Rapper Enjoined From Using Burberry Trademarks

Burberry Ltd. v. Moise, No. 1:16-cv-05943 (S.D.N.Y. Aug. 15, 2016) [Doc. 30].

Luxury brand Burberry successfully obtained a preliminary injunction against rapper Perry Moise based on his use of various Burberry-related marks.  The preliminary injunction restrains Perry from using the marks, displaying the marks, using "Burberry Perry" or "Burberry" as usernames on his social media accounts, and otherwise engaging in activity associating himself with Burberry.  Perry was also ordered to remove all references to Burberry on his Soundcloud and iTunes pages, from his email address, and from his various social media accounts.  Plaintiff was ordered to post a $5,000 bond.

Pre-1972 Copyright Claims Limited By 3, Not 6, Year Limitation Period

ABS Entm't, Inc. v. CBS, No. 15-cv-6801 (S.D.N.Y. Feb. 17, 2016).

New York's 3 year statute of limitations "for an injury to property" applies to plaintiffs' claims for common law copyright infringement of pre-1972 sound recordings, holds the Court, not the State's 6-year "catch-all" provision.  CPLR 213(1) and 214(4).  Plaintiffs, a putative class, allege that CBS violated the public performance rights of pre-1972 sound recordings as protected under New York common law, and allege common law infringement and unfair competition.  The narrow issue before the Court was whether a 3 or 6 year limitations period applied, and Judge Koetel held that the plain meaning of "property" (as used in the 3 year statute) is broad enough to encompass intangible property, like intellectual property in the form of sound recordings (or trade secrets).  In other words, the 3 year limitations period is not limited to tangible property.  Notably, the Court recognized that "the case law is mixed" on this question, addressing both the Flo & Eddie [80 F. Supp. 3d 535 , 541 (S.D.N.Y. 2015)] and Harrison [44 Misc. 3d 428 , 986 N.Y.S.2d 837 , 838 (Sup. Ct. 2014)] cases.

Copyright Claim Dismissed Against Usher Because No Substantial Similarity

Edwards et al. v Usher Raymond IV et al., No. 1:13-cv-07985-DLC (S.D.N.Y. filed 05/23/14) [Doc. 36].

Plaintiffs alleged that a song recorded and published by defendants, including Usher, willfully copied the plaintiffs' original musical composition.  On defendants' Fed. R. Civ. P. 12(b)(6) motion to dismiss, the Court found that plaintiffs failed to state a claim for copyright infringement because the two songs were not substantially similar as a matter of law.  Accordingly, the Court dismissed the sole copyright infringement claim, and declined to exercise supplemental jurisdiction over the state law claim for breach of contract.

First, the Court found that the phrase "caught up," which is the title of both songs, is not eligible for copyright protection because it is a common phrase.  Second, the Court found that lyrics from the two songs expressing the ideas in question were not substantially similar.  Third, the Court ignored bare legal conclusions in the complaint that the songs are substantially similar.  Lastly, the Court also took a "holistic" approach, and determined that the two songs' music and lyrics, considered as a whole, confirmed a lack of substantial similarity.

Summary Judgment Denied Where Question Of Fact Concerning Plaintiff's Interest In Song

Mayimba Music v. Sony Corp. of Am. et al., No. 12-cv-1094 (S.D.N.Y. Jan. 16, 2014) [Doc. 30].

The Court denied defendants' motion for summary judgment, finding that Plaintiff just "barely" had an issue for the jury, to wit: whether Plaintiff, alleged assignee of the song, still maintained an interest in the copyrighted song, which Plaintiff alleged was used without its permission in a song ultimately recorded by Shakira.  There was conflicting testimony and documentary evidence.

Transfer Denied In Sirius Class Action Over Pre-72 Recordings

Flo & Eddie, Inc. v. Sirius XM Radio Inc., No. CV 13-5693 PSG (C.D. Cal. Dec. 3, 2013).

Plaintiff filed this putative class action in state court alleging that defendant Sirius XM had unlawfully exploited certain audio recordings made before February 15, 1972 by duplicating and broadcasting those audio recordings through its satellite and internet radio service.  Sirius XM removed this case to federal court.  Before the Court was Sirius XM's motion to transfer venue to the Southern District of New York, pursuant to 28 U.S.C. § 1404(a).  The Court denied the motion.

