CHAPTER
2
INTRODUCTION
TO COPYRIGHT LITIGATION
Because the Constitution grants
Congress authority over copyright, the states are precluded from writing laws
on the subject.[1] Copyright infringement therefore presents a
federal question, one that arises under the laws of the United States. A copyright owner who wants to bring an
action for infringement must file in federal court.[2] A summary of the procedures involved will
prepare the reader to understand the role of expert witnesses in infringement
litigation.
In the federal court system, the
lines of authority can be visualized simply enough. Trial courts are known as district courts. Each state has within it at least one federal
judicial district, and more populous states have several. District court decisions may be appealed to
the appropriate circuit court (sometimes called the court of appeals). Eleven circuits are composed of several
states each, and a twelfth covers the District of Columbia. A specialized Federal Circuit was
established in 1982 to hear patent appeals from the district courts and the
Patent and Trademark Office.[3] A party dissatisfied with a circuit court
decision may seek review in the U.S. Supreme Court through a writ of
certiorari. The Supreme Court may grant
the writ or deny it at its discretion.
The Supreme Court often decides to hear a case when the circuits have established
differing precedents. The Supreme Court
rarely hears copyright cases, however, because the circuits are in substantial
agreement on the proper tests for infringement.
Pre-Trial Procedure
A
lawsuit begins with the filing of a complaint.[4] A defendant named in the complaint must file
an answer. Answers may include
counterclaims against the plaintiff or cross-claims against a fellow defendant
or third party. The complaint and
answers are known collectively as the pleadings. Complex litigation may involve numerous parties in various
relationships, straining one's ability to track the cast of characters. Infringement suits often include composers,
performers, publishers, and arrangers, sometimes on both sides; but the
relative infrequency of cross-claims makes it possible in most cases to refer
to plaintiffs and defendants without further clarification.
Federal courts require only notice
pleadings. Unlike many state courts, a
plaintiff need not explain the details of his case. The complaint must contain a short and plain statement of the
claim showing that the plaintiff is entitled to relief.[5]
Federal court rules contemplate
extensive discovery of the other side's case.[6] Each party must answer the written
interrogatories of the other side. Any
document that has the slightest possible relevance must be produced on
request. Potential witnesses must be
identified and subjected to pre-trial depositions taken under oath. Each side will discover the materials the
opposing expert witnesses will use and authorities on which they will rely.[7] Parties then may amend their pleadings to
conform to new evidence discovered.[8] The discovery process may drag on for years
and involve enough documents to fill a warehouse.[9]
When the trial finally begins,
each side should have equal knowledge of the facts. A document requested cannot be introduced into evidence by one
who refused to produce it in discovery.
The witness whose trial testimony deviates from his deposition will be
exposed as a liar. Although a lawyer
may not force his opponent to disclose strategy, the arsenal of facts will be
available equally to both sides.
Either side may move for summary
judgment before trial on the grounds that no genuine issue of material fact
exists.[10] If the court finds that no reasonable juror
could disagree on the relevant facts, then there is no reason to proceed to
trial.[11] The court may also grant a partial summary
judgment, finding that some issues can be determined as a matter of law and
narrowing the inquiry necessary for a resolution.[12] Summary judgment serves judicial economy and
protects parties to litigation from frivolous claims. If the court grants summary judgment, it is a final determination
of the dispute; therefore, it can be appealed.
Summary judgment, in essence, cuts the process short; it tells one side
that its case, or part of its case, does not warrant submission to a jury. The standards required for summary judgment
cannot be explained adequately by simple reference to the Rules, and it lies
beyond the scope of this topic to explore all of the implications of summary
judgment as it relates to infringement cases.
The circuits are not in total agreement, and the standards continue to
shift. A case involving summary judgment,
Baxter v. MCA, Inc.,[13]
will be discussed in greater detail in Chapter Four.
Trial Procedure
The
trial judge decides questions of law.
He interprets the statutes and applies the rules of evidence and
procedure. The trier, or decider, of
fact plays a different role. Whether
judge, in the case of bench trial, or jury, the trier of fact weighs the
evidence and assesses the credibility of witnesses. Therefore, potential jurors are examined to ensure their
impartiality. In most federal courts,
the judge examines the potential jurors by posing questions submitted in
advance by the attorneys.[14] A juror believed to be unfit by either party
may be challenged "for cause."
