[This is the fourth in series of posts summarizing my new article, “The Grapes of Roth.”]
Introduction
Part I-A: Duck-Rabbits in Equity
Part I-B: Counting to 21 Similarities

By the mid-1970s judges in both the Second and Ninth Circuits realized that the “recognizability” standard for copyright infringement determinations was unworkable. As Roth Greeting Cards and International Luggage Registry had demonstrated, mere recognizability swept uncopyrightable as well as copyrightable material into the comparison, and hinged the infringement determination on the faintest suggestion of either. Some test was needed that would allow courts to do all three parts of the difficult balancing act described in Part I-A, in particular the assessment of how much protectable material was taken and whether that amount surpassed some threshold that made it unreasonable. Pre-Legal-Process courts had tackled these questions, but without saying much more than that the defendant had “wrongfully appropriated” the plaintiff’s protected expression, or taken its “aesthetic appeal,” or “justified” an infringement claim. Such openly normative assessments, relying on the judge’s subjective evaluation of the material taken, plainly would not do in a more formalist age. An alternative framework was needed.

Two decisions in rapid succession, one from the Second Circuit and one from the Ninth, latched onto the “total concept and feel” phrase as a way to express an overall level of similarity or dissimilarity in protected expression without openly making a normative or aesthetic judgement. In Reyher v. Children’s Television Workshop (2d Cir. 1976), the Second Circuit considered a claim by the authors of a children’s book based on a simple story: a lost child describes her mother only as “the most beautiful woman in the world,” which delays finding her because the mother does not meet conventional expectations of beauty.  Sesame Street Magazine published a 2-page story that followed the same basic plot, but had different dialog, different illustrations, and was set in a different location. Was it infringing? Certainly the story was recognizable, but in almost every other detail the works were completely different. Reaching for a way to assess the protected expression in the stories holistically, the panel fell upon the empty verbiage from Roth: Given the simplicity of the stories, the court suggested, “we might [also] properly consider the ‘total concept and feel’ of the works in question.” Aside from a similar sequence of events, which the court found to be unprotectable scènes à faire, the remainder of the stories had an entirely different “total feel,” and thus there was no infringement.

The following year, the Ninth Circuit found its way back to the Roth formulation as well. In Sid & Marty Krofft Television Productions, Inc. v. McDonald’s Corp., the plaintiffs claimed that their children’s television show, “H.R. Pufnstuff,” had been ripped off to make the McDonaldland characters — Grimace, the Hamburgler, Mayor McCheese, etc. The issues were whether the jury verdict of infringement was correct and whether damages had been properly determined. But the opinion started with a long discussion of the proper test for infringement, casting shade — without mentioning any names — on how it had been done up to that point. Merely asking about the similarity between two works — in other words, whether anything from the plaintiff’s work is recognizable in the defendant’s — produces “some untenable results,” the court noted. “Clearly the scope of copyright protection does not go this far. A limiting principle is needed,” namely one that separates out idea from expression and determines only the extent to which there has been copying of the latter.

The court then grandiosely declared, “The test for infringement therefore has been given a new dimension.” Unfortunately, as is well known, that new dimension was a thorough garbling of the Arnstein v. Porter decision from the Second Circuit, a misstep that has thrown Ninth Circuit caselaw for a loop it is still trying to recover from. But after mangling the concept of substantial similarity, the Ninth Circuit had to apply its new framework to the jury verdict below, which had held the McDonald’s characters to infringe the somewhat similar-looking H.R. Pufnstuf characters. Were they? The Ninth Circuit panel agreed with the jury. “It is clear to us that defendants’ works are substantially similar to plaintiffs’.” Why? “They have captured the ‘total concept and feel’ of the Pufnstuf show.”

In both Reyher and Sid & Marty Krofft, the reference to “total concept and feel” allowed the court to express a conclusion as to whether the defendants had taken too much copyrightable expression without specifically identifying what in the plaintiff’s work was expression, what in the defendant’s work was similar or dissimilar, and where the threshold level of similarity lay. “Total concept and feel” was thus a way of summing up all three of the difficult judgments an infringement determination required, and it did so in a way that met modern judicial norms while avoiding the ham-handedness of “recognizability.”

[This is the third in series of posts summarizing my new article, “The Grapes of Roth.”]
Introduction
Part I-A: Duck-Rabbits in Equity

In yesterday’s post, I summarized how infringement determinations were made in the age of equity, in the early to mid-twentieth century: judges compared the plaintiff’s and defendant’s works as an ordinary observer would, then mentally pared down the similarities by considering only protected expression. Based on that filtered comparison, the judge would arrive at a conclusion about whether the protected similarities were substantial enough to warrant an infringement determination.

