The return of the C. Aguilera sample controversy

DJ_EnkiDJ_Enki 6,473 Posts
edited March 2011 in Strut Central
There is now officially a lawsuit for not clearing "Hippy Skippy Moon Strut" for "Ain't No Other Man." I can't tell if Premier is named in the lawsuit, but now we get to officially rehash the "which record did Premier sample?" argument, which is actually pretty interesting from a legal point of view.

  Comments


  • pcmrpcmr 5,591 Posts
    why did they not clear it on this album which had a sizable budget
    did they think no one would know on some secret squirellness

  • The_Hook_UpThe_Hook_Up 8,182 Posts
    DJ_Enki said:
    There is now officially a lawsuit for not clearing "Hippy Skippy Moon Strut" for "Ain't No Other Man." I can't tell if Premier is named in the lawsuit, but now we get to officially rehash the "which record did Premier sample?" argument, which is actually pretty interesting from a legal point of view.

    I assume the argument is Hippy Skippy Vs. The Latin Blues Band?

    wouldn't the songs have the same publishing/songwriting credit? Would the title of song/named performer matter in a case of copyright infringement?

  • DJ_EnkiDJ_Enki 6,473 Posts
    The_Hook_Up said:
    DJ_Enki said:
    There is now officially a lawsuit for not clearing "Hippy Skippy Moon Strut" for "Ain't No Other Man." I can't tell if Premier is named in the lawsuit, but now we get to officially rehash the "which record did Premier sample?" argument, which is actually pretty interesting from a legal point of view.

    I assume the argument is Hippy Skippy Vs. The Latin Blues Band?


    That's what I thought it was--and I think that's what was argued about here--but I misconstrued this story.According to discogs.com, "Hippy Skippy" did get cleared:

    Contains a sample from "Hippy Skippy Moon Strut," written by Harold Beatty as performed by Moon People, published by Iza Music Corp. (adm. by The Clyde Otis Music Group, Inc.) (BMI), under license from Argon Productions.

    So I guess the lawsuit is saying that they cleared it with the wrong people.

  • Couldn't it have been "Happy Soul" by the Moon People?

  • DORDOR Two Ron Toe 9,902 Posts

  • Pretty sure Moon People - happy soul - is the one that Primo flipped.
    I

  • discos_almadiscos_alma discos_alma 2,164 Posts
    bass_fever said:
    Pretty sure Moon People - happy soul - is the one that Primo flipped.
    I

    What makes you "pretty sure"? Prem only used the horns, which to my ears sound identical throughout all versions. (They are maybe a little rawer in the Hippy Skippy version). IMO, he could have used any of the versions.

    b/w

    http://soul-sides.com/2008/05/happy-soul-suite.html

    O-Dub wrote:
    My convo with Marin yielded two more tidbits of information. First of all, RCA apparently didn't clear the sample correctly. My guess is that they cleared the mechanical rights but not the songwriter rights and when Fania (who, by now, owned the Speed catalog) figured this out, they got ready to sue. The problem is: they didn't know who the original composer was either and one day, when Marin was visiting, they asked him, "hey, would you happen to know who the composer is?" upon which Marin replied, "yeah...me." So as it turns out, Marin is waiting to see if a settlement happens, and if so, he likely stands to make a nice piece of change off this.

    bb/w

    http://www.spectropop.com/MoonPeople/index.htm

  • kemskems 120 Posts
    I'm not a lawyer, but the first question that comes to mind is, what happens to Codigo Music for taking money for sample they couldn't clear?

  • Mr_Lee_PHDMr_Lee_PHD 2,042 Posts
    Unless they just had a bunch of session musicians replicate it to a really high standard, a-la rappers delight.

  • Mr_Lee_PHD said:
    Unless they just had a bunch of session musicians replicate it to a really high standard, a-la rappers delight.

    That wouldn't affect the songwriting or mechanical rights at all. It would only mean they didn't have to license the master tape, which is totally separate.

  • I have never hear of a difference between mechanical and songwriter rights. As I understand it, a mechanical license to press up a copy of a song that is written by a songwriter is obtained from the publisher who represents that writer. Maybe by mechanical they meant master.

  • mannybolonemannybolone Los Angeles, CA 15,025 Posts
    Weird situation all around. Funny; I just wrote about the song/single for Wax Poetics too - this would have made an interesting post-script.

    Annoying how news outlets are reporting that Christina "stole" the song since the lawsuit doesn't allege that at all. I don't get why Sony is getting sued instead of Codigo if this is an issue over who has the rights to "Hippy Dippy Moon Strut". Like others, I also don't know how you could tell which record Primo actually sampled since the parts of the song he uses are in all FOUR variations of the song, dating back to "(I'll Be a) Happy Man."

