December 30, 2015

Chorus In Bieber & Usher Song Similar Enough To Chorus In Plaintiff's Song To State Copyright Claim

Copeland v. Bieber, No. 14-1427 (4th Cir. June 18, 2015)

The Fourt Circuit vacated the trial Court's dimissal of Plaintiff's claim against Justin Bieber and other defendants alleging that three recorded songs infringe upon plaintiff's copyright in an earlier song of the same name.  Applying the "intrinsic similarity" test -- whether the songs at issue, assessed from the perspective of the intended audience (the general public), and taking into account their "total concept and feel" -- the appellate court found on de novo review, after listening to both songs start to finish, that plaintiff stated a claim.  First, the court found that the three songs (a demo, album version, and remix) were "the same" (not just substantially similar) under the unscientific intrisic standard.  Second, the court compared the three songs to plaintiff's song.  The appellate court disagreed with the lower court's finding that there was a different overall "aesthetic appeal," finding too much of a focus on the mood and tone of the song rather than the similarities between the most imporant "element" of the songs, their choruses.  The songs are different genres, but that is not enough (the Court gave the example of the Beatles' songbook being turned into an unlicensed reggae or heavy metal version).  Further, the songs were in may respects dissimilar; numerically, the points of dissimilarity may have exceeded the points of similarity.  "But what that analysis fails to account the relative importances of these differences as compared to what the songs reasonably could be heard to have in common: their choruses....courts routinely permit a finding of substantial similarity where the works share some espeically significant sequence of notes or lyrics."  Continguing, "we think it is clear that when it comes to popular music, a song's chorus may be the kind of key sequence that can give rise to intrinsic similarity, even when works differ in other respects."  In other words, "the hook" is key.  And whether a member of the general public could experience these songs primarily through their choruses and thus find them substantially similar is a close enough question that it cannot be disposed of as a matter of law and should instead by decided by a jury.

[Author's note: missed this case earlier in the year].

Record Company Copyright Claims Against Amway Survive Dismissal

Alticor Inc. v. UMG  Recordings, Inc., No. 6:14-cv-542 (M.D. Fla. Dec. 10, 2015).

In a complex dispute between mutliple record companies and Amway concerning alleged direct, vicarious and contributory infringement of pre- and post-'72 sound recordings in over 1,000 videos, the Court dismissed Amway's Rule 12(b)(6) motion to dismiss the record companies counter-claims.  First, the Court found that the record companies had adequately alleged violations of their exclusive right of public performance.  Amway argued that the "public performance right" applicable to musical compositions and other works was inapplicable to sound recordings; the Court rejected that argument.  Second, the Court found that even though the Copyright Act does not conver a "making available" right, the act of making a work available for use of a direct infringer was relevant to the record companies' indirect infringement claims.  Third, the Court agreed with Amway that Florida common law does not create a public performance right for pre-72 recordings, but nonetheless held that it would not grant Amway partial relief under Rule 12(b)(6).

December 24, 2015

Sampling Case Against B.I.G. Dismissed

Hutson v. Notorious B.I.G., LLC et al., No. 14-cv-2307-RJS (SDNY Dec. 22, 2015) [Doc. 51].

On a Rule 12(b)(6) motion, the Court dismissed plaintiff Lee Hutson's copyright infringement claims against the Notorious B.I.G.'s successor, label, publisher, record company and distributor, which alleged unauthorized sampling of Plaintiff's 1973 song (composition and sound recording) "Can't Say Enough About Mom" in the Biggie song "The What" appearing on the 1994 album "Ready To Die."  Plaintiff alleged that he first discovered the unauthorized sample in 2012, and brought suit in 2014.  In his amended complaint, plaintiff alleged infringement of the composition, of the sound recording outside the USA, and the digital performance right of the sound recording.

The Court dismissed each claim.  After noting the standard on a Rule 12(b)(6) motion, and discussing which documents outside of the pleadings it would consider (e.g., agreements, the sound recording, copyright registrations, certificates of incorporation), the Court then turned to each cause of action.

First, the Court found that Plaintiff lacked standing.  Although Plaintiff alleged that he owned 50% of the copyright in the composition, the Court found that allegation implausible for the time of the infringement (1994-the present) because the agreements submitted did not establish that he had a chain of title, and further, the allegation that plaintiff was "doing business as" a certain entity was insufficient given corporate formalities.  [The Court did note in dicta, fn. 4, that the statute of limitations defense likely failed.]  Similarly the Court found that Plaintiff failed to plead ownership of the sound recording because of a a prior lawsuit in which the settlement included an assignment to the record label as well as a release.

Second, the Court found that it lacked jurisdiction over infringement occurring abroad.

Accordingly, the Court dismissed the claims.  The Court even dismissed claims against a non-moving defendant.

Lastly, the Court denied Plaintiff's application for leave to amend, as futile.

December 15, 2015

In Tejano Case, Virtually Identical Opening Lines Of Song Does Not Mean Per Se Striking Similarity; 5th Cir.

Guzman v. Hacienda Records, No. 15-40927 (5th Cir. Dec. 14, 2015).

Affirming judgment after a bench trial, the Fifth Circuit held that the District Court did not err in finding lack of access to the song (despite radio play and live performances) and that the songs were not strikingly similar even though the first lines were virtually identical (because there was no evidence of uniqueness or complexity).  Applying the "clearly erroneous standard," the 5th Circuit declined to second guess the District Court's findings.

Default Judgment Entered In Grooveshark Case

Arista Records v. Tkach et al., No. 15-cv-3701 (SDNY Dec. 11, 2015).

The Court granted Plaintiff record companies a default judgment on their claims for copyright infringement, trademark counterfeiting, unfair competition, and cybersquatting claims based on the websites "" and "".  The plaintiffs had obtained a preliminary injunction, and the defendants did not respond to either the injunction or the complaint in any manner.  The Court entered a judgment permanently enjoining Defendants' use of the "Grooveshark" marks and the infringing domains.  Plaintiff UMG was also awarded $4 million for the trademark infringement, $400,000 for the cybersquatting, and statutory damages on the copyright claim of over $13 million.  Plaintiffs were also granted their attorney's fees, to be calculated on a later submission.

December 10, 2015

Happy Birthday Case Settles Shortly After Plaintiffs Granted Leave To Expand Class Period Back To 1949

Good Morning To You Productions v. Warner/Chappel, No. 13-4460 (C.D. Cal. Dec. 7 & 8, 2015).

In the "Happy Birthday To You" case, the Court granted Plaintiffs' motion to amend the complaint to expand the proposed class period back to 1949.  Shortly thereafter, an announcement was made that a settlement had been reached.

December 3, 2015

Cox Communications Not Protected By DMCA Safe Harbor In Bit-Torrent Case

BMG Rights Management v. Cox Communications, no. 14-1611 (E.D. Va. Dec. 1, 2015).

