Case: 15-56880, 03/21/2018, ID: 10806491, DktEntry: 93-1, Page 1 of 84
`
`FOR PUBLICATION
`
`UNITED STATES COURT OF APPEALS
`FOR THE NINTH CIRCUIT
`
`
`PHARRELL WILLIAMS, an individual;
`CLIFFORD HARRIS, JR., an individual;
`ROBIN THICKE, an individual, DBA I
`Like’em Thicke Music,
`Plaintiffs-Counter-Defendants-
`Appellants,
`
` No. 15-56880
`
`D.C. No.
`2:13-cv-06004-
`JAK-AGR
`
`
`OPINION
`
`and
`
`
`MORE WATER FROM NAZARETH
`PUBLISHING, INC.; STAR TRAK
`ENTERTAINMENT; INTERSCOPE
`RECORDS; UMG RECORDINGS, INC.;
`UNIVERSAL MUSIC DISTRIBUTION,
`Counter-Defendants-Appellants,
`
`
`
`
`
`v.
`
`
`FRANKIE CHRISTIAN GAYE, an
`individual; MARVIN GAYE III, an
`individual; NONA MARVISA GAYE,
`an individual,
`Defendants-Counter-Claimants-
`Appellees.
`
`
`
`
`
`
`
`
`

`

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`2
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`
`WILLIAMS V. GAYE
`
`PHARRELL WILLIAMS, an individual;
`CLIFFORD HARRIS, JR., an individual;
`ROBIN THICKE, an individual, DBA I
`Like’em Thicke Music,
`Plaintiffs-Counter-Defendants-
`Appellees,
`
` No. 16-55089
`
`D.C. No.
`2:13-cv-06004-
`JAK-AGR
`
`
`
`and
`
`
`MORE WATER FROM NAZARETH
`PUBLISHING, INC.; STAR TRAK
`ENTERTAINMENT; INTERSCOPE
`RECORDS; UMG RECORDINGS, INC.;
`UNIVERSAL MUSIC DISTRIBUTION,
`Counter-Defendants-Appellees,
`
`
`
`v.
`
`
`FRANKIE CHRISTIAN GAYE, an
`individual; MARVIN GAYE III, an
`individual; NONA MARVISA GAYE,
`an individual,
`Defendants-Counter-Claimants-
`Appellants.
`
`
`
`
`
`
`
`
`

`

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`
`
`
`
`
`WILLIAMS V. GAYE
`
`3
`
`PHARRELL WILLIAMS, an individual;
`ROBIN THICKE, an individual, DBA I
`Like’em Thicke Music; CLIFFORD
`HARRIS, JR., an individual,
`Plaintiffs-Counter-Defendants-
`Appellees,
`
` No. 16-55626
`
`D.C. No.
`2:13-cv-06004-
`JAK-AGR
`
`
`
`and
`
`
`MORE WATER FROM NAZARETH
`PUBLISHING, INC.; STAR TRAK
`ENTERTAINMENT; INTERSCOPE
`RECORDS; UMG RECORDINGS, INC.;
`UNIVERSAL MUSIC DISTRIBUTION,
`Counter-Defendants-Appellees.
`
`
`
`
`
`
`FRANKIE CHRISTIAN GAYE, an
`individual; MARVIN GAYE III, an
`individual; NONA MARVISA GAYE,
`an individual,
`Defendants-Counter-Claimants-
`Appellants.
`
`v.
`
`
`
`
`

`

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`4
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`
`WILLIAMS V. GAYE
`
`Appeal from the United States District Court
`for the Central District of California
`John A. Kronstadt, District Judge, Presiding
`
`Argued and Submitted October 6, 2017
`Pasadena, California
`
`Filed March 21, 2018
`
`Before: MILAN D. SMITH, JR., MARY H. MURGUIA,
`and JACQUELINE H. NGUYEN, Circuit Judges.
`
`Opinion by Judge Milan D. Smith, Jr.;
`Dissent by Judge Nguyen
`
`
`SUMMARY*
`
`Copyright
`
`
`
`
`The panel affirmed in part and reversed in part the
`
`district court’s judgment after a jury trial, ruling that
`plaintiffs’ song “Blurred Lines” infringed defendants’
`copyright in Marvin Gaye’s song “Got To Give It Up.”
`
`The panel held that “Got To Give It Up” was entitled to
`
`broad copyright protection because musical compositions
`are not confined to a narrow range of expression. The panel
`accepted, without deciding, the merits of the district court’s
`ruling that the scope of the defendants’ copyright was
`
`
`* This summary constitutes no part of the opinion of the court. It
`has been prepared by court staff for the convenience of the reader.
`
`

