MICRO CONSULTING, INC. v. ZUBELDIA
813 F.Supp. 1514 (1990)
United States District Court, W.D. Oklahoma.
September 19, 1990.
33. The plaintiff has advanced additional, but related, arguments: (1) "but for" Claimnet, Uniclaim — the "next generation" — would not exist and (2) Uniclaim is a "substantial derivation" of Claimnet.
34. As stated, the plaintiff must prove both prongs of the second element: access and substantial similarity. E.g., Krofft, 562 F.2d at 1172 (no amount of proof of access will suffice to show copying if no similarities). "It is not enough that [the] defendant have access to [the] plaintiff's work and that [the] plaintiff's work serve as a sine qua non to the creation of [the] defendant's work. The works still must be `substantially similar' for liability to ensue." A Structured Approach, 20 Ariz.St.L.J. at 627 n. 6 (citation omitted).17 Furthermore, originality under the Copyright Act requires neither novelty nor uniqueness. E.g., Hutchinson Telephone Co. v. Fronteer Directory Co.,770 F.2d 128, 131 (8th Cir.1985) (originality does not connote novelty or uniqueness but simply that a work be independently created). To be original, a work need only be created independently by the author, not copied from a preexisting work and as stated, copying is proven by substantial similarity between the two works. 35. The evidence is undisputed that there is deliberate noncopying. The defendants did not merely make superficial changes in the literal and nonliteral aspects of Claimnet to disguise intentional appropriation, e.g., See v. Durang,711 F.2d 141, 142 (9th Cir.1983) ("Copying deleted or so disguised as to be unrecognizable is not copying."); they have legitimately avoided infringement by intentionally making sufficient significant changes in Uniclaim. E.g., Eden Toys, Inc. v. Marshall Field & Co.,675 F.2d 498, 501 (2d Cir.1982) (citations omitted). Zubeldia's experience in creating Claimnet inevitably became part of his expertise. He testified that he did not undertake
to copy Claimnet and the plaintiff presented no credible evidence which mandates a contrary conclusion.
36. The second argument advanced by the plaintiff is that Uniclaim is a "substantial derivative" of Claimnet. The term under the Copyright Act is "derivative work" and like any other accused work, a derivative work does not infringe unless it has been substantially copied from the preexisting work. E.g., Vault Corp. v. Quaid Software Ltd.,847 F.2d 255, 267 (5th Cir.1988) (to be considered a derivative work, infringing work must incorporate portion of and be substantially similar to copyrighted work); Litchfield v. Spielberg,736 F.2d 1352, 1357 (9th Cir.1984). Thus, substantial similarity is again the key to finding a violation under section 501.
37. The second claim brought by the plaintiff is that the defendants engaged in unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), which proscribes false designations of origin and false representations. This statute, as amended by the Trademark Law Revision Act of 1988, provides that
"[a]ny person who, on or in connection with any goods or services, ... uses in commerce ... any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which —
(1) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or