ORDER: (1) GRANTING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT; (2) DENYING PLAINTIFF'S MOTION FOR SUMMARY JUDGMENT; AND (3) GRANTING IN PART PLAINTIFF'S MOTION FOR VOLUNTARY DISMISSAL
PATRIA A. SEITZ, District Judge.
THIS dispute arises from Defendants' sample of an Indian sound recording known as Bagor Mein Bahar Hai ("BMBH") in the song "Put You on the Game" ("PYOG") which appeared on Jayceon Taylor's 2005 album "The Documentary." At the November 10, 2009 hearing on the parties' motions for summary judgment [DE 174, 176, 179, 181], Plaintiff ("Saregama") argued that it held a valid copyright in the BMBH sound recording pursuant to a 1967 agreement between the author Shakti and its predecessor in interest, Gramophone. Saregama also argued that it was entitled to summary judgment because Defendants admit that they sampled the BMBH sound recording. Defendants maintained that Saregama's 1967 agreement conveys no more than a license to exploit subject works and that there is no evidence that the BMBH sound recording was subject to the 1967 agreement. Defendants also argued that, irrespective of whether they sampled the BMBH sound recording, the BMBH sound recording and PYOG are not substantially similar.
After considering the arguments of counsel, the motions, the responses and replies thereto, the relevant legal authorities, and the record, the Court will grant Defendants' motion and deny Saregama's motion because the 1967 agreement confers, at most, an exclusive license for two years and a non-exclusive license thereafter, and Saregama proffers no proof that the BMBH sound recording was created during the term of the agreement or that
I. Factual Background
A. Rights in the BMBH Sound Recording: The 1967 Agreement
1. The Assignment
On April 24, 1967, Shakti Films ("Shakti") and Gramophone Company of India, Ltd. ("Gramophone"), a predecessor in interest of Saregama, came to an agreement regarding the production and distribution of music soundtracks to Shakti's movies. (See DE 187, Ex. 3 "Agreement.") The Agreement provides two methods by which Shakti agreed to provide music to Gramophone. (See id. ¶¶ 2, 4.) First, Shakti may provide Gramophone with musicians who record songs at Gramophone's behest:
(See id. ¶ 2.)
As an alternative to providing musicians, Shakti agreed to provide Gramophone with pre-recorded songs, known conventionally as sound recordings, to be re-recorded:
(See id. ¶ 4) (emphasis in original).
Whether by musician or pre-recorded song, the music Gramophone obtained from Shakti carried with it Shakti's rights to record and re-record the works: "[Shakti] hereby agree[s] that they assign their gramophone recording rights in all works to be recorded or re-recorded under the provisions of this Agreement to [Gramophone]...." (See id. ¶ 7.) Further, the Agreement provides that Gramophone shall own the "original plate" of all works "within the meaning of The [Indian] Copyright act of 1957."
In exchange for the right of recording, re-recording, and selling these records, Gramophone agreed to pay Shakti royalties. The royalty payments are arranged according to the origin of the work (whether the work is created by Shakti musicians or reproduced from Shakti recordings) and whether the final soundtrack commingles Shakti-owned songs with songs owned by others.
For soundtracks produced from works recorded by Shakti's musicians, the Agreement provides royalties at the following rates:
(See id. ¶ 6.)
However, if, after the Agreement's two-year term, Shakti allowed another production company to record or re-record any songs obtained by Gramophone under the Agreement, Gramophone is no longer bound to pay Shakti a royalty for works recorded by Shakti's musicians. (See id. ¶ 6.)
By contrast, soundtracks produced from Shakti's pre-recorded songs are governed by similar royalty rates, albeit in a different section of the Agreement:
(See id. ¶ 8.)
When royalties "shall become payable to [Shakti]" for soundtracks produced both from Shakti's artists and pre-recorded songs, Gramophone is entitled to confer manufacturing and sales rights to other parties. (See id. ¶ 10.)
B. Saregama's Evidence Demonstrating Ownership of BMBH
The production dates for the BMBH sound recording and the Bollywood film Aradhana in which it played are unclear. On August 7, 1968, Shakti sent a letter to Gramophone regarding royalty payments for Aradhana, which reads:
(See DE 187, Ex. 1 "Letter 1".)
