SWIRSKY v. CAREY 841 Cite as 376 F.3d 841 (9th Cir. 2004)

2. Copyrights and Intellectual Property , an individual d/b/a O51 Julian’s Dad; Warryn Campbell, To establish successful copyright in- Plaintiffs–Appellants, fringement claim, plaintiff must show that v. (1) he owns copyright in work and (2) ; James Harris, III; defendant copied protected elements of Terry Lewis; Flyte Time Productions, work. Inc., an entity of unknown designa- 3. Copyrights and Intellectual Property tion, e/s/a Flyte Tyme Tunes, Inc.; 83(3.1) ATV Songs LLC; Rye Songs; Colum- O bia Records; Entertain- Copyright infringement plaintiff may ment, Inc.; EMI April Music, Defen- establish copying element of claim by dants–Appellees. showing that defendant had access to No. 03–55033. copyrighted work and that accused work is substantially similar to copyrighted work’s United States Court of Appeals, protected elements; moreover, where high Ninth Circuit. degree of access is shown, lower standard Argued and Submitted Feb. 3, 2004. of proof of substantial similarity is re- quired. Filed July 12, 2004. As Amended on Denial of Rehearing 4. Copyrights and Intellectual Property Aug. 24, 2004. O53(1) Background: Owners of copyright in mu- In determining whether two works sical composition sued singer, record com- are substantially similar, as required to pany, and composers of allegedly similar show copyright infringement in absence of song for infringement. The United States direct evidence of copying, court employs District Court for the Central District of two-part analysis: objective extrinsic test California, Christina A. Snyder, J., 226 and subjective intrinsic test. F.Supp.2d 1224, granted summary judg- ment for defendants, and appeal was tak- 5. Copyrights and Intellectual Property en. O53(1), 83(3.1) Holdings: The Court of Appeals, Canby, ‘‘Extrinsic test’’ for substantial simi- Circuit Judge, held that: larity of copyrighted and allegedly infring- (1) proffered expert testimony was suffi- ing works, which considers whether works ciently objective to be considered in share similarity of ideas and expression as satisfaction of extrinsic test for sub- measured by external, objective criteria, stantial similarity, and requires analytical dissection of works and (2) fact issue existed as to whether assert- expert testimony. ed composition was sufficiently original See publication Words and Phras- to warrant copyright protection. es for other judicial constructions and definitions. Reversed and remanded. 6. Copyrights and Intellectual Property 1. Federal Courts O776 O4.5 District court’s grant of summary Idea by itself is not subject to copy- judgment is reviewed de novo. right protection; only expression of idea is. 842 376 FEDERAL REPORTER, 3d SERIES

7. Copyrights and Intellectual Property to first measure of folk song was insuffi- O83(6) cient to establish, as matter of law, that Expert’s methodology for comparing measure was uncopyrightable scene a copyrighted and allegedly infringing song faire; songs were written in different time was sufficiently objective to be considered signatures and genres and had different in satisfaction of extrinsic test for substan- chord progressions, and, in any event, any tial similarity; expert, properly discount- similarity between only two songs was in- ing ‘‘ornamental’’ notes, noted remarkable sufficient to show that measure was com- similarities in songs’ harmonies, rhythms monplace. and meters. 12. Copyrights and Intellectual Property 8. Copyrights and Intellectual Property O89(2) O66 Issue of material fact as to whether Objective analysis of copyrighted and differences between copyrighted rhythm allegedly infringing musical compositions, and blues song’s first measure and first under extrinsic test for substantial similar- measure of well known folk song were ity, does not mean simple comparison of merely trivial precluded summary judg- numerical representations of pitch se- ment that measure was insufficiently origi- quences and visual representations of nal to be protected from infringement. 17 notes, without regard to other elements of U.S.C.A. § 410(c). compositions such as chord progression, 13. Copyrights and Intellectual Property , key, rhythm, and genre. O8 9. Copyrights and Intellectual Property Although single musical note is too O12(2) small a unit to attract copyright protection, Scenes a faire analysis in copyright arrangement of limited number of notes case requires court to examine whether can be protectable. similarities that plaintiff attributes to 14. Copyrights and Intellectual Property copying could actually be explained by O8 common-place presence of same or similar Seven-note melodic line in first mea- ‘‘motives’’ within relevant field. sure of song was not too short, as matter 10. Copyrights and Intellectual Property of law, to garner copyright protection. O12(2) 15. Federal Courts O823 Under ‘‘scenes a faire doctrine,’’ when District court’s decision to admit or certain commonplace expressions are in- exclude evidence is reviewed for abuse of dispensable and naturally associated with discretion. treatment of given idea, those expressions are treated like ideas and therefore not 16. Copyrights and Intellectual Property protected by copyright. O83(2) See publication Words and Phras- Evidence that singer/composer of al- es for other judicial constructions and definitions. legedly infringing song had melody in her head when she came to recording session 11. Copyrights and Intellectual Property was not necessarily probative of direct O83(6) copying, and thus its exclusion was not Evidence that first measure of copy- clearly erroneous; melody could easily righted rhythm and blues song was similar have been product of singer/composer’s SWIRSKY v. CAREY 843 Cite as 376 F.3d 841 (9th Cir. 2004)

