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).

Roc-a-Fella Logo Case Dismissed In Absence Of Contract & On Statute Of Limitations

Walker v. Carter et al., No. 1:12-cv-05384 (S.D.N.Y. Sep. 26, 2016) [Doc. 363].

Jay-Z and the other defendants were granted summary judgment in a dispute over the creation, use and ownership of the logo for Roc-a-Fella Records because the plaintiff's contract claim was barred by lack of proof of a contract and the copyright claim was time-barred.  Plaintiff alleged that he was the creative mastermind of the logo two decades ago, and that he was owed royalties under a "lost" contract.  The Court addressed defendants' defense that the "statute of frauds" under New York law barred the claim, and Plaintiff's position that the "lost" contract satisfies the statute of frauds, finding that Plaintiff did not present evidence of the existence of the writing sufficient to create a triable issue of material fact.

As to the copyright claim, the Court noted that the classification of the claim -- as either for infringement or ownership -- determined the statute of limitations issue, and found that the crux of the issue was ownership of the copyright.  It was time-barred based on when the ownership claim accrued.

• Attorney's Fees
• Breach of Contract
• Common Law Copyright Infringement
• Copyright
• Copyright Act
• Declaratory Judgment
• Digital
• DMCA
• EMI
• Infringement
• Licensing
• Motion to Dismiss
• New York Supreme Court
• P2P
• Pre-1972
• Public Performance
• Publishing
• Registration
• Royalties
• Rule 12(b)
• Sound Recording
• Southern District of New York
• Statute of Limitations
• Summary Judgment
• Trademark

Dismissal Of Bay City Rollers' Royalties Suit Upheld By 2nd Circuit

Mitchell v. Faulkner, No. 13-576-cv (2d Cir. filed 8/29/2013).

The Second Circuit affirmed the lower court's Rule 12(b)(6) dismissal of plaintiffs' (Bay City Rollers) claims for unpaid royalties based in the alternative on breach of contract and unjust enrichment.  The contract claim failed because it was barred by the statute of frauds, in that any agreement to pay royalties extending beyond one year must be in writing to satisfy the statute of frauds.  The unjust enrichment claim failed because it was barred by the statute of limitations.  As stated by the Second Circuit

A claim for unjust enrichment must be based on the value of plaintiffs’ contribution to the joint effort of the band at the time it made the relevant records, not on the income stream resulting from a revival over thirty years later. That contribution and the failure of the defendants to pay for the value of the effort occurred well over six years ago and is barred by the statute of limitations.  N.Y.C.P.L.R. § 213.

NY Statute of Frauds Bars Claims in Warner Acquisition

Snyder v. Bronfman, __ N.Y.3d __, 2009 NY Slip Op 08667 (N.Y. Nov. 23, 2009), holding that quantum meruit and unjust enrichment claims brought to recover the value of plaintiff's services in helping to achieve a corporate acquisition are barred by the statute of frauds contained in General Obligations Law § 5-701 (a) (10).

The deal? Defendant and a group of other investors agreed to acquire Warner Music from Time Warner for approximately $2.6 billion in cash. According to the complaint, Plaintiff was a major contributor to this success: he identified the opportunity, persuaded defendant of its merits, helped to get debt financing and obtained financial information from the target company.

New York's highest court, the Court of Appeals, found: "The essence of plaintiff's claim is that he devoted years of work to finding a business to acquire and causing an acquisition to take place — efforts that ultimately led to defendant's acquisition of his interest in Warner Music. In seeking reasonable compensation for his services, plaintiff obviously seeks to be compensated for finding and negotiating the Warner Music transaction. His claim is of precisely the kind the statute of frauds describes."

"My Humps" Licensing Suit

Tolliver v. McCants, 05 Civ. 10840, 4/7/09 N.Y.L.J. "Decision of Interest" (S.D.N.Y. decided Mar. 25, 2009)

In 1982, plaintiff collaborated with defendant to produce a music album that included a recording of a musical composition entitled, "I Need a Freak." In 2005, defendant licensed the composition to the popular music group, The Black Eyed Peas, for use in their hit single, "My Humps." At issue in this case is whether the grant of the license by defendant infringed upon plaintiff's copyright to the composition. Both parties cross-moved for summary judgment. Plaintiff's motion was granted; defendant's denied.

Issues:

Statute of Frauds: No writing assigning to defendant right to license work for derivative works, therefore no valid assignment so that the license for "My Humps" violated plaintiff's copyright.

Statute of Limitations: "conundrum" between the limitations period for an ownership claim and an infringement claim

Adding affirmative defense (laches) on summary judgment motion, 2.5 years after litigation commenced.

'Warner' Oral Joint Venture Claims Dismissed

In Snyder v. Bronfman, No. 105454/07, 5/06/08 N.Y.L.J. "Decision of Interest" (Sup.Ct., N.Y. Co. April 24, 2008), the New York Supreme Court, New York County, dismissed former Simon & Schuster CEO, Richard E. Snyder's claims against Edgar M. Bronfman -- Chairman and CEO of Warner Music -- relating to an alleged oral joint venture between the two.

Plaintiff sued for over $100 mil. based on six counts: breach of joint venture agreement, breach of fiduciary duty, joint venture accounting, unjust enrichment, promissory estoppel, and quantum meruit. Defendant moved to dismiss pursuant to CPLR 3211(a)(5) ("...the cause of action may not be maintained because of ... statute of frauds ..."), contending that New York's General Obligations Law prohibits a plaintiff from recovering a finder's fee or other compensation based on services rendered in connection with a corporate acquisition in the absence of a written agreement. (G.O.L. sec. 5-701(a)(10).)

The court disagreed, finding that the statute of frauds provision (id.) does not apply to an oral joint venture agreement "which involves two or more individuals pooling their respective efforts to create and/or operate a business venture as opposed to one person assisting or facilitating another to do so." (See Freedman v. Chemical Const. Corp., 43 N.Y.2d 260 (1977) and other cases cited herein.) Here, plaintiff was not a mere finder or intermediary -- "plaintiff functioned as more than just a broker assisting defendant in a limited and transitory manner".

Nonetheless, plaintiff's claims relating to the joint venture were dismissed because the alleged oral joint venture was too vague to support a joint venture agreement. Though plaintiff alleged that the parties had agreed he would receive a "fair and equitable" share of an amount of money from the alleged oral joint venture, the court found it too uncertain. (Citing Varney v. Ditmars, 217 N.Y. 223 (1916), and Freedman v. Pearlman, 271 A.D.2d 301 (1st Dep't 2000).) "The alleged contract in question is affected by too many facts that are in themselves indefinite and uncertain such that the intention of the parties is pure conjecture." Thus, after finding that the action was "ripe for dismissal" at the pleadings stage, the joint venture claims (and the promissory estoppel claim) were dismissed for vagueness. **

However, the unjust enrichment and quantum meruit claims survived. Based on a legal presumption of a promise to pay a "reasonable value", the court found that whether plaintiff can establish some value for any services actually rendered "must await discovery." Therefore, plaintiff had 20 days to file an answer to the unjust enrichment and quantum meruit claims.

** The court did not clarify under which provision of the CPLR it was granting dismissal of the joint venture and promissory estoppel claims. Although the portions of the decision relating to the statute of frauds clearly relate to defendant's motion under CPLR 3211(a)(5), it appears that dismissal of these counts was based on plaintiff's failure to state a cause of action. Can the court convert a 3211(a)(5) motion into a 3211(a)(7) motion sua sponte, assuming defendant's motion papers were brought only under 3211(a)(5)?