Positive Black Talk Inc. v. Cash Money Records Inc.

United States Court of Appeals
Fifth Circuit
F I L E D
REVISED JANUARY 13, 2005
December 17, 2004
IN THE UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT Charles R. Fulbruge III
Clerk
__________________

Case No. 03-30625
__________________

POSITIVE BLACK TALK INC, doing business as Take Fo’
Records, doing business as Take Fo’ Publishing

Plaintiff – Counter Defendant - Appellant

v.

CASH MONEY RECORDS INC; ET AL

Defendants

CASH MONEY RECORDS INC; TERIUS GRAY, also known as Juvenile

Defendants - Counter Claimants - Appellees
and

UMG RECORDINGS INC, Universal Records Inc merged into UMG
Recordings Inc; UNIVERSAL MUSIC AND VIDEO DISTRIBUTION CORP;

Defendants - Appellees

No. 03-30702

POSITIVE BLACK TALK INC, doing business as Take Fo’ Records,
doing business as Take Fo’ Publishing

Plaintiff - Appellee

v.

CASH MONEY RECORDS INC; ET AL

Defendants

CASH MONEY RECORDS INC; UMG RECORDING INC, Universal
Records, Inc; UNIVERSAL MUSIC AND VIDEO DISTRIBUTION CORP;
 TERIUS GRAY, also known as Juvenile

Defendants - Appellants

Appeals from the United States District Court
for the Eastern District of Louisiana

Before KING, Chief Judge, and SMITH and GARZA, Circuit Judges.

KING, Chief Judge:

This appeal arises out of a dispute concerning the popular

rap song Back That Azz Up. Plaintiff-Appellant Positive Black

Talk, Inc. filed this lawsuit against three defendants, alleging,

inter alia, violations of the United States copyright laws. The

defendants counterclaimed under the copyright laws, the Louisiana

Unfair Trade Practices Act, and theories of negligent

misrepresentation. After a jury trial, the district court

entered judgment in accordance with the verdict in favor of the

defendants on all of Positive Black Talk’s claims, as well as on

the defendants’ non-copyright counterclaims. The district court

awarded the defendants attorney’s fees only in relation to the

successful unfair trade practices counterclaim.

In this consolidated appeal, Positive Black Talk appeals the

judgment of the district court on the grounds that the court

erred in instructing the jury and in making several evidentiary

rulings. The defendants appeal the district court’s decision not

to award them attorney’s fees as the prevailing parties on

2
Positive Black Talk’s copyright infringement claim. We AFFIRM.

I. Factual and Procedural Background

In 1997, two rap artists based in New Orleans, Louisiana--

Terius Gray, professionally known as Juvenile (“Juvenile”), and

Jerome Temple, professionally known as D.J. Jubilee (“Jubilee”)--

each recorded a song that included the poetic four-word phrase

“back that ass up.” Specifically, with respect to Jubilee, he

recorded his song in November 1997 and entitled it Back That Ass

Up. In the Spring of 1998, Positive Black Talk, Inc. (“PBT”), a

recording company, released Jubilee’s Back That Ass Up on the

album TAKE IT TO THE ST. THOMAS. Jubilee subsequently performed the

song at a number of live shows, including the New Orleans

Jazzfest on April 26, 1998.

Turning to Juvenile, at some point during the fall of 1997,

Juvenile recorded his song and entitled it Back That Azz Up. In

May 1998, Cash Money Records, Inc. (“CMR”), the recording company

that produced Juvenile’s album 400 DEGREEZ, signed a national

distribution contract with Universal Records. Consequently, 400

DEGREEZ, which contained Juvenile’s song Back That Azz Up, was

released in November 1998. 400 DEGREEZ quickly garnered national

acclaim, selling over four million albums and grossing more than

$40 million.

In 2000, Jubilee applied for and received a certificate of

registration (Form PA) from the United States Copyright Office

3
for the lyrics of Back That Ass Up. Jubilee also obtained a

certificate of registration for the lyrics and music (Form SR) in

the sound recording of the song. On February 15, 2002, PBT

mailed a supplementary application for registration (containing

an application, deposit, and fee) to the Copyright Office,

stating that PBT should have been listed as the author and

copyright claimant on Jubilee’s prior PA registration (lyrics

only). On the same day, PBT filed this lawsuit in the Eastern

District of Louisiana, alleging copyright infringement and the

violation of the Louisiana Unfair Trade Practices Act (LUPTA).1

On February 19, 2002, four days after the suit was filed, the

Copyright Office received PBT’s supplementary registration

application.

In response, the defendants filed counterclaims, alleging

copyright infringement, violation of LUPTA, and negligent

misrepresentation. On February 11, 2003, the defendants filed a

motion for summary judgment, in which they argued, inter alia,

that the district court should dismiss PBT’s lawsuit for lack of

subject matter jurisdiction because PBT failed to comply with the

statutory requirement that the Copyright Office receive the

1
PBT named as defendants Juvenile and CMR, as well as
several entities affiliated with Universal Records (collectively,
“Universal”). Juvenile and CMR are represented together by
counsel, who submitted a single set of briefs on behalf of the
two parties. Universal is represented independently and
submitted a separate set of briefs. For the purposes of clarity
and convenience, we refer to these parties collectively as the
“defendants.”

4
registration application before a plaintiff may file an

infringement suit. The district court denied the motion,

reasoning that the defect had been cured and that dismissing the

case after a year of litigation, only to have PBT re-file the

suit, would be a tremendous waste of judicial resources.

In May 2003, the case proceeded to a jury trial. Although

the jury found that PBT proved by a preponderance of the evidence

that it owned a copyright interest in the lyrics and music of

Jubilee’s song Back That Ass Up, it nevertheless found in favor

of the defendants on PBT’s copyright infringement claim.

Specifically, the jury found that: (1) PBT failed to prove that

Juvenile or CMR factually copied Back That Ass Up; (2) the

defendants proved that CMR and Juvenile independently created

Back That Azz Up; and (3) PBT failed to prove that Back That Azz

Up is substantially similar to Back That Ass Up.2 The jury also

decided against PBT on its non-copyright claim. In addition, the

jury found in favor of the defendants on their LUPTA and

negligent misrepresentation counterclaims. However, the jury

2
The defendants also argued at trial (and defend the
verdict on appeal on the ground) that PBT’s infringement claim
fails for the reason that the phrase “back that ass up” cannot be
copyrighted. This is so, according to the defendants’ argument,
because the phrase is not original and because the merger
doctrine precludes extending protection to a phrase that is
necessary to describe a particular thing--in this case, a dance
move. However, the jury did not reach these issues because it
was instructed not to make any findings on those points once they
resolved factual copying and independent creation in favor of the
defendants. We therefore do not address these claims.

5
found against the defendants on their copyright infringement

counterclaim. Accordingly, the district court entered judgment

in favor of the defendants. The court awarded the defendants

attorney’s fees in relation to their LUPTA counterclaim but not

for their successful defense of PBT’s copyright infringement

claim.

PBT then filed a timely notice of appeal. PBT argues on

appeal that the district court erroneously instructed the jury on

relevant copyright laws and erred in making several evidentiary

rulings.3 The defendants cross-appeal the district court’s award

of attorney’s fees, contending that they are entitled to fees for

prevailing against PBT on its copyright claim.4

II. Subject Matter Jurisdiction

The district court’s subject matter jurisdiction was based

on 28 U.S.C. §§ 1331 (federal question) and 1338 (copyright

laws). That broad underlying jurisdiction was supplemented by

the specific statutory provisions of the copyright laws.

Specifically, 17 U.S.C. § 411(a) sets forth the jurisdictional

prerequisite that “no action for infringement of the copyright in

3
PBT does not appeal the district court’s adverse judgment
on either its own LUPTA claim or the defendants’ LUPTA
counterclaim.
4
The defendants cross-appeal neither the judgment relating
to their copyright infringement counterclaim nor the jury’s
finding that PBT has a valid copyright interest in Back That Ass
Up.

6
any United States work shall be instituted until registration of

the copyright claim has been made in accordance with this title.”

