97 F.Supp.2d 539

Michael TISI, Plaintiff,
v.
Richard PATRICK, Filter, Warner Brothers Records Inc., d/b/a Reprise Records, WEA International Inc., EMI April Music Inc., EMI Music Inc. d/b/a EMI Records and EMI Records Group, Defendants.

No. 00 CIV. 0882(RWS).

United States District Court, S.D. New York.

May 22, 2000.

[540] Dowd & Marotta, New York City, Daniel C. Marotta, Raymond J. Dowd, of counsel, for Plaintiff.

[541] Parcher, Hayes & Snyder, New York City, Orin Snyder, Cynthia S. Arato, of counsel, for Defendants.

OPINION

SWEET, District Judge.

Plaintiff Michael Tisi ("Tisi"), a songwriter and the composer of a copyrighted but unpublished musical composition entitled "Sell Your Soul" ("SYS"), sought a preliminary injunction under Rule 65, Fed.R.Civ. P., to enjoin the defendants Richard Patrick ("Patrick"), Filter, a performing group, Warner Brothers Records Inc., d/b/a Reprise Records ("Warner Brothers"), WEA International Inc. ("WEA"), EMI April Music Inc., EMI Music Inc. d/b/a EMI Records and EMI Records Group (collectively, "Defendants") from distributing "Take A Picture" ("TAP"), a musical composition written by Patrick, on the grounds that TAP is derived from SYS and thereby infringes on Tisi's copyright.

In addition, both Tisi and Defendants have moved for summary judgment pursuant to Rule 56, Fed.R.Civ.P. Upon the findings of fact and conclusions of law set forth below, Tisi's motions for a preliminary injunction and summary judgment are denied, and Defendants' motion for summary judgment dismissing the complaint is granted.

This action requires an analysis of the common and unique aspects of the two rock music compositions at issue, as well as resolution of the issue of Patrick's access to Tisi's composition. Thanks to the skill of counsel and the clarity of the Defendants' expert witness, the unfamiliarity of the court with the genre has been overcome. A combination of common sense and a hastily trained ear dictate the forthcoming result.

Prior Proceedings

Tisi commenced this action on February 7, 2000, by filing a complaint alleging that Defendants' publication of TAP violates Tisi's copyright in SYS.

An order to show cause seeking a preliminary injunction was obtained on February 14, 2000, discovery proceeded, affidavits in support and in opposition to the motion were submitted, and a hearing on the application was held on March 16, 20, and 21, at which evidence in the form of testimony and exhibits was produced. At the close of the hearing, both sides moved for summary judgment on the record before the court.

Findings of Fact

Tisi has composed and performed rock and roll songs off and on over the past ten years. Early in 1994, with a group, Blue Dahlia, he made a demonstration tape (the "Demo Tape") which included a recording of his composition SYS. Tisi classified this song as adult, contemporary rock music. SYS was copyrighted.

Tisi, his father Arthur Tisi, and his father's partner in Arthur Joseph Productions Company, Joseph Giovanni ("Giovanni"), sought to promote the Demo Tape and to obtain a recording contract for Tisi. Arthur Joseph Productions coordinates and promotes special events and in the course of such activities Giovanni and Arthur Tisi developed some knowledge of and contacts in the entertainment industry.

In 1994, Arthur Tisi sent the Demo Tape to Kenneth Lane, who at that time was a senior vice president of promotion at EMI Records. Lane listened to the tape and played it for executives in EMI's A & R (artists and repertory) department. The tape was rejected some weeks later. A letter of rejection was received from Lane on December 20, 1994. EMI Records at the time had no relationship with Patrick or Filter and was a competitor of Warner Brothers.

After the initial submission to EMI, Arthur Tisi made a submission to Warner Brothers through Greg Geller on December 13, 1994, which resulted in a rejection on March 13, 1995. The Demo Tape was [542] sent to Brian Koppelman at EMI Records again in August 1995.

In the same time frame, Giovanni, through his dentist, got the name of Jason Flom at a Warner Brothers Company, Atlantic Records. Giovanni testified that he sent the Demo Tape to Flom, who rejected the tape. There is no record relating to these actions.

Giovanni also testified that he requested John Ferry, an agent who had signed performers with Interscope, to have Interscope review the Demo Tape. Giovanni further testified that he had been told by someone that an unidentified member of "Nine Inch Nails" had heard the Demo Tape. Without corroboration, however, this vague double hearsay is not credible in view of Giovanni's interest and his failure to refer to these events in an earlier sworn statement on the subject.

In 1994 and 1995, Arthur Joseph Productions also submitted the Demo Tape to Mercury Records, Arista Records, Inc., Columbia Records, MCA Records, Interscope Records, Island Records, Geffen Records, Sony Music, Epic Records and Virgin Records, through particular individuals in most instances. These submissions did not result in any further inquiries with respect to the Demo Tape.

Ken Lane and Brian Koppelman of EMI were invited to a performance by Blue Dahlia on October 29, 1995 at which SYS was played. Lane attended, but there is no evidence that Koppelman did.

There has been no effort to promote or sell the Demo Tape since early 1996.

In early November 1999, Tisi heard TAP for the first time and bought a copy of the compact disc, "Title of Record," on which the song appears, although in an affidavit submitted in connection with the order to show cause, Tisi stated that he had not learned of the Patrick song until told about it by others in "late December 1999." The Tisis first consulted an attorney concerning the enforcement of Tisi's copyright on October 25, 1999.

Patrick, a Chicago resident, has performed and composed music since 1984 and has achieved wide recognition. In 1989, Patrick, then twenty-one years of age, toured as a guitar player with the band "Nine Inch Nails" and wrote music when not touring. In 1993, Patrick formed his own band, Filter, and in 1994 signed a recording agreement with Warner Brothers Records. "Short Bus," Filter's first album with songs written by Patrick, was released in April 1995 by Reprise Records, Inc., a division of Warner Brothers. A two-year tour followed. The "Short Bus" album achieved platinum sales status. Although most of the compositions on "Short Bus" are hard rock, two are more acoustic and softer, as was a 1997 Patrick composition for television.

In late 1996, Patrick, while playing his electric guitar, hit upon several chords which he liked, and he then composed a chorus, all of which he put aside during the construction of his sound studio in Chicago, the Abyssinian Sons Studio. In November 1997, Patrick recorded this guitar segment with a percussion group and added a melody which was heard by a Reprise executive. He composed the lyrics in 1998, which were related to an incident when Patrick was asleep on an airplane.

In 1999, Patrick completed work on Filter's next album, "Title of Record" and included as one of the songs this material which he had worked on in 1996 and 1997 and entitled it "Take A Picture." In the final version of the song, world-beat drums and a twelve-string guitar and additional guitar tracks were added. TAP was an independent creation by Patrick and those working with him, none of whom had heard SYS.

TAP was commercially released on August 24, 1999, and was promoted as a single to radio stations beginning on September 21, 1999. It started on the Bill-board "Hot 100" chart at number 91 and by February 12, 2000 had risen to number 12. In early March it was number 20, [543] when it was simultaneously number 1 on the Billboard "Dance" chart. Filter has been on tour since the release of the album "Title of Record," and TAP has become a signature song for Filter and Patrick. Warner Brothers Records has invested over $4.5 million in the composition, licensing, and promotion of the album.

Patrick does not accept or listen to unsolicited tapes and has no relationship with EMI Records. EMI April Music Inc. and EMI Music Inc. administer copyrights, including Patrick's, but have no role in the creative process and have not sent tapes to Patrick or to anyone else. Until this litigation was initiated, Patrick had no knowledge of SYS or of Michael Tisi.

For the uninitiated, much of rock music sounds the same, and a hasty comparison of SYS and TAP could result in a finding of superficial similarity, as both songs employ a standard usage in rock music: an introduction, verse, chorus, and bridge, with harmonic and rhythmic similarities common to many musical genres, including pop rock. A closer review of the two compositions reveals, however, that they are significantly different. Even to one unversed in the genre, the two songs can be heard to be quite dissimilar.

The expert presented by the defendants, Dr. Lawrence Ferrara, is the Chair of the Department of Music and Performing Arts at New York University, and a recognized musicologist. Michael White, the expert proffered by Tisi, is a member of the graduate faculty at the Julliard School and a composer of operas, concertos and songs. As to the method of analysis, both were in agreement that the elements to be considered on the question of similarity between SYS and TAP were structure, melody, harmony, and rhythm. Both agree that the melodies of the two songs are dissimilar.^[1] As to the other three elements, while there was disagreement as to the ultimate conclusions, both experts noted the same differences and similarities. Dr. Ferrara's conclusions were sounder and more credible, and his analysis more convincing once the examination moved beyond the initial audible overall dissimilarity of the two songs.

As to structure, to the extent that the two songs share any structural similarities, those similarities are not significant because they are uniformly shared with most modern popular rock music. Both songs employ a standard usage of introduction, verse, chorus and bridge sections. There are significant structural differences, however. TAP features a lengthy distorted rock guitar intro not found in SYS. In addition, the construction of the verse in both songs is significantly different as can be determined from the verses set forth in Appendix A. Moreover, there is a section that can be termed a "Closing" in TAP that is not found in SYS. Finally, the length of each song differs considerably.

The harmony is the element where the songs are closest, given the use of certain chords with common characteristics. However, there are notable differences in the harmonies. The harmonies throughout TAP are more complex and dissonant than in SYS, which make the songs sound different. Throughout the introduction and verse sections in TAP a B note (repeatedly played by the guitar) is present in almost every chord, which connects and defines the harmonic progression. No comparable or defining harmonic device is used in SYS.

Both songs are in the key of A major, as are countless songs in all genres of music. In addition, although both songs feature in their respective introductions and verses a basic "I-IV" harmonic progression, which is built on the first and fourth steps of the scale (in SYS and TAP, from the A chord to the D chord), this harmonic progression can be found in songs in all genres and therefore its use in both SYS and TAP does not constitute a significant similarity.

[544] In addition, there are significant differences within the "I-IV" harmonic progressions found in TAP and SYS, although Tisi's expert urged that the four chords upon which both songs are based are the same: A (A7 and A9); D sus 4; D major. In fact, the four chord progression he describes (A(A7 and A9); Dsus4; D) occurs only in the introduction and verse in SYS and does not occur anywhere in TAP. The harmonic progressions found in TAP's respective introduction and verse are charted as follows:

5-8:    A A Asus4 A   Dsus4 D     Dsus4 D

9-12:   Asus2 Aadd2 Asus2 Asus4(add2) A(add2) Dsus4(add6) D6 Dsus4(add6) D6

13-16:  Asus2 Aadd2 Asus2 Asus4(add2) A(add2) Dsus4(add6) D6 Dsus4(add6) D6

Although the "bottom notes" in the harmonies charted above are the same (A and D), the use in each song of the name or "root" of the chord as the "bottom note" for such chords is extremely common. By contrast, the contour of the upper voicing or "top notes" for the chords in their respective introduction is different:

SYS measures 1-8:   B C#  G F# G F#   B C#  F#

TAP measures 9-16   B C# B D C#   G F# G F#   B C# B D C#   G F# G F#

Because of the different chords used in TAP, as described above, TAP's harmony is more complex, nuanced, and dissonant than the harmony of SYS and produces a different musical sound. These harmonic differences demonstrate that the harmony of the two songs is not shared. The sole similarity—the I chord (A chord) to IV chord (D chord) progression—is so common to rock and pop genres (indeed, to every type of Western music) that it alone does not make the songs sound any more similar than countless other songs.

A lay listener may hear a basic similarity between the guitar rhythm of both songs because in both songs it is primarily based on four basic accents per measure. However, this rhythmic similarity is not significant because this guitar rhythm is extremely common in the pop rock genre, and is also featured in Eastern European folk music and is not original to either SYS or TAP. Moreover, in SYS, sixteenth notes are played evenly on a high hat cymbal and quarter notes are played on a bass drum. In addition, a tambourine and drum play on the second and fourth beats. This basic percussion rhythm is extremely common in the pop rock genre.

The percussion parts in TAP are much more complex. TAP employs "world music" rhythms and sounds with the use of uneven sixteenth notes and other patterns played by a percussion instrument known as a shaker, as well as contrasting rhythms played by a conga. In addition, as the song progresses, TAP layers multiple percussion tracks, which create complex and highly syncopated rhythms. These rhythms are associated with "tribal music" (a term used by ethnomusicologists). No similar rhythmic complexity can be found in SYS.

Furthermore, despite the superficial similarity of the guitar rhythms of the songs, significant differences exist. Multiple guitar tracks are layered in TAP which create a more complex guitar rhythm than in SYS. Further, the guitar rhythm in the first eight measures of SYS differs in several significant ways from the guitar rhythm in the correlative measures of TAP. The most prominent rhythmic difference is each song's approach to the fourth beat in each measure. In SYS, three sixteenth notes approach the fourth beat. By contrast, in TAP one sixteenth note followed by one eighth note approaches the fourth beat.

As mentioned, the melody in TAP does not share any notable similarities with the melody in SYS.

[545] What similarities do exist between TAP and SYS can also be found in prior art contained in works by other groups and composers such as The Pretenders, U2, Eurythmics, Peter Gabriel, Neil Diamond, and Bon Jovi, as demonstrated by Dr. Ferrara. Although Tisi objected to the transposition of certain of the prior art songs to the key of A major to facilitate comparisons, transcription is an accepted practice for musicological analysis. The harmonic progressions and basic rhythms of this prior art are common to many rock compositions.

However, TAP contains what Dr. Ferrara termed "fingerprints," unique treatments used by Filter and Patrick. TAP uses rhythmic patterns, musical instruments (such as the shaker and conga) and melodic formulae which provide a flavor of "tribal music" as do several songs on the "Title of Record" album: "Sand" (track 1), "It's Gonna Kill Me" (track 4, especially at 1'23" and 2'04"), "The Best Things" (track 5) and "Miss Blue" (track 11), each fusing "world music" with pop rock music. Another distinguishing characteristic in TAP and other Filter songs is the enormous increase in its dynamics and rhythmic complexity as the song develops and flows to its ending. Furthermore, close to the end of TAP (with the lyrics, "Hey, dad, what do you think about your son now?"), the vocal range is very high, singing/screaming high B's, a range found in other Filter songs.

In addition, like TAP, "So Cool," another Filter song, has a closing section constituted of electronic synthesis, which is absent in SYS. In view of the similarities that TAP shares with the other songs recorded by Filter, TAP is consistent with Filter's other musical works.

The most memorable characteristics in TAP (which include complex rhythms, multi-layered guitar and percussion tracks, harmonic dissonance, vocal melody, a dynamic build-up to the end, and a "world music" flavor) are absent in SYS. To the extent that there are any similarities between the two songs, those similarities are insignificant and incidental and can be attributed to common musical practices in rock and pop music. The analysis of the two songs reinforces the finding. TAP was created without any reference to SYS.

As between Tisi and Patrick, the facts already set forth demonstrate that the balance of hardship, were injunctive relief granted, tilts strongly against Tisi's unknown and unpublished composition and in favor of Patrick's highly successfully and expensively promoted composition. This tilt is accentuated by Tisi's failure to act during much of the period of TAP'S promotion.

CONCLUSIONS OF LAW

I. The Applicable Legal Standards

A. Preliminary Injunction

A preliminary injunction is "an extraordinary and drastic remedy" which should not be granted "absent a clear showing that the movant has met its burden of proof." Karmikel Corp. v. May Dep't Stores Co., 658 F.Supp. 1361, 1367 (S.D.N.Y.1987); see also Parenting Unltd. v. Columbia Pictures Television, 743 F.Supp. 221, 224 (S.D.N.Y.1990).

A preliminary injunction may not be issued unless the moving party establishes:

[B]oth (1) irreparable harm in the absence of the requested relief, and (2) either (a) a likelihood that it will succeed on the merits of the action, or (b) a sufficiently serious question going to the merits combined with a balance of hardships tipping decidedly in favor of the moving party.

Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1038 (2d Cir. 1992) (vacating preliminary injunction); see also Harm Reduction Coalition v. Bratton, No. 95 Civ. 3171, 1995 WL 271766, at *1 (S.D.N.Y. May 9, 1995) (preliminary injunction denied).

[546] In cases of copyright infringement, irreparable injury is generally presumed if the plaintiff can demonstrate a likelihood of success on the merits. See, e.g., Richard Feiner & Co. v. Turner Entertainment Co., 98 F.3d 33, 34 (2d Cir.1996).

B. Summary Judgment

Rule 56(c) of the Federal Rules of Civil Procedure provides that a motion for summary judgment may be granted when "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." The Second Circuit has repeatedly noted that "as a general rule, all ambiguities and inferences to be drawn from the underlying facts should be resolved in favor of the party opposing the motion, and all doubts as to the existence of a genuine issue for trial should be resolved against the moving party." Brady v. Town of Colchester, 863 F.2d 205, 210 (2d Cir.1988) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 330 n. 2, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) (Brennan, J., dissenting)); see Tomka v. Seiler Corp., 66 F.3d 1295, 1304 (2d Cir.1995); Burrell v. City Univ., 894 F.Supp. 750, 757 (S.D.N.Y.1995). If, when viewing the evidence produced in the light most favorable to the non-movant, there is no genuine issue of material fact, then the entry of summary judgment is appropriate. See Burrell, 894 F.Supp. at 758 (citing Binder v. Long Island Lighting Co., 933 F.2d 187, 191 (2d Cir.1991)).

Materiality is defined by the governing substantive law. "Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment. Factual disputes that are irrelevant or unnecessary will not be counted." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). "[T]he mere existence of factual issues— where those issues are not material to the claims before the court—will not suffice to defeat a motion for summary judgment." Quarles v. General Motors Corp., 758 F.2d 839, 840 (2d Cir.1985).

For a dispute to be genuine, there must be more than "metaphysical doubt." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). "If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Anderson, 477 U.S. at 249-50, 106 S.Ct. 2505 (citations omitted).

II. Copyright Infringement

There are two elements to a copyright infringement claim: "(1) ownership of a valid copyright; and (2) copying of constituent elements of the work that are original." Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991); accord Fonar Corp. v. Domenick, 105 F.3d 99, 103 (2d Cir.1997).

A certificate of registration from the United States Register of Copyrights constitutes prima facie evidence of the valid ownership of a copyright. See 17 U.S.C. § 410(c). Tisi has secured such registration for SYS and Defendants do not dispute the validity of Tisi's copyright in SYS. Thus, Tisi meets the first element of an infringement claim.

"To prove infringement, a plaintiff with a valid copyright must demonstrate that: '(1) the defendant has actually copied the plaintiff's work; and (2) the copying is illegal because a substantial similarity exists between the defendant's work and the protectible elements of plaintiff's.'" Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir.1995) (quoting Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119, 122-23 (2d Cir.1994)).

Since direct evidence of copying is seldom available, "[c]opying may be inferred where a plaintiff establishes that the defendant had access to the copyrighted work and that substantial similarities exist as to protectible material in the two works." Walker v. Time Life [547] Films, Inc., 784 F.2d 44, 48 (2d Cir. 1986). In the alternative, "[i]f the two works are so strikingly similar as to preclude the possibility of independent creation, `copying' may be proved without a showing of access." Ferguson v. NBC, Inc., 584 F.2d 111, 113 (5th Cir. 1978); Gaste v. Kaiserman, 863 F.2d 1061, 1067-68 (2d Cir.1988).

Lipton v. Nature Co., 71 F.3d 464, 471 (2d Cir.1995).

A. Access Has Not Been Demonstrated

Although Arthur Tisi submitted unsolicited demo tapes containing SYS to EMI Records and Warner Brothers, there is no evidence that SYS was ever conveyed from EMI Records or Warner Brothers Records to Patrick or to anyone with creative input into TAP.

Access means that the alleged infringer "had an opportunity to view or copy plaintiff's work." Sid & Marty Krofft Television Prod. v. McDonald's Corp., 562 F.2d 1157, 1172 (9th Cir.1977) (citing Arrow Novelty Co. v. Enco Nat'l Corp., 393 F.Supp. 157, 160 (S.D.N.Y.), aff'd 515 F.2d 504 (2d Cir.1975)). The plaintiff has the burden of presenting "significant, affirmative and probative" evidence to support a claim of access. See, e.g., Palmieri v. Estefan, 35 U.S.P.Q.2d 1382 (S.D.N.Y.1995), aff'd on other grounds, 88 F.3d 136 (2d Cir.1996); Intersong-USA v. CBS, Inc., 757 F.Supp. 274, 281 (S.D.N.Y.1991). Conjecture or speculation is insufficient. See, e.g., Cox v. Abrams, No. 93 Civ. 6899, 1997 WL 251532, at *3 (S.D.N.Y. May 14, 1997) ("To survive summary judgment Plaintiffs must show a reasonable possibility of access, not a bare possibility."); Intersong-USA, 757 F.Supp. at 281.

This principle has been confirmed recently in Dimmie v. Carey, 88 F.Supp.2d 142 (S.D.N.Y.2000). Dimmie rejected a claim nearly identical to that asserted here, holding that plaintiff's submission of her song to Columbia Records failed to establish that there was a "reasonable possibility" that the composers had access to the song and granting defendants' motion for summary judgment. See id. at 145-48.

The same result was previously reached by this Court in Novak v. National Broad. Co., 752 F.Supp. 164 (S.D.N.Y.1990), in which the plaintiffs had alleged that the creators of "Saturday Night Live" had copied a comedy sketch that the plaintiffs had written. The plaintiffs had submitted a tape containing their sketch to NBC Entertainment's president, Brandon Tartikoff, and Saturday Night Live's allegedly infringing skit aired approximately three weeks later. The tape was subsequently returned to plaintiffs, along with a note typed on Tartikoff's letterhead stating, "We found this in our office and thought you might like it back." Id. at 167. Tartikoff testified that he never viewed plaintiffs' tape. The Court noted that plaintiffs had not introduced any evidence contradicting Tartikoff's testimony. The Court held that plaintiffs had failed to raise a genuine issue of fact regarding access and granted summary judgment dismissing plaintiffs' claim.

Cox v. Abrams, 1997 WL 251532, is in accord as are a number of other cases.^[2] [548] While Tisi has cited Gaste v. Kaiserman, 863 F.2d 1061 (2d Cir.1988), to support the claim of access, Gaste did not address the "bare corporate receipt" doctrine, and in Gaste the court found that defendant Kaiserman offered demonstrably false evidence in an effort to dispute access.

There is no question that Tisi has failed to meet the standard on a motion for a preliminary injunction for demonstrating access, to say nothing of his failure to meet the standard for summary judgment. On the contrary, even construing the facts in the light most favorable to Tisi, he has failed to establish as a matter of law that Patrick or anyone else involved with the creation of TAP had access to SYS.

B. Tisi Has Made No Showing of Striking Similarity

As Tisi has failed to prove access as a matter of law—even construing the facts in the light most favorable to Tisi—in order to prevail on his motions either for a preliminary injunction or for summary judgment, Tisi must now show that TAP is strikingly similar to SYS. Indeed, in order to defeat Defendants' cross-motion for summary judgment Tisi must set forth disputed facts material to a finding of striking similarity. This he has not done.

Under the stringent test of "striking similarity," a plaintiff can avoid dismissal only by proving that the works "are so 'strikingly similar' as to preclude the possibility of independent creation." Cox, 1997 WL 251532 at *3 (quoting Gaste, 863 F.2d at 1067-68); see also Ferguson v. National Broad. Co., 584 F.2d 111, 113 (5th Cir.1978) (same). "[S]triking similarity exists when two works are so nearly alike that the only reasonable explanation for such a great degree of similarity is that the later ... was copied from the first." Cox, 1997 WL 251532 at *5 (citations omitted).

The striking similarity test, moreover, is applied with particular stringency in cases, such as here, involving popular music. McRae v. Smith, 968 F.Supp. 559, 566 (D.Colo.1997) (citing Gaste, 863 F.2d at 1068). Indeed, the Second Circuit has instructed that a court must be "mindful of the limited number of notes and chords available to composers and the resulting fact that common themes frequently appear in various compositions, especially in popular music." Gaste, 863 F.2d at 1068; see also McRae, 968 F.Supp. at 566-67 (rejecting plaintiff's experts' claim of striking similarity because most of the elements the experts relied on—such as the songs' rhythm, chord progression, and melodic line—were common musical elements which were not copyrightable); Jarvis v. A & M Records, 827 F.Supp. 282, 291 (D.N.J. 1993) ("Easily arrived at phrases and chord progressions are usually non copyrightable"); Intersong-USA, 757 F.Supp. at 282 (songs' structure, patterns, harmonic progression and recurring eighth note rhythm were common musical elements which were not copyrightable).

Even construing the facts in the light most favorable to Tisi, the two songs are not strikingly similar as a matter of law. Significantly, Tisi cannot contend that either the lyrics or the melody of TAP are strikingly similar to SYS. His striking similarity theory is based solely on basic, non-protectible musical elements found in his song: the key of A major, tempo (although Tisi's expert concedes that TAP actually has a slower tempo), a chord structure/harmonic progression common to much rock music (although the structure is not identical, which Tisi's expert admits), the guitar rhythm (but not the overall [549] rhythm and percussion, nor the additional guitar rhythms in TAP), and the fact that the chords of both songs are in "root" position. These elements are not copyrightable as a matter of law and summary judgment for defendants is appropriate. See, e.g., McRae, 968 F.Supp. at 566-67; Jarvis, 827 F.Supp. at 291; Intersong-USA, 757 F.Supp. at 282.

As found above, there is nothing unusual about the key of A Major, a "I-IV" chord progression, the rhythm of SYS, an acoustic guitar introduction, or the so-called "adult contemporary" style of his song, as are demonstrated in numerous songs written and recorded by other well-known recording artists. The elements Tisi alleges were copied are not copyrightable.^[3]

Further, numerous elements of the two songs, including the structure, chords and rhythm, are clearly distinguishable from one another. "Although plaintiff's expert opines that the songs are strikingly similar, an issue of fact cannot be created by merely reciting the magic words `strikingly similar' and `no possibility of independent creation.'" McRae, 968 F.Supp. at 566.

Finally, as found above, Patrick has established by unrebutted evidence that TAP was created independently. Even a prima facie case of copying may be rebutted by proof of independent creation. See, e.g., Procter & Gamble Co. v. Colgate-Palmolive Co., 199 F.3d 74, 77 (2d Cir.1999); Repp v. Webber, 132 F.3d 882, 889 (2d Cir.1997) ("[i]ndependent creation is an affirmative defense, evidence of which may be introduced to rebut a prima facie case of infringement"); Dimmie, 88 F.Supp.2d at 150-51; Cox, 1997 WL 251532, at *7 ("Even if plaintiffs were able to infer copying, defendants could rebut this inference with evidence that the challenged work was independently created.").

In sum, the two songs share nothing in common aside from the use of basic pop and rock musical devices, which are common to many, many songs. The numerous differences between the chord progressions, tempo, rhythm, structure, lyrics and melodies of the two songs precludes as a matter of law a finding of striking similarity.

Conclusion

For the reasons set forth above, Tisi' motions for a preliminary injunction and for summary judgment are denied. Defendants' motion for summary judgment is granted.

Submit judgment on notice.

It is so ordered.

[1] In addition, the lyrics of the two songs are completely different.

