Positive Black Talk Inc. v. Cash Money Records Inc. , 394 F.3d 357 ( 2005 )

United States Court of Appeals
Fifth Circuit
F I L E D
REVISED JANUARY 13, 2005
December 17, 2004
IN THE UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT Charles R. Fulbruge III
Clerk
__________________
Case No. 03-30625
__________________
POSITIVE BLACK TALK INC, doing business as Take Fo’
Records, doing business as Take Fo’ Publishing
Plaintiff – Counter Defendant - Appellant
v.
CASH MONEY RECORDS INC; ET AL
Defendants
CASH MONEY RECORDS INC; TERIUS GRAY, also known as Juvenile
Defendants - Counter Claimants - Appellees
and
UMG RECORDINGS INC, Universal Records Inc merged into UMG
Recordings Inc; UNIVERSAL MUSIC AND VIDEO DISTRIBUTION CORP;
Defendants - Appellees
No. 03-30702
POSITIVE BLACK TALK INC, doing business as Take Fo’ Records,
doing business as Take Fo’ Publishing
Plaintiff - Appellee
v.
CASH MONEY RECORDS INC; ET AL
Defendants
CASH MONEY RECORDS INC; UMG RECORDING INC, Universal
Records, Inc; UNIVERSAL MUSIC AND VIDEO DISTRIBUTION CORP;
TERIUS GRAY, also known as Juvenile
Defendants - Appellants
Appeals from the United States District Court
for the Eastern District of Louisiana
Before KING, Chief Judge, and SMITH and GARZA, Circuit Judges.
KING, Chief Judge:
This appeal arises out of a dispute concerning the popular
rap song Back That Azz Up. Plaintiff-Appellant Positive Black
Talk, Inc. filed this lawsuit against three defendants, alleging,
inter alia, violations of the United States copyright laws. The
defendants counterclaimed under the copyright laws, the Louisiana
Unfair Trade Practices Act, and theories of negligent
misrepresentation. After a jury trial, the district court
entered judgment in accordance with the verdict in favor of the
defendants on all of Positive Black Talk’s claims, as well as on
the defendants’ non-copyright counterclaims. The district court
awarded the defendants attorney’s fees only in relation to the
successful unfair trade practices counterclaim.
In this consolidated appeal, Positive Black Talk appeals the
judgment of the district court on the grounds that the court
erred in instructing the jury and in making several evidentiary
rulings. The defendants appeal the district court’s decision not
to award them attorney’s fees as the prevailing parties on
2
Positive Black Talk’s copyright infringement claim. We AFFIRM.
I. Factual and Procedural Background
In 1997, two rap artists based in New Orleans, Louisiana--
Terius Gray, professionally known as Juvenile (“Juvenile”), and
Jerome Temple, professionally known as D.J. Jubilee (“Jubilee”)--
each recorded a song that included the poetic four-word phrase
“back that ass up.” Specifically, with respect to Jubilee, he
recorded his song in November 1997 and entitled it Back That Ass
Up. In the Spring of 1998, Positive Black Talk, Inc. (“PBT”), a
recording company, released Jubilee’s Back That Ass Up on the
album TAKE IT TO THE ST. THOMAS. Jubilee subsequently performed the
song at a number of live shows, including the New Orleans
Jazzfest on April 26, 1998.
Turning to Juvenile, at some point during the fall of 1997,
Juvenile recorded his song and entitled it Back That Azz Up. In
May 1998, Cash Money Records, Inc. (“CMR”), the recording company
that produced Juvenile’s album 400 DEGREEZ, signed a national
distribution contract with Universal Records. Consequently, 400
DEGREEZ, which contained Juvenile’s song Back That Azz Up, was
released in November 1998. 400 DEGREEZ quickly garnered national
acclaim, selling over four million albums and grossing more than
$40 million.
In 2000, Jubilee applied for and received a certificate of
registration (Form PA) from the United States Copyright Office
3
for the lyrics of Back That Ass Up. Jubilee also obtained a
certificate of registration for the lyrics and music (Form SR) in
the sound recording of the song. On February 15, 2002, PBT
mailed a supplementary application for registration (containing
an application, deposit, and fee) to the Copyright Office,
stating that PBT should have been listed as the author and
copyright claimant on Jubilee’s prior PA registration (lyrics
only). On the same day, PBT filed this lawsuit in the Eastern
District of Louisiana, alleging copyright infringement and the
violation of the Louisiana Unfair Trade Practices Act (LUPTA).1
On February 19, 2002, four days after the suit was filed, the
Copyright Office received PBT’s supplementary registration
application.
In response, the defendants filed counterclaims, alleging
copyright infringement, violation of LUPTA, and negligent
misrepresentation. On February 11, 2003, the defendants filed a
motion for summary judgment, in which they argued, inter alia,
that the district court should dismiss PBT’s lawsuit for lack of
subject matter jurisdiction because PBT failed to comply with the
statutory requirement that the Copyright Office receive the
1
PBT named as defendants Juvenile and CMR, as well as
several entities affiliated with Universal Records (collectively,
“Universal”). Juvenile and CMR are represented together by
counsel, who submitted a single set of briefs on behalf of the
two parties. Universal is represented independently and
submitted a separate set of briefs. For the purposes of clarity
and convenience, we refer to these parties collectively as the
“defendants.”
4
registration application before a plaintiff may file an
infringement suit. The district court denied the motion,
reasoning that the defect had been cured and that dismissing the
case after a year of litigation, only to have PBT re-file the
suit, would be a tremendous waste of judicial resources.
In May 2003, the case proceeded to a jury trial. Although
the jury found that PBT proved by a preponderance of the evidence
that it owned a copyright interest in the lyrics and music of
Jubilee’s song Back That Ass Up, it nevertheless found in favor
of the defendants on PBT’s copyright infringement claim.
Specifically, the jury found that: (1) PBT failed to prove that
Juvenile or CMR factually copied Back That Ass Up; (2) the
defendants proved that CMR and Juvenile independently created
Back That Azz Up; and (3) PBT failed to prove that Back That Azz
Up is substantially similar to Back That Ass Up.2 The jury also
decided against PBT on its non-copyright claim. In addition, the
jury found in favor of the defendants on their LUPTA and
negligent misrepresentation counterclaims. However, the jury
2
The defendants also argued at trial (and defend the
verdict on appeal on the ground) that PBT’s infringement claim
fails for the reason that the phrase “back that ass up” cannot be
copyrighted. This is so, according to the defendants’ argument,
because the phrase is not original and because the merger
doctrine precludes extending protection to a phrase that is
necessary to describe a particular thing--in this case, a dance
move. However, the jury did not reach these issues because it
was instructed not to make any findings on those points once they
resolved factual copying and independent creation in favor of the
defendants. We therefore do not address these claims.
5
found against the defendants on their copyright infringement
counterclaim. Accordingly, the district court entered judgment
in favor of the defendants. The court awarded the defendants
attorney’s fees in relation to their LUPTA counterclaim but not
for their successful defense of PBT’s copyright infringement
claim.
PBT then filed a timely notice of appeal. PBT argues on
appeal that the district court erroneously instructed the jury on
relevant copyright laws and erred in making several evidentiary
rulings.3 The defendants cross-appeal the district court’s award
of attorney’s fees, contending that they are entitled to fees for
prevailing against PBT on its copyright claim.4
II. Subject Matter Jurisdiction
The district court’s subject matter jurisdiction was based
on 28 U.S.C. §§ 1331 (federal question) and 1338 (copyright
laws). That broad underlying jurisdiction was supplemented by
the specific statutory provisions of the copyright laws.
Specifically, 17 U.S.C. § 411(a) sets forth the jurisdictional
prerequisite that “no action for infringement of the copyright in
3
PBT does not appeal the district court’s adverse judgment
on either its own LUPTA claim or the defendants’ LUPTA
counterclaim.
4
The defendants cross-appeal neither the judgment relating
to their copyright infringement counterclaim nor the jury’s
finding that PBT has a valid copyright interest in Back That Ass
Up.
6
any United States work shall be instituted until registration of
the copyright claim has been made in accordance with this title.”
17 U.S.C. § 411(a) (2000); see also Creations Unlimited, Inc. v.
McCain, 112 F.3d 814, 816 (5th Cir. 1997) (per curiam)
(“registration with the copyright office is a jurisdictional
prerequisite to filing a copyright infringement suit”). Although
some circuits require that a plaintiff actually obtain a
certificate from the Copyright Office before bringing suit, the
Fifth Circuit requires only that the Copyright Office actually
receive the application, deposit, and fee before a plaintiff
files an infringement action. See Lakedreams v. Taylor, 932 F.2d
1103, 1108 (5th Cir. 1991). Here, the defendants argue that PBT
failed to comply with the statutory formality set forth in § 411
(and that the district court therefore lacked jurisdiction over
PBT’s copyright infringement claim) because PBT filed suit four
days before the Copyright Office received its application,
deposit, and fee (all of which PBT had mailed on the same day it
filed suit).5
5
This argument was originally advanced by the defendants
in a motion for summary judgment that the district court denied.
