Leo Nocentelli, et al.
"Hand Clapping Song"
Nel Wyclef Jean and Jerry Duplessis
"My Love is Your Love"
The “defendant” (Bug Music) initiated this dispute by claiming that the authors of “My Love is Your Love”-- a song made popular by Whitney Houston’s recording of it in the late 1990’s -- infringed their “Hand Clapping Song,” which they wrote and recorded (as “The Meters”) nearly thirty years earlier. The “plaintiff” (authors of Houston’s “My Love”) brought this case seeking a summary judgment and costs.
The court granted summary judgment finding both the verbal and musical elements in question to be non-protectable material that existed in prior art, and the taking of which should be considered de minimus in any event. Bug Music claimed that their combination of these short verbal and musical elements amounted to protectable expression. The court disagreed, making an interesting reference to an earlier copyright dispute involving knit sweaters in which the combination of colorful stripes and images of squirrels and leaves did constitute protectable expression even though the constituent elements individually were not copyrightable. The court differentiated the finding in that case from the one at hand saying that while a consumer might think that the source of the two sweaters was the same, consumers (listeners) of “My Love is Your Love” would never think that the source of the disputed portions of this song was the same as that of “The Clapping Song”.
BMS Entertainment v. Bridges (2005) involved similar questions of musical prior art and the scope of protectable expression for brief rhythmic ideas. The same court (S.D. N.Y.) – albeit different judge – found in favor of the original defendant in that case also.
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Opinion by Judge Chin
In this copyright case, plaintiffs seek a declaratory judgment that their song "My Love Is Your Love" ("My Love") does not infringe defendants' copyright of the song "The Hand Clapping Song" ("HCS"). Plaintiffs move for summary judgment pursuant to Fed. R. Civ. P. 56 on their claim for a declaratory judgment holding that plaintiffs have not violated the copyright laws. Alternatively, plaintiffs request an order pursuant to Fed. R. Civ. P. 42(b) for separate trials on liability and damages. Defendants cross-move for partial summary judgment on the issues of the originality of HCS and access.
Defendants allege that the lyrical and musical excerpt at issue in My Love -- "Clap your hands, y'all, 't's'all right" (the "My Love Phrase") -- infringes the HCS copyright because HCS contains the lyrical and musical excerpt "Clap your hands now, people clap now" (the "HCS Phrase"). (Def. Resp. to Pl. 56.1 Stmt. PP 19, 20).
The HCS Phrase is unprotectible because it uses common musical and lyrical phrases that have been used in other recordings. In other words, the HCS Phrase lacks the requisite originality. Moreover, the phrases constitute only a de minimis portion of the songs. Only three words and notes in the HCS and My Love Phrases are identical. Overall the songs are different in sound and they convey different moods.
Accordingly, plaintiffs' motion for summary judgment is granted; no reasonable fact finder could conclude that My Love was copied, even in part, from HCS. I do not reach plaintiffs' motion to bifurcate or defendants' cross-motion.
The following facts are drawn from the record before the Court. The record includes declarations, recordings of HCS and My Love, expert reports, and deposition transcripts. All conflicts in the evidence have been resolved in defendants' favor.
Defendants and counterclaim plaintiffs Bug Music, Inc. ("Bug Music") and R & B Music LLC 1 ("R & B Music") license and market musical compositions. (Def. 56.1 Stmt. PP 1, 2). The HCS copyright was first registered in 1970 to Rhinelander Music, Inc. (Compl. P 20; Countercl. 2 P 13). In 1996, Rhinelander Music, Inc. assigned all of its interests in HCS to R & B Music, and Bug Music became administrator of R & B Music. (Countercl. PP 14, 15). Defendants own a valid copyright in HCS.