`

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`5
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`WILLIAMS V. GAYE
`
`
`
`limited, under the Copyright Act of 1909, to the sheet music
`deposited with the Copyright Office, and did not extend to
`sound recordings.
`
`The panel held that the district court’s order denying
`
`summary judgment was not reviewable after a full trial on
`the merits.
`
`The panel held that the district court did not err in
`
`denying a new trial. The district court properly instructed
`the jury that there is no scienter requirement for copyright
`infringement and that it must find both access and substantial
`similarity. The district court did not erroneously instruct the
`jury to consider unprotectable elements of “Got To Give It
`Up.” The district court did not abuse its discretion in
`admitting expert testimony. In addition, the verdict was not
`against the clear weight of the evidence because there was
`not an absolute absence of evidence of extrinsic and intrinsic
`similarity between the two songs.
`
`The panel held that the district court’s award of actual
`
`damages and infringers’ profits and its running royalty were
`proper.
`
` Reversing in part, the panel held that the district court
`erred in overturning the jury’s general verdict in favor of
`certain parties because the defendants waived any challenge
`to the consistency of the jury’s general verdicts. In addition,
`there was no duty to reconcile the verdicts. The district court
`erred in finding one party secondarily liable for vicarious
`infringement.
`
`The panel held that the district court did not abuse its
`
`discretion in denying the defendants’ motion for attorneys’
`
`

`

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`WILLIAMS V. GAYE
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`6
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`fees under § 505 of the Copyright Act or in apportioning
`costs among the parties.
`
` Dissenting, Judge Nguyen wrote that “Blurred Lines”
`and “Got To Give It Up” were not objectively similar as a
`matter of law under the extrinsic test because they differed
`in melody, harmony, and rhythm, and the majority’s refusal
`to compare
`the
`two works
`improperly allowed
`the
`defendants to copyright a musical style.
`
`
`
`COUNSEL
`
`
`Kathleen M. Sullivan (argued) and Ellyde R. Thompson,
`Quinn Emanuel Urquhart & Sullivan LLP, New York, New
`York; Daniel C. Posner, Quinn Emanuel Urquhart &
`Sullivan LLP, Los Angeles, California; Howard E. King,
`Stephen D. Rothschild, and Seth Miller, King Holmes
`Paterno & Soriano LLP, Los Angeles, California; for
`Plaintiffs-Appellants/Cross-Appellees Pharrell Williams,
`Clifford Harris Jr., Robin Thicke, and More Water from
`Nazareth Publishing Inc.
`
`Mark E. Haddad (argued), Amanda R. Farfel, Michelle B.
`Goodman, Rollin A. Ransom, and Peter I. Ostroff, Sidley
`Austin LLP, Los Angeles, California, for Defendants-
`Appellants/Cross-Appellees Star Trak Entertainment,
`Interscope Records, UMG Recordings Inc., Universal Music
`Distribution.
`
`Lisa Blatt (argued), Arnold & Porter LLP, Washington,
`D.C.; Richard S. Busch (argued), Sara R. Ellis, and Steven
`C. Douse, King & Ballow, Nashville, Tennessee; Daniel B.
`Asimow and Martin R. Glick, Arnold & Porter LLP, San
`Francisco, California; Paul H. Duvall, King & Ballow, San
`
`

