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.

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

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

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

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

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.

Co-Ownership Claims In Jay-Z Songs Time Barred; 2nd Cir.

Mahan v. Roc Nation, No. 15-1238cv (2d Cir. Feb. 24, 2016).

A former Roc-a-fella Records sound engineer's copyright co-ownership claims in certain Jay-Z recordings, brought 14 years after the recordings were made and released, are time-barred, holds the Second Circuit Court of Appeals in affirming the lower court's dismissal of the claim.  The Court found that defendants had expressly repudiated the plaintiff's ownership claim years prior, when the multi-million copy selling albums were released without attribution to him or the payment of any royalties.  Accordingly, the clock started ticking then.  The Court further found that the defendants were properly awarded their attorney's fees under the Copyright Act, and remanded solely for a determination of the amount of fees available on the appeal.

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.

Second Circuit Affirms Dismissal Of Untimely Copyright Claims Against 50 Cent

Simmons v. Stanberry, No. 14-3106-cv (2nd Cir. Jan. 15, 2016).

Plaintiff, who alleged he was the exclusive licensee of a hip-hop beat later sold to rapper 50 Cent and successfully exploited by him, was too late in filing a lawsuit against the licensor and 50 Cent, says the Second Circuit in affirming dismissal of Plaintiff's copyright claims.  Plaintiff was aware of the dispute of defendants' right to exploit and use the beat, and of the alleged infringement, but waited more than three years to file suit.  Relying upon Kwan v. Schlein, 634 F.3d 224 (2d Cir. 2011), the Court held that notwithstanding the occurrence of allegedly infringing acts within three years of filing the action, the suit was nonetheless barred by the Copyright Act’s three-year statute of limitations, 17 U.S.C. § 507(b).  Because Plaintiff's ownership claim was time barred, he could not revive the time-barred claim of ownership of a copyright interest by relying on the defendants’continued exploitation of the copyright within three years of his filing suit.

Sampling Case Against B.I.G. Dismissed

Hutson v. Notorious B.I.G., LLC et al., No. 14-cv-2307-RJS (SDNY Dec. 22, 2015) [Doc. 51].

On a Rule 12(b)(6) motion, the Court dismissed plaintiff Lee Hutson's copyright infringement claims against the Notorious B.I.G.'s successor, label, publisher, record company and distributor, which alleged unauthorized sampling of Plaintiff's 1973 song (composition and sound recording) "Can't Say Enough About Mom" in the Biggie song "The What" appearing on the 1994 album "Ready To Die."  Plaintiff alleged that he first discovered the unauthorized sample in 2012, and brought suit in 2014.  In his amended complaint, plaintiff alleged infringement of the composition, of the sound recording outside the USA, and the digital performance right of the sound recording.

The Court dismissed each claim.  After noting the standard on a Rule 12(b)(6) motion, and discussing which documents outside of the pleadings it would consider (e.g., agreements, the sound recording, copyright registrations, certificates of incorporation), the Court then turned to each cause of action.

First, the Court found that Plaintiff lacked standing.  Although Plaintiff alleged that he owned 50% of the copyright in the composition, the Court found that allegation implausible for the time of the infringement (1994-the present) because the agreements submitted did not establish that he had a chain of title, and further, the allegation that plaintiff was "doing business as" a certain entity was insufficient given corporate formalities.  [The Court did note in dicta, fn. 4, that the statute of limitations defense likely failed.]  Similarly the Court found that Plaintiff failed to plead ownership of the sound recording because of a a prior lawsuit in which the settlement included an assignment to the record label as well as a release.

Second, the Court found that it lacked jurisdiction over infringement occurring abroad.

Accordingly, the Court dismissed the claims.  The Court even dismissed claims against a non-moving defendant.

Lastly, the Court denied Plaintiff's application for leave to amend, as futile.

Attorney's Fees Awarded To Village People Member

Scorpio Music v. Willis, No. 11-cv-1557 (S.D. Cal. filed 9/15/15) [Doc. 280].

In a dispute over the percentage of copyright ownership over the Village People's hit songs (including "YMCA") that went to a jury trial, the Court held that an original member of the group and author (invidivually and jointly) of various songs was entitled to attorney's fees as the prevailing party.  17 USC 505.  The court found that Mr. Willis was the prevailing party and that he achieved a high degree of success: he defeated Plaintiff's claim that he could not unilaterally terminate his grants of copyright under 17 USC 203, prevailed on a number of summary judgment motions brought on the grounds of statute of limitations and laches, and prevailed on 13 of the 24 compositions at trial (including YMCA, the most lucrative).  Specifically, the Court found that granting fees would advance the purposes of the Copyright Act inasmcuh as Mr. Willis was "trying to get back what he transferred to Plaintiffs, parties with superior bargaining power, decades ago.  An award of attorney's fees is justified to encourage authors like Willis to assert their rights to regain their copyright interests and to deter production companies and other transferees of copyright from attempting to interfere with those rights."  Willis sought an award of approximately $527,000, and the Court did not find that an upward or downward adjustment was warranted.  Costs of approximately $3,000 were also taxed.

