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RIGHTS FRAMEWORK AND SCOPE OF PROTECTION (1 OF 2): Musical Compositions (Originality / Similarity / Infringement / Fair Use)
TOPICS
Overview of originality / protectability / copyrightability:
- What are the elements of a musical composition?
- What makes a musical composition protectable under copyright law?
Infringement of musical compositions — access, substantial similarity, etc.
Under what circumstances does one infringe another’s rights in a musical composition?
Role of expert witnesses in infringement cases.
Sampling of musical compositions.
Fair use of musical compositions.

  • 1 Tisi v. Patrick, 97 F.Supp.2d 539 (S.D.N.Y. 2000) (Excerpts)

    1

    97 F.Supp.2d 539 (2000)
    Michael TISI, Plaintiff,
    v.
    Richard PATRICK, Filter, Warner Brothers Records Inc., d/b/a Reprise Records, WEA International Inc., EMI April Music Inc., EMI Music Inc. d/b/a EMI Records and EMI Records Group, Defendants.
    No. 00 CIV. 0882(RWS).

    3

    United States District Court, S.D. New York.
    May 22, 2000.

    5

    *540 Dowd & Marotta, New York City, Daniel C. Marotta, Raymond J. Dowd, of counsel, for Plaintiff.

    7

    *541 Parcher, Hayes & Snyder, New York City, Orin Snyder, Cynthia S. Arato, of counsel, for Defendants.

    9

    OPINION

    11

    SWEET, District Judge.

    13

    Plaintiff Michael Tisi (“Tisi”), a songwriter and the composer of a copyrighted but unpublished musical composition entitled “Sell Your Soul” (“SYS”), sought a preliminary injunction under Rule 65, Fed.R.Civ. P., to enjoin the defendants Richard Patrick (“Patrick”), Filter, a performing group, Warner Brothers Records Inc., d/b/a Reprise Records (“Warner Brothers”), WEA International Inc. (“WEA”), EMI April Music Inc., EMI Music Inc. d/b/a EMI Records and EMI Records Group (collectively, “Defendants”) from distributing “Take A Picture” (“TAP”), a musical composition written by Patrick, on the grounds that TAP is derived from SYS and thereby infringes on Tisi’s copyright.

    15

    In addition, both Tisi and Defendants have moved for summary judgment pursuant to Rule 56, Fed.R.Civ.P. Upon the findings of fact and conclusions of law set forth below, Tisi’s motions for a preliminary injunction and summary judgment are denied, and Defendants’ motion for summary judgment dismissing the complaint is granted.

    17

    This action requires an analysis of the common and unique aspects of the two rock music compositions at issue, as well as resolution of the issue of Patrick’s access to Tisi’s composition. Thanks to the skill of counsel and the clarity of the Defendants’ expert witness, the unfamiliarity of the court with the genre has been overcome. A combination of common sense and a hastily trained ear dictate the forthcoming result.

    19

    Prior Proceedings

    21

    Tisi commenced this action on February 7, 2000, by filing a complaint alleging that Defendants’ publication of TAP violates Tisi’s copyright in SYS.

    23

    An order to show cause seeking a preliminary injunction was obtained on February 14, 2000, discovery proceeded, affidavits in support and in opposition to the motion were submitted, and a hearing on the application was held on March 16, 20, and 21, at which evidence in the form of testimony and exhibits was produced. At the close of the hearing, both sides moved for summary judgment on the record before the court.

    25

    Findings of Fact

    27

    Tisi has composed and performed rock and roll songs off and on over the past ten years. Early in 1994, with a group, Blue Dahlia, he made a demonstration tape (the “Demo Tape”) which included a recording of his composition SYS. Tisi classified this song as adult, contemporary rock music. SYS was copyrighted.

    29

    Tisi, his father Arthur Tisi, and his father’s partner in Arthur Joseph Productions Company, Joseph Giovanni (“Giovanni”), sought to promote the Demo Tape and to obtain a recording contract for Tisi. Arthur Joseph Productions coordinates and promotes special events and in the course of such activities Giovanni and Arthur Tisi developed some knowledge of and contacts in the entertainment industry.

    31

    In 1994, Arthur Tisi sent the Demo Tape to Kenneth Lane, who at that time was a senior vice president of promotion at EMI Records. Lane listened to the tape and played it for executives in EMI’s A & R (artists and repertory) department. The tape was rejected some weeks later. A letter of rejection was received from Lane on December 20, 1994. EMI Records at the time had no relationship with Patrick or Filter and was a competitor of Warner Brothers.

    33

    After the initial submission to EMI, Arthur Tisi made a submission to Warner Brothers through Greg Geller on December 13, 1994, which resulted in a rejection on March 13, 1995. The Demo Tape was *542 sent to Brian Koppelman at EMI Records again in August 1995.

    35

    In the same time frame, Giovanni, through his dentist, got the name of Jason Flom at a Warner Brothers Company, Atlantic Records. Giovanni testified that he sent the Demo Tape to Flom, who rejected the tape. There is no record relating to these actions.

    37

    Giovanni also testified that he requested John Ferry, an agent who had signed performers with Interscope, to have Interscope review the Demo Tape. Giovanni further testified that he had been told by someone that an unidentified member of “Nine Inch Nails” had heard the Demo Tape. Without corroboration, however, this vague double hearsay is not credible in view of Giovanni’s interest and his failure to refer to these events in an earlier sworn statement on the subject.

    39

    In 1994 and 1995, Arthur Joseph Productions also submitted the Demo Tape to Mercury Records, Arista Records, Inc., Columbia Records, MCA Records, Interscope Records, Island Records, Geffen Records, Sony Music, Epic Records and Virgin Records, through particular individuals in most instances. These submissions did not result in any further inquiries with respect to the Demo Tape.

    41

    Ken Lane and Brian Koppelman of EMI were invited to a performance by Blue Dahlia on October 29, 1995 at which SYS was played. Lane attended, but there is no evidence that Koppelman did.

    43

    There has been no effort to promote or sell the Demo Tape since early 1996.

    45

    In early November 1999, Tisi heard TAP for the first time and bought a copy of the compact disc, “Title of Record,” on which the song appears, although in an affidavit submitted in connection with the order to show cause, Tisi stated that he had not learned of the Patrick song until told about it by others in “late December 1999.” The Tisis first consulted an attorney concerning the enforcement of Tisi’s copyright on October 25, 1999.

    47

    Patrick, a Chicago resident, has performed and composed music since 1984 and has achieved wide recognition. In 1989, Patrick, then twenty-one years of age, toured as a guitar player with the band “Nine Inch Nails” and wrote music when not touring. In 1993, Patrick formed his own band, Filter, and in 1994 signed a recording agreement with Warner Brothers Records. “Short Bus,” Filter’s first album with songs written by Patrick, was released in April 1995 by Reprise Records, Inc., a division of Warner Brothers. A two-year tour followed. The “Short Bus” album achieved platinum sales status. Although most of the compositions on “Short Bus” are hard rock, two are more acoustic and softer, as was a 1997 Patrick composition for television.

    49

    In late 1996, Patrick, while playing his electric guitar, hit upon several chords which he liked, and he then composed a chorus, all of which he put aside during the construction of his sound studio in Chicago, the Abyssinian Sons Studio. In November 1997, Patrick recorded this guitar segment with a percussion group and added a melody which was heard by a Reprise executive. He composed the lyrics in 1998, which were related to an incident when Patrick was asleep on an airplane.

    51

    In 1999, Patrick completed work on Filter’s next album, “Title of Record” and included as one of the songs this material which he had worked on in 1996 and 1997 and entitled it “Take A Picture.” In the final version of the song, world-beat drums and a twelve-string guitar and additional guitar tracks were added. TAP was an independent creation by Patrick and those working with him, none of whom had heard SYS.

    53

    TAP was commercially released on August 24, 1999, and was promoted as a single to radio stations beginning on September 21, 1999. It started on the Bill-board “Hot 100” chart at number 91 and by February 12, 2000 had risen to number 12. In early March it was number 20, *543 when it was simultaneously number 1 on the Billboard “Dance” chart. Filter has been on tour since the release of the album “Title of Record,” and TAP has become a signature song for Filter and Patrick. Warner Brothers Records has invested over $4.5 million in the composition, licensing, and promotion of the album.

    55

    Patrick does not accept or listen to unsolicited tapes and has no relationship with EMI Records. EMI April Music Inc. and EMI Music Inc. administer copyrights, including Patrick’s, but have no role in the creative process and have not sent tapes to Patrick or to anyone else. Until this litigation was initiated, Patrick had no knowledge of SYS or of Michael Tisi.

    57

    For the uninitiated, much of rock music sounds the same, and a hasty comparison of SYS and TAP could result in a finding of superficial similarity, as both songs employ a standard usage in rock music: an introduction, verse, chorus, and bridge, with harmonic and rhythmic similarities common to many musical genres, including pop rock. A closer review of the two compositions reveals, however, that they are significantly different. Even to one unversed in the genre, the two songs can be heard to be quite dissimilar.

    59

    The expert presented by the defendants, Dr. Lawrence Ferrara, is the Chair of the Department of Music and Performing Arts at New York University, and a recognized musicologist. Michael White, the expert proffered by Tisi, is a member of the graduate faculty at the Julliard School and a composer of operas, concertos and songs. As to the method of analysis, both were in agreement that the elements to be considered on the question of similarity between SYS and TAP were structure, melody, harmony, and rhythm. Both agree that the melodies of the two songs are dissimilar.[1] As to the other three elements, while there was disagreement as to the ultimate conclusions, both experts noted the same differences and similarities. Dr. Ferrara’s conclusions were sounder and more credible, and his analysis more convincing once the examination moved beyond the initial audible overall dissimilarity of the two songs.

    61

    As to structure, to the extent that the two songs share any structural similarities, those similarities are not significant because they are uniformly shared with most modern popular rock music. Both songs employ a standard usage of introduction, verse, chorus and bridge sections. There are significant structural differences, however. TAP features a lengthy distorted rock guitar intro not found in SYS. In addition, the construction of the verse in both songs is significantly different as can be determined from the verses set forth in Appendix A. Moreover, there is a section that can be termed a “Closing” in TAP that is not found in SYS. Finally, the length of each song differs considerably.

    63

    The harmony is the element where the songs are closest, given the use of certain chords with common characteristics. However, there are notable differences in the harmonies. The harmonies throughout TAP are more complex and dissonant than in SYS, which make the songs sound different. Throughout the introduction and verse sections in TAP a B note (repeatedly played by the guitar) is present in almost every chord, which connects and defines the harmonic progression. No comparable or defining harmonic device is used in SYS.

    65

    Both songs are in the key of A major, as are countless songs in all genres of music. In addition, although both songs feature in their respective introductions and verses a basic “I-IV” harmonic progression, which is built on the first and fourth steps of the scale (in SYS and TAP, from the A chord to the D chord), this harmonic progression can be found in songs in all genres and therefore its use in both SYS and TAP does not constitute a significant similarity.

    67

    *544 In addition, there are significant differences within the “I-IV” harmonic progressions found in TAP and SYS, although Tisi’s expert urged that the four chords upon which both songs are based are the same: A (A7 and A9); D sus 4; D major. In fact, the four chord progression he describes (A(A7 and A9); Dsus4; D) occurs only in the introduction and verse in SYS and does not occur anywhere in TAP. The harmonic progressions found in TAP’s respective introduction and verse are charted as follows:
    5-8: A A Asus4 A Dsus4 D Dsus4 D 9-12: Asus2 Aadd2 Asus2 Asus4(add2) A(add2) Dsus4(add6) D6 Dsus4(add6) D6 13-16: Asus2 Aadd2 Asus2 Asus4(add2) A(add2) Dsus4(add6) D6 Dsus4(add6) D6

    69

    Although the “bottom notes” in the harmonies charted above are the same (A and D), the use in each song of the name or “root” of the chord as the “bottom note” for such chords is extremely common. By contrast, the contour of the upper voicing or “top notes” for the chords in their respective introduction is different:
    SYS measures 1-8: B C# G F# G F# B C# F# TAP measures 9-16 B C# B D C# G F# G F# B C# B D C# G F# G F#

    71

    Because of the different chords used in TAP, as described above, TAP’s harmony is more complex, nuanced, and dissonant than the harmony of SYS and produces a different musical sound. These harmonic differences demonstrate that the harmony of the two songs is not shared. The sole similarity—the I chord (A chord) to IV chord (D chord) progression—is so common to rock and pop genres (indeed, to every type of Western music) that it alone does not make the songs sound any more similar than countless other songs.

    73

    A lay listener may hear a basic similarity between the guitar rhythm of both songs because in both songs it is primarily based on four basic accents per measure. However, this rhythmic similarity is not significant because this guitar rhythm is extremely common in the pop rock genre, and is also featured in Eastern European folk music and is not original to either SYS or TAP. Moreover, in SYS, sixteenth notes are played evenly on a high hat cymbal and quarter notes are played on a bass drum. In addition, a tambourine and drum play on the second and fourth beats. This basic percussion rhythm is extremely common in the pop rock genre.

    75

    The percussion parts in TAP are much more complex. TAP employs “world music” rhythms and sounds with the use of uneven sixteenth notes and other patterns played by a percussion instrument known as a shaker, as well as contrasting rhythms played by a conga. In addition, as the song progresses, TAP layers multiple percussion tracks, which create complex and highly syncopated rhythms. These rhythms are associated with “tribal music” (a term used by ethnomusicologists). No similar rhythmic complexity can be found in SYS.

    77

    Furthermore, despite the superficial similarity of the guitar rhythms of the songs, significant differences exist. Multiple guitar tracks are layered in TAP which create a more complex guitar rhythm than in SYS. Further, the guitar rhythm in the first eight measures of SYS differs in several significant ways from the guitar rhythm in the correlative measures of TAP. The most prominent rhythmic difference is each song’s approach to the fourth beat in each measure. In SYS, three sixteenth notes approach the fourth beat. By contrast, in TAP one sixteenth note followed by one eighth note approaches the fourth beat.

    79

    As mentioned, the melody in TAP does not share any notable similarities with the melody in SYS.

    81

    *545 What similarities do exist between TAP and SYS can also be found in prior art contained in works by other groups and composers such as The Pretenders, U2, Eurythmics, Peter Gabriel, Neil Diamond, and Bon Jovi, as demonstrated by Dr. Ferrara. Although Tisi objected to the transposition of certain of the prior art songs to the key of A major to facilitate comparisons, transcription is an accepted practice for musicological analysis. The harmonic progressions and basic rhythms of this prior art are common to many rock compositions.

    83

    However, TAP contains what Dr. Ferrara termed “fingerprints,” unique treatments used by Filter and Patrick. TAP uses rhythmic patterns, musical instruments (such as the shaker and conga) and melodic formulae which provide a flavor of “tribal music” as do several songs on the “Title of Record” album: “Sand” (track 1), “It’s Gonna Kill Me” (track 4, especially at 1’23” and 2’04”), “The Best Things” (track 5) and “Miss Blue” (track 11), each fusing “world music” with pop rock music. Another distinguishing characteristic in TAP and other Filter songs is the enormous increase in its dynamics and rhythmic complexity as the song develops and flows to its ending. Furthermore, close to the end of TAP (with the lyrics, “Hey, dad, what do you think about your son now?”), the vocal range is very high, singing/screaming high B’s, a range found in other Filter songs.

    85

    In addition, like TAP, “So Cool,” another Filter song, has a closing section constituted of electronic synthesis, which is absent in SYS. In view of the similarities that TAP shares with the other songs recorded by Filter, TAP is consistent with Filter’s other musical works.

    87

    The most memorable characteristics in TAP (which include complex rhythms, multi-layered guitar and percussion tracks, harmonic dissonance, vocal melody, a dynamic build-up to the end, and a “world music” flavor) are absent in SYS. To the extent that there are any similarities between the two songs, those similarities are insignificant and incidental and can be attributed to common musical practices in rock and pop music. The analysis of the two songs reinforces the finding. TAP was created without any reference to SYS.

    89

    As between Tisi and Patrick, the facts already set forth demonstrate that the balance of hardship, were injunctive relief granted, tilts strongly against Tisi’s unknown and unpublished composition and in favor of Patrick’s highly successfully and expensively promoted composition. This tilt is accentuated by Tisi’s failure to act during much of the period of TAP’S promotion.

    91

    CONCLUSIONS OF LAW

    93

    I. The Applicable Legal Standards

    95

    A. Preliminary Injunction

    97

    A preliminary injunction is “an extraordinary and drastic remedy” which should not be granted “absent a clear showing that the movant has met its burden of proof.” Karmikel Corp. v. May Dep’t Stores Co., 658 F.Supp. 1361, 1367 (S.D.N.Y.1987); see also Parenting Unltd. v. Columbia Pictures Television, 743 F.Supp. 221, 224 (S.D.N.Y.1990).

    99

    A preliminary injunction may not be issued unless the moving party establishes:

    101

    Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1038 (2d Cir. 1992) (vacating preliminary injunction); see also Harm Reduction Coalition v. Bratton, No. 95 Civ. 3171, 1995 WL 271766, at *1 (S.D.N.Y. May 9, 1995) (preliminary injunction denied).

    103

    *546 In cases of copyright infringement, irreparable injury is generally presumed if the plaintiff can demonstrate a likelihood of success on the merits. See, e.g., Richard Feiner & Co. v. Turner Entertainment Co., 98 F.3d 33, 34 (2d Cir.1996).

    105

    B. Summary Judgment

    107

    Rule 56(c); of the Federal Rules of Civil Procedure provides that a motion for summary judgment may be granted when “there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.” The Second Circuit has repeatedly noted that “as a general rule, all ambiguities and inferences to be drawn from the underlying facts should be resolved in favor of the party opposing the motion, and all doubts as to the existence of a genuine issue for trial should be resolved against the moving party.” Brady v. Town of Colchester, 863 F.2d 205, 210 (2d Cir.1988) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 330 n. 2, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) (Brennan, J., dissenting)); see Tomka v. Seiler Corp., 66 F.3d 1295, 1304 (2d Cir.1995); Burrell v. City Univ., 894 F.Supp. 750, 757 (S.D.N.Y.1995). If, when viewing the evidence produced in the light most favorable to the non-movant, there is no genuine issue of material fact, then the entry of summary judgment is appropriate. See Burrell, 894 F.Supp. at 758 (citing Binder v. Long Island Lighting Co., 933 F.2d 187, 191 (2d Cir.1991)).

    109

    Materiality is defined by the governing substantive law. “Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment. Factual disputes that are irrelevant or unnecessary will not be counted.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). ”[T]he mere existence of factual issues— where those issues are not material to the claims before the court—will not suffice to defeat a motion for summary judgment.” Quarles v. General Motors Corp., 758 F.2d 839, 840 (2d Cir.1985).

    111

    For a dispute to be genuine, there must be more than “metaphysical doubt.” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). “If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted.” Anderson, 477 U.S. at 249-50, 106 S.Ct. 2505 (citations omitted).

    113

    II. Copyright Infringement

    115

    There are two elements to a copyright infringement claim: ”(1) ownership of a valid copyright; and (2) copying of constituent elements of the work that are original.” Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991); accord Fonar Corp. v. Domenick, 105 F.3d 99, 103 (2d Cir.1997).

    117

    A certificate of registration from the United States Register of Copyrights constitutes prima facie evidence of the valid ownership of a copyright. See 17 U.S.C. § 410(c);. Tisi has secured such registration for SYS and Defendants do not dispute the validity of Tisi’s copyright in SYS. Thus, Tisi meets the first element of an infringement claim.

    119

    “To prove infringement, a plaintiff with a valid copyright must demonstrate that: `(1) the defendant has actually copied the plaintiff’s work; and (2) the copying is illegal because a substantial similarity exists between the defendant’s work and the protectible elements of plaintiff’s.’” Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir.1995) (quoting Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119, 122-23 (2d Cir.1994)).

    121

    Lipton v. Nature Co., 71 F.3d 464, 471 (2d Cir.1995).

    123

    A. Access Has Not Been Demonstrated

    125

    Although Arthur Tisi submitted unsolicited demo tapes containing SYS to EMI Records and Warner Brothers, there is no evidence that SYS was ever conveyed from EMI Records or Warner Brothers Records to Patrick or to anyone with creative input into TAP.

    127

    Access means that the alleged infringer “had an opportunity to view or copy plaintiff’s work.” Sid & Marty Krofft Television Prod. v. McDonald’s Corp., 562 F.2d 1157, 1172 (9th Cir.1977) (citing Arrow Novelty Co. v. Enco Nat’l Corp., 393 F.Supp. 157, 160 (S.D.N.Y.), aff’d 515 F.2d 504 (2d Cir.1975)). The plaintiff has the burden of presenting “significant, affirmative and probative” evidence to support a claim of access. See, e.g., Palmieri v. Estefan, 35 U.S.P.Q.2d 1382 (S.D.N.Y.1995), aff’d on other grounds, 88 F.3d 136 (2d Cir.1996); Intersong-USA v. CBS, Inc., 757 F.Supp. 274, 281 (S.D.N.Y.1991). Conjecture or speculation is insufficient. See, e.g., Cox v. Abrams, No. 93 Civ. 6899, 1997 WL 251532, at *3 (S.D.N.Y. May 14, 1997) (“To survive summary judgment Plaintiffs must show a reasonable possibility of access, not a bare possibility.”); Intersong-USA, 757 F.Supp. at 281.

    129

    This principle has been confirmed recently in Dimmie v. Carey, 88 F.Supp.2d 142 (S.D.N.Y.2000). Dimmie rejected a claim nearly identical to that asserted here, holding that plaintiff’s submission of her song to Columbia Records failed to establish that there was a “reasonable possibility” that the composers had access to the song and granting defendants’ motion for summary judgment. See id. at 145-48.

    131

    The same result was previously reached by this Court in Novak v. National Broad. Co., 752 F.Supp. 164 (S.D.N.Y.1990), in which the plaintiffs had alleged that the creators of “Saturday Night Live” had copied a comedy sketch that the plaintiffs had written. The plaintiffs had submitted a tape containing their sketch to NBC Entertainment’s president, Brandon Tartikoff, and Saturday Night Live’s allegedly infringing skit aired approximately three weeks later. The tape was subsequently returned to plaintiffs, along with a note typed on Tartikoff’s letterhead stating, “We found this in our office and thought you might like it back.” Id. at 167. Tartikoff testified that he never viewed plaintiffs’ tape. The Court noted that plaintiffs had not introduced any evidence contradicting Tartikoff’s testimony. The Court held that plaintiffs had failed to raise a genuine issue of fact regarding access and granted summary judgment dismissing plaintiffs’ claim.

    133

    Cox v. Abrams, 1997 WL 251532, is in accord as are a number of other cases.[2] *548 While Tisi has cited Gaste v. Kaiserman, 863 F.2d 1061 (2d Cir.1988), to support the claim of access, Gaste did not address the “bare corporate receipt” doctrine, and in Gaste the court found that defendant Kaiserman offered demonstrably false evidence in an effort to dispute access.

    135

    There is no question that Tisi has failed to meet the standard on a motion for a preliminary injunction for demonstrating access, to say nothing of his failure to meet the standard for summary judgment. On the contrary, even construing the facts in the light most favorable to Tisi, he has failed to establish as a matter of law that Patrick or anyone else involved with the creation of TAP had access to SYS.

    137

    B. Tisi Has Made No Showing of Striking Similarity

    139

    As Tisi has failed to prove access as a matter of law—even construing the facts in the light most favorable to Tisi—in order to prevail on his motions either for a preliminary injunction or for summary judgment, Tisi must now show that TAP is strikingly similar to SYS. Indeed, in order to defeat Defendants’ cross-motion for summary judgment Tisi must set forth disputed facts material to a finding of striking similarity. This he has not done.

    141

    Under the stringent test of “striking similarity,” a plaintiff can avoid dismissal only by proving that the works “are so `strikingly similar’ as to preclude the possibility of independent creation.” Cox, 1997 WL 251532 at *3 (quoting Gaste, 863 F.2d at 1067-68); see also Ferguson v. National Broad. Co., 584 F.2d 111, 113 (5th Cir.1978) (same). ”[S]triking similarity exists when two works are so nearly alike that the only reasonable explanation for such a great degree of similarity is that the later … was copied from the first.” Cox, 1997 WL 251532 at *5 (citations omitted).

    143

    The striking similarity test, moreover, is applied with particular stringency in cases, such as here, involving popular music. McRae v. Smith, 968 F.Supp. 559, 566 (D.Colo.1997) (citing Gaste, 863 F.2d at 1068). Indeed, the Second Circuit has instructed that a court must be “mindful of the limited number of notes and chords available to composers and the resulting fact that common themes frequently appear in various compositions, especially in popular music.” Gaste, 863 F.2d at 1068; see also McRae, 968 F.Supp. at 566-67 (rejecting plaintiff’s experts’ claim of striking similarity because most of the elements the experts relied on—such as the songs’ rhythm, chord progression, and melodic line—were common musical elements which were not copyrightable); Jarvis v. A & M Records, 827 F.Supp. 282, 291 (D.N.J. 1993) (“Easily arrived at phrases and chord progressions are usually non copyrightable”); Intersong-USA, 757 F.Supp. at 282 (songs’ structure, patterns, harmonic progression and recurring eighth note rhythm were common musical elements which were not copyrightable).

    145

    Even construing the facts in the light most favorable to Tisi, the two songs are not strikingly similar as a matter of law. Significantly, Tisi cannot contend that either the lyrics or the melody of TAP are strikingly similar to SYS. His striking similarity theory is based solely on basic, non-protectible musical elements found in his song: the key of A major, tempo (although Tisi’s expert concedes that TAP actually has a slower tempo), a chord structure/harmonic progression common to much rock music (although the structure is not identical, which Tisi’s expert admits), the guitar rhythm (but not the overall *549 rhythm and percussion, nor the additional guitar rhythms in TAP), and the fact that the chords of both songs are in “root” position. These elements are not copyrightable as a matter of law and summary judgment for defendants is appropriate. See, e.g., McRae, 968 F.Supp. at 566-67; Jarvis, 827 F.Supp. at 291; Intersong-USA, 757 F.Supp. at 282.

    147

    As found above, there is nothing unusual about the key of A Major, a “I-IV” chord progression, the rhythm of SYS, an acoustic guitar introduction, or the so-called “adult contemporary” style of his song, as are demonstrated in numerous songs written and recorded by other well-known recording artists. The elements Tisi alleges were copied are not copyrightable.[3]

    149

    Further, numerous elements of the two songs, including the structure, chords and rhythm, are clearly distinguishable from one another. “Although plaintiff’s expert opines that the songs are strikingly similar, an issue of fact cannot be created by merely reciting the magic words `strikingly similar’ and `no possibility of independent creation.’” McRae, 968 F.Supp. at 566.

    151

    Finally, as found above, Patrick has established by unrebutted evidence that TAP was created independently. Even a prima facie case of copying may be rebutted by proof of independent creation. See, e.g., Procter & Gamble Co. v. Colgate-Palmolive Co., 199 F.3d 74, 77 (2d Cir.1999); Repp v. Webber, 132 F.3d 882, 889 (2d Cir.1997) (”[i]ndependent creation is an affirmative defense, evidence of which may be introduced to rebut a prima facie case of infringement”); Dimmie, 88 F.Supp.2d at 150-51; Cox, 1997 WL 251532, at *7 (“Even if plaintiffs were able to infer copying, defendants could rebut this inference with evidence that the challenged work was independently created.”).

    153

    In sum, the two songs share nothing in common aside from the use of basic pop and rock musical devices, which are common to many, many songs. The numerous differences between the chord progressions, tempo, rhythm, structure, lyrics and melodies of the two songs precludes as a matter of law a finding of striking similarity.

    155

    Conclusion

    157

    For the reasons set forth above, Tisi’ motions for a preliminary injunction and for summary judgment are denied. Defendants’ motion for summary judgment is granted.

    159

    Submit judgment on notice.

    161

    It is so ordered.

    163

    [1] In addition, the lyrics of the two songs are completely different.

    165

    [2] See, e.g., Siskind v. Newton-John, No. 84 Civ. 2634, 1987 WL 11701, at *5 (S.D.N.Y. May 22, 1987) (granting defendants’ motion for summary judgment and stating that, ”[t]he most that plaintiff can be said to have shown is that the [plaintiff’s] tape was in the possession of [the recording company’s] personnel. ... It must be concluded that plaintiff has made no showing of access which is even sufficient to raise a triable issue of fact.”); Eaton v. National Broad. Co., 972 F.Supp. 1019, 1024 n. 7 (E.D.Va.1997) (proof of access to plaintiff’s work by the corporation which broadcast the allegedly infringing work is insufficient because “it is access by the creators of the allegedly infringing work that must be shown”), aff’d mem., 145 F.3d 1324 (4th Cir.1998); Meta-Film Assocs. v. MCA, Inc., 586 F.Supp. 1346, 1355 (C.D.Ca.1984) (access may be inferred only where it is reasonable to assume that the person to whom the plaintiff sent her work viewed it and then transmitted it to the creator of the allegedly infringing work, i.e., where the alleged intermediary “either was a supervisor with responsibility for the defendant’s project, was part of the same work unit as the copier, or contributed creative ideas or material to the defendant’s work”); Vantage Point, Inc. v. Parker Bros., 529 F.Supp. 1204, 1213 (E.D.N.Y.1981), aff’d, 697 F.2d 301 (2d Cir. 1982) (proof that plaintiff sent a copy of his game idea to Parker Brothers’ president and that such idea was received did not constitute a prima facie showing of access).

    167

    [3] Similarly, any claim that TAP copied the arrangement of SYS also must fail. It has been stated that a musical arrangement only qualifies for copyright protection if it has “a distinctive characteristic, aside from the composition itself, of such character that any person hearing it played would become aware of the distinctiveness of the arrangement.” Supreme Records v. Decca Records, Inc., 90 F.Supp. 904, 908 (S.D.Ca.1950). See also McIntyre v. Double-A-Music Corp., 166 F.Supp. 681, 683 (S.D.Ca.1958) (arrangement consisting of common melodic and harmonic embellishments not sufficiently original to qualify for copyright protection). Here, there is nothing distinctive about the arrangement (e.g., instrumentation, style and orchestration) of SYS.

  • 2 Tisi v. Patrick, Case No. 00 CIV. 0882 (RWS) (S.D.N.Y.), Lawrence Ferrara, Report re: Sell Your Soul and Take a Picture (March 6, 2000)

  • 3 Ronald S. Rosen, Music and Copyright, Oxford University Press (2008), pp. 400 - 414 (.pdf)

  • 4 Federal Rule of Evidence 702

    1

    Rule 702. Testimony by Expert Witnesses

    3

    A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if:

    5

    (a) the expert’s scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue;

    7

    (b) the testimony is based on sufficient facts or data;

    9

    (c) the testimony is the product of reliable principles and methods; and

    11

    (d) the expert has reliably applied the principles and methods to the facts of the case.
    Notes

    13

    (Pub. L. 93–595, §1, Jan. 2, 1975, 88 Stat. 1937; Apr. 17, 2000, eff. Dec. 1, 2000; Apr. 26, 2011, eff. Dec. 1, 2011.)

    15

    Notes of Advisory Committee on Proposed Rules

    17

    An intelligent evaluation of facts is often difficult or impossible without the application of some scientific, technical, or other specialized knowledge. The most common source of this knowledge is the expert witness, although there are other techniques for supplying it.

    19

    Most of the literature assumes that experts testify only in the form of opinions. The assumption is logically unfounded. The rule accordingly recognizes that an expert on the stand may give a dissertation or exposition of scientific or other principles relevant to the case, leaving the trier of fact to apply them to the facts. Since much of the criticism of expert testimony has centered upon the hypothetical question, it seems wise to recognize that opinions are not indispensable and to encourage the use of expert testimony in non-opinion form when counsel believes the trier can itself draw the requisite inference. The use of opinions is not abolished by the rule, however. It will continue to be permissible for the experts to take the further step of suggesting the inference which should be drawn from applying the specialized knowledge to the facts. See Rules 703 to 705.

    21

    Whether the situation is a proper one for the use of expert testimony is to be determined on the basis of assisting the trier. “There is no more certain test for determining when experts may be used than the common sense inquiry whether the untrained layman would be qualified to determine intelligently and to the best possible degree the particular issue without enlightenment from those having a specialized understanding of the subject involved in the dispute.” Ladd, Expert Testimony, 5 Vand.L.Rev. 414, 418 (1952). When opinions are excluded, it is because they are unhelpful and therefore superfluous and a waste of time. 7 Wigmore §1918.

    23

    The rule is broadly phrased. The fields of knowledge which may be drawn upon are not limited merely to the “scientific” and “technical” but extend to all “specialized” knowledge. Similarly, the expert is viewed, not in a narrow sense, but as a person qualified by “knowledge, skill, experience, training or education.” Thus within the scope of the rule are not only experts in the strictest sense of the word, e.g., physicians, physicists, and architects, but also the large group sometimes called “skilled” witnesses, such as bankers or landowners testifying to land values.