Similarly, on May 2, 1968, Shakti directed Gramophone to pay royalties to a singer:
(See DE 187, Ex. 8 "Letter 2".)
According to Saregama's corporate representative's declaration, BMBH was recorded in 1968. (See DE 183 "Ramji Decl." ¶ 7.) However, at his deposition, Ramji conceded that he did not know when BMBH was recorded. (See DE 178, Ex. 1 "Ramji Depo." at 84-85.) Indeed, he speculated that it could have been produced in 1969 or 1968. (See id.)
According to Ashim Samanta, a principal at Shakti, the film Aradhana was released in October or November of 1969. (See DE 195, Ex. 1 "Samanta Depo." at 70-72.) However, Samanta admits that he has no personal knowledge as to when the film was produced. (See id.) Further, although Samanta speculates that Aradhana's soundtrack was released three to six months prior to the movie, he concedes that he does not know when the soundtrack featuring BMBH was released. (See id. at 17-18.)
Samanta wrote a May 2009 letter on behalf of Shakti which states that Saregama owns the copyrights in BMBH pursuant to the 1967 Agreement. (See DE 187, Ex. 1 "Samanta Letter.") However, in his deposition, Samanta admits that: (1) he knows nothing about copyright law and cannot distinguish an assignment from a license; (2) although he signed the letter, it was drafted by Adel Churamani, a Saregama representative; and (3) he hadn't read the Agreement until he signed the May 2009 letter. (See Samanta Depo. at 74-78, 81.) Samanta states that, upon review of the letter and the Agreement, he believes that Saregama owns the copyright. (See id.)
As further evidence of ownership, Saregama proffers a xerox copy of a vinyl record label indicating that it contains the BMBH sound recording. (See DE 187, Ex. 9 "Record Label".) The label names both Gramophone and Shakti, and along its rim it reads: "all rights of the manufacturer and of the owner of the recorded work reserved." (See id.) Saregama also submits letters and charts reflecting sales of BMBH and royalties paid to Shakti. (See DE 187, Ex. 11, 12, 13, 17.) According to the letters and charts, the earliest royalties were paid in November 2005. (See DE 187, Ex. 13.)
Finally, Saregama provides a document which is labeled an "extract from the register of copyrights" from the "government of India." (See DE 187, Ex. 4 "Extract".) The extract indicates that "Gramco"
C. Defendants' Involvement in Producing the Song "Put You On the Game"
Defendant Timothy Mosley produced "Put You On the Game" ("PYOG") for Jaceyon Taylor's album "The Documentary," released in 2005. (See DE 182 "PI. SoF" ¶¶ 20, 24.) Mosley included an approximately one-second snippet of BMBH in PYOG. (See id. ¶¶ 21.) According to Defendant G-Unit Records, it had no involvement in or control over the creation, distribution, or sale of PYOG. (See DE 180 "G-Unit Decl." ¶¶ 3.) Rather, G-Unit asserts that its only connection to PYOG is that it "receives a passive income participation" pursuant to an agreement with Interscope and Aftermath records. (See id. ¶ 4.) However, according to Saregama, the Documentary album sleeve contains the G-Unit logo and indicates that G-Unit owns the copyrights in the album. (See DE 207 ¶ 1.) Further, Saregama remarks that G-Unit's sole principal Curtis Jackson is credited as the album's executive producer. (See id.)
According to Defendant Desperado Entertainment, it had no involvement in or control over the creation, distribution, or sale of PYOG. (See DE 175 "Harris Decl." ¶¶ 3, 4.) However, Saregama claims that Desperado, doing business as "Each 1 Teach 1," holds itself out as publisher of PYOG. (See DE 199 ¶ 1.) Saregama also asserts that, in its responses to interrogatories, Desperado indicates that it provided services to Jaceyon Taylor and it took part in the licensing or distribution of PYOG. (See id.)
