Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 1 of 29 Page ID #:6876 1 2 3 4 5 Paul H. Duvall (SBN 73699) E-Mail: pduvall@kingballow.com KING & BALLOW 6540 Lusk Blvd., Suite 250 San Diego, CA 92121 (858) 597-6000 Fax: (858) 597-6008 Attorneys for Defendants and CounterClaimants Frankie Christian Gaye and Nona Marvisa Gaye Gaye Nona Marvisa Richard S. Busch (TN BPR 014594) (pro pro hac vice) E Jail: rbusch@kingballow.com E-Mail: pro hac vice) vice Sara R. Ellis (TN BPR 030760) (pro E-Mail: sellis@kingballow.com ALLOW KING & BALLOW 315 Union Street, Suite 1100 Nashville, TN 37201 (615) 259-3456 Fax: (615) 726-5417 Attorneys for Defendants and CounterClaimants Frankie Christian Gaye and Nona Marvisa Gaye Marvisa Mark L. Block (SBN 115457) E-Mail: mblock@wargofrench.com WARGO & FRENCH LLP FRENCHLLP 1888 Century Park East; Suite 1520 Los Angeles, CA 90067 (310) 853-6355 Fax: (310) 853-6333 Attorneys for Defendants and CounterClaimants Frankie Christian Gaye and Nona Marvisa Nona Marvisa Gaye Gaye Paul N. Philips (SBN 18792) E-Mail: pnp@pnplegal.com The Law Offices of Paul N. Philips 9255 West Sunset Boulevard West Hollywood, CA 90069 (323)813-1126 Fax: (323) 854-6902 Attorney for Defendant and Counter-Claimant Marvin Gaye Gaye III Marvin 6 7 8 9 10 11 12 13 14 UNITED STATES DISTRICT COURT 15 CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION 16 17 18 PHARRELL WILLIAMS, an individual; individual; ROBIN ROBIN THICKE, THICKE, an individual; and CLIFFORD HARRIS, JR., an individual, individual, Plaintiffs, 19 20 21 22 23 24 vs. BRIDGEPORT MUSIC, INC., a Michigan Michigan corporation; corporation; FRANKIE FRANKIE CHRISTIAN GAYE, an individual; MARVIN MARVIN GAYE III, an individual; individual; NONA MARVISA GAYE, an individual; individual; and DOES DOES 11 through through 10, 10, inclusive, 25 Defendants. 26 _______________________________ 27 AND RELATED ELATED COUNTERCLAIMS COUNTERCLAIMS 28 Case No. CV13-06004-JAK (AGRx) Hon. John A. Kronstadt COUNTER-CLAIMANTS’ MEMORANDUM MEMORANDUM OF POINTS POINTS AND AND AUTHORITIES IN SUPPORT OF THEIR THEIR EX PARTE PARTE APPLICATION APPLICATION FOR FOR CONTINUANCE OF TRIAL, RECONSIDERATION RECONSIDERATION OF GRANTING GRANTING - AND AND MOTION IN LIMINE NO. 1-3 CERTIFICATION OF QUESTION FOR INTERLOCUTORY INTERLOCUTORY APPEAL APPEAL Action Commenced: August 15, 2013 Trial Date: February 10, 2015 Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 2 of 29 Page ID #:6877 1 TABLE OF CONTENTS 2 3 A. REQUEST FOR TRIAL POSTPONEMENT ……………………………………....3 4 5 B. MOTION FOR RECONSIDERATION ……………………………………………5 6 1. Standard of Review for a Motion for Reconsideration ...………………………...5 7 2. The Protected Compositional Elements are Not Limited to the 8 9 10 11 Deposit Copy ……………………………………………………………………6 3. The Gayes Must Be Allowed to Play Marvin Gaye’s Commercially Released Sound Recordings and Excerpts of Those Recordings at Trial……….12 4. An Ordinary Observer Cannot Accurately Apply the Concept and 12 Feel Test Without the Benefit of Hearing the Sound Recording that 13 is the Most Accurate and Complete Expression of the Underlying 14 Composition …………………………………………………………………....14 15 5. The Intrinsic Test Requires the Playing of the Entire Sound Recordings ………15 16 6. The Sound Recordings Provide Highly Probative Evidence of Copying ………17 17 18 22 C. SHOULD THE COURT ULTIMATELY DECIDE THE SCOPE OF THE PROTECTED WORKS IS LIMITED ONLY TO ELEMENTS INCLUDED IN THE DEPOSIT COPIES, THE GAYES REQUEST THAT THE QUESTION OF WHETHER A COPYRIGHT PLAINTIFF’S WORK IS LIMITED ONLY TO COMPOSITIONAL ELEMENTS IN PUBLISHED VERSIONS OF THE WORK BE CERTIFIED FOR AN INTERLOCUTORY APPEAL PURSUANT TO 28 U.S.C. 1292(B)……………..20 23 1. Standard Of Review for an Interlocutory Appeal ……………………………21 24 2. An Interlocutory Appeal is Proper under the Instant Scenario ………………21 25 3. The Current Trial Setting Should be Postponed ………………………………..23 19 20 21 26 27 28 -i- Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 3 of 29 Page ID #:6878 TABLE OF AUTHORITIES 1 2 Cases 3 4 Anderson v. Liberty Lobby, Inc. 477 U.S. 242 (1986) ...................................................... 19 5 Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946) ........................................................... 14, 19 6 Couch v. Telescope Inc., 611 F.3d 629 (9th Cir. 2010) .................................................... 21 7 Dream Games of Arizona, Inc. v. PC Onsite, 561 F.3d 983 (9th Cir. 2009).................... 16 8 Flynn v. Surnow, No. CV 02-9058-JFW PLAX, 2003 WL 23411877 (C.D. Cal. 9 Dec. 9, 2003) ................................................................................................................ 19 10 Harris v. Emus Records Corp., 734 F.2d 1329 (9th Cir. 1984) ............................................. 7 11 JB Oxford & Co. v. First Tennessee Bank Nat. Ass’n, 427 F. Supp. 2d 784 (M.D. 12 Tenn. 2006) .................................................................................................................. 18 13 Jean v. Bug Music, Inc., No. 00 CIV 4022 (DC), 2002 WL 287786 (S.D.N.Y. Feb. 27, 14 2002)............................................................................................................................. 14 15 Johnson v. Gordon, 409 F.3d 12 (1st Cir. 2005) .............................................................. 20 16 Johnson v. Salomon, 197 U.S.P.Q. 801 (D. Minn. 1977) ................................................... 8 17 Jones v. Virgin Records, Ltd., 643 F. Supp. 1159 (S.D.N.Y. 1986) .................................... 11 18 KnowledgePlex, Inc. v. Placebase, Inc., No. C 08-4267 JF(RS), 2008 WL 5245484 19 (N.D. Cal. Dec. 17, 2008) .............................................................................. 7, 9, 10, 11 20 Maggio v. Liztech Jewelry, 912 F. Supp. 216 (E.D. La. 1996) ........................................ 20 21 Milliken & Co. v. Shaw Indus., Inc., 978 F. Supp. 1155 (N.D. Ga. 1997) ......................... 7 22 Mil-Spec Monkey, Inc. v. Activision Blizzard, Inc., No. 14-CV-02361-RS, 2014 23 WL 6655844 (N.D. Cal. Nov. 24, 2014) ..................................................................... 19 24 N. Music Corp. v. King Record Distrib. Co., 105 F. Supp. 393 (S.D.N.Y. 1952) .......... 14, 19 25 National Comics Pubs. v. Fawcett Pubs., 191 F.2d 594 (2d Cir. 1951)............................. 7 26 Navara v. M. Witmark & Sons, 185 N.Y.S.2d 560 (Sup. Ct. 1959) ................................. 14 27 Prunte v. Universal Music Grp., 563 F. Supp. 2d 41 (D.D.C. 2008) ............................... 20 28 - ii - Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 4 of 29 Page ID #:6879 1 Radin v. Hunt, LA CV10-08838 JAK (SSx) (C.D. Cal. Dec. 15, 2011).............................. 16 2 Repp v. Webber, 892 F. Supp. 552 (S.D.N.Y. 1995)..................................................... 14, 19 3 Rich v. Paramount Pictures, 279 P.2d 782 (1955) ........................................................... 15 4 Scentsy, Inc. v. B.R. Chase, 942 F. Supp. 2d 1045 (D. Idaho 2013) ...................................... 7 5 Scentsy, Inc. v. Harmony Brands, LLC, 585 F. App’x 621 (9th Cir. 2014) ....................... 7 6 Sch. Dist. No. 1J, Multnomah Cnty, Oregon v. ACandS, Inc., 5 F.3d 1255 (9th Cir. 7 1993) .............................................................................................................................. 6 8 Selle v. Gibb, 741 F.2d 896 (7th Cir. 1984) .................................................................. 14, 19 9 Shaw v. Lindheim, 919 F.2d 1353 (9th Cir. 1990) .............................................................. 2 10 Shoptalk, Ltd. v. Concorde-New Horizon Corp., 168 F.3d 586 (2d. Cir. 1999) ................ 8 11 Shurance v. Planning Control Int’l, Inc., 839 F.2d 1347 (9th Cir. 1988) ........................ 22 12 Sid & Marty Krofft Television Prods., Inc., 562 F.2d 1157 (9th Cir. 1977).......................... 16 13 Swirsky v. Carey, 376 F.3d 84 (9th Cir. 2004)................................................................. 9, 15 14 Three Boys Music Corp. v. Bolton, 212 F.3d 477 (9th Cir. 2000).............................passim 15 Twentieth Century-Fox Film Corp. v. Dunnahoo, 637 F.2d 1338 (9th Cir. 1981) ............ 6 16 Walker v. Viacom Int'l, Inc., No. C 06-4931 SI, 2008 WL 2050964 (N.D. Cal. May 17 13, 2008) ...................................................................................................................... 