Litigation

Gray v. Perry: The Pendulum Swings on Copyright Infringement Verdict against Katy Perry

By Scott J. Sholder

Following hot on the heels of the Ninth Circuit’s en banc decision clearing Led Zeppelin of copyright infringement allegations relating to the classic “Stairway to Heaven” (which we reported here), a California federal judge last week overturned a jury’s finding of copyright infringement against Katy Perry regarding the pop hit “Dark Horse.”  Songwriters still nervous in a post-“Blurred Lines” world will likely take solace in two decisions that – while in many ways different from Pharrell Williams’ and Robin Thicke’s case – solidify certain aspects of copyright law that may help musicians rest and write a bit easier.

The genesis of the “Dark Horse” case is not unlike any other you-copied-my-song litigation.  Plaintiffs, successful songwriters and musicians in their own right, sued pop star Katy Perry, several other songwriters, and the record labels and publishers behind “Dark Horse,” claiming that an eight-note ostinato – a “short musical phrase or rhythmic pattern repeated in a musical composition” – in “Dark Horse” was substantially similar to one in plaintiffs’ song “Joyful Noise.”  The alleged similarity between musical phrases as opposed to full musical compositions makes the “Dark Horse” case more like “Stairway to Heaven” than “Blurred Lines,” which dealt with infringement of an entire song.  This distinction informed the court’s legal analysis as well, as discussed further below.

After a two-week trial in the summer of 2019, a jury found the defendants liable for copyright infringement and awarded plaintiffs $2.8 million in damages, and the defendants moved for judgment as a matter of law (or for a new trial).  Courts will grant motions for judgment as a matter of law when there are no genuine factual disputes and “a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue.”  The court found these standards to be satisfied.

The court primarily addressed the evidence presented in support of the jury’s finding that the defendants’ ostinato was “substantially similar” to that of plaintiffs.  As we discussed in connection with the “Stairway to Heaven” case [here], courts in the Ninth Circuit apply a two-step test to determine whether two works are substantially similar.  Part one, the “extrinsic” test, sets forth a question of law for the court (often aided by experts) whether protected elements of the plaintiff’s work are objectively similar to corresponding elements of the defendants’ work.  Part two, the “intrinsic” test, asks the jury to decide whether an ordinary reasonable person would find that the “total concept and feel” of the works was substantially similar.  The court spent most of its analysis on part one.

As a threshold matter, the court explained that, where the work at issue consists of a combination of unprotected elements, an enforceable right in that combination only exists if the “elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.”  This nuance is particularly relevant in music cases; citing “Stairway to Heaven,” the court explained that where “there is a narrow range of available creative choices” (such as notes in a scale or pleasing combinations of sounds) copyright protection is “thin” and to infringe, the allegedly infringing copy must be virtually identical.  The difference between this case and the “Blurred Lines” case, according to the court, is that the “thin copyright” doctrine typically will not apply to entire musical works (as opposed to constituent elements).  Citing its obligation to balance the First Amendment against the Copyright Act, the court also noted that the inherent nature of music as an art form was to borrow and build upon what had previously been created given that “many if not most of the elements that appear in popular music are not individually protectable.” 

With this backdrop, the court first analyzed the constituent elements of plaintiffs’ ostinato, including the key, phrase length, pitch sequence, rhythm “shape,” and musical texture.  Finding these elements to be individually common or even ubiquitous in pop music, the court held that “the uncontroverted evidence points to only one conclusion: that none of these individual elements are independently protectable.”  This conclusion was supported by testimony from the plaintiff’s own expert musicologist.

The same conclusion was apparent when analyzing the elements taken together as combined: their selection, arrangement, and coordination was not original enough to warrant protection as an original work of authorship.  The court held that the ostinato in “Joyful Noise” did not contain enough musical elements arranged in a “sufficiently original manner to warrant copyright protection.”  While it is possible that a musical phrase as short as eight notes could be protected, the court noted the dearth of on-point cases where “an otherwise unprotected musical phrase, isolated from the rest of the musical composition, in fact warranted copyright protection.”  The court explained that it was undisputed in light of the evidence at trial that “the signature elements of the 8-note ostinato in ‘Joyful Noise’” including its pitch sequence and rhythm, were “not a particularly unique or rare combination,” and that prior works composed by the parties and many others contained similar elements.  The ostinato’s musical timbre, its “pingy synthesizer sound,”’ and its use of minor key did not tip the scales.

