Assignment Of Rights In Song Found, Even Absent The Executed Copy Of The Agreement

ERIC A. ELLIOTT p/k/a FLY HAVANA, v. JOSEPH ANTHONY CARTAGENA p/k/a FAT JOE, et al.; No. 19 Civ. 1998 (NRB) (S.D.N.Y. 01-05-2022).

Plaintiff brought this action alleging copyright infringement based on claims that he is the coauthor and co-owner of the song “All The Way Up.” Defendants, including the rapper “Fat Joe,” moved for summary judgment and the Court granted the motion.

Central to the motion was the admissibility under Rules 1003 and 1004 of the Federal Rules of Evidence of a draft of a contract that defendants maintain establishes that Plaintiff contractually assigned away all of his rights in the song. The signed contract could not be located, despite extensive efforts to find the original signed document. Addressing the “best evidence” rule, the Court found:

We start by examining whether defendants have established that the Draft Agreement is admissible to prove the contents of the agreement signed by Elliott. According to the best evidence rule, “[a]n original writing . . . is required in order to prove its content unless these rules or a federal statute provides otherwise.” Fed.R.Evid. 1002. Two relevant exceptions to this rule are codified in Rules 1003 and 1004 of the Federal Rules of Evidence. The first exception is that a document may be admissible as a duplicate of the original document. Fed.R.Evid. 1003. It is undisputed that Elliott and Fat Joe met at an IHOP in March 2016. Parties' Rule 56.1 Stmts. ¶ 5. At the meeting, Fat Joe presented Elliott with a “piece of paper, ” which Elliott signed and left with Fat Joe, as well as a $5, 000 check, which Elliott took with him and later deposited. Id. ¶¶ 8-12. Fat Joe's transactional attorney, Erica Moreira, has submitted a sworn declaration that she prepared the “piece of paper” following a request on March 2, 2016 from Fat Joe. Moreira Sept. 18, 2019 Decl. ¶¶ 4-7 (ECF No. 131-2). According to Moreira, the document that she prepared is the Draft Agreement, which was “tailored” to include Elliott's driver's license information, taken from a picture of Elliott's license that Pacheco had emailed to Moreira on the morning of March 11, 2016. Id. at ¶¶ 5-6; ECF No. 131-3. Later that afternoon, Moreira emailed the Draft Agreement to Pacheco and Fat Joe, titling the email “Work For hire for Andrew Eric Elliot - Writer who is claiming a portion of All The Way Up.” ECF No. 145-1. Both of these emails have been submitted to the Court. Fat Joe's own sworn declaration states that he subsequently printed Moreira's Draft Agreement without altering it and brought it to the meeting with Elliott. Cartagena Decl. at ¶¶ 6, 8 (ECF No. 131-1). Accordingly, in our July 31, 2020 Order, we held that the Draft Agreement, ECF No. 145-1, is admissible as a duplicate to the same extent as the original agreement under Fed.R.Evid. 1003.

Having found that the Draft Agreement is admissible as a duplicate of the original, the next issue is whether the duplicate is evidence of the contents of the agreement. The answer is clearly yes, under the “well recognized exception [to the best evidence rule] . . . that secondary evidence may be admitted in lieu of the original provided the original has not been lost, destroyed or become unavailable through the fault of the proponent and provided the copy does not otherwise appear to be untrustworthy.” United States v. Knohl, 379 F.2d 427, 441 (2d Cir. 1967). Defendants have invoked the exceptions listed in Rule 1004(a) and (b) to support the introduction of the Draft Agreement to establish the contents of the agreement signed at the March 2016 meeting. Defs. Mot. at 15 (ECF No. 184-11). With ample, unchallenged evidence that the Draft Agreement is the document that Elliott signed, the only issue is whether the defendants have adequately explained their inability to produce the signed version.