D. Expert Testimony: Analyzing BMBH and PYOG
The snippet appearing in both BMBH and PYOG consists of three notes: D, B flat, and G. (See DE 178, Ex. 4 "Ricigliano Report" ¶ 11.) Together, the notes form a descending chord known as a G minor arpeggio. (See id.) In BMBH, this G minor chord is looped four times to create a "vocal unit," which appears at 0:21, 0:38, and 1:49, 2:52. (See id. ¶ 12; DE 178, Ex. 6 "Oxendale Report" at 2.) The total vocal unit in BMBH is approximately 2 seconds in length. (See Ricigliano Report ¶ 12.) In PYOG, the G minor chord is first looped three times, and after an intervening D note, is looped twice more. (See id. ¶ 14; Oxendale Report at 4.) Thus, the looped G minor chord in PYOG produces a slightly modified version of the vocal unit in BMBH. (See Ricigliano Report 17.) The vocal unit in PYOG appears at 1:08, 2:03, and 3:47. (See id. ¶ 15.)
According to Saregama's expert Mr. Oxendale, the vocal unit at issue in BMBH is a distinctive and memorable piece of the song as a whole. (See Oxendale Report at 2.) Oxendale also opined that the vocal unit in PYOG is a distinctive portion of the song as a whole. (See id.) Oxendale concluded that the vocal unit at issue in PYOG was copied from BMBH's vocal unit and subject to a slight degree of manipulation. (See id.) By contrast, Defendants' expert Mr. Ricigliano asserted that the vocal unit at issue in BMBH was not original and a basic musical element. (See DE 195, Ex. 2 "Ricigliano Depo." at 5.) Further, Ricigliano
At his deposition, however, Mr. Oxendale admitted that he did not compare BMBH's vocal unit to other portions of BMBH to determine its relative importance. (See DE 178, Ex. 5 "Oxendale Depo." at 14.) Further, Oxendale conceded that the scope of his analysis did not consist of comparing BMBH to PYOG as a whole, but was limited to analyzing the vocal unit at issue in each work to determine whether PYOG sampled BMBH. (See id. at 8, 11, 16.)
II. Procedural History
On August 27, 2007, Saregama filed its initial complaint in the Southern District of New York, alleging federal and state copyright infringement claims, and seeking damages and injunctive relief. (See DE 30 at 5.) On Defendants' motion to transfer venue, the case was transferred to this Court. (See id. at 1-2.) Once in this district, the Court granted Defendants' motion to dismiss with leave for Saregama to re-plead. (See DE 60.) The Court also entered the Scheduling Order which bifurcated fact and damage discovery, and set trial in April 2010. (See DE 62.)
After Saregama filed its Amended Complaint, Defendants Mosley, G-Unit, and Desperado filed a second motion to dismiss, which the remaining Defendants joined despite the fact that they had previously answered the Amended Complaint. (See DE 86, DE 110, DE 114.) The Court granted Defendants' motion in part, leaving Saregama with Federal copyright infringement claims for the BMBH musical composition and sound recording. (See DE 137.) Thereafter, Saregama voluntarily dismissed its musical composition claims against Mosley, G-Unit, and Desperado. (See DE 138.)
Because the remaining Defendants ("WB-Universal Defendants") had answered, Saregama sought a stipulation to dismiss its musical composition claim with each party to bear its own fees in costs in connection with the musical composition claim. (See DE 148 ¶ 5.) The WB-Universal Defendants refused to stipulate, therefore Saregama moved to dismiss its musical composition claim on the condition that each party bear its own fees and costs. (See id. ¶¶ 6-7.) In response, the WB-Universal Defendants argued that they are entitled to seek fees as the prevailing party under the Copyright Act because Saregama's musical composition claim is without merit. (See DE 161 at 6-9.) Saregama replied that it did not seek to dismiss its musical composition claim because it lacked merit, but because it would not provide any relief not available by way of the sound recording claim. (See DE 167 at 1-2.) Further, Saregama asserted that the Court has discretion to dismiss the musical composition claim on the condition that each party bear its own fees and costs, and, in any case, an entitlement to fees under the Copyright Act requires more than merely prevailing on the merits. (See id. at 3-5.)
