From Ireland to Iceland to Groban? Supreme Court Leaves Circuit Split on Approach to Assessing Substantial Similarity of Copyrighted Works | Proskauer – mind your own business


The U.S. Supreme Court recently denied certiorari in Johannsongs-Publishing, Ltd. vs. Peermusic Ltd., et alending copyright infringement lawsuit over Josh Groban’s 2003 song You lift me up. Notably, by refusing to hear a challenge to the Ninth Circuit’s ruling that Groban’s song was not infringing, the Court left in place a divided circuit as to the applicable test for assessing substantial similarity between two works of author.

Petitioner Johannsongs owns the copyright to the 1977 Icelandic song Söknuður, which according to Johannsongs is Iceland’s “most famous” and “best selling” song. Johannsongs filed a lawsuit in 2018 against several companies involved in publishing and selling Groban’s song, including UMG Recordings and Warner Bros. Records, specifically alleging that the melody and lyrical themes of You lift me up violated the Icelandic move.

The defendants successfully sought summary judgment. The district court referred to the two Ninth Circuit tests that a plaintiff must meet for the work to be substantially similar: the “intrinsic test,” which “tests[s] for similarity of expression from the point of view of the ordinary reasonable observer, without the aid of an expert”, and the “extrinsic criterion”, which “compares the objective similarities of specific expressive elements in the two works and often requires expert analysis”. However, since the district court noted that only the extrinsic test can be applied at the summary judgment stage (jurors at trial being deemed to best represent the “reasonable observer” necessary for the intrinsic test), its decision was only based on the extrinsic test. test, taking into account the duels of expertise proposed by the parties.

The main reason the district court sided with defendants’ expert report over Johannsongs’ is that, in the court’s view, only defendants’ expert had properly “screened” the prior art. Since findings of substantial similarity cannot be based on unprotectable elements of a work (such as elements derived from works that are in the public domain), the extrinsic test requires courts to screen out such unprotectable elements. protectable before assessing similarity. Basically, the defendants’ expert pointed out that the sequence of 8 notes in Söknuður which Groban’s song is said to have shared was actually derived from late 19th and early 20th century Irish folk tunes Londonderry Air and boy Danny, both of which are in the public domain. Johannsongs’ expert, rather than completely eliminating these derived elements from his analysis, counted the number of similarities between Söknuður and Groban’s song and compared that tally to the number of similarities between the songs at issue and the prior art – an approach the court found “unhelpful” and “impermissible”.

Johannsongs then appealed the summary judgment decision to the Ninth Circuit, which upheld the district court’s order in a brief unpublished notice. In Johannsongs’ motion for certiorari to the Supreme Court, he called on the Court to weigh in on a split between the circuits as to the proper test of substantial similarity. He urged the Court to take the approach of the Second Circuit (which is followed by the Third, Fifth, and Seventh Circuits) which primarily asks whether a lay observer would consider the two works to be substantially similar. Although the second circuit approach still requires “more discerning” investigation when comparing works that contain both copyrightable and non-copyrightable material (i.e., still requires assessing whether protectable elements, taken in isolation, are substantially similar), it does not fully align with the Johannsongs-Publishing, Ltd. the district court judge’s decision to screen derivative material entirely out of the investigation. Instead, the Second Circuit approach examines the “total concept and mood” of the works.

The Second Circuit approach, according to Johannsongs, is superior to the intrinsic/extrinsic approach of the Ninth Circuit (as well as the Fourth and Eighth Circuits) when dealing with musical works, because it avoids experts “dissecting “analytically the works into separate components. . And drawing on some of the Supreme Court’s discussions in the 2021 Google vs. Oracle Am., Inc.. opinion, Johannsongs further argued that the substantial similarity test should not necessarily be the same for different types of works of authorship. Johnansongs wrote: The Ninth Circuit has “passed a judicially created test in the context of whether a McDonald’s ad infringed the copyright of HR Pufnstuf’s children’s television show. . . and assumed that they should follow the same procedure with regard to a musical composition.

Although the Supreme Court leaves this particular circuit division in place, it will nevertheless deal with the disagreement between the lower courts regarding copyright law this term. In Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmiththe Court examines the question of how courts should assess whether a work of art is “transformative” for the purposes of fair use under the Copyright Act.

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