] Cherry, supra note 1, at 121.
[94] Id.
[95] Act of July 8, 1870, ch. 230, § 86, 16 Stat. 198, 212 (repealed 1916).
[96] Act of March 4, 1909, 60th Cong., 2d Sess., 35 Stat. 1075 (repealed 1976).
[97] 17 U.S.C. § 101 (emphasis added).
[98] U.S. Const. art. I, § 8, cl. 8.
[99] Denicola, supra note 14, at 722. See Mazer v. Stein, 347 U.S. 201, 219 (1954) (“The economic philosophy behind the clause empowering Congress to grant patents and copyrights is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors and inventors in ‘Science and useful Arts.”). See also Jeanne C. Fromer, A Psychology of Intellectual Property, 104 Nw. U. L. Rev. 1441, 1457-58 (2010).
[100] Fromer, supra note 99, at 1492.
[101] Id. at 1492, 1497.
[102] Id. at 1444. See also discussion infra Part II.B.2 (explaining how jewelry designers infuse of artistic concepts into their designs).
[103] Fromer, supra note 99, at 1444.
[104] See generally Cherry, supra note 1.
[105] Id. at 42.
[106] Id. at 92.
[107] Fromer, supra note 99, at 1467.
[108] Cherry, supra note 1, at 121.
[109] Interview with Tanya Gruenberg, Creative Director/Jewelry Designer, Studio Grun, in New York City, N.Y. (Mar. 3, 2015).
[110] Id.
[111] Cherry, supra note 1, at 16.
[112] Id. at 106.
[113] Id.
[114] Id.
[115] Interview with Courtney Crangi, supra note 4; see also Phillip Crangi Designs, http://www.philipcrangi.com/collections/womens-rings (last visited May 19, 2015).
[116] Phillip Crangi Designs, supra note 115.
[117] Fromer, supra note 99, at 1493.
[118] Hick, supra note 60, at 53.
[119] Cherry, supra note 1, at 10.
[120] Metcalf, supra note 2. See Cherry, supra note 1, at 13-17.
[121] See e.g., Designer Profile: Philip Crangi, Style Caster (2009) http://stylecaster.com/ designer-profile-philip-crangi/ (“I see jewelry as small sculptural piece, so really for me, this is a sculptural pursuit.”).
[122] Metcalf, supra note 2.
[123] Cherry, supra note 1, at 105.
[124] Interview with Tanya Gruenberg, supra note 109.
[125] Id.
[126] Id.
[127] Current Obsession, The Gijs + Emmy Show, http://current-obsession.com/THE-GIJS-EMMY-SHOW (last visited March 19, 2016).
[128] Domus, Otto Künzli Jewellery, http://www.domusweb.it/en/news/2014/08/18/otto_ kunzli_jewellery.html (last visited March 19, 2016).
[130] Pinterest, https://www.pinterest.com/pin/468655904947185241/ (last visited May 19, 2015).
[131] Irene Neuwirth Jewelry, http://ireneneuwirth.com/ (last visited May 19, 2015).
[133] See e.g., Minimalissimo Magazine, http://minimalissimo.com/2009/08/humidifier/ (last visited May 19, 2015) (a minimalist humidifier); Architecture, Art & Design, http://www.architectureartdesigns.com/27-cool-furniture-ideas-inspired-by-pop-art/ (last visited May 19, 2015) (pop art chairs).
[134] See United States Copyright Office, Rules and Regulations for the Registration of Claims to Copyright 12(g) (1917) (listing “garments” among works that should not be registered).
[135] See Weindling Int’l v. Kobi Katz Inc., No. 00 Civ. 2022, 2000 WL 1458788, at *4 (S.D.N.Y. Sep. 29, 2000); Donald Bruce & Co. v. B. H. Multi Com Corp., 964 F. Supp. 265, 267 (N.D. Ill. 1997).
[136] Metcalf, supra note 2.
[137] Id.
