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

By Beth Hutchens
February 19, 2015

Robin_Thicke_performing

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.

The Author

Beth Hutchens

Beth Hutchens is a contributing author on IPWatchdog.com. Beth’s recurring, feature column typically focuses on Internet, trademark, copyright and/or privacy issues. She brings her unique perspective and witty writing style to subject matter that could otherwise be dry. Her insights, along with a “take no prisoners” attitude, work to provide a fun, entertaining and always informative column.

When not writing she is an attorney based in Seattle, Washington. can be reached at beth.hutchens@gmail.com.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 23 Comments comments.

  1. Anon February 19, 2015 11:09 am

    Great article Beth – I love the attention to nuance!

  2. Gene Quinn February 19, 2015 11:27 am

    I second Anon’s comments. I thought this article was exceptional. I didn’t realize this was a case of first impression.

    The first time I heard Thicke’s song I thought it was Gaye’s tune. I still think this ends in only one way, and that is Thicke writing a check to the heirs of Gaye. That being said, it looks like the legal battle will be a very interesting one to watch.

  3. Beth Hutchens February 19, 2015 12:32 pm

    Thanks Gene and Anon! But I’m not sure it will end with Thick forking over a check. Why would he have filed for dec relief if he wasn’t super confident in his position?

  4. Anon February 19, 2015 1:20 pm

    Beth,

    Let’s not disregard a simple alternative: the filing of declaratory relief may not in any way be related to a confidence in a position, as it may be a simple prudent option to be explored.

    A technical question for you though (one I would normally verify for myself – but you may know the answer off hand): Would not the original sound recording itself (by Gaye) inure to the post-1976 Copyright Act (as you point out, it was released in 1977)? Is not the argument then from Mr. Thicke “too clever by half?” If he succeeds in establishing a partition of sorts, does not that very partition in the end defeat his objective?

  5. Beth Hutchens February 19, 2015 1:38 pm

    Anon- oh, sure. I”m certain that Thicke had valid reasons for the dec action, I just don’t know what they are. It’s probably not too important either way- I was just curious.

    As to your second question, am I understanding correctly that you’re suggesting there may be some sort of retroactive application of 1976 principles to 1909 works? I really don’t know off the top of my head, but that would be interesting. I do know that Judge Kronstadt looked to legislative reports from the time and concluded that certain portions of the work weren’t protected. Can you clarify what you mean?

  6. Anon February 19, 2015 4:55 pm

    The object here: Marvin Gaye’s 1977 release – if following the “separability” aspect of Thicke’s argument – obtains the post-1976 Act protections.

  7. anon2 February 19, 2015 5:57 pm

    @ Anon – the effective date January 1, 1978

    Sec. 102. // 17 USC note prec. 101. // This Act becomes effective on January 1, 1978, except as otherwise expressly provided by this Act, including provisions of the first section of this Act. The provisions of sections 118, 304(b), and chapter 8 of title 17, as amended by the first section of this Act, take effect unpon enactment of this Act.

    PL 94–553 (S 22), PL 94–553, OCTOBER 19, 1976, 90 Stat 2541

  8. Anon February 19, 2015 6:09 pm

    Thanks anon2. I see that my question causes more confusion based on a point that I should have known before asking.

  9. Benny February 20, 2015 7:54 am

    ” The end result is that no one wins and no one is happy”
    Thats true as long as you exclude the lawyers working on the case…

  10. Beth Hutchens February 20, 2015 10:39 am

    Thanks, Anon2, for keeping us on track.

    And no worries, Anon. It was a good question anyway. If the Act did have some sort of retroactive application, I guess there wouldn’t be much of an issue here and the case would go the way of Thicke writing a check. But its fun to think about future cases if the Act did apply retroactively. Can you imagine? Oh Mylanta, what a mess!

    But, as it is, I’m going to presume the recording of Got to Give it Up is much closer sounding than any doctored mash-up either side can come up with. This may be another case that starts the a series of cases like the sampling cases and has the potential to really shake things up.

    I wonder if the Gayes will lose that part of the case, thus setting the precedent for submission of digitally altered 1909 recordings for future cases, but Thicke will lose this overall anyway because even after all that, the Gayes can still show copying- especially because of Thicke’s comments to GQ.

  11. Simon Elliott February 20, 2015 1:26 pm

    Interesting to note that the Congress gave us (basically) 100 year copyright, but keep chipping away at patents which only have a 20 year right. If you think about the amount of time and effort in getting a patent on a drug, why does the drug get the more limited protection? If you consider the limited protection, why is it surprising that a drug company will charge a hefty premium on the product?

  12. Anon February 20, 2015 2:34 pm

    Simon,

    You bring up an interesting dichotomy, but for which there are many reasons and discussion points to entertain.

    Patents cover utility, copyright covers expression.
    Patents (mostly) carry a strict liability form of transgression, copyright is rife with Fair Use defenses.
    Patents (by and large) are awarded only once to the “first” inventor, copyright can occur for independent creation.

    Also, while both are nominally from the same “exclusive” right clause of the constitution, copyright’s exclusivity is fundamentally different than that of patents in that for copyrights, the doctrine of merger indicates that if true “exclusivity” exists, that the expression merges with a non-protectable aspect (i.e. function), then no copyright protection is available for the expression.

