Petition for Writ of Certiorari — Hinshaw Music, Inc. v. Dawson

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BILED

SEP 24 WR

IN THE

Supreme Court of the Gnited States

October Term, 1990

HINSHAW MUSIC, INC. and GILBERT M. MARTIN,

Petitioners,

WILLIAM L. DAWSON,

Respondent.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS FOR THE

FOURTH CIRCUIT

ROBERT ALLEN MONATH _ J. DAVID JAMES

(Counsel of Record) MARION G. FOLLIN, III

SUSAN H. LEWIS Smith, Patterson, Follin, Curtis

Lewis & Anderson, PC James & Harkavy

800 Eastowne Drive, Suite 208 101 South Elm Street

Chapel Hill, NC 27514 P.O. Drawer Y

(919) 967-8989 Greensboro, NC 27402

Counsel for Petitioner, (919) 274-2992

Hinshaw Music, Inc. Counsel for Petitioner,

Gilbert M. Martin

September 21, 1990

Appeliate Printing Services * Heritage Building * Suite 906 « Richmond, VA 23219 * (600) 642-7789

QUESTION PRESENTED

What is the appropriate test for determining infringement of

federal courts of the United States?

LIST OF PARTIES ~—

The parties to the proceedings below were Petitioners Hin-

shaw Music, Inc. and Gilbert M. Martin and Respondent William

L. Dawson. Petitioner Hinshaw Music, Inc. has no parent com-

panies, subsidiaries, or affiliates to list pursuant to Rule 29.1.

TABLE OF CONTENTS

Page

QUESTION PRESENTED i

LIST OF PARTIES ii

TABLE OF AUTHORITIES iv

OPINIONS BELOW 1

JURISDICTION 2

STATUTE INVOLVED — me

STATEMENT OF THE CASE 2

REASONS FOR GRANTING THE WRIT 9

I. The circuit courts have reached divergent and

conflicting approaches on an important and recurring

question of federal copyright law that requires

nationwide uniformity; only this Court can settle the

Question Gefimitivelly ..........-.rcsesscovsssevecsececsecensecensarensecsosecensacenseeees 9

II. The Fourth Circuit has decided an important question

of federal copyright law in a manner that places

insurmountable burdens on copyright litigants, as well

as federal district and appellate courts » 13

CONCLUSION ... 16

APPENDIX

Opinion of the court of appeals .................scecesssneeeeneneerenees App. 1

Judgment with accompanying Findings of Fact and

Conclusions of Law of the district court App. 16

Page

Order denying Plaintiff's Motion to Aiter or Amend

Judgment of the district court App. 39

Order denying Petition for Rehearing and Suggestion

for Rehearing In Banc App. 44

TABLE OF AUTHORITIES

Cases: Page

Arnstein v. Porter, 154 F.2d 464

(2d Cir. 1946) 4,10

Atari, Inc. v. North American, 672 F.2d 607

(7th Cir.), cert. denied, 459 U.S. 880 (1982) 11

Baxter v. MCA, Inc., 812 F.2d 421 (9th Cir.),

cert. denied, 484 U.S. 954 (1987) 8

Community for Creative Non-Violence v. Reid,

__US.___, 109 S.Ct. 2166 (1989) 12

Concrete Machinery Co. v. Classic Lawn Ornaments,

843 F.2d 600 (ist Cir. 1988) é 10

Johnson Controls v. Phoenix Control Systems,

886 F.2d 1173 (9th Cir. 1989) 8, 11

Nelson v. PRN Productions, Inc., 873 F.2d 1141

(Sth Cir.) cert. denied __US.__, 110 S.Ct. 544 (1989)... 8, 11

Shaw v. Lindheim, _ F.2d __,

15 USPQ2d 1516 (9th Cir. 1990) 6,11

Sid & Marty Krofft Television v. McDonaid’s Corp.,

562 F.2d 1157 (9th Cir. 1977) 5,11

ate attained ee ener E

Stewart v. Abend, __US. ___,

110 S.Ct. 1750 (1990) 12

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

904 (3d Cir.), cert. denied, 423 U.S. 863 (1975) 11

Whelan Associates v. Jaslow Dental Laboratory, 797 F.2d

1222 (3d Cir. 1986), cert. denied 479 U.S. 1031 (1987)........ 6, 11

Statutes and Rules

17 U.S.C. § 101 (1976 ed.) : 3

ee 3

Federal Rules of Evidence, Rule 702..................c..scsss-esees 5

Other Authorities and Publications

3 Nimmer on Copyright $§ 13.03[A] and 13.03[E] 4

Stein, et al., Supreme Court Practice (6th ed.) §$ 4.21 ............csesseees 10

No.

IN THE SUPREME COURT OF THE UNITED STATES

October Term, 1990

HINSHAW MUSIC, INC. and GILBERT M. MARTIN,

Petiti

WILLIAM L. DAWSON,

Respondent.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS FOR THE

FOURTH CIRCUIT

Petitioners Hinshaw Music, Inc. and Gilbert M. Martin

respectfully pray that a writ of certiorari issue to review the

opinion of the United States Court of Appeals for the Fourth Cir-

cuit, entered in the above-entitled proceeding on June 7, 1990.

OPINIONS BELOW

The opinion of the Court of Appeals for the Fourth Circuit is

reported at 905 F.2d 731 and is reprinted in the appendix hereto,

APP at I, infra.

The Judgment with accompanying Findings of Fact and Con-

clusions of Law of the United States District Court for the Middle

District of North Carolina has not been reported. It is reprinted,

along with the district court’s Order denying Plaintiff's Motion to

Alter or Amend Judgment, in the appendix hereto, APP at 16,

infra.

JURISDICTION

The opinion of the Court of Appeals for the Fourth Circuit

was entered on June 7, 1990. A timely petition for rehearing and a

suggestion for rehearing in banc were denied and rejected on June

27, 1990, and this petition for certiorari was filed within ninety (90)

days of that date. The jurisdiction of this Court is invoked under 28

U.S.C. § 1254(1).

STATUTE INVOLVED

17 U.S.C. § 501. Infringement of copyright

(a) Anyone who violas any of the exclusive rights of the

imports copies or phonorecords into the United States in violation

of section 602, is an infringer of the copyright.

STATEMENT OF THE CASE

1. The Relevant Facts.

This action involves an alleged infringement of copyright.

Respondent created an arrangement of the well-known public

domain spiritual, “Ezekiel Saw de Wheel” prior to August 28,

1942. Respondent’s arrangement was published and copyrighted in

Respondent’s name through the United States Copyright Office

on August 28, 1942. Respondent renewed his copyright in 1969.

Respondent has sold many copies of his arrangement, and, accord-

ing to Respondent, his arrangement has been performed, “many,

many, many times” in the United States, including performances at

the Metropolitan Opera and Carnegie Hall.

There are many other published choral arrangements of

“Ezekiel Saw the Wheel.” In 1980, Petitioner Gilbert M. Martin

("Martin") composed an arrangement of “Ezekiel Saw the Wheel.”

That same year, Martin granted, Petitioner Hinshaw Music, Inc.

("Hinshaw"), the exclusive rights to publish, distribute, and sell

Martin’s arrangement. Martin agreed to indemnify Hinshaw for

any loss resulting from infringement of copyright. Hinshaw

copyrighted Martin’s arrangement in 1981 and began publishing it

at that time.

Respondent brought this action for copyright infringement in

the United States District Court for the Middle District of

Louisiana on June 10, 1986, alleging copyright infringement under

17 U.S.C. § 501 et seq. Jurisdiction of the district court was invoked

under 17 U.S.C. $ 101, et seq., as well as under 28 U.S.C. § 1338(a).

Thereafter the action was transferred to the Middle District of

North Carolina pursuant to 28 U.S.C. § 1404(a).

2. The Decision of the District Court.

a. Background.

The decision of the district court, as well as the decision of the

court of appeals, need to be considered in the context of existing

precedent for establishing a pane facie case of copyright infringe-

ment.

There is no statutory test for determining infringement of

imports copics or phonorecords into the United States in violation

of section 602... .” The same was true under the Copyright Act of

1909. See 17 U.S.C. § 101 (1976 ed.)

In lieu of a statutory directive, courts have relied on estab-

lished judicial precedent for determining a claim of copyright infr-

ingement. Because of the difficulties in proving copyright

infringement by direct evidence, the law has established a burden

shifting mechanism whereby plaintiffs can establish a prima facie

case of infringement by showing 1) possession of a valid copyright,

2) the defendant’s access to the plaintiffs work, and 3) substantial

similarity between the plaintiff's and defendant’s works. APP at 3.

Elements (1) and (2) are often not in issue in copyright cases. The

pivotal question in many copyright cases, therefore, is whether the

competing works are “substantially similar.”

Determination of the issue of substantial similarity “presents

one of the most difficult qu.stions in copyright law... .” 3 Nimmer

on Copyright § 13.03(a) at 13-23. The term is necessarily vague and

difficult to apply. APP at 29.

For well over one hundred years, courts generally have applied

what is known as the audience test (or ordinary observer test) to

determine the issue of substantial similarity. See 3 Nimmer on

pression is determined by “‘whether the accused work is so similar

to the plaintiffs work that an ordinary reasonable person could

conclude that the defendant unlawfully appropriated the plaintiff's

protectable expression by taking material of substance and value””.

APP at 31. The test is subjective: the trier of fact inquires into the

“total concept and feel” of the competing works, without the aid of

analytic dissection or expert testimony.

However, since the landmark case of Amstein v. Porter, 154

F.2d 464 (2d Cir. 1946), limited expert testimony has been per-

mitted on the issue of substantial similarity. Arnstein involved the

alleged infringement of a popular musical composition. In

Amstein, the Second Circuit divided the issue of substantial

similarity into two separate elements: the first element is whether

the defendant “copied” from the plaintiff's work and the second

element, assuming the first was proven, is whether the “copying”

went so far as to constitute an improper appropriation, or “unlaw-

ful copying.” Analytic dissection and expert testimony are admis-

sible under the first element to show copying. However, the

audience test is still applied to establish “unlawful copying” under

the second element.

In sum, under the Amstein test, analytic dissection and expert

testimony are admissible to show the first element of the substan-

tial similarity issue, namely “copying”; however, the second ele-

ment, “unlawful copying” is not satisfied unless the similarities

between competing works can be readily detected by the lay ear

(or ordinary observer), or by the effect of the compositions as a

whole, without reference to analytic dissection and expert tes-

timony. The Amnstein test is a substantive rule of copyright law

which effectively supercedes Rule 702 of the Federal Rules of

Evidence, which generally governs the admissibility of expert tes-

timony.

Subsequent to Amstein, the Ninth Circuit articulated a bifur-

cated test, similar to the Amstein test, in Sid & Marty Krofft

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

Krofft, the Ninth Circuit premised its two-pronged test on the

axiom of copyright law that protection granted to a copyrighted

work extends only to the particular expression of the idea and

never to the idea itself. The Ninth Circuit maintained that infr-

ingement exists where there is both substantial similarity as to

general ideas contained in two works and also substantial similarity

in the expression of the ideas so as to constitute infringement.

Once again, the standard under which substantial similarity is

shown under each prong is different. The determination of

whether there is substantial similarity in ideas is called the “extrin-

sic test,” and is objective because “it depends not on the response

of the trier of fact, but on specific criteria which can be listed and

analyzed.” 562 F.2d at 1164. Analysis, dissection, and expert tes-

timony are relevant and admissible to satisfy the extrinsic prong.

Id. The second prong is called the “intrinsic test” and, in essence,

constitutes the audience test: the test is established by the subjec-

tive response of the ordinary, reasonable observer or listener un-

aided by analytic dissection or expert testimony.

The Ninth Circuit attempted to harmonize its test with the

Amstein test by explaining:

We believe that the Court in Amstein was alluding

to the idea-expression dichotomy which we make

explicit today. When the Court in Amstein refers to

“copying” which is not itself an infringement, it

must be suggesting copying merely of the work’s

idea, which is not protected by the copyright. To

constitute an infringement, the copying must reach

the point of “unlawful appropriation,” or the copy-

ing of the protected expression itself.

Id. at 1165.!

In Whelan Associates v. Jaslow Dental Laboratory, 797 F.2d

1222 (3d Cir. 1986) cert. denied, 797 U.S. 103 (1987), the Third

Circuit departed from the Krofft and Amstein tests. The Third Cir-

cuit held that the ordinary observer prong of the substantial

similarity test was not appropriate for the complex computer pro-

gram copyright case before it. 797 F.2d at 1232. Instead, the Court

substituted “a single substantial similarity inquiry according to

which both lay and expert testimony would be admissible,” in lieu

of the bifurcated approaches outlined in Krofft and Arnstein. Id. at

1233.

