Copyright Commons

• Publication year: 2022
• Author: Elizabeth S. Lachman

COPYRIGHT COMMONS

Elizabeth S. Lachman
MGA Entertainment

PUTTING THE "DARK HORSE" BACK IN THE BARN: NINTH CIRCUIT CONFIRMS A DISTRICT COURT'S GATEKEEPING ROLE IN COPYRIGHT CASES

On March 10, 2022, the Ninth Circuit upheld a District Court's vacatur of a jury verdict which found that pop music star Katy Perry's 2013 hit "Dark Horse" infringed the copyright of "Joyful Noise," a Christian hip hop recording released in 2008 by Flame.¹ The unanimous jury verdict, which awarded plaintiffs $2.8 million in damages, found that an eight-note ostinato in "Dark Horse"—an ostinato is a repeating musical phrase—is substantially similar to the ostinato that plays throughout "Joyful Noise" and that defendants had a reasonable opportunity to hear "Joyful Noise" before composing "Dark Horse."² Occurring in the Summer of 2019, the 12-day jury trial focused heavily on expert testimony by musicologists on both sides. After the unanimous jury verdict, defendants renewed their Rule 50 motion for judgment as a matter of law, arguing, among other things, that—as a matter of law—the "Joyful Noise" ostinato was comprised of commonplace musical building blocks and thus was not original and not protectable under copyright law, and that no reasonable jury could have found otherwise. The District Court, methodically conducting the ostensibly objective extrinsic analysis required in all copying cases, agreed and vacated the jury verdict.³ In the end, the Ninth Circuit affirmed. So, how did an issue that could have been decided as a matter of law instead wind its way through more than five years of litigation and a 12-day jury trial leading to a nearly $3 million unanimous jury verdict, and, no doubt, multiples of that in attorney's fees? The case is not so much a cautionary tale as it is a representative example of how copyright cases in general, and music copyright cases specifically, are particularly susceptible to escaping early adjudication and becoming long and expensive despite their ability to be dismissed as a matter of law on the basis of ostensibly objective criteria.

First, let's break down the District Court opinion granting defendants' Rule 50 motion. In a thoughtful and meticulous 32-page opinion, California Central District Court Judge Christina Snyder methodically performed the substantial similarity analysis, which is comprised of "a two-part test of extrinsic similarity and intrinsic similarity."⁴ Critically, "[t]he extrinsic test raises a question of law that 'may often be decided as a matter of law' by the court."⁵ It is an ostensibly

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objective test in which "the Court (1) identifies the protected elements of the plaintiff's work, and then (2) determines whether the protected elements are objectively similar to the corresponding elements of the allegedly infringing work."⁶ Is a plaintiff's work still eligible for protection if it does not contain any objectively protectable elements? Yes. Under Satava v. Lowry, 323 F.3d 805, 811 (9th Cir. 2003), "[a] collection of otherwise unprotected elements may be found eligible for copyright protection under the extrinsic test, but 'only if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.'"⁷

Thus, Judge Snyder was tasked with determining first "whether any elements of the ostinato in 'Joyful Noise' are individually protected, and if not, whether the unprotectable elements that make up the ostinato, taken in combination, are nevertheless entitled to copyright protection."⁸ Plaintiffs' musicology expert identified "'five or six' protectable elements in the 'Joyful Noise' ostinato, which defendants allegedly copied[,]" including the sequence of notes, rhythm, timbre, the length of the ostinato, and its placement in the recording.⁹ The Court found that "none of these individual elements are independently protectable." Noting that "it is plaintiff's burden to establish the protected elements of their allegedly infringed work," the Court relied on the testimony of plaintiffs' expert "who did not provide testimony that each of the elements he identified are individually original. To the contrary, he testified that 'no one single... element' caused him to determine that the works contained protected features that were substantially similar."¹⁰

The District Court next turned to the question of "whether the musical elements that comprise the 8-note ostinato in 'Joyful Noise' are 'numerous enough' and 'arranged' in a sufficiently original manner to warrant...