Petition for Writ of Certiorari — Bolton v. Three Boys Music Corp.

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FILED

00 689 ocr 272mm

No. 00-

IN THE

Supreme Court of the United States

MICHAEL BOLTON, individually and d/b/a MR. BOLTON’S

MUSIC, INC., ANDREW GOLDMARK, NONPAREIL MUSIC,

INC., WARNER CHAPPELL MUSIC LIMITED, WARNER

TAMERLANE PUBLISHING CORP., WB MUSIC CORP., and

SONY MUSIC ENTERTAINMENT, INC.,

Petitioners,

THREE BOYS MUSIC CORPORATION,

Respondent.

On PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT

PETITION FOR A WRIT OF CERTIORARI

ROBERT G. SUGARMAN ALAN M. DERSHOWITZ

WEIL, GOTSHAL & Mances LLP Counsel of Record

767 Fifth Avenue 1525 Massachusetts Avenue

New York, NY 10153 Cambridge, MA 02138

(212) 310-8184 (617) 495-4617

RUSSELL J. FRACKMAN

MITCHELL SILBERBERG & Knupp LLP

11377 West Olympic Boulevard

Los Angeles, CA 90064

(310) 312-2000

Attorneys for Petitioners

163147 @ Counsel Press LLC

(800) 274-3321 + (800) 359-6859

QUESTIONS PRESENTED

1. Should this Court grant review of the Ninth Circuit’s

decision and opinion in this case — the largest reported music

infringement judgment involving a single song, which creates

a striking and important conflict with the governing law in

other Circuits regarding the proper division of authority

between judge and jury in the recurring infringement cases

involving “weak” claims of access (as the Ninth Circuit

acknowledged is the case here)?

2. Should this Court grant review of the Ninth Circuit’s

decision, which conflicts with the decision of this Court in

Feist Publications, Inc. v. Rural Telegraph Service Co., 499

U.S. 340 (1991), by allowing a jury infringement verdict

predicated on substantial similarity of protectible expression

to stand based on the mere combination “of five unprotectible

elements,” thereby undercutting the important copyright and

First Amendment protections that “encourage[ } authors to

build freely on the ideas and information” of predecessors?

Id. at 349-350.

3. Should this Court grant review of the Ninth Circuit’s

refusal to apply the logical and necessary corollary of its

“inverse-ratio rule,” thus perpetuating confusion over the

proper test to be applied — by judge and jury — in cases

where both the evidence of access is weak and the evidence

of substantial similarity is questionable (as it was here)?

STATEMENT PURSUANT TO RULE 29.6

Petitioners Mr. Bolton’s Music, Inc. aind Nonpareil

Music, Inc. certify that they do not have any parent

corporations and that no publicly held compainy owns 10%

or more of Petitioners’ stock.

Petitioner Warner Chappell Music Ltd. certifies that

Warner Chappell Music (UK) Ltd. is the parent of Petitioner

and/or owns 10% or more of Petitioner’s stock.

Petitioners Warner Tamerlane Publishing Corp., and WB

Music Corp. certify that Warner Communications, Inc. is

the parent of Petitioners and/or owns 10% or more of

Petitioners’ stock.

Petitioner Sony Music Entertainment, Inc. certifies that

Sony Music Holding Inc. is the parent of Petitioner and/or

owns 10% or more of Petitioner’s stock.

No publicly held company, other than as listed above,

owns 10% or more of the stock of any corporate petitioner.

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TABLE OF CONTENTS

Questions Presented ......------> i ee eons

Statement Pursuant to Rule - nr rey Ts

Table of Contents .........0---eeeeeeeeeerees

Table of Cited Authorities ......-----+eesseer

Table of Appendices ......------eessrrrrerrte

Opinions Below ......------+ssssrrrrrrtrttt

Statement of Jurisdiction .....----++s+ssrrrer?

Statutory Provisions Involved ...-------+-+-*""

Preliminary Statement ......----+-+++ creer

Statement of the Case ......------seecrrrrrtte

Reasons for Granting the Writ ...---.----+++>:

The Ninth Circuit’s Decision Creates a

Conflict in the Circuits and with the

Decisions of this Court Regarding the Proper

Standard for Reviewing a Weak Claim of

BEBOER occas ccccccccccnscesceoeseres

A. There is a Conflict in the Circuits ....

B. There is a Conflict with Decisions of

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Contents

Page

II. The Ninth Circuit Opinion on Substantial

Similarity of Protectible Expression Conflicts

with a Prior Decision of this Court ....... 11

III. The Ninth Circuit’s Refusal Evenhandedly to

Apply the “Inverse-Ratio Rule” Skews the

Law so as to Favor Weak Infringement Cases

and thereby Undermines the Constitutional

Rationale of the Copyright Law .......... 12

eo te te Ge oe et ae 13

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TABLE OF CITED AUTHORITIES

Page

Cases:

Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986)

PET Iy errr oe TT Ce et a. 12

Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946) ..2,7,8,9

Beal v. Lindsay, 468 F.2d 287 (2d Cit. 1972) «+22. 8

Beal v. Paramount Pictures, 20 F.3d 454 (11th Cir.

oo PROPOR Te a saat ue 12

Benson v. Coca-Cola Co., 795 F.2d 973 (11th Cir.

(| er prrrrrrrrer rer rrr. rk 8

Celotex Corp. v. Catrett, 477 U.S. 317 (1986) .... 2

Derrick Coles, et al. v. Stevie Wonder, et al., United

States District Court, Northern District of Ohio,

Eastern Division, Case No. 1:98 a & ° Spee 9

Feist Publications, Inc. v. Rural Tel. Serv. Co., 499

U.S. 340 (1991) ....-- ee ee eee eee 23,160, 11,9

Ferguson v. National Broadcasting Co., Inc., 584

F.2d 111 (Sth Cir. 1978) ....--- eee reece eeees 8

Cited Authorities

Page

Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994) .... 2,13

Gaste v. Kaiserman, 863 F.2d 1061 (2d Cir. 1988) .. 8

Heyman v. Commerce & Industry Ins. Co., 524 F.2d

boyd oe BR PPP rrr ret cre 8

Maxtone-Graham vy. Burtchaell, 803 F.2d 1253

COG Ga. Gee wccsdéascues¢ieasceeiuenee 8

Moore v. Columbia Pictures Industries, Inc., 972

Foe DOP Caen Gas GOOD n6 bb sdcéenecvcsssues 8

Selle v. Gibb, 741 F.2d 896 (7th Cir. 1984) ...... 8

Sid & Marty Krofft Television Productions v.

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

o00cccecéeeegeeeul be uneeee 7,11

Takeall v. Pepsico, 809 F. Supp. 19 (D. Md. 1992),

aff'd, 14 F.3d 596 (4th Cir. 1993) ............ 8

Three Boys Music Corporation v. Bolton, et al., 212

eft. te | rr 2,9

Twentieth Century Music Corp. v. Aiken, 422 U.S.

BDe CHRUSD onkvccescuseesetasesee eee 10

Warner Bros. v. ABC, Inc., 720 F.2d 231 (2d Cir.

SOUP cnccscceedakeneeurseueeeee 7,9

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Cited Authorities

Unitd States Constitution:

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Statute:

See BO ne,

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TABLE OF APPENDICES

Appendix A — Opinion Of The United States Court

Of Appeals For The Ninth Circuit Dated And Filed

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Appendix B — Final Judgment Of The United States

District Court For The Central District Of

California Dated And Filed December 18, 1996

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Appendix C — Order Of The United States District

Court For The Central District Of California Re

Defendants’ Motions For Judgment As A Matter

Of Law And For A New Trial Dated August 10,

1994 And Filed August 11, 1994 ..............

Appendix D — Order And Judgment Of The United

States District Court For The Central District Of

California Re Phase II Dated And Filed April 29,

1994, And Dated And Filed May 6, 1994,

OI 4.6 5. ad catesdnsedendtuedas eee

Appendix E — Civil Minutes Of The United States

District Court For The Central District Of

California Re Denial Of Defendants’ Motions For

Judgment As A Matter Of Law And A New Trial

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Page

24a

26a

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Appendices

Page

Appendix F — Order Of The United States Court

Of Appeals For The Ninth Circuit Denying

Petition For Rehearing Dated And Filed June 29,

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Appendix G — Notice Of Supplemental Legal

Authority In Coles, et al. v. Wonder, et al.,

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Petitioners respectfully request that a writ of certiorari

be issued to review the judgment of the United States Court

of Appeals for the Ninth Circuit, entered on May 9, 2000.

OPINIONS BELOW

The opinion and judgment of the Court of Appeals is

reported at 212 F.3d 477 and is set forth in Appendix

(“App.”) A hereto. The denial of rehearing by the Court of

Appeals is unreported and is set forth in App. F hereto. The

relevant opinions of the district court are unreported and are

set forth in Apps. B, C, D and E hereto.

STATEMENT OF JURISDICTION

This Court has jurisdiction to review the judgment of

the Court of Appeals by writ of certiorari pursuant to

28 U.S.C. § 1254(1). On September 2, 2000, Justice Sandra

Day O’Connor extended the time for filing a petition for a

writ of certiorari to October 27, 2000.

STATUTORY PROVISIONS INVOLVED

none

PRELIMINARY STATEMENT

The Ninth Circuit’s decision and opinion in this case —

the largest reported music infringementjudgment involving

a single song — creates a striking and important conflict

with the governing law in other Circuits. That conflict goes

to the heart of the proper division of authority between judge

and jury in the recurring infringement cases involving “weak”

claims of access (as the Ninth Circuit acknowledged is the

case here).' The Ninth Circuit has now resurrected the

discredited “slightest doubt” test formulated over fifty years

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

a “standard” which has been repeatedly rejected by the .

Second Circuit, where it originated, among others. In doing

so, the Ninth Circuit has departed from the test applied in

other circuits under which the plaintiff must demonstrate that

the defendant had a reasonable opportunity (not merely a

bare possibility) to have actually heard the work allegedly

copied. In retreating to the Arnstein rule, the Ninth Circuit

has significantly lowered that standard and engendered

confusion and unpredictability in a manner that undercuts

the primary constitutional purpose of copyright law: “not to

reward the labor of individual authors but ‘to promote the

Progress of Science and useful Arts.’ ” Fogerty v. Fantasy,

Inc., 510 U.S. 517, 527 (1994) This progress is retarded when

creative artists have to guess about how individual juries

_ will rule in weak cases rather than being able to look to a

uniform standard enforced by judicial gatekeepers. Further,

by virtually eliminating any possibility of a grant of summary

judgment where there is the slightest doubt, the Ninth

Circuit’s decision directly conflicts with this Court’s

decisions which encourage the grant of summary judgment

in appropriate cases. Anderson v. Liberty Lobby, Inc., 477

U.S. 242 (1986); Celotex Corp. v. Catrett, 477 U.S. 317

(1986).

The Ninth Circuit’s decision also conflicts with the

decision of this Court in Feist Publications, Inc. v. Rural

Telegraph Service Co., 499 U.S. 340 (1991), by allowing a

jury infringement verdict predicated on substantial similarity

of protectible expression to stand based on the mere

1. Three Boys Music Corporation v. Bolton, et al., 212 F.3d

477, 484, 486€ (9th Cir. 2000).

combination “of five unprotectible elements,” thereby

undercutting the important copyright and First Amendment

protections that “encourage[ ] authors to build freely on the

ideas and information” of predecessors. Jd. at 349-350.

Finally, in an important ruling of first impression, the

Ninth Circuit refused to apply the logical and necessary

corollary of its “inverse-ratio rule,” thus perpetuating

confusion over the proper test to be applied — by judge and

jury — in cases where both the evidence of access is weak

and the evidence of substantial similarity is questionable

(as it was here). Under the Ninth Circuit’s opinion, a lesser

showing of substantial similarity is required if there is a

strong showing of access, but a stronger showing of

substantial similarity is not required in a case, like this one,

where there was a weak showing of access. The Ninth

Circuit’s failure to apply the “inverse-ratio rule”

symmetrically unfairly skews the law of that Circuit heavily

in favor of weak infringement claims, undermines the

constitutional rationale establishing the boundaries of

legitimately building on the past without fear of being

bankrupted by a weak case of alleged subconscious

infringement which a forum-shopped jury may credit.

STATEMENT OF THE CASE

In 1966, The Isley Brothers released a 45 rpm record

called “Love Is A Wonderful Thing” (The “Isley Song”’).

The Isley Song was not released on a record album and

plaintiff, Three Boys Music, the owner of the copyright of

the Isley Song, could not produce any evidence of record

sales, published sheet music, sheet music sales, music

publishing income or public performance royalties — the

normal indicia of dissemination of a record.

At the time the Isley Song was released in 1966, Michael

Bolton and Andrew Goldmark, 13 and 15 years old, respectively,

were living in Connecticut. They had no reasonable opportunity

to hear the Isley Song. Twenty-six years later, Bolton and

Goldmark, accomplished and acclaimed songwriters, wrote a

song called “Love Is A Wonderful Thing” (The “Bolton-

Goldmark Song”). By that time, there were 129 different songs

entitled “Love Is A Wonderful Thing” registered in the

which was released by Sony Music Entertainment Inc. as a

single and on an album and which became a huge success. In

1992, plaintiff sued Bolton, Goldmark and others alleging that

Bolton and Goldmark subconsciously copied five common

musical elements which appeared in the Isley Song (and many

others) which Bolton and Goldmark allegedly had heard twenty-

six years earlier.

Since direct evidence of copying rarely exists, courts have

permitted a plaintiff to meet its burden circumstantially by

proving that (1) the defendant had access to plaintiff's work ~

and (2) that there is substantial similarity of protectible

expression in the two works involved. .

As to the first — access — the only evidence of

dissemination of the Isley Song in Connecticut, where Bolton

and Goldmark were living in 1966, was that it was played a

total of, at most, eight times (or a total of about fifteen minutes)

on two television shows which originated outside Connecticut.

The defendants introduced uncontroverted evidence in the form

of contemporaneous TV Guides establishing that neither show

aired in Connecticut.’

2. Plaintiff's other “access” evidence consisted of the testimony

of three disk jockeys who testified that they played the Isley Song for a

(Cont’d)

The Isley Song was so obscure that, not only did Bolton

and Goldmark testify that they never heard or heard of it, three

witnesses who were very familiar with the Isley Brothers and

their music — Lamont Dozier, the legendary song writer and

producer who was working with the Isley Brothers on other

songs at the time the Isley Song was released, Bruce Morrow

(“Cousin Brucie”), a New York disc jockey who played other

Isley Brothers records in 1966, and Billy Vera, a Rhythm and

Blues historian and record collector and an Isley Brothers fan

since the 60’s — each testified that they never heard or heard

of the Isley Song before this litigation.

With respect to the issue of whether the Bolton-Goldmark

Song was substantially similar to the Isley Song, plaintiff

conceded that the only elements of the Isley Song which bore

any similarity to the Bolton-Goldmark Song were five separate

and common musical ideas or structures which were not

protectible. Plaintiff also conceded that the arrangement of those

unprotectible elements was not similar. Plaintiff claimed,

(Cont'd)

short time on radio stations in Buffalo, Chicago, Philadelphia and New

York. Plaintiff also proffered: the testimony of Ronald Isley and his

wife that Bolton, in a brief introduction to them before a benefit concert

said of Mr. Isley, “I know this guy. I go back with him, I got all of his

stuff,” and “This man needs no introduction. I know everything he’s

done”; testimony that Bolton appreciated and sometimes performed,

with consent, music previously recorded by certain Black singers —

Otis Redding, Smokey Robinson, Marvin Gaye, Ray Charles, Sam

Cooke, and others (he did not name the Isley Brothers); and testimony

that, while writing the Bolton Goldmark Song, when Goldmark

suggested the title, “Love Is A Wonderful Thing,” Bolton asked, “isn’t

there a Marvin Gaye song, ‘Some Kind of Wonderful.’ ” Indeed, there

was a Marvin Gaye song which included the lyrics “some kind of

wonderful” (not found in the Isley Song) and Bolton had this Marvin

Gaye recording in his record collection.

however, that the mere presence in both songs of those

otherwise unprotectible elements was sufficient to establish

substantial similarity.

