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The audience in intellectual property infringement.

Every intellectual property ("IP") right has its own definition of infringement. In this Article, we suggest that this diversity of legal rules is largely traceable to differences in the audience in IP cases. Patent, trademark, copyright, and design patent each focus on a different person as the fulcrum for evaluating IP infringement. That patent law, for example, focuses on an expert audience while trademark looks to a consumer audience explains many of the differences in how patent and trademark cases are decided. Expert audiences are likely to evaluate infringement based on the technical similarity between the plaintiffs and defendant's works. Consumers, by contrast, are likely to pay more attention to market substitution and less attention to how things work under the hood. Understanding the different audiences in IP infringement is critical to understanding how the IP regimes variously define infringement.

The focus on audience has normative as well as descriptive implications. Neither patent law, with its focus on experts and technical similarity, nor trademark law, with its market-based consumer focus, has it entirely correct. Rather, we suggest that as a general matter, infringement of an IP right should require both technical similarity and market substitution. An ideal IP regime should care about a defendant's conduct only if that conduct actually causes injury to the plaintiffs market and its work is sufficiently like the plaintiffs that it is reasonable to give the plaintiff control over that work. Assessing infringement through the expert's eyes ensures that the law prevents closely related works in the field while permitting sufficiently different contributions. The consumer vantage point ensures that we protect IP owners only when they have been harmed in the marketplace.

IP owners who want to show infringement should have to demonstrate both that the defendant's work is technically similar to their own from the expert's vantage point and that the defendant's use causes the plaintiff harm in the marketplace. Copyright law, which looks to both experts and consumers at various points in the infringement analysis, is on the right track.
TABLE OF CONTENTS

INTRODUCTION
I.   AUDIENCES IN IP CASES
     A. Trademark Law
     B. Patent Law
     C. Copyright Law
     D. Design Patent Law
II.  POSSIBLE INFRINGEMENT AUDIENCES
     A. Consumer
     B. Expert
     C. Ordinary Reasonable Person
III. THE CONSUMER AND THE EXPERT AS TOUCHSTONES
     A. Experts and Technical Similarity
     B. Consumers and Market Substitution
     C. Testing Both Technical Similarity and Market
        Substitution
        1. Bringing Market Substitution to Patent Law
        2. Mandating Similarity in Trademark Law
        3. Copyright's Hybrid
        4. A Missed Opportunity: Design Patents
CONCLUSION


INTRODUCTION

At the heart of any IP case is the problem of deciding whether the defendant has infringed on the plaintiff's right. A principal question in IP infringement disputes is whether the defendant's product (or work, or brand, or idea) is too similar in some respect to the plaintiff's.

But who decides whether the defendant's product is too similar to the plaintiff s? Put another way, who is the audience in IP infringement? Is it the customer of the parties' products that must find the products too similar? Or perhaps an expert on the products' subject matter? Or instead an ordinary reasonable person? This choice can easily affect the judgment on similarity. For example, a chemist might think that two drugs for providing pain relief are not sufficiently similar because of their different chemical composition or because they trigger a different pathway in the human body. A customer, by contrast, might find the two drugs highly similar because they provide comparable relief without side effects. An ordinary reasonable person might find insufficient similarity between two audiovisual works that are both aimed at children and depict fantasylands filled with fanciful creatures because a principal character in one work wears a "cummerbund," while a major character in the other wears a "diplomat's sash." By contrast, the typical child encountering the works would regard them as substantially similar. (1) A musicologist might ignore differences in musical style, instead focusing on the underlying composition, in determining whether a pop song is similar to a calypso song. A consumer would do just the opposite. (2) Consumers may focus on descriptive similarities in brand names or functional aspects of packaging that producers do not intend to indicate the product's source. (3)

As these examples illustrate, the choice of audience to decide similarity matters because it affects whether infringement is found, which in turn influences the sorts of works that third parties are willing to produce without risking liability. Choice of audience thus collectively shapes the available body of works, products, and brands. This critical link between the audience for IP infringement and the types of works the law permits underscores the importance of the optimal choice of audience. (4) But surprisingly, the question of the audience for IP infringement has largely been ignored in the academic literature (5) and undertheorized in judicial decisions. (6)