17 U.S.C. § 411(a) (2000); see also Creations Unlimited, Inc. v.

McCain, 112 F.3d 814, 816 (5th Cir. 1997) (per curiam)

(“registration with the copyright office is a jurisdictional

prerequisite to filing a copyright infringement suit”). Although

some circuits require that a plaintiff actually obtain a

certificate from the Copyright Office before bringing suit, the

Fifth Circuit requires only that the Copyright Office actually

receive the application, deposit, and fee before a plaintiff

files an infringement action. See Lakedreams v. Taylor, 932 F.2d

1103, 1108 (5th Cir. 1991). Here, the defendants argue that PBT

failed to comply with the statutory formality set forth in § 411

(and that the district court therefore lacked jurisdiction over

PBT’s copyright infringement claim) because PBT filed suit four

days before the Copyright Office received its application,

deposit, and fee (all of which PBT had mailed on the same day it

filed suit).5

5
This argument was originally advanced by the defendants
in a motion for summary judgment that the district court denied.
We review challenges to a district court’s jurisdiction de novo.
Shepard v. Int’l Paper Co., 372 F.3d 326, 329 (5th Cir. 2004).
However, the defendants do not cross-appeal the district court’s
denial of their motion for summary judgment. Nevertheless, the
jurisdiction argument was raised again in the brief of CMR and
Juvenile. In response, PBT filed a motion to strike these
portions of CMR and Juvenile’s brief on the ground that they did
not file a cross-appeal on that ruling. However, we would have
considered the question of subject matter jurisdiction sua sponte
in the absence of such briefing. See Hill v. City of Seven

7
 We hold, along with the other courts that have considered

this matter, that the ultimate judgment is not rendered a nullity

in this instance by the district court’s refusal to dismiss PBT’s

suit for want of jurisdiction. Rather, we find that the

jurisdictional defect was cured when the Copyright Office

received PBT’s application, deposit, and fee four days after PBT

filed suit.

A number of other courts have found that a plaintiff who

files a copyright infringement lawsuit before registering with

the Copyright Office may cure the § 411 defect by subsequently

amending or supplementing its complaint once it has registered

the copyright. See, e.g., M.G.B. Homes, Inc. v. Ameron Homes,

Inc., 903 F.2d 1486, 1488-89 (11th Cir. 1990); J. Racenstein &

Co., Inc. v. Wallace, 1997 WL 605107, *1-2 (S.D.N.Y. Oct. 1,

1997) (“Where an action is commenced without registration being

effected, the defect can be cured by subsequent registration, and

an appropriate amendment to the complaint may be made to provide

Points, 230 F.3d 167, 169 (5th Cir. 2000) (recognizing that the
court must, if necessary, consider its subject matter
jurisdiction on its own motion). Thus, PBT’s motion is
functionally irrelevant with respect to the jurisdictional
question. However, to the extent that CMR and Juvenile argue
that PBT still has no valid copyright in Back That Ass Up, PBT is
correct that the issue is not properly before this court because:
(1) the jury found otherwise; (2) CMR and Juvenile did not file a
cross-appeal; and (3) deciding the matter against PBT would
“lessen[] the rights of [PBT].” See El Paso Natural Gas Co. v.
Neztsosie, 526 U.S. 473, 479 (1999). Thus, although we deny
PBT’s motion to strike portions of CMR and Juvenile’s brief, we
do not consider the defendants’ argument that PBT’s copyright is
invalid.

8
the necessary basis for subject matter jurisdiction.”);

ISC–Bunker Ramo Corp. v. Altech, Inc., 765 F. Supp. 1308, 1309

(N.D. Ill. 1990); Haan Crafts Corp. v. Craft Masters, Inc., 683

F. Supp. 1234, 1242 (N.D. Ind. 1988); Frankel v. Stein and Day,

Inc., 470 F. Supp. 209, 212 (S.D.N.Y. 1979). The notion that the

supplemental pleading cures the technical defect, notwithstanding

the clear language of § 411, is consistent with the principle

that technicalities should not prevent litigants from having

their cases heard on the merits.6 See 28 U.S.C. § 1653 (2000)

(allowing defective allegations of jurisdiction to be amended in

the trial or appellate courts); see also Haan Crafts Corp., 683

6
Our conclusion is not undermined by Harris v. Garner, 216
F.3d 970 (11th Cir. 2000) (en banc), in which the Eleventh
Circuit held that prisoners who file lawsuits may not supplement
their pleadings after their release to cure noncompliance with
§ 1997e(e) of the Prison Litigation Reform Act (PLRA). Although
§ 1997e(e) prohibits prisoners from bringing a civil action while
in custody without a showing of physical injury, the plaintiffs
in Harris filed suit, while still in prison, for non-physical
injury and then attempted to supplement their complaint after
their release to cure the § 1997e(e) defect. The Harris court,
strictly limiting its holding to prisoner cases, found that the
district court lacked jurisdiction because the plaintiffs were
prisoners at the time they filed the lawsuit and no supplement
could change that historical fact to cure the § 1997e(e) defect.
216 F.3d at 982-84. Crucial to the Harris court’s analysis was
its view that allowing a cure of the jurisdictional defect would
run contrary to the central congressional purpose in enacting the
PLRA, which was to reduce the number of prison lawsuits filed by
incarcerated prisoners who face little opportunity costs when
filing a lawsuit while in prison. Id. at 982-83. Thus, the
logic of Harris is inapplicable here because nothing suggests
that Congress viewed the pre-filing requirement in § 411 as
central to the purpose of the federal copyright laws. Cf. 2
MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT
§ 7.16[B][1][b][iii], at 7-164 (2004) [hereinafter NIMMER].

9
F. Supp. at 1242.

PBT did not amend its complaint in the court below.

Nevertheless, the Supreme Court has held, albeit in a non-

copyright case, that failure to amend a complaint in the district

court is no bar to finding a jurisdictional defect cured. See

Mathews v. Diaz, 426 U.S. 67, 73-76 (1976). In Diaz, the Supreme

Court upheld subject matter jurisdiction over a case in which the

plaintiff had not complied with a statutory formality requiring

him to file an application with the Secretary of Health,

Education, and Welfare before instituting a lawsuit. Id. The

Diaz Court stated:

We have little difficulty with Espinosa's failure to
file an application with the Secretary until after he
was joined in the action. Although 42 U.S.C. § 405(g)
establishes filing of an application as a nonwaivable
condition of jurisdiction, Espinosa satisfied this
condition while the case was pending in the District
Court. A supplemental complaint in the District Court
would have eliminated this jurisdictional issue; since
the record discloses, both by affidavit and
stipulation, that the jurisdictional condition was
satisfied, it is not too late, even now, to supplement
the complaint to allege this fact. Under these
circumstances, we treat the pleadings as properly
supplemented by the Secretary's stipulation that
Espinosa had filed an application.

Id. at 75 (internal citations and footnotes omitted). Similarly,

we consider PBT’s noncompliance with § 411 to be cured, even

though it did not file a supplemental complaint below.

Our conclusion that subject matter jurisdiction existed in

this case is also consistent with the Supreme Court’s decision in

10
Caterpillar Inc. v. Lewis, 519 U.S. 61 (1996). In Caterpillar, a

unanimous Supreme Court held that a procedural-jurisdictional

defect under 28 U.S.C. § 1441, which requires complete diversity

at the time of removal, had been cured when the non-diverse party

dropped out of the case after removal but before trial commenced.

519 U.S. at 73-75. The Court recognized that § 1441's

requirement that complete diversity exist at the time of removal

was not satisfied because the case was removed before the non-

diverse party dropped out. However, the Court found that the

§ 1441 defect should be excused--even though the “statutory flaw

. . . remained in the unerasable history of the case”--because:

(1) complete diversity jurisdiction ultimately existed before

judgment and (2) the case had already proceeded to judgment,

making “considerations of finality, efficiency, and economy . . .

overwhelming.” Id.; see also Grupo Dataflux v. Atlas Global

Group, 124 S.Ct. 1920, 1924-28 (2004) (reemphasizing that the

Court’s holding in Caterpillar pertained to curing a statutory

procedural-jurisdictional defect under § 1441).

The Court’s reasoning in Caterpillar applies to PBT’s

copyright infringement lawsuit because 28 U.S.C. § 1441 and 17

U.S.C. § 411 both have a substantive requirement as well as a

timing requirement. Section 1441 substantively requires complete

diversity, which must exist at the time of removal. In

Caterpillar, although the substantive requirement of complete

11
diversity was ultimately satisfied, the timing requirement was

not. However, because of judicial economy and finality concerns,

the Court excused the failure to comply with the timing element

of the statute. Similar to the removal statute at issue in

Caterpillar, § 411 has a substantive component and a timing

component--it requires the filing of a registration application,

which must occur prior to the institution of the suit. As in

Caterpillar, the substantive requirement here was satisfied

(because PBT filed a registration application, deposit, and fee),

but the timing element was not (because the Copyright Office

received the materials after PBT filed suit). Thus, Caterpillar

suggests that because PBT satisfied the substantive requirement

of § 411 before final judgment, “considerations of finality,

efficiency, and economy” counsel us to disregard the technical

defect in timing in this particular case. Caterpillar Inc., 519

U.S. at 75. Accordingly, the § 411 defect was cured, and subject

matter jurisdiction existed.