[2] See, e.g., Siskind v. Newton-John, No. 84 Civ. 2634, 1987 WL 11701, at *5 (S.D.N.Y. May 22, 1987) (granting defendants' motion for summary judgment and stating that, "[t]he most that plaintiff can be said to have shown is that the [plaintiff's] tape was in the possession of [the recording company's] personnel. ... It must be concluded that plaintiff has made no showing of access which is even sufficient to raise a triable issue of fact."); Eaton v. National Broad. Co., 972 F.Supp. 1019, 1024 n. 7 (E.D.Va.1997) (proof of access to plaintiff's work by the corporation which broadcast the allegedly infringing work is insufficient because "it is access by the creators of the allegedly infringing work that must be shown"), aff'd mem., 145 F.3d 1324 (4th Cir.1998); Meta-Film Assocs. v. MCA, Inc., 586 F.Supp. 1346, 1355 (C.D.Ca.1984) (access may be inferred only where it is reasonable to assume that the person to whom the plaintiff sent her work viewed it and then transmitted it to the creator of the allegedly infringing work, i.e., where the alleged intermediary "either was a supervisor with responsibility for the defendant's project, was part of the same work unit as the copier, or contributed creative ideas or material to the defendant's work"); Vantage Point, Inc. v. Parker Bros., 529 F.Supp. 1204, 1213 (E.D.N.Y.1981), aff'd, 697 F.2d 301 (2d Cir. 1982) (proof that plaintiff sent a copy of his game idea to Parker Brothers' president and that such idea was received did not constitute a prima facie showing of access).

[3] Similarly, any claim that TAP copied the arrangement of SYS also must fail. It has been stated that a musical arrangement only qualifies for copyright protection if it has "a distinctive characteristic, aside from the composition itself, of such character that any person hearing it played would become aware of the distinctiveness of the arrangement." Supreme Records v. Decca Records, Inc., 90 F.Supp. 904, 908 (S.D.Ca.1950). See also McIntyre v. Double-A-Music Corp., 166 F.Supp. 681, 683 (S.D.Ca.1958) (arrangement consisting of common melodic and harmonic embellishments not sufficiently original to qualify for copyright protection). Here, there is nothing distinctive about the arrangement (e.g., instrumentation, style and orchestration) of SYS.

858 F. Supp. 1292

Ray REPP and K & R Music, Inc., Plaintiffs,
v.
Andrew LLOYD WEBBER, the Really Useful Group, PLC, the Really Useful Company, Inc., MCA Records, Inc., Hal Leonard Publishing Corporation and Polygram Records, Inc., Defendants.

No. 91 Civ. 0906 (SWK).

United States District Court, S.D. New York.

August 3, 1994.

[858 F. Supp. 1295] Cherry & Flynn by William R. Coulson, Chicago, IL, Chadbourne & Parke by Stanley S. Arkin, New York City, for plaintiffs.

Gold, Farrell & Marks by Jane G. Stevens, New York City, for defendants.

MEMORANDUM OPINION AND ORDER

KRAM, District Judge.

In this copyright infringement action, plaintiffs allege that a musical composition authored by Andrew Lloyd Webber ("Lloyd Webber") entitled "The Phantom of the Opera" (the "Phantom Song") infringes plaintiff Ray Repp's ("Repp") song "Till You." Presently before the Court is defendants' motion for summary judgment, pursuant to Rule 56 of the Federal Rules of Civil Procedure. For the reasons set forth below, the defendants' motion is granted.

BACKGROUND^[1]

I. The "Till You" Song

Plaintiff Repp is a professional musician primarily engaged in composing, publishing, recording and performing popular liturgical music. He has published 11 albums of music, encompassing 120 different musical compositions, and has performed his music in the United States, Europe and Asia.

In September 1978, Repp recorded a working tape of a folk song entitled "Till You," basing the lyrics on certain Biblical verses from the Book of Luke. "Till You" was copyrighted in July 1978. That year, Our Sunday Visitor, Inc. ("OSV"), a Catholic publisher, released Repp's recording of the album Benedicamus, including the song "Till You." The Benedicamus recording was advertised in OSV's weekly newspaper, which was handed out after services in United States Catholic churches across the United States. The Benedicamus album also was released in 1978 at three religious conventions: (1) the Los Angeles Religious Education Congress, attended by approximately 20,000 people; (2) the National Catholic Educators' Convention in St. Louis, attended by more than 20,000 people; and (3) the National Pastor Musicians' Convention in Scranton, Pennsylvania, attended by more than 2,000 people.

In the summer of 1978, Repp started the company K & R Music, Inc. ("K & R"), which re-released the Benedicamus album in December 1978. Repp alleges that he personally ordered the manufacture of 5,000 copies of the Benedicamus album and more than 8,000 cassette tapes of the Benedicamus recording. According to Repp, only a handful of these albums remain, and all of the cassette tapes were either sold or distributed as promotional or airplay copies.^[2] Two of Repp's former employees also testified at their depositions that Repp sold "thousands" of Benedicamus recordings in the late 1970s and early 1980s. In addition, 100 copies of the sound recording were shipped to an Australian distributor in 1981.

The sheet music of "Till You" has been sold in four books — two renditions entitled Benedicamus, and two versions entitled Life Songs. Repp alleges that he personally ordered a total of 13,000 copies of Life Songs [858 F. Supp. 1296] and 12,000 copies of Benedicamus. According to Repp, with the exception of a few dozen copies of one version of Life Songs and one version of Benedicamus, all copies have been sold or distributed as promotional or review copies.

Repp alleges further that he has performed "Till You" at over 200 concerts before at least 100,000 people throughout the United States, Canada, Japan and Korea, at convention centers, churches, universities and theaters. In addition, he alleges that the album Benedicamus has been frequently broadcast on the radio, making the "heavy play list" compiled by Fordham University's campus radio station in New York. In total, Repp alleges that the distribution and exploitation of "Till You" has produced at least $250,000 in revenues.

In order to advertise Repp's music, K & R distributed a tabloid newspaper to more than 300,000 people between 1978 and 1985, including public libraries. K & R also sent out mailings to retail stores and sold Repp's music directly to these stores. According to Repp, many of these stores also sell Lloyd Webber's music and recordings. Additionally, in 1979, Robert Velline ("Velline"), otherwise known as Bobby Vee, a mutual friend of Repp and Lloyd Webber's brother, Julian Lloyd Webber, was given a handmade cassette of some of Repp's works.^[3]

II. The Phantom Song

Defendant Lloyd Webber, a British citizen who maintains a residence in New York City, is the composer of numerous dramatico-musical works, including Joseph and the Amazing Technicolor Dreamcoat, Jesus Christ Superstar, Cats, Evita, Starlight Express, Song and Dance, Aspects of Love, Sunset Boulevard and The Phantom of the Opera. Lloyd Webber has also composed liturgical music, including musical works entitled "Requiem," "Ubi Caritas et Amor Deus," and "Benedicite."^[4] From 1969 to 1975, Lloyd Webber composed and copyrighted, inter alia, two songs entitled "Benjamin Calypso" and "Close Every Door," composed for the musical Joseph and the Amazing Technicolor Dreamcoat, and two songs entitled "Pilate's Dream" and "Heaven on Their Minds," composed for the musical Jesus Christ Superstar.

In late 1983, Lloyd Webber created the Phantom Song at his home in Sydmonton, England. According to Lloyd Webber, the Phantom Song was conceived to showcase the vocal talents of Sarah Brightman ("Brightman"), an actress and singer.^[5] Brightman worked with Lloyd Webber in composing the song, singing notes and musical phrases to assist Lloyd Webber in arriving at the Phantom melody. In February or March 1984, Lloyd Webber provided a tape containing unpublished works in progress, including the melody for the Phantom Song, to Trevor Nunn, an English director.

In the summer of 1984, Lloyd Webber viewed Ken Hill's ("Hill") production, The Phantom of the Opera, a musical farce incorporating arias from mainstream operatic works. After attending the production, Lloyd Webber entered into discussions with [858 F. Supp. 1297] Hill about producing the show for small theatres.

Lloyd Webber considered incorporating the Phantom melody into the Hill project. Accordingly, in late September 1984, Lloyd Webber delivered a tape containing the principal melody of the Phantom song to Michael Batt ("Batt"), an English lyricist. In October 1984, Brightman and Batt made a demonstration recording of the Phantom Song at Air Studios in London. That version of the song was never released, however, and Lloyd Webber decided not to become involved with the Hill production.

In July 1985, Lloyd Webber premiered an abbreviated first act of a musical play based on the book The Phantom of the Opera, during which the Phantom Song was performed, at a private musical festival at his Sydmonton residence. In August 1985, while vacationing in Australia with Brightman, Lloyd Webber created an outline for the second act of the musical play.

Brightman recorded the Phantom Song with Steve Harley in December 1985, a single of which was released in January 1986. The ultimate production of The Phantom of the Opera premiered in London in 1986, and in New York in 1988. The Phantom Song was registered with the United States Copyright Office in 1987.

III. The Complaint

In July 1990, plaintiffs commenced this action in the United States District Court for the Northern District of Illinois for copyright infringement under federal law (Count One) and unfair competition and deceptive trade practices under Ill.Rev.Stats. ch. 121½, ¶¶ 261-272, and 311-317 (Count Two).^[6] Specifically, plaintiffs allege that Lloyd Webber copied Repp's "Till You" song in its Phantom melody. The various corporate defendants are alleged to have distributed and exploited the Phantom Song.

In October 1991, the defendants amended their answers, interposing counterclaims against the plaintiffs alleging, inter alia, that Repp's "Till You" song infringes Lloyd Webber's copyright in "Close Every Door." By Order dated October 30, 1991, the Court bifurcated the action, ordering that all issues of liability be tried separately from issues of damages.

The defendants now move for summary judgment, pursuant to Federal Rule of Civil Procedure 56. According to the defendants, the complaint must fail as a matter of law, as the plaintiffs cannot rebut the defendants' evidence that Lloyd Webber independently created the Phantom Song.

IV. Expert Witness Analyses

A. Professor Ferrara's Report

In support of their motion for summary judgment, the defendants have submitted two affidavits of Lawrence Ferrara, professor of music at New York University, who concludes that the Phantom Song is directly traceable to prior Lloyd Webber works and existing public domain musical compositions. See the Affidavit of Lawrence Ferrara In Support of Defendants' Motion for Summary Judgment, sworn to on June 17, 1993 ("Ferrara Aff."), and the Reply Affidavit of Lawrence Ferrara, sworn to on November 2, 1993 ("Ferrara Supp.Aff."). According to the defendants, this evidence demonstrates that Lloyd Webber independently created the Phantom Song.

1. Musical Similarities Between the Phantom Song and Prior Lloyd Webber Songs

First, Prof. Ferrara contends that phrase one of the Phantom Song (measures 10 through 13 and repeats thereof) has eight melody notes and ten harmonic tones in common with measures 15 through 18 of Lloyd Webber's "Benjamin Calypso" song and measures 17 through 22 of Lloyd Webber's "Pilate's Dream" work.^[7] In addition, measures [858 F. Supp. 1298] 10 and 12 of the Phantom Song, 15 and 17 of "Benjamin Calypso" and 17 and 20 of "Pilate's Dream" all contain an interval of a perfect fourth.^[8] Furthermore, three out of four melody notes are identical between phrase two of the Phantom Song (measures 18 through 22 and repeats thereof), measures 17 and 18 of "Benjamin Calypso" and measures 20 and 22 of "Pilate's Dream."

Second, Prof. Ferrara contends that there are similarities between the Phantom Song and Lloyd Webber's "Close Every Door" and "Heaven On Their Minds" songs. Specifically, there are five consecutive notes identical in pitch content between measures 18 and 19 of the Phantom Song and measures nine through ten of "Close Every Door." The harmony accompanying these five notes is identical. In addition, there are five melody notes in measures two and three of the coda of "Heaven On Their Minds" that are common in pitch content to measures 18 and 19 of the Phantom Song. The harmony accompanying these five notes is also identical.

Finally, Prof. Ferrara notes that Webber uses an interval of a "perfect fourth" as his signature in several of his melodies. Specifically, Prof. Ferrara demonstrates that an ascending then descending perfect-fourth melodic interval is located in each of the following Webber songs:^[9] (1) measures five and six of the "Song Of The King," copyrighted in 1975; (2) measures four and five of "And The Money Kept Rolling In (And Out)," copyrighted in 1977; (3) measure 48 of "Don't Cry For Me Argentina," copyrighted in 1977; (4) measure five of "Gus: The Theatre Cat," copyrighted in 1981; (5) measures 19 and 20 of "Memory," copyrighted in 1981; (6) measures 52 through 53 of "Overture," copyrighted in 1981; (7) measure one of "Engine of Love," copyrighted in 1984 and 1987; and (8) measure eight of "Parlez-Vous Francais," copyrighted in 1989. Based on this evidence, Prof. Ferrara concludes that the Phantom Song was derived from Lloyd Webber's earlier works, and not from Repp's "Till You" song.

2. Musical Similarities Between the Phantom Song and Public Domain Literature

Prof. Ferrara also contends that there are numerous works in existing public domain literature that contain melodic phrases as similar to the Phantom Song as the Phantom Song is similar to "Till You." Specifically, Prof. Ferrara states that there are five consecutive melody notes common in pitch content between measures ten and 11 of the Phantom Song, measures 12 and 13 of J.S. Bach's "Praludium" and measures 14 and 15 of Edvard Grieg's "Melodie."^[10]

In addition there are six consecutive melody notes common in pitch content between measures ten and 11 of the Phantom Song and several measures of the following musical compositions: (1) measures three and four of the Cantorial Chant: "Sh'ma Yisroayl;" (2) measures 25 and 26 of Edvard Holst's "Glittering Sunbeams;" and (3) measures 11 and 12 of G.B. Allen's "None Can Tell." According to Prof. Ferrara, the melodic phrase that appears in phrase one of the Phantom Song is thus a commonplace musical idea and not unique.

B. Professor Hitchcock's Report

Plaintiffs' expert, Prof. H. Wiley Hitchcock ("Hitchcock"), professor of music at the City University of New York, disputes Prof. Ferrara's findings, contending that Prof. Ferrara uses a flawed and misleading methodology of changing and then isolating three-to-six note fragments of the published music at issue to reach his conclusions. Prof. Hitchcock contends further that (1) "Till You" and the [858 F. Supp. 1299] Phantom Song are strikingly similar; (2) "Till You" is not similar to Lloyd Webber's "Close Every Door" song; and (3) "Till You" is not similar to "Heaven on Their Minds" and "Benjamin Calypso."^[11]

In support of his contention that "Till You" and the Phantom Song are strikingly similar, Prof. Hitchcock points to the fact that (1) the basic rhythmic and metrical character of "Till You" and the Phantom Song are identical; (2) the rhythmic aspects of the melodic phrases in "Till You" are echoed in the Phantom Song; and (3) although the two pieces differ in harmony, key and mode, they are identical in harmonic rhythm. Based on this evidence, Prof. Hitchcock concludes that "Till You" and the Phantom Song share significant similarities in every musical element and in the interaction of these musical elements.

V. Musical Similarities Between Prior Webber Songs and Other Works

Plaintiffs contend further that Lloyd Webber has a history of copying from other pieces when composing his musical works. In support of this contention, plaintiffs point to the fact that Lloyd Webber's song "I Don't Know How To Love Him," written for the musical Jesus Christ Superstar, is copied from the slow movement of Mendelssohn's violin concerto. Plaintiffs also contend that Lloyd Webber copied his song "1969" from Beethoven's "Fur Elise." According to the plaintiffs, Lloyd Webber also borrowed from the music of Paganini when he composed his "Variations." In addition, Lloyd Webber's song "Memory," from the musical Cats, bears a remarkable similarity to Larry Clinton's 1942 music "Bolero In Blue."^[12]

DISCUSSION

I. Standard for Summary Judgment

Under Rule 56(c) of the Federal Rules of Civil Procedure, a motion for summary judgment must be granted "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with affidavits, if any, 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." Fed.R.Civ.P. 56(c). The moving party must initially satisfy a burden of demonstrating the absence of a genuine issue of material fact, which can be done merely by pointing out that there is an absence of evidence to support the nonmoving party's case. Celotex Corp. v. Catrett, 477 U.S. 317, 323-25, 106 S.Ct. 2548, 2552-54, 91 L.Ed.2d 265 (1986). The nonmoving party then must meet a burden of coming forward with "specific facts showing that there is a genuine issue for trial," Fed.R.Civ.P. 56(e), by "a showing sufficient to establish the existence of every element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex Corp. v. Catrett, 477 U.S. at 322, 106 S.Ct. at 2552.

The Court "must resolve all ambiguities and draw all reasonable inferences in favor of the party defending against the motion." Eastway Constr. Corp. v. New York, 762 F.2d 243, 249 (2d Cir.1985); see also Adickes v. S.H. Kress & Co., 398 U.S. 144, 158-59, 90 S.Ct. 1598, 1608-10, 26 L.Ed.2d 142 (1970); Hathaway v. Coughlin, 841 F.2d 48, 50 (2d Cir.1988); Knight v. United States Fire Ins. Co., 804 F.2d 9, 11 (2d Cir.1986), cert. denied, 480 U.S. 932, 107 S.Ct. 1570, 94 L.Ed.2d 762 (1987). But the Court is to inquire whether "there is sufficient evidence favoring the non-moving party for a jury to return a verdict for the party," Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986), and to grant summary judgment where the nonmovant's evidence is [858 F. Supp. 1300] merely colorable, conclusory, speculative or not significantly probative. Id. at 249-50, 106 S.Ct. at 2510-11; Knight v. United States Fire Ins. Co., 804 F.2d at 12, 15; Argus Inc. v. Eastman Kodak Co., 801 F.2d 38, 45 (2d Cir.1986), cert. denied, 479 U.S. 1088, 107 S.Ct. 1295, 94 L.Ed.2d 151 (1987).

To determine whether the nonmoving party has met his or her burden, the Court must focus on both the materiality and the genuineness of the factual issues raised by the nonmovant. As to materiality, "it is the substantive law's identification of which facts are critical and which facts are irrelevant that governs." Anderson v. Liberty Lobby, Inc., 477 U.S. at 248, 106 S.Ct. at 2510. A dispute over irrelevant or unnecessary facts will not preclude summary judgment, id., but the presence of unresolved factual issues that are material to the outcome of the litigation mandates a denial of the summary judgment motion. See, e.g., Knight v. United States Fire Ins. Co., 804 F.2d at 11-12.

Once the nonmoving party has successfully met the burden of establishing the existence of a genuine dispute as to an issue of material fact, summary judgment must be denied unless the moving party comes forward with additional evidence sufficient to satisfy his or her ultimate burden under Rule 56. See Celotex Corp. v. Catrett, 477 U.S. at 330, n. 2, 106 S.Ct. at 2556, n. 2 (Brennan, J., dissenting). In sum, if the Court determines that "the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no `genuine issue for trial.'" Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986) (quoting First Nat'l Bank of Arizona v. Cities Serv. Co., 391 U.S. 253, 289, 88 S.Ct. 1575, 1593, 20 L.Ed.2d 569 (1969)); see also Weg v. Macchiarola, 654 F.Supp. 1189, 1191-92 (S.D.N.Y.1987). In copyright infringement cases, courts have regularly granted summary judgment where it is clear that the plaintiff cannot make out the elements of the claim. See Siskind v. Newton-John, 84 Civ. 2634, 1987 WL 11701, at *4, 1987 U.S.Dist. LEXIS 4084, at *11 (S.D.N.Y. May 22, 1987).^[13]

II. Copyright Infringement

In order to prove copyright infringement, plaintiffs must show ownership of a valid copyright and unauthorized copying by the defendants. See Laureyssens v. Idea Group, Inc., 964 F.2d 131, 139 (2d Cir.1992); Rogers v. Koons, 960 F.2d 301, 306 (2d Cir. 1992), cert. denied, ___ U.S. ___, 113 S.Ct. 365, 121 L.Ed.2d 278 (1992); Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 763 (2d Cir.1991). Defendants do not contest that plaintiffs own a valid copyright in the "Till You" song. Accordingly, the Court must consider whether a reasonable jury could conclude that Lloyd Webber copied the "Till You" song in composing the Phantom Song.

A prima facie case of copying is established from a showing that a defendant had access to the copyrighted work and that substantial similarities exist between the original work and the infringing work. Laureyssens v. Idea Group, Inc., 964 F.2d at 139; Folio Impressions, Inc. v. Byer California, 937 F.2d at 765. A defendant can then rebut this inference of copying "by showing that its product was independently created despite its similarity to the plaintiff's work." Gund, Inc. v. Russ Berrie and Co., 701 F.Supp. 1013, 1018 (S.D.N.Y.1988); see also Novak v. National Broadcasting Co., 752 F.Supp. 164, 168 (S.D.N.Y.1990) (stating that an inference of copying may be rebutted by showing that the work was independently created, either without reference to the plaintiff's work, or by copying a work already in the public domain).

Once copying is established, the plaintiff must show that the copying amounts to an improper appropriation "by demonstrating that substantial similarities relate to protectible [858 F. Supp. 1301] material." Laureyssens v. Idea Group, Inc., 964 F.2d at 140. In determining whether the infringed work has been unlawfully appropriated, the Court must consider whether "the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard the aesthetic appeal of the two works as the same." McDonald v. Multimedia Entertainment, Inc., 90 Civ. 6356, 1991 WL 311921, at *2, 1991 U.S.Dist. LEXIS 10649, at *6 (S.D.N.Y. July 19, 1991).

A. Evidence of Access

Defendants contend that plaintiffs cannot prove that Lloyd Webber had access to Repp's "Till You" song prior to composing the Phantom Song. The Court agrees.

Access is defined as "`hearing or having a reasonable opportunity to hear the plaintiff's work, in other words having the opportunity to copy.'" Sylvestre v. Oswald, 91 Civ. 5060, 1993 WL 179101, at *3, 1993 U.S.Dist. LEXIS 7002, at *7 (S.D.N.Y. May 18, 1993) (quoting Intersong-USA v. CBS, Inc., 757 F.Supp. 274, 281 (S.D.N.Y.1991)). "Generally, in order to show access plaintiffs must demonstrate more than a `bare possibility' that defendant had access to the work; access must be shown to a `reasonable possibility.'" Id.; see also Ferguson v. National Broadcasting Co., 584 F.2d at 113; Siskind v. Newton-John, 1987 WL 11701, at *4, 1987 U.S.Dist. LEXIS 4084, at *11. In addition, a reasonable possibility of access may not be inferred through speculation or conjecture, see Gaste v. Kaiserman, 863 F.2d 1061, 1066 (2d Cir.1988); Sylvestre v. Oswald, 1993 WL 179101, at *3, 1993 U.S.Dist. LEXIS 7002, at *7, but must be established by probative evidence. See Scott v. Paramount Pictures Corp., 449 F.Supp. 518, 520 (D.D.C.1978) (finding speculations and inferences as to access were insufficient to meet defendants' summary judgment challenge), aff'd, 607 F.2d 494 (D.C.Cir.1979), cert. denied, 449 U.S. 849, 101 S.Ct. 137, 66 L.Ed.2d 60 (1980).

A plaintiff can satisfy his or her burden of proving access by demonstrating either that (1) the infringed work has been widely disseminated; or (2) a particular chain of events exists by which the alleged infringer might have gained access to the copyrighted work. Sylvestre v. Oswald, 1993 WL 179101, at *3, 1993 U.S.Dist. LEXIS 7002, at *8. Lloyd Webber has categorically denied ever having heard of Repp or his music prior to this litigation. While plaintiffs have no direct evidence that Lloyd Webber heard "Till You" prior to composing the Phantom Song, they contend that access can be inferred from the fact that Repp's music was given to Velline, a mutual friend of Repp and Julian Lloyd Webber. Alternatively, plaintiffs argue that access can be inferred from the wide dissemination of the "Till You" song to the public.

First, plaintiffs argue that access can be inferred from the fact that a cassette recording of Repp's music was given to Velline, who was also a friend of Julian Lloyd Webber and an acquaintance of Lloyd Webber. While courts have often found access when an alleged infringer and an intermediary occupy positions "such that it is natural that information possessed by one would be imparted to the other," see Meta-Film Assocs., Inc. v. MCA, Inc., 586 F.Supp. 1346, 1356 (C.D.Cal.1984), a finding of access here is not supported by the evidence. In fact, Velline cannot recall whether the cassette tape of Repp's music in his possession included the "Till You" song. In addition, Velline testified that he did not meet either of the Lloyd Webbers prior to 1983, when Lloyd Webber alleges that he composed the melody for the Phantom Song, and had only met Lloyd Webber on one occasion. Finally, Velline testified that he did not discuss or distribute Repp's music to either of the Lloyd Webbers. Accordingly, the Court finds that any nexus that exists between Velline and Lloyd Webber is insufficient to justify an inference of access on this basis.

Second, plaintiffs contend that access can be inferred from the wide distribution of the "Till You" song. The Second Circuit has recognized that a plaintiff may establish access by proving that there has been "wide dissemination" of the copyrighted work. ABKCO Music, Inc. v. Harrisongs Music, Ltd., 722 F.2d 988, 998 (2d Cir.1983) (finding access where plaintiff's song was "Number [858 F. Supp. 1302] One" on the United States Billboard Charts and one of the "Top Thirty Hits" in England). Where the copyrighted work has only been published to a limited audience, however, access cannot be inferred absent evidence that the defendants had a reasonable opportunity to view the work. See Intersong-USA v. CBS, Inc., 757 F.Supp. at 281 (dismissing plaintiffs' claim of radio access where there was no proof that the defendants' songwriters heard the song); Novak v. National Broadcasting Co., 752 F.Supp. at 170 (no genuine issue of fact regarding access despite fact that plaintiff's skits were broadcast several times on a national television show); Jewel Music Pub. Co. v. Leo Feist, Inc., 62 F.Supp. 596, 598 (S.D.N.Y.1945) (finding no access to plaintiff's song despite fact that 4,000 copies were distributed to various broadcasting stations and artists, and 5,626 copies, 168 orchestrations and 198 band arrangements were sold); see also Benson v. Coca-Cola Co., 795 F.2d 973, 975 (11th Cir. 1986) (finding fact that plaintiff had performed his song around the country did not establish access where no evidence that defendant's songwriters visited any of the places of performance during the relevant time period); Selle v. Gibb, 741 F.2d 896, 902 (7th Cir.1984) (finding no more than a bare possibility that defendants had access to the plaintiff's song where song had been performed two or three times in the Chicago area and sent to eleven publishing companies); Jason v. Fonda, 526 F.Supp. 774, 776-77 (C.D.Cal.1981) (fact that 200 to 700 copies of plaintiff's book were available in Southern California bookstores "creates no more than a `bare possibility' that defendants may have had access to plaintiff's book"), aff'd, 698 F.2d 966 (9th Cir.1982).

In the case at hand, plaintiffs point to the more than 38,000 copies of the "Till You" song that they allege were distributed in album, cassette tape and sheet music form in support of their contention that "Till You" was widely disseminated. Plaintiffs have no documentary proof, however, of the number of copies of the "Till You" song that were actually distributed to the public during the relevant time period. Instead, plaintiffs merely contend that Repp personally ordered copies of the "Till You" recording from various manufacturers and that these copies are no longer in his possession. Such evidence does not prove that the "Till You" song was disseminated to the general public during the relevant time period. Rather, the copies could have been disseminated, if at all, after Lloyd Webber composed the Phantom Song.

In addition, plaintiffs point to the testimony of Repp's employees that "thousands" of recordings of the Benedicamus album were distributed. This testimony does not prove wide dissemination of the "Till You" song, however, as it does not specify quantity, time and place of distribution. Plaintiffs' evidence that 100 recordings of the "Till You" song were shipped to a distributor in Australia similarly lacks details as to time and place of distribution. In any event, Lloyd Webber did not travel to Australia until August 1985, one month after the Phantom Song was performed at his Sydmonton home. Accordingly, the Court finds that plaintiffs' evidence of "wide dissemination" does not rise above the level of pure speculation.

