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).

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.

Santa Clause Is Comin To Town Reverts To Author's Heirs In 2016

Baldwin v. EMI Feist Catalog, 14-182-cv (2d Cir. Oct. 8, 2015).

The Second Circuit held that EMI publishing owned rights to the song "Santa Clause Is Comin' To Town" under a 1981 grant, not a 1951 grant, and accordingly that a 2007 termination notice terminates EMI's interest in 2016, reversing the lower court's entry of summary judgment for EMI.  The case details the complex statutory scheme under the 1976 Copyright Act which gave authors and their statutory heirs the right to terminate previously made grants of copyright under certain circumstances, and thereby to recapture some of the value associated with the works.  17 USC 203 and 304(c)-(d).  Plaintiff sought a declaration that either a notice of termination served on the publisher in 2007 or another served in 2012, will, upon becoming effective, terminate EMI's rights to the song.  The Second Circuit concluded that EMI owned rights to the song not under a 1951 agreement but instead under a subsequent 1981 contract, and that that the 2007 termination notice will terminate the 1981 agreement in 2016.  Accordingly, plaintiff (the author's heirs) were entitled to a declaratory judgment.

The Court detailed the various rights of reversion under the Copyright Act, which permits the author of certain earlier works to terminate a grant of copyright (e.g., to a publisher, like EMI's predecessor).  It then found that a 1981 Agreement not only granted EMI the future interest scheduled to revert to the author upon termination, it also replaced an earlier 1951 agreement as to the source of EMI's existing rights to the song.  Applying New York common law, the Court held that the parties intended for the new contract to substitute for the old one.  "Section 1 of the contract shows that they chose not only to have EMI receive the future interest that vested in [the author] upon service of the termination notice, but also to replace the 1951 Agreement as the source of EMI's existing rights in the Song."  Thus, the failure to record a 1981 termination notice under the 1951 agreement was irrelevant to the question whether EMI presently owned the copyright in the Song under either agreement.  Its rights to the renewal term were traceable to the 1981 agreement.  Thus, that was all that matters for decided plaintiffs' termination notices pursuant to section 203.

The Court concluded that Plaintiff could terminate the 1981 agreement under section 203 (section 304 did not control), and that the 2007 termination notice terminated the 1981 agreement.  Publication is a one time event that occurred in the 1930s.  Because the 1981 grant was executed by the author and does not cover the right of publication, it was terminable under section 203 starting on December 15, 2016, which is the effective date of termination stated in the 2007 notice.

Fraudulent DMCA Take-Down Notice May Be Basis For Claim If iTunes Stores Music At Direction Of A User

Distribuidora De Discos Karen, C por A. v. Seijas, No. 13 Civ. 5200 (NRB), 2015 BL 93133 (S.D.N.Y. Mar. 26, 2015).

Denying defendants' motion to dismiss, the Court held that: (1) a misrepresentation claim under the DMCA may be predicated on a technically defective take-down notice; (2) a misrepresentation claim under the DMCA must be predicated on a take-down notice that is not directed towards activity that the DMCA protects; and (3) it was premature to decide whether Apple stores music on iTunes "at the Direction of a User."  Accordingly, a notice sent by Defendants to iTunes stating that certain recordings had not been licensed for distribution can be the subject of a misrepresentation claim under the DMCA even if it did not meet all the statutory requirements for such a notice, but, such a claim could only apply if the notice was “directed at ‘storage at the direction of a user,' ” which might or might not have been true in the instant case.

Here, defendants and plaintiffs disputed who owned certain publishing and sound recording rights.  The artists' counsel sent Apple a take-down notice, saying that “no license has been issued” with respect to the recordings.  Apple then dropped the subject recordings from iTunes, and plaintiffs sued, alleging misrepresentation under the Digital Millennium Copyright Act of 1998, 17 U.S.C. § 512(f).  The DMCA creates a notice-and-takedown procedure for allegedly infringing copies of works posted online, and subsection (f) creates a cause of action for sending fraudulent takedown notices.  Defendants moved to dismiss for failure to state a claim.  The Court found that the communication to Apple “was not so deficient as to fall outside the reach of subsection 512(f).”  But, the remaining issue was whether iTunes falls within the section 512(c) safe-harbor, to wit: "whether Apple stores music on iTunes 'at the direction of a user,' 17 U.S.C. § 512(c) (1)".  The Court found that "the complaint simply does not state enough facts about iTunes for us to say what happens behind the scenes, so we cannot decide at the present stage whether iTunes stores music at the direction of users."  Accordingly, the motion to dismiss was denied.

