Unpublished Opinions

Effective January, 2007, litigants may, without restriction, cite unpublished opinions in their briefs, thanks to the Supreme Court. This long-overdue reform ends an abusive practice by which federal judges have limited the use of their own law-creating. The principal argument for unpublished opinions - that it permits overworked courts to dash off insignificant opinions - was a make-weight: If an opinion was useless, no one would cite it. On the other hand, if an unpublished opinion does contain significant statements of law, litigants should be aware of it and able to use it as support; after it, it is what at least three appellate judges thought. (There are district courts who mark their opinions unpublished too, but that is less common).

I want to give one recent example of an opinion in a copyright case that provides important statements on the fundamental issue of how substantial similarity is determined. The case is Boone v. Jackson, 2006 WL 3327058 (2d Cir. Nov. 15, 2006). Here is the opinion. Note that the court of appeals disagreed with the district court's reasoning and that if one were unable to cite the appellate opinion, the citation would have to be a mere affirmance of the district court:

Plaintiff argues that the district court improperly dismissed her copyright claim with respect to two versions of her song “Holla Back” because (1) in its “probative similarity” analysis, the court wrongly “hyperdissected” the songs at issue into protectable and nonprotectable elements instead of considering the songs as a whole and (2) there were issues of material fact whether “substantial similarities” existed between the songs such that an ordinary observer would recognize an appropriation of plaintiff's song by defendant.

At the outset, we note that the district court opinion is at times unclear as to which similarity analysis-probative or substantial-it was undertaking. The court correctly noted that a copyright claim requires both proof of (1) actual copying, which a plaintiff may establish by demonstrating probative similarity, and of (2) improper use, which requires substantial similarity, see Repp v. Webber, 132 F.3d 882, 889 & n. 1 (2d Cir.1997), but it appears to have confused the distinction-and hence the analysis-between the two at a few junctures in its opinion. Nevertheless, after a de novo review of the district court's decision as well as the record, Feingold v. New York, 366 F.3d 138, 148 (2d Cir.2004), including the experts' reports and audio recordings of both “Holla Back” and “Young N,” viewed in the light most favorable to plaintiff, this Court agrees with the district court that defendants did not infringe Boone's copyright, although we do not, as explained below, adopt all of the district court's reasoning.

As to plaintiff's first argument, our precedent makes clear that “dissection” of a work in terms of, inter alia, its lyrics, harmony, or structure, is often required in the probative similarity context to determine whether a defendant has actually copied a plaintiff's work, see Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir.1946), and even plaintiff herself submitted expert testimony that dissected the songs at issue. See Repp, 132 F.3d at 889 (noting expert testimony as method of demonstrating probative similarity). We agree with plaintiff, however, that in undertaking the probative similarity analysis, the district court erred by dissecting the works into protectable and non-protectable elements and then comparing the protectable elements for similarities because such an analysis is appropriate to the substantial similarity context. Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119, 123 (2d Cir.1994) copied), ‘[probative] similarity’ relates to the entire work, not just the protectible elements.”)... [2] Nevertheless, the district court appears to base its decision on the permissible ground that the plaintiff's expert conceded the alleged similarities at issue are different and dissimilar, thereby weakening plaintiff's argument that defendant copied her work. Boone, 2005 WL 1550511, at *3-*4. Plaintiff's expert claimed that defendants' song shared three fundamental similarities with “Holla Back,” which evidenced actual copying: (1) the position of the phrase “holla back” in the hook, or chorus, of the song; (2) the rhythmic construction of the phrase, specifically the eighth-note, eighth-note, quarter-note syncopation and its instrumentation; and (3) the nature and quality of the lyric's repetition in the hook, particularly the call and response element. But a review of the deposition transcript reveals that plaintiff's expert undermined his own conclusions by conceding, inter alia, that the hook in both songs have different lyrics; that the rhythmic constructions are different in that Holla Back varies the beat and vocalization pattern of the “holla back” phrase while Young N does not; that the bass instrumentation of the defendants' hook does not share length, pitch, and rhythm with plaintiff's hook; and that the call and response applied only generically to the two songs and was executed in defendants' song “in a different way and to varying degrees.” There is no probative similarity where an expert concedes that allegedly similar music elements, alleged to have been copied, were in fact different. See, e.g., Johnson v. Gordon, 409 F.3d 12, 21-23 (1st Cir.2005); cf. Attia v. Soc'y of the N.Y. Hosp., 201 F.3d 50, 58 (2d Cir.1999) (“Where, as here, a defendant's work is dissimilar in the very respects in which it is claimed to be similar, that can obviously influence the conclusion as to whether the claimed similarity in fact exists or is substantial.”). Thus, we find that as a matter of law no probative similarities between “Holla Back” and “Young N” exist.