In 1994, a jury in the Central District of California

returned a verdict for the plaintiff and concluded that 66%

of the profits from the single of the Bolton-Goldmark Song

and 28% of the profits from the album containing the Bolton-

Goldmark Song and 9 other songs, one of which resulted in

a Grammy Award for Bolton, were attributable to the

infringement. As a result, plaintiff, which could prove no

earnings from the Isley Song, received a judgment for $5.4

million.

REASONS FOR GRANTING THE WRIT

I. The Ninth Circuit’s Decision Creates a Conflict in

the Circuits and with the Decisions of this Court

Regarding the Proper Standard for Reviewing a

Weak Claim of Access

A. There is a Conflict in the Circuits

Until the Ninth Circuit decision in this case, there was a

consensus among federal courts as to the burden a plaintiff

must satisfy in order to get to the jury in a copyright

infringement case.

Courts have an important responsibility in

which juries may determine reasonably disputed

issues of fact. If a case lies beyond those limits,

the contrary view of a properly drawn sample of

the population, on even of a particular jury, cannot

be permitted to enlarge (or diminish) the scope

of statutory protections enjoyed by a copyright

proprietor.

Warner Bros. v. ABC, Inc., 720 F.2d 231, 245 (2d Cir. 1983).

The Ninth Circuit’s decision in this case has changed all that

by rejecting the “reasonable opportunity” standard for access

and resurrecting the “slightest doubt” standard set in a

fifty-four year old case, Arnstein v. Porter, 154 F.2d 464

(2d Cir. 1946), which had long ago been abandoned by every

circuit, including the Second Circuit, which created the standard.

Arnstein reversed a summary judgment in favor of the

defendant in a music infringement case, despite the plaintiff's

highly speculative and fanciful theory that defendant Cole Porter

“could have” obtained access to the plaintiff's song by having

“stooges” burglarize the plaintiff's apartment. The Second

Circuit ruled in Arnstein that summary judgment was improper,

and a jury verdict was required, if there is the “slightest doubt”

as to the facts; i.e., unless the defendant “indubitably did not

have access to plaintiff's compositions.” 154 F.2d at 468-69

(emphasis added). In stark contrast, previous Ninth Circuit law

and all other circuits that have considered the issue have

recognized that Arnstein’s standard of undue and essentially

complete deference to the jury’s conclusions in infringement

actions is not the law.’ See Sid & Marty Krofft Television

Productions v. McDonald's Corp., 562 F.2d 1157, 1165

(9th Cir. 1977) (Arnstein’s holding that a trial is required

3. While the Ninth Circuit opinion claims to follow prior law, it

is impossible to reconcile the result it reached with that standard. Its

primary reliance on Arnstein, which it described as “the seminal case

about musical copyright infringement,” 212 F.3d at 481-482, and

its analysis compel the conclusion that it departed from the accepted

standard.

“when there is the slightest doubt as to the facts has been

disapproved.”’), Maxtone-Graham v. Burtchaell, 803 F.2d 1253,

1258 n.5 (2d Cir. 1986) (“The days of Arnstein v. Porter . ..

are behind us”); Heyman v. Commerce &-Industry Ins. Co.,

524 F.2d 1317, 1319 (2d Cir. 1975) (Arnstein’s approach “has

long since been jettisoned’); Beal v. Lindsay, 468 F.2d 287,

291 (2d Cir. 1972) (“slightest doubt” rule of Arnstein “no longer

is good law.”); Ferguson v. National Broadcasting Co., Inc.,

584 F.2d 111, 114 (Sth Cir. 1978) (Arnstein “is no longer good

law.” (emphasis added).

The Ninth Circuit opinion returns the Ninth Circuit, and

the Ninth Circuit alone, to the “slightest doubt” days of Arnstein

and directly contradicts, and would read out of the law, the

reasonable opportunity (as opposed to bare possibility) standard

applied in other Circuits.* By resurrecting and embracing

Arnstein, the Ninth Circuit has thus created a conflict in the

circuits and uncertainty, confusion and concern in the creative

community that artistic freedom will be chilled and restrained

as writers fear that they must steer clear of anything they’ve

ever heard or could possibly have heard.

The chilling effect is heightened in cases like this that are

admittedly cases of alleged subconscious copying.

Here, no claim was ever made that Bolton or Goldmark

consciously decided to borrow from the Isley Song. All the

more reason to allow the creative process to operate and allow

4. Gaste v. Kaiserman, 863 F.2d 1061, 1067 (2d Cir. 1988);

Takeall v. Pepsico, 809 F. Supp. 19, 21 (D. Md. 1992), aff’d, 14

F.3d 596 (4th Cir. 1993); Ferguson v. National Broadcasting

Company, Inc., 584 F.2d 111, 113 (Sth Cir. 1978); Selle v. Gibb,

741 F.2d 896, 901 (7th Cir. 1984); Moore v. Columbia Pictures

Industries, Inc., 972 F.2d 939, 942 (8th Cir. 1992); Benson v. Coca-

Cola Co., 795 F.2d 973, 975 (11th Cir. 1986).

composers to build on prior art without fear that they will be

sued for subconsciously “copying” another’s work, based on

weak and speculative evidence of access.

Moreover, in retreating to the “slightest doubt” days of

Arnstein (which reversed a summary judgment despite

plaintiff's “fantastic” theory of access), and specifically and

pointedly predicating its decision on “judicial deference,”

Three Boys Music, 212 F.3d at 482, the Ninth Circuit has

lowered the bar a plaintiff must cross and established a new

rule of virtual unreviewability of jury verdicts. In so doing, the

Ninth Circuit has abrogated the “gatekeeper” responsibility of

the district courts to “monitor the outer limits within which

juries may determine reasonably disputed issues of fact.”

Warner Bros., 720 F.2d at 245.°

B. There is a Conflict with Decisions of this Court

The Ninth Circuit decision resurrecting Arnstein virtually

eliminates the possibility of a summary judgment based on lack

of access and puts the Ninth Circuit in direct conflict with the

decisions of this Court encouraging the grant of summary

judgment in appropriate cases. See, e.g., Anderson, 477 US. at

252 (“mere existence of a scintilla of evidence in support of the

plaintiffs position” is insufficient to avoid summary judgment

or directed verdict).

* * *

5. One plaintiff immediately picked up on the Ninth Circuit

decision, filing a Notice of Supplemental Legal Authority in which he

argued that the Ninth Circuit “decision further supports [plaintiff's]

position that Defendants Stevie Wonder and Motown Record Company

are not entitled to summary judgment. . .” Derrick Coles, et al. v. Stevie

Wonder, et al., United States District Court, Northern District of Ohio,

Eastern Division, Case No. 1:98 CV 433. See Appendix A.

The copyright law was embodied in the Constitution

“[t]o promote the Progress of Science and useful Arts” which

this Court repeatedly has recognized must preserve the

delicate balance between the rights of creators, whose

original work is entitled to protection, and the rights of others

to be free to create new works without fear that they will be

sued for having copied prior works. This balance is designed

ultimately for the public good, and it necessarily implicates

and accommodates substantial First Amendment concerns.

See, e.g., Twentieth Century Music Corp. v. Aiken, 422 U.S.

151, 156 (1975) (“The limited scope of the copyright holder’s

statutory monopoly ... reflects a balance of competing

claims upon the public interest: Creative work is to be

encouraged and rewarded, but private motivation must

ultimately serve the cause of promoting broad public

availability of literature, music, and the other arts. The

immediate effect of copyright law is to secure a fair return

for an author’s creative labor. But the ultimate aim is, by

this incentive, to stimulate artistic creativity for the public

good”); Feist, 499 U.S. at 349 (“the primary objective of

promote the Progress of Science and useful Arts. To this

end, copyright assures authors the right to their original

expression, but encourages others to build freely upon the

ideas and information conveyed by a work.’ ”’). By changing

and significantly lowering the standard of access and the

burden which must be met by a plaintiff in a copyright case,

the Ninth Circuit has ignored these guiding principles and

has upset the constitutionally mandated balance. The chilling

effect of the Ninth Circuit ruling will have a detrimental

impact on expression, creativity, and the continued

availability of new works to the public.

Il. The Ninth Circuit Opinion on Substantial

Similarity of Protectible Expression Conflicts with a

Prior Decision of this Court

Proper application of the second element required to prove

copying — substantial similarity of protectible expression —

must also be applied scrupulously in order to preserve the

constitutional balance and to encourage new expression:

expression, but encourages others to build freely

upon the ideas and information conveyed by a work.

This principle, known as the idea/expression or fact/

expression dichotomy, applies to all works of

authorship . . . It is the means by which copyright

advances the progress of science and art.

Feist, 499 U.S. at 349-50. See also Sid & Marty Krofft Television

Prods., 562 F.2d at 1163.

In Feist, this Court stated: “Common sense tells us that

100 uncopyrightable facts do not magically change their status

when gathered together in one place.” 499 U.S. at 345. Yet the

Ninth Circuit’s affirmance of the jury verdict is based on the

presence of but five admittedly uncopyrightable elements in the

Isley Song and the Bolton-Goldmark Song.° As the court said

in its opinion: plaintiff's expert musicologist “testified that the

6. The five elements are: the title motif (the portion of the songs

with which the words “love is a wonderful thing” are sung), a cadence

shift (a change in rhythmic emphasis which occurs in the last statement

of a musicat selection), two very short instrumental figures (ornamental

musical phrases generally played by horns), a verse/chorus relationship

(both the verse and chorus begin with the same or similar pitches) and

a fade-out coda (a repetition of the same musical phrase at a lower and

lower volume) at the end of the song.

two songs shared a combination of five unprotectible

elements ...” 212 F.3d at 485. On that basis, and the

concession of defendants expert that he had not found the

combination of those five elements in the prior art, the court

upheld the verdict.

This result flies in the face of this Court’s admonition.

As a result, composers of music now fear that by including

— consciously or unconsciously — as few as five common

unprotectible musical elements in a new composition they

run the risk of infringement liability.

III. The Ninth Circuit’s Refusal Evenhandedly to Apply

the “Inverse-Ratio Rule” Skews the Law so as to

Favor Weak Infringement Cases and thereby

Undermines the Constitutional Rationale of the

The Ninth Circuit follows the “inverse-ratio rule” under

which a lesser showing of substantial similarity is required

in cases where there is a strong showing of access’ — a rule

which in and of itself chills expression by reducing the proof

required in an infringement case. In this case, the Ninth

Circuit compounded the deleterious impact of the rule by

refusing to apply the logical corollary and holding that where,

as here, evidence on access was weak, greater similarity is

required.

7. The Second and Eleventh Circuits have expressly rejected

the rule. ARC Music Corp. v. Lee, F.2d 186 (2d Cir. 1961)

(the court referred to the rule as “plaintiff's ingeniously fabricated

principal of law”), Beal v. Paramount Pictures, 20 F.3d 454

(11th Cir. 1994).

Had the Ninth Circuit properly applied the “inverse-ratio

rule” in both directions, it could not have affirmed this jury

verdict which was based on both weak evidence of access

_ and a finding of similarity based on the combination of five

unprotectible elements. Had the rule been evenhandedly

applied, the weakness of the access evidence would have

required a higher level of proof of similarity, which was

lacking in this case.

The Ninth Circuit’s refusal evenhandedly to apply the

“inverse-ratio rule” puts a further burden on the freedom of

composers to write without fear of being sued. If greater

access lessens the burden to show similarity, then surely

weaker access should increase this burden. Any other result

would further chill the ability of authors and composers to

“build freely upon the ideas and information conveyed by a

work.” Feist, 499 U.S. at 349-350.

—

CONCLUSION

The result in this case creates a critical problem to the

creative community which now, after many years of

consistent judicial treatment of the issues of access and

substantial similarity, faces real uncertainty.

The copyright law was intended to protect freedom of

expression and artistic development. In order to fulfill that

objective, the rules must be clear and uniformly applied. As

this Court said in Fogerty, “[b]ecause copyright law

ultimately serves the purpose of enriching the general public

through access to creative works, it is peculiarly important

that the boundaries of copyright law be demarcated as clearly

as possible.” 510 U.S. at 527. Just as this Court has fashioned

a national rule in defamation cases to protect the rights of

individuals and the press freely to speak and publish, so

should the court fashion a national rule in copyright cases to

set one standard so that creators are aware of the rules and

the federal courts can enforce them so we do not return to a

by-gone era in which district courts were deterred from

deciding, as a matter of law, that claims resting on mere

conjecture should be dismissed.

For the foregoing reasons, the petition for a writ of

certiorari should be granted.

Respectfully submitted,

ALAN M. DERSHOWITZ

Counsel of Record

1525 Massachusetts Avenue

Cambridge, MA 02138

(617) 495-4617

RosBert G. SUGARMAN

WEIL, GOTSHAL & MANGES LLP

767 Fifth Avenue

New York, NY 10153

(212) 310-8184

RUSSELL J. FRACKMAN

MITCHELL SILBERBERG & KNupp LLP

11377 West Olympic Boulevard

Los Angeles, CA 90064

(310) 312-2000

Attorneys for Petitioners

Bs ME RE ihe

APPENDIX

APPENDIX A — OPINION OF THE UNITED STATES

COURT OF APPEALS FOR THE NINTH CIRCUIT

DATED AND FILED MAY 9, 2000

United States Court of Appeals,

Ninth Circuit.

THREE BOYS MUSIC CORPORATION,

Plaintiff-Appellee,

Michael BOLTON, individually and d/b/a Mr. Bolton’s

Music, Inc.; Andrew Goldmark; Non-Pareil Music, Inc.;

Warner-Chappell Music Limited; Warner-Tamerlane

Publishing Corp.; WB Music Corp.; and

Sony Music Entertainment, Inc.,

Defendants-Appellants.

Nos. 97-55150, 97-55154

Argued and Submitted Oct. 5, 1999

Filed May 9, 2000

* * *

Appeals from the United States District Court for the

Central District of California; Lourdes G. Baird, District

Judge, Presiding. D.C. No. CV-92-01177 LGB.

Before: FLETCHER, D.W. NELSON, and BRUNETTI,

Circuit Judges.

Appendix A

D.W. NELSON, Circuit Judge:

In 1994, a jury found that Michael Bolton’s 1991 pop

hit, “Love Is a Wonderful Thing,” infringed on the copyright

of a 1964 Isley Brothers’ song of the same name. The district

court denied Bolton’s motion for a new trial and affirmed

the jury’s award of $5.4 million.

Bolton, his co-author, Andrew Goldmark, and their

record companies (“Sony Music”) appeal, arguing that the

district court erred in finding that: (1) sufficient evidence

supported the jury’s finding that the appellants had access

to the Isley Brothers’ song; (2) sufficient evidence supported

the jury’s finding that the songs were substantially similar;

(3). subject matter jurisdiction existed based on the Isley

Brothers registering a complete copy of the song;

(4) sufficient evidence supported the jury’s attribution of

profits to the infringing elements of the song; (5) Sony Music

could not deduct its tax liability; and (6) the appellants’

motion for a new trial based on newly discovered evidence

was unwarranted.

We affirm.

I. BACKGROUND

The Isley Brothers, one of this country’s most well-

known rhythm and blues groups, have been inducted into

the Rock and Roll Hall of Fame. They helped define the

soul sound of the 1960s with songs such as “Shout,” “Twist

and Shout,” and “This Old Heart of Mine,” and they mastered

the funky beats of the 1970s with songs such as “Who’s That

3a .

