Appendix — Williams v. Baxter

Supreme Court brief1987

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eupreme Loui, U.o.

ret 7 = 4 9 1 2 4, & D

. : SEP 19 1987

No. 87........... JOSEPH F. SPANIOL, JR.

CLERK

In The

Supreme Court of the United States

October Term, 1987

o-——

JOHN T. WILLIAMS; MCA INC.; UNIVERSAL CITY

STUDIOS.; MUSIC GORPORATION OF AMERICA;

INC.; MCA RECORDS, INC.; and MERCHANDISING

CORPORATION OF AMERICA, INC.,

Petitioners,

VS.

LESLIE T. BAXTER,

Respondents.

ON PETITION FOR WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

fay

APPENDIX TO PETITION FOR WRIT

OF CERTIORARI

ray

RONALD S. ROSEN LOUIS P. PETRICH

(Counsel of Record) (Counsel of Record)

MARSHA E. DURKO EDWARD A. RUTTENBERG

SILVERBERG, ROSEN, LEON LEOPOLD, PETRICH & SMITH

& BEHR A Professional Corporation

2029 Century Park East 2049 Century Park East

Suite 1900 Suite 3100

Los Angeles, CA 90067-3274 Los Angeles, CA 90067-3274

(213) 277-4500 (213) 277-3333

Attorneys for Petitioner Attorneys for Petitioners

John T. Williams MCA Inc., Universal City

Studios, Music Corporation

of America Inc.,

MCA Records, Inc.

Merchandising Corporation

of America, Inc.

COCKLE LAW BRIEF PRINTING CO., (800) 225-6964

or call collect (402) 342-2831

TABLE OF CONTENTS

Page

. Order and Amended Opinion of Ninth Circuit

Court of Appeals, filed May 11, 1987, in Baxter

ESRB RAIE SHY cer elie ee aE aie ete ;

Initial Opinion of Ninth Cireuit Court of Appeals

in Baxter v. MCA, filed March 5, 1987 0000...

Order Granting Motion For Summary Judgement,

by District Court in Barter v. MCA, entered Oc-

Fe, ey, BARN Raterelaecens mitotic beth ices yee tterlited RRR eee

Order By Ninth Circuit Court of Appeals Deny-

ing Petition For Rehearing and Suggestion For

Rehearing En Bane, in Baxter v. MCA, filed June

ee ee eae Mee Oe osteo

Petition For Rehearing Fn Bane in Bazter v.

MCA. filed March 19, 1987

Constitutional Provisions, Statutes and Rules

Tnvolved

(a) Article I, section 8 of the Constitution

(b) First Amendment to the Constitution .................

(d) Section 102(b) of the Copyright Act of 1976 ..

(e) Federal Rule of Civil Procedure 56 .....................

Order Amending Opinion, filed May 6, 1983, bv

Ninth Cireuit Court of Appeals in Twentieth

Crema De on

Minute Order, filed June 22, 1987 of Central Dis-

trict of California in Interaction Research, Inc.

a ae

Memorandum, filed June 11, 1987 by Ninth Cir-

euit Court of Appeals in Thompson v. Richie ...........

138

App. 1

APPENDIX

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

Lesiie T. Baxter,

Plaintiff-Appellant,

MCA, Inc., a Delaware No. 84-6522

corporation; Universau Crry

Sruptos, Inc., a Delaware D.C. No.

corporation, Mustc CorPporaTION CV 83-7081 HLH

or America, a California ORDER AND

corporation; MCA Records, Inc., AMENDED

a California corporation ; OPINION

MERCHANDISING CORPORATION OF

America, a California corporation;

and Joun T. WinuiaMs,

Defendants-A ppellees.

Argued and Submitted

October 9, 1985—San Francisco, California

Filed March 5, 1987

Amended May 11, 1987

Before: Thomas Tang, Robert Boochever and

Alex Kozinski*, Circuit Judges.

Opinion by Judge Tang

*Judge Duniway, since deceased, was a member of the

panel that originally heard oral argument in this case. Judge

Kozinski was chosen by lot to replace Judge Duniway on the

panel, and has had the benefit of listening to the tapes of oral

argument, as well as reading the briefs and reviewing the rec-

ord and exhibits in his consideration of the case.

App. 2

Appeal from the United States District Court

for the Central District of California

Harry L. Hupp, District Judge, Presiding

SUMMARY

Appeal from a district court’s grant of summary judg-

ment in a copyright action. Reversed and remanded.

Appellant Leslhe Baxter (Baxter) composed the song

‘*Joy’’ in 1953, and is sole owner of all rights in the song.

Defendant John Williams (Williams) was acquainted with

Baxter and with the song. In 1982, Williams composed

the Theme from E.T., which was used by the other defen-

dants in a motion picture, sound recordings and merchan-

dising. Baxter filed a complaint for copyright infringe-

ment and demand for jury trial in district court, alleging

the Theme from E.T. was largely copied from Joy. The

defendants moved for summary judgment on the ground

that, as a matter of law, Theme from E.T. was not sub-

stantially similar to protectable expression in Joy, and

therefore did not infringe it. For purposes of the motion

the issues of ownership of Joy, access to the song, and

similarity of the ‘‘general ideas’’ was conceded. The dis-

trict court granted, stating that similarity was totally lack-

ing and could not be submitted to a jury.

[1] The district court’s grant of summary judg-

ment to the defendants must be affirmed if reasonable

minds could not differ as to the presence or absence of

substantial similarity of expression. [2] Since many is-

sues were conceded for purposes of the summary judg-

ment motion, the only question before the court is whether

the district court’s finding, based on its ear, that substan-

App. 3

tial similarity of expression was ‘‘totally lacking and could

not be submitted to a jury’’ can sustain a judgment to the

defendants. [3] Summary judgment cannot be granted if

there exists a genuine dispute as to a material fact, [4]

and determinations of substantial similarity of expression

are subtle and complex. [5] Based on a review of the

record, the court is convinced that reasonable minds could

differ as to whether the songs are substantially similar.

[6] To accept the defendants’ argument that the sim-

ilarity can be reduced to a six-note sequence which cannot

be copyrighted would be to ignore the fundamental notion

that no bright line rule exists as to what quantum of simi-

larity is permitted before crossing into the realm of sub-

stantial similarity. The ear of the court must yield to the

ears of jurors. I[vidence that the sequence is found in

other works would be admissible to rebut an inference of

copying (because it would show that the sequence is so

common that the probability of independent, coincidental

creation was high), [7] but Baxter’s claim does not center

on one six-note sequence. [8] The district court erred in

granting the defendants’ motion for summary judgment.

COUNSEL

John T. Blanchard, Los Angeles, California, for the plain-

tiff-appellant.

Louis P. Petrich, Los Angeles, California, for the defend-

ants-appellees, MCA, et al.

Ronald S. Rosen, Los Angeles, California, for the defend-

ant-arpellee, John T. Williams.

App. 4

ORDER

The opinion filed March 5, 1987 is hereby amended as

follows: (1) at slip op. page 9, delete the paragraph num-

bered 5, and last sentence and citation in the paragraph

numbered 6; (2) at slip op. page 10, delete the first full

paragraph numbered 7.

It is so ordered.

OPINION

TANG, Circuit Judge:

In this copyright infringement action, plaintiff-appel-

lant Leslie T. Baxter appeals the district court’s grant of

summary judgment to John Williams and the other de-

fendants-appellees. The district court granted defendants’

motion based upon its determination that no substantial

similarity of expression existed as between Baxter’s copy-

righted song Joy and the theme from the motion picture

‘‘K.T.: The Extra-Terrestrial’’ [hereinafter cited as

Theme from E.T.]. We reverse the grant of summary

judgment and remand for trial.

FACTS AND PROCEDURAL HISTORY

In 1953, Leslie Baxter composed a collection of seven

songs intended to invoke or represent emotions. These

songs were recorded and published by Capitol Records in

1954 on an album entitled The Passions. Joy, one of the

compositions on that album, is the subject of this action.!

1Since Joy was published and fixed in a sound recording

prior to February 15, 1972, it was not eligible for copyright

registration. Baxter’s claim rests on Joy as registered sheet music

which was copyrighted on February 8, 1954 and renewed on

August 20, 1982.

App. 5

Baxter is the sole owner of all right, title and interest in

the copyright to Joy.

Baxter and John Williams, a successful composer and

conductor of music, have been personally acquainted for

several decades. Williams had previously played the piano

for Baxter at a number of recording sessions, and had

knowledge of Joy. He participated as the pianist in the

orchestra for a publie performance of Joy in the Holly-

wood Bowl in the 1960s. In 1982, Williams composed

Theme from E.T. for which he received an Academy Award

for best original music. The other appellees utilized

Theme from E.T. in the motion picture ‘‘E.T.: The Extra-

Terrestrial,’’ sound recordings and merchandising.

On November 2, 1983, Baxter filed a complaint for

trict court. He alleged that Theme from E.T. was largely

copied from his copyrighted song Joy. On September 17,

1984, defendants moved for summary judgment on the

ground that, as a matter of law, Theme from E.T. was not

substantially similar to pretectible expression in Joy, and

therefore did not infringe it. For the limited purpose of

the summary judgment motion only, defendants conceded

that: (1) Baxter owned a duly registered copyright in

Joy; (2) Williams had ‘‘access” to Joy before the creation

of Theme from E.T.; and (3) the ‘‘general ideas” in the

subject songs were substantially similar.

Defendants attached to their motion papers the fol-

lowing items: (1) cassette tape recordings of Joy as it

appeared on the album The Passions and the movie sound-

score of Theme from E.T., (2) the twenty-three page writ-

ten instrumental sheet musie of Joy that was copyrighted:

App. 6

and (3) the five page piano score of Theme from E.T.

Baxter introduced into evidence expert testimony and five

comparison tapes by Professor Harvey Bacal regard:ng

the degree of similarity between the two compositions.

After reviewing the submitted evidence, the disirict

court granted defendants’ motion for summary judgment,

stating:

This Court’s ‘‘ear’’ is as lay as they come. The Court

cannot hear any substantial similarity between de-

fendant’s expression of the idea and plaintiff’s. Until

Professor Bacal’s tapes were listened to, the Court

could not even tell what the complaint was about.

Granted that Professor Bacal’s comparison exposes

a musical s.milarity in sequence of notes which would,

perhaps, be obvious to experts, the similarity of ex-

pression (or impression as a whole) is totally lacking

and could not be submitted to a jury.

Baxter timely appealed.

Il. STANDARD OF REVIEW

[1] After the defendants stipulated to the plaintiff’s

ownership of the copyright and aecess to his work, the dis-

trict court ruied as a matter of law that there was no sub-

stantial similarity between the two works. That holding

is subject to our de novo review. Berkic v. Crichton, 761

F.2d 1289, 1292 (9th Cir. 1985), cert. denied, — US. —,

106 S. Ct. 85 (1985). We review the evidence and the in-

ferences therefrom in the light most favorable to the non-

moving party, and determine whether there exists any gen-

uine issue of material fact and the moving party is entitled

to judgment as a matter of law. RED Publications, Inc. v.

