A case out of the Sixth Circuit Court of Appeals, Gordon vs. Nextel Communications and Mullen Advertising Inc., discussed some aspects of infringement claims that often do not come up.   In that case, plaintiff Gordon was a medical illustrator and 2 of Gordon’s illustrations were used in a television commercial by defendant Nextel without Gordon’s permission.  Gordon brought suit against Nextel and Mullen (its advertising agency) for copyright infringement based on the said use and on the basis as well that defendants removed his copyright notice from the works in violation of the provisions of the Copyright Act, 17 U.S.C. Section 1202.

De Minimis

        Under United States copyright law, there is a doctrine called “de minimis.” The doctrine refers to a use of a copyright work that might otherwise be deemed to be an infringement except that in the given instance the amount of use is so small (using a number of factors in making that determination) that the courts hold that such use does not even reach the level of being an infringement.  Often defenses based on “de minimis” are coupled with defenses of “fair use” but fair use becomes a potential defense only if the use would actually be an infringement but for fair use.  So as a technical issue, if a court finds that the use is “de minimis,” there would be no need to reach the issues related to whether or not the use was a “fair use.”  [There are a number of articles on my site dealing with fair use you should read.  Click on “Articles for Writers and Publishers.”]

        The Court stated:

To establish that a copyright infringement is de minimis, the alleged infringer must demonstrate that the copying of the protected material is so trivial “as to fall below the quantitative threshold of substantial similarity, which is always a required element of actionable copying.” Ringgold, 126 F.3d at 74. In determining whether the allegedly infringing work falls below the quantitative threshold of substantial similarity to the copyrighted work, courts often look to the amount of the copyrighted work that was copied, as well as the observability of the copyrighted work in the allegedly infringing work. See id. at 75. Observability is determined by the length of time the copyrighted work appears in the allegedly infringing work, as well as the prominence in that work as revealed by the lighting and positioning of the copyrighted work. See id.
        The Court then reviewed the regulations issued by the Librarian of Congress in regard to the amount of royalties to be paid by public broadcasting entities for the use of protected material.  Such regulations provide guidelines for determining the threshold for when a higher royalty may be payable and are based on the amount of time the protected material appears in the broadcast and in turn whether the use is deemed a “featured” use or a “background and montage” use.  This was a case, keep in mind, involving the broadcast of a commercial so these regulations provided some guidance.  However, in determining issues related to “de minimis” in this and other cases, there may be other factors that go into such a determination, as the reader can see below.

        The Court stated:

Gordon asserts that both illustrations are shown for more than the three seconds required by the regulations for royalties if shown on public television. Gordon asserts that the Bridge illustration appears for 10.6 seconds and the Root Canal for 7.3 seconds, twice in close-ups. Furthermore, Gordon asserts that 2.3 seconds of Root Canal is viewed full-screen or substantially full screen.

In support of their claim that the use of the illustrations was de minimis, the defendants assert that the Bridge illustration is never in focus and appears only briefly in background. [emphasis added] Additionally, they contend that the illustration component of the Root Canal work is observable for less than a second, and the viewers’ attention is drawn to the words “root canal,” which are not copyrightable. [emphasis added] [see explanation below] The district court concluded that use of Gordon’s artwork was de minimis, primarily for the reasons articulated by the defendants. JA at 499. Our review confirms the conclusions of the district court.

Because observability is determined by the length of time the copyrighted work appears in the allegedly infringing work, as well as its prominence as revealed by the lighting and the positioning of the copyrighted work, it is apparent that the use of the Bridge illustration does not rise to the level of actionable copying. The Bridge illustration is never in focus and appears only as distant background. [emphasis added]

        The Court further stated:
While the use of the Root Canal illustration presents a closer question, we find its use also to be de minimis. We have viewed a video copy of the relevant portions of the alleged infringing commercial, and we find that the defendants’ use of Root Canal falls below the quantitative threshold of actionable copying. In contrast to Ringgold, where the court found that the artwork was “clearly visible ... with sufficient observable detail for the ‘average lay observer’ ... to discern African-Americans in Ringgold’s colorful, virtually two-dimensional style,” Ringgold, 126 F.3d at 77, the primary impact of the use of the Root Canal illustration in the commercial comes from the focus on the words, which are not copyrightable. The initial focus on the illustration itself is very brief. Because Gordon’s illustrations appear fleetingly and are primarily out of focus, we find their use to be de minimis. [emphasis added]
        By way of explanation: short phrases (“root canal” in this instance) are said to be not copyrightable.  In this instance, these 2 words are generic and not unique and could certainly not be claimed to be original with the plaintiff and thus not copyrightable.  For a case, however, that held that in some instances short phrases might be protectable, read “Fair Use: Further, Further Issues”.

