United States Court of Appeals
`Fifth Circuit
`F I L E D
`December 17, 2004
`
`Charles R. Fulbruge III
`Clerk
`
`REVISED JANUARY 13, 2005
`IN THE UNITED STATES COURT OF APPEALS
`FOR THE FIFTH CIRCUIT
`__________________
`Case No. 03-30625
`__________________
`POSITIVE BLACK TALK INC, doing business as Take Fo’
`Records, doing business as Take Fo’ Publishing
`Plaintiff – Counter Defendant - Appellant
`
`v.
`CASH MONEY RECORDS INC; ET AL
`Defendants
`CASH MONEY RECORDS INC; TERIUS GRAY, also known as Juvenile
`Defendants - Counter Claimants - Appellees
`
`and
`UMG RECORDINGS INC, Universal Records Inc merged into UMG
`Recordings Inc; UNIVERSAL MUSIC AND VIDEO DISTRIBUTION CORP;
`Defendants - Appellees
`
`No. 03-30702
`
`
`POSITIVE BLACK TALK INC, doing business as Take Fo’ Records,
`doing business as Take Fo’ Publishing
`Plaintiff - Appellee
`
`v.
`CASH MONEY RECORDS INC; ET AL
`Defendants
`CASH MONEY RECORDS INC; UMG RECORDING INC, Universal
`Records, Inc; UNIVERSAL MUSIC AND VIDEO DISTRIBUTION CORP;
`
`

`
`TERIUS GRAY, also known as Juvenile
`Defendants - Appellants
`
`Appeals from the United States District Court
`for the Eastern District of Louisiana
`
`Before KING, Chief Judge, and SMITH and GARZA, Circuit Judges.
`KING, Chief Judge:
`This appeal arises out of a dispute concerning the popular
`rap song Back That Azz Up. Plaintiff-Appellant Positive Black
`Talk, Inc. filed this lawsuit against three defendants, alleging,
`inter alia, violations of the United States copyright laws. The
`defendants counterclaimed under the copyright laws, the Louisiana
`Unfair Trade Practices Act, and theories of negligent
`misrepresentation. After a jury trial, the district court
`entered judgment in accordance with the verdict in favor of the
`defendants on all of Positive Black Talk’s claims, as well as on
`the defendants’ non-copyright counterclaims. The district court
`awarded the defendants attorney’s fees only in relation to the
`successful unfair trade practices counterclaim.
`In this consolidated appeal, Positive Black Talk appeals the
`judgment of the district court on the grounds that the court
`erred in instructing the jury and in making several evidentiary
`rulings. The defendants appeal the district court’s decision not
`to award them attorney’s fees as the prevailing parties on
`
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`

`
`Positive Black Talk’s copyright infringement claim. We AFFIRM.
`I. Factual and Procedural Background
`In 1997, two rap artists based in New Orleans, Louisiana--
`Terius Gray, professionally known as Juvenile (“Juvenile”), and
`Jerome Temple, professionally known as D.J. Jubilee (“Jubilee”)--
`each recorded a song that included the poetic four-word phrase
`“back that ass up.” Specifically, with respect to Jubilee, he
`recorded his song in November 1997 and entitled it Back That Ass
`Up. In the Spring of 1998, Positive Black Talk, Inc. (“PBT”), a
`recording company, released Jubilee’s Back That Ass Up on the
`album TAKE IT TO THE ST. THOMAS. Jubilee subsequently performed the
`song at a number of live shows, including the New Orleans
`Jazzfest on April 26, 1998.
`Turning to Juvenile, at some point during the fall of 1997,
`Juvenile recorded his song and entitled it Back That Azz Up. In
`May 1998, Cash Money Records, Inc. (“CMR”), the recording company
`that produced Juvenile’s album 400 DEGREEZ, signed a national
`distribution contract with Universal Records. Consequently, 400
`DEGREEZ, which contained Juvenile’s song Back That Azz Up, was
`released in November 1998. 400 DEGREEZ quickly garnered national
`acclaim, selling over four million albums and grossing more than
`$40 million.