  • mannybolonemannybolone Los Angeles, CA 15,025 Posts
    The_Hook_Up said:
    DJ_Enki said:
    There is now officially a lawsuit for not clearing "Hippy Skippy Moon Strut" for "Ain't No Other Man." I can't tell if Premier is named in the lawsuit, but now we get to officially rehash the "which record did Premier sample?" argument, which is actually pretty interesting from a legal point of view.

    I assume the argument is Hippy Skippy Vs. The Latin Blues Band?

    wouldn't the songs have the same publishing/songwriting credit? Would the title of song/named performer matter in a case of copyright infringement?

    This is part of the weird thing though: they don't have the same songwriting credit. Latin Blues Band credited Bobby Marin. Moon People credited Marin and Morty Craft. "Happy Soul with a Hook" credited two entirely different writers: Clowney and Jackobeck. "Hippy Dippy" was credited to H. Beatty. The last 7" came out on Roulette, everything else on Speed.

    Confusing as hell.

  • HorseleechHorseleech 3,830 Posts
    mannybolone said:
    I don't get why Sony is getting sued instead of Codigo

    Unless Sony was really stupid and signed a contract that didn't give them indemnity (unlikely).

    Probably they're just hoping to get a settlement and some publicity for their suit.

  • mannybolone said:
    The_Hook_Up said:
    DJ_Enki said:
    There is now officially a lawsuit for not clearing "Hippy Skippy Moon Strut" for "Ain't No Other Man." I can't tell if Premier is named in the lawsuit, but now we get to officially rehash the "which record did Premier sample?" argument, which is actually pretty interesting from a legal point of view.

    I assume the argument is Hippy Skippy Vs. The Latin Blues Band?

    wouldn't the songs have the same publishing/songwriting credit? Would the title of song/named performer matter in a case of copyright infringement?

    This is part of the weird thing though: they don't have the same songwriting credit. Latin Blues Band credited Bobby Marin. Moon People credited Marin and Morty Craft. "Happy Soul with a Hook" credited two entirely different writers: Clowney and Jackobeck. "Hippy Dippy" was credited to H. Beatty. The last 7" came out on Roulette, everything else on Speed.

    Confusing as hell.


    Clowney is Dave 'Baby' Cortez, not sure who the others are. I ran into this the other day, with one song being credited to two different sets of authors, if I could only remember what it was...

  • LaserWolfLaserWolf Portland Oregon 11,517 Posts
    mannybolone said:


    This is part of the weird thing though: they don't have the same songwriting credit. Latin Blues Band credited Bobby Marin. Moon People credited Marin and Morty Craft. "Happy Soul with a Hook" credited two entirely different writers: Clowney and Jackobeck. "Hippy Dippy" was credited to H. Beatty. The last 7" came out on Roulette, everything else on Speed.

    Confusing as hell.

    This points out a basic problem with sampling law.
    Not speaking as a lawyer because I don't know shit; a copyright is given for a melody and a lyric.
    Sounds like the sample they are fighting over is a horn part. Written by who ever wrote the horn part.
    Traditionally, horn arrangements are not copyrighted.

    The same thing is true of drum patterns and hits, keyboard loops, and other recorded parts that are traditionally sampled.
    Copyright law was never meant to cover these arranged fragments that don't constitute part of the melody or lyrics.

    That somebody created these performances is undeniable, and they deserve to be paid.
    But the songwriter and publisher are rarely the person who creates the fragment that gets sampled.

  • mannybolonemannybolone Los Angeles, CA 15,025 Posts
    In any case, if you're talking about the elements of the tune that were sampled, they were all there in Marin's original. Can't see how you could credit any of the later songwriters from a musicological p.o.v. but I'm sure this will be argued over good ol fashioned legal grounds.

  • HawkeyeHawkeye 896 Posts
    If you check the BMI datas you will see that Marin is named as a composer:

    BMI data base

    Something else is happening here, the hint is
    TufAmerica filed a lawsuit recently against Sony demanding they be declared the rightful owners of the song and not Codigo Music, whom Sony apparently cleared the sample with.

    Tufamerica Inc = Tuff America = Tuff City = Aaron Fuchs

    Check this

    Aaron Fuchs wants to have a judgement that his company owns the song.

    Peace

  • DJ_EnkiDJ_Enki 6,473 Posts
    Hawkeye said:
    If you check the BMI datas you will see that Marin is named as a composer:

    BMI data base

    Something else is happening here, the hint is
    TufAmerica filed a lawsuit recently against Sony demanding they be declared the rightful owners of the song and not Codigo Music, whom Sony apparently cleared the sample with.

    Tufamerica Inc = Tuff America = Tuff City = Aaron Fuchs

    Check this

    Aaron Fuchs wants to have a judgement that his company owns the song.

