McDonald v. West
138 F. Supp. 3d 448
S.D.N.Y.2015Background
- Joel R. McDonald (performing as Joel Mac) wrote and self-recorded a 2008 album including a track titled “Made in America,” sold independently and locally near the Mercer Hotel in Manhattan.
- In late 2010–2011, defendants (artists and producers behind Watch the Throne) rented rooms at the Mercer Hotel to produce their 2011 album; Mike Dean bought a copy of Joel Mac’s album and had regular contact with Plaintiff.
- Plaintiff sued in 2014 claiming Defendants willfully copied his song “Made in America” to create Track 11 (“Made in America”) on Watch the Throne, alleging lyrical and musical similarities and seeking relief for copyright infringement.
- Defendants moved to dismiss under Fed. R. Civ. P. 12(b)(6); the court considered the complaint plus the actual recordings/lyrics incorporated by reference and listened to the works.
- The court assumed Plaintiff’s copyright ownership and actual copying allegations for the motion and focused on whether the works are substantially similar as to protected elements.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Defendant copied protectable expression (substantial similarity) | Joel Mac: chorus, title, shared references (Martin Luther King Jr., Malcolm X), alliteration, musical elements (tempo ~82–85 BPM, shuffle percussion, melisma, intro/outro structure) and overall feel show copying | Defs: shared elements are unprotectable (common title, names, rhythms, tempo, melisma, song structure); differences in lyrics, melody, instruments, arrangement, and overall expression defeat substantial similarity | Court: Granted dismissal — similarities concern unprotectable elements or are too generalized; no reasonable jury could find substantial similarity |
| Whether the shared title “Made in America” is protectable | Joel Mac: title forms part of selection/arrangement claim | Defs: titles/short phrases are not copyrightable | Held: Title is not copyrightable and does not establish infringement |
| Whether selection/arrangement of public-domain elements yields a protectable "thin" copyright that Defendants infringed | Joel Mac: his particular ordering/combination of names/phrases and musical framing is original and copied | Defs: even if thin protection exists, their selection/arrangement differs in individuals named, wording, framing, and lyrical themes | Held: Even under a more discerning observer test, selection/arrangement differs materially; no substantial similarity |
| Whether a holistic aural/visual comparison supports proceeding past dismissal | Joel Mac: aggregated similarities (lyrics, musical techniques, structure, feel) create an overall match | Defs: holistic differences (melody, instrumentation, multi-artist rap verses vs. acoustic single-voice, themes) show no actionable copying | Held: Holistic comparison confirms material differences; dismissal appropriate |
Key Cases Cited
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (copyright protects original expression, not facts or ideas)
- Ashcroft v. Iqbal, 556 U.S. 662 (motion to dismiss plausibility standard)
- Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57 (works themselves control; substantial-similarity review at motion to dismiss via aural/visual comparison)
- Tufenkian Imp./Exp. Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127 (selection/arrangement of public-domain elements can be protected but yields a "thin" copyright)
- Jorgensen v. Epic/Sony Records, 351 F.3d 46 (two-part showing for copying: actual copying and substantial similarity)
- Boisson v. Banian, Ltd., 273 F.3d 262 ("more discerning" ordinary observer test when works incorporate public-domain elements)
- Repp v. Webber, 132 F.3d 882 (music-observer test: whether defendant took what is pleasing to lay listeners)
- Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996 (copyright protection for original selection, coordination, arrangement)
- Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49 (extent of copying vs. un-copied portions does not excuse infringement, but differences matter to substantial-similarity analysis)