The best way to drive out the devil . . . is to jeer and flout him, for he cannot bear scorn.
- Martin Luther
{1} The scene is set in an upscale, but spartanly-furnished penthouse in Manhattan, the high ceilings and marble floors vaguely resembling "Citizen Kane's" palatial Xanadu. A fire burns in a grand fireplace which faces, oddly enough, an altar. Spanning the entire wall behind the altar hangs an ethereal statue of clouds and intertwined human figures in various poses. The penthouse owner is the managing partner of a highly connected and terribly crooked New York law firm. He is also the devil.
{2} In "The Devil's Advocate," [1] Al Pacino stars as John Milton (a clever literary alias used to conceal the character's true identity as the devil). Milton's designs for world conquest require his influential firm to undermine the judicial system in America. Milton boasts of a future when the stench of mass acquittals and gross injustices on earth will choke out Heaven's inhabitants. Poised on the brink between the realization of all his carnal desires and his soul's salvation stands Keanu Reeves as Kevin Lomax, a young and talented criminal lawyer (and a University of Florida alumnus) who is Milton's protégé. As the film progresses, we find that Lomax is also Milton's illegitimate son. In the climatic finale, with promises of bliss and riches intertwined with blasphemous vitriol, Milton pitches his best offer to Lomax - join Milton and help usher the antichrist into the world to overthrow Heaven. All the while, as Lomax wrestles with such overwhelming temptations and his own, personal remorse, the statue behind the altar seemingly comes to life. The human figures begin to move: a man in the statue opens his eyes; a woman reaches out, beckoning to Lomax. As Milton's tirade against the Almighty escalates, the figures begin to embrace one another sexually, the statue bursting into flames, until finally . . . No, I won't ruin the ending.
{3} The scene is undeniably effective. Pacino is, well, Al Pacino. He delivers one of the finest and most chilling portrayals of Satan ever performed on screen. [2] Director Taylor Hachford's use of computer effects to animate the penthouse statue is exemplary in that it accentuates Pacino's delivery without detracting from it. In all, the use of this artistic backdrop with its technological morphing was a valuable contribution to the film. [3] It was also a theft.
{4} Frederick Hart is a sculptor who, for over twenty years, has created widely acclaimed works for public and private collections, including The Creation Sculptures at the Washington National Cathedral, Three Soldiers at the Vietnam Veterans Memorial, Veil of Light, The Angel, and many other works portraying "figurative beauty" and "spiritual enlightenment." [4] Hart, a devout Catholic, draws from the Divine for much of his inspiration. Of all his works, however, one piece stands alone as Hart's most intensely spiritual, most inspired creation. Ex Nihilo [5] is a massive bas-relief sculpture which adorns the Washington National Cathedral. [6] The awe-inspiring work which depicts eight human figures, eyes shut, emerging from a void took Hart thirteen years to complete. [7] Beyond the physical effort and artistic talent which the work obviously embodies, Ex Nihilo represents Frederick Hart's own spiritual and theological search for the Divine. [8] Many regard the work as his masterpiece.
{5} By no coincidence, the shape-changing sculpture portrayed in "The Devil's Advocate" is nearly identical to Hart's Ex Nihilo. The designer consulted a photograph of Ex Nihilo in constructing the prop for the movie. [9] Not long after the film's release, an onslaught of letters expressing outrage at the sacrilegious use of Hart's work ensued. [10] Their outrage was genuine. Hart himself stated that the movie "desecrated his work." [11]
{6} Eventually, Frederick Hart would instigate a lawsuit against the film's producers. Frederick E. Hart v. Warner Bros. was filed in the United States District Court for the Eastern District of Virginia. [12] In his complaint, Hart, who possessed a copyright for Ex Nihilo, argued that the use of his work in "The Devil's Advocate" violated his copyright and trademark rights. [13] A decision as to the merits of his claim will forever remain beyond the reach of any earthly court, however, as the case promptly settled. [14]
{7} Yet, it is hard to resist speculating what the outcome might have been. No doubt, Warner Bros.' attorneys would have raised a litany of defenses: the prop, digitally enhanced, was not sufficiently similar to Ex Nihilo; or that using the sculpture was a form of parody and allowable as a fair use of a copyrighted work. However, their strongest argument would surely have been that any appropriation of Hart's copyrighted work was so minimal as to preclude any restitution. [15] Although resembling Ex Nihilo, the bas-relief featured in "The Devil's Advocate" was only a de minimis taking of Frederick Hart's masterpiece, and therefore was not actionable, or so their argument might have gone.