On September 11, 2009, both Saregama and Defendants moved for summary judgment. Saregama moved for summary judgment on the grounds that: (1) it held a valid assignment of the BMBH sound recording copyright from Shakti; and (2) because Defendants admit that they copied a snippet of the BMBH sound recording, they are liable as a matter of law. By contrast, Defendants moved for summary judgment arguing that: (1) the 1967 Agreement only confers on Saregama a license to exploit the BMBH sound recording; (2) Saregama's other evidence does not establish an assignment of copyright in the sound recording; and (3) the copying at issue is de minimis. Defendants G-Unit
A. Summary Judgment
Summary judgment is appropriate when "the pleadings ... show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); HCA Health Servs. of Ga., Inc. v. Employers Health Ins. Co., 240 F.3d 982, 991 (11th Cir.2001). Once the moving party demonstrates the absence of a genuine issue of material fact, the non-moving party must "come forward with `specific facts showing that there is a genuine issue for trial.'" Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) (quoting Fed.R.Civ.P. 56(e)). The Court must view the record and all factual inferences therefrom in the light most favorable to the non-moving party and decide whether "`the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law.'" Allen v. Tyson Foods, Inc., 121 F.3d 642, 646 (11th Cir.1997) (quoting Anderson, 477 U.S. at 251-52, 106 S.Ct. 2505).
Saregama bears the burden of proving ownership of the BMBH sound recording copyright. Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). To make out a prima facie case of copyright infringement, Saregama must show that: (1) it owns a valid copyright in the BMBH sound recording; and (2) Defendants copied protected elements of the BMBH sound recording. Peter Letterese and Associates, Inc. v. World Institute of Scientology Enterprises, Int'l., 533 F.3d 1287, 1300-01 (11th Cir.2008) (citations omitted). In the Eleventh Circuit, to prove that Defendants copied its copyrighted work, Saregama must prove both factual and legal copying. Peter Letterese, 533 F.3d at 1300-01. To prove factual copying, Saregama must show that "the defendant, as a factual matter, copied portions of the plaintiffs work." Id. To prove legal copying, Saregama must show that "those elements of the copyrighted work that have been copied are protected expression and of such importance to the copied work that the appropriation is actionable." Id. Thus, legal copying asks "whether there is substantial similarity between the allegedly offending works and the protectable, original elements" of the sound recording. Id.
1. The Nature of Rights Assigned by the 1967 Agreement
Saregama argues that Clauses 7 and 10 of the Agreement demonstrate that Shakti conveyed copyrights in all subject works to Gramophone, its predecessor in
What is more, Clauses 5 and 6 confirm that, after January 15, 1969, Shakti was free to confer similar recording rights on parties other than Saregama. First, Clause 5 prohibits Shakti from conferring recording rights on Saregama's competitors, but only during the two-year term of the Agreement. (See Agreement ¶ 5.) Saregama argues that Clause 5 only prohibits Shakti from providing musicians to other producers who would create new sound recordings based on Shakti's existing musical compositions. However, Clause 5's exclusivity expressly applies to works created from Shakti's "artistes and musicians" as well as works created from its "sound tracks or recorded tapes." (See id.) Thus, Clause 5 prohibits Shakti from providing other producers with its sound recordings, such as those supplied to Saregama, but only for the two-year term contemplated by the Agreement.
Second, Clause 6 provides that if, after January 15, 1969, Shakti provides to other parties the works previously supplied to Saregama, including those recorded by Shakti's "artistes or musicians" or from its "sound track[s] or recorded tape[s]," then Saregama is no longer bound to pay royalties from sales for works recorded by Shakti's artists and musicians. (See id. ¶ 6.) That, following the Agreement's two-year term, Shakti is free to supply the same sound recordings to a third party that it previously gave to Saregama is wholly inconsistent with a transfer of copyright or exclusive license:
Davis v. Blige, 505 F.3d 90, 99-100 (2d Cir.2007).
