General Copyright Basics
There are five exclusive rights in copyright that are usually at issue in a copyright infringement action: reproduction, preparing derivative works, distribution, public performance, and public display. In general, if a plaintiff can show that the defendant had access to the plaintiff’s work and that there is a substantial similarity between the infringed and infringing works, a presumption of copying arises, shifting the burden to the defendant to rebut the presumption or to show that the alleged infringing work was independently created.
Similar to other areas of copyright litigation, the Second Circuit and the Ninth Circuit dominate both music copyright litigation and issues involving “substantial similarity,” more than doubling the next closest circuit in the number of opinions and quadrupling most others.
The Second Circuit still applies the “ordinary observer” test, but there is also usually an analysis of the technical similarities which could involve expert testimony, even at the motion to dismiss stage. This usually involves an analysis of: (1) whether the protected elements are sufficiently “original”; (2) whether there is existing prior art that shows a lack of originality; and (3) a comparison between the songs at issue.
Generally, the first prong of substantial similarity is an analysis of actual copying or “factual copying.” This is usually proven through circumstantial evidence such as access or the similarities between the works. The second prong generally involves a determination of whether the defendant has taken so much protectable material—sometimes called “actionable copying” or “improper appropriation”—as to constitute copyright infringement.
The “Blurred Lines” Case
One of the most controversial copyright cases in recent years was the “Blurred Lines” case involving members of Marvin Gaye’s family (who had inherited the copyrights in the musical compositions of “Got to Give It Up”). After hearing the hit song “Blurred Lines” written and recorded by Pharrell Williams and Robin Thicke, the Gaye family made an infringement demand, but negotiations failed. Williams and Thicke filed a declaratory judgment action in California federal court seeking a declaration of “non-infringement.” The Gayes counterclaimed, alleging copyright infringement, and added Clifford Harris, Jr., the rapper known as T.I., as a third-party defendant, along with Interscope Records, who owned the sound recording.
After a jury trial, the jury found that Williams and Thicke had infringed the copyright, but Harris and Interscope were not liable. The jury awarded $7.3 million in actual damages and the infringer’s profits. Post-trial, the District Court overturned the jury’s verdict in favor of Harris and Interscope as inconsistent with the finding of liability and apportioned costs between the parties.
Ultimately, the District Court awarded the Gayes $3,188,527.50 in actual damages, $1,768,191.88 in infringer’s profits against Thicke, $347,630.96 in infringer’s profits against Williams (for a total of approximately $5.3 million), and a continuing 50% of future songwriting and publishing revenues. The District Court denied an award of attorneys’ fees. The Gayes appealed the order on attorneys’ fees.
The Thicke/Williams parties appealed the denial of their motions for summary judgment and a new trial, the damages award, and the overturning of the verdict in favor of Harris. Importantly, the Thicke/Williams parties failed to seek a judgment as a matter of law after the evidence was entered in the case and before jury deliberations.[1] The Ninth Circuit ultimately ruled they waived their right to challenge those issues on appeal.[2] Thicke and Williams focused their appeal by arguing that the District Court had erred in its application of the extrinsic test for substantial similarity.[3]
The extrinsic test is a two-part test used in the Ninth Circuit that focuses on the objective similarities of the works’ ideas and protectable expressions. This is usually done through expert testimony to identify whether certain portions of the music are unique enough to be entitled to protection. The second part of the test considers “intrinsic” similarity in which the factfinder undertakes a purely subjective evaluation of the total content and feel of the two works. This can also be part of the ordinary observer test in which analysis by an average lay witness would compare the two works.
Interestingly, the District Court had only allowed in evidence the deposit copy or sheet music for “Got to Give it Up.”[4] However, the Gaye family was able to get in bits and pieces of the sound recording through expert testimony. The Ninth Circuit rejected this appeal on procedural grounds finding that a party may not appeal an order denying summary judgment after a full trial on the merits unless the issue is one of pure law.[5] On appeal, the Ninth Circuit refused to disturb or second guess the jury’s fact-finding. The Ninth Circuit found there were no errors with respect to allowing expert testimony and that the question of weighing expert evidence was left to the jury.[6] The Ninth Circuit did find an error with the reversal of the jury’s finding of no liability against Harris and Interscope. The appeal featured 212 amicus songwriters and many others on both sides.
