Guitar Infringement Suit Transferred to Florida

Webster v. Dean Guitars et al., No. 17-cv-03027 (U.S. District Court for the Central District of California July 26, 2017).

A copyright suit against a guitar production company and the estate of Pantera frontman “Dimebag” Darrell Abbott was transferred to the Middle District of Florida after a California Federal Judge determined that Florida is the more convenient venue. In granting the motion, the judge determined that Florida would be more accessible to most of the parties and witnesses. While two additional defendants were added to the amended complaint, the judge was not convinced that these two defendants, located in California, were significant enough to keep the case in the state.

The case was brought by Buddy “Blaze” Webster claiming that he wasn’t paid for the modifications he made to a Dean-branded guitar that ultimately became synonymous with “Dimebag” Darrell.

Paul McCartney and Sony Settle Copyright Termination of Transfer Litigation

McCartney v. Sony/ATV Music Publishing LLC, et al., No. 17-cv-363 (ER) (S.D.N.Y. Document 41 Filed 06/29/17).

The parties resolved their litigation involving Paul McCartney's termination notices by entering into a confidential settlement agreement and jointly requested that the Court enter a proposed order dismissing the action without prejudice.

Attorney's Fees Awarded To Village People Member

Scorpio Music v. Willis, No. 11-cv-1557 (S.D. Cal. filed 9/15/15) [Doc. 280].

In a dispute over the percentage of copyright ownership over the Village People's hit songs (including "YMCA") that went to a jury trial, the Court held that an original member of the group and author (invidivually and jointly) of various songs was entitled to attorney's fees as the prevailing party.  17 USC 505.  The court found that Mr. Willis was the prevailing party and that he achieved a high degree of success: he defeated Plaintiff's claim that he could not unilaterally terminate his grants of copyright under 17 USC 203, prevailed on a number of summary judgment motions brought on the grounds of statute of limitations and laches, and prevailed on 13 of the 24 compositions at trial (including YMCA, the most lucrative).  Specifically, the Court found that granting fees would advance the purposes of the Copyright Act inasmcuh as Mr. Willis was "trying to get back what he transferred to Plaintiffs, parties with superior bargaining power, decades ago.  An award of attorney's fees is justified to encourage authors like Willis to assert their rights to regain their copyright interests and to deter production companies and other transferees of copyright from attempting to interfere with those rights."  Willis sought an award of approximately $527,000, and the Court did not find that an upward or downward adjustment was warranted.  Costs of approximately $3,000 were also taxed.

Court Has Jurisdiction Over King Of Pop's Executors In Photo Shoot Case, But Plaintiff's Counsel Disqualified As A Witness

Noval Williams Films v. Branc, 14-cv-4711 (S.D.N.Y. Sep. 3, 2015) [Doc. 43].

In a case where Plaintiff film matker sought a declaratory judgment against Michael Jackson's estate that it did not infringe the copyrights in certain audivisual and photographic materials by using them in a documentary film, the Court denied Michael Jackson's executor's motion to dismiss for lack of jurisdiction, or alternatively to transfer to California federal court.  However, the executor's motion disqualify plaintiff's counsel was granted because he is a material witness.

Katie Perry Dismissed From Copyright Suit In Missouri For Lack Of Personal Jurisdiction

Gray v. Hudson, 14-cv-1183 (E.D. Mo. dated July 23,  2015).

A copyright action against Katie Perry alleging that her song "Dark Horse" infringes upon Plaintiff's gospel/hip-hop song was dismissed by the Court for lack of personal jurisdiction over Perry and the other defendants.  Fed. R. Civ. P. 12(b)(2).  Plaintiffs alleged that Defendants directed their marketing/promotion/sale of the song towards residents of the State of Missouri, including performing concerts in the state.  However, the Court agreed with Defendants that it lacked personal jurisdiction due to a lack of minimum contacts necessary to comport with due process.  The only defendant who did not contest jurisdiction, Capitol Records, moved to transfer the action to New York or California and the Court granted the motion to transfer to the Central District of California.

Stairway To Heaven Copyright Infringement Survives Dismissal, Transferred From Philly To Calif.

Skidmore v. Led Zeppelin,  14-cv-03089 (E.D. Pa. filed 05/06/15) [Doc. 54].

Plaintiff alleged Led Zeppelin copied significant portions of its iconic 1971 song “Stairway to Heaven” from plaintiff's copyrighted guitar composition “Taurus,” and that all of the Defendants (the band members, publisher and label) have exploited and continue to exploit “Taurus” as “Stairway to Heaven.”  Plaintiff sued all Defendants for direct, contributory, and vicarious copyright infringement and also brought a claim for equitable relief in the form of an order directing Defendants and the Copyright Office to include Plaintiff as a writer of “Stairway to Heaven."  Defendants moved to dismiss for lack of jurisdiction and improper venue.

