Complaining Work	Defending Work
Joel McDonald “Made in America” Audio clip	Kanye West, et al. “Made in America” Audio clip

 

Comment by Niall Fordyce

What a sad case. There is no question that plaintiff, a struggling musician selling his CDs on the street, sold a copy of his CD to one of the defendants. This transaction took place while defendants were holed up in a dozen rooms of the luxury Mercer Hotel in Manhattan writing for their forthcoming album. In what must feel like insult to injury for plaintiff, the alleged infringers include two of the biggest stars on planet earth, Kanye West and Jay Z. However, penury does not always equate with righteousness, and mega stardom should not result in default payouts to settle unmeritorious legal claims. Plaintiff’s work is most certainly subject to protection, but it should go without saying that his work is not protected from non-infringing works. Unfortunately, it had to be said here.

Plaintiff Joel R. McDonald, aka “Joel Mac” filed this lawsuit on November 4, 2014 in district court in New York. Plaintiff was initially represented by LoPresti & O’Reilly, LLP.  Plaintiff alleged that defendants, including Kanye West and Jay Z, infringed on his work, “Made in America,” with their work of the same name from the hit album Watch the Throne. Defendants brought a motion under Federal Rules of Civil Procedure, Rule 12(b)(6) to dismiss plaintiff’s amended complaint for failure to state a claim on which relief can be granted. On September 30, 2015, the district court granted defendants’ motion. Plaintiff appealed the district court’s ruling. On October 7, 2016, the Second Circuit Court of Appeal affirmed the district court’s judgment on defendants’ 12(b)(6) motion.

When defendants prevailed on their 12(b)(6) motion, plaintiff’s counsel stated “when a struggling artist, through the sweat of their brow, creates something wonderful you would hope that artist’s creation is protected from those looking to capitalize on it by tweaking it just enough to get by[.] Whether ‘Made in America’ was tweaked just enough to get by will be the subject of a possible appeal.” It is interesting to note that LoPresti & O’Reilly, LLP did not continue to represent plaintiff, and he undertook his appeal without legal representation.

Because the Court of Appeal’s unpublished decision affirmed the district court’s judgment “for substantially the reasons stated by the district court in its thorough and well-reasoned decision,” and because the Court of Appeal had “considered all of McDonald’s arguments and [found] them to be without merit,” this comment addresses in detail the district court’s ruling as affirmed.

In ruling on a 12(b)(6) motion to dismiss, the court accepts as true all allegations in plaintiff’s complaint, and “draws all inferences in the non-moving party’s favor.” LaFaro v. N. Y Cardiothoracic Grp., PLLC, 570 F.3d 471, 475 (2d Cir. 2009). To survive the motion, plaintiff’s complaint only needs to plead “enough facts to state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007); see Ashcroft v. Iqbal, 556 U.S. 662, 679 (2009). From a practical perspective, this is not a high standard for a plaintiff to meet. In this case, plaintiff was unable to meet these basic requirements, and his lawsuit is no more.

The district court first addressed the legal standard for copyright infringement, pointing out that in this case, the only issue to be addressed in defendants’ 12(b)(6) motion was whether there was substantial similarity between plaintiff and defendants’ music, an issue that the court is permitted to address at the motion to dismiss stage through a visual, or in this case aural, comparison of the works in question. See Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 64 (2d Cir. 2010).

In reaching its decision to dismiss plaintiff’s claim, the district court applied the “ordinary observer” test, which provides that substantial similarity will be found where “defendant took from plaintiff’s work 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.” Repp v. Webber, 132 F.3d 882, 889 (2d Cir. 1997) (alteration in original) (quoting Arnstein v. Porter, 154 F.2d 464, 473 (2d Cir. 1946)). The district court further explained that if it determined (1) that any similarity between the two works at issue concerns only uncopyrightable parts of plaintiff’s song, or (2) that no reasonable jury properly instructed could find substantial similarity on the facts of this case, then the two songs are not substantially similar as a matter of law, and the court must dismiss plaintiff’s claim.

The court went on to point out that the heart of plaintiff’s claim was not an assertion that he holds a copyright to the title or lyric “Made in America,” but that his copyright protects his selection and arrangement of the phrase in conjunction with other original and unoriginal elements in his song’s music and lyrics, and that defendants’ work had appropriated from his selection and arrangement of the phrase. The court zeroed in on plaintiff’s three claims that (1) defendants had infringed by referencing Martin Luther King, Jr., Malcolm X, and “made in America” in the same order in their respective hooks; (2) both works share the theme of referencing significant Americans, and imply that the named historical figures were “made in America”; and (3) both songs use the M/Ma sound at the beginning of “Martin,” “Malcolm,” and “made” to create alliteration.

Using a simple chart of the allegedly similar phrases in the two works, the court quickly shot down plaintiff’s claims regarding the defendants’ alleged misappropriation. The court pointed out that names of historical figures are not protectable, and that “pairing of Martin Luther King, Jr., and Malcolm X, two of the most significant leaders of the Civil Rights Movement, is certainly not an original selection and arrangement.” The court then made clear that “referencing significant Americans” is an uncopyrightable idea. Why this fundamental copyright concept was not clear to plaintiff’s counsel who drafted the complaint is mystifying.

The court similarly debunked plaintiff’s claims regarding alliteration. Alliteration is an unprotectable idea or concept, and use of three phrases in close succession each having the letter M would “inevitably have some alliteration.” The court cited Tufenkian Imp./Exp. Venture, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127, 132 n.4 (2d Cir. 2003) for the proposition that “even original expression goes unprotected insofar as it is ‘necessary’ to something unprotectable…,” in this case, the alliterative effect. Further, defendants’ chorus, as shown in the court’s lyric chart, shows how dissimilar the uses of the words and phrases in question actually are. Once again, it is altogether unclear why this was not obvious to plaintiff and his counsel.