In a strong dissent, U.S. Circuit Judge Jacqueline Nguyen argued that the majority had allowed the Gayes “to accomplish what no one has before: copyright a musical style.”[7] According to the dissent, the two songs were not objectively similar, and the similarities presented by the Gayes involved unprotectable elements, so the lack of substantial similarity meant that judgment should have been given as a matter of law. The dissent contended that, by refusing to engage in a de novo comparison of the works, the majority had established “a dangerous precedent that strikes a devastating blow to future musicians and composers everywhere.”[8]
Critics of the “Blurred Lines” case say that the verdict has implications that will thwart creativity. These critics believe that the two songs did not share the same pitches, or rhythms, and were not set to the same chords. They did not share the same melody or melodic phrases. The two songs didn’t even have a sequence of two chords played in the same order and did not share the same song structure or any lyrics.
The infringement was based on the copying of a “feel” or “groove” of the two works and amounts to infringement of an idea, that all musicians are “influenced” by other musicians, which is not copyrightable. They note there are a limited number of notes and chords available, so there are automatically going to be similarities in numerous songs, but that doesn’t make it an infringement.
Skidmore v. Led Zeppelin
Randy Wolfe (a.k.a. Randy California) was a guitarist for the rock band Spirit in the 1960s. Wolfe wrote the instrumental song “Taurus” on the group’s first album in 1967. Taurus is a two-and-a-half-minute instrumental guitar track on Spirit’s first album. A copyright was registered in the unpublished composition with a one-page deposit of the sheet music with the U.S. Copyright Office.
In 2014 Michael Skidmore, on behalf of the estate of Wolfe/California, claimed Led Zeppelin copied “Taurus” in “Stairway to Heaven.” In 2016, Zeppelin prevailed in district court, with the jury finding the two songs were not substantially similar. Skidmore appealed, claiming the court limited the jury’s determination by not allowing them to hear the two songs and only allowing the sheet music into evidence. The court had granted Led Zeppelin’s Motion to Exclude the sound recording for Taurus and all expert testimony regarding the sound recording.
In 2018, the Ninth Circuit ruled that the trial court should have allowed the jury to hear the songs and ordered a new appeal en banc. The en banc decision was issued in March 2020.
A. The Inverse Ratio Rule
The inverse ratio rule was an important issue in the Skidmore v. Led Zeppelin case. The rule allowed courts to impose a lower showing of substantial similarity when a high degree of access was shown. In practice, the Ninth Circuit has wavered between using the rule as binding precedent and questioning the rule. Most other Circuits have long rejected the rule.
In Skidmore, the court stated the rule “defies logic, and creates uncertainty for the courts and the parties”[9] and further stated, “Although we are cautious in overruling precedent - as we should be - the constellation of problems and inconsistencies in the application of the inverse ratio rule prompts us to abrogate the rule. Access does not obviate the requirement that the plaintiff must demonstrate that the defendant actually copied the work.” [10] The court further went on to note that the current digital connectivity in the world dilutes the concept of access. However, it should be noted that the access seemed proven in the Skidmore case. Led Zeppelin performed at the same location as Spirit four times between 1968 and 1970 and covered Spirit's song “Fresh Garbage.”[11]
B. The Deposit Copy Defines the Scope of Copyright Protection
The Spirit song was copyrighted in 1967, prior to the copyright reform of the Copyright Act of 1976. Therefore, the Copyright Act of 1909 applied rather than the Copyright Act of 1976. Copyright law applied prior to the reform was under the Copyright Act of 1909, which extended only to the sheet music and not sound recordings. Sound recordings were first protected under US copyright law in 1972, for recordings made after Feb. 15, 1972.
