BRIDGEPORT MUSIC, INC., et al. v. DIMENSION FILMS, et al. n1
n1 This action was originally captioned "Bridgeport Music,
Inc. et al. v. 11C Music, et al." based on the original
complaint (filed May 4, 2001; Docket Entry No. 1), which was
almost one thousand pages in length and alleged close to
five hundred causes of action against approximately eight
hundred defendants. The Court severed the case by count into
476 surviving cases by Order dated July 25, 2001 (Docket
Entry No. 349). The First Amended Complaint (filed Sept. 28,
2001; Docket No. 436) was filed against the remaining
defendants, Dimension Films, No Limit Films and Miramax Film
Corp., and the caption changed accordingly.
No. 3:01-0412 Jury Demand
UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF
TENNESSEE, NASHVILLE DIVISION
230 F. Supp. 2d 830; 2002 U.S. Dist. LEXIS 21705; 65
U.S.P.Q.2D (BNA) 1119; Copy. L. Rep. (CCH) P28,532
October 11, 2002, Decided
October 11, 2002, Entered
THOMAS A. HIGGINS, United States District Judge.
OPINION:
[*831] MEMORANDUM
Pending before the Court is defendant No Limit Films's motion for summary
judgment (filed June 21, 2002; Docket Entry No. 525). The defendant has filed
the following in support of its motion: a memorandum (filed June 21, 2002;
Docket Entry No. 526); a statement of undisputed facts (filed June 21, 2002;
Docket Entry No. 527); and the declarations [**2] of Earl V. Spielman (filed
June 21, 2002; Docket Entry No. 528), Madeleine Smith (filed June 21, 2002;
Docket Entry No. 529), and Susan Bell (filed June 21, 2002; Docket Entry No.
530). The plaintiffs have filed the [*832] following in opposition to the
motion: a response memorandum (filed Aug. 20, 2002; Docket Entry No. 570);
responses to the defendant's statement of undisputed facts (filed Aug. 20, 2002;
Docket Entry No. 571); the declarations of Armen Boladian (filed Aug. 20, 2002;
Docket Entry No. 572), Jane Peterer (filed Aug. 20, 2002; Docket Entry No. 573),
Randy Kling (filed Aug. 20, 2002; Docket Entry No. 574), Alexander Stewart
(filed Aug. 20, 2002; Docket Entry No. 575), and Vivian Junkins (filed Aug. 20,
2002; Docket Entry No. 576); deposition transcript excerpts (filed Aug. 20,
2002; Docket Entry No. 577); and a statement of additional material facts as to
which the plaintiffs claim exist genuine issues to be tried (filed Aug. 20,
2002; Docket Entry No. 578). The defendant has filed a response to the
plaintiffs' additional material facts (filed Sept. 3, 2002; Docket Entry No.
581), and, at the request of the Magistrate Judge n2, a supplemental memorandum
in support of its motion [**3] (Sept. 6, 2002; Docket Entry No. 586). The
plaintiffs have also filed at the Magistrate Judge's request a supplementary
brief in opposition (filed Sept. 6, 2002; Docket Entry No. 587). Also before the
Court is the supplement to the record filed by the plaintiffs pursuant to an
order of the Court (entered Oct. 8, 2002; Docket Entry No. 599).
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n2 This motion was originally referred to the Magistrate Judge for a report
and recommendation as to disposition (entered Feb. 22, 2002; Docket Entry No.
573). The reference has been withdrawn in order to expedite a decision of this
motion before the commencement of trial on Nov. 12, 2002 (entered Sept. 27,
2002; Docket Entry No. 592).
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After careful consideration of the record, the motion is granted.
DEFENDANT'S MOTION FOR SUMMARY JUDGMENT
Defendant asserts that it cannot be found liable for copyright infringement
for the following reasons: (1) it possessed a valid license from at least one of
Bridgeport's co-owners of the allegedly infringed work "100 Miles and Runnin'"
[**4] (hereinafter "100 Miles"); (2) Bridgeport executed a release related to
"100 Miles"; (3) the portion of Bridgeport's composition "Get Off Your Ass and
Jam" (hereinafter "Get Off") that was sampled by "100 Miles" is de minimis and
therefore not subject to the protection of the copyright laws; and (4) the
portion of Westbound's sound recording of "Get Off Your Ass and Jam" that was
sampled by "100 Miles" is de minimis and therefore not subject to the protection
of the copyright laws.
Defendant also asserts that any claims by plaintiffs Southfield Music, Inc.
and Nine Records, Inc. should be dismissed because they do not own any interest
in the songs at issue here. Southfield was previously dismissed by order of the
Court (entered Aug. 14, 2002; Docket Entry No. 564). The plaintiffs in their
response having voluntarily agreed to dismiss any claims by Nine, this plaintiff
also will be dismissed.
SUMMARY JUDGMENT STANDARD
Rule 56(c) of the Federal Rules of Civil Procedure provides that summary
judgment may be rendered if "the pleadings, depositions, answers to
interrogatories, and admissions on file, together with the affidavits, if any,
show that there is no genuine issue [**5] as to any material fact, and that the
moving party is entitled to a judgment as a matter of law."