{8} Hart's story and the issues it raises pose a vexing problem. When is copyright infringement only minimal? This question becomes all the more complicated when the medium through which the infringement is broadcast is television or film. In the era of digital and computer special effects, a work of art may be duplicated and then inverted, colorized, morphed, or blurred into a completely different form. [16] Computer animation can bring an artist's statue to life. Skillful camera shots and film editing can frame an author's work of art within a scene so that a viewer never consciously recognizes its presence. Do these actions constitute de minimis (non-actionable) infringements of authors' copyrights, or are they something more? And more importantly, what policies can be effectuated to improve enforcement of copyright infringements occurring in film while minimizing transaction costs?
{9} The courts have reached no consensus as to when an unauthorized use in this area of copyright is merely de minimis. No set or arbitrary standard exists. A de minimis use in one court might offend another court. This article will discuss the de minimis doctrine in light of its current (and often varied) application in several important cases. While the focus will remain on infringements occurring in electronic media, the application of the analysis is by no means limited to that area alone. The article concludes by proposing the addition of a notice rule within the current copyright scheme. This rule would bar a would-be infringer [17] from raising a de minimis defense once access to the copyrighted work at issue has been conclusively proven. The notice rule would encourage early negotiation of an optimal licensing arrangement between an infringer and a copyright holder.
II. THE NATURE OF COPYRIGHTS AND INFRINGEMENTS
The Congress shall have Power . . . to 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.
- U.S. CONSTITUTION, art. I, § 8, cl. 8
{10} Nimmer states that the grant of a copyright [18] is predicated upon the premise that the public will benefit from the creative efforts of authors. [19] Granting copyright protection - in effect, a limited monopoly over the work - is necessary to maximize these creative efforts, thereby maximizing the resulting public benefit. [20] American copyright protection, therefore, endeavors to encourage creativity by allowing an author to reap economic benefits from his work. [21] At the same time, the law's protection is not absolute - a copyright only exists for the lifetime of the author plus seventy years [22] - so that new creations, building upon others' prior work, may flourish. [23]
{11} Copyright protection can extend to "[w]orks of authorship fixed in any tangible medium of expression." [24] In no case, however, will copyright protection apply to an idea, in and of itself. [25] The law protects the author's expression, not the underlying idea. [26] For artistic works, such as paintings and sculptures, the owner of a copyright secures exclusive rights to reproduce the work, create derivative works based upon the original, distribute copies of the work (by sale, transfer, rental, lease, or loan), and display the work publicly. [27] Yet within the ambit of these rights, copyright protection is never absolute. Voluminous case law surrounding copyright infringements and various exceptions has resulted.
{12} Arnstein v. Porter, [28] a seminal copyright infringement case, laid out a concise standard to determine when an infringer's taking or copying of an author's copyrighted work constitutes an actionable infringement. [29] In Arnstein, the plaintiff, Ira Arnstein, had written, published, and registered copyrights for several popular songs. [30] Alleging that seven of the defendant's piano compositions plagiarized his works, Mr. Arnstein sought one million dollars in damages arising from the infringements. [31] The trial court dismissed the action, granting summary judgment for the defendant. [32] Upon review, the Second Circuit announced a two-part test to gauge the sufficiency of a plaintiff's claim of copyright infringement. [33] To prevail, a copyright owner must show that:
- the defendant copied from plaintiff's copyrighted work; and
- the defendant's copying constituted unlawful appropriation. [34]
{13} The first part of the test obviously presupposes copyright ownership. [36] That is, the plaintiff must, in fact, possess a valid copyright on the work at issue. [37] The court further explained that evidence of copying may consist of either the defendant's own admission that he copied or circumstantial evidence which would tend to prove that the defendant had access to the copyrighted work. [38] Ultimately, the trier of facts must conclude that, based on the proffered evidence, copying can be reasonably inferred. [39] Moreover, expert testimony regarding the sufficiency of the similarities toward proof of copying can be admitted to assist the trier of facts. [40]
{14} Once copying has been established, the second issue of unlawful appropriation arises. [41] A plaintiff must show that the defendant's copying constituted an unlawful appropriation (an "illicit" copying) of the plaintiff's work. [42] In light of the facts confronted by the court in Arnstein, the trier must determine: "[W]hether 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." [43] Expert testimony becomes irrelevant for proving the second prong of the Arnstein test, because this part of the inquiry only considers "[T]he response of the ordinary lay hearer." [44]
{15} The two-part infringement test announced in Arnstein reappeared five days later in Heim v. Universal Pictures Co. [45] In Heim, a Hungarian musician sued Universal Pictures for infringing the copyright to his song, "Ma Este Meg Boldog Vagyok," within one of the studio's movies. [46] Echoing the earlier decision in Arnstein, Judge Frank described two separate facts which a plaintiff in a copyright infringement action must prove to prevail: first, that the defendant copied from the plaintiff's work; second, that this copying was so "material" or "substantial" that it constituted unlawful appropriation. [47] Unlike Arnstein, however, the focus in Heim resided on the first prong of the test - whether copying had, in fact, occurred. [48] Satisfied with the trial court's conclusion that the plaintiff failed to prove either that Universal had access to or actually copied the plaintiff's song, the Second Circuit affirmed the dismissal of the case. [49]
