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“Probative Similarity” and “Substantial Similarity”
  • 1 Boisson v. Banian (2001)

    1

    273 F.3d 262 (2nd Cir. 2001)

    2
    JUDI BOISSON, PLAINTIFF-APPELLANT,
    3
    AMERICAN COUNTRY QUILTS AND LINENS, INC., D/B/A/ JUDI BOISSON AMERICAN COUNTRY, PLAINTIFF-COUNTER-DEFENDANT-APPELLANT,
    v.
    BANIAN, LTD., & VIJAY RAO, DEFENDANTS-COUNTER-CLAIMANTS-APPELLEES,
    4
    JOHN DOES I-V, DEFENDANTS.
    5

    Docket No. 00-7300.
    August Term, 2000.
    UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT
    Argued November 15, 2000.
    Decided December 3, 2001.

    6

    Plaintiff Judi Boisson and plaintiff/counter-defendant American Country Quilts and Linens, Inc., d/b/a Judi Boisson American Country, appeal from a judgment entered February 28, 2000 in the United States District Court for the Eastern District of New York (Platt, J.), which dismissed plaintiffs' claims of copyright infringement following a bench trial.

    7

    Affirmed in part; reversed in part; and remanded.

    8

    [265] Paul R. Levenson, New York, New York (Kaplan Gottbetter & Levenson, Llp, New York, New York, of counsel), for Plaintiff Judi Boisson and American Country Quilts and Linens, Inc.

    9

    G. Roxanne Elings, New York, New York (Sudipta Rao, Greenberg Traurig, Llp, New York, New York, of counsel), for Defendants Banian, Ltd. and Vijay Rao.

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    Before: Cardamone, Calabresi, Circuit Judges, and HAIGHT[1], District Judge.

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    Cardamone, Circuit Judge.

    12

    Plaintiffs Judi Boisson and her wholly-owned company, American Country Quilts and Linens, Inc., d/b/a Judi Boisson American Country, brought suit in the United States District Court for the Eastern District of New York (Platt, J.), alleging that defendants Vijay Rao and his wholly-owned company Banian Ltd., illegally copied two quilt designs for which plaintiffs had obtained copyright registrations. Following a bench trial, the trial court, in [266] denying the claims of copyright infringement, ruled that defendants' quilts were not substantially similar to what it deemed were the protectible elements of plaintiffs' works. Plaintiffs have appealed this ruling. Copying the creative works of others is an old story, one often accomplished by the copyist changing or disfiguring the copied work to pass it off as his own. Stealing the particular expression of another's ideas is rightly condemned in the law because pirating the expression of the author's creative ideas risks diminishing the author's exclusive rights to her work, or as a poet said, taking all that she may be or all that she has been.

    13

    In reviewing this decision, we find plaintiffs' copyrights cover more elements than were recognized by the trial court, and that though the trial court articulated the proper test when comparing the contested works, its application of that test was too narrow. It failed not only to account for the protectible elements we identify, but also to consider the overall look and feel brought about by the creator's arrangement of unprotectible elements. Hence, we disagree with part of the district court's ruling and find some instances of copyright infringement. The trial court's disposition of those claims must therefore be reversed and remanded for a determination as to what remedies should be awarded.

    14
    BACKGROUND
    15

    Judi Boisson has been in the quilt trade for over 20 years, beginning her career by selling antique American quilts -- in particular, Amish quilts -- she purchased in various states throughout the country. By the late 1980s, having difficulty finding antique quilts, she decided to design and manufacture her own and began selling them in 1991 through her company. Boisson published catalogs in 1993 and 1996 to advertise and sell her quilts. Her works are also sold to linen, gift, antique, and children's stores and high-end catalog companies. Various home furnishing magazines have published articles featuring Boisson and her quilts.

    16

    In 1991 plaintiff designed and produced two alphabet quilts entitled "School Days I" and "School Days II." Although we later describe the quilts in greater detail, we note each consists of square blocks containing the capital letters of the alphabet, displayed in order. The blocks are set in horizontal rows and vertical columns, with the last row filled by blocks containing various pictures or icons. The letters and blocks are made up of different colors, set off by a white border and colored edging.

    17

    Boisson testified at trial that she worked on these quilts at home where she drew the letters by hand, decided on their placement in the quilts, picked out the color combinations and chose the quilting patterns. She obtained certificates of copyright registration for each quilt on December 9, 1991. All of her quilts, as well as the catalogs advertising them, include a copyright notice.

    18

    Defendant Vijay Rao is the president and sole shareholder of defendant Banian Ltd., incorporated in November 1991. Rao is an electrical engineer in the telecommunications industry who became interested in selling quilts in February 1992. To that end, he imported from India each of the three alphabet quilts at issue in this case. He sold them through boutique stores and catalog companies. The first quilt he ordered was "ABC Green Version I," which he had been shown by a third party. Defendants have not sold this pattern since 1993. "ABC Green Version II" was ordered in September 1994, based upon modifications to "ABC Green Version I" requested by Rao. Defendants reordered this quilt once in April 1995, and then [267] stopped selling it in March 1997. Regarding "ABC Navy," Rao testified that he designed the quilt himself based upon "ABC Green Version II" and imported finished copies in November 1995. Defendants voluntarily withdrew their "ABC Navy" quilts from the market in November 1998 following the initiation of this litigation.

    19

    Plaintiffs filed their suit in March 1997 seeking relief from defendants for copyright infringement, false designation of origin and unfair competition. Plaintiffs also alleged causes of action pertaining to a quilt involving a star design, but the parties agreed to dismiss those claims. Defendants counterclaimed against American Country Quilts and Linens for interference with commercial relations.

    20

    The district court held a three-day bench trial in October 1999 at which documentary evidence was received and a number of witnesses testified. The witnesses were Boisson; her daughter, who related having seen and photographed one of defendants' alphabet quilts at a trade show; plaintiffs' expert witness, who testified regarding the similarities between plaintiffs' and defendants' quilts; defendant Rao; and defendants' expert witness, who testified as to the history of alphabet quilts. At the conclusion of the trial, the district court dismissed all of plaintiffs' claims, dismissed defendants' counterclaim and denied defendants' motion for attorney's fees in a memorandum and order dated February 14, 2000. Plaintiffs have appealed from the judgment entered February 28, 2000, challenging only that part of the order and judgment that dismissed their copyright infringement claims.

    21
    DISCUSSION
    22

    Copyright infringement is established by proving "ownership of a valid copyright" and "copying of constituent elements of the work that are original." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). Throughout the following analysis the key consideration is the extent to which plaintiffs' work is original. See id. at 361-64, 111 S. Ct. 1282.

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    I. Ownership of a Valid Copyright
    24

    The Copyright Act provides that a "certificate of [copyright] registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright." 17 U.S.C. § 410(c) (1994). Boisson secured certificates of registration for both "School Days" quilts in 1991, the same year in which she designed them, so that we must presume she holds valid copyrights. Although such a presumption may be rebutted, Folio Impressions, Inc. v. Byer Cal., 937 F.2d 759, 763 (2d Cir. 1991), the district court found there was insufficient proof to support defendants' argument that plaintiffs deliberately misled the Copyright Office when submitting their applications. By not challenging that finding on appeal, defendants concede the validity of plaintiffs' copyrights.

    25
    II. Actual Copying of Plaintiffs' Work
    26

    The element of copying breaks down into two parts. Plaintiffs must first show that defendants "actually copied" their quilts. Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739, 747 (2d Cir. 1998). Actual copying may be established by direct or indirect evidence. Laureyssens v. Idea Group, Inc., 964 F.2d 131, 140 (2d Cir. 1992). Indirect evidence may include proof of "access to the copyrighted work, similarities that are probative of copying between the works, and expert testimony." Id. The district court made a finding that actual copying had occurred, and because defendants do not dispute that finding, [268] actual copying is also established. But not all copying results in copyright infringement, even if the plaintiff has a valid copyright. Feist Publ'ns, 499 U.S. at 361. Plaintiffs must also demonstrate "substantial similarity" between defendants' quilts and the protectible elements of their own quilts. Streetwise Maps, 159 F.3d at 747; accord Laureyssens, 964 F.2d at 140.