20 18 Yankee Candle Co. v. Bridgewater Candle Co., LLC, 259 F.3d 25 (1st Cir. 2001)......... 20 19 Statutes 20 21 17 U.S.C. § 408 ....................................................................................................................7 22 17 U.S.C. § 505 .................................................................................................................23 23 28 U.S.C. § 1292 ...............................................................................................................21 24 Rules 25 Fed. R. Evid. 401 ........................................................................................................18, 19 26 Fed. R. Evid. 403 ..............................................................................................................19 27 28 - iii - Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 5 of 29 Page ID #:6880 1 Treatises 2 4 Nimmer Copyright § 13.02 (2006) ..........................................................................18, 20 3 Paul Goldstein, Goldstein on Copyright § 3.8 (2013) ...........................................................7 4 5 Other Authorities 6 Fed. R. Evid. 403 advisory committee’s note (1972) .......................................................19 7 Fed. R. Evid. 404 advisory committee’s note (1972) .......................................................19 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - iv - Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 6 of 29 Page ID #:6881 1 Defendants and Counter-Claimants Nona Marvisa Gaye, Frankie Christian Gaye, 2 and Marvin Gaye III (the “Gayes”), hereby submit this Application for Ex Parte Relief 3 in light of the impending trial date and the immediate need for relief. For the reasons 4 discussed below, the Gayes request that this Court: (1) postpone the trial date in this 5 matter; and (2) reconsider a ruling that would not only severely impact the trial of this 6 action, and is not supported by law, but would create dangerous precedent, or, in the 7 alternative; (3) grant permission for the Gaye parties to file an interlocutory appeal, since 8 the finding that the non-lead sheet compositional elements embodied in Marvin Gaye’s 9 commercially released sound recording are not part of this action is directly at odds with 10 every decision the Gayes’ counsel can locate on the topic, and the Court cited no law to 11 support its conclusion. 12 As explained more fully below, the law is clear that a plaintiff suing for copyright 13 infringement under the 1909 Copyright Act need only produce a copyright registration 14 identifying a work as published. As long as the work is properly registered, the 15 registration covers not only the composition as reflected by the deposit copy, but also 16 other versions of the composition that existed at the time of registration. The Court’s 17 Orders seem to reflect this position. (See, e.g., Dkt. No. 139 at 9; Dkt. No. 231). 18 However, the Court’s Order then takes a leap of logic that is not supported by the law. 19 (Dkt. No. 139). The Order reasons that because the composition as embodied in the 20 sound recording could not have been a “published” copy under the 1909 Copyright Act, 21 the version of the composition embodied on the sound recording is not protected under 22 the 1909 Copyright Act. Not only is there no support for this proposition in the case 23 law, but adopting such a position would create dangerous and potentially devastating 24 precedent to the owners of such intellectual property. 25 Specifically, as discussed further below, the Court’s ruling would have a 26 devastating impact on the rights of owners of pre-1978 musical compositions by 27 allowing wholesale copying of compositional elements not found in pre-registration 28 published versions of the works or within the deposit copies themselves. For example, 1 Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 7 of 29 Page ID #:6882 1 under this Court’s ruling, a clever infringer would be able to compare sheet music or 2 deposit copy lead sheets of the works of the Beatles, The Rolling Stones, Elvis Presley, 3 and, of course, Marvin Gaye, with the composition as embodied in the recordings of 4 those icons, and take with impunity all compositional elements not found within the 5 sheet music or deposit copies. It would create a situation where the compositions in the 6 recordings are derivative works incapable of copyright protection because, as pre-1978 7 works, the recordings could not be submitted as the musical compositions. That is not 8 and cannot be the law. Instead, the Copyright Act required publication and registration, 9 but once these statutory formalities are met, all versions of the composition fairly 10 identified by the deposit copy were protected. This would and must include the musical 11 composition embodied in the distributed sound recording. This decision must either be 12 reconsidered or an interlocutory appeal should be allowed. In addition, the Court’s decision not to allow the complete recordings to be 13 14 played, and only edited versions that surgically carve out the allegedly non-protected 15 elements not found within the lead sheets, would be the only case in history that the 16 Gayes’ counsel can locate where two complete commercial recordings at issue in a 17 music copyright infringement action were not allowed to be played to compare the 18 expression of the compositional elements embodied in those recordings. 1 The prejudice 19 to the Gayes in this regard, as explained below, far outweighs any prejudice to the 20 Thicke parties, and requires reconsideration of this ruling. All of the requirements for the granting of an interlocutory appeal are present, and 21 22 the Court should allow that appeal to be taken now, since this action is prohibitively 23 expensive to the Gayes to try once, let alone twice, and judicial economy and resources, 24 as well as the resources of the parties, will be conserved by allowing these issues to be 25 26 1 The Court Lindheim in support Court cites Shaw Shaw v. Lindheim support of this finding. finding. However, However, that case dealt with a claim which was with claim of copyright copyright infringement infringement regarding regarding a pilot pilot television television script which was 28 written part of filming. filming. 919 F.2d F.2d 1353 1353 (9th Cir. 1990). 1990). written prior prior to and not as a part 27 2 Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 8 of 29 Page ID #:6883 1 resolved now. The potential consequences to the Gayes of not being able to try their full 2 and complete case are enormous and justify the relief requested. 3 A. REQUEST FOR TRIAL POSTPONEMENT 4 Having been through more than a year of discovery and preparation, this case is 5 now set for trial in thirteen days. All parties in this action deserve to present their best 6 case and have this matter decided on its merits. However, the Gayes are now unsure of 7 the potential scope of the evidence that may be permitted to be presented at trial, leaving 8 them in an untenable position from which they cannot move forward in an equitable or 9 efficient manner. 10 This case involves a large number of fact and expert witnesses, the testimony of 11 each of whom will be influenced by this Court’s rulings on the parties’ seventeen 12 Motions in Limine. This is especially true for expert witnesses, who are now preparing 13 their testimony and demonstrative exhibits without knowing whether and to what extent 14 these materials will be allowed to be played. 15 For instance, as noted by the Court in its January 28, 2015 Order (the “January 28 16 Order”), there was confusion at the Pretrial Conference regarding the scope of the 17 evidence the Court would allow to be presented at trial. (Dkt. No. 231 at 1). The 18 January 28 Order changed a prior ruling, but still leaves significant doubt as to exactly 19 what will be allowed at trial. (Id.). 20 The January 28 Order states that the Gayes may play edited recordings in which all 21 unprotected elements have been eliminated. (Dkt. No. 231 at 5). While the Gayes 22 dispute this ruling is fair or a correct application of the law, even if this were to be the 23 Court’s final ruling, it would not provide clarification of what exactly can be played. 24 More specifically, one of the greatest expenses the Gayes have incurred to date is borne 25 of the hiring of renowned musicological experts expected to opine regarding the 26 similarities between the Gayes’ works and the Plaintiffs’ works. These experts have 27 spent considerable time and energy to provide a rational and analytical comparison of the 28 compositions at issue. (Decl. of Ingrid Monson at ¶ 3; Decl. of Judith Finell at ¶ 3). 