Neville L. Johnson
Partner, Johnson & Johnson LLP
439 N Canon Dr
Beverly Hills , CA 90210
Phone: 310-975-1080
Email: njohnson@jjllplaw.com
Southwestern Univ SOL; Los Angeles CA
Douglas L. Johnson
Partner, Johnson & Johnson LLP
439 N Canon Dr
Beverly Hills , CA 90210
Phone: (310) 975-1080
Email: djohnson@jjllplaw.com
McGeorge SOL Univ of the Pacific; CA
Daniel B. Lifschitz
Partner, Johnson & Johnson LLP
Email: dlifschitz@jjllplaw.com
Loyola Law School; Los Angeles CA
Tightening Substantial Similarity Requirements for Music
The 9th Circuit has long been considered a difficult jurisdiction for copyright plaintiffs. However, for many years the common wisdom in the entertainment industry was that, notwithstanding the courts’ hostility to infringement suits, music plaintiffs generally stood a better chance than literary plaintiffs at surviving dispositive motion practice. The reasoning was that, while judges tend to feel comfortable engaging in literary dissection to conclude that two works are not substantially similar, they are less comfortable when analyzing music. As such, they tend to be more deferential to expert musicological opinions, allowing cases to proceed to the factfinder for ultimate resolution.
This trend hit an inflection point in Williams v. Gaye, 895 F.3d 1106 (9th Cir. 2018), in which the 9th U.S. Circuit Court of Appeals affirmed a jury verdict holding that “Blurred Lines” by Robin Thicke and Pharrell Williams infringed upon Marvin Gaye’s “Got to Give It Up.” Many commentators felt this opinion went too far in terms of allowing copyright plaintiffs to monopolize certain basic building blocks of music. The Williams decision, combined with the U.S. Supreme Court getting rid of laches as a defense to damages for copyright infringement in Petrella v. MGM, 572 U.S. 663 (2014), stoked fears that a flood of stale infringement claims would soon overwhelm the courts.
One of those follow-on claims was brought by Michael Skidmore, trustee for the estate of Randy Wolfe. Wolfe, professionally known by the stage name “Randy California,” was the guitarist for the American rock band Spirit and wrote the group’s 1967 instrumental track “Taurus” that, for decades, many people compared to 1971’s “Stairway to Heaven” by Led Zeppelin. Skidmore took the Petrella decision as a sign to finally sue Led Zeppelin for the alleged infringement. See generally Skidmore v. Led Zeppelin, 952 F.3d 1051 (9th Cir. 2020). As was typical for these cases, dueling expert reports were proffered, with the plaintiff’s expert focusing on certain shared musical features between the two compositions and the defendant’s expert focusing on minimizing those similarities in the face of the songs’ differences. The 9th Circuit did three things of note in disposing of the infringement claim.
First, the 9th Circuit confirmed that, under the 1909 Copyright Act, a work’s protection was circumscribed to the scope of whatever deposit copy was used to register it. Because the deposit copy for “Taurus” consisted of only the song’s sheet music (which did not capture certain aspects of the composition present in its famous sound recording), the plaintiff was not able to pursue the infringement claim based on anything outside the deposit copy’s four corners.
Second, the 9th Circuit formally disposed of the “inverse ratio” rule that formerly allowed a plaintiff to prevail on an infringement claim based on a lower level of substantial similarity when it could be shown that the defendant had a high degree of access to the plaintiff’s work. The rule was originally intended to refer to probative similarities, which circumstantially indicate copying is likely to have occurred, but do not in and of themselves constitute a substantial appropriation. Think, for example, of the seminal U.S. Supreme Court case of Feist Publications, Inc., v. Rural Telephone Service Co., 499 U.S. 340 (1991), where the fact of copying was demonstrated by showing that fake phone numbers inserted into the plaintiff’s phonebooks to detect illicit copying had wound up in the defendant’s phonebooks. Thus, where a defendant had clear opportunities to copy a plaintiff’s work, the inverse ratio rule would hold that the need for probative similarities (which are inherently conjectural) become less important.