We review challenges to a district court’s jurisdiction de novo.
Shepard v. Int’l Paper Co., 372 F.3d 326, 329 (5th Cir. 2004).
However, the defendants do not cross-appeal the district court’s
denial of their motion for summary judgment. Nevertheless, the
jurisdiction argument was raised again in the brief of CMR and
Juvenile. In response, PBT filed a motion to strike these
portions of CMR and Juvenile’s brief on the ground that they did
not file a cross-appeal on that ruling. However, we would have
considered the question of subject matter jurisdiction sua sponte
in the absence of such briefing. See Hill v. City of Seven
7
We hold, along with the other courts that have considered
this matter, that the ultimate judgment is not rendered a nullity
in this instance by the district court’s refusal to dismiss PBT’s
suit for want of jurisdiction. Rather, we find that the
jurisdictional defect was cured when the Copyright Office
received PBT’s application, deposit, and fee four days after PBT
filed suit.
A number of other courts have found that a plaintiff who
files a copyright infringement lawsuit before registering with
the Copyright Office may cure the § 411 defect by subsequently
amending or supplementing its complaint once it has registered
the copyright. See, e.g., M.G.B. Homes, Inc. v. Ameron Homes,
Inc., 903 F.2d 1486, 1488-89 (11th Cir. 1990); J. Racenstein &
Co., Inc. v. Wallace, 1997 WL 605107, *1-2 (S.D.N.Y. Oct. 1,
1997) (“Where an action is commenced without registration being
effected, the defect can be cured by subsequent registration, and
an appropriate amendment to the complaint may be made to provide
Points, 230 F.3d 167, 169 (5th Cir. 2000) (recognizing that the
court must, if necessary, consider its subject matter
jurisdiction on its own motion). Thus, PBT’s motion is
functionally irrelevant with respect to the jurisdictional
question. However, to the extent that CMR and Juvenile argue
that PBT still has no valid copyright in Back That Ass Up, PBT is
correct that the issue is not properly before this court because:
(1) the jury found otherwise; (2) CMR and Juvenile did not file a
cross-appeal; and (3) deciding the matter against PBT would
“lessen[] the rights of [PBT].” See El Paso Natural Gas Co. v.
Neztsosie, 526 U.S. 473, 479 (1999). Thus, although we deny
PBT’s motion to strike portions of CMR and Juvenile’s brief, we
do not consider the defendants’ argument that PBT’s copyright is
invalid.
8
the necessary basis for subject matter jurisdiction.”);
ISC–Bunker Ramo Corp. v. Altech, Inc., 765 F. Supp. 1308, 1309
(N.D. Ill. 1990); Haan Crafts Corp. v. Craft Masters, Inc., 683
F. Supp. 1234, 1242 (N.D. Ind. 1988); Frankel v. Stein and Day,
Inc., 470 F. Supp. 209, 212 (S.D.N.Y. 1979). The notion that the
supplemental pleading cures the technical defect, notwithstanding
the clear language of § 411, is consistent with the principle
that technicalities should not prevent litigants from having
their cases heard on the merits.6 See 28 U.S.C. § 1653 (2000)
(allowing defective allegations of jurisdiction to be amended in
the trial or appellate courts); see also Haan Crafts Corp., 683
6
Our conclusion is not undermined by Harris v. Garner, 216
F.3d 970 (11th Cir. 2000) (en banc), in which the Eleventh
Circuit held that prisoners who file lawsuits may not supplement
their pleadings after their release to cure noncompliance with
§ 1997e(e) of the Prison Litigation Reform Act (PLRA). Although
§ 1997e(e) prohibits prisoners from bringing a civil action while
in custody without a showing of physical injury, the plaintiffs
in Harris filed suit, while still in prison, for non-physical
injury and then attempted to supplement their complaint after
their release to cure the § 1997e(e) defect. The Harris court,
strictly limiting its holding to prisoner cases, found that the
district court lacked jurisdiction because the plaintiffs were
prisoners at the time they filed the lawsuit and no supplement
could change that historical fact to cure the § 1997e(e) defect.
216 F.3d at 982-84. Crucial to the Harris court’s analysis was
its view that allowing a cure of the jurisdictional defect would
run contrary to the central congressional purpose in enacting the
PLRA, which was to reduce the number of prison lawsuits filed by
incarcerated prisoners who face little opportunity costs when
filing a lawsuit while in prison. Id. at 982-83. Thus, the
logic of Harris is inapplicable here because nothing suggests
that Congress viewed the pre-filing requirement in § 411 as
central to the purpose of the federal copyright laws. Cf. 2
MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT
§ 7.16[B][1][b][iii], at 7-164 (2004) [hereinafter NIMMER].
9
F. Supp. at 1242.
PBT did not amend its complaint in the court below.
Nevertheless, the Supreme Court has held, albeit in a non-
copyright case, that failure to amend a complaint in the district
court is no bar to finding a jurisdictional defect cured. See
Mathews v. Diaz, 426 U.S. 67, 73-76 (1976). In Diaz, the Supreme
Court upheld subject matter jurisdiction over a case in which the
plaintiff had not complied with a statutory formality requiring
him to file an application with the Secretary of Health,
Education, and Welfare before instituting a lawsuit. Id. The
Diaz Court stated:
We have little difficulty with Espinosa's failure to
file an application with the Secretary until after he
was joined in the action. Although 42 U.S.C. § 405(g)
establishes filing of an application as a nonwaivable
condition of jurisdiction, Espinosa satisfied this
condition while the case was pending in the District
Court. A supplemental complaint in the District Court
would have eliminated this jurisdictional issue; since
the record discloses, both by affidavit and
stipulation, that the jurisdictional condition was
satisfied, it is not too late, even now, to supplement
the complaint to allege this fact. Under these
circumstances, we treat the pleadings as properly
supplemented by the Secretary's stipulation that
Espinosa had filed an application.
Id. at 75 (internal citations and footnotes omitted). Similarly,
we consider PBT’s noncompliance with § 411 to be cured, even
though it did not file a supplemental complaint below.
Our conclusion that subject matter jurisdiction existed in
this case is also consistent with the Supreme Court’s decision in
10
Caterpillar Inc. v. Lewis, 519 U.S. 61 (1996). In Caterpillar, a
unanimous Supreme Court held that a procedural-jurisdictional
defect under 28 U.S.C. § 1441, which requires complete diversity
at the time of removal, had been cured when the non-diverse party
dropped out of the case after removal but before trial commenced.
519 U.S. at 73-75. The Court recognized that § 1441's
requirement that complete diversity exist at the time of removal
was not satisfied because the case was removed before the non-
diverse party dropped out. However, the Court found that the
§ 1441 defect should be excused--even though the “statutory flaw
. . . remained in the unerasable history of the case”--because:
(1) complete diversity jurisdiction ultimately existed before
judgment and (2) the case had already proceeded to judgment,
making “considerations of finality, efficiency, and economy . . .
overwhelming.” Id.; see also Grupo Dataflux v. Atlas Global
Group, 124 S. Ct. 1920, 1924-28 (2004) (reemphasizing that the
Court’s holding in Caterpillar pertained to curing a statutory
procedural-jurisdictional defect under § 1441).
The Court’s reasoning in Caterpillar applies to PBT’s
copyright infringement lawsuit because 28 U.S.C. § 1441 and 17
U.S.C. § 411 both have a substantive requirement as well as a
timing requirement. Section 1441 substantively requires complete
diversity, which must exist at the time of removal. In
Caterpillar, although the substantive requirement of complete
11
diversity was ultimately satisfied, the timing requirement was
not. However, because of judicial economy and finality concerns,
the Court excused the failure to comply with the timing element
of the statute. Similar to the removal statute at issue in
Caterpillar, § 411 has a substantive component and a timing
component--it requires the filing of a registration application,
which must occur prior to the institution of the suit. As in
Caterpillar, the substantive requirement here was satisfied
(because PBT filed a registration application, deposit, and fee),
but the timing element was not (because the Copyright Office
received the materials after PBT filed suit). Thus, Caterpillar
suggests that because PBT satisfied the substantive requirement
of § 411 before final judgment, “considerations of finality,
efficiency, and economy” counsel us to disregard the technical
defect in timing in this particular case. Caterpillar Inc., 519
U.S. at 75. Accordingly, the § 411 defect was cured, and subject
matter jurisdiction existed.