    27
    III. Originality
    28

    Plaintiffs' certificates of registration constitute prima facie evidence of the validity not only of their copyrights, but also of the originality of their works. Gaste v. Kaiserman, 863 F.2d 1061, 1066 (2d Cir. 1988) ("We also note that on the issue of originality, as compared to the issue of compliance with statutory formalities, it is even clearer that copyright registration created a presumption of validity."). Yet copyright protection extends only to a particular expression of an idea, and not to the idea itself. Folio Impressions, 937 F.2d at 765; accord Beaudin v. Ben & Jerry's Homemade, Inc., 95 F.3d 1, 2 (2d Cir. 1996); Reyher v. Children's Television Workshop, 533 F.2d 87, 91 (2d Cir. 1976). Simply because a work is copyrighted does not mean every element of that work is protected.

    29

    "The threshold question is what characteristics of [plaintiffs'] design have gained copyright protection." Herbert Rosenthal Jewelry Corp. v. Honora Jewelry Co., 509 F.2d 64, 65 (2d Cir. 1974) (per curiam); see also Folio Impressions, 937 F.2d at 762-65 (determining at the outset which elements of a fabric design were copyrightable). Inasmuch as protection extends only to those components of a work that are original to the author, originality is "the sine qua non of copyright." Feist Publ'ns, 499 U.S. at 348. We now review Boisson's works to determine the extent to which they are original.

    30

    Copyright law does not define the term "originality." Rather, courts have derived its meaning from art. I, § 8, cl. 8 of the United States Constitution, which authorizes Congress "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." See Feist Publ'ns, 499 U.S. at 346. Originality does not mean that the work for which copyright protection is sought must be either novel or unique, Trade-Mark Cases, 100 U.S. 82, 94 (1879), it simply means a work independently created by its author, one not copied from pre-existing works, and a work that comes from the exercise of the creative powers of the author's mind, in other words, "the fruits of [the author's] intellectual labor." Id. The Supreme Court gave an example when it said, in upholding the validity of a copyright to a photo of Oscar Wilde, the photographer made a "'useful, new, harmonious, characteristic, and graceful picture... entirely from his own mental conception, to which he gave visible form by posing the [subject] and arranging the costume, draperies, and other various accessories... so as to present graceful outlines.'" Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 60 (1884).

    31

    If a work is not original, then it is unprotectible. Likewise an element within a work may be unprotectible even if other elements, or the work as a whole, warrant protection. Some material is unprotectible because it is in the public domain, which means that it "is free for the taking and cannot be appropriated by a single author even though it is included in a copyrighted work." Computer Assocs. [269] Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 710 (2d Cir. 1992).

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    Ruling of the Trial Court
    33

    Following the bench trial, the district court found some elements of plaintiffs' quilts were unprotectible (i.e., not original) because they were in the public domain: (1) the alphabet, (2) formation of the alphabet using six rows of five blocks across and four icons in the last row, and (3) color. Although that court expressed doubt as to whether copyright protection would extend to the shapes of the letters used in the quilts, it did not rule on that issue. These determinations as to originality may be overturned only if clearly erroneous. See Matthew Bender & Co. v. West Publ'g Co., 158 F.3d 674, 681 (2d Cir. 1998). A finding is clearly erroneous if, upon reviewing the entire record, we are left with "the definite and firm conviction" that a mistake was made. Anderson v. City of Bessemer, 470 U.S. 564, 573 (1985).

    34
    1. Use of Alphabet
    35

    Passing now to the court's ruling, it correctly determined that the alphabet is in the public domain, a finding plaintiffs do not dispute. Nor could they object, considering the applicable regulations provide no copyright protection for "familiar symbols or designs" or "mere variations of... lettering." 37 C.F.R. § 202.1(a) (2000).

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    2. Layouts of Alphabet
    37

    To support its finding that the layouts of plaintiffs' quilts were not protected by copyright, the district court relied upon evidence submitted by defendants showing that alphabet quilts have been in existence for over a century, suggesting that such layouts were also in the public domain. One circa 1900 quilt displayed letters and icons in blocks arranged in the same format used in "School Days I." From this evidence the court reasoned that such formation belonged to the public domain. Although it made specific findings only as to the block formation in "School Days I," we presume for purposes of our discussion that, in the absence of a specific finding as to the "School Days II" format, the trial court intended its findings on unprotectibility to extend to the layouts of both of plaintiffs' quilts.

    38

    These findings are clearly erroneous. Not only did plaintiffs obtain valid certificates of copyright registration, but also the alphabetical arrangement of the letters in the five-by-six block format required some minimum degree of creativity, which is all that is required for copyrightability. Moreover, unlike the use of letters, no federal regulation establishes that the use of this layout is unprotectible. These factors create a presumption that the layout is original and therefore a protectible element. Therefore, if defendants want to contest this presumption, they bear the burden of proving that this particular layout is not original. Cf. Gaste, 863 F.2d at 1064 (explaining that burden of proof is on defendant in infringement action who claims the plaintiff's copyright registration is invalid). At trial, defendants asserted that the particular layout of plaintiffs' quilts was copied from the public domain, but they presented insufficient proof to establish that proposition.

    39

    As noted earlier, a plaintiff attempting to prove actual copying on the part of a defendant is entitled to use direct or indirect evidence. Indirect evidence of access and substantial similarity to the plaintiff's work can "support an inference" that copying took place. Streetwise Maps, 159 F.3d at 747. Scholars disagree as to whether a defendant may also rely upon circumstantial evidence to show that a plaintiff copied from the public domain. [270] Compare Jessica Litman, The Public Domain, 39 Emory L.J. 965, 1002-03 (1990) (explaining that a defendant is not entitled to any inference that a plaintiff copied from the public domain simply by showing access and substantial similarity to the public domain work), with Russ VerSteeg, Rethinking Originality, 34 Wm. & Mary L. Rev. 801, 874-75 & n.328 (1993) (permitting a defendant to show copying on the part of the plaintiff through circumstantial evidence that the plaintiff had access and created a work substantially similar to a public domain work). Assuming arguendo that an inference is allowable, defendants in the case at hand nevertheless fall short of proving Boisson copied from the public domain.

    40

    Access may be established directly or inferred from the fact that a work was widely disseminated or that a party had a reasonable possibility of viewing the prior work. See generally 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright, § 13.02[A] (2001) (describing the ways in which access can be shown). Defendants proffered no evidence that Boisson owned an alphabet quilt prior to designing "School Days I" or "School Days II." Instead they point to Boisson's affirmative answer when asked at her deposition whether she had "seen an alphabet design in any other quilts." Boisson was not asked what these quilts looked like or when she saw them relative to designing her own quilts, or whether they bore any resemblance to her own designs.

    41

    Moreover, having seen an alphabet design would not conclusively establish that Boisson saw one from which she copied the arrangement of letters for her "School Days" quilts. As defendants' own proof reveals, alphabet quilts are not limited to the formations found in either the 1900 quilt or plaintiffs' quilts. Some quilts display letters out of order; some display three letters in the first and last rows with five letters in each of the middle rows; one has six letters in rows with icons placed in the border; another has varying numbers of letters in each row with icons or quilting designs in the remaining blocks; while still others have five rows of five letters with the "Z" by itself in a corner or followed by numbers representing the year the quilt was made. Nor are all letters of the alphabet always displayed or even displayed with each letter in its own block.

    42

    Defendants also failed to show that quilts with layouts similar to the "School Days" quilts were so widely disseminated or known as to infer that Boisson reasonably would have seen one before designing her own works. In particular, bearing in mind that Boisson testified as to her specialty in Amish quilts, among the books submitted by defendants into evidence for purposes of showing copying on the part of plaintiffs, only two pertained specifically to Amish designs -- Rachel & Kenneth Pellman, The World of Amish Quilts (1998) and Rachel & Kenneth Pellman, A Treasury of Amish Quilts (1998). Neither book, however, contains an alphabet quilt, although they do contain photographs of other quilts owned by Boisson. Further, Boisson testified at her deposition that she was unaware of any Amish alphabet quilts and had never seen one.

