"Gimme Some Lovin'" Guitar Riff Claim Dismissed

Parker v. Winwood et al., No. 16-cv-684 (M.D. Tenn. 10/17/2017) [Doc. 99].

In a copyright infringement action concerning the guitar riff in the classic rock song Gimme Some Lovin' performed by the Spencer Davis Group, the Court granted the defendants' motion for summary judgment.  Plaintiff's song was governed by the 1909 Act, under which the general rule was that the publication of a work with proper notice was necessary to obtain statutory copyright protection.  The Court found that "Although Defendants proffer evidence that the work was distributed as a phonorecord prior to 1978, the Copyright Act specifically states that the distribution of phonorecords prior to 1978 is not considered a publication under copyright law. See 17 U.S.C. § 303. Even if the work-at-issue had been published, however, Plaintiffs would not be foreclosed from bringing an infringement suit so long as they made the requisite deposit. The right to sue is not destroyed for failure to make a prompt deposit after publication."  Accordingly, the motion to dismiss was denied.

Nonetheless, there were other basis to dismiss.  One defendant's motion to dismiss was granted for lack of personal jurisdiction -- he was not properly served, and had no minimum contacts with Tennessee.  As to the record label owner, after rejecting the argument that the plaintiff's lacked standing, the Court nonetheless found that the claim should be dismissed because the record label's sister company owned the rights to plaintiff's song!

Turning to the meat of the claim, the Court granted the defendant musicians summary judgment:

The Court finds no dispute of material fact still exists regarding whether Defendants had a “reasonable possibility” of access to Plaintiffs’ song before they created “Gimme Some Lovin’.” Specifically, the Court finds Plaintiffs have failed to meet their burden to show that there is a dispute regarding whether Defendants infringed Plaintiffs’ song between its release date on October 7, 1966 in the United Kingdom (ECF No. 64 ¶ 25) and the release date of “Gimme Some Lovin’” on October 28, 1966 (ECF No. 64 ¶ 25), or at any time before that date. Defendants presented evidence in the form of affidavits that the members of The Spenser Davis Group had not heard Plaintiffs’ song prior to creating "Gimme Some Lovin’.” (Mervyn Winwood Decl., ECF No. 57 ¶ 5; Stephen Winwood Dec., ECF No. 58 ¶ 4; Spenser Davis Decl., ECF No. 59 ¶¶ 3, 5.) The burden then shifted to Plaintiffs to set forth specific facts showing a triable issue of material fact. Plaintiffs only proffered inadmissible evidence to refute these facts Defendants set out in affidavit form. Plaintiffs also proffer no admissible evidence that Defendants infringed Plaintiffs’ song between its release and Defendants’ release, but rather contend it would have been possible. (ECF No. 64-6 at PageIDs 547-48.) Because Plaintiffs have failed to proffer any admissible evidence that establishes a genuine issue of material fact as to whether Defendants heard Plaintiffs’ song prior to creating or releasing “Gimme Some Lovin’,” the Court GRANTS summary judgment in favor of Defendants Steve Winwood and Kobalt (ECF No. 54)

Lyric Infringement Claim Dismissed Under Renewal Provisions Of 1909 Act

Chase v. Warner Bros. et al., No. 15-cv-10063 (S.D.N.Y. Mar. 27, 2017).

Plaintiff's copyright infringement claim was dismissed because under the 1909 Copyright Act the author of the lyrics, which had been included in a songbook of nursery rhymes, had not renewed the copyright.   Instead, the book itself (a "composite" work) had been registered and renewed by the publisher.  But under section 24 of the 1909 Act, the Court held that the publisher could only renew its interest in part of the book and that the author of the lyrics, which had been contributed to the book, needed to renew the copyright in the lyrics.  Accordingly, the defendants' motion to dismiss was granted, because the author of the lyrics had not renewed the registration for the part that she had contributed to the book.  (Defendants were alleged to be using the lyrics in the TV show The Big Bang Theory).

"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).

Questions Whether "Iron Man" Comic Theme Song A Work Made For Hire Under 1909 Copyright Act; 2nd Cir.