In an action by the putative owners of 1,400 musical compositions against an internet service provider (Cox) for contributory and vicarious liability based on its users Bit Torrent infringement, the Court held inter alia that the ISP was not protected by the DMCA safe-harbor because it did not terminate access of repeat infringers under appropriate circumstances.  The Court found that defendant did not implement a repeat infringer policy before 2012, and after 2012 it did not reasonably implement its policy.  Thus, if Plaintiff is successful at trial, it will not be limited in the remedies it seeks.

Other issues the Court addressed was whether Plaintiff had standing (the copyright registrations listed Plaintiff, its predecessor, someone else, or the works were purchased).  The Court further found questions of material fact, 1) whether there is evidence of direct infringement by third parties; (2) whether there is evidence of Cox’s contributory infringement; (3) whether there is evidence of Cox’s vicarious liability; and (4) whether BMG failed to mitigate its damages.  Lastly, the Court found that the "unclean hands" defense failed as a matter of law.

November 20, 2015

YouTube To Protect "Fair Use" By Defending In Court And Keeping Posted Videos Subject To Unsupported DMCA Takedowns

"YouTube will now protect some of the best examples of fair use on YouTube by agreeing to defend them in court if necessary," Google announced on November 19, 2015.  The company will offer legal assistance "to a handful of videos" that Google believes "represent clear fair uses which have been subject to DMCA takedowns."  Additionally, the company will keep the videos posted and feature them as examples of fair use.  According to Google, this is a new piece of the company's "normal processes" to "resist legally unsupported DMCA takedowns."

November 13, 2015

Pro Se Plaintiff's Taylor Swift Case Dismissed At In Forma Pauperis Stage

Braham v. Sony/ATV Music Publishing et al., 15-cv-8422 (C.D. Cal. Nov. 10, 2015).

A magistrate judge denied the pro se plaintiff's request to proceed in forma pauperis on the basis that he failed to state a claim against Taylor Swift and her label/publisher for alleged copyright infringement.  According to the Complaint, defendants used a 22 word phrase from Plaintiff's song "Haters gone hate".  Without ident ifying the specific phrase, Plaintiff alleges that “92% of the lyrics” of “Shake It Off” come from his song, that his “song phrase string is used over 70+ times,” and that Taylor Swift would not have written “Shake It Off” had he not written “Haters gone hate.”  The Court found that the plaintiff failed to adequately allege copying under Rule 8.  The Court further noted that if the plaintiff chose to refile an amended complaint, it had significant concerns that he lacked a claim based solely on the lyrics.  Moreover, the plaintiff would need to allege that his lyrics are original.

EMI Awarded $3 million + in legal fees in MP3 Tunes Case

Capitol Records, Inc. v. MP3Tunes, No. 07-cv-9931 (SDNY 11/12/2015) [Doc. 724].

In the MP3Tunes case, the Court awarded the plaintiff record labels and music publishers attorney's fees under the Copyright Act.  Although slightly reduced (e.g., because of block billing), plaintiff were awarded just over $3 million in fees and costs.

November 3, 2015

BMI May Recover More Than Minimum Statutory Damages After Nightclub's Default

BMI v. Crocodile Rock Corp., No. 14-3891 (3d Cir. Oct. 30, 2015) (non-precedential opinion).

The Third Circuit held that performance rights organization BMI could recover a default judgment for more than the minimum statutory damages available under the Copyright Act.  The Court found that so long as the award falls within the limits set by statute, the trial court's discretion and sense of justice were controlling in setting the amount of the award, even in the case of a default judgment and where the defendant's alleged profits are less than the amount awarded.  Accordingly, the $35,000 award of statutory damages was affirmed.

October 29, 2015

Stratotone Mark For Guitars Was Abandoned, Permitting Junior Use

Agler v. Westheimer Corp., No. 14-099 (N.D. Indiana 10/28/15).

In a trademark infringement action concerning the mark STRATOTONE for guitars, the Court held that an abandonment of the mark permitted a junior user's use of the mark.  A period of non-use by one of the parties triggered a presumption of abandonment, which was not rebutted.

October 28, 2015 Denied Registration of :I AM" Trademark For Sunglasses

In re, llc, Serial Nos. 85044495 (TTAB mailed Oct. 7, 2015).

Black Eyed Peas frontman, "," was refused registration of the mark I AM for use on sungalsses, on the basis of an existing mark for sunglasses for which there was a finding of likelihood of confusion.  However, the application was permitted to proceed for other goods identified in the application under Class 9.

Sir-Mix-A-Lot Awarded Attorney's Fees For Defeating Copyright Claim

Ford v. Ray, No. 15-0432 (W.D. Wash. Oct. 27, 2015).

After dismissing plaintiff's copyright claim and granting Sir-Mix-A-Lot attorneys fees under 17 USC 505, the Court awarded defendant $20,000 in fees.  The amount awarded was a reduction from the approximately $58,000 sought, based on partially redacted and duplicative time-sheets and avoiding putting the plaintiff in financial ruin.

October 27, 2015

Beyonce Dodges Copyright Claim In "XO" v "XOXO" Case

Lane v. Carter et al., No. 14-cv-6798 (SDNY filed 10/21/15) [Doc. 51].

Plaintiff's claim, alleging that he gave a copy of his song XOXO to one of Beyonce's background singers and that Beyonce infringed the song when she created the song XO, was dismissed pursuant to Rule 12(b)(6) and 8(a).  First, the Court found that although Plaintiff holds a copyright registration for the lyrics to XOXO, the registration excluded rights to the music which was the sole basis of the copyright claim.  Moreover, even though Plaintiff alleged that he was an exclusive licensee, he did not allege that hte licensor had a valdily registred copyright.  Accordingly, the claim was dismissed for lack of standing. 

Even though that was potentially curable on an amended pleading, the Court found then considered whether a copyright infringement claim was otherwise substantively viable.  The Court then underwent a "substantial similarity" analysis of: (1) "the beat" and the songs to determine whether the similarities between the two songs concern copyrightable parts of XOXO and whether a reasonable and properly instructed jury could conclude that there is substantial similarity.  The Court found that the use in both songs of "a common four-bar phrase" would not establish substantial similarity between them.  Additionally, comparing the songs holistically, the Court found that no reasonable jury could find the lyrics of XOXO substantially similar to XO.  Aside from thef act that both songs' lyrics use the letters X and O, "there is virtually nothing common to the two song's lyrics" (emphasis in original).  Moreover, the lryics of the two songs have no word in common, save ubiquitous words like "I," "you," your," "is," and "baby."  The themes were also different.  Next, as to the music, the Court listened to the two song and found litte, if anything, in common.  The Court, accordingly, dismissed the complaint with prejudice.

October 26, 2015

Pandora Pre-1972 Suit Settles

Various news outlets report that the Pandora pre-1972 sound recording litigation has settled for $90 million.