The Court found the individual Defendants (band members) were not subject to either general or specific jurisdiction in Pennsylvania, where the case was filed.  Notably, because there is a three-year statute of limitations for copyright claims, the Court found that contacts with Pennsylvania in the 1980s and 1990s were not relevant to the Court's analysis.  These Defendants, however, consented to personal jurisdiction and venue in the Central District of California.  The Court found a transfer to California to be in the interests of justice.

Claims In 'Sugarman' Case Survive Dismissal; Rights Transferred To Defunct Publisher's Shareholder By Operation Of Law

Gomba Music, Inc. v. Avant, No. 14-cv-11767, 2014 BL 330905 (E.D. Mich. Nov. 24, 2014).

The Court dismissed a corporate music publisher's case in the Sugarman / Sixto Rodriguez case because the company had been administratively dissolved by the State of Michigan in 1971 for failure to file certain papers, but the claims by the company's sole shareholder survived because when the company dissolved, any interests it held were transferred to him by operation of law.  The Court found that whether under the 1976 or 1909 Copyright Acts, by operation of law [Mich. Comp. Laws § 450.1855a], any rights that the company had in the compositions transferred to its sole shareholder when the corporation dissolved.  The Court also found that the decision to sue in the company's name was due to a mistaken belief that the entity would be reinstated and that it was necessary to sue in the company's name because it was the original assignee of rights; accordingly, the Court allowed substitution of the shareholder for the defunct company he formerly owned as sole proprietor, pursuant to Fed. R. Civ. P. 17.

Thereafter, the Court addressed the sufficiency of the causes of action.  First, the Court held that the plaintiff could assert fraud on the copyright office as a declaratory judgment action to attack the prima facie validity of defendants' copyrights in the compositions.  Second, the Court held that the plaintiff could assert a declaratory judgment claim that he is the exclusive owner of the copyright in the compositions because it was plausible that plaintiff was not placed on notice of his claims until sometime after the release of the film Waiting for Sugar Man in July 2012 and therefore plausible that he timely filed his claim for declaratory judgment in May 2014.  Third, the Court held that plaintiff could assert fraudulent concealment claims, and that the claims were not time-barred, because the name of the artist with whom plaintiff had an exclusive agreement (Sixto Rodriguez) was completely absent from the album credits, there were affirmative statement that others wrote the works, the plaintiff had limited motivation to investigate further given the "commercial failure" of the  album at the time it was released, the artist Sixto Rodriguez was under an exclusive contract with the publisher plaintiff, and, later, copyright registrations were issued based on representations that others wrote the works.  Lastly, the Court found that the copyright infringement claim also was not time-barred, and though the plaintiff may be precluded from certain statutory damages/attorneys' fees based on the timing of his attempted registration, that did not bar the claims.

Judgment Creditor Can Have Receiver Appointed To Sell Copyrights In Master Recordings To Satisfy Debt

Hendricks & Lewis PLLC v. Clinton, No. 13-35010 (9th Cir. June 23, 2014; amended Aug. 27, 2014 [decision]).

The 9th Circuit affirmed an order appointing a receiver and authorizing the sale of copyrights in four master sound recording owned by the musician George Clinton to satisfy judgment obtained by his former lawyers for past-due attorneys' fees.  The 9th Circuit held that under Washington law, the copyrights were subject to execution to satisfy judgments against Clinton.  Further, section 201(e) of the Copyright Act did not protect Clinton from the involuntary transfer of his copyrighted works.  "Section 201(e) is of no help to Clinton because he is not the 'author' of the Masters within the meaning of the Copyright Act. Thang specifically agreed in its 1975 contract with Warner Bros. that Warner Bros. would be the sole owner of the master recordings resulting from the parties’ contract. Thang and Clinton were 'deemed [Warner Bros.’s]
employees for hire' in the same contract.  As noted, the parties signed a substantially similar agreement in 1979, and it is uncontested that all four Masters were created under these agreements. *** [E]ven if the Masters were not originally 'works for hire,'  § 201(e) protection does not apply where a copyright was
previously 'transferred voluntarily by that individual author.' There is no question that Clinton transferred any interest that he had in the Masters to Warner Bros., and, as part of a settlement arising from unrelated litigation, Warner Bros. subsequently agreed to transfer ownership back to Clinton. These voluntary transfers provide yet another basis for rejecting Clinton’s argument that he enjoys § 201(e) protection as the original author of the master sound recordings."  Accordingly, it was not an abuse of discretion to appoint a receiver to manage or sell ownership of the copyrights.  Clinton's defenses raise on appeal -- judicial estoppel and fraud on the court -- lacked merit.  Other defenses were waived for failure to raise them below, and in any event lacked merit.

