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A recent unpublished case decision offers some valuable lessons about the interplay among the “best evidence” rule, a plaintiff’s use of musicologists, and the basic proposition that a party must come forward with admissible evidence to defeat a motion for summary judgment. The U.S. Court of Appeals for the Ninth Circuit recently affirmed a grant of summary judgment in favor of Trent Reznor in a copyright infringement action filed against Reznor; his band, Nine Inch Nails; and Reznor’s record companies, Nothing Records and Interscope Records. Onofrio v. Reznor, 99-55223, 2000 U.S. App. LEXIS 2835, 2000 WL (Westlaw) 206576 (Feb. 23). Plaintiff Mark Onofrio, a coffee shop worker, had alleged that some of the songs on Nine Inch Nails’ hit 1994 album “the downward spiral” were plagiarized from some of Onofrio’s unpublished songs. To avoid summary judgment in a copyright infringement case, a plaintiff must present admissible evidence from which a jury could find that the defendant had access to plaintiff’s work and that the two works are “substantially similar.” When there is no direct proof of access, a plaintiff may attempt to create a presumption of access by demonstrating that defendant’s work is “strikingly similar” to protected expression in plaintiff’s work. PROVING ACCESS THROUGH DOCUMENTARY EVIDENCE Onofrio claimed that he learned of Reznor’s private e-mail address during a “conversation” with Reznor in an Internet chat room, and that he later had a private e-mail exchange with Reznor (which Onofrio allegedly conducted from his father’s computer). According to Onofrio, Reznor sent him an e-mail agreeing to listen to a tape of Onofrio’s music and providing the address where Reznor was residing while recording “the downward spiral.” That address had been widely publicized because Reznor rented and set up his studio in the Los Angeles house where Charles Manson had murdered Sharon Tate and others. But Onofrio claimed he learned the address from Reznor’s e-mail. Onofrio contended that he sent Reznor a “thank you” e-mail in which he promised to send Reznor the tape. Onofrio testified that some five months after this e-mail exchange, he sent to Reznor, via Federal Express, a package containing a DAT recording of the plaintiff’s songs, a printout of Reznor’s alleged e-mail response to him, and other material. Onofrio testified that he delayed sending Reznor his tape until after he had obtained a copyright registration for his songs, out of concern that Reznor might plagiarize Onofrio’s songs. But Onofrio admitted that he no longer had any copies of his alleged exchange with Reznor. He also failed to attempt to extract printouts from the hard drive of his father’s computer. In addition, Onofrio failed to produce the original or any copies of the Federal Express airbill receipt which he claimed had been filled out with Reznor’s address, nor did he obtain a copy of a Federal Express receipt showing delivery to Reznor’s address of the package containing the demo tape. Because Onofrio had none of these documents to establish proof of access, he attempted to rely on the following: oral testimony regarding the purported contents of those alleged documents; an unauthenticated photocopy of a letter purportedly from the Prodigy Internet service, confirming that three e-mails had been sent between Onofrio’s father’s account and a “Prodigy service member enrolled under the name Trent Reznor;” and a canceled check written by Onofrio’s girlfriend to Federal Express purportedly as payment for the delivery of the package to Reznor. The check was dated before the U.S. Copyright Office mailed Onofrio his registration certificate. However, Onofrio and his girlfriend both testified that Onofrio’s tape had been sent to Reznor after the issuance of the copyright registration. This flatly contradicted Onofrio’s assertion that the check was admissible in the absence of the Federal Express airbill or receipt showing Reznor’s address. The district court, applying the “best evidence” rule, granted summary judgment dismissing the complaint, awarded the defendants “prevailing party” attorney fees under the Copyright Act, and held in abeyance the defendants’ motion for sanctions against Onofrio’s counsel, pending the outcome of the Ninth Circuit appeal. The best evidence rule (see Rules 1001-1008 of the Federal Rules of Evidence) requires that to prove the material terms of a writing, the original writing must be produced unless it is shown to be unavailable for some reason other than the fault of the proponent. Thus, while Onofrio sought, in effect, to use the other documents to justify his efforts to “reconstruct” the original writings required to prove his case, such “reconstructions” did not suffice. In