Appendix A

Lady,” “Fight the Power,” and “It’s Your Thing.” In 1964,

the Isley Brothers wrote and recorded “Love is a Wonderful

Thing” for United Artists. The Isley Brothers received a

of Copyrights on February 6, 1964. The following year, they

switched to the famous Motown label and had three top-100

hits including “This Old Heart of Mine.”

Hoping to benefit from the Isley Brothers’ Motown

success, United Artists released “Love is a Wonderful Thing”

in 1966. The song was not released on an album, only on a

45-record as a single. Several industry publications predicted

that “Love is a Wonderful Thing” would be a hit — “Cash

Box” on August 27, 1966, “Gavin Report” on August 26,

1966, and “Billboard” on September 10, 1966. On September

17, 1966, Billboard listed “Love is a Wonderful Thing” at

number 110 in a chart titled “Bubbling Under the Hot 100.”

The song was never listed on any other Top 100 charts. In

1991, the Isley Brothers’ “Love is a Wonderful Thing” was

released on compact disc. See Isley Brothers, The Isley

Brothers — The Complete UA Sessions, (EMI 1991).

Michael Bolton is a singer/songwriter who gained

popularity in the late 1980s and early 1990s by reviving the

soul sound of the 1960s. Bolton has orchestrated this soul-

music revival in part by covering old songs such as Percy

Sledge’s “When a Man Love a Woman” and Otis Redding’s

“(Sittin’ on the) Dock of the Bay.” Bolton also has written

his own hit songs. In early 1990, Bolton and Goldmark wrote

a song called “Love Is a Wonderful Thing.” Bolton released

it as a single in April 1991, and as part of Bolton’s album,

“Time, Love and Tenderness.” Bolton’s “Love Is a Wonderful

Appendix A

Thing” finished 1991 at number 49 on Billboard’s year-end

pop chart.

On February 24, 1992, Three Boys Music Corporation

filed a copyright infringement action for damages against

the appellants under 17 U.S.C. §§ 101 et seq. (1988). The

parties agreed to a trifurcated trial. On April 25, 1994, in the

first phase, the jury determined that the appellants had

infringed the Isley Brothers’ copyright. At the end of second

phase five days later, the jury decided that Bolton’s “Love

Is a Wonderful Thing” accounted for 28 percent of the profits

from “Time, Love and Tenderness.” The jury also found that

66 percent of the profits from commercial uses of the song

could be attributed to the inclusion of infringing elements.

On May 9, 1994, the district court entered judgment in favor

of the Isley Brothers based on the first two phases.

The deadline for post-trial motions was May 25, 1994.

On that day, the appellants filed a motion for judgment as a

matter of law and a motion for new trial. The district court

denied the motions on August 11, 1994. On June 8, 1994,

the appellants filed a second motion for new trial based on

newly discovered evidence on the issue of copyright ownership.

The district court dismissed this motion as untimely.

On December 5, 1996, the district court adopted the

findings of the Special Master’s Amended Report about the

allocation of damages (third phase). In the final judgment

entered against the appellants, the district court ordered Sony

Music to pay $4,218,838; Bolton to pay $932,924; Goldmark

to pay $220,785; and their music publishing companies to

pay $75,900. They timely appealed.

ehernnereieiinesibiienineiaiaimiaaiiaiiiiiiiaas

Appendix A

II. DISCUSSION

Proof of copyright infringement is often highly

circumstantial, particularly in cases involving music.

A copyright plaintiff must prove (1) ownership of the

protected elements of the plaintiffs work. See Smith v.

Jackson, 84 F.3d 1213, 1218 (9th Cir.1996) (citation

omitted). Absent direct evidence of copying, proof of

infringement involves fact-based showings that the defendant

had “access” to the plaintiff's work and that the two works

are “substantially similar.” Id.

Given the difficulty of proving access and substantial

similarity, appellate courts have been reluctant to reverse

jury verdicts in music cases. See, e.g., id. at 1221 (affirming

a jury’s verdict for the defendants in a copyright infringement

case involving Michael Jackson and other musicians); Gaste

v. Kaiserman, 863 F.2d 1061, 1071 (2d Cir.1988) (affirming

a jury’s damages award against a defendant in a music

Gaste nicely articulated the proper role for an appeals court

in reviewing a jury verdict:

The guiding principle in deciding whether to

overturn a jury verdict for insufficiency of the

evidence is whether the evidence is such that,

without weighing the credibility of the witnesses

or otherwise considering the weight of the

evidence, there can be but one conclusion as to

the verdict that reasonable men could have

reached.

Appendix A

Id. at 1066 (internal quotations omitted). In Arnstein v.

Porter, the seminal case about musical copyright

infringement, Judge Jerome Frank wrote:

Each of these two issues — copying and improper

appropriation — is an issue of fact. If there is a

trial, the conclusions on those issues of the trier

of the facts — of the judge if he sat without a

jury, or of the jury if there was a jury trial — bind

this court on appeal, provided the evidence

supports those findings, regardless of whether we

would ourselves have reached the same —

conclusions.

Arnstein v. Porter, 154 F.2d 464, 469 (2d Cir.1946).

As a general matter, the standard for reviewing jury

verdicts is whether they are supported by “substantial

evidence” — that is, such relevant evidence as reasonable

minds might accept as adequate to support a conclusion.

See Poppeli v. City of San Diego, 149 F.3d 951, 962 (9th

Cir.1998). The credibility of witnesses is an issue for the

jury and is generally not subject to appellate review.

See Gilbrook v. City of Westminster, 177 F.3d 839, 856 (9th

Cir.), cert. denied, U.S. __, 120 S.Ct. 614, 145 L.Ed.2d

509 (1999).

We affirm the jury’s verdict in this case in light of the

standard of review and copyright law’s “guiding principles.”

Although we will address each of the appellant’s arguments

in turn, we focus on access because it is the most difficult

issue in this case. Our decision is predicated on judicial

Appendix A

deference — finding that the law has been properly applied

in this case, viewing the facts most favorably to the appellees,

and not substituting our judgment for that of the jury.

A. Access

Proof of access requires “an Opportunity to view or to

copy plaintiff's work.” Sid and Marty Krofft Television

Productions, Inc. v. McDonald’s Corp., 562 F.2d 1 157, 1172

(9th Cir.1977). This is often described as providing a

“reasonable opportunity” or “reasonable possibility” of

viewing the plaintiff's work. 4 Melville B. Nimmer & David

Nimmer, Nimmer on Copyright, § 13.02[A], at 13-19 (1999);

Jason v. Fonda, 526 F Supp. 774, 775 (C.D.Cal.1981), aff'd,

698 F.2d 966 (9th Cir. 1982). We have defined reasonable

access as “more than a ‘bare possibility.’ ” Jason, 698 F.2d

at 967. Nimmer has elaborated on our definition: “Of course,

reasonable opportunity as here used, does not encompass

any bare possibility in the sense that anything is possible.

Access may not be inferred through mere speculation or

conjecture. There must be a reasonable possibility of viewing

the plaintiff's work — not a bare possibility.” 4 Nimmer,

§ 13.02[A], at 13-19. “At times, distinguishing a ‘bare’

Possibility from a ‘reasonable’ possibility will present a close

question.” Id. at 13-20.

Circumstantial evidence of reasonable access is proven

in one of two ways: (1) a particular chain of events is

established between the plaintiff's work and the defendant’s

access to that work (such as through dealings with a publisher

or record company), or (2) the plaintiff's work has been

widely disseminated. See 4 Nimmer, § 13.02[A], at

Appendix A

13-20-13-21; 2 Paul Goldstein, Copyright: Principles, Law,

and Practice § 8.3.1.1., at 90-91 (1989). Goldstein remarks

that in music cases the “typically more successful route to

proving access requires the plaintiff to show that its work

was widely disseminated through sales of sheet music,

records, and radio performances.” 2 Goldstein, § 8.3.1.1, at

91. Nimmer, however, cautioned that “[c]oncrete cases will

pose difficult judgments as to where along the access

spectrum a given exploitation falls.” 4 Nimmer, § 13.02[A]},

at 13-22.

Proof of widespread dissemination is sometimes

accompanied by a theory that copyright infringement of a

popular song was subconscious. Subconscious copying has

been accepted since Learned Hand embraced it in a 1924

music infringement case: “Everything registers somewhere

in our memories, and no one can tell what may evoke it... .

Once it appears that another has in fact used the copyright

as the source of this production, he has invaded the author’s

rights. It is no excuse that in so doing his memory has played

him a trick.” Fred Fisher, Inc. v. Dillingham, 298 F. 145,

147-48 (S.D.N.Y.1924). In Fred Fisher, Judge Hand found

that the similarities between the songs “amount[ed] to

identity” and that the infringement had occurred “probably

unconsciously, what he had certainly often heard only a short

time before.” Id. at 147.

In modern cases, however, the theory of subconscious

copying has been applied to songs that are more remote in

time. ABKCO Music, Inc. v. Harrisongs Music, Ltd., 722

F.2d 988 (2d Cir.1983) is the most prominent example.

In ABKCO, the Second Circuit affirmed a jury’s verdict that

Appendix A

former Beatle George Harrison, in writing the song “My

Sweet Lord,” subconsciously copied The Chiffons’ “He’s

So Fine,” which was released six years earlier. See id. at

997, 999. Harrison admitted hearing “He’s So Fine” in 1963,

when it was number one on the Billboard charts in the United

States for five weeks and one of the top 30 hits in England

for seven weeks. See id. at 998. The court found: “the

evidence, standing alone, “by no means compels the

conclusion that there was access . . . it does not compel the

conclusion that there was not.’ ” Id. (quoting Heim v.

Universal Pictures Co., 154 F.2d 480, 487 (2d Cir.1946)).

In ABKCO, however, the court found that “the similarity

was so striking and where access was found, the remoteness

of that access provides no basis for reversal.” Id.

Furthermore, “the mere lapse of a considerable period of time

between the moment of access and the creation of defendant’s

work does not preclude a finding of copying.” 4 Nimmer,

§ 13.02[A], at 13-20 (citing ABKCO, 722 F.2d at 997-98).

The Isley Brothers’ access argument was based on a

theory of widespread dissemination and subconscious

copying. They presented evidence supporting four principal

ways that Bolton and Goldmark could have had access to

the Isley Brothers’ “Love is a Wonderful Thing”:

(1) Bolton grew up listening to groups such as the Isley

Brothers and singing their songs. In 1966, Bolton and

Goldmark were 13 and 15, respectively, growing up in

Connecticut. Bolton testified that he had been listening to

rhythm and blues music by black singers since he was 10 or

11, “appreciated a lot of Black singers,” and as a youth was

the lead singer in a band that performed “covers” of popular

10a

Appendix A

songs by black singers. Bolton also testified that his brother

had a “pretty good record collection.”

(2) Three disk jockeys testified that the Isley Brothers’

song was widely disseminated on radio and television

stations where Bolton and Goldmark grew up. First, Jerry

Blavitt testified that the Isley Brothers’ “Love is a Wonderful

Thing” was played five or six times during a 13-week period

on the television show, “The Discophonic Scene,” which he

said aired in Philadelphia, New York, and Hartford-

New Haven. Blavitt also testified that he played the song

two to three times a week as a disk jockey in Philadelphia

and that the station is still playing the song today. Second,

Earl Rodney Jones testified that he played the song a

minimum of four times a day during an eight to 14 to 24

week period on WVON radio in Chicago, and that the station

is still playing the song today. Finally, Jerry Bledsoe iestified

that he played the song on WUFO radio in Buffalo, and

WWRL radio in New York was playing the song in New

York in 1967 when he went there. Bledsoe also testified that

he played the song twice on a television show, “Soul,” which

aired in New York and probably in New Haven, Connecticut,

where Bolton lived.

(3) Bolton confessed to being a huge fan of the Isley

Brothers and a collector of their music. Ronald Isley testified

that when Bolton saw Isley at the Lou Rawls United Negro

College Fund Benefit concert in 1988, Bolton said, “I know

this guy. I go back with him. I have all his stuff.” Angela

Winbush, Isley’s wife, testified about that meeting that

Bolton said, “This man needs no introduction. I know

everything he’s done.”

lla

Appendix A

(4) Bolton wondered if he and Goldmark were copying

a song by another famous soul singer. Bolton produced a

work tape attempting to show that he and Goldmark

independently created their version of “Love Is a Wonderful

Thing.” On that tape of their recording session, Bolton asked

Goldmark if the song they were composing was Marvin

Gaye’s “Some Kind of Wonderful.”' The district court, in

affirming the jury’s verdict, wrote about Bolton’s Marvin

Gaye remark:

This statement suggests that Bolton was

contemplating the possibility that the work he and

Goldmark were creating, or at least a portion of

it, belonged to someone else, but that Bolton

wasn’t sure who it belonged to. A reasonable jury

can infer that Bolton mistakenly attributed the

work to Marvin Gaye, when in reality Bolton was

subconsciously drawing on Plaintiff’s song.

The appellants contend that the Isley Brothers’ theory

of access amounts to a “twenty-five-years-after-the-

fact-subconscious copying claim.” Indeed, this is a more

attenuated case of reasonable access and subconscious

copying than ABKCO. In this case, the appellants never

admitted hearing the Isley Brothers’ “Love is a Wonderful .

Thing.” That song never topped the Billboard charts or even

made the top 100 for a single week. The song was not released

on an album or compact disc until 1991, a year after Bolton

1. Marvin Gaye also referred to the song’s chorus, “She’s some

kind of wonderful,” in his song, “Too Busy Thinking About My

Baby.” See Marvin Gaye, Too Busy Thinking About My Baby, on

MPG, (Motown 1969).

12a

Appendix A

and Goldmark wrote their song. Nor did the Isley Brothers

ever claim that Bolton’s and Goldmark’s song is so

“strikingly similar” to the Isley Brothers’ that proof of access

is presumed and need not be proven.

Despite the weaknesses of the Isley Brothers’ theory of

reasonable access, the appellants had a full opportunity to

present their case to the jury. Three rhythm and blues experts

(including legendary Motown songwriter Lamont Dozier of

Holland-Dozier-Holland fame) testified that they never

heard of the Isley Brothers’ “Love is a Wonderful Thing.”

Furthermore, Bolton produced copies of “TV Guide” from

1966 suggesting that the television shows playing the song

never aired in Connecticut. Bolton aiso pointed out that

129 songs called “Love is a Wonderful Thing” are registered

with the Copyright Office, 85 of them before 1964.

The Isley Brothers’ reasonable access arguments are not

without merit. Teenagers are generally avid music listeners.

It is entirely plausible that two Connecticut teenagers

obsessed with rhythm and blues music could remember an

Isley Brothers’ song that was played on the radio and

television for a few weeks, and subconsciously copy it twenty

years later. Furthermore, Ronald Isley testified that when

they met, Bolton said, “I have all his stuff.” Finally, as the

district court pointed out, Bolton’s remark about Marvin

Gaye and “Some Kind of Wonderful” indicates that Bolton

believed he may have been copying someone else’s song.

Finally, with regard to access, we are mindful of Judge

Frank’s words of caution in Arnstein v. Porter: “The judge

characterized plaintiff's story as ‘fantastic’; and in the light

13a

Appendix A

of the references in his opinion to defendant’s deposition,

the judge obviously accepted the defendant’s denial of access

and copying. . . . [Y]et plaintiff's credibility, even as to those

improbabilities, should be left to the jury.” Arnstein, 154

F.2d at 469. In this case, Judge Baird heeded Judge Frank’s

admonition:

[T]Jhis Court is not in a position to find that the

only conclusion that a reasonable jury could have

reached is that Defendants did not have access to

Plaintiff's song. One must remember that the issue

this Court must address is not whether Plaintiff

has proven access by a preponderance of evidence,

but whether reasonable minds could find that

Defendants had a reasonable opportunity to have

heard Plaintiff's song before they created their

Own song.