3 Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 9 of 29 Page ID #:6884 1 While the Gayes are uncertain of the exact metes and bounds of the January 28 Order, it 2 is possible that as much as forty percent of the similarities found by the experts may have 3 been excluded based on this Court’s pretrial rulings. (Finell Decl. at ¶ 16). Thus, while 4 the experts are prepared to testify based on their complete reports, all of which have 5 previously been submitted to the Court. (Monson Decl. at ¶¶ 4, 5; Finell Decl. at ¶ 4; 6 Dkt. Nos. 196-1, 196-2, 196-3, 196-4, 196-15), the January 28 Order will require them to 7 completely re-tool their testimony and the demonstrative exhibits they have spent months 8 developing. (Monson Decl. at ¶ 6; Finell Decl. at ¶¶ 13-14). 9 For instance, Ms. Finell has created a draft PowerPoint exhibit that is 10 approximately 40 pages in length. (Finell Decl. at ¶ 13). This draft demonstrative 11 exhibit, which was due to be exchanged with Plaintiffs’ within a few days, will take a 12 substantial amount of time to modify in order to comply with any rulings that drastically 13 limit Ms. Finell’s testimony. Further, the Court indicated at the Pretrial Hearing and in 14 its January 28 Order that the Gayes’ experts would have to create new demonstrative 15 exhibits including additional comparative demonstration recordings. (Ex. A to Decl. of 16 Richard S. Busch at 20:11-14; Dkt. No. 231 at 5). Not only will it take considerable 17 time to create these comparative demonstration recordings, but the parties will then need 18 to meet and confer regarding the comparative demonstration recordings, and likely 19 further litigate disputes over them before the Court, as Plaintiffs have made it clear to the 20 Gayes’ counsel that they will fight to prevent any use of Marvin Gaye’s recordings. 21 (Busch Decl. at ¶ 3; Monson Decl. at ¶ 6; Finell Decl. at ¶ 14). 22 The Court has ordered the parties to produce these new exhibits by noon February 23 2, 2015. (Dkt. No. 231 at 6). Such a deadline makes sense based on a trial date of 24 February 10, 2015. However, that leaves the Gayes with only four full days to create 25 these new works. The Gayes’ experts estimate that it could take as much as thirty hours 26 to create one new recording even without the time necessary to confer with the 27 musicologists and counsel in order to determine the proper scope of those recordings. 28 4 Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 10 of 29 Page ID #:6885 1 (Decl. of Ron Aston at ¶ 8; Decl. of Thomas Court at ¶ 5). Thus, a continuance of the 2 trial is necessary to allow both parties to put on their best case. 3 The Court’s Order states that the Gayes should have been on notice of this 4 potentiality since October 30, 2014, when the Court made its Summary Judgment 5 Ruling. (Dkt. No. 231 at 5). However, in denying Plaintiffs’ Motion for Summary 6 Judgment, the Court noted, at least eleven times, that its decision not to analyze elements 7 allegedly not contained in the lead sheet at that time was for the purpose of that Motion. 8 (Dkt. No. 139). The Court also noted that the submitted comparative demonstration 9 recordings go to the intrinsic test, and that the Court was only performing the extrinsic 10 test on that motion. (Id.). Therefore, by the Court’s own language, repeated 11 times in 11 the Order, that decision related to only the extrinsic test and the Gayes reasonably 12 interpreted it as only related to the extrinsic test. 13 As such, the Gayes must request a postponement of the current trial. This request 14 results in no prejudice to any of the parties. Indeed, at the pre-trial conference, the Court 15 stated the trial may need to be postponed because of two criminal matters that are 16 scheduled to be tried in the middle of this trial. All parties agreed that the beginning of 17 the trial should be postponed, rather than begun and then interrupted by the criminal 18 trials, and would work cooperatively to reschedule. (Ex. A to Busch Decl. at 62:2-64:7). 19 Nonetheless, at a meet and confer session on January 27, 2014, counsel for Plaintiffs 20 would not agree to a continuance. As a result, and in light of the foregoing, the Gayes 21 respectfully request a postponement of the February 10, 2015 trial date. 22 B. MOTION FOR RECONSIDERATION 23 The Gaye parties respectfully request the Court to reconsider its decision granting 24 in part the Plaintiffs’ Motion in Limine, No. 1-3. 25 26 1. Standard of Review for a Motion for Reconsideration A Motion for Reconsideration is appropriate “if the district court (1) is presented 27 with newly discovered evidence, (2) committed clear error or the initial decision was 28 manifestly unjust, or (3) if there is an intervening change in controlling law. There may 5 Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 11 of 29 Page ID #:6886 1 also be other, highly unusual circumstances warranting reconsideration.” Sch. Dist. No. 2 1J, Multnomah Cnty, Oregon v. ACandS, Inc., 5 F.3d 1255, 1263 (9th Cir. 1993). 3 4 2. The Protected Compositional Elements are Not Limited to the Deposit Copy The Gayes seek reconsideration of the January 28 Order, in which the Court stated 5 that the copyrighted works at issue are limited to the deposit copy lead sheets submitted 6 with the copyright registration. As discussed in full below, the deposit copy lead sheet with 7 the registration only serves to identify the copyrighted work, but the work that is protected 8 is the best version of the composition that existed at the time of registration. 9 As this Court has noted, contrary to Plaintiffs’ assertions “the scope of Defendants’ 10 copyrights is not, as a matter of law, limited to the lead sheets deposited with the Copyright 11 Office.” (Dkt. No. 139 at 8) (relying on the Ninth Circuit’s holding in Twentieth Century12 Fox Film Corp. v. Dunnahoo, 637 F.2d 1338 (9th Cir. 1981), that the deposit 13 requirement has “no effect whatsoever on the validity or enforceability of a copyright”). 14 While, the Court’s Opinion correctly finds the deposit copy lead sheets do not, as a 15 matter of law, limit the scope of the protected work, the Court’s Opinion goes on to find 16 that the protected works must be published. (Dkt. No. 231 at 3). 17 There is no dispute that in order to receive protection under the 1909 Copyright 18 Act, a composition had to be published. Further, there is no dispute, in this action, that 19 the compositions at issue were registered as published works. (See e.g. Dkt. No. 231 at 20 4 n.2). The Court, however, followed those principles to leap over a chasm never before 21 crossed, finding the Gayes had the burden to produce sheet music published prior to 22 registration that identifies the elements of the published work, and that the consequences 23 of failing to do so restricts the composition to those compositional elements found 24 within the lead sheet deposited with the registration. (Dkt. No. 139 at 10). The Gayes 25 are aware of no authority supporting the proposition that the version of the composition 26 protected must have been “published” in the form of sheet music prior to registration, 27 and the Court cited no authority to support this conclusion. Instead, registration protects 28 all versions of the composition that existed prior to registration. 