Case Information
*2 Before KING, Chief Judge, and SMITH and GARZA, Circuit Judges.
KING, Chief Judge:
This appeal arises out of a dispute concerning the popular rap song Back That Azz Up. Plaintiff-Appellant Positive Black Talk, Inc. filed this lawsuit against three defendants, alleging, inter alia, violations of the United States copyright laws. The defendants counterclaimed under the copyright laws, the Louisiana Unfair Trade Practices Act, and theories of negligent misrepresentation. After a jury trial, the district court entered judgment in accordance with the verdict in favor of the defendants on all of Positive Black Talk’s claims, as well as on the defendants’ non-copyright counterclaims. The district court awarded the defendants attorney’s fees only in relation to the successful unfair trade practices counterclaim.
In this consolidated appeal, Positive Black Talk appeals the judgment of the district court on the grounds that the court erred in instructing the jury and in making several evidentiary rulings. The defendants appeal the district court’s decision not to award them attorney’s fees as the prevailing parties on *3 Positive Black Talk’s copyright infringement claim. We AFFIRM.
I. Factual and Procedural Background
In 1997, two rap artists based in New Orleans, Louisiana-- Terius Gray, professionally known as Juvenile (“Juvenile”), and Jerome Temple, professionally known as D.J. Jubilee (“Jubilee”)-- each recorded a song that included the poetic four-word phrase “back that аss up.” Specifically, with respect to Jubilee, he recorded his song in November 1997 and entitled it Back That Ass Up. In the Spring of 1998, Positive Black Talk, Inc. (“PBT”), a recording company, released Jubilee’s Back That Ass Up on the album T AKE I T TO THE S T . T HOMAS . Jubilee subsequently performed the song at a number of live shows, including the New Orleans Jazzfest on April 26, 1998.
Turning to Juvenile, at some point during the fall of 1997, Juvenile recorded his song and entitled it Back That Azz Up. In May 1998, Cash Money Records, Inc. (“CMR”), the recording company that produced Juvenile’s album 400 D EGREEZ , signed a national distribution contract with Universal Records. Consequently, 400 D EGREEZ , which contained Juvenile’s song Back That Azz Up, was released in November 1998. 400 D EGREEZ quickly garnered national acclaim, selling over four million albums and grossing more than $40 million.
In 2000, Jubilee applied for and received a certificate of registration (Form PA) from the United States Copyright Office *4 for the lyrics of Back That Ass Up. Jubilee also obtained a certificate of registration for the lyrics and music (Form SR) in the sound recording of the song. On February 15, 2002, PBT mailed a supplementary application for registration (containing an application, deposit, and fee) to the Copyright Office, stating that PBT should have been listed as the author and copyright claimant on Jubilee’s prior PA registration (lyrics only). On the same day, PBT filed this lawsuit in the Eastern District of Louisiana, alleging copyright infringement and the violation of the Louisiana Unfair Tradе Practices Act (LUPTA). [1] On February 19, 2002, four days after the suit was filed, the Copyright Office received PBT’s supplementary registration application.
In response, the defendants filed counterclaims, alleging copyright infringement, violation of LUPTA, and negligent misrepresentation. On February 11, 2003, the defendants filed a motion for summary judgment, in which they argued, inter alia, that the district court should dismiss PBT’s lawsuit for lack of subject matter jurisdiction because PBT failed to comply with the statutory requirement that the Copyright Office receive the *5 registration application before a plaintiff may file an infringement suit. The district court denied the motion, reasoning that the defect had been cured and that dismissing the case after a year of litigation, only to have PBT re-file the suit, would be a tremendous waste of judicial resources.
In May 2003, the case proceeded to a jury trial. Although the jury found that PBT proved by a preponderance of the evidence that it owned a copyright interest in the lyrics and music of Jubilee’s song Back That Ass Up, it nevertheless found in favor of the defendants on PBT’s copyright infringement claim. Specifically, the jury found that: (1) PBT failed to prove that Juvenile or CMR factually copied Back That Ass Up; (2) the defendants proved that CMR and Juvenile independently created Back That Azz Up; and (3) PBT failed to prove that Back That Azz Up is substantially similar to Back That Ass Up. [2] The jury also decided agаinst PBT on its non-copyright claim. In addition, the jury found in favor of the defendants on their LUPTA and negligent misrepresentation counterclaims. However, the jury *6 found against the defendants on their copyright infringement counterclaim. Accordingly, the district court entered judgment in favor of the defendants. The court awarded the defendants attorney’s fees in relation to their LUPTA counterclaim but not for their successful defense of PBT’s copyright infringement claim.
PBT then filed a timely notice of appeal. PBT argues on appeal that the district court erroneously instructed the jury on relevant copyright laws and erred in making several evidentiary rulings. [3] The defendants cross-appeal the district court’s award of attorney’s fees, contending that they are entitled to fees for prevailing against PBT on its copyright claim. [4]
II. Subject Matter Jurisdiction
The district court’s subject matter jurisdiction was based
on 28 U.S.C. §§ 1331 (federal question) and 1338 (copyright
laws). That broad underlying jurisdiction was supplemented by
the specific statutory provisions of the copyright laws.
Specifically, 17 U.S.C. § 411(a) sets forth the jurisdictional
prerequisite that “no action for infringement of the copyright in
*7
any United States work shall be instituted until registration of
the copyright claim has been made in accordance with this title.”
