Tag Archives: Substantial Similarity

Gaye Gets in Thicke

Marvin Gaye’s estate has answered Robin Thicke’s declaratory judgment suit over Gaye’s “Got to Give It Up” and Thicke’s uber popular song “Blurred Lines” by filing counterclaims, including alleged infringement of additional Gaye songs, including the Marvin Gaye song, “After the Dance,” in the Thicke song “Love After War.”

Thicke’s own words were used against him, as Gaye’s counterclaim cited a May, 2013 interview Thicke gave GQ magazine in which he said,

Pharrell and I were in the studio and I told him that one of my favorite songs of all time was Marvin Gaye’s ‘Got to Give it Up.’ I was like, ‘Damn, we should make something like that, something with that groove.’ Then he started playing a little something and we literally wrote the song in about a half hour and recorded it.

Thicke repeated this claim in a July interview with Billboard,

Pharrell and I were in the studio making a couple records, and then on the third day I told him I wanted to do something kinda like Marvin Gaye’s ‘Got to Give it Up,’ that kind of feel ’cause it’s one of my favorite songs of all time. So he started messing with some drums and then he started going ‘Hey, hey hey .. ‘ and about an hour and a half later we had the whole record finished.

Frankly, even a cursory listening makes it hard to argue these songs are substantially similar.  The case reminds me of the Vanilla Ice initially claiming that “Ice Ice Baby” didn’t sample Queen / David Bowie’s “Under Pressure.”

The Gaye family alleges that EMI breached its fiduciary duty tp and obligations of good faith and fair dealing with the family by siding with Pharrell Williams, an EMI-affiliated writer and one of Blurred Lines co-writers.  According to the Gaye family, Gaye’s administration agreement with EMI grants EMI the exclusive right to bring infringement claims, but when the Gaye family told EMI about the alleged infringement of Got to Give It Up, EMI refused to pursue a claim against Williams.   

Among the nefarious actions alleged is the salacious claim that the chairman of EMI called a legal representative of the Gaye family suggesting that–notwithstanding the fact that Thicke had already filed his dec action against them–they not to pursue this action because Marvin Gaye’s children were “tarnishing” and “ruining an incredible song” (“Blurred Lines”) and”killing the goose that laid the golden egg,”  The EMI chairman claimed that the Gaye family’s accusations that Blurred Lines was based on Gaye’s song was responsible for “Blurred Lines” not receiving an MTV Video Music Award and might kill any chances of “Blurred Lines” winning a Grammy Award for Song of the Year.

Based on these alleged breaches, the Gaye family is seeking to rescind its publishing agreement with EMI.

The counterclaims are here.

Making Sense of “Fair Use”

Neil Netanel, a professor at UCLA Law School and my former colleague when I was with Fulbright & Jaworski, has written an excellent study of the evolution of how courts apply the fair use doctrine entitled Making Sense of Fair Use, forthcoming in the Lewis & Clark Law Review (v.15, No.3) and available here.

As Prof. Netanel describes, commentators have long complained about the seemingly ad-hoc and arbitrary outcomes of copyright infringement cases in which defendants adopt a “fair use” defense.  After reviewing several prominent law review articles that survey the case law in an attempt to determine a predictable pattern in fair use cases, Prof. Netanel conducts his own study and finds that the fair use landscape is less arbitrary than other scholars have suggested.

Prof. Netanel begins by defining the two dominate fair use analysis paradigms: “market-centered” and “transformative use.”

“The market-centered paradigm treats fair use as an anomalous exception to the copyright owner’s exclusive rights, applicable only in cases of irremediable market failure.  It owes its origin to Professor Wendy Gordon’s highly influential law review article, published in 1982, Fair Use as Market Failure: A Structural Analysis of the Betamax Case and Its Predecessors, in which Gordon argued that fair use should be available only when the defendant meets the heavy burden of proving both that high transaction costs pose an insurmountable obstacle to copyright licensing and that the use serves an identifiable public benefit that would outweigh any harm caused to the copyright owner by granting fair use.”  This interpretation of fair use was adopted by the Supreme Court in Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985).