Seiler v. Lucasfilm Ltd., 808 F.2d 1316 (9th Cir. 1986), cert. denied, 484 U.S. 826 (1987), the plaintiff alleged that he created “Garthian Strider” characters prior to the release of the film “The Empire Strikes Back.” But he was precluded under the best evidence rule from offering as evidence reconstructions of drawings of those characters created after the film’s release. In Cartier v. Jackson, 59 F.3d 1046 (10th Cir. 1995), the plaintiff could not offer lyric and chord charts, or a recording based on memory, to prove the contents of demo tapes that she allegedly sent to, and were allegedly copied by, Michael Jackson. Although there is an exception to this rule for documents lost or destroyed other than in bad faith (see Fed. R. Evid. 1004(1)), a party seeking to invoke this exception must show that he or she made a diligent search for the documents. Absent such a showing, secondary evidence is inadmissible. Thus, in Cartier, the district court found insufficient the plaintiff’s efforts to locate a copy of one of her demo tapes�including calling friends and former colleagues, searching her residence and storage materials and unsuccessfully contacting many of the record companies that had received her tapes�where she failed to subpoena those record companies. In the Onofrio case, the district court held that like Cartier, Onofrio could not benefit from the Rule 1004(1) exception, because he could not show that he made a diligent search to locate the documentary evidence so crucial to his case. As the district court stated: In the nearly four years that elapsed between the time he claim[ed] to have first learned about the alleged infringement in 1994 and his deposition in 1998, [Onofrio] never made any effort to have his own father search for the e-mail messages in the memory of his computer. . . . Onofrio’s lack of diligence is even more evident with respect to his efforts to locate a receipt or other documentary evidence that would support his claim that he gave Federal Express a package containing his music for delivery to Reznor’s house. Having ‘lost’ the receipt, he made one unsuccessful phone call to Federal Express in 1994, failed to contact Federal Express again for over a year, until December 1995, and then waited more than another year, until early 1997, to contact Federal Express again, at which point he was told that it was then too late for Federal Express to help. Onofrio v. Reznor, CV-97-6184, Unpublished Tentative Ruling at 3 (C.D. Cal. Nov. 23, 1998). PROVING SIMILARITY THROUGH EXPERT TESTIMONY To prove “substantial” or “striking” similarity, a plaintiff will usually call on the services of an expert musicologist. Because Onofrio had no admissible direct evidence that Reznor had access to Onofrio’s tape, he was forced to attempt to prove that Reznor’s songs were “strikingly similar” to his (i.e., virtual carbon copies) and thereby create a presumption of access by Reznor. But Onofrio’s expert failed to create a triable issue of fact on the issue of similarity, because, as she admitted at her deposition, she did not pay any attention to the vital distinction between the elements of a song that copyright law protects and those that it does not. The Ninth Circuit noted that the Onofrio expert’s report “identifie[d] and list[ed] several unprotectable elements that she found in both Onofrio’s songs and the comparable songs by Reznor, but she fail[ed] to explain how the arrangement or combination of those unprotected elements in Onofrio’s songs created an original, protectable expression which was then copied by Reznor.” Instead, the expert focused “on bits and pieces such as tempo, meter, key, and instrumentation” and “critically omit[ted] any analysis of prior works and influences on the creation of the music at issue.” Indeed, when asked whether any copying by Reznor “was copying of protectable expression as opposed to copying of nonprotectable elements,” Onofrio’s expert admitted under oath that she “did not make that distinction.” Thus, the Ninth Circuit concluded that “Onofrio failed to raise a material issue of disputed fact concerning the similarity of the songs.” The lesson for copyright plaintiffs is clear: When making song comparisons, an expert musicologist should eliminate unprotectable elements and demonstrate the similarity of the protectable elements of songs, because, according to the Onofriodistrict court, “an issue of fact cannot be created by merely reciting the magic words ‘strikingly similar.’” Charles B. Ortner is a partner and Frank P. Scibilia is an associate with the New York office of Proskauer Rose LLP. Telephone: (212) 969-3000. Mr. Ortner represented the defendants in the district court and argued on their behalf in the Ninth Circuit.

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