The opinion and dissent filed March 21, 2018, and reported at 885 F.3d 1150, are hereby amended. The amended opinion and dissent will be filed concurrently with this order.
Judges M. Smith and Murguia voted to deny the petition for rehearing en banc. Judge Nguyen voted to grant it. The full court has been advised of the petition for rehearing en banc, and no judge requested a vote on whether to rehear the matter en banc. Fed. R. App. P. 35.
The petition for rehearing en banc, filed April 11, 2018, is DENIED.
No further petitions for panel rehearing or rehearing en banc will be entertained in this case.
M. SMITH, Circuit Judge:
After a seven-day trial and two days of deliberation, a jury found that Pharrell Williams, Robin Thicke, and Clifford Harris, Jr.'s song "Blurred Lines," the world's best-selling single in 2013, infringed Frankie Christian Gaye, Nona Marvisa Gaye, and Marvin Gaye III's copyright in Marvin Gaye's 1977 hit song "Got To Give It Up." Three consolidated appeals followed.
Appellants and Cross-Appellees Williams, Thicke, Harris, and More Water from Nazareth Publishing, Inc. (collectively, Thicke Parties) appeal from the district court's judgment. They urge us to reverse the district court's denial of their motion for summary judgment and direct the district court to enter judgment in their favor. In the alternative, they ask us to vacate the judgment and remand the case for a new trial, on grounds of instructional error, improper admission of expert testimony, and lack of evidence supporting the verdict. If a new trial is not ordered, they request that we reverse or vacate the jury's awards of actual damages and infringer's profits, and the district court's imposition of a running royalty. Finally, they seek reversal of the judgment against Harris, challenging the district court's decision to overturn the jury's general verdict finding in Harris's favor.
Appellants and Cross-Appellees Interscope Records, UMG Recordings, Inc., Universal Music Distribution, and Star Trak, LLC (collectively, Interscope Parties) appeal from the district court's judgment. They urge us to reverse the judgment against them, challenging the district
Appellees and Cross-Appellants Frankie Christian Gaye, Nona Marvisa Gaye, and Marvin Gaye III (collectively, Gayes) appeal from the district court's order on attorney's fees and costs. They request that we vacate and remand for reconsideration the district court's denial of attorney's fees, and award them their costs in full. The Gayes also protectively cross-appeal the district court's ruling limiting the scope of the Gayes' compositional copyright to the four corners of the sheet music deposited with the United States Copyright Office. In the event a new trial is ordered, the Gayes urge us to hold that Marvin Gaye's studio recording of "Got To Give It Up," rather than the deposit copy, establishes the scope of the Gayes' copyright under the Copyright Act of 1909.
We have jurisdiction over this appeal pursuant to 28 U.S.C. § 1291. Our law requires that we review this case, which proceeded to a full trial on the merits in the district court, under deferential standards of review. We accordingly decide this case on narrow grounds, and affirm in part and reverse in part.
FACTUAL AND PROCEDURAL BACKGROUND
A. "Got To Give It Up"
In 1976, Marvin Gaye recorded the song "Got To Give It Up" in his studio. "Got To Give It Up" reached number one on Billboard's Hot 100 chart in 1977, and remains popular today.
In 1977, Jobete Music Company, Inc. registered "Got To Give It Up" with the United States Copyright Office and deposited six pages of handwritten sheet music attributing the song's words and music to Marvin Gaye. Marvin Gaye did not write or fluently read sheet music, and did not prepare the deposit copy. Instead, an unidentified transcriber notated the sheet music after Marvin Gaye recorded "Got To Give It Up."
The Gayes inherited the copyrights in Marvin Gaye's musical compositions.
B. "Blurred Lines"
In June 2012, Pharrell Williams and Robin Thicke wrote and recorded "Blurred Lines." Clifford Harris, Jr., known popularly as T.I., separately wrote and recorded a rap verse for "Blurred Lines" that was added to the track seven months later. "Blurred Lines" was the best-selling single in the world in 2013.
Thicke, Williams, and Harris co-own the musical composition copyright in "Blurred Lines." Star Trak and Interscope Records co-own the sound recording of "Blurred Lines." Universal Music Distribution manufactured and distributed "Blurred Lines."
C. The Action
The Gayes made an infringement demand on Williams and Thicke after hearing "Blurred Lines." Negotiations failed, prompting Williams, Thicke, and Harris to file suit for a declaratory judgment of non-infringement on August 15, 2013.
The Gayes counterclaimed against the Thicke Parties, alleging that "Blurred Lines" infringed their copyright in "Got To Give It Up,"
D. The District Court's Denial of Summary Judgment
The district court denied Williams and Thicke's motion for summary judgment on October 30, 2014.
1. The District Court's Interpretation of the Copyright Act of 1909
The district court ruled that the Gayes' compositional copyright, which is governed by the Copyright Act of 1909, did not extend to the commercial sound recording of "Got To Give It Up," and protected only the sheet music deposited with the Copyright Office. The district court accordingly limited its review of the evidence to the deposit copy, and concluded there were genuine issues of material fact.
2. The Evidence
The Thicke Parties relied upon the opinion of musicologist Sandy Wilbur. The Gayes relied upon the opinions of Dr. Ingrid Monson, the Quincy Jones Professor of African American Music at Harvard University, and musicologist Judith Finell. The experts disagreed sharply in their opinions, which they articulated in lengthy reports.
Finell opined that there is a "constellation" of eight similarities between "Got To Give It Up" and "Blurred Lines," consisting of the signature phrase, hooks,
Wilbur opined that there are no substantial similarities between the melodies, rhythms, harmonies, structures, and lyrics of "Blurred Lines" and "Got To Give It Up," and disputed each area of similarity Finell identified. The district court compared Finell's testimony with Wilbur's and, pursuant to the extrinsic test under copyright law, meticulously filtered out elements Wilbur opined were not in the deposit copy, such as the backup vocals, "Theme X," descending bass line, keyboard rhythms, and percussion parts.
The district court also filtered out several unprotectable similarities Dr. Monson identified, including the use of a cowbell, hand percussion, drum set parts, background vocals, and keyboard parts. After filtering out those elements, the district court considered Dr. Monson's analysis of harmonic and melodic similarities between the songs, and noted differences between Wilbur's and Dr. Monson's opinions.
After performing its analytical dissection, as part of the extrinsic test, the district court summarized the remaining areas of dispute in the case. The district court identified disputes regarding the similarity of the songs' signature phrases, hooks, bass lines, keyboard chords, harmonic structures, and vocal melodies. Concluding that genuine issues of material fact existed, the district court denied Williams and Thicke's motion for summary judgment.
The case proceeded to a seven-day trial. The district court ruled before trial that the Gayes could present sound recordings of "Got To Give It Up" edited to capture only elements reflected in the deposit copy. Consequently, the commercial sound recording of "Got To Give It Up" was not played at trial.
Williams and Thicke testified, each acknowledging inspiration from Marvin Gaye and access to "Got To Give It Up."
Finell testified that "Blurred Lines" and "Got To Give It Up" share many similarities,
Dr. Monson played three audio-engineered "mash-ups" she created to show the melodic and harmonic compatibility between "Blurred Lines" and "Got To Give It Up." She testified that the two songs shared structural similarities on a sectional and phrasing level.
Wilbur opined that the two songs are not substantially similar and disputed Finell and Dr. Monson's opinions. Wilbur prepared and played a sound recording containing her rendition of the deposit copy of "Got To Give It Up."
Neither the Thicke Parties nor the Gayes made a motion for judgment as a matter of law pursuant to Federal Rule of Civil Procedure 50(a) before the case was submitted to the jury.
On March 10, 2015, after two days of deliberation, the jury returned mixed general verdicts.
F. The District Court's Order on Post-Trial Motions
The district court ruled on the parties' various post-trial motions in an omnibus order.
The Thicke Parties filed a motion for judgment as a matter of law, a new trial, or remittitur. The district court denied the Thicke Parties' motion for judgment as a matter of law and motion for a new trial, but remitted the award of actual damages and the award of Williams' profits.
The Gayes filed three motions, seeking (1) a declaration that Harris and the Interscope Parties were liable for infringement; (2) injunctive relief or, in the alternative, ongoing royalties; and (3) prejudgment interest. The district court construed the Gayes' motion for declaratory relief as a post-trial motion for judgment as a matter of law, and granted the motion, overturning the jury's general verdicts in favor of Harris and the Interscope Parties. The district court denied the Gayes' request for injunctive relief, but awarded them a running royalty of 50% of future songwriter and publishing revenues from "Blurred Lines." The district court granted in part the Gayes' motion for prejudgment interest.
G. The Judgment and Order on Attorney's Fees and Costs
The district court entered judgment on December 2, 2015. The court awarded the Gayes $3,188,527.50 in actual damages, profits of $1,768,191.88 against Thicke and $357,630.96 against Williams and More
On April 12, 2016, the district court denied the Gayes' motion for attorney's fees and apportioned costs between the parties. The parties timely appealed.
I. Governing Law
We begin by discussing the law applicable to this case.
A. Elements of a Copyright Infringement Claim
To prevail on a copyright infringement claim, a plaintiff must show that (1) he or she owns the copyright in the infringed work, and (2) the defendant copied protected elements of the copyrighted work. Swirsky v. Carey, 376 F.3d 841, 844 (9th Cir. 2004). A copyright plaintiff may prove copying with circumstantial, rather than direct, evidence. Three Boys Music Corp. v. Bolton, 212 F.3d 477, 481 (9th Cir. 2000). "Absent direct evidence of copying, proof of infringement involves fact-based showings that the defendant had `access' to the plaintiff's work and that the two works are `substantially similar.'" Id. (quoting Smith v. Jackson, 84 F.3d 1213, 1218 (9th Cir. 1996)).
