Michael Skidmore v. Led Zeppelin , 905 F.3d 1116 ( 2018 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
MICHAEL SKIDMORE, AS TRUSTEE No. 16-56057
FOR THE RANDY CRAIG WOLFE
TRUST, D.C. No.
Plaintiff-Appellant, 2:15-cv-03462-
RGK-AGR
v.
LED ZEPPELIN; JAMES PATRICK
PAGE; ROBERT ANTHONY PLANT;
JOHN PAUL JONES; SUPER HYPE
PUBLISHING, INC.; WARNER MUSIC
GROUP CORPORATION; WARNER
CHAPPELL MUSIC, INC.; ATLANTIC
RECORDING CORPORATION; RHINO
ENTERTAINMENT COMPANY,
Defendants-Appellees.
2 SKIDMORE V. LED ZEPPELIN
MICHAEL SKIDMORE, AS TRUSTEE No. 16-56287
FOR THE RANDY CRAIG WOLFE
TRUST, D.C. No.
Plaintiff-Appellee, 2:15-cv-03462-
RGK-AGR
v.
WARNER/CHAPPELL MUSIC, INC, OPINION
Defendant-Appellant,
and
LED ZEPPELIN; JAMES PATRICK
PAGE; ROBERT ANTHONY PLANT;
JOHN PAUL JONES; SUPER HYPE
PUBLISHING, INC.; WARNER MUSIC
GROUP CORPORATION, ATLANTIC
RECORDING CORPORATION; RHINO
ENTERTAINMENT COMPANY,
Defendants.
Appeal from the United States District Court
for the Central District of California
R. Gary Klausner, District Judge, Presiding
Argued and Submitted March 12, 2018
San Francisco, California
Filed September 28, 2018
SKIDMORE V. LED ZEPPELIN 3
Before: Richard A. Paez and Sandra S. Ikuta, Circuit
Judges, and Eric N. Vitaliano, * District Judge.
Opinion by Judge Paez
SUMMARY **
Copyright
The panel vacated in part the district court’s judgment
after a jury trial in favor of the defendants and remanded for
a new trial in a copyright infringement suit alleging that Led
Zeppelin copied “Stairway to Heaven” from the song
“Taurus,” written by Spirit band member Randy Wolfe.
The jury found that plaintiff Michael Skidmore owned
the copyright to “Taurus,” that defendants had access to
“Taurus,” and that the two songs were not substantially
similar under the extrinsic test.
The panel held that certain of the district court’s jury
instructions were erroneous and prejudicial. First, in
connection with the extrinsic test for substantial similarity,
the district court prejudicially erred by failing to instruct the
jury that the selection and arrangement of unprotectable
musical elements are protectable. Second, the district court
prejudicially erred in its instructions on originality. The
*
The Honorable Eric N. Vitaliano, United States District Judge for
the Eastern District of New York, sitting by designation.
**
This summary constitutes no part of the opinion of the court. It
has been prepared by court staff for the convenience of the reader.
4 SKIDMORE V. LED ZEPPELIN
panel concluded that the district court did not err in failing
to instruct the jury on the inverse ratio rule, but such an
instruction might be appropriate on remand.
The panel further held that the scope of copyright
protection for an unpublished musical work under the
Copyright Act of 1909 is defined by the deposit copy
because copyright protection under the 1909 Act did not
attach until either publication or registration. Therefore, the
district court correctly ruled that sound recordings of
“Taurus” as performed by Spirit could not be used to prove
substantial similarity.
Addressing evidentiary issues, the panel held that the
district court abused its discretion by not allowing recordings
of “Taurus” to be played for the purpose of demonstrating
access. The district court did not abuse its discretion by
failing to exclude expert testimony on the basis of a conflict
of interest.
In light of its disposition, the panel vacated the district
court’s denial of defendants’ motions for attorneys’ fees and
costs and remanded those issues as well.
COUNSEL
Francis Malofiy (argued) and Alfred Joseph Fluehr, Francis
Alexander LLC, Media, Pennsylvania, for Plaintiff-
Appellant.
Peter J. Anderson (argued), Law Offices of Peter J.
Anderson, Santa Monica, California; Helens M. Freeman,
SKIDMORE V. LED ZEPPELIN 5
Phillips Nizer LLP, New York, New York; for Defendants-
Appellees.
OPINION
PAEZ, Circuit Judge:
This copyright case involves a claim that Led Zeppelin
copied key portions of its timeless hit “Stairway to Heaven”
from the song “Taurus,” which was written by Spirit band
member Randy Wolfe. Years after Wolfe’s death, the
trustee of the Randy Craig Wolfe Trust, Michael Skidmore,
brought this suit for copyright infringement against Led
Zeppelin, James Patrick Page, Robert Anthony Plant, John
Paul Jones, Super Hype Publishing, and the Warner Music
Group Corporation as parent of Warner/Chappell Music,
Inc., Atlantic Recording Corporation, and Rhino
Entertainment Co. (collectively, “Defendants”). The case
proceeded to a jury trial, and the jury returned a verdict in
favor of Defendants. Skidmore appeals, raising a host of
alleged trial errors and challenging the district court’s
determination that for unpublished works under the
Copyright Act of 1909 (“1909 Act”), the scope of the
copyright is defined by the deposit copy. We hold that
several of the district court’s jury instructions were
erroneous and prejudicial. We therefore vacate the amended
judgment in part and remand for a new trial. For the benefit
of the parties and the district court on remand, we also
address whether the scope of copyright protection for an
unpublished work under the 1909 Act is defined by the
deposit copy. We hold that it is. We also address several
other evidentiary issues raised by Skidmore that are likely to
arise again on remand. Finally, in light of our disposition,
6 SKIDMORE V. LED ZEPPELIN
we vacate the denial of Defendants’ motions for attorneys’
fees and costs and remand those issues as well.
I.
A.
Randy Wolfe, nicknamed Randy California by Jimi
Hendrix, was a musician and a member of the band Spirit.
He wrote the song “Taurus” in late 1966. Spirit signed a
recording contract in August 1967, and its first album
Spirit—which included “Taurus”—was released in late 1967
or early 1968. Hollenbeck Music (“Hollenbeck”) filed the
copyright for Taurus in December 1967 and listed Randy
Wolfe as the author. As part of the copyright registration
packet, “Taurus” was transcribed into sheet music that was
deposited with the Copyright Office (“Taurus deposit
copy”).
The band Led Zeppelin, formed in 1968, consisted of
Jimmy Page, Robert Plant, John Paul Jones, and John
Bonham. Spirit and Led Zeppelin’s paths crossed several
times in the late 1960s and early 1970s. On tour, Led
Zeppelin would occasionally perform a cover of another
Spirit song, “Fresh Garbage.” Spirit and Led Zeppelin both
performed at a concert in Denver in 1968 and at the Atlanta
International Pop Festival, the Seattle Pop Festival, and the
Texas Pop Festival in 1969. There is no direct evidence that
Led Zeppelin band members listened to Spirit’s
performances on any of these dates, although members of
Spirit testified that they conversed with Led Zeppelin
members, and one Spirit band member testified that Spirit
had played “Taurus” the night both bands performed in
Denver. Additionally, there was evidence at trial that Robert
Plant attended a February 1970 Spirit performance. Jimmy
Page testified that he currently owns a copy of the album
SKIDMORE V. LED ZEPPELIN 7
Spirit, but he was unable to clarify when he had obtained that
copy. In late 1971, Led Zeppelin released its fourth album,
an untitled album known as “Led Zeppelin IV.” One of the
tracks on the album is the timeless classic “Stairway to
Heaven,” which was written by Jimmy Page and Robert
Plant.