6 Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 12 of 29 Page ID #:6887 The Gayes have produced substantial evidence to show that the composition, “Got 1 2 to Give it Up” was written through the recording process and that the version of the 3 composition included on Marvin Gaye’s original commercially released recording was a 4 complete version of the composition that existed prior to registration. (Dkt. No. 139 at 5 9-10; see also Decl. of Janis Gaye at ¶¶ 5, 8). That proof establishes the scope of the 6 copyright and cannot be challenged by an infringer who was actually on notice of the 7 copyright. See Dan Kasoff, Inc. v. Novelty Jewelry Co., 309 F.2d 745 (2d Cir. 1962) 8 (“Even if, as defendants urge, the copyright notice might not be sufficient for some 9 purposes . . . the defendants, as willful infringers wholly aware of the existence of the 10 copyright, are in no position to assert the insufficiency of the notice.”); see also National 11 Comics Pubs. v. Fawcett Pubs., 191 F.2d 594, 603 (2d Cir. 1951). The purpose of the deposit requirement under 17 U.S.C. § 408(b) is not to define the 12 13 scope of an infringement claim, but instead “is to identify the copyrighted work for the 14 purposes of registration.” Scentsy, Inc. v. B.R. Chase, 942 F. Supp. 2d 1045, 1050 (D. Idaho 15 2013) (rev’d and remanded, in part, on other grounds) 2 ; Paul Goldstein, Goldstein on 16 Copyright § 3.8 (2013); see also Three Boys Music Corp. v. Bolton, 212 F.3d 477 (9th 17 Cir. 2000); KnowledgePlex, Inc. v. Placebase, Inc., No. C 08-4267 JF(RS), 2008 WL 18 5245484, at *10 (N.D. Cal. Dec. 17, 2008); Milliken & Co. v. Shaw Indus., Inc., 978 F. 19 Supp. 1155, 1158 (N.D. Ga. 1997). “Although the 1909 Copyright Act requires the owner 20 to deposit a ‘complete copy’ of the work with the copyright office, [the Ninth Circuit’s] 21 definition of a ‘complete copy’ is broad and deferential: ‘Absent intent to defraud and 22 prejudice, inaccuracies in copyright registrations do not bar actions for infringement.’” 23 Three Boys Music Corp., 212 F.3d at 486 (citing Harris v. Emus Records Corp., 734 F.2d 24 1329, 1335 (9th Cir. 1984)). Under the 1909 Act, registration of a work is proper even 25 2 reversing the lower lower Court, Court, the Ninth Circuit did not squarely squarely address address this issue, issue, but In reversing Ninth Circuit implicitly noted its agreement agreement by stating: “We "We agree agree with with the the district district court’s court's conclusion conclusion implicitly noted its by stating: 27 regarding regarding the extrinsic broad copyright extrinsic test that the designs designs at issue issue are subject subject to broad copyright protection." Scentsy, Inc. 585 F. F. App’x App'x 621, 621, 622 622 (9th (9th Cir. Cir. protection.” Scentsy, Inc. v. Harmony Harmony Brands, Brands, LLC, LLC, 585 28 2014). 2014). 26 7 Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 13 of 29 Page ID #:6888 1 where the deposit copies do not reflect the entirety of the work protected. See 2 Nimmer 2 on Copyright § 7.17[E][2][b] at n.72 (citing Johnson v. Salomon, 197 U.S.P.Q. 801 (D. 3 Minn. 1977)). In fact, such a rule is necessary because it is virtually impossible for sheet 4 music to encompass every compositional element of a work and under the 1909 Act, and 5 the Copyright Office would not accept sound recordings as deposit copies. (Dkt. No. 6 139 at 10). 7 The Court’s conclusion that only the portions of the composition which were 8 published, as defined by the Copyright Act, are protected is not supported at all by the 9 1909 Copyright Act or case law interpreting it. In fact, the publication of a composition 10 and subsequent registration protects the entirety of the composition, as long as the 11 published version, whether complete or not, identifies the full composition as it existed 12 at the time of publication. See Shoptalk, Ltd. v. Concorde-New Horizon Corp., 168 F.3d 13 586, 592 (2d. Cir. 1999) (holding a previously unpublished work is “published” when a 14 derivative work of the prior work is published if the previously unpublished work is 15 disclosed in the derivative work). 16 This was exactly the finding of the Ninth Circuit in Three Boys. While this Court 17 has stated that it reads Three Boys as involving a question of jurisdiction, that is only part of 18 the decision. Three Boys involved facts nearly identical to the ones at issue in this action: a 19 popular post-1978 composition infringed upon a copyright granted under the 1909 Copyright 20 Act. 212 F.3d at 480-81. The Three Boys Court allowed the jury to hear and analyze the 21 compositions, as expressed in the respective artists’ commercially available sound 22 recordings, even though the recordings contained two elements not contained in the 23 deposited lead sheet and an additional element that was different from the element contained 24 in the lead sheet. (Trial Tr. at 7:21-25, 101:20-102:3; 337:13-18, 524:6-12; 525:7; 789:1725 24; 791:1-793:2; 889:21-890:4; 1140:10-1142:3, attached as Ex. B to Busch Decl.). 26 Thereafter, comparative demonstration recordings were also presented to the jury for 27 analysis. (Id. at Trial Tr. 1140:10-1142:3). The jury, in finding infringement had occurred, 28 determined that, among other things, a unique combination of unprotectible elements in both 8 Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 14 of 29 Page ID #:6889 1 works made the works substantially similar. (Id. at 486). Two compositional elements not 2 in the deposit copy, as well as a compositional element which was different from what was 3 contained in the deposit copy, were part of the finding of infringement, meaning that three 4 out of the five elements that resulted in the infringement finding were either not in the 5 deposit copy or different from what was in the lead sheet (Id. at Trial Tr. 760:18-761:15). The Ninth Circuit held, after hearing the complete compositions as embodied in the 6 7 respective artists’ commercially available sound recordings and comparative demonstration 8 recordings, that “[t]he jury . . . ‘found infringement based on a unique compilation of those 9 elements. We refuse to interfere with the jury’s credibility determination, nor do we find that 10 the jury’s finding of substantial similarity was clearly erroneous.” Three Boys Music Corp., 11 212 F.3d at 485-86. The Court noted it is “well-settled” that a combination of unprotectible 12 elements can be protected and infringed upon. Id. at 485. The Ninth Circuit expanded this 13 ruling in Swirsky v. Carey, 376 F.3d 841, 848 (9th Cir. 2004) (finding infringement based on 14 a combination of individually unprotectible elements such as genre, and citing additional 15 cases that have allowed a combination of unprotectible elements to be protected). Certainly, it is unbelievable that the Ninth Circuit would not find error with a verdict 16 17 relying on three compositional elements which were not protected when the jury could only 18 consider a total of five elements. Instead, Three Boys must be understood as holding that the 19 deposit copy only identifies the copyright at issue of which the most complete version may 20 be found in the composition as embodied on a sound recording.3 This reading of Three Boys has been recognized by other Courts in the Ninth 21 22 Circuit. In KnowledgePlex, Inc. v. Placebase, Inc., the Court determined there was “no 23 authority” for finding a court’s jurisdiction was limited to the material “deposited with 24 the Copyright Office.” 2008 WL 5245484, at *10. The Court went on to hold, “the 25 Ninth Circuit in Three Boys explicitly rejected an argument that the district court lacked 26 subject matter jurisdiction over a copyright infringement claim where the plaintiff had 27 3 28 This ruling must also mean that the jury jury can hear the commercially commercially released released sound recording, even if that recording unprotectible elements. recording, ifthat recording contains arguably unprotected unprotected or unprotectible 9 Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 15 of 29 Page ID #:6890 1 ‘failed to register a complete copy of the song upon which the lawsuit was based,’ in that 2 “the deposit copy [did] not include the majority of the musical elements that were part of 3 the infringement claim.’” Id. (citing Three Boys Music Corp., 212 F.3d at 486). These 4 Courts are explicitly reading Three Boys for the proposition that the incomplete lead 5 sheet at issue in that case protected the best version of the composition that existed at the 6 time of registration, the composition as embodied on the sound recording. 7 In this case, the Gayes’ have put on eye-witness proof that Marvin Gaye 8 composed the compositions in the studio as part of the recording process. (Gaye Decl. at 9 ¶¶ 5, 6). These compositions were not immediately transcribed to sheet music, but were 10 instead recorded. (Id. at ¶ 8). It is this recording that evidences the entirety of the 11 composition and the Gayes have put on proof showing ownership of the entirety of this 12 composition. Of course, as the Court has stated, the composition as embodied on the 13 sound recording was not protected under the 1909 Copyright Act until it was published 14 and no suit for infringement could have been brought before a deposit and registration 15 was made, (Dkt. No. 139 at 9), but that is a wholly different principle from the Court’s 16 next leap, that the composition as embodied in the recording, as the most complete 17 version of the composition, is not protected and does not define the scope of the 18 copyrighted work. Indeed, this statement is inconsistent with this Court’s other 19 conclusion, that it is not the deposit that limits the scope of the composition, but is 20 instead the composition as it existed at the time of registration. (Id.). The Court is 21 simply incorrect in ruling that only the published portions of the composition could be 22 protected. There is no authority for that position. Instead, just as the Ninth Circuit 23 affirmed in Three Boys, once a composition is registered, the entire composition is 24 protected. 