Oregonian Pub. Co., 749 F.2d 1327, 1328 (9th Cir. 1984)

accord Twentieth ( entury Fox Film Corp. v. MCA, 715

App. 7

I.2d 1327, 1328 (9th Cir. 1983). The district court’s grant

of summary judgement to the defendants must be affirmed

if reasonable minds could not differ as to the presence or

absence of substantial similarity of expression. See v.

Diurang, 711 F.2d 141 (9th Cir. 1983). See also Twentieth

Century-Fox, 715 F.2d at 1329.

DISCUSSION

[2] To establish a successful claim for copyright in-

fringement, the plaintiff must prove (1) ownership of the

the defendant. See Sid & Marty Krofft Television Pro-

ductions, Inc. v. McDonald’s Corp., 562 F.2d 1157, 1162

(9th Cir. 1977) (citing Reyher v. Children’s Television

Workshop, 533 ¥.2d 87, 90 (2d Cir. 1976), cert. denied, 429

U.S. 980 (1976); Universal Athletic Sales Co, v. Salkeld,

511 F.2d 904, 907 (3d Cir. 1975), cert. denied, 423 U.S. 863

(1975); 2 M. Nimmer, Nimmer on Copyright § 141 at 610-

611 (1979) [hereinafter cited as ‘‘Nimmer’’]). Beeause

direct evidence of copying is rarely available, a plaintiff

may establish copying by circumstantial evidence of: (1)

defendant’s access to the copyrighted work prior to tlie

creation of defendant’s work, and (2) substantial similarity

of both general ideas and expression between the copy-

righted work and the defendant’s work. See Krofft, 562

F.2d at 1162. Absent evidence of access, a ‘striking sim-

ilarity’’ between the works may give rise to a permissible

inference of copying. See Selle v. Gibb, 741 F.2d 896, 901

(7th Cir. 1984); Shultz v. Holmes, 264 F.2d 942 (9th Cir.

1959) ; Nimmer § 13.02| B] at 13-14 (1986). Baxter’s own-

ership of the copyright to Joy is undisputea, and defen-

dants eonceded access for the purpose of their summary

App. 8

judgment motion. Defendants further assumed for pur-

poses of their motion that there was substantial similarity

of ideas as between the two compositions. Therefore, the

only question? before us is whether the district court’s find-

ing, based on its ear, that substantial similarity of ex-

pression was ‘‘totally lacking and could not be submitted

to a jury,’’ can sustain a grant of summary judement to

the defendants.

[3] Summary judgment cannot be granted if there

exists a genuine dispute as to a material fact. Fed. R. Civ.

P.56(¢c). Rule 56 calls for the judge to determine whether

there exists a genuine issue for trial, not to weigh the evi-

?Baxter argues that he should also have been permitted to

prove copyright infringement by way of expert testimony and

analytic dissection which allegedly demonstrated the two works’

“striking similarity.” This contention misapprehends the nature

of the “striking similarity’ doctrine. Proof of striking similarity

is an alternative means of proving ‘‘copying’’ where proof of

access is absent. See Selle v. Gibb, 741 F.2d 896, 901 (7th Cir.

1984); Nimmer § 13,02[B] at 13-14, 13-15 (1986). Yet here, ac-

cess was conceded and is thus not in issue. It was thus unnec-

essary to consider the possibility that Theme from E.T. was the

product of independent creation, coincidence, a prior common

source, or any source other than copying. See id. Upon remand,

however, Baxter’s expert testimony and analytic dissection of-

fered as to “striking similarity’ would certainly merit submission

to a jury as to the substantial similarity of general ideas as be-

tween the two works. See Krofft, 562 F.2d at 1164.

Baxter further contends that judicial protection beyond the

“lay audience” test is required for authors of works in technical!

fields such as music because an infringer can easily deceive the

unsophisticated by immaterial variations in the copyrighted

work. It is unnecessary to reach this issue, given our holding

that the grant of summary judgment constituted reversible er-

ror. No compelling reason appears, however, to depart from

the principles enunciated in Krofft, which reiterates that the test

of substantial similarity depends upon the response of the or-

dinary lay listener. See Krofft, 562 F.2d at 1164.

App. 9

dence himself and determine the truth of the matter. See

Anderson v. Liberty Lobby, Inc., — U.S. —, 106 S. Ct. 2505,

2516 (1986). The non-moving party must present evidence

sufficient to require a jury or judge to resolve the parties’

differing versions of the truth at trial. First National

Bank of Arizona v. Cities Service Co., 391 U.S. 253, 288-

289 (1968). Inferences to be drawn from facts contained

in the moving party’s papers are to be viewed by the dis-

trict court in the light most favorable to the non-moving

party. See Adickes v. S.H. Kress & Co., 398 U.S. 144

(1970). Weighing evidence, determining credibility, and

drawing inferences from facts remain jury functions which

may not be undertaken by the trial judge. See Anderson,

106 S. Ct. at 2513.

[4] Determinations of substantial similarity of ex-

pression are subtle and complex. The test to be applied

has been labeled an ‘‘intrinsie’’ one by this Court in that

it depends not upon external criteria, but instead upon the

response of the ordinary reasonable person to the works.

Krofft, 562 F.2d at 1164. ‘‘Analytie dissection’’ and ex-

pert testimony are not called for; the gauge of substantial

similarity is the response of the ordinary lay hearer. Td.,

quoting Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir.

1946), cert. denied, 330 U.S. 851 (1947). Accordingly, in

Krofft, this Court rejected extrinsie analysis of similari-

ties and differences among characters in plaintiff’s televi-

sion show and defendants’ TV commercials, in favor of

asking whether the defendants’ works captured the total

concept and feel of plaintiffs’ works. Arofft, 562 F.2d at

1167. See also Berkic, 761 F.2d at 1292; Litchfield v.

Spielberg, 736 F.2d 1352, 1357 (9th Cir. 1984), cert. denied,

— U.S. —, 105 S. Ct. 1753 (1985); Overman v, Universal

App. 10

City Studios, Inc., 605 F.Supp. 350, 353 (C.D. Cal. 1984),

aff’d mem., No. 84-6009 (9th Cir. July 2, 1985).

[5] We do not suggest that our ears are any more

sophisticated than those of the district court. Neverthe-

less, based on our review of the record, we are persuaded

that reasonable minds could differ as to whether Joy and

Theme from E.T. are substantially similar. As in Twen-

tieth Century-Fox, we do not suggest that the works are,

in fact, substantially similar. We only state that reason-

able minds could differ as to the issue and thus that sum-

mary judgment was improper. See Twentieth-Century-

Fox, 715 F.2d at 1329.

We finally address defendants’ contention that any

similarity between the works can be reduced to a six-note

sequence which is not proteetible expression under the

[6] Even were we to accept arguendo defendants’

argument over Baxter’s response that it is not a six-note

sequence but the entire work whose similarity is at issue,

this argument ignores the fundamental notion that no

bright line rule exists as to what quantum of similarity is

permitted before crossing into the realm of substantial

similarity. See generally 3 M. Nimmer, Nimmer on Copy-

right § 138.03[A]|2] (1986). Here, the ear of the court

must yield to the ears of jurors. See Roy Export Co. Es-

tablishment v. CBS, 503 F.Supp. 1137, 1145 (S.D.N.Y.

1980), aff'd. 672 F.2d 1095 (2d Cir. 1982), cert. denied, 459

U.S. 826 (1982). kiven if a copied portion be relatively

small in proportion to the entire work, if qualitatively im-

portant, the finder of fact may properly find substantial

similarity. See Walt Disney Productions v. Air Pirates,

App. 11

931 F.2d 751 (9th Cir. 1978), cert. denied, 439 U.S. 1132

(1978); Universal Pictures v. Harold Lloyd, 162 F.2d 354

(9th Cir. 1947); Heim v. Universal Pictures Co., 154 F.2d

480, 488 (single brief phrase so idiosyncratic as to preclude

coincidence might suffice to show copying) (dictum) ; Fred

Fisher, Inc. v. Dillingham, 298 F. 145 (S.D.N.Y. 1924) (L.

Hand, J.) (eight note ‘‘ostinato’’ held to infringe copy-

right in song). See also Meeropol v. Nizer, 560 F.2d 1061

(2d Cir. 1977) (words copied amounted to less than one

percent of defendant's entire work; fair use), cert. denied,

434 U.S. 1013 (1977); Robertson v. Batten, Barton, Dur-

stine € Osborne, Inc., 146 F.Supp. 795, 798 (S.D. Cal. 1956)

(portions of song used constituted element upon which

popular appeal and hence commercial success depended;

fair use). See generally Nimmer § 13.03[A][2] at 13-36,

and citations therein (notion that copying of three bars

from musical work can never constitute infringement is

without foundation). Certainly, evidence that the sequence

in question is found in other works would be admissible to

rebut an inference of copying; such evidence demonstrates

that the sequence is so common that the probability of in-

dependent, coincidental creation was high. Granite Music

Corp. v. United Artists Corp., 532 F.2d 718, 720 (9th Cir.

1976).

[7] But we do not understand Baxter’s claim to cen-

ter solely on one six-note sequence. The jury upon remand

may, of course, determine that any similarity is confined

to the sequence, and that the similarity is insubstantial.

CONCLUSION:

(8] Based upon our review of the record, we cannot

say that Joy and Theme from E.T. are so dissimilar that

App. 12

reasonabie minds could not differ as to a lack of substan-

tial similarity between them. Therefore, the district court

erred in granting defendants’ motion for summary judg-

ment.

Reversed and remanded for proceedings not inconsis-

tent with this opinion.

App. 13

UNITED STATE COURT OF APPEALS

FOR THE NINTH CIRCUIT

Leste T. Baxter,

Plaintiff-A ppellant,

Vv.

MCA, Inc., a Delaware

corporation; Unrtversan City

Sruptos, Inc., a Delaware

corporation, Mustc Corporation

or America, a California

corporation; MGA Records, Inc., a

California corporation ;

MERCHANDISING CORPORATION OF

America, a California corporation;

and Jonn T. WruiiaMs,

Defendants-Appellees.

No. 84-6522

D.C. No.

CV 83-7081 HLH

OPINION

Argued and Submitted

October 9, 1985—San Francisco, California

Filed March 5, 1987

Before: Thomas Tang, Robert Boochever and

Alex Kozinski*, Cireuit Judges.

Opinion by Judge Tang

*Judge Duniway, since deceased, was a member of the

panel that originally heard oral argument in this case. Judge

Kozinski was chosen by lot to replace Judge Duniway on the

panel, and has had the benefit of listening to the tapes of oral

argument, as well as reading the briefs and reviewing the record

and exhibits in his consideration of the case.

App. 14

Appeal from the United States District Court

for the Central District of California

Harry L. Hupp, District Judge, Presiding

SUMMARY

Appeal from a district court’s grant of summary judg-

ment in a copyright action. Reversed and remanded.

Appellant Leslie Baxter (Baxter) composed the song

‘‘Joy’’ in 1953, and is sole owner of all rights in the song.

Defendant John Williams (Williams) was acquainted with

Baxter and with the song. In 1982, Williams composed the

Theme from E.T., which was used by the other defendants

in a motion picture, sound recordings and merchandising.