    25

    Committee Notes on Rules—2000 Amendment

    27

    Rule 702 has been amended in response to Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), and to the many cases applying Daubert, including Kumho Tire Co. v. Carmichael, 119 S.Ct. 1167 (1999). In Daubert the Court charged trial judges with the responsibility of acting as gatekeepers to exclude unreliable expert testimony, and the Court in Kumho clarified that this gatekeeper function applies to all expert testimony, not just testimony based in science. See also Kumho, 119 S.Ct. at 1178 (citing the Committee Note to the proposed amendment to Rule 702, which had been released for public comment before the date of the Kumho decision). The amendment affirms the trial court’s role as gatekeeper and provides some general standards that the trial court must use to assess the reliability and helpfulness of proffered expert testimony. Consistently with Kumho, the Rule as amended provides that all types of expert testimony present questions of admissibility for the trial court in deciding whether the evidence is reliable and helpful. Consequently, the admissibility of all expert testimony is governed by the principles of Rule 104(a). Under that Rule, the proponent has the burden of establishing that the pertinent admissibility requirements are met by a preponderance of the evidence. See Bourjaily v. United States, 483 U.S. 171 (1987).

    29

    Daubert set forth a non-exclusive checklist for trial courts to use in assessing the reliability of scientific expert testimony. The specific factors explicated by the Daubert Court are (1) whether the expert’s technique or theory can be or has been tested—that is, whether the expert’s theory can be challenged in some objective sense, or whether it is instead simply a subjective, conclusory approach that cannot reasonably be assessed for reliability; (2) whether the technique or theory has been subject to peer review and publication; (3) the known or potential rate of error of the technique or theory when applied; (4) the existence and maintenance of standards and controls; and (5) whether the technique or theory has been generally accepted in the scientific community. The Court in Kumho held that these factors might also be applicable in assessing the reliability of nonscientific expert testimony, depending upon “the particular circumstances of the particular case at issue.” 119 S.Ct. at 1175.

    31

    No attempt has been made to “codify” these specific factors. Daubert itself emphasized that the factors were neither exclusive nor dispositive. Other cases have recognized that not all of the specific Daubert factors can apply to every type of expert testimony. In addition to Kumho, 119 S.Ct. at 1175, see Tyus v. Urban Search Management, 102 F.3d 256 (7th Cir. 1996) (noting that the factors mentioned by the Court in Daubert do not neatly apply to expert testimony from a sociologist). See also Kannankeril v. Terminix Int’l, Inc., 128 F.3d 802, 809 (3d Cir. 1997) (holding that lack of peer review or publication was not dispositive where the expert’s opinion was supported by “widely accepted scientific knowledge”). The standards set forth in the amendment are broad enough to require consideration of any or all of the specific Daubert factors where appropriate.

    33

    Courts both before and after Daubert have found other factors relevant in determining whether expert testimony is sufficiently reliable to be considered by the trier of fact. These factors include:

    35

    (1) Whether experts are “proposing to testify about matters growing naturally and directly out of research they have conducted independent of the litigation, or whether they have developed their opinions expressly for purposes of testifying.” Daubert v. Merrell Dow Pharmaceuticals, Inc., 43 F.3d 1311, 1317 (9th Cir. 1995).

    37

    (2) Whether the expert has unjustifiably extrapolated from an accepted premise to an unfounded conclusion. See General Elec. Co. v. Joiner, 522 U.S. 136, 146 (1997) (noting that in some cases a trial court “may conclude that there is simply too great an analytical gap between the data and the opinion proffered”).

    39

    (3) Whether the expert has adequately accounted for obvious alternative explanations. See Claar v. Burlington N.R.R., 29 F.3d 499 (9th Cir. 1994) (testimony excluded where the expert failed to consider other obvious causes for the plaintiff’s condition). Compare Ambrosini v. Labarraque, 101 F.3d 129 (D.C.Cir. 1996) (the possibility of some uneliminated causes presents a question of weight, so long as the most obvious causes have been considered and reasonably ruled out by the expert).

    41

    (4) Whether the expert “is being as careful as he would be in his regular professional work outside his paid litigation consulting.” Sheehan v. Daily Racing Form, Inc., 104 F.3d 940, 942 (7th Cir. 1997). See Kumho Tire Co. v. Carmichael, 119 S.Ct. 1167, 1176 (1999) (Daubert requires the trial court to assure itself that the expert “employs in the courtroom the same level of intellectual rigor that characterizes the practice of an expert in the relevant field”).

    43

    (5) Whether the field of expertise claimed by the expert is known to reach reliable results for the type of opinion the expert would give. See Kumho Tire Co. v. Carmichael, 119 S.Ct. 1167, 1175 (1999) (Daubert’s general acceptance factor does not “help show that an expert’s testimony is reliable where the discipline itself lacks reliability, as, for example, do theories grounded in any so-called generally accepted principles of astrology or necromancy.”); Moore v. Ashland Chemical, Inc., 151 F.3d 269 (5th Cir. 1998) (en banc) (clinical doctor was properly precluded from testifying to the toxicological cause of the plaintiff’s respiratory problem, where the opinion was not sufficiently grounded in scientific methodology); Sterling v. Velsicol Chem. Corp., 855 F.2d 1188 (6th Cir. 1988) (rejecting testimony based on “clinical ecology” as unfounded and unreliable).

    45

    All of these factors remain relevant to the determination of the reliability of expert testimony under the Rule as amended. Other factors may also be relevant. See Kumho, 119 S.Ct. 1167, 1176 (“[W]e conclude that the trial judge must have considerable leeway in deciding in a particular case how to go about determining whether particular expert testimony is reliable.”). Yet no single factor is necessarily dispositive of the reliability of a particular expert’s testimony. See, e.g., Heller v. Shaw Industries, Inc., 167 F.3d 146, 155 (3d Cir. 1999) (“not only must each stage of the expert’s testimony be reliable, but each stage must be evaluated practically and flexibly without bright-line exclusionary (or inclusionary) rules.”); Daubert v. Merrell Dow Pharmaceuticals, Inc., 43 F.3d 1311, 1317, n.5 (9th Cir. 1995) (noting that some expert disciplines “have the courtroom as a principal theatre of operations” and as to these disciplines “the fact that the expert has developed an expertise principally for purposes of litigation will obviously not be a substantial consideration.”).

    47

    A review of the caselaw after Daubert shows that the rejection of expert testimony is the exception rather than the rule. Daubert did not work a “seachange over federal evidence law,” and “the trial court’s role as gatekeeper is not intended to serve as a replacement for the adversary system.” United States v. 14.38 Acres of Land Situated in Leflore County, Mississippi, 80 F.3d 1074, 1078 (5th Cir. 1996). As the Court in Daubert stated: “Vigorous cross-examination, presentation of contrary evidence, and careful instruction on the burden of proof are the traditional and appropriate means of attacking shaky but admissible evidence.” 509 U.S. at 595. Likewise, this amendment is not intended to provide an excuse for an automatic challenge to the testimony of every expert. See Kumho Tire Co. v. Carmichael, 119 S.Ct. 1167, 1176 (1999) (noting that the trial judge has the discretion “both to avoid unnecessary ‘reliability’ proceedings in ordinary cases where the reliability of an expert’s methods is properly taken for granted, and to require appropriate proceedings in the less usual or more complex cases where cause for questioning the expert’s reliability arises.”).

    49

    When a trial court, applying this amendment, rules that an expert’s testimony is reliable, this does not necessarily mean that contradictory expert testimony is unreliable. The amendment is broad enough to permit testimony that is the product of competing principles or methods in the same field of expertise. See, e.g., Heller v. Shaw Industries, Inc., 167 F.3d 146, 160 (3d Cir. 1999) (expert testimony cannot be excluded simply because the expert uses one test rather than another, when both tests are accepted in the field and both reach reliable results). As the court stated in In re Paoli R.R. Yard PCB Litigation, 35 F.3d 717, 744 (3d Cir. 1994), proponents “do not have to demonstrate to the judge by a preponderance of the evidence that the assessments of their experts are correct, they only have to demonstrate by a preponderance of evidence that their opinions are reliable. . . . The evidentiary requirement of reliability is lower than the merits standard of correctness.” See also Daubert v. Merrell Dow Pharmaceuticals, Inc., 43 F.3d 1311, 1318 (9th Cir. 1995) (scientific experts might be permitted to testify if they could show that the methods they used were also employed by “a recognized minority of scientists in their field.”); Ruiz-Troche v. Pepsi Cola, 161 F.3d 77, 85 (1st Cir. 1998) (“ Daubert neither requires nor empowers trial courts to determine which of several competing scientific theories has the best provenance.”).

    51

    The Court in Daubert declared that the “focus, of course, must be solely on principles and methodology, not on the conclusions they generate.” 509 U.S. at 595. Yet as the Court later recognized, “conclusions and methodology are not entirely distinct from one another.” General Elec. Co. v. Joiner, 522 U.S. 136, 146 (1997). Under the amendment, as under Daubert, when an expert purports to apply principles and methods in accordance with professional standards, and yet reaches a conclusion that other experts in the field would not reach, the trial court may fairly suspect that the principles and methods have not been faithfully applied. See Lust v. Merrell Dow Pharmaceuticals, Inc., 89 F.3d 594, 598 (9th Cir. 1996). The amendment specifically provides that the trial court must scrutinize not only the principles and methods used by the expert, but also whether those principles and methods have been properly applied to the facts of the case. As the court noted in In re Paoli R.R. Yard PCB Litig., 35 F.3d 717, 745 (3d Cir. 1994), “ any step that renders the analysis unreliable . . . renders the expert’s testimony inadmissible. This is true whether the step completely changes a reliable methodology or merely misapplies that methodology.”

    53

    If the expert purports to apply principles and methods to the facts of the case, it is important that this application be conducted reliably. Yet it might also be important in some cases for an expert to educate the factfinder about general principles, without ever attempting to apply these principles to the specific facts of the case. For example, experts might instruct the factfinder on the principles of thermodynamics, or bloodclotting, or on how financial markets respond to corporate reports, without ever knowing about or trying to tie their testimony into the facts of the case. The amendment does not alter the venerable practice of using expert testimony to educate the factfinder on general principles. For this kind of generalized testimony, Rule 702 simply requires that: (1) the expert be qualified; (2) the testimony address a subject matter on which the factfinder can be assisted by an expert; (3) the testimony be reliable; and (4) the testimony “fit” the facts of the case.

    55

    As stated earlier, the amendment does not distinguish between scientific and other forms of expert testimony. The trial court’s gatekeeping function applies to testimony by any expert. See Kumho Tire Co. v. Carmichael, 119 S.Ct. 1167, 1171 (1999) (“We conclude that Daubert’s general holding—setting forth the trial judge’s general ‘gatekeeping’ obligation—applies not only to testimony based on ‘scientific’ knowledge, but also to testimony based on ‘technical’ and ‘other specialized’ knowledge.”). While the relevant factors for determining reliability will vary from expertise to expertise, the amendment rejects the premise that an expert’s testimony should be treated more permissively simply because it is outside the realm of science. An opinion from an expert who is not a scientist should receive the same degree of scrutiny for reliability as an opinion from an expert who purports to be a scientist. See Watkins v. Telsmith, Inc., 121 F.3d 984, 991 (5th Cir. 1997) (“[I]t seems exactly backwards that experts who purport to rely on general engineering principles and practical experience might escape screening by the district court simply by stating that their conclusions were not reached by any particular method or technique.”). Some types of expert testimony will be more objectively verifiable, and subject to the expectations of falsifiability, peer review, and publication, than others. Some types of expert testimony will not rely on anything like a scientific method, and so will have to be evaluated by reference to other standard principles attendant to the particular area of expertise. The trial judge in all cases of proffered expert testimony must find that it is properly grounded, well-reasoned, and not speculative before it can be admitted. The expert’s testimony must be grounded in an accepted body of learning or experience in the expert’s field, and the expert must explain how the conclusion is so grounded. See, e.g., American College of Trial Lawyers, Standards and Procedures for Determining the Admissibility of Expert Testimony after Daubert, 157 F.R.D. 571, 579 (1994) (“[W]hether the testimony concerns economic principles, accounting standards, property valuation or other non-scientific subjects, it should be evaluated by reference to the ‘knowledge and experience’ of that particular field.”).

    57

    The amendment requires that the testimony must be the product of reliable principles and methods that are reliably applied to the facts of the case. While the terms “principles” and “methods” may convey a certain impression when applied to scientific knowledge, they remain relevant when applied to testimony based on technical or other specialized knowledge. For example, when a law enforcement agent testifies regarding the use of code words in a drug transaction, the principle used by the agent is that participants in such transactions regularly use code words to conceal the nature of their activities. The method used by the agent is the application of extensive experience to analyze the meaning of the conversations. So long as the principles and methods are reliable and applied reliably to the facts of the case, this type of testimony should be admitted.

    59

    Nothing in this amendment is intended to suggest that experience alone—or experience in conjunction with other knowledge, skill, training or education—may not provide a sufficient foundation for expert testimony. To the contrary, the text of Rule 702 expressly contemplates that an expert may be qualified on the basis of experience. In certain fields, experience is the predominant, if not sole, basis for a great deal of reliable expert testimony. See, e.g., United States v. Jones, 107 F.3d 1147 (6th Cir. 1997) (no abuse of discretion in admitting the testimony of a handwriting examiner who had years of practical experience and extensive training, and who explained his methodology in detail); Tassin v. Sears Roebuck, 946 F.Supp. 1241, 1248 (M.D.La. 1996) (design engineer’s testimony can be admissible when the expert’s opinions “are based on facts, a reasonable investigation, and traditional technical/mechanical expertise, and he provides a reasonable link between the information and procedures he uses and the conclusions he reaches”). See also Kumho Tire Co. v. Carmichael, 119 S.Ct. 1167, 1178 (1999) (stating that “no one denies that an expert might draw a conclusion from a set of observations based on extensive and specialized experience.”).

    61

    If the witness is relying solely or primarily on experience, then the witness must explain how that experience leads to the conclusion reached, why that experience is a sufficient basis for the opinion, and how that experience is reliably applied to the facts. The trial court’s gatekeeping function requires more than simply “taking the expert’s word for it.” See Daubert v. Merrell Dow Pharmaceuticals, Inc., 43 F.3d 1311, 1319 (9th Cir. 1995) (“We’ve been presented with only the experts’ qualifications, their conclusions and their assurances of reliability. Under Daubert, that’s not enough.”). The more subjective and controversial the expert’s inquiry, the more likely the testimony should be excluded as unreliable. See O’Conner v. Commonwealth Edison Co., 13 F.3d 1090 (7th Cir. 1994) (expert testimony based on a completely subjective methodology held properly excluded). See also Kumho Tire Co. v. Carmichael, 119 S.Ct. 1167, 1176 (1999) (“[I]t will at times be useful to ask even of a witness whose expertise is based purely on experience, say, a perfume tester able to distinguish among 140 odors at a sniff, whether his preparation is of a kind that others in the field would recognize as acceptable.”).

    63

    Subpart (1) of Rule 702 calls for a quantitative rather than qualitative analysis. The amendment requires that expert testimony be based on sufficient underlying “facts or data.” The term “data” is intended to encompass the reliable opinions of other experts. See the original Advisory Committee Note to Rule 703. The language “facts or data” is broad enough to allow an expert to rely on hypothetical facts that are supported by the evidence. Id.

    65

    When facts are in dispute, experts sometimes reach different conclusions based on competing versions of the facts. The emphasis in the amendment on “sufficient facts or data” is not intended to authorize a trial court to exclude an expert’s testimony on the ground that the court believes one version of the facts and not the other.

    67

    There has been some confusion over the relationship between Rules 702 and 703. The amendment makes clear that the sufficiency of the basis of an expert’s testimony is to be decided under Rule 702. Rule 702 sets forth the overarching requirement of reliability, and an analysis of the sufficiency of the expert’s basis cannot be divorced from the ultimate reliability of the expert’s opinion. In contrast, the “reasonable reliance” requirement of Rule 703 is a relatively narrow inquiry. When an expert relies on inadmissible information, Rule 703 requires the trial court to determine whether that information is of a type reasonably relied on by other experts in the field. If so, the expert can rely on the information in reaching an opinion. However, the question whether the expert is relying on a sufficient basis of information—whether admissible information or not—is governed by the requirements of Rule 702.

    69

    The amendment makes no attempt to set forth procedural requirements for exercising the trial court’s gatekeeping function over expert testimony. See Daniel J. Capra, The Daubert Puzzle, 38 Ga.L.Rev. 699, 766 (1998) (“Trial courts should be allowed substantial discretion in dealing with Daubert questions; any attempt to codify procedures will likely give rise to unnecessary changes in practice and create difficult questions for appellate review.”). Courts have shown considerable ingenuity and flexibility in considering challenges to expert testimony under Daubert, and it is contemplated that this will continue under the amended Rule. See, e.g., Cortes-Irizarry v. Corporacion Insular, 111 F.3d 184 (1st Cir. 1997) (discussing the application of Daubert in ruling on a motion for summary judgment); In re Paoli R.R. Yard PCB Litig., 35 F.3d 717, 736, 739 (3d Cir. 1994) (discussing the use of in limine hearings); Claar v. Burlington N.R.R., 29 F.3d 499, 502–05 (9th Cir. 1994) (discussing the trial court’s technique of ordering experts to submit serial affidavits explaining the reasoning and methods underlying their conclusions).

    71

    The amendment continues the practice of the original Rule in referring to a qualified witness as an “expert.” This was done to provide continuity and to minimize change. The use of the term “expert” in the Rule does not, however, mean that a jury should actually be informed that a qualified witness is testifying as an “expert.” Indeed, there is much to be said for a practice that prohibits the use of the term “expert” by both the parties and the court at trial. Such a practice “ensures that trial courts do not inadvertently put their stamp of authority” on a witness’s opinion, and protects against the jury’s being “overwhelmed by the so-called ‘experts’.” Hon. Charles Richey, Proposals to Eliminate the Prejudicial Effect of the Use of the Word “Expert” Under the Federal Rules of Evidence in Criminal and Civil Jury Trials, 154 F.R.D. 537, 559 (1994) (setting forth limiting instructions and a standing order employed to prohibit the use of the term “expert” in jury trials).

    73

    GAP Report—Proposed Amendment to Rule 702. The Committee made the following changes to the published draft of the proposed amendment to Evidence Rule 702:

    75

    1. The word “reliable” was deleted from Subpart (1) of the proposed amendment, in order to avoid an overlap with Evidence Rule 703, and to clarify that an expert opinion need not be excluded simply because it is based on hypothetical facts. The Committee Note was amended to accord with this textual change.

    77

    2. The Committee Note was amended throughout to include pertinent references to the Supreme Court’s decision in Kumho Tire Co. v. Carmichael, which was rendered after the proposed amendment was released for public comment. Other citations were updated as well.

    79

    3. The Committee Note was revised to emphasize that the amendment is not intended to limit the right to jury trial, nor to permit a challenge to the testimony of every expert, nor to preclude the testimony of experience-based experts, nor to prohibit testimony based on competing methodologies within a field of expertise.

    81

    4. Language was added to the Committee Note to clarify that no single factor is necessarily dispositive of the reliability inquiry mandated by Evidence Rule 702.

    83

    Committee Notes on Rules—2011 Amendment

    85

    The language of Rule 702 has been amended as part of the restyling of the Evidence Rules to make them more easily understood and to make style and terminology consistent throughout the rules. These changes are intended to be stylistic only. There is no intent to change any result in any ruling on evidence admissibility.

  • 5 Federal Rule of Evidence 703

    1

    Rule 703. Bases of an Expert’s Opinion Testimony

    3

    An expert may base an opinion on facts or data in the case that the expert has been made aware of or personally observed. If experts in the particular field would reasonably rely on those kinds of facts or data in forming an opinion on the subject, they need not be admissible for the opinion to be admitted. But if the facts or data would otherwise be inadmissible, the proponent of the opinion may disclose them to the jury only if their probative value in helping the jury evaluate the opinion substantially outweighs their prejudicial effect.
    Notes

    5

    (Pub. L. 93–595, §1, Jan. 2, 1975, 88 Stat. 1937; Mar. 2, 1987, eff. Oct. 1, 1987; Apr. 17, 2000, eff. Dec. 1, 2000; Apr. 26, 2011, eff. Dec. 1, 2011.)

    7

    Notes of Advisory Committee on Proposed Rules

    9

    Facts or data upon which expert opinions are based may, under the rule, be derived from three possible sources. The first is the firsthand observation of the witness, with opinions based thereon traditionally allowed. A treating physician affords an example. Rheingold, The Basis of Medical Testimony, 15 Vand.L.Rev. 473, 489 (1962). Whether he must first relate his observations is treated in Rule 705. The second source, presentation at the trial, also reflects existing practice. The technique may be the familiar hypothetical question or having the expert attend the trial and hear the testimony establishing the facts. Problems of determining what testimony the expert relied upon, when the latter technique is employed and the testimony is in conflict, may be resolved by resort to Rule 705. The third source contemplated by the rule consists of presentation of data to the expert outside of court and other than by his own perception. In this respect the rule is designed to broaden the basis for expert opinions beyond that current in many jurisdictions and to bring the judicial practice into line with the practice of the experts themselves when not in court. Thus a physician in his own practice bases his diagnosis on information from numerous sources and of considerable variety, including statements by patients and relatives, reports and opinions from nurses, technicians and other doctors, hospital records, and X rays. Most of them are admissible in evidence, but only with the expenditure of substantial time in producing and examining various authenticating witnesses. The physician makes life-and-death decisions in reliance upon them. His validation, expertly performed and subject to cross-examination, ought to suffice for judicial purposes. Rheingold, supra, at 531; McCormick §15. A similar provision is California Evidence Code §801(b).

    11

    The rule also offers a more satisfactory basis for ruling upon the admissibility of public opinion poll evidence. Attention is directed to the validity of the techniques employed rather than to relatively fruitless inquiries whether hearsay is involved. See Judge Feinberg’s careful analysis in Zippo Mfg. Co. v. Rogers Imports, Inc., 216 F.Supp. 670 (S.D.N.Y. 1963) See also Blum et al, The Art of Opinion Research: A Lawyer’s Appraisal of an Emerging Service, 24 U.Chi.L.Rev. 1 (1956); Bonynge, Trademark Surveys and Techniques and Their Use in Litigation, 48 A.B.A.J. 329 (1962); Zeisel, The Uniqueness of Survey Evidence, 45 Cornell L.Q. 322 (1960); Annot., 76 A.L.R.2d 919.

    13

    If it be feared that enlargement of permissible data may tend to break down the rules of exclusion unduly, notice should be taken that the rule requires that the facts or data “be of a type reasonably relied upon by experts in the particular field.” The language would not warrant admitting in evidence the opinion of an “accidentologist” as to the point of impact in an automobile collision based on statements of bystanders, since this requirement is not satisfied. See Comment, Cal.Law Rev.Comm’n, Recommendation Proposing an Evidence Code 148–150 (1965).

    15

    Notes of Advisory Committee on Rules—1987 Amendment

    17

    The amendment is technical. No substantive change is intended.

    19

    Committee Notes on Rules—2000 Amendment

    21

    Rule 703 has been amended to emphasize that when an expert reasonably relies on inadmissible information to form an opinion or inference, the underlying information is not admissible simply because the opinion or inference is admitted. Courts have reached different results on how to treat inadmissible information when it is reasonably relied upon by an expert in forming an opinion or drawing an inference. Compare United States v. Rollins, 862 F.2d 1282 (7th Cir. 1988) (admitting, as part of the basis of an FBI agent’s expert opinion on the meaning of code language, the hearsay statements of an informant), with United States v. 0.59 Acres of Land, 109 F.3d 1493 (9th Cir. 1997) (error to admit hearsay offered as the basis of an expert opinion, without a limiting instruction). Commentators have also taken differing views. See, e.g., Ronald Carlson, Policing the Bases of Modern Expert Testimony, 39 Vand.L.Rev. 577 (1986) (advocating limits on the jury’s consideration of otherwise inadmissible evidence used as the basis for an expert opinion); Paul Rice, Inadmissible Evidence as a Basis for Expert Testimony: A Response to Professor Carlson, 40 Vand.L.Rev. 583 (1987) (advocating unrestricted use of information reasonably relied upon by an expert).

    23

    When information is reasonably relied upon by an expert and yet is admissible only for the purpose of assisting the jury in evaluating an expert’s opinion, a trial court applying this Rule must consider the information’s probative value in assisting the jury to weigh the expert’s opinion on the one hand, and the risk of prejudice resulting from the jury’s potential misuse of the information for substantive purposes on the other. The information may be disclosed to the jury, upon objection, only if the trial court finds that the probative value of the information in assisting the jury to evaluate the expert’s opinion substantially outweighs its prejudicial effect. If the otherwise inadmissible information is admitted under this balancing test, the trial judge must give a limiting instruction upon request, informing the jury that the underlying information must not be used for substantive purposes. See Rule 105. In determining the appropriate course, the trial court should consider the probable effectiveness or lack of effectiveness of a limiting instruction under the particular circumstances.

    25

    The amendment governs only the disclosure to the jury of information that is reasonably relied on by an expert, when that information is not admissible for substantive purposes. It is not intended to affect the admissibility of an expert’s testimony. Nor does the amendment prevent an expert from relying on information that is inadmissible for substantive purposes.

    27

    Nothing in this Rule restricts the presentation of underlying expert facts or data when offered by an adverse party. See Rule 705. Of course, an adversary’s attack on an expert’s basis will often open the door to a proponent’s rebuttal with information that was reasonably relied upon by the expert, even if that information would not have been discloseable initially under the balancing test provided by this amendment. Moreover, in some circumstances the proponent might wish to disclose information that is relied upon by the expert in order to “remove the sting” from the opponent’s anticipated attack, and thereby prevent the jury from drawing an unfair negative inference. The trial court should take this consideration into account in applying the balancing test provided by this amendment.

    29

    This amendment covers facts or data that cannot be admitted for any purpose other than to assist the jury to evaluate the expert’s opinion. The balancing test provided in this amendment is not applicable to facts or data that are admissible for any other purpose but have not yet been offered for such a purpose at the time the expert testifies.

    31

    The amendment provides a presumption against disclosure to the jury of information used as the basis of an expert’s opinion and not admissible for any substantive purpose, when that information is offered by the proponent of the expert. In a multi-party case, where one party proffers an expert whose testimony is also beneficial to other parties, each such party should be deemed a “proponent” within the meaning of the amendment.

    33

    GAP Report—Proposed Amendment to Rule 703. The Committee made the following changes to the published draft of the proposed amendment to Evidence Rule 703:

    35

    1. A minor stylistic change was made in the text, in accordance with the suggestion of the Style Subcommittee of the Standing Committee on Rules of Practice and Procedure.

    37

    2. The words “in assisting the jury to evaluate the expert’s opinion” were added to the text, to specify the proper purpose for offering the otherwise inadmissible information relied on by an expert. The Committee Note was revised to accord with this change in the text.

    39

    3. Stylistic changes were made to the Committee Note.

    41

    4. The Committee Note was revised to emphasize that the balancing test set forth in the proposal should be used to determine whether an expert’s basis may be disclosed to the jury either (1) in rebuttal or (2) on direct examination to “remove the sting” of an opponent’s anticipated attack on an expert’s basis.

    43

    Committee Notes on Rules—2011 Amendment

    45

    The language of Rule 703 has been amended as part of the general restyling of the Evidence Rules to make them more easily understood and to make style and terminology consistent throughout the rules. These changes are intended to be stylistic only. There is no intent to change any result in any ruling on evidence admissibility.

    47

    The Committee deleted all reference to an “inference” on the grounds that the deletion made the Rule flow better and easier to read, and because any “inference” is covered by the broader term “opinion.” Courts have not made substantive decisions on the basis of any distinction between an opinion and an inference. No change in current practice is intended.

  • 6 Federal Rule of Evidence 704

    1

    Rule 704. Opinion on an Ultimate Issue

    3

    (a) In General — Not Automatically Objectionable. An opinion is not objectionable just because it embraces an ultimate issue.

    5

    (b) Exception. In a criminal case, an expert witness must not state an opinion about whether the defendant did or did not have a mental state or condition that constitutes an element of the crime charged or of a defense. Those matters are for the trier of fact alone.
    Notes

    7

    (Pub. L. 93–595, §1, Jan. 2, 1975, 88 Stat. 1937; Pub. L. 98–473, title II, §406, Oct. 12, 1984, 98 Stat. 2067; Apr. 26, 2011, eff. Dec. 1, 2011.)

    9

    Notes of Advisory Committee on Proposed Rules

    11

    The basic approach to opinions, lay and expert, in these rules is to admit them when helpful to the trier of fact. In order to render this approach fully effective and to allay any doubt on the subject, the so-called “ultimate issue” rule is specifically abolished by the instant rule.

    13

    The older cases often contained strictures against allowing witnesses to express opinions upon ultimate issues, as a particular aspect of the rule against opinions. The rule was unduly restrictive, difficult of application, and generally served only to deprive the trier of fact of useful information. 7 Wigmore §§1920, 1921; McCormick §12. The basis usually assigned for the rule, to prevent the witness from “usurping the province of the jury,” is aptly characterized as “empty rhetoric.” 7 Wigmore §1920, p. 17. Efforts to meet the felt needs of particular situations led to odd verbal circumlocutions which were said not to violate the rule. Thus a witness could express his estimate of the criminal responsibility of an accused in terms of sanity or insanity, but not in terms of ability to tell right from wrong or other more modern standard. And in cases of medical causation, witnesses were sometimes required to couch their opinions in cautious phrases of “might or could,” rather than “did,” though the result was to deprive many opinions of the positiveness to which they were entitled, accompanied by the hazard of a ruling of insufficiency to support a verdict. In other instances the rule was simply disregarded, and, as concessions to need, opinions were allowed upon such matters as intoxication, speed, handwriting, and value, although more precise coincidence with an ultimate issue would scarcely be possible.

    15

    Many modern decisions illustrate the trend to abandon the rule completely. People v. Wilson, 25 Cal.2d 341, 153 P.2d 720 (1944), whether abortion necessary to save life of patient; Clifford-Jacobs Forging Co. v. Industrial Comm., 19 Ill.2d 236, 166 N.E.2d 582 (1960), medical causation; Dowling v. L. H. Shattuck, Inc., 91 N.H. 234, 17 A.2d 529 (1941), proper method of shoring ditch; Schweiger v. Solbeck, 191 Or. 454, 230 P.2d 195 (1951), cause of landslide. In each instance the opinion was allowed.

    17

    The abolition of the ultimate issue rule does not lower the bars so as to admit all opinions. Under Rules 701 and 702, opinions must be helpful to the trier of fact, and Rule 403 provides for exclusion of evidence which wastes time. These provisions afford ample assurances against the admission of opinions which would merely tell the jury what result to reach, somewhat in the manner of the oath-helpers of an earlier day. They also stand ready to exclude opinions phrased in terms of inadequately explored legal criteria. Thus the question, “Did T have capacity to make a will?” would be excluded, while the question, “Did T have sufficient mental capacity to know the nature and extent of his property and the natural objects of his bounty and to formulate a rational scheme of distribution?” would be allowed. McCormick §12.

    19

    For similar provisions see Uniform Rule 56(4); California Evidence Code §805; Kansas Code of Civil Procedures §60–456(d); New Jersey Evidence Rule 56(3).

    21

    Amendment by Public Law

    23

    1984 —Pub. L. 98–473 designated existing provisions as subd. (a), inserted “Except as provided in subdivision (b)”, and added subd. (b).

    25

    Committee Notes on Rules—2011 Amendment

    27

    The language of Rule 704 has been amended as part of the general restyling of the Evidence Rules to make them more easily understood and to make style and terminology consistent throughout the rules. These changes are intended to be stylistic only. There is no intent to change any result in any ruling on evidence admissibility.

    29

    The Committee deleted all reference to an “inference” on the grounds that the deletion made the Rule flow better and easier to read, and because any “inference” is covered by the broader term “opinion.” Courts have not made substantive decisions on the basis of any distinction between an opinion and an inference. No change in current practice is intended.

  • 7 Federal Rule of Evidence 705

    1

    Rule 705. Disclosing the Facts or Data Underlying an Expert’s Opinion

    3

    Unless the court orders otherwise, an expert may state an opinion — and give the reasons for it — without first testifying to the underlying facts or data. But the expert may be required to disclose those facts or data on cross-examination.
    Notes

    5

    (Pub. L. 93–595, §1, Jan. 2, 1975, 88 Stat. 1938; Mar. 2, 1987, eff. Oct. 1, 1987; Apr. 22, 1993, eff. Dec. 1, 1993; Apr. 26, 2011, eff. Dec. 1, 2011.)

