Friday, June 17, 2005

What's an "Ordinary" Observer?

A number of areas of law have, of necessity, hypothetical persons whose purpose is to provide a benchmark against which particular conduct is measured. In copyright infringement analysis, there is the ordinary observer (or listener). The ordinary observer is the benchmark against which the presence or absence of substantial similarity is determined. The origins of the ordinary observer test may lie in an 1822 English decision, West v. Francis, 5 B&A 743, quoted by White-Smith Publishing Co. v. Apollo Co., 209 U.S. 1, 17 (1908): "A copy is that which comes so near to the original as to give every person seeing it the idea created by the original." "Every person" couldn't have meant literally every person, but presumably referred to a hypothetical person. By the way, unlike trademark infringement, in copyright infringement cases, survey evidence is not permitted.

In Arnstein v. Porter, 154 F.2d 464, 472-473 (2d Cir. 1946), Judge Frank offered a rare rationale for the ordinary listener test:

"Whether (if he copied) defendant unlawfully appropriated presents, too, an issue of fact. The proper criterion on that issue is not an analytic or other comparison of the respective musical compositions as they appear on paper or in the judgment of trained musicians. The plaintiff's legally protected interest is not, as such, his reputation as a musician but his interest in the potential financial returns from his compositions which derive from the lay public's approbation of his efforts. The question, therefore, is 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."

In other words, the inquiry is whether defendant has captured some of plaintiff's market, as determined by those who comprise the market. This is not the same as the fourth fair use factor, but instead is a way of determining the relevant benchmark. But the market may not always be the lay public, as in Arnstein; it may be more specialized. In that case, the ordinary observer test gives way to a more specialized observer. This is seen in Dawson v. Hinshaw, 905 F.2d 731 (4th Cir. 1990), where plaintiff's gospel music arrangements were sold only in sheet music form to choral directors. Those choral directors were, therefore, the relevant market. In other cases, the market might be children, deemed to be a "less" discerning audience.

A very recent look at the ordinary listener test is Johnson v. Gordon, 2005 U.S. App. LEXIS 9902, 74 USPQ2d 1705 (1st Cir. May 31, 2005), a music infringement case. While in most respects Johnson is straightforward, one aspect is disturbing, its reliance on "experts" for the ultimate question of substantial similarity. That was error. Experts, if permitted at all in non-computer program infringement cases (and Learned Hand thought they should be banned altogether, as do some sitting appellate judges I know) should be limited to testifying about whether defendant copied or not. By letting experts opine about substantial similarity not only are those experts testifying about the ultimate fact question, they are subverting the entire basis for the ordinary observer test.

[On Monday the "more discerning" observer test].

7 comments:

37383938393839383938383 said...

When an expert stands-in for an ordinary observer, that is like Congressman standing-in for a state legislator.

Tom said...

Experts. . . should be limited to testifying about whether defendant copied or not.

That's a little ambagious, and maybe that because the test for infringement uses the word copying so loosely. I think the prevailing rule is that experts can testify to the extrinsic prong of the test or what's termed "actual copying." But, not to the intrinsic test, actionable copying. Forgive me if I have butchered that.

I can see an argument that the roles should be reversed. The lay person is capable of telling whether A is copied from B, but the Expert is able to discern whether A has the same "aesthetic appeal" as B, which is necessary for a finding of infringement.

Of course, it's up to the jury to decided whether they believe the expert's opinions.

Thoughts?

Timothy Phillips said...

When two works are both based on the same publici juris original, the experts who testify to the fact of copying would merely be stating the obvious. Of course the defendant copied. He copied matter that was in the public domain, whether from the plaintiff's work or from some other source. The plaintiff himself earlier copied the same material from somewhere. We have copyright and patent laws precisely so that each generation will have a larger public domain than the previous generation, from which it can copy.

A second-comer infringes only if he copies matter to which the first-comer's copyright extends (and not necessarily even then, if the copying is fair use or de-minimis). When the resemblance between two works is due chiefly to reliance on the same publici juris matter, might not the "ordinary observers" be distracted into a false conclusion of infringement ? A related question: does anyone know how juries respond to expert testimony in copyright cases ? Do they distinguish praiseworthy copying from actionable copying ? Or is "copying" one and the same with "infringement" for some juries ? Discussions of ordinary observers seem seldom to address these questions.

Tom said...

When the resemblance between two works is due chiefly to reliance on the same publici juris matter, might not the "ordinary observers" be distracted into a false conclusion of infringement ?

1) Thus the birth of the "more discerning observer" test.

2) I think it's very difficult to determine what is and is not "public domain" and getting to experts means getting one expert to say it is, and one to say it isn't.

Most, if not all works, are going to have a blend of originality and public domain stuff. And, it's not easy to tell where one begins and one ends.

I think this quote puts it in a good context:

"Suppose defendant copied plaintiff's abstract painting composed entirely of geometric forms arranged in an original pattern. The alleged infringer could argue that each expressive element (i.e., the geometric forms) is unprotectible under the functionality, merger, scenes a faire, and unoriginality theories and, thus, all elements should be excluded prior to the substantial similarity of expression analysis. Then, there would be nothing left for purposes of determining substantial similarity of expression." Softel, Inc. v. Dragon Med. & Sci. Communs., 118 F.3d 955, 964 (2d Cir. 1997)

William Patry said...

Tom: Yeah, I know people use "copying" in both the sense of copying versus independent creation (the first stage of the Arnstein test), and in the sense of whether there was a material appropriation of protectible expression (the second stage of the Arnstein test). I was using it as Arnstein did and saying experts should be used, if at all, only at the second.

Timothy Phillips said...

Tom wrote:
I think it's very difficult to determine what is and is not "public domain"

To the extent that that's true, the law needs to be fixed to make it easier to identify where the public is required to exercise its self-imposed restraint, and where it is permitted to exercise its full rights. But that's a side-issue to the Professor's post.

Tom also wrote:

Most, if not all works, are going to have a blend of originality and public domain stuff. And, it's not easy to tell where one begins and one ends.

I call this the "derivative work deconvolution problem".

When I complained that this question had received less attention than I would like, I didn't mean to imply that it never gets attention. Some courts and commentators do, indeed, deal with mixtures of publici juris and original matter. For example Gemmy v. Chrisha, (blow-up Santas and Jack-o-Lanterns) the court wrote "The stereotypical features of a Santa, Pumpkin and Snowman are not protected by copyright as a matter of law" (72 USPQ 2d 1409, at 1414), finding, that there was, indeed, nothing left for determining substantial similarity. In Tufenkian v. Einstein Moomjy the court noted (as Tom did in his reply to my comment) that "where there is a thin copyright due to plaintiff's incorporation of a substantial amount of public domain elements, the more discerning observer test is appropriate" (63 USPQ 2d 1214, at 1221). But I still want to see even more discussions like this one at the Columbia Law web site:

http://www.ccnmtl.columbia.edu/projects/law/library/notsoft.html

which sets up a hypothetical dispute between Franz Joseph Haydn and Ludwig van Beethoven.

William Patry said...

Timothy: As I mentioned, Monday's posting will be on the more discerning observer test, and that will reflect the problems of infringement when the parties'works both contain pd material. The Second Circuit's Tufenkian case is a prime example