In order to prevail, the movant has the burden of proving the absence of a
genuine issue of material fact as to an essential element of the opposing party
's claim. Celotex Corp. v. Catrett, 477 U.S. 317, 106 S. Ct. 2548, 2553, 91 L.
Ed. 2d 265 (1986). The substantive law governing the claims [*833] will
identify which facts are material. In determining whether the movant has met its
burden, the Court must view the evidence in the light most favorable to the
non-moving party. Matsushita Electric Indus. v. Zenith Radio Corp., 475 U.S.
574, 106 S. Ct. 1348, 1356, 89 L. Ed. 2d 538 (1986).
In order to defeat the motion, the non-moving party is required to show,
after an adequate time for discovery, that there is a genuine issue of fact as
to every essential element of that party's case upon which it will bear the
burden of proof at trial. Celotex Corp., 106 S. Ct. at 2553. In making this
showing, the non-moving party may not merely rest on conclusory allegations
contained in the complaint, but must produce affirmative evidence supporting its
claims. [**6] Id. In order to create a genuine factual issue, the non-moving
party must show "there is sufficient evidence favoring the non-moving party for
a jury to return a verdict for that party." Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 106 S. Ct. 2505, 2511, 91 L. Ed. 2d 202 (1986).
As an initial matter, the Court must sort out the claims asserted by each
plaintiff and their relation to the allegedly infringing activity of the
defendant. Plaintiff Bridgeport appears to assert that the defendant has
infringed both its rights in the musical composition "Get Off" and its rights in
the musical composition "100 Miles." Plaintiff Westbound asserts that the
defendant has infringed its rights in the sound recording of "Get Off" because a
sample of the sound recording of "Get Off" is used in "100 Miles," which appears
in defendant's film. n3
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n3 Westbound has offered no proof of any ownership interest in the sound
recording of "100 Miles."
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I.
LICENSE DEFENSE
The following facts are undisputed. [**7] In May 1998, defendant released a
film entitled I Got the Hook Up, which included on its soundtrack a recording of
the song "100 Miles." The musical composition "100 Miles" was originally
co-owned by Dollarz N Sense Music ("DNSM"), Ruthless Attack Muzick ("RAM"),
Stone Agate Music and Hancock Music. In December 1998, Bridgeport acquired a
twenty-five percent interest in the musical composition "100 Miles" as
compensation for the use in "100 Miles" of a sample of the Bridgeport
composition "Get Off."
Defendant claims that the original co-owners of "100 Miles" granted it an
oral license to use the composition in its film during the summer of 1998. In
June 2002, the original owners executed synchronization licenses to defendant
that purport to be retroactive to the release date of the film. Defendant claims
that by virtue of both the oral license granted in the summer of 1998 and the
written licenses executed in June 2002, it has a valid license to utilize "100
Miles" in its film that defeats any claim of infringement by Bridgeport. n4
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n4 The defense of license applies only to Bridgeport's claims since Westbound
is not a co-owner of "100 Miles."
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Bridgeport claims that any license granted to defendant by the original
owners does not grant a license for use of Bridgeport's twenty-five percent
interest in "100 Miles" or for the use of the "Get Off" sample. Bridgeport
relies upon the terms of the 2002 licenses, which state the percentage interest
being granted by each of the original owners, to argue that the licenses only
authorize the use of each of the original owner's interest, not the work in its
entirety.
[*834] The Release and Agreement
Bridgeport acquired a twenty-five percent interest in the musical composition
"100 Miles" by way of a Release and Agreement dated December 22, 1998, between
Bridgeport, RAM and DNSM (Docket Entry No. 529, Ex. A). n5 Defendant claims that
it is a beneficiary of the Release and Agreement as a licensee of the named
licensees to the Agreement. The Agreement provides:
1. Bridgeport hereby grants to Licensee, its licensees and assigns the
irrevocable right to embody the Sample [Get Off] as part of the
Composition [100 Miles] and to reproduce, distribute and otherwise
exploit the Sample as part of the Composition in all media, including
without limitation all record formats, [**9] whether now known or
hereafter developed, throughout the world in perpetuity.
2. Bridgeport hereby releases and discharges Licensee, its respective
representatives, licensees, successors and assigns (the "Released
Parties") from all actions, controversies, contracts, damages,
judgments, claims and demands whatsoever, in law or in equity, which
Bridgeport, its assigns and successors may now or hereafter have
against the Released Parties with regard to the Composition, excluding
only the terms set forth in this agreement.
[Emphasis added.] The defendant claims that this language specifically
authorized its use of "100 Miles" as a licensee of DNSM and RAM, Bridgeport's
co-owners. Additionally, the defendant claims that the release provision applies
to the defendant and bars this action against it for use of "100 Miles."
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n5 The Release and Agreement is an exhibit to the declaration of Madeleine
Smith (filed June 21, 2002; Docket Entry No. 529), which does not lay a proper
foundation for the admission of any of the exhibits into evidence. However,
since plaintiffs have not objected to admission of the Release and Agreement,
any objections are deemed to be waived.