Baxter filed a complaint for copyright infringement and

demand for jury trial in district court, alleging the Theme

from K.T. was largely copied from Joy. The defendants

moved for summary judgment on the ground that, as a mat-

ter of law, Theme from E.T. was not substantially similar

to protectable expression in Joy, and therefore did not in-

fringe it. For purposes of the motion the issues of owner-

ship of Joy, aecess to the song, and similarity of the ‘‘gen-

eral ideas’’ was conceded. The district court granted, stat-

ing that similarity was totally lacking and could not be sub-

mitted to a jury.

{1} The district court’s grant of summary judgment

to the defendants must be affirmed if reasonable minds

eould not differ as to the presence or absence of substan-

tial similarity of expression. [2] Since many issues were

eoneceded for purposes of the summary judgment motion,

the only question before the court is whether the district

App. 15

court’s finding, based on its ear, that substantial similarity

of expression was ‘‘totally lacking and could not be sub-

mitted to a jury’’ can sustain a judgment to the defendants.

[3] Summary judgment cannot be granted if there exists

a genuine dispute as to a material fact, [4] and determina-

tions of substantial similarity of expression are swhtle and

complex. [5] Since substantial similarity is usmally an

extremely close issue of fact, summary judgment is dis-

favored on that issue as a general rule, although summary

judgment is not barred where the works are so dissimilar

that reasonable minds could not differ as to the absence of

substantial similarity. [6] Based on a review of the record,

the court is convinced that reasonable minds could differ

as to whether the songs are substantially similar. [7] This

result is appropriate in light of the concession of access,

which may have lowered the quantum of proof required for

a jury to find substantial similarity, had there been a trial.

{8} To accept the defendants’ argument that the simi-

larity can be reduced to a six-note sequence which cannot be

copyrighted would be to ignore the fundamental notion

that no bright line rule exists as to what quantum of sim-

iarity is permitted before crossing into the realm of sub-

stantial similarity. The ear of the court must yield to tlie

ears of jurors. Evidence that the sequence is found in

other works would be adinissible to rebut an inference of

copying (because it would show that the sequence is so com-

mon that the probability of independent, coincidental crea

tion was high), [9] but Baxter’s claim does not center on

one six-note sequence. [10] The district court erred in

vranting the defendants’ motion for summary judgment.

COUNSEL

John T. Blanchard, Los Angeles, California, for the plain-

tiff-appellant.

Louis P. Petrich, Los Angeles, California, for the defen-

dants-appellees, MCA, et al.

Ronald S. Rosen, Los Angeles, California, for the dcefen-

dant-appellee, John T. Williams.

OPINION

TANG, Cireuit Judge:

In this copyright infringement action, plaintiff-appel-

lant Leslie T. Baxter appeals the district court’s grant of

summary judgment to John Williams and the other defen-

dants-appellees. The district court granted defendants’

motion based upon its determination that no substantial

similarity of expression existed as between Baxter’s copy-

righted song Joy and the theme from the motion picture

‘““E.T.: The Extra-Terrestrial’’ [hereinafter cited as

Theme from E.T.] We reverse the grant of summary

judgment and remand for trial.

hACTS AND PROCEDURAL HISTORY

In 1953, Leslie Baxter composed a collection of seven

songs intended to invoke or represent emotions. These

songs were recorded and published by Capital Records in

1954 on an album entitled The Passions. Joy, one of the

compositions on that album, is the subject of this action.’

1Since Joy was published and fixed in a sound recording

prior to February 15, 1972, it was not eligible for copyright

registration. Baxter’s claim rests on Joy as registered sheet music

which was copyrighted on February 8, 1954 and renewed on

August 20, 1982.

App. 17

Baxter is the sole owner of all right, title and interest in

the copyright to Joy.

Baxter and John Williams, a successful composer and

conductor of music, have been personally acquainted for

several decades. Williams had previously played the

piano for Baxter at a number of ‘recording sessions, and

had knowledge of Joy. He participated as the pianist in

the orchestra for a public performance of Joy in the Holly-

wood Bow! in the 1960s. In 1982, Williams composed

Theme from E.T. for which he received an Academy Award

for best original music. The other appellees utilized Theme

from E.T. in the motion picture ‘‘E.T.: The Extra-Ter-

restrial,’’ sound recordings and merchandising.

On November 2, 1983, Baxter filed a complaint for

trict court. He alleged that Theme from E.T. was largely

copied from his copyrighted song Joy. On September 17,

1984, defendants moved for summary judgment on the

ground that, as a matter of law, Theme from E.T. was not

substantially similar to protectible expression in Joy, and

therefore did not infringe it. For the limited purpose of

the summary judgment motion only, defendants conceded

that: (1) Baxter owned a duly registered copyright in

Joy: (2) Williams had ‘‘access’’ to Joy before the creation

of Theme from E.T.; and (3) the ‘‘general ideas’’ in the

subject songs were substantially similar.

Defendants attached to their motion papers the follow-

ing items: (1) cassette tape recording of Joy as it ap-

peared on the album The Passions and the movie sound-

score of Theme frem E.T., (2) the twenty-three page writ-

ten instrumental sheet music of Joy that was copyrighted;

App. 18

and (3) the five page piano score of Theme from E.T.

Baxter introduced into evidence expert testimony and five

comparison tapes by Professor Harvey Bacal regarding

the degree of similarity between the two compositions.

After reviewing the submitted evidence, the district

court granted defendants’ motion for summary judgment,

stating:

This Court’s ‘‘ear’’ is as lay as they come. The Court

cannot hear any substantial similarity between defen-

dant’s expression of the idea and plaintiff’s. Until

Professor Bacal’s tapes were listened to, the Court

could not even tell what the complaint was about.

Granted that Professor Bacal’s comparison exposes a

musical similarity in sequence of notes which would,

perhaps, be obvious to experts, the similarity of ex-

pression (or impression as a whole) is totally lacking

and could not be submitted to a jury.

Baxter timely appealed.

Il. STANDARD OF REVIEW

[1] After the defendants stipulated to the plaintiff’s

ownership of the copyright and access to his work, the

district court ruled as a matter of law that there was no

substantial similarity between the two works. That hold-

ing is subject to our de novo review. Berkic v. Crichton,

761 F.2d 1289, 1292 (9th Cir. 1985), cert. dented, -—— U.S.

—-, 106 S. Ct. 85 (1985). We review the evidence and the

inferences therefrom in the light most favorable to the

nonmoving party, and determine whether there exists any

genuine issue of material fact and the moving party is

entitled to judgment as a matter of law. RFD Publica-

tions, Inc. v. Oregonian Pub. Co., 749 F.2d 1327, 1328

(9th Cir. 1984) accord Twentieth Century Fox Film Corp.

App. 19

v. MCA, 715 F.2d 1327, 1328 (9th Cir. 1983). The district

court’s grant of summary judgment to the defendants

must be affirmed if reasonable minds could not differ as

to the presence or absence of substantial similarity of ex-

pression. See v. Durang, 711 F.2d 141 (9th Cir. 1983).

See also Twentieth Century-Fox, 715 F.2d at 1329.

DISCUSSION

[2] To establish a successful claim for copyright

infringement, the plaintiff must prove (1) ownership of

the copyright, and (2) ‘‘copying’”’ of protectible expres-

sion by the defendant. See Sid & Marty Krofft Television

Productions, Inc. v. McDonald’s Corp., 562 F.2d 1157, 1162

(9th Cir. 1977) (citing Reyher v. Children’s Televiston

Workshop, 5383 F.2d 87, 90 (2d Cir. 1976), cert. denied,

429 U.S. 980 (1976); Universal Athletic Sales Co. v. Sal-

keld, 511 F.2d 904, 907 (8d Cir. 1975), cert. denied, 423

U.S. 863 (1975) ; 2 M. Nimmer, Nimmer on Copyright § 141

at 610-611 (1979) [hereinafter cited as ‘‘Nimmer’’|). Be-

cause direct evidence of copying is rarely available, a plain-

‘iff may establish copying by circumstantial evidence of:

(1) defendant’s access to the copyrighted work prior to

the creation of defendant’s work, and (2) substantial sim-

ilarity of both general ideas and expression between the

copyrighted work and the defendant’s work. See Arofft,

562 F.2d at 1162. Absent evidence ot access, a ‘‘striking

similarity’? between the works may give rise to a_per-

missible inference of copying. See Selle v. Gibb, 741 F.2

896, 901 (7th Cir. 1984); Shultz v. Holmes, 264 F.2d 942

(9th Cir. 1959); Nimmer § 13.02[B] at 13-14 (1986). Bax-

ter’s ownership of the copyright to Joy is undisputed, and

defendants coneeded access for the purpose of their sum-

App. 20

mary judgment motion. Defendants further assumed for

purposes of their motion that there was substantial sim-

ilarity of ideas as between the two compositions. ‘There-

fore, the only question? before us is whether the district

eourt’s finding, based on its ear, that substantial sim-

ilarity of expression was ‘‘totally lacking and could not

;°

be submitted to a jury,’’ can sustain a grant of summary

judgment to the defendants.

[3] Summary judgment cannot be granted if there

exists a genuine dispute as to a material fact. Fed. R.

Civ. P. 56(c). Rule 56 calls for the judge to determine

whether there exists a genuine issue for trial, not to weigh

the evidence himself and determine the truth of the mat-

2Baxter argues that he should also have been permitted to

prove copyright infringement by way of expert testimony and

analytic disseciion which allegedly demonstrated the two works’

“striking similarity.” This contention misapprehends the nature

of the ‘striking similarity’ doctrine. Proof of striking similarity

is an alternative means of proving “copying’’ where proof of

access is absent. See Selle v. Gibb, 741 F.2d 896, 901 (7th Cir.

1984); Nimmer § 13.02{B] at 13-14, 13-15 (1986). Yet here, ac-

cess was conceded and is thus not in issue. It was thus unnec-

essary to consider the possibility that Theme from E.T. was the

product of independent creation, coincidence, a prior common

source, Or any source other than copying. See id. Upon re-

mand, howevel, Baxter’s expert testimony and analytic dissec-

tion offered as to “striking similarity” would certainly merit

submission to a jury as to the substantial similarity of general

ideas as between the two works. See Krofft, 562 F.2d at 1164.

Baxter further contends that judicial protection beyond the

‘lay audience” test is required for authors of works in technical

fields such as music because an infringer can easily deceive

the unsophisticated by immaterial variations in the copyrighted

work. It is unnecessary to reach this issue, given our holding

that the grant of summary judgment constituted reversible er-

ror. No compelling reason appears, however, to depart from

the principles enunciated in Krofft, which reiterates that the

test of substantial similarity depends upon the response of the

ordinary lay listener. See Krofft, 562 F.2d at 1164.

App. 21

ter. See Anderson v. Liberty Lobby, Inc., — U.S. —, 106

S.Ct. 2505, 2516 (1986). The non-moving party must pre-

sent evidence sufficient to require a jury or judge to re-

solve the parties’ differing versions of the truth at trial.

First Nattonal Bank of Arizona v. Cities Service Co., 391

U.S. 253, 288-289 (1968). Inferences to be drawn from

facts contained in the moving party’s papers are to be

viewed by the district court in the light most favorable to

the non-moving party. See Adickes v. 8S. H. Kress & Co..,

398 U.S. 144 (1980). Weighing evidence, determining

credibility, and drawing inferences trom facts remain jury

functions which may not be undertaken by the trial judge.