Plaintiffs next argue that Repp's music was widely advertised, as K & R distributed a tabloid newspaper advertising Repp's work to more than 300,000 people between 1978 and 1985, including public libraries, and sent out mailings to retail stores. Aside from failing to submit any evidence in support of this allegation, however, the Court finds that the fact that K & R may have distributed newspapers and mailings advertising Repp's music does not establish that the "Till You" song was advertised as a distinct musical composition.

Plaintiffs' remaining proof of access consists of evidence that the "Till You" song was advertised and performed in a specialized religious market. Specifically, plaintiffs contend that (1) Repp performed the "Till You" song at convention centers, churches, universities and theaters; (2) the Benedicamus recording was released at three religious conventions; (3) the Benedicamus album was advertised in newspapers handed out at catholic churches across the United States; and (4) the Benedicamus album was [858 F. Supp. 1303] frequently broadcast on a catholic college radio station. As Lloyd Webber composes liturgical works, among others, plaintiffs argue that he could have had the opportunity to hear the "Till You" song prior to composing the Phantom Song. The Court finds, however, that the mere fact that Lloyd Webber composes liturgical works and is "fond of church music," see the Webber Dep. at 67-68, 259, does not establish either that he visited any of the places at which Repp's "Till You" song was performed, or had access to the Benedicamus recording during the relevant time period. Accordingly, as plaintiffs have failed to submit any evidence that Lloyd Webber had a reasonable opportunity to hear the "Till You" song prior to composing the Phantom Song, the Court finds that plaintiffs have failed to establish the access element of their copyright infringement claim.

B. Substantial Similarity

Plaintiffs next contend that the "Till You" song is so "strikingly similar" to the Phantom Song as to preclude the possibility of independent creation, and that, therefore, access to "Till You" can be inferred as a matter of law. "In some cases, the similarities between the plaintiff's and defendant's work are so extensive and striking as, without more, both to justify an inference of copying and to prove improper appropriation." Arnstein v. Porter, 154 F.2d at 468-69. Accordingly, where the copyrighted work and the infringing work are "strikingly similar," the test for proof of access is less rigorous. See Gaste v. Kaiserman, 863 F.2d at 1067. However, the "striking similarity between pieces of popular music must extend beyond themes that could have been derived from a common source or themes that are so trite as to be likely to reappear in many compositions." Id. at 1068-69. Thus, striking similarity "is not merely a function of the number of identical notes that appear in both compositions," Selle v. Gibb, 741 F.2d at 903, but also of the uniqueness of the sections which are asserted to be similar. Id. at 904. "To prove that similarities are striking, claimant must demonstrate that such similarities are of a kind that can only be explained by copying, rather than by coincidence, independent creation, or prior common source." Stratchborneo v. Arc Music Corp., 357 F.Supp. 1393, 1403 (S.D.N.Y.1973).

Upon aural examination of the two songs and consideration of the expert testimony submitted by both parties, the Court finds that any similarities that exist between the two works are not so extensive as to support an inference of copying and improper appropriation without more. While the two melodies share several common notes, the songs differ in tempo and style. In addition, plaintiffs' expert, Prof. Hitchcock, concedes that the two pieces differ in harmony, key and mode. Under the circumstances, the Court finds that the two songs do not share a striking similarity sufficient to justify a finding of copying in the absence of access to the copyrighted work.^[14]

C. Independent Creation

A defendant can "rebut the inference of copying by showing that its product was independently created despite its similarity to plaintiff's work." Gund, Inc. v. Applause, Inc., 809 F.Supp. 304, 308 (S.D.N.Y.1993); see also Intersong-USA v. CBS, Inc., 757 F.Supp. at 282 ("defendants could rebut an inference of copying by proving that the work was created independently of the plaintiff's work"); Novak v. National Broadcasting Co., 752 F.Supp. at 170. In the instant case, even if plaintiffs could prove access and substantial similarity, they have not submitted any evidence to controvert the defendants' proof of independent creation.

Defendants have submitted declarations from Lloyd Webber and Brightman detailing the circumstances surrounding the creation of the Phantom Song. Specifically, Lloyd Webber states that he created the Phantom [858 F. Supp. 1304] Song at his Sydmonton home in late 1983, in order to showcase Brightman's vocal talents. Tapes of the Phantom melody were sent to an English director and lyricist in 1984. In October 1984, a demonstration tape of the Phantom Song was recorded, and in July 1985, the Phantom Song was performed as part of the first act of a musical play.

Plaintiffs have not submitted any evidence to contradict defendants' proof that the Phantom Song was created in the manner detailed above. Instead, they argue that Lloyd Webber's prior history of copying from other composers rebuts his claim of independent creation. Specifically, plaintiffs submitted evidence that Lloyd Webber (1) copied "I Don't Know How To Love Him" from the slow movement of Mendelssohn's violin concerto; (2) copied his song "1969" from Beethoven's "Fur Elise;" (3) borrowed from the music of Paganini when he composed his "Variations;" and (4) copied from Larry Clinton's "Bolero In Blue" when he composed the song "Memory." Even assuming such evidence is admissible under Fed. R.Evid. 404(b), however, the Court finds that plaintiffs have not disproved Lloyd Webber's allegations of independent creation, as their evidence does not point to any prior findings of copyright infringement. Compare Pret-A-Printee, Ltd. v. Allton Knitting Mills, Inc., 1981-1982 Copy.L.Rep. (CCH) ¶ 25,447, 1982 WL 1788 (S.D.N.Y. Sept. 16, 1982) (finding that defendants' past record of copyright infringement indicates a practice of copying despite claims of independent creation).

Plaintiffs' remaining argument is that Lloyd Webber and Brightman are interested parties, and that their allegations of independent creation are therefore incredible. Nonetheless, mere hope that a fact-finder will disbelieve the testimony of witnesses on the issues of access and independent development is not sufficient to defeat a motion for summary judgment. See Vantage Point, Inc. v. Parker Bros., Inc., 529 F.Supp. 1204, 1213 (E.D.N.Y.1981), aff'd, 697 F.2d 301 (2d Cir.1982); see also Modern Home Inst., Inc. v. Hartford Accident and Indem. Co., 513 F.2d 102, 110 (2d Cir.1975) ("If the most that can be hoped for is the discrediting of defendants' denials at trial, no question of material fact is presented."). Accordingly, the Court finds that the defendants' uncontradicted evidence of independent creation negates any claim of infringement.^[15] See Novak v. National Broadcasting Co., 752 F.Supp. at 171.

II. State Law Claims

As plaintiffs' federal claims for copyright infringement fail, there is no further basis for federal jurisdiction. In addition, as plaintiffs and several of the defendants are residents of New York, complete diversity of citizenship is lacking. See 28 U.S.C. § 1332. Accordingly, plaintiffs' state claims of unfair competition and deceptive trade practices under Ill.Rev.Stats., ch. 121½, ¶¶ 261-272, and 311-317 are dismissed for lack of subject matter jurisdiction. See DBC of New York, Inc. v. Merit Diamond Corp., 768 F.Supp. 414, 418 (S.D.N.Y.1991) (dismissing unfair competition claim for lack of subject matter jurisdiction following court's dismissal of federal claims); Howe v. Reader's Digest Ass'n, 686 F.Supp. 461, 467 (S.D.N.Y.1988) (dismissing pendent state law claims for lack of jurisdiction after granting summary judgment dismissing plaintiff's federal claims).

CONCLUSION

For the reasons set forth above, defendants' motion for summary judgment is granted, and the complaint is dismissed. The parties shall appear before the Court for a pretrial conference with respect to defendants' counterclaims on Wednesday, October 12, 1994, at 10:30 a.m.

SO ORDERED.

[1] The following facts are taken from the complaint, the parties' Rule 3(g) Statements, the Declaration of Andrew Lloyd Webber in Support of Summary Judgment, executed on June 17, 1993 (the "Webber Dec."), the Declaration of Sarah Brightman In Support of Summary Judgment, executed on June 17, 1993 and the Declaration of Ray Repp in Response to Defendants' Motion for Summary Judgment, executed on September 14, 1993 (the "Repp Dec.").

[2] Repp has no documentary evidence of the number of copies of the Benedicamus recording actually sold to the public during the late 1970s and early 1980s, however, as he contends that, in 1988, he discarded all financial documents dated prior to 1985.

[3] Velline testified at his deposition that he did not meet Julian Lloyd Webber until October 1985, and met Andrew Lloyd Webber on one occasion a year after The Phantom of the Opera premiered in London. See Deposition of Robert Velline, taken on November 4, 1992 ("Velline Dep."), annexed to the Reply Affidavit of Jane G. Stevens, sworn to on November 4, 1993, as Exh. "H," at 55, 65. Plaintiffs dispute this date, pointing to deposition testimony that Velline met the Lloyd Webbers in the early 1980s. See Velline Dep., annexed to Plaintiffs' Exhibits to Their Response to Defendants' Motion for Summary Judgment ("Plaintiffs' Exhibits") as "P26," at 159-160. In any event, Velline does not recall whether the handmade cassette tape of Repp's music contained the "Till You" song. Velline also indicated that he had never discussed Repp's music with either of the Lloyd Webbers, or given either of them a copy of Repp's music. Id. at 68-69.

[4] Lloyd Webber testified at his deposition that he "is very fond of church music," and "had an opportunity to listen to a great amount of church music ... around the time of his composition of a requiem." See Deposition of Andrew Lloyd Webber, taken on November 9, 1992 (the "Webber Dep."), annexed to Plaintiffs' Exhibits as Exh. "P24," at 67-68, 259. Lloyd Webber's father also was a composer of liturgical music.

[5] Both Lloyd Webber and Brightman allege that they had never heard of Repp or his music prior to this litigation.

[6] The action was transferred to this Court in April 1991.

[7] The three primary musical elements of a composition consist of melody, harmony and rhythm, which flow through spans of time, called "measures." Melody is the vocal part of a song, comprised of a number of musical notes each of which is separated by specific intervals. The rhythm of a song is determined by the time value of notes and silences, as well as accentuation, grouping of notes and contour. The harmony of a song is the relationship of tones, i.e., the essence of how one chord (consisting of three or more notes sounded simultaneously) relates to the next, and how the chords progress from the first chord in a phrase of music to the last. See Ferrara Aff. at ¶¶ 12, 13.

[8] Unlike the Phantom Song, however, the first three melody notes of measures one and three of "Till You" move up and down an interval of a minor sixth.

[9] As plaintiffs emphasize, however, these examples illustrate merely eight instances of the use of a perfect-fourth interval sequence out of more than 150 Lloyd Webber compositions.

[10] Plaintiffs argue, however, that an aural examination of the public domain music cited by the defendants reveals that this music sounds nothing like either "Till You" or the Phantom Song.

[11] As the defendants' motion for summary judgment is not based on any alleged similarities between "Till You" and either "Close Every Door," "Heaven on Their Minds" or "Benjamin Calypso," however, the Court finds that Prof. Hitchcock's second and third conclusions are irrelevant for the purposes of this Opinion.

[12] In response, defendants contend that Mendelssohn's "Violin Concerto," Paganini's "A Minor Caprice" and Beethoven's "Fur Elise" were in the public domain long before Lloyd Webber's works were created. With respect to Clinton's "Bolero In Blue," defendants contend that there is no evidence that (1) Lloyd Webber had access to Clinton's work prior to composing "Memories;" (2) "Bolero In Blue" is a protected work; or (3) Clinton or anyone on his behalf ever asserted a claim that Lloyd Webber's "Memories" infringes "Bolero In Blue."

[13] While the Second Circuit historically held that a grant of summary judgment is improper whenever there is the slightest doubt as to the facts, see Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir.1946), this holding is no longer good law. See Heyman v. Commerce and Indus. Ins. Co., 524 F.2d 1317, 1319 (2d Cir.1975). Rather, "once the moving party has properly supported his summary judgment motion, the nonmoving party must rebut with `significant probative' evidence." Ferguson v. National Broadcasting Co., 584 F.2d 111, 114 (5th Cir.1978).

[14] As the Court finds that plaintiffs have not set forth a prima facie case of copying, it need not address whether a reasonable jury could conclude that the defendants unlawfully appropriated plaintiffs' work. The Court notes, however, that, as unlawful appropriation is judged by the response of the ordinary lay observer, see McDonald v. Multimedia Entertainment, Inc., 1991 WL 311921, at *2, 1991 U.S.Dist. LEXIS 10649, at *6, defendants' expert testimony on this issue is inadmissible. Id. (stating that consideration of expert testimony on this issue is improper).

[15] Defendants have also submitted expert testimony indicating that the Phantom Song was derived from Lloyd Webber's earlier works rather than from the "Till You" song. While such evidence is relevant to the issue of whether the two works are more likely due to copying or independent creation, see McDonald v. Multimedia Entertainment, Inc., 1991 WL 311921, at *1, 1991 U.S.Dist. LEXIS 10649, at *5, the Court finds that defendants' expert evidence in this case does not conclusively rebut an inference of copying as a matter of law.

[882] 132 F.3d 882

1998 Copr.L.Dec. P 27,711, 45 U.S.P.Q.2d 1285

Ray REPP & K & R Music, Inc., Plaintiffs-Counter-Defendants-Appellants-Cross Appellees,
v.
Andrew Lloyd WEBBER; Really Useful Group, plc, Defendants-Counter-Claimants-Appellees-Cross Appellants, Really Useful Company, Incorporated; MCA Records, Inc.; Hal Leonard Publishing Corporation; Polygram Records, Incorporated,
Defendants-Appellees-Cross Appellants.

Nos. 218, 509, Dockets 96-9691, 97-7050.

United States Court of Appeals,
Second Circuit.

Argued Oct. 6, 1997.
Decided Dec. 30, 1997. 

[883] William R. Coulson, Cherry & Flynn, Chicago, IL (Peter Flynn, Cherry & Flynn, Chicago, IL, of counsel), for Plaintiffs-Counter-Defendants-Appellants-Cross-Appellees.

Jane G. Stevens, Gold, Farrell & Marks, New York City (Christine Lepera, Robert P. Mulvey, Gold, Farrell & Marks, New York [884] City, of counsel), for Defendants-Counter-Claimants-Appellees-Cross-Appellants and Defendants-Appellees-Cross Appellants.

Before: KEARSE, MINER and CABRANES, Circuit Judges.

MINER, Circuit Judge:

Plaintiffs Ray Repp and K & R Music, Inc. ("K & R") appeal from a summary judgment entered in the United States District Court for the Southern District of New York (Kram, J.) in favor of defendants in an action involving claims and counterclaims grounded in copyright infringement. The defendants are Andrew Lloyd Webber, a well-known British composer of musical works for stage production, Really Useful Group, plc, his copyright proprietor, and Really Useful Company, Incorporated, Polygram Records, Inc., MCA Records, Inc. ("MCA") and Hal Leonard Publishing Corporation, all said to be Lloyd Webber's licensees. The summary judgment dismissed the claim of Repp, an established American composer of popular liturgical music, and K & R, a publisher of religious and church music, that the "Phantom Song," composed by Lloyd Webber, copies the song, "Till You," composed by Repp. Also before us is a cross-appeal from a judgment in favor of Repp and K & R entered in the same action after a non-jury trial. This judgment dismissed the counterclaims of Lloyd Webber and his copyright proprietor alleging that "Till You" copies the song "Close Every Door" composed by Lloyd Webber.

For the reasons that follow, we reverse the summary judgment that is subject of the appeal, and we affirm the judgment entered after trial that is subject of the cross-appeal.

BACKGROUND

I. Of Ray Repp, His Music and His Claim.

Repp has been a professional composer and performer of liturgical music for more than thirty years. He has written and published music for eleven albums, encompassing one hundred twenty different musical compositions. Over the years, Repp has performed in the United States, Canada, Europe and Asia, and some of his lyrics have been translated into foreign languages. His music has been published by his own company, plaintiff K & R, as well as others, including Our Sunday Visitor, FEL Publications, Word Publications and Hope Publications. It also has been published by the Lutheran, Episcopal, Presbyterian and Catholic churches and by the Church of the Brethren. Repp's songs have been included in various hymnals and song books. He has been recognized as a leading author and performer of liturgical folk music.

Repp wrote the song "Till You" in 1978 and registered it with the United States Copyright Office the same year. The song is liturgical in nature, being based on passages from the Book of Luke, commonly known as the "Magnificat." It has been distributed since 1978 as part of the album "Benedicamus" in the form of cassettes and record albums. The song appears in sheet music form in books entitled "Benedicamus" and "Life Songs." Twenty-five thousand copies of the sheet music were said to have been published and distributed.

With respect to albums or cassettes that included "Till You," Repp asserts that he personally ordered a total of eighteen thousand copies and that all but a handful have been sold or distributed. Repp is not fully able to document the sales, but he does have some records, including those relating to sales of fifty albums and fifty cassettes of "Benedicamus" to a distributor in Australia. Although music from "Benedicamus" may have made the "heavy play list" at the Fordham University Radio Station, Repp could not establish the frequency with which "Till You" was played on any radio station. However, Repp has performed the song in over two hundred concerts given since 1978 in the United States and many foreign countries. These performances were given in convention centers, churches, universities and theaters. Repp estimates that over one hundred thousand people have heard him perform his song "Till You," and he contends that Lloyd Webber, having had access to this music, copied it, intentionally or unintentionally, in writing the "Phantom Song."

[885] II. Of Andrew Lloyd Webber, His Music, His Defense and His Counterclaims.

Lloyd Webber is a composer who has achieved outstanding international success. He resides in England, maintains a residence in New York City, and travels widely. He has more than three hundred published compositions to his credit. His work for the theater includes such acclaimed musical shows as "Joseph and the Amazing Technicolor Dreamcoat," "Jesus Christ Superstar," "Cats," "Evita," "Starlight Express," "Song and Dance," "Aspects of Love," "Sunset Boulevard," and "The Phantom of the Opera." Lloyd Webber completed the "Phantom Song" in late 1984, and the piece was recorded in December 1985 by Sarah Brightman and Steve Harley. It was released as a single recording in January 1986 in England. "The Phantom of the Opera," a dramatico-musical show had its premiere in London in 1986. "Phantom Song" is an important part of the work, which was registered in the United States Copyright Office in 1987. The show opened on Broadway in 1988.

"Joseph and the Amazing Technicolor Dreamcoat" (hereinafter, "Joseph") first was presented as a choral work in London in 1968. The song "Close Every Door" was among the first portions of the choral presentation that Lloyd Webber completed. The composition was a centerpiece in every subsequent version of "Joseph," which was based on the Biblical tale of Joseph's sale into slavery by his brothers and subsequent rise to success in Egypt. An expanded version was presented at the Edinburgh Festival in 1972 and in London in 1973. Following the London run, Lloyd Webber and lyricist Tim Rice further expanded "Joseph" into a full-length musical. In 1989, Lloyd Webber's company, Really Useful Group, acquired by assignment all the rights and interest in the copyright for "Joseph," including "Close Every Door." The assignment thereafter was recorded in the United States Copyright Office.

"Joseph" was recorded as an album by Decca Records and publicly released in 1969. "Close Every Door" was the first single recording released from the album. In 1971, Sceptre Records released the album in the United States, where it was sold in retail stores and appeared on the Billboard Magazine charts of Top LPs for twelve weeks. MCA issued a sound recording of "Joseph," including "Close Every Door," in 1974. Sales of the MCA recording exceeded twenty-three thousand units. Between 1969 and 1978, at least forty thousand copies of the sheet music of the vocal score were sold. Between 1968 and 1978, "Joseph" was widely performed by stock and amateur theater companies and was broadcast on the radio. "Close Every Door" was heard in the United States on religious radio programs, which Lloyd Webber asserts were "directly within Repp's sphere of interest." Lloyd Webber contends that the widespread dissemination of "Close Every Door," together with Repp's interest in the musical genre, provide important evidence of access. He asserts that there are striking and significant similarities demonstrating that "Till You" copies the earlier written "Close Every Door."

III. Of Defendants' Motion for Summary Judgment.

A. The Motion and the Response.

The defendants' summary judgment motion was made at the conclusion of fact and expert discovery. The moving papers include a declaration by Lloyd Webber that he began to compose "Phantom Song" at Sydmonton Court, his home in Sydmonton, England, in late 1983. Sarah Brightman, who later became his wife, worked with him as he composed. According to Lloyd Webber, the song was designed to show off Brightman's vocal range, and she sang the melody as he composed at the piano. No lyrics were written at that time, and no notation of the music was made. Lloyd Webber declared that, although the song was not completed that day, the whole of the melody was developed. Thereafter, Lloyd Webber was occupied with other projects and did not get around to completing the entire "Phantom Song" until 1984.

Ms. Brightman furnished a declaration confirming Lloyd Webber's account of the origination of "Phantom Song." In her declaration, she recalled Lloyd Webber asking her [886] to sing the music that he played on the piano. Lloyd Webber modified the melody and the chords of the piece as he played and she sang. Brightman declared that in September 1984 she accompanied Lloyd Webber to a meeting with Michael Batt, who was to produce a recording of the song Lloyd Webber had composed for her. In October 1984, Brightman and Batt recorded "Phantom Song" at Air Studios in London.

Both Lloyd Webber and Brightman assert that they never heard of Ray Repp or his music prior to this litigation. Lloyd Webber testified at his deposition that he dislikes "pop church music" and never listens to it. His interest in "church music" is limited to "the English Choral tradition." Although Repp alleged a connection with Lloyd Webber through a common acquaintance, Robert Velline, it appears that Velline actually was acquainted with Lloyd Webber's brother and met Lloyd Webber only briefly in 1986. Velline, a 1960s rock singer known as Bobby Vee, had received a copy of Repp's album, "Benedicamus," in 1979.

Lloyd Webber also submitted in support of his motion for summary judgment the affidavits and report of an expert musicologist, Dr. Lawrence Ferrara. Ferrara is a Professor of Music at New York University and has written numerous books and articles on musical analysis. In analyzing the part of "Till You" allegedly infringed by the "Phantom Song," he identified two separate musical phrases in "Till You," and three separate phrases in the "Phantom Song." Ferrara determined that the third phrase really was a variant of the first phrase in the latter piece. In arriving at his findings, he reviewed Lloyd Webber's prior works as well as other extant musical literature.

Ferrara found that the first phrase of the "Phantom Song" was derived from Lloyd Webber's earlier compositions: "Benjamin Calypso" and "Pilate's Dream." He also identified in phrase one various compositions in the public domain, including pieces by Bach and Grieg. He found that phrase two of the "Phantom Song" was derived primarily from "Close Every Door" but also from other works by Lloyd Webber. Professor Ferrara was of the opinion that there is a greater similarity between phrase two of "Close Every Door" and phrase two of "Till You" than there is between phrase two of "Phantom Song" and phrase two of "Till You." Defendants put forth Ferrara's findings that the two relevant phrases of the "Phantom Song" were derived from compositions by Lloyd Webber that predated "Till You," and his findings that the melody in phrase one was derived from compositions in the public domain, to support their claim that any music in the "Phantom Song" similar to "Till You" results from Lloyd Webber's independent creation.

Plaintiffs' response to the motion for summary judgment included the affidavits and reports of two musicologists--Professors H. Wiley Hitchcock and James Mack. Professor Hitchcock is Distinguished Professor of Music at the City University of New York and Founding Director of the Institute for Studies in American Music at Brooklyn College of City University. He is the author of a number of scholarly books and articles about music. Hitchcock provided a thirty-five page musicological analysis, with attached charts, to support his conclusion that "Phantom Song" is based on "Till You." In his analysis, he examined overall structure, rhythm and meter, melody and harmony and the interaction of these elements in the two pieces as a whole. Hitchcock found "the basic rhythmic character" and the "basic metrical character" of each piece identical. Although the two pieces are written in different harmonic modes, Hitchcock opined that they "reveal significant correspondences, and in harmonic rhythm an absolute identity."

According to Professor Hitchcock, the principal and most important aspect to be considered in the comparison of the two pieces is the melody of each piece. Analyzing pitch and rhythm as the constituent elements of melody, Hitchcock asserted that "there were striking similarities between the two melodies." His conclusion was as follows:

Between "Till You" and "Phantom Song," however, the similarities are so many, in so many areas, over such an extraordinary proportion of the compositions, that I cannot consider them as insignificant or coincidental, [887] and I must conclude that "Phantom Song" is based on "Till You."

Professor Mack is Professor and Chairman of the Humanities Department at Harold Washington College in Chicago, Illinois. He has composed music and has been employed as an arranger, conductor and record producer. He also has been involved in the production of radio and television commercials. Professor Mack has conducted various symphony orchestras in the performance of his own works and has performed as a flautist on a number of occasions. His analyses are put forth in his affidavit and in Repp's answer to certain interrogatories. Mack approached the music in question from a contemporary commercial point of view as well as from the traditional academic perspective utilized by Professor Hitchcock.

Although he was largely in agreement with Professor Hitchcock's analysis and conclusions, Professor Mack found "even more similarities," particularly "harmonic similarities" than were found by Hitchcock. Mack's analysis also took into account his opinion that aural impressions are more significant in commercial music than in symphonic music because the former is designed for the lay listener who derives his impression from what he or she hears. Professor Mack concluded "that 'Till You' and 'Phantom' are strikingly similar, and are so similar as to preclude separate creation."

B. The Opinion of the District Court.

In its comprehensive decision granting summary judgment dismissing the claims of plaintiffs, the district court first agreed with defendants' contention "that plaintiffs cannot prove that Lloyd Webber had access to Repp's 'Till You' song prior to composing the Phantom Song." Repp v. Lloyd Webber, 858 F.Supp. 1292, 1301 (S.D.N.Y.1994)("Repp I "). The district court determined that there was no chain of events by which Lloyd Webber might have gained access to Repp's song, since Lloyd Webber categorically denied any exposure to Repp or his music and there was no nexus between Robert Velline and Lloyd Webber that would justify an inference of access on that basis. See id. at 1301.

The district court also determined that the wide dissemination of the allegedly infringed work, which could satisfy the burden of showing access, was not established. In arriving at this conclusion, the district court pointed to various perceived deficiencies in the plaintiffs' evidence--the lack of documentary proof of the number of copies of "Till You" actually distributed to the public in album, tape or cassette form; the failure of the testimony to describe quantity, time and place of distribution of the "Benedicamus" album; inability to establish that the advertising of Repp's music included "Till You" as a distinct composition; and, despite Lloyd Webber's fondness for church music and the widespread performance of Repp's music in church and other venues, the failure to establish that Lloyd Webber visited any of the places where "Till You" was performed. See id. at 1301-03.

The district court also rejected plaintiffs' contention that "Till You" is so strikingly similar to the "Phantom Song" as to preclude the possibility of independent creation and to permit access to be inferred without direct proof. In this connection, the district court stated:

Upon aural examination of the two songs and consideration of the expert testimony submitted by both parties, the Court finds that any similarities that exist between the two works are not so extensive as to support an inference of copying and improper appropriation without more. While the two melodies share several common notes, the songs differ in tempo and style. In addition, plaintiffs' expert, Prof. Hitchcock, concedes that the two pieces differ in harmony, key and mode. Under the circumstances, the Court finds that the two songs do not share a striking similarity sufficient to justify a finding of copying in the absence of access to the copyrighted work.

Id. at 1303.