A limited number of peremptory challenges may also be exercised by each
party without showing cause. The
parties may stipulate a jury of less than twelve members or that a verdict be
reached with less than unanimity.[15]
Opening statements provide an
opportunity for each side to present its theory of the case and preview the
evidence. The plaintiff's "case in
chief" then unfolds through the calling of witnesses to the stand.[16] Plaintiff must introduce evidence through
this testimony sufficient to prove the facts necessary to enable him to
recover.[17] Exhibits must be identified and
authenticated by the witness. The party
calling the witness conducts a direct examination in which non-leading
questions are asked to elicit in the witness's own words information known to
him firsthand. Opposing counsel will
then cross-examine the witness. Leading
questions are allowed, and an effective cross-examination often depends on
confining the witness to one-word responses.
The cross-examiner seeks admissions that cast doubt on the witness's
direct testimony, either on the facts or the witness's truthfulness. The party calling the witness may re-question,
or re-direct, in order to clarify points raised on cross-examination.
Plaintiff "rests" at the
end of this case in chief. The
defendant will probably move for a directed verdict, claiming that the
plaintiff has failed to prove an essential element of his case.[18] The question put before the judge on a
motion for directed verdict is a purely legal one: whether enough evidence was
presented by the plaintiff to make an issue for the jury.[19] If the plaintiff's evidence is so
insufficient that a jury could not reasonably decide in his favor, presentation
of a defense would be a waste of time.
The judge will direct a verdict for the defendant. If the judge denies the motion for directed
verdict, the defendant will then present his evidence, employing the same
sequence of direct, cross, and re-direct.
Finally, both parties may proceed to call rebuttal witnesses.
The judge plays a pivotal role in
drawing up instructions to the jury. He
may instruct the jury on how they should consider the evidence, what to ignore,
what standards to apply, and in what sequence to decide certain questions. Counsel for both sides submit proposed jury
instructions, hoping the judge will adopt a substantial portion of them.[20] Following closing arguments of counsel, the
judge instructs the jury and the jury begins its deliberation.[21]
The jury's verdict does not equate
with judgment, because a judge need not accept the verdict. He may find that the proceeding was in some
fashion so tainted with error that a new trial should be ordered. The usual grounds for a new trial are a
verdict against the weight of the evidence or an excessive damage award.[22] If either party moved for a directed verdict
during the trial,[23] the judge
may find that, as a matter of law, he should reject the jury's determination
and enter a judgment notwithstanding the verdict (judgment n.o.v.) for that
party.[24] The granting of judgment n.o.v. is
essentially a situation in which the judge defers his decision on the directed
verdict motion until after the jury's decision has been made. A case involving a judgment n.o.v., Selle v. Gibb, will be considered in
Chapter 4.
If the trial has been conducted
without a jury, the judge must issue his findings of fact in addition to his
conclusions of law.[25] These findings of fact facilitate possible
appellate review by providing a clear statement of the basis for the trial
court's decision. The requirement
should also evoke care on the part of the trial judge in ascertaining the facts.[26] When the Selle
trial judge ordered a judgment n.o.v., for example, his written opinion
included a detailed analysis of the evidence (findings of fact) and the legal
authority that he believed compelled the decision (conclusions of law).[27] His characterization of the evidence as legally insufficient to support the
verdict had to be documented and defended.
On appeal, it had to withstand a zealous attack by the losing party and
gain the support of a majority of the three-judge panel conducting the review. Had the trial judge's decision been found
arbitrary, the appellate court would have reversed it and reinstated the jury
verdict.
An appeal of the outcome at trial
must be based on a question of law, not fact.
The appellate court relies on the printed record and arguments by
counsel. An appellate court will not
weigh evidence in order to second-guess the jury; the jury determination will
not be overruled if a rational juror could have reached the conclusion he did
based on the evidence in the record. Because
the appellate court can only read the testimony of witnesses and cannot view
the witnesses firsthand, it cannot re-judge a witness's credibility.[28] The appellate court merely ensures that the
trial court followed the law and proper legal procedures. It may affirm the lower court's order, order
a new trial, or reverse the judgment and remand to the lower court for further
proceedings consistent with the appellate court's interpretation of the law.
The Rules of Evidence
The trial court follows the
Federal Rules of Evidence, which provide broad guidelines for taking testimony
and admitting exhibits. All evidence
must be relevant to an issue of material fact.[29] Witnesses must have firsthand knowledge of
the facts to which they testify.[30] Exhibits may be divided into two types. Real evidence consists of tangible objects
that themselves played a role in the history of the case - for example, the
murder weapon or a writing that infringes.