Saregama argues that Clause 6 merely recognizes that Shakti will have breached the contract if it gives to third parties what it previously gave Saregama, thereby relieving Saregama of the burden to pay royalties. However, if Saregama indeed held the copyright or an exclusive license therein, the appropriate action against Shakti's wrongful transfer of rights would not be a breach of contract action, but an action for copyright infringement. See id. at 101 ("An exclusive license ... conveys an ownership interest.... Accordingly an exclusive licensee may sue others for infringement, including the licensor if the licensor infringes on the exclusive right he
Clause 10 also supports the position that the Agreement did not transfer copyright in Shakti's prerecorded works to Saregama. For works performed by Shakti's "artistes and musicians," Clause 10 confers a wide range of rights on Saregama, including exclusive rights of "production, reproduction, sale, use and performance (including broadcasting) throughout the world ...." (See id. ¶ 10.) Significantly, Clause 10 does not supply Saregama with such rights for Shakti's pre-recorded works, such as the BMBH sound recording. Rather, Clause 10 entitles Saregama to authorize third parties to "manufacture, sell and/or catalogue" all subject works, including both musician-created and pre-recorded works, only "when royalties shall become payable to [Shakti] as mentioned in Clauses 6 and 8 hereof." (See id.) (emphasis in original).
Saregama emphasizes that Clause 10 grants it ownership of "the original plate" of all subject works, including pre-recorded works, "within the meaning of The [Indian] Copyright Act of 1957." (See id.) However, Saregama does not explain how ownership of "the original plate" equates to ownership of copyrights. To be sure, the Indian Copyright Act defines a "plate" as a "device used or intended to be used for printing or reproducing copies." ICA Chapter 1, Section 2(t). This suggests that the Agreement merely codified that Saregama owned the original means of mass producing the subject works. It does not indicate, as Saregama insists, that Shakti assigned copyrights in the works slated for production, let alone that Shakti could not later provide other producers with a replica "plate" of any subject work for mass production, as Clause 6 contemplates.
Finally, Saregama submits that, if the Agreement's intent is ambiguous, the Court should consider parole evidence of the parties' intent to convey copyrights. Parole evidence is unnecessary, however, because the Agreement clearly does not convey copyrights in Shakti's pre-recorded works. Nevertheless, even if the Court could examine parole evidence, the available evidence is inconclusive. While Ashim Samanta's May 2009 letter alleges that Saregama owns the copyrights in the BMBH sound recording pursuant to Clause 10 of the Agreement, he conceded at his deposition that: (1) he knows nothing about copyright law and cannot distinguish between an assignment and license; (2) the letter was drafted by a representative of Saregama; and (3) he hadn't read the Agreement until he signed the May 2009 letter. (See Samanta Depo. at 70-72, 74-78, 81; Samanta Letter.)
Saregama contends that, because Saregama and Shakti agree that the Agreement validly assigns copyrights, Defendants cannot challenge the terms of the assignment. This argument is without merit. Saregama misquotes Imperial Residential Design, Inc. v. Palms Development Group, Inc., 70 F.3d 96, 99 (11th Cir.1995). In that case, the Court held that a third party could not challenge an
Finally, Saregama's evidence of royalties paid do not prove that Saregama owns copyrights. Indeed, Saregama's royalty payments to Shakti are consistent with a licensing arrangement. Therefore, because the Agreement's terms convey, at most, a two-year exclusive license to exploit Shakti's pre-recorded songs which reverts to a non-exclusive license thereafter, Saregama fails to demonstrate that the Agreement confers copyrights.
2. Whether the Agreement Covers the BMBH Sound Recording
Citing to Clause 4, Defendants argue that the Agreement only covers songs that Shakti delivers to Saregama during the two-year term: "[Shakti] shall ... supply [Gramophone] with sound tracks or recorded tapes ...." (See Agreement ¶ 4.) In response, Saregama argues that the Agreement covers all songs that Shakti created from January 15, 1967 to January 15, 1969. In either case, however, Saregama does not proffer any evidence which demonstrates that the BMBH sound recording was created during the term of the Agreement.