However, courts had frequently muddled application of the inverse ratio rule by using it to lower the level of substantial similarity required to prove infringement, which was increasingly dangerous in an age where digital distribution meant that the entire world has access to almost anyone’s work if they simply visit a particular corner of the internet. The 9th Circuit decided that the issues posed by the maldeveloped inverse ratio rule were now more trouble than the rule was worth and “join[ed] the majority of our sister circuits that have correctly chosen to excise it from copyright analysis.”
Third, the 9th Circuit confirmed that copyright law’s refusal to protect fundamental building blocks of creative expression extended to many of the basic musicological motifs that the plaintiff had claimed as infringing, including “common or trite musical elements” or “commonplace elements that are firmly rooted in a genre’s tradition” such as “descending chromatic scales, arpeggios or short sequences of three notes.” The court broke down the nature of the chromatic scale shared between “Taurus” and “Stairway to Heaven” much as they would break down the literary tropes presented in a screenplay case, showing a lesser deference to musicological experts in line with how the court has treated literary experts in recent years.
It should be noted also that the 9th Circuit held the plaintiff had failed to present a “selection and arrangement” theory of infringement, meaning a claim arguing that while the similarities he identified were individually unprotected, there was some protection in the particular novel manner by which those elements were combined. However, the opinion goes on to provide a significant amount of clarifying detail as to when and how such a theory may apply — a discussion that is arguably dicta given the court’s disposal of the claim on a failure-to-raise basis, but which still provides good guidance for practitioners.
The immediate result of the Skidmore decision was an emboldened district court judiciary, which feels more empowered to dispose of music infringement claims on the papers. The first application was in Gray v. Perry, 2:15-CV-05642-CAS-JCx (C.D. Cal. Mar. 16, 2020), where a jury had returned an infringement verdict against Katy Perry for her hit song “Dark Horse” on the basis that it copied, among other elements, a protectable eight-note ostinato from the plaintiff’s song “Joyful Noise.” The defense moved for judgment notwithstanding the verdict on the grounds that none of the elements identified as a basis for infringement were protectable under copyright. The district court agreed, holding that “the nine individual elements that plaintiffs identify in their opposition” to the defendant’s motion “are precisely the kinds of commonplace elements that courts have routinely denied copyright protection, at least standing alone, as a matter of law[.]”
The district court also tackled whether the elements constituted a protectable selection and arrangement, holding that “in each of the cases that addressed and found a protected combination of otherwise unprotectible elements, the protected combination concerned a mix of compositional elements present across a compositional work as a whole, not within a single portion of that composition.” Here, there was nothing “particularly unique or rare” about the elements identified by the plaintiff, meaning it could not serve as the basis for an infringement claim, and the jury’s contrary holding was overturned.
The same fate befell a different plaintiff a few months later in Smith v. Weeknd, CV 19-2507 PA (MRWx) (C.D. Cal. July 22, 2020), which pit the plaintiff’s song “I Need to Love” against The Weeknd’s song “A Lonely Night.” Using the same prevailing musicologist from the Skidmore case, the defense argued that the plaintiff was attempting to exert control over basic musical elements found in numerous well-known hit songs. The court agreed, holding that “there are no protectable similarities, and the other potential similarities are either not protectable musical conventions or are seen in prior compositions[.]” Furthermore, the selection and arrangement of unprotectable similarities between the two songs identified by the plaintiff was held to be “neither original” nor “shared ‘in substantial amount.’”
The end result is that music infringement cases have been downgraded in the eyes of most plaintiffs’ attorneys and are now only as viable as most other type of infringement cases, leaving the Williams decision as an outlier rather than a bellwether.
Fair Use of Samples In-Studio
Until recently, prevailing wisdom in the music industry was that sound recordings possessed outsized protection against “sampling” by third parties. This was largely promulgated by Bridgeport Music v. Dimension Films, 410 F.3d 792, 801 (6th Cir. 2005), which bluntly held: “Get a license or do not sample. We do not see this as stifling creativity in any significant way.” The problem with this statement is that it ignored numerous basic principles of copyright law, which the 9th Circuit confronted in VMG Salsoul v. Ciccone, 824 F.3d 871 (9th Cir. 2016). VMG Salsoul rejected Bridgeport Music’s inflexible rule in the face of copyright law’s de minimis use defense, holding that Madonna’s sampling of a fraction-of-a-second-long horn hit on her song “Vogue” was almost unrecognizable from the plaintiff’s work. This has since opened the doors for further consideration of affirmative defenses against sampling.