In analyzing the motion, the court considered multiple factors -- some neutral, some favoring transfer, and some against transfer.  The factors were: Jurisdiction and Venue in the Southern District of New York; Convenience of the Parties and Party Witnesses; Convenience of Third Party Witnesses and the Availability of Compulsory Process; Relevant Agreements; Familiarity with the Governing Law; Plaintiff’s Choice of Forum; The Parties’ Contacts with the Chosen Forum; Contacts Relating to Plaintiff’s Causes of Action in the Chosen Forum; Differences in the Cost of Litigation; Access to Sources of Proof; Relevant Policy of the Forum State; Relative Court Congestion; Local Interest in Having Localized Controversies Decided at Home; Unfairness of Burdening Citizens in an Unrelated Forum; and The Interest of Justice. After considering these factors, the Court concluded that transfer was not warranted.  "Many of the transfer factors are neutral. As to the factors that carry weight one way or the other, several factors related to efficiency and convenience weigh toward transfer.  However, California’s interest in having a novel question of state law decided at home, as well as the slight weight given to Plaintiff’s choice of forum, weighs against transfer."

Monster's 3rd Party Claims Against DJ Dismissed In Beastie Boys Case

Beastie Boys v. Monster, No. 12-cv-6065 (S.D.N.Y. filed Nov. 4, 2013) [Doc. 51].

The Beastie Boys sued Monster Energy drinks under Lanham Act for the allegedly unauthorized publication of a promotional video that used as its soundtrack a remix including songs originally composed and recorded by the Beastie Boys.  Monster brought third-party claims for breach of contract and fraud against a DJ, who originally made the remix (with the Beastie Boys' permission) and furnished it to Monster.  After discovery, the Court granted the DJ summary judgment dismissing the third-party claims.

First, the Court found that there was no binding agreement between the DJ and Monster.  "...[A] reasonable
juror could not find an offer, sufficiently clear acceptance, or consideration, e.g., a legal duty which Monster incurred to Z-Trip, let alone all three."  Second, the Court found that there was no fraud.

"In sum, if Monster is liable to the Beastie Boys, it may not shift legal responsibility for such lapses to Z-Trip.  Any such liability on Monster’s part would arise instead because Monster left these matters in the hands of an employee insensitive to the legal issues presented by making derivative use of, and commercially exploiting, the Beastie Boys’ original work. In musical terms, Z-Trip can now, therefore, rest at least “as cool as a cucumber in a bowl of hot sauce,” because Monster’s Third-Party Complaint against him has “got the rhyme and reason but no cause.” Beastie Boys, So Watcha Want (Capitol Records 1992). It is therefore dismissed, with prejudice."

The Court, in a separate order, further urged the parties to settle the case rather than to go to trial.  [Doc. 53].

Airline Sued Over In-Flight Music Videos

Arista Music et al. v. United Airlines Inc. et al., No. 13-cv-7451 (S.D.N.Y. filed Oct. 22, 2013).

Plaintiffs are multiple record labels suing United Airlines for alleged copyright infringement.  Plaintiffs allege that United is transmitting performances of the Plaintiff's music videos and sound recordings, without Plaintiffs' authorization, to airline passengers for in-flight entertainment.

Suit Filed Over Beatles Movie

Ace Arts LLC v. Sony/ATV Music Publishing LLC et al.; No. 13-cv-7307 (S.D.N.Y. filed Oct. 16, 2013).

The Beatles' music publisher and record company were sued in connection with plaintiff's contract to distribute a film, The Beatles: The Lost Concert, which documents the impact the Beatles had in the USA and their first concert in Washington DC in 1964.  Plaintiff claims $100 million in damages for alleged violation of the Sherman Act, tortious interference with contract, interference with prospective economic relations, unfair competition, and violation of the N.Y. General Business Law.

ASCAP Required To License ALL Songs In Its Repertory To Pandora

In re Petition of Pandora Media, Inc., No. 1:12-cv-08035-DLC (S.D.N.Y. Opinion & Order filed 09/17/13) [Doc. 70], related to U.S. v. ASCAP, No. 41 Civ. 1395.

ASCAP must license all songs in its repertory to Pandora, even though certain music publishers have purported to withdraw from ASCAP the right to license their compositions to “New Media” services such as Pandora, holds the ASCAP rate court in interpreting the consent decree under which ASCAP operates.  "Because the language of the consent decree unambiguously requires ASCAP to provide Pandora with a license to perform all of the works in its repertory, and because ASCAP retains the works of 'withdrawing' publishers in its repertory even if it purports to lack the right to license them to a subclass of New Media entities, Pandora’s motion for summary judgment is granted."

