5th Circuit copyright decision involving the registration requirement and "probative similarity"

The 5th Circuit recently handed down a lengthy decision that addresses several basic copyright issues. Positive Black Talk Inc. v. Cash Money Records Inc., No. 03-30625, concerned a dispute between two New Orleans based rappers, each of whom recorded a piece called "Back that A** Up" (which the court dryly described as a "poetic phrase"). Here are some highlights:

First, there was a jurisdictional issue. The plaintiff filed suit the same day it mailed the application to register the copyright to the Copyright Office. Four days later, the Copyright Office received it. The case then went all the way through a jury trial. Although the 5th Circuit has previously held that a valid copyright registration is a jurisdictional prerequisite to a copyright suit, it has also interpreted this to require only that the Copyright Office receive the application, deposit, and fee before the plaintiff files suit. Here, it was even more lenient, holding that, although there was no subject matter jurisdiction when the suit was filed, the jurisdictional defect was cured when the Copyright Office received the application materials. The court relied on Supreme Court cases under other jurisdictional rules that permit courts to overlook "procedural-jurisdictional" defects that were cured before final judgment based on "considerations of finality, efficiency, and economy." (p.12).

On to the merits. The court's holding require some background. Copyright infringement requires (1) ownership of a valid copyright and (2) copying of protected elements of the plaintiff's work. The "copying" element is proven by (a) factual copying and (b) substantial similarity. Because copying's hard to prove, it can be inferred from (i) proof of access and (ii) "probative similarity."

The court first held that the "probative similarity" element doesn't require the "whole of the defendant's work [to] replicate[] the whole of the allegedly copied work." Instead, "the jury must consider the whole of the first work (including both copyrightable and non-copyrightable parts) and the whole of the second work and then compare the two works, looking for any similarities between their constituent parts." (p.17)

The court went on to say that, "In order to avoid confusion, a district court should explain that the purpose of the probative similarity inquiry is to determine whether factual copying may be inferred and that this inquiry is not the same as the question of substantial similarity, which dictates whether the factual copying, once established, is legally actionable." (p.18.) A "jury may find that two works are probatively similar if it finds any similarities between the two works (whether substantial or not) that, in the normal course of events, would not be expected to arise independently in the two works and that therefore might suggest that the defendant copied part of the plaintiff's work." (p.19)

Once copying is found, the court noted that the "substantial similarity" element must take into account "must take into account the qualitative importance of the copied material to the plaintiff's work" -- NOT whether it constitutes a substantial portion of defendant's work. (p.26 n.12). Further, the substantial similarity must focus on a comparison of the two parts of the works that are similar, not the works as a whole. (pp. 25-28.)

The court also held that newspaper articles that contained statements that the district court did not err in excluding newspaper articles that stated that the two songs were quite similar. The court said that "the question of substantial similarity is typically left to the fact finders' own impressions. Thus, a court could reasonably conclude that the views of persons not on the jury and not qualified to give an expert opinion on substantial similarity should not be admitted." (p.37.)

These look to be the major points, though court discussed a host of other topics too.