HCS was authored by four non-party individuals -- Leo Nocentelli, George Porter, Arthur Neville, and Joseph Modeliste -- who were members of the music group "the Meters." (Compl. P 21; Ans. P 16). The Meters, a rhythm and blues ("R & B") band formed in the 1960's, was popular in the 1960's and 1970's. Some considered it "the best new R & B group and the best R & B instrumental group" in 1967 and 1968. (Nocentelli Decl. P 3). The Meters are especially known for their strong influence on funk music in the 1970's. (Nocentelli Decl. P 3; Art Neville Decl. P 3). The Meters have recorded with many artists, including Robert Palmer and Paul McCartney, and the group performed with the Rolling Stones in 1975 and 1976. (Nocentelli Decl. P 6). The group has released numerous albums since 1969. (Id. at P 7). Fifteen musical compositions of the Meters have been sampled or interpolated by 45 different artists or groups. (Hirshland Decl. P 9).
The playing time of HCS is 2 minutes, 55 seconds. (Lepera Decl., Ex. O). The song begins and ends with the HCS Phrase. At the outset, the HCS Phrase repeats four times and the excerpt "clap your hands" repeats eight times for a total of about 23 seconds. At the end of the song, the HCS Phrase repeats five times and the excerpt "clap your hands" repeats nine times for a total of about 20 seconds. (Eskelin Rep. PP 6, 10, Lepera Decl., Ex. O).
The HCS Phrase contains the following nine pitches: C, B-flat, C, B-flat, G, F-sharp, G, B-flat, C. The accompanying scale steps are 1, flat-7, 1, flat-7, 5, sharp-4, 5, flat-7, and 1. (Lepera Decl. P 30; Eskelin Tr. at 122, 123). HCS is a funk song laced with percussion and strong guitar sounds. It is energetic and invites the listener to participate. The HCS Phrase has a staccato rhythm with short hand clapping accompanying the lyrics.
HCS was released as a single in 1970 and was recorded on five albums between 1970 and 2001. (Nocentelli Decl. P 8). The song enjoyed great fame. For example, it was listed as a top 50 R & B single for several weeks in 1970. (Nocentelli Decl. P 10; Art Neville Decl. P 8).
B. My Love
My Love is a recent hit song performed by Whitney Houston and is included on an album by Houston that bears the same name. My Love is authored by plaintiffs Nel Wyclef Jean and Jerry Duplessis -- both of whom are musicians, performers, and composers. (Compl. P 1, Ex. A; Def. Resp. to Pl. 56.1 Stmt. PP 1, 3). Plaintiffs Huss-Zwingli Publishing, Inc. ("Zwingli") and Te-Bass Music, Inc. ("Te-Bass") are music publishing entities respectively through which Jean and Duplessis own and control their music compositions. (Def. Resp. to Pl. 56.1 Stmt. PP 2, 4). The copyright for the words and music of My Love was registered in 1998. (Compl. P 14).
The playing time of My Love is 4 minutes, 15 seconds. (Lepera Decl., Ex. N). The My Love Phrase contains the following six pitches: C, B-flat, C, B-flat, G, B-flat. The accompanying scale steps are 1, flat-7, 1, flat-7, 5, and flat-7. (Lepera Decl. P 30; Eskelin Tr. at 133). As with HCS, My Love begins and ends with the phrase at issue. The song opens with a 13-second, four-time repetition of the My Love Phrase. The song ends with an eight-time repetition of the My Love Phrase that runs for 20 seconds. The My Love Phrase appears alone or as part of a repetition an additional 15 times. In total, the My Love Phrase covers 59 seconds of the playing time.
My Love was intended to be a "spiritual sounding ballad" with "an R & B vibe." (Jean Tr. at 19). The song has a reggae sound with a slow, smooth base line accompanied by soft percussion. In comparison to HCS, My Love does not invite the listener to clap hands along with the lyrics. Instead, it is an easy listening song. During the song, the My Love Phrase is sometimes sung in the background with overlapping lyrics.
Plaintiffs never sought permission to use any portion of HCS.
C. The Song's Similarities
The first three words in the HCS and My Love Phrases are identical -- both start with "clap your hands." (Eskelin Rep. P 6). The first three notes, including pitch and rhythm, in the phrases are identical as well. (Id.). These three notes and lyrics comprise the only portions identical in both songs. (Eskelin Tr. at 198, 279; Eskelin Decl. P 11).