The 1976 Copyright Act significantly altered the copyright standards, stating that public distribution of a sound recording qualifies as a published musical composition. In other words, instead of sheet music, composers might submit a recording as the deposit copy for a musical work. The problem, in this case, was that this legislation did not apply to compositions published before 1978, i.e., the effective date of the Act.
The language of the 1909 Act makes it clear that copyright protection for an unpublished work was obtained “by the deposit, with claim of copyright, of one complete copy of such work” for musical compositions. The court concluded that the dual requirement of applicants having to submit a deposit copy of their work and the deposit having to be a “complete copy” underscored the importance of the deposit itself, thus establishing the deposit as the metes and bounds of the copyright. This was the basis for concluding it was proper to not allow the songs to be played for the jury. However, it’s worth noting that the fact that deposit copies were limited to sheet music at the time, significantly limits the scope of protection.
Sheet music for compositions tends to be scant in detail for various reasons including that some composers don’t read sheet music or the high cost of transcription. This results in deposit copies for compositions, which may include only lyrics and essential elements of the song while leaving out musical components, or as the court referred to them, “further embellishments” that make for a musically richer sound as you would hear in a sound recording.
According to the Ninth Circuit, since the deposit copy “defines the four corners of the ‘Taurus’ copyright,” any of the further embellishments one would hear in a recording are immaterial and the district court properly denied Skidmore’s request to play the sound recording of “Taurus” in front of the jury or admit it into evidence.[12]
Ed Sheeran – “Let’s Get It On” Case
On July 11, 2017, the family of one of the writers of “Let’s Get It On,” filed a lawsuit in the Southern District of New York against Ed Sheeran, Atlantic Records, Sony/ATV Music Publishing, and Warner Music Group. The Skidmore case has been cited in numerous cases everywhere, including in Griffin v. Sheeran, a case that was pending in New York revolving around a claim that Ed Sheeran’s song “Thinking Out Loud” infringes upon Marvin Gaye and Ed Townsend’s song “Let’s Get It On.”
This case started trial in April 2023. The district court (citing Skidmore) held that the scope of protection for “Let’s Get it On” is “limited by the deposit copy” and “does not include other embellishments [on Gaye’s sound recording] ... because they have not undergone the copyright process.” In its Order denying Defendants’ Motion for Summary Judgment, the Court declined to issue any opinion about whether the Second Circuit would concur with the Ninth Circuit’s Skidmore decision in finding that only the deposit copy or sheet music defines the scope of copyright protection. Plaintiffs argued that the composition that is embodied in the sound recording, which is a mechanical reproduction, is also protectable.
In the Sheeran case, the Defendants argued that a simple chord progression and a harmonic rhythm are not subject to copyright protection. The Defendants cited numerous instances of “prior art” which contained similar chord progressions (13 other similar songs that existed prior to “Let’s Get It On”). They claimed the chord progression is taught in elementary guitar teaching method books. They further claimed the Plaintiff could not claim monopoly over the use of such common musical elements.
In its order denying summary judgment, the court cited the Skidmore case.[13] The court held that analyzing just the sheet music or analyzing the actual sound recordings was not important for purposes of summary judgment, since under either view, there were enough similarities to survive summary judgment. The court stated “A jury might side with either view” and the question of infringement should be determined by trial rather than summarily.[14]
However, when addressing the other issue raised by Skidmore, the court sided with the Defendants. Defendants argued that two of the key elements (the drum pattern and bass guitar line) do not appear in the deposit copy. Plaintiffs countered this argument by stating that the recorded version is the true embodiment of the song. However, Judge Stanton sided with Defendants on the issue of whether the sound recordings can come into evidence during the trial, ruling that it could not. Judge Stanton stated the deposit copy was the sole definition of “Let’s Get It On.” He further stated the famous sound recording (by Marvin Gaye) may confuse the jury into thinking it represents what is protected by copyright. Judge Stanton concluded that the sound recording had additional elements that did not appear in the deposit copy. Ultimately, after jury trial, the jury found in favor of Defendants, finding there was no copyright infringement, Sheeran did not copy the compositional elements or melody from “Let’s Get It On,” and that Sheeran independently created his song.