Super Bowl Shuffle Case Belongs In Federal Court; Remand Denied

Den v. Renaissance Marketing Corp., No. 14-cv-2999, 2014 BL 303007 (N.D. Ill. Oct. 28, 2014).

In case concerning defendants' alleged use of the "Super Bowl Shuffle" without plaintiff' authorization, a federal court in Illinois held that the case should remain in federal court as preempted by the federal Copyright Act.  Accordingly, plaintiffs' motion to remand to state court was denied.

The Super Bowl Shuffle is a song and music video trumpeting the success of the 1985 Chicago Bears.  Plaintiffs initially brought a case in Illinois state court alleging that defendants were not assignees of the record label's interest and therefore defendants were improperly benefiting from the marketing, distribution and licensing of the song without authorization.  Defendants removed the case to federal court, claiming that the state-law claims (for constructive trust, injunctive relief, conversion, unjust enrichment, and accounting) were preempted by the Copyright Act.  Plaintiffs moved to remand to state court.

The Court held that removal of the case to federal court, under 28 USC 1441, was proper.  The Court found that the Copyright Act preempted the state law causes of action for conversion, declaratory judgment and injunctive relief.  17 USC 301.  Plaintiffs were not just seeking to enforce the royalty agreement with the label, as defendants allegedly were improper assignees of the contract.  The rights seeking plaintiff sought to enforce were really copyright claims, protecting plaintiffs "against the world."  Other claims -- for constructive trust, unjust enrichment, and an accounting -- were not preempted, but the Court retained supplemental jurisdiction.

Judgment Creditor Can Have Receiver Appointed To Sell Copyrights In Master Recordings To Satisfy Debt

Hendricks & Lewis PLLC v. Clinton, No. 13-35010 (9th Cir. June 23, 2014; amended Aug. 27, 2014 [decision]).

The 9th Circuit affirmed an order appointing a receiver and authorizing the sale of copyrights in four master sound recording owned by the musician George Clinton to satisfy judgment obtained by his former lawyers for past-due attorneys' fees.  The 9th Circuit held that under Washington law, the copyrights were subject to execution to satisfy judgments against Clinton.  Further, section 201(e) of the Copyright Act did not protect Clinton from the involuntary transfer of his copyrighted works.  "Section 201(e) is of no help to Clinton because he is not the 'author' of the Masters within the meaning of the Copyright Act. Thang specifically agreed in its 1975 contract with Warner Bros. that Warner Bros. would be the sole owner of the master recordings resulting from the parties’ contract. Thang and Clinton were 'deemed [Warner Bros.’s]
employees for hire' in the same contract.  As noted, the parties signed a substantially similar agreement in 1979, and it is uncontested that all four Masters were created under these agreements. *** [E]ven if the Masters were not originally 'works for hire,'  § 201(e) protection does not apply where a copyright was
previously 'transferred voluntarily by that individual author.' There is no question that Clinton transferred any interest that he had in the Masters to Warner Bros., and, as part of a settlement arising from unrelated litigation, Warner Bros. subsequently agreed to transfer ownership back to Clinton. These voluntary transfers provide yet another basis for rejecting Clinton’s argument that he enjoys § 201(e) protection as the original author of the master sound recordings."  Accordingly, it was not an abuse of discretion to appoint a receiver to manage or sell ownership of the copyrights.  Clinton's defenses raise on appeal -- judicial estoppel and fraud on the court -- lacked merit.  Other defenses were waived for failure to raise them below, and in any event lacked merit.