III. Jury Instructions on Copyright Law

A. Elements of Copyright Infringement

To establish a claim for copyright infringement, a plaintiff

must prove that: (1) he owns a valid copyright and (2) the

defendant copied constituent elements of the plaintiff’s work

that are original. Gen. Universal Sys. v. Lee, 379 F.3d 131, 141

(5th Cir. 2004); Szabo v. Errisson, 68 F.3d 940, 942 (5th Cir.

12
1995) (citing Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384,

387 (5th Cir. 1984)). To establish actionable copying (i.e., the

second element), a plaintiff must prove: (1) factual copying and

(2) substantial similarity. Bridgmon v. Array Sys. Corp., 325

F.3d 572, 576 (5th Cir. 2003). Factual copying “can be proven by

direct or circumstantial evidence.” Id. “As direct evidence of

copying is rarely available, factual copying may be inferred from

(1) proof that the defendant had access to the copyrighted work

prior to creation of the infringing work and (2) probative

similarity.”7 Peel & Co. v. Rug Market, 238 F.3d 391, 394 (5th

Cir. 2001). If a plaintiff establishes an inference of factual

copying (by showing access and probative similarity), the

7
This circuit adopted the term probative similarity in
Engineering Dynamics, Inc. v. Structural Software, Inc., 26 F.3d
1335, 1340 & n.4 (5th Cir. 1994), which credits Professor Alan
Latman with originating the term to resolve the confusion
resulting from many courts’ double use of “substantial
similarity” to describe both the similarity needed to prove
factual copying (i.e., what we term “probative similarity”) and
the similarity needed to prove that the copying is legally
actionable (i.e., what we term “substantial similarity”). See
also Alan Latman, “Probative Similarity” as Proof of Copying:
Toward Dispelling Some Myths in Copyright Infringement, 90 COLUM.
L. REV. 1187 (1990). A number of other circuits, including the
First, Second, Third, Tenth, and Eleventh, have also adopted the
term “probative similarity.” See, e.g., Dam Things From Denmark
v. Russ Berrie & Co., Inc., 290 F.3d 548, 562 & n.19 (3d Cir.
2002); Transwestern Pub. Co. v. LP Multimedia Mktg. Assocs.,
Inc., 133 F.3d 773, 775 (10th Cir. 1998); Ringgold v. Black
Entm’t Television, Inc., 126 F.3d 70, 75 (2d Cir. 1997); Bateman
v. Mnemonics, Inc., 79 F.3d 1532, 1541 (11th Cir. 1996); Lotus
Dev. Corp. v. Borland Int’l, Inc., 49 F.3d 807, 813 (1st Cir.
1995). The Ninth Circuit, among others, still uses “substantial
similarity” to describe the similarity needed for factual copying
as well as legally actionable copying. See, e.g., Swirsky v.
Carey, 376 F.3d 841, 844-45 (9th Cir. 2004).

13
defendant can rebut that inference, and thus escape liability for

infringement, if he can prove that he independently created the

work. Id. at 398; Miller v. Universal Studios, Inc., 650 F.2d

1365, 1375 (5th Cir. 1981). If a plaintiff has established

factual copying (and the defendant does not establish independent

creation), the plaintiff must also prove that the copyrighted

work and the allegedly infringing work are substantially similar.

Bridgmon, 325 F.3d at 577.

B. Standard of Review

PBT argues that the district court erred in instructing the

jury with respect to probative similarity, substantial

similarity, and independent creation. Where the challenging

party failed to preserve the error with proper objections, we

review the district court’s jury instructions only for plain

error. Russell v. Plano Bank & Trust, 130 F.3d 715, 719-21 (5th

Cir. 1997). The defendants argue that PBT did not preserve any

alleged error because PBT did not make specific, on-the-record

objections to the instructions in question. PBT counters that it

made general objections to the instructions on the record, and

that it made more specific objections off the record during a

conference in chambers.

We agree with the defendants that PBT failed to preserve the

error with respect to the jury instructions. See FED. R. CIV. P.

51(c)(1) (“A party who objects to an instruction or the failure

14
to give an instruction must do so on the record, stating

distinctly the matter objected to and the grounds of the

objection.”). First, PBT’s on-the-record objections pertained

only to the instructions as a whole, rather than indicating

specific objections, and therefore failed to comply with Rule 51.

See Russell, 130 F.3d at 719-20 (“We have repeatedly held that a

general objection to the district court’s jury instructions is

insufficient to satisfy Rule 51.”). Second, PBT’s off-the-record

objections, regardless of how specific, cannot satisfy Rule 51's

requirements. See id. at 720 n.2 (“Obviously, we cannot consider

off-the-record objections to jury instructions not subsequently

made part of the record . . . .” (quoting King v. Ford Motor Co.,

597 F.2d 436, 440 n.3 (5th Cir. 1979))). Thus, PBT did not

preserve the error, and we review the jury instructions for plain

error.

For PBT to prevail under the plain error standard, it must

show “that the instructions made an obviously incorrect statement

of law that was ‘probably responsible for an incorrect verdict,

leading to substantial injustice.’” Hernandez v. Crawford Bldg.

Material, 321 F.3d 528, 531 (5th Cir. 2003) (quoting Tompkins v.

Cyr, 202 F.3d 770, 784 (5th Cir. 2000)). Moreover, “[i]n

reviewing jury instructions for plain error, we are exceedingly

deferential to the trial court.” Tompkins, 202 F.3d at 784.

C. Factual Copying

15
 1. Definition of Probative Similarity

PBT first argues that the district court erroneously

instructed the jury with respect to the definition of “probative

similarity.” The court instructed that: “Probative similarity

means that the songs, when compared as a whole, demonstrate that

Juvenile or CMR appropriated Jubilee’s song.” PBT avers that

this definition is misleading because, by including the phrase

“when compared as a whole,” it suggests that the jury, when

deciding whether factual copying occurred, must look to see

whether Back That Ass Up, as a whole, is sufficiently similar to

Back That Azz Up, as a whole. As PBT points out, however,

probative similarity requires only that certain parts of the two

works are similar, such that the jury may infer factual copying

in light of the defendant’s access to the plaintiff’s work.

Regardless, PBT’s claim fails for at least three reasons.

First, we cannot say that the jury instruction on probative

similarity is “an obviously incorrect statement of law.”

Hernandez, 321 F.3d at 531. The definition of probative

similarity in the jury instruction is taken directly from a Fifth

Circuit case. See Peel & Co., 238 F.3d at 397 (“The second step

in deciding whether Peel has raised a genuine issue of material

fact regarding factual copying . . . requires determining whether

the rugs, when compared as a whole, are adequately similar to

establish appropriation.” (emphasis added)). Accordingly, PBT

16
did not show plain error because the definition of probative

similarity was not “obviously incorrect.” Hernandez, 321 F.3d at

531.

We note that the district court’s reliance on Peel to define

probative similarity is understandable given that other Fifth

Circuit opinions offer little additional guidance on the

question. Peel is undoubtedly correct inasmuch as it instructs

that the ultimate issue with respect to probative similarity is

whether the similarities between the two works suggest that the

later-created work was factually copied. Peel should not be read

to suggest that a jury may draw an inference of factual copying

only if the whole of the defendant’s work largely replicates the

whole of the allegedly-copied work.8 Rather, the “when compared

as a whole” language in Peel regarding probative similarity means

that the jury must consider the whole of the first work

(including both copyrightable and non-copyrightable parts) and

the whole of the second work and then compare the two works,

looking for any similarities between their constituent parts.

This reading of Peel is not inconsistent with any Fifth Circuit

precedent and is consistent with other courts’ conceptualizations

of probative similarity. See, e.g., Gates Rubber Co. v. Bando

8
Indeed, such an interpretation would lead to unreasonable
results, such as where one author includes an entire chapter in
his book that replicates verbatim another author’s book but then
argues that the jury cannot infer factual copying on the grounds
that, because the other twenty chapters are not similar, the two
works are not probatively similar.

17
Chem. Indus., Ltd., 9 F.3d 823, 832 n.7 (10th Cir. 1993); O.P.

Solutions, Inc. v. Intellectual Prop. Network, Ltd., No. 96

Civ.7952, 1999 WL 47191, at *3 (S.D.N.Y. Feb. 2, 1999).9

In order to avoid confusion, a district court should explain

that the purpose of the probative similarity inquiry is to

determine whether factual copying may be inferred and that this

inquiry is not the same as the question of substantial

similarity, which dictates whether the factual copying, once

established, is legally actionable. See Eng’g Dynamics, Inc. v.

Structural Software, Inc., 26 F.3d 1335, 1340 & n.4 (5th Cir.

