No. 99 Civ. 10957 (MBM).
August 24, 2001
Attorney for Plaintiffs: SETH A. LEVINE, ESQ., Albiri Richman, P.C., Garden City, NY.
Attorney for Defendants: ROBERT CINQUE, ESQ., Cinque Cinque New York, NY.
Plaintiffs Marion Williams p/k/a Marley Marl, Pirate Recordings, Inc. d/b/a Songs of Marl, and Third Power Enterprises, Inc. d/b/a Cold Chillin' Music Publishing sue defendants Calvin Broadus p/k/a Snoop Dogg, the artist p/k/a Mo B. Dick, Boutit, Inc. d/b/a No Limit Records, Big P. Music, LLC, and Priority Records, LLC for copyright infringement. Defendants move for partial summary judgment on the claim that defendants infringed plaintiffs' copyright in a song titled "The Symphony." For the reasons stated below, defendants' motion is denied.
The following facts are undisputed. Marion Williams, p/k/a Marley Marl, is a producer and performer in the genre known as hip-hop. (Williams Decl. ¶ 2) On September 6, 1988, Warner Bros. Records released Williams' album titled "In Control, Volume I," which contained a song titled "The Symphony." (Williams Decl. ¶¶ 4, 5) Without permission from the copyright owner, Williams had copied, or sampled, a portion of the song "Hard to Handle" performed by Otis Redding and incorporated it into "The Symphony." (Williams Decl. ¶¶ 13, 15; Oxendale Decl. Ex. B at 1; Spielman Decl. Ex. B ¶¶ 10, 20) Effective December 5, 1988, the Register of Copyrights issued a certificate of Registration for "The Symphony," Registration Number PA 394-204, to Cold Chillin' Music Publishing, with Williams as one of the authors. (Williams Decl. ¶ 6, Ex. A) Cold Chillin' Music assigned 50 percent of its interest in "The Symphony" to plaintiff Songs of Marl. (Williams Decl. ¶ 7, Ex. B)
The practice of sampling portions of pre-existing recordings and compositions into new songs is apparently common among performers of the genre known as rap (hereinafter "rappers"). See, Note, Rap Music and De Minimis Copying, 18 Cardozo Arts Ent. L. J. 227, 228 (2000). Musicians sample preexisting works either digitally, by lifting part of a song from a pre-existing master recording and feeding it through a digital sampler, or by hiring musicians who re-play or re-sing portions of the pre-existing composition. (Stern Decl. ¶ 3) The submissions do not explain how Williams sampled "Hard to Handle."
In 1998, defendant Calvin Broadus, p/k/a Snoop Dogg, a well-known rapper, recorded a song titled "Ghetto Symphony," which was released by defendant No Limit Records and distributed by defendant Priority Records. (Def. 56.1 ¶ 2; Broadus Dep. at 18) For purposes of this motion, defendants concede that "Ghetto Symphony" used some of the lyrics and music of "The Symphony" without permission from plaintiffs. (Def. 56.1 ¶¶ 3, 4; Broadus Dep. at 23-24) Nevertheless, defendants move for summary judgment on the ground that plaintiffs do not have a valid copyright in "The Symphony" because plaintiffs themselves had inserted sampled portions of "Hard to Handle" into "The Symphony" without permission.
See supra note 1.
To prevail on a copyright infringement action, the plaintiff must own a valid copyright. See Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). Plaintiffs have submitted a Certificate of Registration for "The Symphony" issued by the Register of Copyrights within five years of the song's first publication. (Williams Decl. ¶ 6, Ex. A) The Certificate is prima facie evidence of plaintiffs' valid copyright. See 17 U.S.C. § 410 (c) (1994). Defendants claim that, despite the Certificate of Registration, plaintiffs do not own a valid copyright in "The Symphony." See Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 908 (2d Cir. 1980) (a defendant may offer evidence to rebut this presumption of validity).
Section 106 of the Copyright Act enumerates six exclusive rights held by the owner of a copyright, including the right "to prepare derivative works based upon the original copyrighted work." 17 U.S.C. § 106 (West 1996 Supp. 2000). According to defendants, "The Symphony" is a derivative work based on "Hard to Handle," and plaintiffs infringed this exclusive right of the owners of the copyright of "Hard to Handle." Defendants argue that copyright protection of "The Symphony" is therefore prohibited pursuant to Section 103(a) of the Copyright Act, which withholds copyright protection from "any part of [a derivative or collective work] in which [pre-existing material] has been used unlawfully."