The foregoing reflects the general status of copyright infringe-

ment law at the time this case was tried before the district court.

b. The District Court’s Holding in the Instant Case.

On the issue of ownership, Petitioners stipulated, and the dis-

trict court found, that Respondent owned a valid and enforceable

Respondent’s favor on the issue of access by accepting circumstan-

tial evidence. The district court then applied the Krofft test to

determine whether Respondent had carried his burden of proof

on the issue of substantial similarity.

Turning first to Respondent’s evidence cf analysis, dissection

and expert testimony, the district court concluded that Respon-

dent had made a prima facie showing of idea-similarity under the

Krofft extrinsic test. APP at 33. The only evidence presented by

1Cf Shaw v. Lindheim, __ F.2d __, 15 USPQ2d 1516, 1518 (9th Cir. 1990).

Respondent on the issue of substantial similarity was the sheet

music of the two arrangements. Respondent did not present

recordings of the two arrangements or perform the pieces for the

Court.

The district court, sitting as the ordinary observer, specifically

analyzed the sheet music, unaided by analytic dissection and expert

testimony, and concluded that Respondent had not made a prima

facie showing of “intrinsic” substantive similarity under the second

prong of the Krofft test. APP at 36 and 41. The District Court thus

held that, since Respondent had failed to establish an essential

element of his infringement claim, the claim must be dismissed.

Accordingly, the district court entered judgment for the

Petitioners by Judgment entered December 21, 1988. APP at 16.

The District Court subsequently denied Respondent’s Rule 59

Motion to Alter or Amend Judgement by Order entered February

9, 1989. APP at 39. From these rulings, Respondent appealed as

permitted under 28 U.S.C. $§ 1291 and 1294(1).

3. The Decision of the Court of Appeals.

The issue on appeal was whether the district court erred in dis-

missing Respondent’s claim for failure to establish substantial

similarity between the two works. In the opinion, the court of ap-

peals began its analysis by confirming that “there are two prongs to

the substantial similarity inquiry.” APP at 3. Regarding the second,

“intrinsic” prong of the test, the court noted the “characterization

of the ordinary observer test as an ordinary lay observer test.” APP

at 5. However, the Court then concluded, invoking the rationale of

Amstein and the Third Circuit’s departure from the audience test

in Whelan, that whether the audience test applies in a given case

depends on the “intended audience” of a plaintiff's work. APP at

5-11.

The court of appeals explained: If the lay public fairly repre-

sents the “intended audience,” the trier of fact should apply the

audience test. APP. at 11. If the “intended audience” is more nar-

row, in that it possesses specialized expertise, relevant to its pur-

chasing decision, that lay people would lack, the trier of fact’s

inquiry should focus on whether a member of the “intended

audience” would find the two works to be substantially similar.

APP at 11. In the latter instance, such an inquiry would include tes-

timony from expert witnesses, comprising the “intended

audience,” who possess specialized knowledge relevant to their

purchasing decision, namely, selection of one work over the other.

APP at 11-15.

The court of appeals stated that “the facts of this case present

a particularly inviting context in which to refine the ordinary ob-

server test..." APP at 14. “It may be that a popular recording of 2

love ditty pitched at the broadest of audiences is marketed to the

general public far more so than is a spiritual arrangement.” APP at

13. By contrast, “it is quite possible that spiritual arrangements are

purchased primarily by choral directors who possess specialized ex-

pertise relevant to their selection of one arrangement instead of

another.” Id. Accordingly, “a lay person’s reaction might not be an

accurate indicator of how expert choral directors would compare

two spiritual arrangements.” Jd.

The court did not find recent_music copyright decisions apply-

ing the audience test controlling.” The court also did not mention

the Ninth Circuit’s recent decision in Johnson Controls v. Phoenix

Control Systems, 886 F.2d 1173 (9th Cir 1989) which involved al-

leged copyright infringement of a “very sophisticated [computer]

program... .” 886 F 2d at 1176. In Johnson, the Ninth Circuit noted

that infringement would arise if “a reasonable person in the in-

tended audience ”...found an “unlawful appropriation, a capture by

the infringing work of the total concept and feel” of [plaintiff's]

work." Jd. (Emphasis supplied).

Notwithstanding the Fourth Circuit’s departure from the

audience test in the instant case, the court recognized the appeal

of the audience test. The court noted that the audience test

“spares a court the burden of determining the nature of the work’s

2Nelson v. PRN Productions, Inc., 873 F.2d 1141 (9th Cir.) cert. den. __US.__,

110 S.Ct. 544 (1989) and Bawer v. MCA Inc, 812 F 2d 421 (9th Cir.), cert. denied

484 U.S. 954 (1987) (in dicta rejecting the argument that music is such a technical

field as to require additional protection beyond the lay audience test).

intended audience.” APP at 1]. The burden of establishing the “in-

tended audience” would be “a substantial one if our holding were

read as an invitation to every litigant in every copyright case to put

before the court the seemingly unanswerable question of whether

a product’s audience is sufficiently specialized to justify departure

from the [audience test].” Id. Acknowledging that “concerns about

of appeals cautioned: “We thereby pay heed to the need for

hesitancy when departing from the ‘audience test’.” APP at 12.

Departure is only warranted where the “intended audience” pos-

sesses specialized expertise which the lay public lacks. APP at 12.

In light of the foregoing, the court of appeals remanded the

cause for determination by the district court as to whether defini-

tion of a distinct audience is appropriate in this case. APP at 14.

Assuming definition of a distinct audience is appropriate, the dis-

trict court was ordered to take additional evidence to determine

whether members of the “intended audience” would find the ar-

rangements to be substantially similar.

REASONS FOR GRANTING THE WRIT

I. The circuit courts have reached divergent and conflicting

: approaches on an important and recurring question of

federal copyright law that requires nationwide uniformity;

only this Court can settle the question definitively.

The gravamen of Petitioners’ argument can be summarized as

follows:

!) Unlike patent-related cases, there is no vested exclusive appel-

late jurisdiction for federal copyright cases.

2) Circuit courts have taken divergent and conflicting approaches

to resolving the issue of substantial similarity in copyright infr-

ingement actions.

3) The issue of substantial similarity is an extremely important

one, as its resolution defines the scope of copyright protection.

4) Copyright protection is a federal right which is enjoyed nation-

ally and, as such, its scope should not vary from jurisdiction to

jurisdiction.

5) The problems arising from such variance will only be exacer-

bated by our burgeoning technology and information society

and the attendant rise in infringement litigation.

In contrast to patents, copyrights do not enjoy exclusive appel-

late jurisdiction in the United States Court of Appeals for the

Federal Circuit. Since copyrights lack a single forum with nation-

wide jurisdiction, copyright cases are susceptible to the very

forum-shopping and inconsistencies in appellate adjudication that

Congress sought to eliminate in patent matters. See Stern, et al,

Supreme Court Practice (6th edition) § 4.21. Accordingly, given the

absence of exclusive appellate jurisdiction, the instant case does

not present the more limited certiorari concerns presented by a

patent case. See id.

Circuit courts have taken divergent and conflicting approaches

to resolving the issue of substantial similarity in copyright infringe-

ment actions. The various circuit courts’ approaches are sum-

marized as follows:

I. FIRST AND SECOND CIRCUITS

Approach: Amstein test.

Authonity: Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946);

Concrete Machinery Co. v. Classic Lawn Orna-

ments, 843 F.2d 600 (ist Cir. 1988).

Il. THIRD CIRCUIT

Approach: Amstein test unless complex computer case.

elt se a abla a a Pca

Pes OS os

Authority:

Approach:

Authority:

Approach:

Authority:

Approach:

Authority:

Approach:

Authonity:

Universal Athletic Sales Co. v. Salkeld 511 F.2d 904

(3d Cir.); cert. denied 423 U.S. 863 (1975); Whelan

Associates v. Jaslow Dental Laboratory, 797 F.2d

1222 (3d Cir. 1986), cert. denied 479 U.S. 1031

(1987).

Ill. FOURTH CIRCUIT

Krofft test unless “intended audience” has special-

ized knowledge relevant to its purchasing decision.

Dawson v. Hinshaw Music Inc., 905 F.2d 731 (4th

Cir. 1990). APP at 1.

IV. SEVENTH CIRCUIT

Amstein test even with computer subject matter.

Atari Inc. v. North American, 672 F.2d 607 (7th

Cir.) cert. denied 459 U.S. 880 (1982).

V. EIGHTH CIRCUIT

Krofft test.

Nelson v. PRN Productions, Inc., 873 F.2d 1141

(8th Cir.), cert. denied _ US. __, 110 S.Ct. 544

(1989).

VI. NINTH CIRCUIT

Krofft test even with sophisticated computer pro-

grain but audience test to be applied by reasonable

person in the intended audience.

Sid & Marty Krofft Television v. McDonald’s Corp.,

562 F.2d 1157 (9th Cir. 1977); Johnson Controls v.

Phoenix Controls Systems, 886 F.2d 1173 (9th Cir.

1989); Shaw v. Lindheim, __ F.2d __, 15

USPQ2d 1516 (9th Cir. 1990).

Determination of the issue of substantial similarity functions

“as a limiting principle delineating the scope of copyright protec-

tion.” APP at 29-30. A copyright is only as valuable as its ability to

confer a limited monopoly to its holder. The extent of this

monopoly, or the scope of copyright protection, will often be

determined, in large part, by infringement litigation involving a

competing work. It is in this respect that the determination of the

question of substantial similarity defines the extent of an author’s

monopoly vis-a-vis a competing work and thus determines the

scope of copyright protection.

The scope of copyright protection should not vary from juris-

diction to jurisdiction. Until recently, adherence to the audience

test afforded a relatively consistent and accepted barometer for

determining the issue of infringement in the federal courts. Now,

however, as summarized above, adherence to the audience test

varies. This variance fosters uncertainty as to the scope of

involving computer technology or other technical subject matter.

Further, forum-shopping seems inevitable. For example, a

given case will undoubtedly seek to litigate the action in the

Fourth Circuit and simultaneously attempt to establish the exist-

ence of a narrow, specialized “intended audience” from whence he

can select “experts.”

The increase in reported copyright decisions in recent years

undoubtedly is a reflection of our burgeoning technology and in-

formation society. Given this rise in copyright litigation, the

problems associated with disparate approaches to judicial resolu-

tion of infringement actions will only increase. This Court has

recently resolved important questions of copyright in Community

for Creative Non-Violence v. Reid, __ U.S. ___, 109 S.Ct. 2166

(1989) and Stewart v. Abend, US.__, 110 S. Ct. 1750 (1990).

The instant case, like Reid and Stewart, presents this Court with an

opportunity to resolve an extremely important area of copyright

law that is badly in need of this Court’s authoritative voice.

II. The Fourth Circuit has decided an important question of

federal copyright law in a manner that places

insurmountable burdens on copyright litigants, as well as

federal district and appellate courts.

Petitioner’s argument herein is summarized as follows:

1) The Fourth Circuit recognized the danger of its decision in the

instant case.

2) The decision imposes an insurmountable burden on copyright

litigants and the courts to decide whether departure from the

audience test is warranted in a given case.

3) The decision requires federal courts to resolve what, by the

Fourth Circuit’s own admission, is a seemingly unanswerable

question.

4) The decision fails to specify what criteria members of an “in-

tended audience” should use in determining the issue of sub-

stantia! similarity.

5) The decision establishes new potential issues for contention at

trial and on appeal in virtually every copyright case.

The Fourth Circuit acknowledged the danger of its holding.

The court noted that tre burden of determining the “intended

audience” for copyrighted works “woud be a substantial one if our

holding were read as an invitation to every litigant in every

question of whether a product’s audience is sufficiently specialized

to justify departure from the [audience test].” APP at 1]. (Em-

phasis supplied). The court admitted that “concerns about

while the court stated that a court should be hesitant to depart

from the audience test, the test for departure, in many instances,

will be relatively easy to satisfy.

It is axiomatic that our society grows more complex every day.

Given this trend, it is extremely likely that more and more

aan ee

products will be marketed to particular segments of our society

“possessing specialized knowledge relevant to its purchasing

decision that lay people would lack.” Do copyrighted products

marketed, for example, to gun owners, child psychologists, attor-

neys, airplane pilots, scuba divers, or car mechanics now have “in-

tended audiences” with specialized expertise? The list of

possibilities is endless.