NAPSTER Trademark Action Continues In California

Rhapsody Int'l, Inc. v. Lester & Napster.fm, Index No. C 13-05489 CRB (N.D. Cal., Feb. 24, 2014).

The Court denied defendants' motions to dismiss the trademark infringement case, concerning the mark NAPSTER, for failure to state a claim, lack of jurisdiction and improper venue.  The Court found that plaintiff stated a claim for trademark infringement, dilution, cybersquatting, unfair competition, and unfair business practices.  The Court also found that plaintiff made a prima facie showing of personal jurisdiction, and that transfer to Virginia for defendants' convenience was insufficient to warrant transfer.

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."

Raising Capital By Selling Royalty Income

Web Helps Musicians Sell Shares of Royalties

Web sites like the Royalty Exchange allows musicians to sell parts of their royalty income to investors and define which rights to sell and which to retain.

Article here.   Ben Sisario, "Web Helps Musicians Sell Shares of Royalties", 4/22/2013 NYTimes (Business).

Article re: Copyright Termination in 2013

See Ryan Davis, "Copyright Termination For '70s Hits Won't Spark Lawsuit Fever" (Law360, New York; Nov. 26, 2012).  (Link to article; registration required).

Article summary (first paragraph): "Musicians who recorded hit songs in the late 1970s will gain the right to reclaim ownership of their work starting in January under a 1978 copyright law provision, and while record labels are expected to fight to retain control of lucrative music, 2013 is unlikely to bring a flood of litigation, attorneys said."

The article concerns the reclamation of rights by authors that were licensed or transferred after 1978, pursuant to section 203 of the Copyright Act.  Generally, termination rights may be effected after 35 years from the grant.  Id.  Thirty-five years from 1978 is...2013!

Lawyers interviewed for the article predicted that there will be few actually litigated cases, and instead termination notices will serve as a jumping-off point for contract re-negotiations between artists and record labels.

UMG's Venue And Transfer Motions Denied In Digital Class Action

Rick James v. UMG Recordings, No. 11-1613 (related case No. 11-2431) (N.D. Cal. filed Nov. 1, 2011) (Doc. 34).

Plaintiffs in two related cases filed putative nationwide class actions against UMG Recordings, Inc. Plaintiffs seek to represent a class of recording artists, music producers, and other royalty participants. The complaints allege that UMG has failed to properly account for and pay its recording artists and music producers for income it has received, and continues to receive, from the licensees of its recorded music catalog for the sale of digital downloads and ringtones.

Defendants moved to dismiss for improper venue. The Court concluded that under the circumstances, it would be unreasonable to transfer the action based on the forum selection clause contained in a 1977 contract. "Assuming arguendo that the forum selection clause is valid and enforceable, that clause only governs the claims brought under the 1977 agreement. In analogous circumstances, courts have found it unreasonable to enforce a forum selection clause that applied to some but not all of the plaintiff’s claims."

Alternatively, defendant moved to transfer venue pursuant to 28 U.S.C. § 1404(a), contending

that the Central District of California is a more convenient venue. The primary dispute was whether transfer will serve the convenience of the parties and witnesses. The Court concluded that defendant had not met its burden that the case should be transferred.

Defendant also moved to dismiss plaintiffs’ claims under California Business & Professions Code

§ 17200. In both cases, plaintiffs allege that UMG knowingly breached its contracts with recording artists and music producers, and that “UMG either knew, recklessly disregarded, or should have known that its collection of income from Music Download Services and Mastertone Providers was in connection with a license agreement and the royalties payable to Plaintiff and the Class should have been accounted for and paid on that basis.” The Court concluded that plaintiffs stated a claim under § 17200, and that the questions raised by defendants’ motions are better suited for determination on a full factual record (i.e., at summary judgment).

Lastly, a third-party ("The Tubes") sought to intervene. The Court denied the motion because the proposed intervenors assert claims “parallel” to those already pending before the Court, and thus their interest are already represented. "If plaintiffs in these cases, who the Court notes are represented by the same counsel as The Tubes, believe that The Tubes should be added

as a class representative, plaintiffs may seek to amend the complaints."

Transfer To Florida Appropriate Where Only Connection To New York Is Internet Access

Caldwell v. Slip-N-Slide Records, Inc., 10 Civ. 9106 (JFK), NYLJ 1202510748971, at *1 (SDNY, Decided July 26, 2011).