17 U.S.C. § 411(a) (2000); see also Creations Unlimited, Inc. v.
McCain,
*8 We hold, along with the other courts that have considered this matter, that the ultimate judgment is not rendered a nullity in this instance by the district court’s refusal to dismiss PBT’s suit for want of jurisdiction. Rather, we find that the jurisdictional defect was cured when the Copyright Office received PBT’s application, deposit, and fee four days after PBT filed suit.
A number of other courts have found that a plaintiff who
files a copyright infringement lawsuit before registering with
the Copyright Office may cure the § 411 defect by subsequently
amending or supplementing its complaint once it has registered
the copyright. See, e.g., M.G.B. Homes, Inc. v. Ameron Homes,
Inc.,
the necessary basis for subject matter jurisdiction.”);
ISC–Bunker Ramo Corp. v. Altech, Inc.,
PBT did not amend its complaint in the court below.
Nevertheless, the Supreme Court has held, albeit in a non-
copyright case, that failure to amend a complaint in thе district
court is no bar to finding a jurisdictional defect cured. See
Mathews v. Diaz,
We have little difficulty with Espinosa's failure to file an application with the Secretary until after he was joined in the action. Although 42 U.S.C. § 405(g) establishes filing of an application as a nonwaivable condition of jurisdiction, Espinosa satisfied this condition while the case was pending in the District Court. A supplemental complaint in the District Court would have eliminated this jurisdictional issue; since the record discloses, both by affidavit and stipulation, that the jurisdictional condition was satisfied, it is not too late, even now, to supplement the complaint to allege this fact. Under these circumstances, we treat the pleadings as properly supplemented by the Secretary's stipulation that Espinosa had filed an application.
Id. at 75 (internal citations and footnotes omitted). Similarly, we consider PBT’s noncompliance with § 411 to be cured, even though it did not file a supplemental complaint below.
Our conclusion that subject matter jurisdiction existed in
this case is also consistent with the Supreme Court’s decision in
*11
Caterpillar Inc. v. Lewis,
The Court’s reasoning in Caterpillar applies to PBT’s copyright infringement lawsuit because 28 U.S.C. § 1441 and 17 U.S.C. § 411 both have a substantive requirement as well as a timing requirement. Section 1441 substantively requires complete diversity, which must exist at the time of removal. In Caterpillar, although the substantive requirement of complete *12 diversity was ultimately satisfied, the timing requirement was not. However, because of judicial economy and finality concerns, the Court excused the failure to comply with the timing element of the statute. Similar to the removal statute at issue in Caterpillar, § 411 has a substantive component and a timing component--it requires the filing of a registration application, which must occur prior to the institution of the suit. As in Caterpillar, the substantive requirement here was satisfied (because PBT filed a registration application, deposit, and fee), but the timing element was not (because the Copyright Office received the materials after PBT filed suit). Thus, Caterpillar suggests that because PBT satisfied the substantive requirement of § 411 before final judgment, “considerations of finality, efficiency, and economy” counsel us to disregard the technical defect in timing in this particular case. Caterpillar Inc., 519 U.S. at 75. Accordingly, the § 411 defect was cured, and subject matter jurisdiction existed.
III. Jury Instructions on Copyright Law
A. Elements of Copyright Infringement
To establish a claim for copyright infringement, a plaintiff
must prove that: (1) he owns a valid copyright and (2) the
defendant copied constituent elements of the plaintiff’s work
that are original. Gen. Universal Sys. v. Lee,
(5th Cir. 2004); Szabo v. Errisson,
B. Standard of Review
PBT argues that the district court erred in instructing the
jury with respect to probative similarity, substantial
similarity, and independent creation. Where the challenging
party failed to preserve the error with proper objections, we
review the district court’s jury instructions only for plain
error. Russell v. Plano Bank & Trust,
We agree with the defendants that PBT failed to preserve the
error with respeсt to the jury instructions. See F ED . R. C IV . P.
51(c)(1) (“A party who objects to an instruction or the failure
*15
to give an instruction must do so on the record, stating
distinctly the matter objected to and the grounds of the
objection.”). First, PBT’s on-the-record objections pertained
only to the instructions as a whole, rather than indicating
specific objections, and therefore failed to comply with Rule 51.
See Russell,
For PBT to prevail under the plain error standard, it must
show “that the instructions made an obviously incorrect statement
of law that was ‘probably responsible for an incorrect verdict,
leading to substantial injustice.’” Hernandez v. Crawford Bldg.
Material,
1. Definition of Probative Similarity PBT first argues that the district court erroneously instructed the jury with respect to the definition of “probative similarity.” The court instructed that: “Probative similarity means that the songs, when compared as a whole, dеmonstrate that Juvenile or CMR appropriated Jubilee’s song.” PBT avers that this definition is misleading because, by including the phrase “when compared as a whole,” it suggests that the jury, when deciding whether factual copying occurred, must look to see whether Back That Ass Up, as a whole, is sufficiently similar to Back That Azz Up, as a whole. As PBT points out, however, probative similarity requires only that certain parts of the two works are similar, such that the jury may infer factual copying in light of the defendant’s access to the plaintiff’s work. Regardless, PBT’s claim fails for at least three reasons.
First, we cannot say that the jury instruction on probative
similarity is “an obviously incorrect statement of law.”
Hernandez,
We note that the district court’s reliance on Peel to define
probative similarity is understandable given that other Fifth
Circuit opinions offer little additional guidance on the
question. Peel is undoubtedly cоrrect inasmuch as it instructs
that the ultimate issue with respect to probative similarity is
whether the similarities between the two works suggest that the
later-created work was factually copied. Peel should not be read
to suggest that a jury may draw an inference of factual copying
only if the whole of the defendant’s work largely replicates the
whole of the allegedly-copied work.
