There’s Now Less to Hate Hate Hate About That Swift Decision

When Is it Appropriate to Knock Out a Copyright Case Based on Lack of Substantial Similarity?

Last week, the Ninth Circuit Court of Appeals revised its opinion in the “Haters Gonna Hate” case, Hall v. Swift, which I blogged about recently. The main holding remains the same, i.e., Swift’s early victory was still reversed. But the Ninth Circuit removed its objectively foolish misunderstanding of Bleistein v. Donaldson Lithographing Co. That, in turn, make the opinion less foolish, though it doesn’t really change what’s troubling about it. It’s fairly common for the Ninth Circuit to revise its opinions (I’ve not seen it done much in other Circuits, though). No one knows what prompted this, but I’m guessing one of the judged read my blog post and immediately realized the mistake.

The Five Ages of a Lawsuit: A Tale of Trial and Discovery

What’s at issue is whether you can ever dismiss a copyright case at the “pleadings stage.” To explain why this is important, I need to explain the five main stages of a lawsuit:

Attorney and Client: Fortitude and Impatience, from a scene from Bleak House. Scanned by George P. Landow.

• Pleadings
• Discovery
• Pre-trial¹Strictly speaking, everything that happens between the pleadings and trial is “pre-trial,” and discovery is just the most important thing that happens during the pre-trial stage. Also, strictly speaking, the pleadings can be amended well after the “pleadings stage.” So these stages aren’t precisely delineated, but they’re useful.
• Trial
• Post-trial

We’re going to be most interested in the pleadings and discovery stages. “Pleadings” happen right at the beginning. The complaint is typically the most important pleading. Filing it starts off the case. Among other things, it must allege (not prove) facts (not just legalese) that, if taken as true, would mean the defendant is liable for the claims set forth in the complaint.²The plaintiff is not expected to have extrasensory powers, so if the plaintiff merely has a reasonable basis to believe something is so, it may allege that fact “on information and belief.” For example, if you honestly believe the defendant did something knowingly, you can allege, “On information and belief, the defendant carried out these actions knowingly.”

The defendant can challenge the sufficiency of these allegations, but with important limits. The defendant can’t (yet) challenge the truth of the allegations. It can only argue that, even if you accept all these allegations as true, the defendant would still win.³Normally, a defendant’s affirmative defenses can’t be used to attack the complaint, unless the plaintiff alleged facts in the complaint that make out the elements of an affirmative defense. This is rare, because plaintiffs will avoid alleging such facts, but it’s unavoidable. Thus, there’s really no point even litigating. This is known in federal court as a “rule 12(b)(6) motion,” after the Federal Rule of Civil Procedure that authorizes it.

Rule 12(b)(6) motions rarely succeed, and even when they do, courts normally allow the plaintiff to try to fix the problems with the complaint and try again. Thus, it’s often inadvisable to even bring a rule 12(b)(6) motion, if you think the flaws in the complaint are just because the plaintiff was inattentive. Your victory will be short lived.

If the defendant doesn’t want to challenge the complaint, it will need to “answer” the complaint and raise any affirmative defenses. It can also bring counterclaims back against the plaintiff, or even bring claims against third parties (“Maybe I did the thing, but I’m not wholly to blame.”). After those claims get answered, the pleadings stage is pretty much over.

What an Incredible Smell You’ve Discovered!

Discovery is the longest and is often the most expensive part of litigation. It’s certainly many times more expensive than the pleadings. It’s where the parties demand information from each other, show some of their cards, subpoena third parties and otherwise build up their case (and, alas, harass the living daylights out of each other). It has its own way of terminating a lawsuit before trial: the motion for summary judgment. Under this kind of motion, the court looks at what facts aren’t in dispute (which itself might be disputed!) and, taking those facts as true, decides whether the plaintiff can still win at trial.⁴More rarely, the plaintiff can move for summary judgment, but this is usually much harder. It’s thus a little bit like the rule 12(b)(6) motion: in both motions, you look at a universe of facts that regard as “true” (either because you just assume they are, or because the plaintiff has a reasonable shot at proving them to be true at trial), and decide whether the plaintiff can still win. And, again, the idea is: why litigate further when the plaintiff doesn’t stand a chance?

But in another sense, the difference between a rule 12(b)(6) motion and a motion for summary judgment is vast: expense. Not only are motions for summary judgment just take a great deal more effort to put together (and resist) than rule 12(b)(6) motions, but you have to go through all or a substantial portion of the discovery phase to even there. This is because the plaintiff has to have had a reasonable opportunity to build its case before the defendant can call it to account. And while that’s going on, there are countless skirmishes going on that, even if they don’t end up affecting the case, are a drain on coffers.