Plaintiffs concede that they copied a portion of "Hard to Handle." (Williams Decl. F ¶¶ 13, 15; Oxendale Decl. Ex. B at 1) However, a work is not derivative simply because it borrows from a pre-existing work. See 1 M. Nimmer D. Nimmer, Copyright § 3.01 at 3-4 (hereinafter Nimmer). Section 101 of the Copyright Act defines a derivative work as "a work based upon one or more preexisting works such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction . . . or any other form in which a work may be recast, transformed, or adapted. . . ." 17 U.S.C. § 101 (West Supp. 2000). When deciding whether a work is derivative by this definition, courts have considered whether the work "would be considered an infringing work" if the pre-existing material were used without permission. 1 Nimmer § 3.01 at 3-4; see M.H. Segal Ltd. Partnership v. Hasbro, Inc., 924 F. Supp. 512, 519 (S.D.N.Y. 1996), abrogated on other grounds as noted in Nadel v. Play-By-Play Toys Novelties, Inc., 208 F.3d 368, 380 n. 9 (2d Cir. 2000). Which is to say, the test for whether a newly created work infringes the copyright holder's right to create a derivative work is the same as the test for whether that newly created work infringes the copyright holder's exclusive right to reproduce the copyrighted work itself. See 2 Nimmer § 8.09 at 8-137 ("[I]f the latter work does not incorporate sufficient of the pre-existing work as to constitute an infringement of either the reproduction right, or of the performance right, then it likewise will not infringe the right to make a derivative work because no derivative work will have resulted."), cited with approval in Twin Peaks Prod. v. Publications Int'l, 996 F.2d 1366, 1373 (2d Cir. 1993)
Therefore, to establish that "The Symphony" is a derivative work of "Hard to Handle" defendants must establish that (1) plaintiffs copied "Hard to Handle," and (2) "the copying amount[ed] to an improper or unlawful appropriation." Castle Rock Entertainment v. Carol Publishing Group, Inc., 150 F.3d 132, 137 (2d Cir. 1998) (quoting Laureyssens v. Idea Group, Inc., 964 F.2d 131, 139-40 (2d Cir. 1992)). Again, the parties do not dispute that plaintiffs actually copied a portion of "Hard to Handle." (Williams Decl. ¶¶ 13, 15; Oxendale Decl. Ex. B; Stern Decl. ¶ 3) However, a genuine issue of material fact exists as to whether the copying amounted to an unlawful appropriation.
For purposes of this motion, I will assume that Atlantic Records holds a valid copyright in "Hard to Handle." The only evidence submitted regarding the copyright of "Hard to Handle" is a photocopy of a compact disc that contains a recording of the song. The disc has a notice of copyright dated 1968 in the name of Atlantic Recording Corp. (Cinque Reply Decl. Ex. A)
It is unclear whether plaintiffs copied only the composition or the sound recording as well.
Unlawful appropriation is established "by showing that the second work bears 'substantial similarity' to protected expression. in the earlier work." Castle Rock, 150 F.3d at 137 (citing Repp v. Webber, 132 F.3d 882, 889 (2d Cir. 1997)); see also id. at 143 n. 9 ("Indeed, if a secondary work transforms the expression of the original work such that the two works cease to be substantially similar, then the secondary work is not a derivative work and, for that matter, does not infringe the copyright of the original work.") (citing 1 Nimmer § 3.01 at 3-3). That this case involves the practice of sampling prior music into a new composition does not alter this analysis. 4 Nimmer 13.03 [A]  at 13-49 to 13-50; but see Grand Upright Music, Ltd. v. Warner Bros. Records, 780 F. Supp. 182 (S.D.N.Y. 1991) (finding infringement without considering substantial similarity). The Second Circuit recently has recognized that several tests may be used to determine whether two works are substantially similar. Castle Rock, 150 F.3d at 138-41.
Defendants advocate the "ordinary observer" — or in this case listener — test. Pursuant to this test, two works are substantially similar where "'the ordinary (listener], 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.'" Id. at 139 (quoting Arica Inst., Inc. v. Palmer, 970 F.2d 1067, 1072 (2d Cir. 1992)). Here, viewing the facts in the light most favorable to plaintiffs, they copied only two of the 54 measures of "Hard to Handle." (Williams Decl. ¶¶ 13, 15; Oxendale Decl. Ex. B at 2; Spielman Decl. Ex. B ¶¶ 10, 20 Chart 4; Stern Decl. ¶ 3)
The parties dispute whether the drum pattern of "The Symphony" was taken from "Hard to Handle." (Compare Oxendale Decl. Ex. B at 3 and Williams Decl. ¶ 13 with Spielman Decl. Ex. B ¶¶ 27, 34(e))
Plaintiffs' use of the two measures from "Hard to Handle" is analogous to a direct quotation or close paraphrase. The ten notes, if not actually copied directly from a preexisting recording of "Hard to Handle," were at a minimum replayed exactly as they appear in that pre-existing work. This copying is an example of "fragmented literal similarity." See Castle Rock, 150 F.3d 132, 140. Fragmented literal similarity exists where, as here, parts of The pre-existing work are copied, in this case note for note, in the new work. 4 Nimmer § 13.03 [A]  at 13-45; Jarvis v. AM Records, 827 F. Supp. 282, 239 (D.N.J. 1993); see also Ringgold v. Black Entertainment Television, Inc., 126 F.3d 70, 75 n. 3 (2d Cir. 1997) (endorsing Nimmer's taxonomy). "The similarity, although literal, is not comprehensive." See 4 Nimmer § 13.03 [A]  at 13-45 (explaining fragmented literal similarity and applying it to digital sampling).