1994) (adopting the term “probative similarity”) (citing Alan

Latman, “Probative Similarity” as Proof of Copying: Toward

Dispelling Some Myths in Copyright Infringement, 90 COLUM. L. REV.

9
As the O.P. Solutions court explained:

When evaluating probative similarity, a court should
compare the works in their entirety, including both
protectable and unprotectable elements. See
Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d
119, 123 (2d Cir. 1994). This is appropriate because
although the plaintiff must ultimately establish
infringement by showing that the defendant copied a
substantial amount of protectable elements, (i.e., meet
the “substantial similarity” standard), the fact that
non-protectable elements were copied, although not a
basis for liability, can be probative of whether
protected elements were copied (i.e., help establish
probative similarity). See Gates Rubber, 9 F.3d at 832
n.7 (explaining that the failure to consider
nonprotectable elements when evaluating the question of
actual copying deprives the court of “probative, and
potentially essential, information on the factual issue
of copying”).

1999 WL 47191, at *4.

18
1187 (1990)); see also Bridgmon, 325 F.3d at 576 & n.7, 577

(noting that “probative” and “substantial” similarity are

analytically distinct concepts). Along these lines, a jury may

find that two works are probatively similar if it finds any

similarities between the two works (whether substantial or not)

that, in the normal course of events, would not be expected to

arise independently in the two works and that therefore might

suggest that the defendant copied part of the plaintiff’s work.

See Ringgold v. Black Entm’t Television, Inc., 126 F.3d 70, 75

(2d Cir. 1997) (“[P]robative similarity[] requires only the fact

that the infringing work copies something from the copyrighted

work; . . . substantial similarity[] requires that the copying is

quantitatively and qualitatively sufficient to support the legal

conclusion that infringement (actionable copying) has

occurred.”); 4 NIMMER § 13.01[B], at 13-12 (“[W]hen the question

is copying as a factual matter, then similarities that, in the

normal course of events, would not be expected to arise

independently in the two works are probative of defendant’s

having copied as a factual matter from plaintiff’s work.”);

Latman, 90 COLUM. L. REV. at 1214 (noting that probative

similarities are “such similarities between the works which,

under all the circumstances, make independent creation

unlikely[;] [s]uch similarities may or may not be substantial. .

. . Rather, they are offered as probative of the act of copying .

19
. . .”).

The second reason PBT’s claim--that the language “when

compared as a whole” in the instruction on probative similarity

constituted reversible error--fails is because the district court

offered guidance to the jury that a finding of factual copying

only requires similarity between portions of the plaintiff’s

work, not overall similarity. For example, when the court first

introduced the element of factual copying (about ten sentences

before giving the instruction defining probative similarity), the

court stated, “[t]he first question, factual copying, asks

whether Juvenile and CMR actually copied constituent elements of

D.J. Jubilee’s song in Juvenile’s song Back That Ass Up.”

(emphasis added). The court also instructed the jury that: “If

you conclude that factual copying did occur, that is that

Juvenile/CMR copied parts of Jubilee’s song Back That Ass Up,

[the defendants may still prevail if they demonstrate independent

creation].” (emphasis added). Given these instructions, we

cannot agree that the definition of probative similarity of which

PBT complains was misleading in this particular instance.

Third, the jury’s findings on independent creation and

substantial similarity negate any reasonable possibility that the

probative similarity instruction was “probably responsible for an

incorrect verdict.” Tompkins, 202 F.3d at 784 (citing ARA Auto.

Group v. Cent. Garage, Inc., 124 F.3d 720, 730 (5th Cir. 1997)).

20
Even if the jury misunderstood its task in evaluating probative

similarity as a result of the instruction, it found that Juvenile

independently created Back That Azz Up and that the two songs are

not substantially similar. Those findings prevent PBT from

recovering, regardless of the extent to which it proved factual

copying occurred.

2. Inverse Relationship Between Access and Probative

Similarity

PBT also complains that it requested an instruction on the

inverse relationship between the degree of access an alleged

infringer had to the original work and the degree of similarity

needed to show that copying actually occurred. Specifically, PBT

asked that the jury be instructed that “PBT does not have to show

as much similarity when a high degree of access is shown.” The

defendants counter that this inverse-relationship doctrine is not

the law in the Fifth Circuit. PBT’s argument fails for several

reasons.

The defendants are correct that this circuit has not

expressly adopted the principle that there is an inverse

relationship between the requisite proof of access and

similarity, and there is no need to do so here. However, this

doctrine finds support in other circuits. See, e.g., Swirsky v.

Carey, 376 F.3d 841, 844-45 (9th Cir. 2004) (“Where a high degree

of access is shown, we require a lower standard of proof of

21
[probative] similarity.”); Jorgensen v. Epic/Sony Records, 351

F.3d 46, 56 (2d Cir. 2003) (“There is an inverse relationship

between access and probative similarity such that the stronger

the proof of similarity, the less the proof of access is

required.” (internal quotation marks omitted)); Tienshan v.

C.C.A. Int’l (N.J.), Inc., 895 F. Supp. 651, 656 (S.D.N.Y. 1995)

(noting: “given that access has been conceded, the level of

probative similarity necessary to show physical copying is

diminished”); see also 4 NIMMER § 13.03[D], at 13-79 (“[T]he

stronger the proof of similarity, the less the proof of access

that is required.”). Thus, other courts have held that a

plaintiff who shows a high degree of similarity may satisfy the

factual copying requirement with a lesser showing of access,10

and, conversely, a plaintiff who shows a greater degree of access

may satisfy the factual copying element with a lesser degree of

probative similarity.11

10
In fact, a plaintiff may establish factual copying
without any proof of access “when the similarity between
plaintiff’s and defendant’s works is sufficiently striking such
that the trier of fact may be permitted to infer copying on that
basis alone.” 4 NIMMER § 13.02[B], at 13-26 (footnotes omitted);
see also Jorgensen, 351 F.3d at 56. However, this does not mean
that the reverse is true--i.e., that a plaintiff can establish
factual copying by overwhelming proof of access without some
showing of probative similarity. See 4 NIMMER § 13.03[D].
11
Under the inverse-relationship doctrine, a greater level
of access reduces the level of probative similarity necessary to
demonstrate factual similarity, at least to the extent that the
plaintiff need not prove striking similarity when access is
shown. However, the degree of access never affects the ultimate
burden to show substantial similarity. Proof of access

22
 Regardless, the fact that this circuit has not explicitly

adopted this doctrine means that the district court did not

wrongly decline to give the jury instruction, and PBT’s argument

therefore fails. Finally, as we noted in the discussion of the

definition of probative similarity, any error with respect to

factual copying is rendered harmless by the jury’s finding on

substantial similarity, such that we cannot say that it was

probably responsible for an incorrect verdict.

D. Independent Creation

PBT also argues that the district court erred in instructing

the jury as to the defendant’s burden of proof in establishing

independent creation. Specifically, PBT argues that the court

instructed the jury that it must find independent creation by a

preponderance of the evidence, whereas the allegedly correct

burden of proof is clear and convincing evidence. On the issue

of independent creation, the court charged the jury:

If you conclude that factual copying did occur, that is

constitutes circumstantial evidence only of factual copying and
is irrelevant to the determination of whether that copying is
legally actionable (i.e., whether there is substantial
similarity). See 4 NIMMER § 13.03[D], at 13-81 (“Proof of access
can logically aid in showing copying as a factual matter--added
to the probative similarity that exists between two works, it can
bolster the proof that one was in fact derived from the other.
But access logically exerts no impact on copying as a legal
matter; no matter how steeped in plaintiff’s work defendant may
have been, if the resulting product is non-actionable as a matter
of law, then the absence of substantial similarity that must
underlie every successful claim still dooms the infringement
suit.”).

23
 that Juvenile/CMR copied parts of Jubilee’s song Back
That Ass Up, the defendants may still rebut PBT’s
claims that Juvenile copied D.J. Jubilee’s song by
introducing evidence that Juvenile or CMR independently
created Juvenile’s song. If defendants offer evidence
of independent creation, PBT has the burden of proving
that the defendants in fact copied the protected
material.

This instruction is silent as to whether the burden of proof must

be met by a preponderance of the evidence or by clear and

convincing evidence. However, the special verdict form asked:

“Has CMR/Juvenile proved by a preponderance of the evidence that

CMR/Juvenile independently created the song Back That Azz Up?”

The jury instruction on independent creation did not

constitute plain error. First, it cannot be considered an

obviously incorrect statement of the law. PBT points to no Fifth

Circuit opinion, and in fact none exists, stating that a

defendant must prove independent creation by clear and convincing

evidence. The only circuit opinion PBT cites is Overman v.