Curiously, each IP regime offers a different answer to the audience question. Patent law generally seeks the opinion of a hypothetical expert, the person having ordinary skill in the art ("PHOSITA"). Trademark law takes the opposite approach, principally asking what consumers in the real world think. Copyright law seems to employ aspects of each approach, switching off between seeking the perspective of experts, consumers, and ordinary observers. And design patent law traditionally applied a hybrid approach but has recently switched to a consumer-focused inquiry. (7)

As we explain in this Article, the current hodgepodge of audiences in IP infringement cases reflects a lack of deliberation over what ought to be defined as infringement. Each regime's choice of audience drives its definition of infringement, which in turn determines how well the IP regime achieves its goals. Take patent law's focus on experts. Experts are likely to find infringement when two items are technically similar, whether or not consumers would view them as market substitutes. As a result, patent law tends to find infringement whenever two products are sufficiently similar technically, without regard to the market relationship between the products. Trademark and design patent law, by contrast, focus on the consumer audience. Consumers are likely to find similarity when two works are market substitutes; they don't usually care what is under the hood. So trademark and design patent law tend to find infringement when two products satisfy the same market need or desire, whether or not that market substitution results from the technical similarity of the protected product's novel attributes. Copyright law takes a hybrid approach, asking some questions from the perspective of an expert and others from the perspective of either a consumer or a reasonable "ordinary observer." As a result, copyright sometimes seems to pay attention to technical similarity and other times to focus on market substitution.

The first goal of our Article is descriptive. We think that a focus on the audience in IP infringement--and a recognition that each IP regime has a different audience in mind--helps explain why four legal regimes with related goals (8) have nonetheless chosen such different means of testing infringement.

But our focus on the audience has a normative payoff as well: it causes us to ask in a more general way what IP laws should define as infringement. We think copyright's hybrid model hints at the right approach. In this Article, we argue that each of the IP regimes--patent, copyright, trademark, and design patent--should find infringement only when the defendant's product is too similar to the plaintiff's in the eyes of both experts and consumers, not just one or the other. Put another way, infringement in an ideal IP regime grounded in utilitarianism should require proof of both sufficient technical similarity and market substitution. Market substitution is important because a use that does not interfere with the plaintiff's market in some way generally does no relevant harm. (9) Technical similarity is also important because not all acts that interfere with a plaintiff's market are problematic. A defendant who enters the market with a different, better product, for instance, may erode the market for the plaintiff's product, but the law should not prohibit that competition.

An IP regime's choice of audience is bound up with that regime's emphasis on technical similarity, market substitution, or both. The expert-as-audience approach ensures that we find infringement only when two works are sufficiently similar in their protectable elements. An audience of experts familiar with the subject matter is likely to understand the technical and historical constraints--including those of the particular genre--that led to similarities and to find improper appropriation only when the works bear sufficient technical similarity to each other despite those constraints. (10) Assessing infringement through the expert's eyes thus ensures that the law protects creators only from sufficiently close imitations.

The consumer matters too, because sometimes similarity of expression occurs in such disparate contexts that the two works are not market substitutes at all. Consumers are more likely than domain experts to be sensitive to whether the defendant's work is substituting for the plaintiff's in the marketplace. This consumer vantage point matters because IP laws--with their instrumental incentives--are generally concerned with protecting IP owners only when they have been harmed in the marketplace with regard to their underlying intellectual property. (11)

Many of the problems with modern IP law can be traced to finding infringement when only one form of similarity--expert based or consumer based--is present. Our framework has the potential to reconceive the idea of IP infringement in a way that solves a number of the problems with each regime. For instance, importing market-substitution considerations into patent law can help avoid findings of minor infringements that have major consequences. At the same time, relying on experts to assess trademarks can prevent trademark-owner overreaching and the problem of "drift" in consumer perceptions. (12)

In Part I, we describe the different ways trademark, patent, copyright, and design patent law define the relevant audience. In Part II, we elaborate on and analyze the possible types of infringement audiences in IP law: the consumer, the expert, and the ordinary reasonable person. We also touch on how the audience choice has second-order effects: the choice is intimately bound up with the question of who the fact finder should be. In Part III, we show how the choice of audience relates to the goals of IP law. We argue that IP infringement should require similarity from both the expert's and the consumer's point of view. Employing this framework, we evaluate the success of trademark, patent, copyright, and design patent laws in matching goal to audience. We conclude with a few thoughts on how our hybrid approach may be implemented in practice.

