Bridgeport Music, Inc. v. Umg Recordings, Inc.

• Citation: 585 F.3d 267
• Decision Date: 04 November 2009
• Docket Number: No. 07-5596.,07-5596.
• Parties: BRIDGEPORT MUSIC, INC., and Southfield Music, Inc., Plaintiffs-Appellees, v. UMG RECORDINGS, INC., and Universal Music Investments, Inc., Defendants-Appellants.
• Court: United States Courts of Appeals. United States Court of Appeals (6th Circuit)

585 F.3d 267

BRIDGEPORT MUSIC, INC., and Southfield Music, Inc., Plaintiffs-Appellees, v. UMG RECORDINGS, INC., and Universal Music Investments, Inc., Defendants-Appellants.

No. 07-5596.

United States Court of Appeals, Sixth Circuit.

Argued: April 23, 2008.

Decided and Filed: November 4, 2009.

ARGUED: Jeffrey D. Goldman, Mitchell, Silberberg & Knupp LLP, Los Angeles, California, for Appellants. Richard S. Busch, King & Ballow, Nashville, Tennessee, for Appellees. ON BRIEF: Jeffrey D. Goldman, Mitchell, Silberberg & Knupp LLP, Los Angeles, California, Philip M. Kirkpatrick, Dickinson Wright, Nashville, Tennessee, for Appellants. Richard S. Busch, King & Ballow, Nashville, Tennessee, for Appellees.

Before: DAUGHTREY, COOK, and FARRIS, Circuit Judges.^*

OPINION

MARTHA CRAIG DAUGHTREY, Circuit Judge.

This copyright-infringement case is "one of several hundred filed by [Bridgeport Music, Inc., and Southfield Music, Inc.] against entities and/or individuals associated with the `rap' or `hip-hop' music industry," seeking declaratory judgment, injunctive relief, and damages from some 800 defendants for copyright infringement under the federal copyright statute, 17 U.S.C. §§ 101 et seq. Bridgeport Music, Inc. v. Still N The Water Publ'g, 327 F.3d 472, 475 (6th Cir.2003). The district court severed the original case into 476 separate actions, resulting in the filing of numerous amended complaints based on allegedly infringing musical compositions and sound recordings. Id. The one now before us involves the work of George Clinton, known for his leadership of Parliament-Funkadelic, a key band in the 1960s and '70s "funk music" scene. Clinton and his co-authors later transferred ownership of some of the rights in their music to Bridgeport Music, Inc., and Southfield Music, Inc. (collectively, Bridgeport or the plaintiff), including the composition rights to his 1982 single, and perhaps best-known work, "Atomic Dog," which is the subject of the present case.

Public Announcement, an R & B and hip hop group, released the song "D.O.G. in Me" on their All Work, No Play album in 1998. Bridgeport claims that "D.O.G. in Me" infringed its copyright on Clinton's "Atomic Dog" based on the use of the phrase "Bow wow wow, yippie yo, yippie yea" (the "Bow Wow refrain"), as well as use repetition of the word "dog" in a low tone of voice at regular intervals and the sound of rhythmic panting in "D.O.G. in Me." A jury later found UMG Recordings, Inc., and Universal Music Group, Inc. (collectively, UMG or the defendant), to have willfully infringed Bridgeport's rights in "Atomic Dog" and awarded statutory damages of $88,980. UMG has appealed the verdict, claiming that the jury was improperly instructed and that UMG was entitled to judgment in its favor as a matter of law on the question of "substantial similarity." We find no reversible error and affirm.

I. FACTUAL AND PROCEDURAL HISTORY

Songwriters David Spradley, Garry Shider, and George Clinton created "Atomic Dog" in a recording studio in January 1982, working without a written score. As a result, the composition of "Atomic Dog" is embedded in the sound recording.¹ Testimony at trial indicated that the song was composed spontaneously — Spradley recorded the initial tracks in the studio and recalled that "when George arrived he had been partying pretty heavily so he was, you know, feeling pretty good," and was unsteady at the microphone. Spradley and Garry Shider "got on either side of him. We just kind of kept him in front of the microphone" while Clinton recorded the vocal tracks that same night. "Atomic Dog" was released in 1982 on the Computer Games album issued by Capitol Records, which retained the sound-recording copyright to the album. Spradley, Shider, and Clinton later transferred their interest in the composition of "Atomic Dog" to Bridgeport.

According to expert testimony at trial, "Atomic Dog" "is an anthem of the funk era, one of the most famous pieces from that whole era ... one of the most famous songs of the whole repertoire of funk and R & B." In addition to the song's continuing popularity on its own, "Atomic Dog" and other works by Clinton and Parliament-Funkadelic are said to have influenced many contemporary rap and hip hop artists, with the most notable being the style of rap popularized by West Coast rappers such as Dr. Dre, Ice Cube, Snoop Doggy Dogg, and Coolio. See Charles L. Hughes, Clinton, George, in AFRICAN AMERICAN NATIONAL BIOGRAPHY 331, 332 (Henry Louis Gates Jr. & Evelyn Brooks Higginbotham, eds., 2008). Testimony at trial confirmed that "Atomic Dog" and other works by Clinton are among the most popular works sampled by rap and hip hop artists. According to an expert musicologist, the Bow Wow refrain "is one of the most memorable parts of the song" and is often licensed by itself.