We use a two-part test for substantial similarity: an extrinsic test and an intrinsic test. Swirsky, 376 F.3d at 845. For a jury to find substantial similarity, there must be evidence on both the extrinsic and intrinsic tests. Id. (citing Rice v. Fox Broad. Co., 330 F.3d 1170, 1174 (9th Cir. 2003)). A district court applies only the extrinsic test on a motion for summary judgment, as the intrinsic test is reserved exclusively for the trier of fact. Benay v. Warner Bros. Entm't, Inc., 607 F.3d 620, 624 (9th Cir. 2010).
The extrinsic test is objective. Swirsky, 376 F.3d at 845. It "considers whether two works share a similarity of ideas and expression as measured by external, objective criteria." Id. Application of "[t]he extrinsic test requires `analytical dissection of a work and expert testimony.'" Id. (quoting Three Boys Music, 212 F.3d at 485). An analytical dissection, in turn, "requires breaking the works `down into their constituent elements, and comparing those elements for proof of copying as measured by "substantial similarity."'" Id. (quoting Rice v. Fox Broad. Co., 148 F.Supp.2d 1029, 1051 (C.D. Cal. 2001)).
The intrinsic test, on the other hand, is subjective. Three Boys Music, 212 F.3d at 485. It "asks `whether the ordinary, reasonable person would find the total concept and feel of the works to be substantially similar.'" Id. (quoting Pasillas v. McDonald's Corp., 927 F.2d 440, 442 (9th Cir. 1991)).
"Because the requirement is one of substantial similarity to protected elements of the copyrighted work, it is essential to distinguish between the protected and unprotected material in a plaintiff's work."
B. The Standard of Similarity for Musical Compositions
We have distinguished between "broad" and "thin" copyright protection based on the "range of expression" involved. Mattel, Inc. v. MGA Entm't, Inc., 616 F.3d 904, 913-14 (9th Cir. 2010). "If there's a wide range of expression ..., then copyright protection is `broad' and a work will infringe if it's `substantially similar' to the copyrighted work." Id. (citation omitted). On the other hand, "[i]f there's only a narrow range of expression ..., then copyright protection is `thin' and a work must be `virtually identical' to infringe." Id. at 914 (citation omitted). To illustrate, there are a myriad of ways to make an "aliens-attack movie," but "there are only so many ways to paint a red bouncy ball on blank canvas." Id. at 913-14. Whereas the former deserves broad copyright protection, the latter merits only thin copyright protection. See id.
We reject the Thicke Parties' argument that the Gayes' copyright enjoys only thin protection. Musical compositions are not confined to a narrow range of expression.
C. The Copyright Act of 1909
Marvin Gaye composed "Got To Give It Up" before January 1, 1978, the effective date of the Copyright Act of 1976. Accordingly, the Copyright Act of 1909 governs the Gayes' compositional copyright. See Twentieth Century Fox Film Corp. v. Entm't Distrib., 429 F.3d 869, 876 (9th Cir. 2005); Dolman v. Agee, 157 F.3d 708, 712 n.1 (9th Cir. 1998).
While the Copyright Act of 1976 protects "works of authorship" fixed in "sound recordings," 17 U.S.C. § 102, the 1909 Act did not protect sound recordings. It is well settled that "[s]ound recordings and musical compositions are separate works with their own distinct copyrights."
The Gayes cross-appeal the district court's interpretation of the 1909 Act only in the event the case is remanded for a new trial. The parties have staked out mutually exclusive positions. The Gayes assert that Marvin Gaye's studio recording may establish the scope of a compositional copyright, despite the 1909 Act's lack of protection for sound recordings. The Thicke Parties, on the other hand, elevate the deposit copy as the quintessential measure of the scope of copyright protection.
II. The District Court's Order Denying Summary Judgment is Not Reviewable After a Full Trial on the Merits.
The Thicke Parties seek review of the district court's order denying their motion
The order is not reviewable. The Supreme Court has squarely answered the question: "May a party ... appeal an order denying summary judgment after a full trial on the merits? Our answer is no." Ortiz v. Jordan, 562 U.S. 180, 183-84, 131 S.Ct. 884, 178 L.Ed.2d 703 (2011). An order denying summary judgment is "simply a step along the route to final judgment." Id. at 184, 131 S.Ct. 884. "Once the case proceeds to trial, the full record developed in court supersedes the record existing at the time of the summary-judgment motion." Id.
The Thicke Parties argue that we may nonetheless review the district court's denial of summary judgment for legal error. We "generally do `not review a denial of a summary judgment motion after a full trial on the merits.'" Escriba v. Foster Poultry Farms, Inc., 743 F.3d 1236, 1243 (9th Cir. 2014) (quoting Banuelos v. Constr. Laborers' Tr. Funds for S. Cal., 382 F.3d 897, 902 (9th Cir. 2004)). We carved out an exception to this general rule in the past, concluding that we may review "denials of summary judgment motions where the district court made an error of law that, if not made, would have required the district court to grant the motion.'" Id. (quoting Banuelos, 382 F.3d at 902).
Ortiz calls into question the continuing viability of our exception.
We need not decide today whether our exception survives Ortiz unaltered. The Thicke Parties' arguments "hardly present `purely legal' issues capable of resolution `with reference only to undisputed facts.'" Id. The district court's application of the extrinsic test of similarity was a factbound inquiry far afield from decisions resolving "disputes about the substance and clarity of pre-existing law." Id. The district court's ruling bears little resemblance to legal issues we have reviewed pursuant to our exception. See, e.g., Escriba, 743 F.3d at 1243-45 (examining whether "the district court erred as a matter of law by entertaining [defendant's] `legally impossible' theory of the case that [plaintiff] affirmatively declined to take FMLA leave"); Banuelos, 382 F.3d at 903 (examining whether "the district court erred as a matter of law when it concluded it could hear evidence outside the administrative record" in an ERISA case); Pavon v. Swift Transp. Co., 192 F.3d 902, 906 (9th Cir. 1999) (reviewing the district court's ruling on claim preclusion). We accordingly conclude that Ortiz forecloses our review of the district court's denial of summary judgment.
III. The District Court Did Not Abuse its Discretion in Denying a New Trial.
We review the district court's denial of a motion for a new trial for abuse of discretion. Lam v. City of San Jose, 869 F.3d 1077, 1084 (9th Cir. 2017) (citing Molski v. M.J. Cable, Inc., 481 F.3d 724, 728
The Thicke Parties argue that a new trial is warranted on three grounds: (1) Jury Instructions 42 and 43 were erroneous; (2) the district court abused its discretion in admitting portions of Finell and Dr. Monson's testimony; and (3) the verdict is against the clear weight of the evidence. We disagree, and discuss each ground in turn.
A. Instructions 42 and 43 Were Not Erroneous.
We review de novo whether jury instructions state the law accurately, but review a district court's formulation of jury instructions for abuse of discretion. Id. at 1085 (citing Hunter v. County of Sacramento, 652 F.3d 1225, 1232 (9th Cir. 2011)). "In evaluating jury instructions, prejudicial error results when, looking to the instructions as a whole, the substance of the applicable law was [not] fairly and correctly covered." Dang v. Cross, 422 F.3d 800, 805 (9th Cir. 2005) (alteration in original) (quoting Swinton v. Potomac Corp., 270 F.3d 794, 802 (9th Cir. 2001)).
1. Jury Instruction 42
The Thicke Parties argue that Instruction 42 allowed the jury to place undue weight on Williams and Thicke's statements claiming inspiration from "Got To Give It Up" and Marvin Gaye. The district court instructed the jurors:
Because direct evidence is rare, copying is usually circumstantially proved by a combination of access and substantial similarity. See Swirsky, 376 F.3d at 844. As the Thicke Parties acknowledge, access may be "based on a theory of widespread dissemination and subconscious copying." Three Boys Music, 212 F.3d at 483. In short, there is no scienter requirement. See id. at 482-85. Instruction 42 stated as much.
The Thicke Parties argue that Instruction 42 was nonetheless inappropriate, because the issue of access was not at issue. Not so. The Thicke Parties take an unduly narrow view of Instruction 42 in isolation. The instructions as a whole make plain that a circumstantial case of copying requires not just access, but also substantial similarity. Instructions 28 and 41 provide that copying may be proven by demonstrating access plus substantial similarity.
In light of the foregoing, we conclude that the district court did not err in giving Jury Instruction 42.
2. Jury Instruction 43
The Thicke Parties argue that Instruction 43 erroneously instructed the jury to consider unprotectable elements. Specifically, they contend that the district court instructed the jury that it "must consider" elements that they contend are not present in the deposit copy: "Theme X," the descending bass line, and keyboard parts. Instruction 43 states, in pertinent part:
First, the Thicke Parties take the word "must" out of context. Instruction 43's use of the word "must" serves to underline the extrinsic test's requirement that the jury compare the objective elements of the works for substantial similarity.
Second, Finell testified that "Theme X," the descending bass line, and the keyboard parts are reflected in the deposit copy, while Wilbur testified to the contrary. The experts' quarrel over what was in the deposit copy was a factual dispute for the jury to decide. Even if Instruction 43's inclusion of contested elements could have led the jury to believe that the elements were in the deposit copy, and to consider them as protectable elements for purposes of the substantial similarity analysis, we cannot view Instruction 43 in isolation. In light of the jury instructions as a whole, we do not conclude that the district court's listing of elements in Instruction 43 prevented the jury from making a factual determination of what was in the deposit copy.