According to Rule 1004 of the Federal Rules of Evidence, “[a]n original is not required and other evidence of the content of a writing . . . is admissible if: (a) all the originals are lost or destroyed, and not by the proponent acting in bad faith; [or] (b) an original cannot be obtained by any available judicial process.” Before seeking to “satisfy [this exception], the party seeking to prove the contents of the writing must establish a proper excuse for the nonproduction of the document and that the original did exist.” Bobcar Media, LLC v. Aardvark Event Logistics, Inc., 354 F.Supp.3d 375, 382 (S.D.N.Y. 2018) (internal quotation marks and citation omitted). As an initial matter, there is no dispute that a signed, original version of this agreement existed, as has been attested to by both defendants and Elliott. According to both Fat Joe and Elliott, during the March 2016 meeting, “Elliott signed the agreement, returned it to [Fat Joe], and took the check [presented with the agreement].” Cartagena Decl. at 7 (ECF No. 131-1); see also Elliott Decl. at 11 (ECF No. 155) (“After I signed the document, he immediately took the document and did not provide me a copy.”). With no dispute regarding the existence of an original, signed version of the document, we next determine whether defendants have provided sufficient explanations for their inability to produce it

The court then went on to conclude that the defendants had established that the contract was lost, that the document could not be located through judicial process (eg, subpoenas), and that the draft agreement showed that the plaintiff assigned plaintiff’s rights in the song.

The plaintiff’s other arguments also failed: copyright act statute of frauds (plaintiff admitting signing the document), lack of consideration (a $5,000 check), and fraudulent inducement (merger clause in the draft agreement).

Labels Avoid Unfair Competition Counterclaims In Piracy Case For Lack Of Standing

UMG Recordings Inc. v RCN Telecom Services, LLC, CV1917272MASTJB, 2021 WL 2810145, [DNJ June 30, 2021]

Plaintiffs record companies, suing for contributory and vicarious copyright infringement, alleged that an internet service provider (ISPs), RCN, encouraged and profited from widespread copyright infringement by their end users. The defendants counterclaimed, alleging that the record labels and a a technology company engaged in the business of detecting online copyright infringement. (Rightscorp) violated violated California's Unfair Competition Law (“UCL”) by “sending millions of unsupported emails accusing RCN's customers of BitTorrent-based copyright infringement, while intentionally destroying the evidence necessary to determine whether any of those accusations were true.”

The court held that the counterclaim was not subject to heighted. “RCN alleges that Counterclaim Defendants engaged in unfair business practices that conceal potential acts of fraud, including spoliation of evidence and sending large volumes of infringement notices without verifying their accuracy.”

However, the Court concluded that the defendants lacked standing. “… RCN has not pled a cognizable economic injury under the UCL. RCN asserts a number of claimed injuries based on Counterclaim Defendants’ alleged conduct, none of which is sufficient to confer standing.” For example, RCN received notifications from various entities, and RCN failed to allege “that it created its DMCA System specifically because of Rightscorp's infringement notifications or that Rightscorp's infringement notifications imposed any additional costs on RCN.” Further, the court held that RCN’s legal costs were not a recognizable injury - RCN failed to explain how they went outside the Noerr-Pennington doctrine.

Trademark Proceedings Do Not Preclude Infringement Claims Over Band Name; 3rd Circuit

Beasley v Howard, 14 F4th 226 [3d Cir 2021]

In a long in a long-running dispute over the rights to the band name “Ebonys,” the 3rd Circuit held that proceedings to cancel a trademark before the TTAB did not have claim preclusive effect against trademark infringement lawsuits in federal district court. The plaintiff had filed two petitions in the TTAB to cancel the EBONYS trademark, which were dismissed. He then sued in federal court, alleging infringement. The lower court dismissed the claims on the basis of the TTAB proceedings, but the appellate court reversed.

