By: Joshua Kaufman, Esq. © 2004

One of the more ironic parts of my practice is dealing with my clients when it comes to knockoffs.  I’m fortunate enough to represent a great many art publishers.  These men and women are generally good business men and almost universally honest people.  Usually those two characteristics are not in conflict, however when it comes to knockoffs there is a bit of tension that arises balancing one’s business acumen and sense of right and wrong. I am using the term “knockoff” to describe a work which was clearly inspired by another artist’s work and in fact attempts to evoke its feeling and mimic it as closely as possible without becoming a copyright infringement; a work that goes up to the line but doesn’t cross the line.  All of us who are involved in the art world know that it is no different than many other creative areas in which there are fashions and trends.  This is true in the visual arts, literature, music, television, film where at different points in time, different looks, attitudes, sounds, colors, subjects appeal to our audiences and these change with time.  Art publishers are always looking for the next popular artist, style or movement. When they are fortunate enough to identify a new trend before anyone else to find the next big artist, the next big look, not only do they try to get to the marketplace first, once they’re in the marketplace they jealously want to guard their newly found franchise, their ace in the hole.  Certainly a reasonable objective.  On the other hand, the other art publishers, all being very much aware of what their competitors are showing and what is popular, note the success of their competitors’ new artist, new look, the new style, the new popular subject matter, and they too, want to participate in this new phenomenon and offer the public and their customers works of the same type.  The result, of course, is that they search out other artists with a similar style or instruct artists who they know are versatile to create works of that same type, subject matter, look, or style.  What makes this all ironic is the same clients and publishers who call to complain about being knocked off by other publishers and asking whether or not the other publishers have crossed the line and can be stopped, the very next day are doing the same thing to their competitors.  As I said at the outset of this, I’ve been fortunate that my clients are honest, honorable people who do not want to cross the line and yes, they get frustrated with their competitors, and yes, they all also recognize that the irony in this situation that they are doing the same thing to their competitors. 

None of my clients want to become copyright infringers and the test between a knock off and infringement is not a clearly defined or definable line.  There are many old wives’ tales circulating in all artistic fields regarding how different a work must be in order not to be infringing:  rework 5% no 20%, change some of the colors, modify no more than 8 measures of music, don’t copy in excess of 250 words, etc.  Forget all of them, they are all old wives’ tales.  There are no hard and fast tests determining when a work is a copyright infringement.  There are no safe harbors per se.  The standard set out in copyright law is the unbelievably ambiguous expression “substantial similarity”. In hundreds of court cases judges have labored to define substantial similarity.  Oh yes, to make matters a little more complicated in this area, in addition to worrying about copyright infringement there is a section of trademark law called trade dress, which protects the overall look of a work somewhat akin to stylistic protection that you might violate.  

 Let’s examine these legal theories more closely.  The first thing to do is look at the phrase “substantial similarity.”  The first word is ‘substantial’, therefore, slight and trivial similarities are not substantial and therefore not infringing.  The second word is ‘similar’, and therefore, does not require that the works be identical or virtually identically to be infringing all they need be is similar.  A work can have distinguishable variations yet still be infringing.  All too often when we make a claim of copyright infringement the infringer bombards us with a list of distinguishing characteristics and differences.  The courts have held that one doesn’t look at the differences; rather, one looks at the similarity in the overall work in order to determine substantial similarity.  How much of a variation does one need to make a work an original work and not infringing?  Judge Learned Hand in describing the line not to cross probably put it best when he said, “wherever it is drawn it will seem arbitrary and that the test for infringement of a copyright is of necessity vague.” 

The leading legal treatise in the field, Nimmer on Copyright, comes up with its own terminology for analyzing substantial similarity and breaks it into two forms: comprehensive non-literal similarity and fragmented literal similarity.  Comprehensive non-literal similarity is “a similarity not just as to a particular line or paragraph or other minor segment but where the fundamental essence or structure of one work is duplicated in another…the mere fact that the defendant has paraphrased rather than literally copied will not preclude a finding of substantial similarity.  Copyright can not be limited literally to the text or else a plagiarist would escape by immaterial variations”.  This concept, however, is tempered by one of the basic premises of copyright law that ideas are not protected only an expression of an idea.  Therefore, if the similarity between works rests solely in the duplication of the idea, it will not be deemed substantially similar even if the ideas are identical.  It has to be in the way that the ideas are expressed.  Fragmented literal similarity is where there is similarity but not necessarily of the whole work.  This comes into play where specific elements of a work are copied but the overall work may be very different. Therefore, it could be a line, a paragraph, a tree, a face, an arm, a few measures of music that are copied literally.  The question then becomes, at what point does the copying become substantial and therefore an infringement.  Again, there is no easy rule or test to decide as to the amount of fragmented literal similarity permitted before substantial similarity kicks in and infringement is found.  In addition to looking at how much was copied (i.e. what percent of a work, how many elements or square inches or the like) one also needs to look at the quality of the taking.  Was the copying of an important element of the underlying work?  Is it an important element of the new work?  Is it an essential element?  The more important and essential the elements copied, the more likely that a smaller amount of copying will be considered substantial similar.