own creative processes, conscious or sub- Appeal from the United States District conscious. Court for the Central District of Califor- nia; Christina A. Snyder, District Judge, 17. Copyrights and Intellectual Property Presiding. D.C. No. CV–00–09926–CAS. O83(2) Complete transcriptions of copyright- Before CANBY, JR., NOONAN, and ed and allegedly infringing songs’ basslines THOMAS, Circuit Judges. were admissible as relevant to issue of CANBY, Circuit Judge. what basslines looked like before being The plaintiffs, Seth Swirsky and Warryn reduced to their essential elements by Campbell, brought this action in district plaintiff’s expert. court, alleging that a song produced by the 18. Evidence O318(1) defendants infringed the plaintiffs’ copy- right in the song, ‘‘One of Those Love Complete transcriptions of copyright- Songs.’’ The defendants moved for sum- ed and allegedly infringing songs’ bass- mary judgment, contending that the plain- lines, proffered by defendant in response tiffs’ evidence failed to meet this circuit’s to plaintiff’s expert’s analysis of basslines’ threshold ‘‘extrinsic test’’ for substantial essential elements, were not hearsay; evi- similarity of works. The district court dence was not offered to prove truth of granted the motion, holding that the plain- matter asserted, but merely to show what tiffs’ expert had failed to show by external, basslines looked like before being reduced objective criteria that the two songs by expert. Fed.Rules Evid.Rule 801(c), 28 shared a similarity of ideas and expression. U.S.C.A. Plaintiffs appeal. We conclude that the 19. Evidence O373(1) plaintiffs’ expert’s evidence was sufficient to present a triable issue of the extrinsic Federal Civil Procedure O2545 similarity of the two songs, and that the Copyright infringement defendant sat- district court’s ruling to the contrary was isfied foundation and authentication re- based on too mechanical an application of quirements for admission, on motion for the extrinsic test to these musical composi- summary judgment, of complete transcrip- tions. We also conclude that the district tions of asserted and accused songs’ bass- court erred in ruling portions of plaintiffs’ lines by eliciting admission from plaintiff’s song to be unprotectable by copyright as a expert that transcriptions were accurate. matter of law. We accordingly reverse the Fed.Rules Evid.Rule 901(a), (b)(1), 28 summary judgment. U.S.C.A.; Fed.Rules Civ.Proc.Rule 56(e), 28 U.S.C.A. Factual Background This case concerns the alleged similarity between the choruses of two popular and contemporary rhythm and blues (‘‘R & B’’) songs: plaintiffs’ ‘‘One of Those Love Jonathan D. Freund (argued), Craig A. Songs’’ (‘‘One ’’) and Mariah Carey’s Huber, Freund & Brackey LLP, Beverly ‘‘Thank God I Found You’’ (‘‘Thank God ’’). Hills, CA, for the plaintiffs-appellants. One was jointly composed by plaintiffs Robert M. Dudnik, Mitchell, Silberberg Seth Swirsky and Warryn Campbell (col- & Knupp, LLP, Los Angeles, CA, for the lectively ‘‘Swirsky’’) in 1997. Pursuant to defendants-appellees. a licensing agreement, One was recorded 844 376 FEDERAL REPORTER, 3d SERIES

by the musical group and released of ideas and expression [between One and in May 1998 on Xscape’s ‘‘Traces of Thank God], viewing the evidence in the My Lipstick.’’ Thank God was composed light most favorable to the nonmoving par- by defendants Carey, James Harris III, ty.’’ Id. (quoting Kouf v. Walt Disney and Terry Lewis in 1999 and was released Pictures & Television, 16 F.3d 1042, 1045 on Carey’s album ‘‘Rainbow’’ in November (9th Cir.1994)); Narell v. Freeman, 872 1999. F.2d 907, 909–910 (9th Cir.1989). If Swir- One and Thank God have generally dis- sky presented ‘‘indicia of a sufficient dis- similar lyrics and verse melodies, but they agreement concerning the substantial simi- share an allegedly similar chorus that larity of [the] two works,’’ then the case Swirsky claims as an infringement of must be submitted to a trier of fact. One’s copyright.1 Swirsky filed this action Brown Bag Software v. Symantec Corp., in district court against Carey, Harris, 960 F.2d 1465, 1472 (9th Cir.1992) (internal Lewis, and a number of music companies quotations and citation omitted). that had financial interests in Thank God (collectively ‘‘Carey’’) for copyright in- [2, 3] To establish a successful copy- fringement and related claims.2 The de- right infringement claim, Swirsky must fendants moved for summary judgment, show that (1) he owns the copyright in One contending that Swirsky had failed to and (2) Carey copied protected elements of present a triable issue on the required One. See Rice v. Fox Broad. Co., 330 F.3d first, or ‘‘extrinsic,’’ part of our circuit’s 1170, 1174 (9th Cir.2003) (Rice I ); Smith, two-part test for the establishment of sub- 84 F.3d at 1218. For purposes of sum- stantial similarity necessary to sustain a mary judgment, Carey conceded that claim of copyright infringement. The de- Swirsky owns a valid copyright in One. fendants also contended that portions of The element of copying is rarely the sub- One were not protectable by copyright. ject of direct evidence; Swirsky may es- The district court agreed with both con- tablish copying by showing that Carey had tentions and granted summary judgment access to One and that Thank God was to Carey. Swirsky moved for reconsidera- substantially similar to One in One’s pro- tion, which the district court denied. This tected elements. See Smith, 84 F.3d at appeal followed. 1218; Metcalf v. Bochco, 294 F.3d 1069, 1072(9th Cir.2002). Where a high degree Substantial Similarity of access is shown, we require a lower [1] We review de novo the district standard of proof of substantial similarity. court’s grant of summary judgment. See See Three Boys Music Corp. v. Bolton, 212 Smith v. Jackson, 84 F.3d 1213, 1218(9th F.3d 477, 485(9th Cir.2000); Smith, 84 Cir.1996). We may uphold the summary F.3d at 1218. For the purposes of sum- judgment only if we find that ‘‘no reason- mary judgment, Carey conceded that she able juror could find substantial similarity had a high degree of access to One.3 Swir-