III. Jury Instructions on Copyright Law
A. Elements of Copyright Infringement
To establish a claim for copyright infringement, a plaintiff
must prove that: (1) he owns a valid copyright and (2) the
defendant copied constituent elements of the plaintiff’s work
that are original. Gen. Universal Sys. v. Lee, 379 F.3d 131, 141
(5th Cir. 2004); Szabo v. Errisson, 68 F.3d 940, 942 (5th Cir.
12
1995) (citing Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384,
387 (5th Cir. 1984)). To establish actionable copying (i.e., the
second element), a plaintiff must prove: (1) factual copying and
(2) substantial similarity. Bridgmon v. Array Sys. Corp., 325
F.3d 572, 576 (5th Cir. 2003). Factual copying “can be proven by
direct or circumstantial evidence.” Id. “As direct evidence of
copying is rarely available, factual copying may be inferred from
(1) proof that the defendant had access to the copyrighted work
prior to creation of the infringing work and (2) probative
similarity.”7 Peel & Co. v. Rug Market, 238 F.3d 391, 394 (5th
Cir. 2001). If a plaintiff establishes an inference of factual
copying (by showing access and probative similarity), the
7
This circuit adopted the term probative similarity in
Engineering Dynamics, Inc. v. Structural Software, Inc., 26 F.3d
1335, 1340 & n.4 (5th Cir. 1994), which credits Professor Alan
Latman with originating the term to resolve the confusion
resulting from many courts’ double use of “substantial
similarity” to describe both the similarity needed to prove
factual copying (i.e., what we term “probative similarity”) and
the similarity needed to prove that the copying is legally
actionable (i.e., what we term “substantial similarity”). See
also Alan Latman, “Probative Similarity” as Proof of Copying:
Toward Dispelling Some Myths in Copyright Infringement, 90 COLUM.
L. REV. 1187 (1990). A number of other circuits, including the
First, Second, Third, Tenth, and Eleventh, have also adopted the
term “probative similarity.” See, e.g., Dam Things From Denmark
v. Russ Berrie & Co., Inc., 290 F.3d 548, 562 & n.19 (3d Cir.
2002); Transwestern Pub. Co. v. LP Multimedia Mktg. Assocs.,
Inc., 133 F.3d 773, 775 (10th Cir. 1998); Ringgold v. Black
Entm’t Television, Inc., 126 F.3d 70, 75 (2d Cir. 1997); Bateman
v. Mnemonics, Inc., 79 F.3d 1532, 1541 (11th Cir. 1996); Lotus
Dev. Corp. v. Borland Int’l, Inc., 49 F.3d 807, 813 (1st Cir.
1995). The Ninth Circuit, among others, still uses “substantial
similarity” to describe the similarity needed for factual copying
as well as legally actionable copying. See, e.g., Swirsky v.
Carey, 376 F.3d 841, 844-45 (9th Cir. 2004).
13
defendant can rebut that inference, and thus escape liability for
infringement, if he can prove that he independently created the
work. Id. at 398; Miller v. Universal Studios, Inc., 650 F.2d
1365, 1375 (5th Cir. 1981). If a plaintiff has established
factual copying (and the defendant does not establish independent
creation), the plaintiff must also prove that the copyrighted
work and the allegedly infringing work are substantially similar.
Bridgmon, 325 F.3d at 577.
B. Standard of Review
PBT argues that the district court erred in instructing the
jury with respect to probative similarity, substantial
similarity, and independent creation. Where the challenging
party failed to preserve the error with proper objections, we
review the district court’s jury instructions only for plain
error. Russell v. Plano Bank & Trust, 130 F.3d 715, 719-21 (5th
Cir. 1997). The defendants argue that PBT did not preserve any
alleged error because PBT did not make specific, on-the-record
objections to the instructions in question. PBT counters that it
made general objections to the instructions on the record, and
that it made more specific objections off the record during a
conference in chambers.
We agree with the defendants that PBT failed to preserve the
error with respect to the jury instructions. See FED. R. CIV. P.
51(c)(1) (“A party who objects to an instruction or the failure
14
to give an instruction must do so on the record, stating
distinctly the matter objected to and the grounds of the
objection.”). First, PBT’s on-the-record objections pertained
only to the instructions as a whole, rather than indicating
specific objections, and therefore failed to comply with Rule 51.
See Russell, 130 F.3d at 719-20 (“We have repeatedly held that a
general objection to the district court’s jury instructions is
insufficient to satisfy Rule 51.”). Second, PBT’s off-the-record
objections, regardless of how specific, cannot satisfy Rule 51's
requirements. See id. at 720 n.2 (“Obviously, we cannot consider
off-the-record objections to jury instructions not subsequently
made part of the record . . . .” (quoting King v. Ford Motor Co.,
597 F.2d 436, 440 n.3 (5th Cir. 1979))). Thus, PBT did not
preserve the error, and we review the jury instructions for plain
error.
For PBT to prevail under the plain error standard, it must
show “that the instructions made an obviously incorrect statement
of law that was ‘probably responsible for an incorrect verdict,
leading to substantial injustice.’” Hernandez v. Crawford Bldg.
Material, 321 F.3d 528, 531 (5th Cir. 2003) (quoting Tompkins v.
Cyr, 202 F.3d 770, 784 (5th Cir. 2000)). Moreover, “[i]n
reviewing jury instructions for plain error, we are exceedingly
deferential to the trial court.” Tompkins, 202 F.3d at 784.
C. Factual Copying
15
1. Definition of Probative Similarity
PBT first argues that the district court erroneously
instructed the jury with respect to the definition of “probative
similarity.” The court instructed that: “Probative similarity
means that the songs, when compared as a whole, demonstrate that
Juvenile or CMR appropriated Jubilee’s song.” PBT avers that
this definition is misleading because, by including the phrase
“when compared as a whole,” it suggests that the jury, when
deciding whether factual copying occurred, must look to see
whether Back That Ass Up, as a whole, is sufficiently similar to
Back That Azz Up, as a whole. As PBT points out, however,
probative similarity requires only that certain parts of the two
works are similar, such that the jury may infer factual copying
in light of the defendant’s access to the plaintiff’s work.
Regardless, PBT’s claim fails for at least three reasons.
First, we cannot say that the jury instruction on probative
similarity is “an obviously incorrect statement of law.”
Hernandez, 321 F.3d at 531. The definition of probative
similarity in the jury instruction is taken directly from a Fifth
Circuit case. See Peel & Co., 238 F.3d at 397 (“The second step
in deciding whether Peel has raised a genuine issue of material
fact regarding factual copying . . . requires determining whether
the rugs, when compared as a whole, are adequately similar to
establish appropriation.” (emphasis added)). Accordingly, PBT
16
did not show plain error because the definition of probative
similarity was not “obviously incorrect.” Hernandez, 321 F.3d at
531.
We note that the district court’s reliance on Peel to define
probative similarity is understandable given that other Fifth
Circuit opinions offer little additional guidance on the
question. Peel is undoubtedly correct inasmuch as it instructs
that the ultimate issue with respect to probative similarity is
whether the similarities between the two works suggest that the
later-created work was factually copied. Peel should not be read
to suggest that a jury may draw an inference of factual copying
only if the whole of the defendant’s work largely replicates the
whole of the allegedly-copied work.8 Rather, the “when compared
as a whole” language in Peel regarding probative similarity means
that the jury must consider the whole of the first work
(including both copyrightable and non-copyrightable parts) and
the whole of the second work and then compare the two works,
looking for any similarities between their constituent parts.
This reading of Peel is not inconsistent with any Fifth Circuit
precedent and is consistent with other courts’ conceptualizations
of probative similarity. See, e.g., Gates Rubber Co. v. Bando
8
Indeed, such an interpretation would lead to unreasonable
results, such as where one author includes an entire chapter in
his book that replicates verbatim another author’s book but then
argues that the jury cannot infer factual copying on the grounds
that, because the other twenty chapters are not similar, the two
works are not probatively similar.
17
Chem. Indus., Ltd., 9 F.3d 823, 832 n.7 (10th Cir. 1993); O.P.
Solutions, Inc. v. Intellectual Prop. Network, Ltd., No. 96
Civ.7952, 1999 WL 47191, at *3 (S.D.N.Y. Feb. 2, 1999).9
In order to avoid confusion, a district court should explain
that the purpose of the probative similarity inquiry is to
determine whether factual copying may be inferred and that this
inquiry is not the same as the question of substantial
similarity, which dictates whether the factual copying, once
established, is legally actionable. See Eng’g Dynamics, Inc. v.
Structural Software, Inc., 26 F.3d 1335, 1340 & n.4 (5th Cir.