Randy Wolfe passed away in 1997, and his mother
established the Randy Craig Wolfe Trust (the “Trust”). All
of Wolfe’s intellectual property rights were transferred to the
Trust, including his ownership interest in “Taurus.” 1 His
mother was the trustee or co-trustee until her death in 2009,
after which time Skidmore became the trustee. Immediately
after the Supreme Court’s decision in Petrella v. Metro-
Goldwyn-Mayer, Inc., 134 S. Ct. 1962, 1967–68 (2014),
which clarified that laches is not a defense where copyright
infringement is ongoing, Skidmore filed this suit on behalf
of the Trust alleging that “Stairway to Heaven” infringed the
copyright in “Taurus.”
B.
Skidmore initially filed his complaint in the Eastern
District of Pennsylvania, but the case was subsequently
transferred to the Central District of California. Skidmore v.
Led Zeppelin, 106 F. Supp. 3d 581, 589–90 (E.D. Pa. 2015).
Skidmore alleged direct, contributory, and vicarious
copyright infringement. He also alleged a claim titled “Right
of Attribution—Equitable Relief—Falsification of Rock n’
Roll History.” With regard to copyright infringement,
1
Ownership of the Taurus copyright was one of the disputed issues
at trial, but the jury found that Skidmore “is the owner of a valid
copyright in Taurus.” The Defendants do not challenge that finding on
appeal.
8 SKIDMORE V. LED ZEPPELIN
Skidmore alleged that the opening notes of “Stairway to
Heaven” are substantially similar to those in “Taurus.” The
Defendants disputed ownership, substantial similarity, and
access. They also alleged a number of affirmative defenses
including unclean hands, laches, and independent creation.
After discovery, Defendants moved for summary
judgment, which the district court granted in part and denied
in part. Specifically, the district court granted summary
judgment to John Paul Jones, Super Hype Publishing, and
Warner Music Group (“summary judgment defendants”), as
they had not performed or distributed “Stairway to Heaven”
in the three-year statute of limitations period preceding the
filing of the complaint. Additionally, the district court
granted summary judgment to Defendants on Skidmore’s
“Right of Attribution—Equitable Relief—Falsification of
Rock n’ Roll History” claim, as the district court “had
diligently searched but [was] unable to locate any cognizable
claim to support this [Falsification of Rock n’ Roll History]
theory of liability.”
Because the 1909 Act governed the scope of the
copyright Wolfe obtained in “Taurus,” the district court
further concluded that the protectable copyright was the
musical composition transcribed in the deposit copy of
“Taurus” and not the sound recordings. The district court
therefore concluded that to prove substantial similarity
between “Taurus” and “Stairway to Heaven,” Skidmore
would have to rely on the “Taurus” deposit copy rather than
a sound recording. The district court also found that there
were triable issues of fact relating to ownership, access,
substantial similarity, and damages that could only be
resolved at trial.
At a pretrial conference in April 2016, after reviewing
summaries of each witnesses’ proposed testimony, the
SKIDMORE V. LED ZEPPELIN 9
district court decided to allot each side ten hours to present
its case. The district court also tentatively granted
Defendants’ motion in limine to exclude recordings of Spirit
performing “Taurus” as well as expert testimony based on
those recordings, again concluding that the 1967 deposit
copy should be the baseline when considering substantial
similarity. Before trial, the district court filed an order
confirming its prior tentative rulings on the motions in
limine.
As part of expert discovery, Skidmore’s attorney
deposed Dr. Lawrence Ferrara, Defendants’ expert
musicologist. During the deposition it came to light that in
2013 Dr. Ferrara had done a comparison of the “Taurus” and
“Stairway to Heaven” recordings for Rondor Music
(“Rondor”), a subsidiary of Universal Music Publishing
Group. 2 Dr. Ferrara testified that when he was approached
by Defendants’ counsel, he informed them that he had
already completed an analysis for Rondor. Defendants’
counsel consulted with Rondor, which waived any conflict
and consented to Dr. Ferrara being retained as an expert
witness for Defendants. Throughout the deposition,
Skidmore’s counsel objected and requested copies of Dr.
Ferrara’s communications with Rondor and Universal.
After the deposition, Skidmore filed a Motion for Sanctions
and to Preclude Dr. Ferrara from testifying at trial. The
district court denied Skidmore’s motion because it was
improperly noticed, over the page limit, and untimely.
2
Skidmore presented evidence that Universal Music was working
for Hollenbeck, the publisher of Spirit’s music. Skidmore alleged during
the deposition that because of this connection, Hollenbeck owed
fiduciary duties to Skidmore.
10 SKIDMORE V. LED ZEPPELIN
A five-day jury trial ensued. While questioning Jimmy
Page, Skidmore’s counsel requested that several sound
recordings of Spirit performing “Taurus” be played so that
he could ask Page whether he had ever heard any of the
recordings. When Defendants objected, Skidmore’s counsel
explained that the recordings were offered to prove access,
rather than substantial similarity. The district court
determined that although the sound recordings were relevant
to prove access, it would be too prejudicial for the jury to
hear the recordings. To avoid any prejudice, the district court
had Page listen to the recordings outside the presence of the
jury and then allowed Skidmore’s counsel to question him
about them in the presence of the jury. Page eventually
testified that he presently had an album containing “Taurus”
in his collection, but while testifying he did not admit to
having heard any recordings of “Taurus” prior to composing
“Stairway to Heaven.”
Also of note, Kevin Hanson, Skidmore’s master
guitarist, performed the “Taurus” deposit copy as he
interpreted it, and played recordings of his performances of
the beginning notes of the “Taurus” deposit copy and
“Stairway to Heaven.” The “Taurus” recording Hanson
played for the jury during his testimony, however, only
contained the bass clef and excluded the treble clef, which
contained additional notes.
During the cross-examination of Dr. Ferrara, Skidmore
used up the last of his ten hours of allotted trial time. The
district court found that Skidmore had not made effective use
of his time for a variety of reasons, but granted Skidmore
two additional minutes to finish cross-examining Dr. Ferrara
and ten minutes to cross-examine each remaining witness.
Skidmore was not allowed to call rebuttal witnesses.
SKIDMORE V. LED ZEPPELIN 11
During jury deliberations, the jury asked to hear
Skidmore’s recording of Hanson playing both “Taurus” and
“Stairway to Heaven.” The district court asked if the jury
would like to hear the deposit-copy version of “Taurus” or
the version of “Taurus” with only the bass clef. One juror
responded with “bass clef” but the jury foreperson responded
with “the full copy.” The district court directed that the full
deposit-copy version be played and asked if that answered
the jury’s question, to which the foreperson replied “thank
you.” The other juror did not object to hearing the full copy
rather than the bass clef version.