    43

    Absent evidence of copying, an author is entitled to copyright protection for an independently produced original work despite its identical nature to a prior work, because it is independent creation, and not novelty that is required. See 1 Nimmer & Nimmer, supra, § 2.01[A], at 2-9; see also Feist Publ'ns, 499 U.S. at 345 (explaining that a work is "original" for the purposes of copyright law so long as it was "independently created"). Judge Jerome Frank said that an "'author' is entitled to a copyright if he independently [271] contrived a work completely identical with what went before." Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 103 (2d Cir. 1951).

    44
    3. Shapes of Letters
    45

    The trial judge made no explicit finding with respect to the shapes of the letters of the alphabet. Instead, the court stated it was "questionable" whether plaintiffs could copyright the shapes of the letters used, and it cited the regulation that provides "mere variations of typographic ornamentation" are not copyrightable. 37 C.F.R. § 202.1(a). At this juncture, we hesitate to say that letter shapes are unprotectible in this context, but in the absence of a trial court finding, it is not necessary for us to reach this issue.

    46
    4. Color
    47

    Color by itself is not subject to copyright protection. See 37 C.F.R. § 202.1(a). Nevertheless, "[a]n original combination or arrangement of colors should be regarded as an artistic creation capable of copyright protection." 1 Nimmer & Nimmer, supra, § 2.14, at 2-178.4. We have previously declined to single out color as an individual element when conducting a copyright infringement analysis. In Streetwise Maps, 159 F.3d at 748, we determined that "instead of examining the [plaintiff's and defendants'] maps feature-by-feature, viewing the individual colors chosen by [plaintiff] as the protected elements upon which defendants encroached, we focus on the overall manner in which [plaintiff] selected, coordinated, and arranged the expressive elements in its map, including color, to depict the map's factual content" (emphasis added). We reached this conclusion after considering the following two Circuit precedents.

    48

    Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996 (2d Cir. 1995), involved the copyrightability of children's sweater designs. In finding copyright violations, we considered the plaintiff's original contributions to include: "(1) selecting leaves and squirrels as its dominant design elements; (2) coordinating these design elements with a 'fall' palette of colors and with a'shadow-striped'... or a four-paneled... background; and (3) arranging all the design elements and colors into an original pattern for each sweater." Id. at 1004. Similarly, in Novelty Textile Mills, Inc. v. Joan Fabrics Corp., 558 F.2d 1090, 1093 n.5 (2d Cir. 1977), we viewed color in conjunction with the plaid fabric designs utilized by the parties.

    49

    Taken together, these cases teach that even though a particular color is not copyrightable, the author's choice in incorporating color with other elements may be copyrighted. This lesson is in accord with the holding of Feist Publications. See 499 U.S. at 348 ("[C]hoices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity, are sufficiently original that Congress may protect such compilations through the copyright laws."). Boisson testified that she selected on a trial-and-error basis what colors to use, without reference to any existing work. This approach, combined with Boisson's other creative choices, leads us to conclude it was clear error for the district court to find that plaintiffs' choice of colors in the "School Days" quilts was an unprotectible element.

    50
    IV. Substantial Similarity: Ordinary Observer v. More Discerning Observer
    51

    Having found that plaintiffs' quilts are entitled to copyright protection and that defendants actually copied at least some elements of plaintiffs' quilts, we turn [272] our analysis to defendants' contention that its quilts were not substantially similar to plaintiffs'. We review de novo the district court's determination with respect to substantial similarity because credibility is not at stake and all that is required is a visual comparison of the products -- a task we may perform as well as the district court. Folio Impressions, 937 F.2d at 766; accord Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, Inc., 166 F.3d 65, 70 (2d Cir. 1999).

    52

    Generally, an allegedly infringing work is considered substantially similar to a copyrighted work if "the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same." Folio Impressions, 937 F.2d at 765. Yet in Folio Impressions, the evidence at trial showed the plaintiff designer had copied the background for its fabric from a public domain document and "contributed nothing, not even a trivial variation." 937 F.2d at 764. Thus, part of the plaintiff's fabric was not original and therefore not protectible. We articulated the need for an ordinary observer to be "more discerning" in such circumstances.

    53

    [T]he ordinary observer would compare the finished product that the fabric designs were intended to grace (women's dresses), and would be inclined to view the entire dress -- consisting of protectible and unprotectible elements -- as one whole. Here, since only some of the design enjoys copyright protection, the observer's inspection must be more discerning.

    54

    Id. at 765-66. Shortly after Folio Impressions was decided, we reiterated that a "more refined analysis" is required where a plaintiff's work is not "wholly original," but rather incorporates elements from the public domain. Key Publ'ns, Inc. v. Chinatown Today Publ'g Enters., Inc., 945 F.2d 509, 514 (2d Cir. 1991). In these instances, "[w]hat must be shown is substantial similarity between those elements, and only those elements, that provide copyrightability to the allegedly infringed compilation." Id. In contrast, where the plaintiff's work contains no material imported from the public domain, the "more discerning" test is unnecessary. Hamil Am., Inc. v. GFI, 193 F.3d 92, 101-02 (2d Cir. 1999), cert. denied, 528 U.S. 1160 (2000). In the case at hand, because the alphabet was taken from the public domain, we must apply the "more discerning" ordinary observer test.

    55

    In applying this test, a court is not to dissect the works at issue into separate components and compare only the copyrightable elements. Knitwaves, 71 F.3d at 1003. To do so would be to take the "more discerning" test to an extreme, which would result in almost nothing being copyrightable because original works broken down into their composite parts would usually be little more than basic unprotectible elements like letters, colors and symbols. Id. This outcome --affording no copyright protection to an original compilation of unprotectible elements -- would be contrary to the Supreme Court's holding in Feist Publications.

    56

    Although the "more discerning" test has not always been identified by name in our case law, we have nevertheless always recognized that the test is guided by comparing the "total concept and feel" of the contested works. Knitwaves, 71 F.3d at 1003. For example, in Streetwise Maps, 159 F.3d at 748, we found no infringement -- not because the plaintiff's map consisted of public domain facts such as street locations, landmasses, bodies of water and landmarks, as well as color -- but rather "because the total concept and overall feel created by the two works may not be said to be substantially similar." In Nihon [273] Keizai Shimbun, 166 F.3d at 70-71, we conducted a side-by-side comparison of the articles and abstracts at issue to determine whether a copyright infringement had occurred. Looking beyond the unprotected facts, we analyzed how alike or different the abstracts were in their structure and organization of the facts. Id. at 71.

    57

    Likewise, when evaluating claims of infringement involving literary works, we have noted that while liability would result only if the protectible elements were substantially similar, our examination would encompass "the similarities in such aspects as the total concept and feel, theme, characters, plot, sequence, pace, and setting of the [plaintiff's] books and the [defendants'] works." Williams, 84 F.3d at 588; see also id. at 590 ("[A] scattershot approach cannot support a finding of substantial similarity because it fails to address the underlying issue: whether a lay observer would consider the works as a whole substantially similar to one another."). But see Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119, 123-24 (2d Cir. 1994) (pre-dating Knitwaves and comparing feature-by-feature only the protectible elements of copyrighted dolls).

    58

    In the present case, while use of the alphabet may not provide a basis for infringement, we must compare defendants' quilts and plaintiffs' quilts on the basis of the arrangement and shapes of the letters, the colors chosen to represent the letters and other parts of the quilts, the quilting patterns, the particular icons chosen and their placement. Our analysis of the "total concept and feel" of these works should be instructed by common sense. Cf. Hamil Am., 193 F.3d at 102 (noting that the ordinary observer test involves an examination of "total concept and feel," which in turn can be guided by "good eyes and common sense"). It is at this juncture that we part from the district court, which never considered the arrangement of the whole when comparing plaintiffs' works with defendants'. With this concept in mind, we pass to a comparison of the quilts at issue.