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Bridgeport's brief does not address whether the defendant is a licensee of
RAM and DNSM and therefore entitled to exploit Bridgeport's interest in "100
Miles" pursuant to the terms of the Agreement. Bridgeport instead focuses on the
retroactive licenses and arguing that "there is a fact issue as to whether a
retroactive license will validate earlier acts of unlicensed infringement"
(Docket No. 570 at 8). Bridgeport claims that the release clause in the
Agreement does not benefit defendant because: (1) Bridgeport could not have
knowingly released its claims against defendant for the use of "100 Miles" in
the film I Got the Hook Up in December 1998 because fact issues exist as to
whether Bridgeport was aware of the use at that time; (2) the defendant was not
a licensee of DNSM or RAM in December 1998, when the Agreement was executed, or
in 1991, the effective date of the Agreement; (3) "Composition" is defined in
the agreement as "all versions of '100 Miles and Runnin'' which contain the
Sample," and, accordingly to Bridgeport, a "version" of a composition "never
refers to a synchronization use in the industry," therefore the Agreement does
not apply to defendant's license to use [**11] "100 Miles" in a film; and (4)
the language of the Agreement reserves to Bridgeport the exclusive right to
administer its share of "100 Miles" and RAM and DNSM had no right to license
Bridgeport's share (Docket Entry No. 570 at 13-14).
Bridgeport apparently concedes that, if defendant is a licensee of RAM and/
or DNSM, then it can exploit "100 Miles" in accordance with the terms of the
Agreement. [*835] The Court finds that the language of paragraph 1 of the
Agreement is clear and unambiguous in granting the Licensees (RAM and DNSM) the
right to extend licensing privileges to their licensees and assigns. The Court
also rejects the plaintiffs' interpretation regarding the Agreement's
applicability to synchronization licenses. Paragraph 1 clearly applies to "all
media" with no limitation to sound recordings only. The language of paragraph 1
is unambiguous and therefore there is no need to consider extrinsic evidence as
to industry practice.
The plaintiffs further claim that because Bridgeport reserved in paragraph 6
the exclusive right to administer and exploit its percentage ownership of the
composition, no other co-owner had the right to license Bridgeport's interest in
the work. The [**12] Court finds that such an interpretation strains the
language of the Agreement. If the Court adopted Bridgeport's interpretation, it
would vitiate the rights granted by paragraph 1 "to reproduce, distribute and
otherwise exploit the Sample as part of the Composition in all media." The
better interpretation of paragraph 6 is that Bridgeport sought to affirm that
its rights regarding the interest it then was acquiring were in no way impaired.
It is conceded by both parties that co-owners have a legal right to grant a
license to a work without another co-owner's permission. See, e.g., Geshwind v.
Garrick, 734 F. Supp. 644, 651 (S.D.N.Y. 1990), aff'd without op., 927 F.2d 594
(2d Cir.), cert. denied, 112 S. Ct. 58 (1991); Nimmer on Copyright § 6.10 at
6-30. In order for the Court to find a limitation on that right, it must be
clear from the language of the Agreement that the parties so intended. No such
clear language is presented here.
Therefore, if defendant is found to possess a valid license from RAM and/ or
DNSM for use of the composition "100 Miles," then the Release and Agreement will
operate as an absolute defense to the claim [**13] of copyright infringement.
Moreover, the release clause, paragraph 2, is equally unambiguous and also
operates as a bar provided that defendant had a valid license from either RAM or
DNSM.
The Validity of the Oral Licenses
Defendant claims that it obtained an oral synchronization license for use of
"100 Miles" from the original owners in the summer of 1998 (Docket No. 529, P
8). Bridgeport does not dispute that an oral license was granted (Docket No.
578, P 60). Evidence submitted by Bridgeport supports the existence of an oral
license (id. at Exs. 119 and 181; Docket No. 577, Ex. 7 at 99:7-22). However,
Bridgeport claims that at the time of the oral license, defendant was on notice
that Bridgeport claimed an interest in "100 Miles" because of its sampling of
"Get Off," even if it didn't yet own an interest in the song (Docket No. 578 at
P 62). The defendant points out that Bridgeport's proof n6 on this issue does
not establish that the defendant had actual or constructive notice of this fact,
only that Madeleine Smith of Songwriter Services, [*836] an entity unrelated
to the defendant, was aware of Bridgeport's claims. Richard Joseph, the attorney
that handled the film's transactional [**14] work on behalf of the defendant,
testified that, to his knowledge, Songwriter Services did not notify No Limit of
Bridgeport's claim to "100 Miles" (Docket Entry No. 577, Ex. 4 at 108:1-5).
Madeleine Smith testified that Songwriter Services was retained by Priority
Records, not the defendant, to handle clearance of "100 Miles" for inclusion in
the film (id., Ex. 6 at 37:6-38:2 and Ex. 7 at 100:9-12). Bridgeport presents no
evidence that contradicts this testimony.