In 1998, A & M Records released the album All Work, No Play by the rap group Public Announcement. The album contains the song, "D.O.G. in Me," composed by songwriter Felony Davis. The following year A & M Records became a division of UMG. In 1998, Bridgeport became aware of "D.O.G. in Me" and contacted UMG's predecessors in interest, and later UMG itself, notifying them that elements of "Atomic Dog" were used in the recording without permission and requesting that the record label enter into a licensing agreement or cease distribution of the album and song. When no response was received this lawsuit followed.

As copyright owner, Bridgeport brought the action for copyright infringement of various songs in the George Clinton catalog in 2001 against multiple defendants, Bridgeport, Inc., et al. v. 11C Music, Civ. No. 3:01-0412 (M.D.Tenn. 2001). After the district court severed the original action, Bridgeport filed an amended complaint UMG. In turn, UMG filed a motion for summary judgment, claiming that the allegedly infringing elements in "D.O.G. in Me" — the use of the word "dog" in a low voice as "musical punctuation," the rhythmic panting, and the Bow Wow refrain — were not copyrightable as a matter of law. The district court denied UMG's motion, and the matter proceeded to trial. Following five days of testimony, the jury rendered a verdict in Bridgeport's favor, finding UMG liable for $22,245 in actual damages and $88,980 in statutory damages. Bridgeport then elected statutory damages. and the district court entered judgment in Bridgeport's favor. The district court denied UMG's subsequent motion for a new trial and motion for judgment as a matter of law, and UMG appealed.

II. DISCUSSION

Reduced to its essentials, this appeal challenges the propriety of the jury instructions in three respects: substantial similarity, fair use, and willfulness. On appeal, we review jury instructions as a whole "to determine whether they adequately inform the jury of the relevant considerations and provide a basis in law for aiding the jury in reaching its decision." Williams v. Paint Valley Local Sch. Dist., 400 F.3d 360, 365 (6th Cir.2005) (citation omitted). The legal correctness of the instructions is a question of law that is reviewed de novo. See id. The refusal of a district court to give a particular instruction, however, is reviewed for abuse of discretion. See id. at 365-66. Reversal of a jury verdict based on incorrect jury instructions is warranted only when the instructions, "viewed as a whole, [are] `confusing, misleading, and prejudicial.'" Romanski v. Detroit Entm't, LLC, 428 F.3d 629, 641 (6th Cir.2005) (citing Barnes v. Owens-Corning Fiberglas Corp., 201 F.3d 815, 822 (6th Cir.2000)). As a result, we will not set aside a jury verdict on the basis of a technically faulty jury instruction when the error is harmless. See Barnes, 201 F.3d at 822.

A. Substantial Similarity

There are two essential questions at the heart of any copyright infringement action: whether the plaintiff owned the copyrighted work and whether the defendant copied it. See Kohus v. Mariol, 328 F.3d 848, 853 (6th Cir.2003). The federal constitution requires, moreover, that to be actionable the copying must be of elements of the copyrighted work that are "original." See Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). To be original, an element must both be an independent creation of its author and involve at least minimal creativity. See id. at 345, 111 S.Ct. 1282. To establish that it has been copied, a plaintiff must either introduce direct evidence of the defendant's copying or prove it indirectly by showing that the defendant had access to the plaintiff's work and that there is a substantial similarity between it and the defendant's work, thus giving rise to an inference of copying. See Ellis v. Diffie, 177 F.3d 503, 506 (6th Cir.1999). Even if access cannot be proven, a plaintiff may prevail by showing a high degree of similarity between the two works. See id. at 507.

The Sixth Circuit has condensed the substantial-similarity inquiry into a two-part test: first, the court must "`identify[] which aspects of the artist's work, if any, are protectible by copyright'" and, second, "`determin[e] whether the allegedly infringing work is substantially similar to the protectible elements of the artist's work.'" Kohus, 328 F.3d at 855 (quoting Sturdza v. United Arab Emirates, 281 F.3d 1287, 1295-96 (D.C.Cir.2002) (internal quotation marks deleted)). Put another way, "copying is an essential element of infringement and substantial similarity between the plaintiff's and defendant's works is an essential element of copying." Wickham v. Knoxville Int'l Energy Exposition, 739 F.2d 1094, 1097 (6th Cir.1984). To complete the first step, the court must "filter" out elements of the work that are not original to the author. Murray Hill Publ'ns, Inc. v. Twentieth Century Fox Film Corp., 361 F.3d 312, 318 (6th Cir. 2004) (noting that the standard for originality is quite low and that the "vast majority of works make the grade quite easily") (quoting Fe...