1994) (adopting the term “probative similarity”) (citing Alan
Latman, “Probative Similarity” as Proof of Copying: Toward
Dispelling Some Myths in Copyright Infringement, 90 COLUM. L. REV.
9
As the O.P. Solutions court explained:
When evaluating probative similarity, a court should
compare the works in their entirety, including both
protectable and unprotectable elements. See
Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d
119, 123 (2d Cir. 1994). This is appropriate because
although the plaintiff must ultimately establish
infringement by showing that the defendant copied a
substantial amount of protectable elements, (i.e., meet
the “substantial similarity” standard), the fact that
non-protectable elements were copied, although not a
basis for liability, can be probative of whether
protected elements were copied (i.e., help establish
probative similarity). See Gates Rubber, 9 F.3d at 832
n.7 (explaining that the failure to consider
nonprotectable elements when evaluating the question of
actual copying deprives the court of “probative, and
potentially essential, information on the factual issue
of copying”).
1999 WL 47191, at *4.
18
1187 (1990)); see also Bridgmon, 325 F.3d at 576 & n.7, 577
(noting that “probative” and “substantial” similarity are
analytically distinct concepts). Along these lines, a jury may
find that two works are probatively similar if it finds any
similarities between the two works (whether substantial or not)
that, in the normal course of events, would not be expected to
arise independently in the two works and that therefore might
suggest that the defendant copied part of the plaintiff’s work.
See Ringgold v. Black Entm’t Television, Inc., 126 F.3d 70, 75
(2d Cir. 1997) (“[P]robative similarity[] requires only the fact
that the infringing work copies something from the copyrighted
work; . . . substantial similarity[] requires that the copying is
quantitatively and qualitatively sufficient to support the legal
conclusion that infringement (actionable copying) has
occurred.”); 4 NIMMER § 13.01[B], at 13-12 (“[W]hen the question
is copying as a factual matter, then similarities that, in the
normal course of events, would not be expected to arise
independently in the two works are probative of defendant’s
having copied as a factual matter from plaintiff’s work.”);
Latman, 90 COLUM. L. REV. at 1214 (noting that probative
similarities are “such similarities between the works which,
under all the circumstances, make independent creation
unlikely[;] [s]uch similarities may or may not be substantial. .
. . Rather, they are offered as probative of the act of copying .
19
. . .”).
The second reason PBT’s claim--that the language “when
compared as a whole” in the instruction on probative similarity
constituted reversible error--fails is because the district court
offered guidance to the jury that a finding of factual copying
only requires similarity between portions of the plaintiff’s
work, not overall similarity. For example, when the court first
introduced the element of factual copying (about ten sentences
before giving the instruction defining probative similarity), the
court stated, “[t]he first question, factual copying, asks
whether Juvenile and CMR actually copied constituent elements of
D.J. Jubilee’s song in Juvenile’s song Back That Ass Up.”
(emphasis added). The court also instructed the jury that: “If
you conclude that factual copying did occur, that is that
Juvenile/CMR copied parts of Jubilee’s song Back That Ass Up,
[the defendants may still prevail if they demonstrate independent
creation].” (emphasis added). Given these instructions, we
cannot agree that the definition of probative similarity of which
PBT complains was misleading in this particular instance.
Third, the jury’s findings on independent creation and
substantial similarity negate any reasonable possibility that the
probative similarity instruction was “probably responsible for an
incorrect verdict.” Tompkins, 202 F.3d at 784 (citing ARA Auto.
Group v. Cent. Garage, Inc., 124 F.3d 720, 730 (5th Cir. 1997)).
20
Even if the jury misunderstood its task in evaluating probative
similarity as a result of the instruction, it found that Juvenile
independently created Back That Azz Up and that the two songs are
not substantially similar. Those findings prevent PBT from
recovering, regardless of the extent to which it proved factual
copying occurred.
2. Inverse Relationship Between Access and Probative
Similarity
PBT also complains that it requested an instruction on the
inverse relationship between the degree of access an alleged
infringer had to the original work and the degree of similarity
needed to show that copying actually occurred. Specifically, PBT
asked that the jury be instructed that “PBT does not have to show
as much similarity when a high degree of access is shown.” The
defendants counter that this inverse-relationship doctrine is not
the law in the Fifth Circuit. PBT’s argument fails for several
reasons.
The defendants are correct that this circuit has not
expressly adopted the principle that there is an inverse
relationship between the requisite proof of access and
similarity, and there is no need to do so here. However, this
doctrine finds support in other circuits. See, e.g., Swirsky v.
Carey, 376 F.3d 841, 844-45 (9th Cir. 2004) (“Where a high degree
of access is shown, we require a lower standard of proof of
21
[probative] similarity.”); Jorgensen v. Epic/Sony Records, 351
F.3d 46, 56 (2d Cir. 2003) (“There is an inverse relationship
between access and probative similarity such that the stronger
the proof of similarity, the less the proof of access is
required.” (internal quotation marks omitted)); Tienshan v.
C.C.A. Int’l (N.J.), Inc., 895 F. Supp. 651, 656 (S.D.N.Y. 1995)
(noting: “given that access has been conceded, the level of
probative similarity necessary to show physical copying is
diminished”); see also 4 NIMMER § 13.03[D], at 13-79 (“[T]he
stronger the proof of similarity, the less the proof of access
that is required.”). Thus, other courts have held that a
plaintiff who shows a high degree of similarity may satisfy the
factual copying requirement with a lesser showing of access,10
and, conversely, a plaintiff who shows a greater degree of access
may satisfy the factual copying element with a lesser degree of
probative similarity.11
10
In fact, a plaintiff may establish factual copying
without any proof of access “when the similarity between
plaintiff’s and defendant’s works is sufficiently striking such
that the trier of fact may be permitted to infer copying on that
basis alone.” 4 NIMMER § 13.02[B], at 13-26 (footnotes omitted);
see also Jorgensen, 351 F.3d at 56. However, this does not mean
that the reverse is true--i.e., that a plaintiff can establish
factual copying by overwhelming proof of access without some
showing of probative similarity. See 4 NIMMER § 13.03[D].
11
Under the inverse-relationship doctrine, a greater level
of access reduces the level of probative similarity necessary to
demonstrate factual similarity, at least to the extent that the
plaintiff need not prove striking similarity when access is
shown. However, the degree of access never affects the ultimate
burden to show substantial similarity. Proof of access
22
Regardless, the fact that this circuit has not explicitly
adopted this doctrine means that the district court did not
wrongly decline to give the jury instruction, and PBT’s argument
therefore fails. Finally, as we noted in the discussion of the
definition of probative similarity, any error with respect to
factual copying is rendered harmless by the jury’s finding on
substantial similarity, such that we cannot say that it was
probably responsible for an incorrect verdict.
D. Independent Creation
PBT also argues that the district court erred in instructing
the jury as to the defendant’s burden of proof in establishing
independent creation. Specifically, PBT argues that the court
instructed the jury that it must find independent creation by a
preponderance of the evidence, whereas the allegedly correct
burden of proof is clear and convincing evidence. On the issue
of independent creation, the court charged the jury:
If you conclude that factual copying did occur, that is
constitutes circumstantial evidence only of factual copying and
is irrelevant to the determination of whether that copying is
legally actionable (i.e., whether there is substantial
similarity). See 4 NIMMER § 13.03[D], at 13-81 (“Proof of access
can logically aid in showing copying as a factual matter--added
to the probative similarity that exists between two works, it can
bolster the proof that one was in fact derived from the other.
But access logically exerts no impact on copying as a legal
matter; no matter how steeped in plaintiff’s work defendant may
have been, if the resulting product is non-actionable as a matter
of law, then the absence of substantial similarity that must
underlie every successful claim still dooms the infringement
suit.”).
23
that Juvenile/CMR copied parts of Jubilee’s song Back
That Ass Up, the defendants may still rebut PBT’s
claims that Juvenile copied D.J. Jubilee’s song by
introducing evidence that Juvenile or CMR independently
created Juvenile’s song. If defendants offer evidence
of independent creation, PBT has the burden of proving
that the defendants in fact copied the protected
material.
This instruction is silent as to whether the burden of proof must
be met by a preponderance of the evidence or by clear and
convincing evidence. However, the special verdict form asked:
“Has CMR/Juvenile proved by a preponderance of the evidence that
CMR/Juvenile independently created the song Back That Azz Up?”
The jury instruction on independent creation did not
constitute plain error. First, it cannot be considered an
obviously incorrect statement of the law. PBT points to no Fifth
Circuit opinion, and in fact none exists, stating that a
defendant must prove independent creation by clear and convincing
evidence. The only circuit opinion PBT cites is Overman v.
