plaintiff's and defendant's works. See Nimmer on Copyrigt §
13.01[B] Since the defendants have stipulated to the access
requirement, the inference of copying will be supported by the
jury's finding of substantial similarity. The value of
plaintiff's cookbook has nothing to do with its similarity to
defendants' ads, and thus, the evidence in question is
irrelevant on the issue of copying.
Defendants also argue that these items should be excluded as
hearsay. Fed. R.Evid. 801, 802. In addition to being offered
for the truth of the matters asserted therein, none of the
authors of these letters or reviews is being called as
witnesses at trial, thus eliminating the opportunity for cross
examination. Plaintiff contends, however, that the letters,
reviews and ads should be admitted under the residual exception
to the hearsay rule. Fed.Rule Evid. 803(24). The court, however
finds this exception inapplicable since the items in question
do not have the "equivalent circumstantial guarantees of
trustworthiness" as required by Rule 803(24).
Therefore, defendants' motion to exclude from evidence the
letters, reviews and advertisements concerning plaintiff's
cookbook is granted.
(2) The Individual Elements of Plaintiff's Work
Plaintiff's copyright claim rests on the allegation that
defendants copied the "total concept or feel" of her cookbook.
Defendants assert that because of this fact, plaintiff should
be precluded from arguing that defendants copied the
"individual elements of her cookbook."*fn2 In addition to
the fact that defendants cite no caselaw to support their
argument, there exists ample authority to the contrary.
In Roulo v. Berrie, one of the seminal "total concept and
feel" cases, the Seventh Circuit addressed this issue in the
context of plaintiff's copyright in the design of its greeting
cards. The court explicitly rejected the claim that it was
improper for the jury to have considered individual "elements
of similarity unprotected by the copyright laws" in the
plaintiff's greeting cards. 886 F.2d 931, 939 (7th Cir. 1989),
reh'g denied, cert. denied, ___ U.S. ___, 110 S.Ct. 1124, 107
L.Ed.2d 1030 (1990). On the issue of copying, the court allowed
the jury to consider the uncopyrightable elements of
plaintiff's cards, such as their sizes, "the color of the
paper, ink, and border designs, the concept of stripes, and the
ellipses and the single-side format." Id.; see also Roth
Greeting Cards v. United Card Company, 429 F.2d 1106, 1111
(9th Cir. 1970) (plaintiff may prove that the defendant
infringed her copyright in the "total concept and feel" by
showing that the defendant copied individual elements of the
The Second Circuit adopted this approach in where the court
compared each component of two textile designs in determining
that they were substantially similar. Malden Mills, Inc. v.
Regency Mills, Inc., 626 F.2d 1112, 1113-14 (2d Cir. 1980).
Similarly, in Steinberg v. Columbia Pictures Industries,
Inc., Judge Stanton compared the uncopyrightable details of
two posters in deciding the issue of substantial similarity.
663 F. Supp. 706, 713 (S.D.N.Y. 1987). In fact, the Steinberg
court explicitly acknowledged that although "[t]he typeface is
not a subject of copyright." it is relevant to substantial
similarity because "the similarity reinforces the impression
that defendants copied plaintiff's illustration." Id. at 711;
see also E. Mishan & Sons, Inc. v. Marycana, Inc.,
662 F. Supp. 1339 (S.D.N.Y. 1987).
Given this line of authority, the jury in this case will be
allowed to consider the individual elements of Heart of the
Home in deciding whether defendants' copied the book's "total
concept and feel." Therefore, defendants' motion to preclude
from arguing that they copied individual elements of her
cookbook is denied.
(3) Copyrightability of "Total Concept and Feel"
Defendants contend that as a matter of law, the "total concept
and feel" of plaintiff's cookbook is not copyrightable. Def.
Mem. of Law in Support of In Limine Motion ("Def.Mem. of
Law") at 6. Although defendants made the same argument in their
motion for summary judgment before Judge Stanton, they now
contend that the issue was never decided, since Judge Stanton
stated only that "plaintiff's arrangement of artistic
techniques may be protected expression." Id. at 6 (citing
Branch v. Ogilvy & Mather, Inc., (S.D. N.Y. filed May 30,
1990) ("Opinion") at 20 (emphasis added)).