The jury ultimately returned a verdict for Defendants.
The jury found that Skidmore owned the copyright to
“Taurus,” that Defendants had access to “Taurus,” but that
the two songs were not substantially similar under the
extrinsic test. 3 Following the verdict, the district court
entered an amended judgment in favor of all Defendants.
Skidmore did not file any post-judgment motions
challenging the verdict, but timely appealed from the
amended judgment. 4 In this appeal, Skidmore challenges
(1) various jury instructions, (2) the district court’s ruling
that substantial similarity must be proven using the copyright
3
The extrinsic test is one of two tests used to determine if an
allegedly infringing work is substantially similar to a copyrighted work.
This test objectively compares the protected areas of a work. See, infra
p. 13; Swirsky v. Carey, 376 F.3d 841, 845 (9th Cir. 2004).
4
Skidmore appeals from the amended judgment, which listed all
defendants, but none of his arguments implicate the summary judgment
defendants. Defendants argue that this waives any challenge to the
summary judgment order as it relates to those defendants. We agree.
See, e.g., Classic Concepts, Inc. v. Linen Source, Inc., 716 F.3d 1282,
1285 (9th Cir. 2013). Accordingly, we do not address any of the claims
against the summary judgment defendants, and we do not disturb the
amended judgment as it relates to those defendants.
12 SKIDMORE V. LED ZEPPELIN
deposit copy, (3) the district court’s ruling that sound
recordings could not be played to prove access, (4) the
district court’s decision not to exclude or sanction Dr.
Ferrara, (5) the fact that the full version of “Taurus” rather
than the bass clef version was played in response to the
jury’s request, and (6) the imposition of strict time limits as
a violation of due process.
Following entry of the amended judgment,
Warner/Chappell filed a motion for attorneys’ fees and a
motion for costs. The district court denied these motions.
Warner/Chappell timely cross-appealed, and we
consolidated the two appeals.
II.
We begin with a discussion of the elements that
Skidmore must establish to prevail on his copyright
infringement claim.
In order to prove copyright infringement, a plaintiff must
show “(1) that he owns a valid copyright in his [work], and
(2) that [the defendants] copied protected aspects of the
[work’s] expression.” See Rentmeester v. Nike, Inc.,
883 F.3d 1111, 1116–17 (9th Cir. 2018) (citing Feist
Publ’ns, Inc. v. Rural Telephone Serv. Co., Inc., 499 U.S.
340, 345 (1991)). In this appeal, the parties do not contest
that Skidmore owns a valid copyright in “Taurus,” so our
analysis turns on the second issue.
Whether Defendants copied protected expression
contains two separate and distinct components: “copying”
and “unlawful appropriation.” Rentmeester, 883 F.3d at
1117. A plaintiff must be able to demonstrate that a
defendant copied his work, as independent creation is a
complete defense to copyright infringement. See Feist
SKIDMORE V. LED ZEPPELIN 13
Publ’ns, 499 U.S. at 345–46; see also Rentmeester, 883 F.3d
at 1117. In cases such as this one where there is no direct
evidence of copying, the plaintiff “can attempt to prove it
circumstantially by showing that the defendant had access to
the plaintiff’s work and that the two works share similarities
probative of copying.” Rentmeester, 883 F.3d at 1117.
“When a high degree of access is shown,” a lower amount of
similarity is needed to prove copying. Rice v. Fox
Broadcasting Co., 330 F.3d 1170, 1178 (9th Cir. 2003)
(citation omitted). “To prove copying, the similarities
between the two works need not be extensive, and they need
not involve protected elements of the plaintiff’s work. They
just need to be similarities one would not expect to arise if
the two works had been created independently.”
Rentmeester, 883 F.3d at 1117.
To prove “unlawful appropriation” a higher showing of
substantial similarity is needed. Id. The works must share
substantial similarities and those similarities must involve
parts of the plaintiff’s work that are original and therefore
protected by copyright. Id. To determine whether an
allegedly infringing work is substantially similar to the
original work, we employ the extrinsic and intrinsic tests.
The extrinsic test is an objective comparison of protected
areas of a work. This is accomplished by “breaking the
works down into their constituent elements, and comparing
those elements” to determine whether they are substantially
similar. Swirsky v. Carey, 376 F.3d 841, 845 (9th Cir. 2004).
Only elements that are protected by copyright are compared
under the extrinsic test. Id. The intrinsic test is concerned
with a subjective comparison of the works, as it asks
“whether the ordinary, reasonable person would find the
total concept and feel of the works to be substantially
similar.” Three Boys Music Corp. v. Bolton, 212 F.3d 477,
485 (9th Cir. 2000) (citation omitted).
14 SKIDMORE V. LED ZEPPELIN
III.
We turn first to Skidmore’s argument that the district
court failed to properly instruct the jury on the elements of
his copyright infringement claim as discussed above and
whether the court’s alleged errors were prejudicial.
Skidmore argues: (1) that the district court erred by failing
to give an instruction that selection and arrangement of
otherwise unprotectable musical elements are protectable;
(2) that the district court’s jury instructions on originality
and protectable musical elements were erroneous; and
(3) that the district court erred in failing to give an inverse
ratio rule instruction. We address each of these in turn.
We review for abuse of discretion the district court’s
formulation of jury instructions and review de novo whether
the instructions misstate the law. See Louis Vuitton
Malletier, S.A. v. Akanoc Sols., Inc., 658 F.3d 936, 941 (9th
Cir. 2011). As a general matter, prejudicial error in jury
instructions occurs when “looking to the instructions as a
whole, the substance of the applicable law was [not] fairly
and correctly covered.” Swinton v. Potomac Corp., 270 F.3d
794, 802 (9th Cir. 2001) (quoting In re Asbestos Cases,
847 F.2d 523, 524 (9th Cir. 1998)) (alteration in original)).
“An error in instructing the jury in a civil case requires
reversal unless the error is more probably than not
harmless.” Id. at 805 (quoting Caballero v. City of Concord,
956 F.2d 204, 206–07 (9th Cir. 1992)).
A.
Skidmore argues that the district court’s failure to
instruct the jury that the selection and arrangement of
unprotectable musical elements are protectable is reversible
error. Each side had included a version of such an
instruction in their proposed jury instructions. The district
SKIDMORE V. LED ZEPPELIN 15
court, however, did not include either instruction in its final
version of the instructions nor did it modify any of the
substantive instructions to include this point. We conclude
that the district court erred by failing to instruct the jury on
this issue and that the error was prejudicial.
We are concerned here with the extrinsic test for
substantial similarity, as the jury decided that there was no
extrinsic substantial similarity and failed to reach the
intrinsic test. In the musical context, the extrinsic test can be
difficult to administer. See Swirsky, 376 F.3d at 848.
Although individual elements of a song, such as notes or a
scale, may not be protectable, “music is comprised of a large
array of elements, some combination of which is protectable
by copyright.” Id. at 849. For example, we have “upheld a
jury finding of substantial similarity based on the
combination of five otherwise unprotectable elements.” Id.(citing Three Boys, 212 F.3d at 485). In other circumstances,
we have recognized that “a combination of unprotectable
elements is eligible for copyright protection only if those
elements are numerous enough and their selection and
arrangement original enough that their combination
constitutes an original work of authorship.” Satava v.
