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.

"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.

Cruz Campaign Can't Avoid Copyright Infringement & Contract Claims

Leopona, Inc. et al. v. Cruz for President, No. 00658-2016 (W.D. Wash. July 11, 2016).

In a case involving former presidential candidate Ted Cruz's use of two licensed songs in YouTube videos supporting his campaign, the Court denied Cruz's motion to dismiss the plaintiffs' copyright infringement and breach of contract claims.  The breach of contract claim, which included a $25,000 liquidated damages provision, arose out of a license agreement that restricted use of the licensed song for political purposes.  The court held that the licensor's claim was not pre-empted by section 301 of the Copyright Act because the licensor was not the copyright owner (it was a distribution and licensing service), and the actual copyright owners (the song's authors) had not brought breach of contract claims -- they had brought only copyright infringement claims.  Lastly, on the claim for an injunction, the Court held that it was not moot due to suspension of the Cruz campaign because the YouTube videos were still available online.

Plaintiffs In Sampling Case Fail To Sufficiently Plead Their Standing



Kelley v. The Universal Music Group, No. 14-cv-2968 (S.D.N.Y. filed 10/19/15).

In a case alleging that a song by the artist "Fabulous" infringed plaintiffs' 1974 song by including an unauthorized sample, the Court dismissed the pro se plaintiffs' copyright claim without prejudice to amend based on their lack of standing. The Court found that a copyright registration listing the plaintiffs as authors but not claimants rebutted their claim; but, that plaintiffs could replead to allege that they have standing as "beneficial owners" (i.e. a right to collect royalties), which was not sufficiently pleaded. The other state-law claims for violation of "poetic license " and "fraudulent deceit" were held to be preempted by the copyright act, and the mental anguish claim was not a remedy authorized by the statute.

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.

State-Law Copyright And Unfair Competition Claims Relating To In-Flight Music Services Not Preempted

UMG Recordings v. Global Eagle Entertainment, No. 14-03466 MMM (C.D. Cal. dated Feb. 23, 2015).

The Court denied defendant airline's motion to dismiss claims for copyright infringement under California law, along with California unfair competition claims, finding that even if in-flight entertainment qualifies as a service as that term is used in the Airline Deregulation Act, any connection between the service and plaintiffs' claims was too tenuous and remote to justify preemption.

Plaintiffs were various record companies and music publishers.  They contended that defendants provided “various airlines” sound recordings and music videos that the airlines then publicly perform to their passengers.  Defendants contended that the court should dismiss the record company plaintiffs’ state law copyright infringement and unfair competition claims because the claims were preempted by the Deregulation Act.  Congress enacted the Deregulation Act in 1978 after determining that maximum reliance on competitive market forces would best further efficiency, innovation, and low prices as well as variety and quality of air transportation services."

Super Bowl Shuffle Case Belongs In Federal Court; Remand Denied

Den v. Renaissance Marketing Corp., No. 14-cv-2999, 2014 BL 303007 (N.D. Ill. Oct. 28, 2014).

In case concerning defendants' alleged use of the "Super Bowl Shuffle" without plaintiff' authorization, a federal court in Illinois held that the case should remain in federal court as preempted by the federal Copyright Act.  Accordingly, plaintiffs' motion to remand to state court was denied.

The Super Bowl Shuffle is a song and music video trumpeting the success of the 1985 Chicago Bears.  Plaintiffs initially brought a case in Illinois state court alleging that defendants were not assignees of the record label's interest and therefore defendants were improperly benefiting from the marketing, distribution and licensing of the song without authorization.  Defendants removed the case to federal court, claiming that the state-law claims (for constructive trust, injunctive relief, conversion, unjust enrichment, and accounting) were preempted by the Copyright Act.  Plaintiffs moved to remand to state court.

The Court held that removal of the case to federal court, under 28 USC 1441, was proper.  The Court found that the Copyright Act preempted the state law causes of action for conversion, declaratory judgment and injunctive relief.  17 USC 301.  Plaintiffs were not just seeking to enforce the royalty agreement with the label, as defendants allegedly were improper assignees of the contract.  The rights seeking plaintiff sought to enforce were really copyright claims, protecting plaintiffs "against the world."  Other claims -- for constructive trust, unjust enrichment, and an accounting -- were not preempted, but the Court retained supplemental jurisdiction.

Royalties Dispute Between Co-Authors Of Song Not Preempted

McCants v. Tolliver, 2014-Ohio-3478 (Ohio. Ct. App., 9th Dist. Aug. 13, 2014).