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."

Green Day's Use Of Illustration During Concert Was Fair Use, But Attorney's Fees Denied

Seltzer v. Green Day, Inc. et al., No. 11-56573 [D.C. No. 2:10-cv-02103] (9th Cir. Aug. 7, 2013).

The 9th Circuits affirmed summary judgment in favor of the defendants, but vacated the attorney's fees award, in an artist's action alleging violations of the Copyright Act and the Lanham Act relating to the rock band Green Day's unauthorized use of an illustration ("Scream Icon") in the video backdrop of its stage show.

The Court found that use of the illustration in the video backdrop was a fair use under the Copyright Act: it was transformative, the illustration was a widely disseminated work of street art, the illustration was not meaningfully divisible, and the video backdrop did not affect the value of the illustration.  As to the trademark claims, the artist failed to establish any trademark rights.  In vacating the attorney's fees award under the Copyright Act, the Court found that even though defendant was successful on their fair use defense, the plaintiff did not act objectively unreasonably ("there is simply no reason to believe that Seltzer should have known from the outset that his chances of success in this case were slim to none.").

CLE "Does The DMCA Apply To Pre-1972 Sound Recordings"

This afternoon, David Rabinowitz and I co-presented a CLE entitled "Why The Internet Distribution of Pre-1972 Sound Recordings Is Different From Everything Else In Copyright Law -or- Does The DMCA Apply To Pre-1972 Sound Recordings."  Topics included a brief history of copyright in sound recordings, the scope of common law copyright protection, federal preemption of common law copyright (except for pre-1972 recordings), related claims of unfair competition, the DMCA safe-harbor, conflicting case law on whether the DMCA safe-harbor applies to pre-1972 recordings, and conflicting decisions on whether there is immunity for service providers under the Communications Decency Act.  Thank you to those who attended.

Congress To Review Copyright Law

The Chairman of the House Judiciary Committee, Bob Goodlatte (R-Va.), announced that the committee "will conduct a comprehensive review of U.S. copyright law over the coming months."  Continuing, the Chairman stated: "The goal of these hearings will be to determine whether the laws are still working in the digital age."  Press release here.

No Infringement Of Plot

Bolfrass v Warner Music Group, No. 1:12-cv-06648-LLS (S.D.N.Y. filed 04/02/2013) [Doc. 13].

Plaintiff alleged that a song published by defendant Warner Music ("Warner") infringed his copyright on his screenplay, in violation of the Copyright Act of 1976.  Warner moved to dismiss and for attorneys fees.  Warner's motion to dismiss was granted and its application for the award of attorney's s and costs was denied.

First, the Court examined whether Plaintiff's "plot" was afforded copyright protection.  The Court found that "the similarity two works here lies in their concepts, abstracted to a high degree of generality. Both are based on a concept of planetary breakdown and space travel, but their treatment is very different."  It concluded that "Because the lyrics of "Exogenesis: Symphony" do not express a plot, they do not infringe on "Panspermia: ExoGenesis."  The online liner notes a plot, but one that is far too abstract and general to infringe on Bollfrass' copyright."  Accordingly, the copyright claim was dismissed.

Second, the Court examined Plaintiff's claim for unfair competition, and found that it was preempted by the Copyright Act.  "Bollfrass' claim for unfair competition based only on Jarner's distribution of the allegedly
infringing song is therefore preempted by the Copyright Act.".

Third, the Court examined Warner's request for attorneys fees.  Ultimately, the request was denied on a "close call."

KC/Sunshine Case Dismissed For Lack Of Standing

Smith v Casey, No. 1:12-cv-23795 (S.D. Fla. 3/21/2013) [Doc. 71].



Plaintiff was the administer of an estate of a recording artist, songwriter, producer, and musician who died in 2012. The decedent was the sole author of the musical composition entitled Spank.  Plaintiff alleged that, “[d]espite receipt of Decedent Smith’s Cease and Desist notice Defendants KC, Harrick Music, Sunshine Sound, Horne and Joy Productions have continued to commercially exploit the Composition ‘Spank.’  Count I of Plaintiff’s Complaint was for copyright infringement of the Spank composition only, and only for the period from November 28, 2011, when the Cease & Desist Letter was written, through the present.