1. Swirsky also claims that the piano introduc- 2. On this appeal the parties present issues tion to Thank God infringes Swirsky’s copy- related only to the copyright infringement right because the introduction is essentially a claim. piano version of Thank God’ s chorus. To the extent this is the case, Swirsky’s claim that 3. A number of the people involved in record- the introduction infringes his copyright de- ing One were also involved in the recording of pends on whether Thank God’s chorus is sub- Thank God. Both songs were mastered by Bob stantially similar to One’ s chorus. Ludwig at Gateway , produced by SWIRSKY v. CAREY 845 Cite as 376 F.3d 841 (9th Cir. 2004)

sky’s burden of proof of substantial simi- (9th Cir.2003) (Rice II ). Because the re- larity is thus commensurately lowered. quirement is one of substantial similarity to protected elements of the copyrighted [4] In determining whether two works are substantially similar, we employ a two- work, it is essential to distinguish between part analysis: an objective extrinsic test the protected and unprotected material in and a subjective intrinsic test. For the a plaintiff’s work. See Rice I, 330 F.3d at purposes of summary judgment, only the 1174; Apple Computer, Inc. v. Microsoft extrinsic test is important because the sub- Corp., 35 F.3d 1435, 1443(9th Cir.1994); jective question whether works are intrin- Brown Bag, 960 F.2d at 1475–76. sically similar must be left to the jury. The expert testimony on which Swirsky See Rice I, 330 F.3d at 1174; Smith, 84 relied was that of Dr. Robert Walser, chair F.3d at 1218. If Swirsky cannot present of the Musicology Department at the Uni- evidence that would permit a trier of fact versity of California at Los Angeles. On to find that he satisfied the extrinsic test, the basis of his aural assessment 5 of One he necessarily loses on summary judgment and Thank God, Dr. Walser opined that because a ‘‘jury may not find substantial the two songs had substantially similar similarity without evidence on both the choruses. extrinsic and intrinsic tests.’’ Rice I, 330 Dr. Walser admitted that the lyrics and F.3d at 1174 (quoting Kouf, 16 F.3d at verse melodies of the two songs differed 1045). ‘‘clearly and significantly,’’ but stated that [5, 6] The extrinsic test considers the two songs’ choruses shared a ‘‘basic whether two works share a similarity of shape and pitch emphasis’’ in their melo- ideas and expression as measured by ex- dies, which were played over ‘‘highly simi- ternal, objective criteria.4 See Smith, 84 lar basslines 6 and chord changes, at very F.3d at 1218. The extrinsic test requires nearly the same tempo and in the same ‘‘analytical dissection of a work and expert generic style.’’ 7 Dr. Walser also noted testimony.’’ Three Boys, 212 F.3d at 485. that it was a ‘‘suspicious coincidence’’ that ‘‘Analytical dissection’’ requires breaking the two songs’ choruses were both sung in the works ‘‘down into their constituent ele- B-flat. Dr. Walser further testified that ments, and comparing those elements for the choruses in both One and Thank God proof of copying as measured by ‘substan- shared a similar structure in that mea- tial similarity.’ ’’ Rice v. Fox Broad. Co., sures five through seven of each chorus 148 F.Supp.2d 1029, 1051 (C.D.Cal.2001), were ‘‘almost exactly’’ the same as the first reversed on other grounds, 330 F.3d 1170 three measures of each chorus.

Sony Music Entertainment, and distributed 5. Dr. Walser did not compare sheet music in through . Jermaine Dupri arriving at his expert opinion. Neither One served as a producer to both and nor Thank God was originally composed us- Kandi Burress, one of the former members of ing sheet music. Xscape, co-wrote the song ‘‘X–Girlfriend’’ 6. A bassline (often written ‘‘bass line’’) is de- with Carey for the ‘‘Rainbow’’ album. fined as ‘‘[t]he succession of the lowest notes in a passage (or composition) which ‘support’ 4. Although the extrinsic test examines the the other parts and are mainly responsible for similarity of ideas and expression, it must be the harmonic progression.’’ Grove Music kept in mind that ideas by themselves are not Online, at http://www.grovemusic.com. subject to copyright protection; only the ex- pression of ideas is. See Rice I, 330 F.3d at 7. Dr. Walser identified the style as ‘‘contem- 1174. porary R & B or ‘urban’ music.’’ 846 376 FEDERAL REPORTER, 3d SERIES

