No. 90 Civ. 6356 (KC) (1991 U.S. Dist. LEXIS 10649 (S.D.N.Y. July 19, 1991)
Proposed Theme Music for “Sally Jesse Raphael Show”
Theme Music for “Sally Jesse Raphael Show”
Comment by Charles Cronin
Another short stroll down memory lane – this time into the realm of 1980’s television dreck that augured Jerry Springer’s even more savory fare in the 90’s – and specifically the music of Sally Jesse Raphael’s (née Sally Lowenthal) talk show. Were I the plaintiffs in this case I might be upset by Judge Conboy’s opinion (below) on a couple of fronts. I agree with the end result in favor of defendants, but not entirely with the musical analysis the court used to justify its decision.
The court states: “[a] fair reading of plaintiffs’ [claim] . . . is that defendant copied one note from them – the 5 following the 1 – lower 6″ [my emphasis]. The crux of the plaintiff’s claim is a three-note motive (1 – lower 6 – 5 . . . e.g. C – A – G). The court identified, however, an entirely distinct motive in a version of the defendants’ composition written prior to the plaintiffs’ in finding the similar minor-third skip down (1 – lower 6) to justify the reduction of the plaintiffs’ claim to a single note. In fact, the skip that the court identifies in the defendants’ work occurs in the middle of a five-note motive that has a rhythmic pattern entirely different than the motive on which the plaintiffs based their claim. The court’s valiant though iffy attempts at musical analysis bring to mind the note-counting evidence one finds particularly in earlier music copyright infringement cases in which judges seemed obligated somehow to shore up their holdings with quantitative material.
Opinion by Judge Kenneth Conboy
Plaintiffs Gerard McDonald and Scott Fishkind bring this copyright infringement action against Multimedia Entertainment, Inc. (“Multimedia”). Plaintiffs allege that the theme music for the “Sally Jesse Raphael Show” (“Sally”), a television program produced and syndicated by Multimedia, contains substantial material copied from a short musical composition which plaintiffs had composed and submitted to Multimedia for possible use in connection with a planned promotional campaign for “Sally”. Cmpl’t para. 13. Before us is Multimedia’s motion for summary judgment. Multimedia contends that plaintiff can make no showing that the composer of the “Sally” theme music had any access to plaintiffs’ composition, that there are no similarities between the two works probative of copying, that in any event there is no similarity between the two works substantial enough to support a finding of infringement, and that plaintiffs attempted to mislead the Copyright Office, rendering them ineligible to enforce the copyright in their composition. For the reasons set forth below, we find, as a matter of law, that there is no substantial similarity between plaintiffs’ composition and the “Sally” theme music sufficient either to provide an inference of copying or to support a finding of unlawful appropriation. There is therefore no need to rule on the access issue.
While several factual matters concerning the access issue are contested, the following information, set out as background, is not in dispute. In March and April 1989, personnel of Multimedia, the “Sally” show, and an advertising agency retained by Multimedia, developed ideas and themes for a summer promotional campaign for the “Sally” show. A slogan was selected — “Sally, She Opens Your Eyes” — ideas for the campaign were refined, and the advertising agency, Miller Barnes Creative, hired, with Multimedia’s approval, an established commercial song-writer, Dan Radlauer, to compose a jingle for a series of promotional television commercials. In early May, Radlauer composed and recorded five different “rough-cut” jingles, and sent a tape of them to Miller Barnes (Multimedia Audio Exhibit 1). The producer of “Sally” and a Multimedia executive selected one of the proposed jingles (“the original Radlauer jingle”). Thereupon, Radlauer created four different versions of that jingle for use with the television commercials (Multimedia Audio Exhibit 2), and submitted them to Miller Barnes and Multimedia in mid-May. The commercials were completed in mid-June.
Sometime in late April to early May, plaintiff McDonald was told by Tracey McCarthy, an employee of Multimedia and an acquaintance and moonlighting co-worker of McDonald, that Multimedia was intending to launch a promotional campaign for “Sally” which would include television commercials with the slogan “Sally, She Opens Your Eyes.” McDonald, an aspiring jingle-writer, sometime thereafter submitted a tape containing two jingles using the slogan. McCarthy and at least one other Multimedia employee listened to the tape. Plaintiffs registered the two jingles with the Copyright Office, and claim that the second jingle (included in Karmen Audio Exhibit 1) was infringed by Multimedia.