October 21, 2015

Plaintiffs In Sampling Case Fail To Sufficiently Plead Their Standing

Kelley v. The Universal Music Group, No. 14-cv-2968 (S.D.N.Y. filed 10/19/15).

In a case alleging that a song by the artist "Fabulous" infringed plaintiffs' 1974 song by including an unauthorized sample, the Court dismissed the pro se plaintiffs' copyright claim without prejudice to amend based on their lack of standing. The Court found that a copyright registration listing the plaintiffs as authors but not claimants rebutted their claim; but, that plaintiffs could replead to allege that they have standing as "beneficial owners" (i.e. a right to collect royalties), which was not sufficiently pleaded. The other state-law claims for violation of "poetic license " and "fraudulent deceit" were held to be preempted by the copyright act, and the mental anguish claim was not a remedy authorized by the statute.

October 9, 2015

Santa Clause Is Comin To Town Reverts To Author's Heirs In 2016

Baldwin v. EMI Feist Catalog, 14-182-cv (2d Cir. Oct. 8, 2015).

The Second Circuit held that EMI publishing owned rights to the song "Santa Clause Is Comin' To Town" under a 1981 grant, not a 1951 grant, and accordingly that a 2007 termination notice terminates EMI's interest in 2016, reversing the lower court's entry of summary judgment for EMI.  The case details the complex statutory scheme under the 1976 Copyright Act which gave authors and their statutory heirs the right to terminate previously made grants of copyright under certain circumstances, and thereby to recapture some of the value associated with the works.  17 USC 203 and 304(c)-(d).  Plaintiff sought a declaration that either a notice of termination served on the publisher in 2007 or another served in 2012, will, upon becoming effective, terminate EMI's rights to the song.  The Second Circuit concluded that EMI owned rights to the song not under a 1951 agreement but instead under a subsequent 1981 contract, and that that the 2007 termination notice will terminate the 1981 agreement in 2016.  Accordingly, plaintiff (the author's heirs) were entitled to a declaratory judgment.

The Court detailed the various rights of reversion under the Copyright Act, which permits the author of certain earlier works to terminate a grant of copyright (e.g., to a publisher, like EMI's predecessor).  It then found that a 1981 Agreement not only granted EMI the future interest scheduled to revert to the author upon termination, it also replaced an earlier 1951 agreement as to the source of EMI's existing rights to the song.  Applying New York common law, the Court held that the parties intended for the new contract to substitute for the old one.  "Section 1 of the contract shows that they chose not only to have EMI receive the future interest that vested in [the author] upon service of the termination notice, but also to replace the 1951 Agreement as the source of EMI's existing rights in the Song."  Thus, the failure to record a 1981 termination notice under the 1951 agreement was irrelevant to the question whether EMI presently owned the copyright in the Song under either agreement.  Its rights to the renewal term were traceable to the 1981 agreement.  Thus, that was all that matters for decided plaintiffs' termination notices pursuant to section 203.

The Court concluded that Plaintiff could terminate the 1981 agreement under section 203 (section 304 did not control), and that the 2007 termination notice terminated the 1981 agreement.  Publication is a one time event that occurred in the 1930s.  Because the 1981 grant was executed by the author and does not cover the right of publication, it was terminable under section 203 starting on December 15, 2016, which is the effective date of termination stated in the 2007 notice.

Hip Hop Producer Failed To State A Claim Against Her Former Attorneys In An Earlier Copyright Action

Boone v. Codispoti & Assocs., No. 15-cv-01391 (S.D.N.Y. filed Oct. 7, 2015).

The Court held that a hip-hop producer, proceeding pro se, did not state a claim for fraud, conspiracy and denial of due process arising from her former attorney's prior representation in a copyright infringement action.  Plaintiff alleged that her former attorneys falsely led her to believe that a jury trial would occur, and to amend her pleadings, knowing that almost all copyright infringement actions do not survive summary judgment.  The claim failed because the alleged statements were a mere expression of future expectations that did not constitute actionable fraud.  Moreover, the alleged actions were not fraudulent representations or omissions.  The claim was also time-barred.  Lacking a fraud claim, her conspiracy claim also failed.  The due process claim, under 42 USC 1983, failed because there was no statement of a constitutional violation.  The summary judgment decision dismissing her earlier case was affirmed on appeal.  Nor did defendants act under color of state law.  The defendants were private attorneys who represented plaintiff in federal court in a copyright action.  Leave to amend was denied, and the complaint was dismissed.

October 1, 2015

Kanye, Jay-Z and Others Avoid Copyright Infringement Claim Because Two "Made In America" Songs Not Substantially Similar

McDonald v. West et al., No. 14-cv-8794 (S.D.N.Y. Sep. 30, 2015) [Doc. 42].

In case about two songs both called "Made In America," the Court dismissed the Complaint against Kanye West, Jay-Z and others alleging copyright infringement of the plaintiff's song, pursuant to Rule 12(b)(6).  First, the Court found that even though the two songs shared the same title, the song title "Made In America" was not copyrightable.  "It is too brief, common, and unoriginal to create any exclusive right."  Second, the Court analyzed similarity between the lyrics in the chorus of each song, along with alleged musical similarity.  However, the Court found that plaintiff did not plausibly plead substantial similarity.  The Court then turned to a "holistic" comparison of the two songs, because even if the indvidual elements that make up Plaintiff's songs are uncopyrightable, they still may represent a protected selection and arrangement of unprotectable elements.  The Court found that no reasonable jury could find the two songs similar, lyrically or musically.  The differences were major.  "Where any reasonable juror would conclude - as here - that the differences are many, and what similarities exist are based on unprotectable elements, the two works are not substantially similar as a matter of law."  Accordingly, the Court dismissed the complaint.

September 29, 2015

Party Rock Anthem Not A Parody Of Hustlin'; Material Questions Remain Regarding Fair Use Defense

Roberts v. Gordy et al, No. 13-cv-24700 (S.D. Fla. dated Sep. 17, 2015).

The Court found that defendants are precluded at trial from arguing that Party Rock Anthem parodies the song Hustlin', but that summary judgment was inappropriate because questions of fact remain regarding whether Defendants' use, outside the parody context, was a fair use.  Specifically, material questions existed regarding the purpose and transformativeness of Defendant's use and the market impact of their use.

"Everyday I'm Hustlin'" Phrase Not Copyrightable

Roberts v. Gordy, No. 13-cv-24700 (S.D. Fla. dated Sep. 15, 2015).