Dr. Walser also noted a number of dif- The district court found this evidence ferences between the two songs’ choruses. insufficient to survive a motion for sum- Dr. Walser found that the fourth measures mary judgment for four reasons. First, of the choruses were ‘‘dramatically differ- the district court found that Dr. Walser’s ent’’ from each other and noted that while expert methodology was flawed. Second, the ‘‘basic, emphasized pitches and the district court, using its own analysis, rhythms’’ of the basslines were alike, the found that no triable issue was raised as to basslines to both choruses were ‘‘orna- the substantial similarity of measures two, mented and played slightly differently three, six, seven, and eight of the two from chorus to chorus.’’ Dr. Walser also choruses. Third, the district court held found that certain ‘‘text-setting choices’’ 8 that measures one and five of One were 11 created differences between the two songs’ scenes a faire, and thus incapable of sup- choruses. For example, he noted that in porting a finding of infringement. Finally, the district court discounted any similarity Thank God, Carey sings ‘‘D, scale degree between the two choruses based on key, three, for a full beat on the first beat of harmony, tempo, or genre because it found the first measure’’ while Xscape in One no precedent for substantial similarity to sings the same pitch ‘‘divided into two be ‘‘founded solely on similarities in key, eight-note pulses.’’ Dr. Walser ultimately harmony, tempo or genre, either alone or concluded, however, that these differences in combination.’’ We disagree with much were not enough to differentiate the songs of the district court’s reasoning on all four because the overall emphasis on musical points and conclude that Swirsky has satis- notes was the same, which ‘‘contribute[d] fied the extrinsic test because he has pro- to the impression of similarity one hears vided ‘‘indicia of a sufficient disagreement when comparing the two songs.’’ concerning the substantial similarity of Dr. Walser transcribed his aural im- [the] two works.’’ Brown Bag, 960 F.2d at pressions into a series of visual ‘‘tran- 1472 (internal quotations and citation omit- scriptions.’’ Dr. Walser created a tran- ted). scription of each chorus’ pitch sequence, melody,9 and bassline. Dr. Walser la- A. Dr. Walser’s Methodology beled his transcription of the basslines [7] There is nothing inherently un- a’’reduction’’ because he transcribed only sound about Dr. Walser’s musicological the ‘‘basic, emphasized pitches and methodology in this case. The district rhythms.’’ Dr. Walser thus did not in- court is correct that Dr. Walser’s meth- clude any bassline notes or pitches he odology is ‘‘selective,’’ in as much as it found to be ‘‘ornamented’’ in his tran- discounts notes that he characterizes as scriptions.10 ‘‘ornamental.’’ Dr. Walser, however, ex-

8. Dr. Walser stated that text-setting choices Anthony Ricigliano, to show the notes that mean that some pitches are repeated in one Dr. Walser had omitted from his reduction. song while they are held in another. 9. Melody is a function of both pitch (i.e. the 11. As we discuss more fully below, scenes a steps, or tones, on the scale) and rhythm (i.e. faire are common expressions indispensable time values and relationships between the to the expression of particular ideas in a notes) of a series of notes. relevant field; they are treated as unprotecta- ble by copyright, in the manner of ideas. See 10. Carey introduced bassline transcriptions of Smith, 84 F.3d at 1219. the two choruses made by Carey’s expert, SWIRSKY v. CAREY 847 Cite as 376 F.3d 841 (9th Cir. 2004)

plained that the melody (pitch and choruses sound to his expert ears, which rhythm) and bassline of a song cannot be led the district court to conclude that his divorced from the harmonic rhythm of a testimony related to intrinsic and not ex- song. According to Dr. Walser, notes trinsic similarity. We do not agree, how- falling on the beat will be more promi- ever, that Dr. Walser’s testimony was an nent to the ear than notes falling off the intrinsic rather than extrinsic analysis. beat. Thus, Dr. Walser opined that, even He was not testifying, as the intrinsic test though measure three of both choruses would require, as to whether subjectively were not identical in numerical pitch se- the ‘‘ordinary, reasonable person would quence or note selection, they both ‘‘em- find the total concept and feel of the [two phasize[d] the second scale degree, C, choruses] to be substantially similar.’’ over an A in the bass, resolving to the Three Boys, 212 F.3d at 485(quoting Pasil- third scale degree, D, over a D in the las v. McDonald’s Corp., 927 F.2d 440, 442 bass in the last half of the measure.’’ (9th Cir.1991)). Instead, he was stating Dr. Walser provided a comparable analy- that, although the two choruses are not sis for measures one, three, and eight. exactly identical on paper, when examined in the structural context of harmony, Similarly, Dr. Walser explained that rhythm, and meter, they are remarkably some artists will ornament their notes in similar. We, therefore, cannot accept the ways that others do not. Dr. Walser testi- district court’s conclusion that Dr. Walser fied at deposition that both Carey and did not ‘‘adequately explain, based on ob- Xscape ornament their notes with ‘‘melis- jective criteria, why [his] particular subset mas’’ and ‘‘appoggiaturas,’’ both of which of notes is more important, or more appro- are technical terms for moving up to the priately analyzed, than the other notes next note and then back again. Dr. Wal- present in the songs.’’ The district court ser testified that he did not notate these erred in completely discounting Dr. Wal- ornaments in his transcriptions, or take ser’s expert opinion. them into account in his opinion, because he ‘‘took that to be a matter of the singer B. The District Court’s Measure–by– customizing the song and regarded those Measure Analysis notes as not structural; they are ornamen- [8] The district court also erred by tal.’’ As we said in Newton v. Diamond, basing its comparison of the two choruses 349 F.3d 591 (2003), we can ‘‘consider only almost entirely on a measure-by-measure [the defendant’s] appropriation of the comparison of melodic note sequences song’s compositional elements and must from the full transcriptions of the chorus- remove from consideration all the elements es.12 Objective analysis of music under unique to [Plaintiff’s] performance.’’ Id. at the extrinsic test cannot mean that a court 595. Dr. Walser’s methodology sought to may simply compare the numerical repre- remove notes he perceived as perform- sentations of pitch sequences and the visu- ance-related. al representations of notes to determine To a certain extent, Dr. Walser’s meth- that two choruses are not substantially odology does concentrate on how the two similar, without regard to other elements

