Robert J. Bernstein and Robert W. Clarida

Now that a divided panel of the U.S. Court of Appeals for the Ninth Circuit has issued an amended opinion affirming the denial of a new trial motion and an order denying rehearing en banc in Williams v. Gaye (Williams), 2018 WL 3382875, No. 15-56880, Order and Amended Opinion (9th Cir. July 11, 2018) (the Amended Opinion), it is timely to consider whether the final affirmance of the jury verdict is likely to wreak havoc on musical creativity as some, including the dissent, have argued. The short answer is no. Our reasoning is set forth below.

The Debate

From the time that lawyers for Pharrell Williams and Robin Thicke (Williams-Thicke) commenced a declaratory judgment action in response to a claim letter from attorneys for the heirs of Marvin Gaye (The Gayes) alleging that Gayes’ 1977 hit “Got to Give It Up (Got To)” was infringed by the Williams-Thicke’s 2013 best-selling single “Blurred Lines,” a public debate has unfolded parallel to developments in court. Most recently, this debate has found purchase in the impassioned dissent from the Amended Opinion by Judge Jacqueline H. Nguyen, wherein she concludes by warning The Gayes, and, by extension, all songwriters, to be careful what they wish for:

The Gayes, no doubt, are pleased by this outcome. They shouldn’t be. They own copyrights in many musical works, each of which (including “Got to Give It Up”) now potentially infringes the copyright of any famous song that preceded it.

Judge Nguyen’s observation echoes the closing argument of Howard E. King, trial counsel for Williams-Thicke, that ”Blurred Lines” only emulates the genre of music represented by “Got To,” but not any original expression protected by its copyright, and therefore that a finding of infringement would stifle creativity by granting a prohibited monopoly on a musical style:

I believe Pharrell Williams and Robin Thicke are proud to stand on the shoulders of Margin Gaye, Stevie Wonder, Lionel Richie, dozens of other performers, and honor their legacies and honor their works by creating their own works in the same style and genre.

The jury, however, chose to accept the argument of The Gayes’ trial counsel,

Richard S. Busch, and the expert testimony of their musicologist, Judith Finell, that the similarities between the two works included copyrightable elements, rather than merely a shared style. In contrast to King’s parade of horribles predicting the end of musical creativity, Busch focused on two salient evidentiary points—the specific similarities between the two songs and the unprompted reaction of an executive of one of the record company defendants upon hearing “Blurred Lines”:

This is a copyright infringement case where Mr. Thicke and Mr. Williams created a song from Got to Give It Up and in so doing, … copied eight different elements from “Got to Give It Up.”

This is not about the copying of an era.  This is not about the copying of a genre.  This is not about the copyright of a style.

Harry Weinger is a senior executive at UMG and [he said that] “Blurred Lines” was “utterly based on “Got to Give It Up.” He didn’t say it was a genre. He didn’t say it was a style … He flat out said it was a copy. He works for them … Their own people internally said it was a copy.

I guess at the end of the day—I guess at the end of the day it boils down to who do you believe? That’s what it boils down to.”

 

 

The ‘Amended Opinion’

In the majority Amended Opinion, written by Judge Milan D. Smith, Jr. and joined by the Judge Mary H. Murgula, the Ninth Circuit placed great weight on both procedural and credibility issues. Procedurally, because the case was on review of the denial of a motion for a new trial, the court applied the highest standard of deferential review:

“We are bound by the limited nature of our appellate function in reviewing the district court’s denial of a motion for a new trial … based on its ruling that the verdict is not against the weight of the evidence, … When that is the case, we reverse only when there is an absolute absence of evidence to support the jury’s verdict … It is not the courts’ place to substitute our evaluations for those of the jurors … Of note, we are reluctant to reverse jury verdicts in music cases on appeal, given the difficulty of proving access and substantial similarity.”

Applying this stringent standard, it was not surprising that the Court of Appeals affirmed the denial of a new trial.

