Page:Atari v. North American Philips Consumer Electronics.pdf/8

 The district court concluded only that plaintiffs failed to meet the threshold requirement of showing likelihood of success on the merits. The court thus did not address the other factors in denying plaintiffs’ motion. See Kolz v. Board of Education of City of Chicago, 576 F.2d 747, 749 (7th Cir. 1978). Upon reversing that decision, this court nonetheless may direct that a preliminary injunction be entered if we find from the record that plaintiffs as a matter of law made the requisite showing as to the remaining elements.

Under the circumstances of this case, the determination of copyright infringement (or lack thereof) is predicated upon an ocular comparison of the works themselves and does not involve any material credibility issues. Therefore, this court is in as good a position as the district court to decide that question. See Novelty Textile Mills v. Joan Fabrics Corp., 558 F.2d 1090, 1093 (2d Cir. 1977); cf. Union Carbide Corp. v. Ever-Ready, Inc., 581 F.2d 366, 383 (7th Cir.), ''cert. denied'', 429 U.S. 830, 97 S.Ct. 91, 50 L.Ed.2d 94 (1976) (trademark infringement).

III. COPYRIGHT INFRINGEMENT

To establish infringement a plaintiff must prove ownership of a valid copyright and “copying” by the defendant. See 3 M. Nimmer, Nimmer On Copyright § 13.01, at 13–3 (1981) (“Nimmer”). Because direct evidence of copying often is unavailable, copying may be inferred where the defendant had access to the copyrighted work and the accused work is substantially similar to the copyrighted work. Warner Brothers, Inc. v. American Broadcasting Cos., Inc., 654 F.2d 204, 207 (2d Cir. 1981). The parties stipulated to the validity of plaintiffs’ copyright and to access; the district court’s ruling turned solely on the question of substantial similarity.

Some courts have expressed the test of substantial similarity in two parts: (1) whether the defendant copied from the plaintiff’s work and (2) whether the copying, if proven, went so far as to constitute an improper appropriation. See Scott v. WKJG, Inc., 376 F.2d 467, 469 (7th Cir.), ''cert. denied'', 389 U.S. 832, 88 S.Ct. 101, 19 L.Ed.2d 91 (1967); Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946); cf. Sid & Marty Krofft Television Productions, Inc. v. McDonald’s Corp., 562 F.2d 1157, 1164 (9th Cir. 1977) (extrinsic-intrinsic test). Our analysis focuses on the second part of that test and the response of the “ordinary observer.” See Ideal Toy Corp. v. Fab-Lu Ltd. (Inc.), 360 F.2d 1021, 1023 n.2 (2d Cir. 1966). Specifically, the test is whether the accused work is so similar to the plaintiff’s work that an ordinary reasonable person would conclude that the defendant unlawfully appropriated the plaintiff’s protectible expression by taking material of substance and value. Krofft, 562 F.2d at 1164. Judge Learned Hand, in finding infringement, once stated that “the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same.” Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960). It has been said that this test does not involve “analytic dissection and expert testimony,” Arnstein, 154 F.2d at 468, but depends on whether the accused work has captured the “total concept and feel” of the copyrighted work. Roth Greeting Cards v. United Card Co., 429 F.2d 1106, 1110 (9th Cir. 1970).

While dissection is generally disfavored, the ordinary observer test, in application, must take into account that the copyright laws preclude appropriation of only those elements of the work that are protected by the copyright. Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905, 913 (2d Cir. 1980); Clarke v. G. A. Kayser &