On Nov. 29, 2018, Johannsongs Publishing from Reykjavik, Iceland filed a complaint in the Central District of California alleging that the hit song “You Raise Me Up” infringed the copyright to Jóhann Helgason’s 1977 song, “Söknuður” (“Into the Light”) (lyrics by Vilhjalmur Vilhjalmsson). Johannsongs Publishing owns the U.S. copyright to the song except for the lyrics. The complaint alleged that Helgason’s song achieved success in Iceland and was commonly played at funerals and memorial services, and that the melody of “Raise Me Up” was copied from Helgason’s song.

The Nordic twist: According to the complaint, the Norwegian singer-songwriter Rolf Løvland, whose band is named Secret Garden, allegedly traveled to Iceland often and, while there, heard Helgason’s “Söknuður.” Løvland then allegedly copied Helgason’s song in composing a song for Secret Garden in 2003 and a new version in 2018, available on Spotify and iTunes. Both of Løvland’s songs are allegedly unauthorized derivative works of Helgason’s 1977 song.

The LA trip: Løvland then allegedly flew to Los Angeles to meet with, among others, Universal Music and David Foster, a well-known producer whose artists include Josh Groban. The complaint alleges that Foster agreed with Løvland to create a U.S. version of Løvland’s song, which is also allegedly an infringing derivative work of Helgason’s song according to the complaint. Sure enough, David Foster did produce the song “You Raise Me Up” with Josh Groban as a part of his “Closer” album in 2003. The song became a mega-hit around the world, and Groban’s album hit the No. 1 spot on Billboard’s chart. Both Foster and Groban received Grammy Award nominations for their work on “You Raise Me Up.”

Johannsongs sued Rolf Løvland, Brendan Graham (an Irish novelist who wrote the lyrics to Løvland’s song “You Raise Me Up”), Universal Music, Warner Music, UMG Recordings, Apple (for iTunes), and Spotify. However, the complaint does not involve Josh Groban or David Foster, even though their alleged conduct is a part of the case.

Proving Inringement in the Ninth Circuit: To establish a claim for copyright infringement, the plaintiff must prove (1) valid ownership of a copyright and (2) copying of original expression. The copying element of the infringement analysis contains two separate parts: “copying” and “unlawful appropriation.” To prove “unlawful appropriation,” there must be “substantial” similarities between the two works and the similarities must involve copyrightable elements of the plaintiff’s work. In determining if two works are substantially similar, the Ninth Circuit uses both an extrinsic test and an intrinsic test.

For music cases, the extrinsic test typically involves an expert analysis by a musicologist who compares the “objective” elements of the two works such as melody, harmony, rhythm, meter, and lyrics. Most importantly, under Ninth Circuit law, the extrinsic test requires experts to separate the unprotected “prior art” elements of a plaintiff’s work from the protected elements: “[A] finding of substantial similarity between two  works can’t be based on similarities in unprotectable elements.” Mattel, Inc. v. MGA Entm’t, Inc, 616 F.3d 904, 916 (9th Cir. 2020).

The intrinsic test, on the other hand, analyzes similarities between two works from the viewpoint of the ordinary reasonable listener without any expert opinion. The question of intrinsic similarities is often left to a jury. While usually both tests must be satisfied to prove substantial similarity, only the extrinsic test is considered on a motion for summary judgment because it poses questions of law that can be decided by a judge.

Defendants’ Motion: The defendants moved for summary judgment on the ground that “You Raise Me Up” is not substantially similar to ““Söknuður” and that the similarities are based on prior art–mainly the the Irish folk tune “Londonderry Air,” aka “Danny Boy,” which is in the public domain and not protected by copyright.

The Plaintiff’s Expert: Johannsongs Publishing hired expert musicologist Judith Finell to compare the two works. Finell is most known for testifying on behalf of Marvin Gaye’s estate, which won a multi-million dollar copyright infringement lawsuit against Robin Thicke and Pharrell Williams for their hit song “Blurred Lines.” In that case, Finell’s testimony was important to the Gaye estate’s proof that “Blurred Lines” was substantially similar to Gaye’s song “Got To Give It Up.”

The Court Throws out the Plaintiff’s Expert Musicologist Report as Unreliable: However, U.S. District Judge André Birotte Jr. who presided over Johannsongs’ case, deemed Finell’s expert reports to be “unreliable, unhelpful, and inadmissible” because they failed to apply reliable methodology and principles to the facts. On Løvland’s Motion for Summary Judgment, the Court found as a matter of law that “You Raise Me Up” and “Söknuður” were not substantially similar under the extrinsic test due to the lack of evidence from the plaintiff after its expert reports were excluded:

The dueling expert reports focus primarily on the melodies and only Defendants’ expert Ferrara applied reliable principles and methods to this task, and only Ferrara’s analysis filtered out the prior art as required by the extrinsic test. Plaintiff’s expert report is fatally flawed as discussed above, and on that basis is excluded. Accordingly, Ferrara’s analysis—which is well-supported and thorough—is, effectively, unrebutted. The Court therefore finds that Ferrara’s extensive analysis of the melodies is conclusive: any melodic similarities between Soknudur and Raise are either unprotectible because they are found in prior art songs including Londonderry Air aka Danny Boy, or they are too scattered to amount to substantial similarity.

