Decision of Note: <b>Court Criticizes 'Mechanical' Use Of Extrinsic Test</b>

The U.S. Court of Appeals for the Ninth Circuit held that the district court erred in a “too mechanical” use of the “extrinsic” test by determining whether two song choruses were substantially similar through a measure-by-measure comparison of the melodies. Swirsky v. Carey, 03-55033.

To determine substantial similarity, the Ninth Circuit uses both an extrinsic test based on external, objective criteria and a subjective, layperson “intrinsic” test. The plaintiffs filed suit alleging that the song “Thank God I Love You,” co-written by Mariah Carey, infringed on the plaintiffs' “One of Those Love Songs,” recorded by the group “Xscape.” The district court granted summary judgment in favor of the defendants.

Reversing, the Ninth Circuit stated that “to disregard chord progression, key, tempo, rhythm, and genre is to ignore the fact that a substantial similarity can be found in a combination of elements, even if those elements are individually unprotected.”

The appeals court also ruled that the district court erred in finding that the testimony of the plaintiffs' expert witness, who focused on how the two choruses sounded to his ears, was intrinsic, rather than extrinsic, and that two of the plaintiffs' measures were unprotectable scenes a faire.

The U.S. Court of Appeals for the Ninth Circuit held that the district court erred in a “too mechanical” use of the “extrinsic” test by determining whether two song choruses were substantially similar through a measure-by-measure comparison of the melodies. Swirsky v. Carey, 03-55033.

To determine substantial similarity, the Ninth Circuit uses both an extrinsic test based on external, objective criteria and a subjective, layperson “intrinsic” test. The plaintiffs filed suit alleging that the song “Thank God I Love You,” co-written by Mariah Carey, infringed on the plaintiffs' “One of Those Love Songs,” recorded by the group “Xscape.” The district court granted summary judgment in favor of the defendants.

Reversing, the Ninth Circuit stated that “to disregard chord progression, key, tempo, rhythm, and genre is to ignore the fact that a substantial similarity can be found in a combination of elements, even if those elements are individually unprotected.”

The appeals court also ruled that the district court erred in finding that the testimony of the plaintiffs' expert witness, who focused on how the two choruses sounded to his ears, was intrinsic, rather than extrinsic, and that two of the plaintiffs' measures were unprotectable scenes a faire.