{16} Since the middle of the century, this two-pronged standard has served as the starting point, and often the dispositive inquiry, for a plethora of copyright infringement cases in a variety of contexts such as alleged infringements of computer programs, [50] molds for lawn decorations, [51] a book title, [52] a children's television show, [53] television commercials, [54] songs, [55] and even exercise equipment. [56] Although the application of this test seems relatively straightforward, confusion, rather than clarity, resulted. [57] In addition, some courts flatly rejected parts of the Arnstein holding. [58]
{17} Subsequent holdings revealed semantic disputes lurking underneath different courts' applications of the test. For example, as a practical matter, a plaintiff would normally offer the same evidence (of similarities) to satisfy both parts of the Arnstein test. In a given case, certain similarities between two works may establish proof of copying under the first prong of the Arnstein test. However, these same similarities might not necessarily rise to the level of an unlawful appropriation. Many courts struggled with this distinction, failing to clarify which part of the test they were examining when considering similarities between two works. [59]
{18} Finally, the unlawful appropriation prong of the Arnstein test is particularly contentious. As Judge Hand observed, infringement is, by necessity, an ad hoc decision. [60] Demonstrating that a defendant's copying is substantial enough to meet the illicitness threshold under Arnstein often becomes little more than an exercise in line-drawing. The infringer will always argue that his appropriation of an author's work falls below the threshold level of substantial similarity necessary to prove that his copying was unlawful.
Little strokes fell great oaks.
- Benjamin Franklin
{19} Within copyright jurisprudence, the doctrine of de minimis non curat lex [61] frequently appears. Simply stated, a de minimis use of another's copyrighted work is one that is so trivial, it does not constitute an actionable infringement. [62] But to fully understand the intricacies of this doctrine, which belie this cursory definition, it is necessary to see the doctrine in action. In that regard, no better opportunity for study exists than an examination of how different courts have wrestled with applying the de minimis doctrine to various copyright cases.
{20} Before venturing into the myriad applications of the de minimis doctrine, however, one should first consider the nature or similarities that can exist between two works of art. In other words, what causes the attributes of a particular painting, or story, or sculpture, to be similar to another? Generally speaking, similarities can be delineated into two broad categories in copyright infringements: comprehensive, nonliteral similarities and fragmented, literal similarities. [63] The remainder of this article will generally focus on the latter category, where actual pieces of a copyrighted work are duplicated and incorporated, in some form, into another work.
{21} Woods v. Universal City Studios, Inc. [64] illustrates one court's attempt to structure a workable de minimis standard. [65] In Woods, the plaintiff, Lebbeus Woods, had created a pencil drawing entitled, "NeoMechanical Tower (Upper) Chamber," depicting a high-ceiling chamber, a chair mounted into one wall, and a sphere suspended by a metal frame in front of the chair. [66] The work was published within a copyrighted compilation of Woods' drawings in 1992. [67] In 1995, Universal City Studios released the movie, "12 Monkeys." [68] In an opening scene (and three subsequent scenes) of the movie, the film's protagonist is brought into a room and seated in a chair attached to a wall as a sphere descends from a metal armature. [69] The film's director admittedly studied a copy of Woods' book in designing the scene, and discussed the "Upper Chamber" drawing with the producer and production designer. [70] Upon viewing the movie, Woods promptly filed a claim and moved to preliminarily enjoin Universal City Studios from portraying the scenes which included "Upper Chamber." [71] Universal countered that the allegedly infringing footage in "12 Monkeys" accounted for less than five minutes of a 130-minute movie. [72]
{22} The court noted a laundry list of similarities between the scenes depicted in "12 Monkeys" and Woods' "Upper Chamber." [73] Rejecting Universal's de minimis argument, the court stated the proposition: "Whether an infringement is de minimis is determined by the amount taken without authorization from the infringed work, and not by the characteristics of the infringing work." [74] Applied, the test appears almost mechanical: Universal copied a "substantial amount" of Woods' drawing; therefore, they could not contend that it was only a de minimis taking. [75]
{23} The Woods test focuses entirely on the infringer's act of appropriation vis-à-vis the copyrighted work. By necessity, this preoccupation with the original work comes at the exclusion of other, arguably pertinent, considerations. For instance, what if Universal Studios included the infringing chamber-scene for a total of only sixty seconds in "12 Monkeys?" Alternatively, what if Universal (the director having decided that the scene setting should be minimized) had distorted, or blurred the chamber-scene, rendering it either partially or completely distinguishable from Woods' drawing? One might intuitively feel that situations such as these should also amount to non-actionable, de minimis takings. Yet, under the Woods test, the manner in which an infringer chooses to include a copyrighted work into his infringing work is of no consequence. The infringer cannot escape liability no matter how trivial the use of the copyrighted work. In the wake of Woods, a plaintiff, having proven access and copying of his work, has, in actuality, proven most of his case. [76] Other courts have disagreed with this approach.