Lowry, 323 F.3d 805, 811 (9th Cir. 2003) (citations omitted).
The copyright in an arrangement of public domain elements
extends only to the originality contributed by the author to
the arrangement. Id. at 811–12; see also Feist Publ’ns,
499 U.S. at 345. Thus, there can be copyright protection on
the basis of a sufficiently original combination of otherwise
non-protectable music elements. The district court’s failure
to so instruct the jury was especially problematic in this case,
because Skidmore’s expert, Dr. Stewart, testified that there
was extrinsic substantial similarity based on the combination
of five elements—some of which were protectable and some
of which were in the public domain.
16 SKIDMORE V. LED ZEPPELIN
Although Defendants requested an instruction on
selection and arrangement, they argue that the district court’s
failure to give such an instruction does not warrant reversal.
First, Defendants argue that Skidmore waived any objection
to the court’s failure to give such an instruction, in part
because Skidmore did not voice any objection when the
district court was reading the final jury instructions to
counsel. This argument is baseless. Although Skidmore’s
counsel transcribed and assembled the jury instructions as
directed by the district court, the court specifically stated that
it did not want any oral objections to its final jury
instructions, as the parties had already submitted separate
instructions and written objections to the other side’s
proposed instructions. Skidmore proposed an instruction on
selection and arrangement as did the Defendants and each
side objected to the other side’s proposed instruction as
required by Local Rule 51-1, 5. See, e.g., Yamada v. Nobel
Biocare Holding AG, 825 F.3d 536, 543 (9th Cir. 2016).
Next, Defendants contend that Skidmore did not argue
or present evidence of a copyrightable selection and
arrangement of otherwise unprotectable elements. When
objecting to one of Skidmore’s jury instructions, however,
Defendants expressly stated that Skidmore relied on a
selection and arrangement theory in his argument for
infringement. On appeal, Defendants maintain that
Skidmore instead relied on the similarity of a “combination”
of elements present in “Taurus” and “Stairway to Heaven.”
Defendants’ refined argument splits hairs and contradicts
their earlier position. Whether or not the words “selection
and arrangement” were used at trial is irrelevant because it
is clear that this legal theory formed the basis of Skidmore’s
infringement claim. Indeed, the fact that Defendants
recognized this argument at trial undermines their contrary
argument here. Additionally, many selection and
SKIDMORE V. LED ZEPPELIN 17
arrangement cases also refer to a “combination” of musical
elements, further undermining Defendants’ proffered
distinction. See Swirsky, 376 F.3d at 849; Satava, 323 F.3d
at 811. As both sides recognized in their proposed jury
instructions, a selection and arrangement instruction was
appropriate and necessary given the basis for Skidmore’s
infringement claim.
Defendants also argue that any error is harmless, because
the jury would likely have reached the same verdict even if
it had been instructed on selection and arrangement. See
Clem v. Lomeli, 566 F.3d 1177, 1182 (9th Cir. 2009). We
disagree. Without a selection and arrangement instruction,
the jury instructions severely undermined Skidmore’s
argument for extrinsic similarity, which is exactly what the
jury found lacking. Given that nothing else in the
instructions alerted the jury that the selection and
arrangement of unprotectable elements could be
copyrightable, “looking to the instructions as a whole, the
substance of the applicable law was [not] fairly and correctly
covered.” Swinton, 270 F.3d at 802 (alteration in original)
(quotations omitted). Indeed, as discussed further below,
other instructions when considered in the absence of a
selection and arrangement instruction imply that selection
and arrangement of public domain material is not
copyrightable. For instance, Jury Instruction No. 20, which
instructed the jury that “any elements from . . . the public
domain are not considered original parts and not protected
by copyright,” suggests that no combination of these
elements can be protected by copyright precisely because the
court omitted a selection and arrangement instruction. The
district court’s failure to instruct the jury on selection and
18 SKIDMORE V. LED ZEPPELIN
arrangement was therefore prejudicial given Skidmore’s
theory of infringement. 5 Id.
B.
Skidmore also argues that the district court erred in two
ways in its formulation of the jury instructions on originality.
First, Skidmore contends that Jury Instruction No. 16
erroneously stated that copyright does not protect
“chromatic scales, arpeggios or short sequences of three
notes.” 6 Second, Skidmore argues that Jury Instruction No.
5
Each side proposed its own selection and arrangement instruction
and objected to the language of the other party’s proposed instruction.
We leave it to the district court on remand to determine which version of
the proposed instructions to adopt, given applicable precedent on the
issue. See, e.g., Feist Publ’ns, 499 U.S. at 345; Swirsky, 376 F.3d at 848;
Satava, 323 F.3d at 811; Three Boys, 212 F.3d at 485.
6
In full, Jury Instruction No. 16 reads as follows:
Plaintiff has filed a claim against Defendants for
violation of the United States Copyright Act, which
governs this case. In order for you to undertake your
responsibility, you must know what a copyright is,
what it protects, and what it does not protect.
Copyright confers certain exclusive rights to the
owner of a work including the rights to:
1. Reproduce or authorize the reproduction of
the copyrighted work;
2. Prepare derivative works based upon the
copyrighted work.
3. Distribute the copyrighted work to the public;
and
SKIDMORE V. LED ZEPPELIN 19
20 on originality should not have instructed the jury that
“[h]owever, any elements from prior works or the public
domain are not considered original parts and not protected
by copyright,” and should have included the admonition
from the Ninth Circuit Model Jury Instruction 17.13 that
“[i]n copyright law, the ‘original’ part of a work need not be
new or novel.” 7 Defendants argue that Skidmore waived a
challenge to these jury instructions for the same reason he
waived a challenge to the lack of a selection and arrangement
4. Perform publicly a copyrighted musical
work.
Copyright only protects the author’s original
expression in a work and does not protect ideas,
themes or common musical elements, such as
descending chromatic scales, arpeggios or short
sequences of three notes.
Also, there can be no copyright infringement
without actual copying. If two people independently
create two works, no matter how similar, there is no
copyright infringement unless the second person
copied the first.
7
Jury Instruction No. 20 reads:
An original work may include or incorporate elements
taken from prior works or works from the public
domain. However, any elements from prior works or
the public domain are not considered original parts and
not protected by copyright. Instead, the original part
of the plaintiff’s work is limited to the part created:
1. independently by the work’s author, that is,
the author did not copy it from another work;
and
2. by use of at least some minimal creativity.
20 SKIDMORE V. LED ZEPPELIN
instruction. For the reasons discussed above, this argument
fails. We further conclude that the district court erred in its
instructions on originality.