`In 2000, Jubilee applied for and received a certificate of
`registration (Form PA) from the United States Copyright Office
`
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`

`
`for the lyrics of Back That Ass Up. Jubilee also obtained a
`certificate of registration for the lyrics and music (Form SR) in
`the sound recording of the song. On February 15, 2002, PBT
`mailed a supplementary application for registration (containing
`an application, deposit, and fee) to the Copyright Office,
`stating that PBT should have been listed as the author and
`copyright claimant on Jubilee’s prior PA registration (lyrics
`only). On the same day, PBT filed this lawsuit in the Eastern
`District of Louisiana, alleging copyright infringement and the
`violation of the Louisiana Unfair Trade Practices Act (LUPTA).1
`On February 19, 2002, four days after the suit was filed, the
`Copyright Office received PBT’s supplementary registration
`application.
`In response, the defendants filed counterclaims, alleging
`copyright infringement, violation of LUPTA, and negligent
`misrepresentation. On February 11, 2003, the defendants filed a
`motion for summary judgment, in which they argued, inter alia,
`that the district court should dismiss PBT’s lawsuit for lack of
`subject matter jurisdiction because PBT failed to comply with the
`statutory requirement that the Copyright Office receive the
`
`1 PBT named as defendants Juvenile and CMR, as well as
`several entities affiliated with Universal Records (collectively,
`“Universal”). Juvenile and CMR are represented together by
`counsel, who submitted a single set of briefs on behalf of the
`two parties. Universal is represented independently and
`submitted a separate set of briefs. For the purposes of clarity
`and convenience, we refer to these parties collectively as the
`“defendants.”
`
`4
`
`

`
`registration application before a plaintiff may file an
`infringement suit. The district court denied the motion,
`reasoning that the defect had been cured and that dismissing the
`case after a year of litigation, only to have PBT re-file the
`suit, would be a tremendous waste of judicial resources.
`In May 2003, the case proceeded to a jury trial. Although
`the jury found that PBT proved by a preponderance of the evidence
`that it owned a copyright interest in the lyrics and music of
`Jubilee’s song Back That Ass Up, it nevertheless found in favor
`of the defendants on PBT’s copyright infringement claim.
`Specifically, the jury found that: (1) PBT failed to prove that
`Juvenile or CMR factually copied Back That Ass Up; (2) the
`defendants proved that CMR and Juvenile independently created
`Back That Azz Up; and (3) PBT failed to prove that Back That Azz
`Up is substantially similar to Back That Ass Up.2 The jury also
`decided against PBT on its non-copyright claim. In addition, the
`jury found in favor of the defendants on their LUPTA and
`negligent misrepresentation counterclaims. However, the jury
`
`2 The defendants also argued at trial (and defend the
`verdict on appeal on the ground) that PBT’s infringement claim
`fails for the reason that the phrase “back that ass up” cannot be
`copyrighted. This is so, according to the defendants’ argument,
`because the phrase is not original and because the merger
`doctrine precludes extending protection to a phrase that is
`necessary to describe a particular thing--in this case, a dance
`move. However, the jury did not reach these issues because it
`was instructed not to make any findings on those points once they
`resolved factual copying and independent creation in favor of the
`defendants. We therefore do not address these claims.
`
`5
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`
`found against the defendants on their copyright infringement
`counterclaim. Accordingly, the district court entered judgment
`in favor of the defendants. The court awarded the defendants
`attorney’s fees in relation to their LUPTA counterclaim but not
`for their successful defense of PBT’s copyright infringement
`claim.
`PBT then filed a timely notice of appeal. PBT argues on
`appeal that the district court erroneously instructed the jury on
`relevant copyright laws and erred in making several evidentiary
`rulings.3 The defendants cross-appeal the district court’s award
`of attorney’s fees, contending that they are entitled to fees for
`prevailing against PBT on its copyright claim.4
`II. Subject Matter Jurisdiction
`The district court’s subject matter jurisdiction was based
`on 28 U.S.C. §§ 1331 (federal question) and 1338 (copyright
`laws). That broad underlying jurisdiction was supplemented by
`the specific statutory provisions of the copyright laws.