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n6 The Court is compelled to comment on plaintiffs' Statement of Additional
Material Facts (Docket No. 578), which is far from "concise," and which contains
many assertions that are not facts (see, e.g., PP 11, 25, 33, 35-37, 40, 64-65),
many facts that are immaterial to the issues raised on summary judgment (see,
e.g., PP 20-28), and many facts that are inadequately supported by citations to
evidence in the record. The purpose of these statements is to aid the Court in
quickly identifying any issues of material fact that might preclude summary
judgment. It does not aid the Court to be forced to re-read every assertion made
in a party's brief that has been reformulated into a numbered paragraph.
Plaintiffs are admonished to discontinue this practice regarding Local Rule
8(b)(7) statements or risk having such statements stricken from the record.
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Based on the record, it appears that an oral agreement was obtained from
several of the original owners of "100 Miles" to provide a synchronization
license to the defendant. Ms. Smith's testimony shows that she approved the
synchronization license on behalf of RAM and DNSM in her capacity as publishing
administrator for those entities (Docket No. 577, Ex. 7 at 99:7-22) and that she
considered the clearance process for the synchronization license to be complete
pending issuance of the final license (id. at 117:1-118:2, and 127:10-11).
Bridgeport produced a letter dated April 3, 1998, from the attorneys for Hancock
Music to Songwriter Services outlining the terms for the use of the song in the
film (Docket No. 578, Ex. 181). While the letter mentions that Hancock Music
controlled twenty-five percent of the song, the letter makes no mention that the
authorized use was restricted to Hancock's twenty-five percent interest, only
that its approval was subject to Hancock's receipt of its portion of the
synchronization fee. It appears from subsequent memoranda from Songwriter
Services (Docket No. 578 at 155 and 157) and Ms. Smith's deposition testimony
(Docket No. 577, Ex. 7 at 115:10-15) [**16] that the terms were modified to
increase the synchronization fee to match defendant's usage of an additional
twenty seconds of the song, but there is no other evidence that the terms of the
final oral license were different than those delineated in the April 3, 1998
letter. It also appears that the terms were finalized prior to Bridgeport
obtaining any ownership interest in the song (Docket No. 577, Ex. 7 at 183:20 to
186:23). Therefore, the Court finds that the defendant obtained a valid oral
license from at least one of the original owners for use of "100 Miles" prior to
Bridgeport obtaining any ownership interest in the song.
After reviewing the entire record, it is clear that the real dispute here
lies between Bridgeport and RAM over RAM's failure to properly account to
Bridgeport for all income earned by "100 Miles" prior to the execution of the
Release and Agreement (see Docket No. 577, Ex. 7 at 116:4-12 n7, 117:1-8,
117:13-118:2, 126:22-127:4, 186:7-20). The terms of the Release and Agreement
make clear that Bridgeport's remedy for its failure to receive a portion of the
synchronization fee arises from RAM's obligations under the Release and
Agreement, not under the copyright [**17] laws.
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n7 It is noted that Bridgeport disputes Ms. Smith's testimony that she
notified Ms. Peterer of the pending film deal, and that Ms. Peterer has stated
in her declaration (filed June 21, 2002; Docket Entry No. 573, P 15) that she
discovered the use of "100 Miles" in December 2000. This disputed fact is not
material to defendant's summary judgment motion, because the evidence clearly
supports the existence of an agreement to provide a synchronization license
prior to Bridgeport ever obtaining an ownership interest therein.
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The Retroactive Synchronization Licenses
Defendant relies, alternatively, on written licenses issued retroactively by
RAM, DNSM and Hancock Music in June of 2002. The plaintiffs argue that these
licenses are invalid because they are an attempt to retroactively validate prior
acts of infringement. [*837] See Leicester v. Warner Bros., 47 U.S.P.Q.2d
1501, 1998 U.S. Dist. LEXIS 8366 (C.D. Cal. 1998), aff'd, 232 F.3d 1212 (2d Cir.
2000). In Leicester, [**18] a real estate developer employed an artist to
create sculptural elements for inclusion in the courtyard of a building under
construction in Los Angeles. The artist granted the owner the exclusive right to
make three-dimensional copies of the work, and a non-exclusive right to make
two-dimensional or pictorial copies. The developer allowed a motion picture
company to film the sculptural elements as part of a movie. The artist sued the
motion picture company, claiming infringement, on the grounds that the developer
did not have the right to sub-license his non-exclusive right to make
two-dimensional or pictorial copies. During the course of the litigation, the
developer was granted a "sub-license" by the building's architect, who the court
found to be a co-owner with the artist of some of the elements. The court found
that the architect could not grant a sub-license to the developer because a
non-exclusive license could not be sub-licensed. Id. at *17, 1998 U.S. Dist.
LEXIS 8366. The plaintiffs rely on the court's second reason for rejecting the
post-litigation license as a defense: that at the time Warner Bros. took the
pictures and made pictorial reproductions, it did not have a license to do so,
and therefore [**19] any infringing activity by Warner Bros. could not be later
validated by the grant of a license. Id.
