Francescatti v. Germanotta p/k/a Lady Gaga, No. 11 C 5270, Slip Op. (N.D. Ill. June 17, 2014) (Aspen, Sen. J.).
Judge Aspen granted defendants’ Fed. R Civ. P. 56 motion for summary judgment because no reasonable trier of fact could find defendant Lady Gaga’s song “Judas” substantially similar to plaintiff’s song “Juda.”
Local Rule 56.1
As an initial matter, the Court denied defendants’ motion to strike plaintiff’s responses to certain of defendant’s Local Rule 56.1 statements of fact because the Court did not rely upon any of them except one, which did not introduce new facts. That allowed the Court to avoid the parties’ “labyrinth of disputes.”
There was a question of fact as to whether defendants had access to plaintiff’s copyrighted song. While there was a dispute about whether defendant Gaynor, who worked with plaintiff on her song, ever came into contact with Lady Gaga, there was no dispute that Gaynor worked on both songs in dispute.
The Court granted summary judgment of no substantial similarity after recognizing that summary judgment of substantial similarity is generally disfavored. The Court then denied to apply the inverse ratio rule — requiring a higher standard of proof where evidence of access is relatively weak — because the Seventh Circuit explicitly decided not to endorse it. The Court then provided an excellent primer on the substantial similarity law.
a. Expert Testimony
The Court held expert testimony was warranted in this case because:
- The complexity of the music industry had increased significantly since the adoption of the subjective ordinary observer test.
- The Lady Gaga song was created with a Digital Audio Workstation (“DAW”) which can create thousands of sounds.
- The different music genres of the two songs also added to the complexity of the determination.
Although the Court allowed expert testimony and analyzed certain findings of the ordinary observer test, it was explicitly not using a higher standard of review than the ordinary observer test.
b. Extrinsic Test
The Court found the following similarities between the two songs:
- Similar titles;
- Both songs repeat in a monotone the similar words “Juda” or “Judas;” and
- Limited similarities in the breakdowns.
c. Intrinsic Test
The Court did not consider expert testimony or plaintiff’s opinion (because she was a musician) because they were not ordinary observers.
The Court did not follow the filtration method, instead considering the similarity of each song’s expression before removing non-copyrightable elements from consideration, noting that the Seventh Circuit has said either method is acceptable. The Court found an “utter lack of similarity”:
- It took expert analysis for the Court to see plaintiff’s distinctions;
- The songs do not have common lyrics;
- The themes are different; and
- They do not sound alike musically.
The Court, therefore, found the similarity of expression to be “totally lacking.” The Court also held that the individual elements were either not similar or not protectable.
Spitz v. Proven Winners N. Am., LLC, No. 11 C 3997, Slip Op. (N.D. Ill. Aug. 22, 2013) (Hart, Sen. J.).
Judge Hart granted defendants’ motion for summary judgment in this trade secret case involving alleged trade secrets identifying pet-friendly plants. Plaintiff alleged that defendants used plaintiff’s trade secret identification of pet-friendly plants without paying the agreed upon $.02 per pet-friendly plant sold. As an initial matter, the Court denied to strike either parties Local Rule 56.1 statements or responses. Each party claimed that the other did not comply with various portions of Local Rule 56.1, but to the extent the Court was able to understand and use the statements, it would do so without striking any party’s statements. The Court did, however, disregard extraneous facts included in plaintiff’s responses to defendants’ statements of fact, instead of in a Local Rule 56.1 additional statement of facts.
The Court held that plaintiff did not provide sufficient evidence that defendants’ association of a pet-friendly label with certain plants on its website came from plaintiffs’ trade secret information. Instead, the evidence suggested that the information was publicly available. The Court also granted defendants summary judgment as to plaintiff’s other non-IP contract and tort claims, but I will not detail those because they do not have significant IP implications.
Hearthware, Inc. v. E. Mishan & Sons, Inc., No. 11 C 5233, Slip Op. (N.D. Ill. Aug. 10, 2012) (Nolan, J.).
Judge Nolan granted defendant E. Mishan & Sons (“EMS”) motion for summary judgment on plaintiff Hearthware’s copyright, Lanham Act and related state law claims related to EMS’s alleged copying of Hearthware’s Nu Wave halogen oven and its related trademarks and infomercial. As an initial matter, the parties both failed to comply with the Local Rule 56.1 requirements for statements of fact and responses thereto, largely by failing to sufficiently support statements with citation to evidence.
While there were many similarities between the parties’ infomercials – two hosts hugging when they met, a chef knocking frozen food against a counter, and time-lapse photography of food cooking in the oven – for each allegedly copied element EMS offered proof of many infomercials before Hearthware’s that had the same elements. So, to the extent there was copying or at least similarity, those commonalities were unprotectable scenes a faire. And “threadbare” allegations of direct copying could not save the claim.
There was no likelihood of confusion between Hearthware’s NUWAVE and EMS’s SUPER WAVE marks. While both marks contain the term “wave” the marks are presented “entirely” differently. For example, EMS focuses upon its connection to Sharper Image. The similarities of the products – both halogen ovens – favored confusion, as did the fact that both parties sell their products nationally in similar locations. Neither party addressed the degree of care exercised by consumers. Hearthware’s mark was not strong in light of the sixteen other non-halogen ovens that have registered a mark with “wave” in it. There was no evidence of actual confusion. There was also no evidence that EMS was attempting to palm off its product as Hearthware’s. Balancing the factors, the Court held that any finding of likelihood of confusion would be improperly based upon conjecture. There was, therefore, no likelihood of confusion.
Without likelihood of confusion, summary judgment was warranted on all of Hearthware’s Lanham Act and related state law claims.