I. AUDIENCES IN IP CASES

The major forms of IP--trademark, patent, copyright, and design patent--look different, but they do have at least one objective in common: they are generally concerned with the instrumental goal of providing individuals with an incentive to create something intangible that might otherwise be easily appropriated. (13)

Because IP laws protect intangible concepts, communicating what the IP right covers is more difficult than articulating the scope of property rights for tangible items, whose bounds are easier to describe and depict. (14) Moreover, because IP laws protect things that are typically new and relatively unknown, the vocabulary available to communicate what these items are is often inadequate. (15) Complicating the definition of the IP right is the fact that some forms of IP law, such as copyright, do not require that the creator even attempt to articulate the bounds or characteristics of her creation; legal disputes in these cases involve holistically comparing the plaintiff's and defendant's creations. (16) The difficulty (and sometimes, the lack of necessity) of communicating precisely what is protected complicates the resolution of a claim for IP infringement because such a claim must always involve a determination of whether the allegedly infringing item is equivalent or too similar to the plaintiff's protected item.

Yet there is another underexplored layer of complexity in determining IP infringement. If we are to base infringement on similarity--and all IP regimes do--we must refer to some audience to determine whether the protected and allegedly infringing items are too similar. In other words, even if we know what we are comparing the defendant's product to, in order to determine infringement we must also know who serves as the reference point for that comparison.

In this Part, we consider trademark, patent, copyright, and design patent law in turn, paying particular attention to the audience each form uses to assess similarity for infringement. We find that trademark law focuses primarily on the consumer as the audience for IP infringement. By contrast, patent law focuses primarily on a different audience: the expert. Both design patent and copyright law are more mixed. At various points, each focuses on the consumer, the expert, and the ordinary reasonable observer.

A. Trademark Law

Trademark law protects brands, which are manifested in words, symbols, logos, and sometimes a product's design or packaging. (17) Brands are protectable under federal law so long as they are "used by a person" in commerce in a distinctive way "to identify and distinguish his or her goods [or services] ... from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." (18) Protection lasts as long as the trademark continues to be used in commerce and has not been abandoned. (19)

Trademark law focuses on fair competition. (20) Trademark theory suggests that trademarks bolster trade by "identify[ing] a product as satisfactory and thereby... stimulating] further purchases by the consuming public." (21) According to this theory, producers of trademarked goods will have the incentive to invest in the goods' quality because consumers will use the trademark as a way to identify a desirable good only if their past experiences reliably forecast the good's worth. (22) Protecting against trademark infringement, from this vantage point, thus prevents others from trading on the goodwill that the trademark represents and helps consumers be certain that they can easily find the products they seek. (23) In all of these ways, trademarks reduce consumers' search costs--the expenditures they must make to discern important qualities of goods or services--which are frequently hard to measure. (24)

Trademarks, then, ought to promote trade and enable consumer decisionmaking. To achieve this goal, trademark law guards against using a too similar mark that causes consumer confusion about the origins of goods or services. (25)

In light of trademark's general focus on consumers in the marketplace, (26) it is not surprising that the law focuses on consumers--typically real rather than hypothetical consumers--as its audience for infringement. There is a real customer base for branded products, and because the goal of trademarks is to protect customers from fraud, it is intuitive to focus on how those consumers will actually react. The basic test for trademark infringement is a multifactor test measuring the likelihood of confusion between the goods at issue. It asks whether real consumers are actually confused and also looks to other factors, like similarity of the marks, proximity of the goods, and the defendant's intent in selecting the mark. (27) Some of these factors, like evidence of actual confusion, rely on what the consumer thinks directly. Other factors, such as proximity of the goods or similarity of the marks, appear to demand the vantage point of the consumer, but courts sometimes rely on experts to tell us what consumers think. (28) Yet other factors, notably intent, focus on the defendant's behavior rather than on the consumer's reaction. Nonetheless, overall, the consumer vantage point is the touchstone of trademark infringement analysis. (29)

Likelihood of confusion is a question of fact that is generally presented to the jury. (30) Trademark cases sometimes feature consumer surveys and evidence of actual consumer confusion, thereby allowing the jury to obtain evidence of how actual consumers in the market have reacted to the defendant's brand in relation to the plaintiff s. (31) In many cases, however, the jury itself might stand in for the consumer. (32) Jurors may have experience with the brands in question or at least may have encountered sufficiently similar issues while shopping to allow them to make a realistic assessment of whether they would be confused. And while they are not instructed to do so, it may be inevitable that a juror with her own view from experience about whether two brands are confusingly similar will be influenced by that view. (33)