More On De Minimis

        In a case out of the Ninth Circuit, Newton vs. Diamond et. al.,  the issue as to “de minimis” was whether the use of a 6 second, 3 note piece of music in another recording (via the technique of “sampling”) was a copyright infringement.  The defendants The Beastie Boys had obtained a license to use the recording containing the said composition but had not obtained a license to use the actual composition.  [Keep in mind that there are separate and distinct rights involved here.  Read “The Use of Music on Multimedia Web Sites” on my site.]

        The Court affirmed the ruling of the trial court that the use by the defendants of the sampled notes, even if such notes were sufficiently original to merit copyright protection, was “de minimis.”  The Court stated:

The leading case on de minimis infringement in our circuit is Fisher v. Dees, 794 F.2d 432 (9th Cir. 1986), where we observed that a use is de minimis only if the average audience would not recognize the appropriation. See id. at 434 n.2 (“[A] taking is considered de minimis only if it is so meager and fragmentary that the average audience would not recognize the appropriation.”). This observation reflects the relationship between the de minimis maxim and the general test for substantial similarity, which also looks to the response of the average audience, or ordinary observer, to determine whether a use is infringing.
        The Court found that because the plaintiff had granted the recording rights to the record company (which in turn had licensed the recording to The Beastie Boys), the plaintiff’s case had to stand or fall on the basis of the composition alone and on that basis, the Court found that the use of the indicated notes was “de minimis.”  The Court stated:
Once we have isolated the basis of Newton’s infringement action — the “Choir” composition, devoid of the unique performance elements found only in the sound recording — we turn to the nub of our inquiry: whether Beastie Boys’
unauthorized use of the composition, as opposed to their authorized use of the sound recording, was substantial enough to sustain an infringement action. In answering that question, we must distinguish between the degree and the substantiality of the works’ similarity. Cf. Ringgold, 126 F.3d at 74-75; 4 Nimmer § 13.03[A][2], at 13-45. The practice of music sampling will often present cases where the degree of similarity is high. Indeed, unless the sample has been altered or digitally manipulated, it will be identical to the original. Yet as Nimmer explains, “[if] the similarity is only as to nonessential matters, then a finding of no substantial similarity should result.” 4 Nimmer § 13.03[A][2], at 13-48; cf. Warner Bros. v. Am. Broad. Cos., 720 F.2d 231, 242 (2d. Cir. 1983). This reflects the principle that the substantiality requirement applies throughout the law of copyright, including cases of music sampling, even where there is a high degree of similarity.
        The Court went on to state, citing cases and other authorities:
“[T]he relevant inquiry is whether a substantial portion of the protectible material in the plaintiff’s work was appropriated — not whether a substantial portion of defendant’s work was derived from plaintiff’s work.”); Jarvis v. A&M Records, 827 F. Supp. 282, 289-90 (D.N.J. 1993); 4 Nimmer § 13.03[A][2], at 13-47 to 48 & n.97. This focus on the sample’s relation to the plaintiff’s work as a whole embodies the fundamental question in any infringement action, as expressed more than 150 years ago by Justice Story: whether “so much is taken [ ] that the value of the original is sensibly diminished, or the labors of the original author are substantially to an injurious extent appropriated by another.”
        This case, as with all cases involving both sampling issues and other copyright infringement issues, is very fact-specific and each case has to be evaluated on the basis of the facts so presented.   And in such instances, different courts can see the matter differently.  Indeed, in the Newton case, there was a dissent filed, the essence of which is that the dissenting justice stated that although the majority had recited the law correctly, the dissenting justice believed that reasonable minds could differ as to the application of the facts to the law and thus the matter should have gone to a jury trial.

Removal of the Copyright Information

        As indicated above, plaintiff in the Gordon case also filed suit on the basis that plaintiff claimed the defendants removed his copyright information.  The Court cited some of the provisions of the Copyright Act section 1202 (b) as follows:

No person shall, without the authority of the copyright owner or the law--

(1) intentionally remove or alter any copyright management information,

. . . . .

(3) distribute ... copies of works ... knowing that copyright management information has been removed or altered without authority of the copyright owner or the law,

knowing, or, with respect to civil remedies under section 1203, having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement of any right under [federal copyright law].

        For purposes of this article, copyright management information includes (but is not in the statute limited to) the copyright notice.

        Note that there are a number of elements of the causes of action that the plaintiff has the burden of proving.  Overall, the key is the requisite knowledge and intent of the defendants (or the knowledge and intent on the part of those parties for whom the defendants may be vicariously liable, as discussed below).

