TufAmerica, Inc. v. WB Music Corp.

• Decision Date: 08 December 2014
• Docket Number: No. 13–cv–7874 LAK.,13–cv–7874 LAK.
• Citation: 67 F.Supp.3d 590,113 U.S.P.Q.2d 1076
• Parties: TUFAMERICA, INC., Plaintiff, v. WB MUSIC CORP., et al., Defendants.
• Court: U.S. District Court — Southern District of New York

67 F.Supp.3d 590

113 U.S.P.Q.2d 1076

TUFAMERICA, INC., Plaintiff

v.WB MUSIC CORP., et al., Defendants.

No. 13–cv–7874 LAK.

United States District Court, S.D. New York.

Signed Dec. 8, 2014.

Kelly D. Talcott, for Plaintiff.

Brad D. Rose, Ilene S. Farkas, Erik T. Kindschi, Pryor Cashman LLP, for Defendants.

MEMORANDUM OPINION

LEWIS A. KAPLAN, District Judge.

This musical copyright case, which is before the Court on defendants' motion to dismiss the complaint, comes down to the question whether the defendants' alleged sampling and use of the word “oh” in an audio recording and music video entitled Run This Town gives rise to a plausible claim of infringement. Plaintiff's allegedly infringed works are a composition and a recording thereof in each of which that word—“oh”—appears once. Even assuming that defendants copied, or “sampled,” a portion of plaintiff's works, plaintiff has not stated a plausible claim.

Facts

The Claims

Plaintiff allegedly owns copyrights in a musical work called Hook & Sling Part I (the “Composition”) and a performance thereof by Eddie Bo and the Soul Finders that is contained in a master recording (the “Hook & Sling Master” or the “Master”).¹ Defendants allegedly produced and released an audio recording entitled Run This Town as well as a music video of the same title, each of which contains a performance of the song by Jay–Z, Rihanna, and Kanye West.²

The complaint alleges that “defendants used one or more unauthorized samples ^{[ 3 ]} of significant portions of the Hook & Sling Master and Composition” in Run This Town.⁴ In fact, however, this dispute is far narrower than that allegation suggests. Plaintiff's pre-suit claim letter, and its acquiescence on this motion in defendants' characterization of its claim, establish that the dispute relates entirely to defendants' alleged sampling and use of the word “oh”—which appears once in the Hook & Sling Master at approximately 0:03 and allegedly appears 42 times in Run This Town, the first of which may occur at approximately 0:22.⁵

Plaintiff asserts four infringement claims. The first and second allege common law copyright infringement of the Hook & Sling Master by defendants' audio recording and music video, respectively.⁶ The third and fourth allege statutory copyright infringement of the Composition by the same accused works, respectively.⁷

The Allegedly Infringed and the Accused Works

The Hook & Sling Master begins with Eddie Bo calling out “Are ya ready?” A group responds “Yeah!” At 0:03, Bo calls or shouts “oh!” and then “one, two, a—one, two, three, four.” Percussive music then begins, followed by more lyrics and a guitar melody with bass support. The lyrics indicate that Hook & Sling Part I was designed to introduce or accompany a dance called the “Hook and Sling.”

Run This Town bears very little and perhaps no similarity at all to Hook & Sling Part I. The melody and lyrics are entirely different. The lyrics do not contain the word “oh.” And while the Court assumes, as plaintiff contends, that the alleged “sample” of that word appears in the accused recording and video 42 separate times, it must be said also that it does so, if at all, only in the background and in such a way as to be audible and aurally intelligible only to the most attentive and capable listener.

Discussion

To prove infringement, a plaintiff must show “ownership of a valid copyright” and “unauthorized copying of the copyrighted work.”⁸ In order to establish unauthorized copying, the plaintiff “must demonstrate that: (1) the defendant has actually copied the plaintiff's work; and (2) the copying is illegal because a substantial similarity exists between the defendant's work and the protectible elements of plaintiff's.”⁹

The parties here assume for purposes of this motion that plaintiff has valid copyrights in the Hook & Sling Master and the Composition. They assume further that defendants “sampled”—i.e., actually copied—the word “oh” from the Master and used that sample in the accused works.¹⁰ On those assumptions, then, this case comes down to whether there is a substantial similarity between Run This Town —whether the audio recording or the music video or both—and Hook & Sling Part I or Eddie Bo's performance thereof in the Hook & Sling Master.

