Opinion
CIVIL ACTION NO. 02-0425
April 21, 2003
Before the Court is Universal/Motown Defendants' Motion for Legal Determination of Copyrightability (Rec. Doc. 145). The Court granted Universal's request for expedited hearing on the motion. Plaintiff, Positive Black Talk, Inc. ("PBT") filed its opposition on April 14, 2003, at which time the matter was submitted for hearing on the briefs.
The Court had previously denied Universal's motion for summary judgment [and reconsideration thereon] which raised a multitude of arguments and defenses. Universal has now streamlined its prior motion to bring before the Court matters it characterizes as issues of law, the resolution of which will determine the "framework" for the upcoming trial. The parties' contentions are summarized below.
Motion for Legal Determination of Copyrightablity
Universal points out that PBT bears the burden of specifically identifying which elements of Juvenile's song have infringed the copyright. To the extent that Plaintiff stakes its claims on the similarity of the titles and the four-word phrase "back that ass up," Universal argues that neither of these elements are protected under copyright law. Further, to the extent PBT seeks to show similarity via the triggerman beat and cowbell percussion, those elements are likewise not protectible.
In opposition, PBT asserts that to demonstrate copyrightability, it need only show that the subject matter of its copyright, i.e., Jubilee's song, is protected under the Copyright Act. PBT asserts that it has a copyright on the unique combination of words and music which forms the original work that constitutes Back That Ass Up. Moreover, PBT argues that the abstraction/filtration test urged by Universal has been employed primarily in software infringement cases and has never been used in this circuit or any other in a music infringement case. PBT argues that a legal determination of "copyrightability" does not encompass dissecting Jubilee's song as Universal seeks to do under the abstraction/filtration analysis.
Discussion
To establish a claim for music copyright infringement, plaintiff must prove 2.) ownership of a valid copyright, and 2) that defendant copied his copyrighted material. Szabo v. Errisson, 68 F.3d 940, 942 (5th Cir. 1995) (citing Apple Barrel Prods. v. Beard, 730 F.2d 384 (5th Cir. 1984)). The "copying" prong requires proof of two aspects of copying: first, that defendant did in fact copy plaintiff's work (factual copying), and second, that the copying is legally actionable because the works are substantially similar. Szabo, 68 F.3d at 944. In other words, proof of copying alone does not constitute an infringement claim.
PBT correctly asserts that a determination as to "copyrightability" does not involve a dissection of Jubilee's song under the abstraction/filtration test or any other for that matter. However, Universal is not challenging the copyrightability of Jubilee's song. Clearly, the work taken as a whole — "the unique combination of words and music" which forms Jubilee's Back That Ass Up — is copyrightable. Rather, Universal is challenging PBT's ability to prove infringement of the song's copyright by relying upon similarities in the uncopyrightable elements of the song In other words, Universal argues that substantial similarity or actionable copying cannot be based upon copy of unprotected portions of Jubilee's song.
Universal's "dissection" or "abstractions" position has clear support in music copyright cases arising out of the Second Circuit and some of its neighboring courts. See, e.g., Jarvis v. A M Records, 827 F. Supp. 282, 291 (D.N.J. 1993) (citing Warner Bros. v. American Broadcasting Cos., 720 F.2d 231 (2d Cir. 1983)); Acuff-Rose Music, Inc. v. Jostens, Inc., 988 F. Supp. 289 (S.D.N.Y. 1997), aff'd, 155 F.3d 140 (2d Cir. 1998); Brett E. Kaplicer, Rap Music De Mimmis Copying: Applying the Ringgold Sandoval Approach to Digital Samples, 18 CDZAELJ 227, 238 (2000). Those courts recognize that a determination as to infringement of a copyright — the issue in this case — involves identification and isolation of the work's unprotectible elements. Id. Such identification is necessary because a finding of infringement cannot be premised solely upon copying of non-protectible elements of a musical composition. See, e.g., Jarvis, 827 F. Supp. at 291; Acuff-Rose, 988 F. Supp. at 292-93; O'brien v. Chappel Co., 159 F. Supp. 58 (S.D.N.Y. 1958). However, the Second Circuit cautions that by going overboard in factoring out similarities based upon non-copyrightable elements there is an inherent risk in overlooking wholesale usurpation of a prior author's expression. Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 979-80 (2d Cir. 1980) Naturally, PBT hopes to avoid any type of abstractions test because the phrase "back that ass up," the most similar aspect of the two songs at issue, might not be copyrightable.
This approach is not at odds with Apple Barrel Productions. Inc. v. Beard, 730 F.2d 384 (5th Cir. 1984), cited by PBT. In Apple Barrel the Fifth Circuit found error with the district court's dissection of a television program as a means to determine copyrightability. The Fifth Circuit clarified that a work composed of unprotectible elements might nevertheless be entitled to copyright protection when taken as a whole.Id. at 387. Thus, the Fifth Circuit did not reject dissection of a work when addressing infringement as opposed to copyrightability.
