39 U.S.P.Q. 2d 1052 (S.D.N.Y. 1996)
Rene Santrayll and Michael Walker “The Legend”
Stanley Kirk Burrell “The Hammer”
Pepsi Ad featuring “Hammer”
Comment by Charles Cronin
“Uh-Oh” – one of the most worrisome consecutive two syllables in the English language, and likely the mildest epithet uttered by the defendants upon learning that District Judge Peter Leisure rejected their demand for summary judgment in this dispute. The plaintiff, a rap music performer calling himself “The Legend” alleged that defendant copied a syncopated repetition of the expression “uh-oh” that plaintiff’s had used in a recording he made that preceded that of Stanley Kirk Burrell — the defendant working under the rap moniker “The Hammer”. No doubt deep-pocketed Pepsi-Cola’s use of the defending work in a television advertisement provided plaintiff a tantalizing incentive to litigate this matter, despite the fragility of the basis of the claim – namely “uh-oh” iterated several times in sing-song fashion. The insignificance of the “musical” content in dispute did not dissuade the court on the question of its copyrightabiliy. The creative expression to support a copyright claim in a work need be no more than “a dash” said the court. Compare this finding to what a Missouri district court held in 1956 in the case of Smith v. Muehlebach Brewing that involved a dispute over similarly minimal musical content (repetition of two notes to the expression “tic toc”).
Opinion by Judge Peter Leisure
This action alleges (i) copyright infringement arising under 17 U.S.C. § 501 et seq.; (ii) violations of the Lanham Act, 15 U.S.C. § 1125(a); and (iii) related state law claims of unfair competition, false advertising, and deceptive acts and practices. All of these claims are based on the allegation that defendant Stanley Kirk Burrell (“Hammer”) copied the extended syncopated repetition of the phrase “uh-oh” which appears in two of plaintiffs’ copyrighted songs in his song “Here Comes the Hammer.” Before the Court are motions for summary judgment by defendants Capital Records, Inc., Pepsico, Inc., and Jack Schwartz Shoes, Inc. Because the Court finds that a reasonable jury could find for the plaintiffs, the Court denies the motions.
Summary judgment shall be granted “if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits … 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). “[T]he 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 (1986) (emphasis in original). While the court must view the inferences to be drawn from the facts in the light most favorable to the party opposing the motion, Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986), a party may not “rely on mere speculation or conjecture as to the true nature of the facts to overcome a motion for summary judgment.” Knight v. U.S. Fire Ins. Co., 804 F.2d 9, 12 (2d Cir. 1986), cert. denied, 480 U.S. 932 (1987). The non-moving party may defeat the summary judgment motion by producing sufficient specific facts to establish that there is a genuine issue of material fact for trial. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). Lipton v. Nature Co., 71 F.3d 464, 469 (2d Cir. 1995) (parallel citations omitted).
I. The Copyright Claim
“A successful claim of copyright infringement pursuant to the Copyright Act, 17 U.S.C. § 501 et seq., requires proof that (1) the plaintiff had a valid copyright in the work allegedly infringed and (2) the defendant infringed the plaintiff’s copyright by copying protected elements of the plaintiff’s work.” Id.
The validity of plaintiffs’ copyright registrations in their two songs is not disputed. Defendants, however, argue that the relevant portion of the songs, the one measure “hook,” consisting of the word “uh-oh” repeated four times to a particular rhythm, is not protectible. Since the law protects authors’ exclusive rights to their works, the cornerstone of that law is that the work protected must be original. Thus, that a whole work is copyrighted does not mean that every element of it is copyrighted; copyright protection extends only to those components of the work that are original to the creator. But the quantity of originality that need be shown is modest — only a dash will do. Rogers v. Koons, 960 F.2d 301, 307 (2d Cir.) (citations omitted), cert. denied, 506 U.S. 934 (1992). The Court finds that the repetition of the non-protectible word “uh-oh” in a distinctive rhythm comprises a sufficiently original composition to render it protectible by the copyright laws. The Court notes in this respect that this composition — the hook — was the part of the “Here Comes the Hammer” song that licensee Pepsico chose to use in its television advertisement, which lends support to plaintiffs’ position that even a combination of two otherwise unprotectible elements can create a sufficiently original, and indeed, commercially marketable composition.
“Since direct evidence of copying is seldom available, ‘[c]opying may be inferred where a plaintiff establishes that the defendant had access to the copyrighted work and that substantial similarities exist as to protectible material in the two works.”‘ Lipton, 71 F.3d at 471 (quoting Walker v. Time Life Films, Inc., 784 F.2d 44, 48 (2d Cir.), cert. denied, 476 U.S. 1159 (1986)). Alternatively, where two works are strikingly similar, copying can be inferred without proof of access. See id. The issue of copying, however, is a question of fact to be left to the jury where reasonable minds could differ. See id.
