Unless you have been living under a rock, you are familiar with Williams v. Gaye, the high profile copyright infringement litigation between Marvin Gaye’s heirs and the creators of the 2013 tune “Blurred Lines”. The litigation involved Gaye’s hit song, “Got To Give It Up”, released in 1977. Fast forward decades to when “Blurred Lines” is released by Pharrell Williams, Robin Thicke and Clifford Harris, Jr. (“T.I”), which captures a similar sound and comparable style to “Got To Give It Up.” It is also later discovery that Thicke saw Gaye as a musical inspiration and that he reportedly told Williams they should make something similar to Gaye’s song to create a similar groove.

Shortly after “Blurred Lines” was released, the Gaye family alleged that “Blurred Lines” infringed the copyright on “Got To Give It Up”. In response, Thicke, Williams and Harris sought a declaratory judgment of no infringement. However, to no one’s surprise, the Gaye family countersued for copyright infringement. After a seven-day jury trial in March 2015, a California jury found that “Blurred Lines” and “Got to Give it Up” were substantially similar and the district court awarded the Gaye estate more than $5 million in damages and 50% royalties for future songwriter and publishing revenues. Both parties then appealed.

Argument in the Ninth Circuit focused on the importance of the Gaye’s lead sheet for the song, which was on deposit at the Copyright Office, and the extent to which the sound recording of “Got To Give It Up” could be used for the “substantial similarity” determination. Gaye’s song, having been released before the 1976 Copyright Act became effective, was governed by the Copyright Act of 1909. Pursuant to the Copyright Act of 1909, only the musical composition, and not the sound recording, was federally protected. Thus, it became unclear whether copyright protection for musical compositions under the Copyright Act of 1909 extended only to the sheet music itself or whether the commercial sound recordings were admissible evidence to shed light on the scope of the underlying copyright.

The Ninth Circuit upheld the district court decision finding “Blurred Lines’ infringed the copyright in “Got To Give It Up” and agreed that “Got to Give It Up” was entitled to broad protections, but nevertheless accepted the district court determination that the scope of copyright for “Got To Give It Up” was limited to the lead sheet. In the majority opinion, the Court emphasized that its “decision hinges on settled procedural principles and the limited nature of our appellate review, dictated by the particular posture of this case and controlling copyright law.” The majority addressed the elements required for copyright infringement, namely, ownership of a copyrighted work and copying of protectable elements of that work, shown by direct evidence of copying or access and substantial similarity. The Court affirmed the copyright infringement holding after finding the Gaye estate met its burden of demonstrating, through expert testimony, that the similarity between the two songs was substantial and related to protected elements of the copyrighted work. The Court further held that because there was a full trial on the merits, the district court’s order denying summary judgment was not reviewable, jury instructions were proper, expert testimony was admissible and that damages were neither excessive nor speculative. The Court did reverse the finding that Harris (“T.I.”) was vicariously liable.

In other words, the Ninth Circuit failed to decide the issue of whether the commercial sound recording would be admissible to determine the scope of the underlying copyright. In so doing, the Ninth Circuit provided no real guidance in resolving one of the main issues of the litigation, namely, where one must draw the line with inspiration, to avoid copyright infringement of musical works.

Although many musicians were hopeful the Ninth Circuit would provide some clarity on issues at the core of this litigation, the majority’s ruling stuck “a devastating blow to future musicians and composers everywhere” by allowing copyright protection in musical “grooves” or styles (see Judge Jacquelyn Nguyen’s dissenting opinion). Judge Nguyen, in her dissent, noted that the songs had different harmonies, rhymes, lyrics and melodies and that Gaye’s experts did not successfully establish a legally sufficient basis for a finding of infringement. She warned that the ruling allowed for an unprecedented copyright of a “musical style,” even though the majority advised the decision was made on “narrow grounds.”

In light of this ruling, musicians and other music industry personnel must tread lightly when acknowledging inspiration and influence, as this ruling may open the floodgates to litigious copyright owners asserting claims of copyright infringement to protect the style and groove of their songs.

