Plaintiffs the Estate of James Oscar Smith (the “Estate”) and Hebrew Hustle, Inc., bring this copyright infringement action against Defendants Cash Money Records, Inc., Universal Republic Records, UMG Recordings, Inc., Universal Music Group Distribution, Corp., EMI Music Publishing Management, LLC, Universal Music-MGB NA, LLC, Warner/Chappell Music, Inc:, Sony/ATV Music Publishing, LLC, Aubrey Drake Graham, Mathew Jehu Samuels, Jordan Evans, Apple, Inc., and Amazon Digital Services, Inc. (collectively, “Defendants”). Plaintiffs and Defendants both move for summary judgment. For the reasons that follow, Plaintiffs’ motion is denied and Defendants’ motion is granted.
BACKGROUND
In 1982, Jimmy Smith recorded an album released by Elektra/Asylum Records titled Off the Top. (Joint Rule 56.1 Statement (“Joint Statement”), ¶ 7.) The first six tracks are purely instrumental, and the last track is a spoken-word recording titled “Jimmy Smith Rap” (“JSR”). The lyrics to JSR are:
Good God Almighty, like back in the old days
You know, years ago they had the A & R men to tell you what to play, how to play it and you know whether it’s disco rock, but we just told Bruce that we want a straight edge jazz so we got the fellas together Grady Tate, Ron Carter, George Benson, Stanley Turrentine.
Stanley was coming off a cool jazz festival, Ron was coming off a cool jazz festival. And we just went in the studio and we did it.
We had the champagne in the studio, of course, you know, compliments of the company and we just laid back and did it.
Also, Grady Tate’s wife brought us down some home cooked chicken and we just laid back and we was chomping on chicken and having a ball.
Jazz is the only real music that’s gonna last. All that other bullshit is here today and gone tomorrow. But jazz was, is and always will be.
We may not do this sort of recording again, I may not get with the fellas again. George, Ron, Grady Tate, Stanley Turrentine.
So we hope you enjoy listening to this album half as much as we enjoyed playing it for you. Because we had a ball.
(Joint Statement ¶ 10.)
The label on each side of the record lists each song with the composer in parentheses, except for JSR, which lists no writer. (Joint Statement ¶¶ 11, 12.) Although Raymond Janifer, Jimmy Smith’s nephew and co-manager of the Estate, was not present at the recording of JSR, he recalls Jimmy Smith telling him that he “laid down a dynamite rap on them and hope they don’t cut it off the album.” (Oct. 14, 2015 Declaration of Raymond Janifer (“Janifer Deck”), ECF No. 99, at ¶ 7.) Janifer also explained that Jimmy Smith did not write music, but instead made the music and words up in his head and then performed and recorded on tape. (Janifer Deck, ¶ 5.) Additionally, the website www.discogs.com lists Jimmy Smith as the author of JSR. (Oct. 12, 2015 Declaration of Stephen Hacker (“Hacker Deck”), Ex. 1.)
In April 2013, the Estate entered into an Administration Agreement with Modern Works Music Publishing (“Modern Works”). (Joint Statement ¶ 6.) The Agreement designated Modern Works as the “sole and exclusive Administrator” for the Estate (Joint Statement, Ex. A, ¶ 6), while noting that “[ojwnership remain[ed] with”
On September 24, 2013, Cash Money Records and Universal Republic Records released an album titled Nothing Was the Same (the “Album”) by Aubrey Drake Graham (“Drake”). (Joint Statement ¶¶ 30-34.) The last song on the Album is “Pound Cake/Paris Morton Music 2” (“Pound Cake”). (Joint Statement ¶ 35.) The opening to Pound Cake samples about 35 seconds of JSR. The sampled portions are:
Good God Almighty, like back in the old days.
You know, years ago they had the A & R men to tell you what to play, how to play it and you know whether it’s disco rock, but we just went in the studio and we did it.
We had champagne in the studio, of course, you know, compliments of the company, and we just laid back and did it.
