NWA Infringement Claims Trimmed To Composition Only, But Court Does Not Adopt 3-Year Damages Limitation

Mitchel v. Capitol Records, 3:15-CV-00174-JHM (W.D. Ky. Dec. 18, 2017).

Plaintiff alleges infringement of his 1977 song in the 1989 NWA rap song "Striaght Outta Compton."  Defendants made two motions for partial summary judgment.  First, the defendants argued that plaintiff is precluded from recovering any damages for infringements that occurred more than three years prior to his filing of the law suit, as barred by the statute of limitations.  Second, defendants argued that plaintiff did not own the sound recording for his song (only the musical composition) and thus could not recover for any infringement of the sound recording.  The former motion was denied, and the latter was granted.

As to the statute of limitations defense, the Court held that notwithstanding the Supreme Court's Petrella decision, Sixth Circuit precedent "defines accrual of a copyright claim as occurring when the plaintiff “knew of the potential violation or is chargeable with such knowledge.”  Continuing, "When the [Petrella] opinion is read in conjunction with footnote 4, which acknowledges that most circuits will modify this rule so as to focus on the date of 'discovery' as opposed to the date of 'occurrence,' then Petrella reiterates what the Sixth Circuit already requires: that damages be limited to those claims for infringement that accrued within three years of the initiation of the suit, with accrual being determined by the rules of the 8 circuit (until the Supreme Court “passe[s] on the question')."  Because Plaintiff had presented evidence that his claim did not accrue until 2014 (when it was allegedly discovered), his claim was not time-barred.

As to the sound recording, the Court held that defendant had provided proof that plaintiff did not own the sound recording.  The plaintiff's evidence (e.g., a mechanical license agreement) at best established his ownership of the musical work/composition.

Cox Communications Not Protected By DMCA Safe Harbor In Bit-Torrent Case

BMG Rights Management v. Cox Communications, no. 14-1611 (E.D. Va. Dec. 1, 2015).

In an action by the putative owners of 1,400 musical compositions against an internet service provider (Cox) for contributory and vicarious liability based on its users Bit Torrent infringement, the Court held inter alia that the ISP was not protected by the DMCA safe-harbor because it did not terminate access of repeat infringers under appropriate circumstances.  The Court found that defendant did not implement a repeat infringer policy before 2012, and after 2012 it did not reasonably implement its policy.  Thus, if Plaintiff is successful at trial, it will not be limited in the remedies it seeks.

Other issues the Court addressed was whether Plaintiff had standing (the copyright registrations listed Plaintiff, its predecessor, someone else, or the works were purchased).  The Court further found questions of material fact, 1) whether there is evidence of direct infringement by third parties; (2) whether there is evidence of Cox’s contributory infringement; (3) whether there is evidence of Cox’s vicarious liability; and (4) whether BMG failed to mitigate its damages.  Lastly, the Court found that the "unclean hands" defense failed as a matter of law.

No New Trial In "Blurred Lines" Case; Damages Reduced; 50% Royalty Awarded

Williams v. Bridgeport Music, No. CV13-06004 (C.D. Cal. dated July 14, 2015).

In the "Blurred Lines" copyright infringement case, Robin Thicke's motion for a new trial was denied but the amount of damages he is laible for was reduced.  Additionally, the heirs of Marvin Gaye were awarded a declaratory judgment that any past and ongoing exploitation of "Blurred Lines" constitutes copyright infringement of "Got To Give It Up."  Rather than enjoin future exploitation or impound infringing articles, the Court awarded the Gaye parties a 50% royalty of songwriting/publishing revenues from "Blurred Lines."

Jay-Z Must Produce Concert Revenue In 'Big Pimpin' Infringement Suit

Fahmy v. Jay-Z, No. 2:07-cv-05715-CAS, 2015 BL 8688 (C.D. Cal. Jan. 12, 2015).

Jay Z's motion for review of a Magistrate Judge's ruling directing him to produce documents concerning his concert revenues was denied.  This action concerns Jay Z's alleged unauthorized sampling of "Khosara, Khosara" from the 1960 Egyptian film Fata Ahlami in his 2000 hit song "Big Pimpin'."  A Magistrate Judge had ordered Jay-Z  to produce the amount of revenue he earned from concerts where he performed "Big Pimpin' in order to allow the plaintiff to calculate his damages.  Jay-Z moved for review of the magistrate's order under Federal Rule of Civil Procedure 72(a).  The District Court denied the motion.  The magistrate's order was not "clearly erroneous or contrary to law."   The discovery of concert revenue "appears reasonably calculated to lead to the discovery of admissible evidence" concerning the existence and amount of damages. Fed. R. Civ. P. 26(b)(1).  Nor was there evidence that the burden of production was undue.

