351 F.Supp.3d 492
S.D.N.Y.2019Background
- Plaintiffs are heirs of Edward B. Townsend and claim partial ownership of the composition copyright in "Let's Get It On" (LGO); they allege Ed Sheeran's co‑written song "Thinking Out Loud" (TOL) infringes that copyright.
- LGO was composed in 1973, a deposit copy (sheet music) was filed with the Copyright Office and a sound recording by Marvin Gaye was released; plaintiffs contend composition protection may encompass elements reflected in the recording.
- TOL (2014) is a commercially released composition/recording by Ed Sheeran (co‑written with Amy Wadge) with similar musical elements (chord progression, harmonic rhythm, melody, bass and percussion).
- The parties submitted conflicting expert musicologist reports on (a) whether the I–iii–IV–V chord progression and its "anticipating" harmonic rhythm were commonplace pre‑LGO and thus unprotectable and (b) whether multiple elements are substantially similar.
- Defendants moved for summary judgment on noninfringement and lack of standing as to plaintiff Kathryn Townsend Griffin; the court found disputed material facts and denied the motion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Scope of LGO copyright (deposit copy v. sound recording) | The composition embodied in the Gaye recording informs the scope; recording elements can define protectable composition. | The deposit copy (sheet music) defines the composition's copyright scope; performance/recording elements are not part of the composition. | Court assumed outcome would be same either way and did not decide; resolution unnecessary now. Material facts remain in dispute. |
| Protectability of I–iii–IV–V progression and harmonic rhythm | The progression and the distinctive anticipated second/fourth‑beat harmonic rhythm in LGO are not commonplace and are protectable. | The progression and anticipating harmonic rhythm were commonplace pre‑LGO and thus unprotectable. | Disputed facts (including expert disagreement and prior examples) preclude summary judgment; protectability is for the factfinder. |
| Substantial similarity between LGO and TOL | Multiple elements (I–iii–IV–V harmony, harmonic rhythm, melodic fragments, bass‑line, percussion) overlap; an ordinary observer could find appropriation. | Differences in melodic pitch sequences, tempo, key, structure, and overall "total concept and feel" distinguish TOL; many overlapping elements are unprotectable. | On summary judgment, disputed probative similarities (including protectable elements) preclude judgment for defendants; jury must decide infringement. |
| Kathryn Griffin's standing as an heir | Kathryn is an intestate heir of Townsend per a California probate order and entitled to sue for her share. | Kathryn obtained the California order without disclosing she had been adopted, which (defendants argue) would bar inheritance under California law and defeat her standing. | Court applied full faith and credit to the California probate finding; record lacks clear indication California court considered adoption; court did not resolve standing and denied summary judgment. |
Key Cases Cited
- Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (Sup. Ct.) (copyright protects original selection/arrangement; compilations can be copyrightable)
- Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996 (2d Cir.) (compare "total concept and feel" and extract protectable elements when works contain unprotectable material)
- Warner Bros., Inc. v. Am. Broad. Cos., 720 F.2d 231 (2d Cir.) (substantial similarity is often a fact question; noninfringement may be decided as a matter of law in some cases)
- Laureyssens v. Idea Group, Inc., 964 F.2d 131 (2d Cir.) (expert testimony cannot opine on ultimate issue of unlawful appropriation)
- Peter F. Gaito Architecture LLC v. Simone Dev. Corp., 602 F.3d 57 (2d Cir.) (two‑part test: copying and substantial similarity to protectable elements)
- Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101 (2d Cir.) (ordinary observer test for substantial similarity)
- Skidmore for Randy Craig Wolfe Tr. v. Led Zeppelin, 905 F.3d 1116 (9th Cir.) (deposit copy may define scope of protection for compositions registered under older statutes)