Here, the Court has found that the defendant already had a valid, oral
license from the same co-owners prior to their issuance of any retroactive
license. The written license agreements only serve to memorialize terms already
agreed upon earlier and do not act as a contrivance to avoid copyright
infringement liability. Leicester, therefore, is clearly distinguishable. See
Great Southern Homes, Inc. v. Johnson & Thompson Realtors, 797 F. Supp. 609, 612
(M.D. Tenn. 1992) (recognizing validity of retroactive license that memorialized
grant of oral license).
The plaintiffs also argue that the written licenses do not purport to license
the entirety of "100 Miles," only those portions of the song owned by RAM, DNSM
and Hancock Music, and therefore the defendant was required to obtain Bridgeport
's approval to avoid infringing upon Bridgeport's interest in the song. Each
license lists the ownership interest of the licensor as it was on June 26, 1998,
prior to the Release and Agreement granting Bridgeport its interest in the song:
36% interest for RAM, 25% interest [**20] for Hancock Music, and 14% interest
for DNSM. n8
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n8 There is no evidence in the record that the fourth original owner of the
remaining 25% interest, Stone Agate Music, issued a written license, and scant
evidence that Stone Agate agreed to the terms for the oral license. However, the
plaintiffs have not produced any evidence to contradict Ms. Smith's assertion
that Stone Agate also granted an oral license in 1998 (Docket Entry No. 529, PP
7-8).
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The parties do not dispute that, in general, a co-owner may grant a
non-exclusive license for use of a copyright without having to obtain the
permission of its co-owners, so long as that co-owner properly accounts to the
others for their respective share of the monies received from the license. See
Melville B. Nimmer and David Nimmer, Nimmer on Copyright § 6.10, at 6-30. The
plaintiffs respond that, based on principles of tenancy-in-common, a co-owner
may not encumber the whole without permission of its co-owners. However, a
non-exclusive license does not "encumber" [**21] the copyrighted work -- the
license in no way interferes with Bridgeport's use and exploitation of its
interest in "100 Miles." Bridgeport remains free to copy, distribute and perform
[*838] the work (to the extent not otherwise contractually restricted by the
Release and Agreement), or to issue non-exclusive licenses of its own.
The plaintiffs next argue that the basic rule that co-owners may license the
whole work without permission of other co-owners does not insulate the licensee
from an infringement claim by another co-owner if the license is issued for use
of the licensing co-owner's interest only, and not for the entire work. Even if
this may be the case, the Court will not find that a license is intended to
apply to less than the whole of a work without a strong showing that this was
the intent of the parties, which the plaintiffs have not shown here. The license
grants the right to synchronize, perform or record "the music and words of the
musical composition set forth below" (Docket Entry No. 529, Exs. B, C and D).
The musical composition is described by its title as "100 Miles and Runnin'."
There is nothing in the language of the license that limits the licensee's use
to only [**22] the portion of the song owned by the licensor. The plaintiffs
have offered no evidence that even suggests that the licensees intended to
license only their portion of the song. Therefore, the plaintiffs' argument must
fail.
Lastly, the plaintiffs argue that the Court should take into consideration
industry custom and practice in determining whether the license was intended to
apply to the work as a whole or only that portion owned by the licensee. The
plaintiffs argue that it is the established practice in the film industry for a
film maker who wishes to use a song in its film to obtain permission from each
of the publishers of the composition, and that such practices are further
indicative of the parties' intent here in entering into the licenses. The Court
does not find the language of the licenses ambiguous, and therefore there is no
need to resort to industry custom and practice to illuminate the intent of the
parties. Moreover, even if the Court concluded that the parties intended to
obtain consents from each co-owner, Bridgeport was not a co-owner at the time of
the oral license, and the plaintiffs point to no obligation, at law or in
contract, that requires the defendant to [**23] renegotiate the license with
Bridgeport once it obtained an ownership interest.
The Court therefore finds that the defendant is entitled to dismissal of all
claims arising from infringement of the musical composition "100 Miles." The
Court further finds that the Release and Agreement authorized the use of "Get
Off" in the song "100 Miles," therefore the defendant is entitled to dismissal
of all claims arising from the infringement of the musical composition "Get Off.
"
II.
REMAINING CLAIM FOR INFRINGEMENT ARISING FROM USE OF "GET OFF" SAMPLE
The only remaining claim is by plaintiff Westbound for the unauthorized use
of the sound recording "Get Off" in "100 Miles." The defendant argues that this
claim must fail for two reasons: (1) the portion of "Get Off" that was copied
was not original and therefore not protected by copyright law; (2) the sample of
"Get Off" is legally insubstantial and therefore the sample does not amount to
actionable copying under copyright law. For the purposes of this motion, it is
assumed that the complained-of sample was digitally copied from the sound
recording of "Get Off" since the defendant does not argue otherwise.
Originality
The defendant [**24] argues that the portion of "Get Off" that was sampled
is a commonly used collection of notes that, standing alone, is not entitled to
copyright [*839] protection. While the plaintiffs are correct that a
rebuttable presumption of originality is raised by evidence of copyright
registration, this presumption adheres to the work as a whole. See Murray Hill
Publications v. ABC Communications, 264 F.3d 622, 632 (6th Cir. 2001). A
defendant may still prove that any element of the work standing alone is not
entitled to copyright protection if that element is not original. See Quinn v.
