IP Law Daily, COPYRIGHT—S.D.N.Y.: On second thought, court dismisses infringement claims over Sheeran’s ‘Thinking Out Loud’, (May 17, 2023)

By Robert Margolis, J.D.

In infringement dispute over the selection and arrangement of non-copyrightable elements, claim based on Sheeran’s combination of only two such elements lacked requisite “numerosity.”

Concluding that in its prior order denying summary judgment to pop star Ed Sheeran and several co-defendants the court “improperly disregarded” the issue of numerosity when examining whether Sheeran’s selection and arrangement of non-copyrightable elements in his hit song “Thinking Out Loud” infringed the copyright of the sheet music of Marvin Gaye’s classic “Let’s Get It On,” the federal district court in New York City has granted Sheeran’s motion for reconsideration, determined that no infringement occurred, and granted summary judgment dismissing the claims (Structured Asset Sales, LLC v. Sheeran, May 16, 2023, Stanton, L.).

Structured Asset Sales, LLC (“SAS”), an investment vehicle owned by investment banker David Pullman that has acquired and securitized the music catalogs of James Brown, the Isley Brothers, and Gaye, among others, owns an 11.11% beneficial interest in the right to receive royalties from the copyright of “Let’s Get It On.” SAS sued Sheeran and others (including Sheeran’s publishers and recording label), contending that Sheeran and his co-writer copied the combination of two elements from Gaye’s original: (1) the chord progression and (2) the particular way in which musical “anticipation” was used in connection with that chord progression. It was undisputed that each of those elements were, on their own, not copyrightable. When the parties cross-moved for summary judgment, Sheeran argued that their combination also was unprotectible.

Prior order. In a September 29, 2022, order, the court denied summary judgment in favor of Sheeran, holding that the question of whether the combination of those elements in Gaye’s composition achieved sufficient originality to be protected was a genuine dispute of material fact. Sheeran moved for reconsideration of that order, an “extraordinary remedy,” but one the court granted based on what it deemed a legal error in its summary judgment analysis.

Copyrightability—numerosity requirement. To sustain its infringement claim, SAS had to establish that (1) Sheeran actually copied Gaye’s work, and (2) the copying is illegal because there is a substantial similarity between Sheeran’s work and the “protectible” elements of Gaye’s. In a music infringement case, substantial similarity is determined by whether a plaintiff can prove that the defendant took from the prior work “so much of what is pleasing to the ears of lay listeners that defendant wrongfully appropriated something which belongs to the plaintiff.” Repp v. Webber, 132 F.3d 882, 889 (1997). When the aesthetic appeal of a song is largely due to unprotectible elements, as is the case with “Let’s Get It On,” the analysis must be more discerning. Courts have developed analyses in cases asserting the combination of unprotectible elements that consider whether those elements are so numerous and their selection and arrangement sufficiently original that the combination constitutes an original work of authorship.

As noted above, SAS’s claim was based on Sheeran’s alleged copying of two unprotectible elements in Gaye’s song. In its summary judgment order, rather than consider whether there is a threshold number of elements that a defendant must parrot and combine, the court presumed that the question of whether the combination of elements created something sufficiently original to warrant copyright protection was too factual in nature to be decided on summary judgment. Noting that since the court issued that decision, courts in the Second Circuit have started to weigh the numerosity of elements when deciding whether their combination is protected, the court granted reconsideration of its prior decision.

On review of these recent decisions, as well as decisions from other Circuits and in other contexts where numerosity was considered, the court found that two elements is well below the numerosity level other courts have deemed sufficient. It cited a March 24, 2023, Southern District of New York decision (Nwosuocha v. Glover)—also in an infringement case involving musical compositions—holding that a combination of eight unprotected musical elements was “categorically ineligible for copyright protection.” In reviewing cases from other Circuits, the court noted that courts considering the selection and arrangement of at least three elements have found them to be unoriginal.

The court found a numerosity requirement to be consistent with the goal of copyright, which is protecting works that are sufficiently original. After all, songs are made up of just a limited number of notes and chords that composers can use. Of the available combinations, only a small subset would be deemed pleasing to the ears. As the court noted, those combinations have become commonplace.

In the case of the chord progression and harmonic rhythm in “Let’s Get It On,” Sheeran’s expert witness pointed out that the chord progression was used at least 29 times before appearing in “Let’s Get It On,” and was in another 23 songs before “Thinking Out Loud” was released. The harmonic rhythm was used in at least eight other songs before “Let’s Get It On,” and in another 15 before “Thinking Out Loud.” And the combination also was not unique to “Let’s Get It On.” The expert identified at least four songs prior to “Let’s Get It On” that used virtually the same combination. SAS’s expert did not dispute this. Because the selection and arrangement of these two musical elements is common, their combination is unprotectible, the court held. Therefore, Sheeran could not have infringed.

The case is No. 1:18-cv-05839-LLS.

Attorneys: Hillel Ira Parness (Parness Law Firm, PLLC) for Structured Asset Sales, LLC. Andrew Mark Goldsmith (Pryor Cashman LLP) for Edward Christopher Sheeran p/k/a Ed Sheeran.

Companies: Structured Asset Sales, LLC

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