`

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`7
`
`WILLIAMS V. GAYE
`
`
`
`Diego, California; Mark L. Block, Wargo & French LLP,
`Los Angeles, California; Paul N. Philips, Law Offices of
`Paul N. Philips APLC, West Hollywood, California; for
`Defendants-Appellees/Cross-Appellants Frankie Christian
`Gaye, Marvin Gaye III, and Nona Marvisa Gaye.
`
`Kenneth D. Freundlich, Freundlich Law, Encino, California,
`for Amici Curiae Musicologists.
`
`Edwin F. McPherson, McPherson Rane LLP, Los Angeles,
`California, for Amici Curiae 212 Songwriters, Composers,
`Musicians, and Producers.
`
`Charles Duan, Public Knowledge, Washington, D.C., for
`Amicus Curiae Public Knowledge.
`
`Sean M. O’Connor, Lateef Mtima, and Steven D. Jamar,
`Institute for Intellectual Property and Social Justice Inc.,
`Rockville, Maryland, for Amicus Curiae Institute for
`Intellectual Property and Social Justice; Musicians and
`Composers; and Law, Music, and Business Professors.
`
`Bernard A. Burk, Director, Lawyering Skills Program,
`William H. Bowen School of Law, University of Arkansas
`at Little Rock, Little Rock, Arkansas; Howard Barry
`Abrams, University of Detroit Mercy School of Law,
`Detroit, Michigan; for Amici Curiae Musicologists.
`
`
`
`
`
`
`

`

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`8
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`
`WILLIAMS V. GAYE
`
`OPINION
`
`M. SMITH, Circuit Judge:
`
`After a seven-day trial and two days of deliberation, a
`jury found that Pharrell Williams, Robin Thicke, and
`Clifford Harris, Jr.’s song “Blurred Lines,” the world’s best-
`selling single in 2013, infringed Frankie Christian Gaye,
`Nona Marvisa Gaye, and Marvin Gaye III’s copyright in
`Marvin Gaye’s 1977 hit song “Got To Give It Up.” Three
`consolidated appeals followed.
`
`Appellants and Cross-Appellees Williams, Thicke,
`Harris, and More Water from Nazareth Publishing, Inc.
`(collectively, Thicke Parties) appeal from the district court’s
`judgment. They urge us to reverse the district court’s denial
`of their motion for summary judgment and direct the district
`court to enter judgment in their favor. In the alternative, they
`ask us to vacate the judgment and remand the case for a new
`trial, on grounds of instructional error, improper admission
`of expert testimony, and lack of evidence supporting the
`verdict. If a new trial is not ordered, they request that we
`reverse or vacate the jury’s awards of actual damages and
`infringer’s profits, and the district court’s imposition of a
`running royalty. Finally, they seek reversal of the judgment
`against Harris, challenging the district court’s decision to
`overturn the jury’s general verdict finding in Harris’s favor.
`
`Appellants and Cross-Appellees Interscope Records,
`UMG Recordings, Inc., Universal Music Distribution, and
`Star Trak, LLC (collectively, Interscope Parties) appeal from
`the district court’s judgment. They urge us to reverse the
`judgment against them, challenging the district court’s
`decision to overturn the jury’s general verdict finding in their
`favor.
`
`

`

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`WILLIAMS V. GAYE
`
`9
`
`Appellees and Cross-Appellants Frankie Christian Gaye,
`Nona Marvisa Gaye, and Marvin Gaye III (collectively,
`Gayes) appeal from the district court’s order on attorney’s
`fees and costs. They request that we vacate and remand for
`reconsideration the district court’s denial of attorney’s fees,
`and award them their costs in full. The Gayes also
`protectively cross-appeal the district court’s ruling limiting
`the scope of the Gayes’ compositional copyright to the four
`corners of the sheet music deposited with the United States
`Copyright Office. In the event a new trial is ordered, the
`Gayes urge us to hold that Marvin Gaye’s studio recording
`of “Got To Give It Up,” rather than the deposit copy,
`establishes the scope of the Gayes’ copyright under the
`Copyright Act of 1909.
`
`We have jurisdiction over this appeal pursuant to
`28 U.S.C. § 1291. Our law requires that we review this case,
`which proceeded to a full trial on the merits in the district
`court, under deferential standards of review.
` We
`accordingly decide this case on narrow grounds, and affirm
`in part and reverse in part.
`
`FACTUAL AND PROCEDURAL BACKGROUND
`
`A. “Got To Give It Up”
`
`In 1976, Marvin Gaye recorded the song “Got To Give
`It Up” in his studio. “Got To Give It Up” reached number
`one on Billboard’s Hot 100 chart in 1977, and remains
`popular today.
`
`In 1977, Jobete Music Company, Inc. registered “Got To
`Give It Up” with the United States Copyright Office and
`deposited six pages of handwritten sheet music attributing
`the song’s words and music to Marvin Gaye. Marvin Gaye
`did not write or fluently read sheet music, and did not
`
`