In spite of its call for “hesitancy”, the Fourth Circuit has issued

“an invitation to every litigant in every copyright case” to produce

an expert from the targeted market with “specialized knowledge”

about the particular product that influences that expert’s purchas-

ing decision. Accordingly, it seems likely that courts repeatedly will

be faced with having to determine the “seemingly unanswerable

question” of whether there is an “intended audience.” The issue

will certainly arise on appeals as well.

The “intended audience” determination poses a seemingly un-

answerable question for several reasons. In the instant case, for ex-

ample, departure might be warranted on account of the limited

“popularity” of the arrangements at issue. APP at 13. However,

the district court found that over 153,000 copies of Respondent’s

arrangement were sold just between 1977 and May of 1988, and

that thousands of copies of the arrangement were sold from 1942

until 1967. APP at 29. Respondent himself testified that his arran-

gement was performed “many, many, many times” in the United

States, including performances at the Metropolitan Opera and

Carnegie Hall. Presumably, the audience for these performances

was not comprised solely of choral directors, but also included

paying members of the general public. How many sales and public

performances are necessary before a copyrighted work is said to be

“popular”? Do some works have both primary and secondary “in-

tended audiences”? Should a court hear testimony from both “in-

tended audiences”? Whose “intention” is to be ascertained in

identifying the “intended audience”?

What if a plaintiff's copyrighted work is intended for a “spe-

cialized audience,” such as a technical manual for car mechanics,

but the alleged infringer’s work represents a modified manual

simple enough to be marketed to the general public? Who should

a0 wen

ee ee ae

5 A Retr naa a

a ee

make the determination whether the alleged infringer’s work is an

impermissible derivative work in such instance?

Assuming a copyrighted work is intended for a narrow

audience with specialized expertise relevant to its purchasing

decision, what criteria should members of the “intended audience”

use to determine whether the works at issue are substantially

similar? The decision below does not clearly resolve this question.

Are members of the “intended audience” who testify as experis al-

lowed to address whatever they please in determining this ques-

tion, or are they obligated to focus on the expressive elements of

the works in question, since, ultimately, it is only the expressive

_ elements which are protected hy copyright. This is certainly the ap-

proach suggested by the Ninth Circuit in Johnson, supra. May ex-

perts in a music copyright case ignore how two pieces of music

would sound if performed exactly as written? Or should experts

compare the subjective effects of the works overall?

If Respondent had elected to introduce recordings or perfor-

mances of the two arrangements at trial, the district court would

have had the best and most relevant subjective evidence before it

on the issue of intrinsic substantial similarity. Respondent’s case

was dismissed because the district court could not find substantial

similarity without the benefit of hearing the music. The Fourth

Circuit’s departure from the audience test appears tailored to

redress the harm to Respondent’s case by this failure on

Respondent’s part to introduce recordings. The question now is

whether the revisions to copyright law with national implications,

which were undertaken by the court of appeals in the name of fair-

ness to Respondent, are tenable. Only this Court effectively can

determine that question.

CONCLUSION

For these various reasons, this Petition for Certiorari should

be granted.

September 21, 1990

Respectfully submitted,

ROBERT ALLEN MONATH

(Counsel of Record)

SUSAN H. LEWIS

Lewis & Anderson, PC

800 Eastowne Drive, Suite 208

Chapel Hill, NC 27514

(919) 967-8989

Counsel for Petitioner,

Hinshaw Music, Inc.

J. DAVID JAMES

MARION G. FOLLIN, III

Smith, Patterson, Follin, Curtis,

James & Harkavy

101 South Elm Street

P.O. Drawer Y

Greensboro, NC 27402

(919) 274-2992

Counsel for Petitioner,

Gilbert M. Martin

UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT

PUBLISHED

ee ee

No. 89-2643

WILLIAM L. DAWSON,

Plaintiff — Appellant,

versus

a a a ch eA MIA ’

HINSHAW MUSIC INC.; GILBERT M. MARTIN,

Defendants — Appellees.

Appeal from the United States District Court for the Middle Dis-

trict of North Carolina, at Durham. Hiram H. Ward, Senior Dis-

trict Judge. (CA-87-160-D-C)

Before ERVIN, Chief Judge, and MURNAGHAN and

| WILKINS, Circuit Judges

Appendix 1

Remanded with instructions by published opinion. Judge Mur-

naghan wrote the opinion, in which Chief Judge Ervin and Judge

Wilkins joined.

ARGUED: Marvin William Krasilovsky, FEINMAN &

KRASILOVSKY, P.C., New York, New York, for Appellant.

Robert Allen Monath, LEWIS & ANDERSON, P.C., Chapel Hill,

North Carolina, for appellees. ON BRIEF: Philip C. Baxa, MAYS

AND VALENTINE, Richmond, Virginia, for Appellant. Susan H.

Lewis, LEWIS & ANDERSON, P.C., Chapel Hill, North

Carolina; Marion G. Follin, IT], SMITH, PATTERSON, FOLLIN,

CURTIS, JAMES & HARKAVY, Greensboro, North Carolina

for Appellees.

ee i

MURNAGHAN, Circuit Judge:

William L. Dawson possesses a valid copyright of an arrange-

ment of the spiritual “Ezekiel Saw De Wheel.” Dawson, over the

years, has sold many copies of his arrangement. In 1980, Gilbert

M. Martin composed an arrangement of the spiritual. That same

year, Martin granted Hinshaw Music, Inc. (“Hinshaw”), the ex-

clusive rights to publish, distribute, and sell his arrangement. Mar-

tin agreed to indemnify Hinshaw for any loss resulting from

infringement of copyright. Dawson brought suit against Hinshaw

and Martin, alleging copyright infringement under 17 U.S.C. §§

501 et seq. After a bench trial, the district court held for the defen-

dants.

The district court began its analysis by correctly noting that,

because of the difficulties in proving copyright infringement by

direct evidence, the law has established a burden shifting

mechanism whereby plaintiffs can establish a prima facie case of

infringement by showing possession of a valid copyright, the

defendant’s access to the plaintiff's work, and substantial similarity

between the plaintiffs and defendant’s works. See Concrete

Machinery Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 606

(1st Cir. 1988); Whelan Associates v. Jaslow Dental Laboratory, 797

F.2d 1222, 1232 (3rd Cir. 1986); Walker v. Time Life Films, 784

F.2d 44, 48 (2d Cir. 1986); Litchfield v. Spielberg, 736 F.2d 1352,

1355 (9th Cir. 1984); Original Appalachian Artworks v. Toy Loft,

684 F.2d 821, 829 (11th Cir. 1982); Atari, Inc. v. North American,

672 F.2d 607, 614 (7th Cir.), cert. denied, 459 U.S. 880 (1982). The

district court found that Dawson successfully established (a) the

validity of his copyright and (b) Martin’s access to his arrangement.

What remained for Dawson was the establishment of the substan-

tial similarity between the two works.

As correctly noted by the district court, there are two prongs

to the substantial similarity inquiry. The plaintiff must establish

Appendix 3

substantial similarity of both the ideas of the two works and of the

expression of those ideas. ! See, e.g. Litchfield, 736 F.2d at 1356. It

is well established that expert testimony is admissible for proof

under the first prong which courts have referred to as an “extrin-

sic” or “objective” inquiry. See id. The district court accordingly

admitted expert testimony on Dawson’s proof that the idea of

Martin’s work was substantially similar to the idea of Dawson’s

work. The court concluded that “the pattern, theme and organiza-

tion of [Dawson’s] arrangement is unique among any other arran-

gement of this spiritual.” The court further found that “there are

substantial similarities between [Dawson’s] and [Martin’s] arrange-

ments regarding this unique pattern.” The district court therefore

found for Dawson on the first prong of the substantial similarity

inquiry. Thus, if Dawson could satisfy the second prong of the sub-

stantial similarity test, he would have made out a prima facie case

of copyright infringement.

However, the district court ruled against Dawson on the

second prong of the substantial similarity inquiry, holding that

Dawson had not shown that the expression of ideas in Martin’s

work was substantially similar to the expression of ideas in

Dawson’s work. The court applied what has come to be known as

the ordinary observer test, sometimes referred to as an “intrinsic”

or “subjective” test, inquiring into the “total concept and feel” of

the works without the aid of expert testimony. See, e.g., Litchfield,

736 F.2d at 1356; Concrete Machinery, 843 F.2d at 608. More

specifically, the court interpreted the ordinary observer test to be

an ordinary lay observer test, which imposed upon Dawson the

obligation to prove to a lay observer that the expression of ideas in

the works was substantially similar. Other than the expert tes-

timony used in evaluating the extrinsic similarity of the two works,

the only evidence on substantial similarity was the sheet music of

the two arrangements. Dawson had not presented recordings of

ISome courts use a different set of labels for the two-prong inquiry, referring to

the first prong as establishment of copying and the second prong as establishment

Of illicit appropriation. See, e.g, Concrete Machinery, 843 F.2d at 608; Whelan, 797

F.2d at 1232; Atari, 672 F.2d at 614. The difference in labeis need not concern us

because the apparent consensus as to the nature of the tests applicable to each

prong of the substantial similarity inquiry smooths over, as a practical matter, un-

derlying differences in the inquiry’s two characterizations.

Appendix 4

performances of the two arrangements. The district court found

that, as an ordinary lay observer, with nothing before him other

than the sheet music, he could not determine that the two works

were substantially similar. It is the district court’s holding as to the

second prong of the substantial similarity test that we now ex-

amine.

We direct our attention to the district court’s characterization

of the ordinary observer test as an ordinary lay observer test. We

are well aware of the existence of that characterization in the case

law. However, as demonstrated below, obedience to the un-

disputed principles of copyright law and the policy underlying the

ordinary observer test requires a recognition of the limits of the

ordinary lay observer characterization of the ordinary observer

test. Those principles require orientation of the ordinary observer

test to the works’ intended audience, permitting an ordinary lay

observer characterization of the test only where the lay public fair-

ly represents the works’ intended audience.

Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946), provides the

source of modern theory regarding the ordinary observer test.

Amstein involved the alleged infringement of a popular musical

composition. Writing for-the panel, Judge Jerome Frank first ex-

plained that “the plaintiffs legally protected interest is not, as

such, his reputation as a musician but his interest in the potential

financial returns from his compositions which derive from the lay

public’s approbation.” Jd. at 473. This initial observation gave force

to the recognized purpose of the copyright laws of providing

creators with a financial incentive to create for the ultimate

benefit of the public. See Mazer v. Stein, 347 U.S. 201, 219 (1954)

Appendix 5

(“The economic philosophy behind the clause empowering Con-

gress to grant patents and copyrights is the conviction that en-

couragement of individual effort by personal gain is the best way

to advance public welfare through the talents of authors and in-

ventors in ‘Science and the useful Arts.’ Sacrificial days devoted to

such creative activities deserve rewards commensurate with the

services rendered.”); see also Note, The Role of the Expert Witness

in Music Copyright Infringement Cases, 57 Fordham L. Rev. 127,

132 (1988) [hereinafter Role of the Expert Witness] (“Under

Amstein, an action for infringement of a music copyright serves to

compensate the plaintiff for the deprivation of potential financial

returns that results from the defendant’s copying”); Note,

Reactions in Determining Substantial Similarity, 54 S. Cal. L. Rev.

385, 392 (1981) [hereinafter Role for Audience Reactions]

(“[Cjopyright protection does not exist for the gratification of the

artist’s ego; it exists for the gratification of the artist’s pocket-

book.”).

Consistent with its economic incentive view of copyright law,

the Arstein court concluded that “the question, therefore, is

whether defendant took from plaintiffs works so much of what is

pleasing to the ears of lay listeners, who comprise the audience for

whom such popular music is composed, that defendant wrongfully

appropriated something which belongs to plaintiff. 154 F.2d at

473 (emphasis added). Thus, under Amstein, a court should look

to the reaction of “lay listeners,” because they comprise the

audience of the plaintiffs work. The lay listener’s reaction is

relevant because it gauges the effect of the defendant’s work on

the plaintiff's market. See Note, Defining the Scope of Copyright

Protection for Computer Software, 38 Stan. L. Rev. 497, 514 (1986)

(“The total concept and feel of ordinary literary works is relevant

because it is the basis on which potential purchasers of the work

identify and choose them. If one work appears similar to another

in the eyes of the ordinary lay observer, it is likely to appear the

same to most consumers, and its adverse effect on demand for the

protected work is cause to proscribe it.”); see also Role for

Audience Reactions at 393 (“it is the actual audience, and not some

obscure notion of an average reasonable person, that provides the

artist with the economic incentive to create”).

