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.

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.

Attorney's Fees Denied in Boston Ex-Guitarist Trademark Case

Scholz v. Goudreau, 1:13-cv-10951 (D. Mass. Feb. 16, 2017) Doc. 288).

In the trademark action involving an ex-guitarist from the bank Boston, the Court denied attorney's fees to the prevailing party finding that it was not an "exceptional" case under the Lanham Act.

Court Reconsiders Attorney's Fees In Madonna Horn-riff Case And Finds No Fees Warranted

VMG Salsoul v. Ciccone et al., No. 12-5967 (C.D. Cal. Sep. 23, 2016).

On remand from the 9th Circuit, and in light of the recent Supreme Court decision in Kirstaeng holding that objective unreasonableness is not the controlling factor in awarding attorney's fees, the district court in the Madonna "Vogue" horn-riff case held that Madonna was not entitled to attorney's fees under the Copyright Act even though she successfully defeated the infringement claim.  Finding it an "extremely close case," the Court found that under the totality of the circumstances an award of fees would not best serve the purposes of the Copyright Act.  Although certain factors favored the prevailing defendants, the Court found that the plaintiff's claims were not frivolous or objectively unreasonable.

Label Ordered To Pay Country Singer's Attorney's Fees After Dropping Copyright Suit

A-Blake Records v. Cassidy, No. 14-cv-3401 (S.D. Tex. Aug. 23, 2016).

A record label that sued a country singer for copyright infringement, but then conceded that there was no liability and asked the court to dismiss the case with prejudice, was ordered to pay the country singer's attorney's fees under the Copyright Act.  "Because the original suit was baseless, retaliatory, and it promotes the purposes of the copyright law, the singer will be awarded litigation costs and reasonable attorney's fees."  The label, apparently, filed the suit in retaliation for the singer filing for bankruptcy with a $700,000 debt owed the label (the label failed to meet the deadline to dispute the discharge of its claim in the bankruptcy).

Attorney's Fees Granted To Class Counsel In 'Happy Birthday' Action

Good Morning To You Prods. v. Warner/Chappell, No. 13-4460 (C.D. Cal. Aug. 16, 2016) [Doc. 360].

In the "Happy Birthday" class action case, the Court awarded class counsel attorney's fees of over $4.6 million under the Copyright Act.  Plaintiffs requested that the Court apply the percentage method, which courts often use to calculate fees in common-fund cases.  Applying the percentage method, courts typically calculate 25% of the fund as the "benchmark" for a reasonable fee award, providing adequate explanation in the record of any "special circumstances" justifying a departure..  Then, Courts use a rough calculation of the lodestar as a cross-check to assess the reasonableness of the percentage award.  Plaintiffs requested an upward departure from the 25% benchmark.  In considering this request, the Court considered all relevant circumstances, including: (1) the results obtained for the class, (2) effort expended by counsel, (3) counsel’s experience, (4) counsel’s skill, (5) the complexity of the issues, (6) the risks of non-payment assumed by counsel, and (7) the comparison of the benchmark with counsel’s lodestar.

Led Zep Publishers Denied Attorney's Fees After "Stairway" Trial

Skidmore v. Led Zeppelin et al., No. CV 15-03462 RGK (AGRx) (C.D. Cal. Aug. 8, 2016).

After winning the Led Zeppelin "Stairway To Heaven" trial, the Judge denied the defendant music publishers' motion for approx. $800,000 in attorney's fees and costs under section 505 of the Copyright Act.

Once the media hype and tangential distractions are stripped away, what remains is an objectively reasonable claim motivated by a desire to recognize Randy California’s musical contribution. The claim survived a summary judgment motion and proceeded to a hard-fought trial where a jury found for Plaintiff on ownership and access, but ultimately rendered a verdict for Defendants based on a lack of substantial similarity. Plaintiff was afforded a full opportunity to litigate its theory of infringement and Defendants were entitled to raise a meritorious defense, which ultimately prevailed. Viewing “all the circumstances of [this] case on their own terms, in light of the Copyright Act’s essential goals,” this Court concludes that attorney’s fees are not appropriate. Kirtsaeng, 136 S. Ct. at 1989.

Madonna's De Minimis Use Of Horn Segment In 'Vogue' Not Copyright Infringement

VMG Salsoul, LLC v. Madonna Louise Ciccone, No. 13-57104/14-55837 (9th Cir. June 2, 2016) [decision].

