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).

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.

Evidence Of Copying By Steve Winwood Inadmissible; 6th Cir. Affirms

Parker, et al. v. Winwood, et al., No. 18-5305 (6th Cir. 9/17/19).

6th Circuit affirms district court’s finding that the plaintiffs, who alleged the Spencer Davis Group’s famous 1966 song Gimme Some Lovin’ infringed the bass-line in their song from the prior year, failed to submit admissible evidence that Steve Winwood copied the work. The Court also affirmed the finding that the court lacked jurisdiction over one of the defendants, who resides in the UK. The evidence at issue was found to be hearsay: interviews with Steve Winwood. The Court also rejected arguments of striking similarity, which were not timely raised. Notably, there was a strong dissent, which focused on the plaintiffs’ expert report concerning the similarity of the works and observed that there is a “fine line” between inspiration and infringement.

"We Shall Overcome" Verse Not Subject To Copyright Protection

We Shall Overcome Foundation v. The Richmond Org., No. 16-cv-2725 (S.D.N.Y. Sep. 2017) (Cote, J.).

In a putative class action challenging the validity of the defendants' copyright in the folk-song "We Shall Overcome," the Court granted plaintiffs partial summary judgment finding that the lyrics and melody of the first verse (repeated as the 5th verse) of the song are not sufficiently original to qualify for copyright registration as a derivative work.  After going through the history of various publications and registrations of the song, the Court held that the defendants could not rely upon their copyright registration's presumption of validity because the defendants had submitted sufficient evidence to rebut the presumption: "They have shown that the Defendants’ 1960 and 1963 applications for a copyright in the Song were significantly flawed."

The next questions was whether the changes to the most well-known verse of the Song, Verse 1/5, embody the originality required for protection by the Copyright Act.  A version of the song was in the public domain, so the issue was whether the changes claimed by the defendants were sufficient to qualify as a a protectable derivative work.  The Court held that "the Plaintiffs have shown that the melody and lyrics of Verse 1/5 of the Song are not sufficiently original to qualify as a derivative work entitled to a copyright.  As a matter of law, the alterations from the PSI Version are too trivial. A person listening to Verse 1/5 of the Song would be hearing the same old song reflected in the published PSI Version with only minor, trivial changes of the kind that any skilled musician would feel free to make. ... More specifically, the changes of “will” to “shall” and “down” to “deep” and the melodic differences in the opening measures and the seventh measure, do not create a distinguishable variation. These differences represent “variations of the piece that are standard fare in the music trade by any competent musician.”  In other words, changing "will" to "shall" was not sufficiently original to warrant copyright protection.

The Court did, however, deny the motion for summary judgment on the issues of the authorship and divestment (by publication), and fraud on the copyright office; and partially granted a Daubert motion precluding expert testimony.

"We Shall Overcome" Putative Class Action Survives Dismissal

We Shall Overcome Foundation v. Richmond Org., No. 16-2725 (S.D.N.Y. Nov. 21, 2016).

In a putative class action challenging the Defendants' copyright in the song "We Shall Overcome" on the basis that the lyrics of the first verse is virtually indistinguishable from a song in the public domain, the Court denied the defendants' Rule 12(b)(6) motion to dismiss the copyright claims, but did dismiss the state-law claims as pre-empted.  The Court found that the plaintiffs had plausibly alleged: (1) that the first verse in the copyrighted work “We Shall Overcome” lacks originality (thereby rebutting the certificate of registration); (2) fraud on the copyright office by deliberately omitting from their application for a copyright in a derivative work all reference to the public domain spiritual or the publications of “I Shall Overcome” and “We Shall Overcome” as antecedents to the Song; and (3) divestment of copyright protection, under the 1909 Act, by publishing the work without including notice of copyright.  However, the state-law claims were dismissed as pre-empted (Those claims are for money had and received, violation of New York General Business Law § 349, breach of contract, and rescission for failure of consideration).

Newly Discovered Evidence Stays Liability Finding In Shakira Suit

Mayimba Music, Inc. v. Sony Corp. of Am., No. 12-cv-01094 (S.D.N.Y. filed 04/30/15) [Doc. 139].

Finding that newly discovered evidence concerning the authenticity and date of creation of an audio tape, which implicated a potential fraud on the court during the liability phase of trial, resulted in the Court staying a previous finding of liability pursuant to Rules 59 and 60.  The Court had previously found plaintiff had a valid copyright in the song at issue, that the plaintiff's testimony was credible that he had authored the song between 1996 and 1998, that it was an original song, that the song was recorded onto a cassette tape in 1998, and that a copy of the song on the tape was registered at the Copyright Office in November 2011.  After trial, the parties engaged in extensive discovery of damages in preparation  for the second phase of trial.  Four months after the liability opinion was issued, Defendants filed a motion contending that newly-discovered evidence demonstrated that the tape was fabricated in 2011, not created in 1998, and that plaintiff had lied under oath when he testified that the tape had been created in 1998.  Thus, the core issues before the Court were "when the tape was created, and whether witnesses lied on the stand with respect to its creation".  The Court found that "this is newly discovered evidence which could not have been found with reasonable diligence before trial. ... Furthermore, the evidence now put forth, if credited, clearly establishes that Plaintiff attempted to commit a fraud upon this court, going so far as to fabricate evidence and to commit perjury."  Accordingly, the Court suspended the finding of liability against Defendants "until further clarification can be found on these very serious issues."

