Prior to 2003, federal courts in the Sixth Circuit, which encompasses Kentucky, Michigan, Ohio and Tennessee, had not formally adopted a specific test or approach for determining "substantial similari

Prior to 2003, federal courts in the Sixth Circuit, which encompasses Kentucky, Michigan, Ohio and Tennessee, had not formally adopted a specific test or approach for determining "substantial similarity" in copyright infringement cases.

In Kohus v. Mariol (328 F.3d 848), the Sixth Circuit Court of Appeals in Cincinnati adopted a two-step analysis in May 2003.

First, courts must identify which aspects of the artist's work, if any, are protected by copyright. Second, courts must determine whether the allegedly infringing work is "substantially similar" to the protected elements of the original work.

In essence, the first step filters out the unoriginal elements not protected by copyright -- "elements that were not independently created" by the author and that "possess no minimal degree of creativity." The second step requires a judge or jury to determine substantial similarity, normally based on the judgment of the ordinary lay observer.

However, in cases where the target audience possesses specialized expertise, "the specialist's perception of similarity may be much different from the lay observer's," the court wrote. Therefore, expert testimony may be required to show the similarity.

The Kohus case involved a copyrighted drawing for a latch that was part of a portable children's playyard.

The Kohus court held that the first step in its case required expert testimony, since the drawings were technical in nature; a lay person would be unlikely to understand what would be creative, which elements were standard within that industry, and which elements were simply required for the latch to be efficient (and therefore not protected by copyright). The second step also required expert testimony, the court held, since it was one of those "rare cases where the intended audience" was not the lay public.

On Sept. 14, 2004, the Sixth Circuit Court of Appeals in Detroit certified its decision in Stromback v. New Line Cinema for publication. (See 'Little Nicky' Infringement Case Tossed.) The court acknowledged this two-step test for the Sixth Circuit, and applied it to a copyright infringement claim involving a motion picture.

In Stromback, the District Court granted New Line Cinema summary judgment after comparing a poem and screenplay titled "The Keeper" to the Adam Sandler film "Little Nicky," which New Line released. Expert testimony was not provided. The court held that "no reasonable jury could find" substantial similarity between the works.

On appeal, "The Keeper" author argued that he should have been provided the opportunity to offer expert testimony. He urged the court to follow the test used in the Ninth Circuit, which differed from the new Sixth Circuit test.

The court distinguished the tests in the two circuits. The Ninth Circuit test, the court explained, consists of an extrinsic test and an intrinsic test as described in the 1977 case Sid & Mary Krofft Television Prods. Inc. v. McDonald's Corp. (562 F.2d 1157).

Similarities: The two tests are similar, the court wrote, because the Sixth Circuit's first step, like the extrinsic test, requires a determination of which elements of the work are protected by copyright, and the second step, like the intrinsic test, "asks whether the ordinary, reasonable observer would find the works, taken as a whole, to be substantially similar."

Differences: The tests differ because the Sixth Circuit applies a "more stringent standard regarding when to allow expert testimony on the first part of the test," the court wrote. In addition, the Sixth Circuit hasn't adopted the Ninth Circuit's extrinsic-test requirement that eight factors should be considered to determine substantial similarity, as described in the Ninth Circuit 1994 case of Kouf v. Walt Disney Pictures & Television (16 F.3d 1042).

In addition, the Ninth Circuit only considers the extrinsic test when determining whether to grant a summary judgment, and the intrinsic test is reserved for the jury. Therefore, a plaintiff can avoid summary judgment by satisfying the extrinsic test. The Sixth Circuit considers both parts of its test when determining substantial similarity on a motion for summary judgment.

Expert Testimony: Noting that neither the Ninth Circuit nor the Sixth Circuit require expert testimony in all cases, the Stromback court reviewed the District Court's comparison of the two works.

The court concluded: "... we are unable to find any similarity between the works other than at perhaps the most superficial level." It denied Stromback's argument that he should be permitted to offer expert testimony and affirmed the District Court's holding that "a reasonable person could not conclude" that New Line copied any protected expression.

Case: Stromback v. New Line Cinema, District Court for the Eastern District of Michigan at Detroit, District Judge John Corbett O'Meara
Opinion: U.S. Court of Appeals for the Sixth Circuit, Detroit, Mich., Electronic Citation 2004 FED App. 0314P (6th Cir.), Sept. 14, 2004 before Circuit Judges Martin and Sutton, District Judge Quist, opinion written by Judge Quist
Counsel for Plaintiff Stromback: Sommers, Schwartz, Silver & Schwartz by Andrew J. Kochanowski, Southfield, Mich.
Counsel for Defendant New Line Cinema: Honigman, Miller, Schwartz & Cohn by Herschel P. Fink, Detroit, Mich.