Ambrosetti v. Oregon Catholic Press

Following five-day trial before advisory jury, district court rules against composer, finding no substantial similarity between his hymn “Emmanuel” and defendant’s hymn “Christ Be Our Light,” and also holds that plaintiff is equitably estopped from asserting his copyright infringement claim because he had concealed his suspicions of infringement when entering into unrelated mutual release of claims with defendants in 2017.

Vincent Ambrosetti, a composer of sacred music and president of International Liturgy Publications Inc. (ILP), a liturgical music publisher, brought a copyright infringement claim against Oregon Catholic Press (OCP), a nonprofit publisher of liturgical music, and Bernadette Farrell, an award-winning English composer of liturgical music, alleging that Farrell’s well-known hymn “Christ Be Our Light” infringed Ambrosetti’s copyright in his advent hymn “Emmanuel.” Ambrosetti wrote and first published “Emmanuel” in 1980, and ILP publishes it in the United States, including in hymnals. Farrell wrote “Christ Be Our Light” in 1993 for a church dedication, and OCP has been reproducing and distributing it in the United States for over 30 years. ILP has licensed works from OCP since 2009, and since 2011, ILP specifically licensed and published “Christ Be Our Light,” including it in one of ILP’s hymnals alongside “Emmanuel.” The district court initially granted summary judgment to the defendants, but the Ninth Circuit reversed that decision (read our summary of the Ninth Circuit’s decision here). On remand, the case was tried before an advisory jury, which returned a verdict in favor of defendants. Following presentation of the evidence, the court entered its Findings of Fact and Conclusions of Law, agreeing with the advisory jury that Ambrosetti had not met his burden to show copyright infringement. The court also held that Ambrosetti was equitably estopped from asserting his copyright claim.

According to the evidence at trial, Ambrosetti had been aware of “Christ Be Our Light” since at least 2011 through his company’s licensing of the work. In 2016, Ambrosetti engaged Professor Lawrence Ferrara, a musicologist, to prepare a preliminary report assessing similarities between the two works, and Ferrara’s November 2016 report stated there was evidence of copying. In 2017, in connection with a lawsuit OCP filed against Ambrosetti and ILP alleging that they had used OCP’s songs in a hymnal beyond the terms of the applicable license, Ambrosetti and OCP entered into a settlement agreement to resolve all claims between the parties. Despite having seen Ferrara’s report at the time of negotiating that settlement agreement, Ambrosetti deliberately chose not to disclose his belief that “Christ Be Our Light” infringed “Emmanuel.” OCP therefore believed it was creating a “blank slate” by signing the settlement agreement, and testified that it would not have signed the agreement, or licensed “Christ Be Our Light” to Ambrosetti or his company, had it known he intended to reserve his right to bring a copyright lawsuit.

On the question of copyright infringement, the court applied the Ninth Circuit’s two-part test for substantial similarity, which requires a plaintiff to satisfy both an objective extrinsic test and a subjective intrinsic test. The court assumed without deciding that Ambrosetti owned a valid copyright in “Emmanuel” and that Farrell had access to the work, focusing its analysis entirely on whether the two works were substantially similar. The court also weighed the testimony and evidence presented at trial, including that presented by the parties’ expert witnesses. The court found the testimony of defendants’ expert, musicologist Professor Judith Finell, to be substantially more persuasive and credible than the testimony of plaintiff’s expert, Professor Ferrara, whose analysis the court found unreliable due to his inclusion of commonplace musical building blocks as bases for similarity, his double- and triple-counting of the same elements purportedly copied, and contradictions between his trial testimony and his expert report. The court also found Ambrosetti’s own testimony less credible than the testimony of defendants’ witnesses, noting his combative demeanor, multiple instances of impeachment, and conflicts with both other witnesses’ testimony and bedrock musical principles.

After a detailed description of the musical elements of both songs, the court addressed the merits of Ambrosetti’s copyright infringement claims, and specifically whether it had been shown that the two works are substantially similar. Under the extrinsic test, the court found the two songs differed substantially, noting that their lyrics, harmonies, choruses, introductions and the fourth phrases of their verses are all different. The court again noted its reliance on the testimony of defendants’ expert, Professor Finell, which the court found to be “substantially more persuasive and credible than the testimony of” Ambrosetti’s expert.

Turning to the intrinsic test, the court concluded the songs were not “substantially similar in total concept and feel.” The court noted that the two songs have different lyrics conveying entirely different messages; different instrumental introductions and chord progressions that provide different contexts for the melodies of the two songs; and different rhythms that create different feels in the verses of the songs. The court commented on the use of “pickups” and “upbeats” in “Emmanuel,” which “give a sense of driving towards the final words of the phrases,” a technique not employed in “Christ Be Our Light.” The court found that “‘Emmanuel’ embodies a concept of continuous motion to the end of each phrase, whereas the rhythmic concept behind [‘Christ Be Our Light’] is two arrival points per phrase: once in the middle of the phrase and another at the end.” The court also found that the works have different melodic contours—“meaning the general shape of when and by how much the pitches rise and fall.” With these findings, the court held that the “total concept and feel” of the two songs differed and Ambrosetti had not met the intrinsic test.

The court rejected Ambrosetti’s argument that similarities among certain phrases of the songs alone suffice to establish substantial similarity, holding that this approach conflicted with Ninth Circuit precedent requiring a “holistic, subjective comparison” of the works and that, even looking at them individually, Ambrosetti failed to show that those phrases are substantially similar. The court also noted that, in the 30 years in which the hymnal featuring both songs was published, no one ever told Ambrosetti that “Emmanuel” and “Christ Be Our Light” seemed similar, despite the hymnal’s editors having “painstakingly and meticulously scrutinized every detail of every musical work.” In total, the court concluded that Ambrosetti had not established substantial similarity between the works and that he therefore could not prevail on his copyright infringement claim.

The court also ruled that, in the alternative, defendants had prevailed on their affirmative defense of equitable estoppel. The court found that defendants had proved each of the five elements required to establish equitable estoppel: “(1) that [Ambrosetti] knew the facts of [defendants’] infringing conduct; (2) that [Ambrosetti’s] false statement or misleading conduct (either action or inaction) caused [defendants] to believe that [Ambrosetti] would not pursue a claim for copyright infringement against them; (3) that [Ambrosetti] intended for [defendants] to act on his statement or conduct, or [defendants] had a right to believe [Ambrosetti] so intended; (4) that [defendants] reasonably believed that [Ambrosetti] would not pursue a claim for copyright infringement against them; and (5) that [defendants] were injured as a result of their reliance on [Ambrosetti’s] statement or conduct.” The court found that Ambrosetti knew of his potential copyright claim before negotiating the 2017 settlement agreement, having received his expert’s preliminary report months earlier; his silence during negotiations constituted a false representation because he had a “duty to speak” given that he knew or should have known that his failure to disclose would mislead OCP into negotiating to its detriment; he intended for OCP to rely on his silence; OCP reasonably believed Ambrosetti would not pursue a claim; and OCP suffered detrimental reliance by entering into the settlement and licensing agreement it otherwise would not have signed. As to co-defendant Farrell, the court held that she also was protected by the estoppel defense because Ambrosetti presented no evidence of Farrell’s independent infringing use of “Christ Be Our Light” within the statute of limitations, and Farrell could only be liable if she authorized an act of infringement by OCP—a route foreclosed by the court’s estoppel finding. In conclusion, the court held that, even if Ambrosetti had established his claim for infringement, defendants were entitled to judgment in their favor because they had prevailed in establishing their defense of equitable estoppel.

Summary prepared by David Grossman and Kyle Petersen