See Anderson, 106 S.Ct. at 2513.

[4] Determination of substantial similarity of expres-

sion are subtle and complex. The test to be applied has

been labeled an ‘‘intrinsie’’ one by this Court in that it

depends not upon external criteria, but instead upon the

response of the ordinary reasonable person to the works.

Krofft, 562 F.2d at 1164, ‘‘ Analytic dissection’’ and expert

testimony are not ealled for; the gauge of substantial simi-

larity is the response of the ordinary lay hearer. Jd., quot-

ing Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946),

cert. denied, 330 U.S. 851 (1947). Accordingly, in Krofft,

this Court rejected extrinsic analysis of similarities and

differences among characters in plaintiff’s television show

and defendants’ TV commercials, in favor of asking wheth-

er the defendants’ works captured the total concept and

feel of plaintiffs’ works. Krofft, 562 F.2d at 1167. See

also Berkic, 761 F.2d at 1292; Litchfield v. Spielberg, 736

K.2d 1352, 1857 (9th Cir. 1984), cert. denied, — U.S. :

105 S.Ct. 1753 (1985); Overman v. Universal City Studios,

App. 22

Inc., 605 F.Supp. 350, 353 (C.D. Cal. 1984), aff'd mem.,

No. 84-6009 (9th Cir. July 2, 1985).

[5] Since substantial similarity is usually an extreme-

ly close issue of fact, summary judgment is disfavored on

that issue as a general rule. See Berkic, 761 F.2d at 1292;

Litchfield, 736 F.2d at 1355-1356; Jason v. Fonda, 526 F.

Supp. 774, 777 (C.D. Cal. 1981), incorporated by reference,

698 F.2d 966 (9th Cir. 1982). By no means does this gen-

eral rule bar a grant of summary judgment, however, where

the works are so dissimilar that reasonable minds could not

differ as to the absence of substantial similarity. See

Litchfield, 736 F.2d at 1355-1356 (play and movie) ; Berkic,

761 F.2d at 1292 (sereenplay and movie); Jason, 698 F.2d

at 967 (novel and movie); Twentieth Century-Fox Film

Corp. v. MCA, Inc., 715 F.2d 1327, 1330 (9th Cir. 1983)

(movie and television show); See, 711 F.2d at 142-143

(plays); Walker v. Time Life Films, Inc., 784 F.2d 44, 48

(2d Cir. 1986) (book and movie), cert, denied, — U.S. —,

106 S. Ct. 2278 (1986); Overman, 605 F.Supp. at 354

(screenplay and movie). The question before us, then, is

whether reasonable minds could differ as to the absence

of substantial similarity of expression as between Joy and

Theme from E.T.

[6] We do not suggest that our ears are any more

sophisticated than those of the district court. Neverthe-

less, based on our review of the record, we are persuaded

that reasonable minds could differ as to whether Joy and

Theme from E.T. are substantially similar. As in Twen-

tieth Century-Fox, we do not suggest that the works are,

in fact, substantially similar. We only state that reason-

able minds could differ as to the issue and thus that sum-

App. 2:

mary judgment was improper. See Twentieth Century-

Fox, 715 F.2d at 1329. This is simply not a case in which

the absenee of similarities is so patent as to warrant sum-

mary judgment. See Arnstein, 154 F.2d at 473.

|7| The result we reach is also appropriate in light

of the fact that defendants’ concession of access may have

lowered the quantum of proof required for a jury to find

substantial similarity, had there been a trial. See Krofft,

562 F.2d at 1172 (deeree of access justifies lower standard

of proof necessary to show substantial similarity), quoting

Nimmer § 143.4 at 634 (1976). As in Krofft, this case pre-

sents ample evidence of access. Defendant Williams had

personal knowledge of Joy and participated as the pianist

in the orchestra for a publie performance of Joy in the

Hollywood Bowl. In a trial, such evidence of access is

relevant to substantial similarity, and merits submission

to a jury.

We finally address defendants’ contention that any

similarity between the works ean be reduced to a six-note

sequence which is not protectible expression under the copy-

right laws. We disagree.

[S| Even were we to accept arqguendo defendants’

argument over Baxter’s response that it is not a six-note

sequence but the entire work whose similarity is at issue,

this argument ignores the fundamental notion that no

bright line rule exists as to what quantum of similarity is

31t is clear, however, that no amount of proof of access

will suffice to show copying if similarities are found to be ab-

sent. Krofft, 562 F.2d at 1172 (citing Williams v. Kaag Manu-

facturers, Inc., 338 F.2d 949, 951 (9th Cir. 1964); Arnstein, 154

F.2d at 468).

App. 24

permitted before crossing into the realm of substantia!

similarity. See generally 3 M. Nimmer, Nimmer on Copy-

right § 13.03{A][2] (1986). Here, the ear of the court

must yield to the ears of jurors. See Roy Export Co. Es-

tablishment v. CBS, 503 F.Supp. 1137, 1145 (S.D.N.Y.

1980), aff’d, 672 F.2d 1095 (2d Cir. 1982), cert. denied,

459 U.S. 826 (1982). Even if a copied portion be relatively

small in proportion to the entire work, if qualitatively im-

portant, the finder of fact may properly find substantial

similarity. See Walt Disney Productions v. Air Pirates,

581 F.2d 751 (9th Cir. 1978), cert. denied, 4389 U.S. 1132

(1978); Universal Pictures v. Harold Lloyd, 162 F.2d 354

(9th Cir. 1947); Heim v. Universal Pictures Co., 154 F.2d

480, 488 (single brief phrase so idiosyneratie as to pre-

elude coincidence might suffice to show copying) (dictum) ;

Fred Fisher, Inc. v. Dillingham, 298 F. 145 (S.D.N.Y. 1924)

(LL. Hand, J.) (eight note ‘‘ostinato’’ held to infringe copy-

right in song). See also Meeropol v. Nizer, 560 F.2d 1061

(2d Cir. 1977) (words copied amounted to less than one

pereent of defendant’s entire work; fair use), cert. denied,

434 U.S. 1013 (1977); Robertson v. Batten, Barton, Dur-

stine & Osborne, Inc., 146 F.Supp. 795, 798 (S.D. Cal. 1956)

(portions of song used constituted element upon which

popular appeal and hence commercial suecess depended ;

fair use). See generally Nimmer § 13.03[A][2] at 18-36,

and citations therein (notion that copying of three bars

from musical work can never constitute infringement is

without foundation). Certainly, evidence that the sequence

in question is found in other works would be admissible to

rebut an inference of copying; such evidence demonstrates

that the sequence is so common that the probability of in-

dependent, coincidental creation was high. Granite Music

App. 25

Corp. v. United Artists Corp., 532 F.2d 718, 720 (9th Cir.

1976).

[9] But we do not understand Baxter’s claim to cen-

ter solely on one six-note sequence. The jury upon remand

may, of course, determine that any similarity is confined

to the sequence, and that the similarity is insubstantial.

CONCLUSION:

[10] Based upon our review of the record, we cannot

say that Joy and Theme from £.T. are so dissimilar that

reasonable minds could not differ as to a lack of substan-

tial similarity between them. Therefore, the district court

erred in granting defendants’ motion for summary judg-

ment.

Reversed aud remanded for proceedings not inconsis-

tent with this opinion.

App. 26

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNLA

Defendants. (filed October

23, 1984)

(entered October

24, 1984)

) NO. CV 83-7081-

Leste T. Baxter, an individual, ) HLH

)

Plaintiff, ) ORDER

) GRANTING

vs. ) MOTION FOR

) SUMMARY

MCA, Inc., Etc., et al., ) JUDGMENT

)

Defendant’s motion for summary judgment, previous-

ly submitted, is granted. The revised Statement of Un-

controverted Facts, Conclusions of Law, and Judgment is

signed this date. The motion to strike the jury demand is

otf calendar as moot.

The second branch of the Krofft test (Sid € Marty

Krofft Television Productions, Inc. v. McDonald’s Corp.

(9th Cir. 1977) 562 F.2d 1157) is whether a reasonable lay

jury could find ‘‘substantial similarity’’ of expression of

the ideas—the so-called intrinsic test. This Court’s ‘‘ear’’

is as lay as they come. The Court cannot hear any sub-

stantial similarity between defendant’s expres ssion of the

idea and plaintiff’s. Until Professor Baeal’s tapes were

listened to, the Court could not even tell what the what thie

complaint was about. Granted that Professor Baeal’s com

parison exposes a musical similarity in sequence of notes

which would, perhaps, be obvious to experts, the similarity

App. 27

of expression (or impression as a whole) is totally lacking

and could not be submitted to a jury.

Plaintiff argues that the expert’s declarations show

substantial evidence of ‘‘striking similarity’’ and, there-

fore, the summary judgment cannot be granted. Plaintiff

misses the point of the Arofft case (see, also, Arnstein v.

Porter (2d Cir. 1946) 154 F.2d 464). ‘Striking similar-

ity,’’ according to the experts, may be evidence of access

(admitted for purpose of this motion), but does not ad-

dress itself to the ‘‘substantial similarity’? of expression

to the lay listener now being considered. As to that issue,

the Court does not believe that there is a jury question.

The motion for summary judgment is granted.

DATED: October 23, 1984.

/s/ Harry L. Hupp

United States District Judge

App. 28

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

Lesiiz T. Baxter, ) No. 84-6522 |

D.C. # CV |

83-7081 HLH

Plaintiff-Appellant,

vs.

MCA, Evc., a Delaware

corporation; UNniversaL City

Strupros, Ivc., a Delaware PETITION FOR

corporation; Music Corporation REHEARING AND

)

) ORDER

)

or America, a California ) SUGGESTION

)

DENYING

corporation; MCA Records, Ince., FOR REHEARING

a California corporation ; EN BANC

MERCHANDISING CoRPORATION

or America, a California

corporation; and Joun T.

WILLIAMS,

(filed June

23, 1987)

Defendants-Appellees.

Before: TANG, BOOCHEVER and KOZINSKI, Circuit

Judges.

The panel as constitued above has voted to deny the

petition for rehearing and to reject the suggestion for re-

hearing en bane.

The full court has been advised of the suggestion for

rehearing en bane. By the due date of May 22, 1987, no

judge of the court has requested a vote on the suggestion

for rehearing en bane. led. R. App. P. 35(b).

The petition for rehearing is denied and the suggestion

for rehearing en bance is rejected.

IN THE

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

LESLIE T. BAXTER,

Plaintiff-Appellant,

VS.

MCA, INC., et al.,

Defendants-Appellees.

