Recent Decision Puts Brakes on Runaway Copyright Infringement Litigation

WDC Journal Edition: Spring 2017
By: John Healy, Corneille Law Group, LLC


Over the past few years, copyright infringement lawsuits have made headlines. In March 2015, recording artists Robin Thicke and Pharrell Williams were ordered to pay $7.4 million to the estate of Marvin Gaye (later reduced to $5.3 million) after a jury determined that their hit song “Blurred Lines” was strikingly similar to Marvin Gaye’s 1977 hit song “Got to Give it Up.”1

Conversely, in a similar case in June 2016, a jury found in favor of legendary rock group Led Zeppelin amidst allegations that the instrumental introduction to their 1971 landmark hit “Stairway to Heaven” had been taken from an instrumental riff in a 1968 song “Taurus,” originally recorded by the band Spirit.2 While the respective juries reached different results, in both instances they were asked to undertake a subjective assessment comparing the overall “concept and feel” of the two works at issue to determine whether an infringement had occurred.

These similar cases that resulted in different outcomes highlight the dilemma in copyright law. The law seeks to protect the original expression of an idea, but not the idea itself.3 For example, the idea or concept of a secret agent who saves the world from impending disaster is not protected by copyright; but a particular expression of that idea—such as a James Bond movie—is protected by copyright.4 However, considering that copyright law extends to multiple kinds of copyrightable works that take different artistic forms, the line between an “idea” and the “expression of an idea” is often a blurred line (as Robin Thicke and Pharrell Williams now know firsthand).

Increase in Copyright Infringement Litigation

While the aforementioned high profile lawsuits had a Hollywood venue and involved famous and recognizable musical compositions, Wisconsin has been no stranger to these types of lawsuits, and has lately experienced a staggering increase in copyright infringement lawsuits.

Copyright infringement litigation is notoriously unpredictable, both with respect to proof of liability and the available damages. A plaintiff may choose between statutory damages (ranging from $200 for innocent infringements up to $150,000 for willful infringements) or actual damages, which include an infringer’s profits attributable to the infringement.5 Further, a prevailing plaintiff need not choose the measure of damages until after the jury returns its verdict.6 Moreover, a prevailing litigant—plaintiff or defendant—can recover their actual attorney fees, and these cases are often very costly to litigate.7

Copyright law in the United States is governed by Chapters 1 through 8 and 10 through 12 of Title 17 of the United States Code. Copyright protection extends to “original works of authorship” fixed in any tangible medium of expression.8 “Works of authorship” fall into eight broad categories, including literary works, musical works, dramatic works, pantomimes and choreographic works, pictorial, graphic, and sculptural works, motions pictures and other audiovisual works, sound recordings, and architectural works.9

Copyright protection clearly extends to many different mediums and artistic forms of expression. Recently, Wisconsin has experienced a substantial uptick in copyright litigation involving architectural works and pictorial or graphic works.

The quintessential question in a copyright case is whether the allegedly infringing work is substantially similar to the copyrighted work, which generally requires the trier of fact to determine whether the overall “concept and feel” of the works are the same. As an aside, whether a test as subjective as comparing the overall “concept and feel” of two works can be consistently applied as a workable legal standard by a jury is worthy of further analysis in and of itself; however, before a jury gets to that subjective analysis, a plaintiff must prove that the defendant had “access” to the copyrighted work at issue. To that end, a recent decision by Judge William Griesbach in the Eastern District of Wisconsin may have put teeth back into the “access” requirement, which had slowly been eroded by case law across the country. If affirmed on appeal, this decision could have a significant impact on the volume of copyright litigation and the likelihood of success of cases filed in the Seventh Circuit.

Elements of a Copyright Infringement Claim

To succeed on a claim, a plaintiff must prove (1) ownership of a valid copyright; and (2) unauthorized copying of the constituent elements of the work that are original (i.e., the “protected expression” in the plaintiff’s copyrighted work).10 The second prerequisite to a copyright claim (i.e., unauthorized copying of protected expression) implicates several steps, the first of which is that the plaintiff must either offer direct evidence that the defendant copied the plaintiff’s work, or evidence from which copying can be inferred (i.e., indirect evidence).11

