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November 15, 1993

JOAN T. NAPOLI, Plaintiff,
SEARS, ROEBUCK & CO., a corporation, and KEANE, INC., a corporation, Defendants.


The opinion of the court was delivered by: MARVIN E. ASPEN


MARVIN E. ASPEN, District Judge:

 Napoli has moved for clarification, modification, and/or reconsideration of our rulings on Keane's motion to dismiss and Napoli's motion for partial summary judgment. For the reasons set forth below, Napoli's motion is denied.


 A. Keane's Motion to Dismiss

 Napoli first requests that we modify our statement of the essential elements of a copyright infringement claim. In our original opinion, we stated that in order to establish copyright infringement, a plaintiff must demonstrate: "(i) ownership of the copyright in the complaining work; (ii) originality of the work; (iii) copying of the work by the defendant; and (iv) a substantial degree of similarity between the two works." Selle v. Gibb, 741 F.2d 896, 900 (1984). The language in Selle is stated without caveat or limitation; it is clearly intended it to be a general test for copyright infringement. Napoli has not asserted that Selle has been overruled, or is no longer good law. Because our citation of the law was clearly correct, there is no basis for Napoli's motion.

 Furthermore, Napoli's attempts to distinguish Selle are utterly unconvincing. In her motion, she states that "these prima facie case elements were used to establish unauthorized copying 'because direct evidence of copying is rarely available,' and the similarity of the works (an alleged infringing musical composition) can be used inferentially to prove 'copying.' Plaintiff's Motion for Clarification at 2 (quoting Selle, 741 F.2d at 901). She then claims that, where there is direct evidence of copying, a plaintiff need only demonstrate ownership of a valid copyright and copying by the defendant.

 We first note that Napoli's representations regarding Selle are simply incorrect. The Selle court acknowledged that direct evidence of copying (prong iii) is often difficult to obtain, but provided an alternate method of proving that prong alone: by demonstrating access and striking similarity. Selle, 741 F.2d at 901. Thus, under Selle, the four prong test applies generally to cases of copyright infringement, but where there is no direct evidence of copying (prong iii), a plaintiff may prove copying circumstantially. Such a demonstration, however, does not eliminate the requirement that the plaintiff also prove the fourth prong, substantial similarity. See Selle, 741 F.2d at 901. As a result, regardless of whether the evidence of copying is direct or circumstantial, under Selle the plaintiff must also demonstrate substantial similarity. Napoli's arguments to the contrary are simply in error.

 B. Napoli's Motion for Partial Summary Judgment

 Napoli also requests that we definitively address whether a contributor who claims to be a joint author of a work must have made independently copyrightable contributions to the work. In our original opinion, we noted that there is some dispute as to whether this requirement is appropriate, and that the Seventh Circuit has yet to rule on this issue. Memorandum Opinion and Order, October 5, 1993, at 10 n.5. However, we felt it unnecessary to reach the issue because Sears alleged sufficient creative involvement in the creation of the system to create a genuine issue as to its joint authorship, regardless of whether an "independently copyrightable" rule applies. Indeed, the support for this position comes directly from the cases which Napoli cites in her current motion.

 As noted in our original opinion, the widely-cited case of Whelan Assocs. v. Jaslow Dental Lab., 609 F. Supp. 1307 (ED. Pa. 1985), aff'd 797 F.2d 1222 (3rd Cir. 1986), cert. denied, 479 U.S. 1031, 93 L. Ed. 2d 831, 107 S. Ct. 877 (1987), originally set forth the notion that contributions like those made by Sears may, if of substantial significance, support a finding of joint authorship. Whelan, 699 F. Supp. at 1319. Napoli also points us to S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1086-87 (9th Cir. 1989), which concluded that individuals must make copyrightable contributions to a work to qualify as joint authors. However, in S.O.S., the court expressly noted:

The Whelan court considered the client's contributions to the visual displays closer to the sort of creative input necessary for co-authorship, but nonetheless concluded that they were "not of sufficient significance" to make the client a co-author of the program as a whole. Payday does not allege that Goodman contributed to the visual displays of the payroll program.

 S.O.S., 866 F.2d at 1087 n.6 (citation omitted). The S.O.S. court thus impliedly accepted Whelan's suggestion that significant creative contributions might make a party a co-author, notwithstanding the court's additional conclusion that a joint author's contributions must generally be independently copyrightable. See Ashton-Tate v. Ross, 916 F.2d 516, 521 (9th Cir. 1990) (noting S.O.S. holding on copyrightability of joint authors' contributions). Because Sears' contributions far exceeded those in Whelan and S.O.S., we concluded that they may suffice to establish joint authorship, regardless of whether they were independently copyrightable, or whether such contributions must be ...

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