`Specifically, 17 U.S.C. § 411(a) sets forth the jurisdictional
`prerequisite that “no action for infringement of the copyright in
`
`3 PBT does not appeal the district court’s adverse judgment
`on either its own LUPTA claim or the defendants’ LUPTA
`counterclaim.
`4 The defendants cross-appeal neither the judgment relating
`to their copyright infringement counterclaim nor the jury’s
`finding that PBT has a valid copyright interest in Back That Ass
`Up.
`
`6
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`

`
`any United States work shall be instituted until registration of
`the copyright claim has been made in accordance with this title.”
`17 U.S.C. § 411(a) (2000); see also Creations Unlimited, Inc. v.
`McCain, 112 F.3d 814, 816 (5th Cir. 1997) (per curiam)
`(“registration with the copyright office is a jurisdictional
`prerequisite to filing a copyright infringement suit”). Although
`some circuits require that a plaintiff actually obtain a
`certificate from the Copyright Office before bringing suit, the
`Fifth Circuit requires only that the Copyright Office actually
`receive the application, deposit, and fee before a plaintiff
`files an infringement action. See Lakedreams v. Taylor, 932 F.2d
`1103, 1108 (5th Cir. 1991). Here, the defendants argue that PBT
`failed to comply with the statutory formality set forth in § 411
`(and that the district court therefore lacked jurisdiction over
`PBT’s copyright infringement claim) because PBT filed suit four
`days before the Copyright Office received its application,
`deposit, and fee (all of which PBT had mailed on the same day it
`filed suit).5
`
`5 This argument was originally advanced by the defendants
`in a motion for summary judgment that the district court denied.
`We review challenges to a district court’s jurisdiction de novo.
`Shepard v. Int’l Paper Co., 372 F.3d 326, 329 (5th Cir. 2004).
`However, the defendants do not cross-appeal the district court’s
`denial of their motion for summary judgment. Nevertheless, the
`jurisdiction argument was raised again in the brief of CMR and
`Juvenile. In response, PBT filed a motion to strike these
`portions of CMR and Juvenile’s brief on the ground that they did
`not file a cross-appeal on that ruling. However, we would have
`considered the question of subject matter jurisdiction sua sponte
`in the absence of such briefing. See Hill v. City of Seven
`
`7
`
`

`
`We hold, along with the other courts that have considered
`this matter, that the ultimate judgment is not rendered a nullity
`in this instance by the district court’s refusal to dismiss PBT’s
`suit for want of jurisdiction. Rather, we find that the
`jurisdictional defect was cured when the Copyright Office
`received PBT’s application, deposit, and fee four days after PBT
`filed suit.
`A number of other courts have found that a plaintiff who
`files a copyright infringement lawsuit before registering with
`the Copyright Office may cure the § 411 defect by subsequently
`amending or supplementing its complaint once it has registered
`the copyright. See, e.g., M.G.B. Homes, Inc. v. Ameron Homes,
`Inc., 903 F.2d 1486, 1488-89 (11th Cir. 1990); J. Racenstein &
`Co., Inc. v. Wallace, 1997 WL 605107, *1-2 (S.D.N.Y. Oct. 1,
`1997) (“Where an action is commenced without registration being
`effected, the defect can be cured by subsequent registration, and
`an appropriate amendment to the complaint may be made to provide
`
`Points, 230 F.3d 167, 169 (5th Cir. 2000) (recognizing that the
`court must, if necessary, consider its subject matter
`jurisdiction on its own motion). Thus, PBT’s motion is
`functionally irrelevant with respect to the jurisdictional
`question. However, to the extent that CMR and Juvenile argue
`that PBT still has no valid copyright in Back That Ass Up, PBT is
`correct that the issue is not properly before this court because:
`(1) the jury found otherwise; (2) CMR and Juvenile did not file a
`cross-appeal; and (3) deciding the matter against PBT would
`“lessen[] the rights of [PBT].” See El Paso Natural Gas Co. v.