It is important to recognize, however, that there are systematic ways in which the jury's perspective is likely to diverge from that of actual consumers. Actual consumers may vary in the time they devote to making a purchasing decision depending on the nature of the product. Jurors, by contrast, will focus sustained attention on differences between the plaintiff's and defendant's brands over the course of a trial, and they may accordingly be more likely to pick up on differences between those brands than would a consumer, who may give the product only a casual look on a crowded store shelf. Thus, to follow the prescribed test of looking to the views of actual consumers in the marketplace, jurors need to channel the real consumer audience by disregarding their own considered views in favor of an assessment of what their (or another's) first instinct would have been.

Furthermore, while many trademark cases involve products sold to the general consuming public, others involve specialized audiences, such as computer makers who buy semiconductor chips. (34) In the latter cases, likelihood of confusion among those consumers depends critically on jurors applying the perspective of the actual purchasers of the goods at issue (computer makers, in this example) rather than their own. (35) Trademark law accounts for this situation by looking to actual consumers' confusion and including "consumer sophistication" as a factor in the analysis. (36) To do their job right, the jurors in such a case would need to ascertain what these consumers think, not what they themselves think.

Yet the divergence between juror and consumer is more systematic than simply adopting the mindset of different purchasers. Trademark law holds that a brand infringes even if the overwhelming majority of consumers aren't confused; indeed, a mark can be infringing if only 10 percent are confused. (37) Thus, even jurors who have personal experience with a product or brand must disregard that knowledge to an extent and instead put themselves in the mindset of the least sophisticated subset of consumers.

In sum, trademark law primarily chooses the consumer as its audience in ascertaining infringement, but the consumer's perspective is filtered through rules that can skew that perspective.

More recent developments in trademark law have threatened to move the law's focus away from consumers and toward brand owners themselves. The doctrine of dilution--providing owners of famous marks with protection against others' use of their mark, even if consumers are not confused (38)--and the idea that there is a right to control merchandising of products labeled with a brand (39) both focus less on consumer perception and more on the idea that the brand is a form of property over which the trademark owner ought to have plenary control. (40) The move away from an explicit focus on confusion is controversial, and many have criticized dilution and merchandising for doing just that. (41) But even these more producer-oriented theories of trademark law require some means for assessing infringement. "Coke" may be a famous mark with strong rights to prevent dilution even in the absence of consumer confusion, but a competitor using the term "Pepsi" presumably doesn't dilute the "Coke" mark. Determining whether dilution exists, like determining likelihood of confusion, requires both a metric for similarity and an audience to apply that metric. (42) So while these new theories may broaden the scope of trademark owners' rights, they do not change the fact that an audience must evaluate those rights. (43)

B. Patent Law

Unlike trademark law, patent law exists to encourage scientific and technological innovation for society's benefit. Patent law sets the expert as the target audience in IP infringement.

American patent law protects inventors of useful, novel, and nonobvious inventions. (44) Patents are granted after they successfully undergo examination by the U.S. Patent and Trademark Office, which considers whether an invention meets patentability conditions and whether the description in the patent application satisfies certain disclosure requirements. (45) The patent right permits the patentee to exclude others from practicing the patent's claimed invention for a limited time, typically twenty years from the date the patent application was filed. (46)

Utilitarianism is the dominant justification for American patent law. (47) According to utilitarian theory, patent law provides inventors with the incentive of exclusive rights for a limited duration to motivate them to create technologically or scientifically valuable inventions. The theory is that public benefits accrue by rewarding inventors for taking two steps they likely would not otherwise take: to invent, and possibly commercialize, in the first place and to reveal to the public information about these inventions, which serves to stimulate further innovation. (48) The Constitution grants Congress the power " [t]o 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," a utilitarian end. (49)

The rights patent laws confer are designed to be limited in time and scope. (50) Providing patent protection to creators is intended to encourage them to produce socially valuable works, thereby maximizing social welfare. (51) If patent rights are too strong, society will be hurt (and social welfare diminished). (52) For one thing, exclusive rights in IP can prevent competition in protected works, allowing the rights holder to charge a premium for access and ultimately limiting valuable works' diffusion to society at large. (53) For another, given that knowledge is frequently cumulative, society benefits when subsequent creators can build on previous scientific and technological creations to generate new works. (54) For these reasons, patent laws ensure both that the works they protect fall into the public domain in due course and that third parties are free to use protected works for certain socially valuable purposes. (55)

