USDC D. Massachusetts, April 3, 2009

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  • District court holds that, despite the fact that the court could compare the two subject works before it, plaintiffs in copyright infringement cases involving musical works should have an opportunity to gather evidence of substantial similarity, and thus denies defendants’ motion to dismiss

Plaintiff Samuel Bartley Steele is a songwriter and musician who allegedly wrote a “love anthem” about the Boston Red Sox entitled Man I Really Love This Team (“the Steele Song”) and a “derivative” version of the song entitled Man I Really Love This Town, that removed specific references to the Red Sox (the “Derivative Song”). Steele registered the original song with the copyright office, but failed to register the derivative version.

Defendant Turner Broadcasting System, Inc. (“TBS”) produced and aired an advertisement during the 2007 Major League Baseball post-season featuring a song performed by Bon Jovi entitled I Love This Town along with baseball footage. According to Steele, much of the visual portion was derived from his song and the Bon Jovi Song was then based upon that advertisement, the Steele Song or both. Steele sued under the Lanham Act, the Massachusetts Consumer Protection Act (“MCPA”), and the federal Copyright Act.

The Lanham Act prohibits conduct that could lead to confusion with respect to the “origin, sponsorship, or approval” of goods or services. However, the “origin of goods” refers to “the producer of the tangible goods that are offered for sale, and not . . . the author of any idea, concept or communication embodied in those goods.” Here, because Steele did not assert that he was the producer of any tangible goods distributed by the defendants, but rather the artist whose creative work was allegedly contained in those goods, he failed to state a claim pursuant to the Lanham Act.

The court denied the motion to dismiss Steele’s federal copyright infringement claim for the Steele Song. To succeed on a claim of copyright infringement, a plaintiff must prove (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original. As part of the second prong, a plaintiff must prove that the copyrighted and infringing works are “substantially similar.” In determining substantial similarity, courts apply an “ordinary observer” or, in musical terms, an “ordinary listener” test.

Defendants suggested that the court make the substantial similarity determination on a motion to dismiss because both the original and allegedly infringing works were properly before the court. The court, they argued, could simply listen to (and view) those works and apply the ordinary listener standard to determine whether there was any colorable claim of substantial similarity. However, the court held that a plaintiff is entitled to gather and present evidence of substantial similarity beyond what is included in the pleadings, and in musical copyright cases experts are frequently relied upon. Therefore, the court permitted limited discovery on the issue of substantial similarity in order to decide a summary judgment motion on that specific issue.

The court held that it lacked jurisdiction over Steele’s copyright infringement claim for the Derivative Song because copyright claims are prohibited until pre-registration or registration is made. Moreover, the court found plaintiff’s claim pursuant to the MCPA was preempted by the Copyright Act because it was indistinguishable from his copyright claim in that it alleged only that the defendants unlawfully copied his work.