Loesser, 205 F.2d 521 (9th Cir. 1953). The Ninth Circuit,

however, has expressly rejected an interpretation of Overman that

would require independent creation to be proven by clear and

convincing evidence. Granite Music Corp. v. United Artists

Corp., 532 F.2d 718, 723-24 (9th Cir. 1976). A defendant need

only prove independent creation by a preponderance of the

evidence to rebut the presumption of factual copying that arises

from a plaintiff’s evidence of access and probative similarity.

See id. Thus, there was no legal error.

24
 Moreover, the district court’s instruction on independent

creation did not likely result in an incorrect verdict because a

defendant need only prove independent creation if the plaintiff

successfully establishes factual copying. Here, the jury

determined that Juvenile did not factually copy Jubilee’s song

when it found that the two songs were not probatively similar.

In addition, the jury’s finding on substantial similarity also

would have precluded PBT from recovering regardless of the jury’s

finding on independent creation. Thus, PBT’s argument fails

under the plain error standard.

E. Substantial Similarity

PBT’s last complaint regarding jury instructions relates to

the district court’s instruction on the definition of

“substantially similar.” The jury was instructed that:

Two works are substantially similar if the expression
of ideas in the plaintiff’s copyrighted work and the
expression of ideas in the defendant’s work that are
shared are substantially similar. The test for
expression of ideas is whether the intended audience
would find the total concept and feel of the two songs
to be substantially similar.

PBT complains that this instruction inadequately explains to the

jury the meaning of substantial similarity and is merely

tautological, essentially stating nothing more than that two

works are substantially similar if they are substantially

similar. Furthermore, PBT argues that the instruction

erroneously misleads the jury to conclude that they must

25
determine whether the whole of the two works are substantially

similar. Substantial similarity, PBT asserts, necessitates only

that parts of the songs are similar and that the similar parts

are qualitatively so important that the copying should be legally

actionable.12

12
The proposition that substantial similarity must take
into account the qualitative importance of the copied material to
the plaintiff’s work finds considerable support in other
circuits’ jurisprudence. See, e.g., Newton v. Diamond, 349 F.3d
591, 596 (9th Cir. 2003) (“The substantiality of the similarity
is measured by considering the qualitative and quantitative
significance of the copied portion in relation to the plaintiff’s
work as a whole.”); King v. Innovation Books, 976 F.2d 824, 829-
30 (2d Cir. 1992); Baxter v. MCA, Inc., 812 F.2d 421, 425 (9th
Cir. 1987) (“Even if a copied portion be relatively small in
proportion to the entire work, if qualitatively important, the
finder of fact may properly find substantial similarity.”). AS
NIMMER explains:

The question in each case is whether the similarity
relates to matter that constitutes a substantial
portion of plaintiff’s work--not whether such material
constitutes a substantial portion of defendant’s work.
The quantitative relation of similar material to the
total material contained in plaintiff’s work is
certainly of importance. However, even if the similar
material is quantitatively small, if it is
qualitatively important, the trier of fact may properly
find substantial similarity. . . . The trier must
ultimately determine the importance of that material
that is common to both parties’ works. . . . Even in a
musical composition, ordinarily, similarity must be
found in more than a brief and commonplace musical
sequence. . . . Although it could be safely said that
a similarity limited to a single note never suffices,
the superstition among many musicians that the copying
of three bars from a musical work can never constitute
an infringement is, of course, without foundation. . .
. The practice of digitally sampling prior music to use
in a new composition should not be subject to any
special analysis: to the extent that the resulting
product is substantially similar to the sampled
original, liability should result. The fact that the

26
 Addressing PBT’s latter argument first, we note that the

jury instruction, carefully parsed, did not unfairly suggest that

the jury must compare the two works as a whole to determine if

there is overall similarity between the two songs. The

instruction states that the “[t]wo works are substantially

similar if the expression of ideas in the plaintiff’s copyrighted

work and the expression of ideas in the defendant’s work that are

shared are substantially similar.” (emphasis added). The phrase

“that are shared” correctly indicates that the jury should

compare the parts of the two songs that are similar in

determining substantial similarity. We note that the instruction

given tracks the language suggested in Fifth Circuit opinions.

See Creations Unlimited, Inc., 112 F.3d at 816; see also

Bridgmon, 325 F.3d at 576. In Creations Unlimited, we stated:

“To determine whether an instance of copying is legally

actionable, a side-by-side comparison must be made between the

original and the copy to determine whether a layman would view

the two works as ‘substantially similar.’”13 112 F.3d at 816.

sampled material is played throughout defendant’s song
cannot establish liability, if that snippet constitutes
an insubstantial portion of plaintiff’s composition.

4 NIMMER § 13.03[A][2], at 13-47-50. District courts in this
circuit have also adopted this line of reasoning. See R. Ready
Prods., Inc. v. Cantrell, 85 F. Supp. 2d 672, 683 (S.D. Tex.
2000).
13
The Ninth Circuit applies a two-part test to
determining substantial similarity. See, e.g., Three Boys Music
Corp. v. Bolton, 212 F.3d 477, 485 (9th Cir. 2000). The first

27
Thus, whether two works are substantially similar is a question

for the jury itself to determine by examining the actual works in

question. See id. Here, the jury heard the two songs and made a

determination that they were not substantially similar. Given

the parallel between the jury instructions and the language in

these cases, the jury instruction was not error.

When we look at the evidence presented to the jury, the

verdict may be explained by the possibility that the jury

rejected PBT’s argument that the phrase “back that ass up” was

the qualitatively most important part (or “hook”) of Jubilee’s

song. That phrase recurred only a few times in Jubilee’s song,

which is over seven minutes long.14 Thus, the jury may have

part of the test, the extrinsic test, determines if there are
concrete similarities between two works based on objective
criteria. The second part, the intrinsic test, involves a
subjective determination by the jury. The Ninth Circuit,
however, does not differentiate between probative and substantial
similarity, and the two-part test, as applied in that circuit,
therefore does not parallel our jurisprudence. The test
articulated in Creations Unlimited is similar to the Ninth
Circuit’s intrinsic test, which is “subjective and asks whether
the ordinary, reasonable person would find the total concept and
feel of the works to be substantially similar.” Three Boys Music
Corp., 212 F.3d at 485 (internal quotation marks omitted); see
also Taylor Corp. v. Four Seasons Greeting Cards, LLC, 315 F.3d
1039, 1042-43 (8th Cir. 2003) (applying intrinsic test); Cavalier
v. Random House, Inc., 297 F.3d 815, 822 (9th Cir. 2002) (“The
intrinsic test is a subjective comparison that focuses on whether
the ordinary, reasonable audience would find the works
substantially similar in the total concept and feel of the
works.” (internal quotation marks omitted)).
14
PBT also concedes that song titles are not copyrightable
and therefore could not be considered by the jury in the
substantial similarity determination. Accordingly, the jury was
instructed to disregard the similarity between the titles in

28
believed that, as the defendants argued, the hook was the

sampling from the Jackson Five’s song I Want You Back,15 and that

belief would explain why the jury determined that the songs are

not substantially similar. Accordingly, we cannot say that the

jury instruction, even if it had been erroneous, probably

resulted in an incorrect verdict.

Finally, the jury found that Jubilee did not establish a

circumstantial showing of factual copying because the songs were

not probatively similar and that Juvenile independently created

Back That Azz Up. Thus, PBT failed to prove factual copying, and

PBT could not have prevailed on its copyright infringement claim,

regardless of whether the two songs are substantially similar.16

deciding the question of substantial similarity.
15
As we discuss below, the defendants offered evidence
that the sampling of the Jackson Five constituted a significant
portion of Back That Ass Up and was potentially the most
memorable part of the song.
16
We pause here to address an erroneous criticism, urged
at oral argument, of our logic in resolving PBT’s jury-
instruction challenges--namely, that we failed to account for the
cumulative effect of the asserted errors. With respect to each
purported error in the jury instructions, this court has reasoned
that the particular alleged error is not plain because, inter
alia, it did not probably result in an incorrect verdict. More
specifically, we noted that the jury found against PBT on other
grounds on which PBT would have had to prevail in order to
succeed on its infringement claim (i.e., error on probative
similarity is harmless because the jury found independent
creation and no substantial similarity; error on independent
creation is harmless because the jury found no substantial
similarity; and error on substantial similarity is harmless
because the jury found independent creation). None of our
findings, however, relies exclusively on the fact that the jury
found against PBT on other elements of an infringement action,

29
 IV. Evidentiary Rulings

A. Standard of Review

We review the district court’s evidentiary rulings for an

abuse of discretion. Kainda v. Gulf Coast Med. Personnel, LP,

363 F.3d 568, 581 (5th Cir. 2004). “An error in the exclusion of

evidence is not grounds for reversal unless substantial rights

are affected or unless the affirmance is inconsistent with

substantial justice.” Reddin v. Robinson Prop. Group Ltd P’ship,

239 F.3d 756, 759 (5th Cir. 2001).

B. The Big Easy Mailer

PBT argues that the district court abused its discretion by

excluding from evidence a promotional mailer circulated by Big

Easy (the “Big Easy Mailer”), the now-dissolved former

distributer of 400 DEGREEZ. The Big Easy Mailer, PBT claims,

proves that Juvenile composed Back That Azz Up after he heard

Jubilee’s Back That Ass Up because it lists ten songs on 400

DEGREEZ but does not include Back That Azz Up. PBT contends that

and this court would find no plain error with respect to each
challenged instruction regardless of the jury’s other findings.
PBT urges this court to consider the jury instruction errors
cumulatively, but “[a]bsent any particularized error, there can
be no cumulative error.” Williams v. Drake, 146 F.3d 44, 49 (1st
Cir. 1998). Furthermore, we note that PBT would have to prevail
on nearly all of its challenges to demonstrate plain error
because if the jury’s finding against PBT on any one necessary
element (probative similarity, independent creation, or
substantial similarity) stands, then PBT could not have recovered
and the error thus would not probably have led to an incorrect
verdict.