As an aside, in July 2018, the Ninth Circuit issued an order denying a petition to rehear its “Blurred Lines” decision en banc and amended its original opinion. In the amended opinion, the Ninth Circuit carefully withdrew all references to the “inverse ratio rule”, which provides that if the plaintiff establishes a high degree of access to its work by the defendants, a finding of copyright infringement may be based upon a lesser degree of similarity. As a matter of basic copyright law, determining whether there is a substantial similarity of protectable expression between two works is achieved by looking at the works and analyzing them, and not based on the level of defendant’s access to the plaintiff’s work. In sum, plaintiff must still prove substantial similarity, regardless of the level of access defendant had to plaintiff’s work, even when the defendant in fact copied from the plaintiff’s work. The inverse ratio rule was rejected more than 50 years ago by the Second Circuit and it seems, the Ninth Circuit may have finally caught up.

Michelle is a Partner at Swanson, Martin & Bell, LLP and is licensed in Illinois and Indiana state and federal courts. With a Masters of Law in Intellectual Property, Michelle is the Vice Chair of the firm’s Entertainment and Media Practice Group and a member of the firm’s Intellectual Property Litigation and Transactional Services Practice Group. Her copyright and trademark practice focuses on intellectual property prosecution and related transactions, including performing trademark availability searches and providing advisory opinions, as well as preparing and filing trademark applications with the United States Patent and Trademark Office, and copyright registrations with the United States Copyright Office. Michelle also assists with the oversight of the firm’s extensive trademark docket and conducts required monitoring and maintenance of clients’ trademark portfolios, as well as provides clients with corporate counseling and innovative corporate solutions to address their respective needs.

Michelle further provides comprehensive representation in the drafting, negotiating and executing of various entertainment-related contracts and licenses, including but not limited to band member agreements, artist management agreements, session player agreements, performance agreements, sound engineer agreements, recording and personal services agreements, publishing agreements and licensing agreements. As a former artist manager, she has implemented many facets of national and regional tours, assembled benefit and charity concerts, communicated with various industry personnel, facilitated radio and internet publicity campaigns, arranged radio, print and internet interviews, and assisted in the development of press kits and websites promoting local talent. Michelle has also guest lectured on entertainment and intellectual property-related topics at The John Marshall Law School, DePaul University College of Law, Chicago-Kent College of Law and Azusa Pacific University (CA), as well as served as a panelist on various other entertainment-related continuing legal education courses. Michelle is an author and editor of the Litigation and Industry Updates Column of the ABA’s Entertainment & Sports Lawyers Journal and has also had numerous articles published by the Chicago Music Guide.

In addition, Michelle serves as Chair of Swanson Martin & Bell, LLP’s Community Service/Pro Bono Committee and proudly volunteers her time as President of the Associate Board and as a pro bono attorney to Lawyers for the Creative Arts, a non-profit organization that provides free legal services to eligible clients in all areas of the arts. She also currently serves as Events Chair for the Chicago Chapter of Women in Music, a non-for-profit organization dedicated to fostering equality in the music industry through the support and advancement of women. She recently served as Chair of the Young Lawyers Division for the Illinois Association of Defense Trial Counsel, where she was recognized as the Rising Star recipient and received a Meritorious Service Award and President’s Commendation.

DISCLAIMER: The information contained in these articles constitutes general information and guidance and shall not be construed as legal advice applicable to or provided for any particular person or entity, and shall not be deemed to create an attorney-client relationship between Ms. Wahl and anyone who elects to read and/or rely, to any extent, on the material provided herein. In that respect, Ms. Wahl hereby expressly and specifically disclaims any such legal relationship, but encourages any person or entity seeking a legal advocate pertaining to the issues addressed and discussed herein to contact her directly for further information. Ms. Wahl may be reached at Swanson, Martin & Bell, LLP (330 N. Wabash, Suite 3300, Chicago, IL 60611 or via telephone at her direct line: (312) 222-8585 or e-mail at: mwahl@smbtrials.com.