{24} In Ringgold v. Black Entertainment Television, Inc., [77] the defendant, Black Entertainment Television (BET) re-broadcast an episode of HBO's "ROC," a television sitcom depicting a middle-class, African-American family. [78] In one scene of the episode at issue, the set decoration included a poster of a Sunday school picnic with various African-American idioms interposed in twelve panels surrounding the picture. [79] The poster was, in fact, a print reproduction of a "story quilt" created and copyrighted by Faith Ringgold. [80]
{25} HBO and BET defended their use of the poster on several grounds, including that the poster's portrayal was only a de minimis use of Ringgold's work. [81] Reversing the district court's summary judgment for the defendants, the Second Circuit considered three categories of de minimis infringements: a technical violation of a trivial, legal right; a copying which falls below the quantitative threshold of substantial similarity; and lastly, as a relevant consideration in conjunction with a fair use defense. [82] The court reasoned that the first category, by its own definition, would hardly ever be litigated, while the third category is not properly a component of a fair use analysis. [83] Substantial similarity, therefore, becomes the sole analytical concept for de minimis copyright infringements.
{26} Substantial similarity requires "[T]hat the copying is quantitatively and qualitatively sufficient to support the legal conclusion that infringement (actionable copying) has occurred." [84] The court forcefully rejected BET's contention that Ringgold's expression could not be discerned in the scene - clearly, the poster was recognizable to a lay observer, and marked, qualitative similarities existed despite convoluting camera shots. [85] As to the quantitative aspects of similarity, the court conceded that the nine segments in which the poster appeared were for a short duration of time taken individually, but noted their "repetitive effect." [86] Interestingly, the court drew an analogy between the duration of the infringing segments with the statutory provisions setting licensing fees imposed on public broadcasters to use published pictorial or visual works. [87] Ultimately, the court held that the infringing use of the poster was, in quantitative and qualitative terms, substantially similar (an actionable infringement) to Ms. Ringgold's copyrighted work. [88]
{27} The holding in Ringgold focused entirely on the manner in which BET used the poster in the "ROC" episode. [89] In sharp contrast to Woods, therefore, Ringgold stands for the proposition that courts must look to the defendant's infringing use when considering a de minimis defense. The character of the final, infringing product decides the defendant's fate. Under a Ringgold analysis, a complete appropriation (an exact duplicate, for example) of a copyrighted work may still fall under the rubric of "de minimis use," as long as it is minimally utilized or indiscernible within the infringing work.
{28} Moreover, the court in Ringgold flirts with the idea of establishing an arbitrary, bright-line standard of de minimis copying. Its application of the "quantitative" portion of the analysis is somewhat revealing:
From the standpoint of a quantitative assessment of the segments, the principal four-to-five second segment in which almost all of the poster is clearly visible, albeit in less than perfect focus, reinforced by the briefer segments in which smaller portions are visible, all totaling 26 to 27 seconds, are not de minimis copying. [90]
The lengthy discussion comparing the public broadcasters' regulations (royalties are paid based, in part, on whether the duration of the broadcaster's use of a piece of art is longer than three seconds) with the sitcom's use of the story quilt further illustrates this point. [91] Whatever conclusions may be divined from the Ringgold holding, one tenet seems clear: an unauthorized, clearly visible copying which lasts for longer than twenty-seven seconds is not a de minimis use. Whether the court intended a narrow application of its holding, or if, in fact, the court has embarked upon a process of establishing de minimis benchmarks, leaving others to fill in the gaps as new cases arise, is certainly a debatable point.