As for plaintiff’s claims of musical similarities, the court made short work of these allegations. Commonplace musical structures, e.g., an “instrumental intro or outro followed by a chorus,” are ideas, and thus not protected by copyright. Plaintiff’s assertions of similar feel and tone “are akin to style-they are too close to ideas to be copyrighted in the abstract.” Tempo is clearly a basic musical element and is not copyrightable. Plaintiff’s claim of copyright in “shuffling percussion” is inadequate, only describing rhythmic style or general feel, neither of which rise to the level of copyright protection. Further, lack of a strong bass line, another of plaintiff’s claims of substantial similarity, is commonplace, and cannot be the basis for substantial similarity. Finally, the court made clear that a common musical technique, in this case, the use of melisma in a chorus, without showing copying or paraphrasing is an unprotectable musical technique.

In an aside, even though not addressed by plaintiff, the court noted that the way the two works treat the word “America” is different, with the plaintiff’s work holding the second and fourth syllables, and defendants’ version only holding the last syllable. Perhaps plaintiff and plaintiff’s counsel should have engaged in a similar level of musical analysis before filing this lawsuit.

Although not necessarily a death knell to a claim of copyright infringement (see infra), plaintiff’s claims regarding alleged musical similarities shows a troubling tendency in music copyright cases – the attempt by plaintiffs to lay claim to absolutely standard, garden variety musical techniques, ideas, and concepts not protected by copyright. For example, it is simply not enough to allege that both works use melisma. This is a standard compositional technique used throughout the ages, from Renaissance polyphony to contemporary R&B. There must be a substantive analysis of how the melisma is expressed in the works in question, and how the alleged infringing work takes from the protected material of the work claiming protection. Plaintiff here falls victim to this problematic tendency, and fortunately, the district court saw through plaintiff’s unsupportable claims.

The court’s analysis does not end here, though. Having disposed of plaintiff’s claim-by-claim allegations of infringement, the court next engaged in a “holistic comparison” of the two works – “even if the individual elements that make up plaintiff’s song are uncopyrightable, they may represent a protected selection and arrangement of unprotectable elements.” Having listened to plaintiff’s and defendants’ works side by side, the court concluded that no reasonable jury could conclude that they are substantially similar. A similar listening by plaintiff and his counsel should have brought them to the same conclusion.

As for holistic lyric similarity, a basic comparison reveals that defendants’ use of historical figures and other public domain elements is in marked contrast to plaintiff’s work. The works only have two figures in common, and they are used in dissimilar ways. The actual phrase “made in America” in plaintiff’s work is interspersed at regular intervals while defendants use the different phrase “we made it in America” only in the second half of the chorus. Did plaintiff and counsel not realize this?

What is more, the two works’ lyrics do not share a theme, with plaintiff’s work asking America to live up to its positive qualities, while defendants’ lyrics are autobiographical about Kanye West and Jay Z making it in America, and their “gritty and complicated experience of the American dream.” One wonders whether plaintiff and his counsel actually analyzed the lyric content in the two works…

In addressing the “holistic analysis” of the substantial similarity of the music in the two works, the court returned to the musical elements discussed above, making clear that to state a claim on which relief can be granted, there would have to be similarities beyond the unprotectable generalities of genre and uncopyrightable tempo. See Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930) (“Upon any work … a great number of patterns of increasing generality will fit equally well….”). The court’s side by side comparison showed different melodies over different percussion; distinctly different orchestration, both vocally and instrumentally; different harmonic content / structure, resulting in a perceptibly different structure; and different moods between the two works. Game, set, and match.

Based on all the factors presented, the court reached the only reasonable conclusion – “Where any reasonable juror would conclude – as here – that the differences are many, and what similarities exist are based on unprotectable elements, the two works are not substantially similar as a matter of law,” and defendants’ motion to dismiss must be granted. As noted above, the Second Circuit Court of Appeal gave full deference to the district court’s analysis, reasoning and conclusions.

Music copyright is a decidedly and perhaps deceptively difficult area of law, and bad results based on misunderstandings of music itself, the applicable law, and their interaction are certainly not unheard of in cases such as this. It is not clear whether this case is a brazen attempt to “cash in” through settlement by nervous defendants concerned about the real possibility of an unfavorable outcome, despite having what should be winning defenses. Regardless, this appears to be another in an ever-lengthening list of at best tenuous cases being brought by uninformed or unscrupulous plaintiffs.

Simply listening to the two works at issue should have been enough for any listener, be it lay person or skilled musician, to determine that these are two markedly dissimilar works. Surely this would and should influence and inform any attorney’s analysis of whether to pursue such a claim on a client’s behalf.

The district court engaged in a thoughtful and thorough legal (and musical, for that matter) analysis of the issues presented in ruling on defendants’ motion to dismiss. Although the court’s efforts are truly commendable, it is troubling that the court and the parties had to get this far, including the significant time and money expended in reaching this obvious (and what should be inevitable) conclusion.

Will the mega stars now seek their attorneys’ fees to which they are likely entitled under 17 U.S.C. §505? Maybe it seems unjust in this case based on plaintiff’s financial status, but ability to pay is not commonly a part of the analysis in awarding attorneys’ fees. “Plaintiffs’ contention that the attorneys’ fees award was inappropriate because it will cause them financial ruin … is to no avail.” Vargas v. Pfizer, Inc., 352 Fed.Appx. 458, 460 (2d Cir. 2009). A sad case indeed.

 

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District Court Memorandum and Order by Judge Alison Nathan: PDF

Second Circuit Summary Order Affirming District Court Judgment: PDF