Direct evidence is rarely available in copyright infringement cases. Thus, copying usually must be inferred by proving that the defendant had access to the copyrighted work.12 To prove access, the plaintiff must offer evidence that the defendant had an opportunity to view the copyrighted work.13 However, “this showing must establish more than a ‘mere possibility that such an opportunity could have arisen’; it must be ‘reasonably possible that the paths of the infringer and the infringed work crossed.’”14

A “bare possibility” of access is insufficient, because access will not be found based on mere speculation or conjecture.15 Instead, the plaintiff has the burden of producing evidence sufficient to support a reasonable inference that the defendant had an opportunity to view the plaintiff’s copyrighted work.16 The evidence must be sufficient to remove the question of access from the realm of speculation.17

Proof of Access

Proof of access typically takes two main forms: (1) the plaintiff shows a particular chain of events through which the defendant may have gained access; or (2) the plaintiff establishes that its protected work has been widely disseminated. Based on the wording of the statute and the case law, the access element would seem to be ripe for a potential dispositive motion where there is an absence of sufficient proof that the defendant actually had access to the particular work at issue; however, that expectation surprisingly has not come to fruition in the case law.

The issue of access presents something of a “Catch-22” for litigants. On the one hand, a jury cannot determine whether there was copying of a specific work until it has been proven by sufficient evidence that a defendant actually had an opportunity to copy that work. On the other hand, plaintiffs typically only have inferential evidence of access at their disposal since direct evidence of copying is almost never available. It has been said that virtually all cases in which access is at issue turn on “inferential proofs.”18 In looking at the case law on point, the courts have interpreted the “reasonable possibility of access” requirement rather broadly in cases where access is at issue, and have allowed largely circumstantial evidence and inferential proof to sufficiently establish a triable issue of fact on the issue of access.

Under settled law, a trier of fact may impute access where there is evidence that a third party with whom both the plaintiff and defendant were dealing had possession of the plaintiff’s work, and the plaintiff’s and defendant’s dealings took place concurrently.19 In one case, the Second Circuit inferred a reasonable possibility of access where a songwriter sent the copyrighted work to a third party intermediary who was a supervisor of the alleged infringer (a musician) and the supervisor contributed creative ideas to the musician’s work.20 In many cases, all that is needed is a relationship that links the intermediary and the alleged copier.21 Accordingly, the plaintiff does not have to prove that the defendant actually observed the plaintiff’s work. In a Western District of Wisconsin case from 2015, the court held that the plaintiff had created a triable issue of fact on access where the plaintiff had sent dozens of home plan catalog books to the defendant containing the plaintiff’s copyrighted works over a period of twelve years, even though the dissemination of the plan books was unsolicited and largely unnoticed by the defendant.22

As mentioned, other lines of cases infer access where it is determined that the copyright holder’s work was widely disseminated. In a Ninth Circuit decision, a fabric printing company was able to prove access based on “widespread dissemination” when one of its copyrighted floral patterns appeared on a t-shirt sold by Aeropostale, Inc., where the fabric company had sold more than 50,000 yards of fabric bearing that specific floral pattern over the previous four years.23 In the context of music and popular songs, a court can find an inference of access based on a sua sponte determination of “subconscious copying”—i.e., where the work at issue is based on a well-known song previously released.24

Some commentators have argued that the access element has lost its significance in light of technological advances that have occurred since the copyright laws were enacted because any potential infringer now has a reasonable opportunity to view any copyrighted work accessible on the Internet with only the click of a mouse.25 Though the cases typically depend on the circumstances of the infringement and the credibility of the parties, courts have routinely held that, where there is proof that the copyright holder’s work was “widely distributed,” access can be inferred.

To complicate things even further, courts have also held that when two works are so strikingly similar as to preclude any reasonable possibility that the defendant’s work was independently created, access may be presumed. To be “striking,” the similarities must be such that they can only be explained through copying, as opposed to independent creation.26 However, the level of “striking similarity” between works required to support an inference of access without additional evidence varies significantly among the federal circuit courts.

Is there Anything Left of the Access Requirement?

As the case law demonstrates, access is often not even at issue in cases where the access is obvious. In other cases, courts can assume or infer access based on the circumstances, or they can skip the access requirement altogether if they determine that the works are “strikingly similar.” There is certainly a rationale for the shrinking significance of the access requirement. First, taking a broad view of the inferential proof necessary to show access can be justified by the fact that copyright infringement is a strict liability tort. Second, the practical reality of a web-based media world is that almost any protected work can become widely disseminated.