Demonstrative evidence, on the other hand, commonly illustrates a fact
and makes it more comprehensible, such as a chart comparing two musical
works. Demonstrative evidence must
fairly and accurately represent what the witness is trying to describe.[31]
Witnesses state either fact or
opinion. An old rule allowed only
experts to give opinion testimony. That
rule has been relaxed to allow a lay witness to give opinions that are rationally
based on the perception of the witness and that aid in understanding the
witness's testimony or determining a fact in issue.[32]
An expert witness contributes
something different: the power to draw from the facts inferences that a jury
would not be competent to draw.[33] Expert testimony historically has been
admitted under two theories. Under the
first, the subject matter must be "so distinctively related to some
science, profession, business or occupation as to be beyond the ken of
laymen."[34] Under the second, the expert may testify
even though the trier of fact has a general knowledge of the subject if the
expert would help the trier of fact to understand the issues more clearly.[35] The Federal Rules of Evidence adopt the
second standard, admitting only testimony that is helpful to the trier of fact.[36]
A witness called as an expert must
first qualify. Counsel will pose
questions on the expert's background and perhaps submit his curriculum vitae as
evidence. Once satisfied that the
witness possesses the requisite knowledge or skill, the court will subject the
witness's opinion testimony to the more relaxed standards applied to experts.
Traditionally, questions were put
to experts in hypothetical form.
Because experts generally did not have firsthand knowledge of the facts
of the case, they were told to assume the truth of certain facts and to state
an opinion based on those facts.
Alternatively, they might be present while other witnesses testify and
then be called on to state an opinion based on the facts in evidence.[37] Now, in infringement cases as with most
others, the expert commonly makes his own firsthand investigation of the facts
prior to trial. The expert then may
base an opinion or inference on those facts by applying the principles relied
on by experts in that field.[38] The Federal Rules of Evidence also expressly
abolish the rule that prevented the expert from stating his opinion on the
ultimate issue of the case.[39] The ultimate issue, guilt or innocence for
example, had been reserved as the exclusive province of the jury, something on
which the expert's opinion would not be helpful. The rules now recognize that the expert's opinion may in fact be
helpful. The old rule was found unduly
restrictive and difficult to apply; it generally served only to deprive the
trier of fact of useful information.[40]
The following syllogism may
provide a useful framework for understanding expert testimony.[41] The expert is called to apply a scientific
principle to a particular set of facts.
The expert's major premise is defined as the principle, procedure, or
explanatory theory -the thing from which the expert's deduction is made.[42] This major premise addresses such questions
as whether the topic is appropriate for expert testimony and on what general
treatises or other authority the expert may rely. The expert's minor premise addresses the specific facts of the
case. The minor premise is applied to
the major premise in order to draw a conclusion expressing the expert's opinion
on the case.[43]
Expert testimony is a common
feature of litigation in virtually all areas of the law.[44] In intellectual property litigation, experts
examine the highly abstract nature of artistic creation, technological
principles, the art of communication, and the public's understanding of words,
symbols, and concepts. In some of these
areas, the public recognizes its lack of familiarity with the issues at hand
and welcomes expert assistance. In
others, the expert is accorded a modest role; the public views his testimony as
knowledgeable but far from dispositive.
Use of copyright experts has been
frequently criticized. Many courts
doubt that copyright experts help the trier of fact, because the critical
inquiry in infringement asks how the average lay person perceives the work.[45] Everyone perceives art at some level, and
the layman is understandably reluctant to subordinate his own perceptions to
those of an expert.[46] Expert testimony in copyright cases has been
constrained and subordinated to lay observations through various means. Consequently, copyright litigation focuses
on the copyright expert's major premise -whether his dissection and
analysis of two works provides something essential. Little has been written on the specific techniques that have been
or should be employed by an expert witness in infringement litigation.
The Arnstein
Test
The
landmark case Arnstein v. Porter[47]
established the conceptual framework for subsequent judicial tests of
infringement in all genres.[48] Cole Porter was accused of stealing various
songs written by Ira Arnstein, a composer of moderate musical accomplishment
but prodigious litigation. Arnstein's
proclivity for filing infringement suits[49]
and his lack of restraint in describing the thefts contributed to the court's
rendering summary judgment against him before trial. Arnstein stated that Porter "had his stooges right along to
follow me, watch me, and live in the same apartment with me."[50] The complaint alleged that "Begin the
Beguine" infringed his songs "The Lord Is My Shepherd" and
"A Mother's Prayer."[51]
Arnstein appealed the summary
judgment rendered against him. The
Second Circuit stated that proof of infringement involved two principal
questions of fact.[52] The first question, that of copying, may be
shown either by defendant's admission (an unlikely occurrence) or by
circumstantial evidence. Circumstantial
evidence requires plaintiff to show access and substantial similarities. The question of whether similarities exist
between two musical works calls for analysis; it lends itself to dissection by
expert testimony.[53]
The second question, however, that
of misappropriation, relies on the response of ordinary lay listeners.[54] On that issue, dissection and expert
testimony are irrelevant.[55] The inquiry focuses on whether there has
been a substantial taking of the plaintiff's original expression, elements
which the law protects.