{29} A year later, the Second Circuit was afforded an opportunity to reapply and expand the Ringgold analysis under a similar set of facts. In Sandoval v. New Line Cinema Corp., the plaintiff, Jorge Antonio Sandoval created and copyrighted a series of black and white, self-portrait photographs. [92] The defendant, New Line Cinema, produced and distributed the motion picture, "Seven," a suspense movie about a serial killer. [93] In a scene approximately one hour and seventeen minutes into the movie, ten reproductions of Sandoval's photographs briefly appeared for a total of 35.6 seconds. [94] The district court ruled that no actionable infringement occurred as New Line's inclusion of the photographs in one scene of the movie for such a brief time was an allowable fair use of Sandoval's work. [95]
{30} The court in Sandoval ruled that an infringing work must fall below a quantitative threshold of similarity. [96] This quantitative threshold comprises the amount of the copyrighted work that was copied and the observability of the copyrighted work within the infringing work. [97] Observability, in turn, consists of both the length of time in which the copyrighted work appears in the infringing work and its "prominence" within the infringing work. [98] Furthermore, the prominence of a copyrighted work is a function of lighting and the placement or positioning of the copyrighted work within the infringing work. [99] With that in mind, the Second Circuit affirmed the district court's judgment, but repudiated its fair use analysis, holding, as a matter of law, that New Line's use of the photographs was de minimis. [100]
{31} The court in Sandoval is trying to create a "picture" of a true de minimis infringement: it requires a certain quantitative level of copying; the copying must be observable; it must be featured prominently within the infringing work. [101] Perhaps the court is struggling to invoke, by way of a formulaic approach, its own notion of what constitutes a de minimis infringement for future courts to reference for their analyses. By defining the parameters of a garden-variety, de minimis infringement, the Sandoval court furnishes a standard with which one can compare any unique factual circumstances surrounding a copyright infringement. Clarifying the standard, however, creates another problem: it thrusts the judge into the role of a film or art critic. Under the extensive determinations required in a Sandoval analysis, a judge must take notice not only of the similarities between two works (possibly occurring in different mediums), but also a copy's "prominence" within an infringing work [102] The judge must determine the effect of lighting and placement on a work of art. [103] The question arises: Should a court make such determinations - findings which may be highly subjective and affected by one's tastes and preferences - to determine the validity of a defendant's de minimis defense? [104]
{32} The above holdings illustrate a spectrum of de minimis rules ranging from the vigorous, judicial activism seen in Sandoval to the minimalist judicial analysis described by the Woods test. The former turns judge into art critic; the latter illustrates a "hands-off" approach, relegating the court to the single determination of whether or not an infringer substantially copied the plaintiff's work.
{33} Still other courts have announced alternative methods of gauging the substantiality of an infringer's appropriation. In Fisher v. Dees, the Ninth Circuit framed its de minimis test around whether an "[A]verage audience would recognize the appropriation." [105] In the context of video games, the Seventh Circuit focused on the value of the copyrighted material, holding that the test for de minimis copying is: "[W]hether the accused work is so similar to the plaintiff's work that an ordinary reasonable person would conclude that the defendant unlawfully appropriated the plaintiff's protectible expression by taking material of substance and value." [106] In contrast, another court considered the value of the appropriated material encompassed within the infringing work - an infringing work which would be substantially less valuable absent the copied material would lie beyond the de minimis threshold. [107]
{34} The substantial copying prong of the Arnstein test, deceptively simple in appearance, has unleashed a morass of contradicting tests and confused applications. Each holding betrays the court's predisposition towards an active (or passive) role in determining similarities between works, and, by implication, the allocation of intellectual property rights. Certainly, each of these de minimis tests possess merit.
{35} One could marshal scores of convincing arguments and counter-arguments favoring any of these rules. The concept of a minimal, non-actionable copyright infringement is difficult to annunciate, much less create a consensus about it. And yet, if indeed the goal of copyright protection of an author's work is to encourage creativity in the market place of ideas without stifling those "creative forces" by overprotection, some kind of line must be drawn. [108] Which line of reasoning best advances the balance of interests embodied in American copyright law? I say none of the above.
IV. PROPOSAL FOR A NOTICE REQUIREMENT
Behold, how good and how pleasant it is for brethren to dwell together in unity!
