In an unpublished decision last week, Scentsy Inc. v. Harmony Brands, the United States Court of Appeals for the Ninth Circuit reaffirmed that subjective comparisons of a copyrighted visual work (in this case scented wax and wax-warmer products) to an allegedly infringing work should be left to a jury—not decided on summary judgment.

To establish copyright infringement, a plaintiff must prove both ownership of a valid copyright in a work, and copying of the original elements of the work. Because direct evidence of copying is not available in most cases, a plaintiff can establish copying by showing that the defendant had access to the plaintiff’s work and that the two works are substantially similar. To determine substantial similarity, the Ninth Circuit applies a two-part test. First, an “extrinsic test” is applied by objectively comparing specific expressive elements in the two works, focusing on the “articulable similarities.” Next, an “intrinsic test” is applied by subjectively comparing the works, focusing on whether an ordinary reasonable observer would consider the works substantially similar in “total concept and feel.”

The court’s decision in Scentsy is yet another indication that the so-called Shaw rule applies not only to literary works, but to visual work as well. Even wax warmers. The rule, articulated by the Ninth Circuit in Shaw v. Lindheim, states that when comparison of literary works under the extrinsic test presents a triable issue of fact, the question of substantial similarity necessarily survives summary judgment and must go to the jury. In previous rulings, the court left some ambiguity as to whether the Shaw rule applied to visual works. That ambiguity was cleared up in 2012 when the court decided L.A. Printex Industries v. Aeropostale. In that case, the defendant was accused of infringing the plaintiff’s fabric design patterns, and the district court granted defendant’s motion for summary judgment because of the similarities in the “selection, coordination, and arrangement” of the pattern on the fabric. The Ninth Circuit, applying the Shaw rule, found that summary judgment was inappropriate because of the objective similarities between the plaintiff’s fabric design and the defendant’s fabric design.

The Scentsy court, citing to L.A. Printex, held that the district court erred in granting summary judgment on the issue of indirect copying, because the intrinsic-test question “is most appropriately answered by a jury viewing the case as a whole, after having been correctly instructed.” The court warned that a district court’s “attempt to apply the intrinsic test’s subjective and fact-oriented standard, bypassing decision by the trier of fact, is not correct.” In Scentsy, the Ninth Circuit agreed that the designs at issue were subject to broad copyright protection. But after filtering out elements of the designs that related only to similarity of unprotectable ideas, such as the use of a base and heating element, a melting tray, and holes for releasing heat from the warmers, the court concluded that it should have been left for a jury to consider substantial similarity.

But it is still possible for a defendant to win on summary judgment by showing that the two works objectively lack substantially similar subject matter. For example, in another Ninth Circuit case, Kouf v. Walt Disney Pictures, Disney was able to show that “the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events” in two screenplays were not objectively similar. In that case, the plaintiff Kouf anonymously submitted a copyrighted screenplay entitled “The Formula” to Disney, which Disney rejected. A few years later, Disney released the film “Honey, I Shrunk the Kids” which grossed over $80 million. Kouf sued, claiming that Disney copied his screenplay in making the blockbuster.

Disney moved for summary judgment based on the lack of objective similarity between the two screenplays. The district court granted Disney’s summary judgment motion and the Ninth Circuit affirmed, applying the Shaw rule:

“Honey, I Shrunk the Kids” and “The Formula” have substantially different plots, themes, and sequences of events: (1) whereas “Honey, I Shrunk the Kids” celebrates family values (love between spouses, parents and children, and neighbors), “The Formula” depicts the triumph of good over evil (the gangsters lose); (2) the characters in each are shrunk to different sizes (¼ inch versus 1 foot), by different means (ray gun machine versus liquid formula), for different reasons (accident versus evil thieves), with different frequency (once versus several times) and different outcomes (happy families versus dead gangsters). We attach no significance to the fact that both works involve a life struggle of kids fighting insurmountable dangers, because “[g]eneral plot ideas are not protected by copyright law….” … And, we are equally unimpressed by Kouf’s “compilation of ‘random similarities scattered throughout the works[,]’” such as a lawnmower scene, a sprinkler scene, the presence of an attic, danger scenes, concerned parents, and kids sleeping outside overnight.…

Finally, the mood, setting, and pace differ dramatically: “Honey, I Shrunk the Kids” is a light-hearted, family adventure story that takes place almost entirely at the family homes and in a 24-hour period; “The Formula” is a darker adventure that spans a series of days and depicts many locations and a shoot-out. Thus, the works are not substantially similar under the extrinsic test; Kouf has failed to demonstrate a triable issue of fact.

In addition to clarifying that getting shrunk by a ray gun machine is substantially different from getting shrunk by a liquid formula, Kouf v. Disney stands for the proposition that for summary judgment, only the extrinsic test is important. A plaintiff avoids summary judgment by satisfying the extrinsic test which makes similarity of the works a triable issue of fact. In contrast, “a plaintiff who cannot satisfy the extrinsic test necessarily loses on summary judgment, because a jury may not find substantial similarity without evidence on both the extrinsic and intrinsic tests.”

Had the defendant in Scentsy been able to show that its wax warmers and the Scentsy wax warmers were not objectively similar, the defendant may have won on summary judgment. But after filtering out elements of the designs that related only to similarity of unprotectable ideas, such as the use of a base and heating element, a melting tray, and holes for releasing heat from the warmers, the court instead concluded that there were enough similarities between the products to satisfy the extrinsic test. As a result, the similarity of the warmers was a triable issue of fact—and summary judgment was inappropriate.