Flo & Eddie, Inc. v. Sirius XM, Inc., No. 1:13-cv-05784 (S.D.N.Y. filed Nov. 14, 2014) [Doc. 88].
Joining a California federal court in a parallel case, a New York federal court found that Flo & Eddie (the Turtles) have state common law claims against Sirius XM concerning the public performance of pre-1972 sound recordings. "In short, general principles of common law copyright dictate that public performance rights in pre-1972 sound recordings do exist. New York has always protected public performance rights in works other than sound recordings that enjoy the protection of common law copyright. Sirius suggests no reason why New York -- a state traditionally protective of performers and performance rights -- would treat sound recordings differently."
First, the court found that plaintiff holds valid common law copyrights in the Turtles' sound recordings. "The Turtles originally acquired a common law copyright in their sound recordings by expending time, effort, money and skill to create them. That copyright was then transferred...eventually to Flo and Eddie, which now owns the sound recordings."
Second, the Court found that Flo and Eddie's common law copyright provides exclusive rights to reproduce and publicly perform Turtles recordings. As to the absence of prior litigation on the matter, "acquiescence by participants in the recording industry in a status quo where recording artists and producers were not paid royalties while songwriters were does not show that they lacked an enforceable right under the common law -- only that they failed to act on it." The court did not read too much into the fact that New York courts have never squarely addressed this particular feature of state copyright law in the context of sound recordings.
Third, the Court found that Sirius infringed plaintiff's common law copyright and engaged in unfair competition (misappropriation). In reproducing Turtles recordings, Sirius acted without authorization. Further, to the extent that distribution is an element of common law copyright, the Court found that publicly performing sound recordings is an act of distribution.
Moreover, even though the Court found that there is a common law fair use defense parallel to the federal fair use defense, Sirius XMs creation of multiple complete copies of the sound recordings could not be considered a fair use. "It is a matter of economic commons sense that Sirius harms Flo and Eddie's sales and potential licensing fees (even if the latter market is not yet extant) by publicly performing Turtles sound recordings."
Lastly, the Court rejected Sirius XM's argument that plaintiff's claims are barred by the constitutional Dormant Commerce Clause, which provides that states may not interfere with interstate commerce. U.S. Const. art. I, sec. 8. The court found that the argument is a "red herring" because New York does not "regulate" anything by recognizing common law copyright. Sirius objects to a "general principle respecting the liability of all persons within the jurisdiction of" New York, which under the 1876 (yes, 1876) Supreme Court decision Sherlock v. Alling, 93 U.S. 99, is not a state-imposed regulation that might affect interstate commerce.
November 30, 2014
No Interlocutory Appeal Of Pre-72 Sound Recording Liability Holding In Turtles v Sirius Case
Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. 13-cv-5693 (C.D. Cal. Nov. 20, 2014).
The District Court denied Sirius XM's motion to certify for interlocutory appeal the Court's earlier order granting partial summary judgment. The earlier order granted plaintiff summary judgment to the extent that its claims were premised on Sirius XM's public performance of plaintiff's pre-1972 sound recordings, ruling that owners of sound recordings have the exclusive right to publicly perform their recordings under California Civil Code 980(a)(2). 28 USC 1292(b) provides a means for litigants to bring an immediate appeal of a non-final order with the consent of both the federal district court and the federal court of appeals. The district court denied the motion because, "[a]t this stage in the litigation and under the operative scheduling order governing the case, certification of the Order for immediate appeal would delay rather than materially advance the termination of the litigation". Continuing, the district court observed that the case is moving swiftly toward trial and a final resolution that will be appealable to the Ninth Circuit in the customary manner. While interpretation of Cal. Civ. Code 980(a)(2) is an issue of controlling law, an immediate appeal would not speed up the resolution of the case.