City of Detroit, 23 F. Supp. 2d 741, 746-47 (E.D. Mich. 1998) (copyright
protection extends only to component parts of work that are original to author).
The burden falls on the defendant to show that the infringed work is not
original. See ZZ Top v. Chrysler Corp., 54 F. Supp. 2d 983, 985 (W.D. Wash.
1999).
The portion of the song at issue here is an arpeggiated chord -- that is,
three notes that, if struck together, comprise a chord but instead are played
one at a time in very quick succession -- that is repeated several times at the
opening of "Get Off." The arpeggiated [**25] chord is played on an
unaccompanied electric guitar. The rapidity of the notes and the way they are
played produce a high-pitched, whirling sound that captures the listener's
attention and creates anticipation of what is to follow.
The defendant claims that this chord is a commonly used three-note figure.
The plaintiffs claim that the chord is totally unique. The Court believes that
the question does not turn on the originality of the chord n9, but in the use of
and the aural effect produced by the way the notes in the chord are played,
especially here where copying of the sound recording is at issue. See M.M.
Business Forms Corp. v. Uarco, Inc., 472 F.2d 1137, 1139 (6th Cir. 1973) ("any
'distinguishable variation' resulting from an author's independent creative
endeavor will constitute sufficient originality"); see also Newton v. Diamond,
204 F. Supp. 2d 1244, 1249-50 (C.D. Cal. 2002) (explaining differences between
musical composition and sound recording).
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n9 The Court must be "mindful of the limited number of notes and chords
available to composers." Gaste v. Kaiserman, 863 F.2d 1061, 1068 (2d Cir. 1988).
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After carefully listening to the recording of "Get Off," n10 the Court finds
that a jury could reasonably conclude that the way the arpeggiated chord is used
and memorialized in the "Get Off" sound recording is original and creative and
therefore entitled to copyright protection. Thus, summary judgment on the basis
of lack of originality is not warranted. Cf. Newton v. Diamond, 204 F. Supp. 2d
at 1256 (any originality of sample came from plaintiff's particular performance
techniques as captured on sound recording, to which plaintiff did not own
copyright).
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n10 The originality focus must be on the work that is copied, not the
infringing work, because there can be no infringement if the portion of the
original work that was copied is not entitled to copyright protection. See
Murray Hill Publications, 264 F.3d at 633.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
De Minimis Use
Next, the defendant argues that the amount of "Get Off" that is sampled is a
de minimis use as a matter of law and therefore no actionable [**27] copying
occurred. The defendant argues that the copied chord is neither quantitatively
nor qualitatively significant to the plaintiffs' copyright interests in "Get Off
" and therefore any copying of the chord is not actionable as a matter of law.
The Sixth Circuit has recognized that the principle of de minimis non curat
lex ("the law cares not for trifles") can be applied as a defense to copyright
infringement if it can be shown that a substantial amount of the copyrighted
work was not [*840] taken. Matthews Conveyor Co. v. Palmer-Bee Co., 135 F.2d
73, 85 (6th Cir. 1943) (affirming dismissal of copyright infringement claims on
grounds of de minimis use and fair use). The Court's role in making a de minimis
analysis is a tricky one. It must balance the interests protected by the
copyright laws against the stifling effect that overly rigid enforcement of
these laws may have on the artistic development of new works. See Warner Bros.
Inc. v. American Broadcasting Cos., 720 F.2d 231, 240 (2d Cir. 1983) (discussing
tension between fostering creativity and assuring author benefits from
commercial success of his or her work). This role becomes even more [**28]
challenging when presented with works from two genres of music with which many
jurists (and most likely many jurors of this District) are not familiar, and the
paucity of case law on the issue of whether digital sampling amounts to
copyright infringement n11. Further complicating the process is the lack of
clear road maps for de minimis analyses from the circuit courts or the Supreme
Court. Still, the case law does provide loosely-defined standards and quite a
bit of legal commentary has been written on digital sampling. The Court must
also be mindful not to pre-empt the jury's role in determining factual issues.
See CyberMedia, Inc. v. Symantec Corp., 19 F. Supp. 2d 1070, 1077 (N.D. Cal.
1998) ("even 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").
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n11 The Court has found the following cases involving digital music sampling;
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 127 L. Ed. 2d 500, 114 S. Ct.
1164 (1994) (fair use/ parody defense); Newton v. Diamond, 204 F. Supp. 2d 1244
(C.D. Cal. 2002) (no infringement; any original elements copied not contained in
musical composition); Williams v. Broadus, 2001 U.S. Dist. LEXIS 12894, 60
U.S.P.Q.2d 1051 (S.D.N.Y. 2001) (genuine issues of fact existed as to
substantial similarity of works); Tuff ' N' Rumble Management v. Profile
Records, 1997 U.S. Dist. LEXIS 4186, 42 U.S.P.Q.2d 1398 (S.D.N.Y. 1997) (summary
judgment for defendant where plaintiff did not prove copying or substantial
similarity); Jarvis v. A&M Records, 827 F. Supp. 282 )(D.N.J. 1993) (summary
judgment for defendant denied where facts existed as to substantial similarity);
Grand Upright Music Ltd. v. Warner Bros. Records, 780 F. Supp. 182 (S.D.N.Y.