The instructions on whole make clear that the jury could consider only elements in the deposit copy. Instruction 28 states that the Gayes bear "the burden of proving that the Thicke Parties copied original elements from the Gaye[s'] copyrighted work." Instruction 35, in turn, defines the Gayes' copyrighted work. Instruction 35 informed jurors that at the time the copyright in "Got To Give It Up" was registered, "only written music could be filed by a copyright owner with the Copyright Office as the deposit copy of the copyrighted work." In contrast, "[r]ecordings of musical compositions could not be filed with the Copyright Office at that time." The district court cautioned the jurors to distinguish
Harper House, Inc. v. Thomas Nelson, Inc., 889 F.2d 197 (9th Cir. 1989), is not helpful to the Thicke Parties. In Harper House, we held that the district court erred in failing to give jury instructions that "adequately distinguish[ed] between protectable and unprotectable material." 889 F.2d at 207-08. The copyrighted works at issue in Harper House were organizers, which receive "extremely limited protection" and are "compilations consisting largely of uncopyrightable elements," such as "blank forms, common property, or utilitarian aspects." Id. at 205, 207-08.
Suffice to say, musical compositions are not like organizers, and this case is easily distinguishable. The jury never heard the commercial sound recording. Elements indisputably present only in the sound recording, such as the use of cowbell and party noises, were never played at trial. Had that been the case, the district court would have had to instruct the jury to distinguish between elements in the commercial recording and elements in the deposit copy. Instead, the jury heard sound clips edited to capture elements that the experts testified were in the deposit copy. The question of which expert to believe was properly confided to the jury.
The district court did not err in giving Instruction 43.
B. The District Court Did Not Abuse its Discretion in Admitting Portions of Finell and Dr. Monson's Testimony.
We review the district court's evidentiary rulings for abuse of discretion. Wagner v. County of Maricopa, 747 F.3d 1048, 1052 (9th Cir. 2013). The Thicke Parties contend that the district court abused its discretion in admitting portions of Finell and Dr. Monson's expert testimony, arguing that they based their testimony on unprotectable elements. We disagree.
1. Finell's Testimony
The Thicke Parties object only to three portions of Finell's testimony: her testimony regarding "Theme X," the descending bass line, and the keyboard parts. Finell testified that "Theme X," the descending bass line, and the keyboard rhythms were in the deposit copy.
Finell was cross-examined for four hours. During cross-examination, Finell conceded that the notes of "Theme X" were not written on the sheet music, and she was questioned about her testimony that the notes of "Theme X" were implied in the deposit copy. She also acknowledged that the bass melody she presented at trial differed from that notated in the deposit copy. She was impeached with her deposition testimony, in which she admitted that the rhythm of the keyboard parts in the sound recording of "Got To Give It Up" is not notated in the deposit copy.
Wilbur disputed her testimony, opining that "Theme X," the descending bass line, and the keyboard rhythms are not contained in the deposit copy. The dispute
2. Dr. Monson's Testimony
The Thicke Parties argue that the district court abused its discretion in allowing Dr. Monson to play audio "mashups" superimposing Marvin Gaye's vocals from "Got To Give It Up" onto the accompaniment in "Blurred Lines," and vice versa. They argue that the "mash-ups" contained unprotectable elements, such as the keyboard parts, bass melodies, and Marvin Gaye's vocals.
This argument faces the same hurdle as the Thicke Parties' objection to Finell's testimony. Dr. Monson testified that there were structural similarities between the two songs at a sectional level and at a phrasing level, and used the "mash-ups" to demonstrate the songs' shared harmonic and melodic compatibility. We have permitted similar expert testimony in the past. Cf. Swirsky, 376 F.3d at 845-47 (holding that district court erred in discounting expert's testimony regarding structural similarities between two choruses). Dr. Monson was cross-examined on her opinion, and the jury was free to weigh her testimony as it saw fit.
Our decision in Three Boys Music confirms that the district court acted within its discretion. Three Boys Music was a 1909 Act copyright infringement case in which the jury heard not only a rendition of the deposit copy, see 212 F.3d at 486, but the complete commercial sound recording of the copyrighted song. Although the sufficiency of the deposit copy arose in the context of subject matter jurisdiction in Three Boys Music, our treatment of the issue lends support for our present conclusion. In Three Boys Music, the defendants argued that there were "inaccuracies in the deposit copy." 212 F.3d at 486-87. While the plaintiffs' expert testified that "the song's essential elements" were in the deposit copy, the defendants argued that "the majority of the musical elements that were part of the infringement claim" were not in the deposit copy. Id. at 486. Despite the fact that the jury heard the complete sound recording, which differed from the deposit copy, we still upheld the jury's verdict finding for the plaintiffs.
C. The Verdict Was Not Against the Clear Weight of the Evidence.
The Thicke Parties argue that the verdict is against the clear weight of the evidence, maintaining that there is no extrinsic or intrinsic similarity between the two songs.
We are bound by the "`limited nature of our appellate function' in reviewing the district court's denial of a motion for a new trial." Lam, 869 F.3d at 1084 (quoting Kode, 596 F.3d at 612). So long as "there was some `reasonable basis' for the jury's verdict," we will not reverse the district court's denial of a motion for a new trial. Id. (quoting Molski, 481 F.3d at 729). "[W]here the basis of a Rule 59 ruling is that the verdict is not against the weight of the evidence, the district court's denial of a Rule 59 motion is virtually unassailable." Id. (quoting Kode, 596 F.3d at 612). When that is the case, we reverse "only when there is an absolute absence of evidence to support the jury's verdict." Id. (quoting Kode, 596 F.3d at 612). "It is not the courts' place to substitute our evaluations for those of the jurors." Union Oil Co. of Cal. v. Terrible Herbst, Inc., 331 F.3d 735, 743 (9th Cir. 2003). Of note, we are "reluctant to reverse jury verdicts in music cases" on appeal, "[g]iven the difficulty of proving access and substantial similarity."
The Thicke Parties face significant, if not unsurmountable, hurdles. First, we are generally reluctant to disturb the trier of fact's findings, and have made clear that "[w]e will not second-guess the jury's application of the intrinsic test." Id. at 485. Second, our review is necessarily deferential where, as here, the district court, in denying the Rule 59 motion, concluded that the verdict was not against the clear weight of the evidence. Finell testified that nearly every bar of "Blurred Lines" contains an area of similarity to "Got To Give It Up." Even setting aside the three elements that trouble the Thicke Parties ("Theme X," the bass line, and the keyboard parts), Finell and Dr. Monson testified to multiple other areas of extrinsic similarity, including the songs' signature phrases, hooks, bass melodies, word painting, the placement of the rap and "parlando" sections, and structural similarities on a sectional and phrasing level. Thus, we cannot say that there was an absolute absence of evidence supporting the jury's verdict.
IV. The Awards of Actual Damages and Profits and the District Court's Running Royalty Were Proper.
A. The Award of Damages Was Not Based on Undue Speculation.
We afford "great deference" to a jury's award of damages and will uphold the award "unless it is `clearly not supported by the evidence' or `only based on speculation or guesswork.'" In re First All. Mortg. Co., 471 F.3d 977, 1001 (9th Cir. 2006) (quoting L.A. Mem'l Coliseum Comm'n v. Nat'l Football League, 791 F.2d 1356, 1360 (9th Cir. 1986)). We will uphold an award of hypothetical-license damages "provided the amount is not based on `undue speculation.'" Oracle Corp. v. SAP AG, 765 F.3d 1081, 1088 (9th Cir. 2014) (quoting Polar Bear Prods., Inc. v. Timex Corp., 384 F.3d 700, 709 (9th Cir. 2004)). "The touchstone for hypothetical-license damages is `the range of [the license's] reasonable market value.'" Id. (alteration in original) (quoting Polar Bear Prods., Inc., 384 F.3d at 709)).
Here, the jury awarded the Gayes actual damages in the amount of 50% of the publishing revenues for "Blurred Lines." The Thicke Parties ask us to vacate the award of $3,188,527.50 (remitted by the district court from the jury's original award of $4 million),
The Gayes called Nancie Stern, an industry expert with over twenty years of experience in negotiating and assigning valuations for the use of portions of older musical compositions in new compositions. Stern has performed such valuations thousands of times. Major labels, as well as renowned artists, have retained her services. Few other people or businesses perform her line of work.
Stern testified that the prototypical negotiation centers on the percentage of the new musical composition that the owner of the older composition should receive for the use. The industry standard assigns 50% for the music and 50% for the lyrics. Turning to the two songs at hand, Stern opined that the value of the use of "Got To Give It Up" in "Blurred Lines" would have been 50% had the Thicke Parties sought a license pre-release. Had the Thicke Parties sought a license post-release, the valuation would range between 75% to 100% percent. Stern arrived at her conclusion by reviewing "snippets" of the two songs and "A-B'ing" them, or playing them back and forth.
In an attempt to buttress their position, the Thicke Parties cite to two decisions which are distinguishable. In Oracle, we held the jury's award of $1.3 billion in hypothetical-license damages to be unduly speculative because "the evidence presented at trial failed to provide `the range of the reasonable market value'" underlying the actual damages award. 765 F.3d at 1089 (quoting Polar Bear Prods., Inc., 384
Here, as in Oracle, there is no evidence of a prior benchmark license agreement between the Thicke Parties and the Gayes. However, in contrast to Oracle, the Gayes tethered their hypothetical license damages to evidence of a benchmark license in the industry. Instead of relying on undue speculation, the Gayes presented an expert who had extensive and specialized knowledge regarding the type of hypothetical license at issue. Stern opined, based on an industry standard and her evaluation of the songs involved, that the reasonable market value of a license would range between 50% pre-release and 75% to 100% post-release.
In Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011), the Federal Circuit held that the "25 percent rule of thumb," used in patent cases "to approximate the reasonable royalty rate that the manufacturer of a patented product would be willing to offer to pay to the patentee during a hypothetical negotiation," is a "fundamentally flawed tool." 632 F.3d at 1312, 1315. The Federal Circuit observed that the 25% rule is "an abstract and largely theoretical construct" that "does not say anything about a particular hypothetical negotiation or reasonable royalty involving any particular technology, industry, or party." Id. at 1317. The 50% standard Stern identified does not extend without bounds across art forms or different copyrightable media in the same way the 25% rule of thumb applied without regard to the industry or technology involved. Stern's opinion was not based on abstraction, but on an industry standard and her expert assessment of the two songs. Her testimony was not unduly speculative, and did not render the damages award improper.