1. Striking Similarity. — Although plaintiffs’ expert witness did not use the phrase “strikingly similar” in comparing the two works, based on the expert testimony and an aural review of plaintiffs’ and Hammer’s hooks, see Sylvestre v. Oswald, No. 91 Civ. 5060 (JSM), 1993 WL 179101, at *4 (S.D.N.Y. May 18, 1993) (denying summary judgment because reasonable juror could find striking similarity based on expert testimony and review of the works themselves), the Court finds that a reasonable jury could find that the two are strikingly similar. Accordingly, the Court must deny summary judgment on the issue of copying.
2. Access and Substantial Similarity. — Even if the Court had concluded that no reasonable juror could find striking similarity, the Court would find that a reasonable juror could find that Hammer had reasonable access to plaintiffs’ work. The work was not widely disseminated, but it was distributed to many acquaintances of Hammer’s in the rap music industry. These links are somewhat attenuated, see Gaste v. Kaiserman, 863 F.2d 1061, 1067 (2d Cir. 1988) (theory of access may be attenuated), but the combination of many of these somewhat attenuated links combine to allow a reasonable juror to infer reasonable access. See Sylvestre, 1993 WL 179101, at *4. Of course, it necessarily follows from the Court’s finding regarding striking similarity that a reasonable jury could find substantial similarity, and thus could find copying.
C. Independent Creation
Defendants’ present evidence that Hammer independently created his hook. However, this evidence does not establish the absence of a genuine issue of material fact, but simply raises another issue for jury determination.
In sum, because a reasonable jury could find, based on the evidence presented, that the plaintiffs’ hook was original and that Hammer copied it, defendants’ motions for summary judgment on the copyright claims are denied.
II. Lanham Act Claim
Defendants have also moved for summary judgment on plaintiffs’ unfair competition claim under §43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Subsection (A) of 15 U.S.C. § 1125(a) (1) prohibits any misrepresentation likely to cause confusion as to the source or the manufacturer of a product. Plaintiffs claim that by labeling Hammer’s song as created by Hammer, defendants engaged in the prohibited practice of “reverse passing off” by attempting to sell plaintiffs’ “uh-oh” motif. Because there is no genuine issue of material fact as to at least one essential element of a reverse passing off claim, defendants’ motions for summary judgment are granted as to the Lanham Act claim. A successful claim for “reverse passing off” under the Lanham Act requires that the plaintiff prove (1) that the work at issue originated with the plaintiff; (2) that origin of the work was falsely designated by the defendant; (3) that the false designation of origin was likely to cause consumer confusion; and (4) that the plaintiff was harmed by the defendant’s false designation of origin. Lipton, 71 F.3d at 473.
Plaintiffs’ have submitted insufficient proof to create a genuine issue of material fact as to the fourth element of their Lanham Act claim. Although this case has been bifurcated, and therefore the amount of plaintiffs’ damages, if any, is not before the Court, this fourth element of Lanham Act claim must be satisfied, because where, as here, there is no demonstrable harm, the claim must fail even though if there were harm, the amount of that harm would be determined at a later date. See Grambs v. Image Bank, Inc., No. 90 Civ. 7291 (PKL), 1991 WL 84638, at *2 & n.2 (S.D.N.Y. May 16, 1991) (Leisure, J.) (fourth element may be viewed as a limitation on standing). If plaintiffs’ claims of copying are true, they were deprived of the fame that attended Hammer’s “Here Comes the Hammer” song. However, in a commercial sense, they were not harmed, because they had attempted to sell their songs, with their “uh-oh” motif, and had not succeeded, prior to Hammer’s marketing of his song with an “uh-oh” motif. The alleged misdesignation by Hammer that he was the sole creator of his song, then, did not cause harm to defendants, because their songs were considered on their own merits and were commercially unsuccessful. Any injury that they have suffered by Hammer’s alleged copying can be remedied by their copyright claim, and they have come forward with no proof of competitive or commercial injury that is separately cognizable as a violation of the Lanham Act. See Merchant v. Lymon, 828 F. Supp. 1048, 1060 (S.D.N.Y. 1993) (“[P]laintiffs have failed to prove that they suffered injury to any interest protected by Section 43(a).”), amended, 848 F. Supp. 29 (1994).
III. State Law Claims
Plaintiffs have also sued under N.Y. Gen. Bus. Law § § 349 and 350 for unfair competition, false advertising, and deceptive acts and practices. In order to establish a claim under either section, a plaintiff must show (1) that the act or practice was misleading in a material respect, and (2) that the plaintiff was injured. See Ortho Pharmaceutical Corp. v. Cosprophar, Inc., 32 F.3d 690, 697 (2d Cir. 1994). As in a Lanham Act claim, the injury required is of a specific type, that is, a consumer might be injured by being deceived, and a competitor might be injured by deception of that competitor’s customers. Therefore, for the same reason plaintiffs cannot prevail on their Lanham Act claims, their state law claims must fail. Accordingly, summary judgment is granted for defendants as to the state law claims.
For the reasons stated above, defendants’ motions for summary judgment (i) on plaintiffs’ copyright claim are HEREBY DENIED, (ii) on plaintiffs’ Lanham Act claim are HEREBY GRANTED, and (iii) on plaintiffs’ state law claims are HEREBY GRANTED. The parties shall appear for a pretrial conference in this matter on April 26, 1996 at 11:30 a.m. SO ORDERED.