Pre-Trial Evidentiary Rulings In Grooveshark Case

UMG Recordings, Inc. v. Escape Media Group, No.11-cv-8407 (SDNY filed 04/23/15) [Doc. 174].

In advance of a jury trial on statutory damages, the Court made a number of pre-trial evidentiary determinations on motions in limine.  Among its holdings as to what the parties could or could not introduce at trial, the Court held that defendants were precluded from offering argument or evidence contesting that their conduct was willful or in bad faith (the jury would be instructed that there was a cap of $150,000 per work, not $30,000), but defendants were permitted to present proof as to the degree and extent of their willfulness.  As to Defendants' argument that Plaintiffs could receive statutory damages for infringement of pre-1972 sound recordings (or that the Court had jurisdiction over such claims), the Court reserved decision.  The Court also made several rulings as to what evidence Defendants could introduce concerning their failure to mitigate damages defense (e..g, concerning settlement and future licensing negotiations, failure to make claims against other infringers, DMCA compliance

Punitive Damages Verdict Significantly Reduced; Defendant Granted Judgment Notwithstanding Verdict On Cover Art And DMCA "Red Flag" Theories

Capitol Records, Inc. v. MP3Tunes, No. 07-cv-9931 (S.D.N.Y. filed Sep. 29, 2014) [Doc. 629].

Defendant moved for judgment as a matter of law, or alternatively a new trial, and for remittur following a $48,061,073 jury verdict in favor of plaintiffs, who consisted of record labels and publishers who had filed copyright and unfair competition claims alleging that defendant and MP3Tunes made infringing copies of copyright songs and cover art.  The motion was denied in part, and granted in part.  Specifically, defendant's motion for judgment as a matter of law was granted as to plaintiffs' claims of (1) public display rights in cover art, and (2) copyright infringement under "red flag" knowledge and willful blindness theories (except for certain works sideloaded and which the source domain's URL was obviously infringing and viewed by a company executive).  Further, defendant's motion for a new trial on punitive damages was granted unless plaintiffs elected to remit the jury's punitive damage award to $750,000.

Rap Lyrics Properly Admitted At Criminal Trial

People v. Avery Green, NYLJ 1202544434567 (2d Dept Feb. 28, 2012).

After hearing a recording of a rap performance proffered by the People, the County Court admitted into evidence a transcript of lyrics from that performance, which had been written by the defendant or members of the gang with which the defendant was affiliated, and described crimes that the gang members committed or were going to commit. The Appellate Division held that admission of this evidence did not warrant reversal.

To the extent that the defendant argues that the admission into evidence of the law enforcement witnesses' testimony was "prejudicial," any such prejudice must be balanced against the relevance of the testimony. The lyrics themselves were relevant to the issue of the defendant's consciousness of guilt (see People v. Wallace, 59 AD3d 1069, 1070), and both the lyrics and the testimony of the law enforcement witnesses concerning their understanding of the meaning of those lyrics were relevant to defendant's knowledge and intent (see United States v. Foster, 939 F2d 445, 455). Similarly, the testimony concerning the structure of the gang to which the defendant belonged, as well as his place in the gang hierarchy, was relevant to the context of the lyrics composed by the defendant and those found in his bedroom, and explained the relationship between the defendant and his coconspirators, along with their motives and intent (see People v. Cherry, 46 AD3d 1234, 1237; People v. Faccio, 33 AD3d 1041, 1042). Under the circumstances of this case, the relevance of this challenged evidence more than outweighed the potential prejudice to the defendant and, hence, the evidence was properly admitted over any objection based on prejudice (see People v. Russo, 81 AD3d 666, 667-668)

Lyricist's Suit Against Video Game Developer Survives

Greer v. Electronic Arts, Inc., No. 10-cv-3601 (N.D. Cal. order filed Feb. 1, 2012) [Doc. 96].

In this copyright infringement action, plaintiff contended that defendant improperly used a

sound recording and the lyrics of a song by incorporating them into a widely-distributed videogame. Defendant moved for summary judgment on three independent grounds. Although two of defendant’s three arguments presented close calls, triable issues of fact existed that precluded summary judgment, and the motion was denied.