In April 2011, ASCAP began to allow members to withdraw from ASCAP its rights to license their music to New Media outlets, while allowing ASCAP to retain the right to license those works to other outlets.  Subsequently, several music publishers withdrew their New Media licensing rights from ASCAP, and Pandora then engaged in license negotiations directly with those publishers.  On July 1, 2013, Pandora filed a motion for summary judgment, seeking a determination that “ASCAP publisher ‘withdrawals’ [of New Media rights] during the term of Pandora’s consent decree license do not affect the scope of the ASCAP
repertory subject to that license."  ASCAP argued that “’ASCAP repertory’ refers only to the rights in musical works that ASCAP has been granted by its members as of a particular moment in time.” Pandora argued that ASCAP repertory” is a “defined term[] articulated in terms of ‘works’ or ‘compositions,’ as opposed to in terms of a gerrymandered parcel of ‘rights.’” The Court found that Pandora was correct.  “ASCAP repertory” is defined in the consent decree in terms of “works” and not “individual rights” in works with respect to classes of potential licensees.  The Court also held that Pandora's subsequent negotiations with the publishers did not alter interpretation of the consent decree because Pandora is not a party to the consent decree.

New Suits Against Labels

Two suits were filed yesterday in SDNY against various record labels:

Grant v. Warner Music Group Corp. and Atlantic Recording Corp., No. 13-cv-4449 (alleging violation of the Fair Labor Standards Act concerning failure to pay employees minimum wages and overtime compensation).

Slip-N-Slide Records Inc. v. The Island Def Jam Music Group, No. 13-cv-4450 (seeking an accounting, declaratory judgment and claiming breach of fiduciary duty relating to defendant's agreement to manufacture and distribute sound recordings of plaintiff's artists).

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."

ReDigi Loses - Court Examines "Reproduction" & Distribution; Finds No "First Sale" For Digital Music

Capitol Records v. ReDigi, No. 1:12-cv-00095-RJS (S.D.N.Y filed 03/30/13) [Doc. 109].

The Court was faced with the question of whether the unauthorized transfer of a digital music file over the Internet – where only one file exists before and after the transfer – constitutes reproduction within the meaning of the Copyright Act. The Court holds that it does.  "Because the reproduction right is necessarily implicated when a copyrighted work is embodied in a new material object, and because digital music files must be embodied in a new material object following their transfer over the Internet, the Court determines that the embodiment of a digital music file on a new hard disk is a reproduction within the meaning of the Copyright Act."  Continuing, "the fact that a file has moved from one material object – the user’s computer – to another – the ReDigi server – means that a reproduction has occurred.  Similarly, when a ReDigi user downloads a new purchase from the ReDigi website to her computer, yet another reproduction is
created. It is beside the point that the original phonorecord no longer exists. It matters only that a new phonorecord has been created."

The Court also concluded that absent the existence of an affirmative defense, the sale of digital music files on ReDigi’s website infringes Capitol’s exclusive right of distribution.

The Court then considered ReDigi's affirmative defenses: fair use, and first sale.  With respect to fair use, "On the record before it, the Court has little difficulty concluding that ReDigi’s reproduction and distribution of Capitol’s copyrighted works falls well outside the fair use defense".  In sum, "ReDigi facilitates and profits from the sale of copyrighted commercial recordings, transferred in their entirety, with a likely detrimental impact on the primary market for these goods. Accordingly, the Court concludes that the fair use defense does not permit ReDigi’s users to upload and download files to and from the Cloud Locker incident to sale."

Turning to the first sale defense, the Court also disagreed.  First, the court found that "first sale" does not apply to the reproduction right, but only to the distribution right.  Second, the Court found that the music files were not lawfully made (they were unlawful reproductions) under the Copyright Act, and therefore not entitled to the first sale defense.

Third, the Court found that the first sale doctrine is limited to physical items. "Here, a ReDigi user owns the phonorecord that was created when she purchased and downloaded a song from iTunes to her hard disk. But to sell that song on ReDigi, she must produce a new phonorecord on the ReDigi server. Because it is therefore impossible for the user to sell her “particular” phonorecord on ReDigi, the first sale statute cannot provide a defense. Put another way, the first sale defense is limited to material items, like records, that the copyright owner put into the stream of commerce. Here, ReDigi is not distributing such material items; rather, it is distributing reproductions of the copyrighted code embedded in new material objects, namely, the ReDigi server in Arizona and its users’ hard drives. The first sale defense does not cover this any more than it covered the sale of cassette recordings of vinyl records in a bygone era".  The Court did note, however, that digital music on an iPod, computer or CD would be protected by the first sale doctrine ("Section 109(a) still protects a lawful owner’s sale of her “particular” phonorecord, be it a computer hard disk, iPod, or other memory device onto which the file was originally downloaded. While this limitation clearly presents obstacles to resale that are different from, and perhaps even more onerous than, those involved in the resale of CDs and cassettes, the limitation is hardly absurd – the first sale doctrine was enacted in a world where the ease and speed of data transfer could not have been imagined.")