[138] Art, Design & Visual Thinking: An Interactive Textbook, http://char.txa.cornell.edu/art/dress/dress.htm (last visited May 19, 2015).
[139] Metcalf, supra note 2.
[140] See Raustiala & Sprigman, supra note 3, at 1745–55.
[141] Id.
[142] English & Dormer, supra note 82, at 20 (“Ornament and decoration are still important objectives in jewelry design.”).
[143] Id. at 13.
[144] Id.
[145] Id. at 13-14.
[146] See House Report, supra note 28, at 54 (“In accordance with [Mazer] works of “applied art’ encompass all original pictorial, graphic, and sculptural works that are intended to be or have been embodied in useful articles, regardless of factors such as mass production, commercial exploitation, and the potential availability of design patent protection.”); see also Mazer v. Stein, 347 U.S. 201, 217-18 (1954) (We find nothing in the copyright statute to support the argument that the intended use or use in industry of an article eligible for copyright bars or invalidates its registration.”).
[147] Weindling Int’l v. Kobi Katz Inc., No. 00 Civ. 2022, 2000 WL 1458788 at *4 (S.D.N.Y. Sep. 29, 2000).
[148] Metcalf, supra note 2.
[149] Id.
[150] Id.
[151] 17 U.S.C. § 101 (defining a “useful article” as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information”).
[152] See supra Part I.B.2.
[153] American Gem Society, The Healing Power of Gemstones, http://www.americangem society.org/healing-gemstones (last visited May 19, 2015).
[155] Id.
[157] Cultural China, A Brief Introduction of Chinese Jade-Culture, http://arts.cultural-china.com/en/32Arts4663.html (last visited May 19, 2015).
[158] Jade Gallery Hawaii, The Power of Jade, http://www.jadegalleryhawaii.com/power-of-jade.htm (last visited Feb. 3, 2016).
[159] Gay Toys, Inc. v. Buddy L Corp., 703 F.2d 970, 973 (6th Cir. 1983). These categories are subject to patent protection, which requires “novelty,” a more demanding standard. See generally Joseph Scott Miller, Hoisting Originality, 31 Cardozo L. Rev. 451, 465-67 (2009).
[160] Metcalf, supra note 2.
[161] See supra Part I.B.2.
[162] See Metcalf, supra note 2. See also Kristen Booker, What Happens When the World Doesn’t Understand Your Hair, Marie Claire (Mar. 4, 2015, 4:23 PM), http://www.marieclaire.com/beauty/news/a13591/what-happens-when-the-world-doesnt-understand-your-hair/ (commenting on the status of a David Yurman ring and how NY subway goers find it unlikely for an African-American woman with curly hair in a full twist out to own a real one).
[163] Possibly with the exception of engagement rings, which can still serve as class identifiers. See The History of Jewelry: Why do we Wear Jewelry?, Say Why Do I (Sept. 3, 2011), http://www.saywhydoi.com/the-history-of-jewelry-why-do-we-wear-jewelry/.
[164] See id.
[165] Gay Toys, Inc. v. Buddy L Corp, 703 F.2d 970, 973 (6th Cir. 1983).
[166] Hick, supra note 60, at 53. “Alternatively, several theorists have argued that the function of art is to bring about the ‘aesthetic experience,’ to produce ‘aesthetic contemplation,’ or to yield ‘aesthetic satisfaction.” Id.
[167] Melissa M. Mathis, Function, Nonfunction, and Monumental Works of Architecture: An Interpretive Lens in Copyright Law, 22 Cardozo L. Rev. 595, 621 (2001).
[168] See Alice Sprintzen, Jewelry, Basic Techniques and Design, 6 (1980).
[169] Id.
[170] Id. at 74.
[171] Interview with Danielle Frankel Nemiroff, Co-Designer, Phillips House, in N.Y.C., N.Y. (Apr. 2. 2015).
[172] Id.
[173] No. 3 Hexagon Large Ring, The Shop by Phillips House, http://shop.phillipshouse.com/ collections/rings/products/yg-am-no-3-large-hex-ring (last visited May 19, 2015).