After the commercials were completed, Multimedia decided to commission new theme music for the “Sally” show. Multimedia hired Radlauer who, with some direction from Multimedia, modified and extended his original jingle to create theme music. Radlauer recorded and submitted a three-minute-long version of the theme music, along with a 30 second version and a 20 second version, at various tempi. Upon hearing the theme music during a broadcast of “Sally”, plaintiffs became concerned that the music sounded similar to the jingle they had submitted to Multimedia, and eventually filed this action. Radlauer avers that he has never heard plaintiffs’ composition, and that he received only very minimal guidance and direction from Multimedia or Miller Barnes.
Though the requirements for a showing of copyright infringement have been stated in various formulations, see, e.g., Folio Impressions, Inc. v. Byer California, F.2d , No. 90-9005, slip op. at 5942, 5947-48 (2d Cir. June 27, 1991); Walker v. Time Life Films, Inc., 784 F.2d 44, 48, 51-52 (2d Cir. 1986); Warner Bros. v. American Broadcasting Companies , 720 F.2d 231, 239-40 (2d Cir. 1980); Hoehling v. Universal Studios , 618 F.2d 972, 977 (2d Cir. 1980); Latman, “Probative Similarity” as Proof of Copying: Toward Dispelling Some Myths in Copyright Infringement, 90 Colum. L. Rev. 1187 (1990), they can be stated in essence as follows: There is a two prong test for a showing of copyright infringement. 1 Plaintiffs must show (1) that defendant copied their work, and (2) that the copying was illicit in that defendant’s work is “substantially similar” to plaintiffs’ — i.e. that defendant’s work unlawfully appropriates plaintiffs’ protected creative expression in that it contains a substantial degree of similarity to copyrightable elements of plaintiffs’ work. The first prong — copying — may be shown by direct or indirect evidence. Indirect evidence supporting a finding of copying would include defendant’s access to plaintiffs’ work plus a degree of similarity between the works that would tend to establish the act of copying as opposed to independent creation — what Professor Latman calls “probative similarity”. Evidence admissible on the issue of “probative similarity” includes expert testimony “dissecting” the two works and discussing the works’ relationships to other earlier works, for the purpose of illuminating whether similarities between the two works are more likely due to copying or independent creation.
The second prong of the test, “unlawful appropriation”, is “judged by the spontaneous response of the ordinary lay [listener]” Walker, 784 F.2d at 51, and in the determination of this issue consideration of expert testimony is usually improper. Id. “The test asks 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.'” Folio, at 5948, (quoting Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960)). For the second prong it is essential that the similarity relate to copyrightable material. Id. A defendant is not liable for infringement even if he copies, if the copied material is not protectable. Summary judgment based on the second prong is proper only if “the lack of substantial similarity between the protectable aspects of the works [is] ‘so clear as to fall outside the range of disputed fact questions’ requiring resolution at trial.” Walker, 784 F.2d at 48 (quoting Warner Brothers, 720 F.2d at 239. To the extent that the parties address the first prong — copying — by means of “probative similarity,” a similarly stringent test must be applied by the court on summary judgment on that issue.
Here, even if we assume that plaintiff could demonstrate access, a comparison of the two works reveals absolutely no “probative similarity” which would support an inference of copying. Further, no reasonable jury could find “illicit copying” or “unlawful appropriation” here, because the alleged infringement is of one rather unimportant note in an otherwise entirely dissimilar composition. 2
It is important to understand the precise nature and scope of plaintiffs’ claim as particularized in their opposition papers. Plaintiffs make no claim that the original Radlauer jingle was copied from their composition, but focus only on the theme music for the “Sally” show itself. See Cmpl’t para. 13; Opp. Memo at 8, 12-13, 16 n.4. Moreover, plaintiffs focus exclusively on one three-note sequence (1 – lower-6 – 5) which occurs once in plaintiffs’ jingle and recurs several times in the Sally theme music.
The most salient and important portion of both the Visual Music Composition and the Sally Theme Music is the hook, which in the Visual Music Composition contains the music for the chorus (Karmen Affid. paras. 10 and 21). It is precisely that rendition of the hook, which is identical to plaintiffs’ composition and which did not exist in the first set of Dan Radlauer’s jingles, which plaintiffs allege was copied by defendant from their Visual Music Composition.
