IP & IT analysis: Claims that the hit song 'Blurred Lines' plagiarises a Marvin Gaye song will be settled by trial, a judge in the US has ruled. In this complex area of copyright law, a jury will have to decide how similar the two songs are. Nigel Dewar Gibb, partner at Pitmans LLP, considers the fine line between inspiration and copying and looks at how artists can protect against sound-alikes and unauthorised use of their songs.

How similar does a song have to be in order to attract legal challenge? 

Someone might hear a song and instantly be reminded of another song. It does not always follow that there has been some infringement of copyright. It also does not stop someone from issuing a claim. The test for authorial works such as songs is originality and, in determining this, a qualitative assessment would be key. However, if a song is 'substantially' similar, it is more likely to attract a claim. 

Going to court as a pre-emptive strike to seek to protect a new recording of a 'new' song (which is what Robin Thicke and his producers Pharrell Williams and Clifford Harris Jr did in respect of 'Blurred Lines') is an unusual move. The statement they put forward was that 'being reminiscent of a "sound" is not copyright infringement' and, on the face of it, they would be right. 

This is an interesting area of copyright law. It's important to keep the distinction between the rights that exist in the sound recording and the rights that exist in the musical work. Here, the Copyright Designs and Patents Act 1988 (CDPA 1988) definition will apply to 'musical work' and such works will be referred to as 'songs'. 

It might sound like a recording of the same song but the extent to which the song is similar and open to an actionable claim is a question of objective fact. There needs to be a genuine dispute as to whether the various components of the song, which may include signature phrases, hooks, beats, chords and melodies, are similar. 

A sound-alike will not sample the original recording (and so automatically sample the original song) so the new sound-alike recording may sound like the original recording and use a similar sequence of musical notes but that will not necessarily lead to a successful copyright infringement claim. As Thicke's attorney commented in the ongoing Blurred Lines lawsuit: 'The genres of the song are the same, the notes are different'. The issue will hinge on the extent to which the sound-alike is close to the original song in the original recording. As the judge directed in the Blurred Lines case, a jury will need to be called to determine 'the intrinsic similarity of the works'. 

There have been a number of challenges in this area but some of the challenges may have been based on claims other than copyright infringement. If a sound-alike is billed as a release by a tribute team and the name of the original artist is used (for example, the original song 'Dance Again' by Jennifer Lopez featuring Pitbull was covered and released by an outfit called the Jennifer Lopez Tribute Team), the original artist may have a claim for passing off and trade mark infringement if their name is a registered mark. 

There may be a clear attempt to pass off the sound-alike as being recorded by the original artist which may cause confusion and lead to a claim. 

At what point does inspiration become copying? 

You can be inspired by existing recordings and songs and release new recordings embodying new songs 'inspired' by the originals and not face any sanctions. Bands often cite their influences and acknowledge the debt their work owes to the original recording artists and song writers. 

A recording artist can record or cover any song that has previously been released (ie which has been granted a 'first mechanical licence') without needing any permission as long as the song is faithfully covered and the necessary mechanical licence for that recording is secured and paid for at the statutory or customary rate. If any recording is not a faithful cover, ie there is some adaptation or alteration, then the copyright owners of the original song would need to consent to the new recording. 

However, if a recording artist writes a song that is heavily influenced by another song and is materially based on that song with respect to the various components mentioned earlier (including arrangement, chords and melodies) then it is likely to be regarded as infringing the original song. 

The band Oasis was hugely influenced by The Beatles and repeatedly said so. Some of the recordings of their songs bore marked similarities to other songs. When Oasis released 'Shakermaker' in 1994, they were found to have infringed a New Seekers song and settled the claim for a reported $500,000. Once the matter was settled, the band even used some lyrics from the original song in a live performance of 'Shakermaker'. 

How have courts dealt with such disputes in the past? 

There have been a number of well reported disputes and claims. In 2007, Tom Waits objected to the use of a sound-alike in an advertisement featuring Opel cars and successfully settled the claim. However, when the threat of legal action looms, matters are often settled out of court to avoid negative press which means there is little legal precedent to rely on. 

