Record Label Not Subject To Personal Jurisdiction In New York

Gordon v. Chambers, et al. 1:20-cv-00696 (E.D.N.Y. Jan. 29, 2021) 

A New York federal court dismissed copyright infringement claims against the record label TenThousand Projects, LLC based on a lack of personal jurisdiction. Plaintiff Seth Gordon’s (“Yung Gordon”) asserted infringement claims arising out of the introductory segment of rapper Tekashi 6ix9ine’s song “Stoopid”, which allegedly used the plaintiff’s radio drop without authorization. Plaintiff argued that Tekashi’s origin in New York and his New York lawyer, who represented him regarding matters with the record label, gave proper jurisdiction to a New York court. The Court disagreed. Interpreting N.Y. C.P.L.R. § 301 and 302 to determine the personal jurisdiction issue, the court found that the relationship between the record label and the New York rapper did not create a basis for personal jurisdiction, as the contract between the parties was grounded in California. The representation of a New York lawyer did not qualify as sufficient enough, in addition to the failure to meet the state’s long-arm statute. Therefore, the Eastern District of New York ruled in favor of the Defendant’s motion to dismiss the case as against the label based upon a lack of personal jurisdiction.

Contributory Infringement Claims Proceed Against Internet Provider

UMG Recordings, Inc. v. RCN Telecom Servs., LLC, No. CV1917272MASZNQ, 2020 WL 5204067, at *3 (D.N.J. Aug. 31, 2020)

UMG Recordings brought contributory and vicarious copyright infringement actions against an internet provider (RCN) and its management company (Patriot) for enabling RCN subscribers to repeatedly download and share UMG copyrighted songs. RCN received more than five-million email notifications requesting that RCN warns its subscribers to stop and then cancels the subscribers that refused to stop. RCN made no meaningful changes to its policies and continued to cater all infringing subscribers. On August 31, 2020, a Federal Court in New Jersey denied RCN’s motion to dismiss and allowed Plaintiffs’ Contributory Infringement claim because Plaintiffs sufficiently plead both elements. 1) Knowledge: sufficient knowledge was inferred from the email notifications RCN received; and 2) Material Contribution: material contribution was inferred from RCN’s conduct to continue to provide its network to subscribers that were known repeat offenders. The court also allowed Plaintiffs’ vicarious liability claim because Plaintiffs successfully demonstrated RCN’s right and ability to supervise their subscribers, and RCN’s financial incentive to tolerate the infringing conduct of its subscribers. However, the court dismissed all claims against Patriot because Patriot’s role of providing management services to RCN did not sufficiently establish that Patriot had knowledge of the infringement notices that RCN received or that Patriot had knowledge of the infringement committed by RCN’s subscribers. Plaintiffs’ claims against RCN will proceed into the discovery stage of the lawsuit, while Plaintiffs’ claims are not allowed to continue against Patriot.

Vicarious Liability Claim Against Network Fails

UMG RECORDINGS, INC. V. BRIGHT HOUSE NETWORKS, LLC No. 8:19-CV-710-MSS-TGW, 2020 WL 3957675 (M.D. Fla. Jul. 8, 2020)

UMG Recordings brought a claim that Bright House Networks, LLC is vicariously liable for copyright infringement committed by its users. These users are claimed to have unlawfully downloaded and shared songs by UMG. Defendants argued that Plaintiffs did not adequately plead the two elements of vicarious liability and therefore, the court should dismiss the claims as a matter of law. The elements of vicarious liability are (1) the right and ability to supervise the infringing activity, and (2) a direct financial interest in the activity. The Court granted the Motion to Dismiss Plaintiffs’ First Amended Complaint as to the Claim for Vicarious Liability. The reasoning that the Court used was that Plaintiffs did not adequately allege that Defendants received a direct financial benefit from the activities of its users, which was enough reason to deny the vicarious liability claim.

Sample Case Against Jay-Z and Timbaland Dismissed For Lack of Specificty

HINES V. ROC-A-FELLA RECORDS, LLC No. 19-CV-4587 (JPO), 2020 WL 1888832 (S.D.N.Y. Apr. 16, 2020)

Plaintiff Ernie Hines coauthored the soul single “Help Me Put Out The Flame” in the 1960s. Hines alleged that the sample from that song was used in two hip-hop songs without permission. Hines brought suit against four major record labels, as well as prominent artists Jay- Z and Timbaland. The court granted Defendant’s motion to dismiss. Defendants argued that Hines’s complaint did not specify the material from his song was copied in “Paper Chase”, co- authored by Jay-Z and Timbaland, or “Toe 2 Toe” which was authored by Timbaland. The Court agreed with Defendants that the complaint only contained broad allegations of similarity. Defendants also sought dismissal on grounds that the complaint failed to allege “whether and when the copyright ... was registered pursuant to statutory requirements.” The Court rejected the Defendants motion to dismiss on these grounds. However, the Court ruled in favor of Defendants’ motion to dismiss based on lack of specificity. The court also found that service of process had not been properly completed. Leave to amend was conditioned on Hines’s payment of the costs and attorney’s fees incurred by the Record Label Defendants in filing and defending their motions to dismiss.