`Neztsosie, 526 U.S. 473, 479 (1999). Thus, although we deny
`PBT’s motion to strike portions of CMR and Juvenile’s brief, we
`do not consider the defendants’ argument that PBT’s copyright is
`invalid.
`
`8
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`

`
`the necessary basis for subject matter jurisdiction.”);
`ISC–Bunker Ramo Corp. v. Altech, Inc., 765 F. Supp. 1308, 1309
`(N.D. Ill. 1990); Haan Crafts Corp. v. Craft Masters, Inc., 683
`F. Supp. 1234, 1242 (N.D. Ind. 1988); Frankel v. Stein and Day,
`Inc., 470 F. Supp. 209, 212 (S.D.N.Y. 1979). The notion that the
`supplemental pleading cures the technical defect, notwithstanding
`the clear language of § 411, is consistent with the principle
`that technicalities should not prevent litigants from having
`their cases heard on the merits.6 See 28 U.S.C. § 1653 (2000)
`(allowing defective allegations of jurisdiction to be amended in
`the trial or appellate courts); see also Haan Crafts Corp., 683
`
`6 Our conclusion is not undermined by Harris v. Garner, 216
`F.3d 970 (11th Cir. 2000) (en banc), in which the Eleventh
`Circuit held that prisoners who file lawsuits may not supplement
`their pleadings after their release to cure noncompliance with
`§ 1997e(e) of the Prison Litigation Reform Act (PLRA). Although
`§ 1997e(e) prohibits prisoners from bringing a civil action while
`in custody without a showing of physical injury, the plaintiffs
`in Harris filed suit, while still in prison, for non-physical
`injury and then attempted to supplement their complaint after
`their release to cure the § 1997e(e) defect. The Harris court,
`strictly limiting its holding to prisoner cases, found that the
`district court lacked jurisdiction because the plaintiffs were
`prisoners at the time they filed the lawsuit and no supplement
`could change that historical fact to cure the § 1997e(e) defect.
`216 F.3d at 982-84. Crucial to the Harris court’s analysis was
`its view that allowing a cure of the jurisdictional defect would
`run contrary to the central congressional purpose in enacting the
`PLRA, which was to reduce the number of prison lawsuits filed by
`incarcerated prisoners who face little opportunity costs when
`filing a lawsuit while in prison. Id. at 982-83. Thus, the
`logic of Harris is inapplicable here because nothing suggests
`that Congress viewed the pre-filing requirement in § 411 as
`central to the purpose of the federal copyright laws. Cf. 2
`MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT
`§ 7.16[B][1][b][iii], at 7-164 (2004) [hereinafter NIMMER].
`9
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`

`
`F. Supp. at 1242.
`PBT did not amend its complaint in the court below.
`Nevertheless, the Supreme Court has held, albeit in a non-
`copyright case, that failure to amend a complaint in the district
`court is no bar to finding a jurisdictional defect cured. See
`Mathews v. Diaz, 426 U.S. 67, 73-76 (1976). In Diaz, the Supreme
`Court upheld subject matter jurisdiction over a case in which the
`plaintiff had not complied with a statutory formality requiring
`him to file an application with the Secretary of Health,
`Education, and Welfare before instituting a lawsuit. Id. The
`Diaz Court stated:
`We have little difficulty with Espinosa's failure to
`file an application with the Secretary until after he
`was joined in the action. Although 42 U.S.C. § 405(g)
`establishes filing of an application as a nonwaivable
`condition of jurisdiction, Espinosa satisfied this
`condition while the case was pending in the District
`Court. A supplemental complaint in the District Court
`would have eliminated this jurisdictional issue; since
`the record discloses, both by affidavit and
`stipulation, that the jurisdictional condition was
`satisfied, it is not too late, even now, to supplement
`the complaint to allege this fact. Under these
`circumstances, we treat the pleadings as properly
`supplemented by the Secretary's stipulation that
`Espinosa had filed an application.
`Id. at 75 (internal citations and footnotes omitted). Similarly,
`we consider PBT’s noncompliance with § 411 to be cured, even
`though it did not file a supplemental complaint below.