In a dispute between the alleged owners of the song "Hustlin'," whose chorus repeats the phrase "everday I'm hustlin'," and members of the group LFMAO who sell merchandise bearing the phrase "everday I'm shufflin'," a phrase from their hit song "Party Rock Anthem," the Court held that the isolated phrase "everyday I'm hustlin'" is not copyrightable.  The Court noted that "copyright protection does not automatically extend to every component of a copyrighted work," and that "the overwhelming authority is that short phrases or common or ordinary words are not copryightable."  It was indisputable that the plaintiff's "Hustlin'" composition and lyrics was an original creative work subject to copyright protection -- but, the question was whether the use of a three-word phrase appearing int he musical composition, divorced from the accompanying music, modified, and subsequently printed on merchandise, constituted an infringement of the composition.  "The answer, quite simply, is that it does not."  Moreover, the defendants set forth various evidence that the terms "hustling" or "hustlin'" have been used in numerous songs prior to Plaintiff's creation of "Hustlin'" and that at least one song pre-dating "Hustlin'" has the exact lyric "everday I'm hustlin'" in it.  Lastly, the Court was unable to find any basis or precedent supporting the conclusion that a short, modified, set of words printed on merchandise can infringe on the copyright for a musical composition.  Plaintiff's rights do not extend that far, the Court concluded.

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.

September 28, 2015

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.

FCC Denies ASCAP's Challenge To Pandora's Acquisition Of FM Radio Station

In re Pandora Radio LLC, FCC 15-129 (FCC released Sep. 17, 2015).

The FCC denied ASCAP's motion for reconsideration of (1) the Media Bureau's decision granting the application to assign the license of KXMZ FM radio station in South Dakaota to Pandora; and (2) the Commission's declaratory ruling, which held that it would serve the public interest to permit a widely dispersed group of shareholders to hold aggreage foreign ownership in Pandora in excess of the 25% benchmark set out in Section 310(b)(5) of the Communications Act of 1934 (subject to certain conditions).  The FCC re-affirmed its finding that ASCAP lacked standing to challenge the license assignment.  ASCAP also claimed that the Bureau should have examined the rationale and motivation behind Pandora's transaction, specifically, Pandora's hope by acquiring the radio station to qualify for lower music license royalty rates.  The FCC found that "whatever the impact of its acquisition on such royalty rates may be, Pandora has undertaken to offer programming responsive to the interests of its local listeners, and ASCAP has failed to identify any substantial and matieral question about Pandora's ability to provide such service in the public interest."

Most "BOSTON" Trademark Claims Dismissed In Dispute Between Former Band Members

Scholz v. Goudreau, No. 13-cv-10951 (D. Mass. Memo & Order Sep. 21, 2015).

In a trademark dispute between two original members of the band BOSTON, the Court dismissed most of the claims against a guitarist on the band's first two albums concerning the promotion of his current musical endeavors.  Plaintiff's direct trademark infringement claims were dismissed with respect to various advertisements and performances, as well as defendant's use of meta-tags on his website.  The contributory infringement claim survived summary judgment only with respect to defendant's invovlement with one band on the issue of direct control and monitoring of that band's advertisements and promotions.  Plaintiff's claim for dilution by tarnishment failed because the alleged use, in connection with a political event, was not a use in commerce.  As to unfair competition under the Lanham Act and Mass. state common law, plaintiff failed to establish evidence of reputational injury.  As to breach of contract, plaintiff fialued to establish that defendant (and not third parties) violated a prior settlement agreement by deviating from the agreed to term "formerly of BOSTON".  As to the "Truth In Music Statute," under Mass. state law, the Court found the statute applicable only to performances in Mass., and as to the two subject performances in the state, neither group sought to perform under the BOSTON name.

September 24, 2015

Happy Birthday Lyrics Not Owned By Warner

Marya v Warner/Chappell, No. 13-cv-4460 (C.D. Cal. filed 9/22/14) [Doc. 244].

After collecting royalties for years, a Court found that Warner/Chappell lacked copyright ownership in the lyrics to the world's most famous song, "Happy Birthday."  The Court found that because the current publisher's alleged predecessor "never acquired the rights to the Happy Birthday lyrics, Defendants, as Summy Co.’s purported successors-in-interest, do not own a valid copyright in the Happy Birthday lyrics."

The melody of the song is the same as one called "Good Morning," which was published in a songbook and subject to copyright protection under the 1909 Act until 1949.  Both parties agree the melody entered the public domain years ago.  The origins of the "Happy Birthday" lyrics is less clear, as those lyrics did not appear in the same songbook as "Good Morning."  Subsequent publications of the lyrics noted that the tuen for "Happy Birthday" was the same as "Good Morning," but did not credit an author of the lyrics.  The decision then explains the alleged chain of title to the lyrics of "Happy Birthday."

Plaintiffs, bringing a declaratory judgment action, alleged that Defendants do not own the copyright in the lyrics to Happy Birthday, and thus should not have been collecting royalties for licensing the song (and should be compelled to return collected royalties).  The Court was facing cross-motions for summary judgment.

First, the Court found that a 1935 registration was not subject to a presumption of validity.  There was a facial and material defect in the registration, nameley that it did not state that the lyrics were being copyrighted.  Thus, there was no presumption that the lyrics were registered.

Next, the Court examined: who wrote the lyrics to Happy Birthday?  The Court found there was conflicting evidence, and therefore a material question of fact for trial.

Then, the Court examined whether, whoever wrote the lyrics, any copyright in the work was divested by publication before the 1935 registration?  Under the 1909 Act, general publication without notice of copyright divested the author of common law and federal copyright protection.  Again, the Court found a question of material fact whether the alleged authors granted their publisher the right to generally publish the song.

Next, the Court examined whether the alleged author abandoned her interest.  Although the plaintiffs had found an article where the alleged author said that she had resigned herserlf to the fact that the song was the publics, the Court found questions of fact on this issue again a ground to deny summary judgment.

Then, the Court examined the alleged transfers in interest of the song lyrics, and three old agreements between the alleged authors and their publisher.  The court found that Defendants had no evidence a transfer occurred, whether by oral statement, by writing, or by conduct. "Defendants ask us to find that the Hill sisters eventually gave Summy Co. the rights in the lyrics to exploit and protect, but this assertion has no support in the record. The Hill sisters gave Summy Co. the rights to the melody, and the rights to piano arrangements based on the melody, but never any rights to th e lyrics. Defendants’ speculation that the pleadings in the Hill-Summy lawsuit somehow show that the Second Agreement involved a transfer of rights in the lyrics is implau sible and unreasonable. Defendants’ suggestion that the Third Agreement effected such a transfer is circular and fares no better. As far as the record is concerned, even if the Hill sisters still held common law rights by the time of the Second or Third Agreement, they di d not give those rights to Summy Co."

September 16, 2015

Fair Use Must Be Considered Before Sending DMCA Takedown Notices; 9th Circuit

Lenz v. Universal Music, No. 13-16106 (9th Cir. filed 9/14/2015) [decision].