That method put a lot of faith in the ability of federal judges to exercise aesthetic, legal, and policy discretion to reliably arrive at just outcomes involving infringement. But by the early 1960s, that faith was waning. Several factors were behind this shift. The first was simply generational: the active bench of the Second Circuit, the leading copyright appellate court in the mid-twentieth century, experienced a nearly complete turnover between 1951 and 1957, and by 1964, all nine active judges had been appointed within the last ten years. Learned Hand and the cadre of judges who served with him–judges who were used to equitable decision-making–were gone, replaced by judges such as Edward Lumbard, Henry Friendly, Irving Kaufman, and Thurgood Marshall. This new generation of judges had a very different conception of the judicial role, one considerably more wary of open exercises of judicial discretion.

There were several reasons for this, many of which are briefly elaborated in my article, and a full account of which could occupy its own article or even a book. I’ll just briefly list them here. Legal realism and Lochner–era judicial review had desanctified the judicial decisionmaking process in the eyes of many. The rise of the administrative state and an explosion of statutes moved the conceptual center of the law away from courts, and away from the common law, and placed it instead with legislatures and statutory text. The Erie decision reinforced that view by locating law in the command of a government, not a transcendent body of principles. Equity was fading as a familiar decision-making procedure. The federal courts and federal caseload exploded, putting pressure on lower courts to better explain their decisions for more efficient review.

The result was a revolution in legal ideology, the foundational axioms of which were encapsulated by a theory that briefly flourished at Harvard Law School in the 1950s and ’60s, and was laid out in a set of teaching materials titled “The Legal Process.” Legal Process theory had two significant components to it. First was the principle of “institutional settlement,” meaning the way in which different sorts of decisions were parceled out to different institutional players. With the rise of statutes and regulations, the content of the law was no longer mostly in the hands of judges, but rather to a large degree was the responsibility of legislatures and administrative agencies. Once it was settled who had primary authority over the content of some provision of law, that institutions decision should govern the other players–including courts. (For more on how “institutional settlement” may have influenced copyright law, see Shyam Balganesh’s article Copyright as Legal Process.)

The second component was the principle of “reasoned elaboration.” Judicial decisions are legitimate, according to this principle, only because they are explained in a series of steps that “build the bridge between the authorities they cite and the results they decree.” The 1960s witnessed a surge of multi-step tests and multi-factor balancing frameworks. Judge Hand’s statement in Sinram v. Pennsylvania R.R. that ultimately every judicial decision rests on fiat was cast aside.

[This is the second in series of posts summarizing my new article, “The Grapes of Roth.” Here is the introduction.]

Why did courts become enamored with the inane verbiage of the “total concept and feel” test in the 1980s? The story starts with Learned Hand.

Learned Hand, as I’ve mentioned before, is one of the giants of copyright law. His opinions in Nichols v. Universal Pictures, Sheldon v. Metro-Goldwyn, and Peter Pan Fabrics v. Martin Weiner have been mainstays in copyright textbooks and cited in caselaw and treatises for decades. But one of the reasons why is not often appreciated. Take a look at any copyright decision from Hand’s heyday, such as his district court opinion in Fred Fisher v. Dillingham (S.D.N.Y. 1924):

The most important line is the first: “In Equity.” Up through 1938, when the Federal Rules of Civil Procedure were adopted, and even for decades after that time, judges were used to resolving certain disputes based on considerations of fairness and justice — suits brought in equity. Not just any claim could be filed in equity; the complainant had to be requesting some sort of relief that was not available to them “at law,” either because that relief was only equitable (discovery, injunctions, rescission, etc.) or because there was some sort of gap or loophole in the law that needed filling. The judge hearing a dispute in equity would resolve the issue without a jury and based on principles of fairness, such as those encapsulated in the maxims of equity.

Most copyright cases–indeed, most intellectual property cases–before 1938 were brought in equity, because typically the primary relief being sought was an injunction. Indeed, well after the merger of law and equity in 1938, courts still heard copyright cases claiming injunctive relief in an equitable fashion, without a jury; and even after the Supreme Court nixed that practice whenever damages were alleged in 1959’s Beacon Theatres v. Westover, juries were rarely requested in copyright cases until the 1980s. The result was that throughout the middle decades of the twentieth century, judges were quite used to making infringement decisions on their own, based on their impressions of the two works at issue.

This was in many ways fortunate, because an infringement determination in non-exact copying cases involves a tricky balance of three disparate inquiries. First, there is a question of amount: how much of the plaintiff’s material wound up in the defendant’s work? Second, there is a legal determination to be made: was the borrowed material the sort that the law should categorize as protected? And finally, there is a question of line-drawing: where is the threshold of impermissible borrowing, and did the defendant cross it?