30
this document, in combination with two other documents that show

400 DEGREEZ was being re-released, proves that 400 DEGREEZ was

originally released without the song Back That Azz Up. Thus, PBT

argues, the Big Easy Mailer would have rebutted Juvenile’s claim

that he recorded Back That Azz Up before ever hearing Jubilee’s

song.17

The district court properly excluded the Big Easy Mailer

because it was both an unauthenticated document and hearsay not

within the business records exception. The only witnesses that

PBT produced who could testify with respect to the Big Easy

Mailer were Kenneth Taylor, a former employee of Big Easy who

worked as a telephone sales agent, and Earl Mackie, the founder

of PBT who received the Big Easy Mailer in the mail. In his

deposition, Taylor indicated that he was familiar with the basic

process of creating mailers (or one-sheets), which are sent to

retail record stores to solicit sales for new products. However,

he stated that he never worked in any capacity related to the

creation of mailers at Big Easy, and he had no personal knowledge

whatsoever with respect to the Big Easy Mailer. Taylor also

admitted that he could not say whether Big Easy created the

mailer or if someone else had created it. Mackie could testify

only that he received the Big Easy Mailer in the mail. None of

17
PBT offered no witness who could testify to ever seeing
or hearing an earlier version of 400 DEGREEZ that did not contain
Back That Azz Up.

31
this testimony establishes that the Big Easy Mailer is a document

that was created by Big Easy or that it had any connection with

Juvenile or CMR, which is what PBT claims the document purports

to be. Thus, the district court did not abuse its discretion in

finding that the Big Easy Mailer was not properly authenticated.

See FED. R. EVID. 901.

Furthermore, PBT sought to introduce the Big Easy Mailer to

prove the truth of the matter asserted in the mailer: that Back

That Azz Up was not included in an earlier release of 400 DEGREEZ.

This was hearsay under FED. R. EVID. 801 and was excluded under

FED. R. EVID. 802. PBT argues that the Big Easy Mailer falls

within the business records exception to the hearsay rule. See

FED. R. EVID. 803(6). “Rule 803(6) provides that [a]ny person in a

position to attest to the authenticity of the records is

competent to lay the foundation for the admissibility of the

records; he need not have been the preparer of the record, nor

must he personally attest to the accuracy of the information

contained in the records.” New Orleans Cold Storage & Warehouse

Co., Ltd. v. N.L.R.B., 201 F.3d 592, 601 n.9 (5th Cir. 2000)

(internal quotation marks omitted) (alteration in original).

However, as we have discussed, PBT offered no witness that

could attest to the authenticity of the Big Easy Mailer, and the

foundation for Rule 803(6) was therefore lacking. For example,

no witness could establish that the mailer was “made at or near

32
the time by, or from information transmitted by, a person with

knowledge.” FED. R. EVID. 803(6); see also Theriot v. Bay Drilling

Corp., 783 F.2d 527, 533 (5th Cir. 1986) (applying Rule 803(6)).

Furthermore, PBT points to no indicia of trustworthiness relating

to the Big Easy Mailer that might justify a more liberal

application of Rule 803(6). See United States v. Morrow, 177

F.3d 272, 295 (5th Cir. 1999) (per curiam) (“Rule 803(6) turns on

the reliability or trustworthiness of the records.”); United

States v. Duncan, 919 F.2d 981, 986 (5th Cir. 1990) (“The

district court has great latitude on the issue of

trustworthiness.”); Miss. River Grain Elevator, Inc. v. Bartlett

& Co., Grain, 659 F.2d 1314, 1318-19 (5th Cir. 1981).

Accordingly, the district court did not abuse its discretion in

excluding the Big Easy Mailer.

C. Expert Witness Testimony

PBT next complains that the district court erred by quashing

the subpoena of John Joyce, one of PBT’s expert witnesses, and by

excluding Joyce’s testimony because he refused to be deposed.

Gayle Murchinson, who had been retained as an expert for the

defendants, and Joyce are both professors at Tulane University.

Joyce is tenured; Murchinson is not. When Joyce learned that he

would serve on the committee that would evaluate Murchinson for

tenure, he decided to withdraw as an expert witness because he

believed that a conflict of interest existed. Accordingly, Joyce

33
did not appear at his scheduled deposition. Both PBT and the

defendants subpoenaed Joyce for deposition, but Joyce retained

his own counsel and moved to quash the subpoena. The magistrate

judge granted Joyce’s motion, and the district court affirmed.

The district court subsequently granted the defendants’ motion in

limine to exclude Joyce’s testimony because he refused to be

deposed. PBT appeals the district court’s decision to affirm the

grant of Joyce’s motion to quash and the defendant’s motion to

exclude.

We review the decision to quash a subpoena for abuse of

discretion. In re Dennis, 330 F.3d 696, 704 (5th Cir. 2003);

Tiberi v. CIGNA Ins. Co., 40 F.3d 110, 112 & n.4 (5th Cir. 1994).

FED. R. CIV. P. 45 provides that a court shall quash (or modify) a

subpoena if it “subjects a person to undue burden.” FED. R. CIV.

P. 45(c)(3)(A)(iv). Whether a subpoena subjects a witness to

undue burden generally raises a question of the subpoena’s

reasonableness, which “requires a court to balance the interests

served by demanding compliance with the subpoena against the

interests furthered by quashing it.” 9A CHARLES ALAN WRIGHT & ARTHUR

R. MILLER, FEDERAL PRACTICE AND PROCEDURE § 2463 (2d ed. 1995).

“[T]his balance of the subpoena’s benefits and burdens calls upon

the court to consider whether the information is necessary and

unavailable from any other source.” Id.

Here, the district court did not abuse its broad discretion

34
in determining that the subpoena subjected Joyce to undue burden

because of his believed conflict of interest. PBT has not shown

that the information that Joyce would have conveyed to the jury

was so necessary that it warranted his coerced participation in

the trial. Joyce had no personal knowledge relevant to the case

and was subpoenaed only to give his expert opinion. Furthermore,

the information that Joyce allegedly would have imparted to the

jury was not only available from other sources, it was actually

provided at trial by PBT’s other expert witness. Cf. Kaufman v.

Edelstein, 539 F.2d 811, 818-22 (2d Cir. 1976) (holding that

expert witnesses may be compelled to testify when their testimony

is unavailable from any other source and vital to the trial). As

PBT explains in its brief on the attorney’s fee issue:

The district court’s consideration of the testimony of
PBT’s expert, Harold Battiste, in evaluating PBT’s
claim is clearly understandable. Mr. Battiste, one of
the most knowledgeable, seasoned, and widely acclaimed
musician/conductor/composers ever to come from the
Southern United States staked his reputation on the
sufficiency of PBT’s claims by offering his well-
documented expertise. He explained that the musical
phrases in question are substantially similar, and are
exact in purpose, form, and importance in both songs.

In light of these factors, the district court properly decided

that the burden on Joyce was undue.18

18
Our conclusion is also guided by FED. R. CIV. P.
45(c)(3)(B)(ii), which provides that a district court may quash a
subpoena if it “requires disclosure of an unretained expert’s
opinion or information not describing specific events or
occurrences in dispute and resulting from the expert’s study made
not at the request of any party . . . .” Although it is
debatable whether this subsection of Rule 45 directly applies

35
 For similar reasons, the district court did not abuse its

discretion in granting the defendants’ motion in limine to

exclude Joyce’s testimony. The defendants were unable to depose

Joyce before trial, and it seems likely that Joyce would have

opposed any attempt to call him as a witness. Cf. Barrett v.