First, Saregama's corporate representative's declaration and deposition testimony are in conflict. In his declaration he states that the BMBH sound recording was created in 1968, but in his deposition he speculated that it could have been produced in 1969 and admitted that he did not have personal knowledge as to when the sound recording was produced. (See Ramji Decl. ¶ 7; Ramji Depo. at 84-85.) Second, Shakti's corporate representative Ashim Samanta admitted that he did not know when the film or the soundtrack was produced. (See Samanta Depo. at 17-18, 70-72.) Saregama submits Samanta's May 2009 letter as evidence, but the May 2009 letter is not probative because Samanta conceded in his deposition that he did not draft the May 2009 letter and that he has no personal knowledge as to when the BMBH sound recording was created. (See id.)
Saregama also refers to two letters from May 2, 1968 and August 7, 1968 between Shakti and Gramophone which describe a royalty arrangement for records produced from the film, but neither letter demonstrates when the BMBH sound recording was created. (See Letter 1, Letter 2.) To be sure, there is no evidence to show that the letters were not produced in advance of the film and soundtrack. Saregama also proffers a xerox copy of a vinyl record label, but the label does not show when the BMBH sound recording was produced. (See Record Label.) The release date on the record is illegible, and it names both Shakti and Gramophone in an inconclusive fashion, reserving "all rights of the manufacturer
Furthermore, Saregama's extract from the Indian Copyright Office does not establish when the BMBH sound recording was created. The extract does not indicate that the BMBH sound recording was produced before the Agreement's term expired on January 15, 1969. Rather, the extract merely indicates that "Aradhana" was published sometime in 1969. (See id.) Saregama finally argues that the 1967 Agreement provides for a one-year extension option to January 15, 1970, which would remove any doubt that it covered the BMBH sound recording. (See DE 204 at 3-4.) However, there is no evidence that this option was exercised. According to Saregama, it "has continually alleged that the document evidencing the option cannot be located, not that it does not exist." (See id.) However, liability discovery has closed and Saregama is obligated to proffer evidence of ownership at this juncture in order to survive summary judgment. Saregama, however, has failed to provide evidence demonstrating that the BMBH sound recording was created during the term of the Agreement.
3. Whether the Extract Qualifies as Prima Facie Evidence of Ownership
Saregama asserts that its extract should be given deference because U.S. copyright law provides that certificates of registration constitute prima facie evidence of ownership. See In Design v. Lauren Knitwear Corp., 782 F.Supp. 824, 829 (S.D.N.Y.1991). However, even assuming that the extract warranted deference from this Court, it is unclear what work the extract protects because the catalog number on the extract conflicts with the catalog number for the Aradhana film soundtrack on which the BMBH sound recording appears. Saregama's corporate representative testified that the catalog number on the extract ("SPH0830115") matched Saregama's internal catalog. (See Ramji Depo. at 43, 101.) However, Saregama's corporate representative later testified that the only catalog number for the complete Aradhana film soundtrack on which BMBH appears is "130327." (See Ramji Depo. 2 at 3.) Due to such inconsistency, the Court cannot give deference to the extract Saregama proffers.
In sum, there is no evidence to support that the BMBH sound recording was created during the term of the Agreement, nor is there evidence that the Agreement was extended for another year. Also, Saregama has not shown that the Agreement creates more than a licensing arrangement. Finally, neither Saregama's extract nor any other record evidence shows that Saregama has a copyright interest in the BMBH sound recording. Without any evidence to demonstrate ownership of the BMBH sound recording, the Court must deny Saregama's motion and grant Defendants' motion on this issue.
B. Whether Defendants' Copying is Legally Actionable
Defendants do not dispute that PYOG contains a sample of the BMBH sound recording. Rather, they maintain that the sampled snippet is an unoriginal and common vocal exercise, and that their expert's testimony as to originality stands unrefuted. However, in arriving at his conclusion that PYOG sampled BMBH, Saregama's expert Mr. Oxendale opined that the female vocal performance in BMBH was "distinctive and memorable." (See Oxendale Report at 2.)
Furthermore, Defendants misapprehend Saregama's burden to establish originality. To demonstrate originality, Saregama need only show that the female vocal expression in BMBH was original,
2. Substantial Similarity
Saregama contends that a substantial similarity inquiry is unnecessary where, as here, Defendants concede that PYOG sampled elements of BMBH. Alternatively, Saregama argues that the substantial similarity inquiry is not an element of its prima facie infringement claim, but is merely an affirmative defense. Saregama, however, misreads the binding law of this Circuit. A prima facie infringement claim requires proof of both factual copying and substantial similarity:
Peter Letterese, 533 F.3d at 1300-01.