There is a low bar for originality in copyright. See
Swirsky, 376 F.3d at 851 (“[O]riginality means little more
than a prohibition of actual copying.”) (internal quotations
omitted). Copyright extends to parts of a work created
(1) independently, i.e., not copied from another’s work and
(2) which contain minimal creativity. See Feist Publ’ns,
499 U.S. at 348. Most basic musical elements are not
copyrightable. See Smith v. Jackson, 84 F.3d 1213, 1216 n.3
(9th Cir. 1996) (explaining that “common or trite” musical
elements are not protected); Satava, 323 F.3d at 811 (holding
that expressions that are common to a subject matter or
medium are not protectable); Swirsky, 376 F.3d at 851(acknowledging that a single musical note lacks copyright
protection). In Swirsky, however, we recognized that while
“a single musical note would be too small a unit to attract
copyright protection . . . an arrangement of a limited number
of notes can garner copyright protection.” Id. We therefore
concluded that seven notes could be sufficient to garner
copyright protection. See id. at 852.
Jury Instruction No. 16 included an instruction that
“common musical elements, such as descending chromatic
scales, arpeggios or short sequences of three notes” are not
protected by copyright. This instruction runs contrary to our
conclusion in Swirsky that a limited number of notes can be
protected by copyright. See id. at 851. When considered in
the absence of a selection and arrangement instruction, Jury
Instruction No. 16 could have led the jury to believe that
even if a series of three notes or a descending chromatic scale
were used in combination with other elements in an original
manner, it would not warrant copyright protection. See
SKIDMORE V. LED ZEPPELIN 21
Swinton, 270 F.3d at 802. This error was not harmless as it
undercut testimony by Skidmore’s expert that Led Zeppelin
copied a chromatic scale that had been used in an original
manner. See Clem, 566 F.3d at 1182 (an error in a jury
instruction is harmless if “it is more probable than not that
the jury would have reached the same verdict had it been
properly instructed” (citation omitted)).
Similarly, Jury Instruction No. 20 omitted parts of the
test for originality and added misleading language. Under
Feist Publications, originality requires that a work not be
copied and that it be produced with a minimal degree of
creativity. 499 U.S. at 348. The original part of a work does
not need to be new or novel, as long as it is not copied. Id.The district court, however, omitted Skidmore’s requested
instruction—drawn from Ninth Circuit Model Instruction
17.13—that “the ‘original’ part of a work need not be new
or novel.” 8 Additionally, Jury Instruction No. 20 stated that
“any elements from prior works or the public domain are not
considered original parts and not protectable by copyright.”
While this statement is not literally incorrect, it misleadingly
8
At the time of trial, Ninth Circuit Model Instruction 17.13 provided
that:
An original work may include or incorporate
elements taken from works owned by others, with the
owner’s permission. The original parts of the
plaintiff’s work are the parts created:
1. independently by the work’s author, that is, the
author did not copy it from another work; and
2. by use of at least some minimal creativity.
In copyright law, the “original” part of a work
need not be new or novel.
22 SKIDMORE V. LED ZEPPELIN
suggests that public domain elements such as basic musical
structures are not copyrightable even when they are arranged
or modified in a creative, original way. See Swirsky,
376 F.3d at 852. Ninth Circuit Model Instruction 17.13
avoids this problem by not including this misleading
statement.
Nowhere did the jury instructions include any statements
clarifying that the selection and arrangement of public
domain elements could be considered original. Jury
Instruction No. 20 compounded the errors of that omission
by furthering an impression that public domain elements are
not protected by copyright in any circumstances. This is in
tension with the principle that an original element of a work
need not be new; rather, it need only be created
independently and arranged in a creative way. See Feist
Publ’ns, 499 U.S. at 345, 349; see also Swirsky, 376 F.3d at
849. Jury Instruction Nos. 16 and 20 in combination likely
led the jury to believe that public domain elements—such as
a chromatic scale or a series of three notes—were not
protectable, even where there was a modification or
selection and arrangement that may have rendered them
original. Skidmore’s expert testified that “Taurus”
contained certain public domain elements—such as
chromatic scales—that were modified in an original way, but
the jury instructions as a whole likely would have led the
jury to believe that such evidence could not establish the
basis of a cognizable copyright claim. Similarly, the
instructions undermined Skidmore’s expert’s testimony that
“Taurus” and “Stairway to Heaven” were similar because of
the combination of otherwise unprotectable elements.
In sum, we conclude that the district court’s originality
jury instructions erroneously instructed the jury that public
domain elements are not copyrightable, even if they are
SKIDMORE V. LED ZEPPELIN 23
modified in an original manner or included as part of a
selection and arrangement. We further conclude that these
instructions were prejudicial as they undermined the heart of
Skidmore’s argument that “Taurus” and “Stairway to
Heaven” were extrinsically substantially similar. Clem,
566 F.3d at 1182. Because the district court erred both in the
formulation of the originality jury instructions and in
withholding a selection and arrangement instruction, we
vacate the judgment and remand for a new trial.
C.
Skidmore also argues that the district court erred by not
including a jury instruction on the inverse ratio rule. Under
the “inverse ratio rule,” a lower standard of proof of
substantial similarity is required “when a high degree of
access is shown.” Rice, 330 F.3d at 1178 (citation omitted).
We recently clarified the framework underlying the inverse
ratio rule. See Rentmeester, 883 F.3d at 1124–25. This rule
“assists only in proving copying, not in proving unlawful
appropriation.” Id. at 1124. Even if a plaintiff proves that a
defendant copied his work, the plaintiff must still show that
the copying “amounts to unlawful appropriation.” Id.; see
also Peters v. West, 692 F.3d 629, 635 (7th Cir. 2012). “The
showing of substantial similarity necessary to prove
unlawful appropriation does not vary with the degree of
access the plaintiff has shown.” Rentmeester, 883 F.3d at
1124; see also Positive Black Talk Inc. v. Cash Money
Records Inc., 394 F.3d 357, 372 n.11 (5th Cir. 2004).
Unlike in Rentmeester, where the parties did not contest
that copying had occurred, Skidmore must prove both
unlawful appropriation and copying to prevail. 883 F.3d at
1124. While an inverse ratio rule jury instruction may have
been helpful to Skidmore in proving copying, the jury
verdict form makes clear that the jury did not decide whether
24 SKIDMORE V. LED ZEPPELIN
Led Zeppelin had copied parts of “Taurus.” Rather, the jury
ended its deliberations after deciding that “Taurus” and
“Stairway to Heaven” were not substantially similar under
the extrinsic test. Substantial similarity under the extrinsic
and intrinsic test goes to unlawful appropriation, rather than
copying. Id. at 1117. The jury found that under the extrinsic
test, any similarity was not substantial. Therefore, there was
not unlawful appropriation under Rentmeester. See id.
Because the jury did not reach the question of copying, the
inverse ratio rule was not relevant, and any error in not
including it was harmless.
Because we are remanding for a new trial, however, we
note that in a case like this one where copying is in question
and there is substantial evidence of access, an inverse ratio
rule jury instruction may be appropriate. See Rice, 330 F.3d
at 1178 (declining to apply the inverse ratio rule at the
summary judgment stage because the claims of access were
“based on speculation, conjecture, and inference which are
far less than the ‘high degree of access’ required for
application of the inverse ratio rule”); see also Swirsky,
376 F.3d at 844 ( applying the inverse ration rule because
access was conceded); Metcalf v. Bocho, 294 F.3d 1069,
1075 (9th Cir. 2002) (same); Shaw v. Lindheim, 919 F.2d
1353, 1361–62 (9th Cir. 1990) (same). Here, there was
substantial evidence of access, and indeed, the jury found
that both James Page and Robert Plant had access to
“Taurus.” On remand, the district court should reconsider
whether an inverse ratio rule instruction is warranted unless
it determines, as a matter of law, that Skidmore’s “evidence
as to proof of access is insufficient to trigger the inverse ratio
rule.” Rice, 330 F.3d at 1178.