Beasley appeals, so we now consider whether trademark cancellation proceedings before the TTAB have claim preclusive effect against trademark infringement lawsuits in federal district courts. We hold that they do not. The TTAB's limited jurisdiction does not allow trademark owners to pursue infringement actions or the full scope of infringement remedies in proceedings before it. Because the judgments of tribunals with limited jurisdiction have limited preclusive effect, we will reverse and remand in part the District Court's order so that the District Court may determine the scope and plausibility of Beasley's claims. But we will affirm the District Court's order to the extent it dismisses any claim that Howard defrauded the U.S. Patent & Trademark Office (“PTO”).

“Exclusive Ownership” Does NOT Include Public Performance Right Under CA Statute; 9th Cir

Flo & Eddie, Inc. v Sirius XM Radio, Inc., 17-55844, 2021 WL 3716788 [9th Cir Aug. 23, 2021]

In the long running “Flo & Eddie” case involving pre-1972 sound recordings and satellite radio, the 9th Circuit holds that the California statute providing state-law copyright protection for pre-1972 sound recordings does not include a right of public performance. Taking a “textualist” approach to the statutory language, the decision is based upon a historical analysis of state law copyright protection: “the term ‘exclusive ownership’ retains a historical meaning that predates the Federal Copyright Act and differs from the modern dictionary's definitions of those two separate words.” The court held that the common law meaning of “exclusive ownership” in the 19th century did not include the right of public performance, and therefore presumed that California did not intend to upend the common law when it used the same language in its statute (amended at various times).

Thus, if “exclusive ownership” under California's common law in 1872 did not include the right of public performance, then that original meaning of “exclusive ownership” remains the only legal meaning unless the California legislature expressly changed it. Flo & Eddie does not point to any evidence suggesting that the California legislature intended to upend the common law understanding of “exclusive ownership” when it enacted its first copyright statute in 1872.

Flo & Eddie, Inc. v Sirius XM Radio, Inc., 17-55844, 2021 WL 3716788, at *8 [9th Cir Aug. 23, 2021]

The lower courts’ grant of summary judgment was reversed and the case was remanded for entry of a judgment consistent with the parties’ contingent settlement agreement.

Record Label Not Subject To Personal Jurisdiction In New York

Gordon v. Chambers, et al. 1:20-cv-00696 (E.D.N.Y. Jan. 29, 2021) 

A New York federal court dismissed copyright infringement claims against the record label TenThousand Projects, LLC based on a lack of personal jurisdiction. Plaintiff Seth Gordon’s (“Yung Gordon”) asserted infringement claims arising out of the introductory segment of rapper Tekashi 6ix9ine’s song “Stoopid”, which allegedly used the plaintiff’s radio drop without authorization. Plaintiff argued that Tekashi’s origin in New York and his New York lawyer, who represented him regarding matters with the record label, gave proper jurisdiction to a New York court. The Court disagreed. Interpreting N.Y. C.P.L.R. § 301 and 302 to determine the personal jurisdiction issue, the court found that the relationship between the record label and the New York rapper did not create a basis for personal jurisdiction, as the contract between the parties was grounded in California. The representation of a New York lawyer did not qualify as sufficient enough, in addition to the failure to meet the state’s long-arm statute. Therefore, the Eastern District of New York ruled in favor of the Defendant’s motion to dismiss the case as against the label based upon a lack of personal jurisdiction.

HBO Must Arbitrate Michael Jackson Estate's Claims

Optimum Productions vs Home Box Office, No. 19-56222 (9th Cir. Unpublished opinion dated 12/14/2020).

The 9th Circuit held that HBO was required to arbitrate breach of contract and disparagement claims brought by Michael Jackson’s estate pursuant to a 1992 contract. The contract concerned a documentary film called Live in Bucharest, contained a broad arbitration clause, and prohibited HBO from disparaging or commenting on Jackson’s personal life. HBO years later aired a show about Jackson’s personal life (including claims of child abuse), and it included in part footage from the 1992 film. The existence of the contract was undisputed, and the 9th Circuit held that the contracts continuing validity was an issue for the arbitrator, not the court, to decide.