The Court granted defendants' motion to transfer to federal court in Florida, pursuant to 28 USC 1401(a). "Plaintiff brings this suit in New York under the theory that the allegedly infringing song was distributed in New York over the Internet, including through YouTube and iTunes. As the only apparent connection to this forum is the distribution of "Bond Money" over the Internet, a fact which would support venue in any district court in this country, Plaintiff's choice of forum is entitled to little weight."

Plaintiff alleged that in 2001 he created the musical composition and sound recording of a song entitled "Dim Hits," which he later registered with the United States Copyright Office. In 2004, Plaintiff gave a copy of "Dim Hits" to a vocalist known as Trina, who has a recording contract with the Defendants. In 2008, Plaintiff discovered that the Defendants had allegedly copied "Dim Hits," without his permission, and incorporated it into a song titled "Bond Money." Plaintiff also alleges that the Defendants have distributed "Bond Money" on several albums, web sites, and other outlets throughout the United States.

None of the parties demonstrated ties to New York. Plaintiff was a resident of Charlotte, North Carolina. Defendant corporation was a Florida corporation that "promotes, develops, markets and manages recording artists," with its principal place of business and sole office in Miami Beach, Florida. The song "Bond Money" was purportedly written and recorded in Florida. Individual defendants were a Florida and Georgia resident. Another corporate defendant was a Phoenix, Arizona limited liability company.

Plaintiff's Motion to Transfer Granted in Nina Simone Action

Stroud Productions & Enterprises, Inc. v. Castle Rock Entertainment Inc., No. 07 Civ. 8638, 8/17/2009 NYLJ "Decision of Interest" (S.D.N.Y. Aug. 4, 2009) -

Plaintiff's motion to transfer venue to California granted. 28 USC 1404(a). The outcome of a California action will be dispositive to the sole issue in this case, to wit: whether the license pursuant to which Defendants used a Nina Simone song in a film was valid.

Notably, the moving party was plaintiff - in such instance, the SDNY requires plaintiff to demonstrate, in the time since the action was filed, there has been a change of circumstances that warrants transfer of venue.

Transfer and Contempt in Major Label v. Independent Distributor Case

Atlantic Recording Corp. v. BCD Music Group Inc., No. 08 Civ. 5201, NYLJ 5/14/2009 "Decision of Interest" (S.D.N.Y. May 7, 2009)

Defendant's motion to transfer denied. (Court goes through standard for 28 U.S.C. 1404(a))

Plaintiff's motion for contempt granted (for violating a preliminary injunction order entered on consent).

VideoEgg Transferred to California

In Capitol Records v. VideoEgg, defendant's motion to dismiss for improper venue and lack of jurisdiction was denied, but the case was transferred to California. [Article.]

The jurisdiction discussion focused on defendant's website and New York's long-arm jurisdiction statute (did they "transact business in New York?"). With respect to the transfer request, the court analyzes 7 factors for a transfer under 28 U.S.C. 1404.

No. 1:08-cv-05831-HV-DCF (Doc. 57 filed Mar. 5, 2009)

Jurisdiction and Transfer Decision in MP3tunes

The District Court, Southern District of New York, has found that personal jurisdiction exists over MP3tunes but not over its CEO, Michael Robertson. (Background here.) Further, venue and forum were proper, such that the suit will not be transferred to the Southern District of California.

Capitol Records Inc. v. MP3tunes LLC, No. 07-cv-9931, 10/3/08 N.Y.L.J. "Decision of Interest" (S.D.N.Y. decided Sept. 29, 2008).

PERSONAL JURISDICTION

The case analyzed personal jurisdiction over both MP3tunes and Robertson under New York's long-arm statute (CPLR 302). Because MP3tunes is an interactive website, provides users with software, transfers of music files, and allows for the exchange of e-mails/postings, the court held that MP3tuns "transacts business in New York" under the long-arm statute. Further, the website's minimum contacts with New York meant that the assertion of personal jurisdiction would not offend "traditional notions of fair play and substantial justice."

Robertson, however, was not subject to the court's personal jurisdiction. There was no competent evidence that the CEO's only activities in New York (a single meeting and a speaking engagement at an industry forum) related to plaintiffs' claims. Nor was there competent evidence to show that Robertson exercised control over the corporations allegedly infringing activities in New York (important, because an individual defendant may also be subject to jurisdiction under New York's long-arm statute if a corporate defendant is acting as his agent).

VENUE
A defendant "may be found", pursuant to 28 U.S.C. 1400(a), in any district where the defendant is subject to personal jurisdiction. Therefore, the motion to dismiss for improper venue was denied.

TRANSFER
The Court examined nine transfer-factors and denied defendants' motion to transfer the action.