`

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`WILLIAMS V. GAYE
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`10
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`prepare the deposit copy. Instead, an unidentified transcriber
`notated the sheet music after Marvin Gaye recorded “Got To
`Give It Up.”
`
`The Gayes inherited the copyrights in Marvin Gaye’s
`musical compositions.
`
`B. “Blurred Lines”
`
`In June 2012, Pharrell Williams and Robin Thicke wrote
`and recorded “Blurred Lines.” Clifford Harris, Jr., known
`popularly as T.I., separately wrote and recorded a rap verse
`for “Blurred Lines” that was added to the track seven months
`later. “Blurred Lines” was the best-selling single in the
`world in 2013.
`
`Thicke, Williams, and Harris co-own the musical
`composition copyright in “Blurred Lines.” Star Trak and
`Interscope Records co-own the sound recording of “Blurred
`Lines.” Universal Music Distribution manufactured and
`distributed “Blurred Lines.”
`
`C. The Action
`
`The Gayes made an infringement demand on Williams
`and Thicke after hearing “Blurred Lines.” Negotiations
`failed, prompting Williams, Thicke, and Harris to file suit
`for a declaratory judgment of non-infringement on August
`15, 2013.
`
`The Gayes counterclaimed against the Thicke Parties,
`alleging that “Blurred Lines” infringed their copyright in
`
`

`

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`WILLIAMS V. GAYE
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`
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`“Got To Give It Up,”1 and added the Interscope Parties as
`third-party defendants.
`
`11
`
`D. The District Court’s Denial of Summary
`Judgment
`
`The district court denied Williams and Thicke’s motion
`for summary judgment on October 30, 2014.
`
`1. The District Court’s Interpretation of the
`Copyright Act of 1909
`
`The district court ruled that the Gayes’ compositional
`copyright, which is governed by the Copyright Act of 1909,
`did not extend to the commercial sound recording of “Got
`To Give It Up,” and protected only the sheet music deposited
`with the Copyright Office. The district court accordingly
`limited its review of the evidence to the deposit copy, and
`concluded there were genuine issues of material fact.
`
`2. The Evidence
`
`the opinion of
`The Thicke Parties relied upon
`musicologist Sandy Wilbur. The Gayes relied upon the
`opinions of Dr. Ingrid Monson, the Quincy Jones Professor
`of African American Music at Harvard University, and
`musicologist Judith Finell. The experts disagreed sharply in
`their opinions, which they articulated in lengthy reports.
`
`
`1 The Gayes asserted a second counterclaim alleging that Thicke’s
`song “Love After War” infringed their copyright in Marvin Gaye’s
`composition “After the Dance.” The jury found against the Gayes on the
`second counterclaim, and judgment was entered against them. On
`appeal, the second counterclaim is relevant only to the issue of costs.
`
`

`

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`WILLIAMS V. GAYE
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`Finell opined that there is a “constellation” of eight
`similarities between “Got To Give It Up” and “Blurred
`Lines,” consisting of the signature phrase, hooks,2 hooks
`with backup vocals, “Theme X,”3 backup hooks, bass
`melodies, keyboard parts, and unusual percussion choices.
`
`Wilbur opined that there are no substantial similarities
`between the melodies, rhythms, harmonies, structures, and
`lyrics of “Blurred Lines” and “Got To Give It Up,” and
`disputed each area of similarity Finell identified. The district
`court compared Finell’s testimony with Wilbur’s and,
`pursuant
`to
`the extrinsic
`test under copyright
`law,
`meticulously filtered out elements Wilbur opined were not
`in the deposit copy, such as the backup vocals, “Theme X,”
`descending bass line, keyboard rhythms, and percussion
`parts.
`
`The district court also filtered out several unprotectable
`similarities Dr. Monson identified, including the use of a
`cowbell, hand percussion, drum set parts, background
`vocals, and keyboard parts. After filtering out those
`elements, the district court considered Dr. Monson’s
`analysis of harmonic and melodic similarities between the
`songs, and noted differences between Wilbur’s and Dr.
`Monson’s opinions.
`
`After performing its analytical dissection, as part of the
`extrinsic test, the district court summarized the remaining
`areas of dispute in the case. The district court identified
`disputes regarding the similarity of the songs’ signature
`
`2 According to Finell, the term “hook” refers to the most important
`and memorable melodic material of a piece of popular music.
`
`3 Finell named a repeated four-note backup vocal in “Got To Give
`It Up” as “Theme X.”
`
`

