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.

Transfer Denied In Sirius Class Action Over Pre-72 Recordings

Flo & Eddie, Inc. v. Sirius XM Radio Inc., No. CV 13-5693 PSG (C.D. Cal. Dec. 3, 2013).

Plaintiff filed this putative class action in state court alleging that defendant Sirius XM had unlawfully exploited certain audio recordings made before February 15, 1972 by duplicating and broadcasting those audio recordings through its satellite and internet radio service.  Sirius XM removed this case to federal court.  Before the Court was Sirius XM's motion to transfer venue to the Southern District of New York, pursuant to 28 U.S.C. § 1404(a).  The Court denied the motion.

In analyzing the motion, the court considered multiple factors -- some neutral, some favoring transfer, and some against transfer.  The factors were: Jurisdiction and Venue in the Southern District of New York; Convenience of the Parties and Party Witnesses; Convenience of Third Party Witnesses and the Availability of Compulsory Process; Relevant Agreements; Familiarity with the Governing Law; Plaintiff’s Choice of Forum; The Parties’ Contacts with the Chosen Forum; Contacts Relating to Plaintiff’s Causes of Action in the Chosen Forum; Differences in the Cost of Litigation; Access to Sources of Proof; Relevant Policy of the Forum State; Relative Court Congestion; Local Interest in Having Localized Controversies Decided at Home; Unfairness of Burdening Citizens in an Unrelated Forum; and The Interest of Justice. After considering these factors, the Court concluded that transfer was not warranted.  "Many of the transfer factors are neutral. As to the factors that carry weight one way or the other, several factors related to efficiency and convenience weigh toward transfer.  However, California’s interest in having a novel question of state law decided at home, as well as the slight weight given to Plaintiff’s choice of forum, weighs against transfer."

Labels Participate in Judicial Forum, Waive Arbitration

Lockett v. Tuff City Records, No. 602900/08, NYLJ 9/25/2009 "Decision of Interest" (Sup. Ct., N.Y. Co. Sep. 21, 2009)

Defendants, record labels and their principals, waived right to arbitration by actively participating in judicial forum. Plaintiffs' action sough monies allegedly owed for royalties. Defendants answered, but did not plead arbitration as an affirmative defense. Moreover, the arbitration demand was made nearly eight months into the litigation, after Defendants had made discovery demands. Additionally, defendants failed to establish that plaintiffs' claims were subject to the alleged arbitration clause in a 1986 recording contract because the songs at issue were recorded prior to 1986. Thus, Plaintiffs' motion to permanently stay arbitration granted.

The Court also denied defendants' motion to dismiss for misjoinder of plaintiffs; instead, the court severed the individual plaintiff's claims and ordered them to obtain a no-fee index number and serve their own complaint within 30 days.

Lastly, the Court denied defendants' motion to remove the action to Small Claims court; and denied both plaintiffs' and defendants' motions for sanctions.

Dick Clark Seeks Removal to Federal Court

On January 4, 2008, crooner Brian K. Evans filed suit in California state court against the legendary Dick Clark's production company on three causes of action arising out of defendant's use of the sound recording "It Had to be You" in connection with the television show (and international concert tour of) So You Think You Can Dance: breach of contract, fraud, and for an accounting. But, as the complaint explicitly indicated,

NATURE OF THE ACTION
6. This complaint concerns the breach of a written contract and the infringement of copyrighted property of Mr. Evans, specifically his recording of the song "It Had To Be You," the master of which is owned by the Plaintiff. The copyright registration number of this song is SR0000357687 (dated 06-22-2004). This particular song was used in the tour "So You Think You Can Dance." The recording of this song is not subject to BMI, ASCAP regulations or procedures. Plaintiff recorded this song on his own and licensed it to Dick Clark Productions, Inc.

Evans v. Dick Clark Productions, Inc., No. SC096606 (Cal. Super.Ct., Los Angeles Co. - Western Dist.) (Emphasis added.)

In response, Defendant filed a notice of removal to the federal district court in the Central District of California, noting that federal courts have original jurisdiction over copyright cases pursuant to 28 U.S.C. 1338(a). ("The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to ... copyrights... Such jurisdiction shall be exclusive of the courts of the states in ... copyright cases."). Further, Dick Clark argued that 17 U.S.C. 301(a) is "a broad preemption provision that preempts all state law claims within the general scope of copyright."

Given the above, it is unclear why Plaintiff (who is not appearing pro se) filed suit in state court.

[Evans v. Dick Clark Productions, Inc., No. 2:08-cv-00800-SVW-FFM (C.D.Cal, notice of removal filed Feb. 6, 2008)]