By Laura W. Brill

Hollywood and other creative centers in California make the Ninth Circuit one of the most important centers for the copyright law. One might imagine, therefore, that if the basic principles governing the substantive and procedural rules for handling infringement claims relating to music and movies were well settled anywhere, it would be here.

A flurry of recent amended opinions, grants of rehearing en banc, and gaps noted by oral argument panels, suggest the Circuit is grappling with questions at the core of how such claims will be decided and managed. Published and unpublished opinions both reveal uncertainty about where the court will be heading as we head into 2020.

In Hall v. Swift, 782 F. App’x 639 (9th Cir.), opinion amended and superseded, 786 F. App’x 711 (9th Cir. 2019), a Ninth Circuit panel in October 2019 reversed a district court’s Rule 12(b)(6) dismissal of a claim asserting that Taylor Swift’s lyrics about players and haters infringed the band 3LW’s lyrics about the same generic groups – players and haters.

The plaintiffs song lyrics went like this.

Playas, they gonna play

And haters, they gonna hate

Ballers, they gonna ball

Shot callers, they gonna call

That ain’t got nothin’ to do

With me and you

That’s the way it is

That’s the way it is.

Ms. Swift’s lyrics added some repetition and changed the shot callers and ballers to heartbreakers and fakers, among other differences.

Her accused song, Shake It Off, goes like this.

Cause the players gonna play, play, play, play, play

 And the haters gonna hate, hate, hate, hate, hate

Baby I’m just gonna shake, shake, shake, shake, shake

Shake it off / Shake it off

Heartbreakers gonna break, break, break, break, break

And the fakers gonna fake, fake, fake, fake, fake

Baby I’m just gonna shake, shake, shake, shake, shake

Shake it off / Shake it off.

The district court explained that 3LW’s lines about players and haters were brief phrases that simply restated the behaviors of groups defined by these same traits. It also observed that players and haters were widely known concepts and terms at the time. These lines were too unoriginal to create an issue of substantial similarity of protected expression in comparing the two works. Expert testimony was unnecessary, in the district court’s view, because the case did not involve rhythmic, melodic, harmonic, or other musical similarities, but instead required only analyzing similarities between snippets of lyrics, a matter within the court’s purview.

In an unpublished opinion, the Ninth Circuit panel reversed. While this opinion was not lengthy, it explained that the basis for reversal was the panel’s conclusion that originality is normally a question of fact, and that it is inappropriate in the context of deciding a Rule 12(b)(6) motion for a district court to “constitute[] itself as the final judge of the worth of an expressive work.”

Just a few weeks later, the panel amended its opinion. The panel maintained the reversal but deleted virtually all analysis from the opinion. The amendment deleted the statement that originality is normally a question of fact. It also deleted the critique that a district court ought not constitute itself as the final judge of the worth of an expressive work. As amended, the opinion now says little more than that reversal is warranted because even taking into account prior lyrics about players and haters, “Hall’s complaint still plausibly alleged originality.”

What is the court to do on remand? What facts are needed, and is expert testimony now required? Once the expert reports are prepared and submitted and the experts are deposed, will summary judgment then be available, or will a jury trial be necessary? The Ninth Circuit’s standard civil jury instructions are not much help here, as they suggest jurors might be asked to determine as a factual matter whether the plaintiff “use[d] at least some minimal creativity.” Manual of Model Civil Jury Instructions for the District Courts of the Ninth Circuit § 17.14(2) (Ninth Circuit Jury Instructions Comm. 2019). The commentary to those instructions is also unhelpful, noting that “[o]riginality is often a fact question for the jury,” suggesting that sometime the opposite is true. Id. § 17.14 cmt.

Another recent unpublished opinion, this one relating to the TV series “Empire,” raises similar questions. Astor-White v. Strong, 733 F. App’x 407 (9th Cir. 2018). The district court had noted that the plaintiff’s treatment for a TV show entitled “King Solomon,” about a wealthy African-American music mogul, was in the record, along with copies of the entire first season of “Empire,” which had a similar theme. With both works before it, the district court concluded that it was capable of determining in the context of a motion to dismiss that the elements of the plaintiff’s work that could also be found in “Empire” were too generic to give rise to a claim of copyright infringement. The district court went on to note that because no amount of discovery could change this fact, leave to file a second amended complaint was unnecessary.

A divided panel of the Ninth Circuit disagreed, finding that an amendment could cure the deficiencies by focusing on the similarities that are “particularly important where the author of a treatment alleges infringement by a now full season-long series.” A concurrence by Judge Wardlaw observed that “judges have no particular expertise in determining what is and is not generic in cases like these, where the judge could not have seen a similar show at the time it was written” and that the plaintiff’s treatment was “revolutionary” at the time it was written. Judge Nguyen, concurring in part and dissenting in part, cited numerous Ninth Circuit decisions approving of district court rulings disposing of copyright claims as a matter of law where similarities were overly generic and based on ideas, rather than expression.[1]

These unpublished decisions are in tension with a 2018 published opinion, which affirmed a Rule 12(b)(6) dismissal that was based on lack of substantial similarity.   Rentmeester v. Nike, Inc., 883 F.3d 1111 (9th Cir. 2018), cert. denied, 139 S. Ct. 1375 (2019) (considering similarities in visual works containing images of Michael Jordan). There, the Ninth Circuit panel agreed with the district court’s conclusion that with the accused and allegedly infringed works both before the court, it was possible to determine as a matter of law that similarities between the two works were not derived from protected expression.