The most eye-opening part of the court’s decision was its rejection–and sharp criticism–of the plaintiff’s expert report as unreliable and based on improper methodology in not excluding public domain elements in the songs from her analysis of their similarities (under the extrinsic test). The court noted numerous deficiencies in Finell’s reports:

1. The initial report was “only 7 paragraphs of “preliminary” findings contained in fewer than 4 double-spaced pages, supported by 2 exhibits purporting to compare the “skeletal pitches” and “skeletal pitch series within similar structure and musical event sequence” Soknudor and Raise.
2. [T]he Report lacks adequate explanation of the terms used, and fails to put the selected excerpts in the context of the entire compositions.
3. Furthermore, and critically, the Report expressly admits that Finell had “not yet conducted a prior art investigation,” but nevertheless speculates that “it is highly doubtful that another musical work will share the same lengthy series of skeletal pitches and musical events to the degree of similarity that is shared between [the two songs].
4. The rebuttal report was “more extensive” but “repeats the fatal flaw of the preliminary Finell Report—it fails to filter out prior art from Soknudur and Raise before comparing them.”

Judge Birotte also criticized Finell’s report for asserting that notes are similar even though the notes appear in different places in each song’s melody, as well as for Finell’s deeming notes to be consecutive despite different notes between them. Moreover, Finell’s report failed to provide sufficient supporting evidence such as comparative transcriptions or sheet music for the Court to determine the reliability of Finell’s analysis. Because Finell did not eliminate unprotectable “prior art” elements that drew from the song in the public domain (“Londonderry Air”) when she compared the two works at issue before comparing their similarities as required by the extrinsic test, the court rejected her expert reports under Fed. R. Evid. 702(c) and (d).

With Finell’s expert reports rejected, the only expert report left was the one submitted by the defendants. The Court relied on the Defendants’ expert, Dr. Lawrence Ferrara, because he properly applied “reliable principles and methods” in his analysis and filtered out unprotectable “prior art” elements from the songs at issue before comparing the “protectable remainder.” Analyzing the structure, harmony, rhythm, melody, and lyrics, Ferrara found no substantial similarities between the two works and that any melodic similarities pre-existed “Söknuður” in Irish folk songs dating back to the 18^th and 19^th centuries. Furthermore, Ferrara explained that the melodic similarities between the two works are also found in “prior art” songs such as “Danny Boy,” which are in the public domain. Relying on Ferrara’s analysis, Judge Birotte concluded that when the unprotectable elements were removed from “You Raise Me Up” and “Söknuður” the songs were not substantially similar under the extrinsic test and any similarities were either unprotectable or “too scattered to amount to substantial similarity.” Thus, Judge Birotte granted the Defendants’ motion for summary judgment.

What Next? One usually would expect an appeal in a music infringement lawsuit. However, if the Finell expert report is riddled with as many flaws–especially the failure to consider the prior art songs in the extrinsic analysis–as the district court found, Johannsongs Publishing might be hard pressed to argue that the district court’s exclusion of Finell’s reports was erroneous. The exclusion of expert testimony is reviewed for abuse of discretion. See Maffei v. Northern Ins. Co., 12 F.3d 892, 897 (9th Cir. 1993). (Note: We hope to get our hands on the Finell expert reports and review them, which we have not done for this summary.) On the other hand, we listened to the songs of Helgason, Løvland, and Groban. Even recognizing the common public domain song “Londonderry Air,” the songs sound very similar to us.

Courts as gatekeepers: Beyond this case, the decision appears to be a part of a trilogy of recent cases in the Ninth Circuit in which the courts are more heavily scrutinizing the underlying elements in a claim of music infringement. After the “Blurred Lines” decision, critics contended that some musicians feared being sued for copyright infringement on thin claims of similarity–some were even taking out insurance policies for copyright lawsuits. But now in less than a month, three courts–in the Led Zeppelin appeal, the decision overturning the jury verdict in Katy Perry’s “Dark Horse,” and this case involving “You Raise Me Up”–have asserted a greater gatekeeping role in deciding which elements of a musical work is copyrightable, which are standard or common features, and which are already in the public domain. That gatekeeping role the Ninth Circuit punted in the “Blurred Lines” appeal, with a sharp dissent from Judge Nguyen. But now the courts in the Ninth Circuit appear to have embraced what Judge Nguyen recommended.

This case does show how district courts can scrutinize the musicologists’ expert reports as an important part of that gatekeeping function. However, we should be careful before concluding that courts can now easily reject music infringement claims, without a trial. The “fatal” mistake in the musicologist’s expert reports in this case sounds like an easy one to correct in the future: the plaintiff’s expert must identify relevant prior art songs and then exclude them in its analysis of the extrinsic test. Because the plaintiff can submit an initial and a rebuttal expert report, even if the plaintiff’s musicologist was unable to find a prior art song that the defendants did, the plaintiff’s musicologist could reply to the defendant’s expert report in rebuttal. Overall, this decision gives greater incentive for all parties and their musicologists to conduct a thorough prior art search of prior songs.

Complaint (filed Nov. 29, 2018)

Answer (filed Feb. 7, 2019)

Decision [download]

Attorneys

Michael Machat for JohannSongs Publishing Ltd.

Barry Slotnick, Tal Dickstein, Ava Badiee of Loeb & Loeb LLP

Musicologists

Judith Finell for plaintiff JohannSongs Publishing Ltd.

Lawrence Ferrara for defendants