PETITION FOR REHEARING

EN BANC

(Filed March 19, 1987)

RONALD S. ROSEN

MARSHA E. DURKO

SILVERBERG, ROSEN, LEON

& BEHR

A Partnership Including

Professional Corporations

2029 Century Park East

Suite 1900

Los Angeles, California 90067

Telephone: 213/277-4500

Attorneys for Defendant-

Appellee, John T. Williams

LOUIS P. PETRICH

EDWARD A. RUTTENBERG

LEOPOLD, PETRICH & SMITH

A Professional Corporation

2049 Century Park East

Suite 3110

Los Angeles, California 90067

Telephone: 213/277-3333

Attorneys for Defendants-

Appellees, MCA Inc., Universal

City Studios, Inc., Music Corp.

of America, MCA Records, Inc.,

Merchandising Corp. of

America

App. 30

TABLE OF CONTENTS

Page

ee CO A ee a eo ii

| Eee gk, fe of || Se NCR 1

Il. THE COURT FAILED TO DETERMINE

WHETHER DEFENDANTS ARGUABLY

TOOK PROTECTIBLE EXPRESSION OR

WHETHER ANY TAKING WAS ARGUABLY

SUBSTANTIAL UNDER THE AUDIENCE

aac ieee dee peepee 5

A. Whether Expression Was Arguably Involved 6

B. Whether Substantial Similarity of Expres-

sion Arguably Existed Under the Audience

ne ea TER ATR egy oe Tenant ee ae 9

Il. THE OPINION FAILS TO FOLLOW THE

PROPER TESTS FOR SUMMARY JUDG-

MENT ESTABLISHED BY THE SUPREME

COURT, OTHER PANELS OF THIS CIRCUIT

AND OTHER CIRCUIT COURTS 11

AR | , SaRR ea air ae kek aire ae

APPENDICES:

Order Amending Opinion in Twentieth Cen-

tury-Fox Film Corporation v. MCA, Inc., No.

CA 80-5868

Audio Cassettes of ‘‘Joy’’ and ‘‘E.T. Theme”’

App. 31

TABLE OF AUTHORITIES

Page

C‘aAsEs

Adickes v. SII. Kress & Co., 398 U.S. 144 (1990)... CCG

Anderson v. Liberty Lobby, Inc., 477 US. —, 106

S.Ct. 2505, 91 L.Ed. 2d 202 (1986) 1

-Lre Mus’c Corp. v. Lee, 296 F.2d 186 (1961) 10

Arnstein v. Porter, 154 F.2d 464 (2d Cir.

ei oA 2,5, 10, 11, 12,13, 14

Berkic v. Crichton, 761 F.2d 1289 (9th Cir.

TOMO P fsa iiss ine leticiniat cone ae a i a ar

Celotex Corp. v. Catrett, 477 U.S. —, 106 S.Ct.

2048, 91 L.Ed. 2d 265 (1986) 1, 5, 6, 8, 13

Darrell v. Joe Morris Music Co., 113 F.2d 80 (2d

Cir. 1940) _...... Fee PAMELA eNO Sco OEY St Mts Ca i 7

Fisher v. Dees, 794 F.2d 432 (9th Cir, 1986)...1, 9, 11, 13

Granite Music Corp. v. United Artists Corp., 532

F.2d 718 (9th Cir. 1976) ee 7

Harper & Row Publishers, Inc. v. Nation Enter-

prises, 471 U.S. 589 (1985) ee 3

Hirsch v. Paramount Pictures, 17 F. Supp. 816

(ED.Celt Wy ooo 7

Jason v. Fonda, 698 F.2d 966 (9th Cir. 1982) 000.11, 14

Landsberg v. Scrabble Crossword Game Players,

Inec., 736 F.2d 485 (9th Cir. 1984) Peake ee

Litchfield v. Spielberg, 736 F.2d 1352 (9th Cir.

Wi oe Ce ee 3,8, 10, 11,12, 14

See v. Durang, 711 F.2d 141 (9th Cir.

1963) eh Mit na Rees Na 5, 10, 11, 12, 13, 14

App. 32

lil

TABLE OF AUTHORITIES—Continued

Page |

Sid & Marty Krofft Televison Prods., Inc. v.

MecDonald’s Corp., 562 F.2d 1157 (9th Cir.

fy re sioesisijectassiahuniniennesounslasiiaieaiesss ud, 8, 9, 10, 11, 12, 13

Twentieth Century-Fox Film Corp. v. MCA, Ine.,

715 F.2d 1327 (Sth Cir. 1963) .._._._____. |

Universal Athletic Sales Co. v. Salkeld, 511 F.2d |

ih Ce Cie TTB) ecieciscin sn enineecmnneintriinneryntnseintacnesciniiosi 10

Walker v. Time Life Films, Inc., 784 F.2d 44 (2d

Cir. 1986) ....... seuasueisiapioiseesesspanpaenetearecpacpeeeioiiaastiecaaiestienanenmmonrian 4,7

Warner Bros., Inc. v. American Broadcasting

Cos.. 654 F.2d 204 (2d Cir. 1981) -._-.___........_.. 4

Warner Bros., Inc. v. American Broadcasting

Cos., 720 F.2d 231 (2d Cir. 1983) ne ececcccccsssnnnnneenanenenee

STATUTES

17 U.S.C. §§ 502-504 een i woe 8 |

RuLEs |

ederal Rules Appellate Procedure 35(a)_ ...... l

Federal Rules Appellate Procedure 40(a) .... |

Federal Rule of Civil Procedure 56 (€) ccc a o.

Ninth Cireuit Local Rule 12(D) ccc Ld

TREATIES

Moore’s Federal Practice, Volume 6 Part 2, [56.17

[14] (2d ed. 1985) ........... nnn nnn ae

\M Nimmer, Nimmer On Copyright, Vol. 3, § 13.03

PES] (1986) cvscssessnsnsnsnnnnnnnnnonenn ee ao 64

| ™

App. 33

Defendants-Appellees JOHN T. WILLIAMS, MCA

INC., UNIVERSAL CITY STUDIOS, INC., MUSIC

CORP. OF AMERICA, MCA RECORDS. INC., and MER-

CHANDISING CORP. OF AMERICA (‘‘defendants’’)

respectfully petition this Court for a rehearing of its

March 5, 1987 Opinion (‘‘Opinion’’). Defendants suggest.

that a rehearing en banc is appropriate to secure or main-

tain uniformity of the Court’s decisions and to resolve

questions of exceptional importance (Fed. Rules App. Proe.

39(a)), as is more fully set ferth herein.

I. INTRODUCTION

The grounds for rehearing are that: (1) material

facts and law were overlooked or misapprehended in’ the”

Opinion; and (2) the Opinion is in apparent conflict with

other decisions of this Court and the United States Su-

preme Court that were not addressed. F.R.A.P. 35(a),

40(a); Ninth Cir. Local R. 12(b).

After submission of the case for seventeen months,!

in an Opinion by Cireuit Judge Thomas Tang, joined in

by Cireuit Judges Robert Boochever and Alex Kozinski,

the panel reversed a summary judgment that had dismissed

a music copyright infringement claim against the theme

musie of the motion picture ‘‘E.T.: THE EXTRA-TER-

RESTRIAL” (‘‘E.T. Theme’’) for lack of substantial sim-

ilarity of protectible expression to plaintiff’s song ‘‘Joy’’,

In the opinion of counsel a rehearing is appropriate

and necessary because:

’ Several important decisions were rendered during the in-

terim. Anderson v. Liberty Lobby, Inc., 106 S.Ct. 2505

(1986); Celotex Corp. v. Catrett, 106 S.Ct. 2548 (1986):

Fisher v. Dees, 794 F.2d 432 (9th Cir. 1986).

App. 34

1. The Opinion resurrects the discredited anti-sum

mary judgment ‘‘slightest doubt’’ rule (restated as a ‘‘no

bright line’’ test) of Arnstein v. Porter, 154 F.2d 464, 15%

(2d Cir. 1946)—in conflict with decisions of the Supreme

Court and this Court. The effect of the Opinion is to make

summary judgment for lack of substantial similarity of ex

pression unavailable in virtually all music infringement

cases—and perhaps in all other infringement cases.

2. The Opinion purports to decide that a triable issue

exists regarding substantial stmilarity of expression—but

overlooks or misapprelhends material facts and iaw as to

(a) whether the arguable similarities relate to unprotected

ideas or protectible expression, (b) whether a jury apply-

ing the ‘‘audience test’’ could reasonably conclude that the

‘‘E.T. Theme”’ serves to fulfill the demand for plaintiff’s

song, ‘‘Joy,’’ and (¢e) what is the appropriate function of

the courts in monitoring those issues.

)

3. The Opinion overlooks or misapprehends material

law and conflicts with prior decisions of this Court and

other Cireuit Courts by applying the so-called Inverse

Ratio Rule to the wrong issue.

4. The total effect of the Opinion is to abdicate an

important judicial responsibility?—t.e., to administer the

idea ‘expression dichotomy—in violation of copyright pol-

iev and First Amendment considerations and in conflict

Warner Bros., Inc. v. American Boardcasting Cos., 720 F.2d

231, 245 (2d Cir. 1983) (courts must monitor the limits

within which juries may decide substantial similarity of

expression).

App. 35

with decisions of this Court and the United States Supreme

Court.’

‘or the same reason, a hearing en banc is justified to

secure or maintain uniformity of the Circuit's decisions

and because the proceeding involves questions of exce})

tional importance. The Opinion also directly conflicts with

existing opinions of other cireuit courts and substantially

affeets rules of national application in which there is an

overriding need for national uniformity. Loeal Rule 12(b).

The Opinion threatens to destroy an entire industry's

ability to rid itself of the meritless plagiarisin lawsuits at

tracted by virtually every successful television series, mo

tion picture and musical composition.4 Unless meritless

claims can be promptly dismissed, future creative effort

and investment will be deterred. The lack of clear judicial

vuidelines will encourage strike suits,> and, as a practical

, The idea/expression dichotomy is mandated by First

Amendment considerations. Harper & Row Publishers,

Inc. v. Nation Enterprises, 471 U.S. 539 (1985); Sid & Marty

Krofft Television Prods., Inc. v. McDonald’s Corp., 562 F.2d

1157, 1170 (9th Cir. 1977) (“Krofft’” hereafter).

4 E.g., Litchfield v. Spielberg, 736 F.2d 1352, 1358 (9th Cir.

1984) (affirming summary judgment dismissing claim by

play against ‘’E.1.’’ movies) (many copyright cases are prem-

ised on a wholly erroneous understanding of copyright

protection).

5 The draconian remedies of the Copyright Act—injunctive

relief, impoundment and destruction, and damages meas-

ured by defendants’ profits—17 U.S.C. §§ 502-504, attract

suits and afford plaintiffs considerable leverage to coerce

settlements. Defendants’ motion picture, “E.T.”, perhaps

the most successful motion picture in history, has attracted

at least four (4) unsuccessful infringement actions, dismissed

on motion, notably Litchfield v. Spielberg, supra (affirm-

ing summary judgment for lack of substantial similarity).

its re-release is threatened by this suit.

App. 36

matter, will unduly expand the monopoly claimed by plain-

tiffs and force overly cautious self-censorship by defen-

dants. Such a result defeats the purpose of the Copyriglit

Act and impairs I‘irst Amendment rights of self-expres-

sion.