Although we might not reach the same conclusion as the

jury regarding access, we find that the jury’s conclusion about

access is supported by substantial evidence. We are not

establishing a new standard for access in copyright cases;

we are merely saying that we will not disturb the jury’s

factual and credibility determinations on this issue.

B. Substantial Similarity

Under our case law, substantial similarity is inextricably

linked to the issue of access. In what is known as the “inverse

ratio rule,” we “require a lower standard of proof of

substantial similarity when a high degree of access is shown.”

Smith, 84 F.3d at 1218 (citing Shaw v. Lindheim, 919 F.2d

14a

Appendix A

1353, 1361-62 (9th Cir.1990); Krofft, 562 F.2d at 1172).

Furthermore, in the absence of any proof of access, a

by showing that the songs were “strikingly similar.”

See Smith, 84 F.3d at 1220; Baxter v. MCA, Inc., 812 F.2d

421, 423, 424 n. 2 (9th Cir.1987).

Proof of the substantial similarity is satisfied by a

two-part test of extrinsic similarity and intrinsic similarity.

See Krofft, 562 F.2d at 1164. Initially, the extrinsic test

requires that the plaintiff identify concrete elements based

on objective criteria. See Smith, 84 F.3d at 1218; Shaw, 919

F.2d at 1356. The extrinsic test often requires analytical

dissection of a work and expert testimony. See Apple

Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1442 (9th

Cir.1994). Once the extrinsic test is satisfied, the factfinder

applies the intrinsic test. The intrinsic test is subjective and

asks “whether the ordinary, reasonable person would find

the total concept and feel of the works to be substantially

similar.” Pasillas v. McDonald’s Corp., 927 F.2d 440, 442

(9th Cir.1991) (internal quotations omitted).

We will not second-guess the jury’s application of the

intrinsic test. See Krofft, 562 F.2d at 1166 (“Since the

intrinsic test for expression is uniquely suited for

determination by the trier of fact, this court must be reluctant

to reverse it.”) (citations omitted). Furthermore, we will not

reverse factual determinations regarding the extrinsic test

absent a clearly erroneous application of the law. See id.

It is well settled that a jury may find a combination of

unprotectible elements to be protectible under the extrinsic

test because “ ‘the over-all impact and effect indicate

15a

Appendix A

substantial appropriation.’ ” Id. at 1169 (quoting Malkin v.

Dubinsky, 146 F.Supp. 111, 114 (S.D.N.Y.1956)).

1. Evidence of Substantial Similarity

Bolton and Goldmark argue that there was insufficient

evidence of substantial similarity because the Isley Brothers’

expert musicologist, Dr. Gerald Eskelin, failed to show that

there was copying of a combination of unprotectible

elements. On the contrary, Eskelin testified that the two songs

shared a combination of five unprotectible elements: (1) the

title hook phrase (including the lyric, rhythm, and pitch);

(2) the shifted cadence; (3) the instrumental figures; (4) the

verse/chorus relationship; and (5) the fade ending. Although

the appellants presented testimony from their own expert

musicologist, Anthony Ricigliano, he conceded that there

were similarities between the two songs and that he had not

found the combination of unprotectible elements in the Isley

Brothers’ song “anywhere in the prior art.” The jury heard

testimony from both of these experts and “found infringement

based on a unique compilation of those elements.” We refuse

to interfere with the jury’s credibility determination, nor do

we find that the jury’s finding of substantial similarity was

clearly erroneous.

2. Independent Creation

Bolton and Goldmark also contend that their witnesses

rebutted the Isley Brothers’ prima facie case of copyright

infringement with evidence of independent creation. By

establishing reasonable access and substantial similarity, a

16a

eas Appendix A

burden shifts to the defendant to rebut that presumption

through proof of independent creation. See Granite Music

Corp. v. United Artists Corp., 532 F.2d 718, 721 (9th

Cir.1976).

The appellants’ case of independent creation hinges on

three factors: the work tape demonstrating how Bolton and

Goldmark created their song, Bolton and Goldmark’s history

of songwriting, and testimony that their arranger, Walter

Afanasieff, contributed two of five unprotectible elements

that they allegedly copied. The jury, however, heard the

testimony of Bolton, Goldmark, A fanasieff, and Ricigliano

about independent creation. The work tape revealed evidence

that Bolton may have subconsciously copied a song that he

believed to be written by Marvin Gaye. Bolton and

Goldmark’s history of songwriting presents no direct

evidence about this case. And Afanasieff’s contributions to

Bolton and Goldmark’s song were described by the

appellants’ own expert as “very common.” Once again, we

refuse to disturb the jury’s determination about independent

creation. The substantial evidence of copying based on access

and substantial similarity was such that a reasonable juror

could reject this defense.

3. Inverse-Ratio Rule

Although this may be a weak case of access and a

circumstantial case of substantial similarity, neither issue

warrants reversal of the jury’s verdict. An amicus brief on

behalf of the recording and motion picture industries warns

against watering down the requirements for musical

17a

Appendix A

The Ninth Circuit’s inverse-ratio rule requires a lesser

showing of substantial similarity if there is a strong showing

of access. See Smith, 84 F.3d at 1218. In this case, there

was a weak showing of access. We have never held, however,

that the inverse ratio rule says a weak showing of access

requires a stronger showing of substantial similarity. Nor aré

we redefining the test of substantial similarity here; we merely

find that there was substantial evidence from which the jury

could find access and substantial similarity in this case.

C. Sufficiency of the Deposit Copy

The appellants argue that the district court did not have

jurisdiction over this case because the Isley Brothers failed

to register a complete copy of the song upon which the

lawsuit was based. Although the 1909 Copyright Act requires

the owner to deposit a “complete copy” of the work with the

and deferential: “Absent intent to defraud and prejudice,

inaccuracies in copyright registrations do not bar actions for

infringement.” Harris v. Emus Records Corp., 734 F.2d 1329,

1335 (9th Cir.1984) (citations omitted).

Bolton and Goldmark argue that in 1964 the Isley

Brothers deposited sheet music (“deposit copy”) of “Love is

a Wonderful Thing” that differed from the recorded version

of the song. Furthermore, they claimed that the deposit copy

does not include the majority of the musical elements that

were part of the infringement claim. At trial, the Isley

Brothers’ expert, Dr. Eskelin, testified that the deposit copy

included all of the song’s essential elements such as the title

hook, chorus, and pitches. Dr. Eskelin even played the

18a

Appendix A

deposit copy for the jury on the keyboard. We refuse to

disturb the jury’s finding that the Isley Brothers deposited a

“complete copy” because (1) there was no intent to defraud

and prejudice and (2) any inaccuraciés in the deposit copy

were minor and do not bar the infringement action.

D. Attribution of Profits

Sony Music claims that the district court improperly

applied an assumption that all profits from Bolton and

Goldmark’s song go to the Isley Brothers, and that no

evidence supported the jury’s apportionment of profits.

A successful copyright plaintiff is allowed to recover only

those profits that are “attributable to infringement.” 17 U.S.C. _

§ 504(b) (1994). “In establishing the infringer’s profits, the

infringer’s gross revenue, and the infringer is required to

prove his or her deductible expenses and the elements of

profit attributable to factors other than the copyrighted work.”

Id. See also Cream Records, Inc. v. Jos. Schlitz Brewing

Co., 754 F.2d 826, 828 (9th Cir.1985) (holding that when

all profits do not clearly derive from the infringing material,

the copyright owner is not entitled to recover all of the

profits); Gaste, 863 F.2d at 1070 (finding that where there is

“imprecision in the computation of expenses, a court should

err on the side of guaranteeing the plaintiff a full recovery”).

Thus, the statutory burden of proof lies with Sony Music to

prove what percentage of their profits were not attributable

to copying the Isley Brothers’ “Love is a Wonderful Thing.”

Sony Music presented evidence that Bolton’s “Love Is

a Wonderful Thing” produced only 5-10% of the profits from

19a

Appendix A

his album, “Time, Love and Tenderness,” and that the song’s

infringing elements resulted in only 10-15% of the profits

from the song. The Isley Brothers, however, attacked the

credibility of one of Sony Music’s experts. F urthermore, they

presented evidence that Bolton’s infringing song was the

album’s lead single, that it was released 19 days before the

album, and that Bolton engaged in telephone promotion of

the song. The jury found that 28% of the album’s profits

derived from the song, and that 66% of the song’s profits

resulted from infringing elements.

We affirm the jury’s apportionment of the profits for

several reasons. First, the jury instructions adequately

conveyed the burden of proof. Second, the burden of proof

was on Sony Music, and the jury chose not to believe Sony

Music’s experts. F inally, a jury verdict apportioning less than

100% of the profits but more than the percentage estimates

of Sony Music’s experts does not represent clear error.

E. Deduction of Tax Liability

Sony Music also argues that the district court erred in

allowing Bolton and Goldmark, but not Sony Music, to

deduct income taxes due to profits from the album. Whether

income taxes are considered “deductible expenses” under

§ 504(b) is an issue of first impression in this circuit. The

Supreme Court held that willful infringers could not deduct

income taxes, but it left open the possibility that non-willful

infringers could deduct their income taxes from the infringing

profits. See L.P. Larson, Jr., Co. v. Wm. Wrigley, Jr., Co.,

277 U.S. 97, 99-100, 48 S.Ct. 449, 72 L.Ed. 800 (1928).

The circuits are split over whether non-willful infringers such

20a

Appendix A

as Bolton, Goldmark, and Sony Music can deduct income

taxes from their infringing profits. Compare In Design v.

K-Mart Apparel Corp., 13 F.3d 559, 567 (2d Cir.1994)

(allowing the deduction of income taxes) with Schnadig

Corp. v. Gaines Mfg. Co., Inc., 620 F.2d 1166, 1169-70 (6th

Cir.1980) (not allowing the deduction of income taxes).

The Second Circuit allowed the deduction of income

taxes because if infringers are liable for pre-tax profits, they

may end up paying more money than they ever received.

See In Design, 13 F.3d at 567. Under the Second Circuit’s

rule, the infringer receives a windfall by (1) paying a smaller

damages award and (2) deducting the entire, pre-tax award

from gross income on a subsequent tax return. The Sixth

Circuit rejected the deduction of income taxes because the

increased pre-tax profits paid to the copyright holder will be

balanced out by an eventual tax refund based on the pre-tax

award. See Schnadig, 620 F.2d at 1169-70. Under the Sixth

Circuit’s rule, the copyright holder receives a windfall by

receiving a larger, pre-tax award.

During the third phase of this trial, the district court

adopted the findings of the special master’s report regarding

the deduction of income taxes. The district court followed

the Second Circuit rule and allowed Bolton and Goldmark,

as non-willful infringers, to deduct the income taxes and

management fees that they paid relating to the infringing

song. The district court, however, refused to allow Sony

Music to deduct its Net Operating Loss Carry-forward (NOL)

because the NOL did not have a “concrete financial impact.”

We uphold the district court’s decision to allow non-

willful infringers to deduct income taxes, but not NOL. In

ii eeneenimneniinitiiiiniiiiaaitasi ia

2la

Appendix A

this case, Bolton and Goldmark actually paid income taxes

and management fees on the infringing profits. Sony Music,

however, never actually paid income taxes on its infringing

profits. Rather, Sony Music claimed it offset nearly

$1.7 million in taxes on the infringing profits against its

parent company’s NOL. No court has ever found that NOL

is a deductible expense under § 504(b). F urthermore, we find

that the district court’s distinctions between taxes actually

paid and taxes not actually paid was a fair one. Thus, we

affirm the district court’s calculation of a $4,218,838

damages award against Sony Music.

F. Second New Trial Motion

Finally, Boiton and Goldmark claim that the district court

erred in rejecting their second motion for new trial. The

district court’s denial of a motion for a new trial pursuant to

Federal Rule of Civil Procedure 60(b) is reviewed for an

abuse of discretion. See Browning-Ferris Indus. v. Kelco

Disposal, Inc., 492 U.S. 257, 278, 109 S.Ct. 2909, 106

L.Ed.2d 219 (1989); Scott v. Ross, 140 F.3d 1275, 1281 (9th

Cir.1998). The abuse of discretion standard applies

particularly when the district court's denial is based on the

motion’s untimeliness. See E. & J. Gallo Winery v. Gallo

Cattle Co., 967 F.2d 1280, 1294-96 (9th Cir.1992).

Bolton and Goldmark’s second motion for a new trial

was based on the discovery of new evidence that disputed

the Isley Brothers’ claim of authorship. A day before the

deadline for post-trial motions, the appellees discovered

evidence alleging that the Turkcords, a group that played

with the Isley Brothers in the mid-1960s, claimed to have

22a

Appendix A

written the 1964 song, “Love is a Wonderful Thing.” Bolton

and Goldmark did not immediately notify the district court

of this new evidence. Instead, fourteen days after the deadline

for post-trial motions had passed, they filed an additional

motion for new trial. The district court rejected the second

motion for new trial as untimely filed.

We affirm the district court’s denial of the second motion

for new trial because the evidence, if true, goes at most to

the weight and credibility of the evidence before the jury.

At trial, Ronald Isley claimed to have written the song with

the deceased guitar legend, Jimi Hendrix. (As a young man,

Hendrix played in the Isley Brothers’ band.) The Turkcords’

claims of authorship are dubious for several reasons. The

Turkcords knew about the re-release of “Love is a Wonderful

Thing” by United Artists in 1991, yet they claimed that the

Isley Brothers had agreed to share the song’s royalties with

them only after hearing about the damages award in this case

on “Inside Edition.” Furthermore, Bolton and Goldmark knew

about this new evidence before the deadline for the post-trial

motions, yet they did not immediately notify the district court.

Even if the Turkcords’ claims of authorship are true, a

new trial is not warranted in the interests of justice because

the Isley Brothers’ copyright ownership is not jeopardized.

Registration is prima facie evidence of the validity of a

can be rebutted by the defendant’s showing that the plaintiff's

work is not original. See North Coast Indus. v. Jason

Maxwell, Inc., 972 F.2d 1031, 1033 (9th Cir.1992). North

Coast’s definition of originality is broad: “ ‘All that is needed

to satisfy both the Constitution and the statute is that the

23a

Appendix A

“author” contributed something more than a “merely trivial”

Variation, something recognizably “his own.” Originality in

this context means “little more than a prohibition of actual

copying.” ’ ” Id. (quoting Krofft, 562 F.2d at 1163 n. 5 (quoting

Alfred Bell & Co. v. Catalda Fine Arts, 191 F.2d 99, 102-03

(2d Cir.1951))). See also Kamar Int’] Inc. v. Russ Berrie and

Co., 657 F.2d 1059, 1061 (9th Cir.1981) (employing a broad

definition of originality relating to toy stuffed animals).

In this case, the Isley Brothers undoubtedly contributed

something original to “Love is a Wonderful Thing.” Their

proteges, the Turkcords, purportedly wrote the song, then gave

the Isley Brothers’ permission to record it after the voice of the

Turkcords’ lead singer allegedly “cracked.” Members of the

Turkcords allegedly sang back-up on the record. Yet the

Turkcords never copyrighted their song. They relied on the Isley

Brothers’ alleged promise to share the royalties with them.

The district court did not abuse its discretion in rej ecting

Bolton and Goldmark’s second motion for a new trial based

on this evidence. The Turkcords’ Claims of authorship would

not have affected the outcome of the case and at most go to

the weight and credibility of the evidence. Bolton and

Goldmark’s second motion was a last-ditch attempt to discredit

the jury’s verdict. The district court heard all of the evidence

in this case, instructed the jury on the applicable law, yet

refused to reverse the jury’s verdict pursuant to motion for a

judgment as a matter of law. Having found that the law was

properly applied in this case, we leave the district court’s

decisions and the j ury’s credibility determinations undisturbed.

AFFIRMED.