[174] Interview with Tanya Gruenberg, supra note 109. Studio Grun cuffs, however, are designed heavier to signify luxury. Id.
[175] King Crown Ring, Studio Grun, http://www.studiogrin.com/shop/companion-ring-turquoise (last visited Feb. 18, 2016).
[176] Interview with Tanya Gruenberg, supra note 109.
[177] See Maia Adams, Fine Jeweller Jennie Kwon, Adorn Jewellery Blog (May 9, 2014), http://www.adorn-london.com/profile/jennie-kwon/.
[178] Black Diamond Mint Deco Point Ring, Jennie Kwon Designs, http://jenniekwondesigns.com/products/black-diamond-mini-deco-point-ring (last visited May 19, 2015).
[179] See Brandir Int’l v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1148 (2d Cir. 1987).
[180] See id. at 1143, 1148.
[181] Metcalf, supra note 2.
[182] See English & Dormer, supra note 82, at 14.
[183] Id.
[184] Museum of Art & Design, Fashion Jewelry: The Collection of Barbara Berger, http://madmuseum.org/exhibition/fashion-jewelry (last visited May 19, 2015).
[185] The Metropolitan Museum of Art, Jewels by JAR, http://www.metmuseum.org/about-the-museum/press-room/exhibitions/2013/jewels-by-jar (last visited May 19, 2015).
[186] Id.
[187] Museum of Art & Design, Ralph Pucci, The Art of the Mannequin http://madmuseum.org/exhibition/ralph-pucci (last visited May 19, 2015); cf. Carol Barnhart v. Economy Cover Corp., 773 F.2d 411 (2d Cir. 1985) (holding a mannequin as a useful article).
[188] English & Dormer, supra note 82, at 20.
[189] Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 991 (2d Cir. 1980).
[190] Weindling Int’l v. Kobi Katz Inc., No. 00 Civ. 2022, 2000 WL 1458788 at *4 (S.D.N.Y. Sep. 29, 2000) (probably referring to Roth Greeting Cards v. United Card Co., 429 F.2d 1106 (9th Cir. 1970), which granted Copyright protection to greeting card that paired a simple, trite drawing on the outside with the phrase “I love you” on the inside.)
[191] 499 U.S. 340, 345 (1991). Although the Court acknowledged that “the requisite level of creativity is extremely low” and that “even a small amount will suffice,” it concluded that white-page telephone directories fail to meet the Copyright Act’s originality requirement. See id.
[192] Weindling Int’l, Corp., 2000 WL 1458788, at *4.
[193] See Metcalf, supra note 2.
[194] English & Dormer, supra note 82, at 12.
[195] See Metcalf, supra note 2.
[196] Cf. Carol Barnhart v. Economy Cover Corp., 773 F.2d 411 (2d Cir. 1985) (deciding a mannequin was a useful article because the function was driving the form). See also Brandir Int’l v. Cascade Pac. Lumber Co., 834 F.2d 1142 (2d Cir. 1987) (holding a bike rack uncopyrightable because form and function merged during the design process).