`

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`WILLIAMS V. GAYE
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`phrases, hooks, bass lines, keyboard chords, harmonic
`structures, and vocal melodies. Concluding that genuine
`issues of material fact existed, the district court denied
`Williams and Thicke’s motion for summary judgment.
`
`13
`
`E. Trial
`
`The case proceeded to a seven-day trial. The district
`court ruled before trial that the Gayes could present sound
`recordings of “Got To Give It Up” edited to capture only
`elements reflected in the deposit copy. Consequently, the
`commercial sound recording of “Got To Give It Up” was not
`played at trial.
`
`Williams and Thicke testified, each acknowledging
`inspiration from Marvin Gaye and access to “Got To Give It
`Up.”
`
`Finell testified that “Blurred Lines” and “Got To Give It
`Up” share many similarities, including the bass lines,
`keyboard parts, signature phrases, hooks, “Theme X,” bass
`melodies, word painting, and the placement of the rap and
`“parlando” sections in the two songs. She opined that nearly
`every bar of “Blurred Lines” contains an element similar to
`“Got To Give It Up.” Although the district court had filtered
`out “Theme X,” the descending bass line, and the keyboard
`rhythms as unprotectable at summary judgment, Finell
`testified that those elements were in the deposit copy.
`
`Dr. Monson played three audio-engineered “mash-ups”
`she created to show the melodic and harmonic compatibility
`between “Blurred Lines” and “Got To Give It Up.” She
`testified that the two songs shared structural similarities on a
`sectional and phrasing level.
`
`

`

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`WILLIAMS V. GAYE
`
`Wilbur opined that the two songs are not substantially
`similar and disputed Finell and Dr. Monson’s opinions.
`Wilbur prepared and played a sound recording containing
`her rendition of the deposit copy of “Got To Give It Up.”
`
`Neither the Thicke Parties nor the Gayes made a motion
`for judgment as a matter of law pursuant to Federal Rule of
`Civil Procedure 50(a) before the case was submitted to the
`jury.
`
`On March 10, 2015, after two days of deliberation, the
`jury returned mixed general verdicts.4 The jury found that
`Williams, More Water from Nazareth Publishing,5 and
`Thicke infringed the Gayes’ copyright in “Got To Give It
`Up.” In contrast, the jury found that Harris and the
`Interscope Parties were not liable for infringement. The jury
`awarded
`the Gayes $4 million
`in actual damages,
`$1,610,455.31 in infringer’s profits from Williams and More
`Water from Nazareth Publishing, and $1,768,191.88 in
`infringer’s profits from Thicke.
`
`F. The District Court’s Order on Post-Trial Motions
`
`The district court ruled on the parties’ various post-trial
`motions in an omnibus order.
`
`The Thicke Parties filed a motion for judgment as a
`matter of law, a new trial, or remittitur. The district court
`
`4 Although the verdict forms are captioned “Special Verdict,” they
`are functionally general verdict forms. See Zhang v. Am. Gem Seafoods,
`Inc., 339 F.3d 1020, 1031 (9th Cir. 2003) (“If the jury announces only
`its ultimate conclusions, it returns an ordinary general verdict[.]”).
`
`5 More Water From Nazareth Publishing, Inc. collects royalties on
`Williams’ behalf.
`
`

