Substantial Similarity: Is a Consensus Really Necessary?

Recent news has been overtaken with song theft cases, from claims that Dua Lipa stole "Levitating" to Ed Sheeran's "Shape of You" getting called out for similarity to Marvin Gaye's "Let's Get It On." To prove that a song was stolen, a claimant must establish (1) ownership of the allegedly infringed work and (2) copying of the protected elements of the work by the defendant.[i] Copying of protected elements of the work is best proven by showing that the two songs in question are substantially similar.[ii] Despite the increase of song theft cases in popular media, the standard for determining substantial similarity between works is still not enough of an issue for the Supreme Court to step in. After reviewing the case which sparked this recent discussion, the standard of determining substantial similarity between works may not be as much of an issue as one may believe. Johannsongs-Publishing, Ltd. V. Lovland On April 25, 2022, the United States Supreme Court denied a writ of certiorari on hearing Johannsongs-Publishing, Ltd. v. Peermusic Ltd., a song theft case.[iii] The Plaintiff, which held a copyright to the 1977 Icelandic song "Söknuður," alleged that "You Raise Me Up," a song composed by Rolf Løvland and popularized by Josh Groban, infringes on its copyright.[iv] Johannsongs-Publishing appealed that the Ninth Circuit's two-part extrinsic/intrinsic test for substantial similarity should be abandoned and the Second Circuit's “ordinary observer” test applied instead.[v] Under the Ninth Circuit's two-part test, the court held that "Söknuður" and "You Raise Me Up" were not substantially similar, affirming the lower court's decision.[vi] The Plaintiff went on to state that had the Second Circuit's "ordinary observer" test been used, summary judgment would have been denied, and the case would have gone to a jury.[vii] The Plaintiff petitioned the Supreme Court with that in mind, asking them whether, "In a copyright infringement case, when deciding whether two musical works are substantially similar, should the courts apply the ordinary observer test as is the rule in the Second Circuit, or should the courts apply the two-part extrinsic/intrinsic test as is the rule in the Ninth Circuit?"[viii] In refusing to hear this issue, the Supreme Court has left us with the question of whether one test should be applied over the other to decide substantial similarity in copyright disputes. Ninth Circuit Extrinsic/Intrinsic Test The Ninth Circuit on the west coast employs a two-part test to determine whether two works are substantially similar. The first part, the extrinsic test, compares the objective similarities of specific expressive elements in the two works.[ix] For music, expressive elements could include lyrics, melody, tempo, form, rhythm, and harmony. According to the Ninth Circuit, this first test is crucial because only protectable expression will constitute infringement liability. Hence, it is essential to distinguish between protected and unprotected expression in a work.[x] The first test is considered to objectively look at substantial similarities, while the second test measures similarities subjectively.[xi] This second test, referred to as the intrinsic test, tests for similarity of expression from the standpoint of the ordinary reasonable observer.[xii] An ordinary observer would be someone who lacks expertise in music. The intrinsic and extrinsic tests must be satisfied for two works to be deemed substantially similar.[xiii] Second Circuit Ordinary Observer Test The Second Circuit of the east coast uses a single test to determine whether two works are substantially similar. The "ordinary observer" test asks whether a work is substantially similar to the protectable expression of a previous work in the eyes of an average observer.[xiv] There exists a more refined version of this test called the “more discerning” test, where an allegedly copied work is not fully original because it legally incorporates elements from the public domain.[xv] The “more discerning” test looks for substantial similarity only between copyrightable elements of the allegedly infringed work.[xvi] It is important to note that even with the "more discerning" test, the Second Circuit urges not to separate the works at issue into separate components for the listener but instead use the protected elements as a guide when comparing the total concept and feel of the contested works.