No Case Or Controversy In ISP's Declaratory Judgment Suit of NonInfringement

Windstream Services v. BMG Rights Management, 16-cv-5015 (S.D.N.Y. Apr. 17, 2017).

Plaintiff, an internet service provider (ISP), brought an action seeking a declaratory judgment of non-infringement based upon the DMCA's safe-harbor provisions.  Defendant is a music publisher.  The Court granted the defendant's motion to dismiss for lack of subject matter jurisdiction, finding that plaintiff sought an unauthorized advisory opinion (and even if the Court had subject matter jurisdiction, it would exercise its discretion and decline to hear the action).  "[Plaintiff] seeks a blanket approval of its business model, without reference to any specific copyright held by BMG or any specific act of direct infringement by any [plaintiff] subscriber."  The Court observed that the Southern District of California had rejected a nearly identical lawsuit in Veoh v. UMG, 522 F. Supp. 2d 1265 (S.D. Cal. 2007).  The complaint was hypothetical in nature.  Having dismissed the declaratory judgment clai, the Court declined to exercise supplemental jurisdiction over plaintiff's state law claim.

Copyright Ownership Claims Time-Barred For Songs Recently Sampled In Popular Songs

Wilson v. Dynatone Publishing, No. 16-cv-104 (S.D.N.Y. April 10, 2017).

For two songs from the 1970s that were recently sampled in popular songs, Plaintiffs sought a declaratory judgment judgment that they are the copyright owners of the sampled songs and that the defendants' copyrights are invalid, and Plaintiffs also sought an accounting.  The Court granted the defendants' motion to dismiss under Rule 12(b)(6).

The Court found that the copyright ownership claims were untimely and barred by the statute of limitations.  The claims accrued in the early 1970s.  The accounting claims, in addition to an absence of allegations of a fiduciary relationship, also were time-barred.

9th Cir. Certifies Questions To California Supreme Court in Pre-72 Sound Recording Case

FLO & EDDIE, INC. V. PANDORA MEDIA, INC., No. 15-55287 (9th Cir. Mar. 15, 2017).

In a case concerning whether California recognizes a common law copyright in the right of public performance for pre-1972 sound recordings, the 9th Circuit certified the following questions to the California Supreme Court:

1. Under section 980(a)(2) of the California Civil Code, do copyright owners of pre-1972 sound recordings that were sold to the public before 1982 possess an exclusive right of public performance?

2. If not, does California’s common law of property or tort otherwise grant copyright owners of pre-1972 sound recordings an exclusive right of public performance?

The certification is similar to the questions certified by the 2nd Circuit to the New York Court of Appeals in a companion case involving Sirius.  See fn. 2 and fn. 6.  The 9th Circuit stated:

We agree with our sister circuits that certification is the best way to proceed on these issues, especially in California. As an incubator of both musical talent and technological innovation, California has a significant interest in the appropriate resolution of the certified questions. Resolution of these questions will likely affect the state and industries within the state in a variety of ways, and is therefore best left to the California Supreme Court.

 

Marshall Tucker Band TM Action Dismissed Because Mark Not Used In Commerce

Marshall Tucker Band v. MT Industries, No. 16-420 (D. S.C. Mar. 1, 2017).

In an action by the Marshall Tucker Band alleging trademark infringement, dilution, declaratory judgment, and trademark cancellation under federal law and a host of state-law claims, the Court granted the defendants' Rule 12(b)(6) motion to dismiss because the complaint failed to allege that the defendant actually uses the mark in commerce.  Instead, the complaint relied upon statements made by the defendant  when it applied to register two federal trademarks consisting of the mark (The Marshall Tucker Band) to satisfy the use in commerce requirement.  The Court held: "Completely absent from the SAC are any allegations of Defendants’ actual use of the Mark in commerce. Inasmuch as registration of the Mark, without more, is insufficient to constitute a use in commerce, Plaintiffs’ federal trademark infringement claim fails as a matter of law."  The trademark dilution claim was dismissed for the same reason, and the Court declined to exercise supplemental jurisdiction over the remaining state law claims.

2nd Circuit Closes Out "Turtles" Pre-72 Sound Recording Case In Favor Of Sirius

Flo & Eddie, Inc. v. Sirius, No. 15-1164-cv (2d Cir. Feb. 16, 2017).