Katy Perry Dark Horse Copyright Case
The case was originally filed in 2014 by a Christian hip-hop artist known as Flame (Marcus Gray). The complaint alleged Katy Perry’s song copied a repeating instrumental figure, called an “ostinato.” The “Dark Horse” ostinato consists of a pattern of notes, represented as 3-3-3-3-2-2-1-5, while the “Joyful Noise” ostinato consists of two slightly different patterns, represented as 3-3-3-3-2-2-2-1 and 3-3-3-3-2-2-2-6. Both ostinatos also have a uniform rhythm, with each note of equal duration in time. (In case it is of interest to music lovers, the Ninth Circuit’s opinion has a more detailed than usual breakdown of musical compositions). A jury found the defendants liable and awarded $2.8 million in damages.
However, after the trial, U.S. District Judge Christina A. Snyder vacated the judgment and reasoned that the elements comprising the ostinatos are not, either individually or as a combination, copyrightable original expressions. Plaintiffs appealed. A three-judge panel from the Ninth Circuit affirmed the district court’s decision. The Ninth Circuit’s opinion focused on whether the “Joyful Noise” ostinato qualifies as an “original expression” – a statutory requirement for protection under U.S. Copyright law.[15]
Citing longstanding principles of copyright law, the Ninth Circuit noted there is a “famously low bar for originality.”[16] However, even this low threshold for copyrightability still “does require at least a modicum of creativity.”[17] The appellate court further stated that copyright protection does not extend to “common or trite musical elements, or commonplace elements that are firmly rooted in the genre’s tradition.”[18] Ultimately, the Ninth Circuit concluded that the two songs’ ostinatos, even if similar, result only from the use of commonplace, unoriginal principals, and thus could not form the basis of a copyright infringement claim. The Ninth Circuit held that the “Joyful Noise” ostinato was a “conventional arrangement of musical building blocks,” amounting to nothing more than an unoriginal “two-note snippet of a descending minor scale.”[19] And, given the limited number of expressive choices available to an eight-note sequence, the Ninth Circuit found that allowing such a copyright would amount to an “improper monopoly over two-note pitch sequences.”[20]
About the Author: Joshua D. Wilson is a Partner in the Firm’s Intellectual Property practice group, with a particular emphasis on the sports and entertainment industries. He has represented athletes, artists, songwriters, managers, agents, actors, bloggers, podcasters, influencers, producers, publishers, and record labels in both transactional and litigation matters. He has been involved in some of the most high-profile and complex entertainment and intellectual property matters in the country with a focus on contract disputes, royalty disputes, management agreements, publishing issues, and copyright and trademark infringement matters, through trial and arbitration.
[1] See Williams v. Gaye, 895 F.3d 1106, 1131 (9th Cir. 2018).
[2] Id.
[3] Id. at 1121-22.
[4] Id. at 1116.
[5] Id. at 1122.
[6] Id. at 1126.
[7] Id. at 1138-1152.
[8] Id. at 1138.
[9] Skidmore v. Led Zeppelin, 952 F.3d 1051, 1066 (9th Cir. 2020).
[10] Id. at 1069.
[11] Id. at 1057.
[12] Id. at 1063-64.
[13] Griffin v. Sheeran, 351 F.Supp.3d 492, 496 (S.D.N.Y. 2019).
[14] Id. at 500-01.
[15] Gray v. Perry, 2020 WL 1275221, at *5-7 (C.D. Cal. March 16, 2020).
[16] Gray v. Hudson, 28 F.4th 87, 97 (9th Cir. 2022).
[17] Id.
[18] Id.
[19] Id. at 101-02.
[20] Id. at 101