`Our conclusion that subject matter jurisdiction existed in
`this case is also consistent with the Supreme Court’s decision in
`
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`
`Caterpillar Inc. v. Lewis, 519 U.S. 61 (1996). In Caterpillar, a
`unanimous Supreme Court held that a procedural-jurisdictional
`defect under 28 U.S.C. § 1441, which requires complete diversity
`at the time of removal, had been cured when the non-diverse party
`dropped out of the case after removal but before trial commenced.
`519 U.S. at 73-75. The Court recognized that § 1441's
`requirement that complete diversity exist at the time of removal
`was not satisfied because the case was removed before the non-
`diverse party dropped out. However, the Court found that the
`§ 1441 defect should be excused--even though the “statutory flaw
`. . . remained in the unerasable history of the case”--because:
`(1) complete diversity jurisdiction ultimately existed before
`judgment and (2) the case had already proceeded to judgment,
`making “considerations of finality, efficiency, and economy . . .
`overwhelming.” Id.; see also Grupo Dataflux v. Atlas Global
`Group, 124 S.Ct. 1920, 1924-28 (2004) (reemphasizing that the
`Court’s holding in Caterpillar pertained to curing a statutory
`procedural-jurisdictional defect under § 1441).
`The Court’s reasoning in Caterpillar applies to PBT’s
`copyright infringement lawsuit because 28 U.S.C. § 1441 and 17
`U.S.C. § 411 both have a substantive requirement as well as a
`timing requirement. Section 1441 substantively requires complete
`diversity, which must exist at the time of removal. In
`Caterpillar, although the substantive requirement of complete
`
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`
`diversity was ultimately satisfied, the timing requirement was
`not. However, because of judicial economy and finality concerns,
`the Court excused the failure to comply with the timing element
`of the statute. Similar to the removal statute at issue in
`Caterpillar, § 411 has a substantive component and a timing
`component--it requires the filing of a registration application,
`which must occur prior to the institution of the suit. As in
`Caterpillar, the substantive requirement here was satisfied
`(because PBT filed a registration application, deposit, and fee),
`but the timing element was not (because the Copyright Office
`received the materials after PBT filed suit). Thus, Caterpillar
`suggests that because PBT satisfied the substantive requirement
`of § 411 before final judgment, “considerations of finality,
`efficiency, and economy” counsel us to disregard the technical
`defect in timing in this particular case. Caterpillar Inc., 519
`U.S. at 75. Accordingly, the § 411 defect was cured, and subject
`matter jurisdiction existed.
`III. Jury Instructions on Copyright Law
`A. Elements of Copyright Infringement
`To establish a claim for copyright infringement, a plaintiff
`must prove that: (1) he owns a valid copyright and (2) the
`defendant copied constituent elements of the plaintiff’s work
`that are original. Gen. Universal Sys. v. Lee, 379 F.3d 131, 141
`(5th Cir. 2004); Szabo v. Errisson, 68 F.3d 940, 942 (5th Cir.
`
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`

`
`1995) (citing Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384,
`387 (5th Cir. 1984)). To establish actionable copying (i.e., the
`second element), a plaintiff must prove: (1) factual copying and
`(2) substantial similarity. Bridgmon v. Array Sys. Corp., 325
`F.3d 572, 576 (5th Cir. 2003). Factual copying “can be proven by
`direct or circumstantial evidence.” Id. “As direct evidence of
`copying is rarely available, factual copying may be inferred from
`(1) proof that the defendant had access to the copyrighted work
`prior to creation of the infringing work and (2) probative
`similarity.”7 Peel & Co. v. Rug Market, 238 F.3d 391, 394 (5th
`Cir. 2001). If a plaintiff establishes an inference of factual
`copying (by showing access and probative similarity), the
`
`7 This circuit adopted the term probative similarity in
`Engineering Dynamics, Inc. v. Structural Software, Inc., 26 F.3d
`1335, 1340 & n.4 (5th Cir. 1994), which credits Professor Alan
`Latman with originating the term to resolve the confusion
`resulting from many courts’ double use of “substantial
`similarity” to describe both the similarity needed to prove
`factual copying (i.e., what we term “probative similarity”) and
`the similarity needed to prove that the copying is legally
`actionable (i.e., what we term “substantial similarity”). See
`also Alan Latman, “Probative Similarity” as Proof of Copying:
`Toward Dispelling Some Myths in Copyright Infringement, 90 COLUM.