Copyright owners must consider whether allegedly infringing use is "fair use" before sending takedown notices under the DMCA, holds the 9th Circuit.  In the so-called "dancing baby case," Plaintiff alleged that Universal Music violated 17 USC 512(f) by misrepresenting in a takedown notice that a home video of her son dancing to a Prince song and posted on YouTube constituted an infringing use of a portion of a "Prince" composition.  The Court held that the DMCA requires copyright owners to consider fair use before sending a takedown notice, and that failure to do so raises an issue of fact whether the copyright owner formed a subjective good faith belief that the use was not authorized by law.  Available theories of good faith belief are actual knowledge, and willful blindness.  "Universal faces liability if it knowingly misrepresented in the takedown notification that it had formed a good faith belief the video was not authorized by the law, i.e. did not constitute fair use." A prevailing plaintiff in such a case is entitled to nominal damages.  Ultimately, the 9th Circuit affirmed the district court's denial of the cross-motions for summary judgment, such that the case would proceed to trial on the issue of whether Universal had actual knowledge, and the amount of damages.

September 9, 2015

Film Festival Temporarily Enjoined From Screening Aretha Franklin Documentary

Franklin v. Nat'l Film Preserve, No. 15-cv-1921 (D. Colo. filed 9/4/2015) [Doc. 14].

The Court issued a temporary restraining order enjoining the Telluride Film Festival from screening a documentary film about Aretha Franklin, which consisted primarily of previously unreleased footage from a 1972 concert.  The deed granting the film producer rights in the footage required Ms. Franklin's consent to use the footage, which defendant did not obtain.

The Court found that Ms. Franklin has a strong interest in her rights of publicity, and to the use of her name/likeness.  She also had a federal statutory right to prevent bootlegging.  17 USC 1101(1).  The Court found that the film, which essentially recreated the entire concert experience, was not a fair use, and that a TRO would preserve the status quo.

August 12, 2015

Article re: Musical Lyrics Copyright Infringement Cases

Nicholas Tsui, How Similar Is Too Similar: The Predictability of Court Decisions in Musical Lyrics Copyright Cases, 62 J. Copyright Soc'y 307 (2015).

The author finds that despite the various ways in which different courts have interpreted the "substantial similarity" test in copyright infringement cases involving lyrics, the similiarity judgments in courts throughout the country were actually quite consistenent.  The author states that he was able to accurately predict the court's outcome over 90% of the time using a simple similarity metric that counted overlapping words, phrases and lines.  "My results indicate that courts' decisions on substantial similarity follow a relatively simple pattern analysis that while fact-specific was not so nuanced as to be unpredictable."

August 6, 2015

Taylor Swift Must Be Deposed, Despite Her World Tour

Blue Sphere, Inc. v. Swift et al., No. 8:14-cv-00782-CJC-DFM (C.D. Cak. filed 08/04/15) [Doc. 65].

Despite her world tour, and claims that she has no knowledge about Plaintiff's claims, Taylor Swift must be deposed in a trademark action.  The Court denied her motion for a protective order, finding that that, notwithstanding the "apex doctrine" that protects high-level corporate executives from harassing depositions,  "the extraordinary circumstances that would warrant a pr otective order prohibiting the deposition of a named party are not present here."  Further, Swifts schedule -- including her world tour -- was not a basis for a protective order.  "There is no evidence in the record to show that Plai ntiffs have been inconsiderate of Swift’s schedule. To the contrary, the record shows just the opposi te. Nor does the evidence suggest that Plaintiffs have sandbagged Swift’s deposition to coincide with her world tour; instead, the record shows that, as in most cases, most deposi tions have been left until the end of the discovery period."

August 3, 2015

Ray Charles' Foundation Can Challenge Notices His Heirs Served To Terminate Copyright Grants To The Foundation

The Ray Charles Foundation v. Robinson, No. 13-55421 (9th Cir. Opinion dated July 31, 2015).

The 9th Circuit holds that that the Ray Charles Foundation, the sole beneficiary of Ray Charles’s estate, had standing to challenge the validity and effectiveness of notices of termination of copyright grants conferred by Charles to the predecessors of Warnter/Chappell Music.  The Court found that the Foundation was a real party in interest because the termination notices affected its right to royalties, and its claims fell within the statutory zone of interests.  Accordingly, it had standing to sue to challenge whether the underlying works were made for hire and thus not subject to the termination provisions of 17 USC 203 and 304(c).

July 28, 2015

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.

July 21, 2015

Jay-Z Awarded Attorney's Fees For Defeating Copyright Claim On Statute Of Limitations Grounds

Mahan v. Roc Nation LLC, Case 1:14-cv-05075-LGS (SDNY filed 07/17/1) [Doc. 81].

After defeating an alleged co-owner's copyright infirngement claims on statute of limitations grounds, the Court awarded Jay-Z and related parties attorney's fees of over $280,000.  The Court found that the Defendants were entitled to attorneys’ fees because Plaintiff’s claims under the Copyright Act were plainly time barred and therefore objectively unreasonable.  The amount of fees requested was reduced by 10%, however, because Plaintiff asserted five total claims, one of which was a state law claim which, unlike the Copyright Act, did not permit a grant of attorney's fees.

July 16, 2015

No New Trial In "Blurred Lines" Case; Damages Reduced; 50% Royalty Awarded

Williams v. Bridgeport Music, No. CV13-06004 (C.D. Cal. dated July 14, 2015).

In the "Blurred Lines" copyright infringement case, Robin Thicke's motion for a new trial was denied but the amount of damages he is laible for was reduced.  Additionally, the heirs of Marvin Gaye were awarded a declaratory judgment that any past and ongoing exploitation of "Blurred Lines" constitutes copyright infringement of "Got To Give It Up."  Rather than enjoin future exploitation or impound infringing articles, the Court awarded the Gaye parties a 50% royalty of songwriting/publishing revenues from "Blurred Lines."

July 9, 2015

Keith Urban PLAYER Trademark Case Dismissed

Beckett v. Urban et al., No. 15-cv-1407 (C.D. Cal. dated July 6, 2015).

A trademark infringment and dilution claim against country music star Keith Urban, concerning the mark PLAYER, was dismissed on the pleadings.  The Court found that plaintiff’s mark of “PLAYER” and Defendant s’ mark “Player by Keith Urban” are not sufficiently similar.  Defendants use of the phras e “by Keith Urban” clearly denotes that Keith Urban is the good’s source, dispelling any potenti al confusion with Plaintiff’s band “PLAYER.”  Further, the Court found that Plaintiff’s and Defendants’ goods and servicees are not closely re lated. Plaintiff’s trademark is for audio and video recordings featuring music and artistic performances by a rock band and for entertainment services in the nature of live audio performances by a rock band.  Defendants are marketing a guitar and guitar lesson kit complete with audio a nd video recordings that teaches a consumer to use and play guitar. As to the dilution claim, Plaintiff failed to allege that his mark is sufficiently famous.

July 8, 2015

Jackson 5 Tribute Band Trademark Cancelled

Wonderbread 5 v. Gilles, TTAB No. 92052150 (TTAB 6/30/2015).