Those rationales may make sense when the protected work at issue is a well-known motion picture, a musical composition receiving substantial airplay, or a widely-published book or manuscript. But what about instances where the purportedly “widely disseminated” work is a photo tucked away on an obscure website, or a house plan displayed in a plan book that happens to be on the Internet? The access requirement applies with equal force to all eight works of authorship laid out in 17 U.S.C. § 102(a), but the reality is that each of those separate works of authorship experiences varying degrees of dissemination on the World Wide Web. When dealing with copyrighted works such as photographs or architectural works, for example, it is certainly debatable whether such protected works can be considered “widely disseminated,” even if they are technically available on the Internet. While it is understood that plaintiffs generally need to prove access by inference, one begins to question whether there is an end point to how far the level of inferential proof to show the possibility of access will extend.

In many past cases where the evidence of access appeared weak, defendants would try to highlight the large gap between a “slight possibility” of access and a “reasonable probability” of access at the summary judgment stage, but those arguments largely fell on deaf ears.

Design Basics, LLC v. Lexington Homes, Inc.27

Importantly, the Eastern District of Wisconsin’s recent decision in Lexington Homes may indicate that the courts are willing to start putting some teeth back into the access requirement where the category of the work in question is less susceptible to wide dissemination. The case involved a factual scenario similar to dozens of copyright cases that have been previously filed in Wisconsin. In fact, almost all of those cases have involved the same plaintiff, Design Basics, LLC. Design Basics is one of the nation’s largest producers of residential home plans and maintains copyrights in over 2,000 home plan designs. Its home plan designs appear in its home plan catalogs, which are published across the country as well as on its website.

In Lexington Homes, Design Basics alleged that the defendants, builders of residential homes and multi-family apartment buildings, had infringed on four of its copyrighted residential home plans.28 The defendants claimed that they had independently created the plans in question through a collaborative process involving members of their design team, who signed affidavits attesting that they had not seen the plaintiff’s copyrighted plans at issue prior to the filing of the lawsuit.29 The parties filed competing motions for summary judgment, which included a defense motion on access, arguing that the plaintiff had not proven that the defendants had any opportunity to access the plaintiff’s copyrighted works before creating the allegedly infringing works.30

Like most copyright cases, there was no evidence of direct access. Accordingly, the plaintiff submitted the following inferential proof that defendants had access to the four plans at issue:

  • The plaintiff “regularly and systematically” mailed plan catalogs and other publications to builder’s associations, of which the defendants were members, from 2000-201331;
  • The defendants possessed several of the plaintiff’s previously disseminated home plan catalogs, containing dozens of the plaintiff’s copyrighted plans, though no plan book contained any of the specific plans at issue32;
  • The defendants’ agent was a former employee of a lumberyard that was a longstanding customer of the plaintiff33; and
  • The defendants had “access in general,” because the plaintiff’s plans were available on its website and were “ubiquitous in the marketplace.”34
  • Though the issue was not specifically raised by the plaintiff in its motion, Judge Griesbach started his decision by dismissing any potential assertion that the plans at issue were so “strikingly similar” as to support an inference of access without additional evidence. In doing so, Judge Griesbach clarified that the “striking similarity” inference is limited to “exceptional” cases.35 Exceptional cases are typically those where the alleged infringer’s work contains a “copyright trap” that would not appear in the work but for the alleged infringer having copied a protected work (e.g., mapmakers will sometimes include fictitious geographical features in their maps that serve no practical purpose other than to support an inference of copying if that feature is duplicated in a separate map).36 The plaintiff was unable to identify anything inherently unique about its house plans that served as a “copyright trap” to an unwary potential infringer.

