Sixth Circuit Gives Different Views On Infringement

Issuing two important copyright-infringement decisions, the U.S. Court of Appeals for the Sixth Circuit recently offered different methods for dealing with different types of disputed works. One case involved the film industry; the other involved the recording industry.

In the film case, the Sixth Circuit decided that the district court properly concluded that no reasonable jury could find that the defendants' film “Little Nicky” was substantially similar to the poem or screenplay “The Keeper,” written by the plaintiff. Stromback v. New Line Cinema, 02-2387. In its ruling, the Sixth Circuit clarified its recent adoption of a formal test for determining substantial similarity in copyright infringement cases. The district court had decided on a summary judgment ruling. After the ruling, the Sixth Circuit adopted a two-part test for substantial similarity in Kohus v. Mariol, 328 F.3d 848 (6th Cir. 2003). The first part of the test involves determining which parts of the plaintiff's work are protected by copyright; the second part involves whether the allegedly infringing work is substantially similar to the protectible elements.

In Stromback, the appeals court noted, “Our test is similar to the Ninth Circuit's test, because the first part, like the Ninth Circuit's extrinsic test, requires a determination of only the expressive elements of a work, while the second part, like the Ninth Circuit's intrinsic test, asks whether the ordinary, reasonable observer would find the works, taken as a whole, to be substantially similar. … However, significant differences remain in both parts. In particular, we apply a more stringent standard regarding when to allow expert testimony on the first part of the test. Also, … the first part of our test remains more free in form than the Ninth Circuit's extrinsic test.”

The Sixth Circuit went on to state that while the Ninth Circuit uses only the extrinsic test to rule on a summary judgment motion, the Sixth Circuit uses both parts of its test to determine substantial similarity on summary judgment. The Sixth Circuit then decided that remand wasn't necessary even though the Stromback district court hadn't directly used the second part of the Kohus test. The Sixth Circuit also held that remand wasn't necessary so as to allow consideration of expert testimony given that the case involves “a literary work aimed at a general audience.” Then after separating out the unprotectible elements, the appeals court concluded that “we are unable to find any similarity between the works other than at perhaps the most superficial level.” (The appeals court affirmed the district court's ruling on the other aspects of the case, including that Stromback's state claims for commercial misappropriation and for interference with prospective economic advantage were preempted by federal copyright law.)

When it comes to sound recordings, the Sixth Circuit requires no such two-part examination. Instead, noting, “we are announcing a new rule,” the appeals court determined in Bridgeport Music Inc. v. Dimension Films, 02-6521, that sampling any portion of a pre-existing sound recording constitutes infringement of the original work. This is the case even where the sampled recording is digitally altered and/or brief. (Here, two seconds were sampled from “Get Off Your Ass and Jam” by George Clinton, altered, then looped into the song “100 Miles and Runnin' ” in the film “ I Got The Hook Up.”)

Focusing on Sec. 114 of the Copyright Act of 1976, the appeals court warned that “a sound recording owner has the exclusive right to 'sample' his own recording. … Get a license or do not sample [someone else's copyrighted sound recording]. We do not see this as stifling creativity in any significant way. It must be remembered that if an artist wants to incorporate a 'riff' from another work in his or her recording, he is free to duplicate the sound of that 'riff' in the studio. Second, the market will control the license price and keep it within bounds. The sound recording copyright holder cannot exact a license fee greater than what it would cost the person seeking the license to just duplicate the sample in the course of making the new recording. Third, sampling is never accidental.”

Another sampling ruling by a federal appeals court was issued by the Ninth Circuit in Newton v. Diamond, 349 F.3d 591 (9th Cir. 2003). But after separating out what belonged to the sound recording and what was part of the musical composition, the court focused on the composition in ruling that the sample was a de minimis use by the defendants.

Issuing two important copyright-infringement decisions, the U.S. Court of Appeals for the Sixth Circuit recently offered different methods for dealing with different types of disputed works. One case involved the film industry; the other involved the recording industry.

In the film case, the Sixth Circuit decided that the district court properly concluded that no reasonable jury could find that the defendants' film “Little Nicky” was substantially similar to the poem or screenplay “The Keeper,” written by the plaintiff. Stromback v. New Line Cinema, 02-2387. In its ruling, the Sixth Circuit clarified its recent adoption of a formal test for determining substantial similarity in copyright infringement cases. The district court had decided on a summary judgment ruling. After the ruling, the Sixth Circuit adopted a two-part test for substantial similarity in Kohus v. Mariol , 328 F.3d 848 (6th Cir. 2003). The first part of the test involves determining which parts of the plaintiff's work are protected by copyright; the second part involves whether the allegedly infringing work is substantially similar to the protectible elements.

In Stromback, the appeals court noted, “Our test is similar to the Ninth Circuit's test, because the first part, like the Ninth Circuit's extrinsic test, requires a determination of only the expressive elements of a work, while the second part, like the Ninth Circuit's intrinsic test, asks whether the ordinary, reasonable observer would find the works, taken as a whole, to be substantially similar. … However, significant differences remain in both parts. In particular, we apply a more stringent standard regarding when to allow expert testimony on the first part of the test. Also, … the first part of our test remains more free in form than the Ninth Circuit's extrinsic test.”

The Sixth Circuit went on to state that while the Ninth Circuit uses only the extrinsic test to rule on a summary judgment motion, the Sixth Circuit uses both parts of its test to determine substantial similarity on summary judgment. The Sixth Circuit then decided that remand wasn't necessary even though the Stromback district court hadn't directly used the second part of the Kohus test. The Sixth Circuit also held that remand wasn't necessary so as to allow consideration of expert testimony given that the case involves “a literary work aimed at a general audience.” Then after separating out the unprotectible elements, the appeals court concluded that “we are unable to find any similarity between the works other than at perhaps the most superficial level.” (The appeals court affirmed the district court's ruling on the other aspects of the case, including that Stromback's state claims for commercial misappropriation and for interference with prospective economic advantage were preempted by federal copyright law.)

When it comes to sound recordings, the Sixth Circuit requires no such two-part examination. Instead, noting, “we are announcing a new rule,” the appeals court determined in Bridgeport Music Inc. v. Dimension Films, 02-6521, that sampling any portion of a pre-existing sound recording constitutes infringement of the original work. This is the case even where the sampled recording is digitally altered and/or brief. (Here, two seconds were sampled from “Get Off Your Ass and Jam” by George Clinton, altered, then looped into the song “100 Miles and Runnin' ” in the film “ I Got The Hook Up.”)

Focusing on Sec. 114 of the Copyright Act of 1976, the appeals court warned that “a sound recording owner has the exclusive right to 'sample' his own recording. … Get a license or do not sample [someone else's copyrighted sound recording]. We do not see this as stifling creativity in any significant way. It must be remembered that if an artist wants to incorporate a 'riff' from another work in his or her recording, he is free to duplicate the sound of that 'riff' in the studio. Second, the market will control the license price and keep it within bounds. The sound recording copyright holder cannot exact a license fee greater than what it would cost the person seeking the license to just duplicate the sample in the course of making the new recording. Third, sampling is never accidental.”

Another sampling ruling by a federal appeals court was issued by the Ninth Circuit in Newton v. Diamond , 349 F.3d 591 (9th Cir. 2003). But after separating out what belonged to the sound recording and what was part of the musical composition, the court focused on the composition in ruling that the sample was a de minimis use by the defendants.