Bon Victoire

Just back from the Grammys.

The televised portion of the show is fine, but the real spirit of the place is found in the Grammy Week lead-up events, and the pre-telecast portion of the awards. That’s where the music industry really comes together to honor its own in an intimate and heartfelt ceremony.

Two fashion notes: guys, lose the bow ties on the tuxes, and everyone: “black tie” does connote some degree of formal attire (and that does not include simply recycling what you wore to your wedding or what you wore to your sister’s wedding).

Ok, enough of that, but in honor of that: a music law case to report on:

Last week, the First Circuit affirmed the dismissal of three lawsuit that had been brought against Bon Jovi based on the allegation that Bon Jovi’s song, “I Love This Town,” infringed “Man, I Really Love This Team” by little known artist, Samuel Bartley Steele. (Steele v. Ricigliano et al., case number 11-1675; Steele et al. v. Bongiovi et al., case number 11-1674; Steele et al. v. Vector Management et al., case number 10-2173; and Steele et al. v. Turner Broadcasting System Inc. et al., case number 09-2571, in the U.S. Court of Appeals for the First Circuit.)

What?! An unknown artist suing a big-named artist for infringement?! Shocking! A little known artist claiming that the big-guys listened to and stole the little’s guy song?

Look, I’ve got a message for the little guy: the big guy (generally) hit it big because he (or she) has a lot of talent. Hard to believe, but true. Talent is what brought them to such heights. Talent as in they don’t need to steal from you because they’re pretty damn good at writing their own stuff. Got that?

Ok, enough of that too.

Back to Steele and Bon Jovi. Turns out Bon Jovi’s song was regularly played at baseball games, which may be why Steele thought it was stolen (remember, his work is entitled “Man, I Really Love This Team,” which could refer to baseball). Unfortunately for Steele, however, copyright law does not protect facts, ideas, or themes. It only protects the way these things are expressed.

In other words, to prove direct infringement, a plaintiff must first prove that the defendant copied the protected work. Kelly v. Arriba Soft Corp., 336 F.3d 811, 817 (9th Cir. 2003) ("the plaintiff must show ownership of the copyright and copying by the defendant.”); see also LGS Architects, Inc. v. Concordia Homes of Nev., 434 F.3d 1150, 1156 (9th Cir. 1996) (“A plaintiff must meet two requirements to establish a prima facie case of copyright infringement: (1) ownership of the allegedly infringed material and (2) violation by the alleged infringer of at least one of the exclusive rights granted to copyright holders.”).

Such copying may be proven by either direct evidence, which is rare, or by indirect evidence that shows (1) the defendant had access to plaintiff’s work, and (2) the defendant’s work has probative similarity. See, e.g., Gates Rubber Co. v. Bando Chem. Indus., 9 F.3d 823, 832 (10th Cir. 1993); Computer Assoc. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 701 (2d Cir. 1992) (requiring “substantial similarity”). "The word ‘copying’ is shorthand for the infringing of any of the copyright owner’s exclusive rights, described" in 17 U.S.C. § 106. S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1085, n.3 (9th Cir. 1989).

The degree of similarity needed to infer that copying has occurred will vary from case to case, but a plaintiff must show evidence sufficient that a reasonable fact finder, considering both access and similarity of the works, could find that the second work was copied from the first. See Gates Rubber v. Bando, 9 F.3d at 833 n.9. The plaintiff must also show that the copying was a result of a volitional act. See Religious Tech. Ctr v. Netcom On-Line Commc’n Servs., Inc., 907 F. Supp. 1361, 1369-70 (N.D. Cal. 1995).

The plaintiff also must show that those elements of a work that have been copied are protected expression and of such importance to the copied work that the appropriation of these protected elements is actionable. See id. at 832; Engineering Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335, 1341 (5th Cir. 1994). The materiality component is important because not all copying constitutes copyright infringement. See Feist Publications v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991) (“The mere fact that a work is copyrighted does not mean that every element of the work may be protected.”). Thus, unprotectable elements of a work cannot serve as basis for liability for copyright infringement; liability will only attach where protected elements of a copyrighted work are copied. Gates Rubber v. Bando, 9 F.3d at 833.

In this case, the district court – and later the Court of Appeal on its own independent review -- concluded that no reasonable juror could find a substantial similarity of expression between Bon Jovi’s work and Steele’s work sufficient to support an infringement claim. The court also said that that no reasonable juror could find any “probative similarity of expression sufficient to support an inference of actual copying.”

In other words, Steele had failed to establish a degree of similarity between the works to lead any reasonable jury to infer that copying has occurred. In fact, the First Circuit went on to say that the differences between the works are “fundamental and extensive,” and the similarities that do exist stem from the works' common subject matter.

That’s judicial equivalent of a body slam. Once a court has told you “no substantial similarity,” it’s time to go home and figure out why you took the case in the first place. Personally, I would hope that legitimate plaintiffs represented by knowledgeable copyright counsel would call it quits at that point.

Of course, even if most legitimate plaintiffs and knowledgeable counsel would do that, that still leaves many, many people who will press on. And in this case?

I suspect its not over yet.



Jonathan Pink is an intellectual property attorney specializing in copyright and trademark matters. Resident in the Los Angeles and Orange County offices of Bryan Cave, LLP, he represents clients in film, television, music, design and the visual arts. He can be reached at jonathan.pink@bryancave.com.