Bieber, Usher and the Fourth Circuit Dancing About Architecture

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On a certain level, the June 18 decision from the Fourth Circuit in Copeland v. Bieber is fairly routine, with only the click-bait of pop star defendants Justin Bieber and Usher setting the case apart from any other copyright infringement case involving music. However, since this is an appellate decision, unlike the jury verdict in the Blurred Lines case which involved far more ink spilling and hand wringing, one might think there would be some precedential value here.

As we’ll see, this precedential value is somewhat limited as the Court merely reversed the granting of defendants’ motion to dismiss and remanded the case back to the trial court. However, the case does provide a primer as to what needs to be proved in a copyright infringement action involving music as well one in the limitations of trying to describe distinctions in two different songs.

Plaintiff Copeland alleges that Bieber and Usher infringed plaintiff’s song, entitled Somebody to Love in three different versions of their song, also called Somebody to Love. Absent direct proof of copying, a plaintiff must prove defendant(s) had access to his work and that the allegedly infringing work is “substantially similar” to plaintiff’s work. Defendants did not deny access to plaintiff’s song – only that their work and his were not “substantially similar.”

Here’s where the fun begins. To analyze whether there’s substantial similarity between the two works, the Court actually considers two different types of similarity: intrinsic similarity and extrinsic similarity. “Intrinsic similarity” is whether the intended audience, here the general public, taking into account all elements of the work (including non-copyrightable ones such as the song’s title or “feel”) could reasonably determine that the two songs in question are “substantially similar.”

On the other hand, “extrinsic similarity” purports to be an objective view of the original elements (and only the original elements, i.e., the copyrightable expression) in the two works. In other words, this is where two experts go to battle by picking apart specific original components of the two songs (such as the melody and lyrics) in a process the Court referred to as “analytic dissection.” (Parenthetically, despite plenty of analytic dissection by two highly qualified experts in the Blurred Lines case, the jury – and the popular press – seemed to focus far more on intrinsic, rather than extrinsic similarities.)

The Fourth Circuit undertook a de novo review as to whether a reasonable jury, taking into account the “total concept and feel” (which, again, may include both copyrightable and non-copyrightable elements), could find sufficient “intrinsic” similarity to support a finding of infringement. The Court started by listening to all four songs (plaintiff’s and the three versions of defendants’). The Court treated the three versions of defendants’ song as one: “By the unscientific intrinsic standard, the three Bieber and Usher songs are not just substantially similar to one another; they are the same.”

The Court first noted that although plaintiff’s song and defendants’ were in different genres (“the Copeland song is squarely within the R&B subgenre, while the Bieber and Usher songs would be labeled dance pop, perhaps with hints of electronic”), such differences in feel are not dispositive on the issue of substantial similarity:

For if a difference in genre were enough by itself to preclude intrinsic similarity, then nothing would prevent someone from translating, say, the Beatles’ songbook into a different genre, and then profiting from an unlicensed reggae or heavy metal version of “Hey Jude” on the ground that it is different in “concept and feel” than the original.

Fair enough. But what was the “intrinsic” similarity” the Fourth Circuit found which required reversal? The Court focused on similarities in the chorus or “hook” of both songs, which is typically the most important – and most repeated – part of any song. The Court then noted certain substantial similarities, in addition to the use of the uncopyrightable element of the title in the chorus:

It is not simply that both choruses contain the lyric “somebody to love”; it is that the lyric is delivered in what seems to be an almost identical rhythm and a strikingly similar melody. To us, it sounds as though there are a couple of points in the respective chorus melodies where the Bieber and Usher songs go up a note and the Copeland song goes down a note, or vice versa. In our view, however, a reasonable jury could find that these small variations would not prevent a member of the general public from hearing substantial similarity…. In both the Copeland song and the Bieber and Usher songs, the singing of the titular lyric is an anthemic, sing-along moment, delivered at high volume and pitch.

That’s pretty much the extent of the analysis, folks. Without the ability to hear, as the Court did, plaintiff’s and defendants’ songs side by side, how is this at all helpful? As anyone who’s clicked on my bio knows, I studied music in college, have represented composers and songwriters of various stripes and have done a fair amount of songwriting myself. And I can’t make much sense of the Court’s musical descriptions – and I doubt most other practitioners would find much guidance here, either.