Judge Stanton, however, explicitly stated that "before a court
may send a copyright case to the jury, it must satisfy itself
that . . . at least some of what the defendant copied falls
into the area of protectible expression." Opinion at 15. By
denying defendants' motion for summary judgment on this issue,
Judge Stanton did decide to send the copyright claim to the
jury. Moreover, he explicitly stated that defendants "will be
liable . . . if the artistic expression of the advertisements,
as a whole, is substantially similar to the artistic expression
of Heart of the Home, as a whole." Opinion at 19-20.*fn3
Based on this conclusion, the court denied defendants' motion
for summary judgment on plaintiff's copyright claim.
Judge Stanton's denial of defendants' summary judgment motion
on this point constitutes the "law of the case," and as such,
is binding on this court. Zdanok v. Glidden Company, Durkee
Famous Foods Division, 327 F.2d 944 (2d Cir. 1964), cert.
denied, 377 U.S. 934, 84 S.Ct. 1338, 12 L.Ed.2d 298 (1964).
Furthermore, defendants have not provided this court with a
reason to disregard Judge Stanton's holding — his thoroughly
reasoned opinion is fully supported by the present law. See
Fogel v. Chestnut, 668 F.2d 100, 109 (2d Cir. 1981), cert.
denied sub nom. Currier v. Fogel, 459 U.S. 828, 103 S.Ct. 65,
74 L.Ed.2d 66 (1982) ("[t]he law of the case will be
disregarded only when the court has `a clear conviction of
error' with respect to a point of law on which its previous
decision was predicated"). This court, therefore, is bound by,
and fully agrees with, Judge Stanton's determination that the
"total concept and feel" of plaintiff's cookbook is protected
by copyright law, making the ultimate question of liability one
for the jury.
(4) Plaintiff's Use of Expert Testimony
Defendants argue that plaintiff should be forbidden from
introducing expert testimony on the issue of copying —
specifically, on the issue of "substantial similarity."
Although some confusion surrounds this issue, this Circuit has
followed a two-prong test set forth in Arnstein v. Porter,
154 F.2d 464 (2d Cir. 1946). Under the Arnstein test,
the trier of the facts must determine whether the similarities
are sufficient to prove copying. On this issue, analysis
(dissection) is relevant, and the testimony of experts may be
received. . . . If copying is established, then only does there
arise the second issue, that of illicit copying (unlawful
appropriation). On that issue . . . the test is the response of
the ordinary lay hearer; accordingly, on that issue,
`dissection' and expert testimony are irrelevant.
Walker v. Time Life Films, Inc., 784 F.2d 44, 51 (2d Cir.
1986) (discussing Arstein, 154 F.2d at 468 (emphasis added in
Walker)); see also Shaw v. Lindheim, 908 F.2d 531 (9th Cir.
1990) (revising the two-part test as set forth in Sid & Marty
Krofft Television Productions v. McDonald's Corp.,
562 F.2d 1157 (9th Cir. 1977)).
The Second Circuit has adopted the Arnstein test, explaining
that Arnstein drew
"a distinction between noninfringing `copying,' on the one
hand, which may be inferred from substantial similarities
between the two works, and infringing `illicit copying,' on the
other, which demands that such similarities relate to
protectible material."*fn4 Walker, 784 F.2d at 51; see
also Gaste v. Kaiserman, 863 F.2d 1061, 1068 (2d Cir. 1988)
(any discrepancy between plaintiff's and defendant's experts
goes to the weight of the evidence).
Applying the Arnstein test to the facts of this case,
plaintiff is entitled to introduce expert testimony that
copying has occurred with respect to similarties between
individual elements of the plaintiff's cookbook and defendants'
ads. Once plaintiff establishes copying, however, the question
of whether that copying constitutes unlawful appropriation will
be left to the jury using the ordinary lay observer test, thus
making expert testimony improper. Thus, defendant's request to
limit expert testimony on the issue of copying is granted in
Defendants' motion is granted insofar as the letters, reviews
and advertisements concerning plaintiff's work are excluded
from evidence. Defendants' motion is also granted insofar as
limiting plaintiff's expert testimony on the issue of copying
as discussed above. Defendants' motion in all other respects is