25 The musical composition “Got to Give it Up” was created simultaneously as it was 26 being recorded. (Gaye Decl. at ¶ 6). Thus, the musical composition of “Got to Give it Up” 27 in total is embodied in the sound recording. The lead sheet submitted to the Copyright 28 Office was only created after the recording. (Id. at ¶ 8). The sound recording on which the 10 Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 16 of 29 Page ID #:6891 1 lead sheet is based is the best evidence of what comprises or constitutes the composition for 2 the purposes of the intrinsic test and it must be admitted at trial. 3 Such a rule is necessary as, “musical compositions often go through numerous 4 revisions. Compelling the owner of the copyright to deposit each revision pursuant to [The 5 Copyright Act] would be unwise and unmanageable.” Jones v. Virgin Records, Ltd., 643 F. 6 Supp. 1153, 1159 n.13 (S.D.N.Y. 1986). Instead of such an unworkable regime, it is the 7 deposit copy’s job to identify the composition, not to define it. Thus, the contents of the 8 lead sheet are for the purpose of identifying the work that has been registered and not to 9 identify each any every claimed element of the registered work. See KnowledgePlex, Inc., 10 2008 WL 5245484, at *9. 11 Finally, adopting the theory put forth by the Plaintiffs, and contained in the Court’s 12 January 28 Order, would have drastic and devastating consequences for intellectual 13 property. Such an interpretation of the law would essentially legalize wholesale copyright 14 infringement of pre-1978 compositions. It would allow individuals to copy every single 15 compositional element of a song as long as those compositional elements were not 16 particularly set forth in published sheet music or the lead sheet deposit copy submitted with 17 a registration. Not only would this greatly weaken copyright protections overall, but it 18 would have a particularly harsh effect on individuals who may be great composers of songs, 19 but do not read or write music. Such a rule would unfairly disadvantage composers who 20 could not afford to or did not have access to the musical education needed to properly 21 employ musical notations. That an individual does not know the meaning of the word 22 “parlando” or how to notate percussion should not mean that individual’s work is so 23 devalued as to receive a lesser degree of copyright protection. Such a rule would harm 24 every creator, but would be especially harsh for the poor and disenfranchised. 25 The Court’s ruling would allow infringers to steal classic portions of the songs by 26 Marvin Gaye, the Beatles, the Rolling Stones, Elvis Presley, and every other iconic artist 27 whose works were created before 1978, when the law was amended to permit the deposit 28 of sound recordings as evidence of the author’s composition, so long as the 11 Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 17 of 29 Page ID #:6892 1 compositional elements embodied in their pre-1978 sound recording were not present or 2 different than the compositional elements in the deposited lead sheets or published sheet 3 music. It would mean that the compositions embodied in recordings of pre-1978 works 4 could not be copyrighted, since recordings could not be submitted, and would in affect 5 constitute uncopyrightable derivative works of the published sheet music. The 6 differences between the sheet music and the entire recorded composition would be free 7 to be stolen with complete impunity. That is not and cannot be the law. Based on the foregoing, the Gayes submit that any Order which determines that the 8 9 scope of the protected works, in this case, are fully delineated by the deposit copy lead sheet 10 is contrary to the law and in direct conflict with binding Ninth Circuit authority. Such a 11 decision must be reversed. 3. The Gayes Must Be Allowed to Play Marvin Gaye’s Commercially Released 12 13 Sound Recordings and Excerpts of Those Recordings at Trial 14 While, as discussed above, the Court’s ruling leaves questions regarding the scope 15 of the sound recordings that may be introduced at trial, it is clear that the entire sound 16 recordings will not be admitted under the Court’s current Order. 4 The Gayes disagree 17 with the Court and assert that such a ruling is a clear error of law and should be reversed. 18 Because such a ruling, as discussed below, has such broad ranging consequences, the 19 Gayes request the Court to order a Hearing at which the Gayes’ expert witnesses may 20 present testimony and specific audio examples setting forth the importance and value of 21 Marvin Gaye’s sound recordings, and how those sound recordings, both in whole and in 22 part, are important to an accurate analytical analysis of the compositions, and to a jury’s 23 ability to apply the ordinary observer test. Allowing the jury to hear Plaintiffs’ 24 commercially released sound recordings and voices, without relying solely upon a lead 25 4 While the Gayes Gayes believe dictates that the entirety entirety of the sound sound recordings While believe that the law dictates recordings be played, Gayes do understand understand the Court Court has discretion to manage manage a trial and such played, the Gayes has discretion 27 discretion well be used recordings to be played. discretion could could well used to limit the length length of the recordings played. However, not so broad However, that discretion discretion is not broad as to allow allow for the limiting limiting of the sound sound 28 recordings to only certain within portions portions being being played. recordings certain elements elements within played. 26 12 Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 18 of 29 Page ID #:6893 1 sheet edition of Plaintiffs’ works, while excluding all, but a few elements of the sound 2 recordings which embody Marvin Gaye’s compositions, and limiting the jury’s analysis 3 only to what is reflected on a lead sheet for Marvin Gaye’s works, is incongruous and 4 patently unfair, and deprives the Gayes of the opportunity to prove the copying of the 5 compositional elements of their protected compositions. 6 As discussed above, the compositions as embodied in the sound recordings are the 7 compositions at issue in this action. The Gayes have not alleged ownership of Marvin 8 Gaye’s sound recording copyrights, and have not alleged infringement of those sound 9 recording copyrights. However, as owners of their father’s composition copyrights, the 10 Gayes have alleged infringement of those works and point to the best manifestation of 11 their father’s compositions (which subsists within his commercially released recordings) 12 as the “apples to apples” basis for comparison against the Plaintiffs’ compositions. The 13 Court’s ruling would have the jury compare an apple to an apple seed. 14 However, even if the infringement claims were limited to the elements in the 15 respective deposit copy, which they should not be, the Gayes must be allowed to play 16 the sound recordings as (1) this would be the only music copyright infringement case 17 ever that the Gayes’ counsel can locate where commercial sound recordings of the songs 18 at issue were not allowed to be played, since the commercially released sound recordings 19 are the best evidence of the expression of a composition in the manner in which an 20 ordinary observer would experience the composition; and (2) the sound recordings in 21 this case provide direct and circumstantial evidence of copying of the underlying 22 composition, since the copying of elements found in Marvin Gaye’s recordings would be 23 probative evidence of the copying of the undisputedly protected elements found in the 24 lead sheets, and the Ninth Circuit has specifically found that copying is often proven in 25 copyright infringement cases by circumstantial evidence. 