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Monday, 2 November 2015

US judge denies copyright over 3-word phrase ‘Everyday I’m Hustlin’’

Nedim Malovic
Is there copyright in very short phrases?

As copyright enthusiasts know, this invariably proves to be one of the thorniest issues to determine when it comes to specific cases. Just a couple of days ago it was reported that Taylor Swift has been sued for copyright infringement over inclusion of 'haters gone hate' and 'playas gone play' in her song Shake It Off.

A few weeks ago the US District Court for the Southern District of Florida had to determine whether dance pop duo LMFAO had infringed rapper Rick Ross’s copyright by using catch-phrase ‘Everyday I’m Shufflin’’ for merchandising.

IPKat friend and IP enthusiast Nedim Malovic (Stockholm University) explains how this case went.

Here’s what Nedim writes:

“This case concerned alleged infringement of copyright in a song, Hustlin’, authored by the plaintiffs, and included in Rick Ross’s 2006 debut album, Port of Miami. In 2011 the defendants, a dance music duo performing under the alias LMFAO, released a single, Party Rock Anthem, that was later included in LMFAO’s second album Sorry For Party Rocking. Party Rock Anthem includes a phrase, ‘Everyday I’m Shufflin’’, used by the duo in its successful merchandising line.

Rick Ross brought proceedings for copyright infringement, claiming that use of ‘Everyday I’m Shufflin’’ by LMFAO amounted to an infringement of his rights over the phrase ‘Everyday I’m Hustlin’’, featured in Hustlin’. More specifically, through the use of the phrase ‘Everyday I’m Shufflin’’ on merchandise sold under the registered trade mark Party Rock, not only did the defendants allegedly infringe the plaintiffs’ copyright in the phrase ‘Everyday I’m Hustlin’, but also led the general public into believing that Rick Ross was affiliated, connected or associated with the defendants.

Rick Ross
What the Court said

In her summary judgment, Judge Williams considered that to prevail in a claim of copyright infringement, a plaintiff must establish ownership of a valid copyright, and copying by the defendant(s) of original elements of the work. To this end, a plaintiff must also establish that the allegedly infringing work is substantially similar to his/her work with regard to its protected elements. To establish substantial similarity a plaintiff must pass both an (1) extrinsic, and (2) intrinsic test.

(1) Extrinsic (objective) test

As part of the extrinsic test, a court is required to determine whether the works are substantially similar in protected expression. To this end, it is necessary to exclude elements of the plaintiff’s work that cannot be afforded protection, ie elements lacking sufficient originality.

The current standard of originality principle under US law is that established in Feist, in which the US Supreme Court held (at 435) that:

Original, as the term is used in copyright, means that the work is original to the author i.e. that it was independently created by him as opposed to copied from other works, and that it possesses some minimal degree of creativity”.

Uncle-nephew duo LMFAO
(Who's the nephew? Who's the uncle?)
Judge Williams established that, as a musical work, Hustlin’ is protected by copyright. However, the question was not whether the lyrics of Hustlin’, as arranged in their entirety, were eligible for protection, but rather whether use of a three-word phrase appearing in the musical composition, divorced from the accompanying music, modified, and subsequently printed on merchandise, would constitute an infringement of copyright in Hustlin’.

Judge Williams had thus to determine whether the phrase ‘Everyday I’m Hustlin’’ would be eligible for protection. To this end she considered other music catch-phrases. In Takeall the Fourth Circuit found that the phrase ‘You Got the Right One, Uh-Huh’ was not sufficiently original. Similarly in Prunte, the Second Circuit held that phrases such as ‘fire in the hole’, ‘so high’, ‘holla back’, ‘get it poppin’’, ‘wish a muthafugga would’, ‘just running their mouths’, ‘shoot to kill’, ‘I'm a maniac’, and ‘that's what's up’ were too simple, short, and mundane to be original in a copyright sense.

