From Skidmore v. ZEPPELIN, 952 F. 3d 1051 – Court of Appeals, 9th Circuit 2020
I. THE 1909 COPYRIGHT ACT
The world of copyright protection for music changed dramatically during the twentieth century and those changes dictate our analysis here. The baseline issue we address is the scope of Wolfe’s copyright in the unpublished composition Taurus, which was registered in 1967, between the passage of the Copyright Act of 1909 (“1909 Act”) and the sweeping copyright reform adopted in the Copyright Act of 1061*1061 1976 (“1976 Act”). We conclude that the 1909 Act controls and that the deposit copy defines the scope of the Taurus copyright.
A. THE HISTORY OF COPYRIGHT PROTECTION FOR MUSICAL COMPOSITIONS AND SOUND RECORDINGS
Although it seems unthinkable today, musical compositions were not explicitly subject to copyright in the United States until 1831, when Congress added “musical composition” to the list of statutorily protected works. Copyright Act of 1831, ch. 16, § 1, 4 Stat. 436, 436 (repealed 1909). Thus, the “musical composition,” which was understood to be a printed form of the music, joined the statutory protection afforded to dramatic compositions, maps, charts, engraving, photographs and other works.
Between 1831 and the early 1900s, a number of machines were invented that allowed mechanical reproduction of a musical composition. Goldstein v. California, 412 U.S. 546, 564, 93 S.Ct. 2303, 37 L.Ed.2d 163 (1973). With the advent of player pianos at the turn of the century, the question arose whether copyright protection extended to the infringement of musical compositions by perforated piano rolls.[6] The Supreme Court held that the copyright statute barred the unauthorized copying of a musical composition “in intelligible notation,” but that it would be “strained and artificial” to consider musical sounds coming from an instrument to be a copy. White-Smith Music Publ’g Co. v. Apollo Co., 209 U.S. 1, 17-18, 28 S.Ct. 319, 52 L.Ed. 655 (1908). Justice Holmes commented in his concurrence that “[o]n principle anything that mechanically reproduces that collocation of sounds ought to be held a copy, or, if the statute is too narrow, ought to be made so by a further act.” Id. at 20, 28 S.Ct. 319.
Congress stepped in to remedy the situation, perhaps heeding Justice Holmes’s call. The Copyright Act of 1909-landmark legislation that significantly revised copyright law—categorized mechanically-reproduced musical compositions, such as those played on player pianos and phonograph players, as “copies” of the original composition. 1909 Act, ch. 320, § 1(e), 35 Stat. 1075, 1075 (1909) (repealed 1976).
The statute provided copyright protection against “any arrangement or setting of [the musical composition] or of the melody of it in any system of notation or any form of record in which the thought of an author may be recorded and from which it may be read or reproduced.” Id. Skidmore seizes on this language to argue that the new legislation extended copyright protection beyond sheet music. The text does not support this reading. Although the 1909 Act extended copyright protection against infringement beyond the mere reproduction of the sheet music, Congress did not provide that copyrighted works could be anything other than sheet music or, for an unpublished work, the musical composition transcribed in the deposit copy. 1909 Act §§ 5, 11.
The Court reinforced this principle in Goldstein v. California when it noted that the amendments insured that composers of original musical works received adequate protection, and that “records and piano rolls were to be considered as `copies’ of the original composition …, and could not be manufactured” without a specified royalty payment. 412 U.S. at 565-66, 93 S.Ct. 2303. The Court emphasized that “composers were to have no control over 1062*1062 the recordings themselves,” which Congress considered “a component part of a machine, capable of reproducing an original composition,” or “renderings of original artistic performance.” Id. at 566, 93 S.Ct. 2303.
Requiring more formalities than the current copyright act, the procedures for obtaining copyright protection under the 1909 Act were very specific. Registration for an unpublished musical work could be obtained “by the deposit, with claim of copyright, of one complete copy of such work” with the Copyright Office. 1909 Act § 11. In contrast, protection for a published work could be secured by affixing a copyright notice “to each copy thereof published or offered for sale in the United States by authority of the copyright proprietor.” Id. § 9. Either way, distributing sound recordings did not constitute publication under the 1909 Act, so musical compositions were only published if the sheet music also was published. See ABKCO Music, Inc. v. LaVere, 217 F.3d 684, 688 (9th Cir. 2000). Significantly, the Copyright Office did not even accept sound recordings as deposit copies. Indeed, “in order to claim copyright in a musical work under the 1909 Act, the work had to be reduced to sheet music or other manuscript form.” 1 M. Nimmer & D. Nimmer, Nimmer on Copyright (“Nimmer”) § 2.05[A] (2017).