An Ohio appellate court held that the trial court erred in dismissing the plaintiff's breach of contract claim as pre-empted by the Copyright Act.  The dispute concerned a royalty-split between co-authors of a song, later licensed to the Blacked Eyed Peas, pursuant to an alleged oral agreement.  Although the dispute did concern a song and recording, there was no "extra element" because "Th[e] alleged promise to split the proceeds is 'qualitatively different' than that of a copyright infringement claim."

McCants does not argue that Tolliver could not reproduce, perform, or distribute the song. See 17 U.S.C. § 106. Instead, McCants argues that he should be compensated according to the alleged agreement between the parties. Because McCants’ claim for breach of contract is qualitatively different than that of a copyright infringement claim, his claim is not preempted by the Copyright Act and the court erred in finding that it was preempted.

Chubby Checker TM Claims Survive But State Law Claims Preempted By CDA

Evans et al. v. Hewlett Packard Co. et al., No. 3:13-cv-02477-WHA (N.D. Cal. filed 08/15/13) (Doc. 67).

Plaintiff is the artist known as "Chubby Checker" and various entities that own related trademarks.  This case concerns a software application called “The Chubby Checker” that is offered for sale/download on defendants' web-based store.  The app purports to estimate the size of a man’s genitals based on his shoe size.

The Court held that Plaintiff stated a claim for federal and common law trademark infringement.  The crux of defendants’ argument was that the complaint only attempts to plead claims for contributory infringement and not for direct infringement. To be liable for contributory infringement, defendants argue that they must have had actual knowledge of the infringement and yet continued to sell the app. Defendants urge that the complaint fails to allege either that defendants knew of the infringement or that defendants continued to sell the app after receiving plaintiffs’ cease-and-desist letter.  However, the Court disagreed, finding: "Construed favorably to the plaintiffs, these allegations are sufficient to permit an inference that defendants knew, or could have reasonably deduced that the owner of the Chubby Checker mark would never have consented to license the mark for such a vulgar purpose."

However, the Court held that Plaintifffs' state-law claims — violation of Pennsylvania’s unfair competition and trademark laws and Pennsylvania’s and California’s right of publicity statutes — were preempted by Section 230 of the Communications and Decency Act (47 U.S.C. 230).  The Court found that defendants were internet service providers that host third-party content and not content providers, and defendants therefore enjoyed the broad immunity provided under Section 230 of the CDA from all state claims relating to publishing content created by third parties.

80's Pop Song Makes It Into Supreme Court Decision

American Trucking Association, Inc v. City of Los Angeles, No. 11–798 (U.S. June 13, 2013).

The issue before the Supreme Court was whether certain requirements implemented by the Port of Los Angeles (CA) were pre-empted by federal law, the Federal Aviation Administration Authorization Act of 1994.  The local regulation required a company to affix a placard on each truck with a phone number for reporting concerns, and to submit a plan listing off-street parking locations for each truck  The Supreme Court held that the the federal law pre-empted the local regulation.

What has this got to do with music?  In delivering the opinion of the Court, Justice Kagen wrote (at p. 2 of the slip opinion):
...a company may transport cargo at the Port in exchange for complying with various requirements. The two directly at issue here compel the company to (1) affix a placard on each truck with a phone number for reporting environmental or safety concerns (You’ve seen the type: “How am I driving? 213–867–5309”) and (2) submit a plan listing off-street parking locations for each truck when not in service.  [Emphasis added].

That phone number, of course, is from Tommy Tutone's classic 1980s one-hit wonder "867-5309/Jenny".

CLE "Does The DMCA Apply To Pre-1972 Sound Recordings"

This afternoon, David Rabinowitz and I co-presented a CLE entitled "Why The Internet Distribution of Pre-1972 Sound Recordings Is Different From Everything Else In Copyright Law -or- Does The DMCA Apply To Pre-1972 Sound Recordings."  Topics included a brief history of copyright in sound recordings, the scope of common law copyright protection, federal preemption of common law copyright (except for pre-1972 recordings), related claims of unfair competition, the DMCA safe-harbor, conflicting case law on whether the DMCA safe-harbor applies to pre-1972 recordings, and conflicting decisions on whether there is immunity for service providers under the Communications Decency Act.  Thank you to those who attended.

No Infringement Of Plot

Bolfrass v Warner Music Group, No. 1:12-cv-06648-LLS (S.D.N.Y. filed 04/02/2013) [Doc. 13].

