Biggie's "Party & Bullshit" Fair Use of 1960s Song; 2nd Cir.

Oyewole v. Ora, No. 18-1311 (2nd Cir. 9/4/19)

The Second Circuit affirmed (in a summary order) the lower court’s conclusion that the Notorious B.I.G.’s 1993 song Party And Bullshit was fair use when it sampled the plaintiff’s 1968 song, whose lyrics included the phrase “party and bullshit”

NWA Infringement Claims Trimmed To Composition Only, But Court Does Not Adopt 3-Year Damages Limitation

Mitchel v. Capitol Records, 3:15-CV-00174-JHM (W.D. Ky. Dec. 18, 2017).

Plaintiff alleges infringement of his 1977 song in the 1989 NWA rap song "Striaght Outta Compton."  Defendants made two motions for partial summary judgment.  First, the defendants argued that plaintiff is precluded from recovering any damages for infringements that occurred more than three years prior to his filing of the law suit, as barred by the statute of limitations.  Second, defendants argued that plaintiff did not own the sound recording for his song (only the musical composition) and thus could not recover for any infringement of the sound recording.  The former motion was denied, and the latter was granted.

As to the statute of limitations defense, the Court held that notwithstanding the Supreme Court's Petrella decision, Sixth Circuit precedent "defines accrual of a copyright claim as occurring when the plaintiff “knew of the potential violation or is chargeable with such knowledge.”  Continuing, "When the [Petrella] opinion is read in conjunction with footnote 4, which acknowledges that most circuits will modify this rule so as to focus on the date of 'discovery' as opposed to the date of 'occurrence,' then Petrella reiterates what the Sixth Circuit already requires: that damages be limited to those claims for infringement that accrued within three years of the initiation of the suit, with accrual being determined by the rules of the 8 circuit (until the Supreme Court “passe[s] on the question')."  Because Plaintiff had presented evidence that his claim did not accrue until 2014 (when it was allegedly discovered), his claim was not time-barred.

As to the sound recording, the Court held that defendant had provided proof that plaintiff did not own the sound recording.  The plaintiff's evidence (e.g., a mechanical license agreement) at best established his ownership of the musical work/composition.

"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)

Infringement Claim Dismissed In Country Music Spat Because No "Access"

Arnett v. Jackson, No. 5:16-cv-00872-D (E.D.N.C. Aug. 14, 2017) [Doc. 28].

A songwriter who claimed that his song "Remember Me" was infringed by country music star Alan Jackson's song "Remember When" had his copyright infringement claim dismissed under Fed. R. Civ. P. 12(b)(6) for failure to plausibly allege the defendant's access to the plaintiff's song.  The Plaintiff argued that Jackson had access to Remember Me because it was widely disseminated and sent to third-party intermediaries who knew Jackson.  But, the Court found that the fact that the plaintiff's song was available on the internet and that plaintiff had sold the song (without an allegation of commercial success) did not create an inference of access.  Further, the connections between the alleged third-party intermediaries was not close enough, and the plaintiff did not sufficiently allege how the songs were sufficiently similar in order to assume access.

Former Jefferson Starship Founder Can Sue Over Band Name

Chaquico v. Freiberg, 2017 US Dist LEXIS 128167 [ND Cal Aug. 11, 2017, No. 17-cv-02423-MEJ].

A California Federal Judge determined that the band ‘Jefferson Starship’ lost the right to use their name when co-founder Paul Katner died in 2016. The band name had been contractually retired in 1985 under an agreement, after Katner and various other founders left the band. In 1993, Craig Chaquico, whom brought the suit, agreed to allow Katner to use the name for a new band under a new agreement. The Judge determined that Katner’s death terminated the ’93 agreement and the band’s new members as well as older founders were barred from using the name as they were not parties to the agreement. While the Judge dismissed Chaquico’s Lanham Act claims that the former band members’ imagines in marketing creates confusion, she is allowing the breach of contract claim to proceed.

Claims Against Beyoncé For Sampled Clips for “Formation” Survive, Despite Assertion of Fair Use

Estate of Barré et al. v. Carter et al., No. 2:17-cv-01057 (U.S. District Court for the Eastern District of Louisiana July 26, 2017)

A Louisiana federal judge refused to dismiss a copyright lawsuit against Beyoncé claiming she illegally sampled YouTube clips in her music video for “Formation.” The judge determined that Beyoncé’s use of the deceased YouTube star, Anthony Barré’s audio, would likely fail the four-factor fair use test. The Judge stated that Beyoncé’s use of Barré’s work was “highly commercial” and copied “the heart” of the original work, both weighing against a finding of fair use.  Barré’s estate had presented “sufficient facts at this stage of litigation to show that the four-factor fair use test could ultimately weigh against a finding of fair use.”