26 Refusal to allow the playing of Marvin Gaye’s sound recordings would be an error 27 of law unsupported by any authority. 28 13 Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 19 of 29 Page ID #:6894 1 4. An Ordinary Observer Cannot Accurately Apply the Concept and Feel Test 2 Without the Benefit of Hearing the Sound Recording that is the Most 3 Accurate and Complete Expression of the Underlying Composition 4 In music copyright cases, courts have consistently permitted the jury to hear the 5 sound recordings of compositions at issue that were registered prior to the 1978 6 Copyright Act, even though lead sheets were deposited with the Copyright Office to 7 satisfy the deposit requirement. For instance, in Selle v. Gibb, 741 F.2d 896, 903 n.3 (7th 8 Cir. 1984), the court, in overruling the jury’s finding of infringement due to lack of access, 9 noted that “Plaintiff relies on the fact that both songs were played on numerous occasions in 10 open court for the jury to hear . . . .” The Seventh Circuit specifically referred to recordings 11 played for the district court to “more concretely” support its determination of striking 12 similarity. Id. Likewise, in Arnstein v. Porter, 154 F.2d 464, 469 (2d Cir. 1946), the court 13 specifically stated that it listened to “the compositions as played in the phonograph 14 recordings submitted by defendant . . .” to determine if infringement did exist. In Repp v. 15 Webber, 892 F. Supp. 552, 558 (S.D.N.Y. 1995), the court noted that, “[h]aving listened to 16 the two songs at issue, however, the [c]ourt cannot say as a matter of law that they do not 17 share any substantial similarities. In making this determination, the Court considered the 18 ‘total concept and feel’ of the works in question.” A Southern District of New York court, 19 in N. Music Corp. v. King Record Distrib. Co., 105 F. Supp. 393, 398 (S.D.N.Y. 1952), 20 complained “[w]e have suffered through the playing of the commercial recordings.” The 21 court dealt with a copyright originally registered in 1970 and discussed the playing time of 22 the song, as well as how the recording began and ended, in Jean v. Bug Music, Inc., No. 00 23 CIV 4022 (DC), 2002 WL 287786 (S.D.N.Y. Feb. 27, 2002). See also Three Boys Music 24 Corp., 212 F.3d 477 (Ex. B to Busch Decl. at Trial Tr. at 7:21-25, 101:20-102:3; 337:13-18, 25 524:6-12; 525:7; 789:17-24; 791:1-793:2; 889:21-890:4; 1140:10-1142:3); Navara v. M. 26 Witmark & Sons, 185 N.Y.S.2d 560, 561-62 (Sup. Ct. 1959) (“[T]he jury requested to 27 hear once more recordings of the two musical compositions involved. The jury’s request 28 was granted and they were returned to the court room where the two recordings were 14 Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 20 of 29 Page ID #:6895 1 played and then again retired to deliberate.”); Rich v. Paramount Pictures, 279 P.2d 782, 2 784 (1955) (“The jury heard the accusing and accused compositions played on the piano 3 and on phonograph records.”). 5 In Three Boys, the jury heard the sound recordings 4 played at least four times. (Ex. B to Busch Decl. at 7:21-25, 101:20-102:3; 337:13-18, 5 524:6-12; 525:7; 789:17-24; 791:1-793:2; 889:21-890:4; 1140:10-1142:3). Plaintiffs have not put forth a single case or persuasive authority that would 6 7 permit a court to preclude the jury from hearing the commercial sound recordings of the 8 alleged infringed songs at issue and the Gayes are unaware of any legal authority that 9 would support the Court’s decision to exclude the commercial sound recordings in light 10 of the law of the Ninth Circuit and other Circuits and Districts. 5. The Intrinsic Test Requires the Playing of the Entire Sound Recordings 11 The jury in this case will be tasked with determining whether an ordinary observer 12 13 would find the total concept and feel of the works at issue is substantially similar. The 14 only way to determine whether the ordinary listener would find this substantial similarity 15 is to let the jury hear the Marvin Gaye compositions as Thick and Williams heard them 16 and as an ordinary person in the world would hear them: through the sound recordings 17 on which they are embodied. It would be totally unfair and prejudicial for the jury to 18 attempt to apply this test while hearing a heavily edited version of the Gaye 19 compositions while hearing the entirety of the Plaintiffs’ compositions, as commercially 20 recorded. In determining whether two works are substantially similar, the Ninth Circuit 21 22 employs a two-part analysis: an objective extrinsic test and a subjective intrinsic test. 23 Swirsky, 376 F.3d at 845 (9th Cir. 2004). The intrinsic test asks whether “the ordinary, 24 reasonable person, would find the total concept and feel of the work to be substantially 25 similar.” Three Boys Music. Corp., 212 F.3d at 485) (emphasis added). “The two works . . . 26 should be considered and tested, not hypercritically or with meticulous scrutiny, but by the 27 5 28 All of the aforementioned aforementioned cases cases involved involved musical musical composition composition copyrights copyrights registered registered under the Copyright under Copyright Act of 1909. 1909. 15 Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 21 of 29 Page ID #:6896 1 observations and impressions of the average reasonable reader and spectator.” Sid & Marty 2 Krofft Television Prods., Inc., 562 F.2d 1157, 1164 (9th Cir. 1977). A jury may find a 3 combination of unprotectible elements to be protectible under the extrinsic test because ‘the 4 over-all impact and effect indicate substantial appropriation.’” Three Boys Music Corp., 212 5 F.3d at 485; see also Radin v. Hunt, LA CV10-08838 JAK (SSx), at 4 (C.D. Cal. Dec. 15, 6 2011). In order to find such a combination protectible, “the jury must be allowed to see 7 the complete work.” Dream Games of Arizona, Inc. v. PC Onsite, 561 F.3d 983, 988 (9th 8 Cir. 2009). This requires the jury to have access to the full composition, as it exists 9 embodied in the sound recording, even if it contains unprotected elements. 10 Parceling out portions of the composition is prohibited under the intrinsic test as it 11 precludes the jury from viewing the work as a whole to determine the “total concept and 12 feel.” Lay listeners simply do not have the ability to listen to abstract edited portions of a 13 composition and then compare those edited portions of the composition with a fully fledged, 14 commercially polished recording. It would not be fruitful for a jury to listen only to a 15 Marvin Gaye bass line without any of the other accompanying music and then attempt to 16 compare that bass line to a fully formed composition as embedded in a commercially 17 released sound recording. As the Second Circuit has ruled in applying the 1909 Copyright 18 Act: 19 [T]he proper criterion on [copying] is not an analytic or other comparison of 20 the respective musical compositions as they appear on paper or in the 21 judgment of trained musicians. The plaintiff's legally protected interest is . . . 22 his interest in the potential financial returns from his compositions which 23 derive from the lay public's approbation of his efforts. The question, 24 therefore, is whether defendant took from plaintiff's works so much of what 25 is pleasing to the ears of lay listeners, who comprise the audience for whom 26 such popular music is composed, that defendant wrongfully appropriated 27 something which belongs to the plaintiff. 28 16 Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 22 of 29 Page ID #:6897 1 Arnstein, 154 F.2d at 472-73. Thus, that Court went on to find that “[a]t the trial, 2 plaintiff may play, or cause to be played, the pieces in such manner that they may seem 3 to a jury to be inexcusably alike, in terms of the way in which lay listeners of such music 4 would be likely to react. Id. at 473. That is exactly the manner in which the Gayes seek 5 to prosecute their case. 6 The Marvin Gaye composition “Got to Give it Up”, which was created as it was being 7 recorded, is not and should not be limited to only a few compositional elements from the 8 total number of elements present on the sound recording, since an average observer cannot 9 discern the total concept and feel of “Got to Give it Up” by listening only to only a fragment 10 of the composition as it is normally played, especially when, in comparison, the composition 11 “Blurred Lines” will be presented to the jury in the form of the commercially released 12 recording. While trained musicians might be able to follow such a broken down version of a 13 composition, neither an ordinary observer nor an average juror can. It would be far easier, 14 more efficient, and entirely consistent with long-established copyright jurisprudence, for the 15 parties’ expert musicologists and the Court’s instructions to guide the jury in filtering out of 16 consideration any allegedly unprotected elements, than to have the jury consider surgically 17 altered musical examples which sound dissimilar even to commercially released recordings 18 of those very same works. 