ELEMENTS OF A MUSIC COPYRIGHT INFRINGEMENT CASE
©2001 Law Offices of Joseph P. Costa

A. Proof of Infringement

Proof of copyright infringement is often highly circumstantial, particularly in cases involving music. A copyright plaintiff must prove (1) ownership of the copyright; and (2) infringement - that the defendant copied protected elements of the plaintiff's work. Three Boys Music Corp. v. Bolton, 212 F.3d 477, 482 (9th Cir 2000) cert denied 148 L. Ed. 2d 790 (2001).
Absent direct evidence of copying, proof of infringement involves fact-based showings that the defendant had "access" to the plaintiff's work and that the two works are "substantially similar." Id.

B. Access

Proof of access requires "an opportunity to view or to copy plaintiff's work." Id. Circumstantial evidence of reasonable access is proven in one of two ways: (1) a particular chain of events is established between the plaintiff's work and the defendant's access to that work (such as through dealings with a publisher or record company), or (2) the plaintiff's work has been widely disseminated. Id. So generally speaking, infringement actions can be divided into two broad categories. Claims against songs that have not been widely disseminated such that the plaintiff=s showing of defendant=s access to the work may not be sufficient to survive summary judgement, and cases in which the songs allegedly infringed have been so widely disseminated that access is a question of fact for the jury.

Frequently, the issue of access to publicly disseminated works does not turn out to be pivotal. Similarly, proof of widespread dissemination is often accompanied by a theory that copyright infringement of a popular song was subconscious. Bolton, at 482. For example, in ABKCO Music, Inc v. Harrisongs Music, Ltd., 722 F.2d 988, 997, 999 (2d Cir. 1983), the Second Circuit affirmed a jury's verdict that former Beatle George Harrison, in writing the song "My Sweet Lord," subconsciously copied The Chiffons' "He's So Fine," which was released six years earlier. Harrison admitted hearing "He's So Fine" in 1963, when it was #1 on the Billboard charts in the United States for five weeks and one of the top 30 hits in England for seven weeks. The court found: "the evidence, standing alone, 'by no means compels the conclusion that there was access . . . it does not compel the conclusion that there was not.'" Id. Furthermore, the ABKCO court held that "the mere lapse of a considerable period of time between the moment of access and the creation of defendant's work does not preclude a finding of copying."

Similarly, under Ninth Circuit case law, substantial similarity is inextricably linked to the issue of access. In what is known as the "inverse ratio rule," courts "require a lower standard of proof of substantial similarity when a high degree of access is shown.@ Bolton at 485.

C. Substantial Similarity

Proof of the substantial similarity is satisfied by a two-part test of extrinsic or objective similarity and intrinsic or subjective similarity. The extrinsic test requires that the plaintiff identify concrete elements based on objective criteria. The extrinsic test often requires analytical dissection of a work and expert testimony. Id.

A jury may find a combination of unprotectible elements to be protectible expression capable of being infringed under the extrinsic test where "'the over-all impact and effect indicate substantial appropriation." Id. Further, "even if a copied portion be relatively small in proportion to the entire work, if qualitatively important, the finder of fact may find substantial similarity." Baxter v. MCA., Inc., 812 F.2d 421, 425 (9th Cir. 1987).

Once the extrinsic test is satisfied, the jury decides the intrinsic test. The intrinsic test is subjective and asks "whether the ordinary, reasonable person would find the total concept and feel of the works to be substantially similar." Id.

D. Independent Creation

By establishing reasonable access and substantial similarity, a copyright plaintiff creates a presumption of copying. The burden then shifts to the defendants to rebut that presumption through proof of independent creation. Bolton at 486. Given the settled theory of subconscious copying now so heavily relied upon by Plaintiffs in infringement actions, proving independent creation can be difficult at times. Even credible defendants who convincingly testify that they had no intent to copy anything are still subject to a jury finding of subconscious copying.

E. Damages and Profits

Plaintiffs are entitled to both their actual damages and defendants profits attributable to the infringement not taken into account in computing actual damages. 4 Nimmer, Nimmer On Copyright, '14.01[A] at 14-4 (2000). Damages and profits are questions for the jury. Id at '14.02[A] at 14-8.1.

Damages are measured as the extent to which the market value of the copyright has been injured by the work. Id. There is some dispute over whether a reasonable royalty or license is an appropriate measure of damages. Id at '14.02[A] at 14-10 (royalty measure of damages not appropriate under the Copyright Act); but see II Goldstein, Copyright ' 12.1.1b at 12.11(market value can be measured by what a reasonable buyer would pay a reasonable seller to use the work). Nimmer concedes that the price set for the same or similar material is strong evidence of its market value [Nimmer at '14.02[A] at 14-14.]

A successful copyright plaintiff is also allowed to recover those profits that are "attributable to infringement." 17 U.S.C. '' 504(b) (1994). "In establishing the infringer's profits, the copyright owner is required to present proof only of the infringer's gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work." Id. See also, Bolton, at 487. This will require expert testimony.

Plaintiffs bear the burden of proving revenues and defendants bear the burden of proving deductible expenses attributable to the infringement. See. Nimmer, at '14.03[B] at 14-31; see also, Gaste v. Kaiserman, 863 F.2d 1061, 1070 (2d Cir. 1988) (finding that where there is "imprecision in the computation of expenses, a court should err on the side of guaranteeing the plaintiff a full recovery"). A portion of overhead attributable to the infringement can also be deducted. There are many experts who have done this type of profit accounting in other cases. Non-wilful infringers can deduct income taxes as an expense. Bolton at 487.

In Cream Records, Inc. v. Jos. Schlitz Brewing Co., 754 F.2d 826, 828 (9th Cir. 1985), defendant was found to have infringed Plaintiff=s song (the theme from Shaft) in a beer commercial. The court awarded Plaintiff $80,000 as the value of the license to use of the song in a commercial. The court found that the use of the song destroyed its value to be used in other commercials and that the Plaintiff would have only licensed the use of the whole song (not a portion of it).

In addition to the value of a license as a measure of damages, Plaintiffs in Cream Records also recovered a portion of defendants= profits on the sale of the beer. As to the amount of profits attributable to the infringing material, "what is required is . . . only a reasonable approximation@ when all profits do not clearly derive from the infringing material. Id. at 829. The court of appeal did not want to second guess the trial court and awarded only $5,000 in profits 1/10th of 1%. No profits were awarded against the advertising agency. On remand, the district court awarded 1% of the advertising agency=s profits, but the court of appeal rejected this measure as inadequate and remanded the case again. 864 F.2d at 668, 669. In Bolton, the jury found that 28% of the albums profits were derived from the song and 66% of the songs success was attributable to the infringing elements. There was no clear error in the apportionment that awarded less than 100% of the profits and more than the defendants’ experts had testified to as a proper apportionment. Bolton at 487.

F. Attorney’s Fees

Under Fogerty, an award of attorneys fees is left to the district court’s equitable discretion. A district court may consider (but is not limited to) considering five factors in making an attorney's fees determination pursuant to '' 505 of the Copyright Act: (1) the degree of success obtained, (2) frivolousness, (3) motivation, (4) objective unreasonableness (legal and factual), and (5) the need to advance considerations of compensation and deterrence. Jackson v. Axton, 25 F.3d 884, 890 (9th Cir. 1994) (citing Fogerty v. Fantasy, Inc., 501 U.S. at , 114 S. Ct. at 1023, 1033 n.19. (1994)).

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