    59
    V. Comparison
    60
    A. "School Days I" v. "ABC Green" Versions
    61

    "School Days I" consists of six horizontal rows, each row containing five blocks, with a capital letter or an icon in each block. The groupings of blocks in each row are as follows: A-E; F-J; K-O; P-T; U-Y; and Z with four icons following in the last row. The four icons are a cat, a house, a single-starred American flag and a basket. "ABC Green Version I" displays the capital letters of the alphabet in the same formation. The four icons in the last row are a cow jumping over the moon, a sailboat, a bear and a star. "ABC Green Version II" is identical to "ABC Green Version I," except that the picture of the cow jumping over the moon is somewhat altered, the bear is replaced by a teddy bear sitting up and wearing a vest that looks like a single-starred American flag, and the star in the last block is represented in a different color.

    62

    All three quilts use a combination of contrasting solid color fabrics or a combination of solid and polka-dotted fabrics to represent the blocks and letters. The following similarities are observed in plaintiffs' and defendants' designs: "A" is dark blue on a light blue background; "B" is red on a white background; "D" is made of polka-dot fabric on a light blue background; "F" on plaintiffs' "School Days I" is white on a pink background, while the "F" on defendants' "ABC Green" versions is pink on a white background; "G" has a green background; "H" and "L" are each a shade of blue on a white background; "M" in each quilt is a shade of yellow on a [274] white background. "N" is green on a white background; "O" is blue on a polka-dot background; "P" is polka-dot fabric on a yellow background; "Q" is brown on a light background; "R" is pink on a gray/purple background. "S" is white on a red background; "T" is blue on a white background; "U" is gray on a white background; "V" is white on a gray background; "W" is pink on a white background; "X" is purple in all quilts, albeit in different shades, on a light background; "Y" is a shade of yellow on the same light background; and "Z" is navy blue or black, in all the quilts.

    63

    Boisson also testified that defendants utilized the same unique shapes as she had given to the letters "J," "M," "N," "P," "R" and "W." With respect to the quilting patterns, "School Days I" and the "ABC Green" versions feature diamond-shaped quilting within the blocks and a "wavy" pattern in the plain white border that surrounds the blocks. The quilts are also edged with a 3/8" green binding.

    64

    From this enormous amount of sameness, we think defendants' quilts sufficiently similar to plaintiffs' design as to demonstrate illegal copying. In particular, the overwhelming similarities in color choices lean toward a finding of infringement. See 1 Nimmer & Nimmer, supra, § 2.14, at 2-178.4 ("[S]imilarity of color arrangements may create an inference of copying of other protectible subject matter."), quoted in Primcot Fabrics, Dep't of Prismatic Fabrics, Inc. v. Kleinfab Corp., 368 F. Supp. 482, 485 (S.D.N.Y. 1974). Although the icons chosen for each quilt are different and defendants added a green rectangular border around their rows of blocks, these differences are not sufficient to cause even the "more discerning" observer to think the quilts are other than substantially similar insofar as the protectible elements of plaintiffs' quilt are concerned. See Williams, 84 F.3d at 588 ("[D]issimilarity between some aspects of the works will not automatically relieve the infringer of liability." (emphasis removed)); Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir. 1936) ("[I]t is enough that substantial parts were lifted; no plagiarist can excuse the wrong by showing how much of his work he did not pirate."). Moreover, the substitution in "ABC Green Version II" of the teddy bear wearing a flag vest as the third icon causes this version of defendants' quilt to look even more like plaintiffs' quilt that uses a single-starred American flag as its third icon. Consequently, both of defendants' "ABC Green" quilts infringed plaintiffs' copyright on its "School Days I" quilt.

    65
    B. "School Days I" v. "ABC Navy"
    66

    We agree with the district court, however, that Rao did not infringe on plaintiffs' design in "School Days I" when he created "ABC Navy." While both quilts utilize an arrangement of six horizontal rows of five blocks each, "ABC Navy" does not have its four icons in the last row. Rather, the teddy bear with the flag vest is placed after the "A" in the first row, the cow jumping over the moon is placed after the "L" in the third row, the star is placed after the "S" in the fifth row, and the sailboat is placed after the "Z" in the last row. Further, the colors chosen to represent the letters and the blocks in "ABC Navy" are, for the most part, entirely different from "School Days I." Defendants dropped the use of polka-dot fabric, and plaintiffs did not even offer a color comparison in their proposed findings of fact to the district court, as they had with each of the "ABC Green" versions. The quilting pattern in the plain white border is changed to a "zig-zag" in "ABC Navy," as opposed to plaintiffs' "wavy" design. Finally, although defendants use a binding [275] around the edge of their quilt, in this instance it is blue instead of green.

    67

    Looking at these quilts side-by-side, we conclude they are not substantially similar to one another. Just as we rejected defendants' earlier argument and held that what few differences existed between "School Days I" and the "ABC Green" quilts could not preclude a finding of infringement, plaintiffs' emphasis on the similarity in style between some of the letters between "School Days I" and "ABC Navy" cannot support a finding of infringement. See Williams, 84 F.3d at 588 ("[W]hen the similarities between the protected elements of plaintiff's work and the allegedly infringing work are of'small import quantitatively or qualitatively[,]' the defendant will be found innocent of infringement."). Because no observer, let alone a "more discerning" observer, would likely find the two works to be substantially similar, no copyright violation could properly be found.

    68
    C. "School Days II" v. "ABC Green" Versions
    69

    Boisson modified her design in "School Days II" in that she utilized seven horizontal rows of four blocks each. The capital letters are displayed A-D, E-H, I-L, M-P, Q-T, U-X, and Y-Z followed by two blocks showing a single-starred American flag and a house. In addition, she framed the rows of blocks with a red rectangular border and vertical blue stripes located off to the left and right sides. The remainder of the quilt is white, with a blue binding on the edge.

    70

    The quilting patterns and the colors used to display the letters and the blocks are substantially the same as those used in "School Days I," as are the shapes of the letters. These similarities between "School Days II" and "School Days I" mean the same similarities are shared with both of defendants' "ABC Green" quilts. Nevertheless, the "total concept and feel" of the quilts are not substantially similar. As in Streetwise Maps, where the maps at issue each depicted geographical facts pertaining to New York City but were found to do so in ways that were not alike, defendants' "ABC Green" quilts depict the alphabet in a manner different from "School Days II." Beyond the difference in how the letters are arranged, this version of plaintiffs' quilt uses the colors red, white and blue to depict a look and feel of American patriotism, while defendants' predominant use of green in their borders and edging do not create the same impression.

    71
    D. "School Days II" v. "ABC Navy"
    72

    As has been explained, although "School Days II" shares the same color combinations in its display of letters and blocks as in "School Days I," defendants' "ABC Navy" quilt does not share the same color combinations as "School Days I." Defendants' quilt is therefore different from "School Days II" in this regard as well. Combined with the varying number of rows and blocks, the placement of icons, the different use and color of rectangular borders around the blocks and the choice of quilting patterns, we agree with the district court that defendants have committed no copyright infringement in their design of "ABC Navy" when compared to plaintiffs' "School Days II." The similarity in letter design and the use of a blue edge are so trivial in the overall look of the two quilts that defendants did not infringe on plaintiffs' copyright.

    73
    VI. Remedies
    74

    The district court, having dismissed all of plaintiffs' claims for infringement, never reached the question of what remedies should be awarded. Plaintiffs seek the maximum statutory damages under 17 U.S.C. § 504, as well as attorney's fees, costs and the issuance of a permanent injunction. Because these matters are [276] better first decided in the trial court, we remand plaintiffs' successful claims to that court for consideration of appropriate remedies. See Scribner v. Summers, 84 F.3d 554, 559 (2d Cir. 1996) (remanding for damages calculations after determining liability on the part of defendants, because "[t]his task is better left to the district court in the first instance").

    75
    CONCLUSION
    76

    For the reasons stated above, we affirm the judgment of the district court insofar as it found no infringement on the part of defendants with respect to their "ABC Navy" quilt as compared to plaintiffs' "School Days I" and "School Days II" quilts and their "ABC Green Version I" and "ABC Green Version II" quilts as compared to plaintiffs' "School Days II" quilt. We reverse the judgment of the district court with respect to plaintiffs' remaining claims, and find defendants' versions I and II of their "ABC Green" quilts infringed on plaintiffs' "School Days I" quilt. Accordingly, we remand the case to the district court for it to determine the appropriate remedies.