[8]
Rather, the “when compared
as a whole” language in Peel regarding probative similarity means
that the jury must consider the whole of the first work
(including both copyrightable and non-copyrightable parts) and
the whole of the second work and then compare the two works,
looking for any similarities between their constituent parts.
This reading of Peel is not inconsistent with any Fifth Circuit
precedent and is consistent with other courts’ conceptualizations
of probative similarity. See, e.g., Gates Rubber Co. v. Bando
*18
Chem. Indus., Ltd.,
In order to avoid confusion, a district court should explain
that the purpose of the probative similarity inquiry is to
determine whether factual copying may be inferred and that this
inquiry is not the same as the question of substantial
similarity, which dictates whether the factual copying, once
established, is legally actionable. See Eng’g Dynamics, Inc. v.
Structural Software, Inc.,
The second reason PBT’s claim--that the language “when compared as a whole” in the instruction on probative similarity constituted reversible error--fails is because the district court offered guidance to the jury that a finding of factual copying only requires similarity between portions of the plaintiff’s work, not overall similarity. For example, when the court first introduced the element of factual copying (about ten sentences before giving the instruction defining probative similarity), the court stated, “[t]he first question, factual copying, asks whether Juvenile and CMR actually copied constituent elements of D.J. Jubilee’s song in Juvenile’s song Back That Ass Up.” (emphasis added). The court also instructed the jury that: “If you conclude that factual copying did occur, that is that Juvenile/CMR copied parts of Jubilee’s song Back That Ass Up, [the defendants may still prevail if they demonstrate independent creation].” (emphasis added). Given these instructions, we cannot agree that the definition of probative similarity of which PBT complains was misleading in this particular instance.
Third, the jury’s findings on independent creation and
substantial similarity negate any reasonable possibility that the
probative similarity instruction was “probably responsible for an
incorrect verdict.” Tompkins,
2. Inverse Relationship Between Access and Probative Similarity
PBT also complains that it requested an instruction on the inverse relationship between the degree of access an alleged infringer had to the original work and the degree of similarity needed to show that copying actually occurred. Specifically, PBT asked that the jury be instructed that “PBT does not have to show as much similarity when a high degree of access is shown.” The defendants counter that this inverse-relationship doctrine is not the law in the Fifth Circuit. PBT’s argument fails for several reasons.
The defendants are correct that this circuit has not
expressly adopted the principle that there is an inverse
relationship between the requisite proof of access and
similarity, and there is no need to do so here. However, this
doctrine finds support in other circuits. See, e.g., Swirsky v.
Carey,
*23 Regardless, the fact that this circuit has not explicitly adopted this doctrine means that the district court did not wrongly decline to give the jury instruction, and PBT’s argument therefore fails. Finally, as we noted in the discussion of the definition of probative similarity, any error with respect to factual copying is rendered harmless by the jury’s finding on substantial similarity, such that we cannot say that it was probably responsible for an incorrect verdict.
D. Independent Creation
PBT also argues that the district court erred in instructing the jury as to the defendant’s burden of proof in establishing independent creation. Specifically, PBT argues that the court instructed the jury that it must find independent creation by a preponderance of the evidence, whereas the allegedly correct burden of proof is clear and convincing evidence. On the issue of independent creation, the court charged the jury:
If you conclude that factual copying did oсcur, that is constitutes circumstantial evidence only of factual copying and is irrelevant to the determination of whether that copying is legally actionable (i.e., whether there is substantial similarity). See 4 N IMMER § 13.03[D], at 13-81 (“Proof of access can logically aid in showing copying as a factual matter--added to the probative similarity that exists between two works, it can bolster the proof that one was in fact derived from the other. But access logically exerts no impact on copying as a legal matter; no matter how steeped in plaintiff’s work defendant may have been, if the resulting product is non-actionable as a matter of law, then the absence of substantial similarity that must underlie every successful claim still dooms the infringement suit.”).
that Juvenile/CMR copied parts of Jubilee’s song Back That Ass Up, the defendants may still rebut PBT’s claims that Juvenile copied D.J. Jubilee’s song by introducing evidence that Juvenile or CMR independently created Juvenile’s song. If defendants offer evidence of independent creation, PBT has the burden of proving that the defendants in fact copied the protected material.
This instruction is silent as to whether the burden of proof must
be met by a preponderance of the evidence or by clear and
convincing evidence. However, the special verdict form asked:
“Has CMR/Juvenile proved by a preponderance of the evidence that
CMR/Juvenile independently created the song Back That Azz Up?”
The jury instruction on independent creation did not
constitute plain error. First, it cannot be considered an
obviously incorrect statement of the law. PBT points to no Fifth
Circuit opinion, and in fact none exists, stating that a
defendant must prove independent creation by clear and convincing
evidence. The only circuit opinion PBT cites is Overman v.
Loesser,
Moreover, the district court’s instruction on independent creation did not likely result in an incorrect verdict because a defendant need only prove independent creation if the plaintiff successfully establishes factual copying. Here, the jury determined that Juvenile did not factually copy Jubilee’s song when it found that the two songs were not probatively similar. In addition, the jury’s finding on substantial similarity also would have preсluded PBT from recovering regardless of the jury’s finding on independent creation. Thus, PBT’s argument fails under the plain error standard.