Infringement is proven by showing (1) substantial

similarity of expression in each work (2) that resulted

from defendant’s copying of plaintiff’s work. The act of

copying (derivation) is difficult to disprove by suminary

judgment because an inference of copying arises upon a

showing of ‘‘access’’ and substantial similarity either of

idea or expression. 3 Nimmer, Nimmer On Copyright

§ 13.03[I] at 13-58 to 59 (1986). Access is easily shown

by prior publication and distribution by mass media. Thus,

‘ack of substantial similarity of expression’’ (involving

the dual aspects of protecttbility and substantiality of the

taking) presents defendants’ best hope to obtain prompt

dismissal® and to avoid infringement in the first instance.’

But this hope depends upon reasonably clear guidelines

carefully applied by the courts.

In the case of dramatic works—books, motion pictures

and television programs—-this Court has developed guide-

lines so that the extrinsic and intrinsic tests of infringe-

° Courts may determine non-infringement as a matter of law

if the similarity concerns only non-copyrightable elements

(e.g., facts or ideas) or if no reasonable jury could find the

two works substantially the same. Walker v. Time Life

Films, Inc., 784 F.2d 44, 48 (2d Cir. 1986).

’ “ a defendant may legitimately avoid infringement by

intentionally making sufficient changes in a work which

would otherwise be regarded as substantially similar . . .”

Warner Bros., Inc. v. American Broadcasting Cos., 654 F.2d

204, 211 (2d Cir. 1981).

App. 37

ment may be applied to dispose of meritless claims on mo

tions for summary judgment. As a matter of law, no in-

fringement exists under the intrinsic test unless a reason-

able lay audience would consider defendants’ work to serve

as a substantial substitute for plaintiff’s work. E.g.,

Berkic v. Crichton, 761 F.2d 1289, 1294 (9th Cir. 1985).

On the substantive law, the Opinion fails to determine

whether the arguable similarities involve protectible ex-

pression or musical ideas, fails to apply the audience test

and misapplies the Inverse Ratio Rule (intended to deter-

mine dertwvation) to determine the scope of protection.

Procedurally, in direct conflict with Celotex Corp. v. Cat-

rett, 106 S.Ct. 2548 (1986), and See v. Durang, 711 F.2d 141

(9th Cir. 1983) the panel mischaracterizes summary judg-

ment as ‘‘disfavored’’, shifts the burden of proof to de-

fendants to show the absence of evidence to support plain-

tiff’s claim,® and resurrects the diseredited ‘‘slightest

doubt’? rule of the Arnstein decision, restated as a ‘‘no

bright line’’ test.

. In Celotex, clarifying its earlier decision in Adickes v. S.H.

Kress & Co., 398 U.S. 144 (1970), the Supreme Court man-

dated that the non-moving party continues to bear the

burden of raising genuine issues of fact regarding issues

on which it has the burden of proof; the moving party has

no duty to show the absence of evidence to support the

non-moving party’s case. 91 L.Ed. 2d at 265-66. The Opin-

ion fails to cite Celotex, relies upon Adickes (Op. at 8) and

implies (Op. at 11) that defendants failed to disprove the

possibility of sufficient similarities of expression.

App. 38

Il. THE COURT FAILED TO DETERMINE WHETH-

ER DEFENDANTS ARGUABLY TOOK PROTEC

TIBLE EXPRESSION OR WHETHER ANY TAK-

ING WAS ARGUABLY SUBSTANTIAL UNDER

THE AUDIENCE TEST

Defendants simplified the courts’ task by assuming

for sake of argument that:

1. Plaintiff owned the copyright in the song ‘‘Joy’’.

2. Defendants had access to plaintiff’s song.

3. If any substantial similarity existed in the protec-

tible expression in the two works, it resulted from copy-

ing by defendants (thus conceding derivation). All that re-

mained for decision was whether defendants took protec-

tible expression in sufficient amounts to constitute in-

fringement (whether defendants’ song satisfied the de-

mand for plaintiff’s song).

A. Whether Expression Was Arguably Involved

The Opinion never analyzes whether the arguable sim-

ilarities? involve expression. The panel misapprehends

defendants to argue that a six-note sequence is at stake

(Opinion at 10).!° It ignores plaintiff’s concession" that

9 By “arguable similarities’ we mean those similarities that

are reasonably apparent from the works as distinguished

from ‘claimed similarities’ that are not supported by the

record; the latter are irrelevant to the motion for summary

judgment. Celotex Corp., 106 S.Ct. 2548.

‘0 A musical note consists of a “pitch” [e.g., A, C, F] and a

“duration” [e.g., quarter note, half note]. Plaintiff claimed

that the 12-note “motif” in “Joy” was infringed by the 8-

note main theme in “E.T.’”” The pitches and rhythm of

these two segments may be illustrated as follows, with the

(Continued on following page)

App. 39

two segments of six notes identical only in piteh (without

considering rhythm, context, and other qualities) is mean-

ingless.2 ‘‘Similarity of tone suecession’’ is ‘‘inevitable

in all musical compositions.’’ Hirsch v. Paramount Pic-

tures, 17 F.Supp. 816, 817 (S.D. Calif. 1937) (Yankwich,

J.)

If the panel had considered defendants’ contentions

(note 10, supra) that only four successive notes in each

(Continued from previous page)

pitch of each note represented by each letter and its dura-

tion by the number of times the pitch is denoted between

dashes. (Lower case letters represent grace notes.)

ers DD-DD-DD-GG-f-g-F-F-D-F-CC-AA.

“E.T. Theme”: CCCC-GGGG-F-E-D-E-CCCC-GGGG.

Defendants argued that, at most, a four-note sequence was

properly compared—only a four-note sequence was iden-

tical in pitch and rhythm: F-E-D-E (underlined above) (Defts’

Jt. Br. 3). Other popular songs with the same four-note se-

quence are: ‘The Star Spangled Banner,” “O Holy Night,”

“Three Blind Mice,” “God Save the Queen.”

C.R. 14, Exh. F, at 46-55. Plaintiff happily conceded that

many earlier songs had musical phrases with the same 6-

note sequence equal in pitch; he ridiculed its significance,

pointing out that the first seven notes of “Rock Of Ages”

and “Rudolph the Rednosed Reindeer” are also identical

in pitch to each other. /bid; Baxter Reply Br. 3-4.

All music in Western society is limited to 12 pitches, re-

duced to 7-note major or minor scales, and reduced fur-

ther still by the limited number of combinations that are

pleasing to the ear. Darrell v. Joe Morris Music Co., 113

F.2d 80, 82 (2d Cir. 1940). The panel’s ruling that fragments

of musical ideas or cliches no matter how differently used

or developed may be copyrightable directly conflicts with

decisions holding in literary and factua! contexts that the

use of ideas, cliches, scenes-a-faire and other staples of

literature cannot raise a triable issue of fact. See, e.g.,

Berkic v. Crichton, 761 F.2d 1289, 1293-94 (9th Cir. 1985).

App. 40

work were identical in pitch and rhythm, it would have had

to deal with an existing precedent directly on point:

‘“‘The copyrightability of [the song] ‘Bubbles’ is noi

the four nole sequence but the fitting together of this

sequence with other melodious phrases into a unique

composition.”’

Granite Music Corp. v. Uniied Artists Corp., 532 F.2d 718,

721 (9th Cir. 1976) (Carter, J.) (emphasis added).

The panel seems to rule that whether expression is in-

volved (Op. 10, §2) depends upon the amount of the taking

(Op. 10, 13). All authority is to the contrary. E.g., Lands-

berg v. Scrabble Crossward Game Players, Inc., 736 F.2d

485, 489 (9th Cir. 1984) (reversal for lack of substantial

similarity of expression after judgment of copying) ;

Walker, 784 F.2d at 49-51. The panel’s approach converts

the issue of copyrightability into a question of deriva-

tion.'3

As a backstop, the panel concludes ‘‘but we do not

understand Baxter’s claim to center solely on one six-note

13, Both Berkic and Litchfield rejected the claim that proof of

derivation without a showing that substantial amount of

protectible expression proves infringement. Significantly,

the cases cited as authority for the panel’s analysis of ex-

pression (Op. at 10-11) do not analyze whether the alleged-

ly copied sequence constituted protectible expression, but

with one exception either focus on whether the similarities

indicated derivation (Heim, Fred Fisher) or whether the

taking of conceded by protectible expression was excused

by the “fair use” defense (Walt Disney, Meeropol, Robert-

son). Harold Lloyd ruled that copying of 57 consecutive

scenes from a film constitutes infringement. The panel’s

reliance on Professor Nimmer’s suggestion that copying of

three successive bars of music might constitute infringement

indicates a misapprehension of the facts of this case. The

four note segment here is one-half ('/2) of one bar.

App. 41

sequence.’’'* Opinion at 11. But that eryptic comment is

never explained.'® Nor, when one listens to the works

(audiotapes,. Appendix 2) with the correct test in mind,

does comparison of the works as a whole advance plain-

tiff’s claim.

B. Whether Substantial Similarity of Expression

Arguably Existed Under The Audience Test.

If similarities of expression arguably existed, it re-

mained for the panel to determine whether a lay audience

would have recognized the E.T. Theme to be a version of

Joy (Berkic, 761 F.2d at 1294; Krofft, 562 F.2d at 1165),'°

that is, whether a lay audience would reasonably have con-

cluded that E.T. would satisfy the demand for Joy. Fisher

v. Dees, 794 F.2d 432, 438 (9th Cir. 1986) (a ‘‘fair use’’

decision rendered while this case was under submission).

14 Actually, Baxter’s claim that the 8-note “E.T. Theme” was

copied from the second of three themes in “Joy”, Baxter

Op. Br. 15, see note 10, supra, was the only articulated

basis for this suit. The real gist of his argument was that

the Court should modify Krofft to allow expert testimony to

replace the audience test and that defendants’ assumption

of access arguendo lowered the standard of copyrightabil-

ity. Baxter Op. Br. 23-34, Reply Br. 14-25. But see note 18,

infra.

‘5 Of course, Baxter’s “claim” is irrelevant unless it is sup-

ported by the record. Celotex Corp., 91 L.Ed. 2d at 275.

If this comment means that defendants’ summary judgment

must be reversed because defendants have failed to negate

arguable infringement of other aspects of plaintiffs song,

the panel’s comment directly contradicts the rule in Celotex

that the moving party does not bear the burden of dis-

proving a case that the plaintiff has not made.

part of the intrinsic test at issue here. Krofft, 562 F.2d at

1165.

App. 42

Although making reference to the lay audience test

(Op. at 7 n.2) the panel does not seem to apply it. Instead

it analyzes the case:

1. by relying upon defendant’s concession of access"

to lower the quantum of proof required to find substantial

similarity of expression (Op. at 10)."

Although defendants deny access and copying, they con-

ceded access arguendo for sake of the motion, and thus

did not respond to plaintiff's claims of access—which the

Court recites and relies upon at length (Op. at 4, 10). De-

fendants objected to any consideration of plaintiff's ex-

pert’s testimony or special tapes; the panel seems to have

acknowledged that such evidence was improper to the is-

sues here. Op. at 7 n.2.