Judge Williams concluded that also Rick Ross’s three-word phrase “Everyday I’m Hustlin” was composed of ordinary words and as such could not be protected by copyright.        

Furthermore, the Defendants’ counsel presented unrebutted evidence that the terms of Hustlin’ had been used in numerous earlier songs, and that at least one song pre-dating Hustlin’ has the exact same phrase ‘Everyday I’m Hustlin’’ in it.

(2) Intrinsic (subjective) test

With respect to the intrinsic test, as it was held in Oravec, a court has to determine whether, upon proper instruction, a reasonable jury would find that the works at issue are substantially similar at the level of protected expression.

In this regard, Judge Williams opined that the average lay observer would not confuse T-shirts bearing the phrase ‘Everyday I’m Shufflin’’ with the musical composition Hustlin’, nor would an average lay observer recognise the merchandise as having been appropriated from Hustlin’ without any reference to Party Rock Anthem and Hustlin’.

Merpel, in shufflin'-mode
Judge Williams also recalled the precedent in Jostens, in which the Second Circuit rejected the claim that none of the lyrics in a copyright musical composition might appear in a commercial setting without the copyright owner’s permission. This is because otherwise the copyright owner would be afforded expansive monopoly even over material in the public domain.

Since there is no valid copyright ownership in the phrase ‘Everyday I’m Hustlin’’, the judge did not deem it necessary to address whether there had been any copying of the constituent elements of the work. She concluded that the phrase “Everyday I’m Shufflin”, printed on T-shirts standing alone, and divorced from any musical composition, did not constitute an infringement on the musical composition Hustlin’.

So?

The factors to consider when determining whether copyright protection subsists appear clearer following a number of decisions by US courts. In Feist the US Supreme Court clarified the standard of originality under US law: the work at hand must have been independently created by the author (as opposed to copied from other works), and possess some minimal degree of creativity. This 1990 decision has been regarded as representing a shift in US copyright, in that copyright protection was ruled out for works of information that fail to manifest a modicum of creative input in selection or arrangement. Furthermore, to prevail in a claim of copyright infringement, the plaintiff in question must establish that the work in question is substantially similar to the plaintiff’s work. As Judge Williams also clarified in her decision, substantial similarity must be assessed in light of an extrinsic and intrinsic test.


The US approach to originality and copyright infringement may be appropriately compared with the EU approach, especially following the decision of the Court of Justice of the European Union (CJEU) in Infopaq, and its progeny. In that case the CJEU held that the standard of originality of ‘author’s own intellectual creation’ that relevant EU directives lay out for computer programs, photographs and databases is also applicable to other copyright subject-matter. In addition, infringement of the right of reproduction under Article 2 of Directive 2001/29 (the InfoSoc Directive) is to be found anytime the defendant has reproduced the relevant work in its entirety or a part of it that is sufficiently original. In doing so, similarly to the intrinsic test under US law, also under EU copyright the test of substantial similarity requires a qualitative, rather than a quantitative, assessment of the works at issue."

4 comments:

Tom Ang said...

Thank you! Enjoyed the exemplary clarity of exposition.

Nedim Malovic said...

Thank you very much Tom!

James Plotkin said...

I abhor the idea of a "lay listener" or "lay observer" test in the copyright infringement context. This is not a trademark infringement action. The relevant perspective is not that of the lay consumer of the works in question. Whether a work was copied is a question of art and must be assessed from the perspective of one who is versed in the art in question.

I know nothing about computer code. To know if Person A's code infringed person B's I would not know where to begin my comparison without expert witnesses to help me decipher what I was actually looking at.

I agree that a lyrics from a song are not as complex and thus do not require the same degree of deciphering, but infringement in general should not be assessed from the perspective of the lay listener. Even in the case of plot-based works where the average person is deemed to have enough experience with the art form to make an assessment, the assessment should be made from an artist's (in the discipline in question) perspective.

Dr Mike said...

Just a fyi, your "shake it off" link points to your C drive. :)

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