This case involves a dispute about who owns the band’s name in the wake of the departure of one of the band’s five members.  The band, a Jackson 5 tribute band, filed a petition to cancel a trademark registration obtained by a former member who filed the application for the registration only 3 days after he was fired from the band.  The court found by a preponderance of the evidence that the mark WONDERBREAD 5 was not “personal” to the applicant/departing-band-member (Gilles), or for that matter, any of the band members as individual musicians.  Rather, the mark signified the collective “style and quality” of the group, and the partnership, not the departing band member, controlled those qualities. That is to say, the mark WONDERBREAD 5 identified a Jackson 5 tribute band, not a “particular performer combination.”  Thus, because the consuming public did not associate the mark with a particular member (but rather, a style of tribute band), the applicant did not "own" the mark when he applied for it.  The application was therefore void ab initio, and the registration was cancelled.

June 23, 2015

Florida Court Rejects Pre-72 Sound Recording Rights in Turtles/Sirius Case; Contrary To NY and CA Decisions

Flo & Eddie, Inc. v. SiriusXM, No. 13-23182-CIV-GAYLES/TURNOFF (S.D. Fla. dated June 22, 2015).

A Florida federal court granted defendant Sirius summary judgment as to liability on plaintiff Flo & Eddie's (the Turtle's) common-law copyright infringement claims, although New York and California courts have found differently.  The Florida federal court observed that Florida is different from New York and California, inasmuch as as there is no Florida legislation covering sound recordings nor is there a bevy of case law interpreting common law copyright related to the arts.  "The Court finds that the issue of whether copyright protection for pre- 1972 rec ordings should include the exclusive right to public performance is for the Florida legislature."  Accordingly, the Court found that Florida common law did not provie plaintiff with the exclusive right of public performance in the Turtles' sound recordings.  Further, the Court found that back-up and buffer copies made by Sirius were not unlawful reproductions.  Because the Court found that Sirius had not infringed any of Plaintiff's copyrights, the Court also dismissed plaintiff's related claims for unfair competition, conversion and civil theft (all of which were based on alleged copyright infiringement).

June 16, 2015

Third-Party Service Provider Subject To "Grooveshark" Injunction

Arista Records, LLC v. Tkach, No. 15-CV-3701 (AJN), 2015 BL 182234 (S.D.N.Y. June 03, 2015).

A third-party service provider is bound by and subject to the TRO and preliminary injunction in the Grooveshark case, finds Judge Nathan in the Southern District of New York.  The Court concluded that CloudFlare wasin active concert or participation with the Defendants based on the following facts: (1) CloudFlare admittedly owns and operates the authoritative domain name server for the new Grooveshark sites, which connects users entering the Grooveshark domain names into a web browser to the specific IP address associated with that site; (2) CloudFlare provides other services designed to improve the performance of the new Grooveshark sites; and (3) CloudFlare began providing its services to after it acknowledged receipt of the TRO.  Furthermore, for the purpose of determining whether CloudFlare is in active concert or participation with the Defendants, it is not determinative that CloudFlare's services are automated, that CloudFlare lacks a specific desire or motivation to help the Defendants violate the injunction, or that the Grooveshark sites would continue to exist even without CloudFlare's assistance. The Court thus hereby concludes and clarifies that CloudFlare was bound by the TRO and is now bound by the existing preliminary injunction.

Beastie Boys Awarded Attorneys Fees For Copyright Infringement, But Reduced Amount

Beastie Boys v. Monster Engergy, 1:12-cv-06065-PAE (SDNY filed 06/15/15) [Doc. 216].

After succeeding against Monster Energy Drinks at trial, the Court found that the Beastie Boys were entitled to attorney's fees for Monster's willful copyright infringement but not in connection with the Lanham Act violation, which the Court found was not "exceptional".  Additionally, the Court significantly reduced the attorney's fees recoverable to approximately $660,000, from the over $2 million requested.

June 4, 2015

Big Pimpin Suit Continues With Triable Issues Of Fact

Fahmy v. Jay-Z et al., No. 2:07-cv-05715 (C.D. Cal. May 27, 2015).

In the copyright infringement action concerning Jay-Z's song Big Pimpin', the Court denied plaintiff's motion for partial summary judgment seeking to dismiss defendant's "license" affirmative defense.  The Court concluded that there were triable issues of fact as to whether plaintiff conveyed any performance rights he owned in the infringed song.  The Court also concluded that there was a genuine dispute of material fact as to whether defendants received a license to publicly perform the song as part of Big Pimpin' through their asserted chain of title or as a result of BMI blanket licenses.

May 28, 2015

Class Certification Granted In Turtles' Pre-'72 Copyright Case Against Sirius

Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. 13-5693 (C.D. Cal. 5/27/2015).

In the copyright infringement action against Sirius satellite radio alleging copyright infringement of pre-1972 sound recordings, the the District Court granted plaintiff's motion for class certification.  Under Fed. R. Civ. P. 23, the plaintiff must establish certain requirements that are often referred t as numerosity, commonality,
typicality, adequacy, predominance, and superiority.

As a threshold matter, the Court found Defendants' argument unpersuasive that class certification was improper because there had already been a finding of liability at summary judgment as to the named plaintiffs. Sirius argued that class certification would violate "the one-way intervention rule", which is the intervention
of a plaintiff in a class action after an adjudication favoring the class has taken place.  Such intervention is termed ‘one way’ because the plaintiff would not otherwise be bound by an adjudication in favor of the defendant occurring at that point in the litigation.  The Court found that Sirius had waived the protection of this rule because Sirius XM requested early summary judgment briefing, failed to raise a firm pre-judgment objection to Plaintiff's motion, and actually decided to adopt Plaintiff's motion as its own early liability decision vehicle.

The Court then turned to the Rule 23 class certification requirements.  First, it found that class members -- owners of pre-72 sound recordings -- were ascertainable by turning to a number of sources who license such sound recordings, and Sirius has a list of all of the songs it had played.  Next, the Court found that the proposed class of hundreds, if not thousands, of owners in sound recordings satisfied the numerosity requirement.  Typicality was also satisfied because the members of the proposed class will each claim injury based on Sirius performing their pre-1972 recordings without authorization. Sirius XM’s unauthorized
performance of plaintiff's recordings, the wrongful conduct at issue in this litigation, is not unique to these plaintiffs; rather, it is consistent with Sirius XM’s general practice as to pre-1972 recordings.  Next, the Court found commonality and adequacy of the named plaintiff's representation of the class.  The Court then considered the remainder of the Rule 23 requirements, and found them satisfied.  In short, the Court concluded that a class action is superior to individual litigation to the fair and efficient adjudication of the controversy.

May 8, 2015

Second Circuit Affirms ASCAP Rate Court In Pandora Dispute Over Partial Withdrawals And License Rate

Pandora Media, Inc. v. ASCAP, 14-1158-cv(L) (2d Cir. May 6, 2015).