E. Substantial Similarity
PBT’s last complaint regarding jury instructions relates to the district court’s instruction on the definition of “substantially similar.” The jury was instructed that:
Two works are substantially similar if the expression of ideas in the plaintiff’s copyrighted work and the expression of ideas in the defendant’s work that are shared are substantially similar. The test for expression of ideas is whether the intended audience would find the total concept and feel of the two songs to be substantially similar.
PBT complains that this instruction inadequately explains to the jury the meaning of substantial similarity and is merely tautological, essentially stating nothing more than that two works are substantially similar if they are substantially similar. Furthermore, PBT argues that the instruction erroneously misleads the jury to conclude that they must *26 determine whether the whole of the two works are substantially similar. Substantial similarity, PBT asserts, necessitates only that parts of the songs are similar and that the similar parts are qualitatively so important that the copying should be legally actionable. [12]
*27
Addressing PBT’s latter argument first, we note that the
jury instruction, carefully parsed, did not unfairly suggest that
the jury must compare the two works as a whole to determine if
there is overall similarity between the two songs. The
instruction states that the “[t]wo works are substantially
similar if the expression of ideas in the plaintiff’s copyrighted
work and the expression of ideas in the defendant’s work that are
shared are substantially similar.” (emphasis added). The phrase
“that are shared” correctly indicates that the jury should
compare the parts of the two songs that are similar in
determining substantial similarity. We note that the instruction
given tracks the language suggested in Fifth Circuit opinions.
See Creations Unlimited, Inc.,
[13] The Ninth Circuit applies a two-part test to
determining substantial similarity. See, e.g., Three Boys Music
Corp. v. Bolton,
When we look at the evidence presented to the jury, the
verdict may be exрlained by the possibility that the jury
rejected PBT’s argument that the phrase “back that ass up” was
the qualitatively most important part (or “hook”) of Jubilee’s
song. That phrase recurred only a few times in Jubilee’s song,
which is over seven minutes long.
[14]
Thus, the jury may have
part of the test, the extrinsic test, determines if there are
concrete similarities between two works based on objective
criteria. The second part, the intrinsic test, involves a
subjective determination by the jury. The Ninth Circuit,
however, does not differentiate between probative and substantial
similarity, and the two-part test, as applied in that circuit,
therefore does not parallel our jurisprudence. The test
articulated in Creations Unlimited is similar to the Ninth
Circuit’s intrinsic test, which is “subjective and asks whether
the ordinary, reasonable person would find the total concept and
feel of the works to be substantially similar.” Three Boys Music
Corp.,
[14] PBT also concedes that song titles are not copyrightable and therefore could not be considered by the jury in the substantial similarity dеtermination. Accordingly, the jury was instructed to disregard the similarity between the titles in *29 believed that, as the defendants argued, the hook was the sampling from the Jackson Five’s song I Want You Back, [15] and that belief would explain why the jury determined that the songs are not substantially similar. Accordingly, we cannot say that the jury instruction, even if it had been erroneous, probably resulted in an incorrect verdict.
Finally, the jury found that Jubilee did not establish a circumstantial showing of factual copying because the songs were not probatively similar and that Juvenile independently created Back That Azz Up. Thus, PBT failed to prove factual copying, and PBT could not have prevailed on its copyright infringement claim, regardless of whether the two songs are substantially similar. [16] deciding the question of substantial similarity.
[15] As we discuss below, the defendants offered evidence that the sampling of the Jackson Five constituted a significant portion of Back That Ass Up and was potentially the most memorable part of the song.
[16] We pause here to address an erroneous criticism, urged at oral argument, of our logic in resolving PBT’s jury- instruction challenges--namely, that we failed to account for the cumulative effect of the asserted errors. With respect to each purported error in the jury instructions, this court has reasoned that the particular alleged error is not plain because, inter alia, it did not probably result in an incorreсt verdict. More specifically, we noted that the jury found against PBT on other grounds on which PBT would have had to prevail in order to succeed on its infringement claim (i.e., error on probative similarity is harmless because the jury found independent creation and no substantial similarity; error on independent creation is harmless because the jury found no substantial similarity; and error on substantial similarity is harmless because the jury found independent creation). None of our findings, however, relies exclusively on the fact that the jury found against PBT on other elements of an infringement action,
IV. Evidentiary Rulings
A. Standard of Review
We review the district court’s evidentiary rulings for an
abuse of discretion. Kainda v. Gulf Coast Med. Personnel, LP,
B. The Big Easy Mailer
PBT argues that the district court abused its discretion by
excluding from evidence a promotional mailer circulated by Big
Easy (the “Big Easy Mailer”), the now-dissolved former
distributer of 400 D EGREEZ . The Big Easy Mailer, PBT claims,
proves that Juvenile composed Back That Azz Up after he heard
Jubilee’s Back That Ass Up because it lists ten songs on 400
D EGREEZ but does not include Back That Azz Up. PBT contends that
and this court would find no plain error with respect to each
challenged instruction regardless of the jury’s other findings.
