KC/Sunshine Case Dismissed For Lack Of Standing

Smith v Casey, No. 1:12-cv-23795 (S.D. Fla. 3/21/2013) [Doc. 71].



Plaintiff was the administer of an estate of a recording artist, songwriter, producer, and musician who died in 2012. The decedent was the sole author of the musical composition entitled Spank.  Plaintiff alleged that, “[d]espite receipt of Decedent Smith’s Cease and Desist notice Defendants KC, Harrick Music, Sunshine Sound, Horne and Joy Productions have continued to commercially exploit the Composition ‘Spank.’  Count I of Plaintiff’s Complaint was for copyright infringement of the Spank composition only, and only for the period from November 28, 2011, when the Cease & Desist Letter was written, through the present.


Defendants moved to dismiss the copyright claims against them on either of two separate grounds: (1) Plaintiff lacks standing to sue for copyright infringement, given that he never registered his copyright interest; and (2) the Complaint contains insufficient allegations of infringement activity.  The Court agreed that the copyright infringement count should be dismissed for all Defendants because Plaintiff lacked standing to sue, and additionally as to the moving Defendants because of insufficient pleadings.

Standing to sue for infringement must necessarily be grounded in ownership of a copyright
interest. That ownership is determined in part by compliance with the formalities of the
Copyright Act. The Act provides that “[t]he legal or beneficial owner of an exclusive right under
a copyright is entitled, subject to the requirements of section 411, to institute an action for any
infringement of that particular right committed while he or she is the owner of it.” 17 U.S.C.
§ 501(b). Section 411, in turn, states that “no civil action for infringement of the copyright in
any United States work shall be instituted until preregistration or registration of the copyright
claim has been made in accordance with this title.” Id. § 411(a). Any registration for the
copyright sued upon must be commenced no later than the date that the suit was brought.  If Plaintiff produces a certificate of copyright, the burden shifts to Defendants to demonstrate why the claim of copyright is invalid. 

Here, Plaintiff has failed to produce a certificate of copyright with respect to the Spank
composition, and fails even to allege that it had registered for one by the time this Complaint was filed. Plaintiff does attach a Certificate of Copyright Registration, dated March 1, 1979, for
Spank to the Complaint, but the Certificate names Harrick Music as the Copyright Claimant.
Smith is listed only as the author, and the Registration notes that “Harrick Music, Inc. received transfer by written notice from Ronald Luis Smith.”  Even if the registration were the fruit of inaccurate information submitted by the registrant, Harrick Music, it is still a prerequisite to the filing of a copyright infringement claim – a prerequisite that neither Plaintiff nor Smith has satisfied. As such, the Court finds that Plaintiff lacks standing to bring Count I against any and all of the defendants, including Horne and Joy Productions.  [Internal citations omitted].

"First Sale" Applies To Copies Made Abroad; Sup. Ct.

Kirtsaeng v. John Wiley & Sons, No. 11-697 (U.S. Mar. 19, 2013) (decision here).

The U.S. Supreme Court holds that the “first sale” doctrine applies to copies of a copyrighted work lawfully made abroad.

From the Court's syllabus:

The “exclusive rights” that a copyright owner has “to distribute copies . . . of [a] copyrighted work,” 17 U. S. C. §106(3), are qualified by the application of several limitations set out in §§107 through 122, in- cluding the “first sale” doctrine, which provides that “the owner of a particular copy or phonorecord lawfully made under this title . . . is entitled, without the authority of the copyright owner, to sell or oth- erwise dispose of the possession of that copy or phonorecord,” §109(a). Importing a copy made abroad without the copyright owner’s permission is an infringement of §106(3). See §602(a)(1). In Quality King Distributors, Inc. v. L’anza Research Int’l, Inc., 523 U. S. 135, 145, this Court held that §602(a)(1)’s reference to §106(3) incorporates the §§107 through 122 limitations, including §109’s “first sale” doctrine. However, the copy in Quality King was initially manufactured in the United States and then sent abroad and sold.