    7

    Notes of Advisory Committee on Proposed Rules

    9

    The hypothetical question has been the target of a great deal of criticism as encouraging partisan bias, affording an opportunity for summing up in the middle of the case, and as complex and time consuming. Ladd, Expert Testimony, 5 Vand.L.Rev. 414, 426–427 (1952). While the rule allows counsel to make disclosure of the underlying facts or data as a preliminary to the giving of an expert opinion, if he chooses, the instances in which he is required to do so are reduced. This is true whether the expert bases his opinion on data furnished him at secondhand or observed by him at firsthand.

    11

    The elimination of the requirement of preliminary disclosure at the trial of underlying facts or data has a long background of support. In 1937 the Commissioners on Uniform State Laws incorporated a provision to this effect in the Model Expert Testimony Act, which furnished the basis for Uniform Rules 57 and 58. Rule 4515, N.Y. CPLR (McKinney 1963), provides:

    13

    “Unless the court orders otherwise, questions calling for the opinion of an expert witness need not be hypothetical in form, and the witness may state his opinion and reasons without first specifying the data upon which it is based. Upon cross-examination, he may be required to specify the data * * *,”

    15

    See also California Evidence Code §802; Kansas Code of Civil Procedure §§60–456, 60–457; New Jersey Evidence Rules 57, 58.

    17

    If the objection is made that leaving it to the cross-examiner to bring out the supporting data is essentially unfair, the answer is that he is under no compulsion to bring out any facts or data except those unfavorable to the opinion. The answer assumes that the cross-examiner has the advance knowledge which is essential for effective cross-examination. This advance knowledge has been afforded, though imperfectly, by the traditional foundation requirement. Rule 26(b)(4) of the Rules of Civil Procedure, as revised, provides for substantial discovery in this area, obviating in large measure the obstacles which have been raised in some instances to discovery of findings, underlying data, and even the identity of the experts. Friedenthal, Discovery and Use of an Adverse Party’s Expert Information, 14 Stan.L.Rev. 455 (1962).

    19

    These safeguards are reinforced by the discretionary power of the judge to require preliminary disclosure in any event.

    21

    Notes of Advisory Committee on Rules—1987 Amendment

    23

    The amendment is technical. No substantive change is intended.

    25

    Notes of Advisory Committee on Rules—1993 Amendment

    27

    This rule, which relates to the manner of presenting testimony at trial, is revised to avoid an arguable conflict with revised Rules 26(a)(2)(B) and 26(e)(1) of the Federal Rules of Civil Procedure or with revised Rule 16 of the Federal Rules of Criminal Procedure, which require disclosure in advance of trial of the basis and reasons for an expert’s opinions.

    29

    If a serious question is raised under Rule 702 or 703 as to the admissibility of expert testimony, disclosure of the underlying facts or data on which opinions are based may, of course, be needed by the court before deciding whether, and to what extent, the person should be allowed to testify. This rule does not preclude such an inquiry.

    31

    Committee Notes on Rules—2011 Amendment

    33

    The language of Rule 705 has been amended as part of the general restyling of the Evidence Rules to make them more easily understood and to make style and terminology consistent throughout the rules. These changes are intended to be stylistic only. There is no intent to change any result in any ruling on evidence admissibility.

    35

    The Committee deleted all reference to an “inference” on the grounds that the deletion made the Rule flow better and easier to read, and because any “inference” is covered by the broader term “opinion.” Courts have not made substantive decisions on the basis of any distinction between an opinion and an inference. No change in current practice is intended.

  • 8 Repp v. Lloyd Webber, 858 F. Supp. 1292 (S.D.N.Y. 1994) (Excerpts)

    1

    858 F.Supp. 1292 (1994)
    Ray REPP and K & R Music, Inc., Plaintiffs,
    v.
    Andrew LLOYD WEBBER, the Really Useful Group, PLC, the Really Useful Company, Inc., MCA Records, Inc., Hal Leonard Publishing Corporation and Polygram Records, Inc., Defendants.
    No. 91 Civ. 0906 (SWK).

    3

    United States District Court, S.D. New York.
    August 3, 1994.

    5

    *1293 *1294 *1295 Cherry & Flynn by William R. Coulson, Chicago, IL, Chadbourne & Parke by Stanley S. Arkin, New York City, for plaintiffs.

    7

    Gold, Farrell & Marks by Jane G. Stevens, New York City, for defendants.

    9

    MEMORANDUM OPINION AND ORDER

    11

    KRAM, District Judge.

    13

    In this copyright infringement action, plaintiffs allege that a musical composition authored by Andrew Lloyd Webber (“Lloyd Webber”) entitled “The Phantom of the Opera” (the “Phantom Song”) infringes plaintiff Ray Repp’s (“Repp”) song “Till You.” Presently before the Court is defendants’ motion for summary judgment, pursuant to Rule 56 of the Federal Rules of Civil Procedure. For the reasons set forth below, the defendants’ motion is granted.

    15

    BACKGROUND[1]

    17

    I. The “Till You” Song

    19

    Plaintiff Repp is a professional musician primarily engaged in composing, publishing, recording and performing popular liturgical music. He has published 11 albums of music, encompassing 120 different musical compositions, and has performed his music in the United States, Europe and Asia.

    21

    In September 1978, Repp recorded a working tape of a folk song entitled “Till You,” basing the lyrics on certain Biblical verses from the Book of Luke. “Till You” was copyrighted in July 1978. That year, Our Sunday Visitor, Inc. (“OSV”), a Catholic publisher, released Repp’s recording of the album Benedicamus, including the song “Till You.” The Benedicamus recording was advertised in OSV’s weekly newspaper, which was handed out after services in United States Catholic churches across the United States. The Benedicamus album also was released in 1978 at three religious conventions: (1) the Los Angeles Religious Education Congress, attended by approximately 20,000 people; (2) the National Catholic Educators’ Convention in St. Louis, attended by more than 20,000 people; and (3) the National Pastor Musicians’ Convention in Scranton, Pennsylvania, attended by more than 2,000 people.

    23

    In the summer of 1978, Repp started the company K & R Music, Inc. (“K & R”), which re-released the Benedicamus album in December 1978. Repp alleges that he personally ordered the manufacture of 5,000 copies of the Benedicamus album and more than 8,000 cassette tapes of the Benedicamus recording. According to Repp, only a handful of these albums remain, and all of the cassette tapes were either sold or distributed as promotional or airplay copies.[2] Two of Repp’s former employees also testified at their depositions that Repp sold “thousands” of Benedicamus recordings in the late 1970s and early 1980s. In addition, 100 copies of the sound recording were shipped to an Australian distributor in 1981.

    25

    The sheet music of “Till You” has been sold in four books — two renditions entitled Benedicamus, and two versions entitled Life Songs. Repp alleges that he personally ordered a total of 13,000 copies of Life Songs *1296 and 12,000 copies of Benedicamus. According to Repp, with the exception of a few dozen copies of one version of Life Songs and one version of Benedicamus, all copies have been sold or distributed as promotional or review copies.

    27

    Repp alleges further that he has performed “Till You” at over 200 concerts before at least 100,000 people throughout the United States, Canada, Japan and Korea, at convention centers, churches, universities and theaters. In addition, he alleges that the album Benedicamus has been frequently broadcast on the radio, making the “heavy play list” compiled by Fordham University’s campus radio station in New York. In total, Repp alleges that the distribution and exploitation of “Till You” has produced at least $250,000 in revenues.

    29

    In order to advertise Repp’s music, K & R distributed a tabloid newspaper to more than 300,000 people between 1978 and 1985, including public libraries. K & R also sent out mailings to retail stores and sold Repp’s music directly to these stores. According to Repp, many of these stores also sell Lloyd Webber’s music and recordings. Additionally, in 1979, Robert Velline (“Velline”), otherwise known as Bobby Vee, a mutual friend of Repp and Lloyd Webber’s brother, Julian Lloyd Webber, was given a handmade cassette of some of Repp’s works.[3]

    31

    II. The Phantom Song

    33

    Defendant Lloyd Webber, a British citizen who maintains a residence in New York City, is the composer of numerous dramatico-musical works, including Joseph and the Amazing Technicolor Dreamcoat, Jesus Christ Superstar, Cats, Evita, Starlight Express, Song and Dance, Aspects of Love, Sunset Boulevard and The Phantom of the Opera. Lloyd Webber has also composed liturgical music, including musical works entitled “Requiem,” “Ubi Caritas et Amor Deus,” and “Benedicite.”[4] From 1969 to 1975, Lloyd Webber composed and copyrighted, inter alia, two songs entitled “Benjamin Calypso” and “Close Every Door,” composed for the musical Joseph and the Amazing Technicolor Dreamcoat, and two songs entitled “Pilate’s Dream” and “Heaven on Their Minds,” composed for the musical Jesus Christ Superstar.

    35

    In late 1983, Lloyd Webber created the Phantom Song at his home in Sydmonton, England. According to Lloyd Webber, the Phantom Song was conceived to showcase the vocal talents of Sarah Brightman (“Brightman”), an actress and singer.[5] Brightman worked with Lloyd Webber in composing the song, singing notes and musical phrases to assist Lloyd Webber in arriving at the Phantom melody. In February or March 1984, Lloyd Webber provided a tape containing unpublished works in progress, including the melody for the Phantom Song, to Trevor Nunn, an English director.

    37

    In the summer of 1984, Lloyd Webber viewed Ken Hill’s (“Hill”) production, The Phantom of the Opera, a musical farce incorporating arias from mainstream operatic works. After attending the production, Lloyd Webber entered into discussions with *1297 Hill about producing the show for small theatres.

    39

    Lloyd Webber considered incorporating the Phantom melody into the Hill project. Accordingly, in late September 1984, Lloyd Webber delivered a tape containing the principal melody of the Phantom song to Michael Batt (“Batt”), an English lyricist. In October 1984, Brightman and Batt made a demonstration recording of the Phantom Song at Air Studios in London. That version of the song was never released, however, and Lloyd Webber decided not to become involved with the Hill production.

    41

    In July 1985, Lloyd Webber premiered an abbreviated first act of a musical play based on the book The Phantom of the Opera, during which the Phantom Song was performed, at a private musical festival at his Sydmonton residence. In August 1985, while vacationing in Australia with Brightman, Lloyd Webber created an outline for the second act of the musical play.

    43

    Brightman recorded the Phantom Song with Steve Harley in December 1985, a single of which was released in January 1986. The ultimate production of The Phantom of the Opera premiered in London in 1986, and in New York in 1988. The Phantom Song was registered with the United States Copyright Office in 1987.

    45

    III. The Complaint

    47

    In July 1990, plaintiffs commenced this action in the United States District Court for the Northern District of Illinois for copyright infringement under federal law (Count One) and unfair competition and deceptive trade practices under Ill.Rev.Stats. ch. 121½, ¶¶ 261-272, and 311-317 (Count Two).[6] Specifically, plaintiffs allege that Lloyd Webber copied Repp’s “Till You” song in its Phantom melody. The various corporate defendants are alleged to have distributed and exploited the Phantom Song.

    49

    In October 1991, the defendants amended their answers, interposing counterclaims against the plaintiffs alleging, inter alia, that Repp’s “Till You” song infringes Lloyd Webber’s copyright in “Close Every Door.” By Order dated October 30, 1991, the Court bifurcated the action, ordering that all issues of liability be tried separately from issues of damages.

    51

    The defendants now move for summary judgment, pursuant to Federal Rule of Civil Procedure 56. According to the defendants, the complaint must fail as a matter of law, as the plaintiffs cannot rebut the defendants’ evidence that Lloyd Webber independently created the Phantom Song.

    53

    IV. Expert Witness Analyses

    55

    A. Professor Ferrara’s Report

    57

    In support of their motion for summary judgment, the defendants have submitted two affidavits of Lawrence Ferrara, professor of music at New York University, who concludes that the Phantom Song is directly traceable to prior Lloyd Webber works and existing public domain musical compositions. See the Affidavit of Lawrence Ferrara In Support of Defendants’ Motion for Summary Judgment, sworn to on June 17, 1993 (“Ferrara Aff.”), and the Reply Affidavit of Lawrence Ferrara, sworn to on November 2, 1993 (“Ferrara Supp.Aff.”). According to the defendants, this evidence demonstrates that Lloyd Webber independently created the Phantom Song.

    59

    1. Musical Similarities Between the Phantom Song and Prior Lloyd Webber Songs

    61

    First, Prof. Ferrara contends that phrase one of the Phantom Song (measures 10 through 13 and repeats thereof) has eight melody notes and ten harmonic tones in common with measures 15 through 18 of Lloyd Webber’s “Benjamin Calypso” song and measures 17 through 22 of Lloyd Webber’s “Pilate’s Dream” work.[7] In addition, measures *1298 10 and 12 of the Phantom Song, 15 and 17 of “Benjamin Calypso” and 17 and 20 of “Pilate’s Dream” all contain an interval of a perfect fourth.[8] Furthermore, three out of four melody notes are identical between phrase two of the Phantom Song (measures 18 through 22 and repeats thereof), measures 17 and 18 of “Benjamin Calypso” and measures 20 and 22 of “Pilate’s Dream.”

    63

    Second, Prof. Ferrara contends that there are similarities between the Phantom Song and Lloyd Webber’s “Close Every Door” and “Heaven On Their Minds” songs. Specifically, there are five consecutive notes identical in pitch content between measures 18 and 19 of the Phantom Song and measures nine through ten of “Close Every Door.” The harmony accompanying these five notes is identical. In addition, there are five melody notes in measures two and three of the coda of “Heaven On Their Minds” that are common in pitch content to measures 18 and 19 of the Phantom Song. The harmony accompanying these five notes is also identical.

    65

    Finally, Prof. Ferrara notes that Webber uses an interval of a “perfect fourth” as his signature in several of his melodies. Specifically, Prof. Ferrara demonstrates that an ascending then descending perfect-fourth melodic interval is located in each of the following Webber songs:[9] (1) measures five and six of the “Song Of The King,” copyrighted in 1975; (2) measures four and five of “And The Money Kept Rolling In (And Out),” copyrighted in 1977; (3) measure 48 of “Don’t Cry For Me Argentina,” copyrighted in 1977; (4) measure five of “Gus: The Theatre Cat,” copyrighted in 1981; (5) measures 19 and 20 of “Memory,” copyrighted in 1981; (6) measures 52 through 53 of “Overture,” copyrighted in 1981; (7) measure one of “Engine of Love,” copyrighted in 1984 and 1987; and (8) measure eight of “Parlez-Vous Francais,” copyrighted in 1989. Based on this evidence, Prof. Ferrara concludes that the Phantom Song was derived from Lloyd Webber’s earlier works, and not from Repp’s “Till You” song.

    67

    2. Musical Similarities Between the Phantom Song and Public Domain Literature

    69

    Prof. Ferrara also contends that there are numerous works in existing public domain literature that contain melodic phrases as similar to the Phantom Song as the Phantom Song is similar to “Till You.” Specifically, Prof. Ferrara states that there are five consecutive melody notes common in pitch content between measures ten and 11 of the Phantom Song, measures 12 and 13 of J.S. Bach’s “Praludium” and measures 14 and 15 of Edvard Grieg’s “Melodie.”[10]

    71

    In addition there are six consecutive melody notes common in pitch content between measures ten and 11 of the Phantom Song and several measures of the following musical compositions: (1) measures three and four of the Cantorial Chant: “Sh’ma Yisroayl;” (2) measures 25 and 26 of Edvard Holst’s “Glittering Sunbeams;” and (3) measures 11 and 12 of G.B. Allen’s “None Can Tell.” According to Prof. Ferrara, the melodic phrase that appears in phrase one of the Phantom Song is thus a commonplace musical idea and not unique.

    73

    B. Professor Hitchcock’s Report

    75

    Plaintiffs’ expert, Prof. H. Wiley Hitchcock (“Hitchcock”), professor of music at the City University of New York, disputes Prof. Ferrara’s findings, contending that Prof. Ferrara uses a flawed and misleading methodology of changing and then isolating three-to-six note fragments of the published music at issue to reach his conclusions. Prof. Hitchcock contends further that (1) “Till You” and the *1299 Phantom Song are strikingly similar; (2) “Till You” is not similar to Lloyd Webber’s “Close Every Door” song; and (3) “Till You” is not similar to “Heaven on Their Minds” and “Benjamin Calypso.”[11]

    77

    In support of his contention that “Till You” and the Phantom Song are strikingly similar, Prof. Hitchcock points to the fact that (1) the basic rhythmic and metrical character of “Till You” and the Phantom Song are identical; (2) the rhythmic aspects of the melodic phrases in “Till You” are echoed in the Phantom Song; and (3) although the two pieces differ in harmony, key and mode, they are identical in harmonic rhythm. Based on this evidence, Prof. Hitchcock concludes that “Till You” and the Phantom Song share significant similarities in every musical element and in the interaction of these musical elements.

    79

    V. Musical Similarities Between Prior Webber Songs and Other Works

    81

    Plaintiffs contend further that Lloyd Webber has a history of copying from other pieces when composing his musical works. In support of this contention, plaintiffs point to the fact that Lloyd Webber’s song “I Don’t Know How To Love Him,” written for the musical Jesus Christ Superstar, is copied from the slow movement of Mendelssohn’s violin concerto. Plaintiffs also contend that Lloyd Webber copied his song “1969” from Beethoven’s “Fur Elise.” According to the plaintiffs, Lloyd Webber also borrowed from the music of Paganini when he composed his “Variations.” In addition, Lloyd Webber’s song “Memory,” from the musical Cats, bears a remarkable similarity to Larry Clinton’s 1942 music “Bolero In Blue.”[12]

    83

    DISCUSSION

    85

    I. Standard for Summary Judgment

    87

    Under Rule 56(c); of the Federal Rules of Civil Procedure, a motion for summary judgment must be granted “if the pleadings, depositions, answers to interrogatories, and admissions on file, together with affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.” Fed.R.Civ.P. 56(c);. The moving party must initially satisfy a burden of demonstrating the absence of a genuine issue of material fact, which can be done merely by pointing out that there is an absence of evidence to support the nonmoving party’s case. Celotex Corp. v. Catrett, 477 U.S. 317, 323-25, 106 S.Ct. 2548, 2552-54, 91 L.Ed.2d 265 (1986). The nonmoving party then must meet a burden of coming forward with “specific facts showing that there is a genuine issue for trial,” Fed.R.Civ.P. 56(e), by “a showing sufficient to establish the existence of [every] element essential to that party’s case, and on which that party will bear the burden of proof at trial.” Celotex Corp. v. Catrett, 477 U.S. at 322, 106 S.Ct. at 2552.

    89

    The Court “must resolve all ambiguities and draw all reasonable inferences in favor of the party defending against the motion.” Eastway Constr. Corp. v. New York, 762 F.2d 243, 249 (2d Cir.1985); see also Adickes v. S.H. Kress & Co., 398 U.S. 144, 158-59, 90 S.Ct. 1598, 1608-10, 26 L.Ed.2d 142 (1970); Hathaway v. Coughlin, 841 F.2d 48, 50 (2d Cir.1988); Knight v. United States Fire Ins. Co., 804 F.2d 9, 11 (2d Cir.1986), cert. denied, 480 U.S. 932, 107 S.Ct. 1570, 94 L.Ed.2d 762 (1987). But the Court is to inquire whether “there is sufficient evidence favoring the non-moving party for a jury to return a verdict for the party,” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986), and to grant summary judgment where the nonmovant’s evidence is *1300 merely colorable, conclusory, speculative or not significantly probative. Id. at 249-50, 106 S.Ct. at 2510-11; Knight v. United States Fire Ins. Co., 804 F.2d at 12, 15; Argus Inc. v. Eastman Kodak Co., 801 F.2d 38, 45 (2d Cir.1986), cert. denied, 479 U.S. 1088, 107 S.Ct. 1295, 94 L.Ed.2d 151 (1987).

    91

    To determine whether the nonmoving party has met his or her burden, the Court must focus on both the materiality and the genuineness of the factual issues raised by the nonmovant. As to materiality, “it is the substantive law’s identification of which facts are critical and which facts are irrelevant that governs.” Anderson v. Liberty Lobby, Inc., 477 U.S. at 248, 106 S.Ct. at 2510. A dispute over irrelevant or unnecessary facts will not preclude summary judgment, id., but the presence of unresolved factual issues that are material to the outcome of the litigation mandates a denial of the summary judgment motion. See, e.g., Knight v. United States Fire Ins. Co., 804 F.2d at 11-12.

    93

    Once the nonmoving party has successfully met the burden of establishing the existence of a genuine dispute as to an issue of material fact, summary judgment must be denied unless the moving party comes forward with additional evidence sufficient to satisfy his or her ultimate burden under Rule 56. See Celotex Corp. v. Catrett, 477 U.S. at 330, n. 2, 106 S.Ct. at 2556, n. 2 (Brennan, J., dissenting). In sum, if the Court determines that “the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no `genuine issue for trial.’” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986) (quoting First Nat’l Bank of Arizona v. Cities Serv. Co., 391 U.S. 253, 289, 88 S.Ct. 1575, 1593, 20 L.Ed.2d 569 (1969)); see also Weg v. Macchiarola, 654 F.Supp. 1189, 1191-92 (S.D.N.Y.1987). In copyright infringement cases, courts have regularly granted summary judgment where it is clear that the plaintiff cannot make out the elements of the claim. See Siskind v. Newton-John, 84 Civ. 2634, 1987 WL 11701, at *4, 1987 U.S.Dist. LEXIS 4084, at *11 (S.D.N.Y. May 22, 1987).[13]

    95

    II. Copyright Infringement

    97

    In order to prove copyright infringement, plaintiffs must show ownership of a valid copyright and unauthorized copying by the defendants. See Laureyssens v. Idea Group, Inc., 964 F.2d 131, 139 (2d Cir.1992); Rogers v. Koons, 960 F.2d 301, 306 (2d Cir. 1992), cert. denied, _ U.S. _, 113 S.Ct. 365, 121 L.Ed.2d 278 (1992); Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 763 (2d Cir.1991). Defendants do not contest that plaintiffs own a valid copyright in the “Till You” song. Accordingly, the Court must consider whether a reasonable jury could conclude that Lloyd Webber copied the “Till You” song in composing the Phantom Song.

    99

    A prima facie case of copying is established from a showing that a defendant had access to the copyrighted work and that substantial similarities exist between the original work and the infringing work. Laureyssens v. Idea Group, Inc., 964 F.2d at 139; Folio Impressions, Inc. v. Byer California, 937 F.2d at 765. A defendant can then rebut this inference of copying “by showing that its product was independently created despite its similarity to the plaintiff’s work.” Gund, Inc. v. Russ Berrie and Co., 701 F.Supp. 1013, 1018 (S.D.N.Y.1988); see also Novak v. National Broadcasting Co., 752 F.Supp. 164, 168 (S.D.N.Y.1990) (stating that an inference of copying may be rebutted by showing that the work was independently created, either without reference to the plaintiff’s work, or by copying a work already in the public domain).

    101

    Once copying is established, the plaintiff must show that the copying amounts to an improper appropriation “by demonstrating that substantial similarities relate to protectible *1301 material.” Laureyssens v. Idea Group, Inc., 964 F.2d at 140. In determining whether the infringed work has been unlawfully appropriated, the Court must consider whether “the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard the aesthetic appeal of the two works as the same.” McDonald v. Multimedia Entertainment, Inc., 90 Civ. 6356, 1991 WL 311921, at *2, 1991 U.S.Dist. LEXIS 10649, at *6 (S.D.N.Y. July 19, 1991).

    103

    A. Evidence of Access

    105

    Defendants contend that plaintiffs cannot prove that Lloyd Webber had access to Repp’s “Till You” song prior to composing the Phantom Song. The Court agrees.

    107

    Access is defined as ”`[h]earing or having a reasonable opportunity to hear the plaintiff’s work, in other words having the opportunity to copy.’” Sylvestre v. Oswald, 91 Civ. 5060, 1993 WL 179101, at *3, 1993 U.S.Dist. LEXIS 7002, at *7 (S.D.N.Y. May 18, 1993) (quoting Intersong-USA v. CBS, Inc., 757 F.Supp. 274, 281 (S.D.N.Y.1991)). “Generally, in order to show access plaintiffs must demonstrate more than a `bare possibility’ that defendant had access to the work; access must be shown to a `reasonable possibility.’” Id.; see also Ferguson v. National Broadcasting Co., 584 F.2d at 113; Siskind v. Newton-John, 1987 WL 11701, at *4, 1987 U.S.Dist. LEXIS 4084, at *11. In addition, a reasonable possibility of access may not be inferred through speculation or conjecture, see Gaste v. Kaiserman, 863 F.2d 1061, 1066 (2d Cir.1988); Sylvestre v. Oswald, 1993 WL 179101, at *3, 1993 U.S.Dist. LEXIS 7002, at *7, but must be established by probative evidence. See Scott v. Paramount Pictures Corp., 449 F.Supp. 518, 520 (D.D.C.1978) (finding speculations and inferences as to access were insufficient to meet defendants’ summary judgment challenge), aff’d, 607 F.2d 494 (D.C.Cir.1979), cert. denied, 449 U.S. 849, 101 S.Ct. 137, 66 L.Ed.2d 60 (1980).

    109

    A plaintiff can satisfy his or her burden of proving access by demonstrating either that (1) the infringed work has been widely disseminated; or (2) a particular chain of events exists by which the alleged infringer might have gained access to the copyrighted work. Sylvestre v. Oswald, 1993 WL 179101, at *3, 1993 U.S.Dist. LEXIS 7002, at *8. Lloyd Webber has categorically denied ever having heard of Repp or his music prior to this litigation. While plaintiffs have no direct evidence that Lloyd Webber heard “Till You” prior to composing the Phantom Song, they contend that access can be inferred from the fact that Repp’s music was given to Velline, a mutual friend of Repp and Julian Lloyd Webber. Alternatively, plaintiffs argue that access can be inferred from the wide dissemination of the “Till You” song to the public.

    111

    First, plaintiffs argue that access can be inferred from the fact that a cassette recording of Repp’s music was given to Velline, who was also a friend of Julian Lloyd Webber and an acquaintance of Lloyd Webber. While courts have often found access when an alleged infringer and an intermediary occupy positions “such that it is natural that information possessed by one would be imparted to the other,” see Meta-Film Assocs., Inc. v. MCA, Inc., 586 F.Supp. 1346, 1356 (C.D.Cal.1984), a finding of access here is not supported by the evidence. In fact, Velline cannot recall whether the cassette tape of Repp’s music in his possession included the “Till You” song. In addition, Velline testified that he did not meet either of the Lloyd Webbers prior to 1983, when Lloyd Webber alleges that he composed the melody for the Phantom Song, and had only met Lloyd Webber on one occasion. Finally, Velline testified that he did not discuss or distribute Repp’s music to either of the Lloyd Webbers. Accordingly, the Court finds that any nexus that exists between Velline and Lloyd Webber is insufficient to justify an inference of access on this basis.

    113

    Second, plaintiffs contend that access can be inferred from the wide distribution of the “Till You” song. The Second Circuit has recognized that a plaintiff may establish access by proving that there has been “wide dissemination” of the copyrighted work. ABKCO Music, Inc. v. Harrisongs Music, Ltd., 722 F.2d 988, 998 (2d Cir.1983) (finding access where plaintiff’s song was “Number *1302 One” on the United States Billboard Charts and one of the “Top Thirty Hits” in England). Where the copyrighted work has only been published to a limited audience, however, access cannot be inferred absent evidence that the defendants had a reasonable opportunity to view the work. See Intersong-USA v. CBS, Inc., 757 F.Supp. at 281 (dismissing plaintiffs’ claim of radio access where there was no proof that the defendants’ songwriters heard the song); Novak v. National Broadcasting Co., 752 F.Supp. at 170 (no genuine issue of fact regarding access despite fact that plaintiff’s skits were broadcast several times on a national television show); Jewel Music Pub. Co. v. Leo Feist, Inc., 62 F.Supp. 596, 598 (S.D.N.Y.1945) (finding no access to plaintiff’s song despite fact that 4,000 copies were distributed to various broadcasting stations and artists, and 5,626 copies, 168 orchestrations and 198 band arrangements were sold); see also Benson v. Coca-Cola Co., 795 F.2d 973, 975 (11th Cir. 1986) (finding fact that plaintiff had performed his song around the country did not establish access where no evidence that defendant’s songwriters visited any of the places of performance during the relevant time period); Selle v. Gibb, 741 F.2d 896, 902 (7th Cir.1984) (finding no more than a bare possibility that defendants had access to the plaintiff’s song where song had been performed two or three times in the Chicago area and sent to eleven publishing companies); Jason v. Fonda, 526 F.Supp. 774, 776-77 (C.D.Cal.1981) (fact that 200 to 700 copies of plaintiff’s book were available in Southern California bookstores “creates no more than a `bare possibility’ that defendants may have had access to plaintiff’s book”), aff’d, 698 F.2d 966 (9th Cir.1982).

    115

    In the case at hand, plaintiffs point to the more than 38,000 copies of the “Till You” song that they allege were distributed in album, cassette tape and sheet music form in support of their contention that “Till You” was widely disseminated. Plaintiffs have no documentary proof, however, of the number of copies of the “Till You” song that were actually distributed to the public during the relevant time period. Instead, plaintiffs merely contend that Repp personally ordered copies of the “Till You” recording from various manufacturers and that these copies are no longer in his possession. Such evidence does not prove that the “Till You” song was disseminated to the general public during the relevant time period. Rather, the copies could have been disseminated, if at all, after Lloyd Webber composed the Phantom Song.

    117

    In addition, plaintiffs point to the testimony of Repp’s employees that “thousands” of recordings of the Benedicamus album were distributed. This testimony does not prove wide dissemination of the “Till You” song, however, as it does not specify quantity, time and place of distribution. Plaintiffs’ evidence that 100 recordings of the “Till You” song were shipped to a distributor in Australia similarly lacks details as to time and place of distribution. In any event, Lloyd Webber did not travel to Australia until August 1985, one month after the Phantom Song was performed at his Sydmonton home. Accordingly, the Court finds that plaintiffs’ evidence of “wide dissemination” does not rise above the level of pure speculation.

    119

    Plaintiffs next argue that Repp’s music was widely advertised, as K & R distributed a tabloid newspaper advertising Repp’s work to more than 300,000 people between 1978 and 1985, including public libraries, and sent out mailings to retail stores. Aside from failing to submit any evidence in support of this allegation, however, the Court finds that the fact that K & R may have distributed newspapers and mailings advertising Repp’s music does not establish that the “Till You” song was advertised as a distinct musical composition.

    121

    Plaintiffs’ remaining proof of access consists of evidence that the “Till You” song was advertised and performed in a specialized religious market. Specifically, plaintiffs contend that (1) Repp performed the “Till You” song at convention centers, churches, universities and theaters; (2) the Benedicamus recording was released at three religious conventions; (3) the Benedicamus album was advertised in newspapers handed out at catholic churches across the United States; and (4) the Benedicamus album was *1303 frequently broadcast on a catholic college radio station. As Lloyd Webber composes liturgical works, among others, plaintiffs argue that he could have had the opportunity to hear the “Till You” song prior to composing the Phantom Song. The Court finds, however, that the mere fact that Lloyd Webber composes liturgical works and is “fond of church music,” see the Webber Dep. at 67-68, 259, does not establish either that he visited any of the places at which Repp’s “Till You” song was performed, or had access to the Benedicamus recording during the relevant time period. Accordingly, as plaintiffs have failed to submit any evidence that Lloyd Webber had a reasonable opportunity to hear the “Till You” song prior to composing the Phantom Song, the Court finds that plaintiffs have failed to establish the access element of their copyright infringement claim.

    123

    B. Substantial Similarity

    125

    Plaintiffs next contend that the “Till You” song is so “strikingly similar” to the Phantom Song as to preclude the possibility of independent creation, and that, therefore, access to “Till You” can be inferred as a matter of law. “In some cases, the similarities between the plaintiff’s and defendant’s work are so extensive and striking as, without more, both to justify an inference of copying and to prove improper appropriation.” Arnstein v. Porter, 154 F.2d at 468-69. Accordingly, where the copyrighted work and the infringing work are “strikingly similar,” the test for proof of access is less rigorous. See Gaste v. Kaiserman, 863 F.2d at 1067. However, the “striking similarity between pieces of popular music must extend beyond themes that could have been derived from a common source or themes that are so trite as to be likely to reappear in many compositions.” Id. at 1068-69. Thus, striking similarity “is not merely a function of the number of identical notes that appear in both compositions,” Selle v. Gibb, 741 F.2d at 903, but also of the uniqueness of the sections which are asserted to be similar. Id. at 904. “To prove that similarities are striking, claimant must demonstrate that such similarities are of a kind that can only be explained by copying, rather than by coincidence, independent creation, or prior common source.” Stratchborneo v. Arc Music Corp., 357 F.Supp. 1393, 1403 (S.D.N.Y.1973).