Appendix 6

Although Amstein established a sound foundation for the ap-

peal to audience reaction, its reference to “lay listeners” may have

fostered the development of a rule that has come to be stated too

broadly. Under the facts before it, with a popular composition at

issue, the Amstein court appropriately perceived “lay listeners”

and the works’ “audience” to be the same. However, under

Amstein’s sound logic, the lay listeners are relevant only because

they comprise the relevant audience. Although Amstein does not

address the question directly, we read the case’s logic to require

that where the intended audience is significantly more specialized

than the pool of lay listeners, the reaction of the intended

audience would be the relevant inquiry. In light of the copyright

law’s purpose of protecting a creator’s market, we think it sensible

to embrace Amstein’s command that the ultimate comparison of

the works at issue be oriented towards the works’ intended

audience.

Our reading of Arnstein brings our analysis into line with Sid &

Marty Krofft Television v. McDonald’s Corp., 562 F.2d 1157 (9th

Cir. 1977), another landmark case involving questions of substan-

tial similarity. Krofft announced that the test for determining sub-

stantial similarity in the expression of ideas of two works “shall be

labeled an intrinsic one — depending on the response of the ordi-

nary reasonable person.” Jd. at 1164. Krofft relied upon Amstein

and upon language from Twentieth Century-Fox Film Corp. v.

Stonesifer, 140 F.2d 579 (9th Cir. 1944), which directed the court’s

attention to “the observations and impressions of the average

reasonable reader and spectator.” Id. at 582 (emphasis added).

When applying its intrinsic test, the Krofft court noted the par-

ticular audience to which the works in question were directed. The

court wrote:

The present case demands an even more intrinsic

determination because both pplaintiffs and

defendants’ works are directed to an audience of

children. This raises the particular factual issue of

the wnpact of the respective works upon the minds

and imaginations of young people.

Appendix 7

562 F.2d at 1166 (emphasis added). Thus, the Krofft court

believed that the perspective of the specific audience for which the

products were intended (children) was the relevant perspective for

the ordinary observer test. See also Aliotti v. R. Dakin & Co., 831

F.2d 898, 902 (9th Cir. 1987) (“Because children are the intended

market for the dolls, we must filter the intrinsic inquiry through

the perception of children.”). The Seventh Circuit adopted a

similar position in Atari, 672 F.2d at 619, in which it held that dif-

ferences in the products there at issue must be viewed from the

perspective of the child audience for which the products were in-

tended.

We suspect that courts have been slow to recognize explicitly

the need for refining the ordinary observer test in such a way that

it would adopt the perspective of the intended audience because,

in most fact scenarios, the general lay public fairly represents the

works’ intended audience. As a result, “a considerable degree of

ambiguity exists in this area; courts have not always made it ap-

parent whether they are using a member of a specific audience, or

simply an average lay observer as their spectator.” Role for

Audience Reactions at 386. Fortunately, the advent of computer

programming infringement actions has forced courts to recognize

that sometimes the non-interested or uninformed lay observer

simply lacks the necessary expertise to determine similarities or

differences between products. In Whelan Associates v. Jaslow Den-

tal Laboratory, 797 F.2d 1222 (3d Cir. 1986), cert. denied, 479 U.S.

1031 (1987), the Third Circuit concluded that the ordinary ob-

server arm of the substantial similarity test was not appropriate for

the complex computer program copyright case before it. Writing

for a unanimous panel, Judge Becker reasoned that the complexity

of computer programs, combined with the general public’s un-

familiarity with such programs, rendered the ordinary observer test

senseless. He further reasoned that where the finder of fact is the

same for both the extrinsic and intrinsic tests, it seems silly to ask

the finder of fact to “forget” the expert testimony when consider-

ing similarity of expression. Judge Becker relied also on Federal

Rule of Evidence 702, which permits expert testimony where it will

be useful to a trier of fact. 797 F.2d at 1232-33. See also Comment,

The Incompatibility of Copyright and Computer Software: An

Economic Evaluation and a Proposal for a Marketplace Solution,

Appendix 8

66 N.C.L. Rev. 977, 985 (1988) (in software cases, courts have

generally abandoned a bifurcated approach to substantial

similarity, using an integrated expert/lay test instead). But see

Manufacturers Technologies, Inc. v. CAMS, Inc., 706 F. Supp. 984,

1000-01 (D. Conn. 1989) (applying lay observer test to computer

case).

We believe the Whelan analysis further supports our view. As

Whelan reveals, only 2 reckless indifference to common sense

would lead a court to embrace a doctrine that requires a copyright

case to turn on the opinion of someone who is ignorant of the

relevant differences and similarities between two works. Instead,

the judgment should be informed by people who are familiar with

the media at issue. See Note, Whelan Associates v. Jaslow Dental

Laboratory: Copyright Protection for the Structure and Sequence of

Computer Programs, 21 Loy. L.A.L. Rev. 255, 294 (1987).

In addition to conforming to the policy underlying the ordinary

observer test and the doctrine that has developed for child product

and computer cases, our view that the ordinary observer inquiry

must adopt the perspective of the works’ intended audience finds

abundant direct support in the copyright literature. For example,

our conclusion tracks closely the thesis of Role of Audience Reac-

tions, which argues that a precise audience test should replace the

average lay observer test which is “obsolete when dealing with

works aimed at a distinguishable audience group.” The note intel-

ligently observes:

[In] cases dealing with works of broad public ap-

peal, the best representative of the audience may

in fact be the average lay person. But in all other

cases identification of the audience, and the sub-

sequent decision about whether to narrow the

group of average lay observers to this particular

audience, should enter into the determination of

substantial similarity.

Id. at 387. Another commentary has noted:

Appendix 9

If, as Amstein suggested, copyright law should

protect the plaintiff's interest in potential financial

returns, the ultimate test for infringement should

consider specifically the response of the market

from which those returns would derive.

Role of the Expert Witness at 144-45. Still another has written:

Most often courts speak of the ordinary observer

test. This [commentary] adopts the audience test

for terminology to emphasize the fact that when a

work appeals to a particular audience, its reaction .

is a more valid indicator of substantial similarity

than that of the ordinary observer.

Recent Development, 36 Vand. L. Rev. 1277, 1290 n.91 (1983).

Professor Nimmer has described the law as being, “If the works in

issue are directed to a particular audience, then the ‘spontaneous

and immediate’ reaction of that audience is determinative.” 3 M.

Nimmer & D. Nimmer, Nimmmer on Copyright § 13.03[E], at 13-62.4

n.202 (1989). Another commentary has nicely abstracted from the

computer cases the conclusion we reach in this case as follows:

[The ordinary observer test] assumes that if the or-

dinary person in the position of the intended

audience for the works in question would recognize

(the two works) as substantially similar, then

protectible expression has been infringed. - Dif-

ferences that might be discoverable with

5 ‘meticulous scrutiny’ are not significant if the

average member of the typical audience ‘would be

disposed to overlook’ those differences.

(Emphasis in original.)

When dealing with computer programs, care may

have tc be taken in choosing the ‘ordinary ob-

server.’ The average judge or jury cannot read

source code or appreciate the ‘total concept and

feel’ of a program. Thus, it is necessary to rely on

Appendix 10

the reaction of persons who do typify the members of

the intended audience.

(Emphasis added.) Clapes, Lynch & Steinberg, Silicon Epics

and Binary Bards: Determining the Proper Scope of Copyright

Protection for Computer Programs, 34 U.C.L.A. L. Rev. 1493, 1571

(1986-87).

Under the foregoing logic, we state the law to be as follows.

When conducting the second prong of the substantial similarity in-

quiry, a district court must consider the nature of the intended

audience of the plaintiff's work. If, as will most often be the case,

the lay public fairly represents the intended audience, the court

should apply the lay observer formulation of the ordinary observer

test. However, if the intended audience is more narrow in that it

possesses specialized expertise, relevant to the purchasing

decision, that lay people would lack, the court’s inquiry should

focus on whether a member of the intended audience would find

the. two works to be substantially similar. Such an inquiry may in-

clude, and no doubt in many cases will require, admission of tes-

timony from members of the intended audience or, possibly, from

those who possess expertise with reference to the tastes and per-

ceptions of the intended audience.

We recognize the appeal of blind adherence to the lay ob-

server characterization of the ordinary observer test even where

the intended audience possesses specialized knowledge and such

adherence is therefore theoretically inappropriate. The lay ob-

server test spares a court the burden of inquiring into, and drawing

conclusions regarding, the nature of the works’ intended audience.

That burden would be a substantial one if our holding were read as

an invitation to every litigant in every copyright case to put before

the court the seemingly unanswerable question uf whether a

product’s audience is sufficiently specialized to justify departure

from the lay characterization of the ordinary observer test. Al-

Appendix 11

though the existence of difficulties attendant to application of a

test that a doctrine compels is an insufficient reason not to use the

test, concerns about copyright actions becoming unwieldy are

legitimate.

We therefore believe that, in any given case, a court should be

hesitant to find that the lay public does not fairly represent a

work’s intended audience. In our opinion, departure from the lay

characterization is warranted only where the intended audience

possesses “specialized expertise.” We thereby pay heed to the

need for hesitancy when departing from the indiscriminately

selected lay public in applying the test. To warrant departure from

the lay characterization of the ordinary observer test, “specialized

expertise” must go beyond mere differences in taste and instead

must rise to the level of the possession of knowledge that the lay

public lacks.

We believe that, especially given the explicitness of our hold-

ing, “intended audience” should supplant “ordinary observer” as

the label for the appropriate test. The new label is appropriate not

because we have changed the test, but because the imprecision of

the old label leads to application of an ordinary lay observer test

even where such a test is inappropriate. However, mindful of the

harm that has resulted from reliance upon labels in this doctrinal

area, we emphasize that our clarification of the doctrine is

motivated by the policies underlying the doctrine, namely, the

theoretical propriety of looking to the effect of the defendant's

work on the plaintiff's market and the practical evil of having an

unaided uninformed finder of fact deciding the crucial issue in a

case. We intend to make the rule more precise, not to change it.

In light of our statement of the law in Section II, we think

remand is necessary because the district court did not inquire into

whether the audience of Dawson’s work possessed specialized ex-

pertise that the lay public lacks and, therefore, whether the

Appendix 12

general, undifferentiated lay public fairly represents the intended

audience of Dawson’s arrangement. It is true that the case with

which we contend involves music and courts routinely, and proper-

ly, apply the ordinary lay observer test to music cases. See, e.g.,

Baxter v. MCA, 812 F.2d 421, 424 n.2 (9th Cir. 1987) (rejecting, in

dictum, in the context of recordings to be used as a popular movie

soundtrack, the proposition that the mere fact that a case involves

music requires departure from the lay observer test). However,

Dawson alleged infringement of a spiritual arrangement, not a

popular recording. We suspect that the distinction may have im-

plications for the determination of the intended audience of

Dawson’s work. It may be that a popular recording of a love ditty

pitched at the broadest of audiences is marketed to the general

public far more so than is a spiritual arrangement. It is quite pos-

sible that spiritual arrangements are purchased primarily by choral

directors who possess specialized expertise relevant to their selec-

tion of one arrangement instead of another. Whereas a lay

person’s reaction may be an accurate indicator of the extent to

which those in the market for a popular recording will perceive

another recording to be substantially similar, a lay person’s reac-

tion might not be an accurate indicator; of how expert choral direc-

tors would compare two spiritual arrangements.

nist ii oh

Given the need to measure substantial similarity by the reac-

tion of the ordinary observer within the intended audience,

Dawson’s failure to enter into evidence recordings of performan-

ces of the two arrangements is not fatal to his case. Use of a

recording is obviously appropriate where a plaintiff sells record-

ings for the public to buy. However, Dawson does not sell record-

ings. He apparently sells sheet music arrangements to those who

may make a purchasing decision on the basis of the sheet music.

Although the district court’s heavy reliance upon Dawson’s failure

to present a recording of the arrangements made sense in light of

its application of the ordinary lay observer test, the conclusion

would not make sense if it were the case that the audience for

Dawson’s spiritual arrangement had specialized expertise relevant

to its purchasing decision. There is no reason for Dawson to sub-

mit recordings to persuade a lay listener that the arrangements are

substantially similar if the lay listener’s conclusion would not

reflect the response of the choral directors who would purchase

Appendix 13

ila teaeeciennniiiennieill

one arrangement over another on the basis of the arrangement’s

sheet music.

