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JOHN QUINN: This is John Quinn, and this is Law, disrupted, and today we're going to be talking about a case that the Ninth Circuit Court of Appeals is going to hear en banc. And it may be an occasion where the Ninth Circuit changes the standard for copyright infringement, substantial similarity, which has been the standard for time immemorial.

Well, that's an exaggeration. We're talking with Bill who's a counsel in our firm and has had one of the most distinguished careers in copyright law. Bill, perhaps you could introduce yourself. Tell us a little bit about your background before we dive into this case that might, may result in a new standard in the Ninth Circuit for copyright infringement.

BILL PATRY: Yeah, so I've been a full-time copyright lawyer since 1983. That's a fair amount of time. I was trained by really the greatest mentors, I think, in copyright. I've been in private practice. I've been copyright counsel to the House Judiciary Committee. I was a policy planning advisor to the Register of Copyrights. I was a law professor for five years.

JOHN QUINN: I think you've written a book or two, right?

BILL PATRY: I've written a few books. Yeah, I have one that's 8,000 pages. I was in-house at Google for 17 years as well.

JOHN QUINN: I understand while you were at Google, Google never lost a copyright case.

BILL PATRY: We never lost one. We had big landmark cases. Yes, the Google Books case we had, the Viacom case, of course, which Andy Shapiro handled for us. Garcia versus Google, that was the last en banc that the Ninth Circuit ever took up.

JOHN QUINN: So, let's turn to the case that you're gonna argue this case, before the en banc panel, and it's gonna be heard when?

BILL PATRY: Can be heard either September 29th or 30th. We'll find out the exact date in August.

JOHN QUINN: Right. So for how long has substantial similarity been the test for copyright infringement? Where, what does that date to?

BILL PATRY: Well, it dates back and not that particular verbiage, but pretty close from the beginning of the early English, copyright cases starting in the late 1700s. You know, you could call it material appropriation, you could call it whatever it is. But what it means is simply this: that for one work to be infringing on another, each work has to contain a material amount of copyright protection that the defendant took without authorization from the plaintiff. So the word substantial there just simply means material.

JOHN QUINN: And what is the case that you're counsel on now which has teed up this issue?

BILL PATRY: Yes. So the case is Sedlik versus Von Drachenberg. The defendant's better known as…

JOHN QUINN: Say that three times fast.

BILL PATRY: Versus Von Drachenberg. Yeah. So the Von Drachenberg is Kat Von D, who is a very famous tattoo artist and perhaps a musician too. She had a tattoo studio in Southern California. I'm not quite sure where. You know, I'm a Northern Californian, so I could only go as far south as Monterey usually.

So I'm not quite sure where in Southern California. But she had this tattoo studio. She had a client who was a trumpet player who came to her and said, "I really like Miles Davis. I want you to make a tattoo for me of Miles Davis, and here's a photograph I'd like you to transfer to a tattoo." And it was our client, Jeff Sedlik, photo-professional photographer, it was his photograph. Jeff makes money by licensing photographs, in particular this one of Miles Davis, which was in a music magazine and showed him in the darkness with his fingers over his lips to metaphorically explain Miles Davis' use of silence. It was actually shot in Malibu in the summer. So…

JOHN QUINN: This tattoo artist did as requested, made a tattoo based on this copyrighted photograph?

BILL PATRY: I would say not just based on but directly copied from. So she has millions of Instagram followers, and during the process of her creating this tattoo, she documented it on Instagram and showed how she traced it. She had a copy of our client's photograph on the wall right next to her when she did it.

And when I took it there was no question that this was copied from a copyrighted material. The tattoo was copied.

JOHN QUINN: All right. So of such events, precedent-setting cases are made, so a tattoo artist copies a copyrighted photograph for purposes of a tattoo that which she creates on this individual's body in accordance with his request, and this is the background of what may be a copyright landmark case.

BILL PATRY: Yes. And so why would it be that? Here's why. She bragged on Instagram that the coffee was 100% exactly the same. So in ordinary copyright litigation, you have to prove you have a copyrighted work, which we did. You have to prove the defendant had access to it, which she clearly did, because there are pictures of her doing it.

You have to prove that she actually copied it, which she did, because we have her own video documenting it. And then the only step that's left is showing that the two works are substantially similar.

JOHN QUINN: I mean, this sounds open and shut, Bill.

BILL PATRY: It does. And especially when you have an admission by the defendant that it was 100% exactly the same.

JOHN QUINN: All right, so how does this become a case that requires an en banc panel of the Ninth Circuit to convene to decide?