    127

    Upon aural examination of the two songs and consideration of the expert testimony submitted by both parties, the Court finds that any similarities that exist between the two works are not so extensive as to support an inference of copying and improper appropriation without more. While the two melodies share several common notes, the songs differ in tempo and style. In addition, plaintiffs’ expert, Prof. Hitchcock, concedes that the two pieces differ in harmony, key and mode. Under the circumstances, the Court finds that the two songs do not share a striking similarity sufficient to justify a finding of copying in the absence of access to the copyrighted work.[14]

    129

    C. Independent Creation

    131

    A defendant can “rebut the inference of copying by showing that its product was independently created despite its similarity to plaintiff’s work.” Gund, Inc. v. Applause, Inc., 809 F.Supp. 304, 308 (S.D.N.Y.1993); see also Intersong-USA v. CBS, Inc., 757 F.Supp. at 282 (“defendants could rebut an inference of copying by proving that the work was created independently of the plaintiff’s work”); Novak v. National Broadcasting Co., 752 F.Supp. at 170. In the instant case, even if plaintiffs could prove access and substantial similarity, they have not submitted any evidence to controvert the defendants’ proof of independent creation.

    133

    Defendants have submitted declarations from Lloyd Webber and Brightman detailing the circumstances surrounding the creation of the Phantom Song. Specifically, Lloyd Webber states that he created the Phantom *1304 Song at his Sydmonton home in late 1983, in order to showcase Brightman’s vocal talents. Tapes of the Phantom melody were sent to an English director and lyricist in 1984. In October 1984, a demonstration tape of the Phantom Song was recorded, and in July 1985, the Phantom Song was performed as part of the first act of a musical play.

    135

    Plaintiffs have not submitted any evidence to contradict defendants’ proof that the Phantom Song was created in the manner detailed above. Instead, they argue that Lloyd Webber’s prior history of copying from other composers rebuts his claim of independent creation. Specifically, plaintiffs submitted evidence that Lloyd Webber (1) copied “I Don’t Know How To Love Him” from the slow movement of Mendelssohn’s violin concerto; (2) copied his song “1969” from Beethoven’s “Fur Elise;” (3) borrowed from the music of Paganini when he composed his “Variations;” and (4) copied from Larry Clinton’s “Bolero In Blue” when he composed the song “Memory.” Even assuming such evidence is admissible under Fed. R.Evid. 404(b), however, the Court finds that plaintiffs have not disproved Lloyd Webber’s allegations of independent creation, as their evidence does not point to any prior findings of copyright infringement. Compare Pret-A-Printee, Ltd. v. Allton Knitting Mills, Inc., 1981-1982 Copy.L.Rep. (CCH) ¶ 25,447, 1982 WL 1788 (S.D.N.Y. Sept. 16, 1982) (finding that defendants’ past record of copyright infringement indicates a practice of copying despite claims of independent creation).

    137

    Plaintiffs’ remaining argument is that Lloyd Webber and Brightman are interested parties, and that their allegations of independent creation are therefore incredible. Nonetheless, mere hope that a fact-finder will disbelieve the testimony of witnesses on the issues of access and independent development is not sufficient to defeat a motion for summary judgment. See Vantage Point, Inc. v. Parker Bros., Inc., 529 F.Supp. 1204, 1213 (E.D.N.Y.1981), aff’d, 697 F.2d 301 (2d Cir.1982); see also Modern Home Inst., Inc. v. Hartford Accident and Indem. Co., 513 F.2d 102, 110 (2d Cir.1975) (“If the most that can be hoped for is the discrediting of defendants’ denials at trial, no question of material fact is presented.”). Accordingly, the Court finds that the defendants’ uncontradicted evidence of independent creation negates any claim of infringement.[15] See Novak v. National Broadcasting Co., 752 F.Supp. at 171.

    139

    II. State Law Claims

    141

    As plaintiffs’ federal claims for copyright infringement fail, there is no further basis for federal jurisdiction. In addition, as plaintiffs and several of the defendants are residents of New York, complete diversity of citizenship is lacking. See 28 U.S.C. § 1332. Accordingly, plaintiffs’ state claims of unfair competition and deceptive trade practices under Ill.Rev.Stats., ch. 121½, ¶¶ 261-272, and 311-317 are dismissed for lack of subject matter jurisdiction. See DBC of New York, Inc. v. Merit Diamond Corp., 768 F.Supp. 414, 418 (S.D.N.Y.1991) (dismissing unfair competition claim for lack of subject matter jurisdiction following court’s dismissal of federal claims); Howe v. Reader’s Digest Ass’n, 686 F.Supp. 461, 467 (S.D.N.Y.1988) (dismissing pendent state law claims for lack of jurisdiction after granting summary judgment dismissing plaintiff’s federal claims).

    143

    CONCLUSION

    145

    For the reasons set forth above, defendants’ motion for summary judgment is granted, and the complaint is dismissed. The parties shall appear before the Court for a pretrial conference with respect to defendants’ counterclaims on Wednesday, October 12, 1994, at 10:30 a.m.

    147

    SO ORDERED.

    149

    [1] The following facts are taken from the complaint, the parties’ Rule 3(g) Statements, the Declaration of Andrew Lloyd Webber in Support of Summary Judgment, executed on June 17, 1993 (the “Webber Dec.”), the Declaration of Sarah Brightman In Support of Summary Judgment, executed on June 17, 1993 and the Declaration of Ray Repp in Response to Defendants’ Motion for Summary Judgment, executed on September 14, 1993 (the “Repp Dec.”).

    151

    [2] Repp has no documentary evidence of the number of copies of the Benedicamus recording actually sold to the public during the late 1970s and early 1980s, however, as he contends that, in 1988, he discarded all financial documents dated prior to 1985.

    153

    [3] Velline testified at his deposition that he did not meet Julian Lloyd Webber until October 1985, and met Andrew Lloyd Webber on one occasion a year after The Phantom of the Opera premiered in London. See Deposition of Robert Velline, taken on November 4, 1992 (“Velline Dep.”), annexed to the Reply Affidavit of Jane G. Stevens, sworn to on November 4, 1993, as Exh. “H,” at 55, 65. Plaintiffs dispute this date, pointing to deposition testimony that Velline met the Lloyd Webbers in the early 1980s. See Velline Dep., annexed to Plaintiffs’ Exhibits to Their Response to Defendants’ Motion for Summary Judgment (“Plaintiffs’ Exhibits”) as “P26,” at 159-160. In any event, Velline does not recall whether the handmade cassette tape of Repp’s music contained the “Till You” song. Velline also indicated that he had never discussed Repp’s music with either of the Lloyd Webbers, or given either of them a copy of Repp’s music. Id. at 68-69.

    155

    [4] Lloyd Webber testified at his deposition that he “is very fond of church music,” and “had an opportunity to listen to a great amount of church music … around the time of [his] composition of a requiem.” See Deposition of Andrew Lloyd Webber, taken on November 9, 1992 (the “Webber Dep.”), annexed to Plaintiffs’ Exhibits as Exh. “P24,” at 67-68, 259. Lloyd Webber’s father also was a composer of liturgical music.

    157

    [5] Both Lloyd Webber and Brightman allege that they had never heard of Repp or his music prior to this litigation.

    159

    [6] The action was transferred to this Court in April 1991.

    161

    [7] The three primary musical elements of a composition consist of melody, harmony and rhythm, which flow through spans of time, called “measures.” Melody is the vocal part of a song, comprised of a number of musical notes each of which is separated by specific intervals. The rhythm of a song is determined by the time value of notes and silences, as well as accentuation, grouping of notes and contour. The harmony of a song is the relationship of tones, i.e., the essence of how one chord (consisting of three or more notes sounded simultaneously) relates to the next, and how the chords progress from the first chord in a phrase of music to the last. See Ferrara Aff. at ¶¶ 12, 13.

    163

    [8] Unlike the Phantom Song, however, the first three melody notes of measures one and three of “Till You” move up and down an interval of a minor sixth.

    165

    [9] As plaintiffs emphasize, however, these examples illustrate merely eight instances of the use of a perfect-fourth interval sequence out of more than 150 Lloyd Webber compositions.

    167

    [10] Plaintiffs argue, however, that an aural examination of the public domain music cited by the defendants reveals that this music sounds nothing like either “Till You” or the Phantom Song.

    169

    [11] As the defendants’ motion for summary judgment is not based on any alleged similarities between “Till You” and either “Close Every Door,” “Heaven on Their Minds” or “Benjamin Calypso,” however, the Court finds that Prof. Hitchcock’s second and third conclusions are irrelevant for the purposes of this Opinion.

    171

    [12] In response, defendants contend that Mendelssohn’s “Violin Concerto,” Paganini’s “A Minor Caprice” and Beethoven’s “Fur Elise” were in the public domain long before Lloyd Webber’s works were created. With respect to Clinton’s “Bolero In Blue,” defendants contend that there is no evidence that (1) Lloyd Webber had access to Clinton’s work prior to composing “Memories;” (2) “Bolero In Blue” is a protected work; or (3) Clinton or anyone on his behalf ever asserted a claim that Lloyd Webber’s “Memories” infringes “Bolero In Blue.”

    173

    [13] While the Second Circuit historically held that a grant of summary judgment is improper whenever there is the slightest doubt as to the facts, see Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir.1946), this holding is no longer good law. See Heyman v. Commerce and Indus. Ins. Co., 524 F.2d 1317, 1319 (2d Cir.1975). Rather, “once the moving party has properly supported his summary judgment motion, the nonmoving party must rebut with `significant probative’ evidence.” Ferguson v. National Broadcasting Co., 584 F.2d 111, 114 (5th Cir.1978).

    175

    [14] As the Court finds that plaintiffs have not set forth a prima facie case of copying, it need not address whether a reasonable jury could conclude that the defendants unlawfully appropriated plaintiffs’ work. The Court notes, however, that, as unlawful appropriation is judged by the response of the ordinary lay observer, see McDonald v. Multimedia Entertainment, Inc., 1991 WL 311921, at *2, 1991 U.S.Dist. LEXIS 10649, at *6, defendants’ expert testimony on this issue is inadmissible. Id. (stating that consideration of expert testimony on this issue is improper).

    177

    [15] Defendants have also submitted expert testimony indicating that the Phantom Song was derived from Lloyd Webber’s earlier works rather than from the “Till You” song. While such evidence is relevant to the issue of whether the two works are more likely due to copying or independent creation, see McDonald v. Multimedia Entertainment, Inc., 1991 WL 311921, at *1, 1991 U.S.Dist. LEXIS 10649, at *5, the Court finds that defendants’ expert evidence in this case does not conclusively rebut an inference of copying as a matter of law.

  • 9 Repp v. Lloyd Webber, 132 F.3d 882 (2nd Cir. 1997) (Excerpts)

    1

    132 F.3d 882 (1997)
    Ray REPP & K & R Music, Inc., Plaintiffs-Counter-Defendants-Appellants-Cross Appellees,
    v.
    Andrew Lloyd WEBBER; Really Useful Group, plc, Defendants-Counter-Claimants-Appellees-Cross Appellants,
    Really Useful Company, Incorporated; MCA Records, Inc.; Hal Leonard Publishing Corporation; Polygram Records, Incorporated, Defendants-Appellees-Cross Appellants.
    Nos. 218, 509, Dockets 96-9691, 97-7050.

    3

    United States Court of Appeals, Second Circuit.
    Argued October 6, 1997.
    Decided December 30, 1997.

    5

    *883 William R. Coulson, Cherry & Flynn, Chicago, IL (Peter Flynn, Cherry & Flynn, Chicago, IL, of counsel), for Plaintiffs-Counter-Defendants-Appellants-Cross-Appellees.

    7

    Jane G. Stevens, Gold, Farrell & Marks, New York City (Christine Lepera, Robert P. Mulvey, Gold, Farrell & Marks, New York *884 City, of counsel), for Defendants-Counter-Claimants-Appellees-Cross-Appellants and Defendants-Appellees-Cross Appellants.

    9

    Before: KEARSE, MINER and CABRANES, Circuit Judges.

    11

    MINER, Circuit Judge:

    13

    Plaintiffs Ray Repp and K & R Music, Inc. (“K & R”) appeal from a summary judgment entered in the United States District Court for the Southern District of New York (Kram, J.) in favor of defendants in an action involving claims and counterclaims grounded in copyright infringement. The defendants are Andrew Lloyd Webber, a well-known British composer of musical works for stage production, Really Useful Group, plc, his copyright proprietor, and Really Useful Company, Incorporated, Polygram Records, Inc., MCA Records, Inc. (“MCA”) and Hal Leonard Publishing Corporation, all said to be Lloyd Webber’s licensees. The summary judgment dismissed the claim of Repp, an established American composer of popular liturgical music, and K & R, a publisher of religious and church music, that the “Phantom Song,” composed by Lloyd Webber, copies the song, “Till You,” composed by Repp. Also before us is a cross-appeal from a judgment in favor of Repp and K & R entered in the same action after a non-jury trial. This judgment dismissed the counterclaims of Lloyd Webber and his copyright proprietor alleging that “Till You” copies the song “Close Every Door” composed by Lloyd Webber.

    15

    For the reasons that follow, we reverse the summary judgment that is subject of the appeal, and we affirm the judgment entered after trial that is subject of the cross-appeal.

    17

    BACKGROUND

    19

    I. Of Ray Repp, His Music and His Claim.

    21

    Repp has been a professional composer and performer of liturgical music for more than thirty years. He has written and published music for eleven albums, encompassing one hundred twenty different musical compositions. Over the years, Repp has performed in the United States, Canada, Europe and Asia, and some of his lyrics have been translated into foreign languages. His music has been published by his own company, plaintiff K & R, as well as others, including Our Sunday Visitor, FEL Publications, Word Publications and Hope Publications. It also has been published by the Lutheran, Episcopal, Presbyterian and Catholic churches and by the Church of the Brethren. Repp’s songs have been included in various hymnals and song books. He has been recognized as a leading author and performer of liturgical folk music.

    23

    Repp wrote the song “Till You” in 1978 and registered it with the United States Copyright Office the same year. The song is liturgical in nature, being based on passages from the Book of Luke, commonly known as the “Magnificat.” It has been distributed since 1978 as part of the album “Benedicamus” in the form of cassettes and record albums. The song appears in sheet music form in books entitled “Benedicamus” and “Life Songs.” Twenty-five thousand copies of the sheet music were said to have been published and distributed.

    25

    With respect to albums or cassettes that included “Till You,” Repp asserts that he personally ordered a total of eighteen thousand copies and that all but a handful have been sold or distributed. Repp is not fully able to document the sales, but he does have some records, including those relating to sales of fifty albums and fifty cassettes of “Benedicamus” to a distributor in Australia. Although music from “Benedicamus” may have made the “heavy play list” at the Fordham University Radio Station, Repp could not establish the frequency with which “Till You” was played on any radio station. However, Repp has performed the song in over two hundred concerts given since 1978 in the United States and many foreign countries. These performances were given in convention centers, churches, universities and theaters. Repp estimates that over one hundred thousand people have heard him perform his song “Till You,” and he contends that Lloyd Webber, having had access to this music, copied it, intentionally or unintentionally, in writing the “Phantom Song.”

    27

    *885 II. Of Andrew Lloyd Webber, His Music, His Defense and His Counterclaims.

    29

    Lloyd Webber is a composer who has achieved outstanding international success. He resides in England, maintains a residence in New York City, and travels widely. He has more than three hundred published compositions to his credit. His work for the theater includes such acclaimed musical shows as “Joseph and the Amazing Technicolor Dreamcoat,” “Jesus Christ Superstar,” “Cats,” “Evita,” “Starlight Express,” “Song and Dance,” “Aspects of Love,” “Sunset Boulevard,” and “The Phantom of the Opera.” Lloyd Webber completed the “Phantom Song” in late 1984, and the piece was recorded in December 1985 by Sarah Brightman and Steve Harley. It was released as a single recording in January 1986 in England. “The Phantom of the Opera,” a dramatico-musical show had its premiere in London in 1986. “Phantom Song” is an important part of the work, which was registered in the United States Copyright Office in 1987. The show opened on Broadway in 1988.

    31

    “Joseph and the Amazing Technicolor Dreamcoat” (hereinafter, “Joseph”) first was presented as a choral work in London in 1968. The song “Close Every Door” was among the first portions of the choral presentation that Lloyd Webber completed. The composition was a centerpiece in every subsequent version of “Joseph,” which was based on the Biblical tale of Joseph’s sale into slavery by his brothers and subsequent rise to success in Egypt. An expanded version was presented at the Edinburgh Festival in 1972 and in London in 1973. Following the London run, Lloyd Webber and lyricist Tim Rice further expanded “Joseph” into a full-length musical. In 1989, Lloyd Webber’s company, Really Useful Group, acquired by assignment all the rights and interest in the copyright for “Joseph,” including “Close Every Door.” The assignment thereafter was recorded in the United States Copyright Office.

    33

    “Joseph” was recorded as an album by Decca Records and publicly released in 1969. “Close Every Door” was the first single recording released from the album. In 1971, Sceptre Records released the album in the United States, where it was sold in retail stores and appeared on the Billboard Magazine charts of Top LPs for twelve weeks. MCA issued a sound recording of “Joseph,” including “Close Every Door,” in 1974. Sales of the MCA recording exceeded twenty-three thousand units. Between 1969 and 1978, at least forty thousand copies of the sheet music of the vocal score were sold. Between 1968 and 1978, “Joseph” was widely performed by stock and amateur theater companies and was broadcast on the radio. “Close Every Door” was heard in the United States on religious radio programs, which Lloyd Webber asserts were “directly within Repp’s sphere of interest.” Lloyd Webber contends that the widespread dissemination of “Close Every Door,” together with Repp’s interest in the musical genre, provide important evidence of access. He asserts that there are striking and significant similarities demonstrating that “Till You” copies the earlier written “Close Every Door.”

    35

    III. Of Defendants’ Motion for Summary Judgment.

    37

    A. The Motion and the Response.

    39

    The defendants’ summary judgment motion was made at the conclusion of fact and expert discovery. The moving papers include a declaration by Lloyd Webber that he began to compose “Phantom Song” at Sydmonton Court, his home in Sydmonton, England, in late 1983. Sarah Brightman, who later became his wife, worked with him as he composed. According to Lloyd Webber, the song was designed to show off Brightman’s vocal range, and she sang the melody as he composed at the piano. No lyrics were written at that time, and no notation of the music was made. Lloyd Webber declared that, although the song was not completed that day, the whole of the melody was developed. Thereafter, Lloyd Webber was occupied with other projects and did not get around to completing the entire “Phantom Song” until 1984.

    41

    Ms. Brightman furnished a declaration confirming Lloyd Webber’s account of the origination of “Phantom Song.” In her declaration, she recalled Lloyd Webber asking her *886 to sing the music that he played on the piano. Lloyd Webber modified the melody and the chords of the piece as he played and she sang. Brightman declared that in September 1984 she accompanied Lloyd Webber to a meeting with Michael Batt, who was to produce a recording of the song Lloyd Webber had composed for her. In October 1984, Brightman and Batt recorded “Phantom Song” at Air Studios in London.

    43

    Both Lloyd Webber and Brightman assert that they never heard of Ray Repp or his music prior to this litigation. Lloyd Webber testified at his deposition that he dislikes “pop church music” and never listens to it. His interest in “church music” is limited to “the English Choral tradition.” Although Repp alleged a connection with Lloyd Webber through a common acquaintance, Robert Velline, it appears that Velline actually was acquainted with Lloyd Webber’s brother and met Lloyd Webber only briefly in 1986. Velline, a 1960s rock singer known as Bobby Vee, had received a copy of Repp’s album, “Benedicamus,” in 1979.

    45

    Lloyd Webber also submitted in support of his motion for summary judgment the affidavits and report of an expert musicologist, Dr. Lawrence Ferrara. Ferrara is a Professor of Music at New York University and has written numerous books and articles on musical analysis. In analyzing the part of “Till You” allegedly infringed by the “Phantom Song,” he identified two separate musical phrases in “Till You,” and three separate phrases in the “Phantom Song.” Ferrara determined that the third phrase really was a variant of the first phrase in the latter piece. In arriving at his findings, he reviewed Lloyd Webber’s prior works as well as other extant musical literature.

    47

    Ferrara found that the first phrase of the “Phantom Song” was derived from Lloyd Webber’s earlier compositions: “Benjamin Calypso” and “Pilate’s Dream.” He also identified in phrase one various compositions in the public domain, including pieces by Bach and Grieg. He found that phrase two of the “Phantom Song” was derived primarily from “Close Every Door” but also from other works by Lloyd Webber. Professor Ferrara was of the opinion that there is a greater similarity between phrase two of “Close Every Door” and phrase two of “Till You” than there is between phrase two of “Phantom Song” and phrase two of “Till You.” Defendants put forth Ferrara’s findings that the two relevant phrases of the “Phantom Song” were derived from compositions by Lloyd Webber that predated “Till You,” and his findings that the melody in phrase one was derived from compositions in the public domain, to support their claim that any music in the “Phantom Song” similar to “Till You” results from Lloyd Webber’s independent creation.

    49

    Plaintiffs’ response to the motion for summary judgment included the affidavits and reports of two musicologists—Professors H. Wiley Hitchcock and James Mack. Professor Hitchcock is Distinguished Professor of Music at the City University of New York and Founding Director of the Institute for Studies in American Music at Brooklyn College of City University. He is the author of a number of scholarly books and articles about music. Hitchcock provided a thirty-five page musicological analysis, with attached charts, to support his conclusion that “Phantom Song” is based on “Till You.” In his analysis, he examined overall structure, rhythm and meter, melody and harmony and the interaction of these elements in the two pieces as a whole. Hitchcock found “the basic rhythmic character” and the “basic metrical character” of each piece identical. Although the two pieces are written in different harmonic modes, Hitchcock opined that they “reveal significant correspondences, and in harmonic rhythm an absolute identity.”

    51

    According to Professor Hitchcock, the principal and most important aspect to be considered in the comparison of the two pieces is the melody of each piece. Analyzing pitch and rhythm as the constituent elements of melody, Hitchcock asserted that “there were striking similarities between the two melodies.” His conclusion was as follows:

    53

    Professor Mack is Professor and Chairman of the Humanities Department at Harold Washington College in Chicago, Illinois. He has composed music and has been employed as an arranger, conductor and record producer. He also has been involved in the production of radio and television commercials. Professor Mack has conducted various symphony orchestras in the performance of his own works and has performed as a flautist on a number of occasions. His analyses are put forth in his affidavit and in Repp’s answer to certain interrogatories. Mack approached the music in question from a contemporary commercial point of view as well as from the traditional academic perspective utilized by Professor Hitchcock.

    55

    Although he was largely in agreement with Professor Hitchcock’s analysis and conclusions, Professor Mack found “even more similarities,” particularly “harmonic similarities” than were found by Hitchcock. Mack’s analysis also took into account his opinion that aural impressions are more significant in commercial music than in symphonic music because the former is designed for the lay listener who derives his impression from what he or she hears. Professor Mack concluded “that `Till You’ and `Phantom’ are strikingly similar, and are so similar as to preclude separate creation.”

    57

    B. The Opinion of the District Court.

    59

    In its comprehensive decision granting summary judgment dismissing the claims of plaintiffs, the district court first agreed with defendants’ contention “that plaintiffs cannot prove that Lloyd Webber had access to Repp’s `Till You’ song prior to composing the Phantom Song.” Repp v. Lloyd Webber, 858 F.Supp. 1292, 1301 (S.D.N.Y.1994)(“Repp I”). The district court determined that there was no chain of events by which Lloyd Webber might have gained access to Repp’s song, since Lloyd Webber categorically denied any exposure to Repp or his music and there was no nexus between Robert Velline and Lloyd Webber that would justify an inference of access on that basis. See id. at 1301.

    61

    The district court also determined that the wide dissemination of the allegedly infringed work, which could satisfy the burden of showing access, was not established. In arriving at this conclusion, the district court pointed to various perceived deficiencies in the plaintiffs’ evidence—the lack of documentary proof of the number of copies of “Till You” actually distributed to the public in album, tape or cassette form; the failure of the testimony to describe quantity, time and place of distribution of the “Benedicamus” album; inability to establish that the advertising of Repp’s music included “Till You” as a distinct composition; and, despite Lloyd Webber’s fondness for church music and the widespread performance of Repp’s music in church and other venues, the failure to establish that Lloyd Webber visited any of the places where “Till You” was performed. See id. at 1301-03.

    63

    The district court also rejected plaintiffs’ contention that “Till You” is so strikingly similar to the “Phantom Song” as to preclude the possibility of independent creation and to permit access to be inferred without direct proof. In this connection, the district court stated:

    65

    Id. at 1303.

    67

    The district court also accepted the defense of independent creation. The court credited the declarations of Lloyd Webber and Brightman concerning the creation of the “Phantom Song” at Lloyd Webber’s home in Sydmonton in 1983 and the later *888 development of the song in 1984. According to the district court, ”[p]laintiffs have not submitted any evidence to contradict defendants’ proof that the Phantom Song was created in the manner” described in the declarations of Lloyd Webber and Brightman. Id. at 1304. The court rejected plaintiffs’ argument “that Lloyd Webber and Brightman are interested parties, and that their allegations of independent creation are therefore incredible.” Id. Finally, the court dismissed pendent state claims of unfair competition and deceptive trade practices for lack of jurisdiction, finding, among other things, that there was not complete diversity of citizenship. See id. Plaintiffs do not here contest the dismissal of the state claims.

    69

    IV. Of the Trial of the Counterclaims and the Decision that Followed.

    71

    In denying a motion to dismiss the counterclaims, the district court determined “that a reasonable jury could infer that Repp had access to the song `Close Every Door’ by virtue of its wide dissemination in the public domain” prior to the composition of “Till You.” In addition the Court found that an issue of fact existed as to whether the two works were substantially similar. See Repp v. Lloyd Webber, 892 F.Supp. 552, 557-58 (S.D.N.Y.1995). Accordingly, Lloyd Webber having withdrawn his claim for damages, the parties proceeded to trial before the court.

    73

    Lloyd Webber testified that he had not heard “Till You” in any form until after he filed the counterclaim, which was interposed in reliance upon the analysis of Professor Ferrara. According to the testimony of Ferrara, there were twelve fundamental melodic pitches in common in the analogous measures of “Till You” and “Close Every Door.” Nine of the twelve were said to appear in identical consecutive sequence. Ferrara opined that section A of both pieces shared the same internal structure and that there were other similarities between the two songs, including harmonic similarities. Each song was said to consist of two sections of music, alternatively repeated: section A, containing the similar music at issue and section B, containing dissimilar music. It was Ferrara’s opinion that the music included in section A of each song comprised more than fifty percent of the published songs.

    75

    Repp testified that he did not copy “Close Every Door” when he wrote “Till You,” and that the two pieces did not at all sound alike to his ear. He testified that he first attended a live stage performance of “Joseph and the Amazing Technicolor Dreamcoat” in 1982. It is at that time that he would have heard “Close Every Door” for the first time, although there was evidence that Repp had been aware of the existence of Lloyd Webber’s work, including “Joseph,” prior to that time. Testifying on behalf of Repp at the trial, Professor Mack concluded that “Till You” and “Close Every Door” were “distinctly dissimilar.” He noted differences in the thrust and ambience of each song, observing that the songs are set to different meters, one is in the major mode and one in the minor, and that the rhythms are “anti-thetical.” In arriving at his conclusion, Mack analyzed the components of harmony, melody and mode, as well as meter and rhythm. According to Mack, Repp did not copy from “Close Every Door.”

    77

    In dismissing the counterclaims following trial, the district court set forth at length its findings of fact and conclusions of law. See Repp v. Lloyd Webber, 947 F.Supp. 105, 107 (S.D.N.Y.1996)(“Repp II”). In the opinion, the district court rejected Lloyd Webber’s claims regarding Repp’s access to “Close Every Door.” The court accepted Repp’s testimony that he was not exposed to the piece until he attended a performance of “Joseph” in 1982. See id. at 114-115. With respect to the widespread dissemination of the piece as a basis for access, the district court noted, among other things, that “Joseph” did not achieve its greatest commercial success until after 1980, two years after “Till You” was created. See id. at 115. The court also noted that the evidence of sales and distribution prior to that time was too sparse to support an inference of access. See id. On the question of substantial similarity, the district court stated that it “credits the testimony and conclusions of Repp’s music expert, James Mack (`Mack’), and finds that Lloyd Webber has not established that Repp copied from `Close Every Door.’” Id. In crediting *889 Mack’s testimony, the district court in its opinion undertook a detailed examination of the Mack musicological analysis and identified the deficiencies in Lloyd Webber’s evidence.

    79

    DISCUSSION

    81

    I. Summary Judgment Reversed.

    83

    Copyright infringement is established when the owner of a valid copyright demonstrates unauthorized copying. See Laureyssens v. Idea Group, Inc., 964 F.2d 131, 139 (2d Cir.1992). Actual copying must first be shown, either by direct evidence or by indirect evidence. See id. at 140. The latter type of evidence “includ[es] access to the copyrighted work, similarities that are probative of copying between the works, and expert testimony.” Id. It is only after actual copying is established that one claiming infringement is required to show substantial similarity[1] between the two works relating to the protectible material. Id. In satisfaction of this requirement in a case alleging music plagiarism, the claimant is constrained to prove that “defendant took from plaintiff’s works so much of what is pleasing to the ears of lay listeners, who comprise the audience for whom such … music is composed, that defendant wrongfully appropriated something which belongs to the plaintiff.” Arnstein v. Porter, 154 F.2d 464, 473 (2d Cir. 1946).

    85

    We have held that where there are striking similarities probative of copying, proof of access may be inferred: “If the two works are so strikingly similar as to preclude the possibility of independent creation, copying may be proved without a showing of access.” Lipton v. Nature Co., 71 F.3d 464, 471 (2d Cir.1995) (quotation and citation omitted); see also Gaste v. Kaiserman, 863 F.2d 1061, 1067-68 (2d Cir.1988). Independent creation is an affirmative defense, evidence of which may be introduced to rebut a prima facie case of infringement. See Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d 498, 501 (2d Cir.1982). The fact that infringement is “subconscious” or “innocent” does not affect liability, although it may have some bearing on remedies. ABKCO Music, Inc. v. Harrisongs Music, Ltd., 722 F.2d 988, 998-99 & n. 12 (2d Cir.1983).

    87

    We review the granting of a motion for summary judgment by applying the same standard as the district court applied and determine de novo whether or not summary judgment is warranted. See Taggart v. Time Inc., 924 F.2d 43, 45-46 (2d Cir.1991). Under the governing Rule, judgment “shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(c);. The Rule is clear in “provid[ing] that the mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986) (emphasis in original).

    89

    In our review of the district court’s decision, it is necessary for us to resolve all ambiguities and draw all inferences in favor of the non-moving party. See Skubel v. Fuoroli, 113 F.3d 330, 334 (2d Cir.1997). However, the non-moving party “must do more than simply show that there is some metaphysical doubt as to the material facts.” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986). In making the necessary showing, ”[c]onclusory allegations will not suffice to create a genuine issue.” Delaware & Hudson Ry. Co. v. Consolidated Rail Corp., 902 F.2d 174, 178 (2d Cir.1990). The *890 Supreme Court teaches that a “genuine” dispute over a material fact arises only where it can be said that the evidence would allow a reasonable jury to find in favor of the non-moving party. Liberty Lobby, 477 U.S. at 248, 106 S.Ct. at 2510.

    91

    We are mindful that factual materiality is governed by reference to the applicable substantive law. Dister v. Continental Group, Inc., 859 F.2d 1108, 1114 (2d Cir.1988). In this case, of course, our reference is to the substantive law governing actions for copyright infringement. Because the non-moving parties, here the plaintiffs, bear the burden of proof at trial on their claim that Lloyd Webber’s “Phantom Song” copies Repp’s “Till You,” the defendants may satisfy their burden under Rule 56 by showing “that there is an absence of evidence to support [an essential element] of the nonmoving party’s case.” Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548, 2554, 91 L.Ed.2d 265 (1986).

    93

    Clearly, the duty of a court on a motion for summary judgment is to determine whether there are any genuine issues of material fact to be resolved by trial and not to decide factual issues. In this regard, the court’s task is issue identification, not issue resolution. See Liberty Lobby, 477 U.S. at 249, 106 S.Ct. at 2510-11. In performing this task, we must assume the truth of the non-movant’s evidence. See id. at 255, 106 S.Ct. at 2513-14. It seems to us that the district court failed to make the requisite assumption. We think that the district court undertook to resolve some material issues of fact revealed on the motion for summary judgment rather than to identify those issues and leave them for trial. We think that the defendants failed to demonstrate the absence of evidence supporting the elements of plaintiffs’ copyright infringement case. And we think that the evidence presented by plaintiffs would allow a reasonable fact-finder to find in favor of the plaintiffs.