Furthermore, it may be that recordings of performances of the

arrangements would not only be irrelevant but could indeed

hinder the relevant inquiry. It may be that the sound of the perfor-

mance of an arrangement is a function of not only the arrange-

ment itself, bu: of the choral director’s interpretation of the

arrangement. Thus, differences and similarities in the sound of

performances of two arrangements may represent something other

than differences and similarities in the arrangements themselves.

In addition, comparison of two recordings of performances of the

arrangements would fail to take account of the different inter-

pretations to the arrangements that purchasers intended to inject,

rendering such a comparison even more misleading. These

problems, of course, are not presented when actual recordings are

at issue and therefore further distinguish the problems posed by

spiritual arrangements as compared to popular recordings.

The district court did not make explicit factual findings on the

issues of what the intended audience was and whether members of

that audience have specialized expertise relevant to their purchas-

ing decision. We offer our suspicions merely as explanations for

why remand is necessary, not as predictions of the outcome of fac-

tual inquiry. Therefore, we decline to remand with instructions

that the district court define an audience distinct from the ordinary

lay observer. Instead, we remand with instructions that the district

court determine whether definition of a distinct audience is ap-

propriate in this cas¢. Asswning such a definition is appropriate,

the district court should then take additional evidence to deter-

mine whether members of the intended audience would find the

arrangements to be substantially similar.

The facts of this case present a particularly inviting context in

which to refine the ordinary observer test by requiring that the or-

dinary observer be the intended audience. To say the least,

Dawson’s claim is not bogus. The district court found extensive

similarities between Dawson’s and Martin’s works. The logic of

traditional copyright doctrine, as reflected in the case law and the

consensus of the commentaries that have addressed the matter,

Appendix 14

ae,

compels our result. To hold otherwise would be to allow the im-

precise “ordinary lay observer” label to effect a betrayal of the fun-

damental purposes of copyright doctrine and the substantial

similarity test.

Appendix 15

IN THE UNITED STATES DISTRICT COURT

FOR THE MIDDLE DISTRICT OF NORTH CAROLINA

DURHAM DIVISION

FILED: DEC 21 1988

WILLIAM L. DAWSON, )

Plaintiff ‘

v. C-87-160-D

HINSHAW MUSIC INC., and

GILBERT M. MARTIN, )

Defendants ‘

JUDGMENT

The Court tried the claims of plaintiff William L. Dawson

without a jury. Pursuant to Rule 52, Fed.R.Civ.P., the Court made

Findings of Fact-and Conclusions of Law which were filed contem-

poraneously herewith. Therein the Court held that judgment on

plaintiff's claims should be rendered for the defendants and dis-

missed plaintiff's claims with prejudice.

NOW, THEREFORE, pursuant to the Findings of Fact and

Conciusions of Law filed herein, IT IS ORDERED AND AD-

JUDGED that plaintiff William L. Dawson have and recover

NOTHING from the defendants, and that his claims in this action

be, and the same hereby are, DISMISSED.

S/ Hiram H. Ward

United States District Judge

December 21, 1988.

Appendix 16

IN THE UNITED STATES DISTRICT COURT

FOR THE MIDDLE DISTRICT OF NORTH CAROLINA

DURHAM DIVISION

FILED: DEC 21 1988

WILLIAM L. DAWSON,

Plaintiff

)

v. ) C87-160-D

)

HINSHAW MUSIC INC., and )

GILBERT M. MARTIN, )

)

Defendants )

FINDINGS OF FACT AND CONCLUSIONS OF LAW

This matter came before the Court on August 22-24, 1988, for

trial without a jury on plaintiff's action for copyright infringement

under 17 U.S.C. § 501 et seq. Specifically, plaintiff contends that

defendants infringed his copyright in his musical arrangement

“Ezekiel Saw de Wheel” by publishing and selling an arrangement

entitled “Ezekiel Saw the Wheei.” In addition, defendant Hinshaw

Music, Inc. claims that defendant Martin is obligated to indemnify

it for any loss arising from the infringement. For the reasons set

out below, the Court will find based upon all the evidence that

plaintiff failed to establish copyright infringement and, therefore,

will dismiss plaintiff's claims with prejudice and enter judgment for

the defendants.

Appendix 17

In accordance with Rule 52 of the Federal Rules of Civil Pro-

cedure, the Court makes the following specific findings of fact

based upon the stipulations of the parties, the testimony at trial,

and the exhibits received into evidence.

Plaintiff William L. Dawson is a well known composer, ar-

ranger, and conductor of Negro folk songs and spirituals, and a

citizen and resident of Alabama. (Order on Final Pretrial

Conf. #9 7(a), (d) [March 30, 1988]).

Defendant Hinshaw Music, Inc. [the defendant corporation] is

a corporation organized under the laws of North Carolina with

its principal place of business in Chapel Hill, North Carolina.

(Id. 4 7(b)).

Defendant Gilbert M. Martin is a free-lance composer, ar-

ranger, and conductor of choral music and a citizen and resi-

dent of New York. (/d. at 7(c)).

The defendant corporation is engaged in the business of

publishing music and has sales in many states, including

Louisiana. (Jd. at 7(b)).

In 1940, John W. Work composed a spiritual entitled “Ezek’el

Saw the Wheel” the words and melody of which are in the

public domain. (Jd. 1 7(m); Plaintiff's Exhibit 3).

Soon thereafter, plaintiff composed an arrangement of Work’s

spiritual entitled “Ezekiel Saw de Wheel.” (Plaintiff's Exhibit

1). In 1942, plaintiff received a Certificate of Copyright

Registration (No. E Pub. No. 108,496) from the United States

Plaintiff renewed this copyright registration (No. R469,175) in

1969. (Id.) The parties stipulate that plaintiff owns a valid and

enforceable copyright in his arrangement “Ezekiel Saw de

Whee!.”

Appendix 18

— eens ee ae

10.

11.

During the period of time from 1942 until 1967, plaintiff acted

as his own publisher and sold thousands of copies of his arran-

gement. In 1967, Kjos Music Company was appointed the ex-

clusive sales agent for the arrangement. Kjos sold more than

40,000 copies of plaintiffs arrangement between 1977 and

1979, and more than 113,000 copies between 1977 and May

1988. Sales records for the years prior to 1977 are not avail-

able. om

Defendant Martin attended Westminister Choir College from

1958-1960 following his graduation from high school. He

studied voice, choir and organ.

Defendant Martin enlisted in the Air Force in 1960 where he

was an organist and choir conductor at an Air Force chapel.

He occasionally arranged music for the chapel’s eight to ten

voice choir.

During his Air Force enlistment, defendant Martin also ar-

ranged music for a college play, and composed the music for

his own wedding, which resulted in a part-time job with Lorenz

Publishing Company editing choral and organ music.

Following his service in the Air Force in 1966, defendant Mar-

tin completed his studies at Westminister Choir college

graduating in 1968. Martin did not study spirituals.

12. Following graduation Martin worked full time for Lorenz

13.

14.

Publishing Company, in Cincinnati, Ohio, as an arranger and

composer. Lorenz is an in-house publisher of sacred organ and

choral music.

While working at Lorenz Publishing Company, defendant

Martin composed and arranged main stream church choir and

organ music that was published in monthly subscription choral

magazines.

Defendant Martin composed and arranged approximately 30

to 40 compositions per month under his own name and various

pseudonyms.

Appendix 19

15.

16.

17.

18.

19.

21.

By the end of his employment at Lorenz in 1975, Martin had

published 139 choral arrangements and 301 organ pieces,

while 50 arrangements still remain in the Lorenz archives un-

published. Six of the choral arrangements were spirituals.

While working at Lorenz in 1972 Martin published a two page

arrangement of “Ezekiel” under the pseudonym “Dennis El-

liott.” He was unable to produce a copy of that arrangement.

Defendant Martin has been a free lance composer and ar-

ranger of sacred choral and organ music since 1975.

Defendant corporation is Martin’s primary publisher and has

published 41 Martin arrangements since 1975, while 40 arran-

gements are published by other publishers.

In 1980, defendant Martin composed an arrangement of John

W. Work’s spiritual entitied “Ezekiel Saw the Wheel.” (Order

on Final Pretrial Conf. ¥ 7(O); Plaintiff's Exhibit 2). At this

time, he had considerable experience as an arranger of sacred

choral music which included several Negro spirituals. On Oc-

tober 8, 1980, defendant Martin granted the defendant cor-

poration exclusive rights to publish, distribute, and sell his

arrangement. (Defendant Corporation’s Exhibit 33). In this

royalty contract, defendant Martin agreed to indemnify the

defendant corporation for any loss or expense arising from in-

fringement of copyright. (Jd.).

. The defendant corporation copyrighted defendant Martin’s ar-

rangement in 1981 and began publishing it at that time. (Order

on Final Pretrial Conf. 9 7(1)).

Many other published choral arrangements of “Ezekiel Saw

the Wheel” exist and possess the following typical charac-

teristics:

a. multiple (at least two) voice parts;

b. harmonization and other accompaniment; and

Appendix 20

use of various musical and arranging tools, including intro-

ductions, bridges, rhythm, modulation, repetition, augmen-

tation, counterpoint, accompaniment, voicing, ostinato,

tempo changes, pitch, and text.

22. Plaintiffs arrangement and that of defendant Martin are

similar in the following respects:

The John W. Work source version is divided into two sec-

tions or segments;

the first segment is repeated several times before moving

to the second segment (plaintiff repeats the first segment

three times while defendant repeats it four times);

the first repetition is performed by one voice (Martin) or a

single set of voices in unison (Dawson);

the second repetition of the first segment introduces other

voices with identical harmonization in musical thirds;

the third repetition starts with the melody in unison but in-

serts counterpoint (two or more different lines of voices

singing simultaneously) using the lower voices at the same

place;

both employ a “thickening of texture” during the first seg-

ment (plaintiff by adding voices and defendant by adding

piano accompaniment);

at the beginning of the second segment the lyrics are

changed from the John W. Work source version and the

word “run” is substituted for “moved” (most other arran-

gements also make this substitution);

upon completion of the repetitions of the first segment

begins a treatment of the verses;

ss Appendix 21

) &

the first verse of the John W. Work source version is

omitted and each begins with the second verse found in

the John W. Work version;

the second segment begins with a call by the lower voices

and a response by the upper voices;

both use an ostinato accompaniment to the melody as a

device to build the music toward a climax;

the ostinato section is repeated several times;

during the first repeat a single voice (Martin) or unison

voices (Dawson) carry the melody over the ostinato accom-

paniment;

each employs repetitions of “wheel-in-a-wheel” to create a

melodic ostinato that is not found in any other arrange-

ment;

the second repeat adds voices carrying the melody har-

monizing in thirds over the ostinato;

at the conclusion of the ostinato both specify loudness or

“fF” (fortissimo — all you have that is good) at the same

point,

both arrangements then slow the music thereby building a

climax (Dawson using “ad libitum” and Martin using

“slow”);

the tempo is then restored at the same place (Dawson

using “a tempo” and Martin employing “tempo primo”);

both arrangements are written in double measure (Daw-

son in 2/4 and Martin in 4/4);

both use a stress mark on the lyric “faith” at the end of the

first segment;

Appendix 22

u. this is closely followed by a crescendo in substantially the

same place (plaintiff begins with “grace” and defendant

with “by the grace”);

' v. both also use a second crescendo on the lyric “wheel.”

23. Plaintiff's arrangement and that of defendant Martin are dis-

similar in the following respects:

a. During the repetitions of the first segment, plaintiff

repeats the segment three times, while defendant repeats

it four times (defendant combines the arrangement devices

used in the second and third repeats for this fourth

repeat);

b. plaintiff's arrangement is in 2/4 time while defendant uses

4/4 time;

c. the titles are different;

d. the lyrics of plaintiffs arrangement are in dialect while

those of defendant’s are not;

e. plaintiff uses traditional chromatic chords for the har-

monies, while defendant’s use of modulation and insertion

of “blue notes” and “jazz notes” adds a jazzy, upbeat

rhythmic treatment to the traditional harmonies;

f. defendant arranged his version for use by smaller less ex-

perienced choirs with the division of parts never exceeding

three voices, whereas plaintiff arranged for iarge profes-

sional choirs providing at times for twelve simultaneous

voice parts;

g. defendant uses various special creative effects (piano in-

troduction, bridge, melodic “blue” notes, piano accom-

paniment) that are not used by plaintiff, while plaintiff

) uses other creative effects (a “hallelujah” chorus section

| | and a lengthy ostinato repetition of “doom-a-loom-a” sec-

tion) not used by defendant;

Appendix 23

24.

27.

