Case 1:03-cv-08661-GBD Document 44 Filed 06/30/05 Page 1 of 12
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`-----------------------------------------------------x
`CARLA B. BOONE,
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`03 CV 8661 (GBD)
`MEMORANDUM OPINION
` AND ORDER
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`Plaintiff,
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` -against-
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`JOHN D. JACKSON, p/k/a “FABOLOUS,”
`PHARELL L. WILLIAMS, CHARLES E. HUGO,
`ELEKTRA ENTERTAINMENT GROUP, INC.,
`DESERT STORM RECORDS, INC., EMI APRIL1
`MUSIC, INC., EMI BLACKWOOD MUSIC
`PUBLISHING, INC., J BRASCO PUBLISHING,
`INC., WARNER MUSIC GROUP, INC., and
`WEA, INC.,
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`Defendants.
`-----------------------------------------------------x
`GEORGE B. DANIELS, District Judge;
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`Plaintiff brings suit asserting copyright infringement of her song “Holla Back” by
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`defendants’ song “Young N.” Defendants moved for summary judgment pursuant to Fed. R.
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`Civ. P. 56 and seek the imposition of sanctions under Fed. R. Civ. P. 11 arguing that plaintiff’s
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`infringement action is frivolous and indefensible. For the reasons stated below, defendants’
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`motion for summary judgment is granted. The application for the imposition of sanctions is
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`denied.
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`BACKGROUND
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`Plaintiff, Carla B. Boone, is a member of Holla’ Back Records & Entertainment, LLC and
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`is in the business of producing and recording hip-hop and rap artists. Defendants, John D.
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`Jackson p/k/a “Fabolous,” Pharell L. Williams, Charles E. Hugo, Elektra Entertainment Group
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`Inc., Desert Storm Records Inc., EMI April Music Inc., EMI Blackwood Music Publishing Inc.,
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`Case 1:03-cv-08661-GBD Document 44 Filed 06/30/05 Page 2 of 12
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`J. Brasco Publishing Inc., Warner Music Group Inc., and WEA Inc. (collectively, “defendants”),
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`are various songwriters, recording artists, record producers, and music publishing companies that
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`created, recorded, and sold the song titled “Young N” for rap artist Fabolous.
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` The history of plaintiff’s song, “Holla Back,” begins in January 1999, when as a
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`publisher for Holla Back Records, she entered into an exclusive songwriter contract with Trilain
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`A. Smith (“Smith”) and Anthony Wells (“Wells”). Under the contract, Wells and Smith, who are
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`professionally known as the rap group Trajik, assigned all rights and interests in their musical
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`composition, “Holla Back,” to Boone. Later in 1999, plaintiff released a commercial audio
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`cassette and compact disk of Trajik performing “Holla Back.” On March 29, 1999, Boone
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`registered the musical composition with the U.S. Copyright Office. Plaintiff also registered
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`Trajik’s commercial release of “Holla Back” as a sound recording with the U.S. Copyright Office
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`on June 9, 2004. 1
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`In September 2001, defendants released the compact disc of rap artist Fabolous, titled
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`“Ghetto Fabolous.” The album, which featured a song co-written by defendants Fabolous,
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`Willliams, and Hugo titled “Young N,” sold over one million copies. Plaintiff maintains that
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`after the release of “Young N,” she received numerous calls from individuals congratulating her
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`on the success of the song. She contends that many of these callers mistakenly believed that
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`1 Although plaintiff asserts the infringement of two separate copyrights, one for the musical composition
`dated March 29, 1999 and the other for the sound recording dated June 9, 2004, she cannot assert that defendant’s
`song, which was released in 2001, violates a copyright that was registered in 2004. See 17 U.S.C. § 411(a) (1996)
`(“no action for infringement of the copyright in any United States work shall be instituted until preregistration or
`registration of the copyright claim has been made in accordance with this title”); see also Lennon v. Seaman, 84 F.