    77

    ---------------

    78

    NOTE:

    79

    [1] Hon. Charles S. Haight, Jr., Senior United States District Court Judge for the Southern District of New York, sitting by designation. 

  • 2 Swirsky v. Carey (2004)

    1
    376 F.3d 841
    2
    Seth SWIRSKY, an individual d/b/a Julian's Dad; Warryn Campbell, Plaintiffs-Appellants,
    v.
    Mariah CAREY; James Harris, III; Terry Lewis; Flyte Time Productions, Inc., an entity of unknown designation, e/s/a Flyte Tyme Tunes, Inc.; ATV Songs LLC; Rye Songs; Columbia Records; Sony Music Entertainment, Inc.; EMI April Music, Defendants-Appellees.
    3
    No. 03-55033.
    4
    United States Court of Appeals, Ninth Circuit.
    5
    Argued and Submitted February 3, 2004.
    6
    Filed July 12, 2004.
    7
    As Amended on Denial of Rehearing August 24, 2004.
    8

    [843] Jonathan D. Freund (argued), Craig A. Huber, Freund & Brackey LLP, Beverly Hills, CA, for the plaintiffs-appellants.

    9

    Robert M. Dudnik, Mitchell, Silberberg & Knupp, LLP, Los Angeles, CA, for the defendants-appellees.

    10

    Appeal from the United States District Court for the Central District of California; Christina A. Snyder, District Judge, Presiding. D.C. No. CV-00-09926-CAS.

    11

    Before CANBY, JR., NOONAN, and THOMAS, Circuit Judges.

    12

    CANBY, Circuit Judge.

    13

    The plaintiffs, Seth Swirsky and Warryn Campbell, brought this action in district court, alleging that a song produced by the defendants infringed the plaintiffs' copyright in the song, "One of Those Love Songs." The defendants moved for summary judgment, contending that the plaintiffs' evidence failed to meet this circuit's threshold "extrinsic test" for substantial similarity of works. The district court granted the motion, holding that the plaintiffs' expert had failed to show by external, objective criteria that the two songs shared a similarity of ideas and expression. Plaintiffs appeal. We conclude that the plaintiffs' expert's evidence was sufficient to present a triable issue of the extrinsic similarity of the two songs, and that the district court's ruling to the contrary was based on too mechanical an application of the extrinsic test to these musical compositions. We also conclude that the district court erred in ruling portions of plaintiffs' song to be unprotectable by copyright as a matter of law. We accordingly reverse the summary judgment.

    14
    Factual Background
    15

    This case concerns the alleged similarity between the choruses of two popular and contemporary rhythm and blues ("R & B") songs: plaintiffs'"One of Those Love Songs" ("One") and Mariah Carey's "Thank God I Found You" ("Thank God"). One was jointly composed by plaintiffs Seth Swirsky and Warryn Campbell (collectively "Swirsky") in 1997. Pursuant to a licensing agreement, One was recorded [844] by the musical group Xscape and released in May 1998 on Xscape's album "Traces of My Lipstick." Thank God was composed by defendants Carey, James Harris III, and Terry Lewis in 1999 and was released on Carey's album "Rainbow" in November 1999.

    16

    One and Thank God have generally dissimilar lyrics and verse melodies, but they share an allegedly similar chorus that Swirsky claims as an infringement of One's copyright.[1] Swirsky filed this action in district court against Carey, Harris, Lewis, and a number of music companies that had financial interests in Thank God (collectively "Carey") for copyright infringement and related claims.[2] The defendants moved for summary judgment, contending that Swirsky had failed to present a triable issue on the required first, or "extrinsic," part of our circuit's two-part test for the establishment of substantial similarity necessary to sustain a claim of copyright infringement. The defendants also contended that portions of One were not protectable by copyright. The district court agreed with both contentions and granted summary judgment to Carey. Swirsky moved for reconsideration, which the district court denied. This appeal followed.

    17
    Substantial Similarity
    18

    We review de novo the district court's grant of summary judgment. See Smith v. Jackson, 84 F.3d 1213, 1218(9th Cir.1996). We may uphold the summary judgment only if we find that "no reasonable juror could find substantial similarity of ideas and expression [between One and Thank God], viewing the evidence in the light most favorable to the nonmoving party." Id. (quoting Kouf v. Walt Disney Pictures & Television, 16 F.3d 1042, 1045 (9th Cir.1994)); Narell v. Freeman, 872 F.2d 907, 909-910 (9th Cir.1989). If Swirsky presented "indicia of a sufficient disagreement concerning the substantial similarity of [the] two works," then the case must be submitted to a trier of fact. Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1472 (9th Cir.1992) (internal quotations and citation omitted).

    19

    To establish a successful copyright infringement claim, Swirsky must show that (1) he owns the copyright in One and (2) Carey copied protected elements of One. See Rice v. Fox Broad. Co., 330 F.3d 1170, 1174 (9th Cir.2003) (Rice I); Smith, 84 F.3d at 1218. For purposes of summary judgment, Carey conceded that Swirsky owns a valid copyright in One. The element of copying is rarely the subject of direct evidence; Swirsky may establish copying by showing that Carey had access to One and that Thank God was substantially similar to One in One's protected elements. See Smith, 84 F.3d at 1218; Metcalf v. Bochco, 294 F.3d 1069, 1072(9th Cir.2002). Where a high degree of access is shown, we require a lower standard of proof of substantial similarity. See Three Boys Music Corp. v. Bolton, 212 F.3d 477, 485(9th Cir.2000); Smith, 84 F.3d at 1218. For the purposes of summary judgment, Carey conceded that she had a high degree of access to One.[3] Swirsky's [845] burden of proof of substantial similarity is thus commensurately lowered.

    20

    In determining whether two works are substantially similar, we employ a two-part analysis: an objective extrinsic test and a subjective intrinsic test. For the purposes of summary judgment, only the extrinsic test is important because the subjective question whether works are intrinsically similar must be left to the jury. See Rice I, 330 F.3d at 1174; Smith, 84 F.3d at 1218. If Swirsky cannot present evidence that would permit a trier of fact to find that he satisfied the extrinsic test, he necessarily loses on summary judgment because a "jury may not find substantial similarity without evidence on both the extrinsic and intrinsic tests." Rice I, 330 F.3d at 1174 (quoting Kouf, 16 F.3d at 1045).

    21

    The extrinsic test considers whether two works share a similarity of ideas and expression as measured by external, objective criteria.[4] See Smith, 84 F.3d at 1218. The extrinsic test requires "analytical dissection of a work and expert testimony." Three Boys, 212 F.3d at 485. "Analytical dissection" requires breaking the works "down into their constituent elements, and comparing those elements for proof of copying as measured by `substantial similarity.'" Rice v. Fox Broad. Co., 148 F.Supp.2d 1029, 1051 (C.D.Cal.2001), reversed on other grounds, 330 F.3d 1170 (9th Cir.2003) (Rice II). Because the requirement is one of substantial similarity to protected elements of the copyrighted work, it is essential to distinguish between the protected and unprotected material in a plaintiff's work. See Rice I, 330 F.3d at 1174; Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1443(9th Cir.1994); Brown Bag, 960 F.2d at 1475-76.

    22

    The expert testimony on which Swirsky relied was that of Dr. Robert Walser, chair of the Musicology Department at the University of California at Los Angeles. On the basis of his aural assessment[5] of One and Thank God, Dr. Walser opined that the two songs had substantially similar choruses.

    23

    Dr. Walser admitted that the lyrics and verse melodies of the two songs differed "clearly and significantly," but stated that the two songs' choruses shared a "basic shape and pitch emphasis" in their melodies, which were played over "highly similar basslines[6] and chord changes, at very nearly the same tempo and in the same generic style."[7] Dr. Walser also noted that it was a "suspicious coincidence" that the two songs' choruses were both sung in B-flat. Dr. Walser further testified that the choruses in both One and Thank God shared a similar structure in that measures five through seven of each chorus were "almost exactly" the same as the first three measures of each chorus.

