United States: "Supersubstantial" Similarity Test Does Not Apply to All Fact-Based Works

In reversing the district court, the U.S. Court of Appeals for the Tenth Circuit held that the "supersubstantial" similarity test was incorrectly applied in the context of protected elements of a fact-based World War II memoir. Jacobsen v. Deseret Book Co., Case No. 01-4027 (10th Cir., April 19, 2002).

Jacobsen wrote a personal memoir entitled Who Refused to Die, recounting his survival of the Bataan Death March and subsequent imprisonment and torture during World War II. Deseret Book was the publisher of a series, Children of the Promise, a fictional work portraying the life of a Mormon family during World War II. The story of one of the family’s sons closely follows the experiences related in Who Refused to Die.

The district court, citing the U.S. Supreme Court Feist decision and the Tenth Circuit TransWestern Publishing decision, applied a "supersubstantial similarity" test in view of what it regarded as a "thin" copyright on a fact based work, and granted the defendant’s motion to dismiss for failure to state a claim. Jacobsen appealed.

The Tenth Circuit reversed. Although recognizing that a motion to dismiss should be judged based on the legal sufficiency "of the complaint alone," i.e., to state a claim for which relief may be granted, the Tenth Circuit went on to note that "the district court may consider documents referred to in the complaint if the documents are central to the plaintiff’s claim and parties do not dispute the document’s authenticity. Thus, the Tenth Circuit found it proper for the district court to have considered both works in question in ruling on the motion: "When a district court considers the original work and the allegedly copyrighted work in deciding a 12(b)(6) motion, the legal effect of the works are determined by the works themselves rather than by the allegations in the complaint…." The Court went on to note that after considering the works, the standard for dismissal for failure to state a claim is that it must appear "…beyond doubt [plaintiff] can prove no set of facts in support of his claim that would entitle him to relief."

The Court noted that the degree of substantial similarity required to prove infringement may vary depending on the degree of creativity involved in the copyrighted work. Thus, the less protectable material in the copyrighted work, the greater the substantial similarity required to prove infringement. While acknowledging the holding in Feist that "copyright protection in a factual compilation is thin," and in TransWestern Publishing that "if substantial similarity is the normal measure required to demonstrate infringement, ‘supersubstantial’ similarity must pertain when dealing with thin works," the Court nevertheless concluded that the district court incorrectly applied the "supersubstantial similarity" test here.

According to the Court, TransWestern Publishing merely affirmed that the required measure of "substantial similarity" may vary according to circumstances: "Merely applying a supersubstantial similarity test to all fact-based works would ignore the differences between ‘sparsely embellished maps and directories’ and ‘elegantly written biography.’"

In this case, the Court concluded that the copyrighted work, Who Refused to Die, involved more creative effort and original expression than, for example, the telephone directories at issue in Feist and TransWestern Publishing, and that the measure of substantial similarity here, therefore, required less similarity than would be required if the work in question were a simple factual compilation.