Atl. Richfield Co., 95 F.3d 375, 379-82 (5th Cir. 1996) (barring

expert testimony for failure to comply with scheduling order and

appear at depositions). Furthermore, PBT produced another

qualified expert witness, whose testimony largely replicated what

Joyce would have offered, thus negating any claim PBT might have

that its substantial rights were affected. See Polythane Sys.,

Inc. v. Marina Ventures, Int’l, Ltd., 993 F.2d 1201, 1208 (5th

Cir. 1993); Carter v. Massey-Ferguson, Inc., 716 F.2d 344, 349

(5th Cir. 1983) (holding that exclusion of evidence did not

affect party’s substantial rights when other, admitted evidence

served the same function). Accordingly, the district court did

not err with respect to Joyce’s testimony.

D. Music Critics’ Articles and Testimony

PBT also contends that the district court committed

reversible error by excluding, as hearsay, several newspaper

articles that purported to find strong similarities between

(because Joyce was originally a retained witness but then decided
not to testify), it is clear that the Rules furnish district
courts with the discretion not to compel unwilling experts to
testify as to their opinions under certain circumstances.

36
Juvenile and Jubilee’s songs. PBT argues that the articles are

not hearsay because they were not offered to prove that the two

songs are substantially similar (i.e., the matter asserted).

Rather, PBT claims, the articles were only offered to show that

“numerous members of the intended audience believed that the two

songs were substantially similar.”

The district court did not abuse its discretion in excluding

these newspaper articles. As we have noted previously, the

question of substantial similarity is typically left to the fact

finders’ own impressions. See Bridgmon, 325 F.3d at 576; Three

Boys Music Corp., 212 F.3d at 485; King v. Ames, 179 F.3d 370,

376 (5th Cir. 1999). Thus, a court could reasonably conclude

that the views of persons not on the jury and not qualified to

give an expert opinion on substantial similarity should not be

admitted.

Furthermore, the district court did not abuse its discretion

in excluding the testimony of the authors of these articles.

While such testimony would have cured a potential hearsay problem

with the articles, it would not have made the evidence any more

probative. In addition, the district court acted within its

broad discretion by excluding the testimony on the grounds that

PBT failed to include the witnesses on its pre-trial witness

lists and that the witnesses had not been deposed before trial.

See, e.g., Singer v. City of Waco, 324 F.3d 813, 822 (5th Cir.

37
2003).

E. Evidence of PBT’s Own Sampling

PBT’s final complaint regarding the district court’s

evidentiary rulings is that the court abused its discretion by

admitting the defendants’ evidence regarding the extent to which

Jubilee’s Back That Ass Up sampled music from a Jackson Five

song, I Want You Back. In its motion in limine, PBT requested

that the court “preclude defendants from introducing any

documentary evidence or examining any witness on the subject of

PBT’s use of the sound recordings or musical works of another in

connection with the creation of the music in its version of the

song Back That Ass Up.” The district court denied the motion.

At the beginning of trial, PBT renewed its objection regarding

“the use of the Michael Jackson unclean hands business,” and

stated that it “object[s] to anything along those lines.” The

defendants argue that the evidence of sampling was properly

admitted for two purposes: (1) to establish an unclean hands

defense and (2) to refute PBT’s claim that the phrase “back that

ass up” is the hook in Jubilee’s song. PBT argues that the

evidence was inadmissible under either theory and that the danger

of unfair prejudice substantially outweighed its probative value.

See FED. R. EVID. 403.

PBT is correct that the evidence was not admissible on the

ground that it established an unclean hands defense. The unclean

38
hands doctrine is used to defeat an undeserving plaintiff’s claim

for equitable relief against a defendant that he has injured.

See Mitchell Bros. Film Group v. Cinema Adult Theater, 604 F.2d

852, 863 (5th Cir. 1979) (“The alleged wrongdoing of the

plaintiff does not bar relief unless the defendant can show that

he has personally been injured by the plaintiff's conduct.”).

Because the defendants could not show that they were personally

injured by PBT’s sampling of the Jackson Five song, they had no

basis for invoking that sampling as the basis of an unclean hands

defense. See Alcatel USA, Inc. v. DGI Techs., Inc., 166 F.3d

772, 796 (5th Cir. 1999). Thus, the evidence should not have

been admitted on that ground.

However, the district court acted within its discretion in

admitting the evidence for the purposes of determining the hook

of Back That Ass Up. As we have already discussed, a relevant

issue for the jury to consider was the qualitative importance of

the parts of Jubilee’s song that are similar to Juvenile’s song.

PBT claimed that the similarities between the two songs included

the very heart, or hook, of Jubilee’s song. To counter this

claim, the defendants were entitled to offer evidence that the

hook of Back That Ass Up was not the four word phrase but rather

another element of the song--namely, the Jackson Five sampling.

The evidence showed that the Jackson Five sampling recurred

throughout a significant portion of Jubilee’s song (including

39
each time the phrase “back that ass up” was used) and that it was

a recognizable part of the song. Cf. Santrayall v. Burrell, 993

F. Supp. 173, 176 (S.D.N.Y. 1998) (excluding evidence of sampling

because it “comprise[d] only a very minor part of [the

plaintiff’s] song”). Henry Holden, a co-owner of PBT who added

the Jackson Five sample to Back That Ass Up, admitted that he

included the sample because it stayed in his mind. Further, the

fact that the sample came from a Jackson Five song was relevant

to the determination of the song’s hook because the considerable

popularity of the Jackson Five likely makes it more recognizable

to the audience. PBT has not shown that the introduction of the

fact that Back That Ass Up sampled a portion of the Jackson Five

song created a risk of unfair prejudice that substantially

outweighed this probative value. Accordingly, the district court

did not abuse its discretion in deciding that the probative value

of the sampling evidence outweighed any risk of unfair prejudice

or confusion. See Campbell v. Keystone Aerial Surveys, Inc., 138

F.3d 996, 1004 (5th Cir. 1998) (noting that FED. R. EVID. 403 “is

an extraordinary measure that should be used sparingly.” (quoting

United States v. Morris, 79 F.3d 409, 411 (5th Cir. 1996))).

PBT argues on appeal that the defendants could have

introduced evidence that the Jackson Five material was the hook

of Back That Ass Up without implying that the sampling was

40
unauthorized.19 PBT is correct that the fact that the sampling

was unauthorized is not probative of the question of the song’s

hook and that such information may have had a prejudicial effect.

In a more perfect world, the district court would have admitted

the evidence of sampling but would have either prohibited the

defendants from characterizing the sampling as unauthorized or

given a limiting instruction concerning the purposes for which

the jury could consider the evidence.20 See United States v.

Sanders, 343 F.3d 511, 518 (5th Cir. 2003) (“Under the Rule 403

standard, when the court issues a limiting instruction, it

minimizes the danger of undue prejudice.”). Regardless, any

potential error here is insufficient to warrant reversal. The

jury had before it more than ample evidence from which it could

have found in favor of the defendants, even if it had never heard

that the Jackson Five sampling was unauthorized. Thus, PBT’s

substantial rights were not affected by the admission of the

evidence, and we therefore find no reversible error.

V. Attorney’s Fees

19
In the district court proceedings, PBT never
distinguished between admitting the evidence of sampling and
allowing evidence that the sampling was unauthorized. Rather,
PBT only requested that the district court exclude all evidence
relating to sampling. The failure to raise this distinction
probably resulted from the parties’ focus on the unclean hands
defense before and during trial.
20
The district court, of course, would have had to reject
the defendants’ unclean hands defense in order to accept this
limitation on the admission of sampling evidence.

41
 The defendants separately appeal the denial of their

requests for attorney’s fees. Universal requested $323,121.25 in

fees, and CMR and Juvenile requested $263,040. Of those, CMR and

Juvenile traced $39,456 of their fees to their successful LUPTA

counterclaim, for which LA. REV. STAT. 51:1409(A) mandates they

receive fees as the prevailing parties. The district court

denied the fee requests for the successful copyright defense and

granted CMR and Juvenile’s request for the LUPTA fees at the

markedly reduced sum of $2,500.

This court reviews the district court’s refusal to award

attorney’s fees in a copyright infringement case for an abuse of

discretion. Creations Unlimited, Inc., 112 F.3d at 817.

A trial court abuses its discretion in awarding or refusing to

award attorney’s fees when its ruling is based on an erroneous

view of the law or a clearly erroneous assessment of the

evidence. Sanmina Corp. v. BancTec USA, Inc., 94 Fed. Appx. 194,

196 n.10 (5th Cir. 2004).