Case Against Taylor Swift Over Lyrics Continues

Hall v. Swift, No. CV 17-6882-MWF (ASx), 2020 U.S. Dist. LEXIS 165214 , 2020 WL 5358390 (C.D. Cal. Sep. 2, 2020)

Sean Hall and Nathan Butler, who own the copyrights to the 2001 song “Playas Gon’ Play” by 3LW, filed a copyright infringement action against Taylor Swift and her label. Hall and Butler allege that Swift copied their lyrics in the chorus of her song “Shake it Off.” The allegedly similar lyrics are Taylor Swift’s: “Cause the players gonna play, play, play, play, play / And the haters gonna hate, hate, hate, hate, hate,” and Hall’s and Butler’s: “Playas, they gonna play / And haters, they gonna hate / Ballers, they gonna ball … .”

In 2018, the US District Court of Central California originally granted Defendant Swift’s motion to dismiss on the grounds that plaintiffs’ lyrics lacked sufficient originality to enjoy copyright protection. Hall and Butler appealed the dismissal and in 2019, the 9th Circuit Court of Appeals reversed the dismissal and denied Taylor Swift’s motion to dismiss because the plaintiffs sufficiently plead their case of originality of the lyrics and could not be decided as a matter of law at this point.

On September 2, 2020, the case returned to the US District Court and Swift’s motion to dismiss was denied. The court refused Swift’s Merger Doctrine argument that the idea, people are going to do whatever they are going to do, can only be expressed in one way because at this stage, the court cannot conclude as a matter of law that the Merger Doctrine applies to this action.

The court further disagreed with Swift that the combination of words, playas/players playing along with hatas/haters hating, is an arrangement of unprotectable elements because there are at least two, and perhaps as many as nine, creative choices that Swift copied, precluding dismissal at this point.

Lastly, the court was not persuaded by Swift’s argument that there was only a narrow range of available creative choices so that the works would have to be virtually identical to be substantially similar because at this stage of the lawsuit, the court is not ready to determine the range of creative choices available. The case will proceed to trial.

Contributory Infringement Claims Proceed Against Internet Provider

UMG Recordings, Inc. v. RCN Telecom Servs., LLC, No. CV1917272MASZNQ, 2020 WL 5204067, at *3 (D.N.J. Aug. 31, 2020)

UMG Recordings brought contributory and vicarious copyright infringement actions against an internet provider (RCN) and its management company (Patriot) for enabling RCN subscribers to repeatedly download and share UMG copyrighted songs. RCN received more than five-million email notifications requesting that RCN warns its subscribers to stop and then cancels the subscribers that refused to stop. RCN made no meaningful changes to its policies and continued to cater all infringing subscribers. On August 31, 2020, a Federal Court in New Jersey denied RCN’s motion to dismiss and allowed Plaintiffs’ Contributory Infringement claim because Plaintiffs sufficiently plead both elements. 1) Knowledge: sufficient knowledge was inferred from the email notifications RCN received; and 2) Material Contribution: material contribution was inferred from RCN’s conduct to continue to provide its network to subscribers that were known repeat offenders. The court also allowed Plaintiffs’ vicarious liability claim because Plaintiffs successfully demonstrated RCN’s right and ability to supervise their subscribers, and RCN’s financial incentive to tolerate the infringing conduct of its subscribers. However, the court dismissed all claims against Patriot because Patriot’s role of providing management services to RCN did not sufficiently establish that Patriot had knowledge of the infringement notices that RCN received or that Patriot had knowledge of the infringement committed by RCN’s subscribers. Plaintiffs’ claims against RCN will proceed into the discovery stage of the lawsuit, while Plaintiffs’ claims are not allowed to continue against Patriot.