The Interview: John Koegel & Barton Beebe

The Interview: John Koegel & Barton Beebe

The Interview:

John Koegel & Barton Beebe

  Download a PDF version of this interview here.   John Koegel is an attorney and founder of the law firm The Koegel Group LLP. Since 1982 Mr. Koegel has specialized in Art Law, exclusively representing artists, galleries and others involved with visual art in most areas of the law. Mr. Koegel attended Fordham Law School and initially joined the law firm Rogers & Wells. After a two-year appointment as counsel to a national commission appointed by President Carter, Mr. Koegel served as General Counsel and Secretary at the Museum of Modern Art. Over the years Mr. Koegel has been actively involved in the development of intellectual property rights including the drafting of the Visual Arts Rights Act of 1990 and representing Jeff Koons in the landmark fair use cases Rogers v. Koons and Blanch v. Koons. Barton Beebe is the John M. Desmarais Professor of Intellectual Property Law at NYU School of Law.   * * *   BB: My first question is how did you become involved in the practice of art lawyering? JK: I began in 1973 when I first represented an artist in a pro-bono matter. I was at a large law firm Rogers & Wells, and I thought it was really gratifying to help a marvelously creative person. Then I got involved with the City Bar Association and with writing legislation. Going to the Museum of Modern Art (MoMA) as its general counsel in 1979 was the legal turning point for me that set me down the path that I have been on. After leaving MoMA, I simply started representing only artists and galleries. BB: And what is it like representing artists now? JK: It’s terrific. It’s the thing I missed the most at MoMA because I had very little involvement with artists. Even today when I represent a lot of other arts businesses—such as Artforum Magazine and other arts related businesses like that—it’s the artists that are always the heart and soul of what I do. BB: Is it possible to say the practice has changed over the years? I realize it’s a broad question, but are there thematic changes you noticed in general and in the business of art lawyering? JK: I would say that there is more understanding that law is involved. In 1982 when I began practicing art law full time, there were no contracts with galleries and very little other documentation, regardless of the size of the transaction. Since there is more money involved now, you see more paperwork and more concern on the part of collectors. There are more lawyers involved now which brings more contentiousness to everything. Since legal fees have not evolved to become a significant or reliable profit center for large law firms, you do not see those firms pursuing this business. So there are few that do. But even for those that do, I doubt it is at the heart of any of those firms. Art law still has more PR value to law firms than substantial economic value. BB: Do the artists have good business sense when they come to you? JK: There’s an amazing range, from those who are incredibly businesslike to those who are completely un-businesslike. So there really is a wide variety. And that’s one of the things that I find so interesting, you never know where the new artist client is going to be on that spectrum. BB: Are artists more attuned nowadays to intellectual property than they used to be? JK: Yes. BB: Do they know, for instance, copyright versus trademark or do they just sort of know that they’ve got rights? JK: Attuned was the word you used, and to me attuned means aware that copyright is an issue. Because copyright infringement claims have received a certain amount of visibility, artists are aware that copyright law is a potential problem. Art schools now have courses that cover copyright and a lot of outreach from various sources trying to educate every segment of the art community through numerous forums. The word is spreading out there to artists that this is something that intellectual property laws are something that they need to take into account. BB: Do you think that art is viewed almost more like a business now than it was before? JK: People become artists not because of the business angle; they mostly do it out of a passion. While it is hard to generalize among this incredibly disparate group, I think people become artists because that’s what they want to be and they feel like they have something to say. That said, it does feel as if business is more a part of being an artist than when I started in 1982. BB: Is it fair to say that as they become more and more successful, they might become more and more attuned, and also more and more sophisticated about intellectual property issues? JK: Mmm, no. As artists get more successful, they become more of a target. Maybe they also begin to spend a little bit more time on business matters and start becoming more businesslike. If you’re not making any money and all you’re doing is making art, business concerns are quite secondary. BB: Now a very broad sort of academic kind of question, which a lot of people always wonder about. Does copyright law, in your view, incentivize anything in the art world? JK: No. Absolutely not. But I’ll make a distinction. I do think that in the text world, for authors, copyright law is an incentive and especially regarding the all-important subject of derivative uses, speaking of that horrible term in the copyright law. BB: Why are the problems you see with derivative uses? JK: Copyright capitalists seek to use the definition of a derivative work to restrict fair use because the word “transformed” happens to be in the statutory definition. This unfortunate confluence of concepts has become problematic as transformation has taken on such a significant role in determining fair use. In my view, the reach of the derivative use right should extend only to adaptive uses that the author would have likely or plausibly pursued as part of the incentive to create and distribute for the public good. BB: You mentioned earlier that copyright is more important in a medium like writing. Can you elaborate? JK: Well, it’s a point that comes up whenever someone is advocating a resale royalty for visual art. There is a real difference between the way a book and music are distributed. The author receives a royalty based on multiple copies of the work. Multiple copies are rewarded by copyright. So, fundamentally, when you have a certain product with the potential for wide distribution through multiple copies, copyright allows the author to exploit the product commercially. This is different than a single work of art that is sold for a full retail purchase price and whoopee on to the next sale of another work. BB: And is it the practice that most visual artists will retain the copyright in the work even though they sell the physical version of it? JK: Absolutely. Absolutely. Although with commissioned work, the bigger the commissioning party, the more aggressive they are about owning the copyright. But you fight back, as hard as you possibly can. BB: Have you seen a change in the way artists approach IP law or the way that art lawyers approach IP law given the internet and things now being more accessible and easier to copy? JK: When I think about the internet I think about two things. First, I think about the sensitivity and fear on the part of someone who has created a work that once it is published digitally, it’s out there and there’s no going back. I don’t think that gets anybody to hold back because artists really want their work to be seen. It’s just a matter of being more aware of how, puff, there goes your work out to the world. The other side of the thought is how important the internet is as source material, and in turn why fair use is so important. BB: Has the role of an artist changed over the years as a result of the internet and this new access to material? JK: Role is the wrong word. I don’t think the role of the artist has changed. Certainly the subject matter and the direction has changed to some extent. But the endeavor is still a devotion to visual expression. Marcel Duchamp is a good example of a significant shift in direction based on new material followed by many artists after him, he did not produce any shift or change in the role of the artist. BB: But now artists are working with a lot more subject matter, like images from popular culture, that is already propertized. JK: That’s right. And copyright was also narrower way back when. Now, everything is subject to copyright protection, which is why fair use is so important, because copyright protection is so much easier to obtain. It is automatic, it is forever, and it keeps expanding. BB: So let’s talk about the case law then. What do you think of the Cariou v. Prince[1] outcome? JK: Great. Excellent. As you know, there are some problems. I worry a little bit about taking the law too far, causing future case outcomes to cut back. For example, the 7th Circuit recently said “We’re skeptical of Cariou’s approach, because asking exclusively whether something is ‘transformative’ not only replaces the [other fair-use factors] but also could override 106(2), which protects derivative works.”[2] When you go really far out taking away the four factors and turning the determination into one analysis, that may be going a little bit too far. I’m thrilled that the pendulum has moved in favor of fair use, but I worry. BB: You accept that the pendulum has shifted then from the old days of Rogers v. Koons?[3] JK: Are you kidding? Huge. And, it’s all due to Campbell.[4] Campbell was the change. BB: Campbell was 1994 and Rogers v. Koons came before it in 1992. JK: Absolutely. Campbell however was a parody case. Coincidentally one of the confusing things about Rogers v. Koons is the parody argument that was made and the response of the Court to this argument. Since Campbell, Souter’s analysis has been modified so that there is no longer any satire/parody distinction. BB: After Campbell, it did seem that people could read Campbell as establishing this pretty clear distinction that parody is okay and satire is not, so you’ve got to fit your work into the parody box. JK: That is what I tried to do in Rogers v. Koons. Unfortunately at that time I was dealing with precedent that was not very helpful. The two Supreme Court decisions were Sony[5] and Harper Row.