BILL PATRY: Yes. It's actually the perfect case for it. Here's why it's the perfect case. So given those facts, you know, you would think that one would file a motion for summary judgment as the trial counsel did, and you would think it should be granted, but it was denied.

JOHN QUINN: Would think it was denied. 

BILL PATRY: Think. One would think.

JOHN QUINN: What, on what ground was it denied?

BILL PATRY: She simply said, this is Judge Dale Fisher, that there were multiple issues of triable fact about it.

Whether she thought that the medium was different and that mattered one doesn't know. That's a possibility but when you have an admission of 100% exactly the same, that should have been enough. So to me, that's the first problem in the case, was an erroneous denial of summary judgment. And because it was a denial, we couldn't appeal it.

Yes? So you're stuck. Okay, so then you're stuck, and it goes to trial. 

JOHN QUINN: The case was tried?

BILL PATRY: Was tried to a jury.

JOHN QUINN: And the result?

BILL PATRY: Result was the jury said they're not substantially the same. 

JOHN QUINN: How can that be?

BILL PATRY: How could it be? I don't know. At the oral argument in June before the panel...

JOHN QUINN: This is that you got involved to handle the appeal.

BILL PATRY: I just did the appeal. I argued it before a panel in June of last year in Los Angeles. The panel was Judges Wardlaw, Johnstone, and Mendoza. Right. So I said, "Look, it's like Stonehenge, you know? We never know why they did what they did." All they said is, "No, it's not substantially similar." Yes? So the trial counsel had filed Rule 50 motions, right?

And, you know those were decided negatively. No. So the jury verdict stood, and it was appealed. So we appealed a number of things. We appealed the denial of the summary judgment, which the circuit said, "Oh, well, you know, under our rules once it goes to trial, the summary judgment doesn't really matter because it's a trial record."

I said, "But the record really is the same. You've got the photograph. You've got the, you know, tattoo. They're right there. They're the same." It wasn't a winning argument. On Rule 50 we argued that they're 100% exactly the same. You know, no jury properly instructed could have done that. The evidence is overwhelming. It's right there, and it's mute. 

You can see it too, right? It's one thing if they're credibility determinations, but when you've got the two things right there yourself you know, in some circuits like the second, they said, "Well, we can decide that as well as anyone. You know, you got the two things right there, and you can look at them."

But the circuit said, "No, there had to have been an absence of evidence to show the jury couldn't do what it did." But of course, we don't know what it did. We don't know what it did because it was a yes or no. And then here where, here's where we get to why it's a great case. Because everyone knows it should have been decided on summary judgment the way it was, and even if it went to a jury, the jury should have done what it did.

But the circuit felt bound that it couldn't because there's a two-step test in the Ninth Circuit, and that's what they wanna get rid of. The first step is what they call the extrinsic test. 

JOHN QUINN: These are the tests of substantial similarity right. There's two steps to it.

BILL PATRY: Two steps to it. The first step is called extrinsic, which allegedly is objective, whatever the word objective means.

That can be decided by a judge. If it's decided by the judge, then perhaps it's a legal question, and then you could appeal that. Yes? But under the current test, juries can decide the extrinsic test, and in this instance, they did. So…

JOHN QUINN: What's the extrinsic test? Can you flesh that out a little bit?

BILL PATRY: Yes. The extrinsic test says, "Here are the two works." All right, we're gonna look at the two works.

Does the defendant's work contain protectable elements of the plaintiff's work? So for example, there are things that aren't protectable: ideas, methods, systems of operation, processes, you know, standard plot developments in movies, right? Whether there's only five movie plots in Hollywood or not, who knows?

But, you know, the sort of standard plots, the scene affair, those aren't protected. So that if the two works feel or look the same, but only in those un-copyrightable elements, then you can't win. 

JOHN QUINN: Well  here you had, you clearly had copying of copyrightable elements.

BILL PATRY: The entire thing. So whether you thought this element was not protected or not, they copied 100%.

JOHN QUINN: All right. So the external check, the external test for substantial similarity was satisfied.

BILL PATRY: Should have been satisfied, but we don't know. We don't know because the jury decided both that and the second one. The procedural part of it is this too, that because the extrinsic test can be considered objective and a legal question, if a defendant loses on that, and you have to know that they lost on that, right? You need a special verdict that would say, "Extrinsic, yes. Intrinsic, yes or no," right?

JOHN QUINN: Do we have that kind of verdict here?