SKIDMORE V. LED ZEPPELIN 25
IV.
Because we are remanding for a new trial, we address
three of Skidmore’s additional assignments of error that will
continue to be relevant on remand. First, we address whether
the district court erred by holding that the deposit copy of
“Taurus,” rather than a sound recording, defined the scope
of the protectable copyright. We hold that there was no error
in the district court’s ruling. Next, we analyze whether the
district court abused its discretion by not allowing recordings
of “Taurus” to be played for the purpose of demonstrating
access; we conclude that it did. Finally, we examine whether
the district court abused its discretion in not excluding Dr.
Ferrara’s testimony due to an alleged conflict of interest. We
hold that the district court’s ruling was well within its
discretion.
A.
Skidmore argues that the district court erred in
concluding that the deposit copy of “Taurus” defines the
scope of the protected copyright under the 1909 Act and that
sound recordings of “Taurus” as performed by Spirit could
not be used to prove substantial similarity. Because the
copyright of “Taurus” was registered in 1967, the 1909 Act
applies. See Twentieth Century Fox Film Corp. v. Entm’t
Distrib., 429 F.3d 869, 876 (9th Cir. 2005) (considering
infringement claims under the 1909 Act because the
copyrighted work “was published before the January 1,
1978, effective date of the 1976 Copyright Act”). We review
de novo legal questions such as the appropriate scope of
copyright protection. See Rentmeester, 883 F.3d at 1116.
The scope of copyright protection for musical works has
been in flux throughout the different versions of the
Copyright Act. In 1831, the Copyright Act of 1790 was
26 SKIDMORE V. LED ZEPPELIN
amended and copyright protection was extended to musical
compositions for the first time. Copyright Act of 1831,
4 Stat. 436 (1831) (repealed 1909). Musical protection
under the 1831 Act only extended to the sheet music itself.
See Goldstein v. California, 412 U.S. 546, 564 (1973).
Around the turn of the twentieth century, devices called
piano player rolls were invented, which allowed songs to be
recreated mechanically on a piano. See White-Smith Music
Publ’g Co. v. Apollo Co., 209 U.S. 1, 10–11 (1908). In its
1908 White-Smith opinion, the Court held that the only
protected musical expression under the Copyright Act of
1831 was sheet music, and that infringement could only
occur by duplicating the sheet music. Id. at 17. Therefore,
the makers of piano player rolls did not infringe the
copyrights of musical composers. Id.Congress promptly enacted the Copyright Act of 1909.
Copyright Act of 1909, 35 Stat. 1075 (1909) (repealed 1978)
(the “1909 Act”). In this 1909 iteration, Congress made
clear that the scope of protection “[t]o print, reprint, publish,
copy, and vend the copyrighted work” under § 1(a) extended
to “any arrangement or setting of [the musical composition]
or of the melody of it in any system of notation or any form
of record in which the thought of an author may be recorded
and from which it may be read or reproduced.” 1909 Act
§ 1(e).
“Under the 1909 Act, an unpublished work was
protected by state common law copyright from the moment
of its creation until it was either published or until it received
protection under the federal copyright scheme.” ABKCO
Music, Inc. v. LaVere, 217 F.3d 684, 688 (9th Cir. 2000)
(quoting La Cienega Music Co. v. ZZ Top, 53 F.3d 950, 952
(9th Cir. 1995), superseded by statute on other grounds,
17 U.S.C. § 303(b) (1997)). A work could receive federal
SKIDMORE V. LED ZEPPELIN 27
copyright protection either through registration and
submission of a deposit copy, 1909 Act § 10, or through
publication, id. § 9. Distributing phonorecords did not
constitute publication under the 1909 Act, so musical
compositions were only published if the sheet music were
also published. 9 ABKCO, 217 F.3d at 688. Additionally, the
Copyright Office did not accept sound recordings as deposit
copies under the 1909 Act. See M. Nimmer & D. Nimmer,
1 Nimmer on Copyright § 2.05[A] (2017).
In 1972, Congress extended copyright protection to
sound recordings as separate copyrightable works from
musical compositions. 17 U.S.C. § 102(a)(7). The
Copyright Act was again amended in 1976 and this
amendment allowed musical composers to submit a
recording rather than sheet music as the deposit copy for a
musical composition. 17 U.S.C. §§ 407, 408 (1976).
Skidmore argues that under the 1909 Act, a deposit copy
is purely archival in nature, whereas Defendants argue that
for unpublished works, the deposit copy defines the scope of
the copyright. This is an issue of first impression in our
circuit as well as our sister circuits. One district court
considered the issue prior to this case and concluded that for
unpublished works under the 1909 Act, the deposit copy
defines the scope of the copyright. See Williams v.
Bridgeport Music, 2014 WL 7877773, at *6–10 (C.D. Cal.
9
We held in La Cienega that the sale and distribution of sound
recordings in phonorecords constituted a publication. 53 F.3d at 953.
After that decision, Congress passed a law stating that the distribution of
phonorecords before 1978 did not count as publication. 17 U.S.C.
§ 303(b). We subsequently held in ABKCO that La Cienega was an
incorrect statement of law and that § 303 retroactively applied. See
ABKCO, 217 F.3d at 691–92.
28 SKIDMORE V. LED ZEPPELIN
Oct. 30, 2014). On appeal, we declined to reach the issue.
Williams v. Gaye, 895 F.3d 1106, 1121 (9th Cir. 2018).
Skidmore argues that the express purpose of the 1909
Act was to overturn White-Smith and extend copyright
protection beyond sheet music. Specifically, Skidmore
relies on § 1(e), which extended copyright protection to “any
system of notation or any form of record in which the
thought of an author may be recorded.” § 1(e). But, as
Defendants point out, this actually defines the forms an
infringing copy can take, rather than the scope of what can
be copyrighted. § 1(a), (e). Therefore, although the 1909
Act clearly extended copyright law to protect against
infringement beyond mere reproduction of the sheet
music—in contravention of White-Smith—it did not clearly
state that copyrighted works could be anything other than
published sheet music or the musical composition
transcribed in the deposit copy. Indeed, “in order to claim
copyright in a musical work under the 1909 Act, the work
had to be reduced to sheet music or other manuscript form.”
Nimmer on Copyright § 2.05[A] at 2–62 (2017).
