Rick Ross "Hustlin'" Case Revived After 11th Cir. Holds Copyright Registrations Should Not Have Been Invalidated Absent Proof Of Scienter

Roberts v. Gordy, No. 16-12284 (11th Cir. Dec. 15, 2017).

The 11th Circuit held that, in a case brought by hip-hop artists over the use of their song "Hustlin'" in the dance song "Party Rock Anthem," the lower Court erred in invalidating the plaintiffs' copyright registrations.  The District Court had sua sponte raised the issue of invalid copyright registrations and failure to demonstrate ownership in dismissing the case at summary judgment.

First, the Appellate Court held that invalidity was not raised as an affirmative defense, and therefore should not have been the basis for dismissal, as it was waived by the defendants.  Second, the Appellate Court held that the lower court applied the wrong standard -- specifically on the element of scienter -- in finding that there had been a fraud on the copyright office in obtaining the registrations.  

Rappers are skilled in poetry and rhythm—not necessarily in proper copyright registration procedures. While error is not generally a strong legal argument, it is a sufficient counter to a claim of Fraud on the Copyright Office. This is not a case where Rapper A attended a Rapper B concert, heard a delightful song, stole the composition, and fraudulently registered it with the Copyright Office—far from it. There is no dispute by any party that Appellants authored and created Hustlin’, and there is no dispute that they continue to receive the writers’ share of royalties from their musical composition. Furthermore, Appellees never proffered any argument or theory as to why Appellants would attempt to deceive the Copyright Office, when they are, in fact, the undisputed authors. As indicated by the absence of any sort of motive for deception, the errors made in each of the registrations were done in good faith. As portions of the ownership interest were acquired by record companies, those companies— incorrectly, but in good faith—filed for a new registration to protect their newly acquired interests presumably under the assumption that no previous registration had been filed.

Accordingly, the case was remanded.  "The Appellants were erroneously 'hustled' out of court, and now deserve to be heard on the merits."

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.

Big Pimpin Suit Continues With Triable Issues Of Fact

Fahmy v. Jay-Z et al., No. 2:07-cv-05715 (C.D. Cal. May 27, 2015).

In the copyright infringement action concerning Jay-Z's song Big Pimpin', the Court denied plaintiff's motion for partial summary judgment seeking to dismiss defendant's "license" affirmative defense.  The Court concluded that there were triable issues of fact as to whether plaintiff conveyed any performance rights he owned in the infringed song.  The Court also concluded that there was a genuine dispute of material fact as to whether defendants received a license to publicly perform the song as part of Big Pimpin' through their asserted chain of title or as a result of BMI blanket licenses.

License Agreements Preclude Copyright Infringement Claim; 6th Circuit

Murphy v. Lazarev, No. 14-5028 (6th Cir. Oct. 17, 2014) [File Name: 14a0790n.06]

The Sixth Circuit affirmed dismissal of copyright infringement and breach of contract claims by two American co-authors of a song, Almost Sorry, against a Russian pop artist because there were numerous licensing agreements that granted defendant sweeping permission to record and perform the song.  First, the Court held that the defendant did not waive his affirmative defense of "license," even though defendant did not file an answer to the amended complaint, because the plaintiffs were on notice of his affirmative defenses from an early stage in the lawsuit (when defendant filed a pro se letter in response to the complaint), thus satisfying the purposes of Rule 8.  Second, the Court held that defendant had a valid express sub-license to record the song until 2013.

Use Of Rapper's Image On Website Constitutes Copyright Infringement And Violated Right Of Publicity; Questions Remain on Trademark And Third-Party Contribution Claims

Jackson v. Odenot, No. 09-cv-05583 (S.D.N.Y. filed March 24, 2014) [Doc. 150].

Rapper 50 Cent was granted summary judgment on his claims against a website for the unauthorized use of photographs that appeared on the masthead of the website.  50 Cent's claim for copyright infringement was based on a registration for a sound recording which included the relating artwork/photos, and exact copies were used by the defendants.  50 Cent's claim under New York state law for the right of publicity (Civil Rights Law sections 50-51) succeeded because: (1) the pictures "are recognizable likenesses of Jackson because someone familiar with Jackson would be able to identify him in each of the mastheads", and (2) defendants' waived their statute of limitations defense.  However, the Court found that there were questions of fact that precluded summary judgment on 50 Cent's claim under the Lanham Act for false endorsement, 15 USC 1125(a)(1), and also on his claim for common law unfair competition.  The Court did dismiss the defendants' affirmative defenses of fair use, implied license, equitable estoppel, and unclean hands, and found that the other affirmative defenses had been abandoned.  Lastly, the Court held that defendant could not recover on a contribution theory under copyright and trademark law against the third-party defendants, but could seek contribution under the New York state claims.

Copyright Claim Stated Despite Oral License Defense

Ortiz v. Guitian Music Brothers Inc., No. 07 Civ. 3897, 8/12/09 NYLJ "Decision of Interest" (S.D.N.Y. July 22, 2009) (Sweet, J.).