PBT urges this court to consider the jury instruction errors
cumulatively, but “[a]bsеnt any particularized error, there can
be no cumulative error.” Williams v. Drake,
this document, in combination with two other documents that show 400 D EGREEZ was being re-released, proves that 400 D EGREEZ was originally released without the song Back That Azz Up. Thus, PBT argues, the Big Easy Mailer would have rebutted Juvenile’s claim that he recorded Back That Azz Up before ever hearing Jubilee’s song. [17]
The district court properly excluded the Big Easy Mailer because it was both an unauthenticated document and hearsay not within the business records exception. The only witnesses that PBT produced who could testify with respect to the Big Easy Mailer were Kenneth Taylor, a former employee of Big Easy who worked as a telephone sales agent, and Earl Mackie, the founder of PBT who received the Big Easy Mailer in the mail. In his deposition, Taylor indicated that he was familiar with the basic process of creating mailers (or one-sheets), which are sent to retail record stores to solicit sales for new products. Howevеr, he stated that he never worked in any capacity related to the creation of mailers at Big Easy, and he had no personal knowledge whatsoever with respect to the Big Easy Mailer. Taylor also admitted that he could not say whether Big Easy created the mailer or if someone else had created it. Mackie could testify only that he received the Big Easy Mailer in the mail. None of *32 this testimony establishes that the Big Easy Mailer is a document that was created by Big Easy or that it had any connection with Juvenile or CMR, which is what PBT claims the document purports to be. Thus, the district court did not abuse its discretion in finding that the Big Easy Mailer was not properly authenticated. See F ED . R. E VID . 901.
Furthermore, PBT sought to introduce the Big Easy Mailer to
prove the truth of the matter asserted in the mailer: that Back
That Azz Up was not included in an earlier release of 400 D EGREEZ .
This was hearsay under F ED . R. E VID . 801 and was excluded under
F ED . R. E VID . 802. PBT argues that the Big Easy Mailer falls
within the business records exception to the hearsay rule. See
F ED . R. E VID . 803(6). “Rule 803(6) provides that [a]ny person in a
position to attest to the authenticity of the records is
competent to lay the foundation for the admissibility of the
records; he need not have been the preparer of the record, nor
must he personally attest to the accuracy of the information
contained in the records.” New Orleans Cold Storage & Warehouse
Co., Ltd. v. N.L.R.B.,
However, as we have discussed, PBT offered no witness that
could attest to the authenticity of the Big Easy Mailer, and the
foundation for Rule 803(6) was therefore lacking. For example,
no witness could establish that the mailer was “made at or near
*33
the time by, or from information transmitted by, a person with
knowledge.” F ED . R. E VID . 803(6); see also Theriot v. Bay Drilling
Corp.,
Accordingly, the district court did not abuse its discretion in excluding the Big Easy Mailer.
C. Expert Witness Testimony
PBT next complains that the district court erred by quashing the subpoena of John Joyce, one of PBT’s expert witnesses, and by excluding Joyce’s testimony because he refused to be deposed. Gayle Murchinson, who had been retained as an expert for the defendants, and Joyce are both professors at Tulane University. Joyce is tenured; Murchinson is not. When Joyce learned that he would serve on the committee that would evaluate Murchinson for tenure, he decided to withdraw as an expert witness because he believed that a conflict of interest existed. Accordingly, Joyce *34 did not aрpear at his scheduled deposition. Both PBT and the defendants subpoenaed Joyce for deposition, but Joyce retained his own counsel and moved to quash the subpoena. The magistrate judge granted Joyce’s motion, and the district court affirmed. The district court subsequently granted the defendants’ motion in limine to exclude Joyce’s testimony because he refused to be deposed. PBT appeals the district court’s decision to affirm the grant of Joyce’s motion to quash and the defendant’s motion to exclude.
We review the decision to quash a subpoena for abuse of
discretion. In re Dennis,
Here, the district court did not abuse its broad discretion
*35
in determining that the subpoena subjected Joyce to undue burden
because of his believed conflict of interest. PBT has not shown
that the information that Joyce would have conveyed to the jury
was so necessary that it warrаnted his coerced participation in
the trial. Joyce had no personal knowledge relevant to the case
and was subpoenaed only to give his expert opinion. Furthermore,
the information that Joyce allegedly would have imparted to the
jury was not only available from other sources, it was actually
provided at trial by PBT’s other expert witness. Cf. Kaufman v.
Edelstein,
The district court’s consideration of the testimony of PBT’s expert, Harold Battiste, in evaluating PBT’s claim is clearly understandable. Mr. Battiste, one of the most knowledgeable, seasoned, and widely acclaimed musician/conductor/composers ever to come from the Southern United States staked his reputation on the sufficiency of PBT’s claims by offering his well- documented expertise. He explained that the musical phrases in question are substantially similar, and are exact in purpose, form, and importance in both songs.
In light of these factors, the district court properly decided that the burden on Joyce was undue. [18]
*36
For similar reasons, the district court did not abuse its
discretion in granting the defendants’ motion in limine to
exclude Joyce’s testimony. The defendants were unable to depose
Joyce before trial, and it seems likely that Joyce would have
opposed any attempt to call him as a witness. Cf. Barrett v.
Atl. Richfield Co.,
D. Music Critics’ Articles and Testimony
PBT also contends that the district court committed reversible error by excluding, as hearsay, several newspaper articles that purported to find strong similarities between (because Joyce was originally a retained witness but then decided not to testify), it is clear that the Rules furnish district courts with the discretion not to compel unwilling experts to testify as to their opinions under certain circumstances. *37 Juvenile and Jubilee’s songs. PBT argues that the articles are not hearsay because they were not offered to prove that the two songs are substantially similar (i.e., the matter asserted). Rather, PBT claims, the articles were only offered to show that “numerous members of the intended audience believed that thе two songs were substantially similar.”
The district court did not abuse its discretion in excluding
these newspaper articles. As we have noted previously, the
question of substantial similarity is typically left to the fact
finders’ own impressions. See Bridgmon,
Furthermore, the district court did not abuse its discretion
in excluding the testimony of the authors of these articles.