The district court also accepted the defense of independent creation. The court credited the declarations of Lloyd Webber and Brightman concerning the creation of the "Phantom Song" at Lloyd Webber's home in Sydmonton in 1983 and the later [888] development of the song in 1984. According to the district court, "[p]laintiffs have not submitted any evidence to contradict defendants' proof that the Phantom Song was created in the manner" described in the declarations of Lloyd Webber and Brightman. Id. at 1304. The court rejected plaintiffs' argument "that Lloyd Webber and Brightman are interested parties, and that their allegations of independent creation are therefore incredible." Id. Finally, the court dismissed pendent state claims of unfair competition and deceptive trade practices for lack of jurisdiction, finding, among other things, that there was not complete diversity of citizenship. See id. Plaintiffs do not here contest the dismissal of the state claims.

IV. Of the Trial of the Counterclaims and the Decision that Followed.

In denying a motion to dismiss the counterclaims, the district court determined "that a reasonable jury could infer that Repp had access to the song 'Close Every Door' by virtue of its wide dissemination in the public domain" prior to the composition of "Till You." In addition the Court found that an issue of fact existed as to whether the two works were substantially similar. See Repp v. Lloyd Webber, 892 F.Supp. 552, 557-58 (S.D.N.Y.1995). Accordingly, Lloyd Webber having withdrawn his claim for damages, the parties proceeded to trial before the court.

Lloyd Webber testified that he had not heard "Till You" in any form until after he filed the counterclaim, which was interposed in reliance upon the analysis of Professor Ferrara. According to the testimony of Ferrara, there were twelve fundamental melodic pitches in common in the analogous measures of "Till You" and "Close Every Door." Nine of the twelve were said to appear in identical consecutive sequence. Ferrara opined that section A of both pieces shared the same internal structure and that there were other similarities between the two songs, including harmonic similarities. Each song was said to consist of two sections of music, alternatively repeated: section A, containing the similar music at issue and section B, containing dissimilar music. It was Ferrara's opinion that the music included in section A of each song comprised more than fifty percent of the published songs.

Repp testified that he did not copy "Close Every Door" when he wrote "Till You," and that the two pieces did not at all sound alike to his ear. He testified that he first attended a live stage performance of "Joseph and the Amazing Technicolor Dreamcoat" in 1982. It is at that time that he would have heard "Close Every Door" for the first time, although there was evidence that Repp had been aware of the existence of Lloyd Webber's work, including "Joseph," prior to that time. Testifying on behalf of Repp at the trial, Professor Mack concluded that "Till You" and "Close Every Door" were "distinctly dissimilar." He noted differences in the thrust and ambience of each song, observing that the songs are set to different meters, one is in the major mode and one in the minor, and that the rhythms are "antithetical." In arriving at his conclusion, Mack analyzed the components of harmony, melody and mode, as well as meter and rhythm. According to Mack, Repp did not copy from "Close Every Door."

In dismissing the counterclaims following trial, the district court set forth at length its findings of fact and conclusions of law. See Repp v. Lloyd Webber, 947 F.Supp. 105, 107 (S.D.N.Y.1996)("Repp II "). In the opinion, the district court rejected Lloyd Webber's claims regarding Repp's access to "Close Every Door." The court accepted Repp's testimony that he was not exposed to the piece until he attended a performance of "Joseph" in 1982. See id. at 114-115. With respect to the widespread dissemination of the piece as a basis for access, the district court noted, among other things, that "Joseph" did not achieve its greatest commercial success until after 1980, two years after "Till You" was created. See id. at 115. The court also noted that the evidence of sales and distribution prior to that time was too sparse to support an inference of access. See id. On the question of substantial similarity, the district court stated that it "credits the testimony and conclusions of Repp's music expert, James Mack ('Mack'), and finds that Lloyd Webber has not established that Repp copied from 'Close Every Door.' " Id. In crediting [889] Mack's testimony, the district court in its opinion undertook a detailed examination of the Mack musicological analysis and identified the deficiencies in Lloyd Webber's evidence.

DISCUSSION

I. Summary Judgment Reversed.

Copyright infringement is established when the owner of a valid copyright demonstrates unauthorized copying. See Laureyssens v. Idea Group, Inc., 964 F.2d 131, 139 (2d Cir.1992). Actual copying must first be shown, either by direct evidence or by indirect evidence. See id. at 140. The latter type of evidence "includ[es] access to the copyrighted work, similarities that are probative of copying between the works, and expert testimony." Id. It is only after actual copying is established that one claiming infringement is required to show substantial similarity^[1] between the two works relating to the protectible material. Id. In satisfaction of this requirement in a case alleging music plagiarism, the claimant is constrained to prove that "defendant took from plaintiff's works so much of what is pleasing to the ears of lay listeners, who comprise the audience for whom such ... music is composed, that defendant wrongfully appropriated something which belongs to the plaintiff." Arnstein v. Porter, 154 F.2d 464, 473 (2d Cir.1946).

We have held that where there are striking similarities probative of copying, proof of access may be inferred: "If the two works are so strikingly similar as to preclude the possibility of independent creation, copying may be proved without a showing of access." Lipton v. Nature Co., 71 F.3d 464, 471 (2d Cir.1995) (quotation and citation omitted); see also Gaste v. Kaiserman, 863 F.2d 1061, 1067-68 (2d Cir.1988). Independent creation is an affirmative defense, evidence of which may be introduced to rebut a prima facie case of infringement. See Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d 498, 501 (2d Cir.1982). The fact that infringement is "subconscious" or "innocent" does not affect liability, although it may have some bearing on remedies. ABKCO Music, Inc. v. Harrisongs Music, Ltd., 722 F.2d 988, 998-99 & n. 12 (2d Cir.1983).

We review the granting of a motion for summary judgment by applying the same standard as the district court applied and determine de novo whether or not summary judgment is warranted. See Taggart v. Time Inc., 924 F.2d 43, 45-46 (2d Cir.1991). Under the governing Rule, judgment "shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). The Rule is clear in "provid[ing] that the mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986) (emphasis in original).

In our review of the district court's decision, it is necessary for us to resolve all ambiguities and draw all inferences in favor of the non-moving party. See Skubel v. Fuoroli, 113 F.3d 330, 334 (2d Cir.1997). However, the non-moving party "must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986). In making the necessary showing, "[c]onclusory allegations will not suffice to create a genuine issue." Delaware & Hudson Ry. Co. v. Consolidated Rail Corp., 902 F.2d 174, 178 (2d Cir.1990). The [890] Supreme Court teaches that a "genuine" dispute over a material fact arises only where it can be said that the evidence would allow a reasonable jury to find in favor of the non-moving party. Liberty Lobby, 477 U.S. at 248, 106 S.Ct. at 2510.

We are mindful that factual materiality is governed by reference to the applicable substantive law. Dister v. Continental Group, Inc., 859 F.2d 1108, 1114 (2d Cir.1988). In this case, of course, our reference is to the substantive law governing actions for copyright infringement. Because the non-moving parties, here the plaintiffs, bear the burden of proof at trial on their claim that Lloyd Webber's "Phantom Song" copies Repp's "Till You," the defendants may satisfy their burden under Rule 56 by showing "that there is an absence of evidence to support [an essential element] of the nonmoving party's case." Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548, 2554, 91 L.Ed.2d 265 (1986).

Clearly, the duty of a court on a motion for summary judgment is to determine whether there are any genuine issues of material fact to be resolved by trial and not to decide factual issues. In this regard, the court's task is issue identification, not issue resolution. See Liberty Lobby, 477 U.S. at 249, 106 S.Ct. at 2510-11. In performing this task, we must assume the truth of the non-movant's evidence. See id. at 255, 106 S.Ct. at 2513-14. It seems to us that the district court failed to make the requisite assumption. We think that the district court undertook to resolve some material issues of fact revealed on the motion for summary judgment rather than to identify those issues and leave them for trial. We think that the defendants failed to demonstrate the absence of evidence supporting the elements of plaintiffs' copyright infringement case. And we think that the evidence presented by plaintiffs would allow a reasonable fact-finder to find in favor of the plaintiffs.

In determining that plaintiffs could not prove that Lloyd Webber had access to "Till You" prior to composing "Phantom Song," the district court first rejected the argument that access could have been gained through an intermediary, Robert Velline. The court noted the uncertainty of Velline's testimony and his ultimate disclaimer of any allegation that he distributed Repp's music to either Lloyd Webber or Lloyd Webber's brother. The court next rejected the claim of access through wide distribution of "Till You," "find[ing] that plaintiffs' evidence of 'wide dissemination' does not rise above the level of pure speculation." Repp I, 858 F.Supp. at 1302. As to the argument that Repp's music was widely advertised, the court made a "find[ing] that the fact that K & R may have distributed newspapers and mailings advertising Repp's music does not establish that the 'Till You' song was advertised as a distinct musical composition." Id.

Finally, in determining the issue of access, the district court evaluated the evidence of the advertisement and performance of "Till You" in a "specialized religious market." Id. This evaluation lead to a "find[ing] ... that the mere fact that Lloyd Webber composes liturgical works and is 'fond of church music,' ... does not establish either that he visited any of the places at which Repp's 'Till You' song was performed, or had access to the Benedicamus recording during the relevant time period." Id. at 1303.

While there was little, if any, evidence demonstrating access, there was considerable evidence that "Phantom Song" is so strikingly similar to "Till You" as to preclude the possibility of independent creation and to allow access to be inferred without direct proof. The district court recognized our rule permitting an inference of access where there is "striking similarity," citing Arnstein v. Porter, 154 F.2d at 468-69 and Gaste v. Kaiserman, 863 F.2d at 1067. See Repp I, 858 F.Supp. at 1303. However, the district court fell into error in rejecting the evidence presented by the plaintiffs and making findings on this issue. Two highly qualified experts, Professors Hitchcock and Mack, gave unequivocal opinions based on musicological analyses. Professor Hitchcock averred that there was "no doubt about the striking similarity" and concluded that "Phantom Song" is based on "Till You." Professor Mack opined that the two pieces "are strikingly similar, and are so similar as to preclude separate creation."

[891] In the face of the plaintiffs' expert testimony, the district court, relying upon its own "aural examination" as well as the expert testimony put forth by the defendants, found "that the two songs do not share a striking similarity sufficient to justify a finding of copying in the absence of access to the copyrighted work." Repp I, 858 F.Supp. at 1303. It was not for the district court to make this factual finding where such strong competing evidence was before it. The issue of "striking similarity," by virtue of the supported opinions of the experts, including that of Professor Ferrara for the defendants, was shown to be a genuine issue of material fact. Access to the music of Repp being an essential element of his case, it cannot be said that there is an absence of evidence to support proof of that element through the inference generated by the striking similarity of the two pieces.

Finally, the district court found on the motion for summary judgment that even if plaintiffs could prove access and probative similarity, "they have not submitted any evidence to controvert the defendants' proof of independent creation." Id. at 1303. In arriving at this conclusion, the district court accepted the declarations of Lloyd Webber and Brightman concerning the creation of "Phantom Song" by Lloyd Webber, with the assistance of Brightman, at Lloyd Webber's home in Sydmonton, England. The district court apparently was of the opinion that some direct evidence was required to contradict their version of the events surrounding the beginnings of "Phantom Song."

Plaintiffs note in their brief that a leading text on copyright includes this comment: "Proof of independent creation, whether direct or inferential, should be taken with a grain of salt." 2 Paul Goldstein, Copyright: Principles, Law and Practice § 7.2.2 (1989). Defendants respond that "Professor Goldstein's comment has nothing to do with objective empirical expert evidence of independent creation, which was the heart of defendants' motion." While the comment may well overstate the proposition, the fact remains that the district court accepted only the version of interested witnesses on the question of separate creation. See Repp I, 858 F.Supp. at 1303 & n. 15. But Professor Mack for the plaintiffs specifically found that the two pieces of music "are so similar as to preclude separate creation." Here, again, the district court erred by undertaking the resolution of a disputed issue of material fact. We have previously determined that independent creation is an affirmative defense and may be used to rebut a prima facie case of infringement. See Eden Toys, Inc. 675 F.2d at 501. The plaintiffs here have established a prima facie case of access through striking similarity, which certainly includes the element of probative similarity. Whether the evidence of independent creation here is sufficient to rebut the prima facie case established in this action is a question for the factfinder, whatever the contours of the burden of establishing the defense. See generally 3 Melville B. Nimmer & David Nimmer, Nimmer On Copyright § 12.11[D] (1997).

II. Judgment After Trial Affirmed.

We review a trial court's findings of fact following a bench trial for clear error. See Fed.R.Civ.P. 52(a); Allied Chem. Int'l Corp. v. Companhia de Navegacao Lloyd Brasileiro, 775 F.2d 476, 481 (2d Cir.1985). "If the district court's account of the evidence is plausible in light of the record viewed in its entirety, the court of appeals may not reverse it even though convinced that had it been sitting as the trier of fact, it would have weighed the evidence differently." Anderson v. City of Bessemer, 470 U.S. 564, 573-74, 105 S.Ct. 1504, 1511, 84 L.Ed.2d 518 (1985). Moreover, "special deference" is paid to findings of fact where the trial court bases its determinations on assessments of witnesses' credibility. See id. at 574, 105 S.Ct. at 1511-12; Donato v. Plainview-Old Bethpage Cent. Sch. Dist., 96 F.3d 623, 634 (2d Cir.1996), cert. denied, --- U.S. ----, 117 S.Ct. 1083, 137 L.Ed.2d 218 (1997). We may "reverse only when we are left with the firm conviction that a mistake has been committed." See SNC S.L.B. v. M/V Newark Bay, 111 F.3d 243, 247 (2d Cir.1997) (quotation and citations omitted).

[892] In dismissing the counterclaims interposed by Lloyd Webber following a 5-day trial, the district court made detailed findings of fact, carefully evaluating all the evidence presented. The court then undertook a pellucid examination of the applicable law, which it then applied to the facts as found. We find no error, let alone clear error, in the conduct of the trial or in the findings of the court and therefore have no difficulty affirming substantially for the reasons stated in the district court's well-stated and well-reasoned opinion. See Repp II, 947 F.Supp. at 109.

We note that in rejecting Lloyd Webber's claim regarding Repp's access to "Close Every Door," the district court as factfinder accepted Repp's trial testimony that he had no access to this piece of music until he had attended a performance in which it was played in 1982. This was long after the creation of "Till You." The court also found after trial that "Joseph" did not achieve commercial success until after 1980, also after "Till You" was created, and that there was not enough in the way of sales or distribution prior to that time to support a finding of access through that means. Finally, the court accepted the trial testimony of Professor Mack, the only expert witness presented by plaintiffs at trial, that "Till You" was not copied from "Close Every Door." The trial court had the opportunity to evaluate the credibility of witnesses and to review the documentary evidence first-hand, and was persuaded that there was no copying. We have absolutely no basis upon which to reject that determination.

CONCLUSION

In accordance with the foregoing, we reverse the summary judgment entered by the district court dismissing plaintiffs' claims for copyright infringement and remand for further proceedings thereon; we affirm the judgment dismissing defendants' counterclaims for copyright infringement entered after trial by the district court.

[1] Copyright caselaw has caused considerable confusion by the use of the term "substantial similarity" at two different points of the copyright infringement analysis. In an effort to clarify this confusion, we have noted that the term "probative similarity" should be used when referring to the initial burden of proving copying by establishing access and/or similarities. See Laureyssens v. Idea Group, Inc., 964 F.2d 131, 140 (2d Cir.1992). After a plaintiff has proved copying, he must then show that the copying was unlawful by establishing "substantial similarity" between the works at issue. See id. at 140-41.

349 F.3d 591

James W. NEWTON, Jr., dba Janew Music, Plaintiff-Appellant,
v.
Michael DIAMOND; Adam Horowitz; Adam Yauch, dba Beastie Boys; Capitol Records, Inc., a Delaware Corporation; Grand Royal Records, Inc., A California Corporation; Universal Polygram International Publishing, Inc., a Delaware Corporation; Brooklyn Dust Music, an entity of unknown origin; Mario Caldato, Jr., an individual; Janus Films, LLC, a New York Limited Liability Company; Criterion Collection, a California Partnership; Voyager Publishing Company, Inc., a Delaware Corporation; Sony Music Entertainment Group, a Delaware Corporation; BMG Direct Marketing, Inc., a Delaware Corporation; The Columbia House Company, an entity of unknown origin, Defendants-Appellees.

No. 02-55983.

United States Court of Appeals, Ninth Circuit.

Argued and Submitted April 7, 2003.

Filed November 4, 2003. 

Alan Korn, Law Offices of Alan Korn, Berkeley, California, for the plaintiff-appellant.

Adam F. Streisand and David C. Nelson, Loeb & Loeb, LLP, and Barry E. Mallen,

[349 F.3d 592] Manatt, Phelps & Phillips, LLP, Los Angeles, California, for the defendants-appellees.

Todd M. Gascon (argued), Law Offices of Todd M. Gascon, and Sarah Sevier Farnbach, Phillips & Erlewin, LLP, San Francisco, California, for the amici curiae Philip Glass, et al, in support of plaintiff-appellant.

David M. Given and Sarah Sevier Farnbach, Phillips, Erlewine & Given, LLP, San Francisco, CA, for the amici curiae DJ Shadow, et al., in support of defendants-appellees.

Before: Mary M. SCHROEDER, Chief Judge, David R. THOMPSON, and Susan P. GRABER, Circuit Judges.

Argued and Submitted April 7, 2003 — Pasadena, California.

Opinion by Chief Judge SCHROEDER. Dissent by Judge GRABER.

OPINION

SCHROEDER, Chief Judge:

This appeal raises the difficult and important issue of whether the incorporation of a short segment of a musical recording into a new musical recording, i.e., the practice of "sampling," requires a license to use both the performance and the composition of the original recording. The particular sample in this case consists of a six-second, three-note segment of a performance of one of his own compositions by plaintiff, and accomplished jazz flutist, James W. Newton. The defendants, the performers who did the sampling, are the members of the musical group Beastie Boys. They obtained a license to sample the sound recording of Newton's copyrighted performance, but they did not obtain a license to use Newton's underlying composition, which is also copyrighted.

The district court granted summary judgment to the defendants. In a scholarly opinion, it held that no license to the underlying composition was required because, as a matter of law, the notes in question — C-D flat — C, over a held C note — lacked sufficient originality to merit copyright protection. Newton v. Diamond, 204 F.Supp.2d 1244, 1256 (C.D.Cal. 2002). The district court also held that even if the sampled segment of the composition were original, Beastie Boys' use was de minimis and therefore not actionable. Id. at 1259. We affirm on the ground that the use was de minimis.

Background and Procedural History

The plaintiff and appellant in this case, James W. Newton, is an accomplished avant-garde jazz flutist and composer. In 1978, he composed the song "Choir," a piece for flute and voice intended to incorporate elements of African-American gospel music, Japanese ceremonial court music, traditional African music, and classical music, among others. According to Newton, the song was inspired by his earliest memory of music, watching four women singing in a church in rural Arkansas. In 1981, Newton performed and recorded "Choir" and licensed all rights in the sound recording to ECM Records for $5000.^[1] The license covered only the sound recording, and it is undisputed that Newton retained all rights to the composition of "Choir." Sound recordings and their underlying compositions are separate works [349 F.3d 593] with their own distinct copyrights. 17 U.S.C. § 102(a)(2), (7).

The defendants and appellees include the members of the rap and hip-hop group Beastie Boys, and their business associates. In 1992, Beastie Boys obtained a license from ECM Records to use portions of the sound recording of "Choir" in various renditions of their song "Pass the Mic" in exchange for a one-time fee of $1000.^[2] Beastie Boys did not obtain a license from Newton to use the underlying composition.

The portion of the composition at issue consists of three notes, C — D flat — C, sung over a background C note played on the flute. When played on the sound recording licensed by Beastie Boys, the segment lasts for approximately six seconds. The score to "Choir" also indicates that the entire song should be played in a "largo/senza-misura" tempo, meaning "slowly/without-measure." Apart from an instruction that the performer sing into the flute and finger simultaneously, the score is not further orchestrated.

The dispute between Newton and Beastie Boys centers around the copyright implications of the practice of sampling, a practice now common to many types of popular music. Sampling entails the incorporation of short segments of prior sound recordings into new recordings. The practice originated in Jamaica in the 1960s, when disc jockeys (DJs) used portable sound systems to mix segments of prior recordings into new mixes, which they would overlay with chanted or `scatted' vocals. See Robert M. Szymanski, Audio Pasitiche: Digital Sampling, Intermediate Copying, Fair Use, 3 U.C.L.A. Ent. L. Rev. 271, 277 (Spring 1996). Sampling migrated to the United States and developed throughout the 1970s, using the analog technologies of the time. Id. The digital sampling involved here developed in the early 1980s with the advent of digital synthesizers having MIDI (Musical Instrument Digital Interface) keyboard controls. These digital instruments allowed artists digitally to manipulate and combine sampled sounds, expanding the range of possibilities for the use of pre-recorded music. Whereas analog devices limited artists to "scratching" vinyl records and "cutting" back and forth between different sound recordings, digital technology allowed artists to slow down, speed up, combine, and otherwise alter the samples. See id.

Pursuant to their license from ECM Records, Beastie Boys digitally sampled the opening six seconds of Newton's sound recording of "Choir." Beastie Boys repeated or "looped" this six-second sample as a background element throughout "Pass the Mic," so that it appears over forty times in various renditions of the song. In addition to the version of "Pass the Mic" released on their 1992 album, "Check Your Head," Beastie Boys included the "Choir" sample in two remixes, "Dub the Mic" and "Pass the Mic (Pt. 2, Skills to Pay the Bills)." It is unclear whether the sample [349 F.3d 594] was altered or manipulated, though Beastie Boys' sound engineer stated that alterations of tone, pitch, and rhythm are commonplace, and Newton maintains that the pitch was lowered slightly.

Newton filed the instant action in federal court on May 9, 2000, alleging violations of his copyright in the underlying composition, as well as Lanham Act violations for misappropriation and reverse passing off. The district court dismissed Newton's Lanham Act claims on September 12, 2000, and granted summary judgment in favor of Beastie Boys on the copyright claims on May 21, 2002. Newton v. Diamond, 204 F.Supp.2d 1244 (C.D.Cal.2002). The district court held that the three-note segment of the "Choir" composition could not be copyrighted because, as a matter of law, it lacked the requisite originality. 204 F.Supp.2d at 1256. The court also concluded that even if the segment were copyrightable, Beastie Boys' use of the work was de minimis and therefore not actionable. Id. at 1259. Newton appealed.

Whether Defendants' Use was De Minimis

We may affirm the grant of summary judgment on any basis supported by the record and need not reach each ground relied upon by the district court. See Venetian Casino Resort L.L.C. v. Local Joint Executive Bd. of Las Vegas, 257 F.3d 937, 941 (9th Cir.2001), cert. denied, 535 U.S. 905, 122 S.Ct. 1204, 152 L.Ed.2d 142 (2002). Assuming that the sampled segment of the composition was sufficiently original to merit copyright protection, we nevertheless affirm on the ground that Beastie Boys' use was de minimis and therefore not actionable.

For an unauthorized use of a copyrighted work to be actionable, there must be substantial similarity between the plaintiff's and the defendants' works. See Ringgold v. Black Entm't Television, Inc., 126 F.3d 70, 74 (2d Cir.1997); Ideal Toy Corp. v. Fab-Lu Ltd. (Inc.), 360 F.2d 1021, 1022(2d Cir.1966). This means that even where the fact of copying is conceded, no legal consequences will follow from that fact unless the copying is substantial. See Laureyssens v. Idea Group, Inc., 964 F.2d 131, 140 (2d Cir.1992); 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03A, at 13-30.2. The principle that trivial copying does not constitute actionable infringement has long been a part of copyright law. Indeed, as Judge Learned Hand observed over 80 years ago: "Even where there is some copying, that fact is not conclusive of infringement. Some copying is permitted. In addition to copying, it must be shown that this has been done to an unfair extent." West Publ'g Co. v. Edward Thompson Co., 169 F. 833, 861 (E.D.N.Y.1909). This principle reflects the legal maxim, de minimis non curat lex (often rendered as, "the law does not concern itself with trifles"). See Ringgold, 126 F.3d at 74-75.

The leading case on de minimis infringement in our circuit is Fisher v. Dees, 794 F.2d 432 (9th Cir.1986), where we observed that a use is de minimis only if the average audience would not recognize the appropriation. See id. at 434 n.2 ("A taking is considered de minimis only if it is so meager and fragmentary that the average audience would not recognize the appropriation."). This observation reflects the relationship between the de minimis maxim and the general test for substantial similarity, which also looks to the response of the average audience, or ordinary observer, to determine whether a use is infringing. See, e.g., Cavalier v. Random House, Inc., 297 F.3d 815, 822 (9th Cir. 2002); Castle Rock Entm't, Inc. v. Carol Publ'g Group, Inc., 150 F.3d 132(2d Cir. 1998) ("Two works are substantially similar where `the ordinary observer, unless he [349 F.3d 595] set out to detect the disparities, would be disposed to overlook them, and regard the aesthetic appeal of the two works as the same.'" (quoting Arica Inst., Inc. v. Palmer, 970 F.2d 1067, 1072 (2d Cir.1992) (quoting Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960) (L. Hand, J.)))). To say that a use is de minimis because no audience would recognize the appropriation is thus to say that the works are not substantially similar.

On the facts of Fisher, this court rejected the de minimis defense because the copying was substantial: the defendant had appropriated the main theme and lyrics of the plaintiff's song, both of which were easily recognizable in the defendant's parody. 794 F.2d at 434 & n.2. Specifically, the defendant copied six of the thirty-eight bars to the 1950s standard, "When Sunny Gets Blue," to make the parody, "When Sonny Sniffs Glue," and paralleled the original lyrics with only minor variations. Id. However, despite the works' substantial similarities, we held that the use was nevertheless non-infringing because, as a parody, it was "fair use" under 17 U.S.C. § 107. Id. at 440. We explained that the defendant's successful fair use defense precluded a finding that the use was insubstantial or unrecognizable because "the parodist must appropriate a substantial enough portion of the original to evoke recognition." Id. at 435 n.2.

This case involves not only use of a composition, as was the case in Fisher, but also use of a sound recording of a performance of that composition. Because the defendants licensed the sound recording, our inquiry is confined to whether the unauthorized use of the composition itself was substantial enough to sustain an infringement claim. Therefore, we may consider only Beastie Boys' appropriation of the song's compositional elements and must remove from consideration all the elements unique to Newton's performance. Stated another way, we must "filter out" the licensed elements of the sound recording to get down to the unlicensed elements of the composition, as the composition is the sole basis for Newton's infringement claim. See Cavalier, 297 F.3d at 822; Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1446 (9th Cir.1994).

In filtering out the unique performance elements from consideration, and separating them from those found in the composition, we find substantial assistance in the testimony of Newton's own experts. His experts reveal the extent to which the sound recording of "Choir" is the product of Newton's highly developed performance techniques, rather than the result of a generic rendition of the composition. As a general matter, according to Newton's expert Dr. Christopher Dobrian, "the contribution of the performer is often so great that s/he in fact provides as much musical content as the composer." This is particularly true with works like "Choir," given the nature of jazz performance and the minimal scoring of the composition. Indeed, as Newton's expert Dr. Oliver Wilson explained:

The copyrighted score of "Choir", as is the custom in scores written in the jazz tradition, does not contain indications for all of the musical subtleties that it is assumed the performer-composer of the work will make in the work's performance. The function of the score is more mnemonic in intention than prescriptive.