Facts: Plaintiff was a member of a band that registered a copyright relating to an album the band had recorded, which included the song at issue. Plaintiff subsequently filed a correction to the registration to clarify that he claimed sole copyright to the lyrics of the song. One of Plaintiff's band mates was employed by a video game developer, and was working to create a soundtrack for a video game that was being was developed. The band mate chose to include the song as part of the soundtrack for the game. The band mate and two other band members submitted declarations stating that all of the band members executed a written license agreement giving the developer the right to use the song in the game in exchange for one dollar and acknowledgement in the on-screen credits of the game. No signed copy of such a license agreement was located, and Plaintiff denied ever being asked to sign a license agreement, and alleges that he did not become aware that the song had been incorporated into the game until 2009.

Discussion: First, the court addressed issues with the registration of the album containing the song as a "PA" (performing arts), in contrast to registration on a form "SR" (sound recording). While Form SR may be used to register both the underlying composition and the

sound recording if separate registrations are not necessary or desired, nothing on Form PA permits it to be used to register a sound recording. Thus, defendant was correct that the band’s recorded performance of the song that was used in the game was never registered. That fact, however, wasnot fatal to plaintiff's claims, because plaintiff's complaint specifically identified by registration number the copyrighted work that plaintiff alleged had been unlawfully copied. While the complaint also repeatedly asserted the erroneous legal conclusion that the registration was of the sound recording (as opposed to the underlying musical composition) the facts alleged were sufficient to state a claim for infringement of the musical composition. There was no dispute that the band's performance of the song incorporated in the game was a performance of the underlying composition.

Second, the Court analyzed the competing arguments about the existence of a license. The Court concluded that the record did not permit a conclusion on summary judgment that the license agreement was ever signed, either in the unsigned form of the document defendant hadsubmitted, or in any form. While the recollections on both sides were vague, they were in direct conflict.

Third, the Court analyzed the defense of laches. Defendant made a compelling showing that this was a case in which laches may ultimately apply to bar at least some portion of plaintiff's claims. Among other things, the evidentiary prejudice was manifest in the witnesses’ fading memories and the uncertainty in the documentary record as to whether the license agreement was ever signed. The critical question, however, was when plaintiff knew or should have known that the song had been incorporated into the game. Plaintiff's testimony that he did not learn of the song’s use in the game until 2009 was sufficient to create a triable issue of fact as to his actual knowledge. If the trier of fact accepts the testimony that the possibility of using the song in the game was discussed at length prior to plaintiff's departure from the band, he more likely can be held to a duty of some inquiry, even assuming he never saw or signed the license agreement. Defendant had not shown, however, that undisputed facts compel a finding that plaintiff was on constructive notice as early as 1995, or at any particular time thereafter. Finally, defendant had not established that laches necessarily would bar plaintiff from seeking injunctive relief against any ongoing infringement, even assuming it ultimately bars some or all of his claims for past damages.

No Proof of Famousness - Dilution Sum. Judgment Denied

Irby v. Thompson, No. 05 Civ. 9935, NYLJ 6/5/09 "Decision of Interest" (S.D.N.Y. May 29, 2009) (Swain, J.)

Action arists out of the alleged use and dilution of the mark "Hi-Five" by defendants via the production, marketing, and distribution of recordings under the "Hi-Five" name without the consent of former "Hi-Five" bank members (plaintiffs). Plaintiff's second motion for summary judgment denied.

Dilution, 15 U.S.C. 1125(c). Dispute as to whether the mark "Hi-Five" is famous. Plaintiffs provided no evidentiary proffers to establish the mark's fame other than information contained in documents purporting to be pritntouts from the website of the RIAA, for which plaintiffs failed to proffer the necessary foundational support and authentication pursuant to Fed. R. Evid., Art. VIII. Therefore, plaintiffs failed to carry their burden of demonstrating that the "Hi-Five" mark is famous as a matter of law. (The Court expressly decided, fn. 6, that the purported RIAA records were not subject to judicial notice pursuantt o Rule 201 of the Fed. R. of Evid.)

Failure to Prosecute, Fed. R. Civ. P. 41. The Court directed plaintiffs to "show cause" as to why Plaintiffs' claims against all defendants other than a media marketing and distribution business (that allegedly marketed and distributed the recordings in question) should not be dismissed for failure to prosecute.

Summary Judgment. In denying Plaintiffs' second motion for summary judgment, the court held that "No further dispositive pre-trial motions will be entertained."

Spoliation in RIAA P2P Case (D.Ariz)

August 29, 2008, Order striking defendant's answer and granting default judgment to plaintiffs in RIAA P2P case Atlantic v. Howell, No 06-cv-2076(D. Ariz.).

The basis of this order, and the sanction of granting default judgment to plaintiffs, was defendant file-sharer's repeated spoliation of evidence on his computer.