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IP/Entertainment Case Law Updates

Smith v. The Weeknd

District court grants summary judgment, dismissing copyright infringement claim against The Weeknd, finding bare corporate receipt failed to establish access, and no substantial similarity under extrinsic test, as only three shared notes remain after considering prior art, and three notes are not protectable as matter of law. 

A group of British songwriters brought copyright infringement claims, as well as related state-law claims in the alternative, against defendants Abel Tesfaye, who performs professionally as The Weeknd, and other individuals and corporate defendants who participated in the creation, publication and distribution of the musical composition “A Lonely Night,” publicly released in 2016. 

Plaintiffs wrote and recorded “I Need to Love” in 2004 and 2005. In 2005, plaintiffs transferred their copyright in the song to a U.K. company, Big Life Music Limited. A music manager and producer who worked with plaintiffs uploaded “I Need to Love” to Big Life Music’s song search software, which provided music industry executives the ability to search the company’s catalog using keywords and genres to find titles for artists looking for songs. Big Life Music was subsequently acquired by a UMG UK affiliate. 

Defendants moved to dismiss plaintiffs’ claims on summary judgment, arguing as to the copyright infringement claims that there is no genuine issue of fact as to their lack of access and the lack of extrinsic substantial similarity between the two works, and that the state claims were unsupported by any evidence and preempted by the Copyright Act. The court granted defendants’ motion for summary judgment in full.

As to the copyright infringement claims, which required a showing of copying through evidence of access and substantial similarity, the court found that plaintiffs failed to raise a genuine issue of fact as to both elements. First, plaintiffs’ theory of access hinged on the fact that one of the writers credited in “A Lonely Night” was affiliated with UMG at the time “A Lonely Night” was written and recorded. The writer, however, was not present when “A Lonely Night” was composed and recorded, and was credited as such only because he had previously collaborated with The Weeknd on an unfinished song in 2013, and a portion of the lyrics and vocal melody from that unfinished song was used in “A Lonely Night.” Plaintiffs’ theory of access was further undermined by the fact that the writer had collaborated with The Weeknd before he became affiliated with UMG in 2014. 

Given all the foregoing, the court held that plaintiffs failed to raise a genuine issue of material fact as to access, which required “a reasonable possibility,” more than “a bare possibility,” that defendants had the chance to view plaintiffs’ work. The court held that absent wide dissemination, which “I Need to Love” admittedly did not have, bare corporate receipt such as the corporate affiliation of a writer credited in “A Lonely Night” was not sufficient. 

Second, as to substantial similarity, the district court credited defendants’ expert testimony, which applied the extrinsic test by filtering out unprotectable elements and dissecting the remaining protectable elements. Defendants’ expert found that after removing commonplace expressions shared by both works, the only similarities that remained were three fragmentary pitches. Relying on the recent Ninth Circuit decision in Skidmore v. Led Zeppelin, which held that three consecutive notes are not protectable, no matter how important they might be to a work, the court held that the three remaining notes are not protectable and thus could not serve as a basis for finding substantial similarity between the works. The court discounted plaintiffs’ expert opinion because it failed to filter out unprotectable elements and concerned intrinsic similarities between the works rather than an analytic dissection of protectable elements as required by the extrinsic test. The court also excluded from its consideration plaintiffs’ rebuttal expert report, because it was submitted without leave of court after the deadline for such submissions.

The court also rejected plaintiffs’ theory that the selection and arrangement of unprotectable similarities constitute a substantial similarity between the two works, finding their arrangement to be unoriginal and not actually shared in substantial amount with defendants’ work. Plaintiffs could not establish substantial similarity by reconstituting the copyrighted work as a combination of elements and then claiming these elements appear in defendants’ work in a different aesthetic context. 

Having found that plaintiffs failed to raise a genuine issue as to material fact on plaintiffs’ direct infringement claim, the court also dismissed plaintiffs’ contributory and vicarious liability claims against the other defendants.

Finally, the court also dismissed the state law claims that plaintiffs pled in alternative to their copyright infringement claims, finding that their state law claims for an accounting, constructive trust and unjust enrichment hinged on evidence of a secret license between the parties—which plaintiffs failed to produce any evidence of—and that without such a license, those claims were preempted by the Copyright Act.

Summary prepared by Linna Chen and Jong-min Choi