How Sweet it is to be Sued by You (for copyright infringement)

Robin Thicke. Used with permission under CC 2.0.

Once upon a time a couple of years ago, one of my articles contained the admission that I like scotch, baseball, and horror movies. Here’s another one— I dig soul music. A lot. Granted, I lean more toward the southern variety as opposed to Motown, but oh boy, that is some great music.

Imagine my delight, then, when a friend sent me a link to an article discussing the Marvin Gaye / Robin Thicke copyright litigation. All she said was “huh”, which was of course all the invitation I needed, so let’s just jump right in shall we?

The 1970’s were a fantastic time for music— particularly soul. Marvin Gaye enjoyed tremendous success during this decade and his song Got to Give it Up topped the charts in 1977. Fast forward nearly forty years to 2013, when the tremendously popular singer / songwriter, Robin Thicke recorded his number one hit, Blurred Lines. Cutting to the heart of a long and convoluted story, Mr. Thicke, in response to Mr. Gayes’ children’s accusations of copying and requests for monetary compensation, filed an action for declaratory relief. With the DJ filing, Thicke sought a finding that Blurred Lines does not infringe Got to Give it Up. The Gayes naturally filed counterclaims alleging copyright infringement. But that’s not what’s interesting about this case. What’s interesting about this case is what the parties are arguing should, and should not, be admitted as evidence— namely the sound recording of Got to Give it Up and portions thereof.

It’s important to note that Thicke is not contesting that he had access to the song and he’s not challenging the Gayes’ ownership of it. This means that, for today, we’re not going to discuss the substantial similarity test or the inverse-ratio rule or any of the other juicy tidbits surrounding whether Thicke is a no good dirty rotten copycat— we’re not anywhere near those issues yet. This is because before we can get there we need to sort out what we’ll actually be comparing. This is not as cut and dried as is usually is because what this case really turns on is the scope of what the Gayes’ actually own and what they can enforce.

We need to start with works that pre-date the 1976 Copyright Act. Got to Give it Up was recorded in 1976 and released in 1977, which means its copyright is governed by the 1909 Act. Now, under the 1909 Act, a work had to be published with notice or a deposit had to be made in the Copyright Office. Mere distribution of a song did not meet the publication requirement. Blurred Lines, however, is protected under the 1976 Act. A notable difference between the two statutes is that the 1976 Act gives automatic protection to any original work fixed in a tangible medium. This means that the Blurred Lines copyright is in the recording as opposed to just the sheet music (if there is any). The Gayes, however, theoretically only own the composition embodied in the deposited sheet music for Got to Give it Up, but not the actual sound recording containing the song. This presented the court with the task of figuring out which elements of the song were subject to copyright protection, which elements were not, and what to do with both.

For the purposes of the infringement analysis, the Gaye family wants to include the entire sound recording and not just the sheet music. They allege that protection under the 1909 Act includes all versions of the composition fairly identified in the deposit copy, including the sound recording. In other words, the copyright to Got to Give it Up includes the actual recorded song and is not limited to the sheet music deposited in the Copyright Office. The deposit copy, they argue, only serves to identify— not define— the work. They also allege that carving out the non-copyrighted elements would make this the only case in history where two complete commercial recordings weren’t compared. Thicke, on the other hand, is not arguing that the songs have no similarities— he’s saying that the songs’ copyrighted elements do not have any substantial similarity other than commonplace elements that do not have copyright protection. Specifically, Thicke argues that the ‘groove’ of the recording, the falsetto singing, party noises, and other performance-related elements do not have any bearing on the Gayes’ infringement claim. In short— Thicke is saying that even if the songs sound somewhat similar, those similarities aren’t related to what’s protected and — P.S. — you can’t copyright a genre.

Now, in 1976, the Copyright office did not accept recordings as deposits and the composition in a sound recording was not protected until it was published with notice, which is problematic for the Gayes. These requirements were given the heave-ho with the 1976 Act, but as owners of a 1909 work, this does not do them much good. Judge Kronstadt noted that if elements in sound recordings were covered before then, there wouldn’t have been any need to make the changes adopted by the 1976 Act. The 1909 Copyright Act would, however, have given the Gaye family the right to include more than just the sheet music if the work was published with proper notice, but the evidence presented thus far apparently doesn’t demonstrate that they did that. As a result, the court declined to find an issue as to whether Got to Give It Up has copyrightable material other than what was deposited with the Copyright Office. The Gayes are not happy about this finding.

However, it is clear that Judge Kronstadt is giving a lot of thought to the issues of this case. Though he previously ruled that the recording of Got to Give it Up was inadmissible and that the song would be played on a keyboard, he recently changed directions somewhat. In a February 6th Order, he acknowledged that the Gayes may have a difficult time presenting evidence of similarity if they couldn’t use the recording at all.  Noting that the “total concept and feel of a piano tune without words may differ from that of a vocal melody” he ruled that the parts of the recording of Got to Give it Up that match the copyright deposit sheets could show the intrinsic characteristics of the work, so some of it could be used. But to avoid prejudice to Thicke, the recording would need to be edited to remove all unprotected elements (including the percussion and backup vocals). Interestingly, even though it’s not a protected portion of the song, Marvin Gaye’s voice gets to stay in, with the potential prejudice to Thicke being addressed with a limiting instruction.

The elephant in the room is the question of can we reasonably compare a 1909 work to a 1976 work and come up with a meaningful infringement analysis that doesn’t prejudice either party? Judge Kronstadt acknowledged that this is a novel issue, but proposed what seems to be the most reasonable solution given the circumstances. Many folks are quick to make predictions about this one and even take sides. I believe this is awfully premature. This is a tricky issue and even though I’ve poured over this case, I still feel as though there is a large question mark hanging above my head. On one hand, the Gayes make a point that it is inherently prejudicial to compare a digitally altered recording to a complete one and doing so may even invite this kind of (alleged) infringement in the future. On the other hand, why should they be able to stack the evidence deck with elements of their song that aren’t protected under the statute that governs it?

I’m of the opinion both sides are right, both are wrong, and the judge is doing the best he can with a difficult case. The end result is that no one wins and no one is happy. For the record (pun always intended of course), Got to Give it Up is a fantastic song. Give it a listen and then check out Blurred Lines. This will be fun for those of you inclined to compare the songs as they were recorded but keep in mind this is not what will be played in court. Alas, we may never get to hear what the jury hears so we may never get to wax philosophical with impermissible hindsight. Bummer. Oh well. But all signs point to an appeal no matter who wins, so we may have a long way to go before this is over.

By the way, Magic 8 Ball told me to tell you it’s staying out of this one.