Singer Ed Sheeran & Other UK Defendants Dismissed From Case, For Now, For Failure To Timely Serve

Griffin v. Sheeran et al., No. 16-cv-6309 (S.D.N.Y. Feb. 2, 2017) (Doc. 51).

Plaintiff was only able to serve two US-based defendants, notwithstanding the Court's prior order extending the time to complete service on the international defendants, and accordingly the Court dismissed the complaint (without prejudice) against all of the defendants -- including Ed Sheeran -- except for the two US-based Defendants who had been served (Warner Music Group and Atlantic Recording).  There was an additional US-based defendant (Sony ATV) that plaintiff did not even try to serve within Fed. R. Civ. P. 4(m)'s 90-day deadline (or the Court-granted extension), and the Court dismissed the case against that defendant.  Nor was any attempt made to serve certain of the UK-based defendants within the 90-day window.  Of the remaining UK-defendants, the Court dismissed the case under Fed. R. Civ. P. 4(f)'s "flexible due diligence" standard.

Elvis Denied US Discovery of Sony Music For Litigation in Germany Adverse To Arista Music

In re  Elvis Presley Enters. LLC, No. 15-mc-386 (S.D.N.Y. Mar. 1, 2016).

Elvis Presley Enterprises LLC is party to a litigation in Germany against Arista Music, and sought to serve a subpoena in the USA on Arista's affialiate, Sony Music, to obtain documents that it claims are relevant to the proceedings in Germany.  The Court exercised its discretion and denied the application pursuant to 28 USC 1782.  Weighing in favor of Sony's opposition to the discovery were: Arista is a wholly-owend subsidiary and thus has access to the documents and information held by Sony, the procedural posture of the case in Germany (it was on appeal), the timing of the section 1782 application, and the discovery requests were burdensome.

Sampling Case Against B.I.G. Dismissed

Hutson v. Notorious B.I.G., LLC et al., No. 14-cv-2307-RJS (SDNY Dec. 22, 2015) [Doc. 51].

On a Rule 12(b)(6) motion, the Court dismissed plaintiff Lee Hutson's copyright infringement claims against the Notorious B.I.G.'s successor, label, publisher, record company and distributor, which alleged unauthorized sampling of Plaintiff's 1973 song (composition and sound recording) "Can't Say Enough About Mom" in the Biggie song "The What" appearing on the 1994 album "Ready To Die."  Plaintiff alleged that he first discovered the unauthorized sample in 2012, and brought suit in 2014.  In his amended complaint, plaintiff alleged infringement of the composition, of the sound recording outside the USA, and the digital performance right of the sound recording.

The Court dismissed each claim.  After noting the standard on a Rule 12(b)(6) motion, and discussing which documents outside of the pleadings it would consider (e.g., agreements, the sound recording, copyright registrations, certificates of incorporation), the Court then turned to each cause of action.

First, the Court found that Plaintiff lacked standing.  Although Plaintiff alleged that he owned 50% of the copyright in the composition, the Court found that allegation implausible for the time of the infringement (1994-the present) because the agreements submitted did not establish that he had a chain of title, and further, the allegation that plaintiff was "doing business as" a certain entity was insufficient given corporate formalities.  [The Court did note in dicta, fn. 4, that the statute of limitations defense likely failed.]  Similarly the Court found that Plaintiff failed to plead ownership of the sound recording because of a a prior lawsuit in which the settlement included an assignment to the record label as well as a release.

Second, the Court found that it lacked jurisdiction over infringement occurring abroad.

Accordingly, the Court dismissed the claims.  The Court even dismissed claims against a non-moving defendant.

Lastly, the Court denied Plaintiff's application for leave to amend, as futile.

"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.

Sampling in Germany

Germany's highest civil court today held that sampling music does not in principle violate copyright.

The decision overturned a lower court ruling that reusing even the shortest bit of a song infringed on copyright.

Today's order means that sampling of a song melody is prohibited, but a sample that is part of a completely new musical work bearing no resemblance to the original is not infringement.

[Kraftwerk case]

[Rolling Stone Article.]

Want recording royalties over seas?

CMJ: Want SOUND RECORDING royalties over seas? Have a band member with a dual passport. (A. Erk CPA) (see previous post)