District Court Applies Different Requirement for Similarity of Accused and Asserted Works Under DMCA Versus the Copyright Act
September 4 2020
In Kirk Kara Corp. v. Western Stone & Metal Corp. et al, 2-20-cv-01931 (CDCA 2020-08-14, Order) (Dolly M. Gee), the Central District of California denied Defendant’s motion to dismiss Plaintiff’s claims for copyright infringement, finding sufficient substantial similarity between the copyrighted works and the accused works had been alleged. However, the Court granted Defendant’s motion to dismiss Plaintiff’s DMCA § 1202 claim because plaintiff failed to allege Defendant’s works were exact copies of Plaintiff’s, thus reasoning substantial similarity was not sufficient under the DMCA because DMCA violations exist only where the works are identical.
In the case, Plaintiff Kirk Kara Corp. asserts it is the owner of three registered copyrights for jewelry designs (“Subject Designs”), and alleges they were widely disseminated in the jewelry industry. Plaintiff further alleges that Defendant Western Stone and Metal Corp., doing business as Shane Co., distributed and/or sold four engagement rings (“Subject Products”) that are substantially similar to Plaintiff’s copyrighted jewelry designs. Plaintiff alleged copyright infringement, vicarious copyright infringement, contributory copyright infringement, and a violation of the Digital Millennium Copyright Act (“DMCA”), 17 U.S.C. § 1202 against Defendant. Defendant moved to dismiss all claims.
As to the copyright infringement claims, that Court noted that to prevail a plaintiff must show: “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” Absent direct evidence of copying, a plaintiff can establish copying by showing that the defendant had access to the plaintiff’s work and the works are substantially similar. However, in assessing whether works are substantially similar, courts in the Ninth Circuit apply only the extrinsic test at the motion to dismiss stage. The extrinsic test consists of two steps: (1) filtering out unprotectable elements to determine the “breadth” of copyright protection for the protectable elements, and (2) comparing the corresponding protectable elements in both works to determine their similarity.
In the first step, the court “must filter out the unprotectable elements of the plaintiff’s work—primarily ideas and concepts, material in the public domain, and scènes à faire.” In the context of jewelry designs, concepts inherent in jewelry making and ideas that merge with expression are unprotectable. Thus, the Defendant in this case argued that after filtering out unprotectable elements, Plaintiff’s Subject Designs are entitled to only thin copyright protection because there are few protectable elements. However, the Court rejected this argument, finding “at this stage, Plaintiff’s allegations are sufficient for the Court to infer that…there are ‘gazillions’ of ways to assemble and express engagement rings.” Thus, “the Subject Designs enjoy broad copyright protection.”
Turning to the second step, the Court reasoned that “[b]ecause the Subject Designs are entitled to broad copyright protection, a plaintiff can satisfy the extrinsic test by showing that the works are substantially similar.” The Court noted that there is no “well-defined standard” for substantial similarity, but that the two works’ “selection and arrangement of elements must be similar enough that ‘the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them.’”
Turning to the works at issue, the Court noted that although the pictures attached to the complaint “reveal some differences between the Subject Designs and Subject Products” a copyrighted design need not be copied “in its entirety” to be infringed under the substantial similarity standard—the infringer need only copy a “substantial portion” of the copyrighted work. Thus, the Court held that “at this stage, from a visual examination of the two-dimensional photographs, it is sufficient for the Court to conclude that Plaintiff’s allegations of substantial similarity are sufficiently plausible to survive” Defendant’s motion to dismiss the copyright infringement claims.
However, as the the DMCA claim, the Defendant argued that Plaintiff’s claim should be dismissed because the images displaying the Subject Designs and the images displaying the Subject Products are not exact copies. The Court agreed, reasoning that based “on a review of the side-by-side images included in the Complaint, the Court can determine that, while the works may be substantially similar, Defendant did not make identical copies of Plaintiff’s works.” In such cases, even where the underlying works are similar, courts have found that no DMCA violation exists where the works are not identical.
The Court thus granted the motion to dismiss as to the DMCA claim. Moreover, the Court also held that “[s]ince it does not appear possible for Plaintiff to make new or different allegations that would disturb the conclusion that Defendant’s rings are not identical copies of Plaintiff’s rings, leave to amend” is denied.
Thus, in sum, copyright holders must be aware that while alleging substantial similarity may be sufficient for an infringement claim under the copyright act, it will almost certainly not be sufficient under the DMCA because no DMCA violation exists where the works are identical. Similarly, those accused of a DMCA violation should review any complaint carefully to ensure a claim under the DMCA has been properly alleged.