29.

h. defendant uses a traditional version of the “call and

response” to begin the second segment (men’s and

women’s voices respectively perform the call and

response), whereas plaintiff departs from this traditional

role and uses simply different voices;

i. defendant uses only a single verse while plaintiff employs

three verses.

The pattern, theme and organization of plaintiff's arrangement

is unique among any other arrangement of this spiritual.

. There are substantial similarities between plaintiffs and

defendant’s arrangements regarding this unique pattern.

. The only admissible evidence submitted on the issue of sub-

stantial similarity of protected expression is the written sheet

music for each arrangement.

Upon being informed by plaintiff in December 1981 that he

considered defendant Martin’s arrangement to be an unlawful

infringement of his copyright, the defendant corporation

suspended publication, distribution, and sale of “Ezekiel Saw

the Wheel.” However, it resumed publication and sale of the

arrangement in April 1982 after obtaining several opinions

that there was no infringement.

. On June 10, 1986, plaintiff filed this action in United States

District Court for the Middle District of Louisiana, alleging

that the defendant corporation had infringed, and was infring-

ing, his copyright by publishing and selling the musical arrange-

ment of “Ezekiel Saw the Wheel.” On December 4, 1986,

plaintiff added Martin as a defendant in this case. Thereafter,

the action was transferred pursuant to 28 U.S.C. $ 1404(a) to

the Middle District of North Carolina.

On May 28, 1987, the defendant corporation filed a crossclaim

against defendant Martin, alleging its entitlement to full reim-

bursement under an indemnity agreement for all loss and ex-

pense incurred in defending the copyright infringement action.

Appendix 24

30. On January 15, 1988, the Court denied defendants’ motion for

summary judgment pursuant to Rule 56 of the Federal Rules

of Civil Procedure, noting both the existence of genuine issues

of material fact and its reluctance to recognize a per se rule

that a derivation of a work in the public domain does not infr-

inge the copyright of another.

31. As of the date of trial, the defendant corporation had received

a total of $36,278.29 in gross sales from defendant Martin’s ar-

rangement. Defendant corporation’s total expenses (including

royalties paid to defendant Martin) were $15,251.54. Thus,

defendant corporation’s net profits were $21,026.75. Defen-

dant Martin received $8,442.00 in royalties from defendant

corporation.

The right of copyright is a creature of federal statute, originally

enacted in 1790, and is based upon the Constitution Article I, Sec-

tion 8, clause 8. M. Kramer Mfg. Co. v. Andrews, 783 F.2d 421, 432

(4th Cir. 1986). Present statutory authority for the right of

1980, codified at 17 U.S.C. § 101 et seq. In this case, plaintiff claims

infringement of his copyright in violation of the Copyright Act.

Specifically, he requests damages resulting from the infringement

equal to actual damages plus defendants’ profits, or, alternatively,

statutory damages pursuant to 17 U.S.C. § 504, whichever is

greater. Plaintiff also seeks a permanent injunction under 17

U.S.C. § 502(a), and costs and reasonable attorneys’ fees under 17

U.S.C. § 505. Additionally, the defendant corporation claims that

defendant Martin is liable for its liability, if any, for plaintiff's

claim.

Appendix 25

A. Copyright Infringement

Summarizing the basic law germane to a copyright infringe-

ment claim is often much easier than applying it. Briefly, a plaintiff

must show (1) ownership of a valid copyright and (2) copying of

protectible expression by the defendant. Baxter v. MCA, Inc., 812

F.2d 421, 423 (9th Cir.), cert. denied, __ U.S.__, 108 S.Ct. 346,

98 L.Ed.2d 372 (1987); Atari, Inc. v. North American, 672 F.2d 607,

614 (7th Cir.), cert. denied, 459 U.S. 880 (1982); 3 M.Nimmer,

Nimmer on Copyright, § 13.01 (1986) (hereafter Nimmer on

plaintiff prevail.

1. Ownership

To prove the first element of his copyright infringement claim,

plaintiff must establish the material’s originality and its

copyrightability, along with his compliance with applicable

statutory formalities. Apple Barrel Prods., Inc. v. Beard, 730 F.2d

384, 387 (Sth Cir. 1984). In this case, defendants do not contest

the originality of plaintiff's arrangement. Similarly, defendants do

not dispute that plaintiff complied with the applicable statutory

formalities mandated by the Copyright Act of 1976.

The law of this circuit recognizes that a certification of

also 17 U.S.C. § 410(c) (mandating that “the certificate of a

registration ... shall constitute prima facie evidence of the validity

of the copyright and of the facts stated in the certificate”). In this

case, plaintiff originally registered for copyright protection for his

arrangement and received a Certificate of Copyright Registration

(No. E Pub. No. 108,496) in 1942 which he renewed (No.

R469,175) in 1969. Consequently, the undisputed facts require a

finding that plaintiff owned copyrighted material in “Ezekiel Saw

de Wheel.”

Appendix 26

2. Copying

In addition to proving copyright protection, plaintiff must also

establish that defendants infringed that protection by copying the

protected material. Copying is often difficult to prove because

there is seldom direct evidence. However, copying may be proven

indirectly by using a judicially created rebuttable inference arising

from a showing that defendants (1) had access! to the copyrighted

work prior to the creation of defendant’s work, and (2) substantial

similarity of both general ideas and expression between the

copyrighted work and the defendant’s work. Baxter v. MCA, Inc.,

812 F.2d at 423 (emphasis added); Concrete Machinery Co. v. Clas-

sic Lawn Ornaments, 832 F.2d 600 (ist Cir. 1988). See 3 Nimmer

the need for this presumption by offering direct evidence of copy-

ing.

Ill.

Access is defined as the opportunity to view the copyrighted

work. Ferguson v. National Broadcasting Co., Inc., 584 F.2d 111,

113 (Sth Cir. 1978); 3 Nimmer on Copyright § 13.02(A) (1986).

That opportunity to view must exist by a reasonable possibility.

Testa v. Janssen, 492 F.Supp. 198, 204 (W.D.Pa. 1980). When

there is no direct evidence regarding access to the copyrighted

work, then an inference of access may be established by evidence

that is greater than mere speculation or conjecture. Jd.

lHowever, absent evidence of access, a “striking snilarity” between the works

may give rise to a permissible inference of copying. Seie v. Gibb, 741 F.2d 896, 901

(rth i. 1984); Ferguson v. National Broadcasting Co., Inc., 584 F.2d 111, 113

similarities are striking, a plaintiff must demonstrate that the similarities are of a

kind that can only be explained by copying rather than by coincidence, independent

creation, or prior common source. Selle v. Gibb, 741 F.2d at 901; Testa v. Janssen,

492 F.Supp. 198, 203 (W.D.Pa. 1980); 3 Nismmer on Copyright § 13.02(B) (1986).

Proof of striking similarity is an alternative means of proving copying where proof

of access is absent. Selle v. Gibb, 741 F.2d at 901.

Appendix 27

In the case sub judice, the parties greatly dispute whether

defendant Martin had the requisite access to plaintiff's work. First,

plaintiff notes his dedication of the arrangement in 1942 to Dr. J.

Finley Williamson, president of Westminister Choir College, as

well as defendant Martin’s attendance at the school from 1958 to

1960 and again from 1966 to 1968. Moreover, plaintiff contends,

defendant Martin similarly had at least potential access to the work

by virtue of his access to the music library at Lorenz Publishing

Company while employed there. In addition, plaintiff points to

defendant Martin’s extensive experience in arranging, conducting,

and performing choral works as well as the widespread distribution

. and sale of plaintiff's arrangement as proof justifying the inference

of access to the work.

On the other hand, defendant Martin contends that, at the

time of his arrangement of the tune, he was completely unaware of

the existence of plaintiff's arrangement. Instead, defendants argue,

Martin relied on a published version of the song in a well ksown

sourcebook entitled American Negro Songs written by John W.

Work. Thus, they contend, Martin’s arrangement is an inde-

pendent creation and thereby does not infringe plairtiff's

The Court finds in plaintiff's favor on the issue of defendant's

access to the copyrighted work. The Court relies both on direct

evidence of access, as well as plaintiff's showing of substantial

similarity of ideas. Evidence on the issue indicates an inference of

2In addition, neither Dr. George Lynn, conductor of the Westminister Choir from

1963-69, nor Bob Simpson, conductor of the Chapel Choir during Martin's tenure

as a student, recalled conduc.ing or performing plaintiffs arrangement. (Sup-

plemental Stipulations §§ 2, 3). Moreover, the associate librarian at the college did

not find a single program out of the fifty-six she located that listed or included a

performance of plaintiff's arrangement by the college choirs during Martin's

tenure as a student. (Id. 1 5).

access beyond a mere speculation or conjecture. See Testa v.

Janssen, 492 F.Supp. at 203. Defendant for many years has been a

composer, arranger and director in the very narrow musical field of

sacred choral music. Plaintiff's copyrighted arrangement, “Ezekiel

Saw de Wheel,” falls within that narrow field of music, and is con-

sidered a classic within that field. Defendant admits that he is

familiar with the reputation of plaintiff as a well-known arranger

and director of choral music. Kjos Music Company, the exclusive

sales agent for plaintiff's arrangement, indicated that it had sold

40,000 copies of the arrangement between, 1977 and 1979 and

113,396 copies between 1977 and May 1988." Taking into account

the very specialized and narrow field of music within which these

distributions were made, and defendant Martin’s expertise in this

area, there is certainly a reasonable possibility of access.

Moreover, the evidence presented under the extrinsic standard

clearly establishes substantial similarities between the two arrange-

ments (See infra at 13-14), that when coupled with the dissemina-

tion evidence requires a finding of access to the copyrighted work.

IV.

The term “substantial similarity” is necessarily vague and dif-

ficult to apply. Giangrasso v. CBS, Inc., 534 F.Supp. 472 (E.D.N.Y.

1982). Courts define and analyze this concept as a limiting prin-

3Sales records prior to 1977 were destroyed when Kjos moved its operations from

Indiana to California that year. While sales subsequent to defendant's arrange-

ment (1980) are not permissible to establish an inference of access, the records do

indicate the continued popularity and distribution of plaintiff's arrangement long

after its heyday in the 1940's and 1950's.

Appendix 29

ciple delineating the scope of copyright protection. See Sid &

Marty Krofft Television v. McDonald’s Corp., 562 F.2d 1157 (9th

Cir. 1977). It is an axiom of copyright law that the protection

granted to a copyrighted work extends only to the particular ex-

pression of the idea and never to the idea itself. Mazer v. Stein, 347

US. 201, 217-18, 74 S.Ct. 460, 98 L.Ed. 630 (1954). Two steps are

implied in the analytic process by requirement of substantial

similarity: there must be substantial similarity not only of the

general ideas but of the expressions of those ideas.‘ Concrete

Machinery Co. v. Classic Lawn Ornaments, 843 F.2d at 606-07;

Berkic v. Crichton, 761 F.2d 1289 (9th Cir.), cert. denied, 474 US.

826 (1985); Sid & Marty Krofft Television v. McDonald’s Corp., 562

F.2d at 1164.

This two-part test for substantial similarity draws a distinction

between “noninfringing ‘copying,’ on the one hand, which may be

inferred from substantial similarities between the two works, and

infringing ‘illicit copying,’ on the other, which demands that such

similarities relate to protectible material.” Walker v. Time-Life

Films, Inc., 784 F.2d 44, 51 (2d Cir.), cert. denied, 476 U.S. 1159

(1986). The determination of whether there is substantial

similarity in ideas in the first instance is often called the “extrinsic

test,” and is objective because “it depends not on the response of

the trier of fact, but on specific criteria which can be listed and

analyzed.” Sid & Marty Krofft Television v. McDonald’s Corp., 562

F.2d at 1164. Analysis, dissection, and expert testimony are

relevant on this issue. Arnstein v. Porter, 154 F.2d 464, 468 (2d

Cir.), aff'd on reh., 158 F.2d 795 (1946). See Alliotti v. R. Dakin &

Co., 831 F.2d 898, 900 (9th Cir. 1987); Walker v. Time Life Films,

Inc., 784 F.2d at 51.

“The idea-expression dichotomy attempts to reconcile two competing social inter-

ests: rewarding individual creativity, while at the same time permitting the public to

enjoy the benefits from use of the same subject matter. Pendleton v. Acuff-Rose

Publications, Inc., (05 F.Supp. 477, 484 (M.D.Tenn. 1984) (citing Sid & Marty

Krofft Television v. McDonald's Corp., 562 F.2d 1157, 1163 (9th Cir. 1977)). The

see Atari, Inc. v. North American, 672 F.2d 607, 615 (7th Cir.), cert. denied, 459

US. 880 (1982).