The District Court denied Sirius XM's motion to certify for interlocutory appeal the Court's earlier order granting partial summary judgment. The earlier order granted plaintiff summary judgment to the extent that its claims were premised on Sirius XM's public performance of plaintiff's pre-1972 sound recordings, ruling that owners of sound recordings have the exclusive right to publicly perform their recordings under California Civil Code 980(a)(2). 28 USC 1292(b) provides a means for litigants to bring an immediate appeal of a non-final order with the consent of both the federal district court and the federal court of appeals. The district court denied the motion because, "[a]t this stage in the litigation and under the operative scheduling order governing the case, certification of the Order for immediate appeal would delay rather than materially advance the termination of the litigation". Continuing, the district court observed that the case is moving swiftly toward trial and a final resolution that will be appealable to the Ninth Circuit in the customary manner. While interpretation of Cal. Civ. Code 980(a)(2) is an issue of controlling law, an immediate appeal would not speed up the resolution of the case.
11th Cir. Finds Summary Judgment Properly Granted In Favor of BMI And Against Tavern; Adopts 2nd Cir. Davis v. Blige
BMI v. Evie's Tavern Ellenton, Inc., No. 13-15871, 2014 BL 329074 (11th Cir. Nov. 21, 2014).
The 11th Circuit affirmed summary judgment in favor of the performing rights society BMI, rejecting the defendant-tavern's argument that there were questions of material fact as to the copyright ownership of the musical compositions at issue and as to whether defendants were innocent infringers. With respect to the chain-of-title for the five songs at issue, the court examined each chain of title, and further found that the district court properly found that BMI could be awarded judgment on each song in addition to the copyright holder (generally, the music publisher who owned the copyright). As BMI agreed to be responsible for all costs and expenses pursuing infringement actions based on the titles that BMI licenses from copyright owners, the number of them to whom summary judgment is granted made no difference in the award of damages, attorneys' fees and costs. Thus, there was no error in granting summary judgment to the other plaintiffs (the copyright owners) under Fed. R. Civ. P. 61.
As to innocent infringement, the Court affirmed that is not a defense to summary judgment liability, and instead is only a consideration as to the amount of statutory damages to award. The court also found that an award of attorney's fees was appropriate. Notably, the 11th Circuit joined the rule adopted by the Second Circuit in Davis v. Blige, 505 F.3d 90, 99 (2d Cir. 2007) that a copyright co-owner may maintain and recover in a copyright infringement action without joining other co-owners. See fn. 2.
The 11th Circuit affirmed summary judgment in favor of the performing rights society BMI, rejecting the defendant-tavern's argument that there were questions of material fact as to the copyright ownership of the musical compositions at issue and as to whether defendants were innocent infringers. With respect to the chain-of-title for the five songs at issue, the court examined each chain of title, and further found that the district court properly found that BMI could be awarded judgment on each song in addition to the copyright holder (generally, the music publisher who owned the copyright). As BMI agreed to be responsible for all costs and expenses pursuing infringement actions based on the titles that BMI licenses from copyright owners, the number of them to whom summary judgment is granted made no difference in the award of damages, attorneys' fees and costs. Thus, there was no error in granting summary judgment to the other plaintiffs (the copyright owners) under Fed. R. Civ. P. 61.
As to innocent infringement, the Court affirmed that is not a defense to summary judgment liability, and instead is only a consideration as to the amount of statutory damages to award. The court also found that an award of attorney's fees was appropriate. Notably, the 11th Circuit joined the rule adopted by the Second Circuit in Davis v. Blige, 505 F.3d 90, 99 (2d Cir. 2007) that a copyright co-owner may maintain and recover in a copyright infringement action without joining other co-owners. See fn. 2.
November 6, 2014
Hard Rock's CAVERN CLUB Trademark Not Subject To Cancellation
Cavern City Tours Ltd. v. Hard Rock Cafe Int'l (USA), Inc., No. 6:12-cv-1410 (M.D. Fla. Oct. 31, 2014).