The Second Circuit Court of Appeals affirmed the ASCAP "rate court's" decision: (1) granting Pandora summary judgment that the ASCAP consent decree unambiguously precludes partial withdrawals of public performance licensing rights; and (2) setting the rate for the Pandora‐ASCAP license for the period of January 1, 2011 through December 31, 2015 at 1.85% of revenue.

ASCAP contended that publishers may withdraw from ASCAP its right to license their works to certain new media music users (including Pandora) while continuing to license the same works to ASCAP for licensing to other users.  The appellate court agreed with the district court’s determination that the plain language of the consent decree unambiguously precludes ASCAP from accepting such partial withdrawals. Also, the Court found that under the circumstances, it was not clearly erroneous for the district court to conclude, given the 6evidence before it, that a rate of 1.85% was reasonable for the years  in question.

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.

May 1, 2015

Newly Discovered Evidence Stays Liability Finding In Shakira Suit

Mayimba Music, Inc. v. Sony Corp. of Am., No. 12-cv-01094 (S.D.N.Y. filed 04/30/15) [Doc. 139].

Finding that newly discovered evidence concerning the authenticity and date of creation of an audio tape, which implicated a potential fraud on the court during the liability phase of trial, resulted in the Court staying a previous finding of liability pursuant to Rules 59 and 60.  The Court had previously found plaintiff had a valid copyright in the song at issue, that the plaintiff's testimony was credible that he had authored the song between 1996 and 1998, that it was an original song, that the song was recorded onto a cassette tape in 1998, and that a copy of the song on the tape was registered at the Copyright Office in November 2011.  After trial, the parties engaged in extensive discovery of damages in preparation  for the second phase of trial.  Four months after the liability opinion was issued, Defendants filed a motion contending that newly-discovered evidence demonstrated that the tape was fabricated in 2011, not created in 1998, and that plaintiff had lied under oath when he testified that the tape had been created in 1998.  Thus, the core issues before the Court were "when the tape was created, and whether witnesses lied on the stand with respect to its creation".  The Court found that "this is newly discovered evidence which could not have been found with reasonable diligence before trial. ... Furthermore, the evidence now put forth, if credited, clearly establishes that Plaintiff attempted to commit a fraud upon this court, going so far as to fabricate evidence and to commit perjury."  Accordingly, the Court suspended the finding of liability against Defendants "until further clarification can be found on these very serious issues."

April 27, 2015

Pre-Trial Evidentiary Rulings In Grooveshark Case

UMG Recordings, Inc. v. Escape Media Group, No.11-cv-8407 (SDNY filed 04/23/15) [Doc. 174].

In advance of a jury trial on statutory damages, the Court made a number of pre-trial evidentiary determinations on motions in limine.  Among its holdings as to what the parties could or could not introduce at trial, the Court held that defendants were precluded from offering argument or evidence contesting that their conduct was willful or in bad faith (the jury would be instructed that there was a cap of $150,000 per work, not $30,000), but defendants were permitted to present proof as to the degree and extent of their willfulness.  As to Defendants' argument that Plaintiffs could receive statutory damages for infringement of pre-1972 sound recordings (or that the Court had jurisdiction over such claims), the Court reserved decision.  The Court also made several rulings as to what evidence Defendants could introduce concerning their failure to mitigate damages defense (e..g, concerning settlement and future licensing negotiations, failure to make claims against other infringers, DMCA compliance

April 21, 2015

Ghostface Killa Case, Involving "Iron Man Theme" Sample, Dismissed

Urbont v. Sony Music Entertainment et al., No, 11-cv-94516 (S.D.N.Y. April 20, 2015) [Doc. 78].

The Court granted Sony Music summary judgment dismissing the claims of plaintiff, who alleged infringement of his rights to the musical composition and sound recording of the "Iron Man Theme" in a Ghostface Killa song.  Sony successfully challenged plaintiff's ownership of a copyright interest in the song by establishing that the composition was a "work for hire" and was therefore owned by Marvel Comics, for whom plaintiff created the composition.  Notably, the Court found that Sony -- a third-party to that transaction -- had standing to challenge plaintiff's ownership under the work for hire doctrine pursuant to the 1909 Act's "instance and expense" test.

The Court also dismissed Plaintiff's state law claims for common law copyright infringement, unfair competition, and misappropriation, finding that the claims were preempted by the Copyright Act.  Plaintiff argued that the recording fell within the exception to pre-emption as a sound recording fixed before February 15, 1972.  17 U.S.C. 301.  The Court disagreed, finding that the recording was an "audiovisual work" and not a "sound recording" because it was created purely to accompany the television show Iron Man and did not exist apart from the accompanying televisuals.  Under the 1976 Act, the claims were preempted because they involve an audiovisual work.

April 16, 2015

Appeals Court To Hear Sirius's Pre-72 Case

Sirius XM Radio, Inc. v. Flo & Eddie, Inc.; No. 15-497, (2d Cir. 04/15/2015) (Doc. 30).

In the pre-1972 sound recording case between Sirius XM and the Turtles, the Second Circuit Court of Appeals granted Sirius XM's petition, pursuant to 28 U.S.C. 1292(b), for leave to appeal the district court’s orders denying summary judgment and reconsideration.  Generally, federal appellate courts have limited jurisdiction over interlocutory decisions (e.g., injunctions).  However, the appellate court has discretion to permit an appeal from an interlocutory appeal when the district judge is explicitly of the opinion that the order involves a controlling question of law as to which there is substantial ground for difference of opinion and that an immediate appeal from the order may materially advance the ultimate termination of the litigation.  28 U.S.C. 1292(b).

April 9, 2015

Fraudulent DMCA Take-Down Notice May Be Basis For Claim If iTunes Stores Music At Direction Of A User

Distribuidora De Discos Karen, C por A. v. Seijas, No. 13 Civ. 5200 (NRB), 2015 BL 93133 (S.D.N.Y. Mar. 26, 2015).

Denying defendants' motion to dismiss, the Court held that: (1) a misrepresentation claim under the DMCA may be predicated on a technically defective take-down notice; (2) a misrepresentation claim under the DMCA must be predicated on a take-down notice that is not directed towards activity that the DMCA protects; and (3) it was premature to decide whether Apple stores music on iTunes "at the Direction of a User."  Accordingly, a notice sent by Defendants to iTunes stating that certain recordings had not been licensed for distribution can be the subject of a misrepresentation claim under the DMCA even if it did not meet all the statutory requirements for such a notice, but, such a claim could only apply if the notice was “directed at ‘storage at the direction of a user,' ” which might or might not have been true in the instant case.

