Published in Landslide, Volume 16, Number 1, 2023. © 2023 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion
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Copyrights
A Basic Musical Building Block Is Not Protectable
Structured Asset Sales, LLC v. Sheeran, No. 18 Civ. 5839 (LLS),
2023 WL 3475524, 2023 U.S. Dist. LEXIS 86847 (S.D.N.Y. May
16, 2023). The district court found that defendant Ed Sheeran’s
song “Thinking Out Loud” does not infringe the copyright in
Marvin Gaye’s song “Let’s Get It On,” granting a motion for recon-
sideration in favor of the defendants. Ed Townsend and Marvin
Gaye Jr. wrote the song “Let’s Get It On,” and the sheet music for
the song was registered with the U.S. Copyright Ofce in 1973.
Structured Asset Sales (SAS) holds an interest in the right to receive
royalties related to “Let’s Get It On.” Ed Sheeran and Amy Wadge
wrote the song “Thinking Out Loud,” which was released in 2014
and received a Grammy Award for Song of the Year. SAS sued
the defendants for copyright infringement, alleging that the song
“Thinking Out Loud” infringes the copyright in the song “Let’s
Get It On.” The defendants moved for summary judgment, and
the motion was denied on the ground that there was a genuine
dispute regarding the originality of the selection and arrangement
of the relevant musical composition. The defendants moved for
reconsideration, and the district court granted the motion, nd-
ing no infringement.
In its motion for reconsideration, the defendants argued that the
district court overlooked the numerosity requirement for selec-
tion and arrangement claims of infringement. The district court
agreed that the issue of numerosity was disregarded earlier and
considered it in the present decision. SAS alleged that the combi-
nation of the chord progression and the harmonic rhythm used
in “Thinking Out Loud” is substantially similar to “Let’s Get It
On,” amounting to copyright infringement. The parties agreed
that the chord progression and harmonic rhythm in “Let’s Get It
On” are not individually protected; however, the question was
whether two common elements are numerous enough to make
their combination eligible for copyright protection. The numer-
osity requirement says that numerous unprotected elements
must be present before determining whether their selection and
arrangement is protectable under copyright law. The district
court explained that the numerosity requirement “prevents the
misapplication of copyright law and ensures it is not being used
to protect combinations that occur routinely without any mini-
mal creative contribution attributable to the author.”
Here, the district court determined that the chord progression
and harmonic rhythm in “Let’s Get It On” are so commonplace
that to protect their combination would give a song an imper-
missible monopoly over a basic musical building block. Thus,
the district court held that the chord progression and harmonic
rhythm in “Let’s Get It On” cannot sustain copyright protec-
tion. Because the alleged copyright is not protectable, there was
no infringement.
Warhol’s Use Was Not Fair Use in Orange Prince
33
Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith,
143 S. Ct. 1258, 2023 U.S.P.Q.2d 603 (2023). The U.S. Supreme
Court held that the use of Lynn Goldsmith’s photograph in
Andy Warhol’s Orange Prince illustration is not fair use. Gold-
smith entered a licensing arrangement with the magazine Vanity
Fair, in which Goldsmith licensed one of her photographs of
Prince to the magazine. Vanity Fair hired Andy Warhol to make
a silkscreen using Goldsmith’s photograph. Warhol’s work was
published in the magazine alongside an article about Prince.
Warhol subsequently created 15 additional works based on the
Goldsmith photograph. Goldsmith became aware of the 15 addi-
tional works when Andy Warhol Foundation for the Visual Arts
(AWF) licensed one of the works (Orange Prince) to Condé Nast
for another story about Prince. Goldsmith notied AWF of the
unauthorized use of the photograph, and AWF sued for declara
-
tory judgment based on noninfringement and alternatively fair
use. Goldsmith countersued for infringement. The district court
granted summary judgment for AWF on fair use grounds. The
Second Circuit reversed. AWF petitioned the Supreme Court.
The Supreme Court considered whether AWF’s use of Gold-
smith’s photograph in connection with Orange Prince for Condé
Nast was fair use. The Court focused on the rst fair use factor,
i.e., the purpose and character of the use, and whether AWF’s
use was transformative. In considering the rst fair use factor,
the Court summarized the test as if an original work and second-
ary use share the same or substantially similar purposes, and
the secondary use is commercial in nature, the rst factor likely
weighs against a nding of fair use. Applying this reasoning, the
Supreme Court found that the purpose of the photograph in
Orange Prince was essentially the same as the original licensed
use, i.e., use for a magazine, and that the use of Orange Prince
was commercial. In making this determination, the Court
balanced the intent of the copyright law to incentivize creation,
as well as the copyright owner’s exclusive right to create deriva-
tive works, with the fair use doctrine. The Court reasoned that
fair use of a work must go beyond what is considered simply
derivative. Because AWF’s use of Goldsmith’s photograph was
for a similar purpose as the licensed use and was commercial,
the Court found no fair use.
John C. Gatz is a member of the firm Nixon Peabody LLP in
Chicago, Illinois. Column contributors include the following
writers: Copyrights: Jenni Psihoules, Nixon Peabody LLP;
and Mark R. Anderson, Actuate Law LLC. Patents: Cynthia K.
Barnett, Johnson & Johnson; R. Trevor Carter and Andrew M.
McCoy, Faegre Drinker Biddle & Reath LLP; Robert W. (Bill)
Mason, Southwest Research Institute; and Angelo Christopher,
Allison Strong, and Peter Krusiewicz, Nixon Peabody LLP. Trade
Secrets: R. Mark Halligan, FisherBroyles LLP. Trademarks:
Elizabeth W. Baio, Nixon Peabody LLP; and Amy L. Sierocki,
Blumenfield & Shere LLP.
John C. Gatz
DECISIONS IN BRIEF