Motion For Judgment As Matter Of Law, Or For New Trial, Denied In Beastie Boys/Monster Case

Beastie Boys v. Monster Energy, 1:12-cv-06065-PAE (SDNY filed 12/04/14) [Doc. 181].

After a jury awarded plaintiff Beastie Boys a verdict on their copyright and trademark claims, defendant Monster moved for a judgment as a matter of law under Federal Rule of Civil Procedure 50.  As to the Copyright Act claim, Monster argued that the evidence was insufficient to support the finding of willful infringement on which the award of enhanced statutory damages was based.  As to the Lanham Act claim, Monster argued that the evidence was insufficient to support either a finding of a false endorsement or that
Monster acted with intentional deception.  Monster alternatively moved for a new trial under
Rule 59 or for a reduction in damages.   The court denied Monster’s motions.

Injunction Entered On Use Of Platters Band Name

Herb Reed Enterprises, Inc. v. Monroe Powell's Platters, LLC, No. 2:11-cv-02010 (D. Nev. June 17, 2014).

The Court granted plaintiffs' motion for summary judgment, granting plaintiffs approximately $60,000 and enjoining defendants from using the mark THE PLATTERS in connection with any vocal group or live musical performance.  First, the Court found that plaintiffs have common law rights in THE PLATTERS mark, even though they do not have a registered mark in THE PLATTERS, based on their registered mark HERB REED AND THE PLATTERS.  There was no genuine issue of fact that plaintiffs owned interests in THE PLATTERS mark and that those interests were superior to defendants.  Second, the court found a likelihood of confusion under the 9th Circuit test.  Accordingly, a permanent injunction was appropriate.  Damages were also awarded for both domestic and foreign profits.

Karaoke Damages Limited On Per "Work" Basis

Sony/ATV Music Publishing LLC v. D.J. Miller Musict Distributors, Inc. et al., Index No. 3:09-cv-01098 (M.D. Tenn. filed Oct. 5, 2011).

Plaintiffs allege that they are the owners/administrators of music copyrights in numerous original music compositions. Plaintiffs further allege that since at least early 2006, all of the named defendants had been participating in the manufacture, reproduction, distribution, advertising, promotion and offering for sale of illegal and unauthorized copies of Plaintiffs’ music compositions in the form of karaoke recordings in various formats for discs and Internet downloads.

The Defendants argue that Plaintiffs seek damages beyond what is permitted under the Copyright Act because they seek damages on a per infringement basis and not a per work basis. The Defendants allege that Plaintiffs are improperly seeking 1,406 statutory awards because the lists annexed to the complaint of allegedly infringing songs contain many duplicate listings of songs; Defendants argue that, once these duplicate listings are removed, there are only 448 “works” for which Plaintiffs could be able to recover statutory awards.

The Court agreed with Defendants. "The plain language of the Copyright Act indicates that a single statutory award is appropriate for all infringements related to a single copyrighted work". Motion granted.

"Work" Defined For Statutory Damages Against Limewire

Arista Records LLC v. Lime Group LLC, 06 CV 5936 (KMW), NYLJ 1202489939713, at *1 (SDNY, Decided April 4, 2011)

The Court had granted summary judgment in favor of Plaintiffs on their claims against Defendants LimeWire LLC ("LW"), Lime Group LLC ("Lime Group"), and Mark Gorton (collectively, "Defendants") for secondary copyright infringement. The Court found that Defendants had induced multiple users of the LimeWire online file-sharing program ("LimeWire") to infringe Plaintiffs' copyrights. The litigation is now in the damage phase, with a trial on damages scheduled. Plaintiffs identified approximately 11,205 sound recordings that had allegedly been infringed through the LimeWire system. Of those, approximately 9,715 are sound recordings as to which Plaintiffs have elected to seek statutory damages under Section 504(c)(1) of the Copyright Act.