Following Rentmeester, an unpublished opinion in April 2019 affirmed a ruling granting a motion to dismiss claims of infringement concerning the movie Zootopia, suggesting at least some panels believe that the ability to decide these matters at the pleading stage is not controversial. Esplanade Prods., Inc. v. Walt Disney Co., 768 F. App’x 732 (9th Cir. 2019) (affirming the same district court judge who was reversed in Hall v. Swift).

Whether and under what circumstances a Rule 12(b)(6) motion relating to lack of substantial similarity can successfully dispose of a copyright infringement claim may be put to rest in 2020 when the Ninth Circuit will likely decide Zindel v. Fox Searchlight Pictures, No. 18-56087 (9th Cir. argued Dec. 9, 2019). The appeal arises from a district court’s 12(b)(6) dismissal of a complaint alleging that the hit movie The Shape of Water infringed elements of Paul Zindel’s play, Let Me Hear You Whisper.

As in the cases discussed above, the district court had concluded that with the relevant works before it, the court could analyze in the context of a motion to dismiss whether protected elements of the play were substantially similar to corresponding elements in the movie.

At oral argument, at least some members of the Ninth Circuit panel appeared not to be so sure. The panel’s questions included the suggestion that Rentmeester may be distinguished because it relates to a visual work. Also up for discussion was what rule might help the district courts distinguish substantial from insubstantial similarities at the pleading stage? Does expert testimony (outside the context of music cases) really help judges make comparisons between literary works? If a published opinion is needed to clarify how copyright cases are handled how can the panel avoid a situation in which parties are forced to a year of discovery only to have a judge focus on the same basic issues that would have been presented at the motion to dismiss stage?

Another doctrine that the Ninth Circuit may help to clarify in 2020 relates to the so-called “inverse ratio rule.” The term is imprecise. Some Ninth Circuit opinions state that this “rule” provides that access and substantial similarity are inextricably linked and that where a high degree of access is shown, a lower standard of proof of substantial similarity is required. Swirksy v. Carey, 376 F.3d 841, 844 (9th Cir. 2004); Rice v. Fox Broad. Co., 330 F.3d 1170, 1178 (9th Cir. 2003); Three Boys Music Corp. v. Bolton, 212 F.3d 477, 485 (9th Cir. 2000).

In its better application, however, the term means little more than when striking similarity is present, access need not be proven in order to show that the defendant copied the plaintiff’s work. Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03[D] (2017) (“Thus, the stronger the proof of similarity, the less the proof of access that is required. It should be obvious that the converse proposition is not equally valid.”).

Rentmeester (cited above) recently sought to provide clarity on this issue, stating in that the rule assists only in proving copying, not in proving unlawful appropriation.  883 F.3d at 1124.

Less than one month later, a different panel in Williams v. Gaye, 885 F.3d 1150 (9th Cir. 2018) (affirming a jury verdict that “Blurred Lines” infringed “Got To Give It Up”), retreated to the prior formulation. The original panel decision in Williams announced that access and substantial similarity are “inextricably linked,” and according to that panel, the doctrine “operates like a sliding scale.”

As with the standards governing substantial similarity, the doctrine is in flux.  In July 2018, the same panel amended its order, deleting the discussion of the inverse ratio rule in its entirety. 895 F.3d 1106 (9th Cir. 2018).

Again, 2020 may bring more clarity. The Ninth Circuit panel decision in Skidmore v. Led Zeppelin, 905 F.3d 1116, 1130 (9th Cir. 2018) (the “Stairway to Heaven” case) adopted Rentmeester’s description of the inverse ratio rule, and because the case was remanded for further proceedings on other issues, invited the district court also to consider whether a jury instruction on the inverse ratio rule would be appropriate.

That decision, however, was vacated when the appeal was accepted for en banc review to address whether the copyright in musical works would be limited to the deposit copy. 925 F.3d 999 (9th Cir. 2019). At the recent en banc oral argument, the questioning included discussion of the inverse ratio rule, suggesting at least some possibility of a decisive ruling on the applicability of this “rule” in the Ninth Circuit.

While one many wonder why this pseudo-scientific concept ever found its way into Ninth Circuit cases in the first place, a decisive ruling on how, if at all, it is to be used, should be helpful.

Counsel for artists, studios, and record companies will all be watching closely to see how the Ninth Circuit’s 2020 copyright docket plays out. With the rights regarding works of creative expression hanging in the balance, we can hope that the new year will bring greater certainty regarding standards governing substantial similarity and copying – two issues at the core of copyright litigation.

[1] On remand, the district court again dismissed the plaintiff’s second and third amended complaints, concluding that plaintiff had not amended the complaint to state a plausible cause of action for copyright infringement. Judgment was entered for defendants in June 2019, Astor-White v. Strong, 2019 WL 3017684 (C.D. Cal. June 14, 2019), and a new appeal is pending. No. 19-55735 (9th Cir. appeal docketed June 25, 2019).