    95

    In determining that plaintiffs could not prove that Lloyd Webber had access to “Till You” prior to composing “Phantom Song,” the district court first rejected the argument that access could have been gained through an intermediary, Robert Velline. The court noted the uncertainty of Velline’s testimony and his ultimate disclaimer of any allegation that he distributed Repp’s music to either Lloyd Webber or Lloyd Webber’s brother. The court next rejected the claim of access through wide distribution of “Till You,” “find[ing] that plaintiffs’ evidence of `wide dissemination’ does not rise above the level of pure speculation.” Repp I, 858 F.Supp. at 1302. As to the argument that Repp’s music was widely advertised, the court made a “find[ing] that the fact that K & R may have distributed newspapers and mailings advertising Repp’s music does not establish that the “Till You’ song was advertised as a distinct musical composition.” Id.

    97

    Finally, in determining the issue of access, the district court evaluated the evidence of the advertisement and performance of “Till You” in a “specialized religious market.” Id. This evaluation lead to a “find[ing] ... that the mere fact that Lloyd Webber composes liturgical works and is `fond of church music,’ ... does not establish either that he visited any of the places at which Repp’s `Till You’ song was performed, or had access to the Benedicamus recording during the relevant time period.” Id. at 1303.

    99

    While there was little, if any, evidence demonstrating access, there was considerable evidence that “Phantom Song” is so strikingly similar to “Till You” as to preclude the possibility of independent creation and to allow access to be inferred without direct proof. The district court recognized our rule permitting an inference of access where there is “striking similarity,” citing Arnstein v. Porter, 154 F.2d at 468-69 and Gaste v. Kaiserman, 863 F.2d at 1067. See Repp I, 858 F.Supp. at 1303. However, the district court fell into error in rejecting the evidence presented by the plaintiffs and making findings on this issue. Two highly qualified experts, Professors Hitchcock and Mack, gave unequivocal opinions based on musicological analyses. Professor Hitchcock averred that there was “no doubt about the striking similarity” and concluded that “Phantom Song” is based on “Till You.” Professor Mack opined that the two pieces “are strikingly similar, and are so similar as to preclude separate creation.”

    101

    *891 In the face of the plaintiffs’ expert testimony, the district court, relying upon its own “aural examination” as well as the expert testimony put forth by the defendants, found “that the two songs do not share a striking similarity sufficient to justify a finding of copying in the absence of access to the copyrighted work.” Repp I, 858 F.Supp. at 1303. It was not for the district court to make this factual finding where such strong competing evidence was before it. The issue of “striking similarity,” by virtue of the supported opinions of the experts, including that of Professor Ferrara for the defendants, was shown to be a genuine issue of material fact. Access to the music of Repp being an essential element of his case, it cannot be said that there is an absence of evidence to support proof of that element through the inference generated by the striking similarity of the two pieces.

    103

    Finally, the district court found on the motion for summary judgment that even if plaintiffs could prove access and probative similarity, “they have not submitted any evidence to controvert the defendants’ proof of independent creation.” Id. at 1303. In arriving at this conclusion, the district court accepted the declarations of Lloyd Webber and Brightman concerning the creation of “Phantom Song” by Lloyd Webber, with the assistance of Brightman, at Lloyd Webber’s home in Sydmonton, England. The district court apparently was of the opinion that some direct evidence was required to contradict their version of the events surrounding the beginnings of “Phantom Song.”

    105

    Plaintiffs note in their brief that a leading text on copyright includes this comment: “Proof of independent creation, whether direct or inferential, should be taken with a grain of salt.” 2 Paul Goldstein, Copyright: Principles, Law and Practice § 7.2.2 (1989). Defendants respond that “Professor Goldstein’s comment has nothing to do with objective empirical expert evidence of independent creation, which was the heart of defendants’ motion.” While the comment may well overstate the proposition, the fact remains that the district court accepted only the version of interested witnesses on the question of separate creation. See Repp I, 858 F.Supp. at 1303 & n. 15. But Professor Mack for the plaintiffs specifically found that the two pieces of music “are so similar as to preclude separate creation.” Here, again, the district court erred by undertaking the resolution of a disputed issue of material fact. We have previously determined that independent creation is an affirmative defense and may be used to rebut a prima facie case of infringement. See Eden Toys, Inc. 675 F.2d at 501. The plaintiffs here have established a prima facie case of access through striking similarity, which certainly includes the element of probative similarity. Whether the evidence of independent creation here is sufficient to rebut the prima facie case established in this action is a question for the factfinder, whatever the contours of the burden of establishing the defense. See generally 3 Melville B. Nimmer & David Nimmer, Nimmer On Copyright § 12.11[D] (1997).

    107

    II. Judgment After Trial Affirmed.

    109

    We review a trial court’s findings of fact following a bench trial for clear error. See Fed.R.Civ.P. 52(a); Allied Chem. Int’l Corp. v. Companhia de Navegacao Lloyd Brasileiro, 775 F.2d 476, 481 (2d Cir.1985). “If the district court’s account of the evidence is plausible in light of the record viewed in its entirety, the court of appeals may not reverse it even though convinced that had it been sitting as the trier of fact, it would have weighed the evidence differently.” Anderson v. City of Bessemer, 470 U.S. 564, 573-74, 105 S.Ct. 1504, 1511, 84 L.Ed.2d 518 (1985). Moreover, “special deference” is paid to findings of fact where the trial court bases its determinations on assessments of witnesses’ credibility. See id. at 574, 105 S.Ct. at 1511-12; Donato v. Plainview-Old Bethpage Cent. Sch. Dist., 96 F.3d 623, 634 (2d Cir.1996), cert. denied, _ U.S. _, 117 S.Ct. 1083, 137 L.Ed.2d 218 (1997). We may “reverse only when we are left with the firm conviction that a mistake has been committed.” See SNC S.L.B. v. M/V Newark Bay, 111 F.3d 243, 247 (2d Cir.1997) (quotation and citations omitted).

    111

    *892 In dismissing the counterclaims interposed by Lloyd Webber following a 5-day trial, the district court made detailed findings of fact, carefully evaluating all the evidence presented. The court then undertook a pellucid examination of the applicable law, which it then applied to the facts as found. We find no error, let alone clear error, in the conduct of the trial or in the findings of the court and therefore have no difficulty affirming substantially for the reasons stated in the district court’s well-stated and well-reasoned opinion. See Repp II, 947 F.Supp. at 109.

    113

    We note that in rejecting Lloyd Webber’s claim regarding Repp’s access to “Close Every Door,” the district court as factfinder accepted Repp’s trial testimony that he had no access to this piece of music until he had attended a performance in which it was played in 1982. This was long after the creation of “Till You.” The court also found after trial that “Joseph” did not achieve commercial success until after 1980, also after “Till You” was created, and that there was not enough in the way of sales or distribution prior to that time to support a finding of access through that means. Finally, the court accepted the trial testimony of Professor Mack, the only expert witness presented by plaintiffs at trial, that “Till You” was not copied from “Close Every Door.” The trial court had the opportunity to evaluate the credibility of witnesses and to review the documentary evidence first-hand, and was persuaded that there was no copying. We have absolutely no basis upon which to reject that determination.

    115

    CONCLUSION

    117

    In accordance with the foregoing, we reverse the summary judgment entered by the district court dismissing plaintiffs’ claims for copyright infringement and remand for further proceedings thereon; we affirm the judgment dismissing defendants’ counterclaims for copyright infringement entered after trial by the district court.

    119

    [1] Copyright caselaw has caused considerable confusion by the use of the term “substantial similarity” at two different points of the copyright infringement analysis. In an effort to clarify this confusion, we have noted that the term “probative similarity” should be used when referring to the initial burden of proving copying by establishing access and/or similarities. See Laureyssens v. Idea Group, Inc., 964 F.2d 131, 140 (2d Cir.1992). After a plaintiff has proved copying, he must then show that the copying was unlawful by establishing “substantial similarity” between the works at issue. See id. at 140-41.

  • 10 Newton v. Diamond, 204 F.Supp.2d 1244 (C.D. Cal. 2002) (Excerpts)

    1

    204 F.Supp.2d 1244 (2002)
    James W. NEWTON, Jr. dba Janew Music, Plaintiff,
    v.
    Michael DIAMOND, et al., Defendants
    No. CV 00-4909 NM(MANx).

    3

    United States District Court, C.D. California.
    May 21, 2002.

    5

    *1245 Jeffrey Alan Berchenko, Berchenko & Korn, San Francisco, CA, Alan Michael Korn, Alan M. Korn Law Offices, San Francisco, CA, for James W. Newton, Jr dba Janew Music.

    7

    Adam F. Streisand, Daniel J. Friedman, Joseph Geisman, Loeb & Loeb, Los Angeles, CA, for Michael Diamond, Adam Horowitz, Adam Yauch dba Beastie Boys, Capitol Records Inc, Grand Royal Records Inc, Universal Polygram International Publishing Inc, Brooklyn Dust Music, an entity of unknown origin, Mario Caldato, Jr.

    9

    Adam F. Streisand, Loeb & Loeb, Los Angeles, CA, Jeffrey D. Ullman, Ullman Furhman Broeman & Platt, Morristown, NJ, for Janus Films, LLC, Criterion Collection, Voyager Publishing Company Inc.

    11

    Barry E. Mallen, Manatt Phelps & Phillips, Los Angeles, CA, Steven M Hayes, David R. Baum, Parcher Hayes & Snyder, New York, NY, for Sony Music Ent Inc, BMG Direct Marking Inc., the Columbia House Company, an entity of unknown origin.

    13

    ORDER

    15

    MANELLA, District Judge.

    17

    1) GRANTING DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT

    19

    2) DENYING PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT

    21

    I. INTRODUCTION

    23

    The Beastie Boys, an alternative rock and hip-hop band, and their business associates *1246 (“Defendants”) sampled a six-second, three-note sequence of a flute composition composed and performed by James W. Newton, Jr. (“Plaintiff”). Plaintiff concedes that Defendants licensed the sound recording of his work, but alleges that Defendants’ use of the sample infringed upon the underlying musical composition. Both parties have filed motions for summary judgment.

    25

    II. FACTS

    27

    This case involves sampling. “The practice of sampling portions of pre-existing recordings and compositions into new songs is apparently common among performers of the genre known as rap…. Musicians sample pre-existing works either digitally, by lifting part of a song from a pre-existing master recording and feeding it through a digital sampler, or by hiring musicians who re-play or re-sing portions of the pre-existing composition.” Williams v. Broadus, No. 99 Civ. 10957 MBM, 2001 WL 984714, at *1 n. 1 (S.D.N.Y. Aug.27, 2001).

    29

    Plaintiff, a flautist and composer, is the sole author of the musical composition Choir, which was registered with the Copyright Office in 1978. Defendants’ Statement of Uncontroverted Facts ¶ 1; Plaintiff’s Statement of Genuine Issues ¶ 1; Plaintiff’s Statement of Uncontroverted Facts ¶ 1; Defendants’ Statement of Genuine Issues ¶ 1. Defendants assert that Choir is one movement of a multi-movement musical composition titled The Change Suite, registered by Plaintiff with the U.S. Copyright Office. Defendants’ Statement of Uncontroverted Facts ¶ 1. Plaintiff asserts that Choir is one of multiple songs permissibly covered by a single copyright registration. Plaintiff’s Statement of Genuine Issues ¶ 1. It is undisputed that Plaintiff holds a valid copyright to the musical composition at issue in this case. Defendants’ Reply Brief at 2. It is also undisputed that Plaintiff has no rights to the sound recording of his performance of Choir, having licensed it to ECM Records in 1981. First Amended Complaint (“FAC”) ¶ 26, Ex. D.

    31

    On February 26, 1992, the Beastie Boys (“Defendants”), an alternative rock and hip-hop band, obtained a license from ECM Records to sample the copyrighted sound recording of Plaintiff’s performance of Choir. Defendants’ Statement of Uncontroverted Facts ¶ 3; Plaintiff’s Statement of Genuine Issues ¶ 3.[1] Pursuant to their license, Defendants copied a three-note sequence with one background note, approximately six seconds long, from Choir and looped the passage throughout their song, Pass the Mic. Plaintiff’s Statement of Uncontroverted Facts ¶ 4; Defendants’ Statement of Genuine Issues ¶ 4; Korn Decl., Ex. 1, Track # 2 (Pass the Mic). Choir itself runs approximately four and a half minutes. See Korn Decl., Ex. 1, Track # 1 (Choir). It is undisputed that Choir and Pass the Mic “are substantially dissimilar in concept and feel, that is, in there [sic] overall thrust and meaning.” Id., Ex. 3. (Dobrian Report) at 16.

    33

    Defendants represent that the sample consists of a six-second segment in which the performer fingers a “C” above middle “C” on the flute, while singing the same “C,” ascending one-half step to a “D-flat,” and descending again to the “C.” Defendants Statement of Uncontroverted Facts ¶ 6. Plaintiff concedes that Defendants sampled “melody and harmony created by interaction of the underlying flute note of C and the simultaneous vocalization of the notes C, D-flat, and C.” Korn Decl., Ex. 5, *1247 Plaintiff’s Response to Defendants’ Interrogatory No. 1.[2] However, Plaintiff alleges that Defendants also sampled the unique musical sound and characteristics created by his distinctive performance techniques. Id.

    35

    It is undisputed that Defendants’ license allowed them to sample the sound recording of Plaintiff’s performance of Choir. FAC ¶ 26; Korn Decl., Ex. 15; Defendants’ Statement of Uncontroverted Facts ¶¶ 3-4; Plaintiff’s Statement of Genuine Issues ¶¶ 3-4; Plaintiff’s Statement of Uncontroverted Facts ¶ 3; Defendants’ Statement of Genuine Issues ¶ 3; Plaintiff’s Motion at 3. However, Plaintiff contends that Defendants were required to obtain a separate license for derivative use of the copyrighted musical composition of Choir. Defendants’ Statement of Uncontroverted Facts ¶ 3; Plaintiff’s Statement of Genuine Issues ¶ 3; Plaintiff’s Statement of Uncontroverted Facts ¶ 3; Defendants’ Statement of Genuine Issues ¶ 3; Plaintiff’s Motion at 3.

    37

    Plaintiff filed suit May 9, 2000, asserting claims for: 1) copyright infringement in violation of the Copyright Act, 17 U.S.C. § 101 et seq.; 2) international copyright infringement in violation of the Universal Copyright Convention; 3) reverse passing-off in violation of the Lanham Act, 15 U.S.C. § 1125, et seq.; and 4) misappropriation of identity in violation of the Lanham Act. The court dismissed Plaintiff’s third and fourth claims pursuant to Fed.R.Civ.P. 12(b)(6). See Court’s Order Granting Defendants’ Motion to Dismiss, September 12, 2000.

    39

    Defendants filed their motion for summary judgment on Plaintiff’s remaining two claims for copyright infringement February 28, 2002. Defendants argue that the portion of the musical composition Choir they sampled cannot be protected as a matter of law. In the alternative, Defendants argue that any misappropriation is de minimis, and thus not actionable as copyright infringement. Defendants also contend that Plaintiff cannot seek extraterritorial damages because he cannot establish that Defendants infringed upon his copyright. Finally, Defendants argue that any infringement claim and damages Plaintiff may have are limited by the three-year statute of limitations.

    41

    Plaintiff filed a motion for summary judgment March 12, 2000. Plaintiff argues that the portion of Choir Defendants sampled is legally protectable, and that Defendants’ alleged infringement is not de minimis. Plaintiff also argues that he is entitled to injunctive relief.

    43

    III. LEGAL STANDARD

    45

    Summary judgment is appropriate when “the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(c);. Summary judgment is “properly regarded not as a disfavored procedural shortcut, but rather as an integral part of the Federal Rules as a whole, which are designed `to secure the just, speedy and inexpensive determination of every action.’” Celotex Corporation v. *1248 Catrett, 477 U.S. 317, 327, 106 S.Ct. 2548, 2555, 91 L.Ed.2d 265 (1986) (quoting Fed. R.Civ.P. 1). Determinations of credibility, however, should be left to the trier of fact. See Hanon v. Dataproducts Corp., 976 F.2d 497, 507 (9th Cir.1992). Accordingly, issues that turn on such determinations should not be resolved at the summary judgment stage. See id.; see also Palacios v. City of Oakland, 970 F.Supp. 732, 738 (N.D.Ca.1997) (“In judging evidence at the summary judgment stage, the Court does not make credibility determinations or weigh conflicting evidence[.]”).

    47

    In a trio of 1986 cases, the Supreme Court clarified the applicable standards for summary judgment. See Celotex, supra; Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Matsushita Electric Industrial Co. v. Zenith Radio Corp., 475 U.S. 574, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The moving party bears the initial burden of demonstrating the absence of a genuine issue of material fact. See Anderson, 477 U.S. at 256, 106 S.Ct. at 2514. The governing substantive law dictates whether a fact is material; if the fact may affect the outcome, it is material. See id. at 248, 106 S.Ct. at 2510. If the moving party seeks summary adjudication with respect to a claim or defense upon which it bears the burden of proof at trial, it must satisfy its burden with affirmative, admissible evidence. By contrast, when the non-moving party bears the burden of proving the claim or defense, the moving party can meet its burden by pointing out the absence of evidence submitted by the non-moving party. The moving party need not disprove the other party’s case. See Celotex, 477 U.S. at 325, 106 S.Ct. at 2554.

    49

    If the moving party meets its initial burden, the “adverse party may not rest upon the mere allegations or denials of the adverse party’s pleadings, but the adverse party’s response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial.” Fed.R.Civ.P. 56(e). When assessing whether the non-moving party has raised a genuine issue, the court must believe the evidence and draw all justifiable inferences in the non-movant’s favor. Anderson, 477 U.S. at 255, 106 S.Ct. at 2513 (citing Adickes v. S.H. Kress & Co., 398 U.S. 144, 158-59, 90 S.Ct. 1598, 1608-09, 26 L.Ed.2d 142 (1970)). Nonetheless, “the mere existence of a scintilla of evidence” is insufficient to create a genuine issue of material fact. Id. at 252, 106 S.Ct. at 2512. As the Supreme Court explained in Matsushita,

    51

    Id., 475 U.S. at 586-87, 106 S.Ct. at 1356 (citations omitted).

    53

    To be admissible for purposes of summary judgment, declarations or affidavits must be based on personal knowledge, must set forth “such facts as would be admissible in evidence,” and must show that the declarant or affiant is competent to testify concerning the facts at issue. Fed.R.Civ.P. 56(e). Declarations on information and belief are insufficient to establish a factual dispute for purposes of summary judgment. See Taylor v. List, 880 F.2d 1040, 1045 (9th Cir.1989).

    55

    IV. DISCUSSION

    57

    A. Copyright Act Claim

    59

    1. The Difference Between the Musical Composition and the Sound Recording

    61

    Sound recordings and their underlying musical compositions are separate *1249 works with their own distinct copyrights. See 17 U.S.C. § 102(a)(2), (7). “When a copyrighted song is recorded on a phonorecord, there are two separate copyrights: one in the musical composition and the other in the sound recording.” T.B. Harms Co. v. Jem Records, Inc., 655 F.Supp. 1575, 1576 n. 1 (D.N.J.1987). See also BTE v. Bonnecaze, 43 F.Supp.2d 619, 627 (E.D.La.1999); Jarvis v. A & M Records, 827 F.Supp. 282, 292 (D.N.J.1993) (“Under the Copyright Act, there is a well-established distinction between sound recordings and musical compositions.”). The rights of a copyright in a sound recording do not extend to the song itself, and vice versa. BTE, 43 F.Supp.2d at 627; T.B. Harms, 655 F.Supp. at 1576 n. 1.

    63

    It is undisputed that Plaintiff has no rights to the sound recording of his performance of Choir, having licensed it for a fee to ECM Records, who, in turn, granted Defendants a license to sample it. FAC ¶ 26, Ex. D. Defendants’ Statement of Uncontroverted Facts ¶ 3; Plaintiff’s Statement of Genuine Issues ¶ 3. However, Plaintiff contends that Defendants’ sampling infringed upon his underlying musical composition. Accordingly, the court must first determine what elements of Plaintiff’s work are protected by his copyright in the musical composition, as opposed to those protected by the copyright in the sound recording, and “filter out” the latter. See Sony Pictures Enter., Inc. v. Fireworks Enter. Group, Inc., 156 F.Supp.2d 1148, 1157 (C.D.Cal.2001). “Because only those elements of a work that are protectable and used without the author’s permission can be compared when it comes to the ultimate question of illicit copying, [courts use] analytic dissection to determine the scope of copyright protection before works are considered as a `whole.’” Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1443 (9th Cir. 1994).

    65

    Plaintiff argues that analytic dissection is not required, because copyright law automatically protects copyrightable expression reduced to a musical score or phonorecord. Plaintiff’s argument begs the question as to what is protected by his copyright over the musical composition, as opposed to ECM’s copyright over the sound recording. Had Plaintiff held both copyrights, analytic dissection would be unnecessary. However, as Plaintiff cannot base his infringement action on elements unique to the sound recording, the court must first determine precisely what is protected by Plaintiff’s copyright over his musical composition.

    67

    A musical composition consists of rhythm, harmony, and melody, and it is from these elements that originality is to be determined. 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 2.05[D]. A musical composition captures an artist’s music in written form. A. Dustin Mets, Did Congress Protect the Recording Industry Into Competition? The Irony of the Digital Performance Right in Sound Recordings Act, 22 U. DAYTON L. REV. 371, 372-73 (1997). A musical composition’s copyright protects the generic sound that would necessarily result from any performance of the piece.

    69

    Sound recordings are “works that result from the fixation of a series of musical, spoken or other sounds. . . .” T.B. Harms, 655 F.Supp. at 1576 n. 1 (quoting 17 U.S.C. § 101). “The sound recording is the aggregation of sounds captured in the recording while the song or tangible medium of expression embodied in the recording is the musical composition.” Id. (citing H.R.Rep. No. 94-1476, 94th Cong., 2d Sess. 56, reprinted in 1976 U.S.Code Cong. & Ad. News 5659, 5669). See also BTE, 43 F.Supp.2d at 627-28; Jarvis, 827 F.Supp. at 292. In other words, the sound recording is the sound produced by the *1250 performer’s rendition of the musical work. See generally Nimmer on Copyright § 2.10.

    71

    Plaintiff’s musical composition of the sample at issue consists of a “C” note played on the flute while the performer sings a “C,” ascends one-half step to “D-flat,” and descends again to the “C.” The score is not further orchestrated and contains neither time nor key signatures.[3] The score also calls for between 90 and 180 seconds of improvisation. The C — D-flat — C sequence appears only once in the composition.

    73

    Plaintiff’s expert, Christopher Dobrian, concludes that following the “special playing technique described in the score” will necessarily create unique expression. Korn Decl., Ex. 3 (Dobrian Report) at 12. Dobrian acknowledges, however, that the technique of vocalization — simultaneously singing and playing the flute — is not unique to Plaintiff’s musical composition. Id. at 14. Similarly, Plaintiff’s other expert, Oliver Wilson, acknowledges that “vocalization performance techniques” have been used in Africa and were prevalent throughout the Twentieth Century, particularly in avant-garde music. Korn Decl., Ex. 3 (Wilson Report) at 20-21 (”[M]ultiphonic and particularly vocalization of performance techniques exist as part of the performance tradition of specific SubSaharan African cultures and has [sic] also been clearly established in the second half of the Twentieth century as a relatively common performance practice in the avant-garde music which grows out of the cultivated Western written music tradition.”).

    75

    Defendants’ expert, Lawrence Ferrara, confirms that vocalization involving a flute may be found in numerous flute pieces that pre-date Plaintiff’s 1978 musical composition. See Streisand Decl., Ex. 3 (Ferrara Report) at 7-8. For example, acclaimed composer George Crumb’s 1971 composition “Voice of the Whale” contains the same technique. See id., Ex. 3 (Ferrara Report) at 7-8, Ex. C (recordings of Crumb’s work). Like Plaintiff’s technique in Choir, Crumb plays one note on the flute while simultaneously singing the note into the flute, ascending a half-step, and returning to the note being played. See id., Ex. 3 (Ferrara Report) at 7-8, Ex. C (recordings of Crumb’s work). Numerous other composers have used vocalization to create a distinctive sound. See id., Ex. 3 (Ferrara Report) at 7-8. See also id., Ex. D, Track # 1 (Robert Dick, Afterlight); Track # 2 (African folk song Bengsimbe of the Fula people); Track # 3 (Toru Takemitsu, Voice); Track # 4 (Domino, recorded by Roland Kirk); Tracks # 5 & # 6 (My Ship, recorded by Roland Kirk); Track # 7 (We’ll Be Together Again, recorded by Roland Kirk); Track # 8 (People, recorded by Roland Kirk); and Track # 9 (Szerelem, Szerelem, Hungarian Folk Song). Moreover, academic literature recognized the technique of singing while playing the flute before Plaintiff wrote and performed Choir. See, e.g., id., Ex. B (DAVID COPE, NEW MUSIC NOTATION at 67 (1976); ROBERT DICK, THE OTHER FLUTE: A PERFORMANCE MANUAL OF CONTEMPORARY TECHNIQUES at 135 (“Singing and Playing Simultaneously”) (1975); THOMAS HOWELL, THE AVANT-GARDE FLUTE: A HANDBOOK FOR COMPOSERS AND FLUTISTS at 30 (“Special Effects: Singing with the Flute”) (1974)).

    77

    Plaintiff largely ignores the distinction between musical compositions and sound recordings. Plaintiff argues only that his own techniques render his musical composition unique, as they contribute “something *1251 more than a merely trivial variation, something recognizably [his] own” to a prior expression. ZZ Top v. Chrysler Corp., 54 F.Supp.2d 983 (W.D.Wa.1999). See also Tempo Music v. Famous Music Corp., 838 F.Supp. 162, 168-69 (S.D.N.Y. 1993).[4] While Plaintiff concedes that he did not invent generic vocalization — simultaneously singing and playing the flute — he argues that his unique approach to vocalization, in particular using breath control to emphasize certain notes, which his expert Wilson terms “the Newton technique,” renders Choir original. Plaintiff also identifies his technique of overblowing the “C” note to produce multiple pitches (“multiphonics”) as the source of his work’s originality. Korn Decl., Ex. 3 (Wilson Report) at 20.

    79

    However, neither the “Newton technique” nor any mention of overblowing the “C” note appears on the musical composition. The musical composition contains only a notation that the piece is performed using generic vocalization, simultaneously singing and playing the flute. Plaintiff concedes as much, acknowledging that all elements of his performance are not reflected in the musical composition. Plaintiff’s Opposition Brief at 15. Plaintiff’s expert Wilson confirms that the copyrighted score of Choir does not contain notations for all of the “musical subtleties” that the performer of the work “will make in the work’s performance.” Korn Decl., Ex. 3 (Wilson Report) at 20-21 (emphasis added). Moreover, Wilson acknowledges that the copyrighted score of Choir does not delineate the techniques necessary to reproduce Plaintiff’s “unique sound.” See id. at 21.

    81

    Plaintiff’s expert, Christopher Dobrian, opines that because every composer of a musical work assumes that the performer will add his or her individual interpretation to the notation, ”[t]he contribution of the performer is often so great that s/he in fact provides just as much musical content as the composer.” Korn Decl., Ex. 3 (Dobrian Report) at 15. Dobrian concludes that ”[i]n Newton’s own performance of his composition he uses breath control to modify the timbre of the sustained flute note rather extremely … and he uses portamento to glide expressively from one pitch to the other in the vocal part.” Id. at 15 (emphasis added). Dobrian concedes that ”[n]either the timbral effect nor the portamento is notated in the score.” Id. at 15. Dobrian further emphasizes that “Mr. Newton blows and sings in such a way as to emphasize the upper partials of the flute’s complex harmonic tone,” but acknowledges that “such a modification of tone color is not explicitly requested in the score.” Id. Indeed, Dobrian concludes that Plaintiff’s allegedly unique sound “is the result of Mr. Newton’s refined breath control for interpretive use of tone color,” which Plaintiff’s expert Wilson calls “the Newton technique.” Id. at 14.

    83

    As Plaintiff’s specific techniques of performing Choir, viz., “the Newton technique” — Newton’s practice of overblowing the “C” note to create a multiphonic sound, and his unique ability to modify the harmonic tone color — do not appear in the musical composition, they are protected only by the copyright of the sound recording of Plaintiff’s performance of Choir, which Defendants licensed. Accordingly, Plaintiff’s copyright protects only the sound that would invariably result from playing the “C” note on the flute while singing into the flute a “C,” ascending to a “D-flat,” and descending to the “C.”

    85

    *1252 At oral argument, Plaintiff’s counsel suggested that any flautist performing the six-second segment would produce sounds comparable to those achieved by Plaintiff. This proposition is both unsupported by the record and contradicted by Plaintiff and his experts. Throughout this litigation, Plaintiff has insisted that the harmonic sounds and timbral effects achieved in his composition are a result of his unique performing techniques. His expert Dobrian confirms this. He cannot now claim that any flautist fingering a C and blowing C—D-flat—C would achieve the unique sound that results from his use of techniques not notated in the score.[5]

    87

    In sum, what makes Plaintiff’s performance “unique,” according to his own experts, is the combination of performance techniques Plaintiff employs in the execution of his composition, consisting largely of techniques not notated in the score.[6] It is undisputed that Plaintiff could have notated “overblowing,” as he did in other compositions. See, e.g., FAC, Ex. B (Toru) at 17 (containing notation to “overblow harmonics”). Therefore, whether Defendants’ sample sounds like Plaintiff’s performance of Choir is not relevant to the court’s inquiry. Rather, the court must decide whether Defendants’ creation of a three-note sequence with one background note from a six-second segment of Choir constitutes copyright infringement of the underlying musical composition.

    89

    2. The Sample of Plaintiff’s Musical Composition Is Unprotectable

    91

    At the outset, Plaintiff argues that his copyright creates a presumption of originality which Defendants must refute. However, this presumption applies only to whether the copyright itself is valid. North Coast Indus. v. Jason Maxwell, Inc., 972 F.2d 1031, 1033 (9th Cir.1992) (“Under our copyright law, the registration of the copyright certificate itself establishes a prima facie presumption of validity of the copyright in a judicial proceeding. . . .”). See also Three Boys Music Corp. v. Bolton, 212 F.3d 477, 488-89 (9th Cir.2000) (“Registration is prima facie evidence of the validity of a copyright.”); Smith v. Jackson, 84 F.3d 1213, 1219 (9th Cir.1996) (holding that presumption of originality not relevant to “scenes a faire” inquiry, because ”[a] Certificate of Registration only creates a rebuttable presumption of originality applicable to a defendant’s attack on the originality applicable to a defendant’s attack on the validity of a plaintiff’s copyright.”) (emphasis in original). In the instant case, Defendants do not dispute that Plaintiff’s copyright over the musical composition is valid. Even were the validity of Plaintiff’s copyright at issue, the presumption of originality applies only if “the judicial proceeding is commenced within five years of the copyright’s first publication.” North Coast Indus., 972 F.2d at 1033. Plaintiff registered his copyright August 4, 1978 and commenced *1253 this suit over 20 years later on May 9, 2000.

    93

    The protectability of elements of a copyrighted work is a question of law for the court. See Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 348-51, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). Although the musical composition of Choir is protected as a complete work, not every element of a song is per se protected. See, e.g., Rogers v. Koons, 960 F.2d 301, 307 (2d Cir.1992). Copyright protection extends only to those components of the work that are original and non-trivial. Feist, 499 U.S. at 348-51, 111 S.Ct. 1282. In assessing originality, courts must be “mindful of the limited number of notes and chords available to composers and the resulting fact that common themes frequently appear in various compositions, especially in popular music.” Gaste v. Kaiserman, 863 F.2d 1061, 1068 (2d Cir.1988). See also Jarvis, 827 F.Supp. at 291 (“Easily arrived at … chord progressions are usually not copyrightable.”).

    95

    In the instant case, Plaintiff’s three-note sequence (C — D-flat — C) with one background note (C);, segregated from the entire piece, cannot be protected, as it is not original as a matter of law. Many courts have found that nearly identical or more substantial samples are not susceptible to copyright protection. In Jean v. Bug Music, Inc., No. 00 Civ 4022(DC), 2002 WL 287786 (S.D.N.Y. Feb. 27, 2002), the defendant allegedly copied a three-note sequence consisting of “C,” followed by a “B-flat,” followed by another “C,” accompanied by the lyric “clap your hands.” The court held that this excerpt of the song at issue could not be protected by the plaintiff’s copyright “because the sequence of the three notes and the lyrics lack the requisite originality.” Id. at *5. The court recognized that the musical note sequence “C” — “B-flat” — “C” appears commonly in music, rendering the sequence not susceptible to copyright protection. Id. at *6. The court further found that the three-word lyric “clap your hands,” either standing alone or in combination with the music, was too common to render the otherwise unoriginal three-note sequence original.