    24

    [846] Dr. Walser also noted a number of differences between the two songs' choruses. Dr. Walser found that the fourth measures of the choruses were "dramatically different" from each other and noted that while the "basic, emphasized pitches and rhythms" of the basslines were alike, the basslines to both choruses were "ornamented and played slightly differently from chorus to chorus." Dr. Walser also found that certain "text-setting choices"[8] created differences between the two songs' choruses. For example, he noted that in Thank God, Carey sings "D, scale degree three, for a full beat on the first beat of the first measure" while Xscape in One sings the same pitch "divided into two eight-note pulses." Dr. Walser ultimately concluded, however, that these differences were not enough to differentiate the songs because the overall emphasis on musical notes was the same, which "contribute [d] to the impression of similarity one hears when comparing the two songs."

    25

    Dr. Walser transcribed his aural impressions into a series of visual "transcriptions." Dr. Walser created a transcription of each chorus' pitch sequence, melody,[9] and bassline. Dr. Walser labeled his transcription of the basslines a"reduction" because he transcribed only the "basic, emphasized pitches and rhythms." Dr. Walser thus did not include any bassline notes or pitches he found to be "ornamented" in his transcriptions.[10]

    26

    The district court found this evidence insufficient to survive a motion for summary judgment for four reasons. First, the district court found that Dr. Walser's expert methodology was flawed. Second, the district court, using its own analysis, found that no triable issue was raised as to the substantial similarity of measures two, three, six, seven, and eight of the two choruses. Third, the district court held that measures one and five of One were scenes a faire,[11] and thus incapable of supporting a finding of infringement. Finally, the district court discounted any similarity between the two choruses based on key, harmony, tempo, or genre because it found no precedent for substantial similarity to be "founded solely on similarities in key, harmony, tempo or genre, either alone or in combination." We disagree with much of the district court's reasoning on all four points and conclude that Swirsky has satisfied the extrinsic test because he has provided "indicia of a sufficient disagreement concerning the substantial similarity of [the] two works." Brown Bag, 960 F.2d at 1472 (internal quotations and citation omitted).

    27
    A. Dr. Walser's Methodology
    28

    There is nothing inherently unsound about Dr. Walser's musicological methodology in this case. The district court is correct that Dr. Walser's methodology is "selective," in as much as it discounts notes that he characterizes as "ornamental." Dr. Walser, however, explained [847] that the melody (pitch and rhythm) and bassline of a song cannot be divorced from the harmonic rhythm of a song. According to Dr. Walser, notes falling on the beat will be more prominent to the ear than notes falling off the beat. Thus, Dr. Walser opined that, even though measure three of both choruses were not identical in numerical pitch sequence or note selection, they both "emphasize [d] the second scale degree, C, over an A in the bass, resolving to the third scale degree, D, over a D in the bass in the last half of the measure." Dr. Walser provided a comparable analysis for measures one, three, and eight.

    29

    Similarly, Dr. Walser explained that some artists will ornament their notes in ways that others do not. Dr. Walser testified at deposition that both Carey and Xscape ornament their notes with "melismas" and "appoggiaturas," both of which are technical terms for moving up to the next note and then back again. Dr. Walser testified that he did not notate these ornaments in his transcriptions, or take them into account in his opinion, because he "took that to be a matter of the singer customizing the song and regarded those notes as not structural; they are ornamental." As we said in Newton v. Diamond, 349 F.3d 591 (2003), we can "consider only [the defendant's] appropriation of the song's compositional elements and must remove from consideration all the elements unique to [Plaintiff's] performance." Id. at 595. Dr. Walser's methodology sought to remove notes he perceived as performance-related.

    30

    To a certain extent, Dr. Walser's methodology does concentrate on how the two choruses sound to his expert ears, which led the district court to conclude that his testimony related to intrinsic and not extrinsic similarity. We do not agree, however, that Dr. Walser's testimony was an intrinsic rather than extrinsic analysis. He was not testifying, as the intrinsic test would require, as to whether subjectively the "ordinary, reasonable person would find the total concept and feel of the [two choruses] to be substantially similar." Three Boys, 212 F.3d at 485(quoting Pasillas v. McDonald's Corp., 927 F.2d 440, 442 (9th Cir.1991)). Instead, he was stating that, although the two choruses are not exactly identical on paper, when examined in the structural context of harmony, rhythm, and meter, they are remarkably similar. We, therefore, cannot accept the district court's conclusion that Dr. Walser did not "adequately explain, based on objective criteria, why [his] particular subset of notes is more important, or more appropriately analyzed, than the other notes present in the songs." The district court erred in completely discounting Dr. Walser's expert opinion.

    31
    B. The District Court's Measure-by-Measure Analysis
    32

    The district court also erred by basing its comparison of the two choruses almost entirely on a measure-by-measure comparison of melodic note sequences from the full transcriptions of the choruses.[12] Objective analysis of music under the extrinsic test cannot mean that a court may simply compare the numerical representations of pitch sequences and the visual representations of notes to determine that two choruses are not substantially similar, without regard to other elements [848] of the compositions. Under that approach, expert testimony would not be required at all, for any person untrained in music could conclude that "2-2-2-2-2-2-1-2-1-3" did not match "2-2-4-3-2-3" or that a half-note is not identical to an eighth-note. Certainly, musicological experts can disagree as to whether an approach that highlights stressed notes, as Dr. Walser's does, is the most appropriate way to break down music for substantial-similarity comparison, but no approach can completely divorce pitch sequence and rhythm from harmonic chord progression, tempo, and key, and thereby support a conclusion that compositions are dissimilar as a matter of law. It is these elements that determine what notes and pitches are heard in a song and at what point in the song they are found. To pull these elements out of a song individually, without also looking at them in combination, is to perform an incomplete and distorted musicological analysis.[13]

    33

    Furthermore, to disregard chord progression, key, tempo, rhythm, and genre is to ignore the fact that a substantial similarity can be found in a combination of elements, even if those elements are individually unprotected. See Satava v. Lowry, 323 F.3d 805, 811 (9th Cir.2003); Apple Computer, 35 F.3d at 1445. Thus, although chord progressions may not be individually protected, if in combination with rhythm and pitch sequence, they show the chorus of Thank God to be substantially similar to the chorus of One, infringement can be found. See Three Boys, 212 F.3d at 485; Satava, 323 F.3d at 811.[14]

    34

    We recognize the difficulties faced by the district court in this case. We have referred to "the turbid waters of the `extrinsic test' for substantial similarity under the Copyright Act." Metcalf, 294 F.3d at 1071. The application of the extrinsic test, which assesses substantial similarity of ideas and expression, to musical compositions is a somewhat unnatural task, guided by relatively little precedent. Music is an art form that "produces sounds and expresses moods," Debra Presti Brent, The Successful Musical Copyright Infringement Suit: The Impossible Dream, 7 U. Miami Ent. & Sports. L.Rev. 229, 244 (1990), but it does not necessarily communicate separately identifiable ideas. The extrinsic test provides an awkward framework to apply to copyrighted works like music or art objects, which lack distinct elements of idea and expression. Nevertheless, the test is our law and we must apply it. See Smith, 84 F.3d at 1218. The extrinsic test does serve the purpose of permitting summary judgment in clear cases of non-infringement, and it informs [849] the fact-finder of some of the complexities of the medium in issue while guiding attention toward protected elements and away from unprotected elements of a composition.