        It is worthwhile noting that the trial court had ruled on the basis of a motion for summary judgment and this means that no actual trial had taken place but instead that the parties had submitted papers to the court including declarations or affidavits stating the facts they claimed supported their position.  In this regard, the trial court ruled that plaintiff failed to prove that these defendants had, themselves, acted with the requisite intent and knowledge and thus the issues became what kind of knowledge the actual commercial production company (which was not a party to the suit) may have had and whether or not such knowledge and intent may be imputed to the defendants.

        The Court stated:

We first must address the defendants’ claim that Gordon failed to present any evidence that the defendants themselves intentionally removed or altered the copyright information or that the defendants even knew that the information had been removed. Regardless of the defendants’ actual knowledge of the removal or alteration of the copyright information, a party may be held vicariously liable for the actions of others under certain circumstance within the copyright context. Vicarious liability exists when (1) a defendant has the right and ability to supervise the infringing conduct and (2) the defendant has an obvious and direct financial interest in the infringement.(1) [emphasis added] See Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d 304, 307 (2d Cir. 1963). These elements are independent requirements, and each must be present to render a defendant vicariously liable. See id. Lack of knowledge of the infringement is irrelevant. See id. Vicarious copyright liability is an “outgrowth” of the common law doctrine of respondeat superior, which holds the employer liable for the acts of its agents. Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259, 262 (9th Cir. 1996). However, vicarious liability extends beyond the traditional scope of the master-servant theory. See Nimmer on Copyright, § 12.04. As long as the required elements are present, a defendant may be liable, even in the absence of a traditional employer-employee relationship. See id.

Shapiro is the landmark case in which vicarious liability for sales of counterfeit recordings was expanded outside the employer-employee context. In Shapiro, the court was faced with a copyright infringement suit against the owner of a chain of department stores where a concessionaire was selling counterfeit recordings. Noting that the normal agency rule of respondeat superior imposes liability on an employer for copyright infringement by an employee, the Second Circuit articulated what has become the acknowledged standard for a finding of vicarious liability in the context of copyright infringement:

When the right and ability to supervise coalesce with an obvious and direct financial interest in the exploitation of copyrighted materials--even in the absence of actual knowledge that the copyright monolpoly [sic] is being impaired ..., the purpose of copyright law may be best effectuated by the imposition of liability upon the beneficiary of that exploitation. [emphasis added]
        For a further discussion of issues about vicarious liability as well as contributory liability, the reader should read “Napster, Grokster and Morpheus”.  These are the legal theories used by the claimants in those cases to seek to hold the provider of the peer-to-peer download service liable for the acts of its members.

        Although the Court stated that it may be that the defendants had vicarious liability based on the conduct of the commercial production company if the said commercial production company acted with the requisite knowledge and intent, merely demonstrating that copyright information is missing is not sufficient to sustain the burden of proof absent the required knowledge and intention on the part of the defendants or on the part of those for whom the defendants may be vicariously liable.  Since there was no evidence produced as to the knowledge of the defendants, as to the knowledge and intention on the part of the actual commercial production company which might be the basis for such vicarious liability on the part of the defendants, the art director of said production company submitted an affidavit stating that he believed the posters had been licensed for use in the commercials and that even though he removed the copyright management information, he did so believing the company had the said license and that removing the same would not therefore have induced, enabled, facilitated, or concealed an infringement and thus the company lacked the intent required by the statute.  He also stated that it was his practice to seek a license from the artist if he believed there was any issue but that since he believed the company already had this license, he did not contact the artist for the same.  The plaintiff failed to produce evidence to counter this evidence.  Thus, since the actual claimed infringer, the said commercial production company, did not act with the requisite intent, there could be no vicarious liability on the part of these defendants for such conduct.

        Thus, the Court sustained the summary judgment in favor of the defendants.


        Among the lessons of these cases is that when using third party material, it is always best to seek a license to do so.  [Read “Screen Shot Liability for Computer Book Authors” as to the benefits of licensing.  Also read “The Permission Form.”]  And the further lesson of the Gordon case is that when using third party material, the user should be careful to use the said material along with all the copyright management information that comes with that material or negotiate and obtain provisions in the license to allow such removal or modification.

        The cases discussed in this article deal with the indicated uses.  As with many issues in the law, while the broad based general principles may be stated, as those principles are to be applied to a given instance is decided only on a case by case basis.

        For an article dealing with some other issues in copyright infringement, read “Copyright Infringement- Some Issues.”

Copyright © 2003 Ivan Hoffman.  All Rights Reserved.


This article is not legal advice and is not intended as legal advice.  This article is intended to provide only general, non-specific legal information.  This article is not intended to cover all the issues related to the topic discussed.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  This article is based on United States law.  You should consult with an attorney familiar with the issues and the laws of your country.  This article does not create any attorney client relationship.


No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.



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