    Peace

    Jesus, that fucking asshole again?

  • HawkeyeHawkeye 896 Posts
    This is about the Impeach The President Drums



    1997 WL 158364
    1997 Copr.L.Dec. P 27,639, 42 U.S.P.Q.2d 1398
    (Cite as: 1997 WL 158364 (S.D.N.Y.))
    United States District Court,
    S.D. New York.

    TUFF 'N' RUMBLE MANAGEMENT, INC., d/b/a Tuff City Records, Plaintiff,
    v.
    PROFILE RECORDS, INC., Landmark Distributors, Inc., Promuse, Inc., Protoon,
    Inc., Steve Plotnicki, "John Doe" & "Richard Roe," Defendants.

    No. 95 Civ. 0246 (SHS).

    April 2, 1997.


    OPINION

    STEIN, District Judge.

    *1 Plaintiff in this copyright infringement action claims that it owns the
    copyright in the sound recording and the musical composition entitled "Impeach the
    President" and that "certain drum tracks" of that work have been improperly copied
    by defendants in their recordings entitled "Back from Hell" and "Dana Dane with
    Fame."

    Defendants now seek summary judgment dismissing the complaint pursuant to
    Fed.R.Civ.P. 56(c) on the ground that plaintiff cannot establish the essential
    elements of its claim of copyright infringement. In response, plaintiff has
    cross-moved for an order striking defendants' answer and granting plaintiff judgment
    by default. For the reasons set forth below, defendants' motion is granted in its
    entirety, plaintiff's motion is denied, and the complaint is dismissed.

    I. Factual Background

    Tuff 'N' Rumble Management, Inc. d/b/a Tuff City Records ("Tuff") is a record
    company that sells rap music. Defendant Profile Records, Inc. ("Profile") is also
    a record company that sells rap music and is affiliated with defendants Promuse,
    Inc. and Protoons, Inc. Defendant Landmark Distributors, Inc. ("Landmark") was,
    until it ceased operations in April 1994, a record distributor that distributed
    records for Profile and other independent record companies, including Tuff.
    Defendant Steven Plotnicki is an officer and shareholder of each of the corporate
    defendants.

    Tuffs complaint contains two causes of action. Count I alleges that defendants
    are liable for copyright infringement based on their release of a sound recording
    entitled "Back from Hell" by the group Run DMC because that work "incorporates
    portions of the original sound recording of the drum track" of a work entitled
    "Impeach the President." (Compl. 15(a).) Count II makes the same
    charge with respect to a sound recording entitled "Dana Dane with Fame" by the
    recording artist Dana Dane. (Compl. 24(a).) More specifically, Tuff
    alleges that "[t]he sound recordings of certain drum tracks found in 'Dana Dane With
    Fame' and 'Back From Hell' were copied/sampled directly from a phonorecord
    containing the sound recording and musical composition entitled 'Impeach the
    President.' " (Pl.'s Pre-Trial Order 5(G).)

    Tuff also alleges it owns the copyright in the sound recording and the musical
    composition of "Impeach the President," as recorded in 1973 by the artists known as
    the Honey Drippers. (Compl. 10 & Exh. A.) Tuff registered the
    copyright in "Impeach the President" on November 25, 1991, four years after Profile
    released "Dana Dane with Fame" and one year after it released "Back from Hell."
    (Compl., Exh. A; Jacobs Aff., Exh. G.) Tuffs copyright registration names Roy C.
    Hammond as the author of "Impeach the President" and states that the copyright was
    transferred to it "by written agreement." (Compl., Exh. A.)

    II. Discussion
    A. Defendants' Motion for Summary Judgment

    The standards governing defendants' motion are well settled. Summary judgment may
    be granted "only when the moving party demonstrates that 'there is no genuine issue
    as to any material fact and that the moving party is entitled to a judgment as a
    matter of law.' " Allen v. Coughlin, 64 F.3d 77, 79 (2d Cir.1995) (quoting
    Fed.R.Civ.P. 56(c)). The Supreme Court has held that "the plain language of Rule
    56(c) mandates the entry of summary judgment, after adequate time for discovery and
    upon motion, against a party who fails to make a showing sufficient to establish the
    existence of an element essential to that party's case, and on which that party will
    bear the burden of proof at trial." Celotex Corp. v. Catrett, 477 U.S. 317, 322,
    106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986). The moving party bears the initial
    burden of showing the absence of a genuine issue of material fact for trial. Id. at
    323, 106 S.Ct. at 2553. To defeat a motion for summary judgment, the non-moving
    party must come forward with specific facts that raise a genuine issue for trial.
    Fed.R.Civ.P. 56(e). Finally, in considering defendants' present motion, this Court
    must "view the evidence in the light most favorable to the non- moving party and
    draw all reasonable inferences in its favor, and may grant summary judgment only
    when 'no reasonable trier of fact could find in favor of the non-moving party.' "
    Allen, 64 F.3d at 79 (citation omitted) (quoting Lund's. Inc. v. Chemical Bank,
    870 F.2d 840, 844 (2d Cir.1989)).