`L. REV. 1187 (1990). A number of other circuits, including the
`First, Second, Third, Tenth, and Eleventh, have also adopted the
`term “probative similarity.” See, e.g., Dam Things From Denmark
`v. Russ Berrie & Co., Inc., 290 F.3d 548, 562 & n.19 (3d Cir.
`2002); Transwestern Pub. Co. v. LP Multimedia Mktg. Assocs.,
`Inc., 133 F.3d 773, 775 (10th Cir. 1998); Ringgold v. Black
`Entm’t Television, Inc., 126 F.3d 70, 75 (2d Cir. 1997); Bateman
`v. Mnemonics, Inc., 79 F.3d 1532, 1541 (11th Cir. 1996); Lotus
`Dev. Corp. v. Borland Int’l, Inc., 49 F.3d 807, 813 (1st Cir.
`1995). The Ninth Circuit, among others, still uses “substantial
`similarity” to describe the similarity needed for factual copying
`as well as legally actionable copying. See, e.g., Swirsky v.
`Carey, 376 F.3d 841, 844-45 (9th Cir. 2004).
`
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`
`defendant can rebut that inference, and thus escape liability for
`infringement, if he can prove that he independently created the
`work. Id. at 398; Miller v. Universal Studios, Inc., 650 F.2d
`1365, 1375 (5th Cir. 1981). If a plaintiff has established
`factual copying (and the defendant does not establish independent
`creation), the plaintiff must also prove that the copyrighted
`work and the allegedly infringing work are substantially similar.
`Bridgmon, 325 F.3d at 577.
`B. Standard of Review
`PBT argues that the district court erred in instructing the
`jury with respect to probative similarity, substantial
`similarity, and independent creation. Where the challenging
`party failed to preserve the error with proper objections, we
`review the district court’s jury instructions only for plain
`error. Russell v. Plano Bank & Trust, 130 F.3d 715, 719-21 (5th
`Cir. 1997). The defendants argue that PBT did not preserve any
`alleged error because PBT did not make specific, on-the-record
`objections to the instructions in question. PBT counters that it
`made general objections to the instructions on the record, and
`that it made more specific objections off the record during a
`conference in chambers.
`We agree with the defendants that PBT failed to preserve the
`error with respect to the jury instructions. See FED. R. CIV. P.
`51(c)(1) (“A party who objects to an instruction or the failure
`
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`
`to give an instruction must do so on the record, stating
`distinctly the matter objected to and the grounds of the
`objection.”). First, PBT’s on-the-record objections pertained
`only to the instructions as a whole, rather than indicating
`specific objections, and therefore failed to comply with Rule 51.
`See Russell, 130 F.3d at 719-20 (“We have repeatedly held that a
`general objection to the district court’s jury instructions is
`insufficient to satisfy Rule 51.”). Second, PBT’s off-the-record
`objections, regardless of how specific, cannot satisfy Rule 51's
`requirements. See id. at 720 n.2 (“Obviously, we cannot consider
`off-the-record objections to jury instructions not subsequently
`made part of the record . . . .” (quoting King v. Ford Motor Co.,
`597 F.2d 436, 440 n.3 (5th Cir. 1979))). Thus, PBT did not
`preserve the error, and we review the jury instructions for plain
`error.
`For PBT to prevail under the plain error standard, it must
`show “that the instructions made an obviously incorrect statement
`of law that was ‘probably responsible for an incorrect verdict,
`leading to substantial injustice.’” Hernandez v. Crawford Bldg.
`Material, 321 F.3d 528, 531 (5th Cir. 2003) (quoting Tompkins v.