Urbont v. Sony Music, No. 15-1778 (2d Cir. July 29, 2016).

Plaintiff, who claimed ownership rights in the composition of the "Iron Man" comic theme-song from the 1960s, raised sufficient questions of material fact to rebut defendants' "work made for hire" defense under the 1909 Copyright Act and its "instance and expense" test, holds the Second Circuit in reversing the district court's grant of summary judgment to the defendants on Plaintiff's copyright infringement claim.  Further, the defendants -- who were not the alleged employer (Marvel Comics was) and therefore a third-party to the alleged relationship -- had standing to assert the work made for hire defense.  However, the appellate court held that the lower court properly dismissed the plaintiff's state-law claims as pre-empted, rejecting the plaintiff's argument that there was a separate pre-1972 sound recording subject to state laws rather than the song as part of an audio-visual work and therefore preempted.

Santa Clause Is Comin To Town Reverts To Author's Heirs In 2016

Baldwin v. EMI Feist Catalog, 14-182-cv (2d Cir. Oct. 8, 2015).

The Second Circuit held that EMI publishing owned rights to the song "Santa Clause Is Comin' To Town" under a 1981 grant, not a 1951 grant, and accordingly that a 2007 termination notice terminates EMI's interest in 2016, reversing the lower court's entry of summary judgment for EMI.  The case details the complex statutory scheme under the 1976 Copyright Act which gave authors and their statutory heirs the right to terminate previously made grants of copyright under certain circumstances, and thereby to recapture some of the value associated with the works.  17 USC 203 and 304(c)-(d).  Plaintiff sought a declaration that either a notice of termination served on the publisher in 2007 or another served in 2012, will, upon becoming effective, terminate EMI's rights to the song.  The Second Circuit concluded that EMI owned rights to the song not under a 1951 agreement but instead under a subsequent 1981 contract, and that that the 2007 termination notice will terminate the 1981 agreement in 2016.  Accordingly, plaintiff (the author's heirs) were entitled to a declaratory judgment.

The Court detailed the various rights of reversion under the Copyright Act, which permits the author of certain earlier works to terminate a grant of copyright (e.g., to a publisher, like EMI's predecessor).  It then found that a 1981 Agreement not only granted EMI the future interest scheduled to revert to the author upon termination, it also replaced an earlier 1951 agreement as to the source of EMI's existing rights to the song.  Applying New York common law, the Court held that the parties intended for the new contract to substitute for the old one.  "Section 1 of the contract shows that they chose not only to have EMI receive the future interest that vested in [the author] upon service of the termination notice, but also to replace the 1951 Agreement as the source of EMI's existing rights in the Song."  Thus, the failure to record a 1981 termination notice under the 1951 agreement was irrelevant to the question whether EMI presently owned the copyright in the Song under either agreement.  Its rights to the renewal term were traceable to the 1981 agreement.  Thus, that was all that matters for decided plaintiffs' termination notices pursuant to section 203.

The Court concluded that Plaintiff could terminate the 1981 agreement under section 203 (section 304 did not control), and that the 2007 termination notice terminated the 1981 agreement.  Publication is a one time event that occurred in the 1930s.  Because the 1981 grant was executed by the author and does not cover the right of publication, it was terminable under section 203 starting on December 15, 2016, which is the effective date of termination stated in the 2007 notice.

Happy Birthday Lyrics Not Owned By Warner

Marya v Warner/Chappell, No. 13-cv-4460 (C.D. Cal. filed 9/22/14) [Doc. 244].

After collecting royalties for years, a Court found that Warner/Chappell lacked copyright ownership in the lyrics to the world's most famous song, "Happy Birthday."  The Court found that because the current publisher's alleged predecessor "never acquired the rights to the Happy Birthday lyrics, Defendants, as Summy Co.’s purported successors-in-interest, do not own a valid copyright in the Happy Birthday lyrics."