24a

APPENDIX B — FINAL JUDGMENT OF THE UNITED

STATES DISTRICT COURT FOR THE CENTRAL

DISTRICT OF CALIFORNIA DATED

AND FILED DECEMBER 18, 1996

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

CV 92-1177 LGB (BQRx)

THREE BOYS MUSIC CORPORATION,

Plaintiff,

MICHAEL BOLTON, et al.

Defendants.

FINAL JUDGMENT

On May 6, 1994, judgment was entered in Phase I of

this trifurcated case on the jury’s verdict that Defendants

had infringed Plaintiff's copyright. On the same day,

judgment was also entered in Phase II of this case on the

jury’s verdict that 28% of the profits derived from the sale

of Defendants’ album was attributable to the inclusion of

the infringing song on the album, and that 66% of the profits

from the commercial uses of the infringing song was

attributable to the inclusion in that song of elements that

infringed Plaintiff's song. Those judgments are hereby

incorporated by reference. In Phase III, issues related to

Defendants’ profits were decided by a Special Master.

25a

Appendix B

Pursuant to this Court’s Order entered December 5, 1996

adopting the Special Master’s Amended Report with the

additional analysis in the Order, the Court hereby ORDERS,

ADJUDGES, and DECREES that judgment be and hereby

is entered in favor of Plaintiff, THREE BOYS MUSIC

CORPORATION, and against Defendants, as to Plaintiff's

Complaint.

Therefore, the Court hereby ORDERS that:

1. Defendant SONY MUSIC ENTERTAINMENT, INC.

pay Plaintiff $4,218,838, the share of Sony Music’s

profits from the album and the single to which Plaintiff

is entitled.

2. Defendants WARNER-CHAPPELL MUSIC

LIMITED; TAMERLANE PUBLISHING CORPORA-

TION; and WB MUSIC CORPORATION pay Plaintiff

$75,900, the share of these defendants’ profits from the

song to which Plaintiff is entitled.

3. Defendant ANDREW GOLDMARK pay Plaintiff

$220,785, the share of Goldmark’s profits from the song

to which Plaintiff is entitled.

4. Defendant MICHAEL BOLTON pay Plaintiff

$932,924, the share of Bolton’s profits from the album,

the single, and publishing to which Plaintiff is entitled.

IT IS SO ORDERED.

Dated: December 18,1996 _s/ Lourdes G. Baird

3 LOURDES G. BAIRD

United States District Judge

26a

APPENDIX C — ORDER OF THE UNITED STATES

DISTRICT COURT FOR THE CENTRAL DISTRICT

OF CALIFORNIA RE DEFENDANTS’ MOTIONS

FOR JUDGMENT AS A MATTER OF LAW AND FOR

A NEW TRIAL DATED AUGUST 10, 1994

AND FILED AUGUST 11, 1994

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

CV 92-1177 LGB (GHKx)

THREE BOYS MUSIC CORP.,

Plaintiff,

MICHAEL BOLTON, et al.,

Defendants.

ORDER RE: DEFENDANTS’ MOTIONS FOR JUDGMENT

AS A MATTER OF LAW AND FOR A NEW TRIAL

Defendants’ motions for judgment as a matter of law

and for a new trial came on regularly for hearing before this

Court on July 11, 1994. After reviewing the materials

submitted by the parties, argument of counsel, and all other

matters presented to the Court, it is hereby ORDERED that

Defendants’ motions are DENIED.

27a

Appendix C

I. Background

Plaintiff, Three Boys Music Corporation, filed this

Michael Bolton (“Bolton”), Andrew Goldmark (“Goldmark”),

and various corporations with which Bolton and Goldmark

are affiliated.

In 1990 Bolton and Goldmark wrote a song entitled

“Love Is A Wonderful Thing” (“Defendants’ song”), which

was released in 1991 both as a “single” and as a part of

Defendants’ album “Time Love And Tenderness.” In 1964,

Ronald, O’Kelley, and Rudolph Isley (the “Isley Brothers”) also

wrote a song entitled “Love Is A Wonderful Thing” (“Plaintiffs

song”) which was released as a single in 1966. The purported

that Defendants’ song infringes Plaintiffs song.

The first two phases of a three-phase trial proceeding

occurred in April of 1994. In the first phase, the jury was

asked to determine whether Defendants infringed Plaintiff's

purported copyright. On April 25, 1994, the jury made this

finding in the affirmative. In the second phase, the jury was

called on to determine what percentage of the revenues

derived from sales of the album “Time Love And

Tenderness” were attributable to the inclusion in that album

of the song “Love Is A Wonderful Thing,” and what portion

of the profits from commercial uses of the song “Love Is A

Wonderful Thing” were attributable to the inclusion in that

song of elements that infringed Plaintiff's song. On April

29, 1994 the jury found 28% as to the first question, and

28a

Appendix C

66% as to the second question. In the third phase, which is

pending, a Special Master will determine issues relating to

the profits realized by each of the defendants from the sales

of the album and the single.

On May 9, 1994 this Court entered judgment in favor of

Plaintiff and against Defendants as to the findings made in

the first two phases. On May 11, 1994 the Court sent out a

Minute Order which gave Defendants until May 25, 1994 to

file post-trial motions. On May 25, 1994 Defendants filed a

motion for judgment as a matter of law and a motion for a

new trial.' These motions are now before the Court. This

1. Plaintiff argues that because Defendants filed their motions

more than 10 days after the date this court entered judgment against

Defendants, Defendants’ motions are late and cannot be considered.

(J.N.O.V. Opp. at 2; New Trial Opp. at 2.) Ordinarily, such motions

must be filed within 10 days after entry of judgment. See Federal

Rules of Civil Procedure 50(b), 59(b). Furthermore, Rule 6(b) provides

that such time limit may not be enlarged by the district court.

However, the May 6, 1994 judgment entered by this court was

not a final judgment as damages have still not been determined. See

Liberty Mut. Ins. Co. v. Wetzel, 424 U.S. 737, 744 (1976); Balla v.

Idaho State Bd. of Corrections, 869 F.2d 461, 467 (9th Cir. 1989).

Furthermore, in Eady v. Foerder, 381 F.2d 980 (7th Cir. 1967), the

Seventh Circuit held that when a district judge extends the time

within which to file a motion for a new trial, and counsel relies to

his detriment on such an extension, the “unique circumstances” of

such reliance allow the district court to dispose of the motion before

it. Despite the debate surrounding Eady, see Varhol v. Nat'l R.R.

Passengers Corp., 909 F.2d 1557 (7th Cir. 1990), this Court is

inclined to follow it. Therefore, the Court will consider Defendants’

motions even if they have been filed beyond the time allowed in the

Federal Rules.

29a

Appendix C

Court has jurisdiction over this matter pursuant to 28 U.S.C.

§ 1338(a).

III. Defendants’ Motion for Judgment as a

Matter of Law

A. Standard

Rule 50(b) of the Federal Rules of Civil Procedure

(“Rules”) provides:

Whenever a motion for judgment as a matter

of law made at the close of all the evidence is

denied or for any reason is not granted,[?] the court

is deemed to have submitted the action to the jury

Subject to a later determination of the legal

questions raised by the motion. Such a motion

may be renewed by service and filing not later

2. A motion for judgment as a matter of law made during the

course of trial (i.e., a motion for a directed verdict) is governed by

Rule 50(a)(1):

If during a trial by a jury a party has been fully heard

with respect to an issue and there is no legally sufficient

evidentiary basis for a reasonable jury to have found

for that party with respect to that issue, the court may

grant a motion for judgment as a matter of law against

that party on any claim ... that cannot under the

controlling law be maintained without a favorable

finding on that issue.

Defendants made such motions, and the motions were denied by

the Court.

30a

Appendix C

than 10 days after the entry of judgment. A motion

for a new trial may be joined with a renewal of

the motion for judgment as a matter of law, or a

new trial may be requested in the alternative. Ifa

verdict was returned, the court may, in disposing

of the renewed motion, allow the judgment to

stand or may reopen the judgment and either order

a new trial or direct the entry of judgment as a

matter of law. ...

The standard for passing on the question of whether judgment

should be granted as a matter of law is the same whether it

arises in the context of a motion for a directed verdict or

a motion for judgment notwithstanding the verdict

(“J.N.O.V.”). Kaplan v. Burroughs Corp., 611 F.2d 286, 290

(9th Cir. 1979), cert. denied, 447 U.S. 924 (1980); 9 Wright

& Miller, Federal Practice and Procedure § 2524 at 541-42

(1971 & Supp. 1993) [hereinafter “Wright & Miller’). The

Ninth Circuit has approved a formulation of the standard -

adopted by the Second Circuit:

Simply stated, it is whether the evidence is such

that, without weighing the credibility of the

witnesses or otherwise considering the weight of

the evidence, there can be but one conclusion as

to the verdict that reasonable men could have

reached.

Yeaman v. United States, 584 F.2d 322, 326 (9th Cir. 1978)

(quoting Simblest v. Maynard, 427 F.2d 1, 4 (2d Cir. 1970)).

Therefore, a motion for J.N.O.V. should not be granted “if

reasonable minds could differ over the verdict.” Peterson v.

3la

Appendix C

Kennedy, 771 F.2d 1244 (9th Cir. 1985), cert. denied, 475

U.S. 1122 (1986).

Defendants point out that the Ninth Circuit has also

employed a “substantial evidence” test under Rule 50:

In order to benefit from the favorable inferences

available under either the directed verdict or

j.n.0.v., a party must present “substantial

evidence,” defined as “evidence as a reasonable

mind might accept as adequate to support a

conclusion.”

Kaplan v. Burroughs Corp., 611 F.2d 286, 290 (9th Cir.

1979), cert. denied 447 U.S. 924 (1980).? However, as

Professors Wright & Miller have Stated, “[i]t is very doubtful

that the adjective [‘substantial’] adds anything of value,

particularly when, as in a leading case,[‘] ‘substantial’

evidence is defined in terms of evidence that would lead

reasonable men to different conclusions.”

3. The Ninth Circuit has also stated that “A district court may

grant j.n.o.v. only ‘if the evidence permits of only one reasonable

conclusion as to the verdict.’ ” Olson v. Nat’! Broadcasting Co.,

Inc., 855 F.2d 1446, 1448 (9th Cir. 1988) (quoting Garter Bare Co.

v. Munsingware, Inc., 723 F.2d 707, 709 (9th Cir. 1984), cert. denied,

469 U.S. 980 (1984)). Although the standard has various

formulations, a great number of cases are in essential agreement

with the Second Circuit’s formulation. See 9 Wright & Miller § 2524

at 546 n.41.

4. See Boeing Co. vy. Shipman, 411 F.2d 365, 374 (Sth Cir.

1969).

32a

Appendix C

No matter which standard is adopted, it is clear that the

Court is not free to weigh the evidence or pass on the

credibility of witnesses. Locricchio v. Legal Services Corp.,

833 F.2d 1352, 1356 (9th Cir. 1987); Yeaman, 584 F.2d at

326; see also 9 Wright & Miller § 2524 at 543-44. Instead,

the Court is to view the evidence most favorably to the party

against whom the motion is made, and give that party the

benefit of all reasonable inferences from the evidence.

Peterson, 771 F.2d at 1252; Wright & Miller § 2524

at 544-45.

B. Analysis

1. Access

Defendants first argue that Plaintiff failed to prove access

as a matter of law. (J.N.O.V. Motion at 4-21.) As the jury

was instructed, “[i]n order to establish access, plaintiff must

prove that the composers of defendants’ song had a

reasonable opportunity to have heard plaintiff's song before

they created defendants’ song.” See Court’s Instruction No.

20;° Meta-Film Associates, Inc. v. MCA, Inc., 586 F.Supp.

1346, 1355 (C.D. Cal. 1984); Jason v. Fonda, 526 F.Supp.

774 (C.D. Cal. 1981), aff'd, 698 F.2d 966 (9th Cir. 1982).

Furthermore, if Plaintiff proves that “there is only a bare

possibility — as distinguished from a reasonable opportunity

— that the composers of defendants’ song heard plaintiff's

5. References to jury instructions issued in Phase I of the trial

will be to “Court’s Instruction No. __.” References to jury

instructions issued in Phase II of the trial will be to “Court’s

Instruction No. _ — Phase II.”

33a

Appendix C

song before they composed defendants’ song,” then Plaintiff

has not met its burden. See id.

The evidence shows that when Plaintiff's song was

released in 1966, Bolton and Goldmark, ages thirteen and

fifteen respectively, were living in Connecticut. (Tr. at

468-70.)° Bolton testified at deposition prior to trial that he

loved Black singer’s singing since he was probably 10 or

11, and at trial he testified that he “appreciated a lot of Black

singers.” (Tr. at 468-69.) He also testified that he was the

lead singer for bands that did “covers” (i.e., second

recordings) of Black singers. (Tr. at 470-71.) Furthermore,

Bolton testified that his brother had a “pretty good collection”

of Rhythm & Blues (“R&B”) records, and that Bolton was

familiar to some extent with songs by the Isley Brothers from

the 1960s through the 1990s. (Tr. at 475.) In total, a

reasonable jury could find that Bolton closely followed the

work of Black R&B artists.

Testimony was also introduced regarding the extent to

which Plaintiff's song was disseminated. Jerry Bletsoe

testified that he came to New York as a Disc Jockey in 1967,

and that at that time the stations in New York were playing

Plaintiff's song.’ (Tr. at 1024.) Bletsoe also testified that he

played Plaintiff's song twice on a television show called

“Soul.” When asked whether the program aired in

6. References to the transcript of record for Phase I of the trial

will be to “Tr. at __.” References to the transcript of record for

Phase II of the trial will be to “Tr. Phase II at eee

7. Goldmark testified that he listened to New York stations

while growing up. (Tr. at 844.)

34a

Appendix C

New Haven Connecticut, Bletsoe stated “I would imagine

so, it was on all of the public broadcasting systems

throughout the country.”* (Tr at 1024.) Furthermore, Jerry

Blavitt, another disc jockey, testified that he played

Plaintiff's song 5 or 6 times in a 13-week period on a

television show called “The Discophonic Scene,” which,

he stated, aired in Philadelphia, New York, and Hartford/

New Haven.’ (Tr. at 586-89.) He further testified that he aired

it on a radio station at least 2 or 3 times a week, and that the

station is still playing the song today.'® (Tr. at 586-89.)

Finally, Rodney Jones testified that Plaintiff's song was

played a minimum of 4 times a day during either an 8 week

or 14 to 24 week period at his radio station WVON, and that —

it would have been placed in an “oldie” category, which

means that it could still be played today. (Tr. at 690-91.)

8. Defendants contend that such an assertion is speculative.

However, no objection or motion to strike was made by Defendants

at trial.

9. When asked how he knew that “The Discophonic Scene”

aired in Hartford/New Haven, Blavat stated that the station which

produced the show also owned a station in Hartford/New Haven,

Connecticut, and that “naturally” the show would be aired at the

Connecticut station. (Tr. at 586-87.) Defendants contend that this is

a mere speculative assumption. However, no objection or motion to

strike this statement was made by Defendants at trial.

10. Defendants have attempted to impeach both Bledsoe’s and

Blavat’s assertions that “Soul” and “The Discophonic Scene” aired

in New Haven, Connecticut by introducing issues of the “TV Guide.”

However, credibility determinations must be resolved by believing

the testimony of the nonmoving party’s witnesses.

35a

Appendix C

Finally, prior statements made by Bolton himself were

introduced which suggest that Bolton may have heard

Plaintiff's song prior to recording Defendants’ song. For

example, Ronald Isley testified that when Bolton saw Isley

at the Lou Rawls benefit concert in 1988, Bolton said,

“I know this guy. I go back with him, I have all of his stuff.”

(Tr. at 404.) Also, a work tape used by Bolton and Goldmark

in creating their song was introduced into evidence. On this

tape, Bolton asks Goldmark whether the song they were

creating was “Some Kind Of Wonderful” by Marvin Gaye.