    97

    The facts of Jean are strikingly similar to the instant case — a three-note sequence in which the first and third notes are identical and the second note is a half-step away. Unlike the snippet in Jean, however, Plaintiff’s three-note sequence is unaccompanied by any lyrics. The vocalization notated in the score is, as Plaintiff concedes, a commonly used technique. Just as the Jean court found a commonly used word phrase insufficient to render the three-note sequence original, this court finds the widely used vocalization technique insufficiently original to render the three-note segment protectable.[7]

    99

    In McDonald v. Multimedia Entertainment, Inc., 20 U.S.P.Q.2d 1372, 1991 WL 311921 (S.D.N.Y.1991), the court found that the three-note sequence the defendant allegedly misappropriated from the plaintiff’s jingle could not be protected by copyright. The court noted the “absurdity” of Plaintiff’s claim, given that the three-note sequence is a “common and much-used tone in traditional western music.” Id. at 1375, 1991 WL 311921. Similarly, in Tisi v. Patrick, 97 F.Supp.2d 539 (S.D.N.Y. 2000), the court found that the plaintiff’s claim of copy-right infringement was based entirely upon non-protectable elements of his song, viz., the key of A major, the tempo, a chord structure/harmonic common *1254 to rock music, the guitar rhythm, and the fact that the chords of both songs are in “root” position.

    101

    In Intersong-USA v. CBS, Inc., 757 F.Supp. 274, 282 (S.D.N.Y.1991), the court held that the defendants had not copied “protectable expression” contained in plaintiff’s copyrighted song. The plaintiff alleged that the defendants had copied his descending scale step motive, but the court found this to be a “commonly used compositional device,” citing the example of “Twinkle, Twinkle Little Star.” Id. at 282. Although the defendants allegedly copied the plaintiff’s structure patterns, use of a certain harmonic progression, and a recurring eighth-note rhythm, “these common elements are found in many other well-known songs.” Id.

    103

    Plaintiff identifies cases in which courts have held that short sequences of notes may be protected by copyright. However, those cases involved sequences consisting of more than three notes. In Baxter v. MCA, Inc., 812 F.2d 421, 425 (9th Cir. 1987), for example, the defendant allegedly used the first six notes of Plaintiff’s composition “Joy” to create the theme for the movie “E.T.” and conceded that both his composition and the plaintiff’s composition conveyed similar ideas. The court, rejecting the defendant’s characterization of the sequence as necessarily consisting of only six notes, held that the sequence could be protected by the copyright laws. Id. See also Fisher, 794 F.2d at 434 n. 2 (defendants allegedly misappropriated first six bars of the song’s 38 bars and used similar lyrics); Jarvis, 827 F.Supp. at 292 (defendants allegedly misappropriated “the last several minutes” of plaintiff’s song’s distinctive keyboard riff, as well as distinctive lyrics).

    105

    Cases finding that sequences of less than six notes could be qualitatively distinctive have involved: 1) sequences with accompanying lyrics; 2) sequences at the heart of the musical compositions; 3) sequences and lyrics that were repetitive; and/or 4) sequences that were based upon analyses of both the written composition and the sound recording. See, e.g., Santrayll v. Burrell, 39 U.S.P.Q.2d 1052, 1054 (S.D.N.Y.1996) (one measure “hook” and repetition of word “uh-oh” may be distinctive); Elsmere Music, Inc. v. National Broadcasting Co., 482 F.Supp. 741, 744 (S.D.N.Y.1980) (four notes and phrase “I Love” at heart of copyrighted song may be distinctive). Plaintiff also relies upon cases holding that a few words or sounds may be distinctive. See, e.g., Tin Pan Apple, Inc. v. Miller Brewing Co., Inc., 30 U.S.P.Q.2d 1791, 1793-94 (S.D.N.Y.1994) (sounds “hugga-hugga” and “brrr” in Plaintiff’s composition sufficient to warrant copyright protection). However, unusual words or sounds are necessarily more distinctive than a few generic notes of music.

    107

    Moreover, the reports of both Defendants’ and Plaintiff’s experts confirm that the main three-note sequence at issue — C—D-flat—C—is not original. Defendants’ expert, Lawrence Ferrara, concludes that the portion of Plaintiff’s musical composition that Defendants sampled is not original or unique, as “it is merely a common, trite, and generic three-note sequence, which lacks any distinct melodic, harmonic, rhythmic or structural elements.” Streisand Decl., Ex. 3, (Ferrara Report) at 1. Ferrara concludes that “these three notes of music alone do not constitute an original or distinct piece of music” because ”[b]y any conventional methodological approach, these three simple notes are insignificant, and utterly insufficient to constitute original expression.” Id. at 1-2. In fact, the same three-note sequence with a sustained pitch “has been used over and over again by major composers in 20th Century music, particularly the ‘60s and ‘70s, just prior to [Plaintiff’s] usage.” Streisand Decl., Ex. 7 *1255 (Ferrara Depo.) at 171, Exs. 9-11. Specifically, Jacob Druckman used this “basic building block tool” in his 1972 Pulitzer Prize winning composition Windows and again in his 1976 composition Other Voices, as did Gyorgy Ligeti in his 1968 String Quartet No. 2. Id. at 171, Exs. 9-11.[8]

    109

    Plaintiff’s expert Dobrian acknowledges that Plaintiff’s musical composition “contains a simple `neighboring tone’ figure: C to D-flat and back to C.” Korn Decl., Ex. C (Dobrian Report) at 11. Dobrian contends that a sequence of “simple” and “unremarkable” notes may be significant, like the sample at issue. Id. at 12. However, Dobrian’s conclusion, based upon his “independent assessment” of the sample, does not benefit Plaintiff’s position, as it focuses upon elements of Plaintiff’s performance which are not notated in the score. Dobrian asserts that to the extent Plaintiff’s performance techniques are not notated in the score they represent, “Newton’s desired interpretation of the score.” Id. at 16. He refers repeatedly to the “sound of Newton’s playing,” id. at 8, noting that the sound produced on the recording “is the result of Mr. Newton’s refined breath control for interpretive use of tone color.” Id. at 14. Elsewhere, he notes that “Mr. Newton blows and sings in such a way as to emphasize the upper partials of the flute’s complex harmonic tone color,” noting that “such a modification of tone color is not explicitly requested in the score.” Id. at 15.

    111

    Dobrian’s opinion is thus based on his assessment of the sound resulting from Mr. Newton’s unique interpretation — including the use of portamento/glissando, and modified tone color — of a score that contains no notation of either. While it may be expected that every performer will impart some interpretive flavor to any piece, Dobrian’s focus on the sonic effects achieved by Newton’s unique performance prevents his opinion from addressing the primary issue before this court — the protectability of the elements of the composition itself, not the “richness and complexity” of the “timbral result” achieved through “Mr. Newton’s desired interpretation of the score.” Id. at 16. Moreover, Dobrian’s insistence that each performer brings his own unique interpretation to any work undercuts his argument that the uniqueness of Plaintiff’s performance is inherent in the three-note musical notation. Finally, to the extent Dobrian attempts to base his conclusion on the uniqueness of the notes and notated technique alone, as discussed above, neither the three-note sequence nor the vocalization technique — or the two in combination — are sufficiently original to be protectable.

    113

    Oliver Wilson’s opinion is similarly unavailing to Plaintiff’s position, as it is based upon elements of Plaintiff’s performance. See Korn Decl., Ex. 3 (Wilson Report) at 20. Wilson repeatedly refers to “the Newton technique” as the “source” of the sample’s originality. See id. “To be more precise, the Newton technique produces a musical event in which the component sounds resulting from the simultaneous singing of one or more pitches produced on the flute create a relatively dense cluster of pitches and ambient sounds that sometimes change over time.” Id. Indeed, while Wilson acknowledges that vocalization was a common technique prior to Plaintiff’s arrangement and performance of Choir, he concludes that Plaintiff’s *1256 unique approach to vocalization (“the Newton technique”) renders the sample original. Id. Specifically, Wilson points to Newton’s technique of combining vocalization with multiphonics. Id. “Newton’s technique involves the exploitation of simultaneous usage of vocalization and multiphonics. ... This technique is the source of Newton’s ability to produce his unique sound and hence, in large part, constitutes his musical signature.” Id. Wilson states that Plaintiff “is not simply using a technique that is common in contemporary musical practice, but rather creating a specific musical event in the composition Choir that reflects his specific artistic vision.” Id. at 21. Accordingly, any originality of the sample comes from Plaintiff’s particular performance techniques, which are not at issue in this litigation.

    115

    Plaintiff attempts to create a triable issue by citing the remaining portions of Dobrian’s report. However, some of Dobrian’s conclusions are beyond the scope of his expertise. Dobrian concludes that because Defendants obtained a license to use the recording and acknowledged Plaintiff as the source of the sample, it must be unique. Id. at 11. However, Dobrian provides no foundation for his conclusion that a sample is original merely because its author is acknowledged in a derivative work. For example, Dobrian does not contend that such attribution occurs in the music industry only with respect to original work. Nor is Dobrian qualified to render such an expert opinion, as he is proffered as an expert in music composition, not sampling practices by popular music artists. Indeed, Dobrian was retained to analyze the music at issue, not to draw legal conclusions based upon facts falling outside his area of expertise.

    117

    In sum, the relevant portion of Plaintiff’s musical composition is not subject to copyright protection as a matter of law. While Plaintiff and his experts contend that the six-second segment — consisting of two notes in a three-note sequence with one background note — constitutes unique expression, their analyses rely upon sound elements created by Plaintiff’s admittedly unique technique of performing Choir, utilizing performance elements not notated in the score. Plaintiff’s performance techniques, however, are not at issue in this litigation, as Defendants obtained a license to sample the sound recording of Plaintiff’s performance of Choir. After filtering out the performance elements, the court is left with a six-second snippet of Plaintiff’s composition consisting of a fingered “C” note and a sung three-note sequence C —D-flat —C. Courts have held that such small and unoriginal portions of music cannot be protected by copyright. See, e.g., Jean v. Bug Music, Inc., 2002 WL 287786 (S.D.N.Y. Feb.27, 2002). Accordingly, the sample at issue—a six-second, three-note sequence with a single background note, isolated from the sounds created by Plaintiff’s performance techniques — cannot be protected as a matter of law.

    119

    3. Defendants’ Sampling of Plaintiff’s Work Is De Minimis

    121

    Even if Plaintiff could establish that this three-note sequence is subject to copyright protection, Pass the Mic and Choir are not substantially similar as a matter of law, as Defendants’ alleged infringement was de minimis. To establish that the infringement of a copyright is de minimis, and therefore not actionable, the alleged infringer must demonstrate that the copying of the protected material is so trivial “as to fall below the quantitative threshold of substantial similarity, which is always a required element of actionable copying.” Sandoval v. New Line Cinema Corp., 147 F.3d 215, 217 (2d Cir.1998) (citations omitted). No “substantial similarity [will] be found if only a small, common *1257 phrase appears in both the accused and complaining songs … unless the reappearing phrase is especially unique or qualitatively important.” Jean, 2002 WL 287786, at *6 (citations omitted). A taking is de minimis if the average audience would not recognize the misappropriation. Fisher v. Dees, 794 F.2d 432, 435 n. 2 (9th Cir.1986).

    123

    Courts generally consider both quantitative and qualitative factors in determining whether a taking is de minimis. Courts follow this approach in cases involving “fragmented literal similarity,” which exists when a small portion of the original work is copied into the new song. Nimmer on Copyright § 13.03[A][2]. In such cases, “where there unquestionably is copying, albeit of only a portion of [a] plaintiff’s song, . . . [t]he proper question to ask is whether the defendant appropriated, either quantitatively or qualitatively, `constituent elements of the work that are original’ such that the copyright rises to the level of an unlawful appropriation.” Jarvis, 827 F.Supp. at 289-91.

    125

    A quantitative analysis focuses upon the amount of the copyrighted work that was allegedly copied, as those who appropriate large parts of another’s copyrighted work may be liable for copyright infringement. Id. at 290-91. “The relevant question in copyright infringement cases is whether the segment in question constituted a substantial portion of the plaintiff’s work, not whether it constituted a substantial portion of the defendant’s work.” Id. at 290 (emphasis added). Thus, it is not relevant that Defendants played the six-second snippet throughout their entire song, as the focus is on whether the sample comprises a substantial portion of Plaintiff’s song. Id. See also Williams v. Broadus, No. 99 Civ. 10957 MBM, 2001 WL 984714, at *4 (S.D.N.Y. Aug.27, 2001) (fact that sample was replayed throughout allegedly infringing song irrelevant) (citing Nimmer on Copyright § 13.03[A][2]; Twin Peaks Prod. v. Publications Int’l, 996 F.2d 1366, 1373 (2d Cir.1993); Warner Bros., Inc. v. American Broadcasting Co., Inc., 720 F.2d 231, 242 (2d Cir.1983); Elsmere Music, 482 F.Supp. at 741).

    127

    Courts also consider whether the sample is qualitatively important to the plaintiff’s entire song.[9] “Even 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, 812 F.2d at 423. ”[Q]uantitatively insignificant infringement may be substantial if the material is qualitatively important to plaintiff’s work.” Apple Computer, Inc. v. Microsoft, Corp., 821 F.Supp. 616, 624 (N.D.Cal.1993), aff’d, 35 F.3d 1435 (9th Cir.1994) (emphasis added). ”[I]t is not the significance of the copied material in the allegedly infringing work that determines substantial similarity. Rather, it is the significance of such material in the work allegedly infringed that is important.” Williams v. Broadus, No. 99 Civ. 10957 MBM, 2001 WL 984714, at *4 (S.D.N.Y. Aug.27, 2001) (citing Nimmer on Copyright § 13.03[A][2]; Twin Peaks, 996 F.2d at 1373; Warner Bros., 720 F.2d at 242; Elsmere Music, 482 F.Supp. at 741). Accordingly, it is not relevant whether the sample was qualitatively important to Defendants’ song.[10]

    129

    *1258 In the instant case, Plaintiff may rely only upon those elements protected by his copyright over the musical composition — not those attributable to his performance of the piece or the sound recording — to establish that the sample is quantitatively or qualitatively important enough to be recognized by the average audience. See Apple Computer, 35 F.3d at 1443. Assuming Choir is a distinct song, as Plaintiff contends, Defendants copied a quantitatively insignificant amount of Plaintiff’s work.[11] Defendants appropriated a six-second sample consisting of a three-note sequence from a musical composition that takes approximately four and a half minutes to play, See Korn Decl., Ex. 1, Track # 1 (Choir). Quantitatively, the sample is thus approximately 2% of the piece. Moreover, it is undisputed that the three-note sequence appears only once in the piece. Although Plaintiff argues that the snippet is “quantitatively significant,” most of his argument and cases cited focus on qualitative factors. Courts have found similar or more substantial sequences quantitatively insignificant. See, e.g., Jean, 2002 WL 287786, at *7-8 (three-note sequence and lyric “clap your hands” not quantitatively significant to copyrighted song); McDonald, 20 U.S.P.Q.2d at 1375, 1991 WL 311921 (three-note sequence of proposed television show jingle not quantitatively significant to copyrighted song). Even Baxter, which held that alleged misappropriation of at least six notes in the theme to the movie “E.T.” was not necessarily de minimis, based its holding on qualitative factors, recognizing that the sample was quantitatively small. See Baxter, 812 F.2d at 425 (“Even if a copied portion be relatively small in proportion to the entire work, if qualitatively important, the finder of fact may properly find similarity.”). Accordingly, Plaintiff must rely upon qualitative factors to establish that Defendants’ sampling was not de minimis.

    131

    Plaintiff argues that the sample is distinctive because anyone familiar with Choir would instantly recognize its use throughout Pass the Mic. However, Plaintiff acknowledges that Choir and Pass the Mic “are substantially dissimilar in concept and feel, that is, in there [sic] overall thrust and meaning.” Id., Ex. 3. (Dobrian Report) at 16. Moreover, Plaintiff identifies no factors — separate and apart from those attributable to his unique performance techniques — that would render the three-note sequence qualitatively important to Plaintiff’s entire composition of Choir. Plaintiff argues that Defendants’ expert admitted that Defendants sampled a recognizable excerpt from the musical composition of Choir. See Korn Decl., Ex. 26 (Ferrara Depo.) at 251-52. However, Ferrara merely testified that someone listening to the sound recording of Plaintiff’s performance of Choir may recognize the sample in Defendants’ song. The issue is not whether someone might recognize the snippet as coming from Plaintiff’s sound recording — for which Defendants obtained a license; the question is whether someone might recognize — from a performance of the notes and notated vocalization alone — the source as the underlying musical composition. As Dr. Ferrara notes, because both the note sequence and vocalization technique are common, any analysis of distinctiveness must necessarily come from the performance elements, not the musical composition. See generally Streisand Decl., Ex. 3 (Ferrara Report).

    133

    Citing the deposition of Michael Diamond, a member of The Beastie Boys, Plaintiff argues that Defendants concede *1259 the sample is qualitatively significant. While Diamond testified that Defendants took the “best bit” of Choir, he also testified that the sound created by Plaintiff’s distinctive performance is what makes the sample distinctive. See Korn Decl., Ex. 7 (Diamond Decl. at 78-80). The sound created by Plaintiff’s distinctive performance techniques is not at issue in this litigation.

    135

    Plaintiff cites several cases in support of the proposition that a short sequence of notes can be qualitatively distinctive. However, as discussed above, cases that have survived summary judgment have involved larger portions of music than are at issue in this case. Moreover, these case have involved sequences with accompanying lyrics that are distinctive, sequences at the heart of the musical compositions, sequences that repeated throughout the composition, and/or an analysis of both the written composition and sound recording. See Section IV.A.1 at 15-16.[12]

    137

    In sum, Plaintiff identifies nothing distinctive about the three-note sequence taken from his musical composition. Neither the two notes in the three-note sequence, the common vocalization technique, nor the combination thereof imparts qualitative importance or distinctiveness to the six-second excerpt. Plaintiff cannot rely upon any allegedly unique sound elements created by his own performance of those three notes to establish its distinctiveness, as he licensed the right to the sound recording of that performance over 20 years ago. Neither Plaintiff nor his experts identify any elements of the musical composition itself, as opposed to those related to the sound recording, that make the three-note sequence distinctive or qualitatively significant. The sequence contains no accompanying lyrics. Defendants’ expert contends that the sample is not distinctive or memorable. See Streisand Decl., Ex. 3 (Ferrara Report). Plaintiff’s experts do not contend that the sequence — devoid of the characteristics of Plaintiff’s performance — is “the heart” of the composition or comprises a distinctive “hook.” See id. at 24. Moreover, Plaintiff acknowledges that the three-note sequence appears only once in his composition.[13] In short, there is nothing about this sequence making it distinctive, and courts have found misappropriation of similar sequences to be de minimis. See, e.g., Jean, 2002 WL 287786, at *6-7. Accordingly, the court concludes that any use by Defendants was de minimis and cannot form the basis of a copyright infringement action.

    139

    B. International Copyright Infringement Claim

    141

    Plaintiff alleges that he is entitled to damages for Defendants’ “international copyright infringement,” viz., reproducing, distributing, and publicly performing Pass the Mic outside the United States. However, in order to recover for extraterritorial damages, “at least one alleged [act of] infringement must be completed entirely within the United States” that would subject the defendant to liability under the Copyright Act. Los Angeles News Service v. Reuters Television Int’l Ltd., 149 F.3d 987, 992 (9th Cir.1998). As Plaintiff cannot establish a violation of the Copyright Act, his claim for extraterritorial damages fails as a matter of law.

    143

    *1260 C. Statute of Limitations

    145

    Even were Plaintiff permitted to proceed on his copyright infringement claim, the Copyright Act of 1976 provides that “no civil action shall be maintained unless it is commenced within three years after the claim accrued.” 17 U.S.C. § 507(b). A claim accrues when an act of infringement occurs, not when consequent damage is suffered. Los Angeles News Service v. Reuters Television Int’l, Ltd., 149 F.3d 987, 992 (9th Cir.1998). Moreover, a plaintiff’s right to damages is limited to those suffered during the statutory period for filing suit, regardless of when they may have been incurred. Id. See also Roley v. New World Pictures, Ltd., 19 F.3d 479, 481 (9th Cir.1994).[14] Plaintiff alleges that Defendants have been infringing upon his work since they created Pass the Mic in 1991 or 1992. As Plaintiff filed suit April 9, 2001, however, he may seek damages only for acts of infringement that occurred after April 9, 1998.

    147

    V. CONCLUSION

    149

    This case is distinct from many copyright infringement actions involving sampling. It does not involve Defendants sampling without a license both the sound recording and the musical composition of a work. Rather, Plaintiff licensed the rights to the sound recording of his performance of Choir, and Defendants obtained a license to sample from this sound recording, leaving the court to inquire only whether the three-note sequence of Plaintiff’s musical composition, devoid of the distinctive sound elements created by his unique performance techniques, can be protected by copyright law. The court concludes that it cannot. Moreover, even were this six-second snippet subject to copyright protection, the court concludes that Defendants’ use was de minimis, as the sample was neither quantitatively nor qualitatively significant to Choir. Accordingly, the court GRANTS Defendants’ motion for summary judgment and DENIES Plaintiff’s motion for summary judgment.

    151

    IT IS SO ORDERED

    153

    [1] Defendants obtained “the irrevocable nonexclusive license and right to copy portions (if any) of the sound recording entitled Choir performed by James Newton….” FAC, Ex. G at 1; Korn Decl., Ex. 15 at 1.

    155

    [2] Despite this concession, Plaintiff inexplicably disputes Defendants’ proposed uncontroverted fact concerning the notes they sampled. However, he provides no description in his Statement of Genuine Issues of the notes at issue. The portions of the record cited by Plaintiff do not contradict Defendants’ description of the notes they sampled. Moreover, the court’s inspection of the sheet music and sound recording confirms that, as Defendants allege and Plaintiff concedes, Defendants sampled a portion of the score in which the performer fingers a “C” note on the flute while singing C — D-flat — C.

    157

    [3] The notation “senza misura” (without measure) and “largo” (slowly, broadly) appear above the first note, along with a footnote indicating that the performer must sing into the flute and finger simultaneously.

    159

    [4] Citing Tempo Music, 838 F.Supp. at 168-69, Plaintiff argues that innovative sounds in jazz may be protected by copyright. Regardless, Plaintiff licensed the innovative sounds created by his technique in performance to Defendants.

    161

    [5] The allegations of the original complaint further confirm that Plaintiff considers his playing techniques unique and not susceptible to copyright. Plaintiff’s claims for trademark infringement (ultimately dismissed) focused upon “the Newton signature” consisting of “unique musical characteristics” which create his “unique musical sound.” Complaint ¶¶ 65-67. As none of the compositional characteristics —vocalization or three half-steps — are, individually or combined, “unique,” Plaintiff could only have been referring to his unique performance techniques.

    163

    [6] Plaintiff argues that this techniques are not inconsistent with the score. This is not the point. A trill may be consistent with performance techniques of a particular piece, but if The Beastie Boys had sampled an unnotated trill, it could not seriously be argued that their doing so infringed on the underlying musical composition that contained no such trill.

    165

    [7] Plaintiff attempts to distinguish Jean by arguing that the court did not assess the distinctiveness of the notes and lyrics together. However, the court clearly held that “the lyrical phrase and the three notes are so common and unoriginal that even when they are combined they are not protectable.” Jean, 2002 WL 287786, at *6.

    167

    [8] Plaintiff criticizes Dr. Ferrara’s report because it does not reference the sound recording of Plaintiff’s performance of Choir. Plaintiff’s Memorandum of Points & Authorities at 12. However, the sound recording is not at issue, as Plaintiff licensed his rights to the recording to ECM Records in 1981, and Defendants obtained a license from ECM in 1992 to sample from it.

    169

    [9] A sample may also be qualitatively important or unique standing alone. This court has already concluded that the sample is not original as a matter of law. See Section IV.A.2.

    171

    [10] Throughout this litigation, the court has held that the proper focus is whether the sample is quantitatively or qualitatively important to Plaintiff’s work, not Defendants’ work. See, e.g., Magistrate Judge’s Order on Plaintiff’s Motion to Compel Further Responses to Requests for Production, September 28, 2002, at 7-8.

    173

    [11] Were the trier of fact to conclude that Choir is simply one movement of the multi-movement song, The Change Suite, as Defendants contend, this six-second, three-note sample would be even less quantitatively significant.

    175

    [12] ZZ Top v. Chrysler Corp., 54 F.Supp.2d 983, 984-85 (W.D.Wa.1999) does not benefit Plaintiff’s position. The court provided only a brief discussion of the facts and did not discuss the length of the sequence allegedly misappropriated. Clearly the sequence there was longer than that at issue here, as the court stated that a jury could find the sequence distinctive “even if they were exposed to only six or eight seconds of each. . . .” Id. at 985.

    177

    [13] Mere recognizability of a de minimis taking is insufficient to create a triable issue. See, e.g., Sandoval v. New Line Cinema Corp., 147 F.3d 215, 217 (2d Cir.1998).

    179

    [14] Plaintiff argues that the court should disregard the Ninth Circuit’s holding in Roley in favor of the Seventh Circuit’s approach of tolling the statute of limitations in copyright infringement actions. While Plaintiff contends that the Seventh Circuit’s approach is “the better rule,” Ninth Circuit precedent is to the contrary.

  • 11 Newton v. Diamond, 349 F.3d 591 (9th Cir. 2003) (Excerpts)

    1

    349 F.3d 591 (2003)
    James W. NEWTON, Jr., dba Janew Music, Plaintiff-Appellant,
    v.
    Michael DIAMOND; Adam Horowitz; Adam Yauch, dba Beastie Boys; Capitol Records, Inc., a Delaware Corporation; Grand Royal Records, Inc., A California Corporation; Universal Polygram International Publishing, Inc., a Delaware Corporation; Brooklyn Dust Music, an entity of unknown origin; Mario Caldato, Jr., an individual; Janus Films, LLC, a New York Limited Liability Company; Criterion Collection, a California Partnership; Voyager Publishing Company, Inc., a Delaware Corporation; Sony Music Entertainment Group, a Delaware Corporation; BMG Direct Marketing, Inc., a Delaware Corporation; The Columbia House Company, an entity of unknown origin, Defendants-Appellees.
    No. 02-55983.

    3

    United States Court of Appeals, Ninth Circuit.
    Argued and Submitted April 7, 2003.
    Filed November 4, 2003.

    5

    Alan Korn, Law Offices of Alan Korn, Berkeley, California, for the plaintiff-appellant.

    7

    Adam F. Streisand and David C. Nelson, Loeb & Loeb, LLP, and Barry E. Mallen, *592 Manatt, Phelps & Phillips, LLP, Los Angeles, California, for the defendants-appellees.

    9

    Todd M. Gascon (argued), Law Offices of Todd M. Gascon, and Sarah Sevier Farnbach, Phillips & Erlewin, LLP, San Francisco, California, for the amici curiae Philip Glass, et al, in support of plaintiff-appellant.

    11

    David M. Given and Sarah Sevier Farnbach, Phillips, Erlewine & Given, LLP, San Francisco, CA, for the amici curiae DJ Shadow, et al., in support of defendants-appellees.

    13

    Before: Mary M. SCHROEDER, Chief Judge, David R. THOMPSON, and Susan P. GRABER, Circuit Judges.

    15

    Argued and Submitted April 7, 2003 — Pasadena, California.

    17

    Opinion by Chief Judge SCHROEDER. Dissent by Judge GRABER.

    19

    OPINION

    21

    SCHROEDER, Chief Judge:

    23

    This appeal raises the difficult and important issue of whether the incorporation of a short segment of a musical recording into a new musical recording, i.e., the practice of “sampling,” requires a license to use both the performance and the composition of the original recording. The particular sample in this case consists of a six-second, three-note segment of a performance of one of his own compositions by plaintiff, and accomplished jazz flutist, James W. Newton. The defendants, the performers who did the sampling, are the members of the musical group Beastie Boys. They obtained a license to sample the sound recording of Newton’s copyrighted performance, but they did not obtain a license to use Newton’s underlying composition, which is also copyrighted.

    25

    The district court granted summary judgment to the defendants. In a scholarly opinion, it held that no license to the underlying composition was required because, as a matter of law, the notes in question — C-D flat — C, over a held C note — lacked sufficient originality to merit copyright protection. Newton v. Diamond, 204 F.Supp.2d 1244, 1256 (C.D.Cal. 2002). The district court also held that even if the sampled segment of the composition were original, Beastie Boys’ use was de minimis and therefore not actionable. Id. at 1259. We affirm on the ground that the use was de minimis.

    27

    Background and Procedural History

    29

    The plaintiff and appellant in this case, James W. Newton, is an accomplished avant-garde jazz flutist and composer. In 1978, he composed the song “Choir,” a piece for flute and voice intended to incorporate elements of African-American gospel music, Japanese ceremonial court music, traditional African music, and classical music, among others. According to Newton, the song was inspired by his earliest memory of music, watching four women singing in a church in rural Arkansas. In 1981, Newton performed and recorded “Choir” and licensed all rights in the sound recording to ECM Records for $5000.[1] The license covered only the sound recording, and it is undisputed that Newton retained all rights to the composition of “Choir.” Sound recordings and their underlying compositions are separate works *593 with their own distinct copyrights. 17 U.S.C. § 102(a)(2), (7).

    31

    The defendants and appellees include the members of the rap and hip-hop group Beastie Boys, and their business associates. In 1992, Beastie Boys obtained a license from ECM Records to use portions of the sound recording of “Choir” in various renditions of their song “Pass the Mic” in exchange for a one-time fee of $1000.[2] Beastie Boys did not obtain a license from Newton to use the underlying composition.

    33

    The portion of the composition at issue consists of three notes, C — D flat — C, sung over a background C note played on the flute. When played on the sound recording licensed by Beastie Boys, the segment lasts for approximately six seconds. The score to “Choir” also indicates that the entire song should be played in a “largo/senza-misura” tempo, meaning “slowly/without-measure.” Apart from an instruction that the performer sing into the flute and finger simultaneously, the score is not further orchestrated.

    35

    The dispute between Newton and Beastie Boys centers around the copyright implications of the practice of sampling, a practice now common to many types of popular music. Sampling entails the incorporation of short segments of prior sound recordings into new recordings. The practice originated in Jamaica in the 1960s, when disc jockeys (DJs) used portable sound systems to mix segments of prior recordings into new mixes, which they would overlay with chanted or `scatted’ vocals. See Robert M. Szymanski, Audio Pasitiche: Digital Sampling, Intermediate Copying, Fair Use, 3 U.C.L.A. Ent. L. Rev. 271, 277 (Spring 1996). Sampling migrated to the United States and developed throughout the 1970s, using the analog technologies of the time. Id. The digital sampling involved here developed in the early 1980s with the advent of digital synthesizers having MIDI (Musical Instrument Digital Interface) keyboard controls. These digital instruments allowed artists digitally to manipulate and combine sampled sounds, expanding the range of possibilities for the use of pre-recorded music. Whereas analog devices limited artists to “scratching” vinyl records and “cutting” back and forth between different sound recordings, digital technology allowed artists to slow down, speed up, combine, and otherwise alter the samples. See id.

    37

    Pursuant to their license from ECM Records, Beastie Boys digitally sampled the opening six seconds of Newton’s sound recording of “Choir.” Beastie Boys repeated or “looped” this six-second sample as a background element throughout “Pass the Mic,” so that it appears over forty times in various renditions of the song. In addition to the version of “Pass the Mic” released on their 1992 album, “Check Your Head,” Beastie Boys included the “Choir” sample in two remixes, “Dub the Mic” and “Pass the Mic (Pt. 2, Skills to Pay the Bills).” It is unclear whether the sample *594 was altered or manipulated, though Beastie Boys’ sound engineer stated that alterations of tone, pitch, and rhythm are commonplace, and Newton maintains that the pitch was lowered slightly.

    39

    Newton filed the instant action in federal court on May 9, 2000, alleging violations of his copyright in the underlying composition, as well as Lanham Act violations for misappropriation and reverse passing off. The district court dismissed Newton’s Lanham Act claims on September 12, 2000, and granted summary judgment in favor of Beastie Boys on the copyright claims on May 21, 2002. Newton v. Diamond, 204 F.Supp.2d 1244 (C.D.Cal.2002). The district court held that the three-note segment of the “Choir” composition could not be copyrighted because, as a matter of law, it lacked the requisite originality. 204 F.Supp.2d at 1256. The court also concluded that even if the segment were copyrightable, Beastie Boys’ use of the work was de minimis and therefore not actionable. Id. at 1259. Newton appealed.