(a) Applying the Substantial Similarity Test
As a threshold matter, the Court is obligated to perform a substantial similarity inquiry at the summary judgment stage:
Id. at 1302.
Two works are substantially similar if "an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work."
In a music composition copyright case, the Eleventh Circuit recently affirmed and adopted an order granting summary judgment for the defendant because its song "In Da Club" was not substantially similar to copyrightable aspects of the plaintiffs song "Its Your Birthday." Lil' Joe Wein Music, Inc. v. Jackson, 245 Fed.Appx. 873, 875 (11th Cir.2007). In addition to ruling that the "it's your birthday" phrase in both songs was an unoriginal aspect of the plaintiffs song, the court ruled that the similarity between the songs was de minimis:
Id. at 880.
Similarly, in Jean v. Bug Music, Inc., 2002 WL 287786 *2 (S.D.N.Y. Feb. 27, 2002), the court ruled that two songs were not substantially similar where, "the songs, taken as a whole, [were] substantially different," and "the only identical portions of the two songs are the first three words and notes," which the court found were common musical and lyrical phrases.
In this case, the only portion of BMBH found in PYOG is an approximately one-second snippet of a female vocal performance appearing at 0:21, 0:38, 1:49, and 2:52. (See Ricigliano Report ¶ 11; Oxendale Report at 2.) In PYOG, the one-second snippet is looped in the refrain of the song at 1:08, 2:03, 3:08, and 3:47. (See Ricigliano Report ¶ 15.) Other than the one-second snippet, the songs bear no similarities. Taken as a whole, PYOG and BMBH are completely different songs, with different lyrical content, tempo, rhythms, and arrangements. Indeed, it is highly unlikely that the average lay observer could discern the source of the one-second snippet without prior warning. Saregama's expert claims that the snippet is unique, however he did not compare the works to determine the snippet's relative importance in each song or whether the songs are similar as a whole. By contrast, Defendants' expert opined that PYOG and BMBH are dissimilar as a whole. (See Ricigliano Report ¶ 26.) To be sure, no reasonable jury, properly instructed, would mistake PYOG for BMBH or conclude that the two works were substantially similar.
(b) Substantial Similarity and Sound Recordings: The Bridgeport Case
As an alternative position, Saregama contends that sound recordings like BMBH must be treated differently from other forms of copyrightable work, relying on Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir.2005). There the Sixth Circuit held that any sampling of a sound recording constitutes infringement, no matter how small the sampled snippet. Id. at 798-805. However, the Sixth Circuit's decision to carve out an exception for sound recordings has not been followed in this Circuit. Indeed, the
Leigh v. Warner Bros., Inc., 212 F.3d 1210, 1214 (11th Cir.2000) (citations omitted) (emphasis supplied). Therefore, although factually similar, the Bridgeport court's exception for sound recordings presents a departure from Eleventh Circuit precedent.
Saregama also fails to persuade the Court that, in the future, the Eleventh Circuit will depart from the black-letter consensus, which requires proof of substantial similarity, to follow the Sixth Circuit's exception for sound recordings. In Bridgeport, the defendant sampled a two-second snippet of the plaintiffs copyrighted guitar solo, lowered and extended its pitch, and looped the snippet at five places throughout the background of the song. Id. at 796. The district court held that, although the sampled portion may have been important to the plaintiffs work, it would not be recognized by a lay observer, let alone an observer familiar with the plaintiffs work and was therefore not substantially similar. Bridgeport Music, Inc. v. Dimension Films, 230 F.Supp.2d 830, 842 (M.D.Tenn.2002).