The Second Circuit heard
similarities between the works of Arnstein and Porter sufficient that, if
access could be proved, the case should go to trial. The court could infer from the fact that "A Mother's Prayer"
had sold a million copies in sheet music form that Porter might have known
Arnstein's music. Arnstein had sent
other songs to radio stations, band leaders, and publishers. This showing of access was enough. The case was remanded to district court,
where Porter eventually prevailed.[56]
The question of misappropriation
presents the more abstract and difficult issue. In one sense, misappropriation is an aesthetic question.[57] Arnstein
framed the issued as "whether defendant took from plaintiff's works so
much of what is pleasing to the ears of lay listeners, who comprise the
audience for whom such popular music is composed, that defendant wrongfully
appropriated something which belongs to plaintiff."[58] In fact, the test may be understood better
as one of economic significance.
"Copyright protection does not exist for the gratification of the
artist's ego; it exists for the gratification of the artist's pocketbook."[59] Arnstein
placed responsibility for the misappropriation determination with lay
listeners, because they were the consumers of popular music. Their visceral reactions would indicate
whether the composer had been damaged by the infringement. Indeed, because one remedy for copyright
infringement is recovery of lost profits, the economic question needs to be
asked.
Commentators criticize the lay
observer (or lay audience) test for abandoning serious analysis in favor of
untutored hunches.[60] In addition, a lay audience may not
represent actual purchasers of the works at issue.[61] Judges have been receptive to this
distinction when the test is applied to computer software infringement. The bench seems to recognize that laymen
cannot judge technological works. Yet
the reverse often holds true for artistic works; expert testimony is often
admitted only grudgingly.[62]
One significant problem with the
lay observer test was addressed recently by the Fourth Circuit.[63] The court mandated that the lay observer
test be replaced by an "intended audience" test, noting that courts
that had made this adjustment in software cases had in fact followed Arnstein more accurately. If the intended audience has some special
expertise, the court stated, then the misappropriation question should focus on
how listeners with that expertise react to the similarities. If the intended audience is the general
public, then the reaction of the lay listener is the appropriate standard. Whether other circuits will follow the
Fourth on this issue remains to be seen.
The highly abstract nature of
copyrighted materials has tempted courts to deviate from Arnstein and experiment with novel theories and formulations. The Second Circuit altered the bifurcated
test of Arnstein in Ideal Toy Corp. v. Fab-Lu Ltd.[64] The district court had held that the total
effect of the defendant's doll was different from the plaintiff's doll. On appeal, the court found that the
misappropriation test of Arnstein was
nothing more than an alternate formulation for substantial similarity and that
use of the term "improper appropriation" merely obscured the issue.[65] In attempting to remedy this obscurity, Ideal Toy points the way to considerable
future confusion. It erases the line
between the two tests of Arnstein,
stating that substantial similarity comprises the major portion of the inquiry
into copying and that it disposes of the misappropriation issue at the same
time. Unfortunately, this formulation
fails to account for the very real difficulties of comparing two works. Under Ideal
Toy, the visceral reaction of the audience suffices for proof of substantial
similarity. Thus, the court reduced the
test for infringement to, first, proof of access and, second, substantial
similarity to the ordinary observer.[66]
The music theorist should be
troubled by Ideal Toy. Under this decision, copyright infringement
can be proved with no dissection and analysis.
The focus shifts from the method of creation to the similarity of the
products, but this omits the essential inquiry into copying. Without a scientific inquiry into copying,
the defense has less opportunity to prevail on the basis of independent
creation or proof that both works were copied from an unprotected source. The prerequisite of access provides only a
flimsy check on a non-discriminating court because, as Arnstein demonstrated, the possibility of access is enough.
A finding of audience confusion in
these cases may usurp studied analysis.