D. Prior Art
The lyrics identical in both songs, "clap your hands," can be found in the biblical phrase "O clap your hands all ye people." (Ferrara Rep. at 5; Beavers Rep. at 2 (quoting Psalm 47:1, King James Version)). The lyrics can also be found in many songs, including "church anthems," "secular music," and "general entertainment related to applause." (Eskelin Tr. at 272-73, 316). For example, the following nine recorded gospel songs contain the lyrics "clap your hands": He is the Reason; I've Got Jesus; He'll Welcome Me; Benny Cummings Medley: Lift Him Up; The Kingdom Medley: Higher, Higher; Love Lifted Me; Working On a Building; Lift Your Head Up, Rejoice in the Lord; and The Only Way. (Ferrara Rep., Ex. B; see also Beavers Rep. at 3-4, 8 & Listening Exs. 1.2, 2.2, 2.3 & 4.1). The website for Broadcast Music, Inc. ("BMI") identifies 120 songs that include "clap your hands" in the title. (Ferrara Rep. at 5, Ex. C). A hymn written by Baroque English composer Henry Purcell (1659-1695) is entitled "clap your hands." (Id. at 5).
The melodic sequence that is identical in both songs and accompanies the lyrics "clap your hands" -- C, B-flat, C -- appears in "thousands" of "songs." (Eskelin Tr. 276-77). Those pitches matched with the rhythms in the HCS Phrase also create a common musical arrangement. (Eskelin Tr. 277).
II. Procedural History
At the end of 1999 and in January 2000, defendants sent letters to plaintiffs alleging that My Love infringed on the copyright of HCS. (Ans. PP 16, 18). In January 2000, defendants sent plaintiffs a letter demanding that plaintiffs cease and desist from continuing to violate copyright laws and compensate defendants for damages allegedly incurred. Defendants also threatened to file suit should plaintiffs continue their activities. (Ans. P 19). This suit followed. 3
Plaintiffs initiated this action on May 26, 2000 by filing a complaint seeking a declaratory judgment holding that My Love does not infringe defendants' copyright and, accordingly, that plaintiffs are entitled to reproduce, distribute, adapt, exploit, market, and sell My Love. Plaintiffs also seek attorneys' fees and costs.
On June 22, 2000, defendants filed an answer and counterclaim alleging copyright infringement. In the counterclaim defendants seek damages, profits resulting from any infringement, costs, attorneys' fees, and an injunction enjoining plaintiffs from violating copyright laws.
These motions followed
I. Summary Judgment Standard
Summary judgment will be granted when "there is no genuine issue as to any material fact and ... the moving party is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c); see Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 585-87, 89 L. Ed. 2d 538, 106 S. Ct. 1348 (1986). Accordingly, the court's task is not to "weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986). Summary judgment is inappropriate if, resolving all ambiguities and drawing all inferences against the moving party, there exists a dispute about a material fact "such that a reasonable jury could return a verdict for the nonmoving party." Id. at 248-49 (citing Adickes v. S.H. Kress & Co., 398 U.S. 144, 159, 26 L. Ed. 2d 142, 90 S. Ct. 1598 (1970)); accord Bay v. Times Mirror Magazines, Inc., 936 F.2d 112, 116 (2d Cir. 1991).
To defeat a motion for summary judgment, however, the nonmoving party "must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus., 475 U.S. at 586. There is no issue for trial unless there exists sufficient evidence in the record favoring the party opposing summary judgment to support a jury verdict in that party's favor. Anderson, 477 U.S. at 249-50. As the Court held in Anderson, "if the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Id. (citations omitted).
II. Copyright Infringement
A. Applicable Law
A party seeking summary judgment on a claim of non-infringement of copyright must establish that at least one element of the alleged infringement cannot be proven. Cantor v. NYP Holdings, Inc., 51 F. Supp. 2d 309, 311 (S.D.N.Y. 1999).
To prevail on a claim of copyright infringement, a copyright owner must prove two elements: "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Arden v. Columbia Pictures Indus., Inc., 908 F. Supp. 1248, 1257 (S.D.N.Y. 1995) (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S. Ct. 1282, 113 L. Ed. 2d 358 (1991)) (other citations omitted).