And it is clear that Newton goes beyond the score in his performance. For example, Dr. Dobrian declared that "Mr. Newton blows and sings in such a way as to emphasize the upper partials of the flute's complex harmonic tone, although such a modification of tone color is not explicitly requested in the score." More generally, [349 F.3d 596] Dr. Wilson explained Newton's performance technique as follows:

The Newton technique produces a musical event in which the component sounds resulting from the simultaneous singing of one or more pitches and the interaction of this pitch or pitches with the various components of the multiphonic array of pitches produced on the flute create a relatively dense cluster of pitches and ambient sounds that sometimes change over time.

Whatever copyright interest Newton obtained in this "dense cluster of pitches and ambient sounds," he licensed that interest to ECM Records over twenty years ago, and ECM Records in turn licensed that interest to Beastie Boys. Thus, regardless of whether the average audience might recognize "the Newton technique" at work in the sampled sound recording, those performance elements are beyond consideration in Newton's claim for infringement of his copyright in the underlying composition. Having licensed away his interest in the recording of his performance, Newton's only claim is for a violation of his rights in the three-note sequence transcribed in the composition.

Once we have isolated the basis of Newton's infringement action — the "Choir" composition, devoid of the unique performance elements found only in the sound recording — we turn to the nub of our inquiry: whether Beastie Boys' unauthorized use of the composition, as opposed to their authorized use of the sound recording, was substantial enough to sustain an infringement action. In answering that question, we must distinguish between the degree and the substantiality of the works' similarity. Cf. Ringgold, 126 F.3d at 74-75; 4 Nimmer § 13.03A2, at 13-45. The practice of music sampling will often present cases where the degree of similarity is high. Indeed, unless the sample has been altered or digitally manipulated, it will be identical to the original. Yet as Nimmer explains, "if the similarity is only as to nonessential matters, then a finding of no substantial similarity should result." 4 Nimmer § 13.03A2, at 13-48; cf. Warner Bros. v. Am. Broad. Cos., 720 F.2d 231, 242 (2d Cir.1983). This reflects the principle that the substantiality requirement applies throughout the law of copyright, including cases of music sampling, even where there is a high degree of similarity.

The high degree but limited scope of similarity between the works here place Newton's claim for infringement into the class of cases that allege what Nimmer refers to as "fragmented literal similarity." 4 Nimmer § 13.03A2, at 13-45. Fragmented literal similarity exists where the defendant copies a portion of the plaintiff's work exactly or nearly exactly, without appropriating the work's overall essence or structure. Id. Because the degree of similarity is high in such cases, the dispositive question is whether the similarity goes to trivial or substantial elements. The substantiality of the similarity is measured by considering the qualitative and quantitative significance of the copied portion in relation to the plaintiff's work as a whole. See, e.g., Worth v. Selchow & Righter Co., 827 F.2d 569, 570 n. 1 (9th Cir.1987) ("The relevant inquiry is whether a substantial portion of the protectible material in the plaintiff's work was appropriated — not whether a substantial portion of defendant's work was derived from plaintiff's work."); Jarvis v. A & M Records, 827 F.Supp. 282, 289-90 (D.N.J.1993); 4 Nimmer § 13.03A2, at 13-47 to 48 & n. 97. This focus on the sample's relation to the plaintiff's work as a whole embodies the fundamental question in any infringement action, as expressed more than 150 years ago by Justice Story: whether "so much is taken that the value of the original is [349 F.3d 597] sensibly diminished, or the labors of the original author are substantially to an injurious extent appropriated by another." Folsom v. Marsh, 9 F.Cas. 342, 348 (C.C.Mass.1841) (No. 4901). Courts also focus on the relationship to the plaintiff's work because a contrary rule that measured the significance of the copied segment in the defendant's work would allow an unscrupulous defendant to copy large or qualitatively significant portions of another's work and escape liability by burying them beneath non-infringing material in the defendant's own work, even where the average audience might recognize the appropriation. Cf. Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir.1936) ("It is enough that substantial parts were lifted; no plagiarist can excuse the wrong by showing how much of his work he did not pirate."). Thus, as the district court properly concluded, the fact that Beastie Boys "looped" the sample throughout "Pass the Mic" is irrelevant in weighing the sample's qualitative and quantitative significance. See Newton, 204 F.Supp.2d at 1257.

When viewed in relation to Newton's composition as a whole, the sampled portion is neither quantitatively nor qualitatively significant. Quantitatively, the three-note sequence appears only once in Newton's composition. It is difficult to measure the precise relationship between this segment and the composition as a whole, because the score calls for between 180 and 270 seconds of improvisation. When played, however, the segment lasts six seconds and is roughly two percent of the four-and-a-half-minute "Choir" sound recording licensed by Beastie Boys. Qualitatively, this section of the composition is no more significant than any other section. Indeed, with the exception of two notes, the entirety of the scored portions of "Choir" consist of notes separated by whole and half-steps from their neighbors; the remainder of the composition calls for sections of improvisation that range between 90 and 180 seconds in length. Although the sampled section may be representative of the scored portions of the composition, Newton has failed to offer any evidence as to this section's particular significance in the composition as a whole. Instead, his experts emphasize the significance of Newton's performance, the unique elements of which Beastie Boys properly licensed.

Yet Newton maintains that the testimony of his experts creates a genuine issue of material fact on the substantiality of the copying. To the extent the expert testimony is relevant, it is not helpful to Newton. On the key question of whether the sample is quantitatively or qualitatively significant in relation to the composition as a whole, his experts are either silent or fail to distinguish between the sound recording, which was licensed, and the composition, which was not. Moreover, their testimony on the composition does not contain anything from which a reasonable jury could infer the segment's significance in relation to the composition as a whole: rather, Dr. Dobrian described the three-note sequence at issue as "a simple `neighboring tone' figure." The district court cited two pieces by Gyorgy Ligeti and Jacob Druckman employing similar figures. Newton, 204 F.Supp.2d at 1255. This evidence is consistent with the opinion of Beastie Boys' expert, Dr. Lawrence Ferrara, who stated that the sampled excerpt from the "Choir" composition "is merely a common, trite, and generic three-note sequence, which lacks any distinct melodic, harmonic, rhythmic or structural elements." Dr. Ferrara also described the sequence as "a common building block tool" used over and over again by major composers in the 20th century, particularly [349 F.3d 598] the '60s and '70s, just prior to James Newton's usage.

Having failed to demonstrate any quantitative or qualitative significance of the sample in the "Choir" composition as a whole, Newton is in a weak position to argue that the similarities between the works are substantial, or that an average audience would recognize the appropriation. In this respect, the minimal scoring of the "Choir" composition bears emphasis, as does the relative simplicity of the relevant portion of the composition. On the undisputed facts of this case, we conclude that an average audience would not discern Newton's hand as a composer, apart from his talent as a performer, from Beastie Boys' use of the sample. The works are not substantially similar: Beastie Boys' use of the "Choir" composition was de minimis. There is no genuine issue of material fact, and the grant of summary judgment was appropriate.

Conclusion

Because Beastie Boys' use of the sound recording was authorized, the sole basis of Newton's infringement action is his remaining copyright interest in the "Choir" composition. We hold today that Beastie Boys' use of a brief segment of that composition, consisting of three notes separated by a half-step over a background C note, is not sufficient to sustain a claim for copyright infringement. We affirm the district court's grant of summary judgment on the ground that Beastie Boys' use of the composition was de minimis and therefore not actionable.

AFFIRMED.

GRABER, Circuit Judge, dissenting:

I respectfully dissent. The majority has laid out correctly the legal principles that apply in this case, and I agree with the majority's assumption that the sampled portion of "Choir" qualifies as "original" and therefore is copyrightable. Maj. op. at 594. However, on the record before us, a jury reasonably could find that Beastie Boys' use of the sampled material was not de minimis. Therefore, summary judgment is inappropriate.

As the majority observes, a use is de minimis only if an average audience would not recognize the appropriation. Fisher v. Dees, 794 F.2d 432, 434 n. 2 (9th Cir.1986). The majority is correct that James Newton's considerable skill adds many recognizable features to the performance sampled by Beastie Boys. Even after those features are "filtered out," however, the composition, standing alone, is distinctive enough for a jury reasonably to conclude that an average audience would recognize the appropriation of the sampled segment and that Beastie Boys' use was therefore not de minimis.

Newton has presented evidence that the compositional elements of "Choir" are so compositionally distinct that a reasonable listener would recognize the sampled segment even if it were performed by the featured flautist of a middle school orchestra. It is useful to begin by observing that the majority's repeated references to the sampled segment of "Choir" as a "3-note sequence"^[1] are overly simplified. The sampled segment is actually a three-note sequence sung above a fingered held C note, for a total of four separate tones.^[2] Even passages with relatively few notes may be qualitatively significant. The opening melody of Beethoven's Fifth Symphony is relatively simple and features [349 F.3d 599] only four notes, but it certainly is compositionally distinctive and recognizable.

The majority is simply mistaken in its assertion, maj. op. at 597, that Newton's experts did not present evidence of the qualitative value of the compositional elements of the sampled material sufficient to survive summary judgment. The majority is similarly mistaken when it says, id., that Newton's experts failed to distinguish between the sound recording and the composition. To the contrary, Newton presented considerable expert evidence that the composition alone is distinctive and recognizable.

First, Newton offered a letter from Professor Olly Wilson of the University of California at Berkeley. Professor Wilson acknowledges that much of the distinctiveness of the sampled material is due to Newton's performance and that the copyrighted score does not fully convey the quality of the piece as performed. Nevertheless, Professor Wilson concludes that the score

clearly indicates that the performer will simultaneously sing and finger specific pitches, gives a sense of the rhythm of the piece, and also provides the general structure of this section of the piece. Hence, in my opinion, the digital sample of the performance ... is clearly a realization of the musical score filed with the copyright office.

Second, Newton presented a letter from Professor Christopher Dobrian of the University of California, Irvine. The majority deals with Professor Dobrian's evidence by stating: "Dr. Dobrian described the three-note sequence at issue as `a simple, "neighboring tone" figure.'" Maj. op. at 597. As the passage quoted below demonstrates, the majority fundamentally misreads Professor Dobrian's statement by taking it out of context; in the process the majority reverses his intended meaning. Professor Dobrian actually concludes:

Applying traditional analysis to this brief excerpt from Newton's "Choir" — i.e., focusing solely on the notated pitches — a theorist could conclude (erroneously, in my opinion) that the excerpt contains an insignificant amount of information because it contains a simple "neighboring-tone" figure: C to D-flat and back to C.... If, on the other hand, one considers the special playing technique described in the score (holding one fingered note constant while singing the other pitches) and the resultant complex, expressive effect that results, it is clear that the "unique expression" of this excerpt is not solely in the pitch choices, but is actually in those particular pitches performed in that particular way on that instrument. These components in this particular combination are not found anywhere else in the notated music literature, and they are unique and distinctive in their sonic/musical result.

(Emphasis added.)

It is important to note that Professor Dobrian is not talking about Newton's performance of the sampled portion. Rather, he is speaking of the distinctiveness of the underlying composition. The "playing technique" is not a matter of personal performance, but is a built-in feature of the score itself. In essence, Dobrian is stating that any flautist's performance of the sampled segment would be distinctive and recognizable, because the score itself is distinctive and recognizable.

The majority, then, misreads the record when it states that Newton failed to offer evidence that the sampled material is qualitatively significant. In fact, Newton presented evidence, as described above, to show that an average and reasonable listener would recognize Beastie Boys' appropriation

[349 F.3d 600] of the composition of the sampled material.^[3]

Because Newton has presented evidence establishing that reasonable ears differ over the qualitative significance of the composition of the sampled material, summary judgement is inappropriate in this case. Newton should be allowed to present his claims of infringement to a jury. I therefore dissent from the majority's conclusion to the contrary.

APPENDIX

[1] In relevant part, the license reads as follows:

1) Newton herewith grants, transfers and assigns to ECM without limitations and restrictions whatsoever the exclusive rights to record his performances and to exploit these recordings in perpetuity throughout the world in any manner whatsoever.

....

3) The grant of rights according to section 1) especially, includes the rights to manufacture in quantitiy sic, to distribute, to license to others, as well as to perform the recordings in public and to utilize it in radio, TV, or in other ways without any restrictions.

[2] In relevant part, the license reads as follows:

ECM Records, as owner of the applicable sound recording rights, including but not limited to recording, reproduction, synchronization and performing rights, grants to Beastie Boys, its licensees, assigns, employees and agents (the "Licensed Parties"), the irrevocable non-exclusive license and right to copy portions (if any) of the sound recording entitled "Choir" performed by James Newton (the "Sample"); to embody the sample in some or all versions of the selection entitled "Pass the Mic" by the Beastie Boys (all versions of "Pass the Mic" which contain the Sample are referred to as the "Selection"); to reproduce, distribute and otherwise exploit the Sample as part of the Selection in all media, whether now known or hereinafter developed, including, without limitation, all record formats throughout the world in perpetuity.

__________

[1] Maj. op. at 596, 597.

[2] The sampled segment of the composition is scored as shown in the Appendix.

[3] Because Newton has established that a jury reasonably could find that the sampled portion of "Choir" is qualitatively significant, we need not address the question of the portion's quantitative significance. See Worth v. Selchow & Righter Co., 827 F.2d 569, 570 n. 1 (9th Cir.1987) (noting that "a determination of the qualitative importance of the material to the plaintiff's work is more significant than a quantitative calculation of the portion allegedly appropriated by the defendant").

602 F.Supp.2d 499

BOURNE CO., Plaintiff,
v.
TWENTIETH CENTURY FOX FILM CORPORATION, Fox Broadcasting Company, Twentieth Century Fox Television, Inc., Twentieth Century Fox Home Entertainment, Inc., Fuzzy Door Productions, The Cartoon Network, Inc., Seth MacFarlane, Walter Murphy, Defendants.

No. 07 Civ. 8580(DAB).

United States District Court, S.D. New York.

March 16, 2009.

[500] Amanda Jill Schaffer, Julie Stark, Paul Matthew Fakler, Ross J. Charap, Moses & Singer LLP, New York, NY, for Plaintiff.

Jacques M. Rimokh, Jonathan Zavin, Loeb & Loeb LLP, New York, NY, for Defendants.

MEMORANDUM & ORDER

DEBORAH A. BATTS, District Judge.

Plaintiff Bourne Co. ("Bourne") is the sole owner of the copyright to the popular [501] "When You Wish Upon a Star". (Pl. 56.1 Stmt. at 1.) Defendants Seth MacFarlane ("MacFarlane"), Fuzzy Door Productions Inc., Twentieth Century Fox Film Corporation, and Twentieth Century Fox Television (a unit of Defendant Fox Broadcasting Company) create and produce an animated television series called "Family Guy" ("the Show" or "the Series") including an episode entitled "When You Wish Upon a Weinstein" ("the Episode"). (Id. at 7.) Defendant Cartoon Network, Inc. aired the Episode in November 2003 and has telecast it no fewer than thirty-six times. (Id. at 8.) Defendant Walter Murphy ("Murphy") is a composer of television film scores for "Family Guy" and wrote at least part of a song entitled "I Need a Jew" that appears in the Episode. (Id. at 9; Def. 56.1 Counter-Stmt. at 4.)

Plaintiff has sued Defendants for copyright infringement, alleging that "I Need a Jew" "consists of a thinly-veiled copy of the music from `When You Wish Upon a Star' coupled with new anti-Semitic lyrics." (Compl. at 3, 31-35.) This matter is before the Court on the Parties' cross-motions for summary judgment. For the reasons contained herein, Defendants' Motion for Summary Judgment is GRANTED and Plaintiffs Cross-Motion for Summary Judgment is DENIED.

I. BACKGROUND

Except where noted, the following facts are undisputed. "When You Wish Upon a Star" is a popular song by Leigh Harline and Ned Washington originally written for the classic Walt Disney film Pinocchio, in which it was sung by Cliff Edwards as the voice of the character Jiminy Cricket. (Pl. 56.1 Stmt. at 2.) Plaintiff Bourne owns the copyright registrations for the unpublished version of the song, the published version as included in Pinocchio, the published sheet music, and other arrangements of the song. (Id.) Over 100 performing artists and orchestras have recorded the song, and it has also been used extensively in commercials, television and film. (Pl. 56.1 Stmt. at 2.) The song has also been used in the opening sequences of the Disney anthology television series, "The Wonderful World of Disney", in Walt Disney Pictures' opening logos, and in television advertisements for its Disneyland theme park.^[1] (Def. 56.1 Stmt. at 2.) Defendants argue, and Plaintiff disputes, that the song is "an integral part of Walt Disney's and the Walt Disney Company's personality and reputation" and is "associated with Walt Disney in the public mind." (Id.; Pl. 56.1 Counter-Stmt. at 22.)

"Family Guy" is an animated, comedic TV series which airs on the Fox Network and the Cartoon Network, among other networks. (Def. 56.1 Counter-Stmt. at 3-4; Def. 56.1 Stmt. at 3.) The show frequently pokes fun at popular TV shows, movies, songs and celebrities. (Pl. 56.1 Counter-Stmt. at 23.) The show regularly contains irreverent, iconoclastic plotlines and pop-cultural references. (Id.) The subject of this suit is a half-hour episode entitled "When You Wish Upon a Weinstein" which was produced in 2000. (Def. 56.1 Stmt. at 3.) The Episode is centered around the show's father character, Peter, and his inability to manage his family's finances. (Id.) After hearing his friends talk about how men with Jewish-sounding names have helped them to achieve financial success, Peter decides that he "needs a [502] Jew" to help him with his finances. (Id. at 4.) The overall theme of the Episode is that Peter's beliefs based upon racial stereotypes, even potentially "positive" ones, are ridiculous. (Id.) At the end of the Episode, Peter says to his wife, Lois, "I see what you're saying. The Jewish are just like us. No better, no worse." (Id.) According to Defendants, "one of the comedic values present is that although this is an obvious concept, it was not obvious to Peter. (Id. at 10.)

The scene at issue in this litigation depicts Peter looking out of a window up at the night sky in a manner similar to that of the toymaker Gepetto in Walt Disney's Pinocchio when Gepetto is wishing for a "real boy". (Def. 56.1 Stmt. at 5-6; compare Pinocchio at time code 13:10-13:20 with Episode at time code 6:00-6:20.) Peter sings a song entitled "I Need a Jew"; the lyrics are as follows:

Nothing else has worked so far,

So I'll wish upon a star,

Wondrous dancing speck of light,

I need a Jew.

Lois makes me take the rap,

`Cause our check-book looks like crap,

Since I can't give her a slap,

I need a Jew.

Where to find a Baum or Steen or Stein To teach me how to whine and do my taxes?

Though by many they're abhorred, Hebrew people I've adored.

Even though they killed my Lord^[2] I need a Jew.

(Def. 56.1 Counter-Stmt. at 11.) The cartoon accompanying the song further depicts "Jews as magical creatures that come to Peter in the form of a magical spaceship that turns into a flying dreidel." (Def. 56.1 Stmt. at 6; Rimokh Decl. Ex. F, MacFarlane Dep. at 9.)

The Parties agree that the song was created in a manner intended to evoke "When You Wish Upon a Star." (Def. 56.1. Stmt. at 5.) The tune of "I Need a Jew" is similar to "When You Wish Upon a Star" and the first four melody notes of "I Need a Jew" are identical to the first four melody notes of "When You Wish Upon a Star". (Pl. 56.1 Stmt. at 14-15.)^[3]

Defendants initially sought a license from Plaintiff to use "When You Wish Upon a Star" for their song, but Plaintiff refused. (Def. 56.1. Stmt. at 5.) After permission was denied, MacFarlane and co-Producer David Zuckerman ("Zuckerman") asked Murphy to write music that would evoke "When You Wish Upon a Star" to go with lyrics that had already been written. (Def. 56.1 Counter-Stmt. at 5-6.) With "When You Wish Upon a Star" in mind, Murphy wrote a version of "I Need a Jew"; later, either MacFarlane or Zuckerman mentioned to him "that they would like the melody to be even closer to the Disney song" and "changed a few notes here and there" "to make the average person realize that this was going to be a parody." (Def. 56.1 Counter-Stmt. at 6; Rimokh Decl. Ex. G 11:22-13:8.)

Fox Broadcasting initially decided not to televise the Episode as part of Season Two of Family Guy due to concerns about the potentially controversial religious content of the Episode. (Def. 56.1 Stmt. at 4-5.) The Episode, including the song "I Need a Jew", was first distributed on home video by Fox Home Entertainment on or about September 9, 2003 as part of the Family [503] Guy "Volume 2, Season 3" DVD box set, which has remained on sale since that time. (Id.) The Episode was first telecast by the Cartoon Network's Adult Swim programming service on November 9, 2003 and was repeatedly telecast thereafter. (Id.) The Episode was ultimately televised by Fox Broadcasting on December 10, 2004. (Id.) The Episode was also distributed on DVD by Fox Home Entertainment on or about December 14, 2004 as part of the "Family Guy—The Freakin' Sweet Collection" DVD, which has also been on sale since that time. (Id.)

Bourne did not discover the use of "When You Wish Upon a Star" in the Episode until March 2007 when a Bourne employee found a clip on YouTube. (Pl. 56.1 Stmt. at 21.) Bourne filed this action within seven months of learning of the alleged infringement. (Id.)

II. DISCUSSION

A. Legal Standard for Summary Judgment

A district court should grant summary judgment when there is "no genuine issue as to any material fact," and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c); see also Hermes Int'l v. Lederer de Paris Fifth Ave., Inc., 219 F.3d 104, 107 (2d Cir.2000). Genuine issues of material fact cannot be created by mere conclusory allegations; summary judgment is appropriate only when, "after drawing all reasonable inferences in favor of a non-movant, no reasonable trier of fact could find in favor of that party." Heublein v. United States, 996 F.2d 1455, 1461 (2d Cir.1993) (citing Matsushita Elec. Industr. Co. v. Zenith Radio Corp., 475 U.S. 574, 587-88, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986)).

In assessing when summary judgment should be granted, "there must be more than a `scintilla of evidence' in the nonmovant's favor; there must be evidence upon which a fact-finder could reasonably find for the non-movant." Id. (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). While a court must always "resolv[e] ambiguities and draw[] reasonable inferences against the moving party," Knight v. U.S. Fire Ins. Co., 804 F.2d 9, 11 (2d Cir.1986) (citing Anderson), the nonmovant may not rely upon "mere speculation or conjecture as to the true nature of the facts to overcome a motion for summary judgment." Id. at 12. Instead, when the moving party has documented particular facts in the record, "the opposing party must `set forth specific facts showing that there is a genuine issue for trial.'" Williams v. Smith, 781 F.2d 319, 323 (2d Cir.1986) (quoting Fed.R.Civ.P. 56(e)). Establishing such facts requires going beyond the allegations of the pleadings, as the moment has arrived "`to put up or shut up.'" Weinstock v. Columbia Univ., 224 F.3d 33, 41 (2d Cir.2000) (citation omitted). Unsupported allegations in the pleadings thus cannot create a material issue of fact. Id.

The major facts at issue in this litigation are not in dispute. For the purposes of this motion, the Parties agree that Defendants' use of the song "When You Wish Upon a Star" would be an infringement of Bourne's rights under the Copyright Act but for a finding of fair use. (Def. Mem. of Law at n. 1.) The Parties agree that "When You Wish Upon a Weinstein" incorporates musical elements from "When You Wish Upon a Star" and was created in a manner intended to evoke that song. (Def. 56.1 Counter-Stmt. 19, 20.) The Parties also agree that at least one of the purposes of the song used in the Episode was to hold bigotry and people like Peter Griffin up to ridicule. (Id. at 11.) The Parties disagree, however, on certain other [504] facts including: whether "When You Wish Upon a Star" is associated either with the Walt Disney Company or with Walt Disney himself, and whether Disney's purported anti-Semitism is a part of the popular lore surrounding the person of Walt Disney.^[4] However, even after resolving all ambiguities and drawing all reasonable inferences in favor of the Plaintiff, Defendants are nevertheless entitled to Summary Judgment.

B. The Fair Use Standard

"From the infancy of copyright protection, some opportunity for fair use of copyrighted materials has been thought necessary to fulfill copyright's very purpose, ‘[t]o promote the Progress of Science and useful Arts....'" Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994) (quoting U.S. Const., Art. I, § 8, cl. 8). The doctrine of Fair Use is now codified in Section 107 of the 1976 Copyright Act. § 107 calls for a four-factor test:

Limitations on exclusive rights: Fair use:

2. Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

17 U.S.C. § 107 (1994).

According to the Supreme Court, "[t]he fair use doctrine [ ] 'permits [and requires] courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster.'" Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 576-577, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994) (quoting Stewart v. Abend, 495 U.S. 207, 236, 110 S.Ct. 1750, 109 L.Ed.2d 184 (1990) (internal quotation marks and citation omitted)). Further, "[t]he task is not to be simplified with bright-line rules, for the statute, like the doctrine it recognizes, calls for case-by-case analysis." Id. at 577, 110 S.Ct. 1750.

C. The Satire/Parody Distinction

Because the four factors in Section 107 are applied differently to parodies and satires, the starting point of the Court's analysis is determining whether the Defendants' use of "When You Wish Upon a Star" is properly considered satire, parody, or neither, as those terms have come to be defined by fair use caselaw.

The distinction between parody and satire turns on the object of the "comment" made by the allegedly infringing work.

For the purposes of copyright law, the nub of the definitions, and the heart of any parodist's claim to quote from existing [505] material, is the use of some elements of a prior author's composition to create a new one that, at least in part, comments on that author's works. If, on the contrary, the commentary has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in borrowing from another's work diminishes accordingly (if it does not vanish), and other factors, like the extent of its commerciality, loom larger. Parody needs to mimic an original to make its point, and so has some claim to use the creation of its victim's (or collective victims') imagination, whereas satire can stand on its own two feet and so requires justification for the very act of borrowing.

Campbell, 510 U.S. at 580-581, 114 S.Ct. 1164 (1994).

In Campbell v. Acuff-Rose Music, Inc., the Supreme Court analyzed the music group 2 Live Crew's rap/song "Pretty Woman" as a parody of the Roy Orbison rock ballad "Oh, Pretty Woman". 510 U.S. 569, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994). The Court found that 2 Live Crew was, at least in part, commenting on the original. Id. They found the 2 Live Crew version "could reasonably be perceived as commenting on the original or criticizing it, to some degree" because "2 Live Crew juxtaposes the romantic musings of a man whose fantasy comes true, with degrading taunts, a bawdy demand for sex, and a sigh of relief from paternal responsibility." Id. at 583, 114 S.Ct. 1164.

Likewise, the Second Circuit found parody in advertisement for the movie Naked Gun 33 1/3: The Final Insult in which a well-known Annie Leibovitz photograph of the actress Demi Moore was recreated replacing the head of a pregnant Moore, with the "smirking" head of Leslie Nielsen. Leibovitz v. Paramount Pictures Corporation, 137 F.3d 109, 114 (2d Cir. 1998). The Circuit held that:

Being different from an original does not inevitably "comment" on the original. Nevertheless, the ad is not merely different; it differs in a way that may reasonably be perceived as commenting, through ridicule, on what a viewer might reasonably think is the undue self-importance conveyed by the subject of the Leibovitz photograph.

Leibovitz, 137 F.3d at 114 (quotations omitted).