Appendix 30

If copying is established under the first prong of this two-part

test for substantial similarity, then “only does there arise the

second issue, that of illicit copying (unlawful appropriation).”

Walker v. Time Life Films, Inc. 784 F.2d at 51 (citing Amstein v.

Porter, 154 F.2d at 468) (emphasis in original). This second prong

is often called the “intrinsic test,” and is subjective in nature be-

cause it depends on the response of the ordinary reasonable per-

son, analytic dissection and expert testimony are not appropriate

on this issue. Jd; see Concrete Machinery Co. v. Classic Lawn Orna-

ments, 843 F.2d at 608; Hartman v. Hallmark Cards, Inc., 833 F.2d

117, 120 (8th Cir. 1987); M. Krammer Mfg. Co. v. Andrews, 783

F.2d at 421; Selle v. Gibb, 741 F.2d at 901; Sid & Marty Krofft

Television v. McDonald’s Corp., 562 F.2d at 1164; Universal Ath-

letic Sales Co. v. Salkeld, 511 F.2d 904, 907 (3d Cir.), cert. denied,

423 U.S. 863 (1975); Pendleton v. Acuff-Rose Publications, Inc.,

605 F.Supp. at 481; Atari, Inc. v. Amusement World, Inc., 547

F.Supp. at 229-30. The term substantial similarity between

copyrightable expressions as determined by the ordinary

reasonable person or observer is defined as “whether the accused

work is so similar to the plaintiffs work that an ordinary

reasonable person could conclude that the defendant unlawfully

appropriated the plaintiffs protectible expression by taking

material of substance and value.”” Concrete Machinery Co. v. Clas-

sic Lawn Ornaments, 843 F.2d at 607 (quoting Educational Testing

Services v. Katzman, 793 F.2d 533, 541 (3d Cir. 1986)). See Ideal

Toy Corp. v. Fab-Lu Lid., 360 F.2d 1021, 1022 (2d Cir.

1966)(whether an average lay observer would recognize the al-

>When reviewing the case law regarding the substantial similarity prong for

the confusion is not as to whether to apply the extrinsic/objective test to the first

prong, or whether to apply the subjective/ordinary lay observer test to the second

prong of the idea/expression dichotomy, the circuits are consistent on this issue.

See supra at 13-14. The confusion referred to by Professor Nimmer appears to

stem from the fact that while a “(rose is a rose is a rose is a rose,’ substantial

similarity is not always substantial similarity.” Universal Athletic Sales Co. v.

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

history of copyright law, the courts generally applied solely the ordinary observer,

or audience test, to determine substantial similarity in copyright infringement. See

Appendix 31

leged copy as having been appropriated from the copyrighted

work).

Thus, ultimately, the determination of substantial similarity is

not subject to objective standards. Infringement may be found

even if only a small amount of the copyrighted work is taken, if it is

qualitatively significant. Hagan v. MacMillan, Inc., 789 F.2d 157

ment action depends upon the response of the ordinary lay

audience Baxter v. MCA, Inc., 812 F.2d at 424 n.2.

This audience test was modified by Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946)

where the court divided the issue of substantial similarity into two separate ele-

ments. The first element is whether the defendant copied from the plaintiff's work,

and the second element, assuming the first was proven, is whether the copying

went so far as to constitute an improper appropriation or unlawful copying. /d. at

468. The Ninth Circuit articulated this bifurcated test for infringement as whether

there is substantial similarity as to general ideas contained in the two works, and

whether there is substantial similarity in the expressions of those ideas so as to con-

stitute infringement. Sid & Marty Krofft Television v. McDonald's Corp. , 562 F.2d

115 (9th Cir. 1977). The standard under which substantial similarity is shown

under each prong is different. The first is called the extrinsic test and is established

by objective evidence, analytic dissection and expert testimony. Bader v. MCA,

Inc., 812 F.2d 421, 423-24 (9th Cir.), cert. denied, US. , 108 S.Ct. 346,

98 L.Ed.2d 372 (1987); Walker v. Time Life Films, Inc., 784 F.2d 44, 51 (2d Cir.),

cert. denied, 476 U.S. 1159 (1986). The second is called the intrinsic test and is es-

tablished by the subjective response of the ordinary reasonable observer or lis-

tener. Jd. Thus, the distinction is drawn not in terms of the method of proof to be

applied. Jeffrey G. Sherman, Musical Copyright Infringement: The Requirement of

Substantial Similarity, 22 ASCAP Copyright L. Symposium 81, 93 (1977)(See Ap-

pendix, Item 3, Defendant’s Trial Brief). Sherman, in summarizing the distinction,

stated that

(a) defendant should not be held liabie for infringement unless he copied a sub-

stantial portion of the complaining work and there exists the sort of aural similarity

between the two works that a lay audience would detect. As to the first require-

ment, the portion copied may be either qualitatively or quantitatively substantial.

As to the second, the two pieces must be similar enough to sound similar to a lay

audience, since only then is it reasonable to suppose that the performance or pub-

lication of the accused work could in any way injure the rights of the plaintiff com-

poser.

Id. at 145 (emphasis in original).

Appendix 32

A. The Extrinsic Standard

The Court finds that the evidence presented under the extrin-

sic standard clearly establishes substantial similarities between the

two arrangements. Under this first prong of the two-part test for

substantial similarity, the Court turns to evidence of analysis, dis-

section and expert testimony. See Amstein v. Porter, 154 F.2d at

468. The Court finds particularly compelling the testimony of

plaintiffs expert, Herndan Spillman. Spillman meticuously

analyzed and examined both arrangements. His testimony, and

that of plaintiffs other expert, Robert Campbell, indicated that

while plaintiff and defendant each employed common arranging

devices in their respective arrangements, that plaintiff's pattern or

scheme for putting these devices together was highly unique

among any other arrangement of this public domain song before

or since. The testimony indicated that the key to plaintiff's unique

creativity is the pattern or structure of the arrangement, as well as,

the key to its success. Spillman opined that defendant not only

used some of the same arranging devices employed by plaintiff, but

organized those devices in the exact same pattern or structure, and

employed them in the same places and sequence within that struc-

ture. Spillman opined that the predominant original characteristic

of plaintiffs arrangement is the melodic, rhythmic ostinato in the

middle of the piece using the chord of thirds with an added sixth

note, and that defendant directly copied this technique.

Defendants’ experts, as well as defendant Martin, himself, not

only admitted on cross examination that defendant’s arrangement

uses the same musical arranging devices as plaintiff's, but that

defendant also used them in the same sequence and place. As fur-

ther evidence of the similarities, Spillman stated that musical

dynamic nuances, or markings, were also used in the same cor-

responding places in each arrangement. Spillman opined that this

strongly indicated direct copying. He expressed his professional

opinion that the two arrangements were “strikingly” similar and

that defendant Martin could not have created his version inde-

pendently. When confronted on cross examination with differen-

ces between the two arrangements, Spillman indicated that those

differences were merely cosmetic and without significance.

Appendix 33

Defendants did not refute this showing of similarities between

the arrangements in the use of the same musical devices in the

same pattern, even though there are a great variety of devices and

patterns from which an arranger may choose. Instead, defendants’

experts keyed on the differences of purpose and sound® between

the two arrangements. This only highlighted the number and sig-

nificance of the similarities of general ideas on the issue of copy-

Ing.

B. The Intrinsic Standard

There remains the final and dispositive issue of substantial

similarity going to the question of improper appropriation. Once

plaintiff has established a valid copyright and ownership, access to

the copyrighted work and substantial similarity of the general ideas

of the two works, then only does there arise the element of

whether the inference of copying arises to an unlawful infringe-

ment or appropriation. See Walker v. Time Life Films, Inc., 784

F.2d at 51. In order to meet his burden on this issue, plaintiff must

prove by a preponderance of the evidence that the protectible ex-

pressions of ideas used in the two arrangements are substantially

similar. See Hartman v. Hallmark Cards, Inc., 833 F.2d at 120.

Under this second step of the substantial similarity analysis, the

Much of their testimony was directed at the second-prong of the substantial

similarity test. While plaintiffs Motion in Limine seeking to prevent such tes-

timony by defendants’ experts on the issue of whether a copying is also an unlawful

appropriation was not ruled upon prior to trial, in that it was a bench trial, it is

Clear that plaintiff's position is correct. See Hartman v. Hallmark Cards, Inc. , 833

F.2d 117, 120 (8th Cir. 1987); Baxter v. MCA, Inc., 812 F.2d at 424; Walker v. Time

Life Films, Inc., 784 F.2d at 51-52. Substantial similarity to show that the original

work has been copied is not the same as substantial similarity to prove infringe-

ment. Franklin Mint Corp. v. National Wildlife Art Exchange , 575 F.2d 62 (34 Cir.),

cert. denied, 439 U.S. 880 (1978). Ironically, it is plaintiff's very argument in this

motion that serves as the basis for the Court’s finding that plaintiff failed to estab-

lish copyright infringement.

A a on

trier of fact applies the ordinary observer test unaided by analytic

Machinery Co. v. Classic Lawn Ormaments. 843 F.2d at 608. This

wecigie aut dala ati tana aiamemataenaen aa

the alleged copy as having been appropriated from the

complanenbaniie® Ideal Toy Corp. v. Fab-Lu Lid., 360 F.2d 1021,

1022 (2d Cir. 1966). While dissection and expert testimony are

useful and valuable under the first prong analysis of substantial

similarity of general ideas, to constitute infringement of expres-

sion, the total concept and feel of the works must be substantially

similar to the ordinary lay audience or observer. Litchfield v. Spiel-

berg, 736 F.2d at 1352, 1357 (9th Cir. 1984), cert. denied, 470 U.S.

1052 (1985).

In the context of this case, the distinction between these tests

is important. Plaintiff failed to introduce any evidence on this

issue. Normally in a music copyright infringement case, the Court,

sitting as the trier of fact in a bench trial, would stand as the ordi-

nary lay audience and listen to the musical compositions or arran-

gements and determine whether the total concept and feel of the

two works indicated substantial similarity of expression. See Selle v.

Gibb, 741 F.2d at 905 (court listened to cassette tapes of the two

compositions in controversy plus several other song segments);

ABKCO Music, Inc. v. Harrisongs Music, Ltd., 722 F.2d 988 (2d

Cir. 1983)(a pianist played the songs for the court); Pencleton v.

Acuff-Rose Publications, Inc., 605 F.Supp. 477, 484 (M.D.Ten.

1984)(court listened to recordings and compared lyrics).

Failure to introduce evidence on this issue is devastating to

plaintiffs case. This Court’s findings of substantial similarity of

ideas between the two arrangements does not save plaintiff's infr-

ingement claim. It seems clear from the evidence presented in the

first-part of the test for substantial similarity, that defendant Mar-

tin took plaintiffs idea. However, the copyright laws do not

Tjudge Learned Hand indicated that two works are substantially similar if the “or-

dinary observer, unless he set out to deteci the disparities, would be disposed to

overlook them, and regard their aesthetic appeal as the same.” Peter Pan Fabrics,

Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960).

Appendix 35

prohibit this. Atari, Inc. v. Amusement World, Inc., 547 F.Supp.

222, 230 (D.Md. 1981). “Copyright protection is available only for

ion of ideas, not for ideas themselves.” Id.; see Mazer v.

Stein, 347 U.S. at 217-218. Thus, an artist may avoid infringement

by intentionally making substantial alterations in the design of a

copyrighted work so as to provide a substantially different expres-

sion of the idea embodied in the copyrighted work. Concrete

Machinery Co. v. Classic Lawn Ornaments, 8A3 F.2d 498, 501 (2d

Cir. 1982). Plaintiff's expert testimony evidence under the first

prong of the analysis of substantial similarity is irrelevant and inad-

missible under the second prong to show substantial similarity con-

Sstituting infringement of expression. See Amstein v. Porter, 154

F.2d at 468.

The Court finds that plaintiff has failed to carry his burden on

the issue of substantial similarity of expression of ideas under the

required intrinsic standard.® There is simply no evidence before

the Court on this i issue other than the printed sheet music for the

arrangements.” The Court is simply unable to determine whether

the overall concept and feel of the two arrangements are substan-

tially similar from a comparison of the printed sheet music. Based

upon this Court’s own observations and impressions, the Court

SThe Court finds no reason to abandon these time-honored standards for

standards occurred in Whelan Associates v. Jarlow Dental Lab, 797 F.2d 1222,

1232 (3d Cir. 1986), cert. denied, 107 S.Ct. 877 (1987). The court in Whelan was

confronted with a copyright infringement action involving two utilitarian or func-

tional computer programs written in two distinctly different computer languages.