    *2 In the context of copyright infringement, courts have regularly granted summary
    judgment where it is "clear" that the plaintiff cannot make out the essential
    elements of the claim. See Repp v. Lloyd Webber, 858 F.Supp. 1292, 1300
    (S.D.N.Y.1994); Favia v. Lyons Partnership, No. 94 Civ. 3277, 1996 WL 194306, at *2
    (S.D.N.Y. Apr.23, 1996); Siskind v. Newton-John, No. 84 Civ. 2634, 1987 WL 11701,
    at *4 (S.D.N.Y. May 22, 1987). A party suing for copyright infringement "must show
    ownership of a valid copyright and the defendant's infringement by unauthorized
    copying." Laureyssens v. Idea Group. Inc., 964 F.2d 131, 139 (2d Cir.1992); see
    also M.H. Segan Ltd. Partnership v. Hasbro, Inc., 924 F.Supp. 512, 518
    (S.D.N.Y.1996) ("To succeed in its copyright infringement claim, plaintiff must
    demonstrate: (1) ownership of a valid copyright; (2) that the defendant has
    actually copied the plaintiff's work; and (3) the copying is illegal because a
    substantial similarity exists between the defendant's work and the protectible
    elements of plaintiff's.").

    In this case, plaintiff has demonstrated neither that it owns a valid copyright nor
    that defendants engaged in unauthorized copying.

    1. Ownership of a Valid Copyright

    17 U.S.C. 410(c) provides that "[i]n any judicial proceeding the
    certificate of a registration made before or within five years after first
    publication of the work shall constitute prima facie evidence of the validity of the
    copyright and of the facts stated in the certificate," but "[t]he evidentiary weight
    to be accorded the certificate of a registration made thereafter shall be within the
    discretion of the court."

    Tuff asserts that it is entitled to the presumption of copyright validity provided
    for in section 410(c). However, Tuff registered its copyright for "Impeach the
    President" on November 25, 1991; that registration states that the date of first
    publication of the work was October 1, 1973, more than 18 years earlier. (Compl.,
    Exh. A.) Accordingly, the registration does not constitute prima facie evidence that
    the copyright is valid, and Tuff has the burden of proving the validity of its
    copyright. See Sem-Torq, Inc. v. K Mart Corp., 936 F.2d 851, 854 (6th Cir.1991)
    (Where a work was first published in 1982 and the copyright was registered in 1988,
    the "district court was not bound to accept the validity of the copyright.");
    Dollcraft Indus., Ltd. v. Well-Made Toy Mfg. Co., 479 F.Supp. 1105, 1114
    (E.D.N.Y.1978) (Where a work falls outside the statutory presumption of 17 U.S.C.
    410(c), plaintiff carries the burden of proving ownership of a valid
    copyright, including its originality.). [FN1]


    FN1. Tuff also contends that it is entitled to a presumption of copyright
    validity pursuant to section 410(c) with respect to the musical composition
    aspect of the 1991 copyright registration, even if it is not entitled to that
    presumption with respect to the sound recording. Tuff, however, not only admits
    that it has no personal knowledge of when or if the musical composition of
    "Impeach the President" was initially published, (see Fuchs Aft.
    7(c)), but also set forth on the 1991 copyright registration only one date of
    initial publicatio--1973--not separate dates for publication of the sound
    recording and musical composition of the work. (Compl., Exh. A.) The Court
    therefore rejects this argument for a presumption of copyright validity as well.


    Tuff has not sustained that burden. As noted above, Tuff's copyright registration
    names Roy C. Hammond as the author of "Impeach the President" and states that the
    copyright was transferred to Tuff "by written agreement." Tuff, however, has offered
    no evidence to substantiate that assertion. Tuff has produced copies of two
    written agreements, both signed by Hammond as licensor. The first agreement, dated
    March 22, 1988, licenses Tuffs predecessor to use "Impeach the President" in
    exchange for $100. (Jacobs Aff., Exh. H.) The second agreement, dated July 24,
    1990, purports to make Tuff the exclusive licensee of "Impeach the President."
    (Jacobs Aff., Exh. I.) Yet, Tuff has produced no evidence affirming that Hammond
    himself had any rights to convey the work. According to Fuchs, he and Hammond
    never discussed whether Hammond had a copyright interest in "Impeach the President,"
    (see Fuchs Dep. at 231), nor did Tuff ask Hammond in what form the song was first
    published or conduct any inquiry of its own. Id. at 233.