The melody of the song is the same as one called "Good Morning," which was published in a songbook and subject to copyright protection under the 1909 Act until 1949.  Both parties agree the melody entered the public domain years ago.  The origins of the "Happy Birthday" lyrics is less clear, as those lyrics did not appear in the same songbook as "Good Morning."  Subsequent publications of the lyrics noted that the tuen for "Happy Birthday" was the same as "Good Morning," but did not credit an author of the lyrics.  The decision then explains the alleged chain of title to the lyrics of "Happy Birthday."

Plaintiffs, bringing a declaratory judgment action, alleged that Defendants do not own the copyright in the lyrics to Happy Birthday, and thus should not have been collecting royalties for licensing the song (and should be compelled to return collected royalties).  The Court was facing cross-motions for summary judgment.

First, the Court found that a 1935 registration was not subject to a presumption of validity.  There was a facial and material defect in the registration, nameley that it did not state that the lyrics were being copyrighted.  Thus, there was no presumption that the lyrics were registered.

Next, the Court examined: who wrote the lyrics to Happy Birthday?  The Court found there was conflicting evidence, and therefore a material question of fact for trial.

Then, the Court examined whether, whoever wrote the lyrics, any copyright in the work was divested by publication before the 1935 registration?  Under the 1909 Act, general publication without notice of copyright divested the author of common law and federal copyright protection.  Again, the Court found a question of material fact whether the alleged authors granted their publisher the right to generally publish the song.

Next, the Court examined whether the alleged author abandoned her interest.  Although the plaintiffs had found an article where the alleged author said that she had resigned herserlf to the fact that the song was the publics, the Court found questions of fact on this issue again a ground to deny summary judgment.

Then, the Court examined the alleged transfers in interest of the song lyrics, and three old agreements between the alleged authors and their publisher.  The court found that Defendants had no evidence a transfer occurred, whether by oral statement, by writing, or by conduct. "Defendants ask us to find that the Hill sisters eventually gave Summy Co. the rights in the lyrics to exploit and protect, but this assertion has no support in the record. The Hill sisters gave Summy Co. the rights to the melody, and the rights to piano arrangements based on the melody, but never any rights to th e lyrics. Defendants’ speculation that the pleadings in the Hill-Summy lawsuit somehow show that the Second Agreement involved a transfer of rights in the lyrics is implau sible and unreasonable. Defendants’ suggestion that the Third Agreement effected such a transfer is circular and fares no better. As far as the record is concerned, even if the Hill sisters still held common law rights by the time of the Second or Third Agreement, they di d not give those rights to Summy Co."

Ghostface Killa Case, Involving "Iron Man Theme" Sample, Dismissed

Urbont v. Sony Music Entertainment et al., No, 11-cv-94516 (S.D.N.Y. April 20, 2015) [Doc. 78].

The Court granted Sony Music summary judgment dismissing the claims of plaintiff, who alleged infringement of his rights to the musical composition and sound recording of the "Iron Man Theme" in a Ghostface Killa song.  Sony successfully challenged plaintiff's ownership of a copyright interest in the song by establishing that the composition was a "work for hire" and was therefore owned by Marvel Comics, for whom plaintiff created the composition.  Notably, the Court found that Sony -- a third-party to that transaction -- had standing to challenge plaintiff's ownership under the work for hire doctrine pursuant to the 1909 Act's "instance and expense" test.

The Court also dismissed Plaintiff's state law claims for common law copyright infringement, unfair competition, and misappropriation, finding that the claims were preempted by the Copyright Act.  Plaintiff argued that the recording fell within the exception to pre-emption as a sound recording fixed before February 15, 1972.  17 U.S.C. 301.  The Court disagreed, finding that the recording was an "audiovisual work" and not a "sound recording" because it was created purely to accompany the television show Iron Man and did not exist apart from the accompanying televisuals.  Under the 1976 Act, the claims were preempted because they involve an audiovisual work.

Claims In 'Sugarman' Case Survive Dismissal; Rights Transferred To Defunct Publisher's Shareholder By Operation Of Law

Gomba Music, Inc. v. Avant, No. 14-cv-11767, 2014 BL 330905 (E.D. Mich. Nov. 24, 2014).

