Are Courts Analyzing Visual Arts Infringement Claims As If They Are Compilations of Data?

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Moon Hee Lee is a rising star in copyright law. We are colleagues at Quinn Emanuel, which is how I got to know her. She clerked for one of my copyright heroes, Ninth Circuit Judge Margaret McKeown. While at Northwestern University Law School, she wrote an article entitled “Seeing’s Insight: Toward a Visual Substantial Similarity Test for Copyright Infringement of Pictorial, Graphic, and Sculptural Works.” 111 Northwestern University Law Review 833 (2017). I encourage everyone to read it. Her basic point is that existing substantial similarity tests do not reflect the nature of visual perception. A principal reason for this is that judges are more comfortable analyzing text, and as result, the way they think of textual works is transferred to how they think of visual works. A review of the case law shows she is correct.

In addition to this unconscious textual bias, in some circuits things can easily go awry due to adoption of a bifurcated extrinsic-intrinsic test. The extrinsic test – the only one used at the FRCP 12(b)6) stage -- examines alleged “objective” similarities and involves “filtering out” unprotectible elements. The trial judge does this by determining  whether the protectible elements that remain after the filtering out correspond to elements of the defendant's work, in order to assess substantial similarities “in the objective details of the works”.  Determining what is an unprotectible element at the FRCP 12(b)(6) stage as well as “objectively” determining any similarities in those protectible elements is surely an art, not a science. It requires a real understanding of the “art” of the plaintiff’s work. That can be done more readily with textual works than with visual works of art.

There is a real risk with visual works of seeing only the barest of trees and not the forest. Visual works are usually conceived of as a unified artistic vision, not as an assemblage of discrete parts. Circuit courts using the bifurcated approach try to compensate for this by allowing  the extrinsic test to be met for a creative combination of elements, even if those elements are deemed by virtue of filtering to be individually unprotected. Circuits using the extrinsic-intrinsic test still limit protection to the combination, not to any of the individual elements “standing alone.”  This still results in a forest not being seen as a forest but rather as an assemblage of trees, and potentially scrawny ones at that.

In addition to not being based on the nature of visual creation or perception, as a matter of statutory interpretation, the “combination versus individual element” analytical framework is the language of literary works, in particular compilations, which are defined in Section 101 as a “work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.” Visual works, like sculpture and photographs, aren’t compilations of preexisting materials or data. They are unified artistic visions whose individual elements don’t exist “standing alone.” They weren’t created that way, and they aren’t perceived that way. They shouldn’t be analyzed that way for substantial similarity purposes. Incorporating the definition of compilations of data into an infringement test for visual works is why I was thinking of Moon Hee Lee’s article when I read the 9th Circuit’s January 14, 2025 opinion in Tangle, Inc. v. Aritzia, Inc.,  2025 WL 85839. The case also has an added “twist”: a sculptural work consisting of 

seven kinetic and manipulable sculptures. Each sculpture is made from either 17 or 18 identical, connected, 90-degree curved tubular segments (i.e., one-quarter of a torus), typically made of chrome, that can be twisted or turned 360 degrees where any two segments connect. By twisting or turning a segment, the sculpture can be manipulated to create many different poses. 

Here is one of them:

Here is defendant’s:

While there were other issues in the case (like fixation) the most important issue is whether plaintiff, at the pleading stage, had made out an infringement case under the extrinsic case. The court of appeals held it had:

Tangle has alleged that Aritzia's sculptures, just like Tangle's, are made from 18 identical, connected, 90-degree curved tubular segments (i.e., one quarter of a torus) that can be twisted or turned 360 degrees where any two segments connect, allowing the sculpture to be manipulated to create many different poses. That is enough to allow Tangle's copyright claim to proceed past the pleading stage. Although Tangle's and Aritzia's sculptures may differ in other respects, like their overall size or specific poses, the works are “similar enough that ‘the ordinary observer, unless he set out to detect the[se] disparities, would be disposed to overlook them.’

The ordinary observer is derived from the Second Circuit, which does not use the Ninth Circuit’s bifurcated approach and asks only for the single question of substantial similarity. "Substantial similarity" is substantial similarity in expression of course, but excluding unprotectible elements from that determination can, and easily is, done as a single, not bifurcated inquiry. In addition to using the ordinary observer approach, the Ninth Circuit also uses the total concept and feel test, it too being derived from the Second Circuit. As a result of using these two Second Circuit tests, the intrinsic stage in the Ninth Circuit is said to a require a “more holistic, subjective comparison of the works to determine whether they are substantially similar in ‘total concept and feel’.”  Yet, the Ninth Circuit has emphasized that to prevail, a plaintiff must prove substantial similarity under both the extrinsic and intrinsic tests. 

Why have two different tests for substantial similarity, one of which is supposedly objective and the other subjective, one (extrinsic) that at the pleading stage can only be decided by a trial judge, while the other (intrinsic) can be decided by a jury. Even more, when there is a jury, the jury can decide both tests if the trial court has let the issue go to the jury. The circuit has described the difference between the two tests this way:

The extrinsic test requires that the factfinder conduct an objective comparison of the elements of the two works to determine their objective similarity. This contrasts with the other prong of the copying element, the intrinsic test, where the factfinder makes a subjective comparison of the two works to determine whether the works create a subjective impression that they are substantially similar.

Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 52 F.4th 1054, n.8 (9th Cir. 2022).

The key word here is “factfinder,” not just a judge deciding an FRCP 12(b)(6) motion. That the same factfinder looking at the same two works does so the first time “objectively” and the second time “subjectively” is asking a lot, especially of juries. The answer the Ninth Circuit gives for having the extrinsic test at all is that the role of the extrinsic test is to screen out “objectively meritless claims, so courts can apply it as a matter of law.” Screening out meritless claims is certainly important, But at the same time, Unicolors did describe the analysis at the extrinsic stage as being done by a “factfinder.” Maybe the court of appeals meant a judge acting as a factfinder and ruling as a matter of law, as is done at summary judgment. But at the pleading stage, the circuit disfavors such determinations and in the Tangle case, the circuit reversed the FRCP 12(b)(6) grant, so the dispute may go to a jury which will then have to also decide both tests, “aided” by competing expert witnesses. None of this justifies treating visual works like compilations of data and after having atomized them (objectively of course), putting them back together to look at them “subjectively.”

The great Chief Judge of the Second Circuit Jon O. Newman made this point in a 1983 opinion involving the Superman character, Warner Bros. v. American Broad. Cos., 720 F.2d 231, 241 (2d Cir. 1983). He then expanded on it in a 1999 law review article, New Lyrics for an Old Melody:The Idea/Expression Dichotomy in the Computer Age, 17 Cardozo Arts & Entertainment L.J. 691. In discussing his Superman opinion, he wrote:

I do not deny that all of these subject matters required courts to determine whether the first work was copyrightable and whether the second infringed protectable elements. What I question is whether courts should be making those determinations with the same modes of analysis and even the same vocabulary that was appropriate for writings. As I shall try to indicate, it is not just a matter of vocabulary. Words convey concepts, and if we use identical phrases from one context to resolve issues in another, we risk failing to notice that the relevant concepts are and ought to be somewhat different.

... A graphic or three-dimensional work is created to be perceived as an entirety. ...

[O]ne cannot divide a visual work into neat layers of abstraction in precisely the same manner one could with a text.

Those desiring solutions for a better way keep Judge Newman's very experienced thoughts in mind, and should carefully read Moon Hee Lee’s article, as I did.