[xvii] The question we are left with when it comes to the Second Circuit test is whether a work took so much of what is noticeable to the ears of ordinary listeners from previous works that the infringing work wrongfully appropriated something which belongs to someone else.[xviii] Are These Tests Really That Different? In petitioning the Supreme Court, the Plaintiff of Johannsongs-Publishing, Ltd. V. Lovland said it had proof that when Groban would perform "You Raise Me Up" in concerts in Iceland, "the audience sang along with the words to 'Söknuður.'"[xix] Plaintiff did not pass the Ninth Circuit two-part test because it provided insufficient expert evidence of objective similarity. However, Plaintiff argued that it would have passed the "ordinary observer" test based on the evidence of crowd confusion.[xx] We will use this stipulation to compare the two substantial similarity tests. The Ninth Circuit begins its two-part test with an objective look at protectable similarities between songs, and the second part seems to encompass the entire test conducted by the Second Circuit of the ordinary listener. The intrinsic test of the Ninth Circuit and the overall test of the Second Circuit both ask whether an ordinary observer would consider two songs to be similar. It could be argued that the Ninth Circuit test is held to a higher standard because it goes above the ordinary observer test by adding the extrinsic, objective component. Conversely, the Second Circuit mentions a "more discerning" ordinary observer test which looks at a work's total feel while only considering copyrightable elements. This seems equivalent to the aspect of the Ninth Circuit's extrinsic test, which compares only protectable parts of a work. Although the Plaintiff of Johannsongs-Publishing, Ltd. V. Lovland has evidence of crowd confusion, this does not promise it would pass the Second Circuit test. Implications Without word from the highest court in the country, we will not have a definitive answer on whether one test is better equipped to show substantial similarity in copyright infringement cases. While song theft cases have increased in popular media, the standard by which they are determined is not as much of an issue as raised by the Icelandic song case. Although the Ninth Circuit test is two-part, compared to the single-faceted Second Circuit test, the two are not that different. While the Ninth Circuit breaks down specifics of what needs to be shown for a ruling of substantial similarity, the Second Circuit maintains an all-encompassing test that has the possibility of being more or less specific depending on the scenario.[xxi] The Second Circuit has noted that their test is purposefully vague because decisions should be made on a case-by-case basis. In conclusion, while the test of the Second Circuit may seem less specific, this does not mean that it is a lower standard which would have led to a different outcome in Johannsongs-Publ'g, Ltd. v. Peermusic Ltd., which is why ruling on one general test is likely a low priority in the eyes of the Supreme Court. Edited by Vincent Williams Photo by Tingey Injury Law Firm Endnotes [i] Unicolors, Inc. v. Urb. Outfitters, Inc., 853 F.3d 980, 984 (9th Cir. 2017) [ii] Litchfield v. Spielberg, 736 F.2d 1352, 1356 (9th Cir. 1984) [iii] Johannsongs-Publ'g, Ltd. v. Peermusic Ltd., No. 21-1196, 2022 WL 1205858, at *1 (U.S. Apr. 25, 2022) [iv] Johannsongs-Publ'g, Ltd. v. Lovland, No. 20-55552, 2021 WL 5564626, at *1 (9th Cir. Nov. 29, 2021), cert. denied sub nom. Johannsongs-Publ'g, Ltd. v. Peermusic Ltd., No. 21-1196, 2022 WL 1205858 (U.S. Apr. 25, 2022) [v] Id. [vi] Id. [vii] Chris Cooke, US Supreme Court Declines to Answer Key Question for Dealing with Song-Theft Disputes (Apr. 26, 2022), https://completemusicupdate.com/article/us-supreme-court-declines-to-answer-key-question-for-dealing-with-song-theft-disputes/ [viii] Id. [ix] Skidmore as Tr. for Randy Craig Wolfe Tr. v. Led Zeppelin, 952 F.3d 1051, 1064 (9th Cir.) [x] Id. [xi] Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1442 (9th Cir. 1994) [xii] Skidmore, F.3d at 1064 [xiii] Id. [xiv] Effie Film, LLC v. Murphy, 564 F. App'x 631, 632 (2d Cir. 2014) [xv] Id. [xvi] Id. [xvii] Id. [xviii] Arnstein v. Porter, 154 F.2d 464, 473 (2d Cir. 1946) [xix] Andrew Karpan, High Court Snubs 'You Raise Me Up' Copyright Case (Apr. 25, 2022), https://www.law360.com/ip/articles/1486875/high-court-snubs-you-raise-me-up-copyright-case- [xx] Johannsongs-Publ'g, Ltd. v. Lovland, No. 20-55552, 2021 WL 5564626, at *1 (9th Cir. Nov. 29, 2021), cert. denied sub nom. Johannsongs-Publ'g, Ltd. v. Peermusic Ltd., No. 21-1196, 2022 WL 1205858 (U.S. Apr. 25, 2022) [xxi] Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960)