The court accordingly held that the ostinato did not constitute protectable expression and therefore the extrinsic test (step one) failed, entitling the defendants to judgment as a matter of law notwithstanding the jury verdict to the contrary.  Although arguably not strictly necessary in light of this threshold ruling, the court went on to explain that, even if the plaintiffs’ ostinato was protectable, the defendants’ ostinato was not substantially similar.  Owing to the “thin” nature of the protection that would have been afforded to the plaintiff’s composition had it been deemed copyrightable, the degree of similarity would have had to have been “virtually identical” for a finding of infringement, and the evidence did not support such a conclusion given “a number of undisputed objective distinctions,” as corroborated by plaintiffs’ own musicologist.

Interestingly, despite the court’s conclusion that defendants were entitled to judgment as a matter of law on the extrinsic test (arguably obviating the need to address the intrinsic test), the court proceeded to opine on the jury’s finding of intrinsic similarity.  Because the intrinsic test is fact-sensitive and a question solely for the jury, the court held that, despite the court’s reversal on extrinsic liability, a reasonable jury could have found that the “total concept and feel” of the two ostinatos were “intrinsically” similar.  This of course did not change the outcome of the decision.

The court also found that there had been enough evidence to support the jury’s conclusion that the plaintiffs had accessed the defendants’ song.  Citing “Stairway to Heaven,” the court noted that reasonable minds could find that defendants “had a reasonable opportunity to [hear] plaintiff’s work” particularly in light of the current ubiquity of musical content and ready access to digital media online.  In such circumstances access could be established “by a trivial showing that the work is available on demand,” and “Joyful Noise” had garnered more than 6 million plays online, hundreds of concert performances, and a Grammy nomination.  But again, this did not change the result.

The “Dark Horse” case follows in the footsteps of “Stairway to Heaven” in establishing stricter boundaries around what musical elements are protectable but indirectly diminishing the importance of access in light of digital media and technological advancements.  As the decision is applicable to song elements like ostinatos, and arguably by analogy guitar riffs or solos, basslines, synthesizer accompaniments and the like – as opposed to entire compositions – it will likely cabin future claims concerning these discrete musical structures and reduce the likelihood that a songwriter or performer will be hit with a multi-million-dollar jury verdict for creating a single song element.  Decisions like “Dark Horse” and “Stairway to Heaven” will likely provide some comfort to musicians in being able to rely on those who came before them in writing their parts, but at the same time the decisions leave undisturbed the lessons from “Blurred Lines” when it comes to similarity of musical compositions in the aggregate whether one agrees with the outcome of that case or not.

Marc Hershberg was cited in the Fordham IPM&E Law Journal

“Anything You Can Use, I Can Use Better: Examining the Contours of Fair Use as an Affirmative Defense for Theatre Artists, Creators, and Producers,” by Benjamin Reiser, Fordham Intellectual Property Media & Entertainment Law Journal, Vol. XXX, No. 3 (2020).  Find the article here.

Ninth Circuit Rules in Favor of Led Zeppelin, Laying A New Foundation for Music Cases to Follow

By Phillip E. Jackman

When the full Ninth Circuit Court of Appeals on en banc rehearing issued its opinion in the appeal of the widely reported Led Zeppelin Stairway to Heaven case on March 9, 2020, the court took a substantial step in providing guidance for future copyright infringement claims based on allegations of “substantial similarity” between songs. 

The music industry feared a potential seismic shift in how music could be created without exposure to copyright liability after a panel of Ninth Circuit judges voted 2-1 to uphold a jury verdict in favor of the heirs of Marvin Gaye on their claim against Robin Thicke and Pharrell Williams in the Blurred Lines case. In her strong dissent, Circuit Judge Jacqueline Nguyen said the decision let the Gayes “accomplish what no one has before: copyright a musical style,” and warned that the decision expanded the potential for further copyright litigation.

Around the same that the Blurred Lines trial commenced, another seminal case was filed that addressed essentially the same issue – whether basic uncopyrightable elements of song writing, if selected and arranged in a certain manner, could then be deemed copyrightable.

In May 2014, Michael Skidmore, serving as the trustee for the estate of Randy California, late front man for the band Spirit, filed a lawsuit against Led Zeppelin, accusing the band of copying the famous intro to Stairway to Heaven from Spirit’s 1967 instrumental ballad called Taurus.  Skidmore claimed the portion of Taurus protected by copyright is the song’s 8-measure descending chromatic scale intro, which is similar to the descending chromatic chord progression in Stairway to Heaven.  In Los Angeles federal district court, a jury ultimately sided with Led Zeppelin because Skidmore did not satisfy the “substantial similarity” test, finding that although Zeppelin had access to “Taurus,” the elements of the song that were shared by Stairway to Heaven were not original enough to be protected under copyright law.