After the New York Court of Appeals answered the Second Circuit's certified question that New York common law does not recognize a right of public performance for creators of pre-1972 sound recordings, the Second Circuit reversed the district court’s denial of Sirius's motion for summary judgment and remanded with instructions to grant Sirius's motion for summary judgment and to dismiss the case with prejudice.  The Second Circuit noted that the answer to the certified question was determinative of the other claims.

Singer Ed Sheeran & Other UK Defendants Dismissed From Case, For Now, For Failure To Timely Serve

Griffin v. Sheeran et al., No. 16-cv-6309 (S.D.N.Y. Feb. 2, 2017) (Doc. 51).

Plaintiff was only able to serve two US-based defendants, notwithstanding the Court's prior order extending the time to complete service on the international defendants, and accordingly the Court dismissed the complaint (without prejudice) against all of the defendants -- including Ed Sheeran -- except for the two US-based Defendants who had been served (Warner Music Group and Atlantic Recording).  There was an additional US-based defendant (Sony ATV) that plaintiff did not even try to serve within Fed. R. Civ. P. 4(m)'s 90-day deadline (or the Court-granted extension), and the Court dismissed the case against that defendant.  Nor was any attempt made to serve certain of the UK-based defendants within the 90-day window.  Of the remaining UK-defendants, the Court dismissed the case under Fed. R. Civ. P. 4(f)'s "flexible due diligence" standard.

High School Music Teacher Has Qualified Immunity In "Glee" Copyright Case

Tresona Multimedia v. Burbank High School, 16-cv-04781 (C.D. Cal. Dec. 22, 2016).

In a case involving high school choir performances of four songs, the Court finds that the music director was protected by "qualified immunity" from the plaintiff's copyright infringement claims.  Additionally, the Court found that the plaintiff lacked standing to sue for copyright infringement with respect to three songs; and as to the fourth song at issue, summary judgment was denied due to questions of fact concerning the statute of limitations defense.

As to standing, the plaintiff's rights derived from less than 100% owners of the songs and under 9th Circuit law the plaintiff did not have exclusive rights in the songs and therefore lacked standing.  As to the three year statute of limitations, the Court found a question of fact whether the plaintiff should have known of the infringing activity.

Lastly, as to qualified immunity the Court recognized there was no binding 9th Circuit law on the matter (though some other district courts had considered the issue).  Deciding that the doctrine applied, the Court found that as a matter of law the music teacher was protected.

Blues Musician's Sampling Case Dismissed For Lack Of Jurisdiction In Illinois

Johnson v. Barrier et al., No. 15-3928 (N.D. Ill. Jan. 4, 2017).

The Court granted defendant's Rule 12(b)(2) motion to dismiss for lack of jurisdiction, without prejudice to refiling in another jurisdiction.  Plaintiff is a blues musician who alleges UMG and others intentionally misappropriated his song by sampling it in another group of songs (the "Juice Products").  After granting plaintiff limited jurisdictional discovery, the federal Court found that it did not have specific or general jurisdiction over the defendants under Illinois law.  The Court observed that " UMG’s wholesale shipments and sales of Juice Products within Illinois constituted only 1% of its total wholesale figures, and—as UMG’s corporate designee testified—none of the marketing associated with the Juice Products was specific to or otherwise targeted Illinois."  Having dismissed on jurisdictional grounds, the Court did not decide the defendants' motion to dismiss for failure to state a claim.

Rick Ross "Mastermind" Album Not Trademark Infringement Upon Cancelling Plaintiff's Registered Mark

Caiz v. Roberts, No. 15-9044 (C.D. Cal. Dec. 15, 2016).

Plaintiff rapper's trademark infringement claim against Rick Ross (and others) over Ross's album title "Mastermind" was dismissed at summary judgment because the Court found that Plaintiff's registered mark "Mastermind" was merely descriptive and had not acquired secondary meaning and therefore should be cancelled.  The Court also dismissed plaintiff's trademark dilution claim because the "Mastermind" mark was not famous, as required under the Lanham Act.  However, summary judgment was denied as to Defendant's trademark fair use defense.  Plaintiff's remaining claims were also dismissed.

No Common Law Right of Public Performance In Pre-72 Sound Recordings; Issue Is For Legistlature

Flo & Eddie, Inc. v Sirius XM Radio, Inc., 2016 NYSlipOp 08480 (N.Y. 12/20/2016).