`Supp. 2d 522, 524 (S.D.N.Y. 2000) (noting that copyright registration is a jurisdictional perquisite to filing an
`infringement action).
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`2
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`Case 1:03-cv-08661-GBD Document 44 Filed 06/30/05 Page 3 of 12
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`Fabolous recorded the copyrighted work written by Trajik.
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`Plaintiff filed suit on November 3, 2003 claiming that defendants’ song “Young N”
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`infringed her copyrighted work in violation of the Copyright Act of 1976, 17 U.S.C. §106 and §
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`501. Specifically, she asserts that “Young N” features a “hook”2 containing a repetition of the
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`lyric “holla back” which is similar in phrasing and musicality to her copyrighted work. In
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`support, plaintiff offers her expert witness’s testimony for the proposition that the expression
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`“holla back” in the Fabolous recording is similar to the Trajik recording because of (1) its
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`position in the chorus or the hook of each song; (2) the rhythmic construction of the phrase; and
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`(3) the specific nature and quality of the lyric’s repetition in the hook.
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`2 A hook refers to the most identifiable phrase within a popular song, and is usually associated with the title
`lyrics. It is usually the songs most important single feature.
`In this case, the hook of “Young N” is:
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`Holla back Young’n (Hoooo Hoooo!)
`Holla back (Hoooo Hoooo!)
`Holla back Young’n (Hoooo Hoooo!)
`Holla back (Hoooo Hoooo!)
`Holla back Young’n (Hoooo Hoooo!)
`Holla back (Hoooo Hoooo!)
`Holla back Young’n (Hoooo Hoooo!)
`Holla back (Hoooo Hoooo!)
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`The hook of “Holla Back” is:
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`Heard a hot track it’s,
`Holla Back
`If you built for big stacks it’s,
`Holla Back
`If you floss big chains it’s,
`Holla Back
`Holla Back Holla Back Where you at? C’mon!
`If you heard a hot track it’s,
`Holla Back
`If you floss big chains it’s,
`Holla Back
`If you built for big stacks it’s,
`Holla Back
`Holla Back Holla Back W here you at? C’mon!
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`3
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`Case 1:03-cv-08661-GBD Document 44 Filed 06/30/05 Page 4 of 12
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`Defendants argue that the plaintiff’s infringement claims fail because there are no
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`actionable similarities between “Young N” and “Holla Back.” In support, defendants offer their
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`expert witness’s testimony which concludes that few similarities exist between the two songs to
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`support a copyright infringement claim. Defendants’ expert witness found that the only
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`similarities between “Holla Back” and “Young N” are the (1) repeating lyrics, “Holla Back,” in a
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`naturally spoken three-note rhythm in the respective choruses and (2) a commonplace syncopated
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`three-note rhythm. Their expert witness concluded that because few similarities exist between
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`the songs, and because the similarities that are present are commonplace within the rap genre,
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`plaintiff’s copyright infringement claim lacks merit.
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`COPYRIGHT INFRINGEMENT
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`Summary judgment is proper “if the pleadings, depositions, answers to interrogatories,
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`and admissions on file, together with the affidavits, if any, show that there is no genuine issue of
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`material fact and the moving party is entitled to judgment as a matter of law.” Fed. R. Civ. P.
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`56(c); Nebraska v. Wyoming, 507 U.S. 584, 590, 113 S. Ct. 1689, 1694, 123 L. Ed. 2d 317
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`(1993). The burden of demonstrating that no factual dispute exists is on the moving party.
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`Celotex Corp. v. Catrett, 477 U.S. 317, 323, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986). Once the
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`moving party has met this burden, the nonmoving party “must set forth specific facts showing
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`that there is a genuine issue for trial.” Fed. R. Civ. P. 56 (e). In deciding a motion for summary
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`judgment, a court must resolve all ambiguities and draw all reasonable inferences in favor of the
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`party opposing the motion. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S. Ct. 2505,
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`91 L. Ed. 2d 202 (1986). Summary judgment should be granted only when no reasonable trier of
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`fact could find in favor of the nonmoving party. Gallo v. Prudential Residential Services, Ltd.,
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`4
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`Case 1:03-cv-08661-GBD Document 44 Filed 06/30/05 Page 5 of 12
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`22 F.3d 1219, 1224 (2d. Cir. 1994).
