Copyright infringement & substantial similarity

Substantial similarity is one of the standard tests used to determine whether infringement of copyright has taken place or not. Since a copyright protects expression and not the idea, substantial similarity is one of the important ways to assess infringement of copyright.

Since it is Christmas time of the year, I take this opportunity to explain the concept of copyright infringement with respect to substantial similarity with the help of a case-law that relates to Christmas story, Ray K. Harter et al. vs. Disney Enterprises,Inc. et al.[Case No. 4:11CV2207 CDP, United States District Court Eastern District Of Missouri Eastern Division].

Facts of the case

  •  Ray Harter, Richard Kearney and Ed Corno (hereinafter Ray K. Harter et al) authored a Christmas story called Santa Paws: The Story of Santa’s Dog in 1991.
  • It was an illustrated children story for which copyright was registered by them in 1992 and 1993.
  • To market the story, the authors availed services of an external agency called William Morris Endeavor Entertainment, LLC (WME).
  • Story was shown to many companies by WME including Disney Enterprises, Inc.
  • However, in the year 2009, Disney released a movie called Santa Buddies: The legends of Santa Paws   and in the year 2012, it released another movie called The search for Santa Paws.
  •   Upon knowing this, Ray K. Harter et al. filed a suit for copyright infringement against Disney, WME and its  agents.
  • However, Disney argued that their videos are not substantially similar to any protected expression of Ray K. Harter et al. story.

Key issues and arguments

The most critical issue in this case is that copyright law does not give protection to idea but it only protects the expression of the idea and taking this into consideration it is adjudicated whether  infringement of copyright has taken place or not. In order to prove copyright infringement, it was required to establish that:

  1. Story of Ray K. Harter et al. had valid copyright,
  2.  Disney had copied it directly because independent creating of the work is legitimate in copyright law. This could be proved by providing direct evidence of copying or by proving that Disney had access to Ray K. Harter et al.’s story and the work created by Disney had substantial similarity with Ray K. Harter et al.’s work, and also
  3. There was substantial similarity between original and copied work.

In this case since story was presented to Disney by WME, Disney had access to the story and hence the only issue left was substantial similarity. It is interesting to know that Eighth Circuit developed a two-step test for analyzing the similarity between two works:

There must be substantial similarity not only of the general ideas but of the expressions of those ideas as well. First, similarity of ideas is analyzed extrinsically, focusing on objective similarities in the details of the works. Second, if there is substantial similarity in ideas, similarity of expression is evaluated using an intrinsic test depending on the response of the ordinary, reasonable person to the forms of expression.

It was found that there exists some similarity of ideas between the Ray K. Harter et al.’s short story and videos of Disney. Apart from overall plans of the story and each of Disney movies involve some threat to the Christmas holiday or spirit, which is then saved by a talking Christmas dog. In the video, dog was named as “Paws,” “Santa Paws,” or “Puppy Paws”, which was found to be very similar to the story. Apart from the general similarities, the short story includes a magical icicle, which is used by the story’s antagonist to transform herself into a snowflake and freeze Santa and his reindeer, and ultimately used by the main character to unfreeze Santa and save Christmas. In Disney’s movies, there is also a magical ice crystal that measures Christmas spirit in the world, and the main characters wear crystals around their neck that have magical powers, including the power to awaken Santa after he goes into a coma in The Legend of Santa Paws.

In the short story, the Christmas tree is one of the talking characters, and his lights turn off when Christmas spirit is low. In the Santa Buddies movie, there is a Christmas tree that has broken lights, but they turn on when the main character walks by wearing his magical ice crystal, not as a result of an increase in Christmas spirit.

The Legend of Santa Paws and Ray K. Harter et al.’s story uses dialogue about Paws being a “gift” for Santa, and both mention Christmas spirit being “down” or “out of whack.” When Santa receives the dog as a gift in the story, he states, “I’m going to call you . . . PAWS.” In The Legend of Santa Paws, he states “I think I’m going to name him Paws.” At the end of both stories, Santa changes Paws’ name to Santa Paws. In the story, he states: “From now on your name will be Santa Paws . . . my one and only dog.”

In The Legend of Santa Paws, Santa says: “You’re no longer a pup. From now on your name will be Santa Paws.” As Ray K. Harter et al. point out, these lines are stated at similar points in the story. However, it is not an original idea to name Santa’s dog “Paws” or “Santa Paws,” as it rhymes with “Claus.” These short phrases are also fairly insubstantial when compared to the other dissimilarities in dialogue and plot between the stories.

Apart from these abstract similarities, the remaining elements of the short story and movies are substantially dissimilar. Copyright protection for an original work of authorship does not extend to any idea, and hence naming the dog “Santa Paws” in a Christmas movie is merely an idea. The remaining aspects of the plot surrounding the Christmas dog are entirely dissimilar.

Judgment

U.S. District Court Judge Catherine Perry granted summary judgment in favor of Disney, ruling that the short story Santa Paws is not substantially similar to Disney’s Santa Paws. The court acknowledged that the short story and the Disney movies had some elements in common as they all feature a threat to Christmas and a talking dog, all feature a dog named Paws, Santa Paws or Puppy Paws, they all have magical icicles etc. There also is some similar dialogue. However, “apart from these abstract similarities, the remaining elements of the short story and movies are substantially dissimilar. Furthermore, most of the aforementioned similarities between short story and movie are not protected by copyright law.

The court also dismissed a civil conspiracy claim