The Court held that the TTAB properly dismissed the the petition of plaintiff, who owns the mark THE CAVERN CLUB in the UK and other jurisdictions, to cancel Hard Rock Cafe's CAVERN CLUB mark in the USA. "The Cavern Club" was a venue where the Beatles performed hundreds of times early in their career.
First, the Court found that Hard Rock did not knowingly make false statements in their application for the CAVERN CLUB mark concerning the use of the mark by other people (like plaintiff), and rejected plaintiff's argument to adopt a "willful blindness" standard. The Court found that plaintiff failed to submit sufficient evidence to prove that Hard Rock was aware of Plaintiff's mark; further, even if Hard Rock did have knowledge of plaintiff's use of the mark, the Court found that Hard Rock had reasonable basis to believe that plaintiff did not have a superior right to use the mark in commerce.
Second, the Court found that Hard Rock's mark did not falsely suggest a connection with plaintiff in violation of section 2(a) of the Lanham Act. "The mere fact that Plaintiff's name has a word in common with the CAVERN CLUB does not establish that Plaintiff's identity or persona is the CAVERN CLUB." Similarly, plaintiff's lease and operation of a "new" Cavern Club venue did not establish that Plaintiff's persona or identity is the CAVERN CLUB. Moreover, Plaintiff did not establish that the CAVERN CLUB mark points uniquely and unmistakably to Plaintiff. To the contrary, the evidence links the CAVERN CLUB with the original venue, which was demolished in 1973; thus, it did not point uniquely to Plaintiff. Accordingly, Hard Rock was granted summary judgment dismissing the case.
The Court held that the TTAB properly dismissed the the petition of plaintiff, who owns the mark THE CAVERN CLUB in the UK and other jurisdictions, to cancel Hard Rock Cafe's CAVERN CLUB mark in the USA. "The Cavern Club" was a venue where the Beatles performed hundreds of times early in their career.
First, the Court found that Hard Rock did not knowingly make false statements in their application for the CAVERN CLUB mark concerning the use of the mark by other people (like plaintiff), and rejected plaintiff's argument to adopt a "willful blindness" standard. The Court found that plaintiff failed to submit sufficient evidence to prove that Hard Rock was aware of Plaintiff's mark; further, even if Hard Rock did have knowledge of plaintiff's use of the mark, the Court found that Hard Rock had reasonable basis to believe that plaintiff did not have a superior right to use the mark in commerce.
Second, the Court found that Hard Rock's mark did not falsely suggest a connection with plaintiff in violation of section 2(a) of the Lanham Act. "The mere fact that Plaintiff's name has a word in common with the CAVERN CLUB does not establish that Plaintiff's identity or persona is the CAVERN CLUB." Similarly, plaintiff's lease and operation of a "new" Cavern Club venue did not establish that Plaintiff's persona or identity is the CAVERN CLUB. Moreover, Plaintiff did not establish that the CAVERN CLUB mark points uniquely and unmistakably to Plaintiff. To the contrary, the evidence links the CAVERN CLUB with the original venue, which was demolished in 1973; thus, it did not point uniquely to Plaintiff. Accordingly, Hard Rock was granted summary judgment dismissing the case.
November 4, 2014
Super Bowl Shuffle Case Belongs In Federal Court; Remand Denied
Den v. Renaissance Marketing Corp., No. 14-cv-2999, 2014 BL 303007 (N.D. Ill. Oct. 28, 2014).
In case concerning defendants' alleged use of the "Super Bowl Shuffle" without plaintiff' authorization, a federal court in Illinois held that the case should remain in federal court as preempted by the federal Copyright Act. Accordingly, plaintiffs' motion to remand to state court was denied.