On March 10, 2011, the Court held that Plaintiffs are entitled to a single statutory damage award from Defendants for each "work" that was infringed by a direct infringer on the LimeWire system. The parties now seek a resolution of a threshold legal dispute regarding what constitutes a "work" as to which Plaintiffs can recover a statutory damage award.

The Court holds that both an album, and a sound recording that Plaintiffs issued as an individual track may constitute a "work" infringed. Accordingly, Plaintiffs are entitled to a statutory damage award for each sound recording that was infringed on the LimeWire system during the time period that Plaintiffs made that sound recording available as an individual track. However, for those sound recordings that Plaintiffs issued only as part of an album, Plaintiffs can recover only one statutory damage award for that album, not for each individual sound recording.

LimeWire Damages in Trillions "Absurd"

Arista Records LLC v. Lime Group LLC, 06 CV 5936, NYLJ 1202486126807 (S.D.N.Y. Mar. 10, 2011)

The Court already had granted summary judgment in favor of Plaintiffs on their claims against Defendants LimeWire LLC ("LW"), Lime Group LLC ("Lime Group"), and Mark Gorton (collectively, "Defendants") for secondary copyright infringement. The Court found that Defendants had induced Multiple users of the Lime Wire online file-sharing program ("Lime Wire") to infringe Plaintiffs' copyrights. The litigation is in the damage phase.

Plaintiffs identified approximately 11,000 sound recordings that they allege were infringed through the Lime Wire system. For the over 9,500 post-1972 sound recordings, Plaintiffs elected to seek statutory damages under Section 504(c)(1) of the Copyright Act.

"Squarely before the Court is a threshold dispute regarding Plaintiffs entitlement to statutory damage awards against Defendants: Where, as here, Defendants have been found liable for inducing numerous individual Lime Wire users infringe Plaintiffs' copyrights, may Plaintiffs recover from Defendants a separate statutory award for each individual's infringement of a work as to which Defendants are jointly and severally liable? Or, rather, are Plaintiffs limited to one statutory damage award per work from Defendants, regardless of the number of direct infringers of that work with whom Defendants are jointly and severally liable?"

The Court held that Plaintiffs were entitled to a single statutory damage award from Defendants per work infringed.

If one multiplies the maximum statutory damage award ($150,000) by approximately 10,000 post-1972 works, Defendants faced a potential award of a billion dollars in statutory damages alone. If Plaintiff's were able to pursue a statutory damage theory predicated on the number of direct infringers per work, Defendants' damages could reach into the trillions. As Defendants noted, Plaintiffs were suggesting an award that is "more money than the entire music recording industry has made since Edison's invention of the phonograph in 1877." This result is absurd, the Court found.

In sum, the Court found that the most plausible interpretation of Section 504(c) is one that authorizes only a single statutory damage award per work against a secondarily liable defendant, particularly in the context of the mass infringement found in the context of online peer-to-peer file sharing. Accordingly, the Court held that Plaintiffs were entitled to a single statutory damage award from Defendants per work infringed, regardless of how many individual users directly infringed that particular work.

Trademark Plaintiff Denied Infringement Damages

Rodgers v. Wright, 04 Civ. 01149 (RJH), NYLJ 1202484847172, at *1 (SDNY, Decided March 1, 2011)

Judge Holwell holds (1) plaintiff is not granted damages; (2) plaintiff is not granted attorneys' fees; and (3) the permanent injunction need not be modified.

Plaintiff Nile Rodgers, a founder of the music group Chic, brought the trademark infringement action against two singers who once performed as part of Chic, defendants Norma Jean Wright and Luci Martin. Rogers is the owner of a registered trademark in "Chic," and, along with his late partner Bernard Edwards, has exploited the mark in commerce continuously since 1977. Wright and Martin claimed no ownership of the mark, but had performed in the United States and abroad as "Ladies of Chic" and "Original First Ladies of Chic," and sometimes simply as "Chic." The Court previously found (1) that plaintiff's mark was protectable; (2) that defendants' uses of "Chic," "Ladies of Chic," and "Original First Ladies of Chic," were likely to cause confusion; (3) that defendants could not establish a fair use defense; and (4) that any relevant injunction should have extraterritorial effect. Thereafter, the Court permanently enjoined defendants and each of their agents, servants, employees, attorneys, and persons in active concert or participation with them from using or commercially exploiting the word "Chic" anywhere in the world, generally and specifically in connection with concert promotion, publicity, and performance; and also established other restrictions.