Litigation will descend to an argument over whose confusion
controls. For example, despite a showing
of access, the district court in Novelty
Textile Mills, Inc. v. Joan Fabrics Corp.[67]
found no substantial similarity in fabric patterns that a manufacturer or
serious customer could not distinguish.
The decision was reversed on the grounds that the average lay observer
was unlikely to notice the differences.[68]
The court never focused on whether the
similarities suggested copying or coincidence.
Current Tests for Infringement
To prove infringement, a plaintiff
must show that he holds a valid copyright on the music,[69]
that his music was copied, and that the portion copied was the plaintiff's
original expression. Courts continue to
rely on circumstantial evidence to establish copying.[70] A showing that the defendant had access[71]
to the copyrighted work and that "substantial similarities"[72]
exist between the two works is sufficient.
What is substantial may be determined with reference to the economic or
aesthetic significance of the work.[73] The defendant must have taken original and
expressive elements of the plaintiff's work, elements which the law protects.[74]
Where the plaintiff cannot show
access, he may rely on expert testimony to show that the two works are so
"strikingly similar" that the accused work could only be the result
of copying.[75] The plaintiff cannot demonstrate striking
similarities by a process of mere quantification. There must be a qualitative similarity that can be explained only
by copying, rather than coincidence, independent creation, or prior common
source. This showing of striking
similarities allows the trier of fact to infer access, but the plaintiff still
must show at least a reasonable opportunity to copy.[76] The "striking similarity" doctrine
has generated some confusion. For
example, can striking similarities exist where substantial similarities do
not? The leading case on striking
similarities, Selle v. Gibb,[77]
will receive detailed examination in Chapter 4.
The tests for infringement have
been reduced to mathematical equations:
1. Copying
+ Substantial Similarity = Infringement
2. Access
(proved by striking similarity) = Copying
3. Thus, Access (proved by striking similarity) + Substantial Similarity = Infringement
4. Access
(proved by direct testimony) + Substantial
Similarity = Copying and
therefore Infringement (because of
the first equation).[78]
This
test omits any reference to misappropriation, a concept which now seems to
reside in the affirmative defense of fair use.
In other words, the burden has shifted to the defendant to prove that
his copying is not misappropriation.[79]
An infringement claim can be
defended on several fronts. Because the
law requires only originality and not novelty, the defendant can claim
independent creation. Theoretically,
two people could create identical works and both enjoy the same
protection. The level of coincidence
required increases proportionately with the degree of similarity until the
defense of independent creation cannot be credibly maintained. However, if the works show little novelty,
coincidence will seem more likely.
The defendant may also rebut
plaintiff's claim of originality. By
introducing examples of "prior art," the defendant will try to
establish that the portion copied is in the public domain. Plaintiff may protect neither expressions
that were copyrighted prior to his own work nor expressions that have entered
the public domain. For example, in Granite Music,[80]
the expert witness compared the plaintiff's song "Tiny Bubbles" and
the accused work "Hiding the Wine" to the horn solo in the fourth movement
of Brahms's First Symphony (Example 1).
The expert also cited similarities in "The Highball Song" or
"Drink the Highball at Nightfall" (a drinking song at Penn),
"Westminster Chimes," "Pauahi O Kalani," "Through the
Woods," "That Bright Land Far Away," "In the Blue Ridge
Mountains of Kentucky," and a Chopin Waltz, op. 31.[81]
Finally, the defendant may argue
that the taking is insubstantial or that his work copies only plaintiff's
unprotected idea. Copyright protects
only expression, not idea. Judge
Learned Hand explained the idea-expression dichotomy in an infringement case
involving two plays.[82] He described at length the similarities
between two plays -similarities of theme, dialogue, characters,
sequence. If copyright were limited to
the literal text, its protection would be inadequate, since an infringer could
escape by making immaterial variations.[83] The plot, for instance, might be infringed
with no literal copying.[84] The question, said Hand, is whether the part
taken is substantial and therefore not a fair use.[85] As the copied elements become more abstract,
the inquiry becomes more difficult.
There is a point where they are no longer protected, since otherwise the
playwright could prevent the use of his ideas, to which his property never extended.[86] Some elements necessarily pass into the
public domain.[87] This idea-expression dichotomy has remained
a central issue in copyright law. It
continues to perplex; art, and music in particular, resists this terminology.
This idea-expression dichotomy
prompted the Ninth Circuit to venture further afield in an attempt to make the
difficult seem easy. In the 1977 case
of Sid & Marty Krofft Television
Productions, Inc. v. McDonald's Corp.,[88]
McDonald's was accused of producing advertisements that copied the characters
of the H. R. Pufnstuf television show.