Skidmore appealed the verdict to the Ninth Circuit, arguing, among other things,that the district court erred in its decisions to apply the Copyright Act of 1909 to Taurus and not allow Skidmore to play for the jury the actual recorded version of Taurus to buttress his argument of substantial similarity between the songs.  The district court had only permitted Skidmore to put into evidence the “bare-bones” sheet music of Taurus deposited at the U.S. Copyright Office to demonstrate that the intro to Stairway was “substantially similar” to Taurus because at the time of its creation and under the 1909 law, sound recordings were not protected by copyright, only musical compositions.  In September 2018, a three-judge Ninth Circuit panel sided with Skidmore, in part, and overturned the jury verdict due to its finding that the jury instructions failed to inform the jurors that unprotectable elements of a song could be protected by copyright law when “selected” or “arranged” in creative ways.

However, before the case went back to district court, the Ninth Circuit agreed to vacate the panel ruling and rehear the case en banc, indicating that the case presented many open questions for the future of music law.  In its decision, the full Ninth Circuit analyzed the two factors required by Skidmore to prove copyright infringement: (1) he owned a valid copyright in Taurus; and (2) that Led Zeppelin copied protected aspects of the work.

In consideration of the first factor, the court first had to decide whether copyright protection of Taurus would fall under the Copyright Act of 1909, or the 1976 revision and limited protection afforded sound recordings created after February 15, 1972.  This issue proved to be pivotal in the case because it was only with the passage of the 1971 amendment, followed by the Copyright Act of 1976, that Congress opened the door for artists (or labels) to obtain copyright protection over master sound recordings of musical compositions.  Up until this time, artists like Spirit could only submit sheet music for copyright registration under the 1909 Act.  The Ninth Circuit upheld the district court’s holding by concluding “that the 1909 Act controls and the deposit copy [registered in 1967] defines the scope of the Taurus copyright.”  With this finding the Ninth Circuit closed the door on Skidmore’s argument that he should be able to play the recorded version of Taurus for the jury, since Skidmore did not own a valid copyright in the sound recording.

Armed only with copyright protection in a single page of sheet music, the Ninth Circuit then turned to the facts applicable to whether Skidmore had put forth sufficient evidence to satisfy the test that Stairway to Heaven was similar enough to Stairway to Heaven for unlawful copying to have occurred.  The Ninth Circuit uses a two-part test to determine whether works are substantially similar.  The first part compares the objective similarities of specific expressive elements in the works at issue, referred to as the “extrinsic test” and typically involves expert witnesses. The second part, known as the “intrinsic test,” looks at similarity of expression from the standpoint of the ordinary reasonable observer, with no expert assistance.

At trial, the jury had found in favor of Led Zeppelin on the question of whether “original elements of the musical composition Taurus are extrinsically similar to Stairway to Heaven,” and as a result did not move on the intrinsic test.  The Ninth Circuit upheld the district court’s approach stating that “because the extrinsic test was not satisfied, the jury did not [need to] reach the intrinsic test.”

The final key issue in this case is that the full Ninth Circuit abrogated the “inverse ratio rule,” which had permitted a lower standard of proof to satisfy the “substantial similarity” test if a plaintiff could demonstrate that the alleged infringer had a high degree of access to the protected work.  During trial, neither party disputed the fact that, during the late-1960s/early-1970s, Spirit and Led Zeppelin played at various venues together on at least three occasions, but there is no evidence the groups never toured together.  One of Skidmore’s key arguments was that the district court erred by not submitting the “inverse ratio rule” to the jury.  The Ninth Circuit stated that “the Second, Fifth, Seventh, and Eleventh Circuits have rejected the rule”.  And, in agreement with the district court, the Ninth Circuit further stated that “[b]ecause the inverse ratio rule, which is not part of the copyright statue, defies logic, and creates uncertainty for the courts and the parties, we take this opportunity to abrogate the rule in the Ninth Circuit and overrule our prior cases to the contrary.”