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`In order to establish copyright infringement, two elements must be proven: (1) ownership
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`of a valid copyright and (2) unauthorized copying of the copyrighted work. Jorgensen v.
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`Epic/Sony Records, 351 F.3d 46, 51 (2d Cir. 2003). A certificate of registration from the United
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`States Register of Copyrights constitutes prima facie evidence of the valid ownership of a
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`copyright. See 17 U.S.C. § 410.3
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`To satisfy the second element of an infringement claim, a plaintiff must show that her
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`work was “actually copied” and that the portion copied amounts to an improper or unlawful
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`appropriation. Castle Rock Entm’t, Inc. v. Carol Publ’g Group, Inc., 150 F.3d 132, 137 (2d Cir.
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`1998). Because evidence of actual copying is rare, copying may be established by indirect
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`evidence. See Boisson v. Banian, Ltd., 273 F.3d 262, 267 (2d Cir. 2001). Establishing actual
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`copying circumstantially requires a plaintiff to show that the defendant had access to the
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`copyrighted work and that substantial similarities exist between the defendant’s work and the
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`protectable elements of the plaintiff’s work. See Williams v. Crichton, 84 F.3d 581, 587 (2d Cir.
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`1996); see also Knitwaves, Inc., v. Lolltytogs Ltd., 71 F.3d 996, 1002 (2d Cir. 1995). Proof of
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`actual copying may also include weighing expert testimony. See Laureyssens v. Idea Group, Inc.,
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`964 F.2d 131, 140 (2d Cir. 1992). Expert testimony may include “‘dissecting’ the two works and
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`discussing the works’ relationship to other earlier works, for the purpose of illuminating whether
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`similarities between the two works are more likely due to copying or independent creation.”
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`3 Plaintiff’s expert compared the copyrighted sound recording of “Holla Back,” dated June 9, 2004 to
`defendants’ song “Young N” released in 2001. Plaintiff does, however, assert that five similarities exist between her
`copyrighted musical composition dated M arch 29, 1999 and defendants’ song “Young N,” released in 2001.
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`5
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`Case 1:03-cv-08661-GBD Document 44 Filed 06/30/05 Page 6 of 12
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`McDonald v. Multimedia Entm’t, Inc., 1991 WL 311921, *2 (S.D.N.Y. July 19, 1991).
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`The plaintiff must show that the copying amounts to an improper or unlawful
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`appropriation by demonstrating that substantial similarities exists between the two works.4
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`Laureyssens, 964 F.2d at 140. To establish unlawful appropriation, courts employ the ordinary
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`observer test. Knitwaves, 71 F.3d at 1002. This standard asks whether an “ordinary observer,
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`unless he set out to detect the disparities, would be disposed to overlook them, and regard their
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`aesthetic appeal as the same.” Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489
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`(2d Cir. 1960); Knitwaves, 71 F.3d at 1002. Additionally, “when determining ‘substantial
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`similarity,’ the finder of fact is constrained to look at the work as a whole, without dissection as
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`an ordinary lay observer would.” Tienshan, Inc., v. C.C.A. Int’l, Inc., 895 F. Supp 651, 658
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`(S.D.N.Y. 1995). Where works are compared that contain both protectable and unprotectable
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`elements, examination of the work must be more discerning; unprotectable elements must be
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`extracted from consideration to determine if the protectable elements standing alone, are
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`substantially similar. Knitwaves, 71 F.3d at 1002. If points of dissimilarity between two works
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`exceed those that are similar, a finding of no infringement is appropriate. See Rogers v. Koons,
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`960 F.2d 301, 308 (2d Cir. 1992). Once a plaintiff successfully makes a prima facie showing of
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`copyright infringement, evidence of independent creation is an affirmative defense and may be
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`introduced to rebut the claim. Repp v. Webber, 132 F.3d 882, 889 (2d Cir. 1997); Tienshan, 895
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`F. Supp. at 657.