Skidmore also cites to a host of cases to support his
argument, but these cases are distinguishable. Skidmore
relies primarily on Three Boys, 212 F.3d at 486–87. In Three
Boys, appellants argued that because the deposit copy was
incomplete—contrary to the 1909 Act’s requirement that a
“complete copy” be deposited—subject matter jurisdiction
did not exist. Id. at 486. In response, we observed that an
expert had testified that the essential elements of the musical
composition were intact in the deposit copy; therefore we
declined to overturn the jury’s finding that the deposit copy
was “complete” because there was no intent to defraud and
any inaccuracies in the deposit copy were minor. Id. at 486–
87. Since Three Boys dealt with whether the deposit copy
SKIDMORE V. LED ZEPPELIN 29
adequately satisfied the “complete copy” statutory
requirement, it is not directly on point. Nonetheless,
Skidmore argues that we should extrapolate from language
in Three Boys that the expert “even played the deposit copy”
to conclude that a recording was also played, and that the
recording was used for purposes of evaluating substantial
similarity. Id. While the evidentiary presentation in Three
Boys may support Skidmore’s claim that typically sound
recordings have been used in infringement trials under the
1909 Act, our resolution of the “complete copy” issue did
not create binding precedent that copyright protection
extended to sound recordings under the 1909 Act. Id.Skidmore also relies on three other cases to support his
argument that copyright protection under the 1909 Act
extends beyond sheet music, none of which are helpful. One
of the cases cited by Skidmore concludes that a copyright
obtained via publication is not invalidated by failure to
deposit promptly a copy. Washingtonian Pub. Co. v.
Pearson, 306 U.S. 30, 41–42 (1939). The deposit copy
carries less importance for published works, however, so this
conclusion is not particularly instructive. 2 Nimmer on
Copyright § 7.17[A] (citing 17 U.S.C. § 704(d) for the
proposition that either the original or a copy of the deposit
copy must be kept for unpublished works). Unlike for
unpublished works, a deposit copy is not necessary to secure
copyright in published works. 1909 Act § 9.
The other two cases both deal with copyright issues
under the 1976 Act. See Bridgeport Music, Inc. v. UMG
Recordings, Inc., 585 F.3d 267, 276 (6th Cir. 2009); Nat’l
Conference of Bar Examiners v. Multistate Legal Studies,
Inc., 692 F.2d 478, 482–83 (7th Cir. 1982). Neither of these
cases help us determine whether the deposit copy for
unpublished works defines the scope of copyright protection
30 SKIDMORE V. LED ZEPPELIN
under the 1909 Act. The 1976 Act includes a provision
providing that federal copyright protection attaches upon
fixation of a work to any tangible medium, which can
include a sound recording. 17 U.S.C. § 102(a). This
provision, however, was not a part of the 1909 Act. As a
result, although it makes sense in the context of the 1976 Act
to look at a recording for evidence of what the composition
includes because federal copyright protection attaches when
the work is recorded, it makes significantly less sense to do
so for the 1909 Act.
The cases Defendants offer in support of their argument
are also not directly on point. Some do not pertain to the
1909 Act, which is problematic for the reasons discussed
above. See, e.g., White-Smith, 209 U.S. at 15–16; Merrell v.
Tice, 104 U.S. 557, 558 (1881). More persuasive are the
cases that, in the context of discussing the current copyright
scheme, opined that one of the purposes of the deposit
requirement is to provide “sufficient material to identify the
work in which the registrant claims a copyright.” Data Gen.
Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1161–
63 (1st Cir. 1994); see also Nicholls v. Tufenkian
Import/Export Ventures, Inc., 367 F. Supp. 2d. 514, 520
(S.D.N.Y. 2005). These cases support Defendants’
contention that the deposit copy defines the scope of the
copyright, but as in Three Boys the ultimate holding in these
cases was that minor errors in the deposit copy do not
invalidate a copyright. See Data Gen. Corp., 36 F.3d at
1163.
As further support for their position, Defendants contend
that the treatment of deposit copies under the 1909 Act
supports their argument that for unpublished works, the
deposit copy defines the scope of the copyright. The 1909
Act prohibits the destruction of the deposit copies of
SKIDMORE V. LED ZEPPELIN 31
unpublished works without notice to the copyright owner.
See 1909 Act §§ 59–60; Report of the Register on the
General Revision of the U.S. Copyright Law at 81 (1961).
Additionally, the Register of Copyright’s policy is to retain
access to unpublished works for the full copyright term. See
Report of the Register on the General Revision of the U.S.
Copyright Law at 80–82 (1961). 10
We are persuaded that for unpublished musical works
under the 1909 Act, the deposit copy defines the scope of the
copyright. Overall, the structure of the 1909 Act
demonstrates that the deposit copy encompasses the scope of
the copyright for unpublished works, as the deposit copy
must be filed not only to register the copyright, but for the
copyright to even exist. The 1909 Act states that “copyright
may also be had of the works of an author of which copies
are not reproduced for sale, by the deposit, with claim of
copyright, of one complete copy of such work.” 1909 Act
§ 11 (emphasis added). Because the 1909 Act makes the
existence of copyright dependent on the deposit copy, it
makes sense that the deposit copy also defines the scope of
the copyright. It was not until the 1976 Act that common
law copyright was federalized and copyright attached at the
creation of the work. Recognizing the importance of deposit
copies for unpublished works, Congress and the Register of
Copyrights have taken care to ensure the preservation of
deposit copies. 1909 Act §§ 59–60; Report of the Register
on the General Revision of the U.S. Copyright Law at 80–82
(1961). Similarly, even under later versions of the Copyright
10
In the 1976 Act, Congress prohibited the destruction of deposit
copies of unpublished works during the copyright term unless a
reproduction had been made. 17 U.S.C. § 704(d). See H.R. Rep. No.
94-1476, 94th Cong., 2d Sess. 172 (1976) (recognizing “the unique value
and irreplaceable nature of unpublished deposits”).
32 SKIDMORE V. LED ZEPPELIN
Act, the purpose of deposit copies has been described as
providing a way “to identify the work in which the registrant
claims a copyright.” Data Gen. Corp., 36 F.3d at 1161–62.
Given that copyright protection under the 1909 Act did not
attach until either publication or registration, we conclude
that for unpublished works the deposit copy defines the
scope of the copyright.
Skidmore puts forth three policy arguments, but they do
not alter our conclusion as they do not override the weight
of the 1909 Act’s statutory scheme and legislative history.
First, Skidmore argues that it is challenging to compare a
sound recording of the infringing work to a deposit copy of
the infringed work. While many copyrighted works, such as
books, can be easily formatted to satisfy the deposit copy
requirement, musical works are not as well reflected in
deposit copies. This makes the intrinsic test for substantial
similarity especially challenging when comparing a deposit
copy to a sound recording, as the intrinsic test is concerned
with the general “total concept and feel” of a work. See
Three Boys, 212 F.3d at 485. Second, Skidmore argues that
our conclusion is biased against musicians who do not read
music and could not possibly have written the deposit copies
of their own songs. It is not uncommon for musicians who
are composing songs to not know how to read music.
Skidmore argues that for musicians who do not read music
it would be overly time consuming and expensive to make
accurate deposit copy sheet music going forward. For new
works, however, sound recordings can be deposited as the
deposit copy, so we are not overly concerned with the costs
of transcribing deposit copies for new compositions. See
17 U.S.C. §§ 407, 408. Finally, Skidmore raises the
question of whether a copyright claim would be provable if
a deposit copy were lost or destroyed. These policy
arguments do not undermine the statutory framework that
SKIDMORE V. LED ZEPPELIN 33
leads us to conclude that the deposit copy defines the scope
of a copyrighted work for unpublished musical works under
the 1909 Act. 11
B.