As to the first element, for the purposes of this motion, it is undisputed that defendants can establish valid copyright ownership to HCS.
The second element, copying, is comprised of two requirements: actual copying and improper appropriation. Actual copying may be established either by direct evidence or circumstantial proof that the alleged infringer had access to the protected work and that the allegedly infringing work bears a "probative similarity" to the copyrighted work. See Ringgold v. Black Entm't Television, Inc., 126 F.3d 70, 75 (2d Cir. 1997).
Once actual copying has been established, the copyright owner must then satisfy the "improper appropriation" requirement by demonstrating that "substantial similarities" as to the protected elements of the work would cause an average lay observer to "recognize the alleged copy as having been appropriated from the copyrighted work." Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 912 (2d Cir. 1980) (internal quotation and citation omitted). Careful scrutiny is necessary when the protected work contains unprotectible elements. See Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir. 1995) ("Where we compare [works] that contain both protectible and unprotectible elements, our inspection must be 'more discerning'; we must attempt to extract the unprotectible elements from our consideration and ask whether the protectible elements, standing alone, are substantially similar." (emphasis in original, citations omitted)). While "probative similarity" goes only to whether copying factually occurred and is largely a qualitative inquiry, "substantial similarity" is a more quantitative and qualitative assessment as to whether the copying is legally actionable. See Ringgold , 126 F.3d at 75. An analysis into the "substantial similarity" between the protected work and the allegedly infringing work "must be made on a case-by-case basis, as there are no bright line rules for what constitutes substantial similarity." Sandoval v. New Line Cinema Corp., 147 F.3d 215, 217-18 (2d Cir. 1998) (citing Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577, 127 L. Ed. 2d 500, 114 S. Ct. 1164 (1994)).
The copied elements of the work must be original and nontrivial to constitute improper appropriation. See Feist, 499 U.S. at 345 ("The sine qua non of copyright is originality."). For purposes of copyright law, "original" means that "the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity." Id. Common phrases are generally not protected by copyright. Stratchborneo v. ARC Music Corp., 357 F. Supp. 1393, 1405 (S.D.N.Y. 1973); see also Acuff-Rose Music, Inc. v. Jostens, Inc., 155 F.3d 140, 144 (2d Cir. 1998) ("The prior usage of the saying was sufficiently widespread as to make it exceedingly unlikely ... that [the song's author] had ... independently created the phrase.").
Notwithstanding proof that copying occurred, copying that is so trivial as to fall below the quantitative and qualitative threshold of substantial similarity will be considered de minimis and thus not actionable. Sandoval, 147 F.3d at 217 (quoting Ringgold, 126 F.3d at 74); see also Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, Inc., 166 F.3d 65, 71 (2d Cir. 1999) ("de minimis infringement of a copyrighted work is not actionable"). In making this determination, courts should consider "the amount of the copyrighted work that was copied." Sandoval, 147 F.3d at 217.
In the context of a copyright infringement claim, summary judgment may be granted when any similarities between the works relate only to non-copyrightable elements or when no reasonable jury could find the two works substantially similar. See Cantor, 51 F. Supp. 2d at 311 (citing Arica Inst. v. Palmer, 970 F.2d 1067, 1072 (2d Cir. 1992)); Arden, 908 F. Supp. at 1259.
In this case, the main issue is whether there was improper appropriation.4 As an initial matter, although defendants have identified the allegedly infringing excerpt in the My Love song to include the lyrics "Clap your hands, y'all, 't's'all right" and the accompanying music, it is undisputed that "clap your hands" and the accompanying note sequence C, B-flat, C comprise the only portions of the two songs that are identical. (Eskelin Tr. at 198, 279; Eskelin Decl. P 11). Moreover, a reasonable jury could only find that the other lyrics and music in the HCS and My Love Phrases are significantly different such that an average lay listener would not "recognize the alleged copy as having been appropriated from the [allegedly] copyrighted work." Durham Indus., 630 F.2d at 912. (See Eskelin Tr. at 278-79, 294). Accordingly, the infringement analysis that follows is applied only to the lyrics "clap your hands" and the three accompanying notes.