Defendants moved to dismiss the copyright claims against them on either of two separate grounds: (1) Plaintiff lacks standing to sue for copyright infringement, given that he never registered his copyright interest; and (2) the Complaint contains insufficient allegations of infringement activity.  The Court agreed that the copyright infringement count should be dismissed for all Defendants because Plaintiff lacked standing to sue, and additionally as to the moving Defendants because of insufficient pleadings.

Standing to sue for infringement must necessarily be grounded in ownership of a copyright
interest. That ownership is determined in part by compliance with the formalities of the
Copyright Act. The Act provides that “[t]he legal or beneficial owner of an exclusive right under
a copyright is entitled, subject to the requirements of section 411, to institute an action for any
infringement of that particular right committed while he or she is the owner of it.” 17 U.S.C.
§ 501(b). Section 411, in turn, states that “no civil action for infringement of the copyright in
any United States work shall be instituted until preregistration or registration of the copyright
claim has been made in accordance with this title.” Id. § 411(a). Any registration for the
copyright sued upon must be commenced no later than the date that the suit was brought.  If Plaintiff produces a certificate of copyright, the burden shifts to Defendants to demonstrate why the claim of copyright is invalid. 

Here, Plaintiff has failed to produce a certificate of copyright with respect to the Spank
composition, and fails even to allege that it had registered for one by the time this Complaint was filed. Plaintiff does attach a Certificate of Copyright Registration, dated March 1, 1979, for
Spank to the Complaint, but the Certificate names Harrick Music as the Copyright Claimant.
Smith is listed only as the author, and the Registration notes that “Harrick Music, Inc. received transfer by written notice from Ronald Luis Smith.”  Even if the registration were the fruit of inaccurate information submitted by the registrant, Harrick Music, it is still a prerequisite to the filing of a copyright infringement claim – a prerequisite that neither Plaintiff nor Smith has satisfied. As such, the Court finds that Plaintiff lacks standing to bring Count I against any and all of the defendants, including Horne and Joy Productions.  [Internal citations omitted].

"First Sale" Applies To Copies Made Abroad; Sup. Ct.

Kirtsaeng v. John Wiley & Sons, No. 11-697 (U.S. Mar. 19, 2013) (decision here).

The U.S. Supreme Court holds that the “first sale” doctrine applies to copies of a copyrighted work lawfully made abroad.

From the Court's syllabus:

The “exclusive rights” that a copyright owner has “to distribute copies . . . of [a] copyrighted work,” 17 U. S. C. §106(3), are qualified by the application of several limitations set out in §§107 through 122, in- cluding the “first sale” doctrine, which provides that “the owner of a particular copy or phonorecord lawfully made under this title . . . is entitled, without the authority of the copyright owner, to sell or oth- erwise dispose of the possession of that copy or phonorecord,” §109(a). Importing a copy made abroad without the copyright owner’s permission is an infringement of §106(3). See §602(a)(1). In Quality King Distributors, Inc. v. L’anza Research Int’l, Inc., 523 U. S. 135, 145, this Court held that §602(a)(1)’s reference to §106(3) incorporates the §§107 through 122 limitations, including §109’s “first sale” doctrine. However, the copy in Quality King was initially manufactured in the United States and then sent abroad and sold.

Respondent, John Wiley & Sons, Inc., an academic textbook publisher, often assigns to its wholly owned foreign subsidiary (Wiley Asia) rights to publish, print, and sell foreign editions of Wiley’s Eng- lish language textbooks abroad. Wiley Asia’s books state that they are not to be taken (without permission) into the United States. When petitioner Kirtsaeng moved from Thailand to the United States to study mathematics, he asked friends and family to buy foreign edition English-language textbooks in Thai book shops, where they sold at low prices, and to mail them to him in the United States. He then sold the books, reimbursed his family and friends, and kept the profit.