New York's highest court, the Court of Appeals, holds that "New York common-law copyright does not recognize a right of public performance for creators of sound recordings," answering in the negative the Second Circuit's certified question in the Flo & Eddie (Turtles) case against Sirius satellite radio concerning alleged common law copyright infringement of pre-1972 sound recordings.  In a lengthy majority opinion authored by Justice Stein, the Court discussed the historical treatment of sound-recordings at both the federal and state level, analyzed prior decisions in both New York state court and the 2nd Circuit, and ultimately held that "New York common law does not recognize a right of public performance for creators of pre-1972 sound recordings" and that the state legislature should decide "whether recognizing a right of public performance in sound recordings is a good idea.

In addition to prior decisions, the Court addressed the practice of interested stake-holders in the music industry.

Indeed, it would be illogical to conclude that the right of public performance would have existed for decades without the courts recognizing such a right as a matter of state common law, and in the absence of any artist or record company attempting to enforce that right in this state until now. The absence of a right of public performance in sound recordings was discussed at the federal level for years and became acutely highlighted in 1971, upon enactment of the Sound Recording Amendment, and again in 1995, upon enactment of the DPRA. At those times, all interested parties were placed on notice of the statute's limited rights for post-1972 sound recordings. Although parties do not lose their rights merely by failing to enforce them, the fact that holders of rights to sound recordings took no action whatsoever to assert common-law protection for at least the past four decades — when the absence of a comprehensive federal right of public performance for sound recordings was clear — supports our conclusion that artists and copyright holders did not believe such a right existed in the common law.
***
Simply stated, New York's common-law copyright has never recognized a right of public performance for pre-1972 sound recordings. Because the consequences of doing so could be extensive and far-reaching, and there are many competing interests at stake, which we are not equipped to address, we decline to create such a right for the first time now. Even the District Court here, while finding the existence of a common-law copyright of public performance in sound recordings, acknowledged that such a right was "unprecedented," would upset settled expectations, and would "have significant economic consequences" (62 F Supp 3d at 352). Under these circumstances, the recognition of such a right should be left to the legislature.

Notably, the Court did not foreclose the plaintiffs' claims under other common-law theories of recovery, like unfair competition.

Finally, we note that sound recording copyright holders may have other causes of action, such as unfair competition, which are not directly tied to copyright law. Indeed, in the present case, plaintiff prevailed in the District Court on its causes of action alleging unfair competition and unauthorized copying of sound recordings. The Second Circuit concluded that defendant had copied plaintiff's recordings, but postponed the questions of fair use and unfair competition until after our resolution of the certified question (821 F3d at 270 n 4, 272). Thus, even in the absence of a common-law right of public performance, plaintiff has other potential avenues of recovery.

The concurring opinion, by Justice Fahey, agreed that the issue should be determined by the legislature but accepted the Second Circuit's invitation to opine on how to define "public performance" and stated

To that end, while I agree with the conclusion of my colleagues in the majority that the common law of this state does not recognize a right of public performance, I would answer the pertinent part of the certified question in the negative with this caveat: "public performance" does not include the act of allowing members of the public to receive the "on-demand" transmission of particular sound recordings specifically selected by those listeners.

Lastly, Justice Rivera dissented: "New York's broad and flexible common-law copyright protections for sound recordings encompass a public performance right that extends to the outer boundaries of current federal law, and ceases upon preemption by Congress."

"DJ Logic" Not Famous Enough to Win Trademark Case Against Rapper "Logic"

Kibler v. Hall, No. 15-2516 (6th Cir. Dec. 13, 2016).

The Sixth Circuit affirmed summary judgment for defendants, holding that a disc jockey named "DJ Logic" was not famous enough to succeed on his trademark dilution claims against the rapper performing as "Logic" and there was no likelihood of consumer confusion.  As to the trademark infringement claim, the parties agreed that the DJ's mark was protectable so the Court focused on "the likelihood that potential buyers of rap would believe Kibler’s music is Hall’s or vice-versa." and applied the 6th Circuit's balancing-test to find that "because no reasonable jury could find a likelihood of confusion based solely on a few instances of actual confusion, defendants are entitled to judgment as a matter of law on Kibler’s federal trademark infringement and related state law claims."  As to the dilution claim, 

Kibler’s evidence clearly falls short of the high threshold for fame under the Lanham Act. “DJ LOGIC” is simply in a different league from the marks that have met this threshold. Indeed, having failed to show that his mark is commercially strong for even trademark infringement purposes, Kibler cannot point to a triable issue here.

3rd Cir. Affirms Judgment For Usher In "Bad Girl" Copyright Dispute

Marino v. Usher, No. 15-2270 (3rd Cir. Dec. 8, 2016).