    *3 However, there is evidence available on the record itself as to who possessed
    the original copyright in "Impeach the President"--the sound recording contains the
    letter "P" in a circle, the date "1973," and the name "Alaga." (Jacobs Aff., Exh.
    J.) According to 17 U.S.C. 402(b), these elements are the exact ones
    required to appear on a sound recording in order to provide notice to the public of
    the work's copyright protection. [FN2] Thus, the only sound evidence before this
    Court that indicates who owned the original copyright in "Impeach the President" is
    that "Alaga" was that owner. It should also be noted that the top of the label on
    the sound recording states, in bold letters, "Alaga Records." Tuff offers no proof
    explaining how, when, or if Alaga transferred copyright ownership to Hammond, which
    would have had to occur by written instrument memorializing such a transfer. See
    17 U.S.C. 204(a). And, of course, Hammond could not have transferred
    copyright ownership to Tuff unless copyright ownership had been transferred to him
    by Alaga. [FN3]


    FN2. According to the historical and statutory notes following 17 U.S.C.A.
    402 (West 1996), the requirements included in section (b) are the same
    as those in the version of the copyright law in effect in 1973.


    FN3. In an effort to avoid the conclusion that Hammond did not own the copyright
    in "Impeach the President" and therefore was legally incapable of transferring
    that copyright, Tuff argues that there is no proof that Alaga owned the
    copyright in the song. In support of this argument, Tuff relies on a 1982
    agreement that Fuchs purportedly entered into with Hammond which surfaced for
    the first time in Tuff's answering papers to defendants' motion for summary
    judgment, long after lengthy discovery proceedings had concluded. Even had the
    1982 agreement been produced by Tuff in a timely manner--which it was not (see
    May 31, 1995 Order of Judge Michael B. Mukasey, Jacobs Reply Aff., Exh. B)--the
    agreement does not provide any evidence that the copyright in "Impeach the
    President" did not belong to Alaga or did belong to Hammond.


    Because Tuff has no direct knowledge of who owned the original copyright in
    "Impeach the President," cannot explain why the copyright notice on the 1973 single
    states Alaga is the owner, and produces no contrary evidence from any person
    qualified to testify about these matters, the Court concludes that Tuff has not met
    its burden of proving it is the owner of a valid copyright.

    2. Unauthorized Copying

    The Court also finds that Tuff has failed to produce competent evidence that
    defendants participated in unauthorized copying of "Impeach the President." In order
    to establish unauthorized copying, a plaintiff claiming copyright infringement must
    show (1) actual copying, and (2) unlawful appropriation. Laureyssens v. Idea Group,
    Inc., 964 F.2d at 139-40; Arden v. Colombia Pictures Indus., 908 F.Supp. 1248, 1257
    (S.D.N.Y.1995); Denker v. Uhry, 820 F.Supp. 722, 728 (S.D.N.Y.1992), aff'd, 966
    F.2d 301 (2d Cir.1993). There is no evidence in this case that defendants
    participated in either activity.

    A plaintiff alleging copyright infringement can establish actual copying by
    offering "direct evidence or by proof of defendant's access to plaintiff's work and
    sufficient similarity between the works to support an inference of copying." Arden
    v. Colombia Pictures, Indus., 908 F.Supp. at 1257; see also Tienshan, Inc. v.
    C.C.A. Int'l (N.J.), Inc., 895 F.Supp. 651, 656 (S.D.N.Y.1995). In this case, Tuff
    presents no direct evidence of actual copying or of any facts that would support an
    inference of copying. In order to prove copying by inference, Tuff would have to
    show that defendants or the artists who wrote "Back from Hell" and "Dana Dane with
    Fame" had access to "Impeach the President." Access to a plaintiff's work will not
    be presumed. Rather, "[a] plaintiff must offer significant, affirmative and
    probative evidence to support a claim of access. Conjecture or speculation of
    access will not suffice." Intersong-USA v. CBS, Inc., 757 F.Supp. 274, 281
    (S.D.N.Y.1991) (citations omitted); Gaste v. Kaiserman, 863 F.2d 1061, 1066 (2d
    Cir.1988) ("Access must be more than a bare possibility and may not be inferred
    through speculation or conjecture."); Repp v. Lloyd Webber, 858 F.Supp. at 1301.

