[author: Diana Buck]

The traditional understanding in copyright law is that the concept of “prior art” is only applicable to patents and that the term is not relevant in assessing whether a defendant has infringed someone’s copyright. Patent law demands that an invention must be new and novel to receive protection. Prior art, which can be broadly described as any preexisting knowledge in the world that’s available to the public, is frequently used by defendants in litigation to argue that a plaintiff’s so-called invention should never have received patent protection because the plaintiff's invention was not new.

In copyright, however, a work of authorship does not need to be new; it need only have some spark of creativity that came from the author in order to receive protection. For example, it does not matter if someone’s photo of the Eiffel Tower looks just like the innumerable similar images on the internet; it just matters that impermissible copying did not occur. Nevertheless, in assessing what exactly is unique to the author and thus is protectible under copyright law, courts will filter out all unprotectable elements in a work. The U.S. Court of Appeals for the Ninth Circuit uses a two-part extrinsic-intrinsic test to determine whether a defendant has impermissibly copied the protected elements of a work. If a defendant has copied only unprotected elements of a work, then the plaintiff has no claim.

Yet there’s a trend developing in district courts to refer to “prior art” in copyright cases when assessing which parts of a plaintiff’s work are protectable. In Johannsongs-Publishing v. Lovland, Johannsongs alleged that the song, “You Raise Me Up,” written by defendants Rolf Lovland and Brendan Graham, impermissibly copied from the old Icelandic hit song, “Söknuður.” In a motion for summary judgment at the district court level, the defendants argued that the similarities between the songs were not sufficient to find infringement and actually derived from a song in the public domain and “several other prior art songs.”

Both parties submitted expert reports, yet the district court found only one, from the defendants’ expert, that properly filtered out all unprotectable elements, including prior art songs. The plaintiff’s expert reports had failed to conduct a prior art investigation, so, according to the district court, their comparison of the songs failed to “filter out unprotectable prior art elements, which is the foundation of the extrinsic test.” Thus, the court granted the defendants’ motion for summary judgment, and the plaintiff appealed. In November 2021, the Ninth Circuit issued a fairly brief decision on that appeal, holding that the district court properly excluded the plaintiff’s expert reports because they “failed to filter out similarities that are attributable to prior art, as required under the extrinsic test.”

What does all this mean for future copyright litigants?

Neither the district court nor the Ninth Circuit explained what they meant by the term “prior art.” It may simply have been a shorthand to refer to examples of other artistic works, and the courts’ intention was to perform a normal copyright infringement analysis. Or, it could signal that courts are beginning to use prior art to assess whether a work deserves wide or narrow protection instead of looking to more traditional doctrines of unpredictability, like the idea-expression distinction or the concept of scènes à faire.

The bottom line is that, whether or not courts using the term “prior art” in referring to other artistic works is merely semantics, litigants should make sure that they conduct a prior art search and be prepared to argue how a work is or isn’t different from the rest.