The court’s elimination of the reverse-ratio rule is a significant development and substantial clarification of the law in California that will likely be seen as a boon to creators of modern music.  Access to music is now more ubiquitous than ever, so it stands to reason that plaintiffs would inevitably be able to seize on the lesser standard of similarity in cases involving modern music. Of course, for those cases arising out of “classic” works like Stairway to Heaven, the abrogation of the reverse-ratio rule, may be seen as one less arrow in the copyright protection quiver.  How creators synthesize this ruling, whether in defense or pursuit of copyright claims, remains to be seen, but the impact will likely be a significant one.

The case is Michael Skidmore v. Led Zeppelin, et al, case number 16-56057, in the U.S. Court of Appeals for the Ninth Circuit.

Judge in Amateur Photojournalism Case Rejects Lack of Originality Argument

By Sara Gates

In a decision that will likely be seen as a victory for photojournalism, a judge in the Eastern District of New York recently rejected the legal argument that an iPhone photograph, taken by a passerby who was in the right place at the right time, lacked originality.  The decision represents a turn away from what the photography community would undoubtedly perceive as a slippery slope, i.e., if a court embraced a broad view that photographs captured by amateur photographers on their iPhones are not entitled to copyright protection.

The case pitted Alex Cruz, a passerby who captured a photograph of police apprehending a terrorist attack suspect in the Tribeca neighborhood of New York City in October 2017, against Cox Media Group, which holds a large portfolio of TV and radio stations, newspapers, and websites.  After the photograph was posted to Instagram, Cruz licensed the image to media companies including CNN and NBC (https://www.nbcnews.com/slideshow/terrorist-truck-attack-shocks-new-york-city-n816236).  Cox, without seeking permission, published the photograph in a gallery on one of its websites, accompanying an article about the suspect, as well as on its social media channel.  Facing a copyright infringement claim, Cox later argued that Cruz’s photograph lacked sufficient originality to entitle it to copyright protection and support a copyright infringement claim.

Specifically, Cox alleged that Cruz did not make any creative choices in capturing the photograph, arguing that the photograph therefore did not possess a “modicum of creativity,” citing the oft-used language from Feist Publications, Inc., v. Rural Telephone Service Co., 499 U.S. 340 (1991).  Judge Garaufis did not agree with this argument, finding that Cruz’s photograph reflected several creative choices, including timing (i.e., being in the right place at the right time) and his decision to take the photograph when he did (when law enforcement was apprehending the suspect, who was lying on the ground).

The judge applied the law of the Second Circuit, citing precedents such as Mannion v. Coors Brewing Co., 377 F. Supp. 2d 444 (S.D.N.Y. 2005), in which the Southern District of New York held that a photograph may be original in three respects: (1) rendition, (2) timing, and (3) creation of the subject, and Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992), in which the Second Circuit recognized that “original” elements of a photograph may include “posing the subjects, lighting, angle, selection of film and camera, evoking the desired express, and almost any other variant involved.”

Though there may be instances in which a photograph is a slavish copy (such as in cases involving a photograph of a photograph), or a photograph serves a purely utilitarian purpose (such as showing what a standard Chinese menu item dish contains), where a photographer (whether amateur or professional) exercises any creative choices to capture the photograph, this decision supports the principle that photographers should be deprived of copyright protection.  Judge Garaufis recognized at least two creative choices relating to the timing of the photograph, but there were likely others, such as the angle and set-up of the shot.  With technological advances, the abilities of iPhone (or other mobile device) users to capture creative photographs with their devices, rather than a traditional camera, are greatly increased.  Aspects like depth of field, lighting, and frame can all be adjusted with a click of a button.  In this instance, notwithstanding whether Cruz used additional iPhone features to capture the photograph, the court found that he still exercised sufficient creative choices in deciding when, where, and from what angle to take the photograph to capture an inherently newsworthy event. Indeed, some of the most memorable moments of photojournalism are based on the photographer being at the right place at the time and knowing how to frame a compelling image (https://www.digitalphotomentor.com/20-most-famous-photographs/). 

Lack of originality is a difficult defense particularly in photo cases, as most photographs will be protected by copyright law, even if that protection is thin. Though judges should not place themselves in the situation of being arbiters of what is and is not art, oftentimes they are faced with the question of whether a work contains sufficient creative authorship to qualify for copyright protection, one of the prima facie elements of a copyright infringement claim.  This case represented a reasoned application of well-settled law despite an unconventional defense that may have prevailed under different circumstances and as applied to different forms of art.

This case is Alex Cruz v. Cox Media Group, LLC, Case No. 2:18-cv-01041-NGG-AKT (E.D.N.Y. March 13, 2020).