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.

Absence of Registration Dooms Copyright Case Against Ricky Martin; 1st Cir.

CORTÉS-RAMOS V. MARTIN-MORALES No. 19-1358, 2020 WL 1847072 (1st Cir. Apr. 13, 2020)

Luis Adrian Cortes-Ramos sued Rickey Martin, alleging violations of federal copyright law and Puerto Rico laws. Plaintiff alleged that Ricky Martin’s music video was similar to Plaintiff’s. The district court dismissed Plaintiff’s claims pursuant to Fed. R. Civ. P. 12(b)(6). The First Circuit affirmed in part and vacated in part the decision of the district court. The Court held that the district court was correct in holding that the complaint did not state a proper copyright claim by not alleging registration. However, the district court erred by dismissing the complaint with prejudice because plaintiff had otherwise alleged a copyright claim and on remand the court should consider whether plaintiff could supplement his allegations concerning registration.

California Common Law Copyright Win For IHeartMedia

PONDEROSA TWINS PLUS ONE V. IHEARTMEDIA, INC. No. 16-CV-05648-VC, 2020 WL 3481737 (N.D. Cal. Jun. 26, 2020).

Plaintiff, Spicer, filed a complaint claiming that IHeartMedia improperly made use of Spicer’s sound recordings. The claim argued that Defendant committed common law copyright infringement under section 980 of the California Civil Code. The court dismissed all of the Spicer’s claims with leave to amend and granted Defendant’s motion to dismiss. There was no indication that common-law copyright in the 1960s included preventing someone from playing a sound recording publicly. The Court also mentioned that regardless of the common law copyright laws that existed at the time, Spicer lost rights to the recordings once the recordings were published. The Court ruled that the alleged infringement of public-performance copyright did not exist.

Termination Rights Class Action Against Sony Music Entertainment to Proceed

Johansen v. Sony Music Entertainment Inc., No. 19-cv-1094-ER, 2020 WL 1529442 (S.D.N.Y March 31, 2020).

On February 5, 2019, musicians David Johansen, John Lyon, and Paul Collins (collectively, “Plaintiffs”) filed a copyright infringement and declaratory judgment class action against Sony Music Entertainment based on Sony’s continued exploitation of the Plaintiffs’ copyrighted sound recordings despite being served with termination notices.  On June 11, 2019, Sony filed a motion to dismiss the action for failure to state a claim because the Plaintiffs’ termination notices are untimely, deficiently identify the grants being terminated, deficiently identify the dates of execution of the grants, and that these errors are not harmless so the notices are invalid. Addressing Sony’s assertions, the court determined based on the record before it that it is entirely plausible that Johansen’s and Lyon’s notices were timely, and that Collins’ untimeliness was due to a “scrivener’s error,” which would make it harmless error, so dismissing the suit without more information would be inappropriate.  Moreover, the court determined that the Plaintiffs provided sufficient information about the sound recordings in issue to overcome omissions of details about the grants being terminated, so “the general harmless error rule may apply.” As a result, the court denied Sony’s motion to dismiss. 

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.

9th Circuit Upholds Attorneys’ Fees Award to Universal Music Group in Copyright Infringement Suit

Apps v. Universal Music Group, Inc., Nos. 18-15889, 18-15987, 2020 WL 1514971 (9th Cir. March 30, 2020)

On March 30, 2020, the 9th Circuit affirmed a district court award of $41,955 in attorneys’ fees and $946.23 in costs to Universal Music Group Inc. (“UMGI”) in a copyright infringement suit involving the John Newman Song, “Love Me Again.” The Plaintiff, Alissa Apps, sued Newman, and other parties, including “UMGI,” which is a “holding company that does not create, develop, perform, market, sell, distribute, or exploit recorded music or musical compositions.” After awarding UMGI summary judgment, the district court awarded UMGI attorneys’ fees and costs incurred after the Plaintiff deposed UMGI’s in-house counsel, which revealed that UMGI “has no business operations” and “does not exploit music in any way,” thus rendering UMGI an improper defendant. On appeal, the 9th Circuit deemed that the district court’s reasoning under the Fogerty and Kirtsaeng factors for awarding attorneys’ fees was not an abuse of discretion, and thus it affirmed the fees and costs award.