Respondent, John Wiley & Sons, Inc., an academic textbook publisher, often assigns to its wholly owned foreign subsidiary (Wiley Asia) rights to publish, print, and sell foreign editions of Wiley’s Eng- lish language textbooks abroad. Wiley Asia’s books state that they are not to be taken (without permission) into the United States. When petitioner Kirtsaeng moved from Thailand to the United States to study mathematics, he asked friends and family to buy foreign edition English-language textbooks in Thai book shops, where they sold at low prices, and to mail them to him in the United States. He then sold the books, reimbursed his family and friends, and kept the profit.

Wiley filed suit, claiming that Kirtsaeng’s unauthorized importation and resale of its books was an infringement of Wiley’s §106(3) exclusive right to distribute and §602’s import prohibition. Kirtsaeng replied that because his books were “lawfully made” and acquired legitimately, §109(a)’s “first sale” doctrine permitted importation and resale without Wiley’s further permission. The District Court held that Kirtsaeng could not assert this defense because the doctrine does not apply to goods manufactured abroad. The jury then found that Kirtsaeng had willfully infringed Wiley’s American copyrights and assessed damages. The Second Circuit affirmed, concluding that §109(a)’s “lawfully made under this title” language indicated that the “first sale” doctrine does not apply to copies of American copyrighted works manufactured abroad.

Held: The “first sale” doctrine applies to copies of a copyrighted work lawfully made abroad.

Spanish Radio Stations Hit With Copyright Suit By Puerto Rican Publisher And Performance Right Society

Latin American Music Co., Inc. v. Spanish Broadcasting System, Inc.. No. 13-cv-1526 (S.D.N.Y. filed March 7, 2013).

Plaintiffs are a Puerto Rican publisher and a performing rights society (ACEMLA) alleging that the owners of several Spanish-language terrestrial radio stations (with websites that simultaneously stream the stations' content over the internet) are playing Plaintiffs' songs over the radio/web without a license.  An injunction is sought.

ISPs in UK Ordered To Block Access to BitTorrent Sites

EMI Records Ltd. v. British Sky Broadcasting Ltd., 2013 ILRC 1337 (High Ct. of Justice Chancery Div. 2013) [link].

The UK's main retail ISPs were ordered to take measures to block or impede their customers' access to three peer-to-peer file-sharing websites (KAT, H33T and Fenopy) due to infringement.  Plaintiffs were record companies.  The Court concluded: (i) that UK users of the websites who have accounts with the Defendants have infringed, and are continuing to infringe, the plaintiffs copyrights by copying the Claimants' sound recordings on a large scale; (ii) that users of the Websites infringe the plaintiffs' copyrights both by copying and by communication to the public; and (iii) the operators of the Websites infringe the plaintiffs' copyright.  The plaintiffs' application was granted.

Sound Recordings; Music Publishing CLE

Video Games, Apps, and The Copyright Act Article

Self-promotion: I wrote an article about video games, apps, and the Copyright Act that was published by the ABA.  See,  Jordan Greenberger, "Young Lawyer's Corner: Video Games, Apps, and the Copyright Act" (American Bar Association Section of Litigation, Business Torts, February 19, 2013) (link).

7th Cir. Affirms Dismissal of 50/50 Case for Failure To Allege Confusion

Eastland Music Group v. Lionsgate Entertainment, No. 12-2928 (7th Cir. 2/21/2013) [Doc. 22].

Plaintiff was the proprietor of the rap duo Phifty-50, and registered “PHIFTY-50” as a trademark.  Plaintiff also claimed a trademark in “50/50” and contends that defendants infringed its rights by using “50/50” as the title of a motion picture that opened in 2011.  The district court dismissed the case under Rule 12(b)(6).  The 7th Circuit affirmed dismissal.


"This complaint fails at the threshold: it does not allege that the use of “50/50” as a title has caused any
confusion about the film’s source—and any such allegation would be too implausible to support costly litigation."  Additionally, "If there is any prospect of intellectual property in the phrase 50/50, Eastland Music is a very junior user and in no position to complain about the 2011 film. Phifty-50 entered a crowded field, and its rights are correspondingly weak and narrow."  "Only a confusion about origin supports a trademark
claim, and “origin” for this purpose means the “producer of the tangible product sold in the marketplace.” 539 U.S. at 31. Eastland Music’s complaint does not (and could not plausibly) allege that consumers treat it as the producer or source of the film 50/50, or treat Lionsgate as the producer of the 2003 rap album."