Thus, if the plaintiff has a lousy case, it’s better for everyone if we can knock it out early, at the pleadings stage.

The Jury Is In

But pushing against this idea is the right to a jury trial. When rule 12(b)(6) motion or a motion for summary judgment is granted, the case is taken out of a jury’s hands. Nearly every plaintiff’s goal is to “get to the jury.” Nearly every defendant’s goal is to avoid that. Juries are, rightly or wrongly, regarded as unpredictable, easily swayed by legally irrelevant but emotionally powerful arguments, and far too generous with damage awards. But the Bill of Rights guarantees the right to a jury trial for a reason. It brings an element of democracy into what is otherwise a pretty undemocratic place, the courtroom. If there were any fear that the judiciary was, say, too willing to protect fellow elites, the jury is a check on the judges. We also trust jurors to make judgment calls about the character and truthfulness of witnesses, and to make judgment calls about social standards (e.g., whether an accident is the result of negligence or just bad luck).

To briefly return to Ms. Swift’s case, her rule 12(b)(6) motion was granted by the trial court, and the Ninth Circuit reversed that. When the case returns to the trial court, discovery will kick off. I wouldn’t worry about Ms. Swift too much. She has resources. But not all defendants do. Many defendants (and not a few plaintiffs) will run out of resources before discovery is over.

How you feel about rule 12(b)(6) motions depends on how you balance these two interests: the right to a jury balanced against hanging onto your money and sanity.

Why Wait?

In copyright cases, there’s an important wrinkle: substantial similarity. Substantial similarity is the umbrella term for whether two works are similar enough to each other to constitute infringement. It’s poorly defined, perhaps undefinable. It’s a classic question for the jury because it involves one of those judgment calls.

But, surely, there are times the two works are so dissimilar that you don’t need a jury to say the similarities aren’t substantial enough. Normally, we’d wait for summary judgment to ask that sort of question. Normally, you’d need to engage in some discovery to shore up or attack the issue. But with substantial similarity, there often isn’t a need to wait. The two works at issue are made part of the complaint, and no amount of discovery will change what they are. A judge can review the two works as easily at the pleadings stage than at the close of discovery. Why not just let judge make the call early?

At a recent hearing in a case about The Shape of Water, a Ninth Circuit judge said it was a “kind of hubris” for a judge to dismiss a copyright claim at the pleadings stage. Rule 12(b)(6) motions, in her view, should be “very rare, and i would say it should be limited to the most frivolous of cases.” If you listen closely, you can just hear echoes of the foolish (and rescinded) version of Hall v. Swift: judges aren’t the ones to make artistic judgments. But the point she’s making isn’t foolish: substantial similarity is a jury question, so it should nearly always go to a jury.

But another judge at the hearing⁵There are three judges on an appellate panel. openly questioned whether discovery would change anything; i.e., there’s no reason for judges not the compare the works at the pleading stage. Otherwise, it’s just “a nice way that all these cases have to go to trial.”⁶This case is remarkable also because the plaintiff’s case was argued by well-known former Ninth Circuit judge.

Meanwhile, over the the Second Circuit (which includes New York), the courts there have no problems whatsoever granting rule 12(b)(6) motions in copyright cases. In this case, for example, the judge has little hesitation about supposing what an “average listener” would think when comparing the two songs at issue:

It Might Be Awful, but Awfulness Shouldn’t Be its Point

Judicial resources are limited, and Rule 12(b)(6) plays an important role in weeding out weak cases. At the same time, while litigation might be expensive and awful (often unnecessarily so), it is the way we have historically decided to resolve disputes in a way that attempts to be fair to both sides, and juries are an important part of that equation. No one has come up with a better alternative—and don’t say “arbitration.” Since we can’t quantify substantial similarity, there’s no real way to know if judges are more or less rational when deciding substantial similarity issues.

The bigger issue is that we just don’t know what we mean by “substantial similarity” or even what function we want it to perform. Make it too loose, and every work of certain genres will infringe on something. Make it too tight, and the powerful and well-connected will be permitted to cherry pick, and profit from, protectable elements from those trying to break in. Until we have a better grasp of his core copyright concept, we won’t really know when judges are right to step in at an early stage.

There are bigger issues than just substantial similarity at play: the entire notion that differently situated parties will be treated the same in civil litigation. Litigation has always been awful—Jarndyce v. Jarndyce anyone?—but the awfulness shouldn’t be its main point, and the main weapon of the more powerful parties. It is, at heart, an elaborately fair way to resolve civil disputes.

Thanks for reading!

Rick Sanders

Rick is currently General Counsel for Software Freedom Conservancy. Previously, he has been practicing law as an intellectual-property litigator since 2000.