This overarching justification for patent law accords in significant ways with patent law's choice of the expert as the audience. Patent law requires patentees to include in their patent "one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor ... regards as the invention." (56) The scope of the patent right--and thus the question whether a defendant's use has infringed a plaintiff's patent right--is based on these claims, which set out the metes and bounds of the patentee's invention. (57) A defendant infringes a plaintiff's patent if the fact finder determines that the patent claims, as construed by the court as a matter of law, (58) cover a use made by the defendant. (59)

According to the Federal Circuit, claim terms are to be interpreted with the "meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." (60) This meaning is based on the specific expert knowledge that the person having ordinary skill in the art ("PHOSITA") has combined with the contextual knowledge to be gleaned from reading the entire patent. (61) The Federal Circuit has explained that it uses the PHOSITA as its audience because "patents are addressed to and intended to be read by others of skill in the pertinent art." (62)

To understand the meaning of claim terms from the PHOSITA's vantage point, the Federal Circuit has indicated that courts ought to turn to the following evidence, in this order: the claim terms themselves; the rest of the patent document; the patent's prosecution history; and, as a last resort, evidence extrinsic to the patent, such as expert and inventor testimony and technical treatises and dictionaries. (63) The Federal Circuit has explained that expert testimony "can be useful to a court for a variety of purposes, such as to provide background on the technology at issue, to explain how an invention works, to ensure that the court's understanding of the technical aspects of the patent is consistent with that of a person of skill in the art, or to establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field." (64) But it is only useful to the extent that it does not contradict evidence intrinsic to the patent itself. (65)

Even though courts do not prioritize extrinsic evidence offered by experts in construing patent claims, the PHOSITA--the expert--is still the audience through whose eyes the intrinsic evidence is examined. (66) But just who is the PHOSITA? According to the Federal Circuit, the relevant art for the PHOSITA is typically set based on the particular problem the inventor sought to solve. (67) The level of ordinary skill is based on six factors: "educational level of the inventor, type of problems encountered in the art, prior art solutions, rapidity of innovation, sophistication of technology, and educational level of active workers in the field." (68) The PHOSITA is "not ... the judge, or ... a layman, or ... those skilled in remote arts, or ... [even] geniuses in the art at hand." (69) Nor is the PHOSITA an actual inventor. (70) Instead, the PHOSITA is a "juridical doppelganger," (71) a "hypothetical person who is presumed to be aware of all the pertinent prior art." (72) This hypothetical PHOSITA also possesses ordinary creativity. (73)

The principal way of proving patent infringement is by determining that the defendant's use falls within the literal scope of the patent claims. (74) But that is not the only way. Infringement can also be found for uses that fall outside the patent claims' scope under patent law's doctrine of equivalents. (75) According to the Supreme Court, a patentee can "claim those insubstantial alterations that were not captured in drafting the original patent claim but which could be created through trivial changes." (76) Courts determine equivalence with reference to
   the purpose for which [a claim element] is used in a patent, the
   qualities it has when combined with the other [elements], ... the
   function which it is intended to perform [, and] whether persons
   reasonably skilled in the art would have known of the
   interchangeability of an [element] not contained in the patent with
   one that was. (77)


Therefore, infringement pursuant to the doctrine of equivalents is also assessed using the PHOSITA as the relevant audience. (78)

Expert audiences, then, are at the center of patent infringement cases because patent law asks the fact finder to determine whether two things are technically equivalent. (79) That being said, there are some ways the fact finder can employ an audience other than the expert to assess infringement. For one thing, when the fact finder is asked to determine infringement, she must decide whether the defendant's use falls within the already-construed patent claim scope. There is no rule on whose perspective the fact finder should use to construe the function of the defendant's product or process. In this sense, the fact finder is afforded a minor opportunity to employ another audience as part of assessing infringement. (80)

There are also some technological areas in which patent law does not in practice heed its general rule of choosing the expert as audience. The most notable example involves software patents. In this area, because the Federal Circuit allows software to be claimed based on its function rather than on its more detailed technical workings, infringement can be found when two computer programs serve the same function, even if the software works in very different ways. (81) A consumer or ordinary reasonable observer might use the purpose the software serves to assess similarity more generally, but a software expert would not. (82)

