The questionable origins of the copyright infringement analysis.

• Author: Balganesh, Shyamkrishna
• Position: Introduction into II. The Legal Philosophies (and Personalities

Table of Contents Introduction I. Unbundling Amstein v. Porter A. Three Different Opinions 1. Judge Caffey and the "fantastic" story 2. Judge Frank's crafty reversal a. Holding b. Dicta 3. Judge Clark's disbelief B. Canonical Status Through Influence II. The Legal Philosophies (and Personalities) Involved A. The Legal Realist: Jerome Frank 1. Indeterminacy 2. Hunches 3. Fact skepticism B. The Copyright Expert: Learned Hand C. The Procedural Reformer: Charles Clark III. Orchestrating the Reversal A. Divergent Musical Hunches and Procedural Sensibilities B. Rationalizing the Hunch 1. A jury trial to test a hunch 2. Two-step copying a. Weak precedent b. Minimizing fudging through subjective judgments C. Five Days Later IV. Exorcising the Ghost of Amstein A. The Ghost of Amstein: Trial Court Skepticism B. The Abandonment of Trial Court Skepticism C. The Downside of Skepticism: An Example D. Reconstructing the Infringement Analysis 1. Cognizable similarity 2. Appropriation of protected expression Conclusion Introduction

The U.S. Constitution guarantees to individuals the "right of trial by jury" in all civil suits at common law. (1) Lawsuits seeking damages for copyright infringement have been understood as "suits at law" that are subject to this right. (2) Demands for jury trials in copyright infringement lawsuits are today a staple in the world of copyright litigation. While a vast majority of these claims either settle prior to trial or are instead dismissed through motions, on the rare occasion that a jury is indeed empaneled to hear a case, courts continue to be confounded by a somewhat basic issue: the proper role of the jury in the copyright infringement analysis.

The copyright infringement analysis involves determining whether a defendant copied the plaintiff's protected work, a question that embodies elements of both fact and law. It entails ascertaining facts about the defendant's conduct and then making a normative judgment about the legality of such conduct. (3) Classifying these issues appropriately and dividing them up between judge and jury remains a complex undertaking--one that the parties routinely disagree about. (4) Indeed, the spate of criticism surrounding the jury verdict in the copyright infringement case involving the song "Blurred Lines" vividly illustrates the complexity of empaneling juries to determine the existence of copyright infringement. (5)

The complexity of the modern copyright infringement analysis cannot be overstated. Often referred to as the "substantial similarity" requirement, its structure, scope, and purpose continue to confound courts and scholars--perhaps even more so (and more routinely) than the infamous fair use doctrine. Copyright's infringement analysis has been variously described as "bizarre," (6) "mak[ing] no sense," (7) "viscid," (8) and "problematic." (9) Indeed, recently the Ninth Circuit chose to "withdraw" its model jury instructions on the analysis, (10) recognizing that no amount of abstract guidance could resolve the indelible complexity that the analysis routinely engenders. In short, despite the centrality of the infringement analysis to copyright law, its complexity renders it a virtual black hole in copyright jurisprudence.

Even though the Supreme Court has never weighed in on the matter, courts around the country take their guidance on the copyright infringement analysis from a landmark decision of the Second Circuit that is believed to have defined the structure of the infringement inquiry and the jury's role in it: Arnstein v. Porteri (11) Although the opinion was handed down nearly seven decades ago, courts, scholars, and lawyers consider the Second Circuit's infringement analysis to be part of the modern copyright law canon. (12) While a few circuits have made important modifications to its central approach, the "Arnstein test," as it has come to be known, remains the dominant approach to copyright infringement analysis today. (13)

The Arnstein test for copyright infringement involves two distinct steps. The first requires the decisionmaker to determine whether the defendant actually "copied" from the plaintiff's work, ordinarily a factual question for the jury. Without proof of copying, there can be no copyright infringement. (14) To prove copying, the decisionmaker looks to whether the defendant had access to the protected work and whether the two works are indeed similar such that copying may be inferred circumstantially. (15) These twin elements of proof are often referred to as the elements of "access" and "probative similarity." (16) Additionally, during this step the decisionmaker is permitted to rely on the testimony of experts in the field of the works under scrutiny (e.g., a musicologist or art expert) about the inferences that may be drawn given accepted practices in the field. (17) The decisionmaker may also break the work down into its component parts as part of the analysis, a process that is known as "dissection." (18)

