Frank Coble accused Anita Renfroe of stealing his idea for a song and filed suit against her, alleging copyright infringement and the trademark law claims of unfair competition and false designation of origin. The district court granted Renfroe’s motion for summary judgment on both the copyright and trademark claims.
Facts. Coble and Renfroe are both comedians. Coble performs standup comedy and is also a full time artist. Renfroe is a full time professional singer, songwriter and comedian whose comedy is aimed at mothers. This brand of humor has been her forte since 1998.
Coble created a song entitled the “Mom Song” before July 2005 and first publicly performed the song on July 3, 2005. The song is based on his interactions with his mother. In June 2006, Coble performed the first four sentences of the song at an event Renfroe attended. Coble claims that he recited the rest of the lyrics to Renfroe after his performance.
Renfroe publicly performed and released a DVD of a song entitled “Momisms” in 2007. The song is a musical collection of all of the things Renfroe thinks a mother would commonly say to her children in a day.
Coble accused Renfroe of “stealing his idea” in April 2008 and started demanding compensation for Renfroe’s “Momisms” song. Coble filed suit against Renfroe in March 2011.
Summary judgment standard. Summary judgment will be granted when “the pleadings, discovery, affidavits and disclosure materials on file show that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law….The moving party is entitled to judgment as a matter of law when the nonmoving party fails to make a sufficient showing on an essential element of a claim in the case on which the nonmoving party has the burden of proof.” (Opinion pdf page 4).
Copyright claim. “A plaintiff alleging copyright infringement must show (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” (Opinion pdf page 4). The court assumed that Coble owned a valid copyright, so that the first prong of the test was satisfied.
The second prong of the test requires a plaintiff to show that the defendant copied something that was “original” to the plaintiff’s work. Copying can be established by either direct evidence or circumstantial evidence. Circumstantial evidence requires a showing of the defendant’s access to the plaintiff’s work and substantial similarity between the two works. The court evaluated the case using circumstantial evidence, since Coble did not present direct evidence of copying by Renfroe.
Access. Renfroe admitted to watching Coble perform a portion of his “Mom Song” at the event they both attended, but denied that Coble recited more of the lyrics to her after his performance. The conflicting evidence raised a question of fact regarding the extent of access. The court resolved this conflict in evidence in the non-moving party’s favor by assuming that Renfroe had access to the “Mom Song.”
Substantial Similarity. The court ruled that Coble did not demonstrate that his “Mom Song” and Renfroe’s “Momisms” are substantially similar and that Coble’s copyright infringement claim must therefore be dismissed.
At summary judgment, the substantial similarity test is an ‘extrinsic test’ that depends not on the responses of the trier of fact, but on specific criteria which can be listed and analyzed.
(Opinion pdf page 6).
The specific criteria examined by the court may include plot, themes, dialogue, mood, setting, pace, characters and sequence of events and when musical compositions are compared, may also include melody, harmony, rhythm, pitch, tempo, phrasing, structure, chord progressions, lyrics, genre, key and presentation.
Further, the court may compare only protectable elements and no other elements. For example, a familiar scene that is commonly used in literature is not a protectable element and may not be considered in a comparison.
The court found that the similarities between the two songs identified by Coble were non-protectable elements, such as bed making, food eating, room cleaning, going to bed, the chronology of starting in the morning and ending in the evening, and the broad theme of “motherly advice.”
The court found significant differences between the songs. Coble’s song is a rap, while Renfroe’s song is set to classical music – the William Tell Overture. Renfroe’s song is delivered at a faster tempo than Coble’s. The key and melody of the songs differ.
The court found that the form and substance of the songs differ, as well. Renfroe wrote her song from her personal perspective as a mother. Coble wrote his song based on his childhood experience. Coble’s song lists commands and consequences, while Renfroe’s song includes advice, commands, questions, observations, reminders and reasoning.
Trademark claims. Coble claimed that Renfroe infringed his “Mom Song” mark under a false designation of origin theory. False designation of origin is a misrepresentation of the source of a good or service. In other words, Coble claimed that Renfroe used his term “Mom Song” to identify her song. The court ruled that the term “Mom Song” is not a protectable mark and that Coble’s trademark infringement claim must be dismissed.
A claim for trademark infringement begins by analyzing whether the plaintiff has a protected mark. The level of trademark protection is divided into five categories – fanciful, arbitrary, suggestive, descriptive and generic. Fanciful and arbitrary marks receive the most protection, while generic marks receive no protection.
Generic marks give the general name of the product; they embrace an entire class of products and receive no trademark protection. To determine genericness, courts often refer to the ‘who-are-you/what-are-you’ test. While a valid trademark answers the former question, a generic mark answers the latter.
(Opinion pdf pages 9 – 10).
The court determined that “Mom Song’ is a generic mark and not protectable. That term could be used to refer to just about any song about motherhood. The term describes a type of product, rather than where it came from.
The court dismissed the action in its entirety.
This case is Coble v. Renfroe, No. C11-0498 RSM, Western District of Washington at Seattle.