Copyright Suit Dismissed Against Beatles Company

Sid Bernstein Presents LLC v. Apple Corps Ltd. et al., No. 1:16-cv-07084 (S.D.N.Y. July 26, 2017)

The Court dismissed a copyright suit against the Beatles' Apple Corp. company, determining that Sid Bernstein Presents LLC – the company that currently owns intellectual property rights of a promoter who is credited with bringing The Beatles to the U.S. – did not have rights over footage from the band’s 1965 concert at Shea Stadium. The complaint alleged that Sid Bernstein Presents LLC retained copyrights to the footage and that The Beatles Company had infringed their copyright by allowing it to be used in Ron Howard’s “Eight Days a Week.” After reading through the contracts, the Judge determined that the language makes an admission that Sid Bernstein was not involved in the filming of the concert and was not the “author” of the footage for the purposes of copyright law.

Lack of Personal Jurisdiction Over BBC Films In Copyright Infringement Action

Hit Bound Muisc, Ltd. v. BBC Films, et. al., No. 2:16-cv-7125 CBM (Ksx) (C.D. Cal. June 2017).

BBC Films is a British Corporation responsible for providing broadcast television, radio news and entertainment content in the United Kingdom. Hit Bound Music Ltd., a Canadian music publisher, sued BBC, among others, alleging that the company infringed on three of Hit Bound’s copyrights for the soundtrack in the film “My Old Lady.”

The court ultimately dismissed the claims against BBC Films for lack of personal jurisdiction, determining that the company’s principal place of business is in the United Kingdom. Hit Bound argued that BBC should be subject to general jurisdiction because one of their subsidiaries maintains an office in Los Angeles. The court held that BBC Films had no business operations or property in California and the company is not incorporated in California so it is not subject to general jurisdiction and the parent-subsidiary relationship is insufficient to establish personal jurisdiction after the Supreme Court’s decision in Daimler AG v. Bauman.

Claims Over 'Steve Harvey Show' Theme Song Trimmed

We 3 Kings v. The Steve Harvey Show, No. 2:14-cv-08816-DSF-AS Document 213 (C.D. Cal. Filed 06/23/17).

California District Judge, Dale Fischer granted partial summary judgment in favor of “The Steve
Harvey Show” , in regard to all copyrights except those filed prior to We 3 Kings Inc.’s
first amended complaint. In 2014, We 3 Kings Inc., brought suit against the Steve Harvey Show, its production company, and 27 satellite broadcasting and cable companies for using its music for its second season after their license for the first season had expired. We 3 Kings Inc. is seeking $700 for each time the music was used in the show’s second season, multiplied by each of the television stations that distributed it. The damages amount to $42.3 million.

Judge Fischer stated that a copyright suit cannot be maintained if a copyright application had not been submitted to the Copyright Office prior to the filing of the complaint. Only one of the copyrights at issue were submitted prior to the filing of the first amended complaint.

The Steve Harvey Show argued that the company had an express license from We 3 Kings, Inc.
for season one of the show, and an implied license for any episodes thereafter. We 3 Kings, Inc.
refuted The Steve Harvey Show’s argument, stating that the contract was approved by We 3
Kings Inc.’s ousted president and is unenforceable. Judge Fischer stated that there are still
significant questions of material fact remaining in regards to both parties’ arguments. However,
Judge Fischer did agree with The Steve Harvey Show’s argument that the broadcasting
companies are protected from copyright liability by a statute that grants them a blanket license to air the episodes at issue because they had no input in the content of the work.

Spotify Settles Songwriter Royalty Class Action

Ferrick v. Spotify USA Inc. et al., No. 1:16-cv-08412 (S.D.N.Y. May 30, 2017).

Spotify has agreed to pay $43 million to settle two class actions brought by Camper VanBeethoven lead singer David Lowery, and singer-songwriter Melissa Ferrick. The actions claimed that Spotify chose “systemic and willful copyright infringement” by failing to pay proper royalties to thousands of songwriters and their music publishers.

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).

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.

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.

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.

"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.

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.”