On the other hand, the Second Circuit has recently addressed the parody/satire distinction in the context of the artist Jeff Koons' use of a fashion photograph, finding that use to be satire. Blanch v. Koons, 467 F.3d 244, 247 (2d Cir.2006). In the Koons case, the artist (known as an "appropriation artist") took part of a fashion photograph ("Silk Sandals"), depicting the legs of a model wearing sandals, and repositioned that image in the context of other images (other legs set on a backdrop of images of confections) to create a new work, which was then painted onto a canvas. Blanch, 467 F.3d at 247. The Circuit held that this work: "may be better characterized for these purposes as satire—its message appears to target the genre of which 'Silk Sandals' is typical, rather than the individual photograph itself." Blanch, 467 F.3d at 254.

At least one other Court in this Circuit has held that the use of a copyrighted song in a new work to create a contrast with the original song's comment on the world (and "the assertedly delusional innocence of mainstream culture") is parody. In Abilene Music, Inc. v. Sony Music Entertainment, Inc., the rapper Ghostface Killah's "sarcastic" use of "What a Wonderful World" was protected as parody where the [506] Court found that "the song's take on the world ... highlights the contrast between the two worldviews, and expresses the rapper's belief in the realism of his own perspective." But see MCA, Inc. v. Wilson, 425 F.Supp. 443, 453 (D.C.N.Y.1976) (finding that Defendant's song "Cunnilingus Champion of Co. C" infringed on Plaintiffs rights in "Boogie Woogie Bugle Boy" because their song commented on life, and sexual mores, but not the original work).

The Defendants in this case have sought to justify their use of Plaintiffs copyrighted material as parody in two ways: 1) as a comment on the "saccharine sweet," "innocent" and "wholesome" worldview presented in and represented by "When You Wish Upon a Star", and 2) by evoking "the song most associated with Walt Disney and his company" commenting "on the song while simultaneously making a sharp point about Walt Disney's reputed anti-Semitism." (Def. Mem. of Law at 6-7.)^[5] Defendants argue that their song works to "lampoon the 'purity' and `wholesome' values expressed in `Wish Upon a Star'"; the song "turns the sweetness of this idyllic message on its head by having Peter ignorantly sing about stereotypes of Jewish people, while at the same time earnestly, and innocently, wishing for a Jew, as if they were some kind of mystical beings who, naturally, could help him solve his financial problems." (Def. Mem. of Law at 12.) Plaintiff argues that Defendants' song "I Need a Jew", does not criticize, ridicule, or in any way comment upon its song but rather "ridicules anti-Semitism and Jewish stereotypes". (Pl. Mem. of Law at 17.) It argues "[t]here is absolutely nothing about [`I Need a Jew'] that overtly comments on or criticizes the subject matter, quality or style of ['When You Wish Upon a Star']." (Id. at 12.)

The Court finds that by juxtaposing the "saccharin sweet" song "When You Wish Upon a Star" with "I Need a Jew" the Defendants do more than just comment on racism and bigotry generally, as Plaintiff contends. Rather, Defendants' use of "When You Wish Upon a Star" calls to mind a warm and fuzzy view of the world that is ultimately nonsense; wishing upon a star does not, in fact, make one's dreams come true. By pairing Peter's "positive," though racist, stereotypes of Jewish people with that fairy tale worldview, "I Need a Jew" comments both on the original work's fantasy of Stardust and magic, as well as Peter's fantasy of the "superiority" of Jews. The song can be "reasonably perceived" to be commenting that any categorical view of a race of people is childish and simplistic, just like wishing upon a star.

This interpretation of "I Need a Jew" is supported by the visual elements on screen at the time the song is being sung by Peter in the Episode. The visual elements, depicting Peter staring out a window at a starry night, echo the equivalent scene in Pinocchio in which Gepetto is wishing for a real boy. It is undisputed that Pinocchio is the original context of the song "When You Wish Upon a Star". (Def. 56.1 Stmt. at 2.) The visual reference to Pinocchio makes plain that this is not a case in which the creators simply substituted new lyrics for a known song "to get attention or to avoid the drudgery in working up something fresh". Campbell, 510 U.S. at 580, 114 S.Ct. 1164; cf. MCA, Inc. v. Wilson, 425 F.Supp. 443, 453 (D.C.N.Y. 1976), Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir. [507] 1997). The creators of the Episode were clearly attempting to comment in some way on the wishful, hopeful scene in Pinocchio with which the song is associated. Consequently, "I Need a Jew" is properly understood as a parody of "When You Wish Upon a Star".

The Court's finding is further supported by Defendants' proffered evidence that the song in the Episode makes an additional comment, or "inside joke", about the "widespread belief" that Walt Disney was anti-Semitic. (Def. Mem. of Law at 12.) Defendants argue that, "[t]he creators of the Family Guy Song thought it would be the perfect, cutting commentary to use the iconic song most closely-associated with Walt Disney, Wish Upon a Star, in a parodic reverie where the main character `wishes upon a star' for, of all things, a Jew." (Id.) Defendants have offered deposition testimony of the show's creator, MacFarlane, and Executive Producer, Zuckerman, who both testified that one of the song's intentions was to make a point about Disney's alleged anti-Semitism.^[6] (Rimokh Decl. Ex. F, M, MacFarlane Dep. 51:12-51:14, 62:15-63:12; Zuckerman Dep. 24:07-24:21.)

Plaintiff argues that the evidence fails to support Defendants' claim that they intended in the Episode at issue to comment on Walt Disney's purported anti-Semitism. (Pl. Mem. of Law at 18.) First, Plaintiff argues that although "When You Wish Upon a Star" "was sometimes used as a theme song ... by the Walt Disney Company" Bourne "specifically refused to admit that their song was associated in the minds of the public with the Disney Company or was in any way associated with Walt Disney individually or personally, and further refused to admit that the public associates the Disney Company with Walt Disney personally." (Id.) Further, Plaintiff argues that Defendants have provided "no admissible evidence that the public actually believes Mr. Disney was an anti-Semite." (Id. at 19.) However, Plaintiff misapprehends the nature of the inquiry in making both of these arguments. Defendants need to prove neither that the public associates the song with Walt Disney individually or personally nor "actually believes" Walt Disney was an anti-Semite; Defendants need only demonstrate that "a parodic character may be reasonably perceived." Campbell, 510 U.S. at 582-583, 114 S.Ct. 1164. Further, the Supreme Court has held that the law protects parodies even when they fail to speak clearly. Campbell, at 582, 114 S.Ct. 1164 quoting Yankee Publishing Inc. v. News America Publishing, Inc., 809 F.Supp. 267, 280 (S.D.N.Y.1992)(Leval, J.) (noting "First Amendment protections do not apply only to those who speak clearly, whose jokes are funny, and whose parodies succeed"). Therefore, even if Defendants intended to make an "inside joke" about Walt Disney's alleged anti-Semitism but that joke failed, it can still support a finding of fair use if it's "parodic character can be reasonably perceived."

Although this joke may not be an obvious one, Defendants have established sufficient facts for the Court to find that one of their intended comments in parodying "When You Wish Upon a Star" related to the reputation of Walt Disney as an anti-Semite and that such a comment may be "reasonably perceived". The Second Circuit has given weight to an artist's own [508]

explanation of their creative rationale when conducting fair use analysis, Blanch, 467 F.3d at 255, and here Defendants have produced uncontroverted evidence that a parallel joke about Walt Disney was discussed in the writers' room prior to the recording of the song. (Rimokh Decl. Ex. F, M MacFarlane Dep. 51:12-51:14, 62:15-63:12; Zuckerman Dep. 24:07-24:21.) What's more, the fact that Defendants have attempted to make the same joke, subsequent to their creation of the Episode, but prior to this litigation, lends credence to their claim that such an inside joke was intended^[7] and further demonstrates that the creators expected their viewership to understand the joke. The Court takes judicial notice of the fact that the internet contains many references to the claim that Walt Disney was an anti-Semite.^[8] The Court further notes that Defendants have proffered, in addition to other evidence, a Los Angeles Times Book Prize-winning biography of Walt Disney which notes that "it was no secret that Walt Disney was a fervent anti-Communist" but "[a]nother question—one that would haunt him for the rest of his life and even haunt his reputation decades after he died—was whether he was also an anti-Semite." (Rimokh Decl. 2 at Ex. B, NEAL GABLER, Walt Disney; The Triumph of the American Imagination 454). Further, the Court the finds that it may be reasonably perceived that Walt Disney is associated with the Walt Disney Company. (Rimokh Decl. Ex F, MacFarlane Dep. 57:24-60:19, stating that "I mean the man was the company in so many ways. I mean his name is on everything, his signature is on everything, Walt Disney ... I mean the Disney Corporation has his name on it.") Therefore, the Court finds that it may be reasonably perceived that "I Need a Jew" was commenting on Walt Disney's alleged anti-Semitism.

Consequently, Defendants have established that their song, "I Need a Jew" contains several layers of parody of Plaintiff's copyrighted work "When You Wish Upon a Star."

D. Applying the Four Factor Analysis to Defendants' Parody

The Supreme Court has cautioned that a finding of parody, alone, is not sufficient for a Court to find fair use. See Campbell, 510 U.S. at 579-581, 114 S.Ct. 1164 (finding that "parody may or may not be fair use"). Rather, Courts must engage in an individualized analysis of the four factors set out in Section 107. (Id. at 577, 114 S.Ct. 1164.)

1. The Purpose and Character of the Use;

Having already found that Defendants' work "I Need a Jew" comments on "When You Wish Upon a Star" the Court must now turn to the question of whether it adds something new to the original song and qualifies as "transformative". Leibovitz, [509] 137 F.3d at 114. According to the Supreme Court:

The central purpose of this investigation is to see, in Justice Story's words, whether the new work merely "supersede[s] the objects" of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is "transformative."

Campbell, 510 U.S. at 579, 114 S.Ct. 1164 (quotations and citations omitted).

The Second Circuit found it "plain" that superimposing the face of Leslie Nielsen on a photographed body intended to look like Demi Moore's was "transformative" of Leibovitz's original photograph. 137 F.3d at 114; see also Abilene Music, Inc. v. Sony Music Entertainment, Inc., 320 F.Supp.2d 84, 91 (S.D.N.Y.2003). In the context of that caselaw, it is clear that the song "I Need a Jew" is transformative of the original work here.

The lyrics of "I Need a Jew" are almost entirely different from those of "When You Wish Upon a Star"—and are strikingly different in tone and message. In addition, the tune of the song, though very similar to the original, is at least somewhat different. And, although they are both songs written for cartoons to express the wish of the singer, the wishes, and indeed the cartoons themselves, could not be more different. The Court finds that the new work is transformative; consequently. the first factor weighs in favor of a finding of fair use.

2. The Nature of the Copyrighted Work;

There is no question that in this case, the original song ("When You Wish Upon a Star") is a "creative expression for public dissemination" which falls within the "core of the copyright's protective purposes." Campbell, 510 U.S. at 586, 114 S.Ct. 1164. But, as in Campbell, this fact, "is not much help in this case, or ever likely to help much in separating the fair use sheep from the infringing goats in a parody case, since parodies almost invariably copy publicly known, expressive works." Id.

Consequently, the Court affords little weight to this second prong of the analysis.

3. The Amount and Substantiality of the Portion Used in Relation to the Copyrighted Work as a Whole;

When the use at issue is a parody, it is undisputed that the parody "must be able to `conjure up' at least enough of that original to make the object of its critical wit recognizable." Campbell, 510 U.S. at 588, 114 S.Ct. 1164. This stems from that fact that parody's humor "necessarily springs from recognizable allusion to its object through distorted imitation." Id. The Supreme Court has held that:

Once enough has been taken to assure identification, how much more is reasonable will depend, say, on the extent to which the song's overriding purpose and character is to parody the original or, in contrast, the likelihood that the parody may serve as a market substitute for the original. But using some characteristic features cannot be avoided.

Id.

The facts in this case make clear that the Defendants thought about how much of the original song was necessary to make the object of their parody recognizable. While Murphy originally wrote a new song that evoked the original, MacFarlane or Zuckerman asked him to make changes in order to make the allusion clearer. (Def. 56.1 Counter-Stmt. at 6; Rimokh Decl. Ex. G 11:22-13:8.) Indeed, [510]

Murphy expressed concern that by making changes to bring the song closer to the original, he would no longer be creating a "unique" song, as he is required to do under his contract with Fox. (Id.) MacFarlane nevertheless insisted that a few notes be changed to make the reference to "When You Wish Upon a Star" apparent to the ordinary listener. (Id.) The internal, creative dispute over how much of the original to use demonstrates that Defendants were concerned about taking just enough of the original to make their point clear. Therefore, even assuming that Defendants took substantially all of the song, as in Campbell, that borrowing was necessary to allow the parodic character of their work to come through. Consequently, the Court find the third factor weighs in favor of Defendants.

4. The Effect of the Use Upon the Potential Market for or Value of the Copyrighted Work.

Plaintiff makes two arguments that market harm exists here. First, Plaintiff argues that widespread, similar unlicensed uses (including other irreverent comedic uses) "would substitute for and compete with licensed comedic programs, in addition to depriving Bourne of significant licensing revenue." (Pl. Mem. of Law at 30-31.) Second, it argues that "I Need a Jew" harms the value of its song because it is "unquestionable" that it "would be highly offensive to a significant number of people" harming the original song by association. (Id. at 32.) Both arguments rely on a misconception of the fourth factor analysis.

The Second Circuit recently held that:

In considering the fourth factor, our concern is not whether the secondary use suppresses or even destroys the market for the original work or its potential derivatives, but whether the secondary use usurps the market of the original work. The market for potential derivative uses includes only those that creators of original works would in general develop or license others to develop.

Blanch v. Koons, 467 F.3d 244, 258 (2d Cir.2006) (citations omitted). The Supreme Court has noted that where the second use is "transformative" "market substitution is at least less certain, and market harm may not be so readily inferred." Campbell, 510 U.S. at 590, 114 S.Ct. 1164. The Court noted that "as to parody pure and simple, it is more likely that the new work will not affect the market for the original in a way cognizable under this factor, that is, but acting as a substitute for it. This is so because parody and the original usually serve different market functions." Id.

In this case, there can be no question that "I Need a Jew" does not usurp the market for "When You Wish Upon a Star." As the Supreme Court predicted, the parody and the original here serve different market functions. Even Plaintiff admits that its song is known for its wholesomeness and sweetness, where Family Guy's parody of it is so different as to be (they argue) offensive. (Pl. 56.1 Stmt. at 9-14.) Plaintiff does not even make the contention that "I Need a Jew" could in any way substitute for "When You Wish Upon a Star."

Indeed, Plaintiff argues for a reading of the fourth factor that would swallow the rule entirely. All uses of copyrighted work under a fair use rationale deprive the owner of licensing fees. If a parody of the original work would usurp the market for licensing other comedic uses of the original work, then all parodies would fail under this prong of the analysis. The Supreme Court clearly intended otherwise as did Congress in creating an opportunity for [511] fair use under 17 U.S.C. § 107. See Campbell, supra at 590, 114 S.Ct. 1164.

Neither can Plaintiff succeed on its theory that their song is harmed by association with "I Need a Jew." It was the Supreme Court's intention for the parody doctrine to protect new works that have reason to fear they will be unable to obtain a license from copyright holders who wish to shield their works from criticism. Campbell, 510 U.S. at 597, 114 S.Ct. 1164. Any harm enured to the original by association is likely to be the exact use of the original material that the law aims to protect.

Therefore, the Court finds that the fourth factor mitigates in favor of the Defendants.

5. Aggregate Analysis

In total, the Court has afforded little weight to factor two and finds that factors one, three, and four each weigh heavily in Defendants' favor. Stepping back and considering the statutory analysis as a whole, there can be no question that Defendants' use of "When You Wish Upon a Star" constitutes fair use. As the Second Circuit held in the Leibovitz case, the owner of the rights to a well-known work "must expect, or at least tolerate, a parodist's deflating ridicule." 137 F.3d at 114-15. Plaintiff reaps the benefit of their song's association with Pinocchio and Disney, and enjoys its reputation for wholesomeness; it is precisely that beneficial association that opens the song up to ridicule by parodists seeking to take the wind out of such lofty, magical, or pure associations. The Supreme Court found that such deflating uses serve the important social function of shedding light on the earlier work. Campbell, 510 U.S. at 579, 114 S.Ct. 1164. Transformative uses of a copyrighted work, such as the Family Guy parody here, "lie at the heart of the fair use doctrine's guarantee of breathing space within the confines of copyright." Id.

III. CONCLUSION

Accordingly, for the reasons stated above, Defendants' Motion for Summary Judgment is GRANTED. Plaintiffs Cross-Motion for Summary Judgment is DENIED. The Clerk of the Court is directed to terminate all pending motions and close the docket in this case.

SO ORDERED.

[1] Plaintiffs dispute that Defendants have offered proof "as to the manner in which the Disney Company used the song in connection with its motion pictures or advertisements, and "merely admits that the song or portions of the song were sometimes used, often in medleys with other songs, in the opening title music of a television series produced by the Walt Disney Company." (Pl. 56.1 Counter-Stmt. at 22.)

[2] An alternate version of the song changes this line to "I don't think they killed my Lord." (Def. 56.1. Counter-Stmt. at 11.)

[3] The Parties dispute the extent of the similarities between the tune of the two songs. (Compare Pl. 56.1 Stmt. at 14-19 with Def. 56.1. Counter-Stmt. at 36-49.)

[4] The Parties also disagree about what the song "I Need a Jew" can be "reasonably perceived" to comment on. That is a legal question, resolved infra at C. See also Leibovitz v. Paramount Pictures Corporation, 137 F.3d 109, 114 (2d Cir.1998).

[5] Defendants point out that these are only two of the comments made by their song, including such other comments as holding bigotry and people like Peter Griffin up to ridicule. (Def. 56.1 Counter-Stmt. 11.)

[6] The show has made this same joke, more recently, but before the suit was filed against Defendants, in a 2005 Family Guy movie, "Family Guy Presents Stewie Griffin: The Untold Story" which at one point depicts Walt Disney emerging from a cryogenic chamber and asking "Are the Jews gone yet?"; when the scientist in the cartoon tells him no, Disney replies, "Put me back in!" (Def. Mem. of Law at 13.)

[7] Plaintiff makes much of the fact that this "inside joke" was not used by the creators to justify the parody in internal discussions of the Episode at the Fox network, or by some of the people associated with writing the Episode at their depositions. (Pl. Mem. of Law at 18-20.) The Court need not police the precise timing of the creative process in order to determine the comment made by Defendant's use of the copyrighted work. See Blanch, 467 F.3d at 256. In addition, because the Court reaches the same conclusion, that Defendants work is a parody, on other grounds, the Court need not address the question of whether this set of arguments creates a genuine issue of material fact.

[8] Two of the first five "hits" on a Google Search of "Disney Jews" are "The Straight Dope: Was Walt Disney a fascist?" and "Did Walt Disney Hate Jews: Part One Video".

420 F. Supp. 177

BRIGHT TUNES MUSIC CORP., Plaintiff,
v.
HARRISONGS MUSIC, LTD., et al., Defendants.

No. 71 Civ. 602.

United States District Court, S. D. New York.

August 31, 1976.

As Amended September 1, 1976.

[420 F. Supp. 178] Pryor, Cashman & Sherman, by Gideon Cashman, James A. Janowitz, New York City, for plaintiff.

Hardee, Barovick, Konecky & Braun, by Joseph J. Santora, Robert B. McKay, Michael Perlstein, New York City, for defendants Harrisongs Music, Ltd., George Harrison, Apple Records, Inc. and Apple Records, Ltd.

Leibman & Schreier, by Leonard S. Leibman, New York City, for defendant Broadcast Music, Inc.

Netter, Dowd, Ness, Alfieri & Stern, by Edward Berman, New York City, for defendant Hansen Publications, Inc.

OPINION AND ORDER

OWEN, District Judge.

This is an action in which it is claimed that a successful song, My Sweet Lord, listing George Harrison as the composer, is plagiarized from an earlier successful song, He's So Fine, composed by Ronald Mack, recorded by a singing group called the "Chiffons," the copyright of which is owned by plaintiff, Bright Tunes Music Corp.

He's So Fine, recorded in 1962, is a catchy tune consisting essentially of four repetitions of a very short basic musical phrase, "sol-mi-re," (hereinafter motif A),^[1] altered as necessary to fit the words, followed by four repetitions of another short basic musical phrase, "sol-la-do-la-do," (hereinafter motif B).^[2] While neither motif is novel, the four repetitions of A, followed by four repetitions of B, is a highly unique pattern.^[3] In addition, in the second use of the motif B series, there is a grace note inserted making the phrase go "sol-la-do-la-re-do."^[4]

My Sweet Lord, recorded first in 1970, also uses the same motif A (modified to suit the words) four times, followed by motif B, repeated three times, not four. In place of He's So Fine's fourth repetition of motif B, My Sweet Lord has a transitional passage of musical attractiveness of the same approximate length, with the identical grace note in the identical second repetition.^[5] The harmonies of both songs are identical.^[6]

[420 F. Supp. 179] George Harrison, a former member of The Beatles, was aware of He's So Fine. In the United States, it was No. 1 on the billboard charts for five weeks; in England, Harrison's home country, it was No. 12 on the charts on June 1, 1963, a date upon which one of the Beatle songs was, in fact, in first position. For seven weeks in 1963, He's So Fine was one of the top hits in England.

According to Harrison, the circumstances of the composition of My Sweet Lord were as follows. Harrison and his group, which include an American black gospel singer named Billy Preston,^[7] were in Copenhagen, Denmark, on a singing engagement. There was a press conference involving the group going on backstage. Harrison slipped away from the press conference and went to a room upstairs and began "vamping" some guitar chords, fitting on to the chords he was playing the words, "Hallelujah" and "Hare Krishna" in various ways.^[8]During the course of this vamping, he was alternating between what musicians call a Minor II chord and a Major V chord.

At some point, germinating started and he went down to meet with others of the group, asking them to listen, which they did, and everyone began to join in, taking first "Hallelujah" and then "Hare Krishna" and putting them into four part harmony. Harrison obviously started using the "Hallelujah," etc., as repeated sounds, and from there developed the lyrics, to wit, "My Sweet Lord," "Dear, Dear Lord," etc. In any event, from this very free-flowing exchange of ideas, with Harrison playing his two chords and everybody singing "Hallelujah" and "Hare Krishna," there began to emerge the My Sweet Lord text idea, which Harrison sought to develop a little bit further during the following week as he was playing it on his guitar. Thus developed motif A and its words interspersed with "Hallelujah" and "Hare Krishna."

Approximately one week after the idea first began to germinate, the entire group flew back to London because they had earlier booked time to go to a recording studio with Billy Preston to make an album. In the studio, Preston was the principal musician. Harrison did not play in the session. He had given Preston his basic motif A with the idea that it be turned into a song, and was back and forth from the studio to the engineer's recording booth, supervising the recording "takes." Under circumstances that Harrison was utterly unable to recall, while everybody was working toward a finished song, in the recording studio, somehow or other the essential three notes of motif A reached polished form.

"Q. By the Court: . . . you feel that those three notes . . . the motif A in the record, those three notes developed somewhere in that recording session?

"Mr. Harrison: I'd say those three there were finalized as beginning there."

* * * * * *

"Q. By the Court: Is it possible that Billy Preston hit on those notes comprising motif A?

"Mr. Harrison: Yes, but it's possible also that I hit on that, too, as far back as the dressing room, just scat singing."

Similarly, it appears that motif B emerged in some fashion at the recording session as did motif A. This is also true of the unique grace note in the second repetition of motif B.

"Q. By the Court: All I am trying to get at, Mr. Harrison, is if you have a recollection when that grace note popped into existence as it [420 F. Supp. 180] ends up in the Billy Preston recording.

* * * * * *

"Mr. Harrison: . . . Billy Preston might have put that there on every take, but it just might have been on one take, or he might have varied it on different takes at different places."

The Billy Preston recording, listing George Harrison as the composer, was thereafter issued by Apple Records. The music was then reduced to paper by someone who prepared a "lead sheet" containing the melody, the words and the harmony for the United States copyright application.^[9]

Seeking the wellsprings of musical composition —why a composer chooses the succession of notes and the harmonies he does—whether it be George Harrison or Richard Wagner—is a fascinating inquiry. It is apparent from the extensive colloquy between the Court and Harrison covering forty pages in the transcript that neither Harrison nor Preston were conscious of the fact that they were utilizing the He's So Fine theme.^[10] However, they in fact were, for it is perfectly obvious to the listener that in musical terms, the two songs are virtually identical except for one phrase. There is motif A used four times, followed by motif B, four times in one case, and three times in the other, with the same grace note in the second repetition of motif B.^[11]

What happened? I conclude that the composer,^[12] in seeking musical materials to clothe his thoughts, was working with various possibilities. As he tried this possibility and that, there came to the surface of his mind a particular combination that pleased him as being one he felt would be appealing to a prospective listener; in other words, that this combination of sounds would work. Why? Because his subconscious knew it already had worked in a song his conscious mind did not remember. Having arrived at this pleasing combination of sounds, the recording was made, the lead sheet prepared for copyright and the song became an enormous success. Did Harrison deliberately use the music of He's So Fine? I do not believe he did so deliberately. Nevertheless, it is clear that My Sweet [420 F. Supp. 181] Lord is the very same song as He's So Fine with different words,^[13] and Harrison had access to He's So Fine. This is, under the law, infringement of copyright, and is no less so even though subconsciously accomplished. Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 54 (2d Cir. 1936); Northern Music Corp. v. Pacemaker Music Co., Inc., 147 U.S.P.Q. 358, 359 (S.D.N.Y. 1965).

Given the foregoing, I find for the plaintiff on the issue of plagiarism, and set the action down for trial on November 8, 1976 on the issue of damages and other relief as to which the plaintiff may be entitled. The foregoing constitutes the Court's findings of fact and conclusions of law.

So Ordered.

[1] [Image]

[2] [Image]

[3] All the experts agreed on this.

[4] [Image]

[5] This grace note, as will be seen infra, has a substantial significance in assessing the claims of the parties hereto.

[6] Expert witnesses for the defendants asserted crucial differences in the two songs. These claimed differences essentially stem, however, from the fact that different words and number of syllables were involved. This necessitated modest alterations in the repetitions or the places of beginning of a phrase, which, however, has nothing to do whatsoever with the essential musical kernel that is involved.

[7] Preston recorded the first Harrison copyrighted recording of My Sweet Lord, of which more infra, and from his musical background was necessarily equally aware of He's So Fine.

[8] These words ended up being a "responsive" interjection between the eventually copyrighted words of My Sweet Lord. In He's So Fine the Chiffons used the sound "dulang" in the same places to fill in and give rhythmic impetus to what would otherwise be somewhat dead spots in the music.

[9] It is of interest, but not of legal significance, in my opinion, that when Harrison later recorded the song himself, he chose to omit the little grace note, not only in his musical recording but in the printed sheet music that was issued following that particular recording. The genesis of the song remains the same, however modestly Harrison may have later altered it. Harrison, it should be noted, regards his song as that which he sings at the particular moment he is singing it and not something that is written on a piece of paper.

[10] Preston may well have been the "composer" of motif B and the telltale grace note appearing in the second use of the motif during the recording session, for Harrison testified:

"The Court: To be as careful as I can now in summing this up, you can't really say that you or Billy Preston or somebody else didn't somewhere along the line suggest these; all you know is that when Billy Preston sang them that way at the recording session, you felt they were a successful way to sing this, and you kept it?

"The Witness: Yes, I mean at that time we chose what is a good performance.

"The Court: And you felt it was a worthy piece of music?

"The Witness: Yes . . .."

[11] Even Harrison's own expert witness, Harold Barlow, long in the field, acknowledged that although the two motifs were in the public domain, their use here was so unusual that he, in all his experience, had never come across this unique sequential use of these materials. He testified:

"The Court: And I think you agree with me in this, that we are talking about a basic three-note structure that composers can vary in modest ways, but we are still talking about the same heart, the same essence?