Sound recordings did not become subject to copyright protection until 1972, and then only for the sound recordings fixed on or after February 15, 1972. 17 U.S.C. § 301(c). The amendment did nothing to change the requirements of the 1909 Act or the status of the Taurus copyright.
The copyright requirements were changed dramatically by the 1976 Copyright Act, which provided that public distribution of a sound recording qualified as publication of a musical composition. Id. § 101. In other words, composers could submit a recording rather than sheet music as the deposit copy for a musical composition. The catch, for this case, is that publication before the 1978 effective date is not covered by the new statute.
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We have outlined copyright protection under the 1909 Act as follows: “[A]n unpublished work was protected by state common law copyright from the moment of its creation until it was either published or until it received protection under the federal copyright scheme.” ABKCO, 217 F.3d at 688 (quoting LaCienega Music Co. v. ZZ Top, 53 F.3d 950, 952 (9th Cir. 1995)). The referenced federal copyright protection for unpublished works is found in the text of the statute: “copyright may also be had of the works of an author of which copies are not reproduced for sale, by the deposit, with claim of copyright, of one complete copy of such work if it be a … musical composition….” 1909 Act § 11.
The text is clear—for unpublished works, the author must deposit one complete copy of such work. The purpose of the deposit is to make a record of the claimed copyright, provide notice to third parties, and prevent confusion about the scope of the copyright. See Data Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1161-62 (1st Cir. 1994) (the deposit requirement provides the “Copyright Office with sufficient material to identify the work in which the registrant claims a copyright … [and] prevent[s] confusion about which work the author is 1063*1063 attempting to register”), abrogated on other grounds by Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 130 S.Ct. 1237, 176 L.Ed.2d 18 (2010); Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law 71 (1961) (one of the purposes of the deposit is “to identify the work” being registered).
Even before the 1909 Act, the Supreme Court stated that one objective of the deposit was to permit inspection by other authors “to ascertain precisely what was the subject of copyright.” Merrell v. Tice, 104 U.S. 557, 561, 26 L.Ed. 854 (1881). At the time that Taurus was registered, the Copyright Office’s practice regarding applications to register unpublished musical compositions was to consider “writ[ing] to the applicant, pointing out that protection extends only to the material actually deposited, and suggesting that in his own interest he develop his manuscript to supply the missing element.” Compendium of Copyright Office Practices (“Copyright Office Compendium“) § 2.6.1.II.a (1st ed. 1967) (emphasis added). The inescapable conclusion is that the scope of the copyright is limited by the deposit copy.
The practical treatment of deposit copies underscores their importance. The 1909 Act prohibits destruction of copies of unpublished works without notice to the copyright owner. 1909 Act §§ 59-60. Buttressing this protection, the Register of Copyright’s policy is to retain access to the deposit copies of unpublished works for the full copyright term. See Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law at 80-81.
II. ELEMENTS OF COPYRIGHT INFRINGEMENT
Proof of copyright infringement requires Skidmore to show: (1) that he owns a valid copyright in Taurus; and (2) that Led Zeppelin copied protected aspects of the work. Rentmeester v. Nike, Inc., 883 F.3d 1111, 1116-17 (9th Cir. 2018) (citing Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991)). Skidmore’s ownership of a valid copyright in Taurus was not challenged on appeal.
The second prong of the infringement analysis contains two separate components: “copying” and “unlawful appropriation.” Rentmeester, 883 F.3d at 1117. Although these requirements are too often referred to in shorthand lingo as the need to prove “substantial similarity,” they are distinct concepts.
