It's a common fact pattern: A songwriter alleges that another songwriter has infringed the lyrics of Song A by using a similar short phrase, frequently a current slang phrase, in the lyrics of Song B. Claims like this do not often succeed because "words and short phrases such as names, titles, and slogans" are "not subject to copyright." 37 CFR §202.01.

So even though a short phrase like "just do it" might be protectable as a trademark, it is not copyrightable, and the mere presence of such a phrase in both Song A and Song B is not enough to make Song B an infringement, even if plaintiff proves access and copying. See, for example, Lessem v. Taylor, 766 F. Supp. 2d 504 (S.D.N.Y. 2011), in which the parties' works both included the phrase "this is how we do."

Against this background, the Ninth Circuit's October 28 decision in Hall v. Swift, No. 18-55426 (slip op.) (Swift) is an exception that proves the rule, or perhaps suggests a new rule altogether—it's not easy to tell. In Swift, the alleged infringer was superstar Taylor Swift, whose song "Shake It Off" included lines allegedly copied from a lyric in the song "Playas Gon' Play" ("Playas") by plaintiffs Sean Hall et al. "Playas," released in 2001, earned a place on MTV and the Billboard chart, was performed multiple times on national television, and the album that contained the track was certified platinum.

The lyrics of plaintiffs' song focus on "playas" and "haters," As the district court explained, "the terms 'playa' and hater together all revolve about the concept of 'playa haters'—a 'playa' being 'one who is successful at courting women,' and a 'playa hater' being 'one who is notably jealous of the playa's success.'"

The song "Playas" seems to assert that both playas and haters should be ignored, along with everyone else other than "me and you":

Playas, they gonna play / And haters, they gonna hate / Ballers, they gonna ball / Shot callers, they gonna call / That ain't got nothin' to do / With me and you / That's the way it is / That's the way it is.

In the chorus of Swift's No. 1 hit "Shake It Off" (2014), she sings:

Cause the players gonna play, play, play, play, play / And the haters gonna hate, hate, hate, hate, hate / Baby I'm just gonna shake, shake, shake, shake, shake / Shake it off / Shake it off /

Heartbreakers gonna break, break, break, break, break / And the fakers gonna fake, fake, fake, fake, fake / Baby I'm just gonna shake, shake, shake, shake, shake / Shake it off / Shake it off.

When litigation ensued, Swift moved to dismiss under Rule 12(b)(6) and asked the court to take judicial notice of other songs built around the terms "playa" (or "player") and "hater," all of which pre-dated plaintiffs' song. These included Playa Hata (Luniz, 1995) ("Why you wanna playa hate on me?"); Man U Luv To Hate (Sir Mix-A-Lot, 1996) ("Playas in the house can you feel me, Got these playa haters lookin' at me silly"); Playa Hater (Notorious B.I.G., 1997) ("We have, the playas, and we have, the playa haters"); Hater Players (Black Star, 1998) ("Yo-yo, yo-yo, later for these hater-players"); Don't Hate the Player (Ice-T, 1999) ("Don't hate the player"); Don't Hate the Player (Too Short, 2000) ("You think someone player hated").

The Central District of California took judicial notice of these works as Swift requested, and granted her motion to dismiss:

The concept of actors acting in accordance with their essential nature is not at all creative; it is banal. In the early 2000s, popular culture was adequately suffused with the concepts of players and haters to render the phrases "playas … gonna play" or "haters … gonna hate," standing on their own, no more creative than "runners gonna run," "drummers gonna drum," or "swimmers gonna swim."

The district court also rejected plaintiffs' argument that the combination of "playas, they gonna play" and "haters, they gonna hate" was sufficiently creative to warrant copyright protection: "two unprotectable elements that, given pop culture at the time, were inextricably intertwined with one another, is not enough."

On appeal, the Ninth Circuit reversed and remanded. In a brief, cryptic, non-precedential memorandum "not appropriate for publication," the unanimous panel faulted the district court for resolving the issue as a matter of law, because "[e]ven taking into account the matters of which the district court took judicial notice [citation omitted], Hall's complaint still plausibly alleged originality." The Ninth Circuit cited a single 1938 case for the proposition that the "question of originality … is one of fact, not of law," then quoted the famous words of Justice Holmes in Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251-52 (1903):

It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits.