    35

    In analyzing musical compositions under the extrinsic test, we have never announced a uniform set of factors to be used. We will not do so now. Music, like software programs and art objects, is not capable of ready classification into only five or six constituent elements; music is comprised of a large array of elements, some combination of which is protectable by copyright.[15] For example, in Three Boys we upheld a jury finding of substantial similarity based on the combination of five otherwise unprotectable elements: (1) the title hook phrase (including the lyric, rhythm, and pitch); (2) the shifted cadence; (3) the instrumental figures; (4) the verse/chorus relationship; and (5) the fade ending. Three Boys, 212 F.3d at 485. Other courts have taken account of additional components of musical compositions, including melody, harmony, rhythm, pitch, tempo, phrasing, structure, chord progressions, and lyrics. See Ellis v. Diffie, 177 F.3d 503, 506(6th Cir.1999) (noting that the district court had compared idea, phraseology, lyrics, rhythms, chord progressions, "melodic contours," structures, and melodies under "ordinary observer" test); Cottrill v. Spears, 2003 WL 21223846, at *9 (E.D.Pa. May 22, 2003) (unpublished disposition) (comparing pitch, chord progression, meter, and lyrics under extrinsic test); Tisi v. Patrick, 97 F.Supp.2d 539, 543 (S.D.N.Y.2000) (analyzing structure, melody, harmony, and rhythm under"striking similarity" test); McKinley v. Raye, 1998 WL 119540, at *5 (N.D.Tex. March 10, 1998) (mem.) (analyzing lyrics, melodies, and song structure); Damiano v. Sony Music Entm't, Inc., 975 F.Supp. 623, 631 (D.N.J.1996) (analyzing instrumentation and melody under the extrinsic test); Sylvestre v. Oswald, 1993 WL 179101, at *4 (S.D.N.Y. May 18, 1993) (analyzing melody and lyrics under "striking similarity" test); Intersong-USA v. CBS, Inc., 757 F.Supp. 274, 280 (S.D.N.Y.1991) (analyzing chord progression, structure, pitch, and harmony under substantial similarity[16] test). In addition, commentators have opined that timbre, tone, spatial organization, consonance, dissonance, accents, note choice, combinations, interplay of instruments, basslines, and new technological sounds can all be elements of a musical composition. See Brent, supra, at 248-89; Stephanie J. Jones, Music Copyright in Theory and Practice: An Improved Approach for Determining Substantial Similarity, 31 Duq. L.Rev. 277, 294-95 (1993).

    36

    There is no one magical combination of these factors that will automatically substantiate a musical infringement suit; each allegation of infringement will be unique. So long as the plaintiff can demonstrate, through expert testimony that addresses some or all of these elements and supports its employment of them, that the similarity was "substantial" and to "protected elements" of the copyrighted work, the extrinsic test is satisfied. Swirsky has met that standard here.

    37
    C. Scenes a Faire Analysis
    38

    The district court erred in finding the first and fifth measures of One to [850] be unprotectable by reason of the scenes a faire doctrine.[17] Scenes a faire analysis requires the court to examine whether "motive"[18] similarities that plaintiffs attribute to copying could actually be explained by the common-place presence of the same or similar "motives" within the relevant field. See Smith, 84 F.3d at 1219. Under the scenes a faire doctrine, when certain commonplace expressions are indispensable and naturally associated with the treatment of a given idea, those expressions are treated like ideas and therefore not protected by copyright. See Rice I, 330 F.3d at 1175. The district court held that the first and fifth measures of One were not protected by copyright because Dr. Walser admitted in his deposition that the pitch sequence of the first measure of One' s chorus was more similar to the pitch sequence in the first measure of the folk song "For He's a Jolly Good Fellow" ("Jolly Good") than to the pitch sequence in the first measure of Thank God's chorus.[19]

    39

    The evidence does not support the district court's ruling that the first measure of One is a scene a faire as a matter of law. The songs One and Jolly Good are not in the same relevant "field" of music; One is in the hip-hop/R & B genre and Jolly Good is in the folk music genre. Thus, comparing the first measure of One' s chorus to the first measure of Jolly Good does not tell the court whether the first measure of One' s chorus is an indispensable idea within the field of hip-hop/R & B. Further, even if One and Jolly Good were in the same genre of music, a musical measure cannot be "common-place" by definition if it is shared by only two songs.[20] One and Jolly Good are also written in different time signatures; One is in 4/4 while Jolly Good is in 6/8. Their chord progressions also differ (B-flat to B-flat(sus4) to B-flat in One and G in Jolly Good). This difference further undermines Carey's argument that the two measures are the same as a matter of law.

    40

    The district court also erred in finding the fifth measure of One to be a scene a faire as a matter of law. Carey introduced no independent evidence showing that measure five of One was more similar to Jolly Good than Thank God; she relied exclusively on Dr. Walser's opinion that measure five was "almost identical" to measure one of One. As we have already pointed out, on summary judgment, "almost identical" and "identical" are not equivalents, especially in light of Dr. Walser's transcriptions showing that measure five of One is different in pitch sequence from measure one of One. It is inappropriate to grant summary judgment on the basis of scenes a faire without independent evidence, unless the allegation of scenes a faire is uncontested. See Smith, 84 F.3d at 1220. It was contested here.

    41
    Other Claims of Lack of Copyright Protection
    42

    Because we may affirm the grant of summary judgment on any basis supported [851] by the record, see Newton, 349 F.3d at 594, Carey offers two additional arguments, not reached by the district court, why the summary judgment should be affirmed. Carey first argues that, wholly apart from the scenes a faire doctrine, the first measure of One' s chorus is not protectable because it lacks originality as a matter of law. Because One has a valid certificate of registration with the copyright office, however, Swirsky is entitled to a presumption of originality. See 17 U.S.C. § 410(c) (2003) (citing that presumption of originality extends for five years from date of copyright registration);[21] Three Boys, 212 F.3d at 488-89. Carey can overcome this presumption only by demonstrating that Swirsky's chorus is not original. See id.

    43

    In this circuit, the definition of originality is broad, and originality means "little more than a prohibition of actual copying." Three Boys, 212 F.3d at 489(quoting North Coast Indus. v. Jason Maxwell, Inc., 972 F.2d 1031, 1033(9th Cir.1992)). All that is needed to satisfy originality is for the author to contribute "something more than a `merely trivial' variation." Id.; see also ETS-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1073 (9th Cir.2000)(referring to "the low threshold for originality under the Copyright Act"). Carey argues that the first measure of One's chorus is not original because it is "substantially similar" to the first measure of Jolly Good.[22] See North Coast, 972 F.2d at 1033-34. The two measures may share the same pitch sequence, but they are not identical in meter, tempo, or key. There is, therefore, a triable issue whether there are more than "merely trivial" differences between the two works. Carey's contention that the first measure of Swirsky's chorus is not original as a matter of law accordingly fails.

    44

    Although the first measure of One' s chorus and the first measure of Jolly Good may share the same pitch sequence, they are not identical in meter, tempo, or key. There is, therefore, a triable issue whether there are more than "merely trivial" differences between the two works. Carey's contention that the first measure of Swirsky's chorus is not original as a matter of law fails.

    45

    Carey next argues that the first measure of One is a mere "musical idea," not protectable under the Copyright Act. Carey relies on Dr. Walser's testimony that the first measure of One was a "short musical idea." Carey's reasoning is fallacious for a number of reasons, the most basic being that a musicologist is not an expert on what the term "idea" means under the copyright laws. Labeling something as a "musical idea" does not necessarily bear on whether it is also an "idea" under the copyright laws and unprotectable for that reason.

    46

    No federal court has stated that a musical motive is not protectable because it is an idea. Nor does the "musical idea" of the first measure of Swirsky's chorus lack protection because of its brevity. Although it is true that a single musical note would be too small a unit to attract copyright protection (one would not want to give the first author a monopoly over the note of B-flat for example), an arrangement of a limited number of notes can garner copyright protection. See Elsmere Music, Inc. v. Nat'l Broad. Co., 482 F.Supp. 741, 744 (S.D.N.Y.1980) (finding that four notes were substantial enough to be protected by copyright); Santrayll v.[852] Burrell, 1996 WL 134803, at *2 (S.D.N.Y. Mar.25, 1996) (mem.order) (finding that the repetition of the word "uh-oh" four times in a distinctive rhythm for one measure is sufficiently original to render it protectable under the copyright laws). This Court has stated that "[e]ven if a copied portion be relatively small in proportion to the entire work, if qualitatively important, the finder of fact may properly find substantial similarity." Baxter v. MCA, Inc., 812 F.2d 421, 425(9th Cir.1987). The melodic line in the first measure of One is seven notes long. It cannot be said as a matter of law that seven notes is too short a length to garner copyright protection. We therefore reject this challenge to the protection of the first measure of One's chorus.

