Claims Regarding Graphic On Guitar Dismissed

/

Webster v. Dean Guitars, No. 19-10013, 2020 WL 1887783 (11th Cir. Apr. 16, 2020)

Dean Guitars won on summary judgement against Buddy Webster aka Buddy Blaze in a case of copyright infringement and unfair competition. Buddy Webster, a successful guitar maker and technician, claimed that he owned the copyright to a lightning storm graphic that originally appeared on Darrell Abbot’s guitar. Buddy Webster was the designer of Abbot’s guitar and commissioned someone to paint the lighting storm graphic on the guitar. Dean Guitars has been producing and selling guitars based on Abott’s guitar, without consent from Webster and without paying any royalties to Webster. In 2017, Webster brought suit against Dean and others in U.S. District Court for the Central District of California alleging copyright infringement, unfair competition, and false endorsement. The case was then transferred to U.S. District Court for the Middle District of Florida. The district court granted summary judgment in favor of Dean Guitars concluding that the copyright infringement claim was actually one for copyright ownership and time-barred; the statements underlying the unfair competition claim were not false or misleading; and there was no evidence presented showing consumer confusion. On appeal the district court’s holding was affirmed in favor of Dean Guitars.

Termination Rights Class Action Against UMG Recordings to Proceed

/

Waite v. UMG Recordings, Inc., No. 19-cv-1091-LAK, 2020 WL 1530794 (S.D.N.Y March 31, 2020)

In 2018, John Waite and Joe Ely filed a copyright infringement class action against UMG Recordings based on UMG’s failure to stop marketing and selling sound recordings after being served with termination notices for such recordings. In response, UMG filed a motion to dismiss arguing that since termination rights do not apply to works for hire, whether a work was made for hire is a copyright ownership issue, and Plaintiffs claim to own the copyrights in issue, that the core of Plaintiffs’ claims revolve around ownership. Based on this, Defendants asserted that the presence of work for hire provisions in the Plaintiffs’ recording contracts signed in the 1970s and 80s alerted them of ownership issues at the time of signing, and that the statute of limitations has therefore run on the Plaintiffs’ claims. Refuting this argument, the court stated that while ownership is relevant to Plaintiffs’ claim, “the gravamen of plaintiffs’ claim is defendant’s refusal to recognize their termination rights,” and to apply a three year statute of limitations to claims involving termination rights, which do not vest until 35 years after copyright assignment, “would thwart Congress’s intent and eviscerate the right itself.” As a result, the court denied Defendant’s motion to dismiss as to all claims, except for those relating to declaratory relief, copyrights transferred by third parties, and sound recordings made prior to January 1, 1978.

Unjust Enrichment Claims Against Publishers Partially Preempted by the Copyright Act

/

Berrios-Nieves v. Fines-Nevarez, No. 18-cv-1164-JAG, 2020 WL 981671 (D.P.R. Feb. 28, 2020)

The U.S. District Court for the District of Puerto Rico partially dismissed Plaintiff Luis Berrios-Nieves’ complaint for unjust enrichment and collection of money against Defendants Warner Chappell Music and Sony/ATV. The court found that Plaintiff’s claims for unjust enrichment were preempted by the federal Copyright Act because it was based on the “Defendants’ misattribution of ownership over the musical, which was “equivalent in substance to a copyright infringement claim.” Similarly, the court held that Plaintiffs claims for collection were preempted by the Copyright Act to the extent that they were not based on a contract with co-defendants, which would require application of state contract law and avoid preemption. The court reasoned that such claims were preempted because they are the equivalent of a claim for accounting or compensation based on the Plaintiff’s status as a co-owner of a copyright under the Copyright Act. Additionally, the court granted Defendants’ motion to dismiss all of Plaintiff’s copyright claims relating to Plaintiff’s albums finished before March 25, 2015 because they were barred by the Copyright Act’s three-year statute of limitations.

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.

"Gimme Some Lovin'" Guitar Riff Claim Dismissed

/

Parker v. Winwood et al., No. 16-cv-684 (M.D. Tenn. 10/17/2017) [Doc. 99].

In a copyright infringement action concerning the guitar riff in the classic rock song Gimme Some Lovin' performed by the Spencer Davis Group, the Court granted the defendants' motion for summary judgment.  Plaintiff's song was governed by the 1909 Act, under which the general rule was that the publication of a work with proper notice was necessary to obtain statutory copyright protection.  The Court found that "Although Defendants proffer evidence that the work was distributed as a phonorecord prior to 1978, the Copyright Act specifically states that the distribution of phonorecords prior to 1978 is not considered a publication under copyright law. See 17 U.S.C. § 303. Even if the work-at-issue had been published, however, Plaintiffs would not be foreclosed from bringing an infringement suit so long as they made the requisite deposit. The right to sue is not destroyed for failure to make a prompt deposit after publication."  Accordingly, the motion to dismiss was denied.

Nonetheless, there were other basis to dismiss.  One defendant's motion to dismiss was granted for lack of personal jurisdiction -- he was not properly served, and had no minimum contacts with Tennessee.  As to the record label owner, after rejecting the argument that the plaintiff's lacked standing, the Court nonetheless found that the claim should be dismissed because the record label's sister company owned the rights to plaintiff's song!

Turning to the meat of the claim, the Court granted the defendant musicians summary judgment:

The Court finds no dispute of material fact still exists regarding whether Defendants had a “reasonable possibility” of access to Plaintiffs’ song before they created “Gimme Some Lovin’.” Specifically, the Court finds Plaintiffs have failed to meet their burden to show that there is a dispute regarding whether Defendants infringed Plaintiffs’ song between its release date on October 7, 1966 in the United Kingdom (ECF No. 64 ¶ 25) and the release date of “Gimme Some Lovin’” on October 28, 1966 (ECF No. 64 ¶ 25), or at any time before that date. Defendants presented evidence in the form of affidavits that the members of The Spenser Davis Group had not heard Plaintiffs’ song prior to creating "Gimme Some Lovin’.” (Mervyn Winwood Decl., ECF No. 57 ¶ 5; Stephen Winwood Dec., ECF No. 58 ¶ 4; Spenser Davis Decl., ECF No. 59 ¶¶ 3, 5.) The burden then shifted to Plaintiffs to set forth specific facts showing a triable issue of material fact. Plaintiffs only proffered inadmissible evidence to refute these facts Defendants set out in affidavit form. Plaintiffs also proffer no admissible evidence that Defendants infringed Plaintiffs’ song between its release and Defendants’ release, but rather contend it would have been possible. (ECF No. 64-6 at PageIDs 547-48.) Because Plaintiffs have failed to proffer any admissible evidence that establishes a genuine issue of material fact as to whether Defendants heard Plaintiffs’ song prior to creating or releasing “Gimme Some Lovin’,” the Court GRANTS summary judgment in favor of Defendants Steve Winwood and Kobalt (ECF No. 54)

Copyright Ownership Claims Time-Barred For Songs Recently Sampled In Popular Songs

/

Wilson v. Dynatone Publishing, No. 16-cv-104 (S.D.N.Y. April 10, 2017).

For two songs from the 1970s that were recently sampled in popular songs, Plaintiffs sought a declaratory judgment judgment that they are the copyright owners of the sampled songs and that the defendants' copyrights are invalid, and Plaintiffs also sought an accounting.  The Court granted the defendants' motion to dismiss under Rule 12(b)(6).

The Court found that the copyright ownership claims were untimely and barred by the statute of limitations.  The claims accrued in the early 1970s.  The accounting claims, in addition to an absence of allegations of a fiduciary relationship, also were time-barred.