[6] And they were bad cases for defending Jeff’s work, even though Sony ruled in favor of fair use. I was trying to get the judge to understand Jeff’s artistic expression as something that ought to be within the safe harbor that the parody decisions provided. Transformation was not a factor or consideration in Rogers. Transformation wasn’t part of the lexicon. That did not come until later, until Campbell. Judge Leval’s article[7] was June 1990, and so we didn’t have that article to cite to Judge Haight in the district court. We cited it to the Second Circuit on appeal. But it was only a law review article, even if the author was a judge. Souter made it important in Campbell. BB: And what about in Prince? JK: Prince was incredibly fortunate on his appeal to the Second Circuit. He got hammered in the district court. Possibly reacting to the lower court’s dismissiveness, the panel decided that it did not matter that Prince wasn’t commenting. Judge Parker almost entirely relied upon transformation as the decisive determination. BB: Judge Parker found, in essence, that the fact that Prince did not provide any explanation of what he intended by his work was not dispositive.[8] Prince doesn’t have a good story to tell about what he intended his work to mean, about how he might have intended to comment on Cariou’s work, but we don’t care about that. We’re just going to look at Prince’s work to assess transformativeness. JK: Yes. One of things that has always been important to me ever since Rogers is that Judge Cardamone said that I argued that a mere change in medium was sufficient to exempt a work from being infringing. This demonstrates the hazard of trying to get a nuance across sometimes. I was simply trying to say that changing the medium was significant especially for visual expression. This change made the sculpture a very different work. I’ve gone back and forth on this. Was that a good argument or bad idea. If you make that point too big a deal, you then run the risk of going in a bad direction, as opposed to just strictly discussing the four fair use factors as they then existed. But I thought it was important for the court to realize that these were very different expressions—and remember, this was pre-Campbell. Once you take a work from two dimensions and make it three-dimensional, you really change the expression of the subject. I often think about a sculpture I once saw that was derived from a famous photograph of a girl following the 1970 Kent State tragedy with her arms spread out over a dead student’s body. The sculpture was just the girl, a three-dimensional sculpture, Duane Hanson-like, and naked. It was an exact look-alike. I said to myself, I really need to have this example of what should be fair use. The artist took heart out of the photograph, but the sculpture is a completely different expression. And it’s an amazingly powerful statement. So changing medium should be significant, but not absolute. BB: Does the Prince approach then invite aesthetic discrimination by judges? JK: I hope not. I don’t think it requires differentiation on the basis of artistic merit. I don’t think judges are in a position to do that. Necessarily, decisions are made by human beings who have tastes, prejudices and experiences. That’s not going to change. But artistic merit should not be part of the assessment. Therefore it should not matter whether a judge has some artistic sensibility or not. Experts should not matter, although having said that, I’m going to almost take back my statement because I do think that experts can instruct on some of the messages and meanings in the work. In Rogers v. Koons we had affidavits of three leading experts in the contemporary art world. Kathy Halbreich, currently the Associate Director of the Museum of Modern Art, John Caldwell then a highly regarded expert at SF MoMA, and the eminent Robert Rosenblum from NYU. These were all leading people and they were all explaining the Koons sculpture to Judge Haight and to the Second Circuit. But poof, the judges could care less about what experts had to say. A decade later in In Blanch,[9] not a single expert was offered, just Jeff saying what his work was all about. BB: So the parody analysis could allow the court to avoid making a decision on whether the art is meritorious. The artist could voice his or her opinion. So if you have Jeff Koons talking about the transformative nature of the Blanch piece, then it allows the judge not to have to step in and make an aesthetic judgment or rely on an expert’s opinion. JK: Well the judge should be able to ascertain whether there is really a new message, a new meaning, a purpose to it and hopefully without that silly business about explaining why the artist had to pick this particular source. That is one of the worst distractions that you get in these cases: the plaintiff arguing “you could have picked something else; you didn’t have to pick this one.” That said, if the artist can provide some insight, it does help the cause. Even though under Prince v. Cariou it doesn’t matter anymore, if I were advising someone, and notwithstanding Prince v. Cariou, I would say it is worthwhile to explain your