BILL PATRY: We did not. We had a yes or no. So in other cases, the Ninth Circuit has reversed a jury verdict involving the extrinsic test. This is the famous Katy Perry case, Grey versus Hudson. Her real name is Hudson. But it was a Katy Perry case where the jury found that it was infringing.

There was a JMOL, which the district judge granted. It was appealed, and the Ninth Circuit affirmed the vacation of the jury verdict. Why? Because it was that extrinsic test, and it was also a ruling of liability. So in our case, we didn't have that ability because it was just yes or no to both.

JOHN QUINN: Right. All right, what's the second test of substantial similarity?

BILL PATRY: So the second test in Ninth Circuit's called intrinsic.

JOHN QUINN: Surprise. surprise.

BILL PATRY: Surprise, surprise, extrinsic, intrinsic, neither of which mean anything. You could say they're objective and subjective, and that's another way they've been described. And the two panel opinions in our case that criticize the current test base it on this idea that intrinsic means subjective and therefore not reviewable.

All right, if we say a jury decides facts, you know, and they decide the facts, is that a subjective thing? Especially when they just say yes or no. What is there to review, you…

JOHN QUINN: All right. 

BILL PATRY: Either it should have gone to the jury. 

JOHN QUINN: All right, well, so when it's been applied in the case law, the intrinsic test, how is that applied? How is that subjected? What's supposed to be the mental process that's applied there?

BILL PATRY: Yes. And so that was a focus of the criticism of the panel members. The mental process should have been, are these two works substantially similar in their protectable expression, right? The test that's been used has been called the total concept and feel test for that, and that is problematic for two reasons, one of which it uses two terms that aren't protectable under the Copyright Act.

Concepts are not. They're expressly excluded in 102B. Says you can't protect ideas, concepts, things like that. Feel, who knows what feel means? As Judge Johnstone said in his concurring opinion, you know, juries decide facts, not feelings. So that’s sort of a problem with that test. It was believed to be unreviewable because it's subjective, and whether you have yes or no.

Where a panel like this panel believed it was unfathomable what the jury did, how can you review it? There's nothing to review.

JOHN QUINN: Bill, I have to say I find this discussion kind of confusing and circular to some degree. We're supposed to be determining whether something is substantially similar. In the Ninth Circuit, we're supposed to apply this extrinsic test, looking objectively at the accused work and the copyrighted work, and an intrinsic test, which is, quote-unquote, subjective, where you look at the total look and feel. We had a jury verdict. It wasn't a special verdict. It just said, "Is it infringing or not?" And the jury said, "No." We don't know exactly what they found. This goes up on appeal. What was the appellee's argument?

BILL PATRY: The panel's argument was that there was evidence to support the jury verdict, and that's it, and it's not reviewable. So this was a big issue before the panel. The athlete took the position that the panel could do nothing, that their hands were tied. 

JOHN QUINN: Their hands were tied by the general verdict. The jury decided, end of story.

BILL PATRY: And by the intrinsic test, which is subjective. And if it's subjective, it's not reviewable, because there's nothing to review.

JOHN QUINN: Okay, so you argued this before… 

BILL PATRY: Yes. 

JOHN QUINN: Panel. And what was your argument?

BILL PATRY: My argument was, first of all you should be able to decide that summary judgment was improperly granted because...

JOHN QUINN: Are denied…

BILL PATRY: Or, I mean, improperly denied. Yes. Thank you. You should have decided on Rule 50, but in any event everybody knows these things are the same.

And if you say that your hands are tied and you can't review it, then you really don't have a job, you know? I mean, your job is to review things.

JOHN QUINN: All right, so what was the opinion of the panel in the court of appeals?

BILL PATRY: So they actually issued four opinions because I think they set this up. So there were other claims for the social media posts. Remember I mentioned that they documented the infringement? And so there were claims over the social media posts as being infringing. For those, they mostly conceded that they were substantially similar because they have a picture of it right there, but they argued fair use, and the jury found that they were fair use.

We appealed that, too. What the panel did was to issue an unpublished opinion basically saying, "You know, it's fair use. We're not gonna review it." Then they issued published opinions, and there were three. There's a per curiam opinion which said, "We're affirming, but we're affirming because that's our law."

And then there are two concurring opinions, one by Wardlaw and Johnson, who said, "We join the per curiam only for the judgment, but things are deeply wrong. This case shows how flawed our system is. Our client should have won.” Everybody knows they're the same, but our hands are tied because the intrinsic test is unreviewable under our current system, and it needs to be changed.

JOHN QUINN: So basically this panel expressed skepticism about the long-standing test for infringement in the Ninth Circuit.