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`WILLIAMS V. GAYE
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`
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`denied the Thicke Parties’ motion for judgment as a matter
`of law and motion for a new trial, but remitted the award of
`actual damages and the award of Williams’ profits.
`
`15
`
`The Gayes filed three motions, seeking (1) a declaration
`that Harris and the Interscope Parties were liable for
`infringement; (2) injunctive relief or, in the alternative,
`ongoing royalties; and (3) prejudgment interest. The district
`court construed the Gayes’ motion for declaratory relief as a
`post-trial motion for judgment as a matter of law, and
`granted the motion, overturning the jury’s general verdicts
`in favor of Harris and the Interscope Parties. The district
`court denied the Gayes’ request for injunctive relief, but
`awarded them a running royalty of 50% of future songwriter
`and publishing revenues from “Blurred Lines.” The district
`court granted in part the Gayes’ motion for prejudgment
`interest.
`
`G. The Judgment and Order on Attorney’s Fees and
`Costs
`
`The district court entered judgment on December 2,
`2015. The court awarded the Gayes $3,188,527.50 in actual
`damages, profits of $1,768,191.88 against Thicke and
`$357,630.96 against Williams and More Water from
`Nazareth Publishing, and a running royalty of 50% of future
`songwriter and publishing revenues received by Williams,
`Thicke, and Harris.
`
`On April 12, 2016, the district court denied the Gayes’
`motion for attorney’s fees and apportioned costs between the
`parties. The parties timely appealed.
`
`

`

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`WILLIAMS V. GAYE
`
`ANALYSIS
`
`I. Governing Law
`
`We begin by discussing the law applicable to this case.
`
`A. Elements of a Copyright Infringement Claim
`
`To prevail on a copyright infringement claim, a plaintiff
`must show that (1) he or she owns the copyright in the
`infringed work, and (2) the defendant copied protected
`elements of the copyrighted work. Swirsky v. Carey,
`376 F.3d 841, 844 (9th Cir. 2004). A copyright plaintiff may
`prove copying with circumstantial, rather than direct,
`evidence. Three Boys Music Corp. v. Bolton, 212 F.3d 477,
`481 (9th Cir. 2000). “Absent direct evidence of copying,
`proof of infringement involves fact-based showings that the
`defendant had ‘access’ to the plaintiff’s work and that the
`two works are ‘substantially similar.’” Id. (quoting Smith v.
`Jackson, 84 F.3d 1213, 1218 (9th Cir. 1996)).
`
`Access and substantial similarity are “inextricably
`linked.” Id. at 485. We adhere to the “inverse ratio rule,”
`which operates like a sliding scale: The greater the showing
`of access, the lesser the showing of substantial similarity is
`required.6 See Swirsky, 376 F.3d at 844; Three Boys Music,
`212 F.3d at 485. Williams and Thicke readily admitted at
`trial that they had a high degree of access to “Got To Give It
`Up.” The Gayes’ burden of proof of substantial similarity is
`lowered accordingly. See Swirsky, 376 F.3d at 844–45; see
`
`6 To be clear, we do not “redefin[e] the test of substantial similarity
`here,” or negate the requirement that there be substantial similarity. See
`Three Boys Music, 212 F.3d at 486. Although the dissent criticizes the
`inverse ratio rule, the rule is binding precedent under our circuit law, and
`we are bound to apply it.
`
`