A notable development in the world of sampling defenses occurred in Chapman v. Maraj, 2:18-cv-09088-VAP-SSx C.D. Cal. Sep. 16, 2020), wherein Nicki Minaj was pursued by Tracy Chapman for sampling the latter’s song “Baby Can I Hold You” without obtaining a license to do so. In fact, Chapman had turned down a license request from Minaj. However, the song Minaj had requested the license for, “Sorry,” was subsequently leaked to a radio station and quickly went into wide unauthorized distribution online. Minaj defended against her conduct by saying that, to the extent she infringed upon Chapman’s adaptation right, it was in the name of in-studio artistic experimentation and should be protected as fair use. The district court agreed, noting that the only way for an artist such as Chapman to evaluate a license request is to see how the licensee plans to use the work. Thus, “[a] ruling uprooting these common practices would limit creativity and stifle innovation within the music industry … contrary to Copyright Law’s primary goal of promoting the arts for the public good.” It must be noted, however, that this finding of fair use did not extend to exercise of the distribution right (i.e., making the experimental track available to the public by leaking it to the radio station), only the in-studio experimentation that impinged on the adaptation right.
Determining When Joint Authorship Is Repudiated
Coauthorship of a work is one of the trickier things to establish in the world of copyright, and many appellate decisions have chimed in on what it requires. In Childress v. Taylor, 945 F.2d 500 (2d Cir. 1991), for example, the 2nd U.S. Circuit Court of Appeals held that it requires the authors to have prepared their contributions with the knowledge and intention that they would be merged as “inseparable or interdependent parts of a unitary whole.” In Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000), the 9th Circuit went further, noting that not only must a defendant have made objective manifestations of intent to share ownership of the copyrighted work with the plaintiff, but the plaintiff must have brought suit to establish their purported coauthorship within three years of those objective manifestations being plainly and expressly repudiated by the defendant.
Everly v. Everly, 958 F.3d 442 (6th Cir. 2020), is the most recent appellate court decision to shape the coauthorship doctrine and concerned the song “Cathy’s Clown” by the Everly Brothers. Don and Phil Everly had originally both been credited as coauthors of the song, but after a dispute between the brothers in 1980, Phil gave up all his rights to Don — who claimed Phil’s coauthorship credit was only given to further the band’s image as a songwriting duo — through a written release. Don then exercised the Copyright Act’s termination right in 2011 to reclaim the song from its publisher, Acuff-Rose, styling himself as its sole author. Phil’s heirs then attempted to send similar termination notices on his behalf, leading to Don suing for a declaration that Phil had missed his three-year window to reestablish himself as coauthor of the song. The district court agreed with Don, but the 6th U.S. Circuit Court of Appeals reversed, holding that the “plain and express repudiation” required to start the statute of limitations on a coauthorship claim was not necessarily triggered by the facts in the record. Specifically, the court felt that the 1980 release signed by Phil could have been construed as a transfer of existing rights to Don rather than an acknowledgement of having no rights from inception, and there was no evidence that Phil was aware of Don’s 2011 termination notice to Acuff-Rose presenting himself as a sole author. Accordingly, the court remanded the case.
Unfortunately for Phil’s heirs, the 6th Circuit’s decision was only used by the district court to better paper its previous ruling for Don. The evidentiary record revealed that Don told Phil in a 1980 phone call that he was not a coauthor of “Cathy’s Clown” and not entitled to continuing credit therefor. While Phil initially objected to Don’s claims, he ultimately acquiesced and signed the written releases relinquishing “every claim of every nature” related to the song. Circumstantial evidence of the parties’ conduct in the decades that followed indicated this was their settled understanding, notwithstanding periodic grumblings from Phil. Thus, because Phil had failed to establish his coauthorship within three years of it being repudiated by Don, it was too late for his heirs to establish that coauthorship in service of obtaining termination rights. Everly v. Everly, 3:17-cv-01440 (M.D. Tenn. May 4, 2021).