The court narrowly tailored its exception to copyright infringement standards to

material that is extremely complex and utilitarian in allowing expert testimony on

the issue of substantial similarity of expression. No compelling reason appears to

depart from the principles that the test of substantial similarity depends upon the

response of the ordinary lay listener in a musical copyright infringement case. See

Baxter v. MCA, Inc., 812 F.2d at 424 n.2 (in dicta rejecting the notion that music is

such a technical field as to require additional protection beyond the lay audience

test).

*Piaintiff, himself, did not even testify that he had listened to the two arrange-

ments and considered them substantiaily similar. In his deposition, plaintiff stated

that he besed his allegation of copyright infringement upon a printed advertise-

ment for defendant Martin’s arrangement in a trade journal. (Deposition of Dr.

William L. Dawson at 69-73).

Appendix 36

concludes that while the ideas are similar, and one may speculate

that defendant adapted plaintiff's work for use by his own clien-

tele, nevertheless, plaintiff has failed to carry his burden to show

that the expressions of those ideas are also similar. It is quite clear

that plaintiff retains the ultimate burden of persuasion as to all

elements of copyright infringement. See Keeler Brass Co. v. Con-

tinental Brass Co., F.2d , No. 88-3524, slip op. at 7

(4th Cir. December 7, 1988). Plaintiff has thus failed to establish

an essential element of his infringement claim and defendants are

entitled to judgment.

1. The Court has jurisdiction over the parties and their dispute.

2. Plaintiff established a valid copyright and ownership.

3. Plaintiff made a showing of access and substantial similarity of

general ideas sufficient to carry the burden of persuasion on

the issue of copying.

4. Plaintiff failed to present evidence of substantial similarity of

expression sufficient to carry his burden of persuasion on the

issue of unlawful appropriation or infringement.

5. Upon all the evidence and applicable law, plaintiff failed to

show by a preponderance of the evidence that defendants infr-

inged his copyright on “Ezekiel Saw de Wheel.” Therefore,

plaintiff failed to establish an essential element of his case.

6. Plaintiff is not entitled to recover any damages under 17

U.S.C. § 504(b), or to a permanent injunction under 17 U.S.C.

§ 502(a).

7. AJudgment for defendants will be entered accordingly.

Appendix 37

December 21, 1988.

S/ Hiram H. Ward

United States District Judge

IN THE UNITED STATES DISTRICT COURT

FOR THE MIDDLE DISTRICT OF NORTH CAROLINA

DURHAM DIVISION

FILED: Feb 9 1989

WILLIAM L. DAWSON, )

)

Plaintiff )

)

v. - ) C-87-160-D

)

HINSHAW MUSIC INC., and )

GILBERT M. MARTIN, )

)

Defendants )

ORDER

This matter comes before the Court on plaintiff's Motion to

Alter or Amend (January 4, 1989) the Judgment of this Court

(December 21, 1988) pursuant to Rule 59(e) of the Federal Rules

of Civil Procedure. Finding no fundamental error of fact or law

and plaintiffs motion otherwise without merit, the Court will deny

the motion.

Plaintiff's copyright claim alleging infringement of his musical

arrangement “Ezekiel Saw de Wheel” was tried before the Court

without a jury on August 22-24, 1988. The Court found that plain-

tiff failed to show by a preponderance of the evidence that defen-

dants infringed his copyright, and entered a Judgment accordingly.

Plaintiff files a timely motion under Rule 59(e), Fed.R.Civ.P., re-

questing that the Court alter or amend the Judgment in his favor,

or in the alternative to grant a new trial under Rule 59(a),

Fed.R.Civ.P.

Appendix 39

A motion pursuant to Rule 59, Fed.R.Civ.P., may be utilized in

timely attempts to vacate a judgment. Foman v. Davis, 371 U.S.

178, 181, 83 S.Ct. 227, 9 L.Ed.2d 222 (1962); Smith v. Hudson, 600

F.2d 60 (6th Cir.), cert. denied. 444 U.S. 986 (1979); 11 Wright &

Miller, Federal Practice and Procedure § 2817 at 108-12 (1973).

The grant or denial of a Rule 59 motion is within the informed dis-

cretion of the court. United States Labor Party v. Oremus, 619 F.2d

683, 692 (7th Cir. 1980). In order to prevail on a Rule 59 motion to

alter or amend a judgment or for a new trial in a nonjury case, the

movant must show that the judgment was based upon a manifest

error of law or mistake of fact. United States v. Carolina Eastern

Chemical Co., Inc., 639 F.Supp. 1420 (D.S.C. 1986). A judgment

should not be set aside except for substantial reasons. Jd.; 11

Wright & Miller, Federal Practice and Procedure §$ 2804 at 37

(1973).

With the foregoing principles in mind, the Court turns to an

examination of the issues raised in plaintiff's motion. First, plaintiff

questions the propriety of applying the “intrinsic” evidence test to

the element of unlawful appropriation in copyright infringement

claims. Plaintiff argues that such a test should only be applied

“with respect to performance rights to a musical composition and

visual objects of art.” As support for his argument, plaintiff urges

that the holding of Whelan Associates v. Jaslow Dental Lab, Led |

F.2d 1222, 1232 (3d Cir. 1986), cert. denied, 479 U.S. 1031 (1987),

be expanded to include musical copyright claims alleging an infr-

ingement of sheet music.

The Court rejects plaintiff's argument. The Court noted in its

Findings of Fact and Conclusions of Law that Whelan was the only

noted exception which allowed extrinsic evidence regarding the

element of unlawful appropriation, but that the Whelan court had

narrowly tailored its exception to the facts of that case. This Court

specifically refused to apply Whelan to the facts of this case. The

Court found no compelling reason to depart from the principles

that the test of substantial similarity regarding the element of un-

lawful appropriation depends upon the response of the ordinary

\See Findings of Fact and Conclusions of Law (December 1988) at 20 n.8 for dis-

cussion of the Whelan holding.

Appendix 40

lay observer in a musical copyright infringement case. Plaintiff still

does not present any such reason. The Court specifically adopts

the position of the court in Baxter v. MCA, Inc., 812 F.2d 421, 424

n.2 (9th Cir.), cert. denied, US. , 108 S.Ct. 346, 98

L.Ed.2d 372 (1987), that music is not such a technical field as to

require additional protection beyond the lay audience test.

Plaintiff cites four additional computer software copyright infr;

ingement cases in support of his position to expand Whelan.”

Plaintiff argues that these cases basically adopted the Whelan

holding by substituting an “iterative” test for that of the ordinary

lay observer on the element of unlawful appropriation.

Plaintiff's reliance on these cases is misplaced. In those cases

the courts did not depart from the time-honored standard of the

ordinary lay observer test in determining unlawful appropriation,

but merely held that iterative reproduction, or exact duplication,

of substantial portions of the copyrighted work may be sufficient

to establish unlawful appropriation once access and substantial

similarity have been established. See E.F. Johnson Co. v. Uniden

Corp. of America, 623 F.Supp. 1485, 1493 (D.Minn. 1985). Under

the “iterative” approach, the focus of the ordinary observer would

shift from the total concept and feel of the copyrighted and al-

legedly infringing works to an analysis of the exactly duplicated

portions of the two works.° This is not the situation in the case,

sub judice. The Court, sitting as the ordinary observer, specifically

analyzed the sheet music in this case and concluded that plaintiff

did not show by a preponderance of the evidence that defendant

had unlawfully appropriated plaintiff's copyright. The Court did

not find exact duplication.

2 Williams Electronics v. Artic International, Inc., 685 F.2d 870 (34 Cir. 1982); E.F.

Johnson Co. v. Uniden Corp. of America, 623 F.Supp. 1485 (D.Minn. 1985); Mid-

way Mfg. Co. v. Strohon, 564 F.Supp. 741 (N.D.Ill. 1983); Hubco Data Products

Corp. v. Management Assistance, Inc., 2 Copyright L.Rep. (CCH) § 25 at 529

(D.Idaho February 3, 1983).

3in E.F. Johnson Co. v. Uniden Corp. of America, supra, there was not only

duplication of substantial portions of the computer program, but the infringing

work had even directly copied mistakes from the copyrighted work.

Appendix 41

In addition, plaintiff claims that the parties waived the require-

ment that unlawful appropriation be shown by intrinsic evidence.

While the record is far from clear thai any such agreement oc-

curred, the issue is foreclosed in that parties may not waive re-

quired elements of law. Simply stated, parties may not pick and

choose what law they wish to follow in a particular case. There is

no indication that the parties entered into a stipulation wherein

defendants concede the element of unlawful appropriation, and

defendants specifically deny such an agreement.

Finally, plaintiff contends that even if the intrinsic evidence

test is applied in this case, he should prevail. First, he argues that

the sheet music itself was sufficient evidence to support a finding

of unlawful appropriation. Plaintiff completely ignores this Court’s

Findings of Fact and Conclusions of Law issued contem-

poraneously with the Judgment in this action. The Court specifi-

cally noted that the only evidence under the intrinsic standard that

plaintiff submitted on the issue of uniawful appropriation were the

respective sheet music for both the copyrighted work and the al-

legedly infringing work, plus the sheet music of other arrange-

ments of the same public domain spiritual. The Court found, based

upon a comparison of the sheet music, that plaintiff failed to prove

by a preponderance of the evidence that defendant unlawfully ap-

propriated his copyrighted work. The Court also found that plain-

tiff failed to offer any other evidence on this issue.‘

Next, plaintiff argues that a prima jacie case of copyright infr-

ingement was established upon his showing of copying by evidence

of access and substantial similarity under the extrinsic evidence

4Plaintiff also states that the sheet music was the only evidence available under the

intrinsic evidence standard, asserting that there were no “recordings” of either ar-

rangement available for use as evidence. Plaintiff apparently aims these comments

at that portion of the Findings of Fact and Conclusions of Law in which the Court

noted that in the ordinary musical copyright infringement case, plaintiff often

meets his burden under the intrinsic evidence standard by having the musical ar-

rangements at issue performed for the fact finder. Regardless of the difficulty in

accumuiating proper evidence, plaintiff retains the burden of persuasion on this

issue. While expressing no opinion as to the veracity of plsintiff's statement, the

court merely points out that defendants’ list of exhibits in the final Pretrial Order

indicates a sound recording of cach arrangement performed by the Towson State

University Chorale. See Order on Finai Pretrial Conference at 9.

Appendix 42

standard. Plaintiff claims that the burden should then shift to the

defendant to prove that the copying was not unlawful. Plaintiff ar-

gues that since defendants failed to presént such evidence he

should prevail as a matter of law. The Court soundly rejects

plaintiffs argument. Plaintiffs extrinsic evidence, submitted

through expert testimony, indicated access and substantial

similarities of general ideas regarding the two arrangements. How-

ever, such does not violate the copyright laws. Plaintiff must also

show by a preponderance of the evidence that the expression of

those ideas was substantially similar in order to prove that an un-

lawful appropriation has occurred. The Fourth Circuit Court of

Appeals has made it clear that plaintiff retains the burden of per-

suasion in a copyright infringement action. See Keeler Brass Co. v.

Continental Brass Co., 678 F.Supp. 1190 (M.D.N.C. 1988), aff'd,

862 F.2d 1063 (4th Cir. 1988).

IT IS, THEREFORE, ORDERED that plaintiff's motion to

alter or amend the Judgment, or in the alternative for a new trial

be, and the same hereby is, DENIED.

S/ Hiram H. Ward

United States Distnct Judge

February 9, 1989.

UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT

FILED: June 27, 1990

No. 89-2643

WILLIAM L. DAWSON,

Plaintiff — Appellant,

versus

HINSHAW MUSIC INC.; GILBERT M. MARTIN,

Defendants — Appellees. :

On Petition for Rehearing with Suggestion for Rehearing In Banc

The appellees’ petition for rehearing and suggestion for

rehearing in banc were submitted to this Court. As no member of

this Court or the panel requested a poll on the suggestion for

rehearing in banc, and

As the panel considered the petition for rehearing and is of

the opinion that it should be denied, -

IT IS ORDERED that the petition for rehearing and sugges-

tion for rehearing in banc are denied.

Entered at the direction of Judge Murnaghan with the concur-

rence of Chief Judge Ervin and Judge Wilkins.

For the Court,

John M. Greacen

CLERK

Appendix 44

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.