1991) (infringement found without any substantial similarity analysis); and
Fantasy, Inc. v. La Face Records, 1997 U.S. Dist. LEXIS 9068, 43 U.S.P.Q.2d 1700
(N.D. Cal. 1997) (pre-1972 sound recording not protected by Copyright Act).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
[**29]
Legal Standards for De Minimis Analysis
"Among criteria for ascertaining infringement ... are whether so much has
been taken as would sensibly diminish the value of the original; and whether the
labors of the party entitled to copyright are substantially to an injurious
extent appropriated by another." Matthews Conveyor, 135 F.2d at 85. The de
minimis analysis falls under the rubric of the substantial similarity element
necessary to prove a copyright infringement claim. See Ringgold v. Black
Entertainment Television, 126 F.3d 70, 74 (2d Cir. 1997) (de minimis applies to
copying "at such a trivial extent as to fall below the quantitative threshold of
substantial similarity"). The plaintiff must show, in addition to proof of
copying, that the copied work and the allegedly infringing work are
substantially similar. Id. at 74 ("substantial similarity ... is always a
required element of actionable copying"); Mihalek Corp. v. Michigan, 814 F.2d
290, 296 (6th Cir.), cert. denied, 484 U.S. 986, 98 L. Ed. 2d 502, 108 S. Ct.
503 (1987). It is the plaintiff's burden to prove substantial [**30]
similarity. Mihalek, 814 F.2d at 294. One of the most common tests for
substantial similarity is "whether an average lay observer would recognize the
alleged copy as having been appropriated from the copyrighted work." Tuff ' N'
Rumble, 42 U.S.P.Q.2d at 1402. [*841] The de minimis analysis is therefore a
derivation of substantial similarity, where a defendant argues that the literal
copying of a small and insignificant portion of the copyrighted work should be
allowed. Warner Bros., 720 F.2d at 242.
Those courts that have addressed a de minimis defense in cases of digital
sampling have focused on "whether the defendant appropriated, either
quantitatively or qualitatively, 'constituent elements of the work that are
original'." Newton v. Diamond, 204 F. Supp. 2d at 1257, quoting Jarvis v. A&M
Records, 827 F. Supp. at 291. Another court, instead of a quantitative/
qualitative de minimis analysis, used Professor Nimmer's "fragmented literal
similarity" analysis n12 to determine whether substantial similarity existed.
See Williams v. Broadus, 60 U.S.P.Q.2d at 1054; Nimmer on Copyright [**31] §
13.03[A][2] at 13-45 & n.92.2 ("this aspect of the substantial similarity test
may be characterized as an inquiry as to whether the subject usage is
substantial or de minimis"). Either approach in this case will result in the
same outcome. The sample here does not rise to the level of a legally cognizable
appropriation.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n12 The sample here is an example of fragmented literal similarity because a
digital sample is an exact copy, albeit manipulated, of a fragment of the
original song. Professor Nimmer proffers the following test:
The question in each case is whether the similarity relates to matter
that constitutes a substantial portion of plaintiff's work -- not
whether such material constitutes a substantial portion of defendant's
work.[] The quantitative relation of the similar material to the total
material contained in plaintiff's work is certainly of importance.[]
However, even if the similar material is quantitatively small, if it
is qualitatively important, the trier of fact may properly find
substantial similarity.[] ... If, however, the similarity is only as
to nonessential matters, then a finding of no substantial similarity
should result.
Nimmer on Copyright § 13.03[A][2] (footnotes omitted).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [**32]
In "100 Miles," the sample of "Get Off" has been "looped" -- that is, the
portion of music consisting of the copied chord is repeated several times over.
The sample, according to plaintiffs' expert, is comprised of a two-second
portion of the chord section that is looped 14-16 times and appears at five
separate points in the song n13; each looped segment is approximately seven to
eight seconds long (by the Court's estimation). The total length of all copied
segments is therefore at the most 40 seconds. The total running time of "100
Miles" is approximately four and half minutes. The total running time of "Get
Off" is approximately two and half minutes. The quantitative use of the
plaintiffs' work is a mere fraction of the whole, but constitutes a more
significant portion of the work into which it is copied.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n13 See Expert Report of Randy Kling (filed Jun. 21, 2002; Docket Entry No.