Once the jury determines as a factual matter that the disputed work has been copied, the next step is to determine whether the copying was substantial enough to be deemed illicit or wrongful--and therefore legally actionable. (19) Somewhat counterintuitively, this second step is treated as a purely factual question and therefore within the purview of the jury. (20) This second step attempts to measure the subjective reaction of the jury to the copying. (21) Consequently, expert testimony and analytic dissection are treated as presumptively irrelevant and therefore inadmissible. (22) Almost all courts around the country adhere to this two-step formulation in one way or another and continue to disallow any expert testimony or objective analysis of the works during this second step. (23)

The decision in Arnstein is thus to be credited with (or faulted for) giving juries significant control over the infringement analysis. In treating the question of "wrongful" or "illicit" copying as a pure question of fact, precluding expert testimony on it, and then requiring juries to base their decision on what an "ordinary lay hearer" or ordinary observer would conclude, (24) Arnstein in effect cabined trial courts' (i.e., judges') supervision over the question of copyright infringement. Over the years, Arnstein's empowerment of the jury in this regard has come to be accepted as law. (25) In addition, Arnstein's decision to hand the issue over to the jury has also come to be rationalized as comporting with the overall motivating utilitarian ideals of copyright law. Arnsteins deference to juries is treated as a deliberate one, aimed at examining the potential market effects of the defendant's actions by assessing the reaction--to the copying--of the work's intended "audience." (26) And so the practice of allowing juries to decide the legality of a defendant's copying (i.e., its wrongfulness) continues unabated and enters into the public spotlight every few years when a jury finds a well-known work to be infringing. (27)

The Arnstein court's decision to give juries complete control over the question of improper appropriation in the infringement analysis has over time proven to be immensely problematic for copyright law. While juries are required to determine whether the copying was "improper," they are not given any discernible criteria for the investigation (other than terms such as "total concept-and-feel" (28)), effectively allowing them to use their own subjective intuitions during the evaluation. Disallowing all expert testimony on the question forbids the introduction of any relevant information relating to industry practice and the nature of creativity therein. (29) Lastly, and perhaps most importantly, discouraging summary judgment on the question in an effort to have juries make the determination has prevented copyright jurisprudence from developing a coherent set of rules and principles that might guide the decision, thereby producing a body of decisions that appears inextricably ad hoc and arbitrary. (30)

The Arnstein opinion itself says very little about its reasons for according juries such a central role in what is unquestionably a complex determination. What makes this omission in the opinion doubly perplexing is the reality that the author of the majority opinion, Judge Jerome Frank, was an outspoken and acerbic critic of the jury system. (31) A well-known legal realist, Judge Frank devoted many hours of his nonjudicial work to criticizing the jury system in various books and articles. (32) The practice of allowing a jury to decide what was in effect "its own 'law' in each case" was to Judge Frank among the greatest scourges of the American system of adjudication, since it contributed to unpredictable "jury-made law," which often bore no connection to actual rules of law. (33) Judge Frank's lifelong distaste for juries and his careful identification of the various malaises promoted by the jury system are therefore hard to reconcile with the overwhelming confidence in juries that he exudes in Arnstein, a confidence that continues to haunt copyright law and practice to this day.

This Article shows that the Arnstein court's decision to rely on juries for the infringement analysis had very little to do with copyright law or policy. The Arnstein formulation was hardly a considered decision about the values at stake in the copyright infringement analysis but instead almost entirely the product of Judge Frank's well-developed legal philosophy, which led him to an approach that minimized the role of lower court judges in the infringement analysis and significantly curtailed their ability to rely on issues of law to decide cases. Considerations of copyright law were for the most part entirely secondary to the court's decision. While scholars (34) (and, on occasion, courts (35)) have criticized the Arnstein court's analytical framework, hardly anyone has examined exactly why the majority opinion chose to go...