9th Circuit Affirms Led Zeppelin Trial Verdict That "Stairway To Heaven" Is Not An Infringement

Skidmore as Trustee for Randy Craig Wolfe Trust v. Zeppelin, No. 16-56067, No. 16-56287, 2020 WL 1128808 (9th Cir. Mar. 9, 2020) (en banc)

In an en banc decision, the 9th Circuit affirmed the Central District of California’s post-jury trial judgment in favor of Led Zeppelin in a suit alleging that Led Zeppelin’s song “Stairway to Heaven” infringed the song “Taurus” written by guitarist Randy Wolfe of the band Spirit.

In Part I of the en banc decision, the court held that the 1909 Copyright Act controlled the court’s analysis because the allegedly infringed song “Taurus” was registered prior to the 1976 Copyright Act’s enactment. As a result, it was not error for the lower court to refuse to admit the sound recordings of “Taurus” to evidence.

In Part II, the court held that proving copyright infringement here required a showing that (1) the plaintiff owned a valid copyright for “Taurus,” and (2) Led Zeppelin copied protected elements of “Taurus,” which further required a showing of both copying and unlawful appropriation by Led Zeppelin.

In Part III, the court concluded that as it pertained to access and confusion with substantial similarity, the lower court’s exclusion of the “Taurus” sound recordings was moot because the jury found access regardless.

Next, in Part IV the court addressed the following issues regarding the district court’s jury instructions: (1) “the failure to give an inverse ratio instruction”; (2) “the sufficiency of the court’s originality instructions”; and (3) “the failure to give a selection and arrangement instruction.” In addressing these issues, the court held that (1) an inverse ratio was not required for substantial similarity; (2) the district court’s originality instructions were proper; and (3) failure to give selection and arrangement instruction receives plain error review, there was no plain error by the district court, there was no error by the district court because the plaintiff’s case did not involve a selection and arrangement theory at trial, and the district court’s instructions as a whole were fair and adequate as to plaintiff’s argument of extrinsic similarity between the songs.

Finally, in Part V the court held that the district court’s trial time limits, response to a jury question, admission of expert testimony, and non-award of attorneys’ fees was not error.

Covenant Not To Sue Defeats "This Land Is Your Land" Copyright Challenge

Saint-Amour v. Richmond Organization, Inc., No. 16-cv-4464-PKC, 2020 WL 978269 (S.D.N.Y Feb. 28, 2020).

The court dismissed a copyright suit challenging the validity of the Defendants’ interest in the copyright for the famous song “This Land is Your Land.” The Plaintiffs filed the lawsuit seeking a declaratory judgment that the Defendants did not own a valid copyright in the song, but rather it is in the public domain. Plaintiffs stated goal was to make their own recording and music video using the lyrics from the song with a different melody, but they were concerned that the Defendants would enforce their copyright against them if they did. However, on April 23, 2019, Defendants and Woody Guthrie Publications delivered a broadly worded covenant not to sue the Plaintiffs for any infringement in the song. As a result, the Defendants filed a motion to dismiss asserting that a live case or controversy no longer existed, so the court lacked subject matter jurisdiction. The court agreed with Defendants, cited Nike, Inc. v. Already, LLC, 568 U.S. 85 (2013) to support its finding that the covenant resolved the matter, and granted the motion to dismiss.

Use of Sample in Rap song Held Fair Use by Second Circuit

Estate of James Smith v. Graham, No. 19-28, 2020 WL 522013 (2d Cir. Feb. 3, 2020).

On February 3, 2020, the Second Circuit issued a summary order affirming a finding by the Southern District of New York that Drake and Jay-Z’s sampling of the jazz song “Jimmy Smith Rap” in their song “Pound Cake” was fair use. The court found three of the four fair use factors weighed in favor of fair use. As to factor one, the court found that the use was transformative because “Pound Cake” sent a message that was counter to that of “Jimmy Smith Rap,” and “Pound Cake” is a seven-minute song featuring only thirty-five seconds of “Jimmy Smith Rap” in its beginning. As to factor two, the court stated that it is of “limited usefulness” where the use is transformative.  The court also found the third factor weighed in favor of fair use because the amount used by Drake and Jay-Z was reasonable in sending their transformative message. Finally, the court deemed that “Pound Cake” did not usurp the market for “Jimmy Smith Rap” because there is no evidence that an active market for it exists. As a result, the sampling was fair use.

Kanye West Obtains Partial Judgment in “The Life of Pablo” Sampling Lawsuit

Andrew Green et al. v. Kanye West et al., No. 2:19-cv-00366 (D.S.C. Jan. 17, 2020) [Doc. 59].