Wiley filed suit, claiming that Kirtsaeng’s unauthorized importation and resale of its books was an infringement of Wiley’s §106(3) exclusive right to distribute and §602’s import prohibition. Kirtsaeng replied that because his books were “lawfully made” and acquired legitimately, §109(a)’s “first sale” doctrine permitted importation and resale without Wiley’s further permission. The District Court held that Kirtsaeng could not assert this defense because the doctrine does not apply to goods manufactured abroad. The jury then found that Kirtsaeng had willfully infringed Wiley’s American copyrights and assessed damages. The Second Circuit affirmed, concluding that §109(a)’s “lawfully made under this title” language indicated that the “first sale” doctrine does not apply to copies of American copyrighted works manufactured abroad.

Held: The “first sale” doctrine applies to copies of a copyrighted work lawfully made abroad.

Article re: Copyright Termination in 2013

See Ryan Davis, "Copyright Termination For '70s Hits Won't Spark Lawsuit Fever" (Law360, New York; Nov. 26, 2012).  (Link to article; registration required).

Article summary (first paragraph): "Musicians who recorded hit songs in the late 1970s will gain the right to reclaim ownership of their work starting in January under a 1978 copyright law provision, and while record labels are expected to fight to retain control of lucrative music, 2013 is unlikely to bring a flood of litigation, attorneys said."

The article concerns the reclamation of rights by authors that were licensed or transferred after 1978, pursuant to section 203 of the Copyright Act.  Generally, termination rights may be effected after 35 years from the grant.  Id.  Thirty-five years from 1978 is...2013!

Lawyers interviewed for the article predicted that there will be few actually litigated cases, and instead termination notices will serve as a jumping-off point for contract re-negotiations between artists and record labels.

2d Cir Decision On DMCA Safe Harbor In Viacom v Youtube

Viacom v. YouTube (2d Cir. Apr. 5, 2012). Decision. Not a "music" case, but extremely important decision that will impact future infringement cases.

This appeal required the Second Circuit to clarify the contours of the “safe harbor” provision of the Digital Millennium Copyright Act (DMCA) that limits the liability of online service providers for copyright infringement that occurs “by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider.” 17 U.S.C. § 512(c). The District Court held that the defendants were entitled to DMCA safe harbor protection primarily because they had insufficient notice of the particular infringements in suit. The Second Circuit held:

We conclude that the District Court correctly held that the § 512(c) safe harbor requires knowledge or awareness of specific infringing activity, but we vacate the order granting summary judgment because a reasonable jury could find that YouTube had actual knowledge or awareness of specific infringing activity on its website. We further hold that the District Court erred by interpreting the “right and ability to control” provision to require “item-specific” knowledge. Finally, we affirm the District Court’s holding that three of the challenged YouTube software functions fall within the safe harbor for infringement that occurs “by reason of” user storage; we remand for further fact-finding with respect to a fourth software function.

Veoh Protected By Safe Harbor; 9th Cir.

UMG Recordings Inc. et al. v. Veoh Networks Inc. et al., No. 09-56777 (9th Cir. filed 12/20/2011) [Doc. 39]

Veoh Networks (Veoh) operates a publicly accessible website that enables users to share videos with other users. Universal Music Group (UMG) is one of the world’s largest recorded music and music publishing companies, and includes record labels such as Motown, Def Jam and Geffen. In addition to producing and distributing recorded music, UMG produces music videos. Although Veoh has implemented various
procedures to prevent copyright infringement through its system, users of Veoh’s service have in the past been able, without UMG’s authorization, to download videos containing songs for which UMG owns the copyright. UMG responded by filing suit against Veoh for direct and secondary copyrightinfringement. The district court granted summary judgment to Veoh after determining that it was protected by the Digital Millennium Copyright Act (DMCA) “safe harbor” limiting service providers’ liability for “infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider.” 17 U.S.C. § 512(c). The 9th Circuit agreed, and accordingly affirmed.