Although HCS is protected as a complete work, not every element of the song is per se protected. Rogers v. Koons , 960 F.2d 301, 307 (2d Cir. 1992) ("copyright protection extends only to those components of the work that are original"). Here, a reasonable jury could only conclude that the relevant excerpt of the HCS Phrase is not protectible because the sequence of the three notes and the lyrics lack the requisite originality.
As to the musical notes, the sequence C, B-flat, C commonly appears in music. (Eskelin Tr. at 276-77). Many songs contain a "mordent," which is a sequence of notes alternating from one note to a second note down one step and then returning to the first note. (Id.). Here, defendants' expert conceded at his deposition that "thousands" of "songs exist in the literature containing the melodic pitches C, B-flat and C." (Id.). In fact, the specific sequence C, B-flat, C is used as an example of a mordent in the Harvard Dictionary of Music. Harvard Dictionary of Music 540 (Willi Apel, The Belknap Press of Harvard University Press, 2d ed. 1997) (1944). Moreover, according to Eskelin, the pitches C, B-flat, C accompanied by the same rhythmic values found in the HCS Phrase commonly appear in music. (Eskelin Tr. 277). Because C, B-flat, C is a common musical sequence, a reasonable jury could only find that the authors of HCS did not create the musical excerpt, and, therefore, this musical phrase is not susceptible to copyright protection. Acuff-Rose , 155 F.3d at 144; Stratchborneo , 357 F. Supp. at 1405.
Similarly, a reasonable jury could only conclude that the lyrical excerpt "clap your hands" is not afforded copyright protection because the excerpt is a common phrase. The lyrics appear often in church anthems and secular music. (Eskelin Tr. at 272-73, 316; see Beavers Rep. at 3-8 & Listening Exs. 1.1, 2.1, 3.1 - 3.5). There are, for example, recordings of other songs with the same lyrics and theme. (Ferrara Rep., Ex. B; see also Beavers Rep. at 3-4, 8 & Listening Exs. 1.2, 2.2, 2.3 & 4.1). "Clap your hands" is even part of a biblical phrase. (Ferrara Rep. at 5; Beavers Rep. at 2 (quoting Psalm 47:1, King James Version)). Because the lyrical phrase appears frequently, a reasonable jury could only conclude that it is an element of HCS that is not protectible. Acuff-Rose, 155 F.3d at 144; Stratchborneo , 357 F. Supp. at 1405.
Defendants argue that the lyrics and accompanying music must be analyzed together and that because plaintiffs have failed to show prior art using the same lyrics and notes together, originality can be properly credited to defendants. The argument is rejected. First, the lyrical phrase and the three notes are so common and unoriginal that even when they are combined they are not protectible.
Second, the cases cited by defendants are distinguishable. Where, for example, the Second Circuit in Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 161 F.2d 406 (2d Cir. 1946), held that "the words and music of a song ... are as little separable for purposes of the copyright as are the individual musical notes which constitute the melody [,]" id. at 409, the Second Circuit was assessing copyright validity and ownership rather than substantial similarity in an infringement context.
In Acuff-Rose Music, Inc. v. Jostens, Inc., 988 F. Supp. 289, 295 (S.D.N.Y. 1997), aff'd, 155 F.3d 140, this Court found that the scope of the creator's copyright extended to his vocal rendition of unprotected lyrics. Such a finding, however, does not prove defendants' proposition here, that the combination of unprotected lyrics and unprotected notes creates one protected element.
M.H. Segan Ltd. P'shp v. Hasbro, Inc., 924 F. Supp. 512 (S.D.N.Y. 1996), abrogated on other grounds by Nadel v. Play-By-Play Toys & Novelties, Inc., 208 F.3d 368 (2d Cir. 2000), in which the Court relied on the Second Circuit's holding in Knitwaves, 71 F.3d 996. In its infringement analysis in Knitwaves, the Second Circuit considered the unprotected elements of the sweaters at issue, namely stripes and common colors, along with the original elements, such as the placement of leaves and squirrels. Knitwaves, 71 F.3d at 1003 (examining the "total concept and feel"). The Court concluded that "an observer viewing the sweaters side by side cannot help but perceive them as coming from one creative source." Id. at 1004. Here, however, a listener hearing the two phrases one after the other would not conclude that they came from the same source. Similarly, the finding in Stratchborneo , 357 F. Supp. 1393, that "initial focus should be placed on music and lyrics taken together" does not establish that unprotectible elements combined are per se protectible. Id. at 1405 (emphasis in original).
