The term “substantially similar” causes plenty of confusion in copyright infringement cases. Beyond the amorphous nature of the term, itself, courts use this language with subtly different meanings when evaluating the separate prongs of the test for infringement: (1) copying, and (2) misappropriation. It’s not enough to merely copy; to be liable for infringement, the defendant must take elements of a work that are original. Copying can be demonstrated by circumstantial evidence of access to the plaintiff’s work and substantial similarity of the defendant’s work, calling for only a probative level of similarity to support a factual conclusion of copying. However, the second prong, misappropriation, requires a qualitative analysis of the plaintiff’s work to determine the scope of copyright protection, which in turn yields a sliding, legal standard for infringement, i.e., whether the accused work is similar in terms of copying a substantial amount of protectable expression. The Ninth Circuit recently took that to the extreme in Sophia & Chloe v. Brighton Collectibles, a case involving jewelry as a sculptural work. Because Sophia & Chloe’s “Buddha Kiss” earrings were deemed to be so minimally original, and thus entitled to narrow copyright protection, the panel ruled that the proper standard for the misappropriation prong was “virtually identical” rather than “substantial similarity,” thereby re-invigorating a legal test most often used in the past for obscure cases involving multiple listing services and other content of limited creativity. In copyright litigation, the various meanings of substantially similar are definitely not virtually identical.
Copyright Standards of “Substantially Similar” and “Virtually Identical”Written by John Malloy, III
As the Partner overseeing the Firm’s Intellectual Property Litigation and International Tradmark Portfolio groups, Mr. Malloy is Board Certified as an Expert in Intellectual Property Law and concentrates his practice on Trial and Appellate Litigation. He also focuses on International Portfolio Management, filing trademark applications and directing enforcement proceedings around the globe. Mr. Malloy taught for nearly a decade as an Adjunct Professor of Intellectual Property Law at St. Thomas University Law School. He earned his bachelor’s degree from Vanderbilt University and his law degree from the University of Miami. During his tenure as the Chair of the International Trademark Association’s Model State Trademark Bill from 2003 to 2007, Mr. Malloy oversaw the passage of trademark legislation in a half dozen states and personally spear-headed the enactment of Florida’s present trademark statute, which became effective in 2007. In 2009 Mr. Malloy was named the Chairman of the DCBA Intellectual Property Committee.