CDAS Attorneys Author “Copyright 2020: Law & Practice” Chapter for Chambers & Partners

By Nancy Wolff, Scott Sholder, Sara Gates and Elizabeth Altman

Nancy Wolff, Scott Sholder, Sara Gates and Elizabeth Altman collaborated on this comprehensive discussion of current copyright law: what copyright is, how it works, what can/cannot be copyrighted, how it may be managed, what are the exceptions, and how to preserve copyright protection. Also addressed is copyright infringement, litigation and enforcement. Read the chapter here.

CDAS is a founding legal adviser to the Copyright Alliance and its attorneys hold leadership positions within the Media Law Resource Center (MLRC) and ABA IP Section. CDAS lawyers are officers and trustees of the Copyright Society of the USA, have been asked to speak on copyright-related issues throughout the world, and engage in advocacy work on behalf of associations in furtherance of copyright reform. CDAS lawyers have appeared in leading copyright cases, and also provide copyright clearance review for entertainment and media clients and trademark portfolio management.

CDAS LLP Partner Scott J. Sholder Recognized in Benchmark Litigation’s 2019 “40 and Under Hot List”

Cowan, DeBaets, Abrahams & Sheppard LLP is pleased to announce that Scott J. Sholder has been recognized in Benchmark Litigation’s 2019 “40 and Under Hot List.”

Benchmark Litigation’s 2019 “40 and Under Hot List” includes practitioners, all aged 40 or younger, that have been deemed the most promising emerging talent in their respective litigation communities in the U.S. by peers and clients. To view the complete esteemed list of litigation attorneys, visit Benchmark Litigation.

CDAS Partner Eleanor M. Lackman Selected to The National Law Journal’s Elite Boutique Trailblazers 2018 List

Eleanor M. Lackman

 

CDAS LLP is pleased to announce that partner Eleanor M. Lackman has been selected to The National Law Journal’s “2018 Elite Boutique Trailblazers” list. The list recognizes outstanding attorneys and firms nationwide who have made a remarkable difference in their area of specialized law. Only 29 attorneys from 25 firms were selected for inclusion in 2018 list.

Click here to review the complete list.

 

 

The Good, the Bad, and the JPEG Staying Safe in the Constant Showdown over Digital Content Use Online

The ABA Section of Intellectual Property Law’s magazine Landslide published Scott J. Sholder and Lindsay R. Edelstein’s article “The Good, the Bad, and the JPEG Staying Safe in the Constant Showdown over Digital Content Use Online.”

The article is a how-to guide to prevent and defend against copyright troll claims. View Article

 

 

Scott J. Sholder Named a 2018 Law360 Rising Star for Media and Entertainment

Cowan DeBaets, Abrahams and Sheppard LLP attorney Scott J. Sholder has been named a Law360 Rising Star. A Partner at the firm, Mr. Sholder is among one of 168 attorneys included in the full list and one of only 4 attorneys recognized for their dedicated work in the practice area of Media and Entertainment.

Law360’s “Rising Stars” recognition is reserved for top legal talent under 40 years of age and “whose legal accomplishments transcend their age.”  After carefully reviewing more than 1,200 submissions for the Rising Star distinction, Law360’s team of editors arrived at the list of attorneys under 40 hailing from 80 law firms and spanning 36 practice areas.

To review the complete list, click here.  Profiles of the winners will begin running this week on Law360.

 

 

Lundin v. Discovery Communications: Even in Reality TV Context, Parties Can’t Contract Away Liability Based on Intentional Harms

The U.S. District Court for the District of Arizona in Lundin v. Discovery Communications ruled that a defamation suit brought by a reality television star against the network and producers of a reality show was not barred simply by virtue of an exculpatory “Assumption of Risk” provision containing a waiver of all claims.  Significantly, the ruling stands for the proposition that there is no special exception for reality television or documentary programming which would bar intentional tort lawsuits.  This decision could have potentially significant implications in the reality television sector, as many reality stars may now have recourse for the oft-cited “bad edit.”

The agreement at issue was entered into by Cody Lundin – an internationally recognized professional survival instructor, best-selling author, and survival and sustainability consultant for national and international news outlets – in connection with his appearance on Discovery Channel’s “Dual Survival.”  Lundin served as the show’s on-camera host, wilderness survival expert, and consultant.  The show features a pair of survival experts in predetermined scenarios set in challenging environments.  For instance, Lundin and his co-hosts have been marooned on an island, lost in a jungle, and stranded in the desert, all with minimal survival gear. Continue reading

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