12. The district court did not separately ana- district court found that it did not need to lyze measures four, six and seven. The dis- analyze measures six and seven separately trict court accepted Dr. Walser’s testimony because Dr. Walser had opined that they were that the fourth measures of the two songs’ ‘‘almost identical’’ to measures one, two and choruses were ‘‘dramatically different.’’ The three. 848 376 FEDERAL REPORTER, 3d SERIES

of the compositions. Under that approach, dividually protected, if in combination with expert testimony would not be required at rhythm and pitch sequence, they show the all, for any person untrained in music chorus of Thank God to be substantially could conclude that ‘‘2–2–2–2–2–2–1–2–1– similar to the chorus of One, infringement 3’’ did not match ‘‘2–2–4–3–2–3’’ or that a can be found. See Three Boys, 212 F.3d at half-note is not identical to an eighth-note. 485; Satava, 323 F.3d at 811.14 Certainly, musicological experts can dis- agree as to whether an approach that We recognize the difficulties faced by highlights stressed notes, as Dr. Walser’s the district court in this case. We have does, is the most appropriate way to break referred to ‘‘the turbid waters of the ‘ex- down music for substantial-similarity com- trinsic test’ for substantial similarity under parison, but no approach can completely the Copyright Act.’’ Metcalf, 294 F.3d at divorce pitch sequence and rhythm from 1071. The application of the extrinsic test, harmonic chord progression, tempo, and which assesses substantial similarity of key, and thereby support a conclusion that ideas and expression, to musical composi- compositions are dissimilar as a matter of tions is a somewhat unnatural task, guided law. It is these elements that determine by relatively little precedent. Music is an what notes and pitches are heard in a song art form that ‘‘produces sounds and ex- and at what point in the song they are presses moods,’’ Debra Presti Brent, The found. To pull these elements out of a Successful Musical Copyright Infringe- song individually, without also looking at ment Suit: The Impossible Dream, 7 U. them in combination, is to perform an in- Miami Ent. & Sports. L.Rev. 229, 244 complete and distorted musicological anal- (1990), but it does not necessarily commu- ysis.13 nicate separately identifiable ideas. The Furthermore, to disregard chord pro- extrinsic test provides an awkward frame- gression, key, tempo, rhythm, and genre is work to apply to copyrighted works like to ignore the fact that a substantial simi- music or art objects, which lack distinct larity can be found in a combination of elements of idea and expression. Never- elements, even if those elements are indi- theless, the test is our law and we must vidually unprotected. See Satava v. Low- apply it. See Smith, 84 F.3d at 1218. The ry, 323 F.3d 805, 811 (9th Cir.2003); Apple extrinsic test does serve the purpose of Computer, 35 F.3d at 1445. Thus, al- permitting summary judgment in clear though chord progressions may not be in- cases of non-infringement, and it informs

