When Copying Isn't Infringement: Filtering Out Facts

• Published date: 01 February 2022
• Subject Matter: Intellectual Property, Media, Telecoms, IT, Entertainment, Copyright, Advertising, Marketing & Branding
• Law Firm: Frankfurt Kurnit Klein & Selz
• Author: Mr Brian Murphy

Another day, another copyright lawsuit involving car advertising. Last week's case - our first nominee for "Silliest Copyright Case of 2022" - involved alleged similarities between product shots that were included in advertising for portable car jump starters. Today's case involves alleged verbatim copying of promotional copy that ended up on a local Hyundai dealer's website.

Plaintiff Advanta-STAR offers subscriptions to an extensive database of vehicle comparisons that highlight the advantages that one car has over competitive models. Its customers are mostly car dealerships that, according to Advanta-STAR, can use its "unbeatable research" from "more sources than any other" to "supercharge ... dealership sales!" As a result of routine monitoring to uncover unlicensed uses of its content, Advanta-STAR discovered that a dealer (located in Slidell, Louisiana, known as the Camelia City) had included on its website three vehicle comparisons that "contained entire paragraphs that [were] identical" to Advanta-STAR's content. Advanta-STAR eventually learned that the dealer had engaged defendant DealerCMO as a vendor, and DealerCMO had prepared and posted on the dealer's website the allegedly infringing copy. When cease and desist letters received no substantive response, Advanta-STAR sued DealerCMO and its CEO for copyright infringement and violations of the DMCA for removal and falsification of copyright management information.

The defendants moved for summary judgment. For purposes of the motion, the defendants didn't dispute that Advanta-STAR owned a valid copyright in its database, as a whole, or that actual copying had occurred. Instead, the defendants argued that the Advanta-Star could not demonstrate that the defendants' vehicle comparisons were substantially similar to any protectable elements in Advanta-Star's comparisons.

Courts in the Fifth Circuit use the familiar two-step "filtration" analysis to evaluate whether two works are substantially similar. Initially, courts filter out any elements that are not protectable by copyright - such as facts, ideas, prior art, or scènes à faire. Following filtration, courts then compare the protectable elements in the two works to determine whether a layperson would view the two works as substantially similar. See Nola Spice Designs, L.L.C. v. Haydel Enters., Inc., 783 F.3d 527 (5th Cir. 2015).

Advanta-STAR argued that its comparisons were individually protectable as "factual compilations" or as "narratives...