Skidmore argues that the district court erred by failing to
allow recordings of “Taurus” to be played to prove access.
This was an evidentiary ruling, which we review for abuse
of discretion. United States v. Hinkson, 585 F.3d 1247, 1267
(9th Cir. 2009). Although Skidmore’s counsel was
permitted to play recordings for Page outside the presence of
the jury, who was then questioned about them in front of the
jury, Skidmore argues that the jury could not assess Page’s
credibility without observing him listening to the recordings
and then answering questions about the recordings.
As the jury ultimately found that both Plant and Page had
access to “Taurus,” any error in precluding the recordings
was harmless. See United States v. Edwards, 235 F.3d 1173,
1178–79 (9th Cir. 2000) (stating that an evidentiary ruling is
reversed only if the error “more likely than not affected the
verdict”). As this issue will likely arise again at retrial, we
address whether the district court abused its discretion.
The district court excluded the sound recordings under
Federal Rule of Evidence 403, finding that “its probative
value is substantially outweighed by danger of . . . unfair
prejudice, confusing the issues, [or] misleading the jury
. . . .” Fed. R. Evid. 403. Here, the district court abused its
discretion in finding that it would be unduly prejudicial for
11
We leave open the possibility that where the deposit copy has been
lost or destroyed, an original sound recording may be used as evidence
of the scope of the copyright under the 1909 Act.
34 SKIDMORE V. LED ZEPPELIN
the jury to listen to the sound recordings in order to assess
Page’s access to “Taurus.” The district court acknowledged
that the recordings were relevant to whether Page had access
to “Taurus,” as Page would have heard and allegedly copied
a recording of “Taurus.” The district court was concerned,
however, that allowing the jury to hear the recordings would
confuse them.
Skidmore argues that by not allowing the jury to observe
Page listening to the recordings of “Taurus,” the effect of the
court’s ruling was to decrease the probative value of
Skidmore’s questioning of Page. Although the jury could
still draw conclusions and inferences from Page’s demeanor
during his testimony, allowing the jury to observe Page
listening to the recordings would have enabled them to
evaluate his demeanor while listening to the recordings, as
well as when answering questions. Limiting the probative
value of observation was not proper here, as the risk of unfair
prejudice or jury confusion was relatively small and could
have been reduced further with a proper admonition. For
example, the district court could have instructed the jury that
the recordings were limited to the issue of access and that
they were not to be used to judge substantial similarity. See
United States v. W.R. Grace, 504 F.3d 745, 765 (9th Cir.
2007) (providing that “the court substantially
underestimated the . . . potential efficacy of a limiting
instruction”). Given the probative value of the information
and the relatively low risk of unfair prejudice, we conclude
that the district court abused its discretion in excluding the
evidence. See Fed. R. Evid. 403.
C.
Skidmore also argues that the district court abused its
discretion by failing to disqualify Defendants’ expert Dr.
Ferrara or to give a negative inference instruction to the jury
SKIDMORE V. LED ZEPPELIN 35
because he previously had been hired by Rondor to compare
“Stairway to Heaven” to the original recording of “Taurus.”
District courts have “broad discretion” in making
evidentiary rulings, including whether to allow expert
testimony. Campbell Indus. v. M/V Gemini, 619 F.2d 24, 27
(9th Cir. 1980). We thus review for abuse of discretion the
district court’s decision to allow expert testimony. See id.The district court did not abuse its discretion when it
denied Skidmore’s request for sanctions against Dr. Ferrara
and excluded his testimony. Skidmore’s motion was
rejected as untimely and improperly filed. Even if the
motion had been timely filed, the district court did not err in
denying the motion because there was no conflict that
merited monetary sanctions or exclusion of Dr. Ferrara’s
testimony. Skidmore argues that Dr. Ferrara effectively
switched sides in this case. We have held that when an
expert switches sides, the party moving for disqualification
must show that the expert in question has confidential
information from the first client. See Erickson v. Newmar
Corp., 87 F.3d 298, 300 (9th Cir. 1996). Here, even if Dr.
Ferrara switched sides, there was no showing that Dr.
Ferrara had confidential information. Rondor retained Dr.
Ferrara to obtain his opinion on two publicly available songs,
and he volunteered to share his conclusion with Skidmore.
While he did not produce a report from this prior
consultation, he did testify that he believed he
communicated his opinion telephonically to Rondor rather
than in a written report.
Additionally, there is no evidence presented that Dr.
Ferrara did switch sides. Rondor does not have an interest
in this case, nor does Universal Music, and Rondor waived
any potential conflict that might arise from having Dr.
Ferrara testify as an expert for Defendants. Skidmore
36 SKIDMORE V. LED ZEPPELIN
contends that Universal Music was working for Hollenbeck,
which owed a fiduciary duty to Skidmore as a publisher of
Spirit’s music. He presents no evidence, however, that
Hollenbeck owed a fiduciary duty to Skidmore. See Cafferty
v. Scotti Bros. Records, Inc., 969 F. Supp. 193, 205
(S.D.N.Y. 1997) (“In the absence of special circumstances,
no fiduciary relationship exists between a music publisher
and composers as a matter of law.” (citation omitted)). On
remand, in light of the current record, there is no basis for
excluding Dr. Ferrara’s testimony, giving an adverse jury
instruction, or imposing monetary sanctions.
V.
Defendants cross-appeal the district court’s denial of
their motions for attorneys’ fees and costs. In light of our
disposition, we vacate the district court’s denial of attorneys’
fees and costs under 17 U.S.C. § 505. In the event
Defendants’ prevail on remand, they may renew their
motions.
VI.
Given our disposition, we need not address the
remaining arguments raised by the parties. To be clear, we
do not consider whether the district court abused its
discretion in determining which version of “Taurus” to play
in response to the jury’s request during jury deliberations.
And, we do not address whether the district court’s
imposition of time limits violated due process. We note,
however, that strict time limits are generally disfavored at
trial. See Monotype Corp. PLC v. Int’l Typeface Corp.,
43 F.3d 443, 450 (9th Cir. 1994). Given the complex nature
of this case, we are troubled by the strict imposition of time
limits and the relative inflexibility of the district court once
Skidmore ran out of time. On remand, if the district court
SKIDMORE V. LED ZEPPELIN 37
again imposes time limits for the retrial it should ensure that
each side has adequate time to present its witnesses and
arguments.
VII.
We vacate the amended judgment in part and remand for
a new trial against Defendants because of the deficiencies in
the jury instructions on originality and the district court’s
failure to include a selection and arrangement jury
instruction. Additionally, although harmless in this instance,
we conclude that the district court abused its discretion by
not allowing the sound recordings of “Taurus” to be played
to prove access. Further, at any retrial, the district court
should reconsider whether an inverse ratio jury instruction is
warranted. The district court did not err, however, in
limiting the copyright of “Taurus” to its deposit copy or in
allowing Dr. Ferrara to testify. Finally, we vacate the order
denying Defendants’ motions for attorneys’ fees and costs.
Given our disposition, there is no need to address the
remaining issues raised by Skidmore.
VACATED in part and REMANDED for a new trial.
Appellant shall recover his costs on appeal.