Jay-Z Awarded Attorney's Fees For Defeating Copyright Claim On Statute Of Limitations Grounds

Mahan v. Roc Nation LLC, Case 1:14-cv-05075-LGS (SDNY filed 07/17/1) [Doc. 81].

After defeating an alleged co-owner's copyright infirngement claims on statute of limitations grounds, the Court awarded Jay-Z and related parties attorney's fees of over $280,000.  The Court found that the Defendants were entitled to attorneys’ fees because Plaintiff’s claims under the Copyright Act were plainly time barred and therefore objectively unreasonable.  The amount of fees requested was reduced by 10%, however, because Plaintiff asserted five total claims, one of which was a state law claim which, unlike the Copyright Act, did not permit a grant of attorney's fees.

Stairway To Heaven Copyright Infringement Survives Dismissal, Transferred From Philly To Calif.

Skidmore v. Led Zeppelin,  14-cv-03089 (E.D. Pa. filed 05/06/15) [Doc. 54].

Plaintiff alleged Led Zeppelin copied significant portions of its iconic 1971 song “Stairway to Heaven” from plaintiff's copyrighted guitar composition “Taurus,” and that all of the Defendants (the band members, publisher and label) have exploited and continue to exploit “Taurus” as “Stairway to Heaven.”  Plaintiff sued all Defendants for direct, contributory, and vicarious copyright infringement and also brought a claim for equitable relief in the form of an order directing Defendants and the Copyright Office to include Plaintiff as a writer of “Stairway to Heaven."  Defendants moved to dismiss for lack of jurisdiction and improper venue.

The Court found the individual Defendants (band members) were not subject to either general or specific jurisdiction in Pennsylvania, where the case was filed.  Notably, because there is a three-year statute of limitations for copyright claims, the Court found that contacts with Pennsylvania in the 1980s and 1990s were not relevant to the Court's analysis.  These Defendants, however, consented to personal jurisdiction and venue in the Central District of California.  The Court found a transfer to California to be in the interests of justice.

Sirius To Be Liable To Turtles On Pre-1972 Sound Recording Claims

Flo & Eddie, Inc. v. Sirius XM Radio Inc., 1:13-cv-05784 (S.D.N.Y. filed Jan. 15, 2015) [Doc. 114].

The Court found that Sirius will be found liable to the Turtles' successor in interest for common law copyright infringement of pre-1972 sound recordings, but deferred entering judgment as to liability until the plaintiff decided whether to proceed individually or as a class action representative.

First, the Court rejected Sirius' argument that the plaintiff's had not yet established ownership of the recordings.  The Court found that documentary evidence of the transfer of rights from the Turtles to the plaintiff was not required because an assignment of common law copyrights need not be in writing to be valid under New York law; that a court may infer that a transfer has taken place from subsequent conduct.

Second, the Court rejected Sirius' argument that it had an implied license.  There was no evidence that the recordings were created at Sirius' request (indeed, Sirius did not even exist when the recordings were made), nor any evidence that plaintiff "handed over" the recordings to Sirius (let alone with intent for Sirius to copy and distribute the recordings).  Mere acquiescence was insufficient.

Third, the Court rejected Sirius' waiver and estoppel defenses.  The Court found that plaintiff's failure to pursue infringement actions for many years while the recordings were played on the air did not constitute a waiver.  Inaction was insufficient.  The estoppel defense failed because there was no proof that Plaintiff made any false representations to Sirius or concealed any material fact with intent to deceive.  Even if Sirius relied on general industry practice as to pre-1972 recordings, and the lack of any lawsuits over the years challenging that practice, the Court found that was distinguishable from relying on affirmative conduct by the plaintiff.

Fourth, the Court found that there is a three year statute of limitations under New York law, and that while plaintiff's claim was not time-barred, it could only recover damages for infringement going back three years.  The Court distinguished the case from those in which ownership of the copyright is in dispute between the parties; here, infringement is the primary issue (there is no claim by Sirius that it owns the copyrights).

Lastly, the Court found that it would defer on ruling on the merits until the issue of class certification was decided.  The Court directed plaintiff to notify it if it intends to proceed individually or as a class action representative.

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.

Some Claims Time-Barred In "Happy Birthday" Suit

Good Morning To You Productions et al. v. Warner-Chappell Music, No. 2:13-cv-04460 (C.D. Cal. filed 10/16/13) [Doc. 71].

Plaintiffs seek a declaration, pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201, that Defendants do not own the copyright to or possess the exclusive right to demand licensing fees for the use of Happy Birthday to You (the “Song”), and that the Song is in the public domain. In Claim Two, they seek relief based upon the entry of declaratory judgment,pursuant to 28 U.S.C. § 2202, including an injunction, restitution, and an accounting of Defendants’ monetary benefits obtained from Plaintiffs in connection with their claim of ownership of the Song.

Defendants moved to dismiss, and the Court granted the motion to the extent of dismissing those claims that fall outside the Copyright Act's 3-year statute of limitations (with leave to amend).  "Because Plaintiffs’ declaratory judgment and relief claims are 'civil action[s] maintained under the provisions' of the Copyright Act, they are subject to § 507(b)’s three-year statute of limitations."