The 9th Circuit Court of appeals affirmed summary judgment in favor of Madonna, holding that any copying of the plaintiff's horn segment in the Madonna song "Vogue" was de minimis and not an infringement of either plaintiff's composition or sound recording.  However, the appellate court reversed the award of attorney's fees to Madonna, holding that plaintiff's claim, which was premised on a legal theory adopted by (only) the 6th Circuit that use of an identical copy of a portion of a sound recording is an infringement, was objectively reasonable.

The 9th Circuit had previously held that the de minimis exception applies to claims of infringement of a copyright composition, but it was an open question in the Circuit whether the exception applied to claims of infringement of a copyrighted sound recording.  The Court concluded that, as to both the composition and sound recording, an average audience would not recognize the appropriation.  And then, the Court refused to adopt the bright-line rule adopted by the 6th Circuit that for copyright sound recordings, any unauthorized copying - no matter how trivial - constitutes infringement.  (Bridegeport Music v. Dimension Films, 410 F.3d 792 (6th Cir. 2005)).  The 9th Circuit recognized that it was taking the unusual step of creating a circuit split, but found that it had an independent duty to determine congressional intent.  Accordingly, it held that the de minimis exception applied to sound recordings.

Attorney's Fees Denied to Prevailing Gaye Family in Blurred Lines Case

Williams v. Bridgeport Music, No. CV13-6004 (C.D. Cal. Apr. 12, 2016).

After winning a trial, the Gaye Family was denied its application for attorney's fees under section 505 the Copyright Act.  Also, the taxable costs requested by the Gaye Family, as the prevailing party, were reduced.  As to attorney's fees, the Court underwent an analysis of the "Fogerty" & "Lieb" factors, and found that the factors did not weigh in favor of the Gaye Family as the prevailing party.  "Beyond the success on the merits, little else supports their position.  This case presented novel issues.  How they would be determined was not, even with hindsight, something that was clear."

Beastie Boys & UMG Awarded Attorney's Fees In TufAmerica Copyright Action

TufAmerica, Inc. v. Diamond et al., No. 12-cv-3529 (S.D.N.Y. filed Mar. 9, 2016).

The Court awarded the Beastie Boys and their label, UMG, attorney's fees under section 505 of the Copyright Act, after they successfully defeated plaintiff's infringement claims at summary judgment.  The question at summary judgment was whether Plaintiff had standing (they did not), and the Court found that awarding fees furthered the objectives of the Copyright Act by deterring the filing and pursuit of lawsuits in which chain of title has not been properly investigated by the plaintiff.   The court reduced the Beastie Boys' lawyer's fees by 10% for some vague billing entries and duplicative work; 15% was reduced from the label's lawyer's fees based on vague and sparse entries.  Beastie Boys and UMG were also awarded costs.  The totals were:

• Beastie Boys: approx. $591k fees, approx. $11k costs
• UMG: appox. $234k fees, approx $8k costs

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.

EMI Awarded $3 million + in legal fees in MP3 Tunes Case

Capitol Records, Inc. v. MP3Tunes, No. 07-cv-9931 (SDNY 11/12/2015) [Doc. 724].

In the MP3Tunes case, the Court awarded the plaintiff record labels and music publishers attorney's fees under the Copyright Act.  Although slightly reduced (e.g., because of block billing), plaintiff were awarded just over $3 million in fees and costs.

Sir-Mix-A-Lot Awarded Attorney's Fees For Defeating Copyright Claim

Ford v. Ray, No. 15-0432 (W.D. Wash. Oct. 27, 2015).

After dismissing plaintiff's copyright claim and granting Sir-Mix-A-Lot attorneys fees under 17 USC 505, the Court awarded defendant $20,000 in fees.  The amount awarded was a reduction from the approximately $58,000 sought, based on partially redacted and duplicative time-sheets and avoiding putting the plaintiff in financial ruin.

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.

Beastie Boys Awarded Attorneys Fees For Copyright Infringement, But Reduced Amount

Beastie Boys v. Monster Engergy, 1:12-cv-06065-PAE (SDNY filed 06/15/15) [Doc. 216].

After succeeding against Monster Energy Drinks at trial, the Court found that the Beastie Boys were entitled to attorney's fees for Monster's willful copyright infringement but not in connection with the Lanham Act violation, which the Court found was not "exceptional".  Additionally, the Court significantly reduced the attorney's fees recoverable to approximately $660,000, from the over $2 million requested.