Loesser, 205 F.2d 521 (9th Cir. 1953). The Ninth Circuit,
however, has expressly rejected an interpretation of Overman that
would require independent creation to be proven by clear and
convincing evidence. Granite Music Corp. v. United Artists
Corp., 532 F.2d 718, 723-24 (9th Cir. 1976). A defendant need
only prove independent creation by a preponderance of the
evidence to rebut the presumption of factual copying that arises
from a plaintiff’s evidence of access and probative similarity.
See id. Thus, there was no legal error.
24
Moreover, the district court’s instruction on independent
creation did not likely result in an incorrect verdict because a
defendant need only prove independent creation if the plaintiff
successfully establishes factual copying. Here, the jury
determined that Juvenile did not factually copy Jubilee’s song
when it found that the two songs were not probatively similar.
In addition, the jury’s finding on substantial similarity also
would have precluded PBT from recovering regardless of the jury’s
finding on independent creation. Thus, PBT’s argument fails
under the plain error standard.
E. Substantial Similarity
PBT’s last complaint regarding jury instructions relates to
the district court’s instruction on the definition of
“substantially similar.” The jury was instructed that:
Two works are substantially similar if the expression
of ideas in the plaintiff’s copyrighted work and the
expression of ideas in the defendant’s work that are
shared are substantially similar. The test for
expression of ideas is whether the intended audience
would find the total concept and feel of the two songs
to be substantially similar.
PBT complains that this instruction inadequately explains to the
jury the meaning of substantial similarity and is merely
tautological, essentially stating nothing more than that two
works are substantially similar if they are substantially
similar. Furthermore, PBT argues that the instruction
erroneously misleads the jury to conclude that they must
25
determine whether the whole of the two works are substantially
similar. Substantial similarity, PBT asserts, necessitates only
that parts of the songs are similar and that the similar parts
are qualitatively so important that the copying should be legally
actionable.12
12
The proposition that substantial similarity must take
into account the qualitative importance of the copied material to
the plaintiff’s work finds considerable support in other
circuits’ jurisprudence. See, e.g., Newton v. Diamond, 349 F.3d
591, 596 (9th Cir. 2003) (“The substantiality of the similarity
is measured by considering the qualitative and quantitative
significance of the copied portion in relation to the plaintiff’s
work as a whole.”); King v. Innovation Books, 976 F.2d 824, 829-
30 (2d Cir. 1992); Baxter v. MCA, Inc., 812 F.2d 421, 425 (9th
Cir. 1987) (“Even if a copied portion be relatively small in
proportion to the entire work, if qualitatively important, the
finder of fact may properly find substantial similarity.”). AS
NIMMER explains:
The question in each case is whether the similarity
relates to matter that constitutes a substantial
portion of plaintiff’s work--not whether such material
constitutes a substantial portion of defendant’s work.
The quantitative relation of similar material to the
total material contained in plaintiff’s work is
certainly of importance. However, even if the similar
material is quantitatively small, if it is
qualitatively important, the trier of fact may properly
find substantial similarity. . . . The trier must
ultimately determine the importance of that material
that is common to both parties’ works. . . . Even in a
musical composition, ordinarily, similarity must be
found in more than a brief and commonplace musical
sequence. . . . Although it could be safely said that
a similarity limited to a single note never suffices,
the superstition among many musicians that the copying
of three bars from a musical work can never constitute
an infringement is, of course, without foundation. . .
. The practice of digitally sampling prior music to use
in a new composition should not be subject to any
special analysis: to the extent that the resulting
product is substantially similar to the sampled
original, liability should result. The fact that the
26
Addressing PBT’s latter argument first, we note that the
jury instruction, carefully parsed, did not unfairly suggest that
the jury must compare the two works as a whole to determine if
there is overall similarity between the two songs. The
instruction states that the “[t]wo works are substantially
similar if the expression of ideas in the plaintiff’s copyrighted
work and the expression of ideas in the defendant’s work that are
shared are substantially similar.” (emphasis added). The phrase
“that are shared” correctly indicates that the jury should
compare the parts of the two songs that are similar in
determining substantial similarity. We note that the instruction
given tracks the language suggested in Fifth Circuit opinions.
See Creations Unlimited, Inc., 112 F.3d at 816; see also
Bridgmon, 325 F.3d at 576. In Creations Unlimited, we stated:
“To determine whether an instance of copying is legally
actionable, a side-by-side comparison must be made between the
original and the copy to determine whether a layman would view
the two works as ‘substantially similar.’”13 112 F.3d at 816.
sampled material is played throughout defendant’s song
cannot establish liability, if that snippet constitutes
an insubstantial portion of plaintiff’s composition.
4 NIMMER § 13.03[A][2], at 13-47-50. District courts in this
circuit have also adopted this line of reasoning. See R. Ready
Prods., Inc. v. Cantrell, 85 F. Supp. 2d 672, 683 (S.D. Tex.
2000).
13
The Ninth Circuit applies a two-part test to
determining substantial similarity. See, e.g., Three Boys Music
Corp. v. Bolton, 212 F.3d 477, 485 (9th Cir. 2000). The first
27
Thus, whether two works are substantially similar is a question
for the jury itself to determine by examining the actual works in
question. See id. Here, the jury heard the two songs and made a
determination that they were not substantially similar. Given
the parallel between the jury instructions and the language in
these cases, the jury instruction was not error.
When we look at the evidence presented to the jury, the
verdict may be explained by the possibility that the jury
rejected PBT’s argument that the phrase “back that ass up” was
the qualitatively most important part (or “hook”) of Jubilee’s
song. That phrase recurred only a few times in Jubilee’s song,
which is over seven minutes long.14 Thus, the jury may have
part of the test, the extrinsic test, determines if there are
concrete similarities between two works based on objective
criteria. The second part, the intrinsic test, involves a
subjective determination by the jury. The Ninth Circuit,
however, does not differentiate between probative and substantial
similarity, and the two-part test, as applied in that circuit,
therefore does not parallel our jurisprudence. The test
articulated in Creations Unlimited is similar to the Ninth
Circuit’s intrinsic test, which is “subjective and asks whether
the ordinary, reasonable person would find the total concept and
feel of the works to be substantially similar.” Three Boys Music
Corp., 212 F.3d at 485 (internal quotation marks omitted); see
also Taylor Corp. v. Four Seasons Greeting Cards, LLC, 315 F.3d
1039, 1042-43 (8th Cir. 2003) (applying intrinsic test); Cavalier
v. Random House, Inc., 297 F.3d 815, 822 (9th Cir. 2002) (“The
intrinsic test is a subjective comparison that focuses on whether
the ordinary, reasonable audience would find the works
substantially similar in the total concept and feel of the
works.” (internal quotation marks omitted)).
14
PBT also concedes that song titles are not copyrightable
and therefore could not be considered by the jury in the
substantial similarity determination. Accordingly, the jury was
instructed to disregard the similarity between the titles in
28
believed that, as the defendants argued, the hook was the
sampling from the Jackson Five’s song I Want You Back,15 and that
belief would explain why the jury determined that the songs are
not substantially similar. Accordingly, we cannot say that the
jury instruction, even if it had been erroneous, probably
resulted in an incorrect verdict.
Finally, the jury found that Jubilee did not establish a
circumstantial showing of factual copying because the songs were
not probatively similar and that Juvenile independently created
Back That Azz Up. Thus, PBT failed to prove factual copying, and
PBT could not have prevailed on its copyright infringement claim,
regardless of whether the two songs are substantially similar.16
deciding the question of substantial similarity.
15
As we discuss below, the defendants offered evidence
that the sampling of the Jackson Five constituted a significant
portion of Back That Ass Up and was potentially the most
memorable part of the song.
16
We pause here to address an erroneous criticism, urged
at oral argument, of our logic in resolving PBT’s jury-
instruction challenges--namely, that we failed to account for the
cumulative effect of the asserted errors. With respect to each
purported error in the jury instructions, this court has reasoned
that the particular alleged error is not plain because, inter
alia, it did not probably result in an incorrect verdict. More
specifically, we noted that the jury found against PBT on other
grounds on which PBT would have had to prevail in order to
succeed on its infringement claim (i.e., error on probative
similarity is harmless because the jury found independent
creation and no substantial similarity; error on independent
creation is harmless because the jury found no substantial
similarity; and error on substantial similarity is harmless
because the jury found independent creation). None of our
findings, however, relies exclusively on the fact that the jury
found against PBT on other elements of an infringement action,
29
IV. Evidentiary Rulings
A. Standard of Review
We review the district court’s evidentiary rulings for an
abuse of discretion. Kainda v. Gulf Coast Med. Personnel, LP,
363 F.3d 568, 581 (5th Cir. 2004). “An error in the exclusion of
evidence is not grounds for reversal unless substantial rights
are affected or unless the affirmance is inconsistent with
substantial justice.” Reddin v. Robinson Prop. Group Ltd P’ship,
239 F.3d 756, 759 (5th Cir. 2001).
B. The Big Easy Mailer
PBT argues that the district court abused its discretion by
excluding from evidence a promotional mailer circulated by Big
Easy (the “Big Easy Mailer”), the now-dissolved former
distributer of 400 DEGREEZ. The Big Easy Mailer, PBT claims,
proves that Juvenile composed Back That Azz Up after he heard
Jubilee’s Back That Ass Up because it lists ten songs on 400
DEGREEZ but does not include Back That Azz Up. PBT contends that
and this court would find no plain error with respect to each
challenged instruction regardless of the jury’s other findings.