- Psalm 133:1, KJV
{36} In his watershed article, The Problem of Social Cost, Professor Coase shed new light upon an old problem utilizing microeconomic analysis. [109] Coase characterized the situation where a firm's productive activities which inadvertently cause harmful side effects (externalities [110]), as being reciprocal in nature: A's productive activities may cause harm to B's property; but B's restraint of A's production will, in turn, harm A. [111] That being the case, the ultimate allocation of property rights between competing uses (A's production versus B's use) will normally be independent of a court's initial assignment of those rights. [112] Under this theory, a court should only allocate property rights between competing uses when the increase in the productive value resulting from the reallocation is greater than the costs incurred to bring about the reallocation. [113]
{37} In Coase's view, the courts, in effect, should become economic maximizers - catalysts to expedite parties toward an efficient, optimal allocation of competing property rights. This merger between traditional, legal analysis and microeconomic efficiency considerations (generally referred to as "law and economics") has been applied to diverse areas of the law, such as: criminal justice, contract law, landlord-tenant law, tort principles, antitrust, environmental law, and race discrimination. [114] Law and economics has left its mark on intellectual property as well. In recent years, economic analysis has become a paramount component of copyright jurisprudence. [115] The remainder of this article will incorporate this philosophy, applying economic analysis toward the problem of de minimis copying. [1]
{38} Bearing in mind Coase's idea of reciprocity, [117] let us return to the scenario presented at the outset of this article. By copying Ex Nihilo and utilizing it in a manner that, at the very least, was contrary to the artist's wishes, Warner Bros. inflicted a kind of injury to Frederick Hart. Whether the injury was to the integrity of his art or actual pecuniary damages, it makes no difference at present. Suppose that the case proceeded to trial, and the district court granted a permanent injunction, forbidding Warner Bros. from using any likeness of Ex Nihilo within "The Devil's Advocate." [118] To comply with the court's order, Warner Bros. would have to either reshoot the offending scenes in which Ex Nihilo appeared, or digitally remove the sculpture's likeness from the actual film. Either alternative would entail extensive, additional costs for the studio. In a certain sense, Frederick Hart will be inflicting harm on Warner Bros. by enforcing his copyright. [119]
{39} This reciprocal harm which both Universal and Mr. Hart necessarily inflict upon one another by litigating the right to use Ex Nihilo's likeness could have been altogether avoided, and an optimal appropriation agreed upon long before the final shooting of "The Devil's Advocate." [120] Like any rational decision maker, [121] Warner Bros., no doubt, well considered the possibility of litigation. [122] In reaching their decision to incorporate a bas-relief nearly identical to Hart's work, the studio would have estimated their cost as being the liability for the copyright infringement tempered by the likelihood that no one would ever discover the similarities (or alternatively, that Mr. Hart would not be inclined to file a law suit). [123] Balancing this perceived cost of using the work without authorization against the added value which the prop contributed to the quality of the film, Warner Bros. "rolled the dice," pressing ahead in the face of possible liability. As previously discussed, the district court in Virginia would have been afforded a plethora of alternative tests, standards, and factors with which to gauge the level of the illicitness of Warner Bros.' appropriation. [124] The court would have to decide who will possess the right to briefly utilize a digitally enhanced likeness of Hart's Ex Nihilo within a movie. And therein lies the gravamen of the problem.
{40} Under the current regime, the allocation of rights between author and alleged infringer of a copyright becomes a question for either a judge or a jury to decide. In instances where the alleged infringement is arguably de minimis, a court of law is a terribly inefficient fiat to accomplish any kind of allocation between competing copyright uses. [125] This seems especially poignant when one considers the fundamental question which a plaintiff/author calls upon a court to answer in a copyright infringement case: that is, whether the defendant's work is substantially similar to the plaintiff's own. [126] By ceding the entire allocative function to an outside party, the process of allocation becomes nothing more than a reflection of one particular judge or jury's subjective opinion - an indeterminable and unqualifiable belief that the defendant either appropriated or did not appropriate too much of the author's work. [127] Given the subjective, if not metaphysical, nature of similarities that can exist between two works, any availability of "expert" guidance to assist the trier of fact is, in reality, of limited practical value. [128]
{41} On the other hand, who better to determine a minimal (acceptable) use of a copyrighted work than the parties themselves? After all, they alone are in the best position to quantify their respective incentives. If, in fact, both parties harm one another by competing for the use of the expression, who else could best measure the extent of their respective injury in order to reach a mutually agreeable solution? And most importantly, both sides of any dispute possess a natural, pre-existing incentive to cease the harm which they endure. In that light, the true goal of copyright infringement resolution becomes clear: to bring the parties together, as early as possible, in order to quantify their respective positions. [129] The director, before shooting an "infringing" scene, could then demonstrate to the author exactly how the movie would utilize the author's expression. [130] The author, in turn, could object to those uses he finds objectionable, and together, the director and the author might arrive at a consensus and bypass the need to litigate entirely.
