Boisson v. Banian, Ltd.
273 F.3d 262 (2001)
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Rule of Law:
When a copyrighted work contains both protectible and unprotectible elements, the substantial similarity analysis requires a court to apply the 'more discerning observer' test. This test does not dissect the work into individual components, but rather assesses infringement based on the 'total concept and feel' of the author's original selection, coordination, and arrangement of those elements.
Facts:
- In 1991, Judi Boisson designed and produced two alphabet quilts, 'School Days I' and 'School Days II'.
- Boisson's design process involved hand-drawing the letters, selecting specific color combinations for the letters and blocks, choosing the quilting patterns, and arranging the letters and icons in a particular layout.
- Boisson obtained certificates of copyright registration for both quilt designs on December 9, 1991.
- Beginning in 1992, Vijay Rao, through his company Banian Ltd., began importing alphabet quilts from India for sale in the United States.
- Rao first imported and sold a quilt called 'ABC Green Version I'.
- In 1994, Rao ordered a modified version called 'ABC Green Version II'.
- In 1995, Rao testified that he designed a new quilt, 'ABC Navy,' based upon 'ABC Green Version II' and began importing it.
Procedural Posture:
- Judi Boisson and her company filed suit against Vijay Rao and Banian Ltd. in the U.S. District Court for the Eastern District of New York, alleging copyright infringement.
- After a bench trial, the district court dismissed all of Boisson's claims.
- The trial court ruled that the defendants' quilts were not substantially similar to what it deemed were the protectible elements of Boisson's works.
- Boisson (as plaintiff-appellant) appealed the dismissal of her copyright infringement claims to the U.S. Court of Appeals for the Second Circuit.
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Issue:
Does a derivative work infringe upon a copyrighted work when it copies the original's selection, coordination, and arrangement of public domain elements, creating a 'total concept and feel' that is substantially similar to the copyrighted work?
Opinions:
Majority - Cardamone, J.
Yes. A derivative work infringes if its 'total concept and feel' is substantially similar to the protected work, based on the copied selection, coordination, and arrangement of even public domain elements. While individual elements like the alphabet and specific colors are not copyrightable, an author's original combination and arrangement of these elements is a protectible expression. When a work includes public domain elements, the court applies the 'more discerning observer' test, which requires filtering out unprotectible elements but still comparing the works' 'total concept and feel' rather than dissecting them into isolated parts. Here, Boisson's arrangement of letters, specific color choices, and quilting patterns were original and protectible. The court found defendants' 'ABC Green' quilts were overwhelmingly similar to Boisson's 'School Days I' in their color choices, layout, letter shapes, and quilting patterns, and therefore constituted infringement. However, the 'ABC Navy' quilt was sufficiently different in its layout, color scheme, and icon placement to not be substantially similar, thus it did not infringe.
Analysis:
This decision clarifies the application of the substantial similarity test for compilations, emphasizing that a holistic 'total concept and feel' analysis is appropriate even under the 'more discerning observer' standard. It reinforces the principle from Feist Publications that originality in compilations resides in the author's creative selection and arrangement. The ruling serves as a caution against a hyper-analytical, dissecting approach that would fail to protect the expressive, aesthetic whole of a work that is greater than the sum of its unprotectible parts. This protects authors of compilations from copyists who mimic the overall aesthetic while making minor changes to individual, unprotectible elements.
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