Wrecking Ball? Why Proving Copyright Infringement In Musical Works Is More Difficult Than You Think

A $300M claim is nothing to shake a stick at, and can be heck of a 'wrecking ball' if not handled correctly.

Copyright infringement of musical works can be a murky area. Indeed, the central focus of copyright law in the U.S. is to protect original works, but one would be hard pressed to find an artist that has not been influenced by other artists.  There is a delicate balance between originality and the protection of legitimate, artistic expression that is influenced by other works.  Copyright law protects many different elements of expression, but certain elements (such as song titles) are not protected.  There is no hard and fast rule on how much creativity is enough to trigger “originality” under the law, but in many cases, the bigger issue is whether the musical work in question was influenced by underlying work, or simply copied it.

No artist is immune, and recent history is littered with cases addressing this very point. Just last week, pop artist Miley Cyrus was sued by Michael May (a Jamaican artist who performs under the name “Flourgon”), claiming that her hit song “We Can’t Stop” copied lyrics from his 1988 reggae track “We Run Things.”  Specifically, Flourgon claims that his lyrics, “we run things, things don’t run we” were not only directly copied by her, but featured throughout “We Can’t Stop.”  Interestingly, Flourgon claims the phrase stems from the “unique phraseology and linguistic combinations” of Jamaican Patois (more on that later).  Frankly, it would be more accurate to state that her song features the exact seven words a few times in the song, yet it begs the question:  Did Miley Cyrus copy the phrase that was included it in her song?  The answer may be more subtle than you think.

Proving copyright infringement is a subtle and not-so straightforward a process, yet this is by design — copyright covers many different types of expression, and the test for infringement must therefore be equally elastic. Basically, a copyright infringement action requires a plaintiff to prove (1) ownership of a valid copyright, and (2) actionable copying by the defendant of constituent elements of the work that are originalFeist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991) (emphasis added).  Ownership of a valid copyright is established by proving (i) the originality and copyrightability of the material, and (ii) compliance with the statutory formalities. Norma Ribbon & Trimming, Inc. v. Little, 51 F.3d 45, 47 (5th Cir. 1995) (emphasis added). The U.S. Supreme Court in Feist specifically stated that “[o]riginality is a constitutionally mandated prerequisite for copyright protection.”  See Feist, 499 U.S. at  344.  This basically means that the work must by original to the author (as opposed to copied from another) and must exhibit some “modicum of originality” (as opposed to simply listing facts, such as white pages listings in a telephone directory).

Assuming that there is ownership of a valid copyright, the analysis then turns on proof of actual copying.  What many people fail to realize is that not all copying is legally actionable under copyright law. To establish actionable copying under the Copyright Act, a plaintiff must prove (i) the defendant engaged in factually copying the protected material (proven by direct and/or circumstantial evidence), and (ii) that there is a “substantial similarity” between the two works. Factual copying can be proven with evidence that (1) the defendant had access to the copyrighted work before creation of the allegedly infringing work, and (2) the two works are probatively similar to one another. Positive Black Talk Inc. v. Cash Money Records, Inc., 394 F.3d 357, 368 (5th Cir. 2004).  Access requires more than a possibility that the alleged infringer may have seen the prior work — there must be a “reasonable opportunity to view” or otherwise listen to the allegedly infringed work.  Ferguson v. National Broadcasting Co., 584 F.2d 111, 113 (5th Cir. 1978). So, factual copying requires proof of access and probative similarity.  If factual copying is found, then the analysis turns on whether there is “substantial similarity” between the two works (which can get very complicated because the various federal courts apply different tests to determine it — we’ll leave that for another day).

In the case of “We Can’t Stop,” it’s a safe bet that Ms. Cyrus has a number of defenses that will be raised, and a few stick out more than others.  Scènes à faire (French for “scenes that must be done”) refers to  the doctrine that certain common elements are not protectable expression (such as a 12-bar blues progression in blues music).  The plaintiffs have said that the phrase is part of Jamaican Patois, so there may be a plausible argument that the phrase constitutes scènes à faire and is not protectable. Moreover, fair use is not out of the question either — although there is no parody apparent, the federal courts apply a four-factor test for fair use that could plausibly weigh in the defendants’ favor.

Further, there is a question over independent creation.  On its face, Flourgon is referencing a reggae track from 1988, the availability of which is entirely unclear.  Whether Ms. Cyrus had “a reasonable opportunity” to hear that track will need to be fleshed out in discovery.  That said, copyright infringement requires unauthorized copying — if Ms. Cyrus did not have access to the track and otherwise came up with the phrase on her own, there can be no copyright infringement. Now, according to Wikipedia, “We Can’t Stop” was “written and produced by Mike Will Made It, P-Nasty, and Rock City, with additional songwriting provided by Ms. Cyrus, Doug E. Fresh, and Slick Rick.”  Whether any of these contributors had access to the track or otherwise copied it will be interesting to see (unless the case settles beforehand, which is always a possibility given the costs of such litigation).  In any event, independent creation is always an intriguing possibility, if not always the most plausible.

It’s too early to tell what will happen in this case, but is serves as an interesting example of how asserting copyright infringement involving lyrics is fraught with difficulties especially where prior works that may have influenced the artist are concerned.  From this author’s perspective, it seems that plaintiffs may be taking a shot at a potential payday — there are legitimate questions over the phrase and whether there was actionable copying. So Miley, in the unlikely event you are reading this column, take heart in the foregoing.  There may be a lot of questions about this claim, but a $300M claim is nothing to shake a stick at, and can be heck of a “wrecking ball” if not handled correctly.

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Tom Kulik is an Intellectual Property & Information Technology Partner at the Dallas-based law firm of Scheef & Stone, LLP. In private practice for over 20 years, Tom is a sought-after technology lawyer who uses his industry experience as a former computer systems engineer to creatively counsel and help his clients navigate the complexities of law and technology in their business. News outlets reach out to Tom for his insight, and he has been quoted by national media organizations. Get in touch with Tom on Twitter (@LegalIntangibls) or Facebook (www.facebook.com/technologylawyer), or contact him directly at tom.kulik@solidcounsel.com.

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