The test most commonly associated with the Ninth Circuit is the two part extrinsic/intrinsic test for substantial similarity. The extrinsic first step of the test involves some degree of analytic dissection and expert testimony to determine whether the two works share similarity of ideas. Smith v. Jackson, 84 F.3d 1213, 1218 (9th Cir. 1996). The test is an objective one. See id. The jurisprudence is not clear on how much dissection should take place. If plaintiff satisfies the extrinsic test then the subjective intrinsic test asks whether an "ordinary, reasonable observer" would find substantial similarity of expression of the shared idea. Id. This subjective inquiry is always left to the trier of fact. Id.
The "audience test" or "the total concept and feel test" urged by PBT is captured in the intrinsic portion of the extrinsic/intrinsic analysis.
Fifth Circuit decisions offer no guidance as to the appropriate test for use in this circuit when evaluating substantial similarity in a music copyright infringement case. In other copyright contexts, however, the Fifth Circuit expressly recognizes that infringement can only be based upon protectible elements of a copyrighted work. See, e.g. Bridgmon v. Array Sys. Corp., 2003 WL 1359253 (5th Cir. Mar. 20, 2003), ___ F.3d ___; Peel Co. v. Rug Market, 238 F.3d 391, 397 (5th Cir. 2001);Kepner-Tregoe, Inc. v. Leadership Software, Inc., 12 F.3d 527, 533 (5th Cir. 1994). It is unclear whether the Fifth Circuit would apply the "abstractions" test to music infringement cases which generally involve a more artistic type of expression. At least one district court in this circuit has concluded that the extrinsic/intrinsic test applies. See McKinley v. Raye, 1998 WL 119540, at *5 (N.D. Tex. Mar. 10, 1998) (recognizing that the Fifth Circuit has not established guidelines for determining whether two pieces of music are substantially similar).
Based on the foregoing discussion of the state of the law in this circuit, the Court will be forced to basically take a shot in the dark as to the law to be applied in this case. At this time and without having reviewed proposed jury charges, the Court envisions using the basic extrinsic/intrinsic test which has found acceptance outside of the Ninth Circuit. See, e.g., Moore v. Columbia Pictures Indus., Inc., 972 F.2d 939 (8th Cir. 1992); Dawson v. Hinshaw Music, Inc., 905 F.2d 731 (4th Cir. 1990) However, at this time the Court also envisions tempering that test with an appropriate instruction(s) regarding the use of non-original elements of Jubilee's song in the substantial similarity analysis. For instance, the parties agree that the song's title is not a protectible element. It would therefore be unduly prejudicial to Defendants to let the jury attach undue weight to this similarity.
As for the phrase "back that ass up," the Court concludes, for the reasons discussed below, that genuine issues of material fact preclude a pretrial determination as to its copyrightability. However, if the jury determines that the phrase is not sufficiently original to merit copyright protection, then again the jury cannot be allowed to attach undue weight to this similarity.
Jubilee's Song
1. Similarities in the Lyrics
The most obvious objective similarities in Jubilee's and Juvenile's songs are the titles and the refrain "back that. ass up." PBT concedes that song titles, including Back That Ass Up, are not copyrightable so the Court need not dwell on that issue. Opposition at 7, n. 7. clearly, the jury will have to be instructed as such.
Universal argues that the four-word phrase "back that ass up" is not a copyrightable element of Jubilee's song because the phrase is not original to Jubilee, it constitutes merger material, and it constitutes scenes a faire material.
a. Originallity
To qualify for copyright protection a work must be original to the author. Feist Pub., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345, 111 S.Ct. 1282, 1287, 113 L.Ed.2d 358 (1991) (citing Harper Row Pub., Inc. v. Nation Enters., 472. U.S. 539, 105 S. CL. 2218, 85 L.Ed.2d 588 (1985)). "The sine qua non of copyright is originality." Id. Originality, in the context of copyright law, requires independent creation by the author (as opposed to being copied from the work of others), and a minimal degree of creativity. Id. (citing 1M. Nimmer D. Nimmer, Copyright §§ 2.01[A], [B] (1990)). A work may be "original" for purposes of copyright even though it closely resembles other works so long as the similarity is not the result of copying.Id.
Again, Universal is not attacking the originality of Jubilee's song rather only that of the four-word phrase "back that ass up." PBT should not lose sight of the fact that Defendants are not attacking PBT's ability to copyright the song in its entirety. Rather, they challenge PBT's ability to prove infringement by relying on similarity of non-copyrightable elements of the song.
According to defendant Juvenile, the phrase "back that ass up" was a club chant popular around the New Orleans area in the 1990's. Exhibit 4, (Juvenile deposition) at 76-78. Dr. Murchinson, Universal's expert musicologist, opined that the phrase is relatively common in hip-hop vernacular. Universal Exhibit 6, (Murchinson report) at 5. Dr. Murchinson also opined that the dance move of "backing it up" is common in New Orleans' second line culture and therefore original to neither artist.Id. Jubilee, on the other hand, believes that he created the dance and came up with the phrase "back that thang [ass] up." Exhibit 5, (Jubilee deposition) at 31-32, 207.