    41

    Whether Defendants’ Use was De Minimis

    43

    We may affirm the grant of summary judgment on any basis supported by the record and need not reach each ground relied upon by the district court. See Venetian Casino Resort L.L.C. v. Local Joint Executive Bd. of Las Vegas, 257 F.3d 937, 941 (9th Cir.2001), cert. denied, 535 U.S. 905, 122 S.Ct. 1204, 152 L.Ed.2d 142 (2002). Assuming that the sampled segment of the composition was sufficiently original to merit copyright protection, we nevertheless affirm on the ground that Beastie Boys’ use was de minimis and therefore not actionable.

    45

    For an unauthorized use of a copyrighted work to be actionable, there must be substantial similarity between the plaintiff’s and the defendants’ works. See Ringgold v. Black Entm’t Television, Inc., 126 F.3d 70, 74 (2d Cir.1997); Ideal Toy Corp. v. Fab-Lu Ltd. (Inc.), 360 F.2d 1021, 1022(2d Cir.1966). This means that even where the fact of copying is conceded, no legal consequences will follow from that fact unless the copying is substantial. See Laureyssens v. Idea Group, Inc., 964 F.2d 131, 140 (2d Cir.1992); 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03[A], at 13-30.2. The principle that trivial copying does not constitute actionable infringement has long been a part of copyright law. Indeed, as Judge Learned Hand observed over 80 years ago: “Even where there is some copying, that fact is not conclusive of infringement. Some copying is permitted. In addition to copying, it must be shown that this has been done to an unfair extent.” West Publ’g Co. v. Edward Thompson Co., 169 F. 833, 861 (E.D.N.Y.1909). This principle reflects the legal maxim, de minimis non curat lex (often rendered as, “the law does not concern itself with trifles”). See Ringgold, 126 F.3d at 74-75.

    47

    The leading case on de minimis infringement in our circuit is Fisher v. Dees, 794 F.2d 432 (9th Cir.1986), where we observed that a use is de minimis only if the average audience would not recognize the appropriation. See id. at 434 n.2 (”[A] taking is considered de minimis only if it is so meager and fragmentary that the average audience would not recognize the appropriation.”). This observation reflects the relationship between the de minimis maxim and the general test for substantial similarity, which also looks to the response of the average audience, or ordinary observer, to determine whether a use is infringing. See, e.g., Cavalier v. Random House, Inc., 297 F.3d 815, 822 (9th Cir. 2002); Castle Rock Entm’t, Inc. v. Carol Publ’g Group, Inc., 150 F.3d 132(2d Cir. 1998) (“Two works are substantially similar where `the ordinary observer, unless he *595 set out to detect the disparities, would be disposed to overlook them, and regard [the] aesthetic appeal [of the two works] as the same.’” (quoting Arica Inst., Inc. v. Palmer, 970 F.2d 1067, 1072 (2d Cir.1992) (quoting Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960) (L. Hand, J.)))). To say that a use is de minimis because no audience would recognize the appropriation is thus to say that the works are not substantially similar.

    49

    On the facts of Fisher, this court rejected the de minimis defense because the copying was substantial: the defendant had appropriated the main theme and lyrics of the plaintiff’s song, both of which were easily recognizable in the defendant’s parody. 794 F.2d at 434 & n.2. Specifically, the defendant copied six of the thirty-eight bars to the 1950s standard, “When Sunny Gets Blue,” to make the parody, “When Sonny Sniffs Glue,” and paralleled the original lyrics with only minor variations. Id. However, despite the works’ substantial similarities, we held that the use was nevertheless non-infringing because, as a parody, it was “fair use” under 17 U.S.C. § 107. Id. at 440. We explained that the defendant’s successful fair use defense precluded a finding that the use was insubstantial or unrecognizable because “the parodist must appropriate a substantial enough portion of [the original] to evoke recognition.” Id. at 435 n.2.

    51

    This case involves not only use of a composition, as was the case in Fisher, but also use of a sound recording of a performance of that composition. Because the defendants licensed the sound recording, our inquiry is confined to whether the unauthorized use of the composition itself was substantial enough to sustain an infringement claim. Therefore, we may consider only Beastie Boys’ appropriation of the song’s compositional elements and must remove from consideration all the elements unique to Newton’s performance. Stated another way, we must “filter out” the licensed elements of the sound recording to get down to the unlicensed elements of the composition, as the composition is the sole basis for Newton’s infringement claim. See Cavalier, 297 F.3d at 822; Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1446 (9th Cir.1994).

    53

    In filtering out the unique performance elements from consideration, and separating them from those found in the composition, we find substantial assistance in the testimony of Newton’s own experts. His experts reveal the extent to which the sound recording of “Choir” is the product of Newton’s highly developed performance techniques, rather than the result of a generic rendition of the composition. As a general matter, according to Newton’s expert Dr. Christopher Dobrian, ”[t]he contribution of the performer is often so great that s/he in fact provides as much musical content as the composer.” This is particularly true with works like “Choir,” given the nature of jazz performance and the minimal scoring of the composition. Indeed, as Newton’s expert Dr. Oliver Wilson explained:

    55

    And it is clear that Newton goes beyond the score in his performance. For example, Dr. Dobrian declared that “Mr. Newton blows and sings in such a way as to emphasize the upper partials of the flute’s complex harmonic tone, [although] such a modification of tone color is not explicitly requested in the score.” More generally, *596 Dr. Wilson explained Newton’s performance technique as follows:

    57

    Whatever copyright interest Newton obtained in this “dense cluster of pitches and ambient sounds,” he licensed that interest to ECM Records over twenty years ago, and ECM Records in turn licensed that interest to Beastie Boys. Thus, regardless of whether the average audience might recognize “the Newton technique” at work in the sampled sound recording, those performance elements are beyond consideration in Newton’s claim for infringement of his copyright in the underlying composition. Having licensed away his interest in the recording of his performance, Newton’s only claim is for a violation of his rights in the three-note sequence transcribed in the composition.

    59

    Once we have isolated the basis of Newton’s infringement action — the “Choir” composition, devoid of the unique performance elements found only in the sound recording — we turn to the nub of our inquiry: whether Beastie Boys’ unauthorized use of the composition, as opposed to their authorized use of the sound recording, was substantial enough to sustain an infringement action. In answering that question, we must distinguish between the degree and the substantiality of the works’ similarity. Cf. Ringgold, 126 F.3d at 74-75; 4 Nimmer § 13.03[A][2], at 13-45. The practice of music sampling will often present cases where the degree of similarity is high. Indeed, unless the sample has been altered or digitally manipulated, it will be identical to the original. Yet as Nimmer explains, ”[if] the similarity is only as to nonessential matters, then a finding of no substantial similarity should result.” 4 Nimmer § 13.03[A][2], at 13-48; cf. Warner Bros. v. Am. Broad. Cos., 720 F.2d 231, 242 (2d Cir.1983). This reflects the principle that the substantiality requirement applies throughout the law of copyright, including cases of music sampling, even where there is a high degree of similarity.

    61

    The high degree but limited scope of similarity between the works here place Newton’s claim for infringement into the class of cases that allege what Nimmer refers to as “fragmented literal similarity.” 4 Nimmer § 13.03[A][2], at 13-45. Fragmented literal similarity exists where the defendant copies a portion of the plaintiff’s work exactly or nearly exactly, without appropriating the work’s overall essence or structure. Id. Because the degree of similarity is high in such cases, the dispositive question is whether the similarity goes to trivial or substantial elements. The substantiality of the similarity is measured by considering the qualitative and quantitative significance of the copied portion in relation to the plaintiff’s work as a whole. See, e.g., Worth v. Selchow & Righter Co., 827 F.2d 569, 570 n. 1 (9th Cir.1987) (”[T]he relevant inquiry is whether a substantial portion of the protectible material in the plaintiff’s work was appropriated — not whether a substantial portion of defendant’s work was derived from plaintiff’s work.”); Jarvis v. A & M Records, 827 F.Supp. 282, 289-90 (D.N.J.1993); 4 Nimmer § 13.03[A][2], at 13-47 to 48 & n. 97. This focus on the sample’s relation to the plaintiff’s work as a whole embodies the fundamental question in any infringement action, as expressed more than 150 years ago by Justice Story: whether “so much is taken[] that the value of the original is *597 sensibly diminished, or the labors of the original author are substantially to an injurious extent appropriated by another.” Folsom v. Marsh, 9 F.Cas. 342, 348 (C.C.Mass.1841) (No. 4901). Courts also focus on the relationship to the plaintiff’s work because a contrary rule that measured the significance of the copied segment in the defendant’s work would allow an unscrupulous defendant to copy large or qualitatively significant portions of another’s work and escape liability by burying them beneath non-infringing material in the defendant’s own work, even where the average audience might recognize the appropriation. Cf. 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.”). Thus, as the district court properly concluded, the fact that Beastie Boys “looped” the sample throughout “Pass the Mic” is irrelevant in weighing the sample’s qualitative and quantitative significance. See Newton, 204 F.Supp.2d at 1257.

    63

    When viewed in relation to Newton’s composition as a whole, the sampled portion is neither quantitatively nor qualitatively significant. Quantitatively, the three-note sequence appears only once in Newton’s composition. It is difficult to measure the precise relationship between this segment and the composition as a whole, because the score calls for between 180 and 270 seconds of improvisation. When played, however, the segment lasts six seconds and is roughly two percent of the four-and-a-half-minute “Choir” sound recording licensed by Beastie Boys. Qualitatively, this section of the composition is no more significant than any other section. Indeed, with the exception of two notes, the entirety of the scored portions of “Choir” consist of notes separated by whole and half-steps from their neighbors; the remainder of the composition calls for sections of improvisation that range between 90 and 180 seconds in length. Although the sampled section may be representative of the scored portions of the composition, Newton has failed to offer any evidence as to this section’s particular significance in the composition as a whole. Instead, his experts emphasize the significance of Newton’s performance, the unique elements of which Beastie Boys properly licensed.

    65

    Yet Newton maintains that the testimony of his experts creates a genuine issue of material fact on the substantiality of the copying. To the extent the expert testimony is relevant, it is not helpful to Newton. On the key question of whether the sample is quantitatively or qualitatively significant in relation to the composition as a whole, his experts are either silent or fail to distinguish between the sound recording, which was licensed, and the composition, which was not. Moreover, their testimony on the composition does not contain anything from which a reasonable jury could infer the segment’s significance in relation to the composition as a whole: rather, Dr. Dobrian described the three-note sequence at issue as “a simple `neighboring tone’ figure.” The district court cited two pieces by Gyorgy Ligeti and Jacob Druckman employing similar figures. Newton, 204 F.Supp.2d at 1255. This evidence is consistent with the opinion of Beastie Boys’ expert, Dr. Lawrence Ferrara, who stated that the sampled excerpt from the “Choir” composition “is merely a common, trite, and generic three-note sequence, which lacks any distinct melodic, harmonic, rhythmic or structural elements.” Dr. Ferrara also described the sequence as “a common building block tool” used over and over again by major composers in the 20th century, particularly *598 the ‘60s and ‘70s, just prior to James Newton’s usage.

    67

    Having failed to demonstrate any quantitative or qualitative significance of the sample in the “Choir” composition as a whole, Newton is in a weak position to argue that the similarities between the works are substantial, or that an average audience would recognize the appropriation. In this respect, the minimal scoring of the “Choir” composition bears emphasis, as does the relative simplicity of the relevant portion of the composition. On the undisputed facts of this case, we conclude that an average audience would not discern Newton’s hand as a composer, apart from his talent as a performer, from Beastie Boys’ use of the sample. The works are not substantially similar: Beastie Boys’ use of the “Choir” composition was de minimis. There is no genuine issue of material fact, and the grant of summary judgment was appropriate.

    69

    Conclusion

    71

    Because Beastie Boys’ use of the sound recording was authorized, the sole basis of Newton’s infringement action is his remaining copyright interest in the “Choir” composition. We hold today that Beastie Boys’ use of a brief segment of that composition, consisting of three notes separated by a half-step over a background C note, is not sufficient to sustain a claim for copyright infringement. We affirm the district court’s grant of summary judgment on the ground that Beastie Boys’ use of the composition was de minimis and therefore not actionable.

    73

    AFFIRMED.

    75

    GRABER, Circuit Judge, dissenting:

    77

    I respectfully dissent. The majority has laid out correctly the legal principles that apply in this case, and I agree with the majority’s assumption that the sampled portion of “Choir” qualifies as “original” and therefore is copyrightable. Maj. op. at 594. However, on the record before us, a jury reasonably could find that Beastie Boys’ use of the sampled material was not de minimis. Therefore, summary judgment is inappropriate.

    79

    As the majority observes, a use is de minimis only if an average audience would not recognize the appropriation. Fisher v. Dees, 794 F.2d 432, 434 n. 2 (9th Cir.1986). The majority is correct that James Newton’s considerable skill adds many recognizable features to the performance sampled by Beastie Boys. Even after those features are “filtered out,” however, the composition, standing alone, is distinctive enough for a jury reasonably to conclude that an average audience would recognize the appropriation of the sampled segment and that Beastie Boys’ use was therefore not de minimis.

    81

    Newton has presented evidence that the compositional elements of “Choir” are so compositionally distinct that a reasonable listener would recognize the sampled segment even if it were performed by the featured flautist of a middle school orchestra. It is useful to begin by observing that the majority’s repeated references to the sampled segment of “Choir” as a “3-note sequence”[1] are overly simplified. The sampled segment is actually a three-note sequence sung above a fingered held C note, for a total of four separate tones.[2] Even passages with relatively few notes may be qualitatively significant. The opening melody of Beethoven’s Fifth Symphony is relatively simple and features *599 only four notes, but it certainly is compositionally distinctive and recognizable.

    83

    The majority is simply mistaken in its assertion, maj. op. at 597, that Newton’s experts did not present evidence of the qualitative value of the compositional elements of the sampled material sufficient to survive summary judgment. The majority is similarly mistaken when it says, id., that Newton’s experts failed to distinguish between the sound recording and the composition. To the contrary, Newton presented considerable expert evidence that the composition alone is distinctive and recognizable.

    85

    First, Newton offered a letter from Professor Olly Wilson of the University of California at Berkeley. Professor Wilson acknowledges that much of the distinctiveness of the sampled material is due to Newton’s performance and that the copyrighted score does not fully convey the quality of the piece as performed. Nevertheless, Professor Wilson concludes that the score

    87

    Second, Newton presented a letter from Professor Christopher Dobrian of the University of California, Irvine. The majority deals with Professor Dobrian’s evidence by stating: “Dr. Dobrian described the three-note sequence at issue as `a simple, “neighboring tone” figure.’” Maj. op. at 597. As the passage quoted below demonstrates, the majority fundamentally misreads Professor Dobrian’s statement by taking it out of context; in the process the majority reverses his intended meaning. Professor Dobrian actually concludes:

    89

    (Emphasis added.)

    91

    It is important to note that Professor Dobrian is not talking about Newton’s performance of the sampled portion. Rather, he is speaking of the distinctiveness of the underlying composition. The “playing technique” is not a matter of personal performance, but is a built-in feature of the score itself. In essence, Dobrian is stating that any flautist’s performance of the sampled segment would be distinctive and recognizable, because the score itself is distinctive and recognizable.

    93

    The majority, then, misreads the record when it states that Newton failed to offer evidence that the sampled material is qualitatively significant. In fact, Newton presented evidence, as described above, to show that an average and reasonable listener would recognize Beastie Boys’ appropriation *600 of the composition of the sampled material.[3]

    95

    Because Newton has presented evidence establishing that reasonable ears differ over the qualitative significance of the composition of the sampled material, summary judgement is inappropriate in this case. Newton should be allowed to present his claims of infringement to a jury. I therefore dissent from the majority’s conclusion to the contrary.

    97

    APPENDIX

    99

    [1] In relevant part, the license reads as follows:

    101

    1) [Newton] herewith grants, transfers and assigns to ECM without limitations and restrictions whatsoever the exclusive rights to record his performances and to exploit these recordings in perpetuity throughout the world in any manner whatsoever.

    103

    ....

    105

    3) The grant of rights according to section 1) especially, includes the rights to manufacture in quantitiy [sic], to distribute, to license to others, as well as to perform the recordings in public and to utilize it in radio, TV, or in other ways without any restrictions.

    107

    [2] In relevant part, the license reads as follows:

    109

    [ECM Records], as owner of the applicable sound recording rights, including but not limited to recording, reproduction, synchronization and performing rights, grants to Beastie Boys, its licensees, assigns, employees and agents (the “Licensed Parties”), the irrevocable non-exclusive license and right to copy portions (if any) of the sound recording entitled “Choir” performed by James Newton (the “Sample”); to embody the sample in some or all versions of the selection entitled “Pass the Mic” by the Beastie Boys (all versions of “Pass the Mic” which contain the Sample are referred to as the “Selection”); to reproduce, distribute and otherwise exploit the Sample as part of the Selection in all media, whether now known or hereinafter developed, including, without limitation, all record formats throughout the world in perpetuity.

    111

    [1] Maj. op. at 596, 597.

    113

    [2] The sampled segment of the composition is scored as shown in the Appendix.

    115

    [3] Because Newton has established that a jury reasonably could find that the sampled portion of “Choir” is qualitatively significant, we need not address the question of the portion’s quantitative significance. See Worth v. Selchow & Righter Co., 827 F.2d 569, 570 n. 1 (9th Cir.1987) (noting that “a determination of the qualitative importance of the material to the plaintiff’s work is more significant than a quantitative calculation of the portion allegedly appropriated by the defendant”).

  • 12 Newton v. Diamond, Case No. 00-04909 (NM) (MANx) (C.D. Cal.), Rule 26 Expert Disclosure by Defendants Michael Diamond, Adam Horovitz, Adam Yauch, Beastie Boys, Capitol Records, Inc., Grand Royal Records, Inc., Universal Polygram Int'l Pub., Inc., Brooklyn Dust Music and Mario Caldato, Jr. (July 30, 2001), read pp. 1 - 9 and 12 - 13

  • 13 Henley v. Devore, Case No. 8:09-cv-00481-JVS-RNB (C.D. Cal.), Order Granting in Part and Denying in Part Plaintiff’s Motion for Partial Summary Judgment (June 10, 2010) (.pdf), read Section I (pp. 1 - 3) and Sections III(A)(1), III(A)(1)(i) (pp. 5 - 19)

  • 14 Henley v. Devore, Case No. 8:09-cv-00481-JVS-RNB (C.D. Cal.), Lawrence Ferrara, Report re: (1) "The Boys of Summer" as recorded by Don Henley and "The Hope of November" and (2) "All She Wants to Do Is Dance" as recorded by Don Henley and "All She Wants to Do is Tax," read pp. 1 - 5 and 13 - 18

  • 15 Campbell v. Acuff-Rose Music, Inc., 510 US 569 (1994) (Excerpts)

    1

    510 U.S. 569 (1994)
    CAMPBELL, AKA SKYYWALKER, ET AL.
    v.
    ACUFF-ROSE MUSIC, INC.
    No. 92-1292.

    3

    Supreme Court of United States.
    Argued November 9, 1993.
    Decided March 7, 1994.
    CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE SIXTH CIRCUIT

    5

    *570 *571 SOUTER, J., delivered the opinion for a unanimous Court. KENNEDY, J., filed a concurring opinion, post, p. 596.

    7

    Bruce S. Rogow argued the cause for petitioners. With him on the briefs was Alan Mark Turk.

    9

    Sidney S. Rosdeitcher argued the cause for respondent. With him on the brief were Peter L. Felcher and Stuart M. Cobert.[*]

    11

    JUSTICE SOUTER delivered the opinion of the Court.

    13

    We are called upon to decide whether 2 Live Crew’s commercial parody of Roy Orbison’s song, “Oh, Pretty Woman,” *572 may be a fair use within the meaning of the Copyright Act of 1976, 17 U. S. C. § 107 (1988 ed. and Supp. IV). Although the District Court granted summary judgment for 2 Live Crew, the Court of Appeals reversed, holding the defense of fair use barred by the song’s commercial character and excessive borrowing. Because we hold that a parody’s commercial character is only one element to be weighed in a fair use enquiry, and that insufficient consideration was given to the nature of parody in weighing the degree of copying, we reverse and remand.

    15

    I

    17

    In 1964, Roy Orbison and William Dees wrote a rock ballad called “Oh, Pretty Woman” and assigned their rights in it to respondent Acuff-Rose Music, Inc. See Appendix A, infra, at 594. Acuff-Rose registered the song for copyright protection.

    19

    Petitioners Luther R. Campbell, Christopher Wongwon, Mark Ross, and David Hobbs are collectively known as 2 Live Crew, a popular rap music group.[1] In 1989, Campbell wrote a song entitled “Pretty Woman,” which he later described in an affidavit as intended, “through comical lyrics, to satirize the original work. . . .” App. to Pet. for Cert. 80a. On July 5, 1989, 2 Live Crew’s manager informed Acuff-Rose that 2 Live Crew had written a parody of “Oh, Pretty Woman,” that they would afford all credit for ownership and authorship of the original song to Acuff-Rose, Dees, and Orbison, and that they were willing to pay a fee for the use they wished to make of it. Enclosed with the letter were a copy of the lyrics and a recording of 2 Live Crew’s song. See Appendix B, infra, at 595. Acuff-Rose’s agent refused permission, stating that “I am aware of the success *573 enjoyed by `The 2 Live Crews’, but I must inform you that we cannot permit the use of a parody of `Oh, Pretty Woman.’” App. to Pet. for Cert. 85a. Nonetheless, in June or July 1989,[2] 2 Live Crew released records, cassette tapes, and compact discs of “Pretty Woman” in a collection of songs entitled “As Clean As They Wanna Be.” The albums and compact discs identify the authors of “Pretty Woman” as Orbison and Dees and its publisher as Acuff-Rose.

    21

    Almost a year later, after nearly a quarter of a million copies of the recording had been sold, Acuff-Rose sued 2 Live Crew and its record company, Luke Skyywalker Records, for copyright infringement. The District Court granted summary judgment for 2 Live Crew,[3] reasoning that the commercial purpose of 2 Live Crew’s song was no bar to fair use; that 2 Live Crew’s version was a parody, which “quickly degenerates into a play on words, substituting predictable lyrics with shocking ones” to show “how bland and banal the Orbison song” is; that 2 Live Crew had taken no more than was necessary to “conjure up” the original in order to parody it; and that it was “extremely unlikely that 2 Live Crew’s song could adversely affect the market for the original.” 754 F. Supp. 1150, 1154-1155, 1157-1158 (MD Tenn. 1991). The District Court weighed these factors and held that 2 Live Crew’s song made fair use of Orbison’s original. Id., at 1158-1159.

    23

    The Court of Appeals for the Sixth Circuit reversed and remanded. 972 F. 2d 1429, 1439 (1992). Although it assumed for the purpose of its opinion that 2 Live Crew’s song *574 was a parody of the Orbison original, the Court of Appeals thought the District Court had put too little emphasis on the fact that “every commercial use . . . is presumptively . . . unfair,” Sony Corp. of America v. Universal City Studios, Inc., 464 U. S. 417, 451 (1984), and it held that “the admittedly commercial nature” of the parody “requires the conclusion” that the first of four factors relevant under the statute weighs against a finding of fair use. 972 F. 2d, at 1435, 1437. Next, the Court of Appeals determined that, by “taking the heart of the original and making it the heart of a new work,” 2 Live Crew had, qualitatively, taken too much. Id., at 1438. Finally, after noting that the effect on the potential market for the original (and the market for derivative works) is “undoubtedly the single most important element of fair use,” Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U. S. 539, 566 (1985), the Court of Appeals faulted the District Court for “refus[ing] to indulge the presumption” that “harm for purposes of the fair use analysis has been established by the presumption attaching to commercial uses.” 972 F. 2d, at 1438-1439. In sum, the court concluded that its “blatantly commercial purpose . . . prevents this parody from being a fair use.” Id., at 1439.

    25

    We granted certiorari, 507 U. S. 1003 (1993), to determine whether 2 Live Crew’s commercial parody could be a fair use.

    27

    II

    29

    It is uncontested here that 2 Live Crew’s song would be an infringement of Acuff-Rose’s rights in “Oh, Pretty Woman,” under the Copyright Act of 1976, 17 U. S. C. § 106 (1988 ed. and Supp. IV), but for a finding of fair use through parody.[4] *575 From the infancy of copyright protection, some opportunity for fair use of copyrighted materials has been thought necessary to fulfill copyright’s very purpose, ”[t]o promote the Progress of Science and useful Arts. . . .” U. S. Const., Art. I, § 8, cl. 8.[5] For as Justice Story explained, ”[i]n truth, in literature, in science and in art, there are, and can be, few, if any, things, which in an abstract sense, are strictly new and original throughout. Every book in literature, science and art, borrows, and must necessarily borrow, and use much which was well known and used before.” Emerson v. Davies, 8 F. Cas. 615, 619 (No. 4,436) (CCD Mass. 1845). Similarly, Lord Ellenborough expressed the inherent tension in the need simultaneously to protect copyrighted material and to allow others to build upon it when he wrote, “while I shall think myself bound to secure every man in the enjoyment of his copy-right, one must not put manacles upon science.” *576 Carey v. Kearsley, 4 Esp. 168, 170, 170 Eng. Rep. 679, 681 (K. B. 1803). In copyright cases brought under the Statute of Anne of 1710,[6] English courts held that in some instances “fair abridgements” would not infringe an author’s rights, see W. Patry, The Fair Use Privilege in Copyright Law 6-17 (1985) (hereinafter Patry); Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105 (1990) (hereinafter Leval), and although the First Congress enacted our initial copyright statute, Act of May 31, 1790, 1 Stat. 124, without any explicit reference to “fair use,” as it later came to be known,[7] the doctrine was recognized by the American courts nonetheless.

    31

    In Folsom v. Marsh, 9 F. Cas. 342 (No. 4,901) (CCD Mass. 1841), Justice Story distilled the essence of law and methodology from the earlier cases: “look to the nature and objects of the selections made, the quantity and value of the materials used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work.” Id., at 348. Thus expressed, fair use remained exclusively judge-made doctrine until the passage of the 1976 Copyright Act, in which Justice Story’s summary is discernible:[8]

    33

    Congress meant § 107 “to restate the present judicial doctrine of fair use, not to change, narrow, or enlarge it in any way” and intended that courts continue the common-law tradition of fair use adjudication. H. R. Rep. No. 94-1476, p. 66 (1976) (hereinafter House Report); S. Rep. No. 94-473, p. 62 (1975) (hereinafter Senate Report). The fair use doctrine thus “permits [and requires] courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster.” Stewart v. Abend, 495 U. S. 207, 236 (1990) (internal quotation marks and citation omitted).

    35

    The task is not to be simplified with bright-line rules, for the statute, like the doctrine it recognizes, calls for case-by-case analysis. Harper & Row, 471 U. S., at 560; Sony, 464 U. S., at 448, and n. 31; House Report, pp. 65-66; Senate Report, p. 62. The text employs the terms “including” and “such as” in the preamble paragraph to indicate the “illustrative and not limitative” function of the examples given, § 101; see Harper & Row, supra, at 561, which thus provide only general guidance about the sorts of copying that courts and *578 Congress most commonly had found to be fair uses.[9] Nor may the four statutory factors be treated in isolation, one from another. All are to be explored, and the results weighed together, in light of the purposes of copyright. See Leval 1110-1111; Patry & Perlmutter, Fair Use Misconstrued: Profit, Presumptions, and Parody, 11 Cardozo Arts & Ent. L. J. 667, 685-687 (1993) (hereinafter Patry & Perlmutter).[10]

    37

    A

    39

    The first factor in a fair use enquiry is “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes.” § 107(1). This factor draws on Justice Story’s formulation, “the nature and objects of the selections made.” Folsom v. Marsh, supra, at 348. The enquiry here may be guided by the examples given in the preamble to § 107, looking to whether the use is for criticism, or comment, or news reporting, *579 and the like, see § 107. The central purpose of this investigation is to see, in Justice Story’s words, whether the new work merely “supersede[s] the objects” of the original creation, Folsom v. Marsh, supra, at 348; accord, Harper & Row, supra, at 562 (“supplanting” the original), or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is “transformative.” Leval 1111. Although such transformative use is not absolutely necessary for a finding of fair use, Sony, supra, at 455, n. 40,[11] the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works. Such works thus lie at the heart of the fair use doctrine’s guarantee of breathing space within the confines of copyright, see, e. g., Sony, supra, at 478-480 (Blackmun, J., dissenting), and the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.

    41

    This Court has only once before even considered whether parody may be fair use, and that time issued no opinion because of the Court’s equal division. Benny v. Loew’s Inc., 239 F. 2d 532 (CA9 1956), aff’d sub nom. Columbia Broadcasting System, Inc. v. Loew’s Inc., 356 U. S. 43 (1958). Suffice it to say now that parody has an obvious claim to transformative value, as Acuff-Rose itself does not deny. Like less ostensibly humorous forms of criticism, it can provide social benefit, by shedding light on an earlier work, and, in the process, creating a new one. We thus line up with the courts that have held that parody, like other comment or criticism, may claim fair use under § 107. See, e. g., Fisher v. Dees, 794 F. 2d 432 (CA9 1986) (“When Sonny Sniffs Glue,” a parody of “When Sunny Gets Blue,” is fair use); Elsmere Music, Inc. v. National Broadcasting Co., 482 F. Supp. 741 *580 (SDNY), aff’d, 623 F. 2d 252 (CA2 1980) (“I Love Sodom,” a “Saturday Night Live” television parody of “I Love New York,” is fair use); see also House Report, p. 65; Senate Report, p. 61 (”[U]se in a parody of some of the content of the work parodied” may be fair use).

    43

    The germ of parody lies in the definition of the Greek parodeia, quoted in Judge Nelson’s Court of Appeals dissent, as “a song sung alongside another.” 972 F. 2d, at 1440, quoting 7 Encyclopedia Britannica 768 (15th ed. 1975). Modern dictionaries accordingly describe a parody as a “literary or artistic work that imitates the characteristic style of an author or a work for comic effect or ridicule,”[12] or as a “composition in prose or verse in which the characteristic turns of thought and phrase in an author or class of authors are imitated in such a way as to make them appear ridiculous.”[13] For the purposes of copyright law, the nub of the definitions, and the heart of any parodist’s claim to quote from existing material, is the use of some elements of a prior author’s composition to create a new one that, at least in part, comments on that author’s works. See, e. g., Fisher v. Dees, supra, at 437; MCA, Inc. v. Wilson, 677 F. 2d 180, 185 (CA2 1981). If, on the contrary, the commentary has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in borrowing from another’s work diminishes accordingly (if it does not vanish), and other factors, like the extent of its commerciality, loom larger.[14] Parody needs to mimic *581 an original to make its point, and so has some claim to use the creation of its victim’s (or collective victims’) imagination, whereas satire can stand on its own two feet and so requires justification for the very act of borrowing.[15] See ibid.; Bisceglia, Parody and Copyright Protection: Turning the Balancing Act Into a Juggling Act, in ASCAP, Copyright Law Symposium, No. 34, p. 25 (1987).

    45

    The fact that parody can claim legitimacy for some appropriation does not, of course, tell either parodist or judge much about where to draw the line. Like a book review quoting the copyrighted material criticized, parody may or may not be fair use, and petitioners’ suggestion that any parodic use is presumptively fair has no more justification in law or fact than the equally hopeful claim that any use for news reporting should be presumed fair, see Harper & Row, 471 U. S., at 561. The Act has no hint of an evidentiary preference for parodists over their victims, and no workable presumption for parody could take account of the fact that parody often shades into satire when society is lampooned through its creative artifacts, or that a work may contain both parodic and nonparodic elements. Accordingly, parody, like any other use, has to work its way through the relevant factors, and be judged case by case, in light of the ends of the copyright law.

    47

    Here, the District Court held, and the Court of Appeals assumed, that 2 Live Crew’s “Pretty Woman” contains parody, *582 commenting on and criticizing the original work, whatever it may have to say about society at large. As the District Court remarked, the words of 2 Live Crew’s song copy the original’s first line, but then “quickly degenerat[e] into a play on words, substituting predictable lyrics with shocking ones . . . [that] derisively demonstrat[e] how bland and banal the Orbison song seems to them.” 754 F. Supp., at 1155 (footnote omitted). Judge Nelson, dissenting below, came to the same conclusion, that the 2 Live Crew song “was clearly intended to ridicule the white-bread original” and “reminds us that sexual congress with nameless streetwalkers is not necessarily the stuff of romance and is not necessarily without its consequences. The singers (there are several) have the same thing on their minds as did the lonely man with the nasal voice, but here there is no hint of wine and roses.” 972 F. 2d, at 1442. Although the majority below had difficulty discerning any criticism of the original in 2 Live Crew’s song, it assumed for purposes of its opinion that there was some. Id., at 1435-1436, and n. 8.