13. In fact, concentration solely on pitch se- his opinion that measures six and seven of quence may break music down beyond recog- One were ‘‘almost identical’’ to measures two nition. If a musician were provided with a and three of One, the district court was bound group of notes identified only by numerical to view the evidence in the light most favor- pitch sequences, he or she could play that able to Swirsky. See Smith, 84 F.3d at 1218. music a number of different ways, none of The court was not free to conclude that, be- them being substantially similar to each oth- cause measures two and three of Thank God er. In order to perform a song exactly, the were not substantially similar to correspond- musician would need information about key, ing measures of One, measures six and seven harmony, rhythm, and tempo—the type of could not be substantially similar to those of information not included in the district One. In that sense, ‘‘almost identical’’ cannot court’s comparison. be equated with ‘‘identical,’’ especially when 14. The district court also erred in not sepa- Dr. Walser’s transcriptions showed measure rately analyzing measures six and seven of six of One to be different in pitch sequence both choruses. Although Dr. Walser stated in from measure two of One. SWIRSKY v. CAREY 849 Cite as 376 F.3d 841 (9th Cir. 2004) the fact-finder of some of the complexities ing similarity’’ test); McKinley v. Raye, of the medium in issue while guiding atten- 1998 WL 119540, at *5 (N.D.Tex. March tion toward protected elements and away 10, 1998) (mem.) (analyzing lyrics, melo- from unprotected elements of a composi- dies, and song structure); Damiano v. tion. Sony Music Entm’t, Inc., 975 F.Supp. 623, In analyzing musical compositions under 631 (D.N.J.1996) (analyzing instrumenta- tion and melody under the extrinsic test); the extrinsic test, we have never an- Sylvestre v. Oswald, 1993 WL 179101, at nounced a uniform set of factors to be *4 (S.D.N.Y. May 18, 1993) (analyzing mel- used. We will not do so now. Music, like ody and lyrics under ‘‘striking similarity’’ software programs and art objects, is not test); Intersong–USA v. CBS, Inc., 757 capable of ready classification into only F.Supp. 274, 280 (S.D.N.Y.1991) (analyzing five or six constituent elements; music is chord progression, structure, pitch, and comprised of a large array of elements, harmony under substantial similarity 16 some combination of which is protectable test). In addition, commentators have by copyright.15 For example, in Three opined that timbre, tone, spatial organiza- Boys we upheld a jury finding of substan- tion, consonance, dissonance, accents, note tial similarity based on the combination of choice, combinations, interplay of instru- five otherwise unprotectable elements: (1) ments, basslines, and new technological the title hook phrase (including the lyric, sounds can all be elements of a musical rhythm, and pitch); (2) the shifted ca- composition. See Brent, supra, at 248–89; dence; (3) the instrumental figures; (4) Stephanie J. Jones, Music Copyright in the verse/chorus relationship; and (5) the Theory and Practice: An Improved Ap- fade ending. Three Boys, 212 F.3d at 485. proach for Determining Substantial Simi- Other courts have taken account of addi- larity, 31 Duq. L.Rev. 277, 294–95 (1993). tional components of musical compositions, There is no one magical combination of including melody, harmony, rhythm, pitch, these factors that will automatically sub- tempo, phrasing, structure, chord progres- stantiate a musical infringement suit; each sions, and lyrics. See Ellis v. Diffie, 177 allegation of infringement will be unique. F.3d 503, 506(6th Cir.1999) (noting that the So long as the plaintiff can demonstrate, district court had compared idea, phraseol- through expert testimony that addresses ogy, lyrics, rhythms, chord progressions, some or all of these elements and supports ‘‘melodic contours,’’ structures, and melo- its employment of them, that the similarity dies under ‘‘ordinary observer’’ test); Cott- was ‘‘substantial’’ and to ‘‘protected ele- rill v. Spears, 2003 WL 21223846, at *9 ments’’ of the copyrighted work, the ex- (E.D.Pa. May 22, 2003) (unpublished dispo- trinsic test is satisfied. Swirsky has met sition) (comparing pitch, chord progres- that standard here. sion, meter, and lyrics under extrinsic test); Tisi v. Patrick, 97 F.Supp.2d 539, C. Scenes a Faire Analysis 543 (S.D.N.Y.2000) (analyzing structure, [9, 10] The district court erred in find- melody, harmony, and rhythm under’’strik- ing the first and fifth measures of One to

15. Literary works, such as books, film, and 16. The Southern District of New York’s sub- television shows, are more easily broken into stantial similarity test does not differentiate a small number of discrete elements to ana- between extrinsic and intrinsic analysis. lyze, namely ‘‘plot, themes, dialogue, mood, setting, pace, characters and sequence of events.’’ Metcalf, 294 F.3d at 1073 (quoting Kouf, 16 F.3d at 1045). 850 376 FEDERAL REPORTER, 3d SERIES

be unprotectable by reason of the scenes a Further, even if One and Jolly Good were faire doctrine.17 Scenes a faire analysis in the same genre of music, a musical requires the court to examine whether measure cannot be ‘‘common-place’’ by def- ‘‘motive’’ 18 similarities that plaintiffs at- inition if it is shared by only two songs.20 tribute to copying could actually be ex- One and Jolly Good are also written in plained by the common-place presence of different time signatures; One is in 4/4 the same or similar ‘‘motives’’ within the while Jolly Good is in 6/8. Their chord relevant field. See Smith, 84 F.3d at 1219. progressions also differ (B-flat to B- Under the scenes a faire doctrine, when flat(sus4) to B-flat in One and G in Jolly certain commonplace expressions are in- Good ). This difference further under- dispensable and naturally associated with mines Carey’s argument that the two mea- the treatment of a given idea, those ex- sures are the same as a matter of law. pressions are treated like ideas and there- The district court also erred in finding fore not protected by copyright. See Rice the fifth measure of One to be a scene a I, 330 F.3d at 1175. The district court faire as a matter of law. Carey introduced held that the first and fifth measures of no independent evidence showing that One were not protected by copyright be- measure five of One was more similar to cause Dr. Walser admitted in his deposi- Jolly Good than Thank God; she relied tion that the pitch sequence of the first exclusively on Dr. Walser’s opinion that measure of One’ s chorus was more similar measure five was ‘‘almost identical’’ to to the pitch sequence in the first measure measure one of One. As we have already of the folk song ‘‘For He’s a Jolly Good pointed out, on summary judgment, ‘‘al- Fellow’’ (‘‘Jolly Good ’’) than to the pitch most identical’’ and ‘‘identical’’ are not sequence in the first measure of Thank equivalents, especially in light of Dr. Wal- 19 God’ s chorus. ser’s transcriptions showing that measure [11] The evidence does not support the five of One is different in pitch sequence district court’s ruling that the first mea- from measure one of One. It is inappropri- sure of One is a scene a faire as a matter ate to grant summary judgment on the of law. The songs One and Jolly Good are basis of scenes a faire without independent not in the same relevant ‘‘field’’ of music; evidence, unless the allegation of scenes a One is in the hip-hop/R & B genre and faire is uncontested. See Smith, 84 F.3d Jolly Good is in the folk . at 1220. It was contested here. Thus, comparing the first measure of One’ s chorus to the first measure of Jolly Good Other Claims of Lack of Copyright does not tell the court whether the first Protection measure of One’ s chorus is an indispens- Because we may affirm the grant of able idea within the field of hip-hop/R & B. summary judgment on any basis supported