Beastie Boys Avoid Several Copyright Claims In Sampling Case

TufAmerica, Inc. v. Diamond et al., No. 12-cv-3529-AJN (S.D.N.Y. filed Sep. 10, 2013).

Plaintiff brought a copyright infringement action against the Beastie Boys alleging unlawful sampling of 6 pieces of plaintiff's music in five Beastie Boys songs that appear on two Beastie Boys albums (Paul's Boutique and Licensed to Ill).  Defendants moved to dismiss for failure to state a claim under Rule 12(b)(6).

The Court agreed with plaintiff that the standard for determining substantial similarity was "fragmented literal similarity", rather than "ordinary observer" standard.  Under the "fragmented literal similarity" standard, the question was whether the copying went to trivial or substantive elements.  Thus, the "real question" for the Court was whether Plaintiff had alleged that each sample was "quantitatively and qualitatively important to the original work such that the fragmented similarity becomes sufficiently substantial for the use to become an infringement."  Under the quantitative analysis, the concept of de minimis copying is relevant.  Also, the analysis is of the original song -- not of the use in the allegedly infringing song; therefore, the Court was not persuaded by Plaintiff's allegation in its original complaint that the samples were concealed to a casual listener of the Beastie Boys' songs.  Thus, the Court then went on a song-by-song analysis, which included a discussion of whether the sampled portion was even copyrightable material, and dismissed four of the claims based on 4 of the samples.  Lastly, under the statute of limitations, the Court also limited the surviving claims to infringements occurring after May 2009 (3 years before the suit was filed).

Dismissal Of Bay City Rollers' Royalties Suit Upheld By 2nd Circuit

Mitchell v. Faulkner, No. 13-576-cv (2d Cir. filed 8/29/2013).

The Second Circuit affirmed the lower court's Rule 12(b)(6) dismissal of plaintiffs' (Bay City Rollers) claims for unpaid royalties based in the alternative on breach of contract and unjust enrichment.  The contract claim failed because it was barred by the statute of frauds, in that any agreement to pay royalties extending beyond one year must be in writing to satisfy the statute of frauds.  The unjust enrichment claim failed because it was barred by the statute of limitations.  As stated by the Second Circuit
A claim for unjust enrichment must be based on the value of plaintiffs’ contribution to the joint effort of the band at the time it made the relevant records, not on the income stream resulting from a revival over thirty years later. That contribution and the failure of the defendants to pay for the value of the effort occurred well over six years ago and is barred by the statute of limitations.  N.Y.C.P.L.R. § 213.


Vogue Sample Suit Against Madonna Survives Dismissal

VMG Salsoul LLC v. Ciccone, No. 2:12-cv-5967 (C.D. Cal. filed 1/29/13) [Doc. 29].

Defendant's motion to dismiss under Rule 12(b)(6) -- on the basis of de minimis copying and statute of limitations -- denied.

The factual allegations are: Plaintiff owns the composition and sound recording copyrights of "Love Break", released in or about 1977.  Defendants Madonna and Pettibone are “credited with creating the
sound recording” of the song “Vogue,” a “tremendously” successful single that has been on several “top
ten” lists of the best dance songs of the 1990s and was performed by Madonna at the Super Bowl halftime
show on February 5, 2012.  Plaintiff alleges that Defendant “sampled” “numerous but intentionally hidden” portions of Love Break into Vogue—specifically, that the horn and strings in Vogue are “intentionally sampled from Love Break throughout.”  It further alleges that the sampled portions of Love Break were “intentionally hidden” throughout Vogue, “so as to avoid detection.”

In addressing the Defendants' argument that any copying was de minimis, the Court found that such argument was better suited for summary judgment and should not be decided on a motion to dismiss.  Similarly, on the statute of limitations argument, the Court found that evidence was required to determine whether the plaintiff was unaware of the infringement, and that lack of knowledge was reasonable under the circumstances.

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.


Rick Ross Name Claim Time Barred

Ross v. William Leonard Roberts II, No. BC450511 (Superior Court for the State of California, County of Los Angeles).

It is reported that a lawsuit accusing rapper Rick Ross, his label and others of misappropriating the name and identity of former drug kingpin "Freeway" Ricky Ross, has been dismissed based on an expired statute of limitations. The Judge ruled that the former drug trafficker's claims were barred by the two-year statute of limitations under California's single publication rule and the doctrine of laches. Per the Court, the rapper's first hit single received significant radio play beginning in 2005 and alerted plaintiff, who was in prison at the time, that his name was being used commercially.

80s Rock Band Argues Copyright Claim Is Time Barred

McCarthy et al. v. Johannesson et al., No. 1:11-cv-07422 (N.D. Ill. filed Jan. 17, 2012) [Doc. 28].

In moving to dismiss pursuant to Rule 12(b)(6), defendants-- members of the 80s rock band "Poison" -- argue that because over 20-25 years have passed since plaintiffs claim that defendants violated plaintiffs' supposed copyright in four of plaintiffs' songs, the action is "spurious and hopelessly timebarred". Additionally, defendants argued that several of the claims are barred because plaintiffs do no have copyright registrations for the songs at issue.