530, Ex. B).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
As noted above, the quantitative use of the plaintiffs' work is only one
factor in either a de minimis or substantial [**33] similarity analysis. The
Court must also evaluate the qualitative use as well. See Compaq Computer Corp.
v. Ergonome Inc., 137 F. Supp. 2d 768, 779 (S.D. Tex. 2001), and cases cited
therein. "100 Miles" is a song about four black men on the run from the F.B.I.
who appear to be wrongfully pursued for some unmentioned crime. The looped
segment evokes the sound of police sirens; it is a background element in the
song. Qualitatively, the looped segment bears only passing resemblance to the
original chord that was copied. The looped segment has been slowed down to match
the tempo of the rest of "100 Miles," which also results in a lowering of the
pitch of the notes. Instead of producing a rising sense of anticipation, the
effect of the sample is to create tension and apprehension at the sound of
pursuing law enforcement. [*842] This effect is amplified by the repeated use
of the sample as the rapper describes the men's anger, anxiety and fatalism as
the chase continues.
In comparison, "Get Off" is a celebratory song -- it is essentially about
dancing. The work as a whole is characterized by a strong dance beat and a
display of intricate electric guitar playing. The only lyrics [**34] are two
expletives followed by "Get off your ass and jam" repeated over and over. There
are no similarities in mood or tone between the two works. The guitar
introduction, where the sampled chord is found, can be compared to the trumpet
call at the start of an anthem or march -- an attention-grabbing moment meant to
create anticipation. It bears no resemblance in tone or purpose to the sound of
sirens in "100 Miles." Cf. Warner Bros., 720 F.2d at 231 ("stirring one's
memory of a copyrighted character is not the same as appearing to be
substantially similar to that character, and only the latter is infringement")
(total perception of character from T.V. show not substantially similar to
Superman character).
The plaintiffs emphasize the importance of the sampled chord to the overall
effect of "Get Off," and the Court does not disagree with that analysis.
However, the Court finds that the copied segment is not even recognizable to a
lay observer as being appropriated from the plaintiffs' work. The siren sounds
in "100 Miles" are in the background, appear at irregular intervals, and their
similarity to the guitar introduction to "Get Off" is only apparent if one is
made [**35] aware of the attribution before hearing the sample. The Court finds
that no reasonable jury, even one familiar with the works of George Clinton (the
author of "Get Off"), would recognize the source of the sample without having
been told of its source. This fact, combined with the minimal quantitative
copying and the lack of qualitative similarity between the works, warrants
dismissal of Westbound's claims arising from infringement of its sound
recording. See Wickham v. Knoxville Int'l Energy Exposition, 739 F.2d 1094 (6th
Cir. 1984) ("a court may compare the two works and render a judgment for the
defendant on the ground that as a matter of law a trier of fact would not be
permitted to find substantial similarity").
The Court recognizes that the fact of blatant copying is not challenged by
the defendant for the purposes of this motion, and that the purposes of the
copyright laws is to deter wholesale plagiarism of prior works. However, a
balance must be struck between protecting an artist's interests, and depriving
other artists of the building blocks of future works. Since the advent of
Western music, musicians have freely borrowed themes and ideas from other
musicians. [**36] See Sherri Carl Hampel, Note, Are Samplers Getting a Bum
Rap?: Copyright Infringement or Technological Creativity?, 1992 U. Ill. L. Rev.
559, 583-4 (1992). If even an aficionado of George Clinton's music might not
readily ascertain that his music has been borrowed, the purposes of copyright
law would not be served by punishing the borrower for his creative use.
Also pending is the plaintiffs' motion for partial summary judgment (filed
June 21, 2002; Docket Entry No. 531), which seeks a determination that the
plaintiffs own the copyrights to the composition and sound recording of "Get
Off." Having dismissed the plaintiffs' copyright infringement claims, the issue
of ownership is now irrelevant, and the motion is denied as moot.
CONCLUSION
For the reasons stated above, the motion by defendant No Limit Films for
summary judgment is granted as follows: all claims based on infringement of
plaintiff [*843] Bridgeport Music's interest in the musical composition "100
Miles and Runnin'" are dismissed; all claims based on infringement of plaintiff
Bridgeport Music's musical composition "Get Off Your Ass and Jam" are dismissed;
all claims based on infringement of plaintiff [**37] Westbound Records' sound
recording of "Get Off Your Ass and Jam" are dismissed. The plaintiffs' motion
for partial summary judgment is denied as moot. There being no further claims
against the defendant, and no other remaining defendants, this action is
dismissed. An appropriate order will be entered.
THOMAS A. HIGGINS
United States District Judge
10-11-02
ORDER
In accordance with the memorandum contemporaneously entered, the motion of
the defendant, No Limit Films, for summary judgment (filed June 21, 2002; Docket
Entry No. 525) is granted and the claims of the plaintiffs, Bridgeport Music,
Inc. and Westbound Records, Inc., are dismissed with prejudice.
The claims of the plaintiff, Nine Records, Inc., are likewise dismissed with
prejudice, the plaintiffs having conceded that Nine Records does not own any
interest in the songs at issue.
The motion of plaintiffs, Bridgeport Music, Inc. and Westbound Records, Inc.,
for partial summary judgment (filed June 21, 2002; Docket Entry No. 531) is
denied as moot.
The entry of this order and the orders at Docket Entry Nos. 456, 542 and 564
shall constitute final judgment in this action.
IT IS SO ORDERED.
THOMAS A. HIGGINS
United [**38] States District Judge
10-11-02