19 In Plaintiffs’ Motion in Limine to exclude the sound recordings, Plaintiffs cited no 20 legal basis for exclusion, as none exists. Based on the Gayes’ research, if this ruling stands, 21 this case will be the first case in the history of United States copyright law that precludes the 22 jury from hearing the commercial sound recordings of songs at issue in copyright 23 infringement litigation. 24 25 6. The Sound Recordings Provide Highly Probative Evidence of Copying Excluding the commercially released sound recording prevents the Gayes from 26 putting on evidence of the totality of what was copied. Neither Robin Thicke nor 27 Pharrell Williams can read music. (Thicke Dep. at 58:2-12, April 23, 2014, attached to 28 Busch Decl. as Exhibit C; Williams Dep. at 55:4-59:17, April 21, 2014, attached to 17 Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 23 of 29 Page ID #:6898 1 Busch Decl. as Exhibit D). However, it is undisputed that they have heard Marvin 2 Gayes’ music. (Busch Decl. Ex. C at 18:3-6, 154:11-16; Busch Decl. Ex. D at 60:3-5). 3 It is in fact the very hearing of the commercially released sound recording of “Got to 4 Give it Up” that allowed Thicke and Williams to copy Marvin Gaye’s work. That is 5 evident from the fact that many compositional elements of “Got to Give it Up”, as well 6 as some non-protectible elements from Marvin Gaye’s recording, are included in 7 “Blurred Lines.” 8 There is no dispute that at least some of these compositional elements exist only in 9 the composition as embodied in the sound recording and not on the lead sheet. (Finell 10 Decl. at ¶ 7). And while the Gayes dispute that the composition at issue is limited to the 11 lead sheet, even if it were, the copying of these other compositional elements is 12 circumstantial evidence of copying. (Id. at ¶ 17). While these elements seem complex 13 when described in a Declaration or through testimony, the listening to the sound 14 recording that embodies these elements makes it possible for an ordinary observer to 15 hear them without any music training. (Id. at ¶¶ 17-19). 16 When the jury hears these similarities, it will conclude they could only have 17 resulted from copying. This is strong circumstantial evidence. When similarities are 18 striking, “as a matter of logic, the only explanation for the similarities between the two 19 works must be ‘copying rather than . . . coincidence, independent creation, or prior 20 common source.’” JB Oxford & Co. v. First Tennessee Bank Nat. Ass’n., 427 F. Supp. 21 2d 784, 796 (M.D. Tenn. 2006) (citing 4 Nimmer Copyright § 13.02[B], at 13-26 22 (2006)). 23 In copyright infringement cases, the party bringing suit is almost always forced to 24 rely solely on circumstantial evidence, and excluding such evidence is error that requires 25 this Court to reconsider its decision. 26 As can be agreed, “[e]vidence is relevant if (a) it has a tendency to make a fact 27 more or less probable than it would be without the evidence; and (b) the fact is of 28 consequence in determining the action.” Fed. R. Evid. 401. “The standard of probability 18 Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 24 of 29 Page ID #:6899 1 under the rule is ‘more . . . probable than it would be without the evidence’ . . . it is not 2 to be supposed that every witness can make a home run.’” Id. “The fact to be proved 3 may be ultimate, intermediate, or evidentiary; it matters not, so long as it is of 4 consequence in the determination of the action.” Fed. R. Evid. 401 advisory 5 committee’s note (1972). Relevant evidence may be excluded if its probative value is 6 “substantially outweighed” by a danger of unfair prejudice. Fed. R. Evid. 403 (emphasis 7 added). In this case, the probative weight of the evidence is great, as discussed in detail 8 below, as evidence of copying, whether lawful or not, is extremely strong evidence in 9 showing unlawful copying. In order to exclude this evidence, the Court would have to 10 find that the unfair prejudicial effect of the evidence was substantially greater than the 11 quite high probative value. Even then, “in reaching a decision whether to exclude on 12 grounds of unfair prejudice, consideration should be given to the probable effectiveness 13 or lack of effectiveness of a limiting instruction . . . .” Fed. R. Evid. 403 advisory 14 committee’s note (1972). In fact, the January 28 Order found that a limiting instruction 15 would serve to prevent unfair prejudice in regard to Marvin Gaye’s voice. (Dkt. No. 231 16 at 5). The same is true for any other portion of the composition embodied on the sound 17 recording. In fact, for many decades since the passage of the 1909 Copyright Act juries 18 have been allowed to listen to unprotected sound recordings in order to determine 19 whether the compositions embodied on those sound recordings had been infringed. See, 20 e.g., Repp v. Webber, 892 F. Supp. at 558; Selle, 741 F.2d at 903 n.3; Arnstein, 154 F.2d at 21 469; N. Music Corp., 105 F. Supp. at 398; Finell Decl. at ¶ 20. 22 One of the most important reasons for allowing such evidence is that proof of 23 copyright infringement is often highly circumstantial, particularly in cases involving 24 music. Three Boys Music Corp., 212 F.3d at 481. “[W]here circumstantial evidence is 25 presented, however, the Court may consider the plausibility and reasonableness of 26 inferences arising therefrom.” See Flynn v. Surnow, No. CV 02-9058-JFW PLAX, 2003 27 WL 23411877, at *2 (C.D. Cal. Dec. 9, 2003) (quoting Anderson v. Liberty Lobby, Inc. 28 477 U.S. 242, 249-50 (1986)); see also Mil-Spec Monkey, Inc. v. Activision Blizzard, 19 Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 25 of 29 Page ID #:6900 1 Inc., No. 14-CV-02361-RS, 2014 WL 6655844, at *3 (N.D. Cal. Nov. 24, 2014). “In all 2 cases, the task is to apply logic and experience to determine if copying is the only 3 realistic basis for the similarities at hand.” Walker v. Viacom Int'l, Inc., No. C 06-4931 4 SI, 2008 WL 2050964, at *7 (N.D. Cal. May 13, 2008) aff'd sub nom. Walker v. Viacom 5 Int'l, Inc., 362 F. App'x 858 (9th Cir. 2010) (citing 4 Nimmer on Copyright § 13.02[B] at 6 13-28.1). “Probative similarities are similarities that ‘would not be expected to arise 7 independently’ in the normal course of events, Nimmer § 13.01[B] at 13–13, and thus 8 ‘give rise to an inference of actual copying’ on the part of the defendant.” Prunte v. 9 Universal Music Grp., 563 F. Supp. 2d 41, 43 (D.D.C. 2008) (quoting Johnson v. 10 Gordon, 409 F.3d 12, 18 (1st Cir. 2005)). 11 In this case, the copying of non-lead sheet compositional elements is, at a 12 minimum, circumstantial proof that the Thicke Parties had “Got To Give It Up” in their 13 mind and that other portions, acknowledged to be protected under the Copyright Act by 14 the Court, were copied and were not the result of coincidence. See Maggio v. Liztech 15 Jewelry, 912 F. Supp. 216, 222 (E.D. La. 1996) (noting that the silhouettes, at issue, are 16 not alone protected expression, but finding infringement based on access and on “other 17 common aspects of expression, such as the shape of the silhouettes”). The prejudice to 18 the Gayes of disallowing this evidence far exceeds any prejudice to the Thicke parties, 19 since this type of evidence is directly relevant to the main issue in the case: whether the 20 Plaintiffs had “Got To Give It Up” in their mind when creating “Blurred Lines.” 21 One of the ultimate issues in a copyright infringement claim and perhaps, the 22 threshold question, is whether copying occurred. See Yankee Candle Co. v. Bridgewater 23 Candle Co., LLC, 259 F.3d 25, 33 (1st Cir. 2001). The presence of both protected 24 elements and non-protected elements establishes that “Blurred Lines” actually copied 25 portions, including protected elements, of “Got to Give it Up” and that “Love After 26 War” actually copied portions of “After the Dance.” 