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`4 Copyright infringement claims involve consideration of similarity at two different stages of the
`analysis–actual copying and improper appropriation. The Second Circuit has noted that the term “probative
`similarity” should be used when referring to the initial burden of proving copying by establishing access and/or
`similarities. See Repp v. Webber, 132 F.3d 882, 889 FN 1 (2d Cir. 1997).
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`6
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`Case 1:03-cv-08661-GBD Document 44 Filed 06/30/05 Page 7 of 12
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`Because the defendant concedes a showing of access for purposes of summary judgment,
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`the critical issue in this case is whether substantial similarities exist between the two works as a
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`matter of law. Plaintiff primarily argues that the verbal utterances of “holla back” in the hook of
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`the Trajik and Fabolous songs are identical in construction because they are rapped in the same
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`rhythmic pattern. Plaintiff also contends that “Holla Back” and “Young N” share similarities
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`because the phrase “holla back” is followed by a repeated vocal response in each hook such as
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`“back back” in the Trajik song and “young n woo woo” in the Fabolous song.
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`These arguments are unpersuasive. A comparison of the two works reveals that
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`substantial similarities do not exist between the hook in the plaintiff’s song and the hook in the
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`defendant’s song to support an inference of copying. Although “Holla Back” as a complete work
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`is protected, not every element of the song is protectable per se. See Rogers v. Koons, 960 F.2d
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`301, 307 (2d Cir. 1992). The presence of the phrase “holla back,” rapped in an eighth note,
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`eighth note, quarter note rhythmic pattern in the hook of each song is too common to be
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`protectable. See Stratchborneo v. ARC Music Corp., 357 F. Supp. 1393, 1405 (S.D.N.Y. 1973)
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`(holding that substantial similarity will not be found if only a small, common phrase appears in
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`both the accused and complaining work; unless the reappearing phrase is especially unique or
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`qualitatively important). Evidence proffered by the defendant noting the presence of the phrase
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`“holla back” in numerous songs demonstrates the banal and therefore unprotectable nature of the
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`phrase. See Acuff-Rose Music, Inc. v. Jostens, Inc., 155 F.3d 140, 144 (2d Cir. 1998) (holding
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`that prior usage of the phrase ‘you’ve got to stand for something or you’ll fall for anything’ is
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`sufficiently widespread and common to deny copyright protection).
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`Defendant’s exhibit indicates that out of thirty-two songs found which contain the phrase
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`7
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`Case 1:03-cv-08661-GBD Document 44 Filed 06/30/05 Page 8 of 12
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`“holla back,” nine songs repeat “holla back” in the same rhythmic pattern used in “Holla Back”
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`and “Young N,” four songs predate the release of plaintiff’s song, and five songs were released
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`in the same year as plaintiff’s song. The appearance of the phrase “holla back” in the Urban
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`Dictionary further supports defendant’s contention that the phrase is common and therefore
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`unprotectable.5 See Exhibit 6. Finally, plaintiff’s expert’s own admission that the phrase “holla
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`back” rapped in an eighth note, eighth note, quarter note pattern is neither original nor unique
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`undercuts a finding of substantial similarity.6 It is black letter law that common phrases such as
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`“Holla Back” are not protectable. See Jean v. Bug Music, 2002 WL 28776, *6 (S.D.N.Y. Feb.
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`27, 2002) (holding that a reasonable jury could only conclude that the lyrical phrase ‘clap your
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`hands now, people clap now’ is not protectable by copyright law because it is a common phrase
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`that often appears in church and secular music). Thus, where a comparison of the two works at
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`issue show that the similarities relate only to non-copyrightable elements, as is the case here,
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`courts have consistently held that summary judgment in favor of the defendant is appropriate.