Songwriter-plaintiff appealed the lower court's grant of summary judgment to Usher (and the other defendants) in a copyright action involving the song "Bad Girl."  The 3rd Circuit affirmed the finding that the claim must fail because the song was jointly written by plaintiff and certain of the defendants (Guice and Barton).  "The district court correctly held that co-authors of a joint work are each entitled to undivided ownership and that the joint owner of a copyright cannot sue his co-owner for infringement.  The court reasoned that, without direct infringement, there can be no vicarious infringement, hence the derivative song, Bad Girl, did not infringe on Marino’s
rights. The district court also concluded that Guice and Barton conveyed a valid nonexclusive
license for the song to the other defendants."

Additionally, the Court held that the state-law claims were pre-empted, that the plaintiff had granted an implied license, that his sound recording claims failed because there was no copyright registration for the sound recording, and that defendant's were properly granted costs/fees (in a 90% reduced amount based upon plaintiff's financial circumstances).  Lastly, the Court affirmed the financial sanction entered against Plaintiff's lawyer for improperly communicating with an unrepresented defendant in violation of the Pennsylvania rules of professional conduct.

"Jersey Boys" Infringes Copyright In Unpublished Autobiography, Finds Jury

Corbello v. DeVito, No. 08-867 (D. Nev. Nov. 28, 2016) [Doc. 1084].

The jury returned a verdict for the plaintiff in the "Jersey Boys" infringement action, finding that plaintiff did not grant an implied license to use the unpublished autobiography of Tommy DeVito (a member of the Four Seasons), that the play infringes the unpublished autobiography, that there was no fair use, that 10% of the success of the play is attributable to the unpublished autobiography, and that ten defendants were liable for direct infringement.  The docket reflects that the Court set a briefing schedule for post-trial motions, and directed the defendants to place monies in escrow.

"We Shall Overcome" Putative Class Action Survives Dismissal

We Shall Overcome Foundation v. Richmond Org., No. 16-2725 (S.D.N.Y. Nov. 21, 2016).

In a putative class action challenging the Defendants' copyright in the song "We Shall Overcome" on the basis that the lyrics of the first verse is virtually indistinguishable from a song in the public domain, the Court denied the defendants' Rule 12(b)(6) motion to dismiss the copyright claims, but did dismiss the state-law claims as pre-empted.  The Court found that the plaintiffs had plausibly alleged: (1) that the first verse in the copyrighted work “We Shall Overcome” lacks originality (thereby rebutting the certificate of registration); (2) fraud on the copyright office by deliberately omitting from their application for a copyright in a derivative work all reference to the public domain spiritual or the publications of “I Shall Overcome” and “We Shall Overcome” as antecedents to the Song; and (3) divestment of copyright protection, under the 1909 Act, by publishing the work without including notice of copyright.  However, the state-law claims were dismissed as pre-empted (Those claims are for money had and received, violation of New York General Business Law § 349, breach of contract, and rescission for failure of consideration).

Judge Dismisses Jersey Boys Suit Against Frankie Valli After Trial

Corbello v. DeVito, 08-cv-867 (D. Nev. Nov. 17, 2016).

The widow of a ghostwriter who had been engaged by a member of the Four Seasons to write an autobiography (the work), lost her copyright infringement case against Frankie Valli alleging that he and the other members of the band wrongfully misappropriated the work in making the hit musical "Jersey Boys."  The evidence at trial was un-rebutted that neither Valli nor band-mate Bob Gaudio ever saw the work until their depositions.  The Court further found that all claims for willful infringement failed as a matter of law.

Court Clarifies Scope of Injunction in "Commodores" Band Name Dispute

Commodores Entertainment v. McClary, No. 14-cv-1335 (M.D. Fla. Nov. 15, 2016).

The Defendant's post-injunction actions triggered a motion by the Plaintiff clarifying the scope of the injunction, and the Court found that the Revised Band Name (COMMODORES’ Founder Thomas McClary” or “COMMODORES’ founder Thomas McClary") improperly suggested a sponsorship or endorsement by Plaintiff.  The revised band name not only placed “Commodores” before the historical reference,  but also emphasized it by writing it entirely in capital letters.  "Such placement and prominence, in combination with the overlapping audiences for the two bands, at minimum, suggests endorsement and, thus, continues to cause a likelihood of confusion between the two bands."  However, the Court found that Defendant could use Plaintiff’s Marks in a historically accurate manner so long as: (1) Plaintiff’s Marks are preceded by the historically accurate reference; and (2) the Marks are not more prominent than other words contained in the band name.  "For instance, Mr. McClary’s band name could be 'Thomas McClary original founding member of the Commodores' or 'Thomas McClary formerly of the Commodores.'” 