    *4 As proof of access, a plaintiff may show that "(1) the infringed work has been
    widely disseminated or (2) a particular chain of events exists by which the
    defendant might have gained access to the work." Favia v. Lyons Partnership, 1996
    WL 194306, at *3. In this case, there is no evidence that the allegedly infringed
    work was widely disseminated. See, e.g., ABKCO Music, Inc. v. Harrisongs Music,
    Ltd., 722 F.2d 988, 998 (2d Cir.1983). In addition, by Tuff's own admission,
    copies of "Impeach the President" have become "rare" since the record's release in
    1973. (Fuchs Dep. at 44.) In sum, there is no basis from which the Court can
    infer that the authors of "Back from Hell" and "Dana Dane with Fame" had access to
    "Impeach the President." See Favia v. Lyons Partnership, 1996 WL 194306, at *3.
    Tuff has offered nothing more than conjecture and speculation as evidence of the
    defendants' (or the artists') access to the work, which fails to establish an
    essential element of its claim of copyright infringement.

    Moreover, neither "Dana Dane with Fame" nor "Back from Hell" are so strikingly
    similar to "Impeach the President" that they must have been copied from it and could
    not have been independently created. Stratchborneo v. Arc Music Corp., 357 F.Supp.
    1393, 1403 (S.D.N.Y.1973) ("To prove that similarities are striking, claimant must
    demonstrate that such similarities are of a kind that can only be explained by
    copying, rather than by coincidence, independent creation, or prior common
    source."); see also Tienshan, Inc. v. C.C.A. Int'l (N.J.), Inc., 895 F.Supp. at
    656 ("If the Court finds 'similarities that, in the normal course of events, would
    not be expected to arise independently in the two works,' " copying can be
    inferred.). To the extent that "Dana Dane with Fame" and "Back from Hell" have
    anything in common with "Impeach the President," neither song is so strikingly
    similar to "Impeach the President" as to preclude the possibility that they could be
    the product of anything but copying. The Court therefore finds that there is no
    basis for finding copying on the part of defendants. [FN4]


    FN4. The Court rejects Tuff's attempt to avoid summary judgment by
    proffering--as an expert's report--an unsigned, apparently draft letter without
    any letterhead from an entity identified simply as "Sound Associates." (See
    Fuchs Aff., Exh. B.)


    Finally, even had plaintiff been able to substantiate its claim that defendants
    copied its work, it would be unable to establish defendants' improper appropriation.
    As the Second Circuit has held, "if actual copying is established, a plaintiff
    must then show that the copying amounts to an improper appropriation by
    demonstrating that substantial similarity to protected material exists between the
    two works." Laureyssens v. Idea Group. Inc., 964 F.2d at 140; see 3 Melville B.
    Nimmer & David Nimmer, Nimmer on Copyright, 13.03[A][2], at 13-54 to 13-55
    (1996); Warner Bros. Inc. v. American Broadcasting Cos., 720 F.2d 231,242 (2d
    Cir.1983).

    The requirement that substantial similarity be shown in order to establish
    copyright infringement is therefore applicable to plaintiff's allegations in this
    case. The test for determining whether substantial similarity is present is
    "whether an average lay observer would recognize the alleged copy as having been
    appropriated from the copyrighted work." Ideal Toy Corp. v. Fab-Lu Ltd., 360 F.2d
    1021, 1022 (2d Cir.1966); accord Walker v. Time Life Films, Inc., 784 F.2d 44, 51
    (2d Cir.1986); Folio Impressions. Inc. v. Byer California, 937 F.2d 759, 765 (2d
    Cir.1991); M.H. Segan Ltd. Partnership v. Hasbro. Inc., 924 F.Supp. at 519. A
    determination of substantial similarity may properly be made by the Court on a
    summary judgment motion. Walker v. Time Life Films. Inc., 784 F.2d at 48 ("A
    district court may determine noninfringement as a matter of law on a motion for
    summary judgment ... when no reasonable trier of fact could find the works
    substantially similar."); Warner Bros. Inc. v. American Broadcasting Cos., 720 F.2d
    at 240.

    *5 Finally, in assessing substantial similarity, courts look at the works as a
    whole, as opposed to dissecting a work into its constituent elements or features.
    See M.H. Segan Ltd. Partnership v. Hasbro, Inc., 924 F.Supp. at 521; accord
    Tienshan, Inc. v. C.C.A. Int'l (N.J.), Inc., 895 F.Supp. at 658.

    Having carefully assessed the three musical works, the Court concludes that neither
    "Back from Hell" nor "Dana Dane with Fame" is substantially similar to "Impeach the
    President." Therefore, summary judgment is granted in favor of defendants.