This “Serious error could have grave consequences as law

of the case if not corrected on rehearing. Because access

and similarities may raise an inference that one work is

derived from another the panel reasons that access bears

on the question whether expression is involved and whether

that which was derived was substantial. The panel is ap-

parently misled by the fact that “substantial similiarity” in

two different senses is a part of two different inquiries

about derivation and infringement. ‘Substantial similarity

to show that the original work has been copied is not the

same as substantial similarity to prove infringement.” Uni-

versal Athletic Sales Co. v. Salkeld, 511 F.2d 904, 907 (3rd

Cir. 1975). The panel’s use of the Inverse Ratio Rule was

expressly rejected in the Second Circuit. Arc Music Corp.

v. Lee, 296 F.2d 186, 187-88 (1961). The Krofft decision

cited by the panel does not support its conclusion. In

Krofft, the so-called Inverse Ratio Rule was applied after

substantial similarity of expression was determined without

reliance upon access or the Rule; access was later said to

raise an inference that the similarities derived from copying.

562 F.2d at 1172. Confusingly, the panel’s footnote 3 shifts

ground again by stating the ‘no amount of access will

suffice to show copying if similarities are found to be ab-

sent.” “Copying” is not the issue in this case; it was con-

ceded for purpose of the motion. The issue is whether what

was taken was “expression” and whether it was sufficiently

(Continued on following page)

App. 43

2. by applying the wrong test for summary judgment

(Part III infra) ;

3. by creating a new burden on defendants to prove

that an ‘‘absence of similarities”’ is ‘‘patent’’. (Op. at 9) ;9

4. by suggesting that ‘‘no bright line rule exists as to

what quantum of similarity’’ constitutes infringement, be-

cause relatively small takings may be substantial if quali-

tatively important (Op. at 10) ;?°

No ‘‘bright lines’’ existed in the Jason, Berkic, Litch-

field or See decisions either, but that did not prevent this

Court from affirming summary judgments, while acknowl-

« . e é b]

edging the existence of some similarities.

(Continued from previous page)

“substantial” arguably to constitute infringement. No

amount of access helps answer this question. This Court

has affirmed summary judgment for lack of substantial

similarity of expression, even where access and some sim-

ilarities were assumed or proved in Berkic, Litchfield, See

and Jason (alternative holding). Moreover, a new rule that

would raise an inference of unlawful copying from “ac-

cess” would contradict copyright policy that encourages

subsequent authors to use the unprotectible ideas in prior

works, and would raise Firs: Amendment issues. Lansberg,

736 F.2d at 488.

As authority for this proposition (Op. at 9), the Opinion

paraphrases and cites Arnstein, which concluded that sum-

mary judgment might be possible only if the contesting

works were “Bolero” and “When Irish Eyes Are Smiling’.

This calculus is circular unless meaning is given to quali-

tative importance. The audience test as applied in Berkic

and Litchfield provides that direction; the question is

whether an audience would reasonably recognize one work

to be a version of the other. See also, Fisher v. Dees, 794

F.2d 432, 438 (9th Cir. 1986) (fair use depends on whether

one work serves the demand for the other).

App. 44

Ill. THE OPINION FAILS TO FOLLOW THE PROP-

ER TESTS FOR SUMMARY JUDGMENT ESTAB-

LISHED BY THE SUPREME COURT, OTHER

PANELS OF THIS CIRCUIT AND OTHER CIR-

CUIT COURTS

The rules for summary judgment have been changing

for the past several years, in copyright and other cases.

For many years, an anti-summary judgment bias existed,

exemplified by the copyright infringement decision in Arn-

stein v. Porter, 154 F.2d 464, 469 (2d Cir. 1946), which held

that summary judgment was disfavored and unavailable

where the ‘‘slightest doubt’”’ as to a factual dispute existed.

As a result, no decision of this Court affirmed a summary

judgment for lack of substantial similarity of expression

until Jason v. Fonda, 698 F.2d 966 (9th Cir. 1982). How-

ever, since the 1963 amendment to Federal Rule of Civil

Procedure 56(e), Arnstein and its progeny are ‘‘mere me-

mentos of law gone by’’ on the procedural standard. 6 Pt.2

Moore’s Federal Practice §56.17({14] at 56-798 (2d ed.

1985)?!

In Twentieth Century-Fox Film Corp. v. MCA, Inc.,

715 F.2d 1327 (9th Cir. 1983), Judge Tang’s original slip

opinion reversed a summary judgment based on lack of

substantial similarity, citing Arnsteim and its progeny,

Goodson-Todman and Morrissey, and making an Arnstein-

like statement that summary judgment in copyright in-

fringement cases is disfavored. After defendants’ peti-

tion for rehearing in Twentieth pointed out that the panel

21. This Court noted Arnstein’s demise as a standard for sum-

mary judgment in Krofft, 562 F.2d at 1165 (1977) and again

in See v. Durang, 711 F.2d 141, 143 (1983).

App. 45

was relying on the discredited Arnstein rule, the panel

simply struck the references to the Arnstein, Goodson-Tod-

man and Morrissey decisions, inserting instead a reference

to the Arofft opinion”, but leaving intact the anti-summary

judgment laneuage of Arnstein and its progeny.

While the petition for rehearing in Twentieth was

pending, another panel, ii See v. Durang, 711 F.2d 141,

142 (9th Cir. 1983), noted Arnstein’s demise and held:

no special standard is applied in determining whether

summary judgment is appropriate on the issue of

substantial similarity of expression in a copyright

case.

Later decisions of this Court had to distinguish

those aspects of 7'wentieth hostile to summary judgments:

in Litchfield (1984), 736 F.2d at 1356, the Court disap-

proved the use of lists of similarities (used in Twentieth)

to create a triable issue of fact of substantial similarity

of expression; in Berkic (1985), 761 F.2d at 1292, the Court

had to explain the earlier statement (in Litchfield, eopied

from Twentieth), that summary judgment is ‘‘disfavored’’

in copyright infringement suits because substantial simi-

larity involves a ‘‘close issue of fact.’’

The Opinion reinstates Arnstein in holding that ‘‘since

substantial similarity is usually an extremely close issue

of fact, summary judgment is disfavored on that issue

as a general rule.’’ Op. at 9 (emphasis added).

While this case was under submission the Supreme

Court rendered a significant decision regarding summary

judgment in Celotez, 106 S.Ct. 2548 (1986). Clarifying

See Appendix 1; Krofft did not involve summary judgment.

App. 46

the 1963 amendment to Rule 56 and later decisions, the

Court concluded:

1. summary judgment is not a disfavored procedure ;

2. the moving party need not show the absence of a

genuine issue of material fact with respect to an issue

on which the non-moving party bears the burden of proof;

and

3. where the non-moving party fails to sustain his

burden of proof, summary judgment is mandated. 91

L.Ed. 2d at 265-66.

The panel’s Opinion reinstates Arnstein’s *‘slightest

doubt’’ rule in direct conflict with Celotex and See v.

Durang:

1. It regards a summary judgment as ‘‘disfavored.’’

(Op. at 9)”

2. It implies that defendants had and failed to carry

a burden of disproving that similarities other than a 4-

or 6-note segment were arguably infringing. (Op. at 11).

3. It shifts to defendants the burden of proving that

‘‘the absence of similarities is so patent as to warrant

summary judgment. See Arnstein, 154 F.2d at 473.’? (Op.

at9) See note 8, supra.

23 ‘It justifies this conclusion by reasoning that the similarity

issue is “usually an extremely close issue of fact’. Opinion

at 9 (emphasis added). But, because the idea/expression

dichotomy involves policy issues, Krofft, 562 F.2d at 1163,

a mixed issue of fact and law exists. See Fisher v. Dees,

794 F.2d 432, 436 (9th Cir. 1986) (“fair use” a mixed issue).

Moreover, since no dispute exists in the record about the

contents of the works, none of the other anti-summary

judgment admonitions about “credibility”, “weighing evi-

dence” or drawing inferences is relevant here.

App. 47

4. It requires defendants to show that a ‘‘bright line

ex'sts as to what quantum of similarity is permitted be-

fore crossing into the realm of substantial similarity.”’

(Op. at 10). Contra: Jason, Berkic, Litchfield and See.

o. It requires defendants to show that the two works

‘‘are so dissimilar that reasonabie minds could not differ

as to a lack of substantial similarity between them.’’

(Op. at 11).

IV. CONCLUSION

This is a simple but an important case. A review of

the two works (less than five total minutes on cassette

tapes in Appendix 2) can lead to only one conclusion: The

similarity of 4- or 6-notes, as used in this case, occurs at

the level of idea, not expression. Alternatively, no lay

audience could reasonably believe that the E.T. Theme

satisfies the demand of the consuming publie for plain-

tiff’s ‘‘Joy.’’ Plaintiff thus has not shown an arguably

substantial taking of protectible expression and summary

judgment is mandated.

For all the foregoing reasons, a rehearing, en banc

if necessary, should be granted.

DATED: March 18, 1978

s/ Ronald S. Rosen /s/ Louis P. Petrich

RONALD S. ROSEN of LOUIS P. PETRICH of

SILVERBERG, ROSEN, LEOPOLD, PETRICH &

LEON & BEHR SMITH

Attorneys for the Attorneys for Defendants-

Defendant-Appellee, Appellees, MCA INC.,

JOHN T. WILLIAMS UNIVERSAL CITY STU-

DIOS, INC., MUSIC CORP.

OF AMERICA, MCA REC-

ORDS, INC., MERCHANDIS-

ING CORP. OF AMERICA

App. 48

CONSTITUTIONAL PROVISIONS,

STATUTES, AND RULES INVOLVED

Article I, section 8 of the Constitution provides that:

The Congress shall have Power ... To promote the

Progress of Science and useful Arts, by securing for

limited Times to Authors and Inventors the exclusive

Right to their respective Writings and Discoveries.

The First Amendment to the Constitution provides

that:

Congress shall make no law respecting an establish-

ment of religion, or prohibiting the free exercise

thereof; or abridging the freedom of speech, or of

the press; or the right of the people peaceably to as-

semble, and to petition the Government for a redress

of grievances.

Section 102(a) of the Copyright Act of 1976, 17 U.S.C.

§ 102(b), provides:

title, in original works of authorship fixed in any

tangible medium of expression ... Works of author-

ship include the following categories:

(2) musical works, including any accompanying

words;

Section 102(b) of the Copyright Act of 1976, 17 U.S.C.

§ 102(b), provides :

In no case does copyright protection for an original

work of authorship extend to any idea. ... [or] con-

cept... regardless of the form in which it is described,

explained, illustrated, or embodied in such work.

App. 49

Federal Rule of Civil Procedure No. 56

Rule 56. Summary Judgment.

(a) For CLaimant. A party seeking to recover upon

a claim, counterclaim, or cross-claim or to obtain a declara-

tory judgment may, at any time after the expiration of 20

days from the commencement of the action or after service

of a motion for summary judgment by the adverse party,

move with or without supporting affidavits for a summary

judgment in his favor upon all or any part thereof.

(b) For Derenpine Party. A party against whom a

claim, counterclaim, or cross-claim is asserted or a declara-

tory judgment is sought may, at any time, move with or

without supporting affidavits for a summary judgment in

his favor as to all or any part thereof.

shall be served at least 10 days before the time fixed for

the hearing. The adverse party prior to the day of hear-

ing may serve opposing affidavits. The judgment sought

shall be rendered forthwith if the pleadings, depositions,

answers to interrogatories, and admissions on file, to-

gether with the affidavits, if any, show that there is no

genuine issue as to any material fact and that the moving

party is entitled to a judgment as a matter of law. A sum-

mary judgment, interlocutory in character, may be ren.

dered on the issue of liability alone although there is a gen-

uine issue as to the amuunt of damages.