BILL PATRY: Not just skepticism, deep disdain, I would say…

JOHN QUINN: Well, what did they say? Can you quote some of the language?

BILL PATRY: I can't. Judge Wardlaw says, "I write separately to suggest that the intrinsic test for substantial similarity has fundamental flaws, and we should consider dispensing with it altogether.” The outcome in this case came down to the intrinsic test, a test created by our court in which the Supreme Court has never blessed. The intrinsic test is virtually devoid of analysis and is a mere subjective judgment as to whether two works are similar or not. This test and the outcome in this case distorts copyright law.

That's a pretty good occurrence.

JOHN QUINN: Wow…

BILL PATRY: Yep. Now, Judge Johnson said that he agreed with Judge Wardlaw. Said, "The jury's job is to find facts, not feelings, because a jury's subjective impression of a work's total concept and feel is all but unreviewable. We have never reversed a jury's non-infringement verdict under the intrinsic test."

He says, "The intrinsic test makes it almost impossible for copyright plaintiffs to win their cases at summary judgment." He said that, "The cumulative effect of all this has been to undermine copyright protections and their purpose of promoting the progress of science. Few argue that this result is what copyright law permits."

JOHN QUINN: Wow. So you lost…

BILL PATRY: We lost, but we won because we got it on banc and we think we're gonna get, you know, the case test replaced.

JOHN QUINN: So when you got those opinions, you knew, you thought, "We have a good chance of getting en banc hearing here?”

BILL PATRY: We have a good chance, I thought. Yes. So then what we had to do is to file a brief saying, you know, we obviously followed what we were told in those two opinions and explained why we believe they were correct, and then we had to come up with what we think a substitute test should be

JOHN QUINN: And what was the substitute test you came up with?

BILL PATRY: The substitute test is this.

I want to caution, though, I don't think it should be just a test, a simple test. The thing about copyright law, of course, is that it deals with creativity, and creativity is notoriously ad hoc, fact-specific, always changing. Yes. It's not like the IRS or traffic regulations where you can say, "You can go 60 at night on this road or 55 during the day."

You know? It has to be flexible because the subject matter is flexible. At the same time, you have this need for certainty. You know, juries need to know what the legal standard is for them to do it, right? So you have those two very competing, uh, things that have to be reconciled somehow. And so I think what the circuit needs to do is look at this as a package.

They have to figure out the procedural aspects of things, how erroneous summary judgments can be reviewed.They have to figure out whether they want special verdicts or whether they always want general verdicts. They have to decide the roles of the jury and the judge and how that's gonna be reviewed.

So the test is an important part, but it's not all of it. You also need jury instructions. I mean, as we all know.

JOHN QUINN: Sure. But have you provided to the on bank panel a formulation?

BILL PATRY: Yes, we did. And it's simply this, that in determining substantial similarity, what matters is that the two works and we would say in this case in their totality are similar in protected expression. And that's really it. That's all there has to be. Learned Hand, who decided copyright cases for 50 years and had some of the most famous landmark ones, basically said no one could ever find the line between what's protectable and what's not, as it has to be ad hoc.

So the test itself has to be ad hoc, but then you have to have guidelines and guardrails that spell it out.

JOHN QUINN: To what, explain that to us. I mean, obviously you, you have to have protectable elements. You've told us that. But how do you decide whether there's infringement in those protectable elements?

BILL PATRY: Right. So let's take a photograph, and this particular photograph. This is a photograph of Miles Davis. You can call it an art photograph, whatever you want. You know, it's not a headshot, it's not a corporate shot, you know. It's a metaphoric shot by one musician of another musician. And when you perceive it, you perceive that as a whole, right?

You don't see it in parts. Maybe if you have a photograph of a landscape with lots of houses or beaches or boats and things like that, you might actually focus on the parts. In this particular case, you focus on the whole. It's perceived as a whole. And when it's copied as a whole, that's pretty easy.

If you have a compilation of data, the data themselves aren't protectable, but it's the selection, coordination, and arrangement of them that is. If you have a musical case, everybody uses traditional harmony, typically, right? And rhythms and things like that. So you'd have to filter those things out. To be more specific, what Judge Wardlaw wanted was this.

She wanted what is essentially still a two-step test. So step number one would be that the judge would look at the works and decide what's protectable or not.

JOHN QUINN: As a matter of law.