Based on the foregoing testimony, the Court concludes that a genuine issue of material fact exists as to whether the phrase "back that ass up" is original to Jubilee. Consequently, the jury must decide whether the phrase is original to Jubilee and therefore copyrightable. of course, if the evidence presented at trial shows that reasonable minds could not differ as to the originality of the phrase, then the Court will decide the issue prior to the case being submitted to the jury.
Jubilee has no copyright on the dance itself and his claims to having invented it are specious in that he admits having come up with the idea for the dance after watching a female audience member perform the dance move at one of his performances. Exhibit 5 at 133. Indeed, ideas, such as the idea for the dance, are never copyrightable — only the original expression of those ideas. Kern River Gas Transmission Co. v. Coastal Corp., 899 F.2d 1458, 1463 (5th Cir. 1990).
b. Merger
As noted above, an idea is never copyrightable. Kern River, 899 F.2d at 1463. Copyright only bars others from copying an author's original expression of an idea. Mason v. Montgomery Data, Inc., 967 F.2d 135, 138 (5th Cir. 1992). Others are therefore free to use and copy an idea as long as they do not "plagiarize its `expression.'" Id. (citing Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738 (9th Cir. 1971)).
The Fifth Circuit has recognized that in some cases separation of an idea from its expression is so difficult that the idea and its expression are said to "merge." Id. "Merger" occurs when there is essentially only one way to express an idea. Id. Denying copyright protection to an expression that is merged with its underlying idea prevents an author from monopolizing an idea. Id. (quoting Toro Co. v. R R Prods. Co., 787 F.2d 1208 (8th Cir. 1986)). In short, if the court can distinguish the idea from its expression then the expression is protected under copyright law. Id. at 139. If the idea and its expression are indistinguishable, then merger precludes a finding of infringement.7
Universal correctly points out that any artist may compose and perform a song about the dance Jubilee describes in Back That Ass Up because Jubilee cannot "monopolize" the idea. Universal goes on to assert that any expression of this dance, in the context of a rap song, necessarily includes use of the phrase "back that ass up."
Courts have recognized that separation of an idea from its expression is one of the single most difficult determinations to make in a copyright case. See Kern River, 899 F.2d at 1463. To be sure, Universal's arguments are persuasive but not so much so that the Court is willing to declare the phrase "back that ass up" non-copyrightable based upon the merger doctrine. The Court cannot say with any certainty that any expression of the non-copyrightable idea of the dance necessarily includes use of the phrase "back that ass up."
c. Scenes a Faire
"Scenes a faire" is a legal term of art given to "incidents, characters or settings" which are either indispensable or standard in the treatment of a given topic. Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 979 (2d Cir. 1980). "Where a particular expression is common to the treatment of a particular idea or theme, it may lack sufficient originality-the sine qua non for copyright protection." Boorstyn on Copyright, § 11.05[2], at 11-33 (citing Feist, 499 U.S. at 340, 111 S.Ct. at 1289). For instance, one court has held that elements such as "drunks, prostitutes, vermin and derelict cars" would appear in any realistic work about police work in the South Bronx and therefore constitute non-protectible scenes a faire. Walker v. Time Life Films, Inc., 784 F.2d 44, 50 (2d Cir. 1986).
Universal's expert musicologist Dr. Murchinson opined that the lyrics of both songs fall into the genre of "bootycall" music. Exhibit 6 at 11. She also notes the long tradition in African American music in which reference is made to the type of dance movement described in Jubilee's song. Id. at 12. She cites numerous examples such as Shake Your Booty by K.C. and the Sunshine Band and Doin' the Butt.
PBT offered no evidence to contradict Dr. Murchinson's opinion. The Court has no doubt that Jubilee's song describes a movement or dance that is a common theme in either bootycall or rap music. Surely the movement or dance of "back[ing] that ass up" is considered scenes a fair or at the very least a non-copyrightable idea. But that the movement described in Jubilee's song is commonplace and non-original does not answer whether the four-word phrase "back that ass up" is an original expression of that idea.
The Court will not feign familiarity with either bootycall or rap music. The Court suspects, after having reviewed Dr. Murchinson's report, that Universal is correct. Nevertheless, given the importance of the copyrightability vel non of the phrase to PBT's case, the Court will reserve a ruling on the scenes a faire issue until having an opportunity to hear more evidence at trial.8 2. Similarities in the Music
Universal expresses concerns that PBT might contend that the "triggerman beat" or "cowbell percussion" in Juvenile's song is an infringed element of Jubilee's work. Universal contends, based upon the deposition testimony of Mannie Fresh, that those elements are not original to Jubilee because they were produced by a drum machine known as the Roland 808. Universal also asserts that those elements are common to the rap industry.
In sum, the Court is denying Universal's motion to have the phrase "back that ass up" declared uncopyrightable prior to trial.
Accordingly;
IT IS ORDERED that Universal/Motown Defendants' Motion for Legal Determination of copyrightability (Rec. Doc. 145) should be and is hereby DENIED.