With few exceptions, then, the expert is the audience for patent infringement. (83) For this audience choice to work, the fact finder must be able to put herself in the position of the expert. Patent law tries to address this challenge by relying on expert witnesses to explain the technology while limiting the amount of post hoc expert testimony on the meaning of patent claims and relying instead on documentary materials in existence at the time of patent filing. (84) Patent law also gives the judge the role of assigning meaning to patent terms. Even though that job is really fact finding, not legal interpretation, (85) it is arguably better suited to judges than juries because of their increased exposure to patent-infringement suits. (86)

C. Copyright Law

Copyright law's goals are relatively similar to patent law's, although copyright is directed at artistic works rather than scientific and technological works. Copyright law sometimes uses the expert as the audience, at other times the consumer, and at still other times the reasonable ordinary observer.

Copyright law protects "original works of authorship fixed in any tangible medium of expression," including literary works, sound recordings, movies, and computer software code. (87) To obtain copyright protection, authors need only create a qualifying work. (88) A copyright holder receives the exclusive right to reproduce the work, distribute copies of it, and prepare derivative works, among other things, (89) typically until seventy years after the author's death. (90) Copyright protection extends to the expression of particular ideas rather than to the ideas themselves. (91) Protection actually reaches well beyond the literal work to works that are copied only in part or are substantially similar, (92) "else a plagiarist would escape by immaterial variations." (93)

Utilitarianism has been the dominant justification for American copyright law. (94) According to utilitarian theory, copyright law provides authors with the incentive of exclusive rights for a limited duration to motivate them to create culturally valuable works. (95) Without this incentive, the theory goes, authors might not invest the time, energy, and money necessary to create these works for fear that free riders might cheaply and easily copy them, thereby eliminating the authors' ability to profit from their works. (96) As with patent law, the rights conferred by copyright laws are designed to be limited in time and scope to ensure both that the works they protect fall into the public domain in due course and that third parties are free to use protected works for socially valuable purposes. (97)

Copyright infringement exists when a defendant actually copied the plaintiff's copyrighted work in a way that rises to the level of an improper appropriation. To determine improper appropriation, we ask whether two works are substantially similar. (98) Circuit courts differ on the audiences they use as the reference point for determining substantial similarity, a decision that often depends on the type of copyrighted work at issue. We detail the different approaches of the Second, Fourth, and Ninth Circuits. Most other circuits follow either the Second or Ninth Circuit in determining substantial similarity." (99)

The Second Circuit generally considers the ordinary lay observer as the relevant audience, although sometimes it uses a more discerning ordinary observer or an expert in the relevant subject matter. In the foundational case of Arnstein v. Porter, the singer Cole Porter was sued for copyright infringement of the plaintiffs musical compositions. (100) On the question of whether Porter improperly appropriated the plaintiff's work, the court held that "the test is the response of the ordinary lay hearer; accordingly, on that issue, 'dissection' and expert testimony are irrelevant." (101) The court explained why it chose this audience:
   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. (102)


The court called this as a question of fact for the jury, noting the jury's "peculiar[] fit [ness] to determine" this question. (103) Without expressly saying as much, the court seemed to see the jury as representative of the consumer, so much so that it indicated that it would "be proper to exclude tone-deaf persons from the jury," as they would no longer be typical consumers. (104) The court also intimated that a judge would be unlikely to be a consumer of popular music and therefore that a judge trying such a case ought to employ an advisory jury. (105) This reasoning seemingly suggests that typical consumers of the work ought to be the audience, even though the Second Circuit cases applying Arnstein consistently specify a different audience construct: the ordinary observer. (106)

According to Arnstein, expert testimony would be permissible on the question of improper appropriation but only to help the jury determine the reaction of ordinary lay listeners. (107) In this instance, the Arnstein court recognized the translation problem for fact finders: even juror-consumers may need expert testimony that focuses on how consumer attitudes as a group potentially differ from the attitudes of individual jurors. Otherwise, the Second Circuit--with more than a whiff of elitism--thought that expert views would be irrelevant:
   The impression made on the refined ears of musical experts or their
   views as to the musical excellence of plaintiff's or defendant's
   works are utterly immaterial on the issue of misappropriation; for
   the views of such persons are caviar to the general--and plaintiff's
   and defendant's compositions are not caviar. (108)