Since McDonald's advertising agency had previously entered into
negotiations with Krofft to collaborate on the project, copying and access were
both conceded. Noting the distinction
between Arnstein and Ideal Toy and purporting to follow
neither,[89]
the Ninth Circuit devised an "extrinsic test" and an "intrinsic
test" to prove infringement. A
self-styled improvement on Arnstein's
bifurcation of copying and misappropriation, which had controlled in the Ninth
Circuit, the court believed the extrinsic-intrinsic test accomplished what Arnstein had probably intended.[90] The extrinsic test encompasses copying of
the general idea and the intrinsic test, the expression. Expert testimony and analytical dissection
can be employed only in the extrinsic test.[91]
Because copying of the idea was
admitted, the extrinsic test was never applied in Krofft.[92] Application of the extrinsic test in later
cases has proven unsuccessful.
Commentators criticize it on two grounds. First, the line between idea and expression is not so easily
drawn; it may be misapplied or inconsistently applied.[93] Second, the court failed to state whether
substantial similarity of idea could constitute misappropriation.[94] Of course, the court did not have to answer
this second question, because it is clear on the face on the statute that
protection does not extend to the idea.[95] The intrinsic test, on the other hand, does
not advance the inquiry beyond the lay observer test of Arnstein.
The Ninth Circuit follows a highly
flawed proposition: that idea and expression can be distinguished accurately
before analysis begins. But the Ninth Circuit
also improves the bifurcated test of Arnstein
in one respect. It requires both
similarity of idea and similarity of expression, thus tying the two. It seems to recognize that similarities in
expression cannot be substantial unless the two works at issue express the same
idea.
Recently, the Ninth Circuit
admitted that its terminology was unfortunate.
It adopted "objective" and "subjective" tests to
replace the intrinsic and extrinsic tests, but the court denied making any
substantive change in the law.[96] The Fourth Circuit has recently expressed
its opinion that all of the circuits follow the same tests and merely employ
differing terminology.[97] Even if this is true, terminology should not
be applied casually to a discipline as abstract as music. The lack of common definitions and standards
for expert testimony in music copyright litigation creates a patchwork
jurisprudence, easily misconstrued by the judge or improperly manipulated by
counsel who will choose the terminology most helpful to their case.
An Overview of the Expert's
Responsibilities
The
music theorist faced with the task of analyzing two works for substantial
similarities will find certain aspects of analysis easier than if he were
studying the works for more general purposes.
The decision of what to compare, potentially one of the more subjective
in the analytical process, has been made before the analysis begins. Only the two works at issue need be compared
and only for a limited purpose. The
analyst needs to consider initially only how the accused work might relate to
the complaining work, not how either may relate to any historical period or
compositional school.
The expert should look first at
the internal structure of each work and then compare musically significant
features of one work to musically significant features of the other. If the expert's analysis shows that the two
works do not share some similar musical traits, the question of whether
substantial similarities exist must be answered in the negative.
An expert for the plaintiff whose
analysis reveals no substantial similarities has little else to do.[98] He cannot legitimately patch together a case
and proceed to trial. Nor can he
analyze the significance of what does not exist. But if plaintiff's expert finds similarities, he must prepare to
meet all of defendant's potential arguments.
He must devise a way to show not only that the works are similar but
also that plaintiff's composition is original and protectable.
Where the defense expert finds no
similarities, he will still have to proceed to an analysis of greater scope
unless the plaintiff withdraws his complaint.
If the litigation continues, the defense expert must be prepared to meet
all potential arguments, no matter how specious they may seem. At this point, the defense expert must
search the musical precedents, the literature, and make all comparisons that
support either the non-existence of copying (that the passage in question is
commonplace) or copying from a prior, unprotected source.
Both experts must address the
nature of any similarities found and determine whether or not they can be
considered substantial. It is not
enough to ask if they should be
considered substantial, because the expert is not the final arbiter. Experts who agree on the fact of
similarities may disagree on their substantiality. Each analyst may, within the bounds of conscience and
professionalism, examine the musical evidence for and against copying and assist
counsel in constructing a case for trial.
Although the expert owes no legal duty to the client, attorneys seek
experts who vehemently advocate the client's position within the bounds of
honest analysis. To be effective on the
witness stand, the expert must convince the trier of fact that his analysis is
superior to that of his opponent. This
suggests that the expert should be convinced that an objective and competent
analysis weighs heavily in the client's favor.