"We ... hold that merely hosting a category of copyrightable content, such as music videos, with the general knowledge that one’s services could be used to share infringing material, is insufficient to meet the actual knowledge requirement under [the statute]".

Label Fails To State Copyright Claim; Leave To Amend Granted

Tufamerica, Inc. v. The Orchard Enterprises, Inc., No. 1:11-cv-01816 (S.D.N.Y. filed Oct. 18, 2011) [Doc. 16].

Plaintiff is the owner of the record label Tuff City Music Group and owns the rights to thousands of musical recordings and compositions. In September 2006, TufAmerica licensed defendant's predecssor the right to market a large number of musical tracks by way of digital downloads (the “License”). The License obligated defendant's predecessor to pay TufAmerica various types of payments in exchange for digital distribution rights to hundreds of songs. In late 2007, defendant assumed its predecessor's obligations under the License. While TufAmerica received various payments from Digital and Orchard, it never received any payment of mechanical royalties.

Defendant argued that the License preempted plaintiff's copyright case. The Court agreed:

TufAmerica fails to state a facially plausible claim under the Copyright Act because it concedes that its copyright claim is governed by the License, not the Copyright Act. While TufAmerica subsequently argues that the License does not govern mechanical royalties, a “claim for relief ‘may not be amended by the briefs in opposition to a motion to dismiss.’” As a result, Orchard’s motion to dismiss is granted.

Because TufAmerica’s claim under the Copyright Act was dismissed, the court lacked pendent jurisdiction over the New York State common law claim of unjust enrichment.

However, because the License did not unambiguously preempt a claim under the Copyright Act's compulsory license provision, leave to amend the Complaint was granted.

Copyright Case Dismissed Against 50 Cent Over Crime Story/Book

Winstead v. Jackson, et al., No. 2:10-cv-05783 (D.N.J. Sept. 20, 2011) [Doc. 45].

In this copyright infringement action, Plaintiff alleges that Defendants’ movie and companion album, both entitled Before I Self Destruct, infringe upon Plaintiff’s copyright in his book, The Preachers Son - But the Streets Turned Me Into a Gangster. Plaintiff is the author and sole owner of the copyright for the Book. Plaintiff alleges that Defendants infringed upon the

copyright of the Book by publishing and selling the Movie and the Album, both of which

Plaintiff contends derive their content from the Book.

The Court granted defendants' motion to dismiss for failure to state a claim, under Fed. R. Civ. P. 12(b)(6). Plaintiff avers that the film duplicates the generalized theme and story

of the book and amounts to actionable copying. "However, general plot ideas and themes lie in

the public domain and are not protected by copyright law." Continuing:

There is no doubt that the Book and Film do share similar characters, themes, as well as a similar setting. However, this s haring of common features is only natural since both works feature a protagonist who has a difficult upbringing and turns to a life of violence and street crime, a story which has long ago been part of the public domain and which has been the subject of numerous movies and television shows. Thus, both works may properly contain gang life in inner-city New Jersey, characters spending time in jail, the search for an ex-girlfriend upon release from prison, making love in the shower, obtaining money through criminal activity, purchasing fancy clothes and accessories with the proceeds of crime, shoot-outs, murder, and the loss of a parent.

The Court further held that commonly used words, phrases and cliches used in both the book and movie/album are not protectable. Also, Plaintiff's state common law claims were pre-empted by the Copyright Act.

Lastly, because the Court held that Defendants did not infringe on Plaintiff’s copyright, Plaintiff’s claims of vicarious and contributory infringement fail since they hinge on a preliminary finding of direct infringement.

Attorney's Fees Denied In Copyright Case

Canal+ Image UK Ltd. v. Lutvak, 10 Civ. 1536 (RJH), NYLJ 1202498072915, at *1 (SDNY, Decided June 8, 2011).

The Court had previously dismissed the action for copyright infringement and breach of contract. Defendants, a lyricist and a songwriter, moved pursuant to Federal Rule of Civil Procedure 54(d)(2) for an award of attorney's fees under the Copyright Act, 17 U.S.C. §505. The Court denied the motion.