No Proof Of Access To Plaintiff's Songs Dooms Copyright Infringement Claim

William Smith et al. v. Abel M. Tesfaye (“The Weeknd”) et al. 2:19-cv-02507 (C.D. Cal. July 22, 2020)

A Los Angeles federal court has ruled for The Weeknd against claims that his track “A Lonely Night” was copied from “I Need to Love” by a trio of British musicians. The court expressed that there was no showing by Plaintiffs that The Weeknd had access to their song or that their works were substantially similar. The Complaint alleges claims for: (1) direct copyright infringement (against all defendants); (2) contributory copyright infringement (against all defendants); (3) vicarious copyright infringement (against all defendants); (4) declaration of authorship/ownership; (5) accounting - declaratory relief; (6) constructive trust - declaratory relief; and (7) unjust enrichment. In their Motion for Summary Judgment, Defendants argued that Plaintiffs’ did not have any evidence that Defendants had access to Plaintiffs’ song and because the protectable elements in “I Need to Love” are not substantially similar to “A Lonely Night.” In an opinion issued on July 22, 2020, the Court of the Central District of California granted Defendants’ Motion for Summary Judgement. The Court ruled that Plaintiffs were unable to sufficiently establish genuine issues of material fact regarding the elements of access and substantial similarity. The Court said that it found no evidence those involved with the creation of “A Lonely Night” had any access to the song “I Need to Love”. Also, the lyrics in the two songs are not similar. Therefore, the Court concluded there was no reasonable inference for anything more than a “bare possibility” that Defendants accessed “I Need to Love. After discovery Plaintiffs still had no evidence of any license. Without evidence of a license, Plaintiffs’ state law claims fail as a matter of law. Additionally, without evidence of a license, Plaintiffs’ state law claims lack the “extra element” required to avoid the Copyright Act’s preemption provision. The Court thus ruled in favor of summary judgement for Defendants on Plaintiffs’ state law claims. Since Plaintiffs failed to establish genuine disputed issues of material fact concerning Defendants’ access to Plaintiffs’ musical composition or that Defendants’ musical composition is substantially similar to Plaintiffs’ work in its protectable elements, the Court ruled in favor of summary judgement for the Defendants on all issues.

Vicarious Liability Claim Against Network Fails

UMG RECORDINGS, INC. V. BRIGHT HOUSE NETWORKS, LLC No. 8:19-CV-710-MSS-TGW, 2020 WL 3957675 (M.D. Fla. Jul. 8, 2020)

UMG Recordings brought a claim that Bright House Networks, LLC is vicariously liable for copyright infringement committed by its users. These users are claimed to have unlawfully downloaded and shared songs by UMG. Defendants argued that Plaintiffs did not adequately plead the two elements of vicarious liability and therefore, the court should dismiss the claims as a matter of law. The elements of vicarious liability are (1) the right and ability to supervise the infringing activity, and (2) a direct financial interest in the activity. The Court granted the Motion to Dismiss Plaintiffs’ First Amended Complaint as to the Claim for Vicarious Liability. The reasoning that the Court used was that Plaintiffs did not adequately allege that Defendants received a direct financial benefit from the activities of its users, which was enough reason to deny the vicarious liability claim.

Sample Case Against Jay-Z and Timbaland Dismissed For Lack of Specificty

HINES V. ROC-A-FELLA RECORDS, LLC No. 19-CV-4587 (JPO), 2020 WL 1888832 (S.D.N.Y. Apr. 16, 2020)

Plaintiff Ernie Hines coauthored the soul single “Help Me Put Out The Flame” in the 1960s. Hines alleged that the sample from that song was used in two hip-hop songs without permission. Hines brought suit against four major record labels, as well as prominent artists Jay- Z and Timbaland. The court granted Defendant’s motion to dismiss. Defendants argued that Hines’s complaint did not specify the material from his song was copied in “Paper Chase”, co- authored by Jay-Z and Timbaland, or “Toe 2 Toe” which was authored by Timbaland. The Court agreed with Defendants that the complaint only contained broad allegations of similarity. Defendants also sought dismissal on grounds that the complaint failed to allege “whether and when the copyright ... was registered pursuant to statutory requirements.” The Court rejected the Defendants motion to dismiss on these grounds. However, the Court ruled in favor of Defendants’ motion to dismiss based on lack of specificity. The court also found that service of process had not been properly completed. Leave to amend was conditioned on Hines’s payment of the costs and attorney’s fees incurred by the Record Label Defendants in filing and defending their motions to dismiss.