So we hope you enjoy listening to this album half as much as we enjoyed playing it for you. Because we had a ball. Only real music is gonna last, all that other bullshit is here today and gone tomorrow.
(Joint Statement, Ex. D.) While some words from JSR were rearranged or deleted, no words were added. (See (Oct. 20, 2015 Jeffrey Movit Declaration (“Movit Deck”), ECF No. 94, at Ex. 5.)
In producing the Album, Cash Money arranged for a music licensing company to ensure that parties obtained all necessary licenses. (Oct. 19, 2015 Declaration of Edward Grauer (“Grauer Deck”), ECF No. 93, ¶ 3.) Defendants obtained a license for the JSR recording, but not for the JSR composition. (Joint Statement ¶¶ 36, 42.) The JSR composition copyright was not registered with the U.S. Copyright Office or any performing rights organization pri- or to the Album’s release. (Joint Statement ¶¶ 17, 31, 55, 57.) The Estate maintains that it would not have granted a license for the composition because Jimmy Smith “wasn’t a fan of hip hop.” (Joint Statement ¶ 42.) The JSR recording license stated that Defendants received “all requisite consents and permissions of ... the copyright owners of the musical composition.” (Joint Statement ¶ 36.)
Stephen Hacker is the principal of Hebrew Hustle, a music publisher that represents songwriters in negotiating the licensing of copyrights. (Joint Statement ¶ 43-44.) Prior to the release of the Album, Hacker had ongoing business relationships with many of the Defendants. (Joint Statement ¶ 47.)
Approximately one week before the Album’s release, Hacker reviewed an advance copy of the credits “to look for openings in rights, sign those rights and then disclose that to the Drake representatives” after the release of the Album. (Joint Statement ¶¶ 49, 51.) Hacker noticed that Defendants had secured a license for the recording of JSR, but not for the composition. (Joint Statement ¶ 49.) He reached out to Janifer to alert the Estate of Defendants’ use of the JSR composition in the Album. (Joint Statement ¶ 54.) Thereafter, the Estate entered into a co-publishing agreement with Hebrew Hustle, assigning
LEGAL STANDARD
Summary judgment is appropriate only where all of the submissions taken together “show that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a); Celotex Corp. v. Catrett,
The role of a court in ruling on such a motion “is not to resolve disputed issues of fact but to assess whether there are any factual issues to be tried, while resolving ambiguities and drawing reasonable inferences against the moving party.” Knight v. United States Fire Ins. Co.,
DISCUSSION
I. COPYRIGHT INFRINGEMENT
“To establish infringement, two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” Feist Publications, Inc. v. Rural Tel. Serv. Co.,
a. Ownership of a Copyright
In a copyright infringement suit, the plaintiff bears the initial burden of coming forward with evidence that it possesses a valid copyright. See Langman Fabrics, a div. of Blocks Fashion Fabrics, Inc. v. Graff Californiawear, Inc.,
As an initial matter, this Court affords the January 2013 registration of the composition copyright in JSR minimal weight. While copyright registration normally constitutes prima facie evidence of validity, “[t]he evidentiary weight to be accorded the certificate of a registration made [more than five years after the first publication] shall be within the discretion of the court.” 17 U.S.C. § 410(c). Here, the Estate registered the JSR composition copyright thirty-one years after initial publication, and only in response to Defendants’ sampling of JSR on the Album. “Accordingly, the registration does not constitute prima facie evidence that’ the copyright is valid, and [Plaintiff] has the burden of proving the validity of its copyright.” Tuff ‘N’ Rumble Mgmt., Inc. v. Profile Records, Inc., No. 95-CV-0246,
The lyrics of JSR indicate that it is a behind-the-scenes recollection of the recording of Off the. Top. Indeed, the statement on the Off the Top album cover explains that it was recorded with “no charts, music format or nothing ... just playing what we felt ... off the top of our heads.” (Joint Statement, Ex. I.) But this information only speaks to the process of recording Off the Top, and not necessarily to the authorship of JSR.
