Elements of a Copyright Infringement Claim

By Hank FasthoffNovember 27, 2016

A copyright infringement claim requires more than a registration certificate and a resemblance between two works. In the Fifth Circuit, a claimant must prove ownership of a valid copyright, factual copying, and substantial similarity between protectable expression in the works.

Each element presents a separate proof problem. Ownership turns on authorship, copyrightability, and any transfer of rights. Factual copying turns on whether the defendant used the claimant's work. Substantial similarity turns on whether the copying took enough protected expression to violate the Copyright Act.

Ownership Requires a Protectable Work and a Valid Chain of Title

Section 102(a) protects original works of authorship fixed in a tangible medium of expression. In Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991), the Supreme Court described originality as independent creation plus a minimal degree of creativity. The threshold is low, but effort alone doesn't make facts or standard material copyrightable.

Copyright generally vests first in the author under Section 201(a). A work for hire can make the employer or commissioning party the statutory author when the definition and agreement requirements are satisfied. A transfer of copyright ownership generally requires a writing signed by the transferring owner under Section 204(a).

Your ownership proof should connect the asserted work to the claimant through authorship, a work for hire relationship, an assignment, inheritance, or another recognized transfer. Possession of a file, photograph, recording, manuscript, or other physical copy doesn't by itself establish copyright ownership. A claimant asserting only part of the copyright should also identify the exclusive right it owns and the period covered by that right.

Registration Controls When Most Infringement Suits May Be Filed

Registration and ownership serve different functions. Section 408(a) states that registration isn't a condition of copyright protection. Copyright generally arises when an author fixes original expression in a tangible medium.

For almost every copyright infringement action involving a United States work, Section 411(a) bars suit until the Copyright Office registers the claim or refuses registration. After a refusal, the claimant may sue if it serves notice of the action on the Register. Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 586 U.S. 296 (2019), rejected the rule that filing a completed application alone satisfies that condition. The limited statutory exceptions include specified preregistered works and certain live broadcasts.

The registration condition is mandatory but nonjurisdictional under Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010). Registration therefore isn't an infringement element, yet a defendant can seek dismissal when Section 411(a) applies and the Copyright Office hasn't registered or refused the claim.

A timely certificate also affects proof. Under Section 410(c), a registration made before or within five years after first publication supplies prima facie evidence of copyright validity and the facts stated in the certificate. A certificate issued after that period receives whatever evidentiary weight the court finds appropriate.

Inaccurate registration information doesn't automatically defeat the claim. Section 411(b) applies when the applicant included inaccurate information with knowledge of the inaccuracy and the Register would have refused registration if the Office knew the truth. Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 595 U.S. 178 (2022), held that lack of either factual or legal knowledge can excuse an inaccuracy under that provision.

The Claim Must Identify the Copyrighted Work and Violated Right

Section 106 grants separate exclusive rights to reproduce a work, prepare derivative works, distribute copies, and perform or display specified works publicly. Sound recordings also receive a limited digital performance right. A complaint should connect the defendant's conduct to at least one exclusive right owned by the claimant.

Defining the work can determine the case. A musical composition and the sound recording of a performance are separate copyrighted works. A film may include a screenplay, musical works, sound recordings, visual art, and other material with different owners. Registration and title documents should match the work and right asserted in the complaint.

Factual Copying Requires Use of the Claimant's Work

A claimant first has to prove that the defendant used the copyrighted work in creating the challenged material. Direct evidence can establish that use, but it is uncommon. Courts therefore permit an inference from evidence of access plus probative similarity.

Access means a reasonable opportunity to encounter the work before creating the challenged material. A bare possibility based on speculation doesn't suffice. In Batiste v. Lewis, 976 F.3d 493 (5th Cir. 2020), sparse streams, limited local sales, and the defendants' presence near a record store failed to show that the musicians had a reasonable opportunity to hear the claimant's songs.