In addition to its review of the district court’s denial of the motion for a new trial, the Ninth Circuit considered two separate arguments for reversal asserted by the Thicke-Williams parties:  that the jury instructions regarding “subconscious copying” and “substantial similarity” were erroneous; and that the district court improperly admitted certain testimony of The Gaye parties’ experts. On the jury instructions, the court concluded that they accurately reflected Ninth Circuit law and that, when considered along with the jury instructions as a whole, they provided correct legal guidance for the jury. On the  experts’ testimony, the court held that there was no error in its admission because there was a sufficient basis for their musicologist’s testimony comparing musical elements implied in the lead sheet for “Got To” with elements of “Blurred Lines,” and that the testimony of their second  expert, Dr. Monson, using “mash-ups” to demonstrate structural, harmonic and melodic commonalities between the songs, was similar to expert testimony permitted in prior Ninth Circuit cases.

The court also noted that both Judith Finell and Dr. Monson were subject to extensive cross-examination, and that the jury also had an opportunity to consider the equally detailed expert testimony of Sandy Wilbur, the musicologist for Williams-Thicke, who disagreed in virtually every respect with The Gaye parties’ musicologist. The jury’s resolution of the resulting credibility issues was not deemed appropriate for reconsideration on appeal.

In contrast, the dissent characterized much of the expert testimony as comprising improper legal opinion rather than legitimate factual debate. In the Ninth Circuit, an extrinsic (or objective) test is applied to determine copying, and on this prong of the infringement analysis expert testimony and comparison is permitted. However, expert testimony is not permitted on the second prong of the Ninth Circuit determination of infringement—the “intrinsic” (or subjective) test. The dissent would have treated the contrasting experts’ testimony as calling for a judicial determination under the extrinsic test, as a matter of law, concerning whether the proffered similarities comprise protected (copyrightable) expression, rather than as a factual dispute suitable for a credibility determination by the jury.  The dissent would have remanded with instructions for the district court to enter a judgment of non-infringement as a matter of law based on her view that the similarities were in the nature of nonprotectable elements of a genre.

Sui Generis Factors

There are a number of factors that led to the jury verdict that were not discussed in the Amended Opinion, but nevertheless were significant in the result below. These factors concern an issue that is most basic to every trial—credibility. As noted above, trial counsel for The Gaye parties focused on credibility in his closing argument, and we quoted above his reference to the record executive who spontaneously, in a pre-litigation statement, observed the great similarity between ”Blurred Lines” and “Got To.” Of perhaps even greater impact were pre-litigation statements made by Mssrs. Williams and Thicke revealing how inspired they were by “Got To” and how they tried to create the same feeling with “Blurred Lines.”

Of course, these statements could arguably be merely indicative of an attempt by Williams and Thicke to create a song in the same genre, but using terms such as “the same feeling,” the “same groove,” and “inspired by” could also be interpreted by the jury as falling within one of the Ninth Circuit’s legal definition of “substantial similarity” under the intrinsic test: “[The intrinsic test asks whether the ordinary reasonable person would find the total concept and feel of the works to be substantially similar.” Although the jury instructions stated that “substantial similarity requires similarity of protected expression,” once the issue is put to members of the jury it is anybody’s guess whether, in considering the works’ “total concept and feel,” they could effectively denude the works’ nonprotectable elements, or, for that matter, whether even trained lawyers and judges could do so.

For these reasons, and particularly in this case, pre-litigation admissions of overall similarity of feel, inspiration and intention by the accused authors, even if later watered down or re-contextualized at trial, may have led the jury to find infringement, notwithstanding the infringers’ proclaimed purest of intentions to replicate only a style, or to create a new work within a genre. When combined with other pre-litigation statements, such as the record executive’s, and the impression conveyed by an online interviewer that Williams had “sampled” “Got To” in “Blurred Lines,” it would appear that an unusual confluence of factors negatively impacting Williams-Thicke’s credibility is unlikely to find a comparable fact pattern in future infringement litigation. Thus, this jury verdict, as affirmed in the Amended Opinion, is more sui generis than indicative of a possible trend toward improper protection of a genre. We would therefore venture to say that the sky is still the sky, and that the forecasts for a resulting constriction in the output of American songwriters will not stand the test of time.

Robert J. Bernstein practices law in The Law Office of Robert J. Bernstein.  Robert W. Clarida is a partner at Reitler, Kailas & Rosenblatt and author of the treatise Copyright Law Deskbook (BNA).