`Cyr, 202 F.3d 770, 784 (5th Cir. 2000)). Moreover, “[i]n
`reviewing jury instructions for plain error, we are exceedingly
`deferential to the trial court.” Tompkins, 202 F.3d at 784.
`C. Factual Copying
`
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`
`1. Definition of Probative Similarity
`PBT first argues that the district court erroneously
`instructed the jury with respect to the definition of “probative
`similarity.” The court instructed that: “Probative similarity
`means that the songs, when compared as a whole, demonstrate that
`Juvenile or CMR appropriated Jubilee’s song.” PBT avers that
`this definition is misleading because, by including the phrase
`“when compared as a whole,” it suggests that the jury, when
`deciding whether factual copying occurred, must look to see
`whether Back That Ass Up, as a whole, is sufficiently similar to
`Back That Azz Up, as a whole. As PBT points out, however,
`probative similarity requires only that certain parts of the two
`works are similar, such that the jury may infer factual copying
`in light of the defendant’s access to the plaintiff’s work.
`Regardless, PBT’s claim fails for at least three reasons.
`First, we cannot say that the jury instruction on probative
`similarity is “an obviously incorrect statement of law.”
`Hernandez, 321 F.3d at 531. The definition of probative
`similarity in the jury instruction is taken directly from a Fifth
`Circuit case. See Peel & Co., 238 F.3d at 397 (“The second step
`in deciding whether Peel has raised a genuine issue of material
`fact regarding factual copying . . . requires determining whether
`the rugs, when compared as a whole, are adequately similar to
`establish appropriation.” (emphasis added)). Accordingly, PBT
`
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`
`did not show plain error because the definition of probative
`similarity was not “obviously incorrect.” Hernandez, 321 F.3d at
`531.
`We note that the district court’s reliance on Peel to define
`probative similarity is understandable given that other Fifth
`Circuit opinions offer little additional guidance on the
`question. Peel is undoubtedly correct inasmuch as it instructs
`that the ultimate issue with respect to probative similarity is
`whether the similarities between the two works suggest that the
`later-created work was factually copied. Peel should not be read
`to suggest that a jury may draw an inference of factual copying
`only if the whole of the defendant’s work largely replicates the
`whole of the allegedly-copied work.8 Rather, the “when compared
`as a whole” language in Peel regarding probative similarity means
`that the jury must consider the whole of the first work
`(including both copyrightable and non-copyrightable parts) and
`the whole of the second work and then compare the two works,
`looking for any similarities between their constituent parts.
`This reading of Peel is not inconsistent with any Fifth Circuit
`precedent and is consistent with other courts’ conceptualizations
`of probative similarity. See, e.g., Gates Rubber Co. v. Bando
`
`8 Indeed, such an interpretation would lead to unreasonable
`results, such as where one author includes an entire chapter in
`his book that replicates verbatim another author’s book but then
`argues that the jury cannot infer factual copying on the grounds
`that, because the other twenty chapters are not similar, the two
`works are not probatively similar.
`
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`
`Chem. Indus., Ltd., 9 F.3d 823, 832 n.7 (10th Cir. 1993); O.P.
`Solutions, Inc. v. Intellectual Prop. Network, Ltd., No. 96
`Civ.7952, 1999 WL 47191, at *3 (S.D.N.Y. Feb. 2, 1999).9
`In order to avoid confusion, a district court should explain
`that the purpose of the probative similarity inquiry is to
`determine whether factual copying may be inferred and that this
`inquiry is not the same as the question of substantial
`similarity, which dictates whether the factual copying, once
`established, is legally actionable. See Eng’g Dynamics, Inc. v.
`Structural Software, Inc., 26 F.3d 1335, 1340 & n.4 (5th Cir.
`1994) (adopting the term “probative similarity”) (citing Alan
`Latman, “Probative Similarity” as Proof of Copying: Toward
`Dispelling Some Myths in Copyright Infringement, 90 COLUM. L. REV.