While such testimony would have cured a potential hearsay problem
with the articles, it would not have made the evidence any more
probative. In addition, the district court acted within its
broad discretion by excluding the testimony on the grounds that
PBT failed to include the witnesses on its pre-trial witness
lists and that the witnesses had not been deposed before trial.
See, e.g., Singer v. City of Waco,
E. Evidence of PBT’s Own Sampling
PBT’s final complaint regarding the district court’s evidentiary rulings is that the court abused its discretion by admitting the defendants’ evidence regarding the extent to which Jubilee’s Back That Ass Up sampled music from a Jackson Five song, I Want You Back. In its motion in limine, PBT requested that the court “preclude defendants from introducing any documentary evidence or examining any witness on the subject of PBT’s use of the sound recordings or musical works of another in connection with the creation of the music in its version of the song Back That Ass Up.” The district court denied the motion. At the beginning of trial, PBT renewed its objection regarding “the use of the Michael Jackson unclean hands business,” and stated that it “object[s] to anything along those lines.” The defendants argue that the evidence of sampling was properly admitted for two purposes: (1) to establish an unclean hands defense and (2) to refute PBT’s claim that the phrase “back that ass up” is the hook in Jubilee’s song. PBT argues that the evidence was inadmissible under either theory and that the danger of unfair prejudice substantially outweighed its probative value. See F ED . R. E VID . 403.
PBT is correct that the evidence was not admissible on the ground that it established an unclean hands defense. The unclean *39 hands doctrine is used to defeat an undeserving plaintiff’s claim for equitable relief against a defendant that he has injured. See Mitchell Bros. Film Group v. Cinema Adult Theater, 604 F.2d 852, 863 (5th Cir. 1979) (“The alleged wrongdoing of the plaintiff does not bar relief unless the defendant can show that he has personally been injured by the plaintiff's conduct.”). Because the defendants could not show that they were personally injured by PBT’s sampling of the Jackson Five song, they had no basis for invoking that sampling as the basis of an unclean hands defense. See Alcatel USA, Inc. v. DGI Techs., Inc., 166 F.3d 772, 796 (5th Cir. 1999). Thus, the evidence should not have been admitted on that ground.
However, the district court acted within its discretion in
admitting the evidence for the purposes of determining the hook
of Back That Ass Up. As we have already discussed, a relevant
issue for the jury to consider was the qualitative importance of
the parts of Jubilee’s song that are similar to Juvenile’s song.
PBT claimed that the similarities between the two songs included
the very heart, or hook, of Jubilee’s song. To counter this
claim, the defendants were entitled to offer evidence that the
hook of Back That Ass Up was not the four word phrase but rather
another element of the song--namely, the Jackson Five sampling.
The evidence showed that the Jackson Five sampling recurred
throughout a significant portion of Jubilee’s song (including
*40
each time the phrase “back that ass up” was used) and that it was
a recognizable part of the song. Cf. Santrayall v. Burrell, 993
F. Supp. 173, 176 (S.D.N.Y. 1998) (excluding evidence of sampling
because it “comprise[d] only a very minor part of [the
plaintiff’s] song”). Henry Holden, a co-owner of PBT who added
the Jackson Five sample to Back That Ass Up, admitted that he
included the sample because it stayed in his mind. Further, the
fact that the sample came from a Jackson Five song was relevant
to the determination of the song’s hook because the considerable
popularity of the Jackson Five likely makes it more recognizable
to the audience. PBT has not shown that the introduction of the
fact that Back That Ass Up sampled a portion of the Jackson Five
song created a risk of unfair prejudice that substantially
outweighed this probative value. Accordingly, the district court
did not abuse its discretion in deciding that the probative value
of the sampling evidence outweighed any risk of unfair prejudice
or confusion. See Campbell v. Keystone Aerial Surveys, Inc., 138
F.3d 996, 1004 (5th Cir. 1998) (noting that F ED . R. E VID . 403 “is
an extraordinary measure that should be used sparingly.” (quoting
United States v. Morris,
V. Attorney’s Fees
*42 The defendants separately appeal the denial of their requests for attorney’s fees. Universal requested $323,121.25 in fees, and CMR and Juvenile requested $263,040. Of those, CMR and Juvenile traced $39,456 of their fees to their successful LUPTA counterclaim, for which L A . R EV . S TAT . 51:1409(A) mandates they receive fees as the prevailing parties. The district court denied the fee requests for the successful copyright defense and granted CMR and Juvenile’s request for the LUPTA fees at the markedly reduced sum of $2,500.
This court reviews the district court’s refusal to award
attorney’s fees in a copyright infringement case for an abuse of
discretion. Creations Unlimited, Inc.,
A trial court abuses its discretion in awarding or refusing to
award attorney’s fees when its ruling is based on an erroneous
view of the law or a clearly erroneous assessment of the
evidence. Sanmina Corp. v. BancTec USA, Inc.,
Section 505 of the Copyright Act provides: “In any civil
action under this title, the court in its discretion may allow
the recovery of full costs by or against any party other than the
United States or an officer thereof[;] [e]xcept as otherwise
provided by this title, the court may also award a reasonable
attorney’s fee to the prevailing party as part of the costs.”