    As for any sense of premiums, I would not have the government interfere at all. These rights are not positive rights and do not carry a guarantee of profit (which is a nuanced distinction with true monopoly laws), so “what the market will bear” should be given ample reign. A patent or copyright holder wants too much? No problem – the market will show that. Quite in fact, the aspect of patents being able to charge ultra-high amounts provides an impetus for further innovation in design-arounds.

  13. johann beda February 21, 2015 3:07 pm

    Surely there were some audio publications of Gaye’s song after Jan 1978 – couldn’t they be argued to fall under the later legislation? Wouldn’t the CD release qualify?

  14. Beth Hutchens February 22, 2015 10:07 am

    Johann- no. Changing the medium of expression wouldn’t change the fact that the work was originally published and protected in 1977, thus making it a 1909 work. If that weren’t the case, nothing would ever go into the public domain because the owner could just update the copyright with the technology. Egad! Perish the thought!

  15. johann February 22, 2015 7:46 pm

    I was not thinking that later publication would extend an existing copyright, but rather that later pulbication might create a copyright for those aspects of the work that were not already copyrighted by the earlier activities.

  16. Anon February 22, 2015 7:59 pm

    johann,

    Interesting thought.

    The 1909 copyright act required certain formalities (e.g., notice by marking).

    Would a copy of a work that fails to meet 1909 standards nonetheless “count” as a creation of its own right when that copy is first created under a later law that has abolished formalities?

    As Beth indicates, I believe the answer is “no,” as the copy is not in fact a new creation. The copy of the work traces back to an earlier creation. It is that earlier creation that controls (the question begets a more intricate answer when the subject itself evolves over time – say, like Sherlock Holmes). Thus, the controlling aspect of the item, even a later copy, is that the item is in the public domain based on the earlier actual creation not following (for example) notice marking.

    Of course, this existence in the public domain may in fact be temporary, given that the Court recently allowed Congress to remove items in the public domain and put them back under copyright protection (see Golan v Holder).

  17. johann February 22, 2015 8:12 pm

    Humm, does a derrivative work of a public domain work get copyright protection? If Gaye’s work can be copied by Thicke due to not having protection under 1909 rules does Thicke’s new work get protected under 1977 rules? If so, does a later recording by Gaye get protection under 1977 rules? Or is the 1977 protection limited to those aspects of the work are “new”? Could Gaye be liable to infringing on Thicke’s new work if there was a new release of old studio recordings?

  18. Anon February 22, 2015 10:27 pm

    johann,

    I get the feeling that you are now “reaching” with your questions. I wonder where you are going.

    You do know that Marvin Gaye died in 1984, long before Mr. Thicke began singing, do you not?

    Any item (even newly “released”) would still have the copyright rules applied as to the date the work was captured in tangible media.

  19. johann February 23, 2015 10:39 am

    Hi “Anon”,

    If by “reaching” you are concerned I have some nefarious motivation and am hoping to trick someone or somehow troll for outraged responses, don’t worry – I am not that devious. Mostly I am just thinking out loud trying come to a better understanding on how all of these rules apply to particular situations.

    I was aware of Marvin Gaye’s death, and was using “Gaye” and “Thicke” as placeholders for whoever holds the ownership of the copyrights in questions – perhaps “Gaye’s Estate” would have been clearer.

    If the date of capture in tangible media is the imporant event, does that mean that any later releases of studio recordings that were made in 1977 or earlier (such as various Beatles tracks released in all of those “recent” compilations) are operating under the 1909 rules? I imagine that some of the records first published in January 1978 were actually recorded in 1977 – did those get the old or the new rules?

    It is interesting (to me at least) how sometimes there can be ambiguity between the “letter of the law” and the intent of the law, and how that ambiguity can sometimes lead to bizzare results.

  20. Beth Hutchens February 23, 2015 11:36 am

    Johann- I think I understand what you’re asking. The date of capture in tangible media is specifically a 1976 Act provision. Prior to that, copyright did not automatically attach at the moment of fixation. So any work that predates the effective date of the 1976 Act (Jan. 1, 1978) does not enjoy that same kind of protection. Got to Give it Up was recorded and protected before the 1976 Act went into effect, and though it was close, it may never avail itself to those provisions.

    I guess the short answer is that Congress had the opportunity to provide some sort of retroactive application in the Act and didn’t. So even re-release and remastering of works doesn’t allow them to escape the terms of the original copyright. Unless, of course, they tried to argue that the remaster is a derivative of the original, but I doubt that would be very persuasive.

  21. Anon February 23, 2015 12:41 pm

    Apologies Johann for being snappy (I was not thinking that you were being devious). Rather, it seemed that you just did not want to accept the answers being given, and just wanted to make things more complicated in the hopes of reaching an answer that was not going to be coming forthwith.

    Bottom line is that some things created before the change in law just will not have the protections that seem “only fair.”

  22. Anon March 11, 2015 2:54 pm

    I realize the thread is a bit old, but just came across this news:

    http://finance.yahoo.com/news/blurred-lines-verdict-likely-alter-072125727.html

  23. Beth Hutchens March 11, 2015 5:22 pm

    Yeeeeouch! Do we know if he is going to appeal? Can anyone get their hands on the Order?