    47
    Evidentiary Arguments
    48

    Swirsky challenges two evidentiary rulings of the district court, which we address because the issues may arise again in further proceedings on remand. We review for abuse of discretion the district court's decision to admit or exclude evidence. See Los Angeles News Serv. v. Tullo, 973 F.2d 791, 800 (9th Cir.1992).

    49
    A. The Work Session Tape
    50

    The district court did not abuse its discretion in refusing to admit a tape of Carey's "work session" that Swirsky offered as evidence of direct copying. Although there is no explicit ruling by the district court on Swirsky's offer to introduce the tape other than a passing reference in the minute order denying Swirsky's motion for reconsideration, that omission is not in and of itself an abuse of discretion. See GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1209-1210 (9th Cir.2000) (stating that a district court's silence in regard to a ruling is not abuse of discretion if the record supports the court's decision).

    51

    The work session tape that Swirsky sought to introduce demonstrated only that Carey came into the studio with the melody to the chorus of Thank God in her head. The fact that a composer or singer has a melody in her head does not necessarily demonstrate direct copying; the melody could easily be the product of her own creative processes, conscious or subconscious. It was thus not a clear error of judgment for the district court to refuse to admit the work session tape.

    52
    B. The Bassline Transcriptions
    53

    The district court did not abuse its discretion in admitting defense expert Anthony Ricigliano's bassline transcriptions of One and Thank God. Swirsky objected to the admission of Ricigliano's transcriptions on the grounds of lack of personal knowledge or foundation, hearsay, lack of authentication, and relevance. Ricigliano's transcriptions, however, appear to have been admitted for the limited purpose of showing what the two choruses' basslines "looked like" before being reduced by Dr. Walser.[23] In his deposition, Dr. Walser testified that Ricigliano's bassline transcriptions were accurate. Whether Dr. Walser's methodology was complete and accurate in comparing the two songs' choruses is obviously relevant. Further, Ricigliano's transcriptions were not introduced to prove the truth of the matter asserted, but simply to give the court a complete transcription of the basslines. The transcriptions are therefore not hearsay. See Fed.R.Evid. 801(c). Finally, because Swirsky's own expert, Dr. Walser, admitted the accuracy of Ricigliano's transcriptions, there was no foundation or authentication [853] problem. See Fed.R.Evid. 901(a) and (b)(1); Fed.R.Civ.P. 56(e). We therefore reject Swirsky's evidentiary challenges.

    54
    Conclusion
    55

    We conclude that Swirsky's expert adequately explained his methodology and provided "indicia of a sufficient disagreement concerning the substantial similarity of two works" so that the issue of the substantial similarity of the two choruses should have been presented to a jury. Brown Bag, 960 F.2d at 1472 (internal quotations and citation omitted). We further conclude that the district court erred in ruling as a matter of law that measures one and five of One were scenes a faire. Finally, we reject Carey's contention that these measures were unprotectable as a matter of law on the grounds that they were unoriginal or mere musical ideas. We therefore reverse the summary judgment and remand this case to the district court for further proceedings consistent with this opinion.[24]

    56

    REVERSED and REMANDED.

    57

    [1] Swirsky also claims that the piano introduction to Thank God infringes Swirsky's copyright because the introduction is essentially a piano version of Thank God' s chorus. To the extent this is the case, Swirsky's claim that the introduction infringes his copyright depends on whether Thank God's chorus is substantially similar to One' s chorus.

    58

    [2] On this appeal the parties present issues related only to the copyright infringement claim.

    59

    [3] A number of the people involved in recording One were also involved in the recording of Thank God. Both songs were mastered by Bob Ludwig at Gateway Mastering, produced by Sony Music Entertainment, and distributed through Columbia Records. Jermaine Dupri served as a producer to both albums and Kandi Burress, one of the former members of Xscape, co-wrote the song "X-Girlfriend" with Carey for the "Rainbow" album.

    60

    [4] Although the extrinsic test examines the similarity of ideas and expression, it must be kept in mind that ideas by themselves are not subject to copyright protection; only the expression of ideas is. See Rice I, 330 F.3d at 1174.

    61

    [5] Dr. Walser did not compare sheet music in arriving at his expert opinion. Neither One nor Thank God was originally composed using sheet music.

    62

    [6] A bassline (often written "bass line") is defined as "[t]he succession of the lowest notes in a passage (or composition) which `support' the other parts and are mainly responsible for the harmonic progression." Grove Music Online, at http://www.grovemusic.com.

    63

    [7] Dr. Walser identified the style as "contemporary R & B or `urban' music."

    64

    [8] Dr. Walser stated that text-setting choices mean that some pitches are repeated in one song while they are held in another.

    65

    [9] Melody is a function of both pitch (i.e. the steps, or tones, on the scale) and rhythm (i.e. time values and relationships between the notes) of a series of notes.

    66

    [10] Carey introduced bassline transcriptions of the two choruses made by Carey's expert, Anthony Ricigliano, to show the notes that Dr. Walser had omitted from his reduction.

    67

    [11] As we discuss more fully below, scenes a faire are common expressions indispensable to the expression of particular ideas in a relevant field; they are treated as unprotectable by copyright, in the manner of ideas. See Smith, 84 F.3d at 1219.

    68

    [12] The district court did not separately analyze measures four, six and seven. The district court accepted Dr. Walser's testimony that the fourth measures of the two songs' choruses were "dramatically different." The district court found that it did not need to analyze measures six and seven separately because Dr. Walser had opined that they were "almost identical" to measures one, two and three.

    69

    [13] In fact, concentration solely on pitch sequence may break music down beyond recognition. If a musician were provided with a group of notes identified only by numerical pitch sequences, he or she could play that music a number of different ways, none of them being substantially similar to each other. In order to perform a song exactly, the musician would need information about key, harmony, rhythm, and tempo — the type of information not included in the district court's comparison.

    70

    [14] The district court also erred in not separately analyzing measures six and seven of both choruses. Although Dr. Walser stated in his opinion that measures six and seven of One were "almost identical" to measures two and three of One, the district court was bound to view the evidence in the light most favorable to Swirsky. See Smith, 84 F.3d at 1218. The court was not free to conclude that, because measures two and three of Thank God were not substantially similar to corresponding measures of One, measures six and seven could not be substantially similar to those of One. In that sense, "almost identical" cannot be equated with "identical," especially when Dr. Walser's transcriptions showed measure six of One to be different in pitch sequence from measure two of One.

    71

    [15] Literary works, such as books, film, and television shows, are more easily broken into a small number of discrete elements to analyze, namely "plot, themes, dialogue, mood, setting, pace, characters and sequence of events." Metcalf, 294 F.3d at 1073 (quoting Kouf, 16 F.3d at 1045).

    72

    [16] The Southern District of New York's substantial similarity test does not differentiate between extrinsic and intrinsic analysis.

    73

    [17] The district court did not separately analyze measure five because Dr. Walser had opined that it was "almost identical" to measure one.

    74

    [18] Motive as used here means "an element or a component in a decorative composition." ROGET'S II: THE NEW THESAURUS, THIRD EDITION (1995), available at http://www.bartleby.com/62/47/M1004700.html (last visited May 4, 2004).

    75

    [19] Carey's attorney told Dr. Walser to ignore rhythm when comparing One to Jolly Good.

    76

    [20] Although Carey also argues that the pitch sequence of the first measure of One' s chorus was highly similar to the first measure of the folk song "The Bear Went Over the Mountain" ("Bear Went"), we note that Bear Went and Jolly Good are musically identical songs.

    77

    [21] The copyright was registered in August 1998 and this action was filed in November 2000.

    78

    [22] Carey also argues that the first measure of One is substantially similar to the first measure of Bear Went. Because Bear Went is exactly the same musically, albeit not lyrically, to Jolly Good, the comparison of One to Jolly Good applies with equal force to the comparison between One and Bear Went as well.

    79

    [23]> The district court never "directly" used Ricigliano's transcriptions to compare the choruses of One and Thank God, only to discount Dr. Walser's expert methodology.

    80

    [24] Because we reverse the district court's grant of summary judgment, Swirsky's challenge to the denial of his motion to reconsider is moot. See Flowers v. First Hawaiian Bank, 295 F.3d 966, 969 (9th Cir.2002).

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