B. The Award of Profits Is Not Clearly Erroneous.
We review an apportionment of infringer's profits for clear error. Cream Records, Inc. v. Joseph Schlitz Brewing Co., 864 F.2d 668, 669 (9th Cir. 1989) (per curiam); see also Three Boys Music, 212 F.3d at 487 (upholding jury's apportionment of profits for lack of clear error). The burden is on the defendant to prove what percentage of its profits is not attributable to infringement. Three Boys Music, 212 F.3d at 487.
The Thicke Parties contend that the award of $1,768,191.88 in profits against Thicke and $357,630.96 (remitted by the district court from the jury's original award of $1,610,455.31) against Williams, which amounted to approximately 40% of their non-publishing profits from "Blurred Lines," is excessive. They assert that the evidence supports a profits award of only 5%, citing Wilbur's opinion that less than 5% of "Blurred Lines" contains elements allegedly similar to ones in "Got To Give It Up."
We affirmed a similar profits award in Three Boys Music. See id. In Three Boys Music, the defendant presented evidence that only 10% to 15% of profits were attributable to the song's infringing elements. Id. Despite the evidence, the jury attributed 66% of profits to the song's infringing elements. Id. Here, the Thicke
C. The District Court Did Not Abuse its Discretion in Awarding the Gayes a Running Royalty at the Rate of 50%.
We review a district court's decision to award equitable relief for abuse of discretion. Traxler v. Multnomah County, 596 F.3d 1007, 1014 n.4 (9th Cir. 2010); see also Presidio Components, Inc. v. Am. Tech. Ceramics Corp., 702 F.3d 1351, 1363 (Fed. Cir. 2012) (reviewing district court's imposition of an ongoing royalty for abuse of discretion). Findings of fact are reviewed for clear error. See Traxler, 596 F.3d at 1014 n.4.
The district court based the royalty rate on Stern's testimony. For the same reasons set forth above, see supra Part VI.A, we conclude that the district court did not abuse its discretion in awarding the Gayes a running royalty at the rate of 50%.
V. The District Court Erred in Overturning the Jury's General Verdict in Favor of Harris and the Interscope Parties.
We review de novo a district court's grant of judgment as a matter of law. Wallace v. City of San Diego, 479 F.3d 616, 624 (9th Cir. 2007). We also review de novo a trial judge's decision to disrupt a jury verdict on the basis that an erroneous instruction resulted in inconsistent verdicts. Westinghouse Elec. Corp. v. Gen. Circuit Breaker & Elec. Supply Inc., 106 F.3d 894, 901 (9th Cir. 1997).
Harris and the Interscope Parties contend that the district court erred in overturning the jury's general verdicts finding in their favor. We agree. First, the Gayes waived any challenge to the consistency of the jury's general verdicts. Second, even had the Gayes preserved their challenge, neither Federal Rule of Civil Procedure 50(b) nor our decisions in Westinghouse, 106 F.3d 894, and El-Hakem v. BJY Inc., 415 F.3d 1068 (9th Cir. 2005), conferred authority on the district court to upset the jury's verdicts in this case. Third, as to Harris specifically, the district court erred for the additional reason that no evidence showed Harris was vicariously liable.
A. The Gayes Waived Any Challenge to the Consistency of the Jury's General Verdicts.
A party "waive[s] its objection to the jury's verdict ... by not objecting to the alleged inconsistency prior to the dismissal of the jury." Home Indem. Co. v. Lane Powell Moss & Miller, 43 F.3d 1322, 1331 (9th Cir. 1995); see also Kode, 596 F.3d at 611 (recognizing waiver where "the moving party argues that the jury has rendered a verdict that contains two legal conclusions that are inconsistent with one another, and the moving party does not object before jury discharge"); Philippine Nat'l Oil Co. v. Garrett Corp., 724 F.2d 803, 806 (9th Cir. 1984) (holding that a party "waived its right to object to the verdict by failing to object when the verdict was read"). The Gayes did not object to the jury's verdicts prior to jury discharge. Nor did they object during a colloquy with the district court after the jury was discharged. They thus waived their challenge to any perceived inconsistencies between the jury's general verdicts.
B. The Gayes' Failure to Make a Motion Under Federal Rule of Civil Procedure 50(a) Precluded Relief Under Rule 50(b).
"Under Rule 50, a party must make a Rule 50(a) motion for judgment as a matter of law before a case is submitted to the jury." EEOC v. Go Daddy Software, Inc., 581 F.3d 951, 961 (9th Cir. 2009). The Gayes did not make a Rule 50(a) motion. Because "failure to file a Rule 50(a) motion precludes consideration of a Rule 50(b) motion for judgment as a matter of law," Tortu v. Las Vegas Metro. Police Dep't, 556 F.3d 1075, 1083 (9th Cir. 2009), Rule 50(b) did not authorize the district court to overturn the jury's general verdicts and adjudge Harris and the Interscope Parties liable as a matter of law.
Westinghouse and El-Hakem Do Not Apply.
In Westinghouse, we affirmed a district court's decision to reconcile inconsistent general verdicts resulting from an erroneous jury instruction. See 106 F.3d at 902. There, the culprit was an erroneous instruction which added an extra element to an affirmative defense. Id. at 898. We held that where "it is possible to examine the pattern of jury verdicts and logically determine what facts a rational juror must have found in order to reach those verdicts," and the error is traceable to an erroneous jury instruction, the district court may "apply the correct law to these implicit factual findings and thereby ... remedy the harm from the erroneous jury instruction without the expense and delay of a new trial." Id. at 902.
However, Westinghouse involved a "seemingly rare situation." Id. The Westinghouse exception to letting inconsistent general verdicts stand applies sparingly. "[I]n most cases where a jury renders inconsistent verdicts, the trial judge must allow those verdicts to stand because `it is unclear whose ox has been gored.'" Id. at 903 (quoting United States v. Powell, 469 U.S. 57, 65, 105 S.Ct. 471, 83 L.Ed.2d 461 (1984)). District courts may "reconcile the verdicts without intruding upon the jury's fact-finding role" only under "very limited circumstances," where "there is an identifiable error that only could have affected one of the verdicts," "where the necessary factual findings can be determined from the pattern of verdicts," and where there is "nothing to [be] gain[ed] from a new trial." Id. at 902.
Those rare circumstances are not present in this case. The district court concluded that its instructions on distribution liability were inadequate, and that with clearer instructions, the jury would necessarily have found the Interscope Parties and Harris liable for distributing the infringing work. However, the instructions did not contain any error on par with the unmistakably erroneous instruction in Westinghouse.
Next, El-Hakem does not authorize the reconciliation of inconsistent general verdicts. It is clear that our holding in El-Hakem
D. Harris Is Not Vicariously Liable.
The district court erred in entering judgment against Harris for the additional reason that the Gayes proffered no evidence establishing that Harris was secondarily liable for vicarious infringement. The Gayes argue, without citing to the record or to any law, that Harris is liable as a matter of law as a co-owner of the copyright who authorized the distribution of "Blurred Lines."
To be vicariously liable for copyright infringement, one must have "(1) the right and ability to supervise the infringing conduct and (2) a direct financial interest in the infringing activity." Perfect 10, Inc. v. Visa Int'l Serv., Ass'n, 494 F.3d 788, 802 (9th Cir. 2007). A vicarious infringer "exercises control over a direct infringer when he has both a legal right to stop or limit the directly infringing conduct, as well as the practical ability to do so." Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1173 (9th Cir. 2007).
No evidence was adduced at trial supporting a theory of vicarious liability. Harris, who did not testify at trial, independently wrote and recorded a rap verse that was added to the track seven months after Thicke and Williams created "Blurred Lines." Neither Thicke nor Williams expected the later addition of a rap verse or had anything to do with its creation. The Gayes have cited nothing in the record demonstrating that Harris had either a right to stop the infringing conduct or the ability to do so, much less both.
We conclude that the district court erred in upsetting the jury's general verdicts in favor of Harris and the Interscope Parties and entering judgment against them.
VI. The District Court Did Not Abuse its Discretion in Denying the Gayes' Motion for Attorney's Fees.
We review a district court's decision on attorney's fees for abuse of discretion. Stetson v. Grissom, 821 F.3d 1157, 1163 (9th Cir. 2016).
The Gayes request that we vacate the district court's order denying their motion for attorney's fees and remand the case for reconsideration in light of Kirtsaeng v. John Wiley & Sons, Inc., ___ U.S. ___, 136 S.Ct. 1979, 195 L.Ed.2d 368 (2016). In Kirtsaeng, the Supreme Court reaffirmed the principle that, in exercising
Here, the district court's examination of objective reasonableness was but one factor in its analysis. The district court took the specific circumstances of the case into consideration, including the degree of success obtained, the purposes of the Copyright Act, the chilling effect of attorney's fees, motivation, frivolousness, factual and legal unreasonableness, compensation, and deterrence. The district court did not abuse its discretion in denying the Gayes' motion for attorney's fees, and a remand on that issue is not warranted.
VII. The District Court Did Not Abuse its Discretion in Apportioning Costs Among the Parties.
We review the district court's award of costs for abuse of discretion. Draper v. Rosario, 836 F.3d 1072, 1087 (9th Cir. 2016).