Opp. Memo at 3 (emphasis added).
It is the ‘hook’, of defendant’s work, which is the salient and most critical feature, and which is identical to the hook in plaintiff’s composition (Karmen Affid. paras. 9-10). The fact that this hook contains few notes is immaterial since those three notes are what are the most memorable and salient part of both parties’ works, and [the taking of which] … should be considered a substantial taking.
Id. at 16-17 (emphasis added).
Plaintiffs’ specification of “those three notes,” (the 1 – lower-6 – 5 sequences, labeled “Motive 1” by defendant’s expert, Judith Finell) makes express what is implicit in their reference to “that rendition of the hook … which did not exist in the first set of Dan Radlauer’s jingles.” The second part of the “chorus” of Radlauer’s jingle (3 – 2 – 1 – lower-6 – 1, or “Motive 2”) did indeed exist in the original Radlauer’s jingle and was later included in the television commercials (with some slight variations) and the theme music.
A fair reading of plaintiffs’ papers and the affidavit of their expert, thus reveals that a) plaintiffs’ theory is that defendant’s theme music unlawfully appropriates plaintiffs’ “1 – lower-6 – 5” sequence, and b) plaintiffs do not challenge defendant’s television jingles which indisputably used a “1 – lower-6” sequence in the identical context as the theme music. In other words, plaintiffs are complaining that defendant copied one note from them — the 5 following the 1 – lower-6. 3
As a matter of law, defendant’s use of the third note in the sequence does not constitute substantial (“probative”) similarity which would support an inference of copying. First, as Finell points out in her supplemental declaration at paras. 9, 10, the offending note was present in Radlauer’s original jingle, and in some versions of the television jingles based on the original jingle. The note was present, as the root note of a chord, in the original jingle in the same sequence and rhythm as it ultimately appeared in the theme music. In all four versions of the television jingle, following the 1, lower 6 sequence (to which was set the sung word “Sally”), there was a quarter-note beat. The complained-of “5” note in the theme music is situated on that beat.
Second, plaintiffs’ 1 – lower-5 – 6 sequence is itself included only as one voice in a vocalized harmonic progression. Thus, plaintiff would have a fact-finder infer copying from the use of a note which was present in a chord in defendant’s original work and was also present as one note in a harmony in plaintiff’s composition. The absurdity of this contention is underscored here because the particular note on which plaintiff focuses — a 5 following a 1 – lower-6 progression — is a common and much-used tone in traditional western music (as is indeed the entire three note sequence). See Finell Supp. Decl. at paras. 5, 16-18. No inference of copying can be supported by such a less-than-insubstantial reed.
Even if evidence of copying could be found here, 4 “no reasonable jury, properly instructed, could find that the two works are substantially similar,” Warner Bros. v. American Broadcasting Companies , 720 F.2d 231, 240 (2d Cir. 1983), and defendant is thus entitled to summary judgment based on the “unlawful appropriation” prong of the infringement test. While we recognize that taking even a small amount of an original work can constitute copyright infringement if that portion is qualitatively significant, Horgan v. Macmillan, Inc., 789 F.2d 157, 162 (2d Cir. 1986); Elsmere Music, Inc. v. National Broadcasting Co., 482 F. Supp. 741, 744 (S.D.N.Y.), aff’d, 623 F.2d 252 (2d Cir. 1980), 5 no reasonable juror would “be disposed to overlook [the differences between the two works] and regard their aesthetic appeal as the same,” Folio Impressions, slip op. at 5948, nor could a reasonable juror conclude that “an average lay observer would recognize the alleged copy as having been appropriated from the copyright work.” Ideal Toy Corp. v. Fab-Lu Ltd., 360 F.2d 1021, 1022 (2d Cir. 1966).
We have listened carefully and repeatedly to plaintiffs’ jingle and to the various versions of the “Sally” theme, as well as to the “Sally” television jingles. The two works 6 share a musical idiom, the use of a saxophone as a lead instrument, similar tempi, a common and unexceptional three-note sequence, and the use of five notes to set the penta-syllabic lyric “she opens your eyes.” These similarities taken together could not be considered “substantial” by any reasonable jury, in light of the fundamental and pervasive differences in melody, harmony, scoring, and structure between the two works. 7 Thus, even if any of shared elements were copyrightable — an extremely dubious assumption — no finding of unlawful appropriation could be supported here.
