The U.S. Court of Appeals for the Fifth Circuit has ruled that a plaintiff’s failure to produce a copy of the copyrighted work, thus preventing a side-by-side comparison with the alleged infringement, precludes an infringement claim¾evidence of direct copying notwithstanding. Bridgmon v. Array Systems Corp., Case Nos. 01-10367, 01-10703, (5th Cir. Mar. 20, 2003).
Bridgmon authored the ADS computer program, for which he obtained a copyright registration. Array was licensed to use and sublicense certain software known as ICUS under a license agreement between Bridgmon’s company, ICU Technology Corporation, and Array. Bridgmon later notified Array of nonpayment of royalties under that agreement and terminated the license. Bridgmon then filed suit, alleging that Array’s unlicensed use and distribution of ICUS constituted copyright infringement. However, Bridgmon was unable to produce a copy of the ADS software. The only evidence of its content consisted of Bridgmon’s oral testimony and a reconstruction of the ADS code created by Array’s expert witness. The Fifth Circuit found, as a matter of law, that "[t]his evidence was insufficient to create a genuine issue of material fact as to whether ADS and ICUS are ‘substantially similar.’" Quoting from the 1997 Fifth Circuit decision in Creations Unlimited v. McCain, the court noted that "a side-by-side comparison must be made between the original and the copy to determine whether a layman would view the two works as ‘substantially similar.’"
The court had little trouble with Bridgmon’s contention that he need not produce evidence of substantial similarity between the copyrighted software and the software used by Array because there is evidence of direct copying, noting that not all copying "constitutes legally actionable copyright infringement." The court noted, moreover, that Fifth Circuit law "prohibits finding copyright infringement without a side-by-side comparison of the two works."
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