As Professor Nimmer explains, the point at which fragmented literal similarity stops and substantial similarity begins is not easily identified. 4 Nimmer § 13.03 [A]  at 13-46. However, "[t]he question in each case is whether the similarity relates to matter that constitutes a substantial portion of [the pre-existing] work — not whether such material constitutes a substantial portion of [the allegedly infringing] work." Id. Even if it is relatively small, the portion of the pre-existing work may be substantial if it "is of great qualitative importance to the [pre-existing] work as a whole." Jarvis, 827 F. Supp. at 291 (quoting Werlin v. Readers Digest Assoc., 528 F. Supp. 451, 463 (S.D.N.Y. 1981)); see also Warner Bros., Inc. v. American Broadcasting Co., Inc., 720 F.2d 231, 242 (2d Cir. 1983) (hereinafterWarner Bros. II) (describing the de minimis doctrine of fragmented literal similarity as allowing literal copying of a small and usually insignificant portion of the pre-existing work), Elsmere Music, Inc. v. National Broadcasting Co., Inc., 482 F. Supp. 741, 744 (S.D.N.Y.), aff'd 623 F.2d 252 (2d Cir. 1980) (finding that copying was not de minimis where the copied musical phrase went to "the heart of the [original] composition"); 4 Nimmer § 13.03 [A]  at 13-47.
According to the Second Circuit, the question of whether the copied portion of the original work in a case of fragmented literal similarity is substantial is distinct from the quantitative question asked as part of the qualitative/quantitative analysis applied in Castle Rock, 150 F.3d at 138, and Ringgold, 126 F.3d at 75. In those cases, when deciding how much of the copyrighted work had been copied, the Court considered "the amount of copying not only of direct quotations and close paraphrasing, but also of all other protectable expression in the original work." Castle Rock, 150 F.3d at 140 n. 6. Here, the alleged copying was limited to direct quotation and close paraphrasing of the two measures of "Hard to Handle." Moreover, the works being compared here, unlike the works in Castle Rock and Ringgold, were produced in the same medium, and the styles, although different, are susceptible to comparison. Therefore, the fragmented literal similarity analysis is most appropriate in this case. Nonetheless, even under the quantitative/qualitative analysis, a genuine issue of material fact exists as to whether the amount of material copied from "Hard to Handle" was more than de minimis.
There is no dispute that the copied five-note ascending figure and five-note descending figure appear in the pre-existing work as the opening two measures of "Hard to Handle." (Oxendale Decl. Ex. B at 1; Spielman Decl. Ex. B ¶¶ 8, 24) The notes are immediately repeated in the third and fourth measures of "Hard to Handle," although by different instruments, and some variations of the ten-note phrase occur later in the work. (Oxendale Decl. Ex. B at 2) Defendants present evidence that this portion of "Hard to Handle" is qualitatively important because it appears at the beginning of the song and serves as an "announcement of what is to come." (Spielman Decl. Ex. B ¶ 24) However, by urging the listener to focus solely on the two copied measures, defendants would improperly alter the "'actual sequence or construction'" of "Hard to Handle" to "'achieve a juxtaposition that makes for greater similarity'" between "Hard to Handle" and "The Symphony" than would exist if the two works were compared in their totality. Warner Bros. v. American Broadcasting Co., Inc., 654 F.2d 204, 211 (2d Cir. 1981) (quoting 4 Nimmer § 13.03 [E]  at 13-91). Thus despite defendants' argument, a reasonable finder of fact could nonetheless conclude that the copied measures of "Hard to Handle" — two measures that appear only in the opening of that composition — are not a substantial portion of the work. See Durham Industries, 630 F.2d at 918 (substantial similarity is an issue of fact) (citing 3 Nimmer § 12.10 [B]  at 12-51 to 12-52).