17 U.S.C. § 505 (2000). As the district court below explicitly
*43
rеcognized, an award of attorney’s fees to the prevailing party
in a copyright action, although left to the trial court’s
discretion, “is the rule rather than the exception and should be
awarded routinely.” McGaughey v. Twentieth Century Fox Film
Corp.,
After McGaughey was decided, the Supreme Court decided
Fogerty v. Fantasy, Inc.,
Because copyright law ultimately serves the purpose of enriching the general public through access to creative works, it is peculiarly important that the boundaries of copyright law be demarcated as clearly as possible. To that end, defendants who seek to advance a variety of meritorious copyright defenses should be encouraged to litigate thеm to the same extent that plaintiffs are encouraged to litigate meritorious claims of *44 infringement.
Id. at 527. However, the Court made clear that it was not
adopting the British Rule, under which prevailing parties--
whether plaintiffs or defendants--are always granted attorney’s
fees. See id. at 533 (“Petitioner argues that . . . both
prevailing plaintiffs and defendants should be awarded attorney’s
fees as a matter of course, absent exceptional
circumstances. . . . [W]e reject this argument for the British
Rule.”). The Court reasoned that the language of § 505 that the
court “may” award fees “clearly connotes discretion” and that
Congress legislated the Copyright Act against the “strong
background of the American Rule.” Id. Accordingly,
“[p]revailing plaintiffs and prevailing defendants are to be
treated alike, but attorney’s fees are to be awarded to
prevailing parties only as a matter of the court’s discretion.”
Id. at 534; see also Hogan Sys., Inc. v. Cybresource Int’l, Inc.,
*45
The Fogerty Court noted that “[t]here is no precise rule or
formula for making these determinations, but instead equitable
discretion should be exercised in light of the considerations we
have identified.”
Here, the district court set forth the standard described above, noting the text of § 505, the principle that fee awards-- although discretionary--are the rule rather than the exception and should be awarded routinely, and that under Fogerty the court’s discretion is guided by the non-exclusive list of Lieb factors. The court then determined that in this case, those *46 factors suggested that attorney’s fees should not be awarded to the defendants. Specifically, the court stated:
In addition to presiding over the [five] day trial of this matter, the [c]ourt considered several complex and potentially dispositive pre-trial motions. Having gained an understanding of the applicable law and a thorough appreciation of PBT’s claims, the [c]ourt does not feel that this litigation was frivolous, objectively unreasonable, or without proper motive. PBT had a renowned music expert to support its position even though the jury gave greater weight to the testimony of Defendants’ expert. The [c]ourt is convinced that PBT’s claims were brought in good faith. Therefore, an award of attorney’s fees would not serve to deter future meritless litigation brought by other parties.
The defendants’ claim that the district court applied the
wrong legal standard is incorrect. The Supreme Court has
explicitly approved of a district court considering frivolity and
motivation as two of the multiple factors in a non-exclusive list
may guide the court’s discretion over attorney’s fees in
copyright cases. Fogerty,
VI. Conclusion
For the forgoing reasons, in No. 03-30625 we AFFIRM the judgment of the district court in favor of the defendants; in No. 03-30702, we AFFIRM the district court’s minute entry denying defendants’ motions for award of attorney’s fees on the copyright infringement claim. All outstanding motions are denied. Costs in No. 03-30625 shall be borne by plaintiff; costs in No. 03- 30702 shall be borne by defendants.
Notes
[1] PBT named as defendants Juvenile and CMR, as well as several entities affiliated with Universal Records (collectively, “Universal”). Juvenile and CMR are represented together by counsel, who submitted a single set of briefs on behalf of the two parties. Universal is represented independently and submitted a separate set of briefs. For the purposes of clarity and convenience, we refer to these parties collectively as the “defendants.”
[2] The defendants also argued at trial (and defend the verdict on appeal on the ground) that PBT’s infringement claim fails for the reason that the phrase “back that ass up” cannot be copyrighted. This is so, according to the defendants’ argument, because the phrase is not originаl and because the merger doctrine precludes extending protection to a phrase that is necessary to describe a particular thing--in this case, a dance move. However, the jury did not reach these issues because it was instructed not to make any findings on those points once they resolved factual copying and independent creation in favor of the defendants. We therefore do not address these claims.
[3] PBT does not appeal the district court’s adverse judgment on either its own LUPTA claim or the defendants’ LUPTA counterclaim.
[4] The defendants cross-appeal neither the judgment relating to their copyright infringement counterclaim nor the jury’s finding that PBT has a valid copyright interest in Back That Ass Up.
[5] This argument was originally advanced by the defendants
in a motion for summary judgment that the district court denied.
We review challenges to a district court’s jurisdiction de novo.
Shepard v. Int’l Paper Co.,
[6] Our conclusion is not undermined by Harris v. Garner, 216
F.3d 970 (11th Cir. 2000) (en banc), in which the Eleventh
Circuit held that prisoners who file lawsuits may not supplement
their pleadings after their release to cure noncompliance with
§ 1997e(e) of the Prison Litigation Reform Act (PLRA). Although
§ 1997e(e) prohibits prisoners from bringing a civil action while
in custody without a showing of physical injury, the plaintiffs
in Harris filed suit, while still in prison, for non-physical
injury and then attempted to supplement their complaint after
their release to cure the § 1997e(e) defect. The Harris court,
strictly limiting its holding to prisoner cases, found that the
district court lacked jurisdiction because the plaintiffs were
prisoners at the time they filed the lawsuit and no supplement
could change that historical fact to cure the § 1997e(e) defect.