The Super Bowl Shuffle is a song and music video trumpeting the success of the 1985 Chicago Bears. Plaintiffs initially brought a case in Illinois state court alleging that defendants were not assignees of the record label's interest and therefore defendants were improperly benefiting from the marketing, distribution and licensing of the song without authorization. Defendants removed the case to federal court, claiming that the state-law claims (for constructive trust, injunctive relief, conversion, unjust enrichment, and accounting) were preempted by the Copyright Act. Plaintiffs moved to remand to state court.
The Court held that removal of the case to federal court, under 28 USC 1441, was proper. The Court found that the Copyright Act preempted the state law causes of action for conversion, declaratory judgment and injunctive relief. 17 USC 301. Plaintiffs were not just seeking to enforce the royalty agreement with the label, as defendants allegedly were improper assignees of the contract. The rights seeking plaintiff sought to enforce were really copyright claims, protecting plaintiffs "against the world." Other claims -- for constructive trust, unjust enrichment, and an accounting -- were not preempted, but the Court retained supplemental jurisdiction.
In case concerning defendants' alleged use of the "Super Bowl Shuffle" without plaintiff' authorization, a federal court in Illinois held that the case should remain in federal court as preempted by the federal Copyright Act. Accordingly, plaintiffs' motion to remand to state court was denied.
The Super Bowl Shuffle is a song and music video trumpeting the success of the 1985 Chicago Bears. Plaintiffs initially brought a case in Illinois state court alleging that defendants were not assignees of the record label's interest and therefore defendants were improperly benefiting from the marketing, distribution and licensing of the song without authorization. Defendants removed the case to federal court, claiming that the state-law claims (for constructive trust, injunctive relief, conversion, unjust enrichment, and accounting) were preempted by the Copyright Act. Plaintiffs moved to remand to state court.
The Court held that removal of the case to federal court, under 28 USC 1441, was proper. The Court found that the Copyright Act preempted the state law causes of action for conversion, declaratory judgment and injunctive relief. 17 USC 301. Plaintiffs were not just seeking to enforce the royalty agreement with the label, as defendants allegedly were improper assignees of the contract. The rights seeking plaintiff sought to enforce were really copyright claims, protecting plaintiffs "against the world." Other claims -- for constructive trust, unjust enrichment, and an accounting -- were not preempted, but the Court retained supplemental jurisdiction.
October 27, 2014
Publisher Not Double Dipping Foreign Royalties Under Terms Of 1961 Agreement With Duke Ellington
Ellington v. EMI Music et al., 2014 NY Slip Op 07197, NYLJ 1202674400667 (N.Y. Court of Appeals Oct. 23, 2014).
New York's highest court affirmed dismissal of a breach of contract claim brought by Duke Ellington's heir, against Ellington's publisher (EMI), seeking unpaid royalties under a 1961 agreement. The majority of the Court of Appeals held that, under the contract's clear and unambiguous terms, Ellington was entitled to 50% "net receipts" from foreign publishers, even if those foreign publishers were now-affiliated with the US publisher.
Plaintiff had claimed that by using affiliated foreign subpublishers, EMI was double-dipping into the entire pot of revenue generated from the foreign sale of the relevant musical compositions. Essentially, plaintiff claimed that the amount retained by the affiliated foreign subpublishers prior to remittal of the remainder to EMI was an amount received by EMI, and therefore, when using affiliated foreign subpublishers, EMI should remit to the First Parties half of the entire amount generated from the foreign sale of the relevant musical compositions. The trial court disagreed and dismissed the complaint; the appellate division affirmed; and the Court of Appeals affirmed.
First, as to "net revenue actually received," the Court of Appeals found that the royalty provision makes no distinction between affiliated and unaffiliated foreign subpublishers. Therefore, the courts below properly declined to read such a distinction into the contract as it does not appear to have been the intent of the parties that such a distinction be included, primarily because they were understandably unaware that such a change in the industry would occur.