Because independent creation is a complete defense to copyright infringement, a plaintiff must prove that a defendant copied the work. Feist, 499 U.S. at 345-46, 111 S.Ct. 1282. In the absence of direct evidence of copying, which is the case here, the plaintiff “can attempt to prove it circumstantially by showing that the defendant had access to the plaintiff’s work and that the two works share similarities probative of copying.” Rentmeester, 883 F.3d at 1117. This type of probative or striking similarity shows that the similarities between the two works are due to “copying rather than … coincidence, independent creation, or prior common source.” Bernal v. Paradigm Talent & Literary Agency, 788 F. Supp. 2d 1043, 1052 (C.D. Cal. 2010) (omission in original) (quoting 4 Nimmer § 13.02[B]). A finding of such similarity may be based on the overlap of unprotectable as well as protectable elements. Rentmeester, 883 F.3d at 1117.
On the other hand, the hallmark of “unlawful appropriation” is that the works share substantial similarities. Newton v. Diamond, 388 F.3d 1189, 1193 (9th Cir. 2004). In our circuit, we use a two-part test to determine whether the defendant’s work is substantially similar to the plaintiff’s copyrighted work. Cavalier v. Random House, Inc., 297 F.3d 815, 822 (9th Cir. 2002). The first part, the extrinsic test, compares the objective similarities of specific expressive elements in the two works. Id. Crucially, because only substantial similarity in protectable expression may constitute actionable copying that results in infringement liability, “it is essential to distinguish between the protected and unprotected material in a plaintiff’s work.” Swirsky v. Carey, 376 F.3d 841, 845 (9th Cir. 2004). The second part, the intrinsic test, “test[s] for similarity of expression from the standpoint of the ordinary reasonable observer, with no expert assistance.” Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 637 (9th Cir. 2008) (quoting Apple Comput., Inc. v. Microsoft Corp., 35 F.3d 1435, 1442 (9th Cir. 1994)). Both tests must be satisfied for the works to be deemed substantially similar. See Funky Films, Inc. v. Time Warner Entm’t Co., 462 F.3d 1072, 1077 (9th Cir. 2006).
III. EVIDENTIARY CHALLENGE—THE COPYING PRONG OF INFRINGEMENT
At trial, one of Skidmore’s key arguments was that Led Zeppelin members heard either performances or recordings of Taurus before creating Stairway to Heaven, 1065*1065 and thus had access for purposes of copying the music. To prove that point, Skidmore wanted to play several recordings of Taurus during the testimony of Jimmy Page, claiming that observing Page listening to the recordings would have enabled the jury to evaluate his demeanor with respect to access. Skidmore’s counsel explained that the recordings could be offered to prove access, even if the court excluded them for proving substantial similarity. The district court determined that although the sound recordings were relevant to prove access, Skidmore’s approach would be “too prejudicial for the jury” because it risked confusing access with substantial similarity. Hence the court excluded the recordings under Federal Rule of Evidence 403. The court instead permitted Skidmore’s counsel to play the recordings for Page outside the presence of the jury and then question him about the recordings in front of the jury.
Skidmore’s position is a curious one and defies common sense. There would have been very little, if any, probative value in watching Page’s reaction to listening to Taurus at the trial in 2016 to prove access to the song half a century ago. To prevent the jury from making an erroneous comparison for determining substantial similarity, the court properly excluded the sound recording, which contains performance elements that are not protected by the Taurus deposit copy. Indeed, the court’s exclusion ruling displayed a clear understanding of the distinct components of copying and unlawful appropriation, letting the evidence in “as far as access,” but “not … to compare the performance” to Stairway to Heaven.
In any event, the evidentiary question is moot. It turns out Skidmore’s examination of Page on access proved fruitful. When Page testified, he candidly admitted to owning “a copy of the album that contains `Taurus,’ … in [his] collection,” though still denying “any knowledge of `Taurus.'” The jury found that both Page and Plant “had access to the musical composition Taurus before Stairway to Heaven was created.” Once the jury made that finding, the remaining questions on the jury verdict form related to substantial similarity of the works.
In answer to the question of whether “original elements of the musical composition Taurus are extrinsically similar to Stairway to Heaven,” the jury said no. Because the extrinsic test was not satisfied, the jury did not reach the intrinsic test. Although these findings ended the jury’s copyright analysis, Skidmore also challenges various trial rulings.