Based on Bleistein, the court's whole analysis reads: "Justice Holmes' century-old warning remains valid. By concluding that, 'for such short phrases to be protected under the Copyright Act, they must be more creative than the lyrics at issue here,' the district court constituted itself as the final judge of the worth of an expressive work." But the district court said nothing about "worth"; it ruled on originality. The "worth" of the work in Bleistein did not turn on its originality, but whether it was fine art or "mere" commercial advertisement, the latter of which was unprotectable under the 1870 Copyright Act. Swift presents no such question, just one of originality.

And regarding originality, it is hard to see exactly how the Ninth Circuit's ruling fits in with the leading Supreme Court precedent on the issue, Feist v. Rural Telephone, 499 U.S. 340 (1991). First, in Feist the Supreme Court declared plaintiff's work unoriginal as a matter of law, as have many of Feist's progeny, so when Swift states that the originality question is "normally" a fact issue, citing one (pre-Feist ) decision, it overstates the case.  And the Ninth Circuit's focus on the phrase "expressive work" in Swift may be intended to distinguish the song lyrics in Swift from the purely factual compilation the Supreme Court addressed in Feist. Even if that were the court's intent, though, that distinction would represent a narrowing of Feist to its own facts, and no other court has ever suggested that Feist, with its explicit grounding in the text of the Constitution, is less than universally applicable to all works of authorship, whether factual or expressive.

But Feist also defined originality as requiring both that the work be "original to the author" and that it "possess more than a de minimis quantum of creativity," and it is for this point that Swift cites Feist, albeit in passing.  At the end of the day, Swift may just be saying that the panel believes the allegedly copied lyrics of "Playas" rise above the de minimis threshold laid down in Feist. Again, however, even assuming that to be the court's point, the district court's ruling seems premised less on the level of creativity of "Playas" in a vacuum and more on its incremental creativity relative to the prior playa/hater songs of which the district court took judicial notice. Since the song and the prior art were both properly before the court, what facts remain to be found on remand? Maybe experts could testify about whether the incremental creativity in "Playas," relative to the prior art, is more than de minimis? Isn't that "normally" a legal question?

Conclusion

About two weeks after the Swift ruling in the Ninth Circuit, Judge Analisa Torres in the Southern District of New York ruled on a 12(b)(6) motion to dismiss in Pickett v. Migos Touring, No. 18 cv 9775 (Nov. 12, 2019) (Migos), that the phrase "Walk it like I talk it" in plaintiff's song could not form the basis of a valid infringement claim against the defendant's use of the phrase in their song "Walk It, Talk It":

Because songwriters must be free to borrow sayings and expressions from popular culture, the Second Circuit and courts in this district have found that short and commonplace phrases are not protectable, even when used as the title or repeated lyrics of a song, as is the case here. See, e.g., Acuff-Rose Music, Inc. v. Jostens, Inc., 155 F.3d 140, 144 (2d Cir. 1998) (the phrase "you've got to stand for something, or you'll fall for anything" is too short and commonplace to be protected by copyright, even when sung repeatedly in plaintiff's song) … The only similarity between the two works at issue, the lyrics "walk it like I talk it," is not original to the author and is, therefore, not protected by the copyright laws. See Feist, 499 U.S. at 345. Plaintiff has not plausibly alleged facts that demonstrate that Defendants copied "original elements of plaintiff's copyrighted work."

It remains to be seen if the plaintiff in Migos will appeal the dismissal. But whether or not that occurs, and whether or not the Ninth Circuit's Swift ruling leads to a different result on remand in that case, it seems likely that this issue is not going away. Judges gonna judge.  But in the end, it might be juries who judge, with the added cost and uncertainty that always brings.

Robert W. Clarida is a partner in the New York law firm of Reitler, Kailas & Rosenblatt and the author of the treatise Copyright Law Deskbook (BNA). Robert J. Bernstein practices law in New York City in The Law Office of Robert J. Bernstein. He is a frequent author and lecturer on copyright law and litigation.