The musically interesting
questions arise in this gray area where experts may disagree. Infringement suits run the gamut from
blatant copying to claims lacking any legitimate foundation. Unfortunately, in music just as in other
disciplines, purported experts can be found to testify to the absurd. Plaintiff may assert that the most hackneyed
formula bears the unmistakable mark of originality.[99] Similarities may lie in extra-musical
features alone.[100] On the other side, defense lawyers
habitually argue to the jury that similarities can be found between any two
works if one looks hard enough. Courts
often adhere to the view that music employs a sparse vocabulary, which
inherently limits expression.[101]
Both parties benefit from musical
expertise. The expert's ability to
attach labels to compositional devices supplies useful terminology; but, of
course, by itself it suggests neither coincidence nor copying. More essentially, the expert will find
musical similarities unnoticed by the layman, and will be able to explain
similarities that the layman perceives but cannot articulate. Complementing this ability, the expert
should know the artistic and historical significance of what he finds and
should be able to assess with some degree of accuracy the level of originality
in the two works at issue. However, the
analyst must remain focused on the specific purpose of copyright
litigation--explaining what the composer did--while avoiding the tendency to
speculate on what the composer thought as he did it.
Analysts are uniquely qualified to
locate and analyze musical similarities of any kind. Music analysis entails a search for similarities and
differences. The structure and art of
music at many levels is defined by repetitions, imitations, and contrasts. A music theorist segments and compares music
in order to assess compositional devices and thematic derivations. This ability is precisely what copyright
litigation demands.
[1] See 1 M. & D. Nimmer, Nimmer on Copyright § 1.01[B] (1989).
[2] 28 U.S.C. § 1338. See also, Topolos v. Caldewey, 698 F.2d 991 (9th Cir. 1983).
3 Federal Circuit jurisdiction also covers trademark, tariff and customs law, technology transfer regulations, and government contract and labor disputes. Dreyfus, The Federal Circuit: A Case Study in Specialized Courts, 64 N.Y.U. L. Rev 1, 3-4 (1989).
[4] Fed. R. Civ. P. 3.
[6] "Parties may obtain discovery by one or more of the following methods: depositions upon oral examination or written questions; written interrogatories; production of documents or things or permission to enter upon land or other property, for inspection and other purposes; physical and mental examinations; and requests for admission. . . .
"Parties may obtain discovery regarding any matter, not privileged, which is relevant to the subject matter involved. . . . It is not ground for objection that the information sought will be inadmissible at the trial if the information sought appears reasonably calculated to lead to the discovery of admissible evidence." Id. 26.
[7] Sample interrogatories from Gaste v. Kaiserman, Case No. 86 Civ. 5671 (S.D.N.Y. 1986), aff'd, 863 F.2d 1061 (2d Cir. 1988), a case discussed in Chapter 4, appear in Appendix B, at 716.
[8] Fed. R. Civ. P. 15.
9 The judge, in consultation with the parties, controls the scheduling of pre-trial conferences, hearings, and discovery. Id. 16(b).
10 Summary judgment shall be granted if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, 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). The plain language of Rule 56(c) mandates the entry of summary judgment, after adequate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial. Celotex Corporation v. Catrett, 477 U.S. 317, 322-23 (1986).
11 The inquiry is "whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52 (1986).
[12] If judgment is not rendered on the whole case and a trial is necessary, the court shall, if practicable, ascertain what material facts are actually and in good faith controverted. Upon the trial of the action the facts so specified shall be deemed established, and the trial shall be conducted accordingly. Fed. R. Civ. P. 56(d).
16 The case in chief is that part of a trial in which the party with the initial burden of proof presents his evidence. Black's Law Dictionary 196 (5th ed. 1979).
[17] See McCormick on Evidence § 4 (1984).
[18] Fed. R. Civ. P. 50(a).
[19] See C. Wright, Law of Federal Courts § 95 (1983).
[20] "At the close of the evidence, or at such earlier time prior to or during the trial as the court reasonably directs, any party may file written requests that the court instruct the jury on the law as set forth in the requests. The court shall inform counsel of its proposed action upon the requests prior to their arguments to the jury, but the court shall instruct the jury after the arguments are completed." Fed. R. Civ. P. 51.
[22] "Against the weight of the evidence" also requires a legal decision that a jury could not have reached the decision it did in a reasonable manner. C. Wright, Law of Federal Courts § 95 (1983). See Fed. R. Civ. P. 59.