Because a reasonable jury could only find that "clap your hands" is a common lyrical phrase and the music accompanying is a common musical sequence, neither the lyrics nor the music could be found to be a protectible element of HCS. Likewise, no reasonable jury could find that the combination of the unprotectible lyrics and unprotectible music would create one protectible element. Accordingly, a reasonable jury could only find that there is no substantial similarity as to the protected elements under the average lay listener test and that there is no copyright infringement. Knitwaves, 71 F.3d at 1002; Durham Indus., 630 F.2d at 912.
2. De Minimis Copying
Even assuming that the HCS and My Love Phrases are protectible and that there was copying, a reasonable jury could only conclude that there was no infringement because the excerpts at issue are de minimis and trivial compared to the entire works. A jury could only find that copying the HCS Phrase alone is not actionable. See Stratchborneo, 357 F. Supp. at 1404-05 (No "substantial similarity [will] be found if only a small, common phrase appears in both the accused and complaining songs ... unless the reappearing phrase is especially unique or qualitatively important.").
Although the excerpts repeat throughout the songs, a jury could only find that the similarity of the songs is of "small import quantitatively and qualitatively." Williams v. Crichton, 84 F.3d 581, 588 (2d Cir. 1996); see Duffy v. Penguin Books USA Inc., 4 F. Supp. 2d 268, 273 (S.D.N.Y. 1998). First, the songs, taken as a whole, are substantially different. (Eskelin Decl. P 11). Second, the only identical portions of the two songs are the first three words and notes of the HCS and My Love Phrases -- common musical and lyrical phrases. (Id.).
An average lay listener would not "recognize [My Love] as having been appropriated from [HCS]." Durham, 630 F.2d at 912. Accordingly, a reasonable jury could not conclude that the plaintiffs copied defendants' work in violation of defendants' copyright.
For the reasons set forth above, plaintiffs' motion for summary judgment is granted. Plaintiffs' motion to bifurcate the case pursuant to Fed. R. Civ. P. 42(b) and defendants' motion are denied as moot. Plaintiffs' request for attorneys' fees and costs is denied. Plaintiffs shall submit a proposed judgment on notice on or before March 4, 2002.
Dated: New York, New York
February 25, 2002
United States District Judge
1 Although R & B Music LLC is the party named in the caption, various documents refer to R & B Music, Inc. rather than R & B Music LLC. For the purposes of this Memorandum Decision, R & B Music LLC and R & B Music, Inc. are used synonymously.
2 References to "Countercl." are to the counterclaim portion of the Answer, Counterclaim and Jury Demand of Defendants Bug Music, Inc. and R & B Music LLC. Because the document includes two sets of sequential paragraphs beginning with paragraph 1, references are made specifically to the answer or counterclaim portion of the document.
3 By letters to the Court in early July 2001, plaintiffs requested that the declaration and accompanying exhibits of defendants' expert Eskelin be stricken from the record on the grounds that this material was submitted in violation of the Court's orders. By Order dated July 9, 2001, I denied plaintiffs' request and stated that I would consider plaintiffs' objections when I decide these motions. Plaintiffs' objections are overruled, and I have considered Eskelin's declaration.
4 For the purposes of plaintiffs' motion only, plaintiffs concede that defendants can establish valid ownership of a copyright as well as a prima facie showing of actual copying. (Pl. Br. at 2 n.1). Defendants, in their cross-motion, move for summary judgment on the grounds that the HCS Phrase is original and protectible and that plaintiffs had access to defendants' work. Because I am granting plaintiffs' motion for summary judgment, I do not reach defendants' arguments as to access.
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