The Sixth Circuit reversed. In essence, the Sixth Circuit held that the copyright statute dictated a broader scope of protection for sound recordings than that afforded to musical compositions or other types of copyrightable work. Bridgeport, 410 F.3d at 800-01. Rather than couching this distinction in the "copyright-granting" statutory provisions of 17 U.S.C. § 106,
It is not clear to this Court, however, why the Bridgeport court's reading of Section 114(b) follows inexorably from its text. First, Section 114(b)'s derivative-work provision addresses the scope of protection given to derivative works, not original works. There is no indication that Congress sought to expand the scope of protection for original works by redefining the term "derivative work" to include all works containing any sound from the original sound recording, whether those works bear substantial similarities to the original work or not. In other words, Section 114(b)'s derivative-work provision does not allow the Court to conclude that PYOG is a "derivative work" of, and thereby infringes on, BMBH merely because it contains a one-second snippet of BMBH.
Second, the Bridgeport court's reading of Section 114(b)'s similar-sounding work provision is more expansive than its text and legislative history suggest. The similar-sounding work provision reads:
17 U.S.C. § 114(b).
The Bridgeport court appears to interpret this language to mean that protection in a copyrighted sound recording extends to every sound fixed in the work such that a sample of any sound automatically constitutes infringement. However, a more plausible reading of this provision is that protection in a copyrighted sound recording "do[es] not extend" to sound recordings which, although similar-sounding, do not capture any sounds from the copyrighted sound recording. On this reading, an appropriate implication is that PYOG infringes on BMBH if PYOG both: (1) samples any sound from BMBH; and (2) "imitate[s] or simulate[s]" BMBH.
17 U.S.C. § 114, H. Rep. No. 94-1476, p. 106, U.S.Code Cong. & Admin.News 1976, pp. 5659, 5721 (emphasis added).
In sum, Section 114(b) does not seem to support the distinction between sound recordings and all other forms of copyrightable work that the Bridgeport court imposes. Apart from its reading of the statute, the Bridgeport court proffers a variety of policy-based arguments for treating sound recordings differently than other copyrightable work. See Bridgeport, 410 F.3d at 800-05. The Bridgeport court's policy prescriptions, however accurate they may be, do not present grounds for this Court to follow its direction. Therefore, the Court will grant Defendants' motion and deny Saregama's motion on this issue.
C. Saregama's Motion for Voluntary Dismissal
Saregama seeks dismissal of its music composition infringement claim against the WB-Universal Defendants on the condition that each party bear its own fees. However, Saregama has not demonstrated why the Court should preclude the WB-Universal Defendants from even attempting to prove an entitlement to fees on the musical composition claim. While the Court makes no decision on whether the WB-Defendants are entitled to fees on the musical composition claim, it will grant Saregama's motion for voluntary dismissal with prejudice without addressing any issue that would bear on the WB-Universal Defendants' opportunity or right to seek fees. If the WB-Universal Defendants believe
As discussed above, the Court will grant Defendants' motion and deny Saregama's motion as to the ownership issue because the 1967 Agreement confers no more than a license to exploit Shakti's pre-recorded songs and there is no evidence from which a reasonable jury could conclude that the BMBH sound recording was created during the term of the Agreement or that copyrights in the BMBH sound recording were subsequently conveyed to Saregama. Further, although the Court will deny Defendants' motion as to the originality issue, it will grant Defendants' motion as to the substantial similarity issue and deny Saregama's motion because no reasonably jury, properly instructed, could find that the two songs are similar. Because the Court finds Defendants' motion dispositive on both elements of Saregama's prima facie infringement case, it need not consider the individual motions of Defendants G-Unit and Desperado Entertainment. Accordingly, it is hereby
(1) Defendants' Motion for Summary Judgment [DE 176] is GRANTED.
(2) Saregama's Motion for Summary Judgment [DE 181] is DENIED.
(3) Saregama's Motion for Voluntary Dismissal [DE 148] is GRANTED IN PART. The musical composition claim against the WB-Universal Defendants is DISMISSED WITH PREJUDICE.
(4) All pending motions not otherwise ruled upon are DENIED AS MOOT.
(5) This case is CLOSED.
(See Agreement ¶ 4.)
Indian Copyright Act ("ICA") Chapter 1, Section 2(t).
Bridgeport, 410 F.3d at 799-800 (citing 17 U.S.C. §§ 106, 114(a)).
Id. at 800-01.
4-13 Nimmer on Copyright § 13.03.