Plaintiff alleged that a song published by defendant Warner Music ("Warner") infringed his copyright on his screenplay, in violation of the Copyright Act of 1976.  Warner moved to dismiss and for attorneys fees.  Warner's motion to dismiss was granted and its application for the award of attorney's s and costs was denied.

First, the Court examined whether Plaintiff's "plot" was afforded copyright protection.  The Court found that "the similarity two works here lies in their concepts, abstracted to a high degree of generality. Both are based on a concept of planetary breakdown and space travel, but their treatment is very different."  It concluded that "Because the lyrics of "Exogenesis: Symphony" do not express a plot, they do not infringe on "Panspermia: ExoGenesis."  The online liner notes a plot, but one that is far too abstract and general to infringe on Bollfrass' copyright."  Accordingly, the copyright claim was dismissed.

Second, the Court examined Plaintiff's claim for unfair competition, and found that it was preempted by the Copyright Act.  "Bollfrass' claim for unfair competition based only on Jarner's distribution of the allegedly
infringing song is therefore preempted by the Copyright Act.".

Third, the Court examined Warner's request for attorneys fees.  Ultimately, the request was denied on a "close call."

3d Cir. Affirms Dismissal of Author's Suit Against 50 Cent

Winstead v. Jackson, No. 11-3771 (3d Cir. opinion filed Jan. 11, 2013).

The Third Circuit affirmed an order of the District Court dismissing the amended complaint as to all defendants.  In this copyright case, the parties respective works at issue include Plaintiff's book, The Preacher’s Son – But the Streets Turned Me into a Gangster, and defendant Curtis Jackson's (50 Cent's) Before I Self-Destruct album/CD, featuring songs and lyrics written by Jackson; and his companion film of the same name, which Jackson wrote, starred in, and directed.  Jackson and the record companies moved to dismiss the amended complaint pursuant to Fed. R. Civ. Pro. 12(b)(6), arguing that the copyright infringement claim failed because Plaintiff's book and Jackson's album/CD and film are not substantially similar as a matter of law, and that Plaintiff's state law claims are preempted by the Copyright Act because they are premised on the same underlying facts.  The Circuit Court affirmed dismissal, finding inter alia:

We agree with the District Court that a lay observer would not believe that Jackson's album/CD and film copied protectable aspects of [Plaintiff]'s book.
***
There was a failure to state an actionable claim for copyright infringement here because, although [Plaintiff]'s book and Jackson's works share similar themes and setting, the story of an angry and wronged protagonist who turns to a life of violence and crime has long been a part of the public domain.

***
In addition, [Plaintiff]'s book and Jackson's works are different with respect to character, plot, mood, and sequence of events.

***

[Plaintiff] contends that direct phrases from his book appear in Jackson's film. ... The average person reading or listening to these phrases in the context of an overall story or song would not regard them as unique and protectable. ... Moreover, words and short phrases do not enjoy copyright protection.

Pre-1972 Recordings Subject To DMCA

UMG Recordings, Inc. v. Escape Media Group, Inc., No. 100152/2010 (Sup. Ct., N.Y. Co. July 10, 2012) (Kapnick, J.S.C.).

New York State Court holds that the "safe harbor" provisions of the DMCA extend to common law copyright claims relating to pre-1972 recordings.

Plaintiff moved to dismiss defendant's "safe harbor" affirmative defense under the DMCA [17 U.S.C. 512(c)(1)].  Section 301(c) of the Copyright Act makes clear that the copyrights of pre-1972 recordings are not protected by the federal Copyright Act, and the Court analyzed whether the DMCA may provide a defense or "safe harbor" to internet service providers facing New York State common law copyright infringement claims (as opposed to claims under the federal act).  The Court observed that only one court has considered the issue (Capitol Records, Inc. v. MP3Tunes, 821 F. Supp.2d 627, 640 (SDNY 2011), and concluded that "there is no indication in the text of the DMCA that Congress intended to limit the reach of the safe harbors provided by the statute to just post-1972 recordings."  In response to a report by the Register of Copyrights that "it is for the Courts to interpret the applicable statute and decide the issues raise by this motion.  This Court is not attempting to extend the Copyright Act to pre-1972 recordings, but, nonetheless, does find, based on the relevant language of the statutes...that the safe harbor provisions codified by section 512(c)(1) of the DMCA is applicable to pre-1972 recordings."  Accordingly, plaintiff's motion to dismiss the DMCA affirmative defense was denied.