Federal Rule of Civil Procedure 54(d)(1) authorizes the award of costs "to the prevailing party." A "party in whose favor judgment is rendered is generally the prevailing party for purposes of awarding costs under Rule 54(d)." San Diego Police Officers' Ass'n v. San Diego City Emps.' Ret. Sys., 568 F.3d 725, 741 (9th Cir. 2009) (quoting d'Hedouville v. Pioneer Hotel Co., 552 F.2d 886, 896 (9th Cir. 1977)). Here, the district court entered judgment for the Gayes on their claim that "Blurred Lines" infringed their copyright in "Got To Give It Up," but entered judgment for the Thicke Parties on the Gayes' claim that "Love After War" infringed their copyright in "After the Dance." The district court apportioned the award of costs accordingly, awarding the Gayes their costs for the "Blurred Lines" claim, and awarding the Thicke Parties their costs for the "Love After War" claim.
The Gayes urge us to adopt the Federal Circuit's holding that "there can only be one prevailing party in a given case" for purposes of Rule 54(d)(1). Shum v. Intel Corp., 629 F.3d 1360, 1367 (Fed. Cir. 2010). Despite the Federal Circuit's singular construction of "the prevailing party," it affirmed an award of costs functionally equivalent to the one the district court ordered in this case. See id. at 1364. The Federal Circuit held that "the district court did not abuse its discretion in awarding costs to each party with respect to the claims on which they each prevailed, then netting those sums to arrive at the final figure." Id. Here, as in Shum, the district court in effect reduced the Gayes' costs award "to reflect the extent of [their] victory." Id. at 1370. This was not an abuse of discretion.
VIII. You Can't Get There from Here: The Dissent Ignores Governing Law that We Must Apply Given the Procedural Posture of the Case.
The dissent's position violates every controlling procedural rule involved in this case. The dissent improperly tries, after a full jury trial has concluded, to act as judge, jury, and executioner, but there is no there there, and the attempt fails.
Two barriers block entry of judgment as a matter of law for the Thicke Parties. The dissent attempts to sidestep these obstacles: It finds that the Thicke Parties are entitled to judgment as a matter of law, but fails to explain the procedural mechanism by which this could be achieved. Given this flawed premise, it is perhaps unsurprising how little the dissent mirrors the majority opinion, and how far it veers into analysis untethered from the procedural posture of this case.
First, the dissent incorrectly concludes that there are no procedural obstacles barring entry of judgment as a matter of law for the Thicke Parties. The dissent is unable to distinguish the Supreme Court's decision in Ortiz, which prevents us from reviewing the district court's order denying summary judgment after a full trial on the merits. 562 U.S. at 183-84, 131 S.Ct. 884. Even assuming our court's limited exception for reviewing a denial of summary judgment for legal error, see Escriba, 743 F.3d at 1243, survives Ortiz without change, we reiterate, without recapitulating our earlier analysis, supra Part II, that the dissent's attempt to distinguish Ortiz and latch onto the exception outlined in Escriba is futile in this case. This case "hardly present[s] `purely legal' issues capable of resolution `with reference only to undisputed facts.'" Ortiz, 562 U.S. at 189, 131 S.Ct. 884. Even though the dissent's musicological exegesis has no bearing on our analysis at this procedural stage of the case, it clearly shows that the facts in this case are hotly disputed and that the case does not just involve pure issues of law. The dissent cites no controlling law authorizing it to undertake its own summary judgment analysis at this stage of the case.
Second, the Thicke Parties, like the Gayes, failed to make a Rule 50(a) motion for judgment as a matter of law at trial. Their failure to do so "precludes consideration of a Rule 50(b) motion for judgment as a matter of law." Tortu, 556 F.3d at 1083.
This procedural limitation is well worth underscoring. We held, in a case in which a party made an oral Rule 50(a) motion, but failed to renew its motion, that the party "waived its challenge to the sufficiency of the evidence because it did not renew its pre-verdict Rule 50(a) motion by filing a post-verdict Rule 50(b) motion." Nitco Holding Corp. v. Boujikian, 491 F.3d 1086, 1089 (9th Cir. 2007). We further held that, under the Supreme Court's decision in Unitherm Food Systems, Inc. v. Swift-Eckrich, Inc., 546 U.S. 394, 126 S.Ct. 980, 163 L.Ed.2d 974 (2006), the party's failure to renew a Rule 50(a) motion "precluded
The dissent cites Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986), for the proposition that "reviewing a summary judgment ruling and a jury verdict" are two sides of the same coin. The dissent makes an important omission, however. The Supreme Court observed that the standard of review for a directed verdict motion resembles that for a motion for summary judgment:
Id. (quoting Bill Johnson's Rests., Inc. v. NLRB, 461 U.S. 731, 745 n.11, 103 S.Ct. 2161, 76 L.Ed.2d 277 (1983)). As neither of the parties made a motion for a directed verdict, we lack a procedural mechanism for resurrecting a summary judgment-stage analysis. As we have emphasized repeatedly, our review on appeal is necessarily circumscribed.
The dissent cites a number of cases it claims support the proposition that a court must award judgment as a matter of law when it is able to determine substantial similarity, or lack thereof, under the extrinsic test. None of the cases the dissent cites, however, authorizes us to review a factbound summary judgment denial after a full trial on the merits, or to enter judgment as a matter of law in the absence of a Rule 50(a) motion below. All of the cases cited in the dissent arise from a different procedural posture, and are clearly distinguishable. See Rentmeester v. Nike, Inc., 883 F.3d 1111, 1116 (9th Cir. 2018) (reviewing grant of motion to dismiss); Folkens v. Wyland Worldwide, LLC, 882 F.3d 768, 773 (9th Cir. 2018) (reviewing grant of summary judgment); Antonick v. Elec. Arts, Inc., 841 F.3d 1062, 1065 (9th Cir. 2016) (reviewing grant of judgment as a matter of law); Peters v. West, 692 F.3d 629, 632 (7th Cir. 2012) (reviewing grant of motion to dismiss); Mattel, 616 F.3d at 912-13, 918 (vacating equitable relief awarded by district court on other grounds, where the district court had "made its own infringement findings in determining whether Mattel was entitled to equitable relief" (emphasis added)); Benay, 607 F.3d at 622 (reviewing grant of summary judgment); Newton v. Diamond, 388 F.3d 1189, 1190 (9th Cir. 2004) (reviewing grant of summary judgment); Calhoun v. Lillenas Publ'g, 298 F.3d 1228, 1232 (11th Cir. 2002) (per curiam) (reviewing grant of summary judgment). Moreover, to the extent the citations to unpublished dispositions in the dissent carry any weight, which we question, they, too, provide no support for what the dissent seeks to accomplish. See Briggs v. Sony Pictures Entm't, Inc., 714 F. App'x 712, 713 (9th
The dissent's remaining alternative to entering judgment as a matter of law for the Thicke Parties is to vacate the judgment and remand for a new trial. Although the dissent does not state so expressly, it appears that the dissent would reverse the district court's denial of the Thicke Parties' motion for a new trial on grounds that the verdict is against the clear weight of the evidence.
Assuming, arguendo, that is the route the dissent wishes to pursue, it nevertheless runs into several hurdles. Critically, there is no reference to the deferential standard of review applicable to the district court's denial of the Thicke Parties' motion for a new trial. Indeed, there is no discussion of the district court's denial of the motion for a new trial at all. It bears repeating, then, that we are bound by the "`limited nature of our appellate function' in reviewing the district court's denial of a motion for a new trial." Lam, 869 F.3d at 1084 (quoting Kode, 596 F.3d at 612). As is the case here, "where the basis of a Rule 59 ruling is that the verdict is not against the weight of the evidence, the district court's denial of a Rule 59 motion is virtually unassailable." Id. (quoting Kode, 596 F.3d at 612). Under these circumstances, "only ... an absolute absence of evidence to support the jury's verdict" will result in reversal. Id. (quoting Kode, 596 F.3d at 612). "Although the trial judge can weigh the evidence and assess the credibility of witnesses, we may not." Kode, 596 F.3d at 612; see also Landes Constr. Co. v. Royal Bank of Can., 833 F.2d 1365, 1372 (9th Cir. 1987) ("[W]e cannot weigh the evidence for ourselves....").
In a thorough order, the district court reviewed the evidence presented at trial, and concluded that the verdict was not against the clear weight of the evidence. In faulting us for "tellingly refus[ing] to explain" the evidence supporting the verdict, the dissent ignores the weighty restrictions on our review at this procedural stage of the case. The dissent jettisons the constraints on our review, instead opting for the radical route of playing both expert and juror. The dissent weighs the experts' credibility, resolves factual conflicts, and sets forth its own findings on the extrinsic test.
To buttress this point, in Swirsky, we reversed the district court's grant of summary judgment of non-infringement, finding the district court erred, in large part, by conducting an analysis similar to the one the dissent has undertaken here. See 376 F.3d at 846-49. Two of our conclusions
Second, we held in Swirsky that the district court "erred by basing its comparison of the two choruses almost entirely on a measure-by-measure comparison of melodic note sequences from the full transcriptions of the choruses." Id. at 847. In so holding, we reiterated our case law. We stressed that "substantial similarity can be found in a combination of elements, even if those elements are individually unprotected." Id. at 848; see also Three Boys Music, 212 F.3d at 485 ("It is well settled that a jury may find a combination of unprotectible elements to be protectible under the extrinsic test because `"the over-all impact and effect indicate substantial appropriation."'" (quoting Krofft, 562 F.2d at 1169)). In fact, "[e]ven if a copied portion be relatively small in proportion to the entire work, if qualitatively important, the finder of fact may properly find substantial similarity." Swirsky, 376 F.3d at 852 (alteration in original) (quoting Baxter v. MCA, Inc., 812 F.2d 421, 425 (9th Cir. 1987)). Thus, even "an arrangement of a limited number of notes can garner copyright protection." Id. at 851. If taken to its logical conclusion, the dissent's musicological analysis and approach would sound the death knell for these governing legal principles.