Partial Attorney's Fees Awarded In MP3Tunes

Capitol Records, Inc. v. MP3Tunes, No. 1:07-cv-09931-WHP-FM (SDNY filed 04/03/15) [Doc. 689]

Record company and music publisher plaintiffs, who succeeded at trial, moved for an award of partial attorneys' fees and costs under the Copyright Act, and pre-judgment and post-judgment interest under Fed. R. Civ. P. 59 against defendant MP3tunes.  The Court granted the motion for partial attorneys' fees, in part, denied the motion for pre-judgment interest, and granted the motion for post-judgment interest.

Bob Marley Heirs Succeed On Appeal In Merchandising Case

Fifty-Six Hope Road Music v. A.V.E.L.A., No 12-17502 (9th Cir. Feb. 20, 2015).

The 9th Circuit Court of Appeals affirmed judgment in favor of Bob Marley's heirs based on defendants' use of Bob Marley's image on t-shirts and other merchandise in a manner likely to cause confusion as to Plaintiffs' sponsorship of approval of the merchandise.  Additionally, the Court found that Defendants have waived several defenses by failing to properly raise them in the district court.  The appellate court also found that the lower court had not abused its discretion in determining defendant's profits and there was a sufficient evidence to find that defendants willfully infringed plaintiff's rights.  Nor did the lower court err in awarding plaintiffs their attorney's fees, as plaintiffs were the prevailing parties, and defendants' conduct was willful.  Plaintiffs also succeeded on their tortious interference claims because Plaintiffs' licensing agent testified that one of Plaintiffs' licensees lost an order intended for Wal-Mart because defendant sold t-shirts there. Defendants did succeed, however, in dismissing the right of publicity claim because under Nevada law a publicity right successor waives its publicity rights when it fails to timely register its rights.

Tejano Music Infringement Claim Fails Because No Access And Not Enough Similarity

Guzman v. Hacienda Records & Recording Studio, Inc., No. 6:12-CV-42, 2014 BL 344493 (S.D. Tex. Dec. 09, 2014).

After a bench trial, the Court dismissed plaintiff's copyright infringement claim because the alleged infringers did not have access to plaintiff's work nor were the two works strikingly similar.  This case is about two Tejano songs -- a hugely popular style of music in Corpus Christi from the 1970s through the 1990s, that is a a fusion of the Mexican and German influences in Texas. Although the Court found that substantial similarity existed between the songs, the Court declined to find the much higher standard of striking similarity, which is necessary for a finding of factual copying without any proof of access.  The Court also found that the evidence did not support a finding that defendants had access to plaintiff's song. The Court concluded that it was purely speculative that anyone associated with defendant heard plaintiff's song on the radio on the occasions when it was actually played, or ever heard it performed live.  "Because [plaintiff] has not shown a reasonable possibility that Defendants had access to his song, he cannot show that they copied it and his copyright infringement claim fails".

11th Cir. Finds Summary Judgment Properly Granted In Favor of BMI And Against Tavern; Adopts 2nd Cir. Davis v. Blige

BMI v. Evie's Tavern Ellenton, Inc., No. 13-15871, 2014 BL 329074 (11th Cir. Nov. 21, 2014).

The 11th Circuit affirmed summary judgment in favor of the performing rights society BMI, rejecting the defendant-tavern's argument that there were questions of material fact as to the copyright ownership of the musical compositions at issue and as to whether defendants were innocent infringers.  With respect to the chain-of-title for the five songs at issue, the court examined each chain of title, and further found that the district court properly found that BMI could be awarded judgment on each song in addition to the copyright holder (generally, the music publisher who owned the copyright).  As BMI agreed to be responsible for all costs and expenses pursuing infringement actions based on the titles that BMI licenses from copyright owners, the number of them to whom summary judgment is granted made no difference in the award of damages, attorneys' fees and costs.  Thus, there was no error in granting summary judgment to the other plaintiffs (the copyright owners) under Fed. R. Civ. P. 61.

As to innocent infringement, the Court affirmed that is not a defense to summary judgment liability, and instead is only a consideration as to the amount of statutory damages to award.  The court also found that an award of attorney's fees was appropriate.  Notably, the 11th Circuit joined the rule adopted by the Second Circuit in Davis v. Blige, 505 F.3d 90, 99 (2d Cir. 2007) that a copyright co-owner may maintain and recover in a copyright infringement action without joining other co-owners.  See fn. 2.