PBT urges this court to consider the jury instruction errors
cumulatively, but “[a]bsent any particularized error, there can
be no cumulative error.” Williams v. Drake, 146 F.3d 44, 49 (1st
Cir. 1998). Furthermore, we note that PBT would have to prevail
on nearly all of its challenges to demonstrate plain error
because if the jury’s finding against PBT on any one necessary
element (probative similarity, independent creation, or
substantial similarity) stands, then PBT could not have recovered
and the error thus would not probably have led to an incorrect
verdict.
30
this document, in combination with two other documents that show
400 DEGREEZ was being re-released, proves that 400 DEGREEZ was
originally released without the song Back That Azz Up. Thus, PBT
argues, the Big Easy Mailer would have rebutted Juvenile’s claim
that he recorded Back That Azz Up before ever hearing Jubilee’s
song.17
The district court properly excluded the Big Easy Mailer
because it was both an unauthenticated document and hearsay not
within the business records exception. The only witnesses that
PBT produced who could testify with respect to the Big Easy
Mailer were Kenneth Taylor, a former employee of Big Easy who
worked as a telephone sales agent, and Earl Mackie, the founder
of PBT who received the Big Easy Mailer in the mail. In his
deposition, Taylor indicated that he was familiar with the basic
process of creating mailers (or one-sheets), which are sent to
retail record stores to solicit sales for new products. However,
he stated that he never worked in any capacity related to the
creation of mailers at Big Easy, and he had no personal knowledge
whatsoever with respect to the Big Easy Mailer. Taylor also
admitted that he could not say whether Big Easy created the
mailer or if someone else had created it. Mackie could testify
only that he received the Big Easy Mailer in the mail. None of
17
PBT offered no witness who could testify to ever seeing
or hearing an earlier version of 400 DEGREEZ that did not contain
Back That Azz Up.
31
this testimony establishes that the Big Easy Mailer is a document
that was created by Big Easy or that it had any connection with
Juvenile or CMR, which is what PBT claims the document purports
to be. Thus, the district court did not abuse its discretion in
finding that the Big Easy Mailer was not properly authenticated.
See FED. R. EVID. 901.
Furthermore, PBT sought to introduce the Big Easy Mailer to
prove the truth of the matter asserted in the mailer: that Back
That Azz Up was not included in an earlier release of 400 DEGREEZ.
This was hearsay under FED. R. EVID. 801 and was excluded under
FED. R. EVID. 802. PBT argues that the Big Easy Mailer falls
within the business records exception to the hearsay rule. See
FED. R. EVID. 803(6). “Rule 803(6) provides that [a]ny person in a
position to attest to the authenticity of the records is
competent to lay the foundation for the admissibility of the
records; he need not have been the preparer of the record, nor
must he personally attest to the accuracy of the information
contained in the records.” New Orleans Cold Storage & Warehouse
Co., Ltd. v. N.L.R.B., 201 F.3d 592, 601 n.9 (5th Cir. 2000)
(internal quotation marks omitted) (alteration in original).
However, as we have discussed, PBT offered no witness that
could attest to the authenticity of the Big Easy Mailer, and the
foundation for Rule 803(6) was therefore lacking. For example,
no witness could establish that the mailer was “made at or near
32
the time by, or from information transmitted by, a person with
knowledge.” FED. R. EVID. 803(6); see also Theriot v. Bay Drilling
Corp., 783 F.2d 527, 533 (5th Cir. 1986) (applying Rule 803(6)).
Furthermore, PBT points to no indicia of trustworthiness relating
to the Big Easy Mailer that might justify a more liberal
application of Rule 803(6). See United States v. Morrow, 177
F.3d 272, 295 (5th Cir. 1999) (per curiam) (“Rule 803(6) turns on
the reliability or trustworthiness of the records.”); United
States v. Duncan, 919 F.2d 981, 986 (5th Cir. 1990) (“The
district court has great latitude on the issue of
trustworthiness.”); Miss. River Grain Elevator, Inc. v. Bartlett
& Co., Grain, 659 F.2d 1314, 1318-19 (5th Cir. 1981).
Accordingly, the district court did not abuse its discretion in
excluding the Big Easy Mailer.
C. Expert Witness Testimony
PBT next complains that the district court erred by quashing
the subpoena of John Joyce, one of PBT’s expert witnesses, and by
excluding Joyce’s testimony because he refused to be deposed.
Gayle Murchinson, who had been retained as an expert for the
defendants, and Joyce are both professors at Tulane University.
Joyce is tenured; Murchinson is not. When Joyce learned that he
would serve on the committee that would evaluate Murchinson for
tenure, he decided to withdraw as an expert witness because he
believed that a conflict of interest existed. Accordingly, Joyce
33
did not appear at his scheduled deposition. Both PBT and the
defendants subpoenaed Joyce for deposition, but Joyce retained
his own counsel and moved to quash the subpoena. The magistrate
judge granted Joyce’s motion, and the district court affirmed.
The district court subsequently granted the defendants’ motion in
limine to exclude Joyce’s testimony because he refused to be
deposed. PBT appeals the district court’s decision to affirm the
grant of Joyce’s motion to quash and the defendant’s motion to
exclude.
We review the decision to quash a subpoena for abuse of
discretion. In re Dennis, 330 F.3d 696, 704 (5th Cir. 2003);
Tiberi v. CIGNA Ins. Co., 40 F.3d 110, 112 & n.4 (5th Cir. 1994).
FED. R. CIV. P. 45 provides that a court shall quash (or modify) a
subpoena if it “subjects a person to undue burden.” FED. R. CIV.
P. 45(c)(3)(A)(iv). Whether a subpoena subjects a witness to
undue burden generally raises a question of the subpoena’s
reasonableness, which “requires a court to balance the interests
served by demanding compliance with the subpoena against the
interests furthered by quashing it.” 9A CHARLES ALAN WRIGHT & ARTHUR
R. MILLER, FEDERAL PRACTICE AND PROCEDURE § 2463 (2d ed. 1995).
“[T]his balance of the subpoena’s benefits and burdens calls upon
the court to consider whether the information is necessary and
unavailable from any other source.” Id.
Here, the district court did not abuse its broad discretion
34
in determining that the subpoena subjected Joyce to undue burden
because of his believed conflict of interest. PBT has not shown
that the information that Joyce would have conveyed to the jury
was so necessary that it warranted his coerced participation in
the trial. Joyce had no personal knowledge relevant to the case
and was subpoenaed only to give his expert opinion. Furthermore,
the information that Joyce allegedly would have imparted to the
jury was not only available from other sources, it was actually
provided at trial by PBT’s other expert witness. Cf. Kaufman v.
Edelstein, 539 F.2d 811, 818-22 (2d Cir. 1976) (holding that
expert witnesses may be compelled to testify when their testimony
is unavailable from any other source and vital to the trial). As
PBT explains in its brief on the attorney’s fee issue:
The district court’s consideration of the testimony of
PBT’s expert, Harold Battiste, in evaluating PBT’s
claim is clearly understandable. Mr. Battiste, one of
the most knowledgeable, seasoned, and widely acclaimed
musician/conductor/composers ever to come from the
Southern United States staked his reputation on the
sufficiency of PBT’s claims by offering his well-
documented expertise. He explained that the musical
phrases in question are substantially similar, and are
exact in purpose, form, and importance in both songs.
In light of these factors, the district court properly decided
that the burden on Joyce was undue.18
18
Our conclusion is also guided by FED. R. CIV. P.
45(c)(3)(B)(ii), which provides that a district court may quash a
subpoena if it “requires disclosure of an unretained expert’s
opinion or information not describing specific events or
occurrences in dispute and resulting from the expert’s study made
not at the request of any party . . . .” Although it is
debatable whether this subsection of Rule 45 directly applies
35
For similar reasons, the district court did not abuse its
discretion in granting the defendants’ motion in limine to
exclude Joyce’s testimony. The defendants were unable to depose
Joyce before trial, and it seems likely that Joyce would have
opposed any attempt to call him as a witness. Cf. Barrett v.
Atl. Richfield Co., 95 F.3d 375, 379-82 (5th Cir. 1996) (barring
expert testimony for failure to comply with scheduling order and
appear at depositions). Furthermore, PBT produced another
qualified expert witness, whose testimony largely replicated what
Joyce would have offered, thus negating any claim PBT might have
that its substantial rights were affected. See Polythane Sys.,
Inc. v. Marina Ventures, Int’l, Ltd., 993 F.2d 1201, 1208 (5th
Cir. 1993); Carter v. Massey-Ferguson, Inc., 716 F.2d 344, 349
(5th Cir. 1983) (holding that exclusion of evidence did not
affect party’s substantial rights when other, admitted evidence
served the same function). Accordingly, the district court did
not err with respect to Joyce’s testimony.
D. Music Critics’ Articles and Testimony
PBT also contends that the district court committed
reversible error by excluding, as hearsay, several newspaper
articles that purported to find strong similarities between
(because Joyce was originally a retained witness but then decided
not to testify), it is clear that the Rules furnish district
courts with the discretion not to compel unwilling experts to
testify as to their opinions under certain circumstances.
36
Juvenile and Jubilee’s songs. PBT argues that the articles are
not hearsay because they were not offered to prove that the two
songs are substantially similar (i.e., the matter asserted).
Rather, PBT claims, the articles were only offered to show that
“numerous members of the intended audience believed that the two
songs were substantially similar.”
The district court did not abuse its discretion in excluding
these newspaper articles. As we have noted previously, the
question of substantial similarity is typically left to the fact
finders’ own impressions. See Bridgmon, 325 F.3d at 576; Three
Boys Music Corp., 212 F.3d at 485; King v. Ames, 179 F.3d 370,
376 (5th Cir. 1999). Thus, a court could reasonably conclude
that the views of persons not on the jury and not qualified to
give an expert opinion on substantial similarity should not be
admitted.
Furthermore, the district court did not abuse its discretion
in excluding the testimony of the authors of these articles.
While such testimony would have cured a potential hearsay problem
with the articles, it would not have made the evidence any more
probative. In addition, the district court acted within its
broad discretion by excluding the testimony on the grounds that
PBT failed to include the witnesses on its pre-trial witness
lists and that the witnesses had not been deposed before trial.
See, e.g., Singer v. City of Waco, 324 F.3d 813, 822 (5th Cir.
37
2003).
E. Evidence of PBT’s Own Sampling
PBT’s final complaint regarding the district court’s
evidentiary rulings is that the court abused its discretion by
admitting the defendants’ evidence regarding the extent to which
Jubilee’s Back That Ass Up sampled music from a Jackson Five
song, I Want You Back. In its motion in limine, PBT requested
that the court “preclude defendants from introducing any
documentary evidence or examining any witness on the subject of
PBT’s use of the sound recordings or musical works of another in
connection with the creation of the music in its version of the
song Back That Ass Up.” The district court denied the motion.
At the beginning of trial, PBT renewed its objection regarding
“the use of the Michael Jackson unclean hands business,” and
stated that it “object[s] to anything along those lines.” The
defendants argue that the evidence of sampling was properly
admitted for two purposes: (1) to establish an unclean hands
defense and (2) to refute PBT’s claim that the phrase “back that
ass up” is the hook in Jubilee’s song. PBT argues that the
evidence was inadmissible under either theory and that the danger
of unfair prejudice substantially outweighed its probative value.
See FED. R. EVID. 403.
PBT is correct that the evidence was not admissible on the
ground that it established an unclean hands defense. The unclean
38
hands doctrine is used to defeat an undeserving plaintiff’s claim
for equitable relief against a defendant that he has injured.
See Mitchell Bros. Film Group v. Cinema Adult Theater, 604 F.2d
852, 863 (5th Cir. 1979) (“The alleged wrongdoing of the
plaintiff does not bar relief unless the defendant can show that
he has personally been injured by the plaintiff's conduct.”).
Because the defendants could not show that they were personally
injured by PBT’s sampling of the Jackson Five song, they had no
basis for invoking that sampling as the basis of an unclean hands
defense. See Alcatel USA, Inc. v. DGI Techs., Inc., 166 F.3d
772, 796 (5th Cir. 1999). Thus, the evidence should not have
been admitted on that ground.
However, the district court acted within its discretion in
admitting the evidence for the purposes of determining the hook
of Back That Ass Up. As we have already discussed, a relevant
issue for the jury to consider was the qualitative importance of
the parts of Jubilee’s song that are similar to Juvenile’s song.
PBT claimed that the similarities between the two songs included
the very heart, or hook, of Jubilee’s song. To counter this
claim, the defendants were entitled to offer evidence that the
hook of Back That Ass Up was not the four word phrase but rather
another element of the song--namely, the Jackson Five sampling.
The evidence showed that the Jackson Five sampling recurred
throughout a significant portion of Jubilee’s song (including
39
each time the phrase “back that ass up” was used) and that it was
a recognizable part of the song. Cf. Santrayall v. Burrell, 993
F. Supp. 173, 176 (S.D.N.Y. 1998) (excluding evidence of sampling
because it “comprise[d] only a very minor part of [the
plaintiff’s] song”). Henry Holden, a co-owner of PBT who added
the Jackson Five sample to Back That Ass Up, admitted that he
included the sample because it stayed in his mind. Further, the
fact that the sample came from a Jackson Five song was relevant
to the determination of the song’s hook because the considerable
popularity of the Jackson Five likely makes it more recognizable
to the audience. PBT has not shown that the introduction of the
fact that Back That Ass Up sampled a portion of the Jackson Five
song created a risk of unfair prejudice that substantially
outweighed this probative value. Accordingly, the district court
did not abuse its discretion in deciding that the probative value
of the sampling evidence outweighed any risk of unfair prejudice
or confusion. See Campbell v. Keystone Aerial Surveys, Inc., 138
F.3d 996, 1004 (5th Cir. 1998) (noting that FED. R. EVID. 403 “is
an extraordinary measure that should be used sparingly.” (quoting
United States v. Morris, 79 F.3d 409, 411 (5th Cir. 1996))).
PBT argues on appeal that the defendants could have
introduced evidence that the Jackson Five material was the hook
of Back That Ass Up without implying that the sampling was
40
unauthorized.19 PBT is correct that the fact that the sampling
was unauthorized is not probative of the question of the song’s
hook and that such information may have had a prejudicial effect.
In a more perfect world, the district court would have admitted
the evidence of sampling but would have either prohibited the
defendants from characterizing the sampling as unauthorized or
given a limiting instruction concerning the purposes for which
the jury could consider the evidence.20 See United States v.
Sanders, 343 F.3d 511, 518 (5th Cir. 2003) (“Under the Rule 403
standard, when the court issues a limiting instruction, it
minimizes the danger of undue prejudice.”). Regardless, any
potential error here is insufficient to warrant reversal. The
jury had before it more than ample evidence from which it could
have found in favor of the defendants, even if it had never heard
that the Jackson Five sampling was unauthorized. Thus, PBT’s
substantial rights were not affected by the admission of the
evidence, and we therefore find no reversible error.
V. Attorney’s Fees
19
In the district court proceedings, PBT never
distinguished between admitting the evidence of sampling and
allowing evidence that the sampling was unauthorized. Rather,
PBT only requested that the district court exclude all evidence
relating to sampling. The failure to raise this distinction
probably resulted from the parties’ focus on the unclean hands
defense before and during trial.
20
The district court, of course, would have had to reject
the defendants’ unclean hands defense in order to accept this
limitation on the admission of sampling evidence.
41
The defendants separately appeal the denial of their
requests for attorney’s fees. Universal requested $323,121.25 in
fees, and CMR and Juvenile requested $263,040. Of those, CMR and
Juvenile traced $39,456 of their fees to their successful LUPTA
counterclaim, for which LA. REV. STAT. 51:1409(A) mandates they
receive fees as the prevailing parties. The district court
denied the fee requests for the successful copyright defense and
granted CMR and Juvenile’s request for the LUPTA fees at the
markedly reduced sum of $2,500.
This court reviews the district court’s refusal to award
attorney’s fees in a copyright infringement case for an abuse of
discretion. Creations Unlimited, Inc., 112 F.3d at 817.
A trial court abuses its discretion in awarding or refusing to
award attorney’s fees when its ruling is based on an erroneous
view of the law or a clearly erroneous assessment of the
evidence. Sanmina Corp. v. BancTec USA, Inc., 94 Fed. Appx. 194,
196 n.10 (5th Cir. 2004).
Section 505 of the Copyright Act provides: “In any civil
action under this title, the court in its discretion may allow
the recovery of full costs by or against any party other than the
United States or an officer thereof[;] [e]xcept as otherwise
provided by this title, the court may also award a reasonable
attorney’s fee to the prevailing party as part of the costs.”
17 U.S.C. § 505 (2000). As the district court below explicitly
42
recognized, an award of attorney’s fees to the prevailing party
in a copyright action, although left to the trial court’s
discretion, “is the rule rather than the exception and should be
awarded routinely.” McGaughey v. Twentieth Century Fox Film
Corp., 12 F.3d 62, 65 (5th Cir. 1994) (quoting Micromanipulator
Co. v. Bough, 779 F.2d 255, 259 (5th Cir. 1985)). Noting that
attorney’s fees should be routinely awarded, the district court
nevertheless exercised its discretion not to award such fees in
this case.
After McGaughey was decided, the Supreme Court decided
Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994). In Fogerty, the
Court rejected the Ninth Circuit’s “dual” standard of assessing
attorneys’s fees under the Copyright Act, under which “prevailing
plaintiffs are generally awarded attorney’s fees as a matter of
course, while prevailing defendants must show that the original
suit was frivolous or brought in bad faith.” 510 U.S. at 520-21.
Instead, Fogerty adopted the Third Circuit’s “‘evenhanded’
approach in which no distinction is made between prevailing
plaintiffs and prevailing defendants.” Id. at 521. The Supreme
Court reasoned that this was the better rule:
Because copyright law ultimately serves the purpose of
enriching the general public through access to creative
works, it is peculiarly important that the boundaries
of copyright law be demarcated as clearly as possible.
To that end, defendants who seek to advance a variety
of meritorious copyright defenses should be encouraged
to litigate them to the same extent that plaintiffs are
encouraged to litigate meritorious claims of
43
infringement.
Id. at 527. However, the Court made clear that it was not
adopting the British Rule, under which prevailing parties--
whether plaintiffs or defendants--are always granted attorney’s
fees. See id. at 533 (“Petitioner argues that . . . both
prevailing plaintiffs and defendants should be awarded attorney’s
fees as a matter of course, absent exceptional
circumstances. . . . [W]e reject this argument for the British
Rule.”). The Court reasoned that the language of § 505 that the
court “may” award fees “clearly connotes discretion” and that
Congress legislated the Copyright Act against the “strong
background of the American Rule.” Id. Accordingly,
“[p]revailing plaintiffs and prevailing defendants are to be
treated alike, but attorney’s fees are to be awarded to
prevailing parties only as a matter of the court’s discretion.”
Id. at 534; see also Hogan Sys., Inc. v. Cybresource Int’l, Inc.,
158 F.3d 319, 325 (5th Cir. 1998).21
21
In Hogan Systems, this court stated:
[T]he case law of the [Fifth Circuit] is in accord with
the Supreme Court’s rule in Fogerty. Hogan would have
this court believe that the Fifth Circuit’s
“discretionary but routinely awarded” McGaughey
standard for attorney’s fees is the same as the British
Rule and thus has been rejected explicitly by the
Supreme Court. It is clear that this is not the case.
The language of Fogerty clearly allows for judicial
discretion in determining whether attorney’s fees
should be awarded. So does the McGaughey rule.
158 F.3d at 325.
44
The Fogerty Court noted that “[t]here is no precise rule or
formula for making these determinations, but instead equitable
discretion should be exercised in light of the considerations we
have identified.” 510 U.S. at 534 (internal quotation marks
omitted). However, the Court agreed that a non-exclusive list of
factors may be used to guide the district court’s discretion;
this list includes “frivolousness, motivation, objective
unreasonableness (both in the factual and in the legal components
of the case) and the need in particular circumstances to advance
considerations of compensation and deterrence.”22 Id. at 534 n.19
(internal quotation marks omitted). The Fifth Circuit previously
applied these factors to deny a successful copyright defendant’s
request for attorney’s fees. Creations Unlimited, Inc., 112 F.3d
at 817 (“We see no abuse of discretion in the district court’s
rejection of the [defendants’] motion for attorney’s fees. The
court properly applied the Lieb factors . . . before denying the
[defendants’] motion . . . .”).
Here, the district court set forth the standard described
above, noting the text of § 505, the principle that fee awards--
although discretionary--are the rule rather than the exception
and should be awarded routinely, and that under Fogerty the
court’s discretion is guided by the non-exclusive list of Lieb
factors. The court then determined that in this case, those
22
The Third Circuit set forth these factors in Lieb v.
Topstone Indus., Inc., 788 F.2d 151, 156 (3d Cir. 1986).
45
factors suggested that attorney’s fees should not be awarded to
the defendants. Specifically, the court stated:
In addition to presiding over the [five] day trial of
this matter, the [c]ourt considered several complex and
potentially dispositive pre-trial motions. Having
gained an understanding of the applicable law and a
thorough appreciation of PBT’s claims, the [c]ourt does
not feel that this litigation was frivolous,
objectively unreasonable, or without proper motive.
PBT had a renowned music expert to support its position
even though the jury gave greater weight to the
testimony of Defendants’ expert. The [c]ourt is
convinced that PBT’s claims were brought in good faith.
Therefore, an award of attorney’s fees would not serve
to deter future meritless litigation brought by other
parties.
The defendants’ claim that the district court applied the
wrong legal standard is incorrect. The Supreme Court has
explicitly approved of a district court considering frivolity and
motivation as two of the multiple factors in a non-exclusive list
may guide the court’s discretion over attorney’s fees in
copyright cases. Fogerty, 510 U.S. at 535 n.19. Thus, to the
extent that the defendants argue that the district court erred in
considering these factors at all, they are unquestionably wrong.
Second, to the extent that the defendants argue that the district
court erred because it considered only frivolity and bad faith,
they are equally wrong. The district court did not focus solely
on whether the lawsuit was frivolous or brought in bad faith;
rather, the court expressly found that the claims were “not
objectively unreasonable,” and it provided a reasonable
46
explanation for this finding.23 Furthermore, the district court
considered the possible effect, or lack thereof, that awarding
fees would have on deterring future meritless lawsuits, and it
determined that this is a rare case in which awarding fees is not
appropriate. Finally, the defendants’ assertion that the
23
The defendants’ argument that PBT’s claim was per se
objectively unreasonable because the jury found in favor of the
defendants is without merit--to accept such an argument
necessarily would transform the discretionary rule into the
clearly rejected British Rule, under which a prevailing defendant
always recovers fees. In order for the rule to remain
discretionary rather than mandatory, a district court must be
able, under certain circumstances, to refuse to award fees.
Furthermore, although the district court, when denying the
defendants’ motion for summary judgment, noted that it doubted
that PBT would prevail at trial on the issue of whether the
phrase “back that ass up” was protectable under copyright laws,
the court later determined, after adjudicating a number of
substantive motions and hearing the full trial on the merits,
that PBT’s claim was not objectively unreasonable and that it did
not warrant attorney’s fees.
We note briefly a troubling aspect of Universal’s brief to
this court. After arguing that frivolity is not the appropriate
standard but rather that the court should consider the fact that
the defendants prevailed at trial, Universal states in its brief:
“The Universal Defendants prevailed on nearly every aspect of
PBT’s claim. When a plaintiff pursues claims without merit, the
‘failure of the district court to award attorney fees and costs
to the prevailing party will, except under the most unusual
circumstances constitute an abuse of discretion.’” (emphasis
added) (quoting Diamond Star Bldg. Corp. v. Freed, 30 F.3d 503,
506 (4th Cir. 1994)). Universal, however, omits critically
relevant language from Diamond Star. The Fourth Circuit actually
wrote: “Indeed, when a party has pursued a patently frivolous
position, the failure of a district court to award attorney’s
fees and costs to the prevailing party will, except under the
most unusual circumstances, constitute an abuse of discretion.”
Diamond Star Bldg. Corp., 30 F.3d at 506 (emphasis added). Given
Universal’s own vehemence regarding the distinction between
prevailing on the merits and frivolity (much less patent
frivolity), this type of misrepresentation is unacceptable.
47
district court improperly “might have been motivated by sympathy
for a small, locally-owned, family company” simply has no support
in the record. Therefore, the district court did not abuse its
discretion in concluding that the defendants were not entitled to
attorney’s fees under § 505 in this instance.
VI. Conclusion
For the forgoing reasons, in No. 03-30625 we AFFIRM the
judgment of the district court in favor of the defendants; in No.
03-30702, we AFFIRM the district court’s minute entry denying
defendants’ motions for award of attorney’s fees on the copyright
infringement claim. All outstanding motions are denied. Costs
in No. 03-30625 shall be borne by plaintiff; costs in No. 03-
30702 shall be borne by defendants.
48