17. The district court did not separately ana- 19. Carey’s attorney told Dr. Walser to ignore lyze measure five because Dr. Walser had rhythm when comparing One to Jolly Good. opined that it was ‘‘almost identical’’ to mea- sure one. 20. Although Carey also argues that the pitch 18. Motive as used here means ‘‘an element or sequence of the first measure of One’ s chorus a component in a decorative composition.’’ was highly similar to the first measure of the ROGET’S II: THE NEW THESAURUS, THIRD EDITION folk song ‘‘The Bear Went Over the Moun- (1995), available at http://www.bartle- tain’’ (‘‘Bear Went ’’), we note that Bear Went by.com/62/47/M1004700.html (last visited and Jolly Good are musically identical songs. May 4, 2004). SWIRSKY v. CAREY 851 Cite as 376 F.3d 841 (9th Cir. 2004)

by the record, see Newton, 349 F.3d at of Swirsky’s chorus is not original as a 594, Carey offers two additional argu- matter of law accordingly fails. ments, not reached by the district court, Although the first measure of One’ s why the summary judgment should be af- chorus and the first measure of Jolly Good firmed. Carey first argues that, wholly may share the same pitch sequence, they apart from the scenes a faire doctrine, the are not identical in meter, tempo, or key. first measure of One’ s chorus is not pro- There is, therefore, a triable issue whether tectable because it lacks originality as a there are more than ‘‘merely trivial’’ differ- matter of law. Because One has a valid ences between the two works. Carey’s certificate of registration with the copy- contention that the first measure of Swir- right office, however, Swirsky is entitled to sky’s chorus is not original as a matter of a presumption of originality. See 17 law fails. U.S.C. § 410(c) (2003) (citing that pre- sumption of originality extends for five Carey next argues that the first mea- years from date of copyright registra- sure of One is a mere ‘‘musical idea,’’ not tion); 21 Three Boys, 212 F.3d at 488–89. protectable under the Copyright Act. Car- Carey can overcome this presumption only ey relies on Dr. Walser’s testimony that by demonstrating that Swirsky’s chorus is the first measure of One was a ‘‘short not original. See id. musical idea.’’ Carey’s reasoning is falla- cious for a number of reasons, the most [12] In this circuit, the definition of basic being that a musicologist is not an originality is broad, and originality means expert on what the term ‘‘idea’’ means ‘‘little more than a prohibition of actual under the copyright laws. Labeling some- copying.’’ Three Boys, 212 F.3d at thing as a ‘‘musical idea’’ does not neces- 489(quoting North Coast Indus. v. Jason sarily bear on whether it is also an ‘‘idea’’ Maxwell, Inc., 972 F.2d 1031, 1033(9th Cir. under the copyright laws and unprotecta- 1992)). All that is needed to satisfy origi- ble for that reason. nality is for the author to contribute ‘‘something more than a ‘merely trivial’ [13, 14] No federal court has stated variation.’’ Id.; see also ETS–Hokin v. that a musical motive is not protectable Skyy Spirits, Inc., 225 F.3d 1068, 1073 because it is an idea. Nor does the ‘‘musi- (9th Cir.2000)(referring to ‘‘the low thresh- cal idea’’ of the first measure of Swirsky’s old for originality under the Copyright chorus lack protection because of its brevi- Act’’). Carey argues that the first mea- ty. Although it is true that a single musi- sure of One’s chorus is not original be- cal note would be too small a unit to cause it is ‘‘substantially similar’’ to the attract copyright protection (one would not first measure of Jolly Good.22 See North want to give the first author a monopoly Coast, 972 F.2d at 1033–34. The two mea- over the note of B-flat for example), an sures may share the same pitch sequence, arrangement of a limited number of notes but they are not identical in meter, tempo, can garner copyright protection. See El- or key. There is, therefore, a triable issue smere Music, Inc. v. Nat’l Broad. Co., 482 whether there are more than ‘‘merely trivi- F.Supp. 741, 744 (S.D.N.Y.1980) (finding al’’ differences between the two works. that four notes were substantial enough to Carey’s contention that the first measure be protected by copyright); Santrayll v.

21. The copyright was registered in August sure of Bear Went. Because Bear Went is ex- 1998 and this action was filed in November actly the same musically, albeit not lyrically, 2000. to Jolly Good, the comparison of One to Jolly Good applies with equal force to the compari- 22. Carey also argues that the first measure of One is substantially similar to the first mea- son between One and Bear Went as well. 852 376 FEDERAL REPORTER, 3d SERIES