`
`9 As the O.P. Solutions court explained:
`When evaluating probative similarity, a court should
`compare the works in their entirety, including both
`protectable and unprotectable elements. See
`Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d
`119, 123 (2d Cir. 1994). This is appropriate because
`although the plaintiff must ultimately establish
`infringement by showing that the defendant copied a
`substantial amount of protectable elements, (i.e., meet
`the “substantial similarity” standard), the fact that
`non-protectable elements were copied, although not a
`basis for liability, can be probative of whether
`protected elements were copied (i.e., help establish
`probative similarity). See Gates Rubber, 9 F.3d at 832
`n.7 (explaining that the failure to consider
`nonprotectable elements when evaluating the question of
`actual copying deprives the court of “probative, and
`potentially essential, information on the factual issue
`of copying”).
`1999 WL 47191, at *4.
`
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`
`1187 (1990)); see also Bridgmon, 325 F.3d at 576 & n.7, 577
`(noting that “probative” and “substantial” similarity are
`analytically distinct concepts). Along these lines, a jury may
`find that two works are probatively similar if it finds any
`similarities between the two works (whether substantial or not)
`that, in the normal course of events, would not be expected to
`arise independently in the two works and that therefore might
`suggest that the defendant copied part of the plaintiff’s work.
`See Ringgold v. Black Entm’t Television, Inc., 126 F.3d 70, 75
`(2d Cir. 1997) (“[P]robative similarity[] requires only the fact
`that the infringing work copies something from the copyrighted
`work; . . . substantial similarity[] requires that the copying is
`quantitatively and qualitatively sufficient to support the legal
`conclusion that infringement (actionable copying) has
`occurred.”); 4 NIMMER § 13.01[B], at 13-12 (“[W]hen the question
`is copying as a factual matter, then similarities that, in the
`normal course of events, would not be expected to arise
`independently in the two works are probative of defendant’s
`having copied as a factual matter from plaintiff’s work.”);
`Latman, 90 COLUM. L. REV. at 1214 (noting that probative
`similarities are “such similarities between the works which,
`under all the circumstances, make independent creation
`unlikely[;] [s]uch similarities may or may not be substantial. .
`. . Rather, they are offered as probative of the act of copying .
`
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`
`. . .”).
`The second reason PBT’s claim--that the language “when
`compared as a whole” in the instruction on probative similarity
`constituted reversible error--fails is because the district court
`offered guidance to the jury that a finding of factual copying
`only requires similarity between portions of the plaintiff’s
`work, not overall similarity. For example, when the court first
`introduced the element of factual copying (about ten sentences
`before giving the instruction defining probative similarity), the
`court stated, “[t]he first question, factual copying, asks
`whether Juvenile and CMR actually copied constituent elements of
`D.J. Jubilee’s song in Juvenile’s song Back That Ass Up.”
`(emphasis added). The court also instructed the jury that: “If
`you conclude that factual copying did occur, that is that
`Juvenile/CMR copied parts of Jubilee’s song Back That Ass Up,
`[the defendants may still prevail if they demonstrate independent
`creation].” (emphasis added). Given these instructions, we
`cannot agree that the definition of probative similarity of which
`PBT complains was misleading in this particular instance.
`Third, the jury’s findings on independent creation and
`substantial similarity negate any reasonable possibility that the
`probative similarity instruction was “probably responsible for an
`incorrect verdict.” Tompkins, 202 F.3d at 784 (citing ARA Auto.
`Group v. Cent. Garage, Inc., 124 F.3d 720, 730 (5th Cir. 1997)).
`
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`
`Even if the jury misunderstood its task in evaluating probative
`similarity as a result of the instruction, it found that Juvenile
`independently created Back That Azz Up and that the two songs are
`not substantially similar. Those findings prevent PBT from
`recovering, regardless of the extent to which it proved factual
`copying occurred.
`2. Inverse Relationship Between Access and Probative
` Similarity
`PBT also complains that it requested an instruction on the
`inverse relationship between the degree of access an alleged
`infringer had to the original work and the degree of similarity
`needed to show that copying actually occurred. Specifically, PBT
`asked that the jury be instructed that “PBT does not have