BILL PATRY: As a matter of law, so that it can be reviewed. She even said regardless of what the jury's views are, because under the current extrinsic test in the Ninth Circuit, the jury can decide that, and in our case did. So they may be going to a situation where they have something they don't necessarily call the intrinsic test, but it's a test where the first step is figuring out what the protectable material is or not. And to me that's still an open question. So you could say, for example, that typeface is not protectable as a class.

No typeface is protectable. Why? Because Congress said they're not. Okay. So judges get to decide those things. Is this type of thing protectable or not? Clearly not. Okay. But what about does this particular work have enough expression to be protectable, or is it only unprotectable, right? So you can say typeface is not protectable, but a poster that has calligraphic ornamentation and colors and other designs might be.

JOHN QUINN: All right. So I'm trying to understand your proposed formulation to the Ninth Circuit. What is protectable is a quest- should be a question of law decided by the judge, but we still have to decide whether the protectable elements are sufficiently similar

BILL PATRY: Yes. So if you say that the judge does decide those things, and that's what Judge Wardlaw said, first of all, how is that gonna be documented? You would need to have some opinion, I think. You can't just let a judge say, "Oh, yeah," as the judge did here. "Yeah, there's enough stuff there. It should go to the jury.”

JOHN QUINN: Okay, so the judge says what's protectable, but we still have to get to the question of similarity or some such formulation.

BILL PATRY: The jury does. Right, because I believe that there's a Seventh Amendment right to have a jury decide infringement. Not in all cases, obviously, because some cases can even be decided on the pleadings. 

JOHN QUINN: But so what's the law gonna be? How is it, what's the jury instructed?

BILL PATRY: Right. So the jury would have to be instructed by the judge on that first thing. Here's what I found is protectable, or here's what I found is not protectable.

JOHN QUINN: And then what does the jury have to make the decision on some formulation of similarity and what's your test on that?

BILL PATRY: Right. So that would have to depend upon the subject matter. And if you look at the ninth as I'm sure you have, the Ninth Circuit's jury instructions, they break it down by type of subject matter, because what's protectable expression in one work, type of work, is different. Yes? The compilation is only in the selection, coordination, and arrangement, right?

And computer codes can be something different. In the, you know, Oracle Google case, which I worked on for 10 years, there were two issues there. One of them was the copyrightability of those APIs, which the court split four to four on.

JOHN QUINN: Right. Let's get past what's protectable. Let's suppose the jury's been instructed, we've decided what's protectable, how do we decide, how is the jury told to decide whether there's infringement?

BILL PATRY: Right. So in our case, I wouldn't have sent it to the jury because they said it's 100% exactly the same. But let's say it isn't. Let's say that the defendant's work is somehow different. It could be a parody, for example, right? That would be an issue too but only on the fair use side. So let's say that there were many changes to the original, and it's not a direct copy.

It's a derivative work where there's been adaptations or things like that, yes? So that's sort of like the Andy Warhol case, which the Supreme Court had too.

JOHN QUINN: So it's not sounding to me, Bill, like you have a simple ready formulation on similarity.

BILL PATRY: I do, but the application of it in individual cases has to depend upon the type of work and what the plaintiff did. That's what Learner Hand said. If Learner Hand couldn't do it after 50 years, I can't do it after 43. Right? And, and so that's why you need jury instructions. That's why I was saying, you need jury instructions.

You need special verdicts. So to be reviewable for that jury, if all the things work out as I hope or the puzzle comes together, the trial judge would say, "This is what I think is protectable,"

JOHN QUINN: Okay, but look, Bill the en banc panel is gonna ask you how does the jury decide similarity? What do we tell them their job is? Do you have a net answer for that?

BILL PATRY: Yes, their job is to look at the two works and decide whether the defendant's work contains, to a material degree, what is expressed in that person's work.

JOHN QUINN: All right. That's it.

BILL PATRY: That's it

JOHN QUINN: All right. Well, when is this argument?

BILL PATRY: 29th or 30th of September.

JOHN QUINN: All right, so maybe we'll have some new copyright law in the Ninth Circuit. Maybe things will be less murky, maybe they will be more murky after this decision is decided.

BILL PATRY: Yes. I mean, what the panel members both said is things are so unpredictable. We need to have certainty, yes? Even if it's not the greatest certainty, at least a certainty so that juries and businesses know what to do.

JOHN QUINN: Thank you very much, Bill.

BILL PATRY: Thank you, I appreciate it.

JOHN QUINN: Good luck in your argument before the en banc panel in September. We've been talking with copyright expert Quinn Emanuel lawyer, Bill Patry. This is John Quinn, and this has been Law, disrupted.