Section 505 of the Copyright Act provides: “In any civil

action under this title, the court in its discretion may allow

the recovery of full costs by or against any party other than the

United States or an officer thereof[;] [e]xcept as otherwise

provided by this title, the court may also award a reasonable

attorney’s fee to the prevailing party as part of the costs.”

17 U.S.C. § 505 (2000). As the district court below explicitly

42
recognized, an award of attorney’s fees to the prevailing party

in a copyright action, although left to the trial court’s

discretion, “is the rule rather than the exception and should be

awarded routinely.” McGaughey v. Twentieth Century Fox Film

Corp., 12 F.3d 62, 65 (5th Cir. 1994) (quoting Micromanipulator

Co. v. Bough, 779 F.2d 255, 259 (5th Cir. 1985)). Noting that

attorney’s fees should be routinely awarded, the district court

nevertheless exercised its discretion not to award such fees in

this case.

After McGaughey was decided, the Supreme Court decided

Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994). In Fogerty, the

Court rejected the Ninth Circuit’s “dual” standard of assessing

attorneys’s fees under the Copyright Act, under which “prevailing

plaintiffs are generally awarded attorney’s fees as a matter of

course, while prevailing defendants must show that the original

suit was frivolous or brought in bad faith.” 510 U.S. at 520-21.

Instead, Fogerty adopted the Third Circuit’s “‘evenhanded’

approach in which no distinction is made between prevailing

plaintiffs and prevailing defendants.” Id. at 521. The Supreme

Court reasoned that this was the better rule:

Because copyright law ultimately serves the purpose of
enriching the general public through access to creative
works, it is peculiarly important that the boundaries
of copyright law be demarcated as clearly as possible.
To that end, defendants who seek to advance a variety
of meritorious copyright defenses should be encouraged
to litigate them to the same extent that plaintiffs are
encouraged to litigate meritorious claims of

43
 infringement.

Id. at 527. However, the Court made clear that it was not

adopting the British Rule, under which prevailing parties--

whether plaintiffs or defendants--are always granted attorney’s

fees. See id. at 533 (“Petitioner argues that . . . both

prevailing plaintiffs and defendants should be awarded attorney’s

fees as a matter of course, absent exceptional

circumstances. . . . [W]e reject this argument for the British

Rule.”). The Court reasoned that the language of § 505 that the

court “may” award fees “clearly connotes discretion” and that

Congress legislated the Copyright Act against the “strong

background of the American Rule.” Id. Accordingly,

“[p]revailing plaintiffs and prevailing defendants are to be

treated alike, but attorney’s fees are to be awarded to

prevailing parties only as a matter of the court’s discretion.”

Id. at 534; see also Hogan Sys., Inc. v. Cybresource Int’l, Inc.,

158 F.3d 319, 325 (5th Cir. 1998).21

21
In Hogan Systems, this court stated:

[T]he case law of the [Fifth Circuit] is in accord with
the Supreme Court’s rule in Fogerty. Hogan would have
this court believe that the Fifth Circuit’s
“discretionary but routinely awarded” McGaughey
standard for attorney’s fees is the same as the British
Rule and thus has been rejected explicitly by the
Supreme Court. It is clear that this is not the case.
The language of Fogerty clearly allows for judicial
discretion in determining whether attorney’s fees
should be awarded. So does the McGaughey rule.

158 F.3d at 325.

44
 The Fogerty Court noted that “[t]here is no precise rule or

formula for making these determinations, but instead equitable

discretion should be exercised in light of the considerations we

have identified.” 510 U.S. at 534 (internal quotation marks

omitted). However, the Court agreed that a non-exclusive list of

factors may be used to guide the district court’s discretion;

this list includes “frivolousness, motivation, objective

unreasonableness (both in the factual and in the legal components

of the case) and the need in particular circumstances to advance

considerations of compensation and deterrence.”22 Id. at 534 n.19

(internal quotation marks omitted). The Fifth Circuit previously

applied these factors to deny a successful copyright defendant’s

request for attorney’s fees. Creations Unlimited, Inc., 112 F.3d

at 817 (“We see no abuse of discretion in the district court’s

rejection of the [defendants’] motion for attorney’s fees. The

court properly applied the Lieb factors . . . before denying the

[defendants’] motion . . . .”).

Here, the district court set forth the standard described

above, noting the text of § 505, the principle that fee awards--

although discretionary--are the rule rather than the exception

and should be awarded routinely, and that under Fogerty the

court’s discretion is guided by the non-exclusive list of Lieb

factors. The court then determined that in this case, those

22
The Third Circuit set forth these factors in Lieb v.
Topstone Indus., Inc., 788 F.2d 151, 156 (3d Cir. 1986).

45
factors suggested that attorney’s fees should not be awarded to

the defendants. Specifically, the court stated:

In addition to presiding over the [five] day trial of
this matter, the [c]ourt considered several complex and
potentially dispositive pre-trial motions. Having
gained an understanding of the applicable law and a
thorough appreciation of PBT’s claims, the [c]ourt does
not feel that this litigation was frivolous,
objectively unreasonable, or without proper motive.
PBT had a renowned music expert to support its position
even though the jury gave greater weight to the
testimony of Defendants’ expert. The [c]ourt is
convinced that PBT’s claims were brought in good faith.
Therefore, an award of attorney’s fees would not serve
to deter future meritless litigation brought by other
parties.

The defendants’ claim that the district court applied the

wrong legal standard is incorrect. The Supreme Court has

explicitly approved of a district court considering frivolity and

motivation as two of the multiple factors in a non-exclusive list

may guide the court’s discretion over attorney’s fees in

copyright cases. Fogerty, 510 U.S. at 535 n.19. Thus, to the

extent that the defendants argue that the district court erred in

considering these factors at all, they are unquestionably wrong.

Second, to the extent that the defendants argue that the district

court erred because it considered only frivolity and bad faith,

they are equally wrong. The district court did not focus solely

on whether the lawsuit was frivolous or brought in bad faith;

rather, the court expressly found that the claims were “not

objectively unreasonable,” and it provided a reasonable

46
explanation for this finding.23 Furthermore, the district court

considered the possible effect, or lack thereof, that awarding

fees would have on deterring future meritless lawsuits, and it

determined that this is a rare case in which awarding fees is not

appropriate. Finally, the defendants’ assertion that the

23
The defendants’ argument that PBT’s claim was per se
objectively unreasonable because the jury found in favor of the
defendants is without merit--to accept such an argument
necessarily would transform the discretionary rule into the
clearly rejected British Rule, under which a prevailing defendant
always recovers fees. In order for the rule to remain
discretionary rather than mandatory, a district court must be
able, under certain circumstances, to refuse to award fees.
Furthermore, although the district court, when denying the
defendants’ motion for summary judgment, noted that it doubted
that PBT would prevail at trial on the issue of whether the
phrase “back that ass up” was protectable under copyright laws,
the court later determined, after adjudicating a number of
substantive motions and hearing the full trial on the merits,
that PBT’s claim was not objectively unreasonable and that it did
not warrant attorney’s fees.

We note briefly a troubling aspect of Universal’s brief to
this court. After arguing that frivolity is not the appropriate
standard but rather that the court should consider the fact that
the defendants prevailed at trial, Universal states in its brief:
“The Universal Defendants prevailed on nearly every aspect of
PBT’s claim. When a plaintiff pursues claims without merit, the
‘failure of the district court to award attorney fees and costs
to the prevailing party will, except under the most unusual
circumstances constitute an abuse of discretion.’” (emphasis
added) (quoting Diamond Star Bldg. Corp. v. Freed, 30 F.3d 503,
506 (4th Cir. 1994)). Universal, however, omits critically
relevant language from Diamond Star. The Fourth Circuit actually
wrote: “Indeed, when a party has pursued a patently frivolous
position, the failure of a district court to award attorney’s
fees and costs to the prevailing party will, except under the
most unusual circumstances, constitute an abuse of discretion.”
Diamond Star Bldg. Corp., 30 F.3d at 506 (emphasis added). Given
Universal’s own vehemence regarding the distinction between
prevailing on the merits and frivolity (much less patent
frivolity), this type of misrepresentation is unacceptable.

47
district court improperly “might have been motivated by sympathy

for a small, locally-owned, family company” simply has no support

in the record. Therefore, the district court did not abuse its

discretion in concluding that the defendants were not entitled to

attorney’s fees under § 505 in this instance.

VI. Conclusion

For the forgoing reasons, in No. 03-30625 we AFFIRM the

judgment of the district court in favor of the defendants; in No.

03-30702, we AFFIRM the district court’s minute entry denying

defendants’ motions for award of attorney’s fees on the copyright

infringement claim. All outstanding motions are denied. Costs

in No. 03-30625 shall be borne by plaintiff; costs in No. 03-

30702 shall be borne by defendants.

48