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    Posted on September 30, 2014 To

    CBA Record September 30, 2014

    By Pamela Sakowicz Menaker

    CBA Record, Editorial Board Member

    September 2014

    Copyright infringement comes to life in the case of a young Chicago performer who tried to take on a highly successful international musical group, The Black Eyed Peas, for allegedly stealing her song.

    Chicago intellectual property lawyers Kara E.F. Cenar, lead defense counsel, and Justin Righettini of Bryan Cave, LLP represented the popular California-based group that included and Fergie. In a lunch hour program, they explained how their legal team was successful in Ebony Batts, a/k/a Phoenix Phenom’s allegations that one of her songs was plagiarized.

    Batts v. William Adams, Jr., et. al., CV10-8123-JFW (Oct. 28, 2010), was initially filed in federal district court in Chicago, and Judge Ruben Castillo dismissed the matter for lack of jurisdiction. Plaintiff then re-filed in the Central District of California, which dismissed the matter on a motion for summary judgment. In explaining the court’s ruling at a CBA Media and Entertainment Law meeting earlier this year, the two lawyers went step-by-step through the elements of a copyright infringement case and how the court was led to its decision in the litigation.

    The room full of lawyers was played both songs–”Boom Boom Pow” by The Black Eyed Peas and “Boom Dynamite” by Phoenix Phenom. An informal poll was conducted of the attendees and a majority initially said the two songs sounded alike and plagiarism had occurred. By the end of the anatomy of this copyright infringement case that included examining musical composition, melody, rhythm, harmony, lyrics and other musicology points, a new poll at the end of the program demonstrated that nearly everyone had changed their minds in that short hour when they knew how to examine the two songs under the law.

    The lawyers explained to a packed room how there are two types of copyrighted works: musical composition and sound recordings, generally owned by two different entities. It also was interesting to note that you don’t have to earn a profit to infringe upon a copyright.

    Cenar pointed out how all circuits now follow the elements enunciated in Feist Publications, Inc. v. Rural Telephone Service, Inc., 499 U.S. 340 (1991), to establish infringement: “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” The initial burden lies on the plaintiff.

    Test for Substantial Similarity

    Because this case was re-filed in California, the lawyers examined it through the lens of Ninth Circuit law which, given that a great number of the country’s artists live and work there, much precedent lies there. They explained how the defendant must have access to the initial work and the two must be substantially similar.

    The Ninth Circuit has established an extrinsic/intrinsic test for substantial similarity. The extrinsic test is an objective comparison that examines “whether two works share a similarity of ideas and expressions as measured by external, objective criteria.” Swirsky v. Carey, 376 F.3d 841, 845 (9th Cir.2004). The intrinsic component is subjective and “depends solely on the response of the ordinary reasonable person.” Berkic v. Crichton, 761 F.2d 1289, 1292 (th Cir.1985). Although it appeared that “Boom Boom Pow” initially failed the second test among the attendees at the CBA meeting, only the extrinsic test is relevant to summary judgment review.

    Righettini, a classically trained musician, went through the very specific points that he raised to the court regarding the extrinsic test about melody, rhythm harmony, structure, and lyrics that demonstrated that the two songs were actually very different and that any similarities consisted in generic building blocks in music or unprotectable ideas. The court concluded there were numerous substantial and significant differences between the two works and “no reasonable jury could find [the songs] substantially similar in idea and expression.”

    In addition, the plaintiffs advanced a compilation argument given that they themselves admitted that many of the elements they relied on for the similarity claim were not protected by copyright. The court in Batts rejected that argument, going on to say that any similarities between the two “encompass elements that are not protectable and Plaintiffs have failed to demonstrate that the selection, coordination, and arrangement of those non-protectable elements created an original, protectable expression that was then copied by the… Defendants.”

    No Evidence of Access

    In examining access, it was pointed out that “Boom Dynamite” was available on YouTube and was sporadically played on a Chicagoland radio station for a period of roughly three months, but there was no specific evidence that the defendants were in Chicago during that time or ever heard or downloaded the song on YouTube. Significantly, Phoenix Phenom’s manager had sent email communications to Interscope representatives, the label to which The Black Eyed Peas were signed, but there was no evidence that these emails were ever even opened prior to the litigation, much less forwarded to anyone in The Black Eyed Peas.

    Part of the test of copyright infringement includes the plaintiff demonstrating that the defendant(s) had a reasonable opportunity or reasonable possibility of viewing or hearing the plaintiff ‘s work prior to the creation of the infringing work. Speculation or conjecture will not withstand scrutiny by the court. Plaintiffs failed to meet this burden.

    Copyright infringement cases are often a battle of experts, Cenar said. “You have to have someone who understands music,” she told the group of lawyers. The defense attorneys put on an impressive program of how they understood the law as well as music and applied that knowledge to this case to be successful on their motion for summary judgment.