Second, as to "any other affiliate," the Court of Appeals found that "[a]bsent explicit language demonstrating the parties' intent to bind future affiliates of the contracting parties, the term 'affiliate' includes only those affiliates in existence at the time that the contract was executed." In other words, the publisher was not double dipping because its later-foreign-affiliates were not "affiliates" of the publisher under the contract.
There were two dissents. In sum, the dissents found it "wrong... that, when a contract is written to bind 'any . . . affiliate' of a party, its effect should be limited to affiliates in existence at the time of contracting." In other words, the dissent would have held that the term "affiliate" as used in the Agreement may be interpreted as appellant suggests to include EMI's foreign affiliated entities.
New York's highest court affirmed dismissal of a breach of contract claim brought by Duke Ellington's heir, against Ellington's publisher (EMI), seeking unpaid royalties under a 1961 agreement. The majority of the Court of Appeals held that, under the contract's clear and unambiguous terms, Ellington was entitled to 50% "net receipts" from foreign publishers, even if those foreign publishers were now-affiliated with the US publisher.
Plaintiff had claimed that by using affiliated foreign subpublishers, EMI was double-dipping into the entire pot of revenue generated from the foreign sale of the relevant musical compositions. Essentially, plaintiff claimed that the amount retained by the affiliated foreign subpublishers prior to remittal of the remainder to EMI was an amount received by EMI, and therefore, when using affiliated foreign subpublishers, EMI should remit to the First Parties half of the entire amount generated from the foreign sale of the relevant musical compositions. The trial court disagreed and dismissed the complaint; the appellate division affirmed; and the Court of Appeals affirmed.
First, as to "net revenue actually received," the Court of Appeals found that the royalty provision makes no distinction between affiliated and unaffiliated foreign subpublishers. Therefore, the courts below properly declined to read such a distinction into the contract as it does not appear to have been the intent of the parties that such a distinction be included, primarily because they were understandably unaware that such a change in the industry would occur.
Second, as to "any other affiliate," the Court of Appeals found that "[a]bsent explicit language demonstrating the parties' intent to bind future affiliates of the contracting parties, the term 'affiliate' includes only those affiliates in existence at the time that the contract was executed." In other words, the publisher was not double dipping because its later-foreign-affiliates were not "affiliates" of the publisher under the contract.
There were two dissents. In sum, the dissents found it "wrong... that, when a contract is written to bind 'any . . . affiliate' of a party, its effect should be limited to affiliates in existence at the time of contracting." In other words, the dissent would have held that the term "affiliate" as used in the Agreement may be interpreted as appellant suggests to include EMI's foreign affiliated entities.
October 21, 2014
License Agreements Preclude Copyright Infringement Claim; 6th Circuit
Murphy v. Lazarev, No. 14-5028 (6th Cir. Oct. 17, 2014) [File Name: 14a0790n.06]
The Sixth Circuit affirmed dismissal of copyright infringement and breach of contract claims by two American co-authors of a song, Almost Sorry, against a Russian pop artist because there were numerous licensing agreements that granted defendant sweeping permission to record and perform the song. First, the Court held that the defendant did not waive his affirmative defense of "license," even though defendant did not file an answer to the amended complaint, because the plaintiffs were on notice of his affirmative defenses from an early stage in the lawsuit (when defendant filed a pro se letter in response to the complaint), thus satisfying the purposes of Rule 8. Second, the Court held that defendant had a valid express sub-license to record the song until 2013.
The Sixth Circuit affirmed dismissal of copyright infringement and breach of contract claims by two American co-authors of a song, Almost Sorry, against a Russian pop artist because there were numerous licensing agreements that granted defendant sweeping permission to record and perform the song. First, the Court held that the defendant did not waive his affirmative defense of "license," even though defendant did not file an answer to the amended complaint, because the plaintiffs were on notice of his affirmative defenses from an early stage in the lawsuit (when defendant filed a pro se letter in response to the complaint), thus satisfying the purposes of Rule 8. Second, the Court held that defendant had a valid express sub-license to record the song until 2013.
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