In a dissent, Judge Clark stated that the majority's test for substantial similarity was too cramped. He would have allowed for dissection and expert testimony. (109) He reasoned that "[m]usic is a matter of the intellect as well as the emotions; that is why eminent musical scholars insist upon the employment of the intellectual faculties for a just appreciation of music." (110) Moreover, he expressed skepticism about the lay jury's ability to identify improper appropriation:
   I should not have thought it pre-eminently fitted to decide
   questions of musical values, certainly not so much so that an
   advisory jury should be brought in if no other is available. And I
   should myself hesitate to utter so clear an invitation to
   exploitation of slight musical analogies by clever musical tricks
   in the hope of getting juries hereafter in this circuit to divide
   the wealth of Tin Pan Alley. (111)


Since Arnstein, the Second Circuit has held that the relevant copyright infringement audience is the reasonable ordinary lay observer, (112) describing the test for similarity as whether "the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same." (113)

The Second Circuit has created a different rule for infringement cases involving software. In software cases, because the ordinary lay observer lacks sufficient understanding to compare the parties' "highly complicated and technical" software for similarity, the fact finder need not use the ordinary lay observer as the audience. (114) Instead, the software expert becomes the proper audience. (115) The Second Circuit has also suggested more generally that expert testimony might be relevant when dealing with "art forms [that are not] readily comprehensible and generally familiar to the average lay person." (116)

The Ninth Circuit has adopted a different two-part framework for assessing substantial similarity, using both the expert and the ordinary reasonable observer as the relevant audience. It applies both extrinsic and intrinsic tests, finding infringement only if both indicate similarity. (117) The extrinsic test objectively compares the expressive elements of the two works at issue, examining such elements as "articulable similarities between the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events." (118) This comparison allows dissection of the works and often involves expert testimony on an expert's point of view, (119) thereby using the expert as its audience. By contrast, the intrinsic test is a "subjective comparison that focuses on 'whether the ordinary, reasonable audience' would find the works substantially similar in the 'total concept and feel of the works.'" (120) This test uses the ordinary reasonable observer as the audience, and accordingly it does not allow for expert testimony. (121) The Ninth Circuit uses the extrinsic test with analytic dissection to determine the fact of copying and the holistic intrinsic test to determine whether that copying was in fact unlawful. (122)

Although the intrinsic test is usually judged from the perspective of the ordinary observer, the Ninth Circuit sometimes instead uses the consumer as its audience for this test. (123) For example, rather than employing an ordinary reasonable observer, the Ninth Circuit considered video games to require an "extraordinary observer" as the audience: "a discerning 17.5 year-old boy." (124)

As the Ninth Circuit did with video games, the Fourth Circuit has adopted the consumer as audience across its range of copyright infringement cases. The Fourth Circuit discussed the issue at length in Dawson v. Hinshaw Music Inc., a copyright infringement case over a spiritual song:
   When conducting the second prong of the substantial similarity
   inquiry, a district court must consider the nature of the intended
   audience of the plaintiff's work. If, as will most often be the
   case, the lay public fairly represents the intended audience, the
   court should apply the lay observer formulation of the ordinary
   observer test. However, if the intended audience is more narrow in
   that it possesses specialized expertise, relevant to the purchasing
   decision, that lay people would lack, the court's inquiry should
   focus on whether a member of the intended audience would find the
   two works to be substantially similar. (125)


The Dawson court opined that the Second Circuit had misread Arnstein as always requiring an ordinary observer as audience when in fact Arnstein intended that the consumer--sometimes an ordinary observer, sometimes not--serve as the audience: "In light of the copyright law's purpose of protecting a creator's market, we think it sensible to embrace Arnstein's command that the ultimate comparison of the works at issue be oriented towards the works' intended audience." (126)

Copyright law's use of varied infringement audiences is confused and often depends on the particular circuit deciding the case. As a general matter, however, copyright uses a hybrid test, drawing on both the perspective of the expert and that of a nonexpert observer (either the consumer or the ordinary person). (127)
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Title Annotation:Abstract through I. Audiences in IP Cases C. Copyright Law, p. 1251-1273
Author:Fromer, Jeanne C.; Lemley, Mark A.
Publication:Michigan Law Review
Date:May 1, 2014
Words:6412
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