"The Witness: Yes.

"The Court: So you say that you have not seen anywhere four A's followed by three B's or four?

"The Witness: Or four A's followed by four B's."

The uniqueness is even greater when one considers the identical grace note in the identical place in each song.

[12] I treat Harrison as the composer, although it appears that Billy Preston may have been the composer as to part. (See fn. 10 supra). Even were Preston the composer as to part, this is immaterial. Peter Pan Fabrics, Inc. v. Dan River Mills, Inc., 295 F.Supp. 1366, 1369 (S.D. N.Y.), aff'd, 415 F.2d 1007 (2d Cir. 1969).

[13] Harrison himself acknowledged on the stand that the two songs were substantially similar. This same conclusion was obviously reached by a recording group called the "Belmonts" who recorded My Sweet Lord at a later time. With "tongue in cheek" they used the words from both He's So Fine and My Sweet Lord interchangeably at certain points.

351 F.3d 46

John L. JORGENSEN, Plaintiff-Appellant,
v.
EPIC/SONY RECORDS, Famous Music Corporation, Fox Film Music Corporation, Careers BMG Music Publishing, Blue Sky Rider Songs, Warner-Tamerlane Publishing Corporation, Songs of Nashville Dreamworks, Defendants-Appellees.

No. 02-9305.

United States Court of Appeals, Second Circuit.

Argued: May 19, 2003.

Decided: December 3, 2003.

[47] John L. Jorgensen, pro se, Brooklyn, New York, for Plaintiff-Appellant.

Orin Snyder (Cynthia S. Arato, on the brief), Parcher, Hayes, & Snyder, P.C., New York, New York, for Defendants-Appellees Careers BMG Music Publishing Inc., Songs of Nashville Dreamworks, Sony Music Entertainment Inc., and Warner-Tamerlane Publishing Corporation.

[48] Jonathan Zavin, Loeb & Loeb, LLP, New York, New York, for Defendants-Appellees Famous Music Corporation, Fox Film Music Corporation, and Blue Sky Rider Songs.

Before: KEARSE, STRAUB, and RAGGI, Circuit Judges.

STRAUB, Circuit Judge.

Plaintiff John L. Jorgensen ("Jorgensen"), pro se, appeals from the judgment of the United States District Court for the Southern District of New York (John F. Keenan, Judge), dated September 27, 2002, granting the defendants' motion for summary judgment and dismissing Jorgensen's copyright infringement case in its entirety. The District Court found that Jorgensen had not presented sufficient evidence of access to support his claim of copyright infringement, i.e., Jorgensen had not shown a reasonable opportunity by the allegedly infringing songwriters to hear and copy Jorgensen's unpublished song. See Jorgensen v. Epic/Sony Records, No. 00 Civ. 9181, 2002 WL 31119377 (S.D.N.Y. Sept.24, 2002).

We agree with the District Court that evidence of corporate receipt of unsolicited work is insufficient to raise a triable issue of access where there is no evidence of any connection between the individual recipients of the protected work and the alleged infringers. As to Defendants Careers BMG Music Publishing, Songs of Nashville Dreamworks, and Warner-Tamerlane Publishing Corp., Jorgensen failed to introduce evidence of any such nexus; indeed, those defendants introduced uncontroverted evidence to the contrary. As such, we affirm the District Court's ruling that Jorgensen failed to raise a triable issue of access as to those defendants.

With respect to Defendants Famous Music Corporation, Fox Film Music Corp., Blue Sky Rider Songs, and Sony Music Entertainment Inc. (improperly sued as Epic/Sony Records), however, we find that Jorgensen did proffer sufficient evidence of a connection between the recipients of his recordings and the alleged infringers to make the grant of summary judgment on the issue of access inappropriate at this stage of the proceedings. We therefore vacate the judgment of the District Court as to Defendants Famous Music Corporation, Fox Film Music Corp., Blue Sky Rider Songs, and Sony Music Entertainment Inc. and remand the case for further proceedings.

BACKGROUND

Jorgensen, a musician and songwriter, wrote and copyrighted a song entitled "Long Lost Lover" ("Lover") that he claims has been infringed upon by the songs "My Heart Will Go On" ("Heart") and "Amazed." Written by James Horner and Will Jennings, and sung by Celine Dion, "Heart" was the Academy Award-winning theme song for the 1997 blockbuster movie Titanic. Defendants Famous Music Corporation, Fox Film Music Corp. and Blue Sky Rider Songs are the three co-publishers of "Heart," and Defendant Sony Music Entertainment Inc. ("Sony") manufactured and distributed the Titanic soundtrack.^[1] These defendants are collectively referred to as `the "Heart" defendants' in this opinion.

"Amazed," a song written by Chris Lindsey, Aimee Mayo and Marv Green, was recorded by the country music group Lonestar and released on their multi-platinum [49] album "Lonely Grill." Defendants Careers BMG Music Publishing ("BMG"), Songs of Nashville Dreamworks, and Warner-Tamerlane Publishing Corp. (collectively 'the "Amazed" defendants') are music publishing companies that administer the publishing rights to "Amazed."

Jorgensen asserts two primary theories by which he hypothesizes that the writers of "Heart" and "Amazed" had access to, and copied his song, "Lover": (i) through his unsolicited mass mailings of "Lover" to a multitude of entertainment companies listed in industry songwriter market books, including the defendants; and (ii) through actual receipt of his mailings by two executives at two of the defendant companies, BMG and Sony.^[2] Jorgensen has not named the writers of either song as defendants in this suit.

After discovery, the defendants moved for summary judgment on the ground that Jorgensen had failed to adduce any evidence to support these theories of access. In particular, the defendants argued that, with the two exceptions noted below, Jorgensen had made no showing that any of the defendants ever actually received his submission. Even where Jorgensen established actual receipt, the defendants asserted that there was no evidence that Jorgensen's song had been forwarded to the writers of "Amazed" or "Heart," or to any other third party. In addition, the defendants argued that Jorgensen never had any contact with the writers of either "Amazed" or "Heart," and that Jorgensen had no evidence that the writers of either song would ever have received any tapes of unsolicited material from any of the companies to which Jorgensen sent copies of "Lover."

Bruce Pollock, a managing producer at a BMG division that has no connection with the music publishing company, submitted a sworn declaration in which he admitted having received a compact disc copy of "Lover" from Jorgensen. Pollock stated, however, that he did not give the CD to anyone at any time, including the writers of "Amazed" whom he did not know and had never met.

Harvey Leeds, a Vice President at Sony responsible for reviewing touring budgets for Sony artists, also admitted during his deposition that he had received a few tapes from Jorgensen but stated that he did not listen to them, and had assumed they were thrown away. Leeds also testified that he did not know the "Heart" songwriters.

Based on this evidence from Pollock and Leeds and because Jorgensen did not produce any cover letters or other correspondence to the defendants indicating to whom (or when) he sent his other mailings of "Lover," the District Court held that Jorgensen could not establish that the authors of either "Amazed" or "Heart" had a reasonable opportunity to hear his unpublished work. 2002 WL 31119377, at *4 ("Without more proof of access than has been demonstrated, Jorgensen's case cannot proceed."). The court held that "bare corporate receipt" of Jorgensen's work by those defendants who may have received Jorgensen's mass mailings did "not create a prima facie case of access sufficient to defeat summary judgment." Id. at *3. And, according to the District Court, with [50] respect to BMG and Sony, the fact that Pollock and Leeds, respectively, admitted receiving Jorgensen's songs, without further evidence that they had forwarded the tapes to the songwriters or anyone else, was similarly inadequate to show access. See id. at *4.

The District Court's summary of the evidence regarding Jorgensen's interactions with Leeds and Sony, however, was incomplete. During his deposition, Jorgensen testified at length about multiple conversations that he'd had with both Leeds and Leeds's assistants over the course of three or more years regarding several tapes that Jorgensen sent to Leeds, including at least one tape that contained a recording of "Lover." According to Jorgensen, during every one of these conversations, Leeds or his assistants confirmed that Leeds had received Jorgensen's tapes (including, in particular, the "Lover" tape) and told Jorgensen that his tapes had been forwarded to Sony's Artist and Repertoire ("A & R") Department, the department responsible for helping the company "find, sign and guide new talent." In addition, in response to Jorgensen's Requests for Admissions, Sony indicated that "on limited occasions, writers, producers or musicians affiliated with Sony may have been shown some material solicited by the A & R Dept. at some point during 1995, 1996 and 1997...." This evidence — which the District Court does not appear to have considered — undercuts the defendants' claim that "Jorgensen failed to adduce even a scintilla of evidence" that Leeds "provided [Jorgensen's] song to anyone else...."

DISCUSSION

We review the District Court's grant of summary judgment de novo, construing the evidence in the light most favorable to Jorgensen, the non-moving party. See Mack v. Otis Elevator Co., 326 F.3d 116, 119 (2d Cir.2003). Moreover, because Jorgensen is proceeding pro se, we read his pleadings "liberally and interpret them to raise the strongest arguments that they suggest." McPherson v. Coombe, 174 F.3d 276, 280 (2d Cir.1999) (citation and internal quotation marks omitted); see also Graham v. Henderson, 89 F.3d 75, 79 (2d Cir.1996). As the District Court observed, however, our "application of this different standard does not relieve plaintiff of his duty to meet the requirements necessary to defeat a motion for summary judgment." 2002 WL 31119377, at *2.^[3]

To prevail on a motion for summary judgment, the defendants must demonstrate the absence of material evidence supporting an essential element of Jorgensen's copyright infringement claim. See [51] Repp v. Webber, 132 F.3d 882, 889-90 (2d Cir.1997), cert. denied, 525 U.S. 815, 119 S.Ct. 52, 142 L.Ed.2d 40 (1998). Jorgensen, to avoid summary judgment, "may not rely simply on conclusory allegations or speculation ..., but instead must offer evidence to show that [his] version of the events is not wholly fanciful." Morris v. Lindau, 196 F.3d 102, 109 (2d Cir.1999) (citation and internal quotation marks omitted).

In a copyright infringement case, the plaintiff must show: (i) ownership of a valid copyright; and (ii) unauthorized copying of the copyrighted work. See Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991); Castle Rock Entm't, Inc. v. Carol Publ'g Group, Inc., 150 F.3d 132, 137 (2d Cir.1998). A certificate of registration from the United States Register of Copyrights constitutes prima facie evidence of the valid ownership of a copyright. See 17 U.S.C. § 410(c). Jorgensen secured such registration for "Lover," and the defendants do not dispute the validity of that copyright. Thus, Jorgensen has met the first element of an infringement claim.

To satisfy the second element of an infringement claim — the "unauthorized copying" element — a plaintiff must show both that his work was "actually copied" and that the portion copied amounts to an "improper or unlawful appropriation." Castle Rock, 150 F.3d at 137 (citation and internal quotation marks omitted). "Actual copying may be established by direct or indirect evidence." Boisson v. Banian, Ltd., 273 F.3d 262, 267 (2d Cir.2001). Because direct evidence of copying is seldom available, a plaintiff may establish copying circumstantially "by demonstrating that the person who composed the defendant's work had access to the copyrighted material," Herzog v. Castle Rock Entm't, 193 F.3d 1241, 1249 (11th Cir.1999); see also Walker v. Time Life Films, Inc., 784 F.2d 44, 48 (2d Cir.), cert. denied, 476 U.S. 1159, 106 S.Ct. 2278, 90 L.Ed.2d 721 (1986), and that there are similarities between the two works that are "probative of copying," Repp, 132 F.3d at 889.

A. Jorgensen's evidence of access

Access means that an alleged infringer had a "reasonable possibility" — not simply a "bare possibility" — of hearing the prior work; access cannot be based on mere "speculation or conjecture." Gaste v. Kaiserman, 863 F.2d 1061, 1066 (2d Cir.1988); see also Herzog, 193 F.3d at 1250; Grubb v. KMS Patriots, L.P., 88 F.3d 1, 3 (1st Cir.1996); Ellis v. Diffie, 177 F.3d 503, 506-07 (6th Cir.1999); 4 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT § 13.02[A], at 13-19 to 13-20 (2002) ("[R]easonable opportunity ... does not encompass any bare possibility in the sense that anything is possible. Access may not be inferred through mere speculation or conjecture."); but cf. id. at § 13.02[A], at 13-22 (noting that "[a]t times, distinguishing a `bare' possibility from a `reasonable' possibility will present a close question"). In order to support a claim of access, a plaintiff must offer "significant, affirmative and probative evidence." Scott v. Paramount Pictures Corp., 449 F.Supp. 518, 520 (D.D.C.1978), aff'd, 607 F.2d 494 (D.C.Cir.1979) (table), cert. denied, 449 U.S. 849, 101 S.Ct. 137, 66 L.Ed.2d 60 (1980); see also Tisi v. Patrick, 97 F.Supp.2d 539, 547 (S.D.N.Y.2000).

1. The mass mailings of "Lover"

Jorgensen argues, first, that his act of mailing unsolicited tapes of "Lover" to scores of record and music publishing companies, including the corporate defendants, constituted access because the corporate employees who allegedly received the mailing [52]

could have provided the "Heart" and "Amazed" songwriters with a copy of "Lover." With two exceptions reviewed below, however, Jorgensen has not provided any reasonable documentation that he actually mailed such tapes (or when or to whom these tapes were purportedly sent). Jorgensen's mass-mailing allegation was, thus, properly rejected by the District Court as legally insufficient proof of access. 2002 WL 31119377, at *5 (noting that Jorgensen "did not maintain a log of where and when he sent his work, or keep receipts from certified mailings to establish a chain of access"); see also Dimmie v. Carey, 88 F.Supp.2d 142, 146 (S.D.N.Y. 2000) (rejecting plaintiff's claim that the mailing of tapes to a corporation could "be equated with access" where there was no evidence that the tapes were ever received or forwarded to the alleged infringers); Jorgensen v. Careers BMG Music Publ'g, No. 01 Civ. 0357, 2002 WL 1492123, at *4-5 (S.D.N.Y. July 11, 2002) (Preska, J.) ("Jorgensen I").^[4]

2. The submissions to Pollock and Leeds

Jorgensen's second and more narrow theory of access, predicated on Pollock's and Leeds's admissions that they received Jorgensen's submissions, was also rejected by the District Court. 2002 WL 31119377, at *4-5. For the reasons outlined below, we agree with the District Court that Jorgensen's speculation that Pollock could have provided the "Amazed" songwriters with a copy of "Lover" did not, standing alone, suffice to prove access, where there was no evidence of any relationship between Pollock and the songwriters and where Pollock stated in his sworn declaration that he had never forwarded Jorgensen's tapes to anyone. With respect to Leeds and the "Heart" defendants, however, we find that Jorgensen introduced sufficient evidence to make the District Court's grant of summary judgment inappropriate at this stage of the proceedings.

a. Pollock and the "Amazed" defendants

In his sworn declaration, Pollock stated that his job as a managing producer in BMG's Special Products division "has nothing to do with the publishing company, Careers BMG Music Publishing, Inc., or working creatively with songwriters at all." Although he conceded that he had received a CD recording of "Lover," Pollock denied that he had ever listened to the song and asserted that he never conveyed the CD "to anyone at any time," much less anyone who "contributed creative ideas or material" to "Amazed" or "Heart." Meta-Film Assocs., Inc. v. MCA, Inc., 586 F.Supp. 1346, 1355-56 (C.D.Cal.1984); see also Tisi, 97 F.Supp.2d at 547-48 (finding no proof of access where plaintiff alleged that he sent unsolicited tapes to record companies, including the company that released records containing the allegedly infringing song, but there was no evidence that plaintiff's song was conveyed to anyone with creative input into the allegedly infringing song). In fact, Jorgensen conceded at his deposition that he had no knowledge that Pollock did anything with the CD that Jorgensen sent to him. Pollock stated that he did not have any relationship with the writers of "Amazed," and Jorgensen [53] has submitted no evidence to the contrary. Cf. Towler v. Sayles, 76 F.3d 579, 583 (4th Cir.1996) ("A court may infer that the alleged infringer had a reasonable possibility of access if the author sent the copyrighted work to a third party intermediary who has a close relationship with the infringer. An intermediary will fall within this category, for example, if she supervises or works in the same department as the infringer or contributes creative ideas to him." (emphasis added)); Moore v. Columbia Pictures Indus., Inc., 972 F.2d 939, 944 (8th Cir.1992) (finding access where intermediary was "in a position to provide suggestions" to the alleged copiers); Bouchat v. Baltimore Ravens, Inc., 241 F.3d 350, 354 (4th Cir.) (jury could infer access where intermediary with access to plaintiff's drawings had "a close relationship to the alleged infringers"), cert. denied, 532 U.S. 1038, 121 S.Ct. 2000, 149 L.Ed.2d 1003 (2001); Tomasini v. Walt Disney Co., 84 F.Supp.2d 516, 522 (S.D.N.Y.2000) (finding no relationship between recipient of plaintiff's work and alleged infringers).

Jorgensen's claim against the "Amazed" defendants was properly dismissed because he has not offered any evidence to rebut Pollock's assertions. The most that Jorgensen offers to show a nexus between Pollock and the "Amazed" songwriters is his global assertion that "anything and everything can very well happen." Such speculation does not give rise to a triable issue of access. See Ferguson v. Nat'l Broad. Co., 584 F.2d 111, 113 (5th Cir.1978) (holding that plaintiff's mere speculation did not support a finding of access where defendant offered uncontroverted evidence of a lack of access); Towler, 76 F.3d at 582-83; Segal v. Paramount Pictures, 841 F.Supp. 146, 150 (E.D.Pa.1993), aff'd, 37 F.3d 1488 (3d Cir.1994) (table); Novak v. Nat'l Broad. Co., 752 F.Supp. 164, 169 (S.D.N.Y.1990); Meta-Film, 586 F.Supp. at 1355 (plaintiff's "tort[u]ous chain of hypothetical transmittals" was "insufficient to avoid summary judgment on the question of access"). Jorgensen has not adduced proof of a reasonable possibility that "the paths of [the "Amazed" song-writers] and the infringed work crossed." Towler, 76 F.3d at 582. Bare corporate receipt of Jorgensen's work, without any allegation of a nexus between the recipients and the alleged infringers, is insufficient to raise a triable issue of access.^[5] See Jorgensen I, 2002 WL 1492123, at *4-5; Dimmie, 88 F.Supp.2d at 146-47; Tisi, 97 F.Supp.2d at 547-48.

[54] b. Leeds and the "Heart" defendants

At his deposition, Leeds admitted that he had received tapes from Jorgensen but stated that he did not listen to them and he believed that they had been discarded. Leeds testified that his job as a Sony vice president involved reviewing promotional touring budgets and that he was "not involved in the A & R process." Leeds also stated that he did not know the "Heart" songwriters.

Citing this evidence (and echoing their arguments with respect to Pollock), the defendants assert that the mere fact that Leeds had received a copy of Jorgensen's song does not mean that the "Heart" songwriters had a reasonable opportunity to hear it. Defendants argue that it is "undisputed" that Leeds did not forward Jorgensen's tape to the "Heart" songwriters, but they do not address the evidence introduced by Jorgensen that Leeds and his assistants repeatedly told Jorgensen that his tapes — including, in particular, one containing the song "Lover" — were being sent to Sony's A & R department.^[6] Leeds, at his deposition, disputed Jorgensen's version of events, testifying that he did not recall ever making such a promise to Jorgensen and that he likely threw Jorgensen's tapes away. Leeds also conceded, though, that it was possible that if there was a tape that he received that he found interesting he might "pass it on" to one of his "friends in the A & R department."

To draw a connection between Sony's A & R department and Horner and Jennings, the creators of "Heart," Jorgensen relied on Sony's admission, in its response to his Request for Admissions, that during the relevant time period, "on limited occasions, writers, producers or musicians affiliated with Sony may have been shown some material solicited by the A & R Dept. ...." In concluding that Leeds "did not forward Jorgensen's package," the District Court made no mention of (i) Jorgensen's deposition testimony to the contrary or (ii) Sony's admission regarding the practices of its A & R Department.^[7] 2002 WL 31119377, at *4.

Although the defendants accurately note that Jorgensen has put forth no evidence that the "Heart" songwriters actually heard his song, that argument misapprehends Jorgensen's burden. Jorgensen must show a "reasonable possibility of access" by the alleged infringer. Dimmie, 88 F.Supp.2d at 146 (citation and internal quotation marks omitted); see also Herzog, 193 F.3d at 1249 (explaining that to show access, a plaintiff must establish that the alleged infringer had "a reasonable [55] opportunity to view" his work (citation and internal quotation marks omitted)). He is not required to establish actual access. See Bouchat, 241 F.3d at 354-55 ("A copyright infringement plaintiff need not prove that the infringer actually saw the work in question; it is enough to prove that the infringer (or his intermediary) had the mere opportunity to see the work and that the subsequent material produced is substantially similar to the work.") (emphasis added).

The facts of Jorgensen's case against the "Heart" defendants are entirely distinguishable from those presented in Dimmie, upon which the defendants rely, where the district court found that the plaintiff had not introduced "a scintilla of evidence" that the corporate recipient of her tape had forwarded it to the alleged infringers. 88 F.Supp.2d at 146; see also Novak, 752 F.Supp. at 169. Jorgensen's evidence sets out a clear nexus between Leeds, who has admitted receiving the "Lover" tape and the Sony A & R department, to which Leeds told Jorgensen he'd forwarded the tape. In addition, Jorgensen elicited an admission that the Sony A & R department occasionally shares such material with "affiliated" songwriters. Cf. Bouchat, 241 F.3d at 354 (noting that it was permissible for the jury to rest its access finding, in part, on the "standard office routines" of the defendant). What is not clear from the record before us is whether Horner and Jennings were songwriters "affiliated" with Sony in the period between when Jorgensen sent his tapes to Sony and when "Heart" was published. Absent some evidence on this issue, a jury could not reasonably infer simply from Sony's access to Jorgensen's work that Horner and Jennings also had such access. See generally Towler, 76 F.3d at 583 (refusing to find access where there was no evidence that intermediaries (who had access to plaintiff's screenplay) had contact with alleged infringer during the relevant time period).

As already noted, it is the defendant seeking summary judgment who must demonstrate a lack of evidence supporting an essential element of plaintiff's claim. See Repp, 132 F.3d at 890. The "Heart" defendants, who undoubtedly possess information about the time frame of Sony's affiliation with Horner and Jennings, failed to support their summary judgment motion with any evidence showing the lack of a relationship during the relevant period.^[8] [56] Because Jorgensen, appearing pro se, may not have appreciated the need to develop this particular evidence in discovery, summary judgment should not have been granted to defendants until the timing of any affiliation was clarified. Viewing the evidence adduced thus far in the light most favorable to Jorgensen and drawing all justifiable inferences in his favor, as we must at the summary judgment stage, see Mack, 326 F.3d at 119, we find that the District Court erred in granting summary judgment to the "Heart" defendants. Of course, it would be well within the District Court's discretion to permit limited discovery into the question of the timing of the songwriters' affiliation with Sony and to entertain a renewed motion for summary judgment, as may be appropriate.

B. Jorgensen's claim of striking similarity

As noted above, a copyright plaintiff's circumstantial proof of copying requires a showing of both access and probative similarity. Repp, 132 F.3d at 889; Herzog, 193 F.3d at 1249. In this case, the "Heart" defendants' summary judgment motion was based solely on the issue of access and did not address Jorgensen's claim of probative similarity between "Lover" and "Heart." As such, the District Court declined to address the question of probative similarity.

The District Court did, however, reject Jorgensen's last-minute argument that the allegedly infringing works, "Heart" and "Amazed," were so strikingly similar to "Lover" that Jorgensen need not prove access. 2002 WL 31119377, at *5. There is an inverse relationship between access and probative similarity such that "the stronger the proof of similarity, the less the proof of access is required." NIMMER ON COPYRIGHT, § 13.03[D], at 13-77. We have held that where the works in question are "so strikingly similar as to preclude the possibility of independent creation, copying may be proved without a showing of access." Lipton v. Nature Co., 71 F.3d 464, 471 (2d Cir.1995) (citation and internal quotation marks omitted); see also Repp, 132 F.3d at 889. Jorgensen offered nothing to support this allegation of a striking similarity,^[9] however, and as the District Court properly concluded, Jorgensen's own statements — e.g., that the infringement of his song, Lover, was "subtle" — wholly undercut his claim of a "striking" similarity between the songs. 2002 WL 31119377, at *5.

CONCLUSION

We have reviewed the record and considered all of Jorgensen's remaining contentions and find them to be without merit. We therefore AFFIRM the District [57] Court's grant of summary judgment in favor of Defendants Careers BMG Music Publishing, Songs of Nashville Dreamworks, and Warner-Tamerlane Publishing Corporation. With respect to Defendants Famous Music Corporation, Fox Film Music Corporation, Blue Sky Rider Songs, and Sony Music Entertainment Inc., however, we VACATE the District Court's grant of summary judgment and remand the case for further proceedings not inconsistent with this opinion. Each party shall bear its own costs in regard to this appeal.

[1] Jorgensen has not introduced sufficient evidence to support his suggestion that Sony — listed on the Form SR 248-234 as the "author" of "Heart" for purposes of ownership of the copyright — was the actual creator of "Heart."

[2] Jorgensen also posits a third theory of access involving Dan Huff, a Nashville musician and producer. According to Jorgensen, Huff may have played a central role in these alleged infringements "because of his association and affiliations with Nashville writers, musicians, and publishing companies." The District Court, noting that Jorgensen admitted that "he has never met, spoken to or sent music to Huff," rejected as unsubstantiated Jorgensen's theory of access via an alleged "Huff conspiracy," 2002 WL 31119377, at *4-5, as do we.

[3] Although it is not clear from the record whether the District Court or the defendants ever explicitly advised Jorgensen of the "nature and consequences of a summary judgment motion," see Vital v. Interfaith Med. Center, 168 F.3d 615, 620-21 (2d Cir.1999), Jorgensen's submissions to the District Court make clear that he understood the significance of the defendants' motion and what was required of him in opposing that motion. In his brief, he asserted that summary judgment would be "improper in this case because there are genuine issues of material fact on each element of plaintiff's cause of action," and in his brief and the Rule 56.1 Statement that he submitted, he carefully marshaled the evidence in support of his theories of access. See Sawyer v. Am. Fed'n of Gov't Employees, 180 F.3d 31, 34-35 (2d Cir.1999) (recognizing an exception to the obligation outlined in Vital where "the pro se litigant responds to the summary judgment motion with factual and legal submissions indicating that he understood the nature and consequences of summary judgment and the need to set forth all available evidence demonstrating a genuine dispute over material facts" (citation and internal quotation marks omitted)); Vital, 168 F.3d at 621.

[4] In Jorgensen I, a separate action filed the same day as this action, Jorgensen alleged copyright infringement of another of his songs by Eric Clapton's Grammy Award-winning song, "Change the World." Id. at *1. The district court granted summary judgment for defendants, finding that Jorgensen's "evidence of access [wa]s speculative and/or legally insufficient [such that] no rational fact finder could find in favor of [him]." Id. at *5. Jorgensen has not appealed in Jorgensen I.