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`WILLIAMS V. GAYE
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`
`
`also Metcalf v. Bochco, 294 F.3d 1069, 1075 (9th Cir. 2002)
`(“The [plaintiffs’] case is strengthened considerably by [the
`defendant’s] concession of access to their works.”).
`
`17
`
`We use a two-part test for substantial similarity: an
`extrinsic test and an intrinsic test. Swirsky, 376 F.3d at 845.
`For a jury to find substantial similarity, there must be
`evidence on both the extrinsic and intrinsic tests. Id. (citing
`Rice v. Fox Broad. Co., 330 F.3d 1170, 1174 (9th Cir.
`2003)). A district court applies only the extrinsic test on a
`motion for summary judgment, as the intrinsic test is
`reserved exclusively for the trier of fact. Benay v. Warner
`Bros. Entm’t, Inc., 607 F.3d 620, 624 (9th Cir. 2010).
`
`The extrinsic test is objective. Swirsky, 376 F.3d at 845.
`It “considers whether two works share a similarity of ideas
`and expression as measured by external, objective criteria.”
`Id. Application of “[t]he extrinsic test requires ‘analytical
`dissection of a work and expert testimony.’” Id. (quoting
`Three Boys Music, 212 F.3d at 485). An analytical
`dissection, in turn, “requires breaking the works ‘down into
`their constituent elements, and comparing those elements for
`proof of copying as measured by “substantial similarity.”’”
`Id. (quoting Rice v. Fox Broad. Co., 148 F. Supp. 2d 1029,
`1051 (C.D. Cal. 2001)).
`
`The intrinsic test, on the other hand, is subjective. Three
`Boys Music, 212 F.3d at 485. It “asks ‘whether the ordinary,
`reasonable person would find the total concept and feel of
`the works to be substantially similar.’” Id. (quoting Pasillas
`v. McDonald’s Corp., 927 F.2d 440, 442 (9th Cir. 1991)).
`
`“Because the requirement is one of substantial similarity
`to protected elements of the copyrighted work, it is essential
`to distinguish between the protected and unprotected
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`material in a plaintiff’s work.”7 Swirsky, 376 F.3d at 845.
`Still, “substantial similarity can be found in a combination
`of elements, even if those elements are individually
`unprotected.” Id. at 848; see also Metcalf, 294 F.3d at 1074
`(“Each note in a scale, for example, is not protectable, but a
`pattern of notes in a tune may earn copyright protection.”);
`Three Boys Music, 212 F.3d at 485–86 (upholding jury’s
`finding of substantial similarity based on “a combination of
`unprotectible elements”). This principle finds particular
`relevance in application of the intrinsic test, as a trier of fact
`may “find that the over-all impact and effect indicate
`substantial appropriation,” even if “any one similarity taken
`by itself seems trivial.” Sid & Marty Krofft Television
`Prods., Inc. v. McDonald’s Corp., 562 F.2d 1157, 1169 (9th
`Cir. 1977) (quoting Malkin v. Dubinsky, 146 F. Supp. 111,
`114 (S.D.N.Y. 1956)), superseded in part on other grounds,
`17 U.S.C. § 504(b); see also Three Boys Music, 212 F.3d at
`485.
`
`B. The Standard of Similarity
`Compositions
`
`for Musical
`
`We have distinguished between “broad” and “thin”
`copyright protection based on the “range of expression”
`
`
`7 “Copyright protection subsists
`. . .
`in original works of
`authorship,” including “musical works” and “any accompanying words,”
`that are “fixed in any tangible medium of expression.” 17 U.S.C.
`§ 102(a). Generally speaking, copyright law does not protect ideas, but
`rather, protects the expression of ideas. See id. § 102(b); Rice, 330 F.3d
`at 1174. For example, elements of an original work of authorship may
`be unprotectable by reason of the scenes a faire doctrine. See Swirsky,
`376 F.3d at 849–50. According to that doctrine, “when certain
`commonplace expressions are indispensable and naturally associated
`with the treatment of a given idea, those expressions are treated like ideas
`and therefore not protected by copyright.” Id. at 850.
`
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`WILLIAMS V. GAYE
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`involved. Mattel, Inc. v. MGA Entm’t, Inc., 616 F.3d 904,
`913–14 (9th Cir. 2010). “If there’s a wide range of
`expression . . . , then copyright protection is ‘broad’ and a
`work will infringe if it’s ‘substantially similar’ to the
`copyrighted work.” Id. (citation omitted). On the other
`hand, “[i]f there’s only a narrow range of expression . . . ,
`then copyright protection is ‘thin’ and a work must be
`‘virtually identical’ to infringe.” Id. at 914 (citation