Claims Regarding Graphic On Guitar Dismissed

Webster v. Dean Guitars, No. 19-10013, 2020 WL 1887783 (11th Cir. Apr. 16, 2020)

Dean Guitars won on summary judgement against Buddy Webster aka Buddy Blaze in a case of copyright infringement and unfair competition. Buddy Webster, a successful guitar maker and technician, claimed that he owned the copyright to a lightning storm graphic that originally appeared on Darrell Abbot’s guitar. Buddy Webster was the designer of Abbot’s guitar and commissioned someone to paint the lighting storm graphic on the guitar. Dean Guitars has been producing and selling guitars based on Abott’s guitar, without consent from Webster and without paying any royalties to Webster. In 2017, Webster brought suit against Dean and others in U.S. District Court for the Central District of California alleging copyright infringement, unfair competition, and false endorsement. The case was then transferred to U.S. District Court for the Middle District of Florida. The district court granted summary judgment in favor of Dean Guitars concluding that the copyright infringement claim was actually one for copyright ownership and time-barred; the statements underlying the unfair competition claim were not false or misleading; and there was no evidence presented showing consumer confusion. On appeal the district court’s holding was affirmed in favor of Dean Guitars.

Absence of Registration Dooms Copyright Case Against Ricky Martin; 1st Cir.

CORTÉS-RAMOS V. MARTIN-MORALES No. 19-1358, 2020 WL 1847072 (1st Cir. Apr. 13, 2020)

Luis Adrian Cortes-Ramos sued Rickey Martin, alleging violations of federal copyright law and Puerto Rico laws. Plaintiff alleged that Ricky Martin’s music video was similar to Plaintiff’s. The district court dismissed Plaintiff’s claims pursuant to Fed. R. Civ. P. 12(b)(6). The First Circuit affirmed in part and vacated in part the decision of the district court. The Court held that the district court was correct in holding that the complaint did not state a proper copyright claim by not alleging registration. However, the district court erred by dismissing the complaint with prejudice because plaintiff had otherwise alleged a copyright claim and on remand the court should consider whether plaintiff could supplement his allegations concerning registration.

California Common Law Copyright Win For IHeartMedia

PONDEROSA TWINS PLUS ONE V. IHEARTMEDIA, INC. No. 16-CV-05648-VC, 2020 WL 3481737 (N.D. Cal. Jun. 26, 2020).

Plaintiff, Spicer, filed a complaint claiming that IHeartMedia improperly made use of Spicer’s sound recordings. The claim argued that Defendant committed common law copyright infringement under section 980 of the California Civil Code. The court dismissed all of the Spicer’s claims with leave to amend and granted Defendant’s motion to dismiss. There was no indication that common-law copyright in the 1960s included preventing someone from playing a sound recording publicly. The Court also mentioned that regardless of the common law copyright laws that existed at the time, Spicer lost rights to the recordings once the recordings were published. The Court ruled that the alleged infringement of public-performance copyright did not exist.

Termination Rights Class Action Against Sony Music Entertainment to Proceed

Johansen v. Sony Music Entertainment Inc., No. 19-cv-1094-ER, 2020 WL 1529442 (S.D.N.Y March 31, 2020).

On February 5, 2019, musicians David Johansen, John Lyon, and Paul Collins (collectively, “Plaintiffs”) filed a copyright infringement and declaratory judgment class action against Sony Music Entertainment based on Sony’s continued exploitation of the Plaintiffs’ copyrighted sound recordings despite being served with termination notices.  On June 11, 2019, Sony filed a motion to dismiss the action for failure to state a claim because the Plaintiffs’ termination notices are untimely, deficiently identify the grants being terminated, deficiently identify the dates of execution of the grants, and that these errors are not harmless so the notices are invalid. Addressing Sony’s assertions, the court determined based on the record before it that it is entirely plausible that Johansen’s and Lyon’s notices were timely, and that Collins’ untimeliness was due to a “scrivener’s error,” which would make it harmless error, so dismissing the suit without more information would be inappropriate.  Moreover, the court determined that the Plaintiffs provided sufficient information about the sound recordings in issue to overcome omissions of details about the grants being terminated, so “the general harmless error rule may apply.” As a result, the court denied Sony’s motion to dismiss. 