In considering whether two works are substantially similar, a court examines “ ‘whether the copying goes to trivial or substantial elements' of the original work”¹¹ and determines whether “the copying is quantitatively and qualitatively sufficient to support the legal conclusion that infringement (actionable copying) has occurred.”¹²

I. Protectibility of the Allegedly Infringed Elements

Not every instance of copying of a protected work is copyright infringement.¹³ Only “constituent elements of the work that are original” are protected. Hence, where the allegedly infringed material is not original, there is no copyright infringement.¹⁴

Defendants assume for purposes of this motion that plaintiff owns valid copyrights in the Hook & Sling Master and in the Composition. Nevertheless, defendants point out that it is appropriate for courts to dismiss copyright infringement claims for legal insufficiency where no protectible element of a copyrighted work has been copied.¹⁵ Resting on this principle, they specifically challenge the protectibility of the word “oh” in the Composition and of Eddie Bo's rendition of that word as it is performed in the Hook & Sling Master.¹⁶ They contend, in essence, that neither the word “oh” nor the performance thereof is sufficiently original to be protectible.¹⁷

With respect to the word “oh” as it appears in the Composition, defendants almost surely are right. The word “oh” is a single and commonplace word. Standing alone, it likely is not deserving of copyright protection.¹⁸ Even plaintiff's counsel at oral argument characterized his Composition claims as “extremely weak,” all but conceding that those claims—which would require the Court to conclude that the word “oh,” as it appears in the lyrics of the Composition, has sufficient originality to warrant copyright protection—were legally insufficient.¹⁹ As this motion may be resolved on other grounds, however, the Court need not decide whether the word “oh,” as it appears the Composition, is protectible. Rather, it assumes, arguendo, that “oh,” as it appears in Hook & Sling Part I, is protectible.

Whether Eddie Bo's performance of the word “oh” in the Hook & Sling Master is sufficiently original to warrant copyright protection is a somewhat closer question. Originality is a low bar,²⁰ and Eddie Bo's performance of the word “oh”—whether accurately characterized, as plaintiff's counsel would have it, as “exuberantly-shouted”²¹ or otherwise—may be “minimally creative” and thus protectible.²² Again, however, the Court need not reach this issue because defendants' motion to dismiss may be decided on other grounds. For purposes of this motion alone, the Court assumes that Eddie Bo's rendition of “oh” in the Master is protectible.

II. Substantial Similarity

Though the parties agree on the basic framework of the substantial similarity test, they quarrel over its particulars. Defendants contend that “whatever is alleged to have been copied must be substantial, protectable elements of the plaintiff's work.”²³ Plaintiff, on the other hand, contends that the proper frame of analysis is known as “ ‘fragmented literal similarity.’ ”²⁴ But the parties' discussions of their respective positions are not especially helpful or relevant.

The fundamental question on this motion is whether plaintiff has pleaded sufficient facts that, if accepted as true, would “state a claim to relief that is plausible on its face.”²⁵ To state such a claim, plaintiff must provide more than mere “labels and conclusions.”²⁶ “[A] formulaic recitation of the elements of a cause of action will not do.”²⁷ Rather, a claim is facially plausible only if the facts pleaded—assuming their truth and drawing all reasonable inferences in the plaintiff's favor—“allow [ ] the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.”²⁸ A court evaluating a Rule 12(b)(6) motion considers only the complaint and any materials attached to it, incorporated by reference into it, or “upon which [it] relies heavily.”²⁹

In considering this motion, the Court has considered plaintiff's arguments in light of the allegations in the complaint and has reviewed plaintiff's and the accused works, which the complaint necessarily incorporates and relies upon. Having done so, the Court concludes that—regardless of the characterization of the governing standard—the relevant works bear no substantial similarity to one another. It would be impermissible to conclude that defendants are liable in this case.

A. Quantitative Significance

Plaintiff's counsel conceded at oral argument on this motion that “there is no way” that the word “oh” is quantitatively significant to Hook & Sling Part I and to Eddie Bo's performance thereof in the Hook & Sling Master.³⁰ For good reason. The allegedly sampled portion of the Master constitutes only a fraction of a second in a recording that is about 2 minutes and 35 seconds long. Were the Court to find “oh” quantitatively significant to Hook & Sling Part I or to Eddie Bo's performance thereof, it in effect would read the quantitative significance element out of the substantial similarity test. This the Court will not do. The word “oh” has essentially no quantitative significance to Hook & Sling Part I or to the Hook & Sling Master.³¹

B. Qualitative Significance

To be sure, “no plagiarist can excuse the wrong by showing how much of his work he did not pirate.”³² Thus, the Court's conclusion that “oh” bears little or no quantitative significance to the Composition or the Master does not end its substantial similarity inquiry. Indeed, “even if the literal duplication is relatively small, the trier of fact may still find substantial similarity if the language duplicated is material...