(a) Case Nor Futiy Apsupicatep on Motion. If on

motion under this rule judgment is not rendered upon the

whole ease or for all the relief asked and a trial is neces-

sary, the court at the hearing of the motion, by examining

App. 50

the pleadings and the evidence before it and by interrogat-

ing counsel, shall if practicable ascertain what material

facts exist without substantial controversy and what ma-

terial facts are actually and in good faith eontroverted. It

shall thereupon make an order specifying the facts that

appear without substantial controversy, including the ex-

tent to which the amount of damages or other relief is not

in controversy, and directing such further proceedings in

the action as are just. Upon the trial of the action the facts

so specified shall be deemed established, and the trial shall

be conducted accordingly.

(e) Form or AFFIDAVITS; FurtHer Testimony; De-

reNsE Reguirep. Supporting and opposing affidavits shall

be made on personal knowledge, shall set forth such facts as

would be admissible in evidence, and shall show affirma-

tively that the affiant is competent to testify to the mat-

ters stated therein. Sworn or certified copies of all papers

or parts thereof referred to in an affidavit shall be at-

tached thereto or served therewith. The court may permit

affidavits to be supplemented or opposed by depositions,

answers to interrogatories, or further affidavits. When a

motion for summary judgment is made and supported as

provided in this rule, an adverse party may not rest upon

the mere allegations or denials of his pleading, but his re-

sponse, by affidavits or as otherwise provided in this rule,

must set forth specific facts showing that there is a genuine

issue for trial. If he does not so respond, summary judg-

ment, if appropriate, shall be entered against him.

(f) Wen AFFipaviTs ARE Unavaras._e. Should it

appear from the affidavits of a party opposing the motion

that he cannot for reasons stated present by affidavit facts

App. 51

essential to justify his opposition, the court may refuse the

application for judgment or may order a continuance to

permit affidavits to be obtained or depositions to be taken

or discovery to be had or may make such other order as is

just.

(g) Arripavirs Mapes Bap Farru. Should it appear

to the satisfaction of the court at any time that any of the

affidavits presented pursuant to this rule are presented in

bad faith or solely for the purpose of delay, the court shall

forthwith order the party employing them to pay to the

other party the amount of the reasonable expenses which

the filing of the affidavits caused him to incur, including

reasonable attorney’s fees, and any offending party or

attorney may be adjudged guilty of contempt.

App. 52

IN THE UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

TWENTIETH CENTURY-FOX ) No. CA 80-5868

FILM CORPORATION, ET AL., )

) D.C. No.

Plaintiffs-Appellants, ) CV-78-2437

)

VS. P~, ORDER

) AMENDING

MCA, INC., et al., ) OPINION

)

Defendants-Appellees. ) (Filed May 6, 1983)

)

Before: CHAMBERS, GOODWIN and TANG, Circuit

Judges.

The opinion filed January 11, 1983, is amended as

follows: (1) Page 195 of Slip Op.—In the 2nd column,

following the 1st sentence of the 1st paragraph (ending

with ‘‘ . .. idea was copied.‘), insert the following citation:

Sid & Marty Krofft Television Prods., Inc. v.

McDonald’s Corp., 562 F.2d 1157 (9th Cir. 1977).

(2) Page 195 of Slip Op.—Following the sentence: ‘‘At

a minimum, it is a close enough question that it should be

resolved by way of a trial.’’—delete the signal ‘‘See’’ and

the three citations (Goodson-Todman, Morrissey, and Arn-

stein).

App. 53

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES—GENERAL

Case No. CV 87-1064 HLH Date June 22, 1987

Title INTERACTION RESEARCH, INC. V. AIR CAL,

INC.

DOCKET ENTRY

PRESENT:

HON. Harry L. Hupp, JUDGE

Robert Bolton Stella Cordova

Deputy Clerk Court Reporter

ATTORNEYS PRESENT FOR PLAINTIFFS:

Philip A. Putman

ATTORNEYS PRESENT FOR DEFENDANTS:

David Nimmer

Richard A. Sherman

PROCEEDINGS: Motion to Dismiss, or in the Alter-

native, Summary Judgment

ORDER (also, if applicable, findings and memorandum

opinion):

Defendant’s motion to dismiss or, in the alternative,

for summary judgment is denied. Defendant has 20

days to answer.

At least parts of plaintiff’s product could reasonably

be said to be so close to comparable parts of defen-

dant’s product that the court cannot say that a rea-

sonable jury could not find substantial similarity of

expression. The court has in mind that a limited num-

ber of ideas must be expressed and that there must

be a limited number of ways of expressing the ideas.

In addition, there are a substantial number of differ-

ences in the expression of the ideas so that a jury

could clearly and unequivocally find, if they chose to

do so, no substantial similarity. The question, though,

App. 954

is whether the jury could find the requisite substantial

similarity in at least parts of the expressions. By a

recent reversal (Baxter v. MCA, Inc. (9th Cir. 1987 )

— F.2d — (284-6522, 3/5/87)), the court’s attention

has been forcefully drawn to the necessity of letting

the jury decide the question if it is remotely arguable.

(Contra, apparently, Frybarger v. IBM (9th Cir.

1987) — F.2d — (3/10/87, # 86-2004) ).

Plaintiff please pay attention to your exhibits next

time: items different than the ones deseribed were

attached and items listed were not attached at all.

Initials of Deputy Clerk RB

App. 55

NOT FOR PUBLICATION

UNITED STATES COURTS OF APPEALS

FOR THE NINTH CIRCUIT

GENE THOMPSON, )

) Nos. 86-6185

Plaintiff-Appellant, ) 86-6505

)

v. ) DC. No.

) CV 85-1583 JMI (Kx)

LIONEL RICHIE, et al., )

) MEMORANDUM *

Defendants-Appellees. _ )

)

Appeal from the United States District Court

for the Central District of California

James M. Ideman, District Judge, Presiding

Argued and Submitted: April 6, 1987

Pasadena, California

June 11, 1987

Before: ANDERSON, SKOPIL, and REINHARDT,

Cireuit Judges.

Gene Thompson composed the music and lyries to a

song he entitled ‘‘Somebody’s Got to Love Her.’? Thomp-

son’s song was copyrighted in 1980, with a certificate of

registration, in the form of lyrics and a sound recording,

but not as sheet music.

Lional Richie composed the songs ‘‘Stuck on You’’ and

‘‘Hello”’? in 1983. They became widely distributed and

*This disposition is not appropriate for publication and may

not be cited to or by the courts of this circuit except as pro-

vided by 9th Cir. R. 21.

App. 56

very successful as songs on Richie’s phonograph record

‘*Can’t Slow Down.’’

action against Richie, alleging ‘‘Stuck on You’’ and

‘‘Hello’’ infringed his copyright to ‘‘Somebcdy’s Got to

Love Her.’’ Richie moved for summary judgment on the

ground there was no substantial similarity between the

works. For purposes of Richie’s summary judgment mo-

tion, he conceded access to Thompson’s work. Thompson

opposed the motion and withdrew his claim that the song

‘‘Hello”’ infringed his song. He also submitted the declara-

tion of Dr. Robert Winter, a music expert, who examined

and compared ‘‘Stuck on You”’ with ‘‘Somebody’s Got to

Love Her’’ and found similarities in the melody, harmony

and rhythm between the two songs.

The district court reviewed the audio cassettes and

lvrie sheets of ‘‘Stuck on You’’ and ‘‘Somebody’s Got to

Love Her’’ and found the works were not of substantial

similarity of expression or ideas. The court concluded that

the ordinary, average lay person could not find the works

substantially similar as a matter of law. Accordingly, the

diatrict court granted Richie’s motion for summary judg-

ment and for costs and attorney’s fees of $34,307.65.

Thompson appeals the grant of summary judgment and

the fees award. As to each, we reverse.

We review de novo a summary judgment ruling that

there is no substantial similarity between two works in a

the burden of showing that the works are substantially sim-

ilar, Thompson must show some genuine issue of material

App. 57

fact exists as to whether a reasonable jury could conclude

the works are substantially similar if he is to avoid af-

firmance of summary judgment. Jd. at 529. We believe

he has done so.

To establish a claim for copyright infringement,

Thompson has to show: (1) he owns the copyright of the

work, and (2) ‘‘copying’’ of protectible expression by

Richie. See Baxter v. MCA, 812 F.2d 421, 423 (9th Cir.

1987), as amended, slip op. (9th Cir. May 11, 1987). Since

direct evidence of copying is rarely available, Thompson

can establish copying by circumstantial evidence of: (1)

access to the song prior to creation of Richie’s song, and

(2) substantial similarity of general ideas and expression

between the two works. Baxter, 812 F.2d at 423; Fry-

barger, 812 F.2d at 529.

Thompson’s ownership of the copyright to ‘‘Some-

body’s Got to Love Her”’ is undisputed. Also, for pur-

poses of summary judgment, Richie conceded access to

Thompson’s work. Therefore, the only question is whether

the district court’s finding that the works were not substan-

tially similar can sustain the grant of summary judgment.

Under substantial similarity we must determine whethi-

er the works are substantially similar (1) in their general

ideas (extrinsic test), and (2) in their general expression

(intrinsie test). Berkic v. Crichton, 761 F.2d 1289, 1292

(9th Cir.), cert. denied, 106 S.Ct. 85 (1985). The extrinsic

test relies on expert testimony. The intrinsic test, how-

ever, ‘‘is subjective; it depends solely ‘on the response of

ihe ordinary reasonable person.’’’ Jd. (quoting Sid &

Marty Krofft Television Productions, Inc. v. McDonald’s

Corp., 562 F.2d 1157, 1162 (9th Cir. 1977)). ‘*[E)]xpert

App. 58

testimony ... is inappropriate in applying the intrinsic

test.’’ Jd. Since substantial similarity is usually an ex-

tremely close question of fact, summary judgment is dis-

favored. Frybarger, 812 F.2d at 528.

We find an issue of fact with respect to similarity of

ideas. Through the use of expert opinion, Thompson at-

tempted to show that of the twenty different pitches in the

opening phrases of the two songs, nineteen were nearly

identical. Such similarity was also opined in the har-

mony and the tempo.

Playing the tapes of both songs reveals that there is

also an issue of fact as to similarity of expression.

Since there is ‘‘no bright line... as to what quantum

of similarity is permitted before crossing into the realm of

substantial similarity,’’ Baxter, 812 F.2d at 425, we feel

the ears of the court must yield to the ears of the jurors.

While the two songs appear to have little similarity, we

cannot say they are so dissimilar as to justify summary

judgment. See Frybarger, $12 F.2d at 528 (since substan-

tial similarity is usually an extremely close question of

fact, summary judgment is disfavored).

The district court’s grant of summary judgment is

reversed. In light of our finding of reversal, it follows

that the district court erred in finding Thompson’s suit

frivolous. Therefore, the award of costs and attorney’s

fees is also reversed.

REVERSED and REMANDED.

rere

MIS dane ay

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