[5] Over thirty years ago, the court in Bevan v. Columbia Broad. Sys., Inc., 329 F.Supp. 601 (S.D.N.Y.1971), interpreting a then-recent First Circuit decision in Morrissey v. Procter & Gamble Co., 379 F.2d 675 (1st Cir.1967), observed that "receipt of a manuscript at defendants' principal corporate office has been held sufficient to raise a triable issue [of access], despite plaintiff's inability to show receipt by the responsible employee." 329 F.Supp. at 609. Despite the fact that the evidence introduced in Bevan appears to have included much more than "bare corporate receipt" of the plaintiff's work, see 329 F.Supp. at 603-04, 609, courts and commentators have cited Bevan as endorsing a "bare corporate receipt" doctrine that "allows a plaintiff to satisfy her burden as to access merely by showing that the company employing the alleged infringer received the work." Stacy Brown, Note, The Corporate Receipt Conundrum: Establishing Access in Copyright Infringement Actions, 77 MINN. L. REV. 1409, 1411 (1993) (noting that this is not widely accepted); see also, e.g., Dimmie, 88 F.Supp.2d at 147 (characterizing Bevan as "(arguably) out-dated") (collecting cases); Vantage Point, Inc. v. Parker Bros., Inc., 529 F.Supp. 1204, 1213 (E.D.N.Y.1981) (describing Bevan's "`generous' view of corporate access" and distinguishing Bevan on its facts); NIMMER ON COPYRIGHT, § 13.02[A], at 13-17 n. 13. Although the Bevan court seemed to anticipate that the Second Circuit would eventually adopt the bare corporate receipt rule outlined in Morrissey, see Bevan 329 F.Supp. at 609, we have not done so and we decline to do so today.

[6] Indeed, in their submissions to the District Court, the "Heart" defendants incorrectly asserted that it was Leeds's "undisputed testimony" that "he never forwarded Jorgensen's package anywhere ...." (emphasis added).

[7] On our review of the record, it appears likely that this evidence — both Jorgensen's deposition testimony and Sony's response to Jorgensen's Request for Admissions — would be admissible against the "Heart" defendants at a trial. However, since the parties did not address any evidentiary hurdles in their briefs to this Court and because we lack the benefit of the District Court's guidance on these issues, we leave their resolution to the District Court on remand.

We do note, however, that in their response to Jorgensen's Request for Admissions, after admitting that some unsolicited tapes were shared with Sony-affiliated artists, the "Heart" defendants denied that Jorgensen's material was either received by Sony's A & R Department or shown by that department to anyone else. Unlike the adjoining admission, that denial, however, is not admissible evidence because a party responding to Requests for Admission under Rule 36 of the Federal Rules of Civil Procedure may not rely upon his own answers to a Request for Admission as the basis for a summary judgment motion.

[8] The most that the "Heart" defendants offer to challenge the connection between Sony's A & R Department and the alleged infringers is defense counsel's claim in his affidavit that "[u]pon information and belief, neither Horner nor Jennings are associated as songwriters with Sony." (emphasis added). That supposition, however, is too tentative to qualify as evidence warranting summary judgment. See Fed.R.Civ.P. 56(e) ("Supporting ... affidavits shall be made on personal knowledge, shall set forth such facts as would be admissible in evidence, and shall show affirmatively that the affiant is competent to testify to the matters stated therein."); see also Dellacava v. Painters Pension Fund of Westchester and Putnam Counties, 851 F.2d 22, 26 (2d Cir.1988) (finding that assertion made "`upon information and belief' ... could not have been considered in the summary judgment motion") (citing Automatic Radio Mfg. Co. v. Hazeltine Research, Inc., 339 U.S. 827, 831, 70 S.Ct. 894, 94 L.Ed. 1312 (1950), overruled in part on other grounds by Lear, Inc. v. Adkins, 395 U.S. 653, 671, 89 S.Ct. 1902, 23 L.Ed.2d 610 (1969)).

This case is distinguishable from a number of the precedents cited herein because the "Heart" defendants apparently elected not to introduce sworn testimony from the songwriters themselves to show that they lacked access to Jorgensen's tapes. See, e.g., Herzog, 193 F.3d at 1245, 1255-56 (granting summary judgment for defendants, in part based on alleged infringer's testimony negating access); Ferguson, 584 F.2d at 113-14 (same); Dimmie, 88 F.Supp.2d at 144, 148-49 (alleged infringers' deposition testimony that they did not review unsolicited material and, in particular, that they did not receive or review plaintiff's work considered by trial judge in granting summary judgment to defendants on the issue of access).

[9] It is unclear whether Jorgensen is alleging that both "Amazed" and "Heart" are strikingly similar to "Lover" or if he is arguing that degree of similarity with respect to "Heart" alone. Notably, Jorgensen's expert, Judith Finnell, did not find either song to be strikingly similar to "Lover." Instead, she concluded that "Amazed" and "Lover" are "substantially similar in some of their primary elements" and that "`Heart' is substantially similar to key elements of `Lover.'" (emphasis added). She noted, however, that the relationship between "Heart" and "Lover" "is subtle." The only other proof offered by Jorgensen that "Heart" and "Lover" are "strikingly similar" is his own conclusory statement to that effect in his amended report of his comparative analysis of the two songs. That conclusion, which contradicts his original report that "Heart" was a "subtle infringement" of "Lover," is insufficient to survive summary judgment.

2002 WL 287786

2002 U.S. Dist. LEXIS 3176

Jean et al.

v.

Bug Music

No. 00 Civ. 4022

(S.D.N.Y. Feb. 25, 2002)

Opinion by Judge Chin

In this copyright case, plaintiffs seek a declaratory judgment that their song "My Love Is Your Love" ("My Love") does not infringe defendants' copyright of the song "The Hand Clapping Song" ("HCS"). Plaintiffs move for summary judgment pursuant to Fed. R. Civ. P. 56 on their claim for a declaratory judgment holding that plaintiffs have not violated the copyright laws. Alternatively, plaintiffs request an order pursuant to Fed. R. Civ. P. 42(b) for separate trials on liability and damages. Defendants cross-move for partial summary judgment on the issues of the originality of HCS and access.

Defendants allege that the lyrical and musical excerpt at issue in My Love -- "Clap your hands, y'all, 't's'all right" (the "My Love Phrase") -- infringes the HCS copyright because HCS contains the lyrical and musical excerpt "Clap your hands now, people clap now" (the "HCS Phrase"). (Def. Resp. to Pl. 56.1 Stmt. PP 19, 20).

The HCS Phrase is unprotectible because it uses common musical and lyrical phrases that have been used in other recordings. In other words, the HCS Phrase lacks the requisite originality. Moreover, the phrases constitute only a de minimis portion of the songs. Only three words and notes in the HCS and My Love Phrases are identical. Overall the songs are different in sound and they convey different moods.

Accordingly, plaintiffs' motion for summary judgment is granted; no reasonable fact finder could conclude that My Love was copied, even in part, from HCS. I do not reach plaintiffs' motion to bifurcate or defendants' cross-motion.

BACKGROUND

I. Facts

The following facts are drawn from the record before the Court. The record includes declarations, recordings of HCS and My Love, expert reports, and deposition transcripts. All conflicts in the evidence have been resolved in defendants' favor.

A. HCS

Defendants and counterclaim plaintiffs Bug Music, Inc. ("Bug Music") and R & B Music LLC^[1] ("R & B Music") license and market musical compositions. (Def. 56.1 Stmt. PP 1, 2). The HCS copyright was first registered in 1970 to Rhinelander Music, Inc. (Compl. P 20; Countercl.^[2] P 13). In 1996, Rhinelander Music, Inc. assigned all of its interests in HCS to R & B Music, and Bug Music became administrator of R & B Music. (Countercl. PP 14, 15). Defendants own a valid copyright in HCS.

HCS was authored by four non-party individuals -- Leo Nocentelli, George Porter, Arthur Neville, and Joseph Modeliste -- who were members of the music group "the Meters." (Compl. P 21; Ans. P 16). The Meters, a rhythm and blues ("R & B") band formed in the 1960's, was popular in the 1960's and 1970's. Some considered it "the best new R & B group and the best R & B instrumental group" in 1967 and 1968. (Nocentelli Decl. P 3). The Meters are especially known for their strong influence on funk music in the 1970's. (Nocentelli Decl. P 3; Art Neville Decl. P 3). The Meters have recorded with many artists, including Robert Palmer and Paul McCartney, and the group performed with the Rolling Stones in 1975 and 1976. (Nocentelli Decl. P 6). The group has released numerous albums since 1969. (Id. at P 7). Fifteen musical compositions of the Meters have been sampled or interpolated by 45 different artists or groups. (Hirshland Decl. P 9).

The playing time of HCS is 2 minutes, 55 seconds. (Lepera Decl., Ex. O). The song begins and ends with the HCS Phrase. At the outset, the HCS Phrase repeats four times and the excerpt "clap your hands" repeats eight times for a total of about 23 seconds. At the end of the song, the HCS Phrase repeats five times and the excerpt "clap your hands" repeats nine times for a total of about 20 seconds. (Eskelin Rep. PP 6, 10, Lepera Decl., Ex. O).

The HCS Phrase contains the following nine pitches: C, B-flat, C, B-flat, G, F-sharp, G, B-flat, C. The accompanying scale steps are 1, flat-7, 1, flat-7, 5, sharp-4, 5, flat-7, and 1. (Lepera Decl. P 30; Eskelin Tr. at 122, 123). HCS is a funk song laced with percussion and strong guitar sounds. It is energetic and invites the listener to participate. The HCS Phrase has a staccato rhythm with short hand clapping accompanying the lyrics.

HCS was released as a single in 1970 and was recorded on five albums between 1970 and 2001. (Nocentelli Decl. P 8). The song enjoyed great fame. For example, it was listed as a top 50 R & B single for several weeks in 1970. (Nocentelli Decl. P 10; Art Neville Decl. P 8).

B. My Love

My Love is a recent hit song performed by Whitney Houston and is included on an album by Houston that bears the same name. My Love is authored by plaintiffs Nel Wyclef Jean and Jerry Duplessis -- both of whom are musicians, performers, and composers. (Compl. P 1, Ex. A; Def. Resp. to Pl. 56.1 Stmt. PP 1, 3). Plaintiffs Huss-Zwingli Publishing, Inc. ("Zwingli") and Te-Bass Music, Inc. ("Te-Bass") are music publishing entities respectively through which Jean and Duplessis own and control their music compositions. (Def. Resp. to Pl. 56.1 Stmt. PP 2, 4). The copyright for the words and music of My Love was registered in 1998. (Compl. P 14).

The playing time of My Love is 4 minutes, 15 seconds. (Lepera Decl., Ex. N). The My Love Phrase contains the following six pitches: C, B-flat, C, B-flat, G, B-flat. The accompanying scale steps are 1, flat-7, 1, flat-7, 5, and flat-7. (Lepera Decl. P 30; Eskelin Tr. at 133). As with HCS, My Love begins and ends with the phrase at issue. The song opens with a 13-second, four-time repetition of the My Love Phrase. The song ends with an eight-time repetition of the My Love Phrase that runs for 20 seconds. The My Love Phrase appears alone or as part of a repetition an additional 15 times. In total, the My Love Phrase covers 59 seconds of the playing time.

My Love was intended to be a "spiritual sounding ballad" with "an R & B vibe." (Jean Tr. at 19). The song has a reggae sound with a slow, smooth base line accompanied by soft percussion. In comparison to HCS, My Love does not invite the listener to clap hands along with the lyrics. Instead, it is an easy listening song. During the song, the My Love Phrase is sometimes sung in the background with overlapping lyrics.

Plaintiffs never sought permission to use any portion of HCS.

C. The Song's Similarities

The first three words in the HCS and My Love Phrases are identical -- both start with "clap your hands." (Eskelin Rep. P 6). The first three notes, including pitch and rhythm, in the phrases are identical as well. (Id.). These three notes and lyrics comprise the only portions identical in both songs. (Eskelin Tr. at 198, 279; Eskelin Decl. P 11).

D. Prior Art

The lyrics identical in both songs, "clap your hands," can be found in the biblical phrase "O clap your hands all ye people." (Ferrara Rep. at 5; Beavers Rep. at 2 (quoting Psalm 47:1, King James Version)). The lyrics can also be found in many songs, including "church anthems," "secular music," and "general entertainment related to applause." (Eskelin Tr. at 272-73, 316). For example, the following nine recorded gospel songs contain the lyrics "clap your hands": He is the Reason; I've Got Jesus; He'll Welcome Me; Benny Cummings Medley: Lift Him Up; The Kingdom Medley: Higher, Higher; Love Lifted Me; Working On a Building; Lift Your Head Up, Rejoice in the Lord; and The Only Way. (Ferrara Rep., Ex. B; see also Beavers Rep. at 3-4, 8 & Listening Exs. 1.2, 2.2, 2.3 & 4.1). The website for Broadcast Music, Inc. ("BMI") identifies 120 songs that include "clap your hands" in the title. (Ferrara Rep. at 5, Ex. C). A hymn written by Baroque English composer Henry Purcell (1659-1695) is entitled "clap your hands." (Id. at 5).

The melodic sequence that is identical in both songs and accompanies the lyrics "clap your hands" -- C, B-flat, C -- appears in "thousands" of "songs." (Eskelin Tr. 276-77). Those pitches matched with the rhythms in the HCS Phrase also create a common musical arrangement. (Eskelin Tr. 277).

II. Procedural History

At the end of 1999 and in January 2000, defendants sent letters to plaintiffs alleging that My Love infringed on the copyright of HCS. (Ans. PP 16, 18). In January 2000, defendants sent plaintiffs a letter demanding that plaintiffs cease and desist from continuing to violate copyright laws and compensate defendants for damages allegedly incurred. Defendants also threatened to file suit should plaintiffs continue their activities. (Ans. P 19). This suit followed.^[3]

Plaintiffs initiated this action on May 26, 2000 by filing a complaint seeking a declaratory judgment holding that My Love does not infringe defendants' copyright and, accordingly, that plaintiffs are entitled to reproduce, distribute, adapt, exploit, market, and sell My Love. Plaintiffs also seek attorneys' fees and costs.

On June 22, 2000, defendants filed an answer and counterclaim alleging copyright infringement. In the counterclaim defendants seek damages, profits resulting from any infringement, costs, attorneys' fees, and an injunction enjoining plaintiffs from violating copyright laws.

These motions followed

DISCUSSION

I. Summary Judgment Standard

Summary judgment will be granted when "there is no genuine issue as to any material fact and ... the moving party is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c); see Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 585-87, 89 L. Ed. 2d 538, 106 S. Ct. 1348 (1986). Accordingly, the court's task is not to "weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial."Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986). Summary judgment is inappropriate if, resolving all ambiguities and drawing all inferences against the moving party, there exists a dispute about a material fact "such that a reasonable jury could return a verdict for the nonmoving party." Id. at 248-49 (citing Adickes v. S.H. Kress & Co., 398 U.S. 144, 159, 26 L. Ed. 2d 142, 90 S. Ct. 1598 (1970)); accord Bay v. Times Mirror Magazines, Inc., 936 F.2d 112, 116 (2d Cir. 1991).

To defeat a motion for summary judgment, however, the nonmoving party "must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus., 475 U.S. at 586. There is no issue for trial unless there exists sufficient evidence in the record favoring the party opposing summary judgment to support a jury verdict in that party's favor. Anderson, 477 U.S. at 249-50. As the Court held in Anderson, "if the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Id. (citations omitted).

II. Copyright Infringement

A. Applicable Law

A party seeking summary judgment on a claim of non-infringement of copyright must establish that at least one element of the alleged infringement cannot be proven. Cantor v. NYP Holdings, Inc., 51 F. Supp. 2d 309, 311 (S.D.N.Y. 1999).

To prevail on a claim of copyright infringement, a copyright owner must prove two elements: "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Arden v. Columbia Pictures Indus., Inc., 908 F. Supp. 1248, 1257 (S.D.N.Y. 1995) (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S. Ct. 1282, 113 L. Ed. 2d 358 (1991)) (other citations omitted).

As to the first element, for the purposes of this motion, it is undisputed that defendants can establish valid copyright ownership to HCS.

The second element, copying, is comprised of two requirements: actual copying and improper appropriation. Actual copying may be established either by direct evidence or circumstantial proof that the alleged infringer had access to the protected work and that the allegedly infringing work bears a "probative similarity" to the copyrighted work. See Ringgold v. Black Entm't Television, Inc., 126 F.3d 70, 75 (2d Cir. 1997).

Once actual copying has been established, the copyright owner must then satisfy the "improper appropriation" requirement by demonstrating that "substantial similarities" as to the protected elements of the work would cause an average lay observer to "recognize the alleged copy as having been appropriated from the copyrighted work." Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 912 (2d Cir. 1980) (internal quotation and citation omitted). Careful scrutiny is necessary when the protected work contains unprotectible elements. See Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir. 1995) ("Where we compare [works] that contain both protectible and unprotectible elements, our inspection must be 'more discerning'; we must attempt to extract the unprotectible elements from our consideration and ask whether the protectible elements, standing alone, are substantially similar." (emphasis in original, citations omitted)). While "probative similarity" goes only to whether copying factually occurred and is largely a qualitative inquiry, "substantial similarity" is a more quantitative and qualitative assessment as to whether the copying is legally actionable. See Ringgold, 126 F.3d at 75. An analysis into the "substantial similarity" between the protected work and the allegedly infringing work "must be made on a case-by-case basis, as there are no bright line rules for what constitutes substantial similarity." Sandoval v. New Line Cinema Corp., 147 F.3d 215, 217-18 (2d Cir. 1998) (citing Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577, 127 L. Ed. 2d 500, 114 S. Ct. 1164 (1994)).

The copied elements of the work must be original and nontrivial to constitute improper appropriation. See Feist, 499 U.S. at 345 ("The sine qua non of copyright is originality."). For purposes of copyright law, "original" means that "the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity." Id. Common phrases are generally not protected by copyright. Stratchborneo v. ARC Music Corp., 357 F. Supp. 1393, 1405 (S.D.N.Y. 1973); see also Acuff-Rose Music, Inc. v. Jostens, Inc., 155 F.3d 140, 144 (2d Cir. 1998) ("The prior usage of the saying was sufficiently widespread as to make it exceedingly unlikely ... that [the song's author] had ... independently created the phrase.").

Notwithstanding proof that copying occurred, copying that is so trivial as to fall below the quantitative and qualitative threshold of substantial similarity will be considered de minimis and thus not actionable. Sandoval, 147 F.3d at 217 (quoting Ringgold, 126 F.3d at 74); see also Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, Inc., 166 F.3d 65, 71 (2d Cir. 1999) ("de minimis infringement of a copyrighted work is not actionable"). In making this determination, courts should consider "the amount of the copyrighted work that was copied." Sandoval, 147 F.3d at 217.

In the context of a copyright infringement claim, summary judgment may be granted when any similarities between the works relate only to non-copyrightable elements or when no reasonable jury could find the two works substantially similar. See Cantor, 51 F. Supp. 2d at 311 (citing Arica Inst. v. Palmer, 970 F.2d 1067, 1072 (2d Cir. 1992)); Arden, 908 F. Supp. at 1259.

B. Application

In this case, the main issue is whether there was improper appropriation.^[4] As an initial matter, although defendants have identified the allegedly infringing excerpt in the My Love song to include the lyrics "Clap your hands, y'all, 't's'all right" and the accompanying music, it is undisputed that "clap your hands" and the accompanying note sequence C, B-flat, C comprise the only portions of the two songs that are identical. (Eskelin Tr. at 198, 279; Eskelin Decl. P 11). Moreover, a reasonable jury could only find that the other lyrics and music in the HCS and My Love Phrases are significantly different such that an average lay listener would not "recognize the alleged copy as having been appropriated from the [allegedly] copyrighted work." Durham Indus., 630 F.2d at 912. (See Eskelin Tr. at 278-79, 294). Accordingly, the infringement analysis that follows is applied only to the lyrics "clap your hands" and the three accompanying notes.

1. Protectibility

Although HCS is protected as a complete work, not every element of the song is per se protected. Rogers v. Koons, 960 F.2d 301, 307 (2d Cir. 1992) ("copyright protection extends only to those components of the work that are original"). Here, a reasonable jury could only conclude that the relevant excerpt of the HCS Phrase is not protectible because the sequence of the three notes and the lyrics lack the requisite originality.

As to the musical notes, the sequence C, B-flat, C commonly appears in music. (Eskelin Tr. at 276-77). Many songs contain a "mordent," which is a sequence of notes alternating from one note to a second note down one step and then returning to the first note. (Id.). Here, defendants' expert conceded at his deposition that "thousands" of "songs exist in the literature containing the melodic pitches C, B-flat and C." (Id.). In fact, the specific sequence C, B-flat, C is used as an example of a mordent in the Harvard Dictionary of Music. Harvard Dictionary of Music 540 (Willi Apel, The Belknap Press of Harvard University Press, 2d ed. 1997) (1944). Moreover, according to Eskelin, the pitches C, B-flat, C accompanied by the same rhythmic values found in the HCS Phrase commonly appear in music. (Eskelin Tr. 277). Because C, B-flat, C is a common musical sequence, a reasonable jury could only find that the authors of HCS did not create the musical excerpt, and, therefore, this musical phrase is not susceptible to copyright protection. Acuff-Rose, 155 F.3d at 144; Stratchborneo , 357 F. Supp. at 1405.

Similarly, a reasonable jury could only conclude that the lyrical excerpt "clap your hands" is not afforded copyright protection because the excerpt is a common phrase. The lyrics appear often in church anthems and secular music. (Eskelin Tr. at 272-73, 316; see Beavers Rep. at 3-8 & Listening Exs. 1.1, 2.1, 3.1 - 3.5). There are, for example, recordings of other songs with the same lyrics and theme. (Ferrara Rep., Ex. B; see also Beavers Rep. at 3-4, 8 & Listening Exs. 1.2, 2.2, 2.3 & 4.1). "Clap your hands" is even part of a biblical phrase. (Ferrara Rep. at 5; Beavers Rep. at 2 (quoting Psalm 47:1, King James Version)). Because the lyrical phrase appears frequently, a reasonable jury could only conclude that it is an element of HCS that is not protectible. Acuff-Rose, 155 F.3d at 144; Stratchborneo, 357 F. Supp. at 1405.

Defendants argue that the lyrics and accompanying music must be analyzed together and that because plaintiffs have failed to show prior art using the same lyrics and notes together, originality can be properly credited to defendants. The argument is rejected. First, the lyrical phrase and the three notes are so common and unoriginal that even when they are combined they are not protectible.

Second, the cases cited by defendants are distinguishable. Where, for example, the Second Circuit in Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 161 F.2d 406 (2d Cir. 1946), held that "the words and music of a song ... are as little separable for purposes of the copyright as are the individual musical notes which constitute the melody[,]" id. at 409, the Second Circuit was assessing copyright validity and ownership rather than substantial similarity in an infringement context.

In Acuff-Rose Music, Inc. v. Jostens, Inc., 988 F. Supp. 289, 295 (S.D.N.Y. 1997), aff'd, 155 F.3d 140, this Court found that the scope of the creator's copyright extended to his vocal rendition of unprotected lyrics. Such a finding, however, does not prove defendants' proposition here, that the combination of unprotected lyrics and unprotected notes creates one protected element.

M.H. Segan Ltd. P'shp v. Hasbro, Inc., 924 F. Supp. 512 (S.D.N.Y. 1996), abrogated on other grounds by Nadel v. Play-By-Play Toys & Novelties, Inc., 208 F.3d 368 (2d Cir. 2000), in which the Court relied on the Second Circuit's holding in Knitwaves, 71 F.3d 996. In its infringement analysis in Knitwaves, the Second Circuit considered the unprotected elements of the sweaters at issue, namely stripes and common colors, along with the original elements, such as the placement of leaves and squirrels. Knitwaves, 71 F.3d at 1003 (examining the "total concept and feel"). The Court concluded that "an observer viewing the sweaters side by side cannot help but perceive them as coming from one creative source." Id. at 1004. Here, however, a listener hearing the two phrases one after the other would not conclude that they came from the same source. Similarly, the finding in Stratchborneo , 357 F. Supp. 1393, that "initial focus should be placed on music and lyrics taken together" does not establish that unprotectible elements combined are per se protectible. Id. at 1405 (emphasis in original).

Because a reasonable jury could only find that "clap your hands" is a common lyrical phrase and the music accompanying is a common musical sequence, neither the lyrics nor the music could be found to be a protectible element of HCS. Likewise, no reasonable jury could find that the combination of the unprotectible lyrics and unprotectible music would create one protectible element. Accordingly, a reasonable jury could only find that there is no substantial similarity as to the protected elements under the average lay listener test and that there is no copyright infringement. Knitwaves, 71 F.3d at 1002; Durham Indus., 630 F.2d at 912.

2. De Minimis Copying

Even assuming that the HCS and My Love Phrases are protectible and that there was copying, a reasonable jury could only conclude that there was no infringement because the excerpts at issue are de minimis and trivial compared to the entire works. A jury could only find that copying the HCS Phrase alone is not actionable. See Stratchborneo, 357 F. Supp. at 1404-05 (No "substantial similarity [will] be found if only a small, common phrase appears in both the accused and complaining songs ... unless the reappearing phrase is especially unique or qualitatively important.").

Although the excerpts repeat throughout the songs, a jury could only find that the similarity of the songs is of "small import quantitatively and qualitatively." Williams v. Crichton, 84 F.3d 581, 588 (2d Cir. 1996); see Duffy v. Penguin Books USA Inc., 4 F. Supp. 2d 268, 273 (S.D.N.Y. 1998). First, the songs, taken as a whole, are substantially different. (Eskelin Decl. P 11). Second, the only identical portions of the two songs are the first three words and notes of the HCS and My Love Phrases -- common musical and lyrical phrases. (Id.).

An average lay listener would not "recognize [My Love] as having been appropriated from [HCS]." Durham, 630 F.2d at 912. Accordingly, a reasonable jury could not conclude that the plaintiffs copied defendants' work in violation of defendants' copyright.

CONCLUSION

For the reasons set forth above, plaintiffs' motion for summary judgment is granted. Plaintiffs' motion to bifurcate the case pursuant to Fed. R. Civ. P. 42(b) and defendants' motion are denied as moot. Plaintiffs' request for attorneys' fees and costs is denied. Plaintiffs shall submit a proposed judgment on notice on or before March 4, 2002.

SO ORDERED

Dated: New York, New York

February 25, 2002

DENNY CHIN

United States District Judge

[1] Although R & B Music LLC is the party named in the caption, various documents refer to R & B Music, Inc. rather than R & B Music LLC. For the purposes of this Memorandum Decision, R & B Music LLC and R & B Music, Inc. are used synonymously.

[2] References to "Countercl." are to the counterclaim portion of the Answer, Counterclaim and Jury Demand of Defendants Bug Music, Inc. and R & B Music LLC. Because the document includes two sets of sequential paragraphs beginning with paragraph 1, references are made specifically to the answer or counterclaim portion of the document.

[3] By letters to the Court in early July 2001, plaintiffs requested that the declaration and accompanying exhibits of defendants' expert Eskelin be stricken from the record on the grounds that this material was submitted in violation of the Court's orders. By Order dated July 9, 2001, I denied plaintiffs' request and stated that I would consider plaintiffs' objections when I decide these motions. Plaintiffs' objections are overruled, and I have considered Eskelin's declaration.

[4] For the purposes of plaintiffs' motion only, plaintiffs concede that defendants can establish valid ownership of a copyright as well as a prima facie showing of actual copying. (Pl. Br. at 2 n.1). Defendants, in their cross-motion, move for summary judgment on the grounds that the HCS Phrase is original and protectible and that plaintiffs had access to defendants' work. Because I am granting plaintiffs' motion for summary judgment, I do not reach defendants' arguments as to access.