[7] This circuit adopted the term probative similarity in
Engineering Dynamics, Inc. v. Structural Software, Inc., 26 F.3d
1335, 1340 & n.4 (5th Cir. 1994), which credits Prоfessor Alan
Latman with originating the term to resolve the confusion
resulting from many courts’ double use of “substantial
similarity” to describe both the similarity needed to prove
factual copying (i.e., what we term “probative similarity”) and
the similarity needed to prove that the copying is legally
actionable (i.e., what we term “substantial similarity”). See
also Alan Latman, “Probative Similarity” as Proof of Copying:
Toward Dispelling Some Myths in Copyright Infringement, 90 C OLUM .
L. R EV . 1187 (1990). A number of other circuits, including the
First, Second, Third, Tenth, and Eleventh, have also adopted the
term “probative similarity.” See, e.g., Dam Things From Denmark
v. Russ Berrie & Co., Inc.,
[8] Indeed, such an interpretation would lead to unreasonable results, such as where one author includes an entire chapter in his book that replicates verbatim another author’s book but then argues that the jury cannot infer factual copying on the grounds that, because the other twenty chapters are not similar, the two works are not probatively similar.
[9] As the O.P. Solutions court explained:
When evaluating probative similarity, a court should
compare the works in their entirety, including both
protectable and unprotectable elements. Sеe
Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d
119, 123 (2d Cir. 1994). This is appropriate because
although the plaintiff must ultimately establish
infringement by showing that the defendant copied a
substantial amount of protectable elements, (i.e., meet
the “substantial similarity” standard), the fact that
non-protectable elements were copied, although not a
basis for liability, can be probative of whether
protected elements were copied (i.e., help establish
probative similarity). See Gates Rubber,
[10] In fact, a plaintiff may establish factual copying
without any proof of access “when the similarity between
plaintiff’s and defendant’s works is sufficiently striking such
that the trier of fact may be permitted to infer copying on that
basis alone.” 4 N IMMER § 13.02[B], at 13-26 (footnotes omitted);
see also Jorgensen,
[11] Under the inverse-relationship doctrine, a greater level of access reduces the level of probative similarity necessary to demonstrаte factual similarity, at least to the extent that the plaintiff need not prove striking similarity when access is shown. However, the degree of access never affects the ultimate burden to show substantial similarity. Proof of access
[12] The proposition that substantial similarity must take
into account the qualitative importance of the copied material to
the plaintiff’s work finds considerable support in other
circuits’ jurisprudence. See, e.g., Newton v. Diamond, 349 F.3d
591, 596 (9th Cir. 2003) (“The substantiality of the similarity
is measured by considering the qualitative and quantitative
significance of the copied portion in relation to the plaintiff’s
work as a whole.”); King v. Innovation Books,
[17] PBT offered no witness who could testify to ever seeing or hearing an earlier version of 400 D EGREEZ that did not contain Back That Azz Up.
[18] Our conclusion is also guided by F ED . R. C IV . P. 45(c)(3)(B)(ii), which provides that a district court may quash a subpoena if it “requires disclosure of an unretained expert’s opinion or information not describing specific events or occurrences in dispute and resulting from the expert’s study made not at the request of any party . . . .” Although it is debatable whether this subsection of Rule 45 directly applies
[19] In the district court proceedings, PBT never distinguished between admitting the evidence of sampling and allowing evidence that the sampling was unauthorized. Rather, PBT only requested that the district court exclude all evidence relating to sampling. The failure to raise this distinction probably resulted from the parties’ focus on the unclean hands defense before and during trial.
[20] The district court, of course, would have had to reject the defendants’ unclean hands defense in order to accept this limitation on the admission of sampling evidence.
[21] In Hogan Systems, this court stated:
[T]he case law of the [Fifth Circuit] is in accord with
the Supreme Court’s rule in Fogerty. Hogan would have
this court believe that the Fifth Circuit’s
“discretionary but routinely awarded” McGaughey
standard for attorney’s fees is the same as the British
Rule and thus has been rejected explicitly by the
Supreme Court. It is clear that this is not the case.
The language of Fogerty clearly allows for judicial
discretion in determining whether attorney’s fees
should be awarded. So does the McGaughey rule.
[22] The Third Circuit set forth these factors in Lieb v.
Topstone Indus., Inc.,
[23] The defendants’ argument that PBT’s claim was per se
objectively unreasonable because the jury found in favor of the
defendants is without merit--to accept such an argument
necessarily would transform the discretionary rule into the
clearly rejected British Rule, under which a prevailing defendant
always recovers fees. In order for the rule to remain
discretionary rather than mandatory, a district court must be
able, under certain circumstances, to refuse to award fees.
Furthermore, although the district court, when denying the
defendants’ motion for summary judgment, noted that it doubted
that PBT would prevail at trial on the issue of whether the
phrase “back that ass up” was protectable under copyright laws,
the court later determined, after adjudicating a number of
substantive motions and hearing the full trial on the merits,
that PBT’s claim was not objectively unreasonable and that it did
not warrant attorney’s fees.
We note briefly a troubling aspect of Universal’s brief to
this court. After arguing that frivolity is not the appropriate
standard but rather that the court should consider the fact that
the defendants prevailed at trial, Universal states in its brief:
“The Universal Defendants prevailed on nearly every aspect of
PBT’s claim. When a plaintiff pursues claims without merit, the
‘failure of the district court to award attorney fees and costs
to the prevailing party will, except under the most unusual
circumstances constitute an abuse of discretion.’” (emphasis
added) (quoting Diamond Star Bldg. Corp. v. Freed,