This statement suggests that Bolton was contemplating the

possibility that the work he and Goldmark were creating, or

at least a portion of it, belonged to someone else, but that

Bolton wasn’t sure who it belonged to. A reasonable jury

can infer that Bolton mistakenly attributed the work to

Marvin Gaye, when in reality Bolton was subconsciously

drawing on Plaintiff's song.

Based on all of the foregoing, this Court is not in a

position to find that the only conclusion that a reasonable

jury could have reached is that Defendants did not have

access to Plaintiff's song. One must remember that the issue

this Court must address is not whether Plaintiff has proven

access by a preponderance of the evidence, but whether

reasonable minds could find that Defendants had a

reasonable opportunity to have heard Plaintiffs song before

they created their own song.

2. Substantial Similarity

Defendants next argue that because all of the alleged

similarities between Plaintiff's song and Defendants’ song

36a

Appendix C

consist of common, unprotectible elements, there can be no

substantial similarity of protected expression as a matter of

law. (J.N.O.V. Motion at 21-28.)

In Sid & Marty Krofft Television v. McDonald's Corp.,

562 F.2d 1157 (9th Cir. 1977), the Ninth Circuit set forth a

two part test for determining substantial similarity under

of copyright infringement is permitted only if plaintiff

satisfies both the extrinsic and intrinsic tests. Shaw v.

Lindheim, 919 F.2d 1353, 1356 (9th Cir. 1990). The extrinsic

test is an objective analysis of similarity in ideas and

expression which rests upon specific criteria that can be listed

or analyzed (“analytic dissection”). Brown Paper Bag

Software v. Symantec Corp., 960 F.2d 1465, 1475 (9th Cir.

1992), cert. denied, U.S. _, 113 S.Ct. 198 (1992). The

intrinsic test is used to “measure similarity in expressions

... depending on the response of the ordinary reasonable

person.” Krofft, 562 F.2d at 1164. A court must determine

“whether the ordinary person would find the total concept

and feel of the works” to be substantially similar. Pasillas v.

McDonald's Corp., 927 F.2d 440, 442 (9th Cir. 1991).

Normally, the intrinsic test does not employ analytic

dissection. Krofft, 562 F.2d at 1164. However, if analytic

dissection demonstrates that all similarities in expression

arise from the use of common ideas, or are standard elements

derived from a common idea, then the intrinsic test may not

be satisfied. Pasillas, 927 F.2d at 443; Olson v. National

Broadcasting Co., Inc., 855 F.2d 1446, 1453 (9th Cir. 1988).

Furthermore, in Shaw v. Lindheim, 809 F.Supp. 1393, 1403

(C.D. Cal. 1992), this district, citing the Supreme Court’s

37a

Appendix C

recent decision in Feist Publications, Inc. v. Rural Ti elephone

Services Co., 499 U.S. 340 (1991), stated that “substantial

similarities between unprotected elements ... cannot be

used to find substantial similarities in the protectible

expression of two works.”

Plaintiff's expert witness, Gerald Eskelin, testified that

the infringing elements in Defendants’ song consist of:

(1) the title-hook phrase, which in turn encompassed the

elements of the lyric, the rhythm, and the pitch series;

(2) the shifted cadence; (3) the instrumental figures; (4) the

verse/chorus relationship; and (5) the fade ending, or “coda.”

(Tr. at 607.) Eskelin then stated:

Now, any of these items considered by itself is

not unusual. | think it’s very important that we

understand that right up front. I’m not saying that

any one of these individual items is unusual.

Some of them are very common. What is unusual,

and absolutely extremely unusual, is to have all

of these significant elements in two separate pieces.

And that is the basis for my testimony here.

(Tr. at 608.) Eskelin further stated:

. . . [H]ere’s the bottom line. All of these elements

that we talked about in common between the Isley

song and the Bolton-Goldmark song are each

individually very common, and if we were just

talking about one or two or three of these, we

probably would not be here today.

38a

Appendix C

Individually, as I said, all of the individual

elements are fairly commonplace, but the

combination of elements makes the Isley

composition a protectible expression.

(Tr. at 658-59.) Defendants contend that because Plaintiff's

expert has admitted that all of the alleged similarities between

Plaintiff's song and Defendants’ song consist of common

elements, there can be no substantial similarity of protected

expression as a matter of law.

The cases cited above do in fact support the proposition

that common elements are not protected by copyright.

However, this proposition does not mean that an artist cannot

receive copyright protection in an original compilation of

common elements. The Shaw court’s citation of Feist is

particularly relevant here. In Feist the Supreme Court began

by setting forth two “well-established” propositions: “The

first is that facts are not copyrightable; the other, that

compilations of facts generally are.” Feist, 499 U.S. at 344.

The Court then went on to state:

There is an undeniable tension between these two

propositions. Many compilations consist of

nothing but raw data — i.e., wholly factual

information not accompanied by any original

written expression. On what basis may one claim

a copyright in such a work? Common sense tells

us that 100 uncopyrightable facts do not magically

change their status when gathered together in one

place. Yet copyright law seems to contemplate

that compilations that consist exclusively of facts

are potentially within its scope.

39a

Appendix C

Id. at 345. The Court resolved this tension in the following

manner:

. . . Copyright treats facts and factual compilations

in a wholly consistent manner. F acts, whether

alone or as part of a compilation, are not original

and therefore may not be copyrighted. A factual

compilation is eligible for copyright if it features

an original selection or arrangement of facts, but

the copyright is limited to the particular selection

or arrangement.

Id. at 350-51.'' The Court then applied this holding iv the

facts of the case, and found that an alphabetical listing of

addresses in a white pages directory involved no creativity,

and therefore did not qualify for copyright protection. Jd. at

361-64.

Although the facts in Feist are different than those in

the instant case, the holding nonetheless applies here.

Distilling the Court’s holding to its essence, the Court found

that although copyright protection does not extend to

individual uncopyrightable elements of a work, the

compilation and arrangement of uncopyrightable elements

in an original manner is protected.

11. See also Apple Computer, Inc. v. Microsoft Corp., 779

F.Supp. 133, 135-36 (N.D. Cal. 1991) (“Because there ought to be

preexisting works, elements which have been deemed ‘unprotectible’

should not be eliminated prior to the substantial similarity of

expression analysis.”).

40a

Appendix C

Eskelin testified that “the combination of elements

makes the Isley composition a protectible expression.” (Tr.

at 659.) Therefore, Plaintiff's expert testimony is not contrary

to a finding of copyright infringement.'? Furthermore, the

jury was instructed as follows:

All of the elements of expression of the ideas

contained in a copyrighted song are not

necessarily protected by the copyright in the song.

For example, the copyright in a song does not

protect those elements of expression that were not

original to its composers. Also not protected by

the copyright in a song are those elements of

expression of the song’s ideas that are the result

of its composers having developed and expressed

their ideas in a stock or commonplace manner.

Thus, elements of expression in plaintiff's song

that result from its composers having employed

_ compositional methods or materials that are stock

methods or commonplace materials for the

composition of musical works are not protected

by the copyright in plaintiff's song and may be

freely copied.

12. Defendants argue that Eskelin never compared the

combination of the elements in Plaintiff's song with the combination

of the elements in Defendants’ song. (Reply at 15.) However, Eskelin

did testify that “[w]hat is unusual, and absolutely extremely unusual,

is to have all of these significant elements in two separate pieces.”

(Tr. at 608.) Furthermore, the jury was free to make such a

comparison themselves, and this Court cannot find that no reasonable

jury could have found that such a comparison lead to the conclusion

of copying.

4la

Appendix C

(Court’s Instruction No. 22.) Therefore, regardless of what

Eskelin stated, the jury was instructed that stock or

commonplace methods or materials are not protectible.

Assuming that the individual elements in the two songs were

in fact commonplace, this Court can presume that the jury

followed the instructions and found infringement based on a

unique compilation of those common elements.

Also, despite Eskelin’s testimony supra, Eskelin testified

later in the trial (based on his inspection of prior art in the

interim) that many of the alleged similarities “are not as

common as | had previously thought.” (Tr. at &28-29.)

Therefore, Eskelin’s testimony is not completely inconsistent

with a finding of infringement of individual elements.

Defendants argue that even if the elements in Plaintiff's

song are not common, there is no substantial similarity

between Plaintiff's song and Defendants’ song. (J.N.O.V.

Motion at 28-29.) However, Dr. Eskelin testified at length

as to the similarities between the two songs. Furthermore,

this Court cannot find that a reasonable jury having heard

the two songs could only come to the conclusion that the

songs are dissimilar.

3. Independent Creation

Defendants argue that even if the jury found that Bolton

and Goldmark had access to Plaintiff's song, and that the

two songs were substantially similar, Defendants are

nonetheless entitled to judgment as a matter of law because

the evidence of independent creation far outweighs the

evidence of copying. (J.N.O.V. Motion at 29-34.)

42a

Appendix C

If a plaintiff offers proof that the defendant had access

to his work and that the two works are substantially similar,

then a rebuttable presumption of copying by the defendant

arises. Granite Music Corp. v. United Artists Corp., 532 F.2d

718, 721 (9th Cir. 1976). A defendant may rebut such a

presumption by offering evidence that the song was

independently created. Jd. Therefore, even if Defendants did

meet their burden of coming forward with evidence of

independent creation, this would only act to remove the

presumption of copying. It would then be for the jury to

determine based on its consideration of all of the evidence

whether Defendants copied Plaintiff's song.

Defendants’ evidence of independent creation includes

the work tape used by Bolton and Goldmark to compose

Defendants’ song (J.N.O.V. Motion at 31-32), the prior ar

of Bolton, Goldmark, and other artists (J.N.O.V. Motion at

32-34), the fact that portions of Defendants’ song were

created by Walter A fanasieff who testified that he had never

heard Plaintiff's song (J.N.O.V. Motion at 34), and Bolton’s

and Goldmark’s history in composing songs. (J.N.O.V.

Motion at 34.) This evidence, when compared with Plaintiff's

evidence of subconscious copying, is insufficient for this

Court to conclude as a matter of law that Defendants must

prevail. This Court is not in 2 position to find that Defendants’

evidence is so compelling that no reasonable factfinder could

conclude that Defendants copied Plaintiff's song.

4. Complete Copy

Finally, Defendants argue that no reasonable jury could

have concluded that Plaintiff deposited a “complete copy”

of Plaintiff's song with the Copyright Office.

43a

Appendix C

The Court instructed the jury on this issue as foilows:

In order to register a song with the Copyright

Office, the applicable Copyright law requires that

a “complete copy” of the song be deposited with

the Copyright Office at the time of registration.

In order for the copy of Plaintiff's musical

. composition submitted with the Copyright Office

to be sufficiently “complete,” the copy must

consist of the entire composition, as opposed to a

mere outline or summary. Trivial or technical

omissions from the composition on deposit do not

render the deposit incomplete.

(Court’s Instruction No. 15.) Defendants argue that the

melodic settings of the title phrases in the deposit copy are

different than the melodic settings of the title phrases in

Plaintiff's song. (J.N.O.V. Motion at 35.) Furthermofe,

Defendanis introduce testimony from Eskelin that-the deposit

copy does not include an introduction, instrumental figures,

or a coda; elements which are included in Plaintiff's song.

(Tr. 759-61.)

However, Eskelin also testified that:

I looked at the deposit copy, and it has the

essential elements of the song, “Love Is A

13. Defendants also argue that Eskelin admitted that 16 of the

29 pitches are different in the chorus of the deposit copy than the

chorus of the recording. (Reply at 18-19.) However, the transcript

is confusing on this point (see Tr. at 759), and does not necessarily

support such a proposition.

44a

Appendix C

Wonderful Thing” as recorded. There are

differences in details, but that doesn’t matter.

There are always differences of details, but the

essence of the song on the deposit copy is there

and that is what was recorded on the album.

(Tr. at 662.) Furthermore, when asked what was included in

the deposit copy, Eskelin stated: “Verses, chorus, lyrics,

chorus music, pitches. It’s all there.” (Tr. at 662.)

This Court would be going beyond its province for it to

conclude that a reasonable jury could not find, either based

on Eskelin’s testimony or based on its own comparison of

the deposit copy with Plaintiffs song, that the deposit copy

was sufficiently complete.

C. Conclusion

—

For all of these reasons, this Court hereby ORDERS

Defendants’ motion for judgment as a matter of law is

DENIED.

IV. Defendants’ Motion for a New Trial

A. Generally

Federal Rule 59(c) provides:

A new trial may be granted to all or any of

the parties and on all or part of the issues . . . in

an action in which there has been a trial by jury,

for any of the reasons for which new trials have

45a

Appendix C

heretofore been granted in actions at law in the

Courts of the United States.

The ultimate goal in granting a motion for a new trial is to

prevent a miscarriage of justice. 1] Wright & Miller § 2803,

at 31. Such a motion may be made on several grounds,

including the insufficiency of the evidence and the

misconduct of counsel. See Central District of California

Local Rule 15.1 ( 1993), Defendants have moved on both of

these grounds.

B. Insufficiency of the Evidence

1. Standard

A stringent standard applies when the motion is based

on the insufficiency of the evidence. Venegas v. Wagner,

831 F.2d 1514, 1519 (9th Cir. 1987); Digidyne Corp. v. Data

General Corp., 734 F.2d 1336, 1347 (9th Cir. 1984), cert.

denied, 473 U.S. 908 (1985). A motion for a new trial may

be granted on this ground “only if the verdict is against the

‘great weight’ of the evidence or ‘it is quite clear that the

jury has reached a seriously erroneous result.’ ” Jd. (quoting

Digidyne, 734 F.2d at 1347); see also William Inglis & Sons

Baking Co. v. ITT Continental Baking Co., Inc., 668 F.2d

1014, 1027 (9th Cir. 1981), cert denied, 459 U.S. 825 (1982)

(“[A] new trial may be ordered by the district court if, in its

opinion, the jury’s verdict was clearly contrary to the weight

of the evidence.”).

Nonetheless, the standard for granting a new trial is lower

than that for granting a motion for judgment as a matter of

46a

Appendix C

law. For example, the existence of substantial evidence does

not prevent a court from granting a motion for a new trial if

the verdict is against the clear weight of the evidence. Landes

Constr. Co., Inc. v. Royal Bank of Canada, 833 F.2d 1365,

1371 (9th Cir. 1987). Furthermore, the district judge may

weigh the evidence and assess the credibility of the witnesses,

and need not view the evidence from the perspective most

favorable to the prevailing party. Jd. A judge should balance

her duty to prevent a miscarriage of justice with a decent

respect for the collective wisdom of the jury.'* Jd. (quoting

Wright & Miller § 2806, at 49). Ultimately, the decision

whether to grant a new trial rests in the trial judge’s sound

discretion. Murphy v. City of Long Beach, 914 F.2d 183,

186 (9th Cir. 1990); Natural Resources, Inc. v. Wineberg,

349 F.2d 685, 691 (9th Cir. 1965), cert. denied, 382 U.S.

1010 (1966).

14. Defendants argue that this Court should give the jury no

deference in light of its alleged clearly erroneous findings on the

issues of independent creation and apportionment, as well as in light

of the questions it submitted to the Court. (New Trial Motion at

43-45.) However, even assuming that the jury’s verdict on some

issues was against the clear weight of the evidence, no authority

supports the proposition that this should impugn its findings on all

other issues. The time-honored policy of giving deference to the

jury’s findings militates against such a rule. As to the questions the

jury submitted to the Court, these questions suggest that the jury

was struggling over its verdict, and do not, as Defendants argue,

show that the jury was incapable or unwilling to perform its function.

In any event, the ultimate issue is whether upholding the jury’s

verdict would be a miscarriage of justice. In making such decision,

this Court will consider all of the circumstances, and will not follow

any hard and fast rules.