Defendants' FRCP 12(b)(6) motion to dismiss copyright amended complaint denied. According to the amended complaint, plaintiff was solicited to create a series of musical works to be used as the instrumental score for a movie, and plaintiff was to receive certain payments. Plaintiff composed the works for the movie, and 13 works were used as the background instrumental score. The movie was ultimately released, distributed, and sold featuring the works as the background instrumental score. Plaintiff alleges non-payment.

After discussing the Rule 12(b)(6) standard, the Court found that plaintiff had sufficiently plead his claim for copyright infringement under the Rule 8 pleading standards, which require a copyright complaint state: (1) which specific original works are the subject of the claim; (2) that plaintiff owns the copyright; (3) that the works have been registered in accordance with the copyright statute; and (4) by what acts and during what time defendant has infringed the copyright.

Defendants argued that their affirmative defense precluded the action - namely, that plaintiff granted defendants an oral nonexclusive license to use the works in connection with the creation and distribution of the movie. The Court rejected this argument; it was not persuaded that he limited facts alleged in the amended complaint conclusively established such an oral nonexclusive license.

The Court observed that even if it had found such an oral nonexclusive license was apparent on the face of the amended complaint, plaintiff would not be precluded from bringing his copyright claim "because it is further alleged that Defendants did not perform their part of the understanding between the parties." In other words, a licensor can bring an action against a licensee who exceeds or breaches the license agreement. "Indeed, absent consideration, nonexclusive licenses are revocable." Assuming an oral license did exist and plaintiff's allegations of non-payment were true, such license was revocable, and by instituting the action, plaintiff revoked any license that may have existed.

Therefore, the Court denied defendants' motion to dismiss.

"My Humps" Licensing Suit

Tolliver v. McCants, 05 Civ. 10840, 4/7/09 N.Y.L.J. "Decision of Interest" (S.D.N.Y. decided Mar. 25, 2009)

In 1982, plaintiff collaborated with defendant to produce a music album that included a recording of a musical composition entitled, "I Need a Freak." In 2005, defendant licensed the composition to the popular music group, The Black Eyed Peas, for use in their hit single, "My Humps." At issue in this case is whether the grant of the license by defendant infringed upon plaintiff's copyright to the composition. Both parties cross-moved for summary judgment. Plaintiff's motion was granted; defendant's denied.

Issues:

Statute of Frauds: No writing assigning to defendant right to license work for derivative works, therefore no valid assignment so that the license for "My Humps" violated plaintiff's copyright.

Statute of Limitations: "conundrum" between the limitations period for an ownership claim and an infringement claim

Adding affirmative defense (laches) on summary judgment motion, 2.5 years after litigation commenced.

VideoEgg Answer

Prior post - Defendant's Answer.

Viacom v. YouTube - Answer

Though not a "music case" per se, we venture to link to the Defendants' Answer in Viacom v. YouTube. The outcome of this case, without doubt, will have a tremendous impact on the world of copyright and in turn, the evolution of the music business in the digital age.

In reading the Answer, note that Defendants take the rare step of providing an introduction Rather than merely admit, deny, or d.k.i, Defendants offer a glimpse at their theory of the case.

Note also that Defendants assert twelve affirmative defenses. Although this case is pending in Federal Court in the Southern District of New York, in New York State courts (and especially the Second Department), one sentence affirmative defenses bereft of any factual support are subject to dismissal. Here, the affirmative defenses are one sentence and completely bereft of any factual support. [New York practioners: if you would like case citations, shoot an e-mail to OCTS.) Would Plaintiff's lawyers pursue such a motion, or would it be a waste of time, especially if Defendants can file an Amended Answer?

Fool's Game

A month ago, OTCS reported that Michael Bolton et al. was sued by his money manager for breach of contract.

In a bizarre twist, and with probable implications under New York's Civil Practice Law and Rules (i.e., the CPLR), Michael Bolton (and many of the defendant's from the original action) have filed a summons with notice in New York Supreme Court, New York County -- the very same jurisdiction where the original suit was filed -- against Executive Monetary Management, Plaintiff in the original action, for alleged breach of fiduciary duty, fraud, and fraudulent concealment. Damages alleged are $5 mil.

Why is this being filed as a separate suit, rather than as counterclaims or affirmative defenses in the original action under CPLR 3018(b) and 3019? What are the implications for these claims not being asserted in the Answer of the original action, especially if they arise out of the same transaction? Litigators: this one's for you!

[Stowaways LLC; The Second Time Around LLC; MBO Tours Inc.; MBO Productions Inc.; Passion Realty LLC; MB Swings II LLC; Montaigne Records LLC; Passion Films Inc.; M Bolton Entertainment LLC; Bolton Power Blues LLC; Michael Bolton; Mr. Bolton's Music Inc.; Is Hot Music Ltd.; Passion Music Inc.; Bona Justitia Music Inc. v. Executive Monetary Management Inc. Filed 1/14/2008; Case no. 08-600111]