23 An absolute prerequisite to a judgment n.o.v. is a motion during trial for a directed verdict. C. Wright, Law of Federal Courts § 95 (1983).
[24] See Fed. R. Civ. P. 50(b). The common abbreviation for judgment notwithstanding the verdict is from the Latin non obstante veredicto.
[25] "In all actions tried upon the facts without a jury or with an advisory jury, the court shall find the facts specially and state separately its conclusions of law thereon." Fed. R. Civ. P. 52.
[27] Selle v. Gibb, 567 F. Supp. 1173 (N.D. Ill. 1983), aff'd, 741 F.2d 896 (7th Cir. 1984).
[28] "Findings of fact, whether based on oral or documentary evidence, shall not be set aside unless clearly erroneous, and due regard shall be given to the opportunity of the trial court to judge the credibility of the witnesses." Fed. R. Civ. P. 52(a).
[29] "’Relevant evidence' means evidence having any tendency to make the existence of any fact that is of consequence to the determination of the action more probable or less probable than it would be without the evidence." Fed. R. Evid. 401.
[30] "A witness may not testify to a matter unless evidence is introduced sufficient to support a finding that the witness has personal knowledge of the
matter." Fed. R. Evid. 602.
[31] See McCormick on Evidence § 212-13 (1984).
[32] Fed. R. Evid. 701.
[35] "If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise." Fed. R. Evid. 702.
[36] Fed. R. Evid. 702, Advisory Committee's Note.
[37] See McCormick on Evidence § 13 (1984).
[38] "The facts or data in the particular case upon which an expert bases an opinion or inference may be those perceived by or made known to the expert at or before the hearing. If of a type reasonably relied upon by experts in the particular field in forming opinions or inferences upon the subject, the facts or data need not be admissible in evidence." Fed. R. Evid. 703.
[39] "[T]estimony in the form of an opinion or inference otherwise admissible is not objectionable because it embraces an ultimate issue to be decided by the trier of fact." Fed. R. Evid. 704.
[40] Fed. R. Evid. 704, Advisory Committee's Note (a).
[41] See Imwinkelried, The "Bases" of Expert Testimony: The Syllogistic Structure of Scientific Testimony, 67 N.C. L. Rev 1 (1988).
[44] See generally, Carlson, Policing the Bases of Modern Expert Testimony, 39 Vand. L. Rev. 571 (1986).
[45] See e.g., Nichols v. Universal Pictures Corp., 45 F.2d 119, 123 (2d Cir. 1930), cert. denied, 282 U.S. 902 (1931).
[46] "Expert testimony has been offered by both sides. Much of it is in conflict. While it has been of some help, we [the judge] rely on the only other test available to a judge, who is a musical layman, namely -whether there is a resemblance noticeable to the average hearer. . . .
"At trial, we have had eleven specially prepared recordings introduced by the plaintiff prepared to demonstrate similarity between the two songs with respect to melody and harmony. Thus, we have had the first 16 measures of each song played consecutively on the piano without harmony and then played simultaneously. We have listened to the identical notes of the two songs being played on the piano and while whistling was used to designate the different notes. We have endured other strange combinations of drums and bells, of temple blocks and tympany [sic]. We have suffered through the playing of the commercial recordings. The defendants were not to be outdone in these endeavors. They brought forth a few records and crowned their activities by bringing a piano into court for use in cross-examining plaintiff's expert and illustrating the testimony of their own experts. We are certain this was not all done either for our entertainment or annoyance. . . .
"But, we were not confused by these cacophonous demonstrations which we endured on trial with patience and fortitude." Northern Music Corp. v. King Record Distributing Co., 105 F. Supp. 393, 398 (S.D.N.Y. 1952).
[47] 154 F.2d 464 (2d Cir. 1946).
48 For a concise treatment of the prevalent judicial tests and the use of expert witnesses, see Der Manuelian, The Role of the Expert Witness in Music Copyright Infringement Cases, 57 Fordham L. Rev. 127 (1988).
[49] See also, Arnstein v. Edward B. Marks Music Corp., 82 F.2d 275 (2d Cir. 1936); Arnstein v. Broadcast Music, Inc., 137 F.2d 410 (2d Cir. 1943).
51 Arnstein also claimed that "My Heart Belongs to Daddy" owed its origins to "A Mother's Prayer," "You'd Be So Nice to Come Home To" was taken from "Sadness Overwhelms My Soul," and "Don't Fence Me In" was actually "A Modern Messiah." Id. at 467.