Statute Of Limitations Limits Damages Claim Against Jay-Z; Concert Profits Questionable Damages

Fahmy v. Jay-Z, et al., 07-cv-5715-CAS (C.D. Cal. decided. Dec. 9, 2011) [Doc. 309].

Plaintiff brought this copyright infringement action concerning the song Big Pimpin'. The Court concluded that plaintiff may recover damages from any infringement only within three years prior to the filing of his lawsuit unless he can provide other bases for equitably tolling the statute. The Court, however, was unpersuaded by any of the three bases offered by plaintiff for why the statutory period should be equitably tolled. The mere fact that plaintiff lived in Egypt and speaks little to no English did not toll the statutory period. Alleged misrepresentations by the record label did not toll the statute. Lastly, the existence of a prior judicial action did not toll the statute. "Ultimately, plaintiff cannot avoid the fact that he admittedly knew that Big Pimpin’ allegedly infringed Khosara, Khosara by December 2000, more than six years prior to filing the present lawsuit."

The Court next turned to the question of whether Jay-Z’s concert revenues are properly considered direct or indirect profits resulting from his allegedly infringing performances of Big Pimpin’. Because the Court determined that this question presented a triable issue, the Court reserved judgment as to whether plaintiff is able to prove the requisite causal nexus.

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

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

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

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

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

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

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

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

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

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

Example Of "Public Performance" Complaint Against Radio Station

MPCA King Of Spades, et al. v. T.E.C. 2 Broadcasting, Inc. et al., Index No. 1:11-cv-0080-JPJ-PMS (W.D. Va. filed Oct. 24, 2011).

Plaintiffs are affiliates of SESAC, a performing rights society, and seek injunctive relief and damages for defendants' allegedly unauthorized public performances of plaintiffs' copyrighted musical compositions on defendants' owned and operated commercial radio station.

Black Eyed Peas "Boom" Not "Substantially Similar"

Batts, et al. v. Adams, et al., No. 10-cv-8123 (C.D. Cal. filed Oct. 21, 2011) [Doc. 251].

Plaintiffs allege that the Black Eyed Peas' Grammy-nominated song "Boom Boom Pow" infringed Plaintiffs' copyright in the song "Boom Dynamite." On defendants' motion for summary judgment, the court employed the "extrinsic test" to determine substantial similarity of the two songs. The Court held that the allegedly protectable elements in Plaintiffs' song (the hooks, and use of the phrase "I got that" followed by the repeated used of the word "boom") were not substantially similar to the elements of the Black Eyed Peas song. Also, the Court held that the non-protectable elements of Plaintiffs' song were not entitled to copyright protection. Accordingly, the Court concluded that as a matter of law the defendants were entitled to summary judgment.

Duke Ellington's Foreign Royalties Claim Dismissed Under Plain Language Of 1961 Contract

Ellington v. EMI Music Inc., 651558/2010, NYLJ 1202519466664 (printed Oct. 21, 2011), at *1 (Sup. Ct., N.Y. Co. decided Oct. 2011).

This is action for breach of a songwriter royalty agreement, fraud, and a declaratory judgment. Defendant EMI moved to dismiss the complaint.

Plaintiff Paul M. Ellington, the heir and grandson of the legendary jazz composer and performer Edward Kennedy "Duke" Ellington, sought to recover foreign music publication royalties allegedly owed to him by defendants pursuant to contract dated December 17, 1961 (the 1961 contract). Ellington also sought to commence a class action against defendants on behalf of a putative class consisting of all persons to whom defendants have failed to pay their full contractual share of foreign publication royalties.

Pursuant to the 1961 contract, the First Parties transferred to the Second Party the copyrights to numerous identified musical compositions written by Duke Ellington between 1927 and the contract date, in exchange for, inter alia, payments of cash and royalties, calculated as a percentage of various sources of income, including income generated from sales outside the United States. The 1961 contract superceded a series of similar agreements between Duke Ellington and Mills Music or certain of its affiliates.