Evidence of distribution should connect the work to the relevant creator, market, intermediary, or time. Public availability on a website or streaming service may contribute to the record, but availability alone doesn't prove that a particular creator encountered the work. Sales data, audience size, airplay, delivery records, shared collaborators, submissions, and access logs can supply a stronger connection.

Probative similarity serves a limited purpose. It identifies shared features that tend to show copying when considered with access. Under Positive Black Talk Inc. v. Cash Money Records, Inc., 394 F.3d 357 (5th Cir. 2004), those similarities may include unprotectable material because the inquiry concerns whether copying occurred, not whether the copying violated a protected right.

Even extensive access evidence can't replace probative similarity. When access and probative similarity support an inference of copying, evidence of independent creation or a common source may rebut that inference. Draft files, source materials, dated revisions, project archives, and testimony from the creators often determine that dispute.

Striking Similarity Can Support Copying Without Access Evidence

A claimant without proof of access may rely on striking similarity. The standard demands similarities that can be explained only by copying, rather than coincidence, independent creation, or a prior common source. Shared short phrases, genre conventions, stock elements, and common musical building blocks usually can't meet that burden.

Guzman v. Hacienda Records & Recording Studio, Inc., 808 F.3d 1031 (5th Cir. 2015), illustrates the distinction. Two songs shared nearly identical opening words and other musical features, yet the Fifth Circuit found no striking similarity because comparable phrases and expressions appeared throughout the genre. Batiste applied the same rule and required similarity in a sufficiently unique or complex context.

Substantial Similarity Concerns Protected Expression

Proof that the defendant copied something from the claimant's work completes only the factual copying inquiry. The claimant must then show substantial similarity between the challenged work and protectable elements of the copyrighted work. At this stage, the court separates protected expression from ideas, facts, procedures, systems, methods, public domain material, and expression dictated by those materials.

Section 102(b) excludes ideas, procedures, processes, systems, methods of operation, concepts, principles, and discoveries from copyright protection. A claimant can't obtain control over those materials by embedding them in a copyrighted work. Copyright protects the author's original expression and, for compilations or derivative works, the original selection, arrangement, or additions contributed by that author.

In Nola Spice Designs, L.L.C. v. Haydel Enterprises, Inc., 783 F.3d 527 (5th Cir. 2015), the Fifth Circuit filtered traditional bead dog features and other public domain material from the comparison. Similarity in the general bead dog concept couldn't establish infringement. The court compared the remaining original expression and affirmed summary judgment because no reasonable jury could find substantial similarity in those protected features.

Courts commonly compare the works side by side from the perspective of an ordinary observer after identifying the protectable material. Both the quantity and qualitative importance of the copied expression can affect the result. A short passage may be significant when it takes a central protected feature, while extensive similarity in facts or standard elements may support no infringement claim.

Courts Can Resolve Similarity Before Trial

Substantial similarity often presents a fact question, but a jury isn't required in every case. Nola Spice confirmed that summary judgment is appropriate when no reasonable juror could find substantial similarity after the court filters unprotectable elements. The works themselves frequently provide the most important evidence.

Expert testimony can serve different functions depending on the work and the disputed element. Technical analysis may help identify copied code, sampled audio, design components, or unprotectable material. The final comparison may use an ordinary observer standard, and expert testimony can't replace evidence of access, probative similarity, or protectable expression.

Each Element Requires Its Own Evidence

Your case file should separate ownership, registration, factual copying, and substantial similarity. Ownership records establish who holds the asserted right. Registration documents determine whether suit may proceed and whether a statutory presumption applies. Creation files and distribution evidence address copying, while a focused comparison identifies the protected expression taken.

Similarity alone can conceal a missing element. The defendant may have encountered the work without copying it, copied unprotected material, or produced a similar work from a common source. A viable infringement claim connects a protected right, a qualified claimant, a registration or refusal when Section 411(a) applies, proof of copying, and substantial similarity in original expression.