Similarly, Janifer asserted that Jimmy Smith did not write music by putting pen to paper, instead making the words up in his head before performing and recording the sounds on tape. (Janifer Deck, at ¶¶ 5-8.)
Janifer also claims that, prior to the release of Off the Top, Jimmy Smith told him “I laid down the dynamite rap on them and I hope they don’t cut it from the album.” (Janifer Deck, at ¶ 7.) Hearsay problems aside, there is no indication that Jimmy Smith was referring to JSR and not to some other song that was, in fact, cut from the album.
The song listings for Off the Top are similarly unhelpful, as they list the writers of each song except JSR. (Joint Statement, Ex. I.) Although the album’s original packaging contained a copyright notice that listed “Elektra/Asylum Records” as the copyright claimant for the sound recordings and any other uncredited material (Joint Statement ¶ 14), such a notice must “be placed on publicly distributed copies from which the work can be visually perceived.” 17 U.S.C. § 401(a); Circular 3.0213 of the U.S. Copyright Office (noting that the C in a circle applied to phonorec-ords “is not used to indicate protection of the underlying musical, dramatic, or literary work that is recorded”). Because the lyrics were not displayed on the album
The fact that a single music-focused website recognizes Jimmy Smith as the author does not advance the inquiry. The website www.discogs.com, which Plaintiffs claim is a commonly used and relied-upon source, lists Jimmy Smith as the author of JSR.
Ultimately, a genuine issue of material fact exists as to the authorship of JSR. Accordingly, summary judgment is not appropriate on this issue.
b. Substantial Similarity
“In order to establish a claim of copyright infringement, a plaintiff with a valid copyright must demonstrate that: (1) the defendant has actually copied the plaintiffs work; and (2) the copying is illegal because a substantial similarity exists between the defendant’s work and the protectible elements of plaintiffs.” Peter F. Gaito Architecture, LLC v. Simone Dev. Corp.,
Multiple tests exist to determine substantial similarity, including the “ordinary observer test,” the “comprehensive non-literal test,” and the “fragmented literal similarity test.” See Castle Rock Entm’t, Inc. v. Carol Pub. Grp., Inc.,
The ordinary observer test is the “standard test for substantial similarity.” Peter F. Gaito,
By contrast, “fragmented literal similarity exists where the defendant copies a portion of the plaintiffs work exactly or nearly exactly, without appropriating the work’s overall essence or structure.” TufAmerica, Inc. v. Diamond,
Both tests ask “whether ‘the copying is quantitatively and qualitatively sufficient’ to support a finding of infringement.” Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, Inc.,
Under either test, only the protectable portions of the copyrighted works are compared for substantial similarity. “To qualify for copyright protection, a work must be original to the author. Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity.” Feist,
Cliché language is not subject to copyright protection. See McDonald v. West,
Although Pound Cake copies much of JSR verbatim, Defendants contend that the sampled portion removes much of the factual account, is primarily cliché that is not entitled to protection, and only “goes to trivial ... elements of the original work.” TufAmerica,
But courts must not “dissect the works at issue into separate components and compare only the copyrightable elements.” Boisson v. Banian, Ltd,
In the end, “[i]t would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [art], outside of the narrowest and most obvious limits.” Bleistein v. Donaldson Lithographing Co.,
II. FAIR USE
Alternatively, Defendants argue that Plaintiffs’ claims are barred by the fair use doctrine. Fair use is an affirmative defense to copyright infringement, Campbell v. Acuff-Rose Music, Inc.,
The doctrine of fair use has its roots in the “ultimate goal” of copyright law—that is, “to expand public knowledge and understanding, [a goal] which copyright seeks to achieve by giving potential creators exclusive control over copying of their works, thus giving them a financial incentive to create informative, intellectually enriching works for public consumption.” Authors Guild v. Google, Inc.,
Congress codified the fair use doctrine in the Copyright Act of 1976. Section 107 of the Act provides that:
Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work ... for purposes such as criticism, comment, news reporting, teaching ..., scholarship, or research is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—
(1) The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) The nature of the copyrighted work;
(3) The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) The effect of the use upon the potential market for or value of the copyrighted work.