work, somewhat. Especially since some of the courts criticize the artist for an ad hoc explanation. For example in Morris v. Guetta[10] a case involving a photograph of Sid Vicious, the court rejected the artist’s explanation saying “you’re just making this up now.” So even if the artist slips in some contemporaneous explanation as simple as “I thought I had to say something about Mickey Mouse because…”, it could help. I wish the artist did not have to offer any justifications but it can help. BB: We have the case in trademark law in which the artist Tom Forsythe[11] explained exactly why we had chosen to photograph the Barbie doll. It was perfect. JK: Great case, great outcome. Best part was the attorney’s fees portion,[12] which I wish would still happen more often so that there would be fewer lawsuits. BB: Do you think there should be more fee shifting in copyright and trademark litigation? JK: I think that prevailing defendants should receive an award of attorney’s fees more often as a disincentive to the litigation of meritless claims, especially those lacking any injury. BB: What if the plaintiff is a small time figure though, and is dissuaded from suing a big artist because the plaintiff’s worried about fee shifting. JK: Well that’s the American system and why we have it the way we have it. I think that the way it exists in copyright law is just right. In other words, you have to have a prior registration to get statutory damages and attorney’s fees, which I believe is just right because it means you have to do something to indicate in advance that the work you have created has value to you regarding potential alternative uses. It’s not automatic. Then if you have done that simple, inexpensive act, the system will reward you. And on the other hand, if you pursue a bogus case, you get hammered. And since it was a company like Mattel that brought the lawsuit, it was especially gratifying that it was severely punished for doing so. In Blanch we made a motion for attorney’s fees, but we abandoned it because we really didn’t think the judge was going to punish the plaintiff. But a huge award of attorney’s fees would have been perfect in Fairey v. The Associated Press.[13] BB: How? JK: AP should have lost big time in that case. They deserved to solely lose on the merits and to have had attorney’s fees assessed against them. BB: A lot of people didn’t sympathize with Fairey because he lied to the court. JK: That’s how he was forced to abandon his defense of the case, and it did strip away much of the sympathy for him. But take that mistake out of it, Fairey’s use was fair use pure and simple. And the fact that AP wasn’t even the photographer was an embarrassment to the Associated Press in my opinion. The case also had another part of fair use that I have been very, very keen on seeing develop, but has fallen by the somewhat wayside. That is the idea of copyright being thin or fat. I strongly believe in the importance of that assessment. The copyright in the Garcia photograph was as thin as it gets. BB: Low creativity? JK: Absolutely. And especially when Fairey has painted it over and put a message on it. I think that the second fair use factor in the Fairey case should have weighed strongly in favor of Fairey. On the other hand, I believe that highly creative uses should have more protection. BB: The harder the artist works, the more sweat of the brow she puts into something, the wider the scope of protection she should get? JK: Absolutely, in terms of creativity. BB: But does that work against artists who engage in very minimalist or conceptual art? JK: I don’t see why. BB: The judge looks at a blank white canvas and says, “What’s this”? JK: Well, that’s going to be a problem with judges and art generally. Judges can and will understandably look at art and like what they see or dislike what they see. I don’t think that cuts against my point about creativity. BB: Back to Cariou v. Prince. Judge Parker for the majority writes that we should use the reasonable observer standard to decide whether the defendant has transformed the plaintiff’s work. Judge Wallace in his concurrence/dissent, applying the Bleistein[14] language, objects, asking, “who are we to say twenty-five of these are transformative but five of these have to be sent back?” JK: Judge Wallace said that this factual question ought to be decided by the trier of fact in the first instance, under proper guidelines. I think he was being a purist about it. I believe that the majority was trying to get the case settled, which is why they split it the way they did. Cut the case down to five works and let them fight about those five. BB: A criticism of the Prince majority opinion is that it overemphasized the idea that the defendant must have “usurped” the market for the plaintiff’s work. In the court’s analysis of the four-factor test, the court referred to the invitation list for one of Prince’s art openings to determine the effect on the market. The court was basically saying to Cariou: “Prince is an art star. You’re little people. Who do you think you are to suggest that you are in the same market as this guy?” JK: That was bad. That was bad. I was really sorry to read