In January of 2016, a recording of one of the Plaintiffs praying was posted to Instagram. Shortly thereafter, Kanye West used an audio sample from the prayer recording in his Grammy nominated song, “Ultralight Beam,” from his certified platinum album, “The Life of Pablo.” The Plaintiffs filed suit against Kanye and various recording studios for several claims under the Copyright Act, the Digital Millennium Copyright Act (“DMCA”), and state law. The parties are still in dispute over whether Kanye received permission to use the sample. On January 17, 2020, a federal judge in the District of South Carolina issued an order granting Kanye’s motion to dismiss one Plaintiff’s copyright claims because she is not a registered owner of the copyrighted sample at issue. The order also granted Kanye’s motion to dismiss the Plaintiff’s quantum meruit claim as it is preempted by the Federal Copyright Act. Additionally, the order denied Kanye’s motion to dismiss Plaintiff’s claims for statutory damages, attorney’s fees, and falsifying copyright management information under the DMCA because genuine issues of material fact exist as to these issues.

Photographer’s Copyright Infringement Suit Allowed to Proceed Against Music Festival But Not Against Related Entities

Bayoh v. Afropunk Fest 2015 LLC, No. 18-cv-5820-DLC, 2020 WL 229978 (S.D.N.Y. Jan. 15, 2020).

In August 2015, plaintiff Photographer Mambu Bayoh was hired by Afropunk LLC to take pictures at its Brooklyn music festival. However, in 2018 Bayoh filed suit in the Southern District of New York claiming that Afropunk, its co-CEOs, and related entities infringed the copyrights for his photographs by exceeding the scope of permission that he granted. In response to the suit, Afropunk LLC moved for summary judgment, arguing that Bayoh’s copyright registrations were invalid, that Bayoh’s license to Afropunk was an unlimited license, and that Bayoh’s suit was barred by equitable estoppel and the statute of limitations. The court was unpersuaded by these arguments as it issued an opinion and order on January 15 denying the motion as to Afropunk LLC and its co-CEOs because it failed to present sufficient evidence to support its arguments at the summary judgment stage. However, the court granted summary judgment as to Bayoh’s claims against Afropunk Fest 2015 LLC and Afropunk Global Initiative because these two entities were uninvolved in the alleged infringement against Bayoh.

District of Massachusetts Grants Prince’s Estate Permanent Injunction Against YouTuber Who Repeatedly Posted Live Prince Performances

Comerica Bank & Trust, N.A. v. Habib, No. 17-12418-LTS, 2020 WL 58527 (D. Mass. Jan. 6, 2020).

Prince’s estate alleged that Defendant committed copyright infringement and violated the federal civil anti-bootlegging statute by recording and posting several videos of live Prince concerts to YouTube. In response, Defendant argued fair use, which failed as the District of Massachusetts found that all four factors weighed in favor of Prince’s estate.

Defendant also moved for summary judgment based on various other defenses, including non-commercial use and good faith use, which the court denied as well.

Moreover, Prince’s estate moved to increase the award of statutory damages under the Copyright Act based on Defendant’s willful infringement. The court granted this motion as Defendant’s continued posting of similar videos and insistence that “every artist encourages people to post videos,” which showed disregard for musician rights.

As to Plaintiff’s anti-bootlegging claim, the Court discussed how the statute is rarely litigated and noted that the question of “whether [the statute’s] protections are descendible and may be invoked by the estate of a once-protected performer” has never been addressed. The court provided Plaintiffs the option to file a supplemental brief on the question if it wishes.

The court also denied Defendant’s defense that Prince’s broad statement that “nobody sues their fans . . . fans sharing music with each other, that’s cool” acted as an implied license to post the videos. As such, the Court granted Plaintiff’s motion for a permanent injunction and scheduled a damages trial for March 2, 2020. [JM]

Infringement Claim Dismissed In Country Music Spat Because No "Access"

Arnett v. Jackson, No. 5:16-cv-00872-D (E.D.N.C. Aug. 14, 2017) [Doc. 28].

A songwriter who claimed that his song "Remember Me" was infringed by country music star Alan Jackson's song "Remember When" had his copyright infringement claim dismissed under Fed. R. Civ. P. 12(b)(6) for failure to plausibly allege the defendant's access to the plaintiff's song.  The Plaintiff argued that Jackson had access to Remember Me because it was widely disseminated and sent to third-party intermediaries who knew Jackson.  But, the Court found that the fact that the plaintiff's song was available on the internet and that plaintiff had sold the song (without an allegation of commercial success) did not create an inference of access.  Further, the connections between the alleged third-party intermediaries was not close enough, and the plaintiff did not sufficiently allege how the songs were sufficiently similar in order to assume access.