Because the fair use determination is “an open-ended and context-sensitive inquiry,” the examples and factors in the statute are “illustrative and not limitative ... [and] provide only general guidance about the sorts of copying that courts and Congress most commonly had found to be fair uses.” Cariou v. Prince,
Because copyright infringement involves highly fact-dependent analysis, courts “should be especially wary of granting summary judgment.” Leibovitz v. Paramount Pictures Corp.,
a. Factor #1: Purpose and Character of the Use
The first statutory factor, which courts have referred to as “[t]he heart of the fair use inquiry,” focuses on the nature and purposes of the allegedly infringing use. Davis v. The Gap, Inc.,
Defendants advance three arguments for the transformative nature of their use of JSR. First, Defendants claim that Pound Cake fundamentally alters the message of the original work—that is, by editing the recording from “Jazz is the only real music that’s gonna last” to “Only real music is gonna last,” Drake transformed Jimmy Smith’s dismissive comment into a statement on the relevance and staying power of “real music,” regardless of genre. Second, Defendants note that Pound Cake omits all references to the recording of Off the Top, thereby making the words applicable to the process of making Drake’s album rather than Jimmy Smith’s. Finally, Defendants claim that the addition of background music, the rearrangement of some words, and the placement of the recording in a seven-minute hip hop track renders their use transformative.
Defendants’ second and third arguments are misplaced because they conflate the nature of a fair use with that of a derivative work. The word “transform” appears in the statutory definition of derivative works, which of course require a license and are not protected by the fair use doctrine. 17 U.S.C. § 101. Although derivative works typically involve transfor-mative changes, “[t]he statutory definition suggests that derivative works generally involve transformations in the nature of changes of form.” Authors Guild,
Defendants’ first argument, on the other hand, strikes on a compelling reason to find this use transformative. There can be no reasonable dispute that the key phrase of JSR—“Jazz is the only real music that’s gonna last. All that other bullshit is here today and gone tomorrow. But jazz was, is and always will be.”—is an unequivocal statement on the primacy of jazz over all other forms of popular music. Defendants’ use of JSR, by contrast, transforms Jimmy Smith’s brazen dismissal of all non-jazz music into a statement that “real music,” with no qualifiers, is “the only thing that’s gonna last.” Thus, Defendants’ “purposes in using [the original work] are sharply different from [the original artist’s] goals in creating it.” Blanch v. Koons,
Plaintiffs contend that the use cannot be transformative because the copied portions are not readily identifiable as JSR and because the track does not identify Jimmy Smith. Thus, Plaintiffs argue, there can be no viable claim that Pound Cake is commenting on an obscure spoken-word track by a relatively unknown jazz musician (at least outside of the jazz community). This argument fails because Plaintiffs seek to apply the standard for fair use in parody to this non-parodic use. Although it is certainly true that the object of a parody must be ascertainable to the average observer—and with reason, for what good is parody if the listener cannot identify the target of derision?—this is not a universal prerequisite for finding a transformative use. For example, the court in Blanch v. Koons found that the defendant’s appropriation of a small part of a magazine advertisement (specifically, a picture of a woman’s legs and feet) into a larger mixed-media artwork was a transformative use even though no reasonable observer would identify the legs as being from the original advertisement.