that, and it taints the opinion unfortunately. That should be meaningless. While they did use this fact from the record to indicate or observe that there were two different markets, because of the references to those celebrities the important point becomes diminished. BB: To shift gears, what do you think of the four-factor fair use test? Is it working? JK: I think the factors are just fine. While [the third factor’s] “amount and substantiality” never really factors in much, it’s good to have it because there could be a total taking and that would allow the court to heavily weigh that one fact. And the thought of Congress fritzing around with § 107 is a nightmare. I also believe the determination was lopsided when the fourth factor was said to be the most important consideration. BB: The fourth factor, involving the effect of the defendant’s use on the market for the plaintiff’s work, is often criticized for being circular. To the extent that the defendant uses the plaintiff’s work in some way, doesn’t that imply that the plaintiff’s work had value to the defendant for which the plaintiff could have charged a licensing fee? JK: No, although the circularity is always there and frequently is problematic. I do not believe that the source work has economic value simply because an artist sees it as being useable to make the statement that the artist wants to make. That’s why the “you should have picked another source” argument should be meaningless. You want to give a broad latitude to artists to make new works. Another very good feature of the decision in Cariou v. Prince is its focus on the actual market, not speculative markets. What are the actual markets that are being affected? And the answer in Cariou was none, and the answer in Rodgers was none, and the answer in Blanch was none. In most art cases the answer is none because there is no licensing market for what they call an art reference. If you look at some market instruction books even those published by the likes of the ASMP,[15] the fee for an “art reference” is two hundred dollars. And these organizations are trying to beef up licensing fees. The market is not a big one. Nor should it be. BB: The Visual Artists Rights Act:[16] Does it make any difference? Does it do any good? JK: Well it is a good law. But as for making a difference, not a huge one. I am glad that it’s there. It’s a matter of respect. It so happens, that it comes into play largely in the most problematic areas: with regard to site-specific sculpture. And it so happens, that site-specific sculpture was intentionally left out of that new law exactly because it was too difficult or problematic to resolve. One particular situation was added, work incorporated into a building, but that is it. So the law does not reach or resolve the important matter of site-specific artworks. BB: What’s your view of the resale royalty right? JK: Well fortunately it doesn’t exist right now at least since a California court declared it unconstitutional. It’s on appeal so we’ll see. I’ve become opposed to it just because of the negative impact on the relationship between artists and collectors, and the fact that I do not believe it really has the justification that people posit. I think there is a fundamental difference between the way an artwork is sold and the way books or music are sold. With a single work of art, the purchaser pays a lot for it. She takes a risk. If it goes down, she loses her money. The artist doesn’t compensate the collector for that. If the artist becomes more successful, the artist generally makes more money because of that success. To enforce this really aggressive and complicated law into the marketplace doesn’t make sense. And it is not needed. It’s not an incentive to create. So it’s just another right. It is another manifestation of the property rights mantra that drives the advocates who are on the other side of fair use. Copyright not a natural right. More and more cases nowadays are talking about the purpose of copyright, “to promote the progress of science and useful arts,” and this is most welcome. Copyright rights exist primarily to benefit the public, not to prevent new work.   * * *  
[1] Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013).
[2] Kienitz v. Sconnie Nation LLC, 766 F.3d 756, 758 (7th Cir. 2014).
[3] Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992).
[4] Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1993).
[5] Sony Corp. of America v. Universal City Studios, 464 U.S. 417 (1984).
[6] Harper & Row v. Nation Enterprises, 471 U.S. 539 (1985).
[7] Pierre N. Leval, Towards a Fair Use Standard, 103 Harv. L. Rev. 1105 (1990).
[8] Prince, 714 F.3d at 707.
[9] Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006).
[10] Morris v. Guette, No. LA CV 12-00684 JAK RZX, 2013 WL 440127 (C.D. Cal. Feb. 4, 2013).
[11] Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003).
[12] Id. at 816.
[13] Fairey v. The Associated Press, No. 09-CV-01123 (AKH) (S.D.N.Y. filed Feb. 9, 2009).
[14] Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903).
[15] American Society of Media Photographer. Available at: http://asmp.org.
[16] Visual Artist Rights Act, 17 U.S.C. §106A.