27 28 C. SHOULD THE COURT ULTIMATELY DECIDE THE SCOPE OF THE PROTECTED WORKS IS LIMITED ONLY TO ELEMENTS INCLUDED IN THE DEPOSIT COPIES, THE GAYES REQUEST THAT THE QUESTION 20 Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 26 of 29 Page ID #:6901 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 OF WHETHER A COPYRIGHT PLAINTIFF’S WORK IS LIMITED ONLY TO COMPOSITIONAL ELEMENTS IN PUBLISHED VERSIONS OF THE WORK BE CERTIFIED FOR AN INTERLOCUTORY APPEAL PURSUANT TO 28 U.S.C. 1292(B) In the alternative, the Gayes request permission to take an Interlocutory Appeal to resolve this pure question of law and bring this matter to an efficient resolution. 1. Standard of Review for an Interlocutory Appeal Under 28 U.S.C. § 1292(b), a party may move a district court to certify an “otherwise unappealable” order for interlocutory review. In order to certify the order, the court must find that “such order involves a controlling question of law as to which there is substantial ground for difference of opinion and that an immediate appeal from the order may materially advance the ultimate termination of the litigation.” The moving party bears the burden of demonstrating these prerequisites. Couch v. Telescope Inc., 611 F.3d 629, 633 (9th Cir. 2010). 2. An Interlocutory Appeal is Proper under the Instant Scenario A party seeking interlocutory review must show (1) a controlling question of law; (2) a substantial ground for a difference of opinion; and, (3) that such review will materially advance the ultimate termination of the litigation. The Gayes can show all three prerequisites. First, the question the Gayes seek to certify is purely a question of law: whether a copyright plaintiff’s work is limited to compositional elements found in published versions of the work. That is a question of statutory interpretation under the 1909 Copyright Act. Second, there is substantial ground for a difference of opinion on this question. As discussed in great detail above, there is ample case law, and the Gayes contend uniform case law, supporting a finding that the deposit requirement of the 1909 Copyright Act is for identification purposes only and does not limit in any way the scope of a copyright infringement claim. It is publication and registration that allows for a suit to be filed, but the versions of the works protected are not limited to the published 21 Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 27 of 29 Page ID #:6902 1 works, but instead are limited only to the best versions of the works that are identified in 2 the deposit copy. This case law comes from not only the Ninth Circuit, but other 3 Circuits and District Courts inside and outside this Circuit. Additionally, Plaintiffs have 4 been unable to point to a single on-point case showing the law requires a finding that a 5 copyright is limited to the elements contained in published versions of the work, and the 6 Court has also not cited any authority for this proposition. 7 Finally, allowing interlocutory review will lead to a more efficient resolution of 8 this matter. Such review will conserve the Court’s limited resources and the limited 9 resources of the Gayes. The law is clear that an interlocutory appeal should be certified 10 only when doing so would avoid protracted and expensive litigation. Shurance v. 11 Planning Control Int’l, Inc., 839 F.2d 1347, 1348 (9th Cir. 1988). In this case, it is clear 12 that as much as forty percent of the similarities between “Blurred Lines” and “Got to 13 Give it Up” are contained in elements of the “Got to Give it Up” composition embodied 14 in the commercially available sound recording. (Finell Decl. at ¶ 16). Allowing this 15 matter to proceed to trial with such a diluted theory and body of evidence for the Gayes 16 will so hamper the Gayes’ ability to prevail as to potentially make the trial a waste of 17 time for the Court and the parties. This means the Court and parties will have to prepare 18 for a massive trial, with the Gayes’ musicologists substantially re-working demonstrative 19 exhibits and attempting to create new ones, while hampered by unclear guidelines, and 20 will spend two weeks in a trial, that is unlikely to ultimately resolve the dispute between 21 the parties. Instead, that dispute will continue on to the appellate court for a ruling that 22 may well require a second trial of this matter. While in every case there is the possibility 23 of an appeal and retrial, that possibility will be made exponentially greater under the 24 current facts and in light of this precise legal issue, which should be resolved before the 25 trial. This is true because the Gayes will be prohibited from putting forth their strongest 26 evidence or provide the jury with an “apples-to-apples” comparison, while 27 simultaneously holding a strong appellate issue on the law. Indeed, the Gayes believe 28 22 Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 28 of 29 Page ID #:6903 1 that the Court’s ruling is directly contrary to Ninth Circuit precedent, and should be 2 resolved before a trial occurs. 3 Such a scenario has real consequences for this Court as rehearing a lengthy trial 4 will eat into the Court’s limited time to hear other matters. More drastically, such a 5 scenario could be potentially financially ruinous for both parties. Not even including 6 attorney time, this litigation has been incredibly expensive. (Gaye Decl., at ¶¶ 10-12). 7 The expected trial expenses will also be dramatic. Further, the Copyright Act gives 8 courts discretion to award attorney’s fees to prevailing parties. 17 U.S.C. § 505. Should 9 the Gayes lose a trial in which they are unable to put forth their strongest evidence, the 10 Gayes would have many defenses to the awarding of such fees and do not believe it 11 would be appropriate to award fees against them. However, the Gayes must move 12 forward with the assumption that, should Plaintiffs prevail, they will aggressively seek to 13 recover astronomical fees. Facing a potential adverse award in excess of $1 million 14 creates a scenario in which it could be difficult if not impossible for the Gayes to be able 15 to post a bond, and they would face the prospect of having their source of income, 16 royalties from Marvin Gaye’s works, garnished, while an appeal is pending. 17 By obtaining an early appellate ruling on such issues, all the parties will have a 18 better sense of the case before them and will be able to act in more financially 19 reasonable manner. Without such appellate guidance, the parties will each be spending 20 thousands and thousands of dollars daily in order to continue to put their case forward. 21 Such expenses may be easy to bear for major corporations and superstars such as the 22 Plaintiffs, but they are crushing for the Gayes. (Gaye Decl., at ¶ 12). 23 The Gayes request for interlocutory review meets each of the three prerequisites 24 for certification. Granting certification will allow this matter to resolve itself in the most 25 efficient manner while ensuring that the parties have a correct understanding of the 26 scope of the dispute. 27 28 23 Case 2:13-cv-06004-JAK-AGR Document 232-1 Filed 01/29/15 Page 29 of 29 Page ID #:6904 1 2 3. The Current Trial Setting Should be Postponed The Court should, for the reasons discussed above, postpone the trial date and 3 grant the Gayes the right to take an interlocutory appeal on this overarchingly important 4 legal issue. Based on the statements of the Court at the Pretrial Hearing and in its 5 Minute Order, such a postponement will be convenient for the Court as the Court 6 currently has two criminal trials set for February 17, 2015 and a continuance may be 7 necessary to allow those cases to proceed in any event. (Dkt. No. 226 at 4). Such a 8 postponement will further the interests of justice and allow the parties to both comply 9 with the Court’s Orders and put forth their best respective case in order to have this 10 matter decided on the merits. 11 12 Dated: January 29, 2015 13 Respectfully submitted, KING & BALLOW 14 17 By: /s/ Richard S. Busch RICHARD S. BUSCH PAUL H. DUVALL SARA R. ELLIS 18 WARGO & FRENCH, LLP 15 16 19 20 21 22 23 By: /s/ Mark L. Block MARK L. BLOCK Attorneys for Defendants and CounterClaimants Nona and Frankie Gaye THE LAW OFFICES OF PAUL N. PHILIPS 24 25 By: /s/ Paul N. Philips PAUL N. PHILIPS 26 27 Attorney for Defendant and Counter-Claimant Marvin Gaye III 28 24