Consider the principle that, at summary judgment, so long as the Gayes "presented `indicia of a sufficient disagreement concerning the substantial similarity of [the] two works,' then the case must be submitted to a trier of fact." Id. at 844 (alteration in original) (emphasis added) (quoting Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1472 (9th Cir. 1992)). To require that a case be submitted to a trier of fact if there is any "indicia" of a disagreement regarding substantial similarity, only to impose on the district court the task of independently scrutinizing the expert testimony presented at trial, would turn our law on its head. Worse still, to require a district court to do so in the absence of a Rule 50 motion defies law and logic.
Moreover, the expert review conducted by the dissent does not provide a workable standard for district courts to follow. It is unrealistic to expect district courts to possess even a baseline fluency in musicology, much less to conduct an independent musicological analysis at a level as exacting as the one used by the dissent. After all, we require parties to present expert testimony in musical infringement cases for a reason. See id. at 845.
The dissent has failed to take into account another wrinkle that would ensue from vacating the judgment and remanding the case for a new trial. The Gayes have cross-appealed protectively, challenging the district court's interpretation of the 1909 Act, in the event a new trial is ordered. Even though a vacatur and remand would trigger the Gayes' protective cross-appeal, the dissent does not wrestle with the merits of this issue. While the dissent is adamant that the scope of the Gayes' copyright is limited to the four corners of the deposit copy, it provides no statutory interpretation or legal analysis supporting its assertion.
We have decided this case on narrow grounds. Our conclusions turn on the procedural posture of the case, which requires us to review the relevant issues under deferential standards of review. For the foregoing reasons, we reverse the district court's entry of judgment against Harris and the Interscope Parties, and affirm the remainder of the district court's judgment, and its order denying attorney's fees and apportioning costs.
The parties shall bear their own costs on appeal.
AFFIRMED IN PART, REVERSED IN PART.
NGUYEN, Circuit Judge, dissenting:
The majority allows the Gayes to accomplish what no one has before: copyright a musical style. "Blurred Lines" and "Got to Give It Up" are not objectively similar. They differ in melody, harmony, and rhythm. Yet by refusing to compare the two works, the majority establishes a dangerous precedent that strikes a devastating blow to future musicians and composers everywhere.
While juries are entitled to rely on properly supported expert opinion in determining substantial similarity, experts must be able to articulate facts upon which their conclusions — and thus the jury's findings — logically rely. Here, the Gayes' expert, musicologist Judith Finell, cherrypicked brief snippets to opine that a "constellation" of individually unprotectable elements in both pieces of music made them substantially similar. That might be reasonable if the two constellations bore any resemblance. But Big and Little Dipper they are not. The only similarity between these "constellations" is that they're both compositions of stars.
When a court, with the assistance of expert testimony, is able to determine substantial similarity (or lack thereof) under the extrinsic test, judgment must be given as a matter of law. See Benay v. Warner Bros. Entm't, Inc., 607 F.3d 620, 624 (9th Cir. 2010). If, for example, the defendant copied verbatim most of the plaintiff's
The majority, like the district court, presents this case as a battle of the experts in which the jury simply credited one expert's factual assertions over another's. To the contrary, there were no material factual disputes at trial. Finell testified about certain similarities between the deposit copy of the "Got to Give It Up" lead sheet and "Blurred Lines." Pharrell Williams and Robin Thicke don't contest the existence of these similarities. Rather, they argue that these similarities are insufficient to support a finding of substantial similarity as a matter of law. The majority fails to engage with this argument.
Finell identified a few superficial similarities at the "cell" level by focusing on individual musical elements, such as rhythm or pitch, entirely out of context. Most of these "short ... pattern[s]" weren't themselves protectable by copyright, and Finell ignored both the other elements with which they appeared and their overall placement in each of the songs. Her analysis is the equivalent of finding substantial similarity between two pointillist paintings because both have a few flecks of similarly colored paint. A comparison of the deposit copy of "Got to Give it Up" and "Blurred Lines" under the extrinsic test leads to only one conclusion. Williams and Thicke were entitled to judgment as a matter of law.
The purpose of copyright law is to ensure a robust public domain of creative works. See Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 429, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984). While the Constitution authorizes Congress to grant authors monopoly privileges on the commercial exploitation of their output, see U.S. Const. art. I, § 8, cl. 8, this "special reward" is primarily designed to motivate authors' creative activity and thereby "allow the public access to the products of their genius." Sony Corp., 464 U.S. at 429, 104 S.Ct. 774. Accordingly, copyrights are limited in both time and scope. See U.S. Const. art. I, § 8, cl. 8 (providing copyright protection only "for limited Times"); Sony Corp., 464 U.S. at 432, 104 S.Ct. 774 ("This protection has never accorded the copyright owner complete control over all possible uses of his work."); see also Berlin v. E.C. Publ'ns, Inc., 329 F.2d 541, 544 (2d Cir. 1964) ("[C]ourts in passing upon particular claims of infringement must occasionally subordinate the copyright holder's interest in a maximum financial return to the greater public interest in the development of art, science and industry.").
An important limitation on copyright protection is that it covers only an author's expression — as opposed to the idea underlying that expression. See 17 U.S.C. § 102(a) ("Copyright protection subsists... in original works of authorship fixed in any tangible medium of expression... from which they can be perceived,
The idea/expression dichotomy, as this principle is known, "strikes a definitional balance between the First Amendment and the Copyright Act." Bikram's Yoga Coll. of India, L.P. v. Evolation Yoga, LLC, 803 F.3d 1032, 1037 (9th Cir. 2015) (quoting Harper & Row, 471 U.S. at 556, 105 S.Ct. 2218) (alteration in Harper & Row omitted). Because "some restriction on expression is the inherent and intended effect of every grant of copyright," Golan v. Holder, 565 U.S. 302, 327-28, 132 S.Ct. 873, 181 L.Ed.2d 835 (2012), the idea/expression dichotomy serves as one of copyright law's "built-in First Amendment accommodations." Eldred v. Ashcroft, 537 U.S. 186, 219, 123 S.Ct. 769, 154 L.Ed.2d 683 (2003) (citing Harper & Row, 471 U.S., at 560, 105 S.Ct. 2218).
Such accommodations are necessary because "in art, there are, and can be, few, if any, things, which in an abstract sense, are strictly new and original throughout." Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994) (quoting Emerson v. Davies, 8 F.Cas. 615, 619 (C.C.D. Mass. 1845) (Story, J.)). Every work of art "borrows, and must necessarily borrow, and use much which was well known and used before." Id. (quoting Emerson, 8 F.Cas. at 619); see 1 Melville D. Nimmer & David Nimmer, Nimmer on Copyright § 2.05[B] (rev. ed. 2017) ("In the field of popular songs, many, if not most, compositions bear some similarity to prior songs.").
"Blurred Lines" clearly shares the same "groove" or musical genre as "Got to Give It Up," which everyone agrees is an unprotectable idea. See, e.g., 2 William F. Patry, Patry on Copyright § 4:14 (2017) ("[T]here is no protection for a communal style...."). But what the majority overlooks is that two works in the same genre must share at least some protectable expression in order to run afoul of copyright law.
Not all expression is protectable. Originality, the "sine qua non of copyright," accommodates authors' need to build on the works of others by requiring copyrightable expression to be "independently created by the author" and have "at least some minimal degree of creativity." Feist, 499 U.S. at 345, 348, 111 S.Ct. 1282. If an
Even original expression can be so intimately associated with the underlying idea as to be unprotectable. Under the doctrine of scènes à faire, "expressions that are standard, stock, or common to a particular subject matter or medium are not protectable under copyright law." Satava v. Lowry, 323 F.3d 805, 810 (9th Cir. 2003) (citing See v. Durang, 711 F.2d 141, 143 (9th Cir. 1983)). The doctrine of merger provides that "where an idea contained in an expression cannot be communicated in a wide variety of ways," the "idea and expression may merge ... [such] that even verbatim reproduction of a factual work may not constitute infringement." Allen v. Acad. Games League of Am., Inc., 89 F.3d 614, 617 (9th Cir. 1996); see also Rice v. Fox Broad. Co., 330 F.3d 1170, 1175 (9th Cir. 2003) ("[S]imilarities derived from the use of common ideas cannot be protected; otherwise, the first to come up with an idea will corner the market." (quoting Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1443 (9th Cir. 1994))).
The majority begins its analysis by suggesting that the Gayes enjoy broad copyright protection because, as a category, "[m]usical compositions are not confined to a narrow range of expression." Maj. Op. at 1120. But the majority then contrasts this protected category as a whole with specific applications of other protected categories — the "page-shaped computer desktop icon" in Apple Computer (an audiovisual work) and the "glass-in-glass jellyfish sculpture" in Satava (a pictorial, graphic, and sculptural work)
More importantly, "[t]he mere fact that a work is copyrighted does not mean that every element of the work may be protected." Feist, 499 U.S. at 348, 111 S.Ct. 1282. Application of the extrinsic test "requires breaking the [copyrighted and allegedly infringing] works down into their constituent elements, and comparing those elements for proof of copying as measured by substantial similarity." Swirsky v. Carey, 376 F.3d 841, 845 (9th Cir. 2004) (internal quotation marks omitted). "Because the requirement is one of substantial similarity to protected elements of the copyrighted work, it is essential to distinguish between the protected and unprotected material...." Id. We then "apply the limiting doctrines, subtracting the unoriginal elements," to determine how "broad" or "thin" the remaining copyright is. Ets-Hokin v. Skyy Spirits, Inc., 323 F.3d 763, 766 (9th Cir. 2003) (citing Apple Computer, 35 F.3d at 1442).
The majority doesn't explain what elements are protectable in "Got to Give It Up," which is surprising given that our review of this issue is de novo. See Mattel, Inc. v. MGA Entm't, Inc., 616 F.3d 904, 914 (9th Cir. 2010). But by affirming the jury's verdict, the majority implicitly draws the line between protectable and unprotectable expression "so broadly that future authors, composers and artists will find a diminished store of ideas on which to build their works." Oravec v. Sunny Isles Luxury Ventures, L.C., 527 F.3d 1218,
The issue here isn't whether Williams and Thicke copied "Got to Give It Up" — there's plenty of evidence they were attempting to evoke Marvin Gaye's style. Rather, the issue is whether they took too much.
