GAME ON in the Southern District of New York

So were you surprised when you woke up on Thursday, June 20, 2019, to the news that Carrie Underwood & Co. are defendants in a federal copyright infringement action over the theme song to Sunday Night Football? Some would say that it is no surprise given that Underwood's team has been dragged into court before for the same reasons. Reports are that the most recent action ended in dismissal. But this time the court may be playing a different tune.

Of course, we are just learning about this case. All we have to consider for the time being is the Billboard analysis (which builds a case for infringement) and the complaint. The smart money says that this will not be my final blog post on this case, and there is certain to be a strong defense from all defendants.

All that having been said, here is what I think based on what I know:

The four plaintiffs are writers Heidi Merrill of California, Alex Wong of Nashville, Jeff Cohen of Nashville, and Niclas Lundin of Sweden. Merrill wrote a University of Nebraska anthem "Cornhusker Strong" in past years. In June of 2016, the four writers met here in Nashville to write and record "Game On". They posted it to YouTube in March of 2017. CBS Inside College Basketball featured "Game On" on a broadcast at about the same time.

In August of 2017, Merrill came to Nashville for a conference and introduction to Mark Bright, producer for Carrie Underwood. At the time, "Oh Sunday Night" was the theme for SNF three years running. Bright invited Merrill to submit "Game On" for consideration, which Merrill did by email to Bright's assistant. No response initially. Merrill sends a follow-up email on October 30, 2017. Reply from Bright's assistant: "We're going to have to pass."

But this email exchange shows the important legal element of access. As the 2018 NFL season approached, NBC promoted a new theme song. Underwood performed "Game On" for the opener on September 6 of last year. The network featured it for all 17 weeks of the season. Writer credit to Underwood, Chris DeStefano, and Brett James. Those three, plus publishers Carrie-Okie Music, Warner/Chappell, and EMI; plus Mark Bright; plus NBC; plus the NFL, are the nine defendants in this case.

The complaint alleges that "Game On" as performed on SNF is "substantially - even strikingly - similar, if not identical ... in tempo, meter, time signature, rhythmic contours and patterns, melodic contours and patterns, hooks (including the shared key phrase of the chorus, "Game On"), note progression and use, and chord progression."

Of course, the plaintiffs are requesting money damages and injunctions against further infringing conduct. An additional request of interest is all of defendants' profits attributed to the infringing acts. This will require expert analysis and testimony at trial. It may be difficult to determine the exact goodwill and profits arising from "Game On". And this amount may not be high. How much money flows in from a new theme song? Does it really generate significant interest and viewership? 

There is not a lot of song infringement case law in the Second federal Circuit, which includes New York. Watch to see which other circuit analysis the trial court wants to follow if this suit proceeds to trial.

Access to the copyrighted work is important. The plaintiff writers did not process a registration with the United States Copyright Office until just last month, but they do make a strong case for access since Heidi Merrill met with Mark Bright and sent emails to his assistant. The purported copy must be "substantially similar" to the original. The Fourth federal Circuit uses a two-prong extrinsic and intrinsic inquiry.

"Extrinsic" is an objective inquiry that looks to specific and external criteria of substantial similarity. "Intrinsic" is subjective and measures "total concept and feel", centering on the impressions of a song's intended audience.

In our home Sixth Circuit, courts use a two-part test to determine substantial similarity. A court must identify which aspects of an artist's work are protectible by copyright and then determine whether the allegedly infringing work is substantially similar to those protected elements. Elements of a work which are not original to the authors must be filtered out. Then a jury must determine whether a lay observer would consider the works as a whole to be substantially similar. Even a small degree of copying may support a finding of substantial similarity in what is known as the "fragmented literal similarity" approach.