Plaintiff sought defendants' profits under Section 35 of the Lanham Act. The Court concluded that plaintiff had failed to establish that defendants acted with willful deception, and therefore that plaintiff was not entitled to an award of profits. "Having not presented any evidence of willfulness, and as it appears that defendants' actions were not willful, awarding damages in this case would be inappropriate."

Plaintiff also sought attorneys' fees. The Court denied the motion because plaintiff failed to show oppressive litigation tactics or bad faith.

Plaintiff's Award Reduced In Wu-Tang Suit

Coles v Wu-Tang Prods., Inc., 2011 NY Slip Op 00789 (1st Dep't Feb. 10, 2011)

The appellate division modified the trial' court's award to plaintiff by 25% of the net royalty payments received by defendant Wu-Tang Productions.

The action was for the payment of royalties for musical compositions co-written by plaintiff. The Court found that the documentary evidence established that Wu-Tang was entitled to retain 25% of the net royalty payments it received from Careers-BMG Music Publishing, Inc. (BMG) before paying plaintiff his share. Pursuant to the agreement between plaintiff and Wu-Tang, plaintiff conveyed an undivided 50% percent interest in the copyrights in those compositions to Wu-Tang, and, with plaintiff's consent, Wu-Tang transferred 50% percent of its interest in the copyrights to BMG. Thus, Wu-Tang retained a 25% interest in the copyrights.

Additionally, the record supported the trial court's determination that plaintiff, as a lyricist of the compositions, and defendant producer of the music, regarded themselves as joint authors sharing equally in the ownership of a joint work. Thus, the court properly granted plaintiff leave to conform the complaint to the evidence presented at trial by adding a claim against the producer for his unauthorized receipt of a 50% producer's fee

Cancelled Festival - Artist Damages?

News that this year’s Langerado Festival in Miami, Florida, was canceled due to "sluggish ticket sales" got OTCS thinking...when an artist agrees to perform at a festival, and the festival is thereafter cancelled, is the artist entitled to any damages? What are the terms of the performance agreement? Does it include a liquidated damages clause?

Last year OTCS contemplated that the over-saturation of festivals might lead to the inclusion of "exclusivity" clauses in festival agreements; in this year's economy, might an artist now demand a liquidated damages clause?

Statutory Damages Should Relate to Actual Damages

Yurman Studio, Inc. v. Castaneda, 07 Civ. 1241 (SAS)(S.D.N.Y. November 19, 2008), District Judge Shira A. Scheindlin reminds us of the well settled principle that "At the end of the day, 'statutory damages should bear some relation to actual damages suffered' [citing RSO Records v. Peri, 596 F.Supp. 849,862 (SDNY 1984); New Line Cinema Corp. v. Russ Berrie & Co., 161 F.Supp.2d 293,303 (SDNY 2001); 4 Nimmer Sec. 14.04[E][1] at 14-90(2005)] and 'cannot be divorced entirely from economic reality'"
Post from Recording Industry vs. The People

P2P Jury Award Set Aside

RIAA's $222,000 verdict in Capitol v. Thomas set aside. Judge rejects 'making available'; attacks excessive damages. [Article]

September 24, 2008, decision setting aside verdict

Synopsis from Ray Beckerman:

In Capitol v. Thomas, District Judge Michael J. Davis has set aside the jury's $222,000 verdict and ordered a new trial, ruling that his jury instruction -- which accepted the RIAA's "making available" theory -- was erroneous. He also rejected the 'offer to distribute' theory.

Fair Use? - 'Imagine' Suit Over Documentary

John Lennon's heirs - Sean, Julian, and Yoko Ono - and his publisher (EMI Blackwood) brought suit in the S.D.N.Y. against the filmmakers behind "Expelled: No Intelligence Allowed" for using John Lennon's "Imagine" in the film without authorization. Plaintiffs seek an injunction and damages.

In response to the suit, defendants cited fair use. "We are disappointed therefore that Yoko Ono and others have decided to challenge our free speech right to comment on the song 'Imagine' in our documentary film," they said in a statement.

Readers: any thoughts on fair use?

[Details on case to follow when available...]

The Pirate Bay - Owe $2.5 Mil?