    49

    We have less difficulty in finding that critical element in 2 Live Crew’s song than the Court of Appeals did, although having found it we will not take the further step of evaluating its quality. The threshold question when fair use is raised in defense of parody is whether a parodic character may reasonably be perceived.[16] Whether, going beyond that, parody is in good taste or bad does not and should not matter to fair use. As Justice Holmes explained, ”[i]t would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [a work], outside of the narrowest and most obvious limits. At *583 the one extreme some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke.” Bleistein v. Donaldson Lithographing Co., 188 U. S. 239, 251 (1903) (circus posters have copyright protection); cf. Yankee Publishing Inc. v. News America Publishing, Inc., 809 F. Supp. 267, 280 (SDNY 1992) (Leval, J.) (“First Amendment protections do not apply only to those who speak clearly, whose jokes are funny, and whose parodies succeed”) (trademark case).

    51

    While we might not assign a high rank to the parodic element here, we think it fair to say that 2 Live Crew’s song reasonably could be perceived as commenting on the original or criticizing it, to some degree. 2 Live Crew juxtaposes the romantic musings of a man whose fantasy comes true, with degrading taunts, a bawdy demand for sex, and a sigh of relief from paternal responsibility. The later words can be taken as a comment on the naivete of the original of an earlier day, as a rejection of its sentiment that ignores the ugliness of street life and the debasement that it signifies. It is this joinder of reference and ridicule that marks off the author’s choice of parody from the other types of comment and criticism that traditionally have had a claim to fair use protection as transformative works.[17]

    53

    The Court of Appeals, however, immediately cut short the enquiry into 2 Live Crew’s fair use claim by confining its treatment of the first factor essentially to one relevant fact, the commercial nature of the use. The court then inflated the significance of this fact by applying a presumption ostensibly *584 culled from Sony, that “every commercial use of copy-righted material is presumptively . . . unfair. . . .” Sony, 464 U. S., at 451. In giving virtually dispositive weight to the commercial nature of the parody, the Court of Appeals erred.

    55

    The language of the statute makes clear that the commercial or nonprofit educational purpose of a work is only one element of the first factor enquiry into its purpose and character. Section 107(1) uses the term “including” to begin the dependent clause referring to commercial use, and the main clause speaks of a broader investigation into “purpose and character.” As we explained in Harper & Row, Congress resisted attempts to narrow the ambit of this traditional enquiry by adopting categories of presumptively fair use, and it urged courts to preserve the breadth of their traditionally ample view of the universe of relevant evidence. 471 U. S., at 561; House Report, p. 66. Accordingly, the mere fact that a use is educational and not for profit does not insulate it from a finding of infringement, any more than the commercial character of a use bars a finding of fairness. If, indeed, commerciality carried presumptive force against a finding of fairness, the presumption would swallow nearly all of the illustrative uses listed in the preamble paragraph of § 107, including news reporting, comment, criticism, teaching, scholarship, and research, since these activities “are generally conducted for profit in this country.” Harper & Row, supra, at 592 (Brennan, J., dissenting). Congress could not have intended such a rule, which certainly is not inferable from the common-law cases, arising as they did from the world of letters in which Samuel Johnson could pronounce that ”[n]o man but a blockhead ever wrote, except for money.” 3 Boswell’s Life of Johnson 19 (G. Hill ed. 1934).

    57

    Sony itself called for no hard evidentiary presumption. There, we emphasized the need for a “sensitive balancing of interests,” 464 U. S., at 455, n. 40, noted that Congress had “eschewed a rigid, bright-line approach to fair use,” id., at *585 449, n. 31, and stated that the commercial or nonprofit educational character of a work is “not conclusive,” id., at 448-449, but rather a fact to be “weighed along with other[s] in fair use decisions,” id., at 449, n. 32 (quoting House Report, p. 66). The Court of Appeals’s elevation of one sentence from Sony to a per se rule thus runs as much counter to Sony itself as to the long common-law tradition of fair use adjudication. Rather, as we explained in Harper & Row, Sony stands for the proposition that the “fact that a publication was commercial as opposed to nonprofit is a separate factor that tends to weigh against a finding of fair use.” 471 U. S., at 562. But that is all, and the fact that even the force of that tendency will vary with the context is a further reason against elevating commerciality to hard presumptive significance. The use, for example, of a copyrighted work to advertise a product, even in a parody, will be entitled to less indulgence under the first factor of the fair use enquiry than the sale of a parody for its own sake, let alone one performed a single time by students in school. See generally Patry & Perlmutter 679-680; Fisher v. Dees, 794 F. 2d, at 437; Maxtone-Graham v. Burtchaell, 803 F. 2d 1253, 1262 (CA2 1986); Sega Enterprises Ltd. v. Accolade, Inc., 977 F. 2d 1510, 1522 (CA9 1992).[18]

    59

    *586 B

    61

    The second statutory factor, “the nature of the copy-righted work,” § 107(2), draws on Justice Story’s expression, the “value of the materials used.” Folsom v. Marsh, 9 F. Cas., at 348. This factor calls for recognition that some works are closer to the core of intended copyright protection than others, with the consequence that fair use is more difficult to establish when the former works are copied. See, e. g., Stewart v. Abend, 495 U. S., at 237-238 (contrasting fictional short story with factual works); Harper & Row, 471 U. S., at 563-564 (contrasting soon-to-be-published memoir with published speech); Sony, 464 U. S., at 455, n. 40 (contrasting motion pictures with news broadcasts); Feist, 499 U. S., at 348-351 (contrasting creative works with bare factual compilations); 3 M. Nimmer & D. Nimmer, Nimmer on Copyright § 13.05[A][2] (1993) (hereinafter Nimmer); Leval 1116. We agree with both the District Court and the Court of Appeals that the Orbison original’s creative expression for public dissemination falls within the core of the copyright’s protective purposes. 754 F. Supp., at 1155-1156; 972 F. 2d, at 1437. This fact, however, is not much help in this case, or ever likely to help much in separating the fair use sheep from the infringing goats in a parody case, since parodies almost invariably copy publicly known, expressive works.

    63

    C

    65

    The third factor asks whether “the amount and substantiality of the portion used in relation to the copyrighted work as a whole,” § 107(3) (or, in Justice Story’s words, “the quantity and value of the materials used,” Folsom v. Marsh, supra, at 348) are reasonable in relation to the purpose of the copying. Here, attention turns to the persuasiveness of a parodist’s justification for the particular copying done, and the enquiry will harken back to the first of the statutory factors, for, as in prior cases, we recognize that the extent of permissible copying varies with the purpose and character *587 of the use. See Sony, supra, at 449-450 (reproduction of entire work “does not have its ordinary effect of militating against a finding of fair use” as to home videotaping of television programs); Harper & Row, supra, at 564 (”[E]ven substantial quotations might qualify as fair use in a review of a published work or a news account of a speech” but not in a scoop of a soon-to-be-published memoir). The facts bearing on this factor will also tend to address the fourth, by revealing the degree to which the parody may serve as a market substitute for the original or potentially licensed derivatives. See Leval 1123.

    67

    The District Court considered the song’s parodic purpose in finding that 2 Live Crew had not helped themselves overmuch. 754 F. Supp., at 1156-1157. The Court of Appeals disagreed, stating that ”[w]hile it may not be inappropriate to find that no more was taken than necessary, the copying was qualitatively substantial. . . . We conclude that taking the heart of the original and making it the heart of a new work was to purloin a substantial portion of the essence of the original.” 972 F. 2d, at 1438.

    69

    The Court of Appeals is of course correct that this factor calls for thought not only about the quantity of the materials used, but about their quality and importance, too. In Harper & Row, for example, the Nation had taken only some 300 words out of President Ford’s memoirs, but we signaled the significance of the quotations in finding them to amount to “the heart of the book,” the part most likely to be newsworthy and important in licensing serialization. 471 U. S., at 564-566, 568 (internal quotation marks omitted). We also agree with the Court of Appeals that whether “a substantial portion of the infringing work was copied verbatim” from the copyrighted work is a relevant question, see id., at 565, for it may reveal a dearth of transformative character or purpose under the first factor, or a greater likelihood of market harm under the fourth; a work composed primarily of an original, particularly its heart, with little added or changed, *588 is more likely to be a merely superseding use, fulfilling demand for the original.

    71

    Where we part company with the court below is in applying these guides to parody, and in particular to parody in the song before us. Parody presents a difficult case. Parody’s humor, or in any event its comment, necessarily springs from recognizable allusion to its object through distorted imitation. Its art lies in the tension between a known original and its parodic twin. When parody takes aim at a particular original work, the parody must be able to “conjure up” at least enough of that original to make the object of its critical wit recognizable. See, e. g., Elsmere Music, 623 F. 2d, at 253, n. 1; Fisher v. Dees, 794 F. 2d, at 438-439. What makes for this recognition is quotation of the original’s most distinctive or memorable features, which the parodist can be sure the audience will know. Once enough has been taken to assure identification, how much more is reasonable will depend, say, on the extent to which the song’s overriding purpose and character is to parody the original or, in contrast, the likelihood that the parody may serve as a market substitute for the original. But using some characteristic features cannot be avoided.

    73

    We think the Court of Appeals was insufficiently appreciative of parody’s need for the recognizable sight or sound when it ruled 2 Live Crew’s use unreasonable as a matter of law. It is true, of course, that 2 Live Crew copied the characteristic opening bass riff (or musical phrase) of the original, and true that the words of the first line copy the Orbison lyrics. But if quotation of the opening riff and the first line may be said to go to the “heart” of the original, the heart is also what most readily conjures up the song for parody, and it is the heart at which parody takes aim. Copying does not become excessive in relation to parodic purpose merely because the portion taken was the original’s heart. If 2 Live Crew had copied a significantly less memorable part of the original, it is difficult to see how its parodic character *589 would have come through. See Fisher v. Dees, supra, at 439.

    75

    This is not, of course, to say that anyone who calls himself a parodist can skim the cream and get away scot free. In parody, as in news reporting, see Harper & Row, supra, context is everything, and the question of fairness asks what else the parodist did besides go to the heart of the original. It is significant that 2 Live Crew not only copied the first line of the original, but thereafter departed markedly from the Orbison lyrics for its own ends. 2 Live Crew not only copied the bass riff and repeated it,[19] but also produced otherwise distinctive sounds, interposing “scraper” noise, over-laying the music with solos in different keys, and altering the drum beat. See 754 F. Supp., at 1155. This is not a case, then, where “a substantial portion” of the parody itself is composed of a “verbatim” copying of the original. It is not, that is, a case where the parody is so insubstantial, as compared to the copying, that the third factor must be resolved as a matter of law against the parodists.

    77

    Suffice it to say here that, as to the lyrics, we think the Court of Appeals correctly suggested that “no more was taken than necessary,” 972 F. 2d, at 1438, but just for that reason, we fail to see how the copying can be excessive in relation to its parodic purpose, even if the portion taken is the original’s “heart.” As to the music, we express no opinion whether repetition of the bass riff is excessive copying, and we remand to permit evaluation of the amount taken, in light of the song’s parodic purpose and character, its transformative elements, and considerations of the potential for market substitution sketched more fully below.

    79

    *590 D

    81

    The fourth fair use factor is “the effect of the use upon the potential market for or value of the copyrighted work.” § 107(4). It requires courts to consider not only the extent of market harm caused by the particular actions of the alleged infringer, but also “whether unrestricted and widespread conduct of the sort engaged in by the defendant . . . would result in a substantially adverse impact on the potential market” for the original. Nimmer § 13.05[A][4], p. 13-102.61 (footnote omitted); accord, Harper & Row, 471 U. S., at 569; Senate Report, p. 65; Folsom v. Marsh, 9 F. Cas., at 349. The enquiry “must take account not only of harm to the original but also of harm to the market for derivative works.” Harper & Row, supra, at 568.

    83

    Since fair use is an affirmative defense,[20] its proponent would have difficulty carrying the burden of demonstrating fair use without favorable evidence about relevant markets.[21] In moving for summary judgment, 2 Live Crew left themselves at just such a disadvantage when they failed to address the effect on the market for rap derivatives, and confined themselves to uncontroverted submissions that there was no likely effect on the market for the original. They did not, however, thereby subject themselves to the evidentiary presumption applied by the Court of Appeals. In assessing the likelihood of significant market harm, the Court of Appeals *591 quoted from language in Sony that ”`[i]f the intended use is for commercial gain, that likelihood may be presumed. But if it is for a noncommercial purpose, the likelihood must be demonstrated.’” 972 F. 2d, at 1438, quoting Sony, 464 U. S., at 451. The court reasoned that because “the use of the copyrighted work is wholly commercial, . . . we presume that a likelihood of future harm to Acuff-Rose exists.” 972 F. 2d, at 1438. In so doing, the court resolved the fourth factor against 2 Live Crew, just as it had the first, by applying a presumption about the effect of commercial use, a presumption which as applied here we hold to be error.

    85

    No “presumption” or inference of market harm that might find support in Sony is applicable to a case involving something beyond mere duplication for commercial purposes. Sony’s discussion of a presumption contrasts a context of verbatim copying of the original in its entirety for commercial purposes, with the noncommercial context of Sony itself (home copying of television programming). In the former circumstances, what Sony said simply makes common sense: when a commercial use amounts to mere duplication of the entirety of an original, it clearly “supersede[s] the objects,” Folsom v. Marsh, supra, at 348, of the original and serves as a market replacement for it, making it likely that cognizable market harm to the original will occur. Sony, supra, at 451. But when, on the contrary, the second use is transformative, market substitution is at least less certain, and market harm may not be so readily inferred. Indeed, as to parody pure and simple, it is more likely that the new work will not affect the market for the original in a way cognizable under this factor, that is, by acting as a substitute for it (“supersed[ing] [its] objects”). See Leval 1125; Patry & Perlmutter 692, 697-698. This is so because the parody and the original usually serve different market functions. Bisceglia, ASCAP, Copyright Law Symposium, No. 34, at 23.

    87

    We do not, of course, suggest that a parody may not harm the market at all, but when a lethal parody, like a scathing *592 theater review, kills demand for the original, it does not produce a harm cognizable under the Copyright Act. Because “parody may quite legitimately aim at garroting the original, destroying it commercially as well as artistically,” B. Kaplan, An Unhurried View of Copyright 69 (1967), the role of the courts is to distinguish between ”[b]iting criticism [that merely] suppresses demand [and] copyright infringement[, which] usurps it.” Fisher v. Dees, 794 F. 2d, at 438.

    89

    This distinction between potentially remediable displacement and unremediable disparagement is reflected in the rule that there is no protectible derivative market for criticism. The market for potential derivative uses includes only those that creators of original works would in general develop or license others to develop. Yet the unlikelihood that creators of imaginative works will license critical reviews or lampoons of their own productions removes such uses from the very notion of a potential licensing market. “People ask . . . for criticism, but they only want praise.” S. Maugham, Of Human Bondage 241 (Penguin ed. 1992). Thus, to the extent that the opinion below may be read to have considered harm to the market for parodies of “Oh, Pretty Woman,” see 972 F. 2d, at 1439, the court erred. Accord, Fisher v. Dees, supra, at 437; Leval 1125; Patry & Perlmutter 688-691.[22]

    91

    In explaining why the law recognizes no derivative market for critical works, including parody, we have, of course, been speaking of the later work as if it had nothing but a critical aspect (i. e., “parody pure and simple,” supra, at 591). But the later work may have a more complex character, with effects not only in the arena of criticism but also in protectible markets for derivative works, too. In that sort of case, the law looks beyond the criticism to the other elements of the work, as it does here. 2 Live Crew’s song comprises not *593 only parody but also rap music, and the derivative market for rap music is a proper focus of enquiry, see Harper & Row, supra, at 568; Nimmer § 13.05[B]. Evidence of substantial harm to it would weigh against a finding of fair use,[23] because the licensing of derivatives is an important economic incentive to the creation of originals. See 17 U. S. C. § 106(2) (copyright owner has rights to derivative works). Of course, the only harm to derivatives that need concern us, as discussed above, is the harm of market substitution. The fact that a parody may impair the market for derivative uses by the very effectiveness of its critical commentary is no more relevant under copyright than the like threat to the original market.[24]

    93

    Although 2 Live Crew submitted uncontroverted affidavits on the question of market harm to the original, neither they, nor Acuff-Rose, introduced evidence or affidavits addressing the likely effect of 2 Live Crew’s parodic rap song on the market for a nonparody, rap version of “Oh, Pretty Woman.” And while Acuff-Rose would have us find evidence of a rap market in the very facts that 2 Live Crew recorded a rap parody of “Oh, Pretty Woman” and another rap group sought a license to record a rap derivative, there was no evidence that a potential rap market was harmed in any way by 2 Live Crew’s parody, rap version. The fact that 2 Live Crew’s parody sold as part of a collection of rap songs says very little about the parody’s effect on a market for a rap version of the original, either of the music alone or of the music with its lyrics. The District Court essentially passed *594 on this issue, observing that Acuff-Rose is free to record “whatever version of the original it desires,” 754 F. Supp., at 1158; the Court of Appeals went the other way by erroneous presumption. Contrary to each treatment, it is impossible to deal with the fourth factor except by recognizing that a silentrecord on an important factor bearing on fair use disentitled the proponent of the defense, 2 Live Crew, to summary judgment. The evidentiary hole will doubtless be plugged on remand.

    95

    III

    97

    It was error for the Court of Appeals to conclude that the commercial nature of 2 Live Crew’s parody of “Oh, Pretty Woman” rendered it presumptively unfair. No such evidentiary presumption is available to address either the first factor, the character and purpose of the use, or the fourth, market harm, in determining whether a transformative use, such as parody, is a fair one. The court also erred in holding that 2 Live Crew had necessarily copied excessively from the Orbison original, considering the parodic purpose of the use. We therefore reverse the judgment of the Court of Appeals and remand the case for further proceedings consistent with this opinion.

    99

    It is so ordered.

    101

    APPENDIX A TO OPINION OF THE COURT

    103

    APPENDIX B TO OPINION OF THE COURT

    105

    “Pretty Woman” as Recorded by 2 Live Crew

    107

    JUSTICE KENNEDY, concurring.

    109

    I agree that remand is appropriate and join the opinion of the Court, with these further observations about the fair use analysis of parody.

    111

    The common-law method instated by the fair use provision of the copyright statute, 17 U. S. C. § 107 (1988 ed. and Supp. IV), presumes that rules will emerge from the course of decisions. I agree that certain general principles are now discernible to define the fair use exception for parody. One of these rules, as the Court observes, is that parody may qualify as fair use regardless of whether it is published or performed *597 for profit. Ante, at 591. Another is that parody may qualify as fair use only if it draws upon the original composition to make humorous or ironic commentary about that same composition. Ante, at 580. It is not enough that the parody use the original in a humorous fashion, however creative that humor may be. The parody must target the original, and not just its general style, the genre of art to which it belongs, or society as a whole (although if it targets the original, it may target those features as well). See Rogers v. Koons, 960 F. 2d 301, 310 (CA2 1992) (”[T]hough the satire need not be only of the copied work and may . . . also be a parody of modern society, the copied work must be, at least in part, an object of the parody”); Fisher v. Dees, 794 F. 2d 432, 436 (CA9 1986) (”[A] humorous or satiric work deserves protection under the fair-use doctrine only if the copied work is at least partly the target of the work in question”). This prerequisite confines fair use protection to works whose very subject is the original composition and so necessitates some borrowing from it. See MCA, Inc. v. Wilson, 677 F. 2d 180, 185 (CA2 1981) (”[I]f the copyrighted song is not at least in part an object of the parody, there is no need to conjure it up”); Bisceglia, Parody and Copyright Protection: Turning the Balancing Act Into a Juggling Act, in ASCAP, Copyright Law Symposium, No. 34, pp. 23-29 (1987). It also protects works we have reason to fear will not be licensed by copyright holders who wish to shield their works from criticism. See Fisher, supra, at 437 (“Self-esteem is seldom strong enough to permit the granting of permission even in exchange for a reasonable fee”); Posner, When Is Parody Fair Use?, 21 J. Legal Studies 67, 73 (1992) (“There is an obstruction when the parodied work is a target of the parodist’s criticism, for it may be in the private interest of the copyright owner, but not in the social interest, to suppress criticism of the work”) (emphasis deleted).

    113

    If we keep the definition of parody within these limits, we have gone most of the way towards satisfying the four-factor *598 fair use test in § 107. The first factor (the purpose and character of use) itself concerns the definition of parody. The second factor (the nature of the copyrighted work) adds little to the first, since “parodies almost invariably copy publicly known, expressive works.” Ante, at 586. The third factor (the amount and substantiality of the portion used in relation to the whole) is likewise subsumed within the definition of parody. In determining whether an alleged parody has taken too much, the target of the parody is what gives content to the inquiry. Some parodies, by their nature, require substantial copying. See Elsmere Music, Inc. v. National Broadcasting Co., 623 F. 2d 252 (CA2 1980) (holding that “I Love Sodom” skit on “Saturday Night Live” is legitimate parody of the “I Love New York” campaign). Other parodies, like Lewis Carroll’s “You Are Old, Father William,” need only take parts of the original composition. The third factor does reinforce the principle that courts should not accord fair use protection to profiteers who do no more than add a few silly words to someone else’s song or place the characters from a familiar work in novel or eccentric poses. See, e. g., Walt Disney Productions v. Air Pirates, 581 F. 2d 751 (CA9 1978); DC Comics Inc. v. Unlimited Monkey Business, Inc., 598 F. Supp. 110 (ND Ga. 1984). But, as I believe the Court acknowledges, ante, at 588-589, it is by no means a test of mechanical application. In my view, it serves in effect to ensure compliance with the targeting requirement.

    115

    As to the fourth factor (the effect of the use on the market for the original), the Court acknowledges that it is legitimate for parody to suppress demand for the original by its critical effect. Ante, at 591-592. What it may not do is usurp demand by its substitutive effect. Ibid. It will be difficult, of course, for courts to determine whether harm to the market results from a parody’s critical or substitutive effects. But again, if we keep the definition of parody within appropriate bounds, this inquiry may be of little significance. If a work targets another for humorous or ironic effect, it is by definition *599 a new creative work. Creative works can compete with other creative works for the same market, even if their appeal is overlapping. Factor four thus underscores the importance of ensuring that the parody is in fact an independent creative work, which is why the parody must “make some critical comment or statement about the original work which reflects the original perspective of the parodist—thereby giving the parody social value beyond its entertainment function.” Metro-Goldwyn-Mayer, Inc. v. Showcase Atlanta Cooperative Productions, Inc., 479 F. Supp. 351, 357 (ND Ga. 1979).

    117

    The fair use factors thus reinforce the importance of keeping the definition of parody within proper limits. More than arguable parodic content should be required to deem a would-be parody a fair use. Fair use is an affirmative defense, so doubts about whether a given use is fair should not be resolved in favor of the self-proclaimed parodist. We should not make it easy for musicians to exploit existing works and then later claim that their rendition was a valuable commentary on the original. Almost any revamped modern version of a familiar composition can be construed as a “comment on the naivete of the original,” ante, at 583, because of the difference in style and because it will be amusing to hear how the old tune sounds in the new genre. Just the thought of a rap version of Beethoven’s Fifth Symphony or “Achy Breaky Heart” is bound to make people smile. If we allow any weak transformation to qualify as parody, however, we weaken the protection of copyright. And under-protection of copyright disserves the goals of copyright just as much as overprotection, by reducing the financial incentive to create.

    119

    The Court decides it is “fair to say that 2 Live Crew’s song reasonably could be perceived as commenting on the original or criticizing it, to some degree.” Ibid. (applying the first fair use factor). While I am not so assured that 2 Live Crew’s song is a legitimate parody, the Court’s treatment of *600 the remaining factors leaves room for the District Court to determine on remand that the song is not a fair use. As future courts apply our fair use analysis, they must take care to ensure that not just any commercial takeoff is rationalized post hoc as a parody.

    121

    With these observations, I join the opinion of the Court.

    123

    [*] Briefs of amici curiae urging reversal were filed for the American Civil Liberties Union by Steven F. Reich, Steven R. Shapiro, Marjorie Heins, and John A. Powell; for Capitol Steps Production, Inc., et al. by William C. Lane; for the Harvard Lampoon, Inc., by Robert H. Loeffler and Jonathan Band; for the PEN American Center by Leon Friedman; and for Robert C. Berry et al. by Alfred C. Yen.

    125

    Briefs of amici curiae urging affirmance were filed for the National Music Publishers’ Association, Inc., et al. by Marvin E. Frankel and Michael S. Oberman; and for Fred Ebb et al. by Stephen Rackow Kaye, Charles S. Sims, and Jon A. Baumgarten.

    127

    Briefs of amici curiae were filed for Home Box Office et al. by Daniel M. Waggoner, P. Cameron DeVore, George Vradenburg, Bonnie Bogin, and Richard Cotton; and for Warner Bros. by Cary H. Sherman and Robert Alan Garrett.

    129

    [1] Rap has been defined as a “style of black American popular music consisting of improvised rhymes performed to a rhythmic accompaniment.” The Norton/Grove Concise Encyclopedia of Music 613 (1988). 2 Live Crew plays ”[b]ass music,” a regional, hip-hop style of rap from the Liberty City area of Miami, Florida. Brief for Petitioners 34.

    131

    [2] The parties argue about the timing. 2 Live Crew contends that the album was released on July 15, and the District Court so held. 754 F. Supp. 1150, 1152 (MD Tenn. 1991). The Court of Appeals states that Campbell’s affidavit puts the release date in June, and chooses that date. 972 F. 2d 1429, 1432 (CA6 1992). We find the timing of the request irrelevant for purposes of this enquiry. See n. 18, infra, discussing good faith.

    133

    [3] 2 Live Crew’s motion to dismiss was converted to a motion for summary judgment. Acuff-Rose defended against the motion, but filed no cross-motion.

    135

    [4] Section 106 provides in part:

    137

    “Subject to sections 107 through 120, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:

    139

    ”(1) to reproduce the copyrighted work in copies or phonorecords;

    141

    ”(2) to prepare derivative works based upon the copyrighted work;

    143

    ”(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending . . . .”

    145

    A derivative work is defined as one “based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a `derivative work.’ ” 17 U. S. C. § 101.

    147

    2 Live Crew concedes that it is not entitled to a compulsory license under § 115 because its arrangement changes “the basic melody or fundamental character” of the original. § 115(a)(2).

    149

    [5] The exclusion of facts and ideas from copyright protection serves that goal as well. See § 102(b) (“In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery…”); Feist Publications, Inc. v. Rural Telephone Service Co., 499 U. S. 340, 359 (1991) (”[F]acts contained in existing works may be freely copied”); Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U. S. 539, 547 (1985) (copyright owner’s rights exclude facts and ideas, and fair use).

    151

    [6] An Act for the Encouragement of Learning, 8 Anne, ch. 19.

    153

    [7] Patry 27, citing Lawrence v. Dana, 15 F. Cas. 26, 60 (No. 8,136) (CCD Mass. 1869).

    155

    [8] Leval 1105. For a historical account of the development of the fair use doctrine, see Patry 1-64.

    157

    [9] See Senate Report, p. 62 (”[W]hether a use referred to in the first sentence of section 107 is a fair use in a particular case will depend upon the application of the determinative factors”).

    159

    [10] Because the fair use enquiry often requires close questions of judgment as to the extent of permissible borrowing in cases involving parodies (or other critical works), courts may also wish to bear in mind that the goals of the copyright law, “to stimulate the creation and publication of edifying matter,” Leval 1134, are not always best served by automatically granting injunctive relief when parodists are found to have gone beyond the bounds of fair use. See 17 U. S. C. § 502(a) (court “may . . . grant . . . injunctions on such terms as it may deem reasonable to prevent or restrain infringement”) (emphasis added); Leval 1132 (while in the “vast majority of cases, [an injunctive] remedy is justified because most infringements are simple piracy,” such cases are “worlds apart from many of those raising reasonable contentions of fair use” where “there may be a strong public interest in the publication of the secondary work [and] the copyright owner’s interest may be adequately protected by an award of damages for whatever infringement is found”); Abend v. MCA, Inc., 863 F. 2d 1465, 1479 (CA9 1988) (finding “special circumstances” that would cause “great injustice” to defendants and “public injury” were injunction to issue), aff’d sub nom. Stewart v. Abend, 495 U. S. 207 (1990).

    161

    [11] The obvious statutory exception to this focus on transformative uses is the straight reproduction of multiple copies for classroom distribution.

    163

    [12] American Heritage Dictionary 1317 (3d ed. 1992).

    165

    [13] 11 Oxford English Dictionary 247 (2d ed. 1989).

    167

    [14] A parody that more loosely targets an original than the parody presented here may still be sufficiently aimed at an original work to come within our analysis of parody. If a parody whose wide dissemination in the market runs the risk of serving as a substitute for the original or licensed derivatives (see infra, at 590-594, discussing factor four), it is more incumbent on one claiming fair use to establish the extent of transformation and the parody’s critical relationship to the original. By contrast, when there is little or no risk of market substitution, whether because of the large extent of transformation of the earlier work, the new work’s minimal distribution in the market, the small extent to which it borrows from an original, or other factors, taking parodic aim at an original is a less critical factor in the analysis, and looser forms of parody may be found to be fair use, as may satire with lesser justification for the borrowing than would otherwise be required.

    169

    [15] Satire has been defined as a work “in which prevalent follies or vices are assailed with ridicule,” 14 Oxford English Dictionary, supra, at 500, or are “attacked through irony, derision, or wit,” American Heritage Dictionary, supra, at 1604.

    171

    [16] The only further judgment, indeed, that a court may pass on a work goes to an assessment of whether the parodic element is slight or great, and the copying small or extensive in relation to the parodic element, for a work with slight parodic element and extensive copying will be more likely to merely “supersede the objects” of the original. See infra, at 586-594, discussing factors three and four.

    173

    [17] We note in passing that 2 Live Crew need not label their whole album, or even this song, a parody in order to claim fair use protection, nor should 2 Live Crew be penalized for this being its first parodic essay. Parody serves its goals whether labeled or not, and there is no reason to require parody to state the obvious (or even the reasonably perceived). See Patry & Perlmutter 716-717.

    175

    [18] Finally, regardless of the weight one might place on the alleged infringer’s state of mind, compare Harper & Row, 471 U. S., at 562 (fair use presupposes good faith and fair dealing) (quotation marks omitted), with Folsom v. Marsh, 9 F. Cas. 342, 349 (No. 4,901) (CCD Mass. 1841) (good faith does not bar a finding of infringement); Leval 1126-1127 (good faith irrelevant to fair use analysis), we reject Acuff-Rose’s argument that 2 Live Crew’s request for permission to use the original should be weighed against a finding of fair use. Even if good faith were central to fair use, 2 Live Crew’s actions do not necessarily suggest that they believed their version was not fair use; the offer may simply have been made in a good-faith effort to avoid this litigation. If the use is otherwise fair, then no permission need be sought or granted. Thus, being denied permission to use a work does not weigh against a finding of fair use. See Fisher v. Dees, 794 F. 2d 432, 437 (CA9 1986).

    177

    [19] This may serve to heighten the comic effect of the parody, as one witness stated, App. 32a, Affidavit of Oscar Brand; see also Elsmere Music, Inc. v. National Broadcasting Co., 482 F. Supp. 741, 747 (SDNY 1980) (repetition of “I Love Sodom”), or serve to dazzle with the original’s music, as Acuff-Rose now contends.

    179

    [20] Harper & Row, 471 U. S., at 561; H. R. Rep. No. 102-836, p. 3, n. 3 (1992).

    181

    [21] Even favorable evidence, without more, is no guarantee of fairness. Judge Leval gives the example of the film producer’s appropriation of a composer’s previously unknown song that turns the song into a commercial success; the boon to the song does not make the film’s simple copying fair. Leval 1124, n. 84. This factor, no less than the other three, may be addressed only through a “sensitive balancing of interests.” Sony Corp. of America v. Universal City Studios, Inc., 464 U. S. 417, 455, n. 40 (1984). Market harm is a matter of degree, and the importance of this factor will vary, not only with the amount of harm, but also with the relative strength of the showing on the other factors.

    183

    [22] We express no opinion as to the derivative markets for works using elements of an original as vehicles for satire or amusement, making no comment on the original or criticism of it.

    185

    [23] See Nimmer § 13.05[A][4], p. 13-102.61 (“a substantially adverse impact on the potential market”); Leval 1125 (“reasonably substantial” harm); Patry & Perlmutter 697-698 (same).

    187

    [24] In some cases it may be difficult to determine whence the harm flows. In such cases, the other fair use factors may provide some indicia of the likely source of the harm. A work whose overriding purpose and character is parodic and whose borrowing is slight in relation to its parody will be far less likely to cause cognizable harm than a work with little parodic content and much copying.

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