  Who gets to decide whether two works are substantially similar?  Under the law this is  considered a question of fact and therefore would be for a jury to decide (although many of copyright cases are decided just by a judge and in those instances the judge wears two hats.  He or she sits as the jury and decides facts and also sits as the interpreter of law and decides questions of law.)  Only in cases where it is so clear and obvious to the judge that two works are not similar or that they are virtually identical will they rule early on in a case declaring a work infringing or not infringing.  These matters, if they do go to trial, usually have to wait until the end in order to be determined.  So, therefore, it is often frustrating for clients of mine who believe they have a case that’s a slam dunk but where the infringement is not identical, that they often would have to go through the whole process in order to get a determination of infringement. 

The traditional test for this has been what has been known as the audience test.  Specifically, if the ordinary person “without the aid or suggestion or critical analysis by others would feel that infringement had occurred” then an infringement will have been deemed to have occurred.  The test is of a spontaneous reaction, not detecting dissimilarities after close scrutiny.  But, even then, the infringement must come from the expression of the ideas not the ideas.  So even if the ordinary person views two works and finds them to be very similar, if the similarity is based solely on the underlying concept, an infringement is not deemed to have occurred.  This is not to say that this test has not been criticized and it is also not universally accepted but it is the most commonly applied test when it comes to copyright infringements of the visual arts.

 In New York the court’s established what was known as the Aranstein test where they said the first question to be determined is whether the defendant copied the plaintiff’s work.  Assuming that that copying is proven, then the next question which is addressed goes to whether the copying constitutes an improper appropriation.  To get past the first hurdle you look at the works in their entirety, including both protectable and nonprotectable elements of it.  Then, if at that juncture the jury decides that, yes, based on the overall look it is clear to them that the works have been copied then you would strictly apply the audience test.  In California the courts there establish what is known as the Krofft test, where the first thing you undertake to examine is whether there is a substantial similarity as to the general ideas contained in the works.  The court labels this first test, the “extrinsic test” not based on the gut of a trier of fact but a specific criteria that can be objectively listed and analyzed:  such as subject matter; setting for the subject; type of work materials used.  After you have found similarity then the second step requires a determination as to whether there is an overall general similarity in the expression of the ideas so they constitute infringement.  In the second step you don’t do an analytical dissection of the work or use expert testimony, but rather you go back to the ordinary observer test.  Both of these tests are generally, just different ways of implementing the ordinary observer test.  Unfortunately, in most cases when you read the opinions, they are all text and do not contain copies of the underlying art works in question.  Thus making it difficult to get a true handle on when one crosses the line. 

Copyright cases have universally held that style is not protected.  In recent cases they have held that to determine infringement you don’t look at the overall body of work of an artist’s work either.  It’s really a head to head comparison between the two specific works at issue.  In a number of cases, again, as part of the determination of whether a work is substantially similar, refer to “the overall look and feel of the work” as a factor to consider.  This can provide a basis for copyright infringement even if there are few identical components. 

As we mentioned above, Trade Dress is another area of law which may or may not broaden the net cast by artistic protection.  Trade dress is an area in which a product source is identified by its overall look and feel.  The courts have broken this area of law into two classes: when the issue depends on the similarity between the packaging of the work and when the similarity is between actual works themselves.  The courts have defined trade dress as essentially a product’s total image and overall appearance.  It is defined by the overall composition and design including shape, size, color, texture and graphics.  Since a trade dress claim in art work would obviously deal with the product itself and not the packaging one would need to show that the work has acquired a secondary meaning.  That is when one looks at a work and the average person is going to be able to identify it with a specific source or in our case a specific artist (even if they don’t know the name of the artist).  Thus, in order to establish a trade dress claim, an art work “style” (and I use the word very loosely) must be clearly and uniquely identified with one artist.  Therefore, if a claim for trade dress is going to be made it needs to be made by an artist whose “style” is unique and very recognizable.  One that has acquired a “Secondary Meaning”. Secondary meaning means that a look has acquired such popularity that the that has been held by the courts to mean “the plaintiff demonstrate that the appearance of his wares has in fact come to mean that some particular person—the plaintiff may not be individually known—makes them that the public cares who does make them and not merely for their appearance and structure…the critical question of fact…is whether the public is moved in any degree by the article because of its source and what are the features by which it distinguishes the source.”

If one waits until the field is cluttered with competitors who have imitated this “style” secondary meaning will probably be lost.

  There is only one reported case from over a decade ago in which Trade Dress was directly applied to the work of an artist.  Unfortunately, from a legal precedential point of view, the alleged infringer went bankrupt and was not able to proceed so the case stopped at the injunction level and never was tried on the merits.  So we don’t really have a definitive ruling on whether or not trade dress will or will not apply to the arts.  It is certainly something that is out there and potentially available but it is a difficult argument to make and one that would fit in only a few and very unique set of circumstances.

So what’s the difference between a knockoff and an infringement?  It’s all in the eyes of the beholder and the beholder will either be a judge or a jury.  In most instances where my clients express to me their concerns that their works are being infringed upon, we do an analysis based both on copyright and on trade dress, we look at the works, we look at how much that is copied is the overall idea, what is the overall look and feel of the works, how much of the similarity between the two works is unprotected idea versus actual expression, we look to see if there are specific elements that have been copied, we look to see how much is similar with less concern about how much different, we look to see how unique the artist’s “style” is, and basically go on a gut reaction based on reviewing hundreds and hundreds of these types of cases.  Subjective?Certainly.  But then why can’t practicing law be an art form as well.