    B. Plaintiff's Cross-Motion

    Finally, plaintiff cross-moves to strike defendants' answer and to enter judgment
    by default based on defendants' alleged failure to comply with the discovery rules
    of Fed.R.Civ.P. 34. Plaintiff has made this argument to the Court three previous
    times and has been denied relief each time. (See Orders dated Mar. 7, Mar. 30, and
    May 9, 1996.) Even if plaintiff's discovery grievances had not already been
    resolved repeatedly by this Court, plaintiff has not shown that additional discovery
    could help it avoid summary judgment. See Fed.R.Civ.P. 56(f); Hudson River Sloop
    Clearwater, Inc. v. Department of the Navy, 891 F.2d 414, 422 (2d Cir.1989).
    Accordingly, plaintiff's cross-motion is denied.

    III. Conclusion

    For the reasons set forth above, defendants' motion for summary judgment is granted
    in its entirety, plaintiff's motion to strike the answer and for judgment by default
    is denied, and the Clerk of Court is directed to enter judgment dismissing the
    complaint.

    1997 WL 158364, 1997 WL 158364 (S.D.N.Y.), 1997 Copr.L.Dec. P 27,639, 42 U.S.P.Q.2d
    1398

    END OF DOCUMENT

  • HawkeyeHawkeye 896 Posts
    And it goes on several years later


    Not Reported in F.Supp.2d
    2002 Copr.L.Dec. P 28,445
    (Cite as: 2002 WL 1058059 (S.D.N.Y.))
    United States District Court, S.D. New York.

    TUFAMERICA, INC. Plaintiff,
    v.
    Roy C. HAMMOND, Alaga Records, Johnson & Hammond Music, Interscope records,
    Inc., Death Row Records, Songs of Universal, Inc., Joshua's Dream Music, Tyrone
    J. Wryce, Hurt M Badd Publishing, Defendants.

    No. 99 Civ. 10369(CSH).

    May 23, 2002.


    MEMORANDUM OPINION AND ORDER

    HAIGHT, Senior J.

    *1 Plaintiff brought this action against multiple defendants seeking compensation
    for copyright infringement. Plaintiff alleges that recordings of defendants' songs
    "Just Like Daddy" and "Jagged Little Pill" contain infringing samples of portions of
    the song "Impeach the President," for which plaintiff claims to own the copyrights.
    Defendants Interscope Records, Inc. and Songs of Universal, Inc. have moved pursuant
    to Rule 12(b)(6) of the Federal Rules of Civil Procedure to dismiss the complaint on
    the basis of issue preclusion. Specifically, defendants assert that the court in
    Tuff 'N' Rumble Management, Inc. v. Profile Records, Inc., No. 95 Civ. 0246, 1997 WL
    158364 (S.D.N.Y. Apr. 2, 1997) (Stein, J.), decided in granting the defendant's
    motion for summary judgment that plaintiff does not own any copyrights to "Impeach
    the President." [FN1] The present motion in this case is being treated as one for
    summary judgment under Rule 56, in accordance with the last sentence of Rule
    12(b)(6). For the reasons that follow, defendants' motion is denied.


    FN1. Plaintiff does not deny that TufAmerica, Inc. and Tuff 'N' Rumble
    Management, Inc. are the same entity. TufAmerica, Inc. also does business under
    the names Tuff City Records and Tuff City Music Group. The various "Tuff"
    entities will be collectively referred to as "plaintiff."


    BACKGROUND

    Analysis of defendants' assertion of issue preclusion necessarily turns on the
    circumstances of the decision of summary judgment in Profile, which took place in
    the context of an acrimonious dispute between Tufamerica and its former attorney, Hy
    Shore.

    In 1995, plaintiff brought suit against Profile Records, Inc. and several other
    defendants for infringement of its copyrights in the song "Impeach the President."
    Plaintiff claimed that defendants' recordings of the songs "Back from Hell" and
    "Dana Dane with Fame" illegally copied drumtracks of "Impeach the President." None
    of the defendants in the Profile case are parties to the present case. When the
    Profile case was filed, plaintiff was represented by Shore.

    On July 9, 1996, the defendants in Profile filed a motion for summary judgment. The
    motion was granted by the court on April 2, 1997. In its order, the court stated
    that plaintiff had "demonstrated neither that it owns a valid copyright nor that
    defendants engaged in unauthorized copying." 1997 WL 158364 at *2. With regard to
    the issue of copyright ownership, the court made several particularized findings.
    Plaintiff had registered its copyright for "Impeach the President" on November 25,
    1991. Since the registration stated that the song was first published in 1973, the
    court did not accept the registration as prima facie proof that plaintiff's
    copyright was valid and placed on plaintiff the burden of proving the validity of
    its copyright. Id. Plaintiff also had offered an agreement dated May 5, 1982, in
    which Roy C. Hammond, identified in the 1991 copyright registration as the author of
    "Impeach the President," purported to transfer the copyright in the sound recording
    to plaintiff ("the 1982 Agreement"), an agreement dated March 22, 1988, in which
    Hammond purported to transfer the copyright in the composition to plaintiff ("the
    1988 Agreement"), and an agreement dated July 24, 1990, amending the 1982 agreement
    ("the 1990 Agreement"). The court found that plaintiff had failed to offer any
    evidence showing "that Hammond himself had any rights to convey the work." Id. The
    court observed that the 1973 sound recording of "Impeach the President" identified
    an entity by the name of "Alaga" as the copyright owner and noted that plaintiff
    failed to offer any evidence "explaining how, when, or if Alaga transferred
    copyright ownership to Hammond...." Id. at 3. [FN2] The court concluded its
    discussion of the issue of copyright ownership as follows:


    FN2. Roy C. Hammond and Alaga Records were both named as defendants in the
    present suit.

    *2 Because Tuff has no direct knowledge of who owned the original copyright in
    "Impeach the President" [and] cannot explain why the copyright notice on the 1973
    single states Alaga is the owner ... the Court concludes that Tuff has not met its
    burden of proving it is the owner of a valid copyright.
    Id. The court reached that conclusion with respect to both the musical composition
    and sound recording aspects of the 1991 copyright registration.

    Plaintiff's former attorney, Shore, drafted papers in opposition to the motion for
    summary judgment, but these papers were not officially filed until April 15, 1997,
    after the court granted the motion. Nevertheless, it is apparent from the court's
    decision that the court considered Shore's arguments. Plaintiff claims that Shore
    possessed but did not submit key evidence relevant to the motion for summary
    judgment in Profile. In particular, plaintiff had "informed Shore that Hammond was
    the founder and sole owner of Alaga" and provided him with documents that could
    serve as proof. Pl. Brief at 19. Plaintiff asserts that these documents "could have
    prevented the Profile court's finding regarding ownership of the copyright." Id.

    While the summary judgment motion in Profile was pending, a heated conflict erupted
    between plaintiff and Shore. Plaintiff was beginning to doubt the competence of
    Shore. In July 1996, plaintiff's in-house counsel asked to review legal files in
    Shore's possession and were denied access. Plaintiff cryptically states that in
    August 1996, it "tried" to replace Shore as its attorney. Pl. Brief at 13. On
    September 9, 1996, Shore wrote a letter to plaintiff's president, Aaron Fuchs, in
    which Shore stated that after a twenty-five year relationship with Fuchs, they could
    no longer work together. [FN3] Shore also stated that he would not return any files
    until Fuchs paid him for the work he had done. The letter made reference to three
    cases, Tuff & Rumble Management, Inc. v. Profile Records, Tuff & Rumble Management,
    Inc. v. Landmark Distrib., and Tuff & Rumble Management, Inc. v. Livin' Large, et
    al.


    FN3. Shore referred in the letter to "sharp practices," "screaming fits," and
    "threats" by Fuchs. Ex. 9 to Declaration of Jeffrey Gandel dated March 16, 2001.


    Over the course of the next four years, plaintiff repeatedly attempted to gain
    access to the files in Shore's possession. On December 5, 1996, the New York Supreme
    Court, which was hearing the Landmark case, ordered Shore to return the files within
    two days. On July 7, 1997, the Supreme Court found Shore to be in contempt of its
    order and again directed Shore to return the files. [FN4] Shore tried unsuccessfully
    to appeal to the Appellate Division and the Court of Appeals. [FN5] Eventually, he
    was sent to jail for contempt of court on July 1, 1999. Shore was released from jail
    upon his promise to turn over the files. Shore allowed plaintiff's in-house counsel
    to review the files in his office. The next day, Shore disappeared. Plaintiff was
    later informed that Shore moved to France and died there. Plaintiff was unable,
    "[d]ue to a variety of obstacles left by Shore, and instructions left with his
    estate," to obtain any of its files until September of 2000. Pl. Brief at 18. By
    then, many of the files had been destroyed.


    FN4. The July 7 order formalized findings made by the court on March 11, 1997.


    FN5. The Appellate Division denied Shore's appeals with respect to the December
    5 order of the Supreme Court in orders dated April 16, 1998 and June 4, 1998,
    and denied Shore's motion for reargument in an order dated December 29, 1998.
    The Court of Appeals denied Shore's appeal in a decision dated May 6, 1999. The
    Appellate Division denied yet another appeal by Shore on June 22, 1999.


    *3 At some point soon after plaintiff's relationship with Shore disintegrated in
    1996, plaintiff obtained the services of new counsel, Cobrin Gittes & Samuel
    ("CGS"). Plaintiff continues in the present case to be represented by that same
    firm, now practicing as Cobrin & Gittes. On April 16, 1997, CGS moved on behalf of
    plaintiff for reconsideration of the Profile court's order of April 2, