Surveys and Substantial Similarity: May the Force Be With You!

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Surveys and Substantial Similarity: May the Force Be With You!, Op. 1, No. 47

Survey evidence has typically received a downright frigid reception in the courts when offered to prove "substantial similarity" in copyright cases. Why the carbonite deep freeze for claims under Title 17 when two doors down, at Title 15, survey evidence is warmly welcomed? And, can anything be done to thaw out this situation? Here's our take.

Surveys have not been successfully used in copyright cases due to historical and structural reasons. A very early copyright dispute where survey evidence was presented involved a claim that three "Star Team" action figures produced by the Ideal Toy Company infringed the copyright in the epic motion picture "Star Wars." Even a casual observer would likely sense a disturbance in the force caused by Ideal's "Zem 21," "Knight of Darkness," and "Zeroid" as depicted below in Ideal's catalogue:

To prove up its copyright claim (and obtain a preliminary injunction just in time for holiday season 1977), Twentieth Century Fox produced a consumer survey of children and adults purportedly showing they "associated" these Star Team figures with the movie. Ideal Toy Corp v. Kenner Prods. Div. of Gen. Mills Fun Grp, Inc., 443 F. Supp. 291, 298 (S.D.N.Y. 1977). The trial court was unimpressed. It opined--without any explanation--that allowing survey evidence would supposedly establish a "dangerous precedent" of "allowing trial by the court to be trial by public opinion poll..." It noted other perceived flaws, but then hit on the key problem with the survey expert's opinion: mere "association" does not equal "substantial similarity" for purposes of copyright infringement. This association may show an awareness of similarity, but it doesn't necessarily show illicit copying of protected expression.

On this latter point, the trial court was undoubtedly correct that "association" is not a proxy for "substantial similarity." And subsequent courts have likewise found that surveys purporting to show an "association" or "confusion" are not proper in copyright cases.

But the trial court's reluctance to consider survey evidence because it would create a "dangerous precedent" is arguably an anachronism from another era far, far away. That was 1977. Survey evidence in federal courts was barely "a thing" back then. The modern day federal rules of evidence regarding expert testimony were in their infancy. Numerous federal courts have embraced survey evidence in Lanham Act cases over the last several decades since this galactic dust-up at the height of disco fever. Yet, the "dangerous precedent" of a "public opinion poll" rationale appears to still linger in some quarters. See, e.g., Mattel Inc. v. Walking Mt. Prods., 353 F.3d 792, 801 (9th Cir. 2003)("Use of?surveys?in assessing parody would allow majorities to determine the parodic nature of a work and possibly silence artistic creativity"); see also Jamie Lund, Fixing Music Copyright, 79 Brooklyn L. Rev. 61, 98 (2013) (collecting copyright cases where survey evidence was rejected as "insufficiently reliable or probative").

The Takeaway: There certainly are challenges that await trial counsel and their experts in developing survey evidence regarding whether two works are "substantially similar." The questions used in trademark surveys will not get the job done because "confusion" and "substantial similarity" are fundamentally different inquiries. And, any survey stimuli would have to be very carefully thought through. That said, there is no "per se" bar that precludes survey evidence in copyright cases. See 3 Patry on Copyright, Section 9:83 (2022)("While there is no per se rule barring survey evidence in copyright infringement actions, their admissibility has been rejected"). Thus, the "dangerous precedent" rationale that may still be floating out there should melt away. Courts should be receptive to properly designed survey evidence that is relevant and useful in establishing (or negating) substantial similarity. After all, properly designed survey evidence is grounded in science, not Jedi mind tricks.

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