The Court dismissed a corporate music publisher's case in the Sugarman / Sixto Rodriguez case because the company had been administratively dissolved by the State of Michigan in 1971 for failure to file certain papers, but the claims by the company's sole shareholder survived because when the company dissolved, any interests it held were transferred to him by operation of law.  The Court found that whether under the 1976 or 1909 Copyright Acts, by operation of law [Mich. Comp. Laws § 450.1855a], any rights that the company had in the compositions transferred to its sole shareholder when the corporation dissolved.  The Court also found that the decision to sue in the company's name was due to a mistaken belief that the entity would be reinstated and that it was necessary to sue in the company's name because it was the original assignee of rights; accordingly, the Court allowed substitution of the shareholder for the defunct company he formerly owned as sole proprietor, pursuant to Fed. R. Civ. P. 17.

Thereafter, the Court addressed the sufficiency of the causes of action.  First, the Court held that the plaintiff could assert fraud on the copyright office as a declaratory judgment action to attack the prima facie validity of defendants' copyrights in the compositions.  Second, the Court held that the plaintiff could assert a declaratory judgment claim that he is the exclusive owner of the copyright in the compositions because it was plausible that plaintiff was not placed on notice of his claims until sometime after the release of the film Waiting for Sugar Man in July 2012 and therefore plausible that he timely filed his claim for declaratory judgment in May 2014.  Third, the Court held that plaintiff could assert fraudulent concealment claims, and that the claims were not time-barred, because the name of the artist with whom plaintiff had an exclusive agreement (Sixto Rodriguez) was completely absent from the album credits, there were affirmative statement that others wrote the works, the plaintiff had limited motivation to investigate further given the "commercial failure" of the  album at the time it was released, the artist Sixto Rodriguez was under an exclusive contract with the publisher plaintiff, and, later, copyright registrations were issued based on representations that others wrote the works.  Lastly, the Court found that the copyright infringement claim also was not time-barred, and though the plaintiff may be precluded from certain statutory damages/attorneys' fees based on the timing of his attempted registration, that did not bar the claims.

Standing Still Lacking Under 1909 Act In "Big Pimpin'" Case

Nafal v. Jay-Z, et al, 11 cv 06238 (C.D. Cal. Mar 2, 2012).

Plaintiff argued that because was the exclusive license of a song sampled in the Jay-Z song "Big Pimpin'", he had standing to sue Defendants for infringement. The court held that Plaintiff's standing had to be evaluated under the 1909 Copyright Act (due to the copyright date of the sampled song). Even if Plaintiff were deemed a co-exclusive licensee, the 1909 Act required Plaintiff to join the author's heirs in the action, who were the copyright owners. He did not do so, and accordingly, lacked standing.

Bob Marley Recordings Are Works Made For Hire

Fifty-Six Hope Road Music Ltd. v. UMG Recordings, 08 CIV. 6143 (DLC), NYLJ 1202472502152, at *1 (SDNY, Decided September 10, 2010)

"This dispute concerns the ownership of the renewal term copyrights in certain pre-1978 sound recordings embodying the performances of Jamaican reggae artist, Bob Marley (the "Sound Recordings"). The Sound Recordings were created pursuant to exclusive recording agreements between Bob Marley and the predecessor-in-interest to defendant UMG Recordings, Inc. ("UMG"). The plaintiffs—Bob Marley's widow, Rita Marley, as well as nine of Bob Marley's children (together with Rita Marley, the "Adult Beneficiaries"), and their wholly-owned company, Fifty-Six Hope Road (collectively, the "Plaintiffs")—allege that the renewal term copyrights in the Sound Recordings reverted to them under the Copyright Act of 1909 upon Bob Marley's death in 1981. Plaintiffs also assert claims for underpayment of royalties against UMG. Plaintiffs and UMG have cross-moved for partial summary judgment. For the following reasons, UMG's motion is granted in part and Plaintiffs' motion is denied."

The Court analyzed Marley's recording agreements, distinguished a Copyright Act "author" from a common-dictionary-usage "author," and after considering various factors determined that Bob Marley's recordings are "works made for hire" under the Copyright Act of 1909.

The royalties claim concerns digital downloads - the Court found that contract ambiguities precluded summary judgment