In copyright cases involving visual works, courts routinely include pictures of the works in question, either directly in the text of the opinion or in an appendix. In this digital age, there’s no reason not to do the same with musical works, such as having a link to recordings on YouTube, SoundCloud, or the parties’ web sites. The Court, as the Supreme Court does with its summary syllabus, can include an appropriate disclaimer. Perhaps then these cases wouldn’t reflect the oft-quoted quip (that may have originated with Martin Mull) that “writing about music is like dancing about architecture.”

So what’s the takeaway here? For practitioners, if there’s any similarity at all in the “hook” in two songs, especially if they both include the title phrase, a plaintiff is likely to survive a motion to dismiss. That’s a boon for litigators and a bane for pop stars. Of course, here we can expect Bieber, Usher & Co. to move for summary judgment after discovery.

And finally, it’s nice to see law clerks in a Circuit other than the Second and Ninth (and at least regarding music, the Sixth), having some fun with a high profile infringement case.

The Director’s Cut Out of the Copyright by the Second Circuit

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In its June 29 opinion in 16 Casa Duse, LLC v. Merkin, the Second Circuit, citing the Ninth Circuit’s en banc decision in Garcia v. Google, held that a director does not have an independent copyrightable interest in a motion picture. In addition to affirming the District Court’s granting of summary judgment in favor of plaintiff producer, the Court’s 40-page decision also affirmed the plaintiff’s award of costs and attorney’s fees.

Plaintiff’s principal, Robert Krakovski, is the producer of a short film called Head’s Up. Krakovski purchased the film rights from the author of the underlying work and asked defendant, Alex Merkin, to direct the film for a fee of $1500.

Krakovski then proceeded to do what producers do: he assembled the film’s crew of about 30 people, including additional producers, cameramen, technicians and actors. He made all final hiring decisions. All personnel except Merkin entered into written work-for-hire agreements which stated that plaintiff would own and control all of the results of their collective efforts, including the worldwide copyrights to the film.

Krakovski clearly intended that Merkin sign a similar work-for-hire agreement while Merkin balked at this by refusing to respond to Krakovski’s emails. Meanwhile, Krakovski moved forward with the production, including scheduling, and scouting locations. Krakovski was still trying to get Merkin to sign an agreement a week before shooting was to commence. Despite the lack of a written agreement, Merkin directed the three days of shooting for the film.

Thereafter, with the main work-for-hire agreement still not signed, Krakovski asked Merkin to edit the film and the parties, sometimes directly and sometimes through Merkin’s lawyer, Reichman, attempted to negotiate a “media agreement,” which would have included the work-for-hire language. Krakovski provided Merkin with a hard drive of a rough cut of the film for Merkin to edit — despite their being no finalized agreement.

Notwithstanding his concession that Krakovski owned the rights to the screenplay, Merkin asserted that he owned the rights to the “rough cut” of the film and that Krakovski could not use Merkin’s work in the final film without his permission. While the dispute continued, Merkin registered a copyright in the “raw footage for the film Head’s Up” without informing Krakovski and listing himself as the sole author.

Krakovski submitted the film to various festivals and scheduled a private screening in New York City, which was to be followed by dinner at a nearby restaurant which he reserved with a non-refundable deposit. However, Merkin  crashed the party with a purported “cease and desist” notice to the screening venue, which made the venue cancel the screening, which, in turn made Krakovski lose his deposit with the restaurant. The lawsuit followed.

Plaintiff sought a judgment declaring: a) that plaintiff did not infringe defendants’ copyright; b) that defendants owned no copyright interest in the film; and (c) that Merkin’s copyright registration was invalid. Plaintiff also asserted state-law claims for tortious interference as well as attorney’s fees under both Section 505 of the Copyright Act and 28 U.S.C. § 1927. Defendants asserted various claims, including a judgment that a director of a film is an “author” for purposes of copyright.

The District Court granted summary judgment to plaintiff on all claims and assessed attorney’s fees against Merkin and sanctions against his attorney, Reichman. After some additional motions and submissions, the District Court entered a final order assessing damages from the canceled screening event in the amount of $1,956.58 and costs and attorney’s fees of $185,579.65, $175,634 of which Merkin and Reichman would have joint and several liability, with the remaining $9,945.65 assessed solely against Reichman. Merkin and Reichman appealed.