Having made those determinations, the Court then found ReDigi directly and secondarily liable for copyright infringement of Plaintiff's reproduction and distribution rights.  Summary judgment was granted in Plaintiff's favor, except on its claims relating to Plaintiff's performance and display rights and common law infringement.

Spanish Radio Stations Hit With Copyright Suit By Puerto Rican Publisher And Performance Right Society

Latin American Music Co., Inc. v. Spanish Broadcasting System, Inc.. No. 13-cv-1526 (S.D.N.Y. filed March 7, 2013).

Plaintiffs are a Puerto Rican publisher and a performing rights society (ACEMLA) alleging that the owners of several Spanish-language terrestrial radio stations (with websites that simultaneously stream the stations' content over the internet) are playing Plaintiffs' songs over the radio/web without a license.  An injunction is sought.

Magistrate Recommends Sony's Motion To Dismiss Royalty Case Should Be Denied

Mahoney v. Sony Music Entertainment, No. 1:12-cv-05045 (S.D.N.Y. filed 02/11/13) [Doc. 39].

Plaintiff Edward Mahoney brought this breach of contract action against Sony Music Entertainment for damages arising from a dispute over the amount of royalties owed under the parties' contract.  The parties' relationship is governed by a 1985 Agreement and 1991 amendment (collectively, the "Contract").  The Contract requires Sony to pay royalties to Mahoney in exchange for certain uses of Mahoney's musical recordings. Sony moved to dismiss Mahoney's third amended complaint, other than a digital downloads claim, alleging that Mahoney failed to comply with the Contract's notice-and-cure provision, a condition precedent to bringing a breach of contract claim.

The Magistrate Judge first discussed the standard on a Fed. R. Civ. P. 12(b)(6) motion to dismiss.  Then, the Magistrate Judge discussed the proper circumstances to consider documents beyond those attached to the Complaint, and found that the Contract and the notice letters referred to in the third amended complaint and attached to the parties' motion papers may be considered on the motion to dismiss.

Turning to the merits, the Magistrate Judge found that plaintiff's breach of contract claims should not be dismissed for alleged noncompliance with the Contract's notice requirement.  The Court found that Mahoney's third amended complaint expressly alleged compliance with the Contract's notice requirement. Further, the parties did not dispute that Mahoney sent and Sony received the letters, i.e., the two writings Mahoney proffered as notice letters.  Rather, Sony's challenged the adequacy of the purported notice, i.e., whether Mahoney's letters identified the nature of Mahoney's objections to the royalty statements with sufficient specificity.

Thus, the Magistrate Judge considered the standards for evaluating the sufficiency of the notice.  Applying those standards to the case, the Magistrate Judge found that the Contract's notice provision called for written notice of any alleged royalty deficiencies, but did not state what information must be contained in the notice.  "The Court will not allow the Contract's notice provisions to require, in essence, an audit before suit when the Contract did not directly require an audit."  Continuing, "this is not a case where the objecting party sent a vague notice and the allegedly breaching party (here, Sony) was precluded from curing because it could not obtain additional information; rather, Mahoney and Sony engaged in ongoing discussions of Mahoney's claims, during which they discussed the bases for Mahoney's objections and the potential for litigation in the absence of a resolution, and Sony had control of all of the royalty-related information."  Thus, in this context, the Magistrate Judge found that Mahoney's notice was sufficient to serve the general purpose of the contractual royalty notice requirement.  For these reasons, the Magistrate Judge recommended that Sony's motion to dismiss in part Mahoney's third amended complaint should be DENIED.

Sugarhill Sues Over "Uptown Anthem"

Sugarhill Music Publishing v. Warner/Chappel Music, Inc., No. 1:12-cv-09225-PAC (S.D.N.Y. complaint filed Dec. 19, 2012).

According to the complaint, plaintiff owns the copyright in the musical composition "That's The Joint" (1981), and defendants co-own the copyright in the musical composition "Uptown Anthem" (1991).  Plaintiffs allege in paragraph 7 of the complaint that defendants' song incorporates plaintiff's song by "using the three-syllable vocal phrase 'We gonna' and rhythmic pattern a total of 41 times, as a strong hook in the song."