`omitted). To illustrate, there are a myriad of ways to make
`an “aliens-attack movie,” but “there are only so many ways
`to paint a red bouncy ball on blank canvas.” Id. at 913–14.
`Whereas the former deserves broad copyright protection, the
`latter merits only thin copyright protection. See id.
`
`We reject the Thicke Parties’ argument that the Gayes’
`copyright enjoys only thin protection. Musical compositions
`are not confined to a narrow range of expression.8 See
`Swirsky, 376 F.3d at 849 (noting that “[m]usic . . . is not
`capable of ready classification into only five or six
`constituent elements,” but “is comprised of a large array of
`elements”). They are unlike a page-shaped computer
`desktop icon, see Apple Computer, Inc. v. Microsoft Corp.,
`35 F.3d 1435, 1444 (9th Cir. 1994), or a “glass-in-glass
`jellyfish sculpture,” Satava v. Lowry, 323 F.3d 805, 810 (9th
`Cir. 2003). Rather, as we have observed previously,
`“[m]usic . . . is not capable of ready classification into only
`five or six constituent elements,” but is instead “comprised
`of a large array of elements, some combination of which is
`
`
`8 Even the de minimis exception, which renders insignificant
`copying inactionable, does not require a standard of similarity as
`exacting as virtual identity. See VMG Salsoul, LLC v. Ciccone, 824 F.3d
`871, 878 (9th Cir. 2016) (“A ‘use is de minimis only if the average
`audience would not recognize the appropriation.’” (quoting Newton v.
`Diamond, 388 F.3d 1189, 1193 (9th Cir. 2004))).
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`protectable by copyright.” Swirsky, 376 F.3d at 849. As
`“[t]here is no one magical combination of . . . factors that
`will automatically substantiate a musical infringement suit,”
`and as “each allegation of infringement will be unique,” the
`extrinsic test is met, “[s]o long as the plaintiff can
`demonstrate,
`through expert
`testimony
`. . . ,
`that
`the
`similarity was ‘substantial’ and to ‘protected elements’ of
`the copyrighted work.” Id. We have applied the substantial
`similarity standard to musical infringement suits before, see
`id.; Three Boys Music, 212 F.3d at 485, and see no reason to
`deviate from that standard now. Therefore, the Gayes’
`copyright is not limited to only thin copyright protection, and
`the Gayes need not prove virtual identity to substantiate their
`infringement action.
`
`C. The Copyright Act of 1909
`
`Marvin Gaye composed “Got To Give It Up” before
`January 1, 1978, the effective date of the Copyright Act of
`1976. Accordingly, the Copyright Act of 1909 governs the
`Gayes’ compositional copyright. See Twentieth Century
`Fox Film Corp. v. Entm’t Distrib., 429 F.3d 869, 876 (9th
`Cir. 2005); Dolman v. Agee, 157 F.3d 708, 712 n.1 (9th Cir.
`1998).
`
`While the Copyright Act of 1976 protects “works of
`authorship” fixed in “sound recordings,” 17 U.S.C. § 102,
`the 1909 Act did not protect sound recordings. It is well
`settled that “[s]ound recordings and musical compositions
`are separate works with their own distinct copyrights.”9 See
`
`9 17 U.S.C. § 102(a)(2) protects “musical works,” while § 102(a)(7)
`protects “sound recordings.” “‘Sound recordings’ are works that result
`from the fixation of a series of musical, spoken, or other sounds . . . ,
`regardless of the nature of the material objects, such as disks, tapes, or
`other phonorecords, in which they are embodied.” 17 U.S.C. § 101.
`
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`VMG Salsoul, LLC v. Ciccone, 824 F.3d 871, 877 (9th Cir.
`2016) (quoting Erickson v. Blake, 839 F. Supp. 2d 1132,
`1135 n.3 (D. Or. 2012)). It remains unsettled, however,
`whether copyright protection for musical compositions
`under the 1909 Act extends only to the four corners of the
`sheet music deposited with the United States Copyright
`Office, or whether the commercial sound recordings of the
`compositions are admissible to shed light on the scope of the
`underlying copyright. Here, the district court ruled that the
`1909 Act protected only the deposit copy of “Got To Give It
`Up,” and excluded the sound recording from consideration.
`
`The Gayes cross-appeal the district court’s interpretation
`of the 1909 Act only in the event the case is remanded for a
`new trial. The parties have staked out mutually exclusive
`positions. The Gayes assert that Marvin Gaye’s studio
`recording may establish the scope of a compositional
`copyright, despite the 1909 Act’s lack of protection for
`sound recordings. The Thicke Parties, on the other hand,
`elev