    After determining that the “striking similarity” inference did not apply, Judge Griesbach addressed the inadequacy of the plaintiff’s evidence of access. As he stated, none of the plaintiff’s evidence of access pertained to the specific works defendants were accused of copying.37 Moreover, the fact that the defendants had a general awareness that the plaintiff had copyrights or that the defendants had access to the plaintiff’s other copyrighted works was insufficient to raise an inference that the defendants had access to the specific copyrighted works at issue.38 According to the court, allowing a jury to infer that the defendants had access to the specific works at issue under this evidence would invite the jury to draw an inference of access based on speculation and conjecture alone, which is precisely what the statute prohibits.39

    Ultimately, the court granted the defendants’ summary judgment motion on access, which rendered all other motions moot, and dismissed the case in its entirety since the plaintiff could not establish a triable issue of fact on the issue of access.40

    Potential Impact of Lexington Homes

    In many ways, the Eastern District took a more common sense approach in analyzing the level of inferential proof of access that a plaintiff must present to withstand summary judgment. First, Judge Griesbach focused on the evidence of access to the specific work at issue, rather than the plaintiff’s assertion that defendants had “access in general” to all of its works. Second, he dismissed the idea that a defendant having access to, or even possession of, some of the plaintiff’s plans that are not at issue can support an inference of access with regard to plans at issue that are not in the defendants’ possession. Third, he dismissed the idea that “striking similarity” can support an inference of access in the context of residential house plans except in the rarest and most unusual of cases.

    Copyright infringement cases involving house plans certainly differ from copyright cases involving other protected works of authorship, and each case depends on the circumstances of the alleged infringement and the credibility of the parties; however, the Lexington Homes decision appears to significantly temper an inference of access where there is a relationship linking an intermediary and the alleged infringer. The implication is that there may still be a meaningful distinction between a “slight possibility” of access and a “reasonable opportunity” of access, and that plaintiffs must sufficiently bridge that gap before they can pass the summary judgment stage.


    The vague and subjective nature of what constitutes an “infringement” allows for the law to be applied to various types of works and mediums while balancing the competing interests that the copyright laws seek to protect—i.e., providing legal rights and protections to those who have created works for which they seek creative and commercial control against the rights of users of copyrighted works, who seek to use existing works to build and create new works.

    The profound difficulty in delineating precise legal standards in guiding copyright law leaves us with laws that are vague, flexible, and ambiguous. The practical reality of that vagueness results in the laws being applied on what appears to be an ad hoc basis. This problem of vagueness is compounded by the fact that different courts have interpreted and applied the elements in inconsistent and sometimes conflicting ways.

    However, before the trier of fact gets to the hopelessly amorphous question of whether works are substantially similar, it has to grapple with the threshold issue of access. The Lexington Homes decision arguably provides more clarity with regard to what evidence or proof is necessary to get past the summary judgment stage. Requiring a heightened level of proof to establish access arguably adds more predictability in an area of law that is highly unpredictable, and may also have a chilling effect on the volume and scope of copyright claims which are filed.

    Design Basics has appealed the decision, and the Seventh Circuit will hear oral argument on the matter on April 5, 2017 (likely around to the time of this Article’s publication). If the Seventh Circuit upholds the ruling, it could have a profound impact on the future of copyright litigation in a number of ways. The first (and obvious) potential consequence is that more copyright infringement cases will be ripe for adjudication at the dispositive motion stage. Second, there could be a decrease in the number of copyright cases filed. Third, while the volume of copyright infringement cases filed could stay the same, the scope of those cases may decrease. For example, in the context of residential house plans, plaintiffs will likely need to be more diligent about the number of claimed infringements they allege in their pleadings, while being mindful of the burden necessary to prove access. In this manner, a heightened burden to show access may serve as an artificial “buffer” and encourage plaintiffs to file causes of action alleging only infringements where there is a strong inference of access, and deter plaintiffs from “piling on” as many infringements as possible. Given the broad and potentially lucrative remedies afforded by copyright law, it makes logical sense to strike a balance, ensuring that plaintiffs confirm they have adequate evidence of access to plans, where access would otherwise be in doubt, before their claims are permitted to pass the summary judgment stage.


    John Healy earned his J.D. from the University of Wisconsin in May 2014. Upon graduating, John began working as an associate at Corneille Law Group in Madison, WI. John represents and advises clients in a variety of practice areas, including personal injury defense, medical malpractice defense, insurance coverage matters, and cases involving alleged advertising injuries. John is a member of the Wisconsin Defense Counsel, Dane County Bar Association, and the Young Lawyers Division of the State Bar of Wisconsin. He is admitted to practice in Wisconsin and before both the Eastern and Western U.S. District Courts of Wisconsin.