Here, defendants and plaintiffs disputed who owned certain publishing and sound recording rights.  The artists' counsel sent Apple a take-down notice, saying that “no license has been issued” with respect to the recordings.  Apple then dropped the subject recordings from iTunes, and plaintiffs sued, alleging misrepresentation under the Digital Millennium Copyright Act of 1998, 17 U.S.C. § 512(f).  The DMCA creates a notice-and-takedown procedure for allegedly infringing copies of works posted online, and subsection (f) creates a cause of action for sending fraudulent takedown notices.  Defendants moved to dismiss for failure to state a claim.  The Court found that the communication to Apple “was not so deficient as to fall outside the reach of subsection 512(f).”  But, the remaining issue was whether iTunes falls within the section 512(c) safe-harbor, to wit: "whether Apple stores music on iTunes 'at the direction of a user,' 17 U.S.C. § 512(c) (1)".  The Court found that "the complaint simply does not state enough facts about iTunes for us to say what happens behind the scenes, so we cannot decide at the present stage whether iTunes stores music at the direction of users."  Accordingly, the motion to dismiss was denied.

April 6, 2015

Partial Attorney's Fees Awarded In MP3Tunes

Capitol Records, Inc. v. MP3Tunes, No. 1:07-cv-09931-WHP-FM (SDNY filed 04/03/15) [Doc. 689]

Record company and music publisher plaintiffs, who succeeded at trial, moved for an award of partial attorneys' fees and costs under the Copyright Act, and pre-judgment and post-judgment interest under Fed. R. Civ. P. 59 against defendant MP3tunes.  The Court granted the motion for partial attorneys' fees, in part, denied the motion for pre-judgment interest, and granted the motion for post-judgment interest.

March 6, 2015

Breach Of Contract Claim Survives In "Daydream Believer" Royalty Suit Concerning Foreign Publishing

Stewart v. Screen Gems-EMI Music, Inc., No. 3:14-cv-04805 (N.D. Cal. filed Mar. 2, 2015) [Doc. 45].

Plaintiff alleges that defendants -- various EMI defendants -- wrongfully withheld publishing royalties to the song "Daydream Believer" written by Plaintiff's late-husband.  The claims arise out of a 1967 songwriter's agreement, which has a "net receipts" (not "at source") arrangement, meaning that the publisher is only obligated to remit to the songwriter a certain percentage of revenue the publisher actually receives after deducting applicable fees and costs.  Plaintiff contended that Defendants were improperly deducting from the song's foreign receipts fees that defendant paid to affiliated foreign sub-publishers that are alter egos of defendant and operate as part of a single enterprise (i.e., defendant was effectively paying itself and then deducting those payments from the receipts to reduce the "net receipts").  Defendants moved to dismissed.  The Court granted the motion to dismiss of defendants EMI and EMI North America for lack of personal jurisdiction; but, found that Plaintiff had stated a claim against defendant Screen Gems-EMI for breach of contract, breach of the implied covenant of good faith and fair dealing, and for an accounting.

February 26, 2015

State-Law Copyright And Unfair Competition Claims Relating To In-Flight Music Services Not Preempted

UMG Recordings v. Global Eagle Entertainment, No. 14-03466 MMM (C.D. Cal. dated Feb. 23, 2015).

The Court denied defendant airline's motion to dismiss claims for copyright infringement under California law, along with California unfair competition claims, finding that even if in-flight entertainment qualifies as a service as that term is used in the Airline Deregulation Act, any connection between the service and plaintiffs' claims was too tenuous and remote to justify preemption.

Plaintiffs were various record companies and music publishers.  They contended that defendants provided “various airlines” sound recordings and music videos that the airlines then publicly perform to their passengers.  Defendants contended that the court should dismiss the record company plaintiffs’ state law copyright infringement and unfair competition claims because the claims were preempted by the Deregulation Act.  Congress enacted the Deregulation Act in 1978 after determining that maximum reliance on competitive market forces would best further efficiency, innovation, and low prices as well as variety and quality of air transportation services."

February 25, 2015

Bob Marley Heirs Succeed On Appeal In Merchandising Case

Fifty-Six Hope Road Music v. A.V.E.L.A., No 12-17502 (9th Cir. Feb. 20, 2015).

The 9th Circuit Court of Appeals affirmed judgment in favor of Bob Marley's heirs based on defendants' use of Bob Marley's image on t-shirts and other merchandise in a manner likely to cause confusion as to Plaintiffs' sponsorship of approval of the merchandise.  Additionally, the Court found that Defendants have waived several defenses by failing to properly raise them in the district court.  The appellate court also found that the lower court had not abused its discretion in determining defendant's profits and there was a sufficient evidence to find that defendants willfully infringed plaintiff's rights.  Nor did the lower court err in awarding plaintiffs their attorney's fees, as plaintiffs were the prevailing parties, and defendants' conduct was willful.  Plaintiffs also succeeded on their tortious interference claims because Plaintiffs' licensing agent testified that one of Plaintiffs' licensees lost an order intended for Wal-Mart because defendant sold t-shirts there. Defendants did succeed, however, in dismissing the right of publicity claim because under Nevada law a publicity right successor waives its publicity rights when it fails to timely register its rights.

February 23, 2015

Limited Permanent Injunction Entered In Beastie Boys v. Monster Case

Beastie Boys v. Monster Energy, No. 12-cv-06065 (S.D.N.Y. filed 02/20/15) [Doc. 201].

After prevailing at trial, the Court granted the Beastie Boys' motion for a permanent injunction, but agreed with Monster that the injunction "must be tightly limited to cover only the infringing video."  The Beastie Boys had sought to broadly enjoin Monster from using the Beastie Boys' music, voices, names, and trademarks for any advertising or trade-related purpose, whereas Monster argued that, if the Court decided to issue a permanent injunction at all, that relief should be limited to the video at issue in the case.  The Court applied the traditional four-factor test in exercising its equitable discretion to grant such relief, and found that "In the Court's view, the injunction the Beastie Boys propose is highly overbroad. It would sweep well beyond the single video at issue in this lawsuit to expansively ban a host of hypothetical future acts that the Beastie Boys cast as infringement."

NYTimes Article re Pandora

Ben Sisario, Pandora Making Bid to Unruffle Music World (Feb. 23, 2015 New York Times, B1)

This article discusses how Pandora is trying to work with labels and artist managers by opening its performance data, and also by experimenting with artist promotions.

February 11, 2015

Everyday I'm Hustlin' Lawsuit Against LMFAO Survives

Roberts v. Gordy, No. 13-24700 (S.D. Fla. dated Feb. 5, 2015).

Performer Rick Ross brought this action against the group LMFAO over use of "Everyday I'm Hustlin'" / "Everyday I'm Shufflin'"  in defendant's song Party Rock Anthem.  LMFAO moved to dismiss on the pleadings plaintiff's copyright and trademark infringement claims.  The Court denied the motion, finding at this stage of the proceedings, plaintiff's allegations were sufficient.  Whether the phrase was copyrightable, or the works were substantially similar, were not appropriate for a motion on the pleadings as those issues would require a fact intensive inquiry.  Similarly, a factual inquiry was required on the trademark claim as to whether the phrase had acquired distinctiveness/secondary meaning.