“The transformative use paradigm … was set out by Judge Pierre Leval in his law review article, Toward a Fair Use Standard, published in 1990, and adopted by the Supreme Court in 1994 in Campbell v. Acuff-Rose [510 U.S. 569 (1994)].  Under this paradigm, the key question in fair use analysis is whether the defendant’s use is ‘transformative,’ not whether the defendant might have obtained a license or the copyright owner would have reasonably consented to the use.  The transformative use paradigm views fair use as integral to copyright’s purpose of promoting widespread dissemination of creative expression, not a disfavored exception to copyright holders’ exclusive rights.”

Rather than finding that courts arbitrarily apply fair use analysis, as previous studies have suggested, Prof. Netanel finds that “[since] 2005, the transformative use paradigm has come to dominate fair use case law and the market-centered paradigm has largely receded into the pages of history.  Today, the key question for judicial determination of fair use is not whether the copyright holder would have reasonably consented to the use, but whether the defendant used the copyrighted work for a different expressive purpose from that which the work was created.”

Don’t Mess with Tony Stark

We are the G, O-D’s
And we came to rock, the spot
Like Ironman Starks
Ghostface Killah, Daytona 500 from the album Ironman © 1996

Its been a tough week at Sony Music Entertainment (“SME”).  First, they get sued by famed TV show theme music composer Jack Urbont.  Then they get sued by a former University of North Carolina – Chapel Hill student (where I got my JD and PhD) Anthony Stokes.

In the first case, Urbont, who composed such TV show theme songs as Guiding Light, One Life to Live, and General Hospital, composed the theme music to the original 1966 cartoon series The Marvel Super Heros segment featuring the character Iron Man (the Iron Man Theme).  In his complaint, Urbont claims that Dennis Coles p/k/a Ghostface Killah used samples from the Iron Man Theme on his 2000 release Supreme Clientele.  Ghostface is apparently a big fan of Iron Man, even having one of his songs appearing in the 2008 eponymously named movie.

One question is why Urbont waited so long to sue.  After all, under § 507(b) of the Copyright Act, no civil action for copyright infringement can be maintained unless it is commenced within three years “after the claim accrued.”  In his complaint, Urbont notes that he “is over 80 years old and would not normally encounter the Defendants’ rap music in the ordinary course of his dealings in the music industry or otherwise.”

Another interesting side note is the presence of Richard Busch of Nashville-based King & Ballow on Urbont’s legal team.  Busch has made quite a name for himself in the entertainment business recently, including a significant win at the 9th Circuit regarding the manner in which Universal was calculating rapper Eminem’s royalties for digital sales.

Urbont’s Complaint is below
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In the second case, Anthony Stokes in 2004 while a student at UNC wrote and recorded and registered his song Where Are You Now.  That same year John Legend came and performed at UNC.  After the concert Stokes approached Legend during an autograph signing session.  Stokes gave Legend a demo CD containing Where Are You Now and, according to Stokes, Legend agreed to listen to it.  Stokes alleges that Legend’s song Maxine’s Interlude on his 2006 album Once Again copies Stokes’ Where Are You Now.

Stokes Complaint is below:
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Do You Infringe in the Land Down Under?

EMI has lost its appeal of a lower court’s decision in Australia finding that the famous Men at Work song “Down Under” infringed the song “Kookaburra Sits in the Old Gum Tree.”

While I profess no familiarity with Australian copyright, it appears that the Australian standard for determining infringement of a musical work is “substantially similar” to the rule in the U.S.  For some reason, however, this court begins its discussion of the test with references to the fifth century Roman emperor Zeno, the fifteenth century Governors of Venice and the Statute of Anne.  Just as in the U.S., the court looks at what portion of the original work was copied, rather than what portion of the allegedly infringing works constitutes allegedly copied parts of the original.  Likewise, the focus is on the quality of the copied portions rather than the quantity.  The judges here determined that 4 notes from “Down Under” were copied from “Kookaburra.”

The decision is below:
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