{42} However, so long as the chance remains that a court will simply pigeon-hole an allegedly infringing use as being de minimis, a director retains the incentive to "shoot first and ask questions later." All the more so since the author will often be in the dark regarding any appropriations of his work. [131] It is little wonder that under the current application of the de minimis use doctrine, Frederick Hart first saw an exact likeness of his work being set ablaze on a movie screen in a public theater. [132]
{43} To rectify the inherent confusion between the courts and end their interminable struggle to define "substantial similarity" in copyright infringement cases, while simultaneously facilitating a timely and productive meeting between copyright owners and those who desire to appropriate portions of the owner's protected expression, [133] I propose the following rule:
Once access or actual copying has been conclusively proven, a defendant is barred from raising a de minimis use defense unless he has, prior to the appropriation, provided the copyright owner adequate notice regarding the intended use. [134]
{44} As a conceptual matter, this rule would eliminate the second prong of the Arnstein test unless the infringer, who consciously appropriates a portion of an author's work, first notifies the author. [135] Any substantial similarity comparison only becomes necessary if the author has received notice [136] or, at trial, is unable to prove that the defendant actually copied the author's work. [137] I anticipate three important and positive effects upon future copyright disputes following the implementation of such a rule. First, the rule obviously provides authors greater notice and information about appropriations of their copyrighted works occurring in the market. [138] Second, the rule encourages early negotiation between authors and infringers, thereby promoting the optimal use of copyrights. [139] Along this same line of thought, it would also remove a court's subjectivity and arbitrary line-drawing in the clear instances when a defendant copied whole portions of an author's work. [140] Finally, the rule provides authors with greater leverage over the use of their expressions, especially in cases where an infringer deliberately incorporates entire parts of the author's expression.
{45} Under this proposed rule, infringers who consult, study, or preview an author's copyrighted work and subsequently utilize some protected likeness of the work for their own use without notifying the author have per se infringed the author's copyright. Any subsequent adjudication begins and ends with the sole inquiry: Did the defendant copy the plaintiff's work? [141] Of course, the author might still have to present evidence of similarities between the defendant's work and his own. In cases where the author is unable to conclusively prove access or copying, he would have to rely on evidence of similarities between the work to establish an actionable infringement. [142] However, a court would not need to perform the analytical acrobatics required under prior case law to characterize these similarities as substantial or illicit. [143]
{46} That being the case, an author is much more likely to succeed on the merits of his case and with far greater expediency. This fact will alter the incentives and subsequent behavior of infringers. [144] In short, the rule forecloses the possibility for an infringer to surreptitiously infringe, subsequently go to trial, and ultimately retain the appropriated parts of the author's expression merely because the taking did not rise to the level of a particular court's notion of unlawful infringement. By significantly reducing the element of chance (that a court will consider the use to be de minimis) from the infringer's cost-benefit calculation of whether or not to infringe, this rule would create an incentive on the part of the infringer to negotiate with the author before the infringement occurs. [145] Realizing this increased probability of infringement liability, the infringer will likely comply with the rule and attempt to minimize his costs at negotiation rather than at trial - he will notify the author before using the work. Therefore, authors, in general, will receive greater and more detailed notice regarding the use of their works under this rule.
{47} This rule would also promote facilitation of the negotiation process between authors and infringers. Having received notice, the author (assuming he does not simply acquiesce to the proposed use of his protected work), will contact the infringer and the process of determining a mutually agreeable use of the work could begin. [146] As previously discussed, the author and the infringer are ideally suited to determine the optimal use of the author's protected expression. [147] By eliminating a court's subjectiveness and artistic judgment while simultaneously streamlining the assignment of property rights between competing uses, this rule ensures a robust market of creative works and decreased litigation. Authors and infringers can quantify their respective values and incentives to one another in an amicable environment without the hostility associated with litigation. [148]
{48} Finally, this rule affords copyright owners a certain amount of leverage in the negotiation process that may work to level the playing field, so to speak. Returning to the Hart/Warner Bros. dispute, suppose the two parties actually engaged in mediation, perhaps by order of the district court. Their relative bargaining strength would be hopelessly skewed to the detriment of Mr. Hart. [149] By increasing Hart's likelihood of success in the event of litigation, however, Hart comes to the table in a much stronger position. Therefore, copyright owners, in general, will be able to engage in meaningful negotiations - possessing a relatively equal bargaining strength - with infringers under this rule.