Termination Rights Class Action Against UMG Recordings to Proceed

Waite v. UMG Recordings, Inc., No. 19-cv-1091-LAK, 2020 WL 1530794 (S.D.N.Y March 31, 2020)

In 2018, John Waite and Joe Ely filed a copyright infringement class action against UMG Recordings based on UMG’s failure to stop marketing and selling sound recordings after being served with termination notices for such recordings. In response, UMG filed a motion to dismiss arguing that since termination rights do not apply to works for hire, whether a work was made for hire is a copyright ownership issue, and Plaintiffs claim to own the copyrights in issue, that the core of Plaintiffs’ claims revolve around ownership. Based on this, Defendants asserted that the presence of work for hire provisions in the Plaintiffs’ recording contracts signed in the 1970s and 80s alerted them of ownership issues at the time of signing, and that the statute of limitations has therefore run on the Plaintiffs’ claims. Refuting this argument, the court stated that while ownership is relevant to Plaintiffs’ claim, “the gravamen of plaintiffs’ claim is defendant’s refusal to recognize their termination rights,” and to apply a three year statute of limitations to claims involving termination rights, which do not vest until 35 years after copyright assignment, “would thwart Congress’s intent and eviscerate the right itself.” As a result, the court denied Defendant’s motion to dismiss as to all claims, except for those relating to declaratory relief, copyrights transferred by third parties, and sound recordings made prior to January 1, 1978.

9th Circuit Upholds Attorneys’ Fees Award to Universal Music Group in Copyright Infringement Suit

Apps v. Universal Music Group, Inc., Nos. 18-15889, 18-15987, 2020 WL 1514971 (9th Cir. March 30, 2020)

On March 30, 2020, the 9th Circuit affirmed a district court award of $41,955 in attorneys’ fees and $946.23 in costs to Universal Music Group Inc. (“UMGI”) in a copyright infringement suit involving the John Newman Song, “Love Me Again.” The Plaintiff, Alissa Apps, sued Newman, and other parties, including “UMGI,” which is a “holding company that does not create, develop, perform, market, sell, distribute, or exploit recorded music or musical compositions.” After awarding UMGI summary judgment, the district court awarded UMGI attorneys’ fees and costs incurred after the Plaintiff deposed UMGI’s in-house counsel, which revealed that UMGI “has no business operations” and “does not exploit music in any way,” thus rendering UMGI an improper defendant. On appeal, the 9th Circuit deemed that the district court’s reasoning under the Fogerty and Kirtsaeng factors for awarding attorneys’ fees was not an abuse of discretion, and thus it affirmed the fees and costs award.

Middle District of Tennessee is Ruled Proper Venue for Eminem’s Suit Against Spotify

Eight Mile Style, LLC v. Spotify USA Inc., No. 3:19-cv-0736, 2020 WL 1640425 (S.D.N.Y April 2, 2020)

In August 2019, Eight Mile Style and Martin Affiliated, two music companies that own songs recorded by Eminem, filed a complaint in the U.S. District Court for the Middle District of Tennessee against Spotify. The complaint alleged that Spotify infringed the copyrights of various Eminem songs through its music streaming platform by falsely claiming to own a valid license to the songs and making them available for Spotify’s users to stream. Spotify then filed a motion to dismiss for lack of personal jurisdiction and improper venue, or in the alternative to transfer the case to the S.D.N.Y. because New York is where Spotify’s licensing personnel, which it expects to be involved in the case, are located. In denying Spotify’s motion, the court found that there was specific jurisdiction over Spotify because making its interactive music streaming available within the Middle District of Tennessee was purposeful availment of the forum and users in the district have streamed the compositions in issue so there was a sufficient link between the availment and underlying claims for specific jurisdiction. Additionally, the court deemed that exercising jurisdiction was not unreasonable, so personal jurisdiction existed. For the same reasons, the court determined that venue was proper as well. Finally, the court denied the Defendant’s request to transfer the case to the S.D.N.Y. because “no district would be totally free of inconvenience.”