The problem is ongoing. A diverse range of artists such as Sigur Ros, The xx and Beach House have had issues with advertising agencies failing or refusing to licence their original recordings and recording sound-alikes as a quicker and cheaper solution. 

Courts will look at the facts and will seek to determine the extent of any 'similarity' or plagiarism. Experts such as musicologists will be called in to assess the original against the new recordings and the underlying songs. If the new recording has not actually sampled the original recording, then the musicologists report will be key in establishing how similar the 'new' underlying song is to the original song. 

Another well-known case involved the recording 'My Sweet Lord' by George Harrison. In the 1970s, 'My Sweet Lord' was at the centre of copyright infringement claim due to its similarity to the Ronnie Mack song 'He's So Fine', a 1963 hit for the New York girl group the Chiffons. The judge found that although he didn't believe George Harrison purposefully plagiarised the song, the two songs were essentially the same, only displaying minor differences in note and chord. George Harrison was found guilty of 'subconscious plagiarism' and a judgment was filed against him in the amount of $587,000. The full amount was paid in set-tlement and the judgment dismissed in 1981. 

The recording of sound-alikes is often seen as opportunistic. US artists often release recordings in their local market first and let demand build in other territories. A consequence of this is that it allows sound-alikes to be released which can impact sales of the original. 

Is expert evidence the key? 

The engagement of an expert will be instrumental in establishing the facts and determining the extent of any similarity. If there is a danger of 'subconscious plagiarism' or inadvertent copying then a claim may follow where there are similarities even if that claim is speculative.  

An expert (usually a musicologist) is engaged to assess the sound-alike and the underlying song. This will involve listening to the original version and noting the musical annotation in both the original and the sound-alike to see the actual extent of similarity. 

There are other factors to be taken into account. The background to how the recording came about is relevant and it may be that the artist has previously cited influences on their work which may be easily identifiable. 

Can artists address concerns before reaching court (credit/royalties)? 

Yes. An artist can liaise with any other rights owner who may have an interest and establish the background as to how the 'unauthorised' use came about. It is possible then to write to the offending party and agree licence terms in respect of any usage retrospectively. If that fails, court action may be the next step. This will cost money so there will need to be some assessment of the merits of the claim and the prospects of success and likely damages. 

How can artists protect themselves from sound-alikes or some unauthorised use and what action might be taken to stop this? 

If recording artists or song writers think their work has been sampled or otherwise used without permission, payment or even acknowledgement, they should take action otherwise they may open themselves up to an increase in the unauthorised use of their work. It can be difficult to stop unauthorised use, but there are a number of ways an artist can take action and a number of remedies. 

A song writer may have a 'first mechanical right' which means that the publisher will allow the song writer to record their own songs first before any other artist is able to record the songs. This may be one way to stop covers or sound-alikes. 

Sound-alikes are used extensively in advertising. It may be that the song writer has the right to approve any use of their original song to promote a product. A badly recorded sound-alike in an advertisement may be damaging to an artist's integrity and reputation. It may be seen as some endorsement and so that should be taken into account especially as it may lead to an actionable claim. 

An artist can write to an offending party and agree licence terms retrospectively. If that fails, court action may be the only option. 

As mentioned above, sound-alikes may cause confusion in the record buying public especially if the release references the original artists. This may lead to a passing off claim or a claim for infringement of an artist's registered 'name' mark and personality rights. 

Sometimes, an artist might feel that other artists releasing similar or derivative work is a form of flattery and may not be inclined to pursue any claim. However, as revenue flows continue to decline in certain areas of the business, an increasing number of artists are taking action over any unauthorised use of their original music or recordings of similar sounding versions by advertising agencies or other organisations who have not, for whatever reason, managed to secure the necessary permission or licence to use the original works. 

Interviewed by Helen Redding. 

This article was first published on Lexis®PSL IP & IT and Lexis®Library on 14 November 2014.