Burrell, 1996 WL 134803, at *2 (S.D.N.Y. ruling is not abuse of discretion if the Mar.25, 1996) (mem.order) (finding that record supports the court’s decision). the repetition of the word ‘‘uh-oh’’ four times in a distinctive rhythm for one mea- [16] The work session tape that Swir- sure is sufficiently original to render it sky sought to introduce demonstrated only protectable under the copyright laws). that Carey came into the studio with the This Court has stated that ‘‘[e]ven if a melody to the chorus of Thank God in her copied portion be relatively small in pro- head. The fact that a composer or singer portion to the entire work, if qualitatively has a melody in her head does not neces- important, the finder of fact may properly sarily demonstrate direct copying; the find substantial similarity.’’ Baxter v. melody could easily be the product of her MCA, Inc., 812 F.2d 421, 425(9th Cir. own creative processes, conscious or sub- 1987). The melodic line in the first mea- conscious. It was thus not a clear error of sure of One is seven notes long. It cannot judgment for the district court to refuse to be said as a matter of law that seven notes admit the work session tape. is too short a length to garner copyright protection. We therefore reject this chal- B. The Bassline Transcriptions lenge to the protection of the first measure [17–19] The district court did not of One’s chorus. abuse its discretion in admitting defense expert Anthony Ricigliano’s bassline tran- Evidentiary Arguments scriptions of One and Thank God. Swirsky [15] Swirsky challenges two evidentia- objected to the admission of Ricigliano’s ry rulings of the district court, which we transcriptions on the grounds of lack of address because the issues may arise again personal knowledge or foundation, hear- in further proceedings on remand. We say, lack of authentication, and relevance. review for abuse of discretion the district Ricigliano’s transcriptions, however, ap- court’s decision to admit or exclude evi- pear to have been admitted for the limited dence. See Los Angeles News Serv. v. purpose of showing what the two choruses’ Tullo, 973 F.2d 791, 800 (9th Cir.1992). basslines ‘‘looked like’’ before being re- duced by Dr. Walser.23 In his deposition, A. The Work Session Tape Dr. Walser testified that Ricigliano’s bass- The district court did not abuse its dis- line transcriptions were accurate. Wheth- cretion in refusing to admit a tape of Car- er Dr. Walser’s methodology was complete ey’s ‘‘work session’’ that Swirsky offered and accurate in comparing the two songs’ as evidence of direct copying. Although choruses is obviously relevant. Further, there is no explicit ruling by the district Ricigliano’s transcriptions were not intro- court on Swirsky’s offer to introduce the duced to prove the truth of the matter tape other than a passing reference in the asserted, but simply to give the court a minute order denying Swirsky’s motion for complete transcription of the basslines. reconsideration, that omission is not in and The transcriptions are therefore not hear- of itself an abuse of discretion. See GoTo. say. See Fed.R.Evid. 801(c). Finally, be- com, Inc. v. Walt Disney Co., 202 F.3d cause Swirsky’s own expert, Dr. Walser, 1199, 1209–1210 (9th Cir.2000) (stating admitted the accuracy of Ricigliano’s tran- that a district court’s silence in regard to a scriptions, there was no foundation or au-

23. The district court never ‘‘directly’’ used choruses of One and Thank God, only to dis- Ricigliano’s transcriptions to compare the count Dr. Walser’s expert methodology. WESTLANDS WATER DIST. v. U.S. DEPT. OF INTERIOR 853 Cite as 376 F.3d 853 (9th Cir. 2004)

thentication problem. See Fed.R.Evid. mation; Eluid Martinez, Commission- 901(a) and (b)(1); Fed.R.Civ.P. 56(e). We er of the U.S. Bureau of Reclamation; therefore reject Swirsky’s evidentiary Lester A. Snow, Regional Director of challenges. the U.S. Department of the Interior, Bureau of Reclamation, Mid–Pacific Conclusion Region; United States Department of We conclude that Swirsky’s expert ade- Fish and Wildlife; Jamie Rappaport quately explained his methodology and Clark, Director of the U.S. Fish and provided ‘‘indicia of a sufficient disagree- Wildlife Service; Michael Spear, Op- ment concerning the substantial similarity erations Manager of the Califor- of two works’’ so that the issue of the nia/Nevada Operations Office, U.S. substantial similarity of the two choruses Fish and Wildlife Service, Pacific Re- should have been presented to a jury. gion; United States Department of Brown Bag, 960 F.2d at 1472 (internal Commerce; Donald Evans, Secretary, quotations and citation omitted). We fur- United States Department of Com- ther conclude that the district court erred merce; National Marine Fisheries in ruling as a matter of law that measures Service; Penelope Dalton, Assistant one and five of One were scenes a faire. Administrator for Fisheries at Com- Finally, we reject Carey’s contention that merce; Rebecca Lent, Dr., Regional these measures were unprotectable as a Administrator of the U.S. Marine matter of law on the grounds that they Fisheries Service, Defendants, were unoriginal or mere musical ideas. Yurok Tribe, Defendant–Intervenor, We therefore reverse the summary judg- ment and remand this case to the district and court for further proceedings consistent with this opinion.24 Hoopa Valley Tribe, Defendant– Intervenor–Appellant, REVERSED and REMANDED. v. Sacramento Municipal Utility District; , Northern California Power Associa- tion, Plaintiffs–Intervenors–Appellees.

Westlands Water District; San Luis & Delta–Mendota Water Authority, WESTLANDS WATER DISTRICT; Plaintiffs–Appellees, San Luis & Delta–Mendota Water v. Authority, Plaintiffs–Appellees, United States Department of the Interi- v. or; Gale A. Norton, Secretary U.S. De- UNITED STATES DEPARTMENT OF partment of the Interior; United THE INTERIOR; Gale A. Norton, States Bureau of Reclamation; Eluid Secretary U.S. Department of the Inte- Martinez, Commissioner of the U.S. rior; United States Bureau of Recla- Bureau of Reclamation; Lester A.

24. Because we reverse the district court’s is moot. See Flowers v. First Hawaiian Bank, grant of summary judgment, Swirsky’s chal- 295 F.3d 966, 969 (9th Cir.2002). lenge to the denial of his motion to reconsider