Similarly, Defendants’ use of JSR is transformative regardless of whether the average listener would identify the source of the sample and immediately comprehend Drake’s purposes. The critical question is “how the work in question appears to the reasonable observer,” not the quality or accessibility of the commentary. Cariou,
b. Factor #2: Nature of the Copyrighted Work
The second statutory factor “calls for recognition that some works are closer to the core of intended copyright protection than others, with the consequence that fair use is more difficult to establish when the former works are copied.” Campbell,
Because JSR is a work of creative expression, this factor weighs against a finding of fair use. Defendants’ contention that JSR is only entitled to “thin” copyright because it is merely a factual account of the recording of Off the Top ignores the Supreme Court’s instruction that facts “clothe[d] ... with an original collocation of words” are still entitled to copyright protection. Feist,
c. Factor #3: Amount and Substan-tiality of the Portion Used
The next factor asks the court to consider “the amount and substantiality of the portion used in relation to the copyrighted work as a whole.” 17 U.S.C. § 107(3). The “clear implication” of this inquiry “is that a finding of fair use is more likely when small amounts, or less important passages, are copied than when the copying is more extensive, or encompasses the most important parts of the original.” Authors Guild,
Plaintiffs contend that Defendants appropriated an unreasonable portion of JSR when they used thirty-five seconds of the one-minute track, and that any statement on the staying power of “real” music would necessitate the use of only that single line. The law “does not require,” however, “that the secondary artist ... take no more than is necessary,” Cariou,
Here, the Court finds the amount taken by Defendants to be reasonable in proportion to the needs of the intended transfor-mative use. Far from being extraneous to Pound Cake’s statement on the importance of “real” music, Defendants’ use of the lines describing the recording of Off the Top serve to drive the point home. The full extent of the commentary is, in this Court’s view, that many musicians make records in similar ways (e.g. with the help of A & R experts or the stimulating effects of champagne), but that only “real” mu
d. Factor #4: Effect on the Market for the Copyrighted Work
On the final factor, courts analyze “the effect of the [secondary] use upon the potential market for or value of the copyrighted work.” 17 U.S.C. § 107(4). As the ability to reap financial rewards from creative endeavors is a critical component of the copyright regime, the Supreme Court has noted that this factor is “undoubtedly the single most important element of fair use.” Harper & Row Publishers, Inc. v. Nation Enter.,
There is no evidence in the record to suggest that Pound Cake usurps any potential market for JSR or its derivatives. JSR, a spoken-word criticism of non-jazz music at the end of an improvisational jazz album, targets a sharply different primary market than Pound Cake, a hip-hop track. Further, Plaintiffs never attempted to establish a market for licensed derivative uses of the JSR composition copyright until Defendants used the recording on the Album. See Campbell,
Having considered the four factors in light of the goals of copyright law and the facts in the record, this Court concludes that Defendants’ inclusion of the copied portions of JSR in the recording of Pound Cake is a fair use and does not infringe Plaintiffs’ composition copyright.
CONCLUSION
Because there is a genuine dispute of material fact as to ownership and copying, neither party is entitled to summary judgment on Plaintiffs’ infringement claims. For the reasons discussed above, however, this Court finds that any liability for Defendants’ appropriation of JSR is barred by the doctrine of fair use. Accordingly, Plaintiffs’ motion for summary judgment is denied and Defendants’ motion for summary judgment is granted. The Clerk of Court is directed to terminate the motions pending at ECF Nos. 91 and 97 and mark this case as closed.
SO ORDERED
Notes
. Defendants claim the statement on the album is unauthenticated hearsay. But this statement is subject to the exception in Rule 803 of the Federal Rules of Evidence as a "statement in a document that is at least 20 years old and whose authenticity is established." Fed. R. Evid. 803(16).
. Rule 406 of the Federal Rules of Evidence permits "[ejvidence of a person's habit or an organization's routine practice [to] be admitted to prove that on a particular occasion the person or organization acted in accordance with the habit or routine practice.”
. The website is relied on by individuals in the music industry (Hacker Decl., ¶ 3) and qualifies as a “Market Reports and Similar Commercial Publications” under Rule 803(17) of the Federal Rules of Evidence.
. "[T]he 'comprehensive nonliteral similarity' test ... examines whether the fundamental essence or structure of one work is duplicated in another.” Castle Rock,