9th Circuit Affirms Led Zeppelin Trial Verdict That "Stairway To Heaven" Is Not An Infringement

Skidmore as Trustee for Randy Craig Wolfe Trust v. Zeppelin, No. 16-56067, No. 16-56287, 2020 WL 1128808 (9th Cir. Mar. 9, 2020) (en banc)

In an en banc decision, the 9th Circuit affirmed the Central District of California’s post-jury trial judgment in favor of Led Zeppelin in a suit alleging that Led Zeppelin’s song “Stairway to Heaven” infringed the song “Taurus” written by guitarist Randy Wolfe of the band Spirit.

In Part I of the en banc decision, the court held that the 1909 Copyright Act controlled the court’s analysis because the allegedly infringed song “Taurus” was registered prior to the 1976 Copyright Act’s enactment. As a result, it was not error for the lower court to refuse to admit the sound recordings of “Taurus” to evidence.

In Part II, the court held that proving copyright infringement here required a showing that (1) the plaintiff owned a valid copyright for “Taurus,” and (2) Led Zeppelin copied protected elements of “Taurus,” which further required a showing of both copying and unlawful appropriation by Led Zeppelin.

In Part III, the court concluded that as it pertained to access and confusion with substantial similarity, the lower court’s exclusion of the “Taurus” sound recordings was moot because the jury found access regardless.

Next, in Part IV the court addressed the following issues regarding the district court’s jury instructions: (1) “the failure to give an inverse ratio instruction”; (2) “the sufficiency of the court’s originality instructions”; and (3) “the failure to give a selection and arrangement instruction.” In addressing these issues, the court held that (1) an inverse ratio was not required for substantial similarity; (2) the district court’s originality instructions were proper; and (3) failure to give selection and arrangement instruction receives plain error review, there was no plain error by the district court, there was no error by the district court because the plaintiff’s case did not involve a selection and arrangement theory at trial, and the district court’s instructions as a whole were fair and adequate as to plaintiff’s argument of extrinsic similarity between the songs.

Finally, in Part V the court held that the district court’s trial time limits, response to a jury question, admission of expert testimony, and non-award of attorneys’ fees was not error.

Unjust Enrichment Claims Against Publishers Partially Preempted by the Copyright Act

Berrios-Nieves v. Fines-Nevarez, No. 18-cv-1164-JAG, 2020 WL 981671 (D.P.R. Feb. 28, 2020)

The U.S. District Court for the District of Puerto Rico partially dismissed Plaintiff Luis Berrios-Nieves’ complaint for unjust enrichment and collection of money against Defendants Warner Chappell Music and Sony/ATV. The court found that Plaintiff’s claims for unjust enrichment were preempted by the federal Copyright Act because it was based on the “Defendants’ misattribution of ownership over the musical, which was “equivalent in substance to a copyright infringement claim.” Similarly, the court held that Plaintiffs claims for collection were preempted by the Copyright Act to the extent that they were not based on a contract with co-defendants, which would require application of state contract law and avoid preemption. The court reasoned that such claims were preempted because they are the equivalent of a claim for accounting or compensation based on the Plaintiff’s status as a co-owner of a copyright under the Copyright Act. Additionally, the court granted Defendants’ motion to dismiss all of Plaintiff’s copyright claims relating to Plaintiff’s albums finished before March 25, 2015 because they were barred by the Copyright Act’s three-year statute of limitations.