However, the Court did dismiss defendant's affirmative defense based on the Communications Decency Act of 1996 (the "CDA") [47 U.S.C. 230].  Lastly, the Court dismissed defendant's counter-claim for violation of a New York State anti-trust statute, the "Donnelly Act" (NY General Business Law 340), but denied plaintiff's motion to dismiss the counter-claims for tortious interference with contract and business relations.

Label Fails To State Copyright Claim; Leave To Amend Granted

Tufamerica, Inc. v. The Orchard Enterprises, Inc., No. 1:11-cv-01816 (S.D.N.Y. filed Oct. 18, 2011) [Doc. 16].

Plaintiff is the owner of the record label Tuff City Music Group and owns the rights to thousands of musical recordings and compositions. In September 2006, TufAmerica licensed defendant's predecssor the right to market a large number of musical tracks by way of digital downloads (the “License”). The License obligated defendant's predecessor to pay TufAmerica various types of payments in exchange for digital distribution rights to hundreds of songs. In late 2007, defendant assumed its predecessor's obligations under the License. While TufAmerica received various payments from Digital and Orchard, it never received any payment of mechanical royalties.

Defendant argued that the License preempted plaintiff's copyright case. The Court agreed:
TufAmerica fails to state a facially plausible claim under the Copyright Act because it concedes that its copyright claim is governed by the License, not the Copyright Act. While TufAmerica subsequently argues that the License does not govern mechanical royalties, a “claim for relief ‘may not be amended by the briefs in opposition to a motion to dismiss.’” As a result, Orchard’s motion to dismiss is granted.

Because TufAmerica’s claim under the Copyright Act was dismissed, the court lacked pendent jurisdiction over the New York State common law claim of unjust enrichment.

However, because the License did not unambiguously preempt a claim under the Copyright Act's compulsory license provision, leave to amend the Complaint was granted.

Copyright Case Dismissed Against 50 Cent Over Crime Story/Book

Winstead v. Jackson, et al., No. 2:10-cv-05783 (D.N.J. Sept. 20, 2011) [Doc. 45].

In this copyright infringement action, Plaintiff alleges that Defendants’ movie and companion album, both entitled Before I Self Destruct, infringe upon Plaintiff’s copyright in his book, The Preachers Son - But the Streets Turned Me Into a Gangster. Plaintiff is the author and sole owner of the copyright for the Book. Plaintiff alleges that Defendants infringed upon the
copyright of the Book by publishing and selling the Movie and the Album, both of which
Plaintiff contends derive their content from the Book.

The Court granted defendants' motion to dismiss for failure to state a claim, under Fed. R. Civ. P. 12(b)(6). Plaintiff avers that the film duplicates the generalized theme and story
of the book and amounts to actionable copying. "However, general plot ideas and themes lie in
the public domain and are not protected by copyright law." Continuing:
There is no doubt that the Book and Film do share similar characters, themes, as well as a similar setting. However, this s haring of common features is only natural since both works feature a protagonist who has a difficult upbringing and turns to a life of violence and street crime, a story which has long ago been part of the public domain and which has been the subject of numerous movies and television shows. Thus, both works may properly contain gang life in inner-city New Jersey, characters spending time in jail, the search for an ex-girlfriend upon release from prison, making love in the shower, obtaining money through criminal activity, purchasing fancy clothes and accessories with the proceeds of crime, shoot-outs, murder, and the loss of a parent.

The Court further held that commonly used words, phrases and cliches used in both the book and movie/album are not protectable. Also, Plaintiff's state common law claims were pre-empted by the Copyright Act.

Lastly, because the Court held that Defendants did not infringe on Plaintiff’s copyright, Plaintiff’s claims of vicarious and contributory infringement fail since they hinge on a preliminary finding of direct infringement.

'Imagine' State Court Update

Despite Judge Stein (SDNY) denying Plaintiffs' motion for a preliminary injunction on fair use grounds, let us not forget that a related case is pending in New York State court (based on pre-'72 recordings).
Reviewing the papers filed in the state court action reveal that Defendants moved to dismiss the complaint under CPLR 3211. A hearing was requested for June 9, 2008 (9:30AM) in the Motion Submission Part, Room 130, located at 60 Centre Street, New York, New York 10007.


What consideration will the Honorable Richard B. Lowe give to the federal order and decision? How does Judge Stein's decision affect the state proceeding?

What I Like About You

The Patry Copyright blog posted an interesting decision in the "Guitar Hero" case pending in the Eastern District of Michigan. You can read the decision here.

Of interest are the right to publicity claims, and both the standing and preemption issues.

[The Romantics v. Activision Publishing, Inc., 2008 WL 186370 (E.D. Mich. Jan. 22, 2008)]