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`See Ring v. Estee Lauder Inc., 874 F.2d 109, 110 (2d Cir 1989); See also Levine v. McDonald,
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`735 F. Supp 92, 96 (S.D.N.Y. 1990).
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`Even if evidence of copying could be found, the plaintiff fails to satisfy the unlawful
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`appropriation prong of the infringement test. Under the ordinary observer test, it is unlikely that
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`5 As cited in the defendant’s exhibit 6, the Urban Dictionary is an online dictionary which allows users to
`create and submit definitions of slang words and phrases for publication “Holla back” is defined as a “term [that]
`can be used as a goodbye greeting or when ending a conversation or at the end of trying to prove a point.” See
`http://www.urbandictionary.com/define.php?term=holla+back&f=1.
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`6 When plaintiff’s expert was asked by the defendant’s attorney whether “the writer of the plaintiff’s song
`created the rhythmic pattern of saying the word [holla back] in an eighth note, eighth note, quarter note pattern,” the
`expert replied that: “I’m not contending that.” Ramsey Depo., 14: 9-14. He also stated that: “...In my view, the
`rhythmic utterance [holla back] itself...could not be claimed as original.” Ramsey Depo., 14:18-20.
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`8
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`Case 1:03-cv-08661-GBD Document 44 Filed 06/30/05 Page 9 of 12
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`an ordinary observer would regard plaintiff’s song “Holla Back” and defendant’s song “Young
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`N” as aesthetically similar given their greater obvious differences. The two songs do not sound
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`alike. This point becomes even more apparent when applying the heightened discerning observer
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`test, as is required here, since plaintiff’s work contains the unprotectable phrase “holla back” in
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`combination with other protectable elements. Under this standard, aside from the common
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`repetition of the phrase “holla back” in the hook of each song, the defendant’s work taken as a
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`whole, sounds quite different from plaintiff’s copyrighted work.
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`Careful review of both “Holla Back” and “Young N” indicates that the songs differ in
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`background instrumentation and lyrical content. Defendant’s expert points out that the organ and
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`“cuckoo”sounds heard in “Holla Back” are absent in “Young N.”7 He also maintains that the
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`synthesized flute heard in “Young N” is not present in “Holla Back.”8 Although plaintiff’s
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`expert initially disputed these differences, when deposed he conceded that the same background
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`instruments are not used in “Young N” and “Holla Back.”9 Another difference between “Holla
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`Back” and “Young N” resides in the lyrics. Aside from the hook containing the common and
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`unprotectable phrase “holla back,” it is undisputed that the verses of each song share no
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`similarities. Thus, where points of dissimilarity between two works exceed those that are
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`7 See Ferrara Rebuttal Report, p.24, claim 53 (“the organ and cuckoo mentioned in [plaintiff’s expert report
`about] ‘Holla Back’ are not in ‘Young N’...”).
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`8 See Ferrara Rebuttal Report, p. 24, claim 53 (“...the synthesized flute in ‘Young N’ is not in ‘Holla
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`Back’”).
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`9 In plaintiff’s expert report dated March 29, 2004, he asserts that: “In addition to a basic drumbeat in each
`[song], the instrumentation for each track is quite similar.” Ramsey Expert Report, p.3, paragraph 2. However, when
`plaintiff’s expert was asked during his deposition by the defendant’s attorney: “There’s not an identical lineup of
`instruments that are used in the Trajik song versus the Fabolous song, correct?” He replied: “Correct.” See Ramsey
`Depo.,134:21-24; 135:19-25; 136:2-12.
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`9
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`Case 1:03-cv-08661-GBD Document 44 Filed 06/30/05 Page 10 of 12
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`similar, as is the case here, a finding of no infringement is appropriate. See Rogers, 960 F.2d at
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`308.