The Second Circuit framed this issue as follows:

This case requires us to answer a question of first impression in this Circuit: May a contributor to a creative work whose contributions are inseparable from, and integrated into, the work maintain a copyright interest in his or her contributions alone? We conclude that, at least on the facts of the present case, he or she may not.

Turning to the copyright claims, the Court first stated that the parties agree that they are not “joint authors” under §101 of the Copyright Act as joint authorship requires the intent of the parties to create a merged, unitary whole and such intent was clearly lacking. A finding of joint authorship (which would include one of joint ownership since the copyright would vest in the film’s authors) would preclude any claims of either infringement or tortious interference since you can’t infringe (or interfere with) your own work against your co-owner. The parties also agreed that Merkin’s efforts cannot be deemed a work-for-hire as he never signed a written agreement to that effect as required by statute.

Having disposed of the copyright preliminaries, the Court then turned to the key issue as to whether Merkin’s contributions to the film could be separately copyrightable:

We have never decided whether an individualʹs non‐de minimis creative contributions to a work in which copyright protection subsists, such as a film, fall within the subject matter of copyright, when the contributions are inseparable from the work and the individual is neither the sole nor a joint author of the work and is not a party to a work‐for‐ hire arrangement. We answer that question in the negative on the facts of the present case, finding that the Copyright Actʹs terms, structure, and history support the conclusion that Merkinʹs contributions to the film do not themselves constitute a ʺwork of authorshipʺ amenable to copyright protection. (citation omitted).

The Court bolstered its conclusion by endorsing the Ninth Circuit’s recent en banc decision Garcia v. Google which reversed Judge Kosinski’s opinion holding that an actor may have a separately copyrightable interest in her performance:

We agree. Filmmaking is a collaborative process typically involving artistic contributions from large numbers of people, including—in addition to producers, directors, and screenwriters—actors, designers, cinematographers, camera operators, and a host of skilled technical contributors. If copyright subsisted separately in each of their contributions to the completed film, the copyright in the film itself, which is recognized by statute as a work of authorship, could be undermined by any number of individual claims.

The Court  therefore concluded these contributions are not independent “works of authorship” under the Copyright Act, unlike free-standing, independent original works such as dances or songs that may be incorporated into a film.

Having disposed of Merkin’s claim to copyright in his contribution to the film, the Court then turned to his claim to own the copyright in the raw footage from which the final film was to be fashioned. Since the parties are not “joint authors,” the analysis then turned to which party was the “dominant author” of the film.

The Second Circuit agreed with the District Court that notwithstanding Merkin’s significant contributions (e.g., camera work, lighting, blocking, actor’s delivery of lines, wardrobe, etc.), Casa Duse “exercised far more decision making authority” particularly with respect to its “agreements with outsiders” noting that plaintiff executed all relevant third-party agreements for the production. As dominant author, the Court concluded that plaintiff owns the copyright in the finished film  — as well as the underlying raw footage.

The Court did throw Merkin a bone, finding that he did not engage in tortious interference with business relations under New York law. Finally, the Court upheld the joint and several liability for costs and attorney’s fees against Merkin and Reichman. First the Court noted that even though plaintiff did not file the copyright registration in issue and sought a declaration of non-infringement (as opposed to seeking damages for copyright infringement), attorney’s fees were nonetheless available under §505 of the Copyright Act. And the joint and several liability was appropriate under 28 U.S.C. §1927.

The holdings of both this case and the Ninth Circuit’s Garcia decision that inseparable, integrated contributions to a motion picture are not independently copyrightable will probably have somewhat limited application as actors, directors and other contributors routinely sign work-for-hire agreements.  And the Second Circuit took pains to limit its holding to the particular facts presented. It will be interesting to see how these holdings may be applied to other collaborative efforts, such as creating and recording popular songs, although work-for-hire agreements are commonplace there as well. As for disputes between “collaborators” who are clearly not joint authors, the Second Circuit’s guidance (even absent a specific test) as to who is a “dominant author” and therefore the owner of the copyright in the work, should be helpful.