The International Federation of the Phonographic Industry made a $2.5 million compensation claim Monday in a Swedish court, where the developers of The Pirate Bay (torrent-tracking site) have been indicted for copyright violations related to the sharing of 24 music albums, nine films and four videogames.

In response, Gottfried Svartholm Warg, one of four founders of The Pirate Bay, said Monday that "record companies can go screw themselves".

[Wired article]

More Moral Rights in Puerto Rico

We recently highlighted a copyright infringement case pending in Puerto Rico in which the plaintiff, along with their claims under the Copyright Act, alleged violations of their MORAL RIGHTS under Puerto Rico law.

Another case filed yesterday makes a similar claim. Rodriguez v. Emusica Records, LLC et al., No. 3:08-cv-01272-ADC (Dist. P.R. filed Mar. 4, 2008). Here, Plaintiff states under the heading "Nature of the Action" that in addition to this being an action for copyright infringement under 17 USC 101 et seq, "This action is also for moral rights violation, unfair competition, torts and unjust enrichment under the laws of Puerto Rico."

The gravamen of the complaint is as follows: plaintiff registered a copyright in the composition entitled "Rico Son", as well as the sound recording embodying a performance of the composition. The sound-recording appeared on a 2003 album entitled Rigo y su Obra Maestra - Conquistando al bailador, also registered to plaintiff. In 2007, plaintiff discovered that the sound-recording and underlying composition were being reproduced and distributed without authorization/license on a compilation entitled The Myth - FANIA - 45 Platinum Hits - Su Autentica Historia Musical by various entities in Spain and/or New York. Plaintiff alleges that his song "Rico Son" appeared on the allegedly infringing compilation under a different name ("Para Los Rumberos") and that authorship in the song was attributed to the late Tito Puente. However, "When the CD of reference is played in a CD player, the song that actually plays is the one of Plaintiff Rodriguez, 'Rico Son'."

Thus, plaintiff alleges that "Under the law of Puerto Rico, the use of this song and it's music recording by co-defendants also violates Plaintiff's moral rights of attribution." Plaintiff continues, in his second cause of action, "Co-Defendants did not make the corresponding authorship attribution to Plaintiff over his song and its music recording. This unauthorized use of Plaintiff's work has harmed his reputation and violated his moral rights of attribution as an author under the Puerto Rico Intellectual Property Law (31 L.P.R.A. sec 1401 et seq)."

Regarding damages under his moral rights claim, plaintiff seeks actual damages for an amount not less than $250,000, "pursuant to 31 L.P.R.A. 1401 et seq."

So, there you have it - another moral rights claim arising out of alleged copyright infringing in a a sound recording and underlying composition appearing in a US jurisdiction.

If such claims are viable, and ultimately successful, will mainland US plaintiffs somehow seek jurisdiction in Puerto Rico in order to tag a moral rights claim upon their copyright infringement claim? There is some case law indicating that Puerto Rico's moral rights law does not extend extraterritorially to distribution of infringing albums outside of Puerto Rico; so, the availability of limited damages may deter a mainland plaintiff from alleging a moral rights claim in Puerto Rico.

Copyright Statute of Limitations Issues

In Armstrong v. Global Pacific Records, Inc., No. 1:08-cv-10228-PBS (D.Mass complaint filed 2/11/08), Plaintiff -- alleged author of various musical compositions and related master recordings -- filed suit against a record label for breach of contract, and copyright infringment of those various compositions and related sound recordings.

Plaintiff's breach of contract claim arises out of the defendant record label's failure to ever pay royalties (both mechanical, and for the sound recordings). Given Plaintiff's allegations that the contracts were entered into no later than 1993, is their breach of contract claim barred by Massachusett's 6-year statute of limitations on contract claims?

Additionally, Plaintiff's copyright claims arise out of defendant's alleged unauthorized exploitation of the sound recordings and musical compositions since no later than (depending on the work at issue) both 1988 and 1997. At what point did Plaintiff's claim accrue, and is it barred by section 507(b) of the Copyright Act: "No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued."

Especially interesting is that Plaintiff did not obtain copyright registrations for the sound recordings or musical compositions until the summer of 2007; presumably, registrations were obtained so that Plaintiff could file suit (17 U.S.C. 411). However, the sound recordings embodying the compositions at issue were recorded and commercially released in 1988 and/or 1992-1993. What effect does Plaintiff's recent registration have, including on Plaintiff's damages?