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Appendix C

2. Access

Defendants first argue that the jury’s verdict on the issue

of access is against the clear weight of the evidence.

Defendants contend that the testimony of Jerry Bletsoe and

Jerry Blavitt, discussed supra, is insubstantial and

speculative (New Trial Motion at 4-5), that the evidence of

live performances of Plaintiff's song is weak (New Trial

Motion at 6-7), that Ronald Isley’s account of Bolton’s

Statements at the Lou Rawls Benefit is inconsistent with

Isley’s answer to an interrogatory (New Trial Motion at 8),

and that the evidence of lack of access" is substantial. (New

Trial Motion at 9-1 1.)

However, after considering and weighing all of the

evidence presented by both parties, this Court does not find

that a jury’s verdict that Bolton and Goldmark had a

“reasonable opportunity” to have heard plaintiff's song

before they created their own song is against the “great

weight” of the evidence, or that it is quite clear that the jury

has reached a “seriously erroneous” result. To uphold the

jury’s finding on this issue would not result in a miscarriage

of justice.

—

3. Substantial Similarity

Next, Defendants argue that the jury’s verdict finding

substantial similarity of protectible expression is against the

15. This evidence consists mostly of testimony by Bolton,

Goldmark, Lamont Dozier, Bruce Morrow, and Billy Vera that they

had never heard Plaintiff's song until the time of trial.

48a

Appendix C

clear weight of the evidence. (New Trial Motion at 11-15.)

Defendants argument is directed at the credibility of

Plaintiff's expert witness, Gerald Eskelin, as compared to

Defendants’ expert witness, D. Anthony Ricigliano. At most,

Defendants have shown that Eskelin’s testimony was not

flawless. However, they have not given this Court a basis to

completely ignore his testimony, and this Court cannot

conclude that believing his testimony over the testimony of

Ricigliano would result in a miscarriage of justice.

Eskelin testified at length as to similarities between

Defendants’ song and Plaintiff's song. Furthermore, the jury

had an opportunity to make its own comparison of the two

songs independent of any expert testimony. Therefore, the

evidence of substantial similarity is not against the clear

weight of the evidence.

4. Copying

Defendants next argue that in light of Defendants’

evidence of independent creation, the jury’s finding that

Defendants copied Plaintiff's song is against the great weight

of the evidence. (New Trial Motion at 15-20.) Like their

argument in connection with substantial similarity,

Defendants’ argument here is directed at the credibility of

Eskelin’s testimony.

Again, the testimony of Eskelin was not so inconsistent

or otherwise untrustworthy that this Court should ignore it

in its entirety. Furthermore, Defendants had the opportunity

at trial to thoroughly cross-examine Eskelin and challenge

his testimony. Taking into consideration Eskelin’s testimony

49a

Appendix C

as to the similarities between the Plaintiff's song and

Defendants’ song, and also considering the substance of the

songs themselves (regardless of the testimony of the experts),

this Court concludes that the jury’s verdict on the issue of

copying is not against the great weight of the evidence.

5. Apportionment

Defendants next argue that they are entitled to a new

trial with respect to the apportionment of profits. Once the

jury returned a verdict finding that Defendants copied

Plaintiff's song, Phase II of the trial was held at which the

jury was given the following instruction:

The owner of the copyright in a song that has

been infringed is entitled to recover those profits

of the defendants that are attributable to

defendants’ use of material from the copyrighted

song which infringes its copyright.

Therefore, in dealing with the profits realized

from the sales of a record album which includes

both a song that infringes a copyrighted song and

several songs that are not infringing, you must

first determine in percentage terms what portion

of the profits from the sales of that album were :

exclusively attributable to the inclusion of the

infringing song. In making this determination you

should consider what portion of the profits from

the sale of the album were attributable to the

inclusion of songs other than the song “Love is a

co Wonderful Thing,” and other factors that may

50a

Appendix C

have motivated members of the public to buy the

album.

Once you have determined the percentage of

the profits attributable exclusively to the inclusion

of the song “Love is a Wonderful Thing” on the

“Time, Love and Tenderness” album, you must

then make a second finding. This finding requires

you determine what percentage of the profits from

commercial uses of Defendant’s song is

attributable to the inclusion in that song of

elements that infringe Plaintiff's song, and what

percentage is attributable to noninfringing

elements and other factors.

It is Defendant’s burden to prove the portion

of their profits that is not attributable to the

inclusion of Defendants’ song on the album and

the portion of their profits that is not attributable

to the inclusion in Defendants’ song of the

elements which you have found infringed

Plaintiff's song. However, Defendants are not

required to make such proof with certainty. All

that is required of Defendants is that they present

proof that reasonably approximates what portion

of their profits was not attributable to the inclusion

of Defendants’ song on the “Time Love and

Tenderness” album, and what portion of their

profits was not attributable to the inclusion in

Defendants’ song of the elements that you have

found infringe the copyright in Plaintiff's song.

Ee ey

Sla

Appendix C

(Court’s Instruction No. 15 — Phase II.) As to the first

questions presented to the jury (regarding the album), the

jury returned a verdict of 28%. As to the second question

(regarding the single), the jury returned a verdict of 66%.

a. The Album

Defendants first argue that the jury’s finding that the

song “Love Is A Wonderful Thing” was responsible for 28%

of the profits from sales of the album “Time Love And

Tenderness” is against the clear weight of the evidence.

(Motion at 21-24.) Defendants argue that this figure should

have been between 5 and 10 percent, as the only evidence

adduced on this issue Supported such a figure. -

Defendants called Richard Kudolla, the Senior Vice

President of Sony Music, who testified that based on Bolton’s

popularity, the success of other songs on the album,

advertising expenses incurred to promote the album, as well

as other factors, he was of the opinion that the song “Love Is

A Wonderful Thing” was responsible for between 5 and

10 percent of the profits of the album “Time Love And

Tenderness.” (Tr. Phase II at 37.) Defendants indicate that

in response, Plaintiff elicited evidence that the single “Love

Is A Wonderful Thing” was released 19 days before the

album was released and that Bolton had a telephone

promotion of the single on March 4, 199i. Defendants argue

that the remainder of Plaintiff's case consisted of an attack

on the credibility of Kudolla. Defendants therefore contend

that Plaintiff's evidence does not support the verdict.

Once the jury found that Defendants copied Plaintiff's

song, the burden was on Defendants “to prove his or her

52a

Appendix C

deductible expenses and the elements of profit attributable

to factors other than the copyrighted work.” 17 U.S.C.A.

§ 504(b) (1977). Therefore, there is an assumption that 100%

of the profits from sales of the album “Time Love And

Tenderness” were attributable to the song “Love Is A

Wonderful Thing,” and it is Defendants’ burden to defeat

that assumption with evidence or profit not attributable to

the song. Therefore, the fact that Plaintiff did not come

forward with evidence tying sales of the album to the song

does not, alone, mean that Defendants’ theory as to how much

_ profits were attributable to the song must be accepted.

The Court finds that based on a consideration of all of

the evidence presented, the jury’s finding that 28% of the

profits from the album “Time Love And Tenderness” were

attributable to the song “Love Is A Wonderful Thing” is not

against the clear weight of the evidence.

b. The Single

The jury found that the percentage of profits from

commercial uses of Defendant’s song attributable to the

inclusion in that song of elements that infringe Plaintiff's

song was 66%. Defendants argue that this finding is also

against the great weight of the evidence. (New Trial Motion

at 24-27.)

Defendants state that they offered evidence from Steve

Kingston, Program Director of WHTZ in New Jersey, that

in his opinion 10 to 15 percent of the success of the song

was attributable to the title motif and that none of the other

allegedly infringing elements contributed more than a

53a

Appendix C

de minimis amount. (New Trial Motion at 25.) Defendants

then indicate that Plaintiff argued that 100% of the profits

from commercial uses of Defendant’s song were attributable

to the inclusion in that song of elements that infringe

Plaintiff's song, but offered no evidence to support such an

assertion.

However, as discussed supra, the issue is not how much

evidence Plaintiff has presented to bring the percentage up

to 66 percent, but how much evidence Defendants: have

presented to bring the percentage down to 10 to 15 percent.

Once a defendant has been found liable for copyright

infringement, the burden does not rest on the plaintiff to

prove that the commercial success of the defendant’s song

was attributable infringing elements of that song. Instead,

the burden is on the defendant to prove that the commercial

success of the song was attributable to noninfringing

elements. See 17 U.S.C.A. § 504(b) (1977).

This Court finds that Kingston’s testimony was not so

convincing and compelling that a jury had no choice but to

reach the result of 10 to 15 percent. On the other hand, a

jury finding of 100 percent would clearly be beyond the pale.

Where in between these percentages the true percentage lies

is an extremely complicated question of fact that is not

capable of ready determination. Wherever such true figure

lies, this Court does not find that 66 percent is so far off

base as to be against the great weight of the evidence.

6. Complete Copy

Defendants next argue that the jury’s finding that

Plaintiff deposited a “complete copy” of Plaintiff's song

54a

Appendix C

with the Copyright Office is against the great weight of the

evidence. (New Trial Motion at 27.) In support of such

argument, Defendants incorporate by reference the argument

they made in connection with this issue in their motion for

judgment as a matter of law. Likewise, for the reasons

discussed in section III.B.4., supra, this Court finds that the

jury’s finding on this issue is not against the great weight of

the evidence.

7. Conclusion

For all of these reasons, the Court finds that the verdict

is not against the great weight of the evidence and that it is

not clear that the jury has reached a seriously erroneous

result. Therefore, the court hereby ORDERS that Defendants’

motion for a new trial based on insufficiency of the evidence

is DENIED.

Cc. Misconduct of Counsel

1. Standard

Defendants argue that the misconduct of Plaintiff's

counsel warrants a new trial. (Motion at 27-43.) To be granted

a new trial on this ground, the “ ‘flavor of misconduct must

sufficiently permeate an entire proceeding to provide

conviction that the jury was influenced by passion and

prejudice in reaching its verdict.’ ” Kehr v. Smith Barney,

Harris Upham & Co., Inc., 736 F.2d 1283, 1286 (9th Cir.

1984) (quoting Standard Oil Co. of California v. Perkins,

347 F.2d 379, 388.(9th Cir. 1965)). In making its decision, a

trial court should consider whether the misconduct occurred

55a

Appendix C

only during the argument phase of trial, whether the

misconduct was isolated rather than persistent, whether the

moving party objected to the misconduct and moved for a

new trial, and whether the award of damages was excessive.

Cooper v. Firestone Tire & Rubber Co. , 945 F.2d 1103, 1107

(9th Cir. 1991); Kehr, 736 F.2d at 1286. “Most motions for

a new trial on this ground are denied, either because the

conduct complained of, under the circumstances, was not

misconduct, or because it was not prejudie*al, or because it

was not objected to, or because any prejudice was cured by

the instructions of the court.” 11 Wright & Miller, § 2809,

at 61-64.

Counsel’s failure to object to misconduct at trial

precludes such an objection in a motion for a new trial.

See United States v. Socony-Vacuum Oil Co., 310 U.S. 150

(1940); Barzelis v. Kulikowski, 418 F.2d 869 (9th Cir. 1969)

(“[W]e have not yet so far abandoned the adversary system,

at least in civil cases, that counsel can sit by without objecting

when [an improper] argument is made, raise the question

for the first time after the argument or on a motion for a new

trial, end, after the motion is denied, expect us to reverse on

appeal.”). In Socony-Vacuum, the Supreme Court held that

counszl, during closing argument, “cannot as a rule remain

silent, interpose no objections, and after a verdict has been

returned seize for the first time on the point that the comments

to thejury were improper and prejudicial.” Socony-Vacuum,

310 US. at 238-39. “Only in extraordinary situations, in

order to prevent a ‘plain miscarriage of justice,’ will a

reviewing court reverse a judgment based upon errors not

objected to at trial.” Lange v. Schultz, 627 F.2d 122, 127

(8th Gr. 1980); see also Socony-Vacuum, 310 U.S. at 239.

56a

Appendix C

2. Access

Defendants first argue that counsel for Plaintiff

repeatedly mischaracterized the evidence regarding access

in his opening and closing arguments. (New Trial Motion at

_ 28-29, 33-37.) However, counsel for Defendants never

objected to these alleged mischaracterizations, and never

moved for a mistrial on this ground. Furthermore, the alleged

misconduct consists mostly of argumentative inferences

drawn by Plaintiff's counsel which do not so mischaracterize

the evidence as to warrant a new trial.

For example, Defendants state that Plaintiff's counsel

repeatedly argued that Bolton testified that “the song

thereafter wrote itself.” (New Trial Motion at 34-35.)

Bolton’s actual testimony was that “the song in itself in a

way writes itself.” (Tr. at 923.) Defendants argue that

“fo]bviously, Mr. Bolton never said, in words, substance, or

effect, ‘the song thereafter wrote itself.’ ” (New Trial Motion

at 34-35.) However, if counsel in closing argument was held

to the exact words, substance, and effect of testimony elicited

during trial, argument would be useless, and new trials would

be the norm. Furthermore, Defendants had the obligation to

object to any alleged mischaracterizations, and had the right

to explain them during their own closing argument.

Defendants also argue that Plaintiff's counsel repeatedly

and deliberately asked witnesses misleading questions to

produce a favorable result. (New Trial Motion at 29-33.)

Again, counsel for Defendants rarely objected to the

questioning now complained of, and when their was an

objection, the objection was sustained and the question either

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Appendix C

suppressed or modified. A party cannot sit on his rights at

trial with the expectation that if he wins, he wins, but if he

loses, then he will simply assert his rights after trial and

eventually get a second bite at the apple. See Barzelis, supra.

Furthermore, the questioning complained was not so

prejudicial as to require a new trial.

3. Race

Defendants next argue that Plaintiff injected race into

the proceedings by making a frivolous Batson challenge

before trial, and by repeatedly asking questions and making

argument about how Bolton emulated Black musicians. (New

Trial Motion at 37-39.) Defendants suggest that the motive

for doing this was to “introduce an inappropriate racial

component into this case.” (New Trial Motion at 39.)

However, “injecting race” into a trial cannot per se prejudice

a party. Defendants have offered no theory as to how

Plaintiff's conduct adversely affected the jury such that

allowing the verdict to stand would amount to a miscarriage

of justice. Whether Bolton emulated Black artists goes

directly to the issue of access, and Plaintiffs introduction

of evidence to that effect is certainly not grounds for a new

trial.

4. Deposit Copy

Defendants next argue that Plaintiff’s counsel’s

examination of Plaintiff's expert, Gerald Eskelin, on the issue

of whether Plaintiff had submitted a complete copy of its

"song with the Copyright Office was prejudicial. (New Trial

Motion at 39.) Defendants argue that Plaintiff's counsel

58a

Appendix C

asked Eskelin whether the copy of Plaintiff's song on file

with the Copyright Office was “sufficiently complete to

identify” Plaintiff's song. Defendants assert that this was

not an issue for the jury to decide, and therefore the jury

was misled. Although the ulfimate issue for the jury to decide

was whether the copy of Plaintiff's song on file with the

the question Eskelin answered was irrelevant. Whether the

copy of the song on file with the Copyright Office was

“sufficiently complete to identify” Plaintiff's song may have

been helpful to the jury in determining whether a “complete”

copy was on file. For this reason, the Court overruled

Defendants’ objection when this question was posed to

Eskelin. (Tr. at 793.)

Defendants also argue that Plaintiffs counsel’s argument

to the jury on the issue of whether Plaintiff had submitted a

complete copy of its song with the Copyright Office was

prejudicial. (New Trial Motion at 39.) Defendants assert that

during Plaintiffs counsel’s closing argument in rebuttal,

when it was too late for Defendants to respond, Plaintiff's

counsel argued that the Copyright Office never rejected

Plaintiff's song as incomplete, and that therefore it must have

been complete. Defendants argue that the Copyright Office’s

acceptance of materials has nothing to do with whether or

not they are complete. Although Defendants did not have a

chance to argue in response, they did have a chance to object

at trial. They failed to do so (Tr. at 1511), and such failure

precludes them from now seeking a new trial.

