Middle District of Tennessee is Ruled Proper Venue for Eminem’s Suit Against Spotify

Eight Mile Style, LLC v. Spotify USA Inc., No. 3:19-cv-0736, 2020 WL 1640425 (S.D.N.Y April 2, 2020)

In August 2019, Eight Mile Style and Martin Affiliated, two music companies that own songs recorded by Eminem, filed a complaint in the U.S. District Court for the Middle District of Tennessee against Spotify. The complaint alleged that Spotify infringed the copyrights of various Eminem songs through its music streaming platform by falsely claiming to own a valid license to the songs and making them available for Spotify’s users to stream. Spotify then filed a motion to dismiss for lack of personal jurisdiction and improper venue, or in the alternative to transfer the case to the S.D.N.Y. because New York is where Spotify’s licensing personnel, which it expects to be involved in the case, are located. In denying Spotify’s motion, the court found that there was specific jurisdiction over Spotify because making its interactive music streaming available within the Middle District of Tennessee was purposeful availment of the forum and users in the district have streamed the compositions in issue so there was a sufficient link between the availment and underlying claims for specific jurisdiction. Additionally, the court deemed that exercising jurisdiction was not unreasonable, so personal jurisdiction existed. For the same reasons, the court determined that venue was proper as well. Finally, the court denied the Defendant’s request to transfer the case to the S.D.N.Y. because “no district would be totally free of inconvenience.”

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.

Hard Rock's CAVERN CLUB Trademark Not Subject To Cancellation

Cavern City Tours Ltd. v. Hard Rock Cafe Int'l (USA), Inc., No. 6:12-cv-1410 (M.D. Fla. Oct. 31, 2014).

The Court held that the TTAB properly dismissed the the petition of plaintiff, who owns the mark THE CAVERN CLUB in the UK and other jurisdictions, to cancel Hard Rock Cafe's CAVERN CLUB mark in the USA.  "The Cavern Club" was a venue where the Beatles performed hundreds of times early in their career.

First, the Court found that Hard Rock did not knowingly make false statements in their application for the CAVERN CLUB mark concerning the use of the mark by other people (like plaintiff), and rejected plaintiff's argument to adopt a "willful blindness" standard.  The Court found that plaintiff failed to submit sufficient evidence to prove that Hard Rock was aware of Plaintiff's mark; further, even if Hard Rock did have knowledge of plaintiff's use of the mark, the Court found that Hard Rock had reasonable basis to believe that plaintiff did not have a superior right to use the mark in commerce.

Second, the Court found that Hard Rock's mark did not falsely suggest a connection with plaintiff in violation of section 2(a) of the Lanham Act.  "The mere fact that Plaintiff's name has a word in common with the CAVERN CLUB does not establish that Plaintiff's identity or persona is the CAVERN CLUB."  Similarly, plaintiff's lease and operation of a "new" Cavern Club venue did not establish that Plaintiff's persona or identity is the CAVERN CLUB.  Moreover, Plaintiff did not establish that the CAVERN CLUB mark points uniquely and unmistakably to Plaintiff.  To the contrary, the evidence links the CAVERN CLUB with the original venue, which was demolished in 1973; thus, it did not point uniquely to Plaintiff.  Accordingly, Hard Rock was granted summary judgment dismissing the case.

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."

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.

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.