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`RULE 11 SANCTIONS
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`Defendants have moved for sanctions pursuant to Fed. R. Civ. P. 11. They seek
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`attorneys’ fees and costs from plaintiff’s counsel, arguing that counsel, before pursuing this
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`action, should have recognized that it was meritless after conducting a reasonable investigation.
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`A pleading, motion or other paper violates Rule 11 either when it “has been interposed for any
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`improper purpose, or where, after reasonable inquiry, a competent attorney could not form a
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`reasonable belief that the pleading is well-grounded in fact and warranted by existing law. . . .”
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`W.K. Webster & Co. v. American President Lines, Ltd., 32 F.3d 665, 670 (2d Cir.1994) (internal
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`citations and quotations omitted). Sanctions should only be imposed “where it is patently clear
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`that a claim has absolutely no chance of success.” Healey v. Chelsea Res., Ltd., 947 F.2d 611,
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`626 (2d Cir.1991)(internal quotations and citation omitted).
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`In determining whether a Rule 11 violation has occurred, the court should use an
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`objective standard of reasonableness. See MacDraw, Inc. v. CIT Group Equip. Fin., Inc., 73 F.3d
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`1253, 1257-58 (2d Cir.1992)(internal citation omitted). Whether the attorney's conduct was
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`reasonable should be determined without the benefit of hindsight, based on what was objectively
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`reasonable to believe at the time the pleading, motion or other paper was submitted. See Kamen
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`v. AT & T, 791 F.2d 1006, 1011-12 (2d Cir.1986). “Thus, what constitutes a reasonable inquiry
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`may depend on such factors as how much time for investigation was available to the signer;
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`whether he had to rely on a client for information as to the facts underlying the pleading, motion
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`or other paper; whether the pleading, motion or other paper was based on a plausible view of the
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`10
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`Case 1:03-cv-08661-GBD Document 44 Filed 06/30/05 Page 11 of 12
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`law; or whether he depended on forwarding counsel or another member of the bar.” Id. at 1012.
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`In addition, attorneys are entitled to rely on the objectively reasonable representations of their
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`clients. See Hadges v. Yonkers Racing Corp., 48 F.3d 1320, 1329-30 (2d Cir.1995). All doubts
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`must be resolved in favor of the signer of the pleading. See Rodick v. City of Schenectady, 1
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`F.3d 1341, 1350 (2d Cir.1993)(internal quotations and citations omitted).
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`The Supreme Court has cautioned that Rule 11 “must be read in light of concerns that it
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`will ... chill vigorous advocacy.” Cooter & Gell v. Hartmarx Corp., 496 U.S. 384, 393, 110 S.Ct.
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`2447, 110 L.Ed.2d 359 (1990); see also MacDraw, Inc., 73 F.3d at 1259. “[J]udges should
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`always reflect seriously upon the nuances of the particular case, and the implications the case has
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`on the nature of the legal representation, before imposing sanctions.” Thompson v. Duke, 940
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`F.2d 192, 195 (7th Cir.1991).
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` The record does not support a finding that this case was interposed for any improper
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`purpose or that there was no reasonable basis for plaintiff’s counsel to believe that plaintiff’s
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`allegations were grounded in fact when counsel filed the complaint. Defendants’ Rule 11 motion
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`is denied
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`11
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`Case 1:O3—cv—O8661—GBD Document 44 Filed 06/30/05 Page 12 of 12
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`CONCLUSION
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`There are significant and sufficient differences in plaintiffs and defendants’ songs to
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`preclude a finding of copyright infringement. Defendants’ motion for summary judgment is
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`granted and defendants’ motion for sanctions is denied.
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`Dated: New York, New York
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`June 30, 2005
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`SO ORDERED:
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`/W
`’ A,«.2/;//wg, ,
` ’ G JRGE B. DANIELS
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`
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`United States District Judge
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`12