There was no real dispute that the 1961 contract is a "net receipts" songwriter royalty agreement. A "net receipts" agreement, common in the music industry prior to the early 1980s, provides for the payment of royalties to the songwriter on a net receipts basis, or, payment based on the net income received by the United States publisher from foreign subpublishers, who retain a percentage of the foreign income as a fee in payment for their services in exploiting and administering publication of the songs outside the United States.

The Court held that the 1961 Contract was clear and unambiguous. ""The royalty payment provision terms demonstrate that the 1961 contract is a net receipts royalty agreement that requires Mills Music, now EMI Mills, to pay Duke Ellington, now Ellington, one half of the 'net revenue actually received by the Second Party' from the 'foreign publication' of the songs falling within the scope of the contract." The Court rejected plaintiff's argument that the 1961 contract was a "at source" agreement, i.e., an agreement for payment of royalties earned worldwide calculated on the amount of income earned in the foreign territories at their source, rather than on the portion of that income received by the United States publisher. In sum, the 1961 contract permited defendants to employ the very method of royalty calculation of which Ellington now complains. Motion to dismiss granted.

Label Fails To State Copyright Claim; Leave To Amend Granted

Tufamerica, Inc. v. The Orchard Enterprises, Inc., No. 1:11-cv-01816 (S.D.N.Y. filed Oct. 18, 2011) [Doc. 16].

Plaintiff is the owner of the record label Tuff City Music Group and owns the rights to thousands of musical recordings and compositions. In September 2006, TufAmerica licensed defendant's predecssor the right to market a large number of musical tracks by way of digital downloads (the “License”). The License obligated defendant's predecessor to pay TufAmerica various types of payments in exchange for digital distribution rights to hundreds of songs. In late 2007, defendant assumed its predecessor's obligations under the License. While TufAmerica received various payments from Digital and Orchard, it never received any payment of mechanical royalties.

Defendant argued that the License preempted plaintiff's copyright case. The Court agreed:

TufAmerica fails to state a facially plausible claim under the Copyright Act because it concedes that its copyright claim is governed by the License, not the Copyright Act. While TufAmerica subsequently argues that the License does not govern mechanical royalties, a “claim for relief ‘may not be amended by the briefs in opposition to a motion to dismiss.’” As a result, Orchard’s motion to dismiss is granted.

Because TufAmerica’s claim under the Copyright Act was dismissed, the court lacked pendent jurisdiction over the New York State common law claim of unjust enrichment.

However, because the License did not unambiguously preempt a claim under the Copyright Act's compulsory license provision, leave to amend the Complaint was granted.

Florida Long Arm Statute Examined In Copyright Case

Wishfire Enterprises, LLC v. Dancing Ferret Discs, Inc. Index No. 4:11-cv-00092-RH-WCS (N.D. Fla. filed 10/12/11) [Doc. 30].

This is a copyright-infringement and breach-of-contract case. The plaintiff The Cruxshadows is a band that records music and has had three number-one hits. The plaintiff Virgil R. Du Pont, III, is the band‟s lead member. T he other plaintiffs are a limited liability company and corporation that market the band's music under a license from the band or its lead member. All are based in Florida. The defendants moved to dismiss for failure to state a claim on which relief can be granted and lack of personal jurisdiction. The Court denied the motion.

The defendant Dancing Ferret Discs, Inc., has a record label and distributes music throughout the United States, including in Florida. Dancing Ferret' s principal place of business is in Pennsylvania. Citing Fla. Stat. § 48.193 (2010) and Cable/Home Communications Corp. v. Network Productions, Inc., 902 F.2d 829, 856-57 (11th Cir. 1990), the Court held that Florida's long-arm statute establishes jurisdiction when a nonresident transmits material into Florida that infringes a Florida resident‟s copyright. "[C]opyright infringement in Florida, though initiated from elsewhere, subjects the infringer to jurisdiction in Florida..."