    1 Grow, Kory, Robin Thicke, Pharrell Lose Multi-Million Dollar ‘Blurred Lines’ Lawsuit, Rolling Stone (March 10, 2015); see also Grow, Kory, Led Zeppelin Win in ‘Stairway to Heaven’ Trial, Rolling Stone (June 23, 2016) (clarifying that the award in the “Blurred Lines” case had been reduced to $5.3 million).
    2 Grow, Kory, Led Zeppelin Win in ‘Stairway to Heaven’ Trial, Rolling Stone (June 23, 2016).
    3 See Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 350 (1991).
    4 See Copying—Definition of “Protected Expression,” Seventh Circuit Instruction 12.5.2, Federal Civil Jury Instructions of the Seventh Circuit (Committee on Pattern Civil Jury Instructions of the Seventh Circuit 2015).
    5 See 17 U.S.C. § 504(a)-(c).
    6 17 U.S.C. § 504(c).
    7 17 U.S.C. § 505.
    8 17 U.S.C. § 102(a).
    9 17 U.S.C. § 102(a)(1)-(8).
    10 17 U.S.C. § 501; see Feist, 499 U.S. at 361; Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 548 (1985); Incredible Techs., Inc. v. Virtual Techs., Inc., 400 F.3d 1007, 1011 (7th Cir. 2005).
    11 See Prestwick Grp., Inc. v. Landmark Studio Ltd., No. 14-CV- 731-JPS, 2015 U.S. Dist. LEXIS 65392, at *32 (E.D. Wis. May 19, 2015) (unpublished decision); see also Stanislawski v. Jordan, 337 F. Supp. 2d 1103 (E.D. Wis. 2004).
    12 Stanislawski, 337 F. Supp. 2d at 1103.
    13 Wildlife Express Corp. v. Carol Wright Sales, Inc., 18 F.3d 502, 508 n.5 (7th Cir. 1994).
    14 Bldg. Graphics, Inc. v. Lennar Corp., 708 F.3d 573, 578 (4th Cir. 2013).
    15 Id. at 578-79.
    16 Wildlife Express Corp., 18 F.3d 502.
    17 Bldg. Graphics, Inc., 708 F.3d 573.
    18 See Melville B. Nimmer & David Nimmer, Nimmer on Copyright, § 13.02A, at 13-19 (Matthew Bender 2015).
    19 T-Peg, Inc. v. Vt. Timber Works, Inc., 459 F.3d 97, 111 (1st Cir. 2006).
    20 See Jorgensen v. Epic/Sony Records, 351 F.3d 46, 48 (2d Cir. 2003).
    21 See Cottrill v. Spears, 87 Fed. Appx. 803, 805-06 (3d Cir. 2004).
    22 Design Basics LLC v. J & V Roberts Inv., Inc., 130 F. Supp. 3d 1266, 1275 (E.D. Wis. 2015).
    23 L.A. Printex Indus., Inc. v. Aeropostale, Inc., 676 F.3d 841, 848 (9th Cir. 2012).
    24 See ABKCO Music, Inc. v. Harrisongs Music, Ltd., 722 F.2d 988, 997-99 (2d Cir. 1983) (The Second Circuit affirmed a jury’s verdict that former Beatle George Harrison, in writing the song “My Sweet Lord,” subconsciously copied The Chiffons’ “He’s So Fine,” a number one hit on the Billboard charts, which was released six years earlier.).
    25 See NOTE: Copyright Infringement and Access: Has the Access Requirement Lost Its Probative Value?, 52 Rutgers L. Rev. 311 (Fall 1999).
    26 See Ty, Inc. v. GMA Accessories, Inc., 132 F.3d 1167, 1170 (7th Cir. 1997); Bucklew v. Hawkins, Ash, Baptie & Co., LLP, 329 F.3d 923, 926 (7th Cir. 2003); Selle v. Gibb, 741 F.2d 896, 901 (7th Cir. 1984).
    27 No. 14-CV-1102, 2016 U.S. Dist. LEXIS 140207 (E.D. Wis. Sep. 29, 2016) (unpublished decision).
    28 Id. at *3.
    29 Id.
    30 Id. at **1-2.
    31 Id. at *5.
    32 Id. at *7.
    33 Id. at *5.
    34 Id. at *6.
    35 Id. at *9.
    36 Id. at *9 (citing Bucklew, 329 F.3d at 926).
    37 Id. at *14.
    38 Id.
    39 See id. at **14-15.
    40 Id. at *15.