17.17 SUBSTANTIAL SIMILARITY—EXTRINSIC TEST; INTRINSIC TEST (Withdrawn)
The committee has withdrawn the instruction on substantial similarity. That instruction set forth the Ninth Circuit’s Extrinsic/Intrinsic Test for isolating the protectable expression of a work in order to assess whether it is substantially similar to that in another work. See Cavalier v. Random House, 297 F.3d 815, 824 (9th Cir.2002) (noting there can be no finding of substantial similarity unless the plaintiff satisfies both the extrinsic and intrinsic tests).
The committee concluded that the general statement of the test embodied in the former instruction was not helpful in light of the diverse facts that might arise at trial pertinent to a substantial similarity assessment. The committee also concluded that the court and counsel would be best served by specifically crafting instructions in this area based upon the particular work(s) at issue, the copyright in question, and the evidence developed at trial. The following cases may provide guidance in formulating substantial similarity instructions in specific subject areas:
Literary or Dramatic Works: Shaw v. Lindheim, 919 F.2d 1353, 1357 (9th Cir.1990) (literary or dramatic works); Sid & Marty Krofft Television Productions v. McDonald’s Corp., 562 F.2d 1157, 1164 (9th Cir.1977) (commercials infringed television production; general application of specific criteria to assessment of substantial similarity). See also Grosso v. Miramax Film Corp., 383 F.3d 965, 967 (9th Cir.2004) (Shaw factors applied to literary works, screenplay and movie), and Pasillas v. McDonald’s Corp., 927 F.2d 440, 442–43 (9th Cir.1991) (noting Shaw "is explicitly limited to literary works" and Kroft test still applicable to other than dramatic or literary works).
Musical Compositions: Swirsky v. Carey, 376 F.3d 841, 848–49 (9th Cir.2004) (noting factors and constituent elements applicable to "analyzing musical compositions" and that "we have never announced a uniform set of factors to be used. We will not do so now" because "each allegation of infringement will be unique."); Newton v. Diamond, 388 F.3d 1189, 1196 (9th Cir.2003) (musical elements); Three Boys Music Corp. v. Bolton, 212 F.3d 477, 485–86 (9th Cir.2000) (identifying "areas" of similarity of musical works).
Computer Programs and Similar Technologies: Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1445 (9th Cir.1994) (audiovisual and literary component of computer program); Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1477 (9th Cir.1992) ("computer programs are subject to a Shawtype analytic dissection of various standard components, e.g., screens, menus, and keystrokes") (emphasis in original); Data E. USA, Inc. v. Epyx, Inc., 862 F.2d 204, 210 (9th Cir.1988) (karate game and home-computer karate game); Frybarger v. Int’l Bus. Mach. Corp., 812 F.2d 525, 529–30 (9th Cir.1987) (video game).
Motion Picture, Television Production or Copyrighted Script: Rice v. Fox Broadcasting Co., 330 F.3d 1170, 1177–78 (9th Cir.2003) (video and television specials); Metcalf v. Bochco, 294 F.3d 1069 (9th Cir.2002) (screenplay and television series); Kouf v. Walt Disney Pictures Television, 16 F.3d 1042, 1045 (9th Cir.1994) (movie and screenplay); Berkic v. Crichton, 761 F.2d 1289, 1293 (9th Cir.1985) (novel and motion picture); Litchfield v. Spielberg, 736 F.2d 1352, 1356–57 (9th Cir.1984) (musical play and movie).
"Other Than Dramatic or Literary Works": Cavalier v. Random House, Inc., 297 F.3d 815, 826 (9th Cir.2002) (works of visual art); Sid & Marty Krofft Television Productions, 562 F.2d at 1164 (dicta concerning application of specific criteria to plaster recreation of the nude human figure); Pasillas, 927 F.2d at 442–43 (noting Kroft test applicable to other than dramatic or literary works; using test to assess similarity of Halloween mask and mask used in television commercial).
"Ordinary Observer" Test: Micro Star v. Formgen, Inc., 154 F.3d 1107, 1112 (9th Cir.1998) (ordinary reasonable person standard); Johnson Controls Inc. v. Phoenix Control Sys., 886 F.2d 1173, 1176 n.4 (9th Cir.1989) (computer software); Data E. USA, Inc., 862 F.2d at 209–10 (intended audience); Aliotti v. R. Dakin & Co., 831 F.2d 898, 902 (9th Cir.1987) (perception of the children); Berkic, 761 F.2d at 1293 (reasonable reader or moviegoer).