“Different Strokes” Copyright Case Subject to Claim Preclusion; 7th Cir.

Johnson v. UMG Recordings, No. 16-2943 (7th Cir. Oct. 31, 2016).

Plaintiff’s copyright infringement case against some publishers concerning samples of his song “Different Strokes” was precluded by settlement of an earlier suit, holds the 7th Circuit in affirming that the Plaintiff should have moved before the original Judge to vacate the judgment on the alleged basis of fraud rather than commencing a new action.  The Appellate Court stated: “a judgment in civil litigation is not subject to collateral attack.  Fraud is a basis for setting aside a judgment, but that is done by motion…in the original case rather than by separate suit.”  Because the plaintiff had not attempted to re-open his earlier suit, his effort to obtain collateral review was properly dismissed.  The Court also noted that plaintiff was not entitled to split his claim into multiple pieces under the “merger and bar” doctrine.  “He must instead litigate all closely related claims at once.”

Jury Finds No Likelihood Of Confusion In "Boston" Band Name Trial

Scholz v. Goudreau, No. 13-10951 (D. Mass. Nov. 1, 2016).

The plaintiff, a founder of the rock group "Boston," did not prove a likelihood of confusion between his current band and the band of the defendant, a former member of "Boston," finds a Massachusetts federal jury after relatively brief deliberations on plaintiff's trademark infringement claims.

2d Cir. Addresses DMCA "Repeat Infringer" Policy In MP3Tunes Appeal; Finds Only A Single Statutory Damages Award For Infringed Composition & Sound Recording; Addresses Many Other Copyright Law Issues

EMI Christian Music et al. v. MP3Tunes, No. 14-4369 (2d Cir. Oct. 25, 2016).

In the MP3Tunes appeal, the Second Circuit vacated the District Court’s grant of partial summary judgment to the defendants based on its conclusion that MP3tunes qualified for safe harbor protection under the DMCA because the District Court applied too narrow a definition of “repeat infringer”; (2) reversed the District Court’s grant of judgment as a matter of law to the defendants on claims that MP3tunes permitted infringement of plaintiffs’ copyrights in pre‐2007 MP3s and Beatles songs because there was sufficient evidence to allow a reasonable jury to conclude that MP3tunes had red‐flag knowledge of, or was willfully blind to, infringing activity involving those categories of protected material; (3) remanded for further proceedings related to claims arising out of the District Court’s grant of partial summary judgment; and (4) affirmed the judgment in all other respects (relating to statutory damages for sound recordings and compositions, cover art liability, respondeat superior liability for MP3Tunes executives, personal jurisdiction, vicarious and contributory liability, statutory damages for singles & compilations, and punitive damages).

The plaintiff record labels and music publishers argued that MP3tunes never reasonably implemented a repeat‐infringer policy.  In addressing this argument, the Second Circuit answered two questions: first, whether certain MP3tunes users qualified as “repeat infringers”; and second, if so, whether MP3tunes reasonably implemented a policy directed at them.  As to the first question, the Second Circuit held "all it takes to be a 'repeat infringer' is to  repeatedly upload or download copyrighted material for personal use."  (Emphasis in original)  Having answered that question, the Court then found that MP3tunes did not "even try to connect known infringing activity of which it became aware 2through takedown notices to users who repeatedly created links to that infringing content in the sideload.com index or who copied files from those links...A jury could reasonably infer from that evidence that MP3tunes actually knew of specific repeat infringers and failed to take  action "

The Court also, notably, addressed statutory damages and whether it was improper to make only a single award where there are different owners of the copyright in the sound recording and in the composition.

 In our view, then, Congress did not intend for separate statutory damages awards for derivative works such as sound recordings, even when the copyright owner of the sound recording differs from the copyright owner of the musical composition.    In sum, the District Court’s decision to permit only one award of statutory damages for the musical composition and corresponding sound recording comports with both the plain text and the legislative history of the Copyright Act.  We therefore affirm that part of the judgment.

In addition to attacking the District Court’s exercise of personal jurisdiction over him, the individual defendant (MP3Tune's CEO) argued that there was insufficient evidence to support the jury’s finding that he was vicariously or contributorily liable for MP3tunes’s infringements.  The Second Circuit disagreed,