Friday's blog dealt with the ordinary observer test; today's with the more discerning observer test. The more discerning observer test is employed where there is present in both parties' (but especially plaintiff's) a considerable amount of public domain material. The ordinary observer test is inappropriate in such a circumstance because unless the public domain elements are disregarded in the ultimate substantial similarity determination, that analysis will be skewered; it will result in the trier of fact finding similarities resulting from material that plaintiff does not have an ownership interest in. And from a policy perspective, failure to exclude substantial amounts of public domain material will also result in fewer derivative works based on that material.
There is a countervailing risk, though, and that is dissection of a work, such a work of visual art, where its originality (even when based on public domain elements) is based on the interrelationship between the constituent elements. When those elements are factored out and then separately compared or left out entirely (as pd), there is a risk that the trier of fact will overlook the creativity in the whole. (This concern with the whole is what led to the earlier "total concept and feel" test). Yet, where the unprotectible elements have a significant impact on the overall total concept and feel of the parties' work, it is wrong to ignore that impact: a thin copyright can, thereby, become impermissibly fat based on pd elements.
The Second Circuit tackled these problems in Folio Impressions, Inc. v. Byer Calif., 937 F.2d 759 (2d Cir. 1991) and directed the trier of fact to only consider the protectible elements, after factoring out the unprotectible elements. In Knitwaves, Inc. v. Lollytogs, Ltd., 71 F.3d 996 (2d Cir. 1995), however, the court backtracked some, describing Folio Impressions as involving "rather specialized facts," and expressing a concern that if one dissected works of visual art too far one, would be forced to say "there can be no originality in a painting because all colors of paint have been used somewhere in the past." This statement was hyperbole and as such not really helpful.
The solution may be that while the more discerning observer test factors out unprotectible elements, a total concept and feel analysis is still employed, but using the protectible elements in the parties' works.
The principles are not really that difficult to articulate (I accept others may have different ways of articulating them), but they are very hard to apply in practice. The Second Circuit's Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127 (2d Cir. 2003) opinion is a good example. (I played a very minor role on appeal for defendant). Plaintiff took substantial public domain elements from diverse sources and combined those elements in an unusual way, modified them, and added a few new elements. District Judge William Pauley found the work original although with a very thin copyright. (The court of appeals seems to have taken an even dimmer view on the scope of copyright issue than did Judge Pauley.) Defendant took the same public domain sources, modified them yet differently, and added new material too. Judge Pauley granted summary judgment of no infringement; the court of appeals reversed, granting summary judgment to plaintiff.
A correct analysis in that case entailed the following steps: (1) identification of the public domain elements in plaintiff's work; (2) identification of plaintiff's new elements; (3) identification of the public domain elements in defendant's work; (4) identification of those elements in defendant's work copied from plaintiff; (5) identification of the new elements added by defendant. In the end, the substantial similarity analysis, using the more discerning observer test, would have to exclude the pd material in both parties' works and would also have to exclude the new elements added by defendant. Infringement could only be found if the new elements added by plaintiff (including the original modifications of the pd material) constituted a material part of defendant's work.
In Tufenkian, I believe the total concept and feel of the parties' works (limited to only the protectible elements) was not materially similar. I further believe the court of appeals ignored (as Judge Pauley had not) the new elements added by defendant and that the circuit significantly downplayed the overwhelming impact of the pd elements. Both parties' works were exquisite high-end carpets, and both should have been left to compete in the marketplace, with plaintiff's thin copyright protecting him only against verbatim or non-verbatim copying, neither of which had occurred in that particular dispute.