For the foregoing reasons, defendant’s motion for summary judgment is granted. The Clerk of the Court is directed to enter judgment accordingly.
1 Of course, in order to succeed on an infringement claim, a plaintiff must also establish that it owns a valid copyright. Defendant here contends that plaintiffs’ copyright is unenforceable because the certificate of copyright registration completed by Fishkind and McDonald was deceptive in that it claimed rights to defendant’s lyric “Sally, she opens your eyes.” While it is not necessary to resolve this issue in light of our grant of summary judgment to defendant on other grounds, we note that this contention appears meritless. It is true that on the space on the form notated “Nature of this Work” plaintiffs wrote “Lyrics and Music”. Under a subsequent heading, however, “Nature of Authorship: Briefly describe nature of the material created by this author in which copyright is claimed,” each plaintiff wrote, “Co-author of music”. Def. Ex. 10 (emphasis added). There is thus no indication that plaintiffs attempted or intended to mislead the Copyright Office that they had created he Lyric.
Defendant has moved, as part of its motion for summary judgment, for a declaration that “plaintiffs’ copyright in the lyrics to their music … is cancelled and of no effect.” (Defendant’s Memo at 36.) As we noted above, we do not believe that the copyright registration did in fact create any such rights. In any event, we note that there is no dispute that Multimedia created the slogan, and plaintiffs have renounced any claim to rights in the lyrics. See Opp. Memo at 18; McDonald Affid. at para. 12, n.1. We nonetheless decline to grant the relief requested by defendant; no counter-claim has been filed by defendant in this action, the relief sought was requested only as part of the summary judgment motion. Moreover, defendant has made no showing that this Court has the authority to grant such a remedy under federal copyright law, or that there is an impending actual controversy over the rights to the lyrics as is required to support the issuance of a declaratory judgment.
2 Though we need not and do not decide the issue, we observe that it is extremely doubtful that that single note and its placement in the composition is copyrightable.
3 Although portions of Karmen’s affidavit can be read as suggesting that plaintiffs’ hear other similarities between their work and the theme music, see Karmen Affid. at paras. 21, 23, 26, plaintiffs’ memorandum of law makes their theory (a theory which remains the main thrust of the Karmen affidavit, id. at paras. 20, 24) abundantly clear.
4 Perhaps an inference of copying — though a weak one — could be drawn if we were to ignore plaintiffs’ express theory of their own case, and rely on the observations of plaintiffs’ expert, Steve Karmen, that the “Sally” theme music “uses a saxophone as well as the same type of synthesizer ‘bell-type’ sound as is used on the Visual Music Composition [unlike the instrumentation in the television jingles]. The overall rhythm and tempo of the Multimedia Sally Theme is identical to that of the Visual Music Composition.” Karmen Affid. at para. 21. We are not inclined to reshape plaintiffs’ preferred theory, and express no opinion on whether the superficial similarities noted by Karmen would be sufficient to create an issue of fact on the “probative similarity” question in the face of Finell’s well-reasoned and thorough analysis of the melody (pitch and rhythm), melodic contour, structure and structural function, harmony and harmonic rhythm, and arrangement and style of the two works, from which she concludes that there are no significant similarities between the two works, and that there is no indication that the “Sally” theme was copied from the plaintiff’s jingle.
5 For purposes of this motion, we accept plaintiffs’ characterization of the “hook” of defendant’s work as the three note sequence, which plaintiffs claim was copied, rather than the following five-note sequence (which defendant’s expert identifies as the hook). We note however, that according to the definition by plaintiffs’ own expert (“the portion of the music that is most often heard, and the musical identity which the public will most easily remember,” Karmen Affid. at para. 9), the hook of the “Sally” theme seems instead to be the five-note sequence. That is the sequence which is more frequently repeated and is, to our ears, at least, more memorable.
6 For the purpose of this motion, we have, as urged by plaintiff, concentrated our listening on the 20- and 30- second versions of the “Sally” theme music, rather than on the 3-minute version. Our conclusion would be no different had we concentrated on the longer version.
7 While we express no opinion on whether elements other than the “one note” suffice to establish “probative similarity” from which copying may be inferred, see note 4, supra, consideration of the two works in their totality is helpful to resolution of the “unlawful appropriation” test which plaintiffs would need to meet even if they could prove copying.