Defendants stress that the copied portion of "Hard to Handle" is replayed throughout "The Symphony." However, as noted above, it is not the significance of the copied material in the allegedly infringing work that determines substantial similarity. See 4 Nimmer § 13.03 [A]  at 13-46; Twin Peaks, 996 F.2d at 1373 (finding that a work was derivative where it contained "a substantial amount of material" from the original work); see also Warner Bros. II, 720 F.2d at 242 (noting that literal copying is allowed if it is an insignificant portion of the pre-existing work); Elsmere Music, 482 F. Supp. 741, aff'd 623 F.2d 252. Rather, it is the significance of such material in the work allegedly infringed that is important. The Second Circuit has considered the "observability" of the copyrighted work in the allegedly infringing work when deciding whether the copying was de minimis under the qualitative/quantitative analysis. Sandoval v. New Line Cinema Corp., 147 F.3d 215, 217 (2d Cir. 1998). However, the Second Circuit has not found observability itself sufficient to prove substantial similarity absent the copying of a substantial portion of the pre-existing work.See id.. (finding de minimis copying where photographs were not displayed with sufficient detail for the average lay observer to identify even the subject matter of the photographs, much less the style used in creating them); Ringgo1d, 126 F.3d at 76-77 (finding more than de minimis copying where almost all of a poster was displayed during a four-to-five second segment and several shorter segments of a television program). The importance of the copied material to the pre-existing work determines whether there has been an "unlawful appropriation" that the substantial similarity analysis was intended to identify. Even repeated use of an insignificant portion of the pre-existing work does not diminish the public demand for the pre-existing work. Cf. Arnstein v. Porter, 154 F.2d 464, 473 (2d Cir. 1946) ("The question, therefore, is whether the defendant took from plaintiff's work so much of what is pleasing to the ears of lay listeners . . . that the defendant wrongfully appropriated something which belongs to the plaintiff.") A genuine issue of material fact exists as to whether the portion of "Hard to Handle" copied by plaintiffs is a substantial portion of that pre-existing work.
Because a genuine issue of fact exists as to whether "The Symphony" is substantially similar to "Hard to Handle," defendants' argument that the sample of "Hard to Handle" pervades "The Symphony" and therefore invalidates plaintiffs' copyright completely and not in part, is irrelevant for the moment. See JBJ Fabrics, Inc. v. Brylane, Inc., 714 F. Supp. 107, 110 (S.D.N.Y. 1989) (finding that the original contributions of a derivative work would be protected "absent some showing that the unlawful use pervaded the entire work."); see also Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27, 34 n.E (2d Cir. 1982). Only if the trier of fact finds "The Symphony" substantially similar to "Hard to Handle" will it be necessary to decide whether that unlawful use pervades the entire derivative work, and thus invalidates plaintiff's copyright completely. See 17 U.S.C. § 103 (a). However, it bears mention that recent cases have held that the unlawful use of a pre-existing work in a derivative work always invalidates copyright protection for the entire derivative work. See Pickett v. Prince, 207 F.3d 402, 407 (7th Cir. 2000); Anderson v. Stallone, No. 87-0592, 1989 WL 206431 (C.D. Cal, April 25, 1989). These cases suggest that the question of whether the pre-existing work pervades the new work is relevant only to the initial determination of whether the new work is derivative. See Pickett, 207 F.3d at 407 ("We can thus imagine the notion of pervasiveness being used to distinguish a work fairly described as derivative from works only loosely connected with [the original]."). Yet, even if the definition of a derivative work requires that the pre-existing work pervade the derivative work, and even if the ascending and descending notes at issue here could be said to be the essence of the pre-existing work, defendants have failed to establish beyond reasonable dispute that the copied portion of "Hard to Handle" pervades "The Symphony." According to defendants' forensic musicologist, Earl v. Spielman, the sample of "Hard to Handle" appears in some form in 124 of the 140 measures of "The Symphony." (Spielman Decl. Ex. B ¶ 25) Moreover, Spielman opines that "[t]he sampled materials . . . constitute the entirety of the musical material of the new work." (Spielman Decl. Ex. B ¶ 37). However, plaintiffs submit the report of Peter Oxendale, also a forensic musicologist. Oxendale contends that the rap vocal, which at times is accompanied only by drums and not by the sample of "Hard to Handle," is "one of the most distinctive and memorable features of 'The Symphony.'" (Oxendale Decl Ex. B. at 2) Furthermore, plaintiff Williams avers that the lyric, not the music, is the dominant feature of "The Symphony" and that the song would remain essentially intact even if the sampled notes were removed. (Williams Decl. ¶¶ 13, 14) Even Spielman concedes that "there are no textual considerations at issue" in the comparison of "Hard to Handle" and "The Symphony." (Spielman Decl. Ex. B ¶ 8) A reasonable finder of fact could find that because the lyrics of "The Symphony" do not use the copied portion of "Hard to Handle" and because the lyrics are the most significant portion of "The Symphony," it follows that "Hard to Handle" does not pervade plaintiffs' composition.
* * *
These defendants cannot avoid litigating their alleged infringement of plaintiffs' copyright in "The Symphony" by seeking a summary judgment that plaintiffs have infringed a third party's copyright. For the reasons stated above, defendants' motion for partial summary judgment is denied.