The U.S. Court of Appeals for the Ninth Circuit recently upheld the district court's decision finding Robin Thicke’s and Pharrell Williams’ chart-topping 2013 hit "Blurred Lines" infringed the copyright on Marvin Gaye's song "Got To Give It Up." The Ninth Circuit also upheld the district court’s award of more than $3 million in actual damages, $5 million in infringer’s profits and a continuing royalty of 50% of future songwriter and publishing revenues generated from the song.
The Ninth Circuit emphasized that its "decision hinges on settled procedural principles and the limited nature of our appellate review, dictated by the particular posture of this case and controlling copyright law." But a dissenting judge forcefully argued that the majority had allowed Marvin Gaye's family “to accomplish what no one has before: copyright[ing] a musical style” and had established “a dangerous precedent that strikes a devastating blow to future musicians and composers everywhere.”
The foregoing decisions create a risk of serious potential liability for advertising agencies, their clients and other parties that use musical compositions that sound similar to an existing copyrighted composition (so-called “sound-alike” recordings). The risk occurs when a music track incorporated into a rough cut (i.e., footage that has not been completely edited yet) and/or final advertising is similar to an existing copyright-protected composition, or when a vocal track that imitates an identifiable voice (a so-called “voice imitation”) is used.
Incorporating an unlicensed musical track or vocal track into a rough cut is the first misstep on the road to potential liability and damages.
The Small Risks
The incorporation of unlicensed music into a rough cut, a common industry practice, is in itself a violation of the rights of the copyright owner. The use of a sound-alike vocal track is another opportunity for liability. Hiring someone to mimic the distinctive voice and vocal style of a known singer exposes parties to claims of misappropriation. Essentially, it is a violation of the famous singer’s right of publicity since the sound of her/his voice would lead the public to think that the celebrity was sponsoring or endorsing the advertised product or services. However, the likelihood of discovery and the potential damages are usually de minimis in the case of a rough cut.
The Big Risks
When rough cuts are presented by an advertising agency to its client, they are typically reviewed multiple times by both parties. The music composition and vocal track (collectively, the “work”), if any, become an integral part of the advertising message and embedded into the hearts and minds of the client, and often the agency's, too. At that point, the client, and often the agency, feels that “nothing else will work as well,” with the agency having the resulting task of trying to obtain the rights to the work. If the rights are not available, the agency will try to find acceptable substitutes.
If an original work can be licensed and is available at an acceptable cost, there is no problem. However, as is sometimes the case, (i) the work may not be available to be licensed for any commercial purpose, (ii) the work may not be available for use in conjunction with the particular product or service, or the owners may not agree to license the work because it is not a “good fit” for the product or service, or (iii) the proposed license fee may exceed the client’s budget.
The unavailability of a work often results in the client’s directive to create a new work in substitution for the unavailable work. What the client really wants is a work that sounds just like what is unavailable.
However, based on the "Blurred Lines" decisions, if the substitute work sounds just like the unavailable work, it may constitute an infringement, resulting in potential liability.
Intent to copy is an element in determining if copying and an infringement have occurred. The use of the unlicensed work in the rough cut and a licensing inquiry are strong indications that the newly created work is intended to mimic and substitute for the unavailable work.
While intent is an issue as to whether there is an actionable claim, it is a matter of objective fact as to whether the various components of the song — including signature phrases, hooks, beats, chords and melodies — are similar. The obvious solution is to refrain from using a music composition and/or vocal track on a rough cut if it is not available to be licensed on acceptable terms, including the licensor providing representations and warranties of originality and indemnification against claims of infringement.
“Infringement is an ongoing issue for most well-known artists,” said Martin Cribbs, vice president for brand management at Beanstalk. “One way to mitigate that issue is to make their music available for commercial licensing, within certain parameters of course, and with their prior approval. Our client, the Isaac Hayes estate, works with a stock music house, so when someone searches for 'sounds like Isaac Hayes,' they find actual Isaac Hayes music, including hits, lesser-known songs, unpublished work, etc.”
An existing composition can influence and inspire a new and non-infringing composition. Courts will look at the extent of any similarities and intent. Musicologists will likely be engaged by both sides to opine on the similarities and whether they have resulted from copying.
The costs to settle claims can range from very little for an unknown artist to hundreds of thousands of dollars or more for a hit song with name talent. And as we can see from the "Blurred Lines" decisions, an adverse ruling can result in damage awards in the millions of dollars. Even if a claim is successfully defended against, the time, resources and costs of litigation (e.g., legal fees and expert witness fees) can be significant.
Unfortunately, most musicologists take the position that it is virtually impossible to render to a certainty that a composition is “original” and not subject to any potential claims, making it difficult to successfully defend a claim of infringement. That has led to many high-profile claims that have been settled to avoid bad publicity and the expense and uncertainty of litigation.
The defendants in each such case learned that there is often a blurred line between originality and infringement. Consequently, for advertising agencies, their clients and other parties using sound-alike and/or voice imitations, the best advice to avoid exposure to liability is to always contract for such music and vocals via licensing.