Copying in and of itself "is not conclusive of infringement. Some copying is permitted." Newton II, 388 F.3d at 1193 (quoting West Publ'g Co. v. Edward Thompson Co., 169 F. 833, 861 (E.D.N.Y. 1909) (Hand, J.)). Copying will only have legal consequences if it "has been done to an unfair extent." Id. (quoting West Publ'g, 169 F. at 861). In determining liability for copyright infringement, the critical and ultimate inquiry is whether "the copying is substantial." Id.
Requiring similarities to be substantial is of heightened importance in cases involving musical compositions. Sound recordings have "unique performance elements" that must be "filter[ed] out ... from consideration." Newton II, 388 F.3d at 1194. Thus, the range of musical expression is necessarily more circumscribed when music is written down than when it is performed. "Given the limited number of musical notes (as opposed to words in a language), the combination of those notes and their phrasing, it is not surprising that a simple composition of a short length might well be susceptible to original creation by more than one composer." Calhoun, 298 F.3d at 1232 (footnote omitted).
The Gayes don't contend that every aspect of "Blurred Lines" infringes "Got to Give It Up." Rather, they identify only a few features that are present in both works. These features, however, aren't individually protectable. And when considered in the works as a whole, these similarities aren't even perceptible, let alone substantial.
Musical compositions are expressed primarily through the building blocks of melody, harmony, and rhythm.
The melodic line and the associated lyrics are notated throughout the deposit copy. The bass line is notated for only the first eight measures,
A. Alleged Melodic Similarities
1. The "Signature" Phrase
Finell dubbed a 10-note melodic sequence in the deposit copy the "Signature Phrase." She argued that it corresponded to a 12-note sequence in "Blurred Lines," notwithstanding that "no two notes have the same pitch, rhythm and placement," as the district court correctly observed.
Finell identified four similar elements, none of which is protectable: (a) each phrase begins with repeated notes; (b) the phrases have three identical pitches in a row in the first measure and two in the second measure; (c) each phrase begins with the same rhythm; and (d) each phrase ends on a melisma (one word sung over multiple pitches).
Signature Phrase in "Got to Give It Up" (Trial Exhibit 376-3)
Signature Phrase in "Blurred Lines" (Trial Exhibit 376-3)
a. Repeated Notes
The Signature Phrase begins in "Got to Give It Up" with a note repeated four times. In "Blurred Lines," it begins with a note repeated twice, followed by a different note, followed by the first note.
b. Pitch Similarity
Although the Signature Phrase starts on different pitches in each piece, Finell identified three consecutive ascending pitches that were the same in both pieces, and two consecutive descending pitches that were the same. She believed this similarity to be the most important.
In assessing the similarity of two pieces of music, it's important to keep in mind "the limited number of notes and chords available to composers and the resulting fact, that common themes frequently reappear in various compositions, especially in popular music." Gaste v. Kaiserman, 863 F.2d 1061, 1068 (2d Cir. 1988) (citing Arnstein v. Edward B. Marks Music Corp., 82 F.2d 275, 277 (2d Cir. 1936)). Substantial similarity "must extend beyond themes that could have been derived from a common source or themes that are so trite as to be likely to reappear in many compositions." Id. at 1068-69 (citing Selle v. Gibb, 741 F.2d 896, 905 (7th Cir. 1984)).
Three consecutive pitches is just the sort of common theme that will recur in many compositions.
In Newton II, we considered a three-note musical phrase that the defendants sampled (i.e., copied exactly) from the sound recording of a copyrighted musical composition and used repeatedly throughout their work. Although we did not decide whether this six-second segment was original enough to be protected, we held that "no reasonable juror could find [it] to be a quantitatively or qualitatively significant portion of the [four-and-a-half-minute] composition as a whole." Newton II, 388 F.3d at 1195. The district court reached the originality issue. In a "scholarly opinion," it ruled that the three-note phrase — even in combination with the background musical elements — was insufficiently original to warrant copyright protection. Id. at 1190; see Newton I, 204 F.Supp.2d at 1253 ("Many courts have found that nearly identical or more substantial samples are not susceptible to copyright protection.").
The two- and three-note melodic snippets at issue here, taken in isolation from their harmonic context, are even less original than the three-note segment at issue in Newton. When played, each snippet lasts less than a second in a composition that lasts over four minutes. They are not individually protectable.
c. Rhythmic Similarity
The first measure of the Signature Phrase in both works begins with a rhythm of six eighth notes. A bare rhythmic pattern, particularly one so short and
The final syllable of the lyrics in each phrase spans multiple pitches — three in "Got to Give It Up" and two in "Blurred Lines." Melisma, however, is "a common musical technique" and, as such, unprotectable. McDonald v. West, 138 F.Supp.3d 448, 458 (S.D.N.Y. 2015). Use of melisma on the final syllable of a lyrical phrase is particularly "basic and commonplace." Id. (involving melisma on the final syllable of "We made it in America"). For example, any time one sings "Happy Birthday" to a person with a one-syllable name, the person's name is sung as a two-note melisma at the end of the phrase "Happy Birthday, dear___."
e. The Signature Phrases as a Whole Are Not Substantially Similar
Even when each element is not individually protectable, "[t]he particular sequence in which an author strings a significant number of unprotectable elements can itself be a protectable element," Metcalf v. Bochco, 294 F.3d 1069, 1074 (9th Cir. 2002). Here, as Finell concedes, the Signature Phrase has "very few notes," lasting less than four seconds. Therefore, even assuming that the Signature Phrase as a whole is protectable, its protection is thin.
There is very little similarity between the two songs' Signature Phrases. Both melodies rise and fall. But they begin and end on different pitches. The highest, longest, most stressed pitch in each phrase is different — in "Blurred Lines," this pitch is consonant with the underlying harmony; in "Got to Give It Up," it is dissonant. One phrase has 10 notes; the other, 12. The five identical pitches in each of the phrases have different rhythmic placement within the measure and therefore receive different stress. And only two of these identical pitches have similar underlying harmonies.
The various unprotected elements identified by Finell don't even coincide with one another in that short, four-second snippet. And her narrow focus on these elements ignored the different harmonies in each phrase. "To pull these elements out of a song individually, without also looking at them in combination, is to perform an
Given the lack of similarities between the Signature Phrases, there is no basis to conclude that they are substantially similar. "The most that can be said is that the two segments bear some relation to one another within a finite world of melodies. Given the limited musical vocabulary available to composers, this is far from enough to support an inference of [infringement]." Johnson v. Gordon, 409 F.3d 12, 22 (1st Cir. 2005).
2. The "Hook" Phrase
Finell describes the Hook Phrase as the four melodic pitches in "Got to Give It Up" sung to the lyrics "keep on dancin'." She opined that "Blurred Lines" has similar Hook Phrases in two different places: one is the four pitches in the Signature Phrase sung to the lyrics "take a good girl"; the other is the five pitches sung to the lyrics "I hate these blurred lines."
There are basic conceptual problems with Finell's analysis. She describes the same four pitches in "Blurred Lines" as being similar to two unrelated phrases in "Got to Give It Up" — the Signature Phrase and the Hook Phrase. It is difficult to see how anything original in each of these two different phrases could be distilled into the same four-note phrase in "Blurred Lines."
In any event, the Hook Phrase in the deposit copy lacks sufficient originality to be protected. Its sequence of four pitches, lasting 2.5 seconds, is common. For example, Beyoncé, Jennifer Hudson, and Anika Noni Rose memorably sang it to the lyrics, "We're your dreamgirls." See Henry Krieger & Tom Eyen, Dreamgirls measures 25-26 (Universal — Geffin Music 1981).
Hook Phrase in "Got to Give It Up"
Hook Phrase in "Blurred Lines"
Hook Phrase in "Dreamgirls"
Even if the Hook Phrase pitches were protectable, there is no substantial similarity between its expression in the two songs. See Arnstein v. Edward B. Marks Music Corp., 82 F.2d 275, 277 (2d Cir. 1936) (Hand, J.) ("The first phrase of the infringing chorus consists of the same four notes as the first phrase of the copyrighted song; that particular sequence can be found in several earlier musical pieces and its spontaneous reproduction should be no cause for suspicion.").
At most, three of the four pitches are the same,
3. Theme "X"
Theme X refers to another four-note melodic sequence. In the deposit copy, Theme X is sung to the lyrics "Fancy lady." In "Blurred Lines," it is first sung to the lyrics "If you can't hear." Like the Hook Phrase, Theme X is both unprotectable and objectively dissimilar in the two songs.
Theme X in "Got to Give It Up"
Theme X in "Blurred Lines"
Theme X in "Happy Birthday to You"
The pitches and rhythm of Theme X in the deposit copy are identical to those sung to "Happy Birthday" and numerous other songs. None of the Theme X pitches in the deposit copy are the same as in "Blurred Lines." To see any correspondence between the two four-note sequences, one would have to shift and invert the pitches, a feat of musical gymnastics well beyond the skill of most listeners. Where short and distinct musical phrases require such contortions just to show that they are musically related, there is no basis to find them substantially similar. See Johnson, 409 F.3d at 22; see also Arnstein, 82 F.2d at 277.
The harmonies accompanying Theme X also differ between "Got to Give It Up" and "Blurred Lines." Structurally, Theme X appears in completely different places in the two songs. In the deposit copy, it repeats several times in succession near the end of the piece. In "Blurred Lines," it is the very first line of verse near the beginning of the song and repeats periodically throughout the song.