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Appendix C

5. Apportionment

Finally, Defendants argue that during his closing

argument in the apportionment phase of the trial, Plaintiff's

counsel repeatedly misstated facts and attempted to put

evidence in the record without any factual basis. (New Trial

Motion at 40-43.) Defendants point to only two statements

made by Plaintiff's counsel during closing to which

Defendants objected. First, Plaintiff's counsel argued that

Defendants “spent $500,000 advertising to get that song

going so that it would make the album.” (Tr. Phase II

at 149.) Second Plaintiffs counsel stated that no album since

“Time Love And Tenderness” has sold what “Time Love

And Tenderness” sold. (Tr. Phase II at 150.) Neither of these

Statements had any foundation in the evidence, both were

objected to, and both objections were sustained. In fact, the

Court admonished Plaintiff's counsel at side bar after the

second statement was made. (Tr. at 150-51 .) Although it was

error for Plaintiff to make such statements, such error was

not so prejudicial as to require a new trial.

Defendants also argue that Plaintiff's counsel sought to

appeal to the jury’s sympathies by referring to Defendants

as “big corporate defendants.” (New Trial Motion at 41 -43.)

However, Defendants themselves employed the same

strategy by arguing in closing that Bolton does countless

hours of work for charitable causes, that he is the chairman

of various charitable foundations, that he is dedicated to

helping children, and that he cares for two daughters who

live with him. (Tr. at 1482, 1504.) In any event, Plaintiff's

counsel only referred to Defendants as “the corporate

defendants” and did not expressly appeal to the jury’s

60a

Appendix C

sympathies in this regard.'*® (Tr. at 142-45.) Furthermore, the

statements were not objected to and were not prejudicial.

Therefore, they do not offer grounds for a new trial.

6. Conclusion

For all of these reasons, the Court finds that any

misconduct on the part of Plaintiff’s counsel did not

sufficiently permeate the trial to provide conviction that the

jury was influenced by passion and prejudice in reaching its

verdict. See Kehr, supra. Therefore, the Court hereby

ORDERS that Defendants’ motion for a new trial based on

misconduct of counsel is DENIED.

SO ORDERED.

Dated: Aug. 10, 1994 s/ Lourdes G. Baird

LOURDES G. BAIRD

United States District Judge

16. The authority cited by Defendants is therefore distinguishable.

See Draper v. Airco, Inc., 580 F.2d 91, 95 (3d Cir. 1978) (granting

a new trial because counsel for Plaintiff “repeatedly made reference

to the wealth of the defendants in contrast to the relative poverty of

the plaintiff.”); City of Cleveland v.-Peter Kiewit Sons’ Co., 624

F.2d 749, 756 (6th Cir. 1980) (“[C]Jounsel for the [plaintiff] almost

continuously sought to plant the seeds in the minds of the jurors

that [the defendant] was a very large corporation with international

operations.”); Brownlee v. United Fidelity Life Ins. Co., 117 F.R.D.

383, 387 (S.D. Miss. 1987), aff'd, 854 F.2d 1319 (Sth Cir. 1988)

(granting motion for new trial where statements made by counsel

for plaintiff in closing included: “A corporation is created by man.

It aint got no heart thumping in its big hairy chest. He hasn’t got no

soul worried about getting to heaven. It aint worried about hell itself.”’).

6la

APPENDIX D — ORDER AND JUDGMENT OF THE

_UNITED STATES DISTRICT COURT FOR THE

CENTRAL DISTRICT OF CALIFORNIA RE PHASE II

DATED AND FILED APRIL 29, 1994, AND DATED

AND FILED MAY 6, 1994, RESPECTIVELY

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

CV 92-1177 LGB (GHKx)

THREE BOYS MUSIC CORP.,

Plaintiff,

MICHAEL BOLTON, et al.,

Defendants.

ORDER RE: PHASE II

SPECIAL VERDICT FORM

The Court hereby issues the following Special Verdict

Form for Phase II of the trial: ;

We, the jury in the above entitled action, find the

following special verdict on the following questions

submitted to us:

62a

Appendix D

Question 1

What percentage of the profits derived from the sale of

the album “Time, Love and Tenderness” is attributable to

the inclusion of the song “Love Is A Wonderful Thing” on

that album?

28%

Question 2

What percentage of the profits from commercial uses of

the song “Love is a Wonderful Thing” is attributable to the

inclusion in that song of elements that infringed Plaintiff's

song?

66%

After you have answered both questions 1 and 2, have

the jury Foreperson sign and date this Special Verdict Form,

and inform the Court that you have reached a verdict.

Dated: 4-29-94

s/ [illegible]

Jury Foreperson

63a

Appendix D

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

CASE NUMBER

CV92-1177-LGB(GHKx)

THREE BOYS MUSIC CORPORATION

. Plaintiff

: vs

MICHAEL BOLTON, et al

; Defendant

(PHASE II)

JUDGMENT ON THE VERDICT

(For Plaintiff)

(QRDER RE: SPECIAL VERDICT FORMS)

This cause having been tried by the Court and a Jury,

before the Honorable LOURDES G. BAIRD, Judge

presiding, and the issues having been duly tried and the J ury

having duly rendered it’s verdict; now, therefore, pursuant

to the verdict,

IT IS ORDERED, ADJUDGED AND DECREED that

the plaintiff(s) Three Boys Music Corporation have and

recover of and from the defendant(s) Michael Bolton;

Andrew Goldmark; Nonpareil Music; Warner-Chappell

64a

Appendix D

Music, Ltd.; Warner-Tamerland Publishing Corporation;

WB Music Corporation; and Sony Music Entertainment, Inc.

the sum of an amount to be determined by a Special Master

in Phase III of this action. (Attached Special Interrogatories

are incorporated herein by reference.)

Clerk

United States District Court

——

Dated: May 6, 1994 By: s/ K. J. Kirksey

Deputy Clerk

K. J. Kirksey

Sat? ae

65a

APPENDIX E — CIVIL MINUTES OF THE UNITED

STATES DISTRICT COURT FOR THE CENTRAL

DISTRICT OF CALIFORNIA RE DENIAL OF

DEFENDANTS’ MOTIONS FOR JUDGMENT AS

A MATTER OF LAW AND A NEW TRIAL

DATED MARCH 1, 1993

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

CIVIL MINUTES-GENERAL

Case No.: CV-92-1177 LGB (GHKx)

. Date: March 1, 1993

Title: Three Boys Music v. Bolton, et. al.

DOCKET ENTRY

PRESENT: Hon. Lourdes G. Baird, United States

District Judge

* * *

PROCEEDINGS: Defendants’ Motion for Summary

Judgment

The Ninth Circuit has stated that

Because. . . the act of copying is rarely witnessed,

copying is ; ordinarily established indirectly. The

plaintiff demonstrates that the defendant had

access to the copyrighted items, and that the

66a

Appendix E

defendant’s product is substantially similar to

plaintiff's work. Once this is done, the burden

shifts to the defendant to prove his work was not

copied, but independently created.

Kamar Int'l, Inc. v. Russ Berrie & Co., 657 F.2d 1059, 1062

(9th Cir. 1981). Defendants have moved for summary

judgment on the grounds that there is no dispute of material

fact as to whether Plaintiff may demonstrate access in this

case.

Defendants have provided ample evidence to

demonstrate that Plaintiff's song was not a commercial

success. Moreover, Defendants have submitted the

declarations of Defendants Bolton and Goldmark that neither

ever heard Plaintiff's song until after they had composed

their song.

Rule 56(c) of the Federal Rules of Civil Procedure

provides that a court shall grant a motion for summary

judgment if “the pleadings, depositions, answers to

interrogatories, and admissions on file, together with the

affidavits, if any, show that there is no genuine issue as to

any material fact and that the moving party is entitled to

judgment as a matter of law.”

Whether a fact is material is determined by looking to

the substantive law. Anderson v. Liberty Lobby, Inc., 477

U.S. 242, 248 (1986). Facts are deemed “material” if a

dispute over them “might affect the outcome of the suit under

the governing law .. .” Jd.

67a

Appendix E

The moving party has the burden of demonstrating the

absence of a genuine issue of fact for trial. Jd. at 256.

A “genuine issue” of material fact exists only when the

nonmoving party makes a sufficient showing to establish an

essential element to that party’s case, and on which that party

would bear the burden of proof at trial. Celotex Corp. v.

Catrett, 477 U.S. 317, 322-23 (1986). The evidence of the

non-movant is to be believed, and all justifiable inferences

are to be drawn in his favor. Anderson, 477 U.S. at 255 (citing

Adickes v. S. H. Kress and Company, 398 U.S. 144 (1970)).

The Court sustains each of Defendants’ evidentiary

objections (to the Declaration of Ronald Isley, { 6, page 3,

line 13 and 14; to the Declaration of Ronald Isley, J 6, page

3, lines 10 through 12; to Exhibit A of the Declaration of

Jerry Blavitt; and, to the Declaration of Gerry Bletsoe, 4 7,

page 2, lines 25 and 26).

Even so, Plaintiffs opposition satisfies the burden set

out by the foregoing precedents. In particular, the work tape

of Bolton and Goldmark’s songwriting session raises a triable

issue of fact as to whether Bolton and Goldmark knew that

“Love is a Wonderful Thing” was a 1960s R&B song, even

though Bolton incorrectly guessed the artist to be Marvin

Gaye. It is not for this court to decide precisely what Bolton

might have meant by the comment, “What is that, is that

some kind of wonderful, is that a Marvin Gaye song?”

Furthermore, Plaintiff has introduced sufficient evidence

to raise a triable issue of fact as to the level of dissemination

of Plaintiff's song in the 1960s and afterwards.

68a

Appendix E

Finally, there is a triable issue of fact as to whether

Bolton had heard Plaintiffs song. The Court recognizes that

Bolton has declared that he had not heard Plaintiff's song

prior to the composition of his song. However, in light of

the fact that cross-examination of Bolton at his deposition

demonstrated his wide knowledge of 1960s R&B music, in

light of the fact that Bolton was a teenage band member in

the 1960s and music has been his principal occupation ever

since, and in light of the comments on the work tape, the

Court must conclude that it would be improper to assess

Bolton’s credibility for purposes of a motion for summary

judgment.

Therefore, Defendants’ motion for summary judgment

is DENIED.

Deputy Clerk s/ KJK

69a

APPENDIX F — ORDER OF THE UNITED STATES

COURT OF APPEALS FOR THE NINTH CIRCUIT

DENYING PETITION FOR REHEARING

DATED AND FILED JUNE 29, 2000

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

NOS. 97-55150

97-55154

97-55198

97-56032

DC NO. CV-92-01177 LGB

THREE BOYS MUSIC CORPORATION,

Plaintiff-Appellee,

VS.

MICHAEL BOLTON, individually and d/b/a MR.

BOLTON’S MUSIC, INC., ANDREW GOLDMARK, NON-

PAREIL MUSIC, INC.., WARNER-CHAPPELL MUSIC

LIMITED, WARNER-TAMERLANE PUBLISHING CORP.,

WB MUSIC CORP. and SONY MUSIC

ENTERTAINMENT, INC.

Defendants- Appellants.

ORDER

Before: B. FLETCHER, D.W. NELSON, and

BRUNETTI, Circuit Judges.

70a

Appendix F

The members of the panel that decided this case voted

unanimously to deny the petition for rehearing and to deny

the petition for rehearing en banc.

The full court has been advised of the petition for

rehearing en banc and no active judge has requested a vote

on whether to rehear the matter en banc. (Fed. R. App. P. 35.)

The petition for rehearing, and the petition for rehearing

en banc, are DENIED.

7la

APPENDIX G — NOTICE OF SUPPLEMENTAL LEGAL

AUTHORITY IN COLES, et al. v. WONDER, et al.,

CASE NO. 1:98 CV 433

IN THE UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF OHIO

EASTERN DIVISION

CASE NO. 1:98 CV 433

JUDGE SOLOMON OLIVER, JR.

MAGISTRATE JUDGE HEMANN

DERRICK COLES, et al.,

Plaintiffs,

VS.

STEVIE WONDER, et al.,

Defendants.

NOTICE OF SUPPLEMENTAL

LEGAL AUTHORITY

Intervenor Plaintiff, Gwendolyn Daniles (“Daniles”), by

and through counsel, hereby notifies the Court of a recent

decision rendered by the United States Ninth District Court

of Appeals in the case, Three Boys Music Corporation y.

Michael Bolton, et al. (May 9, 2000), 2000 U.S. App. LEXIS

9163. A copy of this decision is appended hereto as Exhibit A.

72a

Appendix G

There, the U.S. Court of Appeals for the Ninth Circuit

affirmed a jury verdict in favor of the Isley Brothers and

against songwriters, Michael Bolton and Andrew Goldmark.

The action concerned the Isley Brothers’ song, Love /s A

Wonderful Thing. This decision further supports Daniles’

position arguing that Defendants, Stevie Wonder and

Motown Record Company, are not entitled to summary

judgment for the following reasons:

As in this case, both songs shared the same title

(Love Is A Wonderful Thing);

As in this case, both songs shared the same title hook

phrase (including the lyric, rhythm and pitch);

As in this case, both songs shared the same verse/

chorus relationship;

As in this case, the Plaintiffs submitted evidence of

an earlier creation date for their song;

As in this case, Defendants Bolton and Goldmark

denied ever hearing the Isley Brothers’ version of

Love Is A Wonderful Thing, prior to the release of

their song.

As in this case, Defendants Bolton and Goldmark

argued that because there were in excess of 100

songs registered with the Copyright Office sharing

the same title, such evidence revealed that the songs

were not “substantially similar.”

73a

Appendix G

7. As in this case, Plaintiffs established substantial

similarity of the two songs by utilizing the two-part

test of an “extrinsic similarity” (analytical dissection

of the musical works by the use of an expert witness)

and “intrinsic similarity” (subjective, ordinary

person test);

8. Asin this case, Plaintiffs established that Defendants

Bolton and Goldmark had access to their song by

showing that there was merely a “reasonable

possibility” of copying and that access may have

been “subconscious”;

9. As in this case, Plaintiffs never claimed that the

entirety of their work, Love Js A Wonderful Thing,

was strikingly similar to a musical work created by

Bolton and Goldmark;

10. As in this case, Defendants Bolton and Goldmark

attacked the sufficiency of the Isley Brothers’

material differed from the recorded version of the

song; (The Court, however, rejected this claim,

ruling that the term “complete copy” as used in the

intent to defraud and prejudice, inaccuracies in

infringement” citing Harris v. Emus Records Corp.,

734 F.2d 1329, 1335 (9" Cir. 1984);!

1. On May 5, 2000, Coles received a Form PA, Registration

No. PAU2-417-200, from the United States Copyright Office, which

(Cont'd)

74a

Appendix G

Accordingly, Intervenor Plaintiff respectfully requests

the Court issue an order denying Defendants’ Motion for

Summary Judgment.

Respectfully submitted,

s/ Peter A. Hessler

Peter A. Hessler (0005594)

Christopher A. Holecak (0040840)

WEGMAN, HESSLER,

VANDERBURG & OTOOLE

6055 Rockside Woods Blvd., #200

Cleveland, OH 44131

(216) 642-3342

Roger G. Emerson (0037731)

John Skeriotis (0069263)

Key Building, Suite 830

159 South Main Street

Akron, OH 44308

(330) 535-9999

Attorneys for Intervenor

Plaintiff, Gwendolyn Daniles

(Cont'd)

serves to register a 1973 recording of his work For Your Love, and

to identify a basic registration number PAU1-414-969, dated

September 4, 1990, to be a derivative work of his 1973 recording of

the song entitled, For Your Love.

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.