{49} This rule is not wholly without legal precedent. True, the notice requirement is a novel gloss, but the elimination of Arnstein's substantial similarity requirement in cases of obvious copying is an idea that has, at least in one case, been embraced by the Fourth Circuit. In M. Kramer Manufacturing Co., Inc. v. Andrews, the Court of Appeals considered an electronic game manufacturer's copyright infringement claim regarding its video poker game. [150] Access to the video game had been clearly established, but the district court found that because the defendants used different phraseology in their game's audiovisual presentations, altered the video playing cards, affixed the letters, "LE" to the card backs, and inserted, "Lynch Enterprises, Inc." into one of the modes in their video game, substantial similarity did not exist between the two games and no actionable infringement occurred. [151] In an unheralded decision, the Fourth Circuit rejected the district court's traditional infringement analysis with a novel, succinct rule. [152] "The district court, however, lost sight of the ultimate issue - whether Drews Distributing copied the plaintiff's game. If there was clear proof of actual copying by the defendants, that is the end of the case." [153] Applying this rule, the Court of Appeals held that the defendants clearly infringed upon the plaintiff's copyright and remanded the case to the district court. [154] Under Kramer, it would seem the idea of bypassing the substantial similarity analysis in cases where the defendant clearly accessed and copied a protected work is not so far fetched. [155]
{50} At least one commentator has dismissed the Kramer holding as an "unprecedented assertion" in copyright jurisprudence. [156] Unprecedented or not, Kramer marks an admirable attempt to establish one bright-line rule in an area rife with conflicting holdings and arbitrary standards. [157] Moreover, it exemplifies, by implication, a holding that is parallel with a central, underlying tenet of the proposed notice rule: the elimination of the substantial similarity requirement in copyright infringement cases once copying has been conclusively established. [158] Conceivably, the Fourth Circuit might embrace such a rule as a natural extension to its decision in Kramer, if afforded the opportunity.
{51} Confusion, disconnected reasoning, conflicting holdings: today, these are the hallmark characteristics of de minimis use analysis within many copyright infringement cases. Branding an appropriation as either de minimis versus an actionable infringement is a subjective task which an objective and impartial court is poorly suited to accomplish. Each test, whether a simple, quantitative measurement as in Woods, or an intricate, multi-layered series of artistic inquiries as in Sandoval, presents serious drawbacks. Indeed, the various de minimis tests which have arisen in the world of copyright jurisprudence seem to have formulated ex nihilo - over time, their acceptance or rejection within a jurisdiction becomes little more than a mantric recitation of precedence with little, if any, consideration of their broader policy implications. To end this conceptual quagmire, the problem of de minimis use and copyright infringement, in general, must be examined in a new light.When they saw so many ridiculous, ramshackle institutions, survivals of an earlier age, which no one had attempted to co-ordinate or to adjust to modern conditions . . .
- Alexis De Tocqueville
{52} The nature of the infringement problem is reciprocal. In the advent of modern digital effects, the infringer, having access to almost any artistic work's likeness, possesses a carte blanche ability to lift, augment, distort, or destroy that likeness within his own work by simply pushing a button. He harms the author by appropriating this protected expression without compensating the author for the work. On the other hand, an author stifles the future development of creative works, preventing others from building upon the author's prior work, by rigorously enforcing his copyright. If both parties were brought together before the copyrighted expression became incorporated into the infringer's work, they could reach a mutually agreeable solution for the optimal use of the work. Additionally, the expense and time of litigation could be circumvented, or at least relegated to situations where the two parties reach an impasse.
{53} From this, a central goal of copyright law seems clear: to encourage and provide incentives for the pre-litigation negotiation between authors and infringers. Together, the parties could quantify the value of a contemplated appropriation or determine whether a proposed use is merely de minimis. To accomplish this goal, the law must first remove the incentive from infringers to surreptitiously appropriate copyrighted expression in the hope that a court will subsequently wink at such a taking, excusing it as a de minimis use. The law must also provide some kind of mechanism to apprize copyright owners of the various appropriations of their respective works which occur, from time to time, in the outside world. Finally, to promote this goal, the law must ensure that the negotiation process will be meaningful and fair.
{54} Therefore, to meet these requirements and promote the optimal use of copyrighted expressions in the United States, this article proposes the rule:
I believe the implementation of this rule would neatly accomplish the balance of interests (protecting authors' creative expressions without quelling future creative works based on prior art) which American copyright law endeavors to strike. It divorces the roles of judge and art critic; the adjudicator would no longer need to foray into the art expert's province. It encourages parties to resolve their own differences within an artistic world that spans from the classic mediums of stone and paint to the cutting edge of computer image effects in film. Finally, the rule promotes efficiency - efficient use of the courts, efficient use of authors' and infringers' resources, and ultimately, the efficient use of a copyrighted expression. Perhaps in the future, the Frederick Harts of the world could spend more of their time creating great art, and less time litigating it.Once access or actual copying has been conclusively proven, a defendant is barred from raising a de minimis use defense unless he has, prior to the appropriation, provided the copyright owner adequate notice regarding the intended use.