B. Other Alleged Similarities
1. Keyboard Parts
Finell testified that the keyboard parts in "Got to Give It Up" (meaning the chords and their rhythms played over the bass line) had "many important similarities" to those in "Blurred Lines." However, there are no keyboard parts in the deposit copy. Finell explained that a lead sheet is essentially "musical shorthand for musicians," who "would understand how [the keyboard parts are] to be played." But because "[a] sound is protected by copyright law only when it is `fixed in a tangible medium,'" Newton II, 388 F.3d at 1194 (quoting 17 U.S.C. § 102(a)), the deposit copy's unwritten
To the extent the chord indications sufficiently express the keyboard parts, there is no substantial similarity between the two works. "Blurred Lines" contains only two chords throughout the entire piece — an A chord and an E chord — that alternate every four measures. The deposit copy contains neither of these chords. The chords it does contain — A7, D7, E7, B7, Dm7, and Am7 — change in a much more irregular pattern. For example, the first 16 measures have a sustained A7 harmony, and the next 8 measures change harmonies every measure.
2. Bass Line
Finell opined that the bass melodies in "Got to Give It Up" and "Blurred Lines" are similar. However, when comparing them, she showed the jury the version of the "Got to Give It Up" bass line that she had transcribed from the sound recording. Because several notes were different in the deposit copy, her testimony on this issue was of questionable value. See Newton II, 388 F.3d at 1196. It's also doubtful that the unexpressed portions of the baseline beyond the first eight measures of the deposit copy are sufficiently fixed in a tangible medium to warrant protection.
Even assuming the implied bass line in the deposit copy is sufficiently fixed, it's the type of expression that is so standard in the genre that it merges with the idea and is therefore unprotectable in and of itself. Cf. Shapiro, Bernstein & Co. v. Miracle Record Co., 91 F.Supp. 473, 474 (N.D. Ill. 1950) (concluding that bass line was not copyrightable where it was "mechanical application of a simple harmonious chord"). Any thin protection that might lie in the "Got to Give It Up" bass line would not support a finding of substantial similarity between these two bass lines given their different notes, harmonies, and rhythms.
Bass Line in "Got to Give It Up" (Deposit Copy)
Bass Line in "Blurred Lines"
The only similarity between the bass lines is that they repeat the note A in most of the measures. However, in "Got to Give It Up" the note is syncopated so that it sounds before the downbeat in the second, third, and fourth measures, whereas in "Blurred Lines" the note is played on the downbeat. Moreover, the note A is the root of the chord in each song (A7 in "Got to Give It Up," A in "Blurred Lines"). As the expert for Williams and Thicke testified without contradiction, it is commonplace for the root of a chord to appear in a bass line because it establishes the chord.
3. Word Painting, Parlando, and Lyrics
Word painting and parlando are common devices.
C. Overall Lack of Similarity
Even considering all of these individually unprotectable elements together, see Metcalf, 294 F.3d at 1074, there is no evidentiary basis to conclude that the two works are substantially similar. See Guzman v. Hacienda Records & Recording Studio, Inc., 808 F.3d 1031, 1040 (5th Cir. 2015) (finding no similarity where "the alleged compositional similarities running between the songs in their entirety, i.e., their melodies, rhythmic patterns, lyrical themes, and instrumental accompaniment, were either common to the ... genre or common in other songs").
The two pieces have different structures. Finell acknowledged that "Got to Give It Up" lacks a chorus whereas "Blurred Lines" has a "pretty common structure for a popular song" in that it consists of a verse, pre-chorus, and chorus. The two songs' harmonies share no chords.
The discrete elements identified by Finell don't occur at the same time within the musical theme or phrase in each piece. And with the exception of parlando, the various themes and phrases she identified don't occur in corresponding places in each piece. Thus, whether considered micro- or macroscopically, "Got to Give It Up" and "Blurred Lines" are objectively dissimilar. Williams and Thicke are entitled to judgment as a matter of law.
The majority insists that the verdict is supported by the evidence but tellingly refuses to explain what that evidence is. Instead, it defends its decision by arguing that a contrary result is impossible due to Williams and Thicke's purported procedural missteps. Maj. Op. at 1133-38. While the procedural mechanism for granting relief is beside the point given the majority's holding, there's no such obstacle here.
I agree that we normally are not at liberty to review the district court's denial of summary judgment after a full trial on the merits. See Ortiz v. Jordan, 562 U.S. 180, 131 S.Ct. 884, 178 L.Ed.2d 703 (2011). This rule makes eminent sense. Once a trial has concluded, any issues relating to the merits of the parties' dispute "should be determined by the trial record, not the pleadings nor the summary judgment record." Id. at 184, 131 S.Ct. 884 (quoting 15 Alan Charles Wright et al., Federal Practice & Procedure § 3914.10 (2d ed. 1992 & Supp. 2010)). However, there is little difference between reviewing a summary judgment ruling and a jury verdict other than the source of the factual record, see Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986), and here there are no material factual disputes. A completed trial does not prevent us from reviewing the denial of summary judgment "where the district court made an error of law that, if not made, would have required the district court to grant the motion." Escriba v. Foster
The majority conveniently ducks any review of the evidence by mischaracterizing the facts as "hotly disputed," Maj. Op. at 1134, and accusing me of "act[ing] as judge, jury, and executioner," id. at 1134, by "weigh[ing] the experts' credibility, resolv[ing] factual conflicts, and set[ting] forth [my] own findings on the extrinsic test," id. at 1136. But my "musicological exegesis," id. at 1134, concerns evidence of extrinsic similarity that Finell presented at trial. No one disputes that the two works share certain melodic snippets and other compositional elements that Finell identified. The only dispute regarding these similarities is their legal import — are the elements protectable, and are the similarities substantial enough to support liability for infringement? See Mattel, 616 F.3d at 914 ("We review de novo the district court's determination as to the scope of copyright protection." (citing Ets-Hokin, 225 F.3d at 1073)); Benay, 607 F.3d at 624 ("Substantial similarity is a fact-specific inquiry, but it `"may often be decided as a matter of law."'" (quoting Funky Films, Inc. v. Time Warner Entm't Co., 462 F.3d 1072, 1076 (9th Cir. 2006))).
By characterizing these questions as a factual dispute among experts, the majority lays bare its misconception about the purpose of expert testimony in music infringement cases. As with any expert witness, a musicologist can't opine on legal conclusions, including the ultimate question here — substantial similarity. See Nationwide Transp. Fin. v. Cass Info. Sys., Inc., 523 F.3d 1051, 1058 (9th Cir. 2008); Michael Der Manuelian, Note, The Role of the Expert Witness in Music Copyright Infringement Cases, 57 Fordham L. Rev. 127, 138 (1988) ("[E]xpert analysis is not relevant to the determination of substantial similarity of expression of ideas."); see also Swirsky, 376 F.3d at 851 ("[A] musicologist is not an expert on what the term `idea' means under the copyright laws."). Her role is to identify similarities between the two works, describe their nature, and explain whether they are "quantitatively or qualitatively significant in relation to the composition as a whole," Newton II, 388 F.3d at 1196. The value of such testimony is to assist jurors who are unfamiliar with
This result would never stand in copyright cases involving works in other media. We "frequently" conclude as a matter of law that two works of language or visual art fail the extrinsic test for substantial similarity. Benay, 607 F.3d at 624 (quoting Funky Films, 462 F.3d at 1077); see, e.g., Briggs v. Sony Pictures Entm't, Inc., 714 F. App'x 712 (9th Cir. 2018) (screenplays); Rentmeester v. Nike, Inc., 883 F.3d 1111 (9th Cir. 2018) (photograph); Silas v. Home Box Office, Inc., 713 F. App'x 626 (9th Cir. 2018) (television show); Folkens v. Wyland Worldwide, LLC, 882 F.3d 768 (9th Cir. 2018) (drawing); Mintz v. Subaru of Am., Inc., 716 F. App'x 618 (9th Cir. 2017) (advertising image and phrase); Edwards v. Cinelou Films, 696 F. App'x 270 (9th Cir. 2017) (film); Heusey v. Emmerich, 692 F. App'x 928 (9th Cir. 2017) (screenplay and film); Braddock v. Jolie, 691 F. App'x 318 (9th Cir. 2017) (novel and film); Basile v. Twentieth Century Fox Film Corp., 678 F. App'x 576 (9th Cir. 2017) (stories and film); Antonick v. Elec. Arts, Inc., 841 F.3d 1062 (9th Cir. 2016) (video game), cert. denied, ___ U.S. ___, 138 S.Ct. 422, 199 L.Ed.2d 323 (2017); see also Mattel, 616 F.3d at 917-18 (vacating jury determination of substantial similarity between dolls).
The Gayes, no doubt, are pleased by this outcome. They shouldn't be. They own copyrights in many musical works, each of which (including "Got to Give It Up") now potentially infringes the copyright of any famous song that preceded it.
That is the consequence of the majority's uncritical deference to music experts.
Admittedly, it can be very challenging for judges untrained in music to parse two pieces of sheet music for extrinsic similarity. But however difficult this exercise, we cannot simply defer to the conclusions of experts about the ultimate finding of substantial similarity.
I respectfully dissent.
Instruction 41 provides: "If you conclude that the Thicke Parties had access to either or both of the Gaye Parties works before creating either or both of their works, you may consider that access in connection with determining whether there is substantial similarity between either or both pairs of works." Instruction 41's use of "may" is not problematic either. Instruction 41 merely reiterates that the Gayes may choose to prove infringement by using a circumstantial theory.
Wilbur also acknowledged that she relied on her interpretation of what was contained within the lead sheet to create her recording of "Got To Give It Up." She admitted that she made choices to deviate from the sheet music, and that her choices were informed by her musical training and knowledge. For example, despite the sheet music's instruction to continue playing a bass line throughout the song, she chose not to do so in certain parts of the song, knowing that playing the bass line would clash with certain chords.