Toto's Royalty Suit Against Sony Limited By Magistrate

Toto, Inc. v. Sony Music Entertainment, No. 12-cv-1434-LAK-AJP (SDNY report and recommendation Dec. 11, 2012).

Plaintiff Toto brought the action against Sony Music based on a dispute over the amount of royalties owed under the parties' recording contract.  Sony moved to dismiss, and the motion was granted in part and denied in part. The primary issue in the case ise the royalty rate for music distributed through download and mastertone providers (e.g., iTunes, eMusic, Amazon.com and Verizon Wireless).

The magistrate judge found that Toto's first claim based on royalty accountings for the audit period should be dismissed as contractually time barred.  The parties agreement had a 3 year limitation period (i.e., claims had to be brought within 3 years from the royalty report).  Toto's argument that August 2010 and December 2011 documentation restarted the time limitation was unavailing.  However, the magistrate judge found that the portion of Toto's first claim based on royalty accountings for the post-audit period should not be dismissed with respect to the digital download issue.  In other words, Toto stated a claim for breach of the recording contract for the period within the contractually agreed to 3 year limitation period.

The magistrate judge also found that Toto failed to plead the elements of equitable estoppel.  The Court held that purposefully delaying an audit was not a ground for invoking equitable estoppel.  Also, participation in settlement negotiations was not a ground for invoking equitable estoppel.

The magistrate judge also found that Toto's claim for breach of the implied covenant of good faith and fair dealing should be dismissed.  The claim did not state a distinct cause of action based on a separate set of facts and was not independent of the breach of contract claim.  The good faith and fair dealing claim was duplicative of the breach of contract claim.


Covenant Not To Sue Dooms Velvet Underground Copyright Claim Against Warhol

The Velvet Underground v. The Andy Warhol Foundation, No. 1:12-cv-00201-AJN (S.D.N.Y. filed Sept. 7, 2012) [Doc. 30].

The Velvet Underground sought a declaration that the Andy Warhol Foundation has no copyright in the iconic banana image used by the Velvet Underground and designed by Warhol.  The Warhol Foundation had covenanted not to sue the Velvet Underground for copyright infringement for the Velvet Underground's use of the banana image.  The Court held that the covenant not to sue eliminated any justiciable controversy between the parties over copyright in the design, and thus dismissed the Velvet Underground's declaratory judgment claim.  (The Velvet Underground's trademark claims were not the subject of the motion and were not dismissed).

In the decision, Judge Nathan does a thorough analysis of the Declaratory Judgment Act (28 U.S.C. 2201 et seq.), and specifically with respect to intellectual property cases.  Notably, the covenant not to sue was entered after the litigation had commenced, so the issue had been mooted by a subsequent development (the covenant).  The Court found that: "[I]n intellectual property cases, when a declaratory judgment plaintiff seeks a declaration that an asserted right is invalid or otherwise unenforceable and the declaratory judgment defendant provides the plaintiff with a covenant not to sue for infringement of that right, that covenant can extinguish any current or future case or controversy between the parties, and divests the district court of subject matter jurisdiction."  (Doc. 30 at pp. 6-7).

The Court held that the covenant at issue was broad, and then determined that there no longer was a "live, actual controversy."   First, the Court found that there was no real and substantial prospect that the Warhol Foundation's alleged copyright would impact the Velvet Underground's legal interests, and the Foundation's mere assertion of the right did not support a declaratory judgment claim.  The Covenant no only held litigation in abeyance, but it also vitiated any coercive force that the Foundation's alleged copyright might have had against the Velvet Underground.  Second, the Court held that the Declaratory Judgment Act could not be sued to test the validity of an affirmative defense that a plaintiff anticipates the defendant will assert, to wit: the Foundation claiming that its copyright shields it from trademark liability.  Third, the alleged adverse economic impact of the alleged copyright was not sufficiently immediate and real to warrant the issuance of a declaratory judgment.  "Without the 'how,' [the Velvet Underground] cannot show the controversy is 'real'; without the 'when', it cannot show the controversy is 'immediate'."  (Doc. 30, p. 14).  Fourth the right to an accounting under the Declaratory Judgment Act is not an independent cause of action, but is merely relief that may be granted.
 

LIVE Former Singer Sued For Use Of Band Name

Action Front Unlimited Inc. v. Edward KowalczykNo. 12-cv-5483 (SDNY complaint filed July 17, 2012).


Plaintiff furnishes the services of the rock band "Live" and owns numerous trademarks in the name LIVE.  Plaintiff claims that defendant, the former lead singer of Live, is committing trademark infringement by promoting and advertising his musical performances under the name ED KOWALCZYK OF LIVE.