FN2. We are mindful that probative similarity does permit the dissection of the work on other grounds, such as structure, harmony, lyrics, and instrumentation and that expert testimony may dissect two works to elucidate where the two are similar to an extent that suggests actual copying. See, e.g., McDonald v. Multimedia Entm't, Inc., No. 90 Civ. 6356(KC), 1991 WL 311921, at *2 (S.D.N.Y. July 19, 1991) (“Evidence admissible on the issue of ‘probative similarity’ includes expert testimony ‘dissecting’ the two works and discussing the works' relationships to other earlier works, for the purpose of illuminating whether similarities between the two works are more likely due to copying or independent creation.”)

*2 As to plaintiff's second argument, assuming arguendo that plaintiff had demonstrated probative similarity and hence actual copying, we agree with plaintiff that the district court misapplied our precedent in undertaking the substantial similarity analysis, but that error does not mandate reversal. The court below seems to have employed the “more discerning ordinary observer test” discussed in Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1003 (2d Cir.1995), from which the district court concluded that in examining the works at issue to determine whether improper use has occurred, it must extract unprotectable elements “from consideration to determine if the protectable elements standing alone, are substantially similar.” Boone, 2005 WL 1560511, at *3 (citing Knitwaves, 71 F.3d at 1002). however, we expressly cabined the broad application of this standard, In Knitwaves,see 71 F.3d at 1003, and our subsequent decisions have emphasized that “[i]n applying this test, a court is not to dissect the works at issue into separate components and compare only the copyrightable elements,” Boisson v. Banian, Ltd., 273 F.3d 262, 272-73 (2d Cir.2001). Instead, a “court, confronted with an allegedly infringing work, must analyze the two works closely to figure out in what respects, if any, they are similar, and then determine whether these similarities are due to protected aesthetic expressions original to the allegedly infringed work, or whether the similarity is to something in the original that is free for the taking.” Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127, 134-35 (2d Cir.2003). This is because a defendant may infringe a copyright not only by literally copying a portion of a work, but also by “parroting properties that are apparent only when numerous aesthetic decisions embodied in the plaintiff's work of art ··· are considered in relation to one another.” Id. at 134.

Under this standard, we agree with the district court's analysis that in examining only the protected elements, there was as a matter of law no substantial similarity between any protectable portion of plaintiff's and defendants' respective songs. Indeed, it is well-established that common phrases are not protectable under copyright, see, e.g., Acuff-Rose Music, Inc. v. Jostens, Inc., 155 F.3d 140, 144 (2d Cir.1998) (finding the phrase “you've got to stand for something, or you'll fall for anything” too common to accord copyright protection), and undisputed evidence supported the district court's finding that “holla back” was one such phrase. Defendants, for instance, produced a list of over 30 songs that detailed the mainstream and widespread use of “holla back” in popular American music at around the same time plaintiff's song was recorded and released, and even plaintiff's expert admitted that the phrase “holla back” spoken in an eighth-note, eighth-note, quarter-note pattern could not be deemed original.

*3 The district court erred, however, in not considering whether the defendant “parrot[ed] properties that are apparent only when numerous aesthetic decisions embodied in the plaintiff's work of art-the excerpting, modifying, and arranging of public domain compositions, if any, together with the development and representation of wholly new motifs and the use of texture and color, etc.-are considered in relation to one another.” Einstein Moomjy, Inc., 338 F.3d at 134. Guided by a common sense inquiry of the works as a whole, Boisson, 273 F.3d at 273, we find the combination of elements in each work is distinct. There is undisputed evidence that the songs' respective structures, lyrics, and harmonies are all different, and as our probative similarity discussion above makes clear, plaintiff's own expert conceded numerous differences in the very similarities alleged to exist between the works. See Attia, 201 F.3d at 57-58 (affirming grant of summary judgment where defendant's work had numerous differences in the very elements in which it was alleged to be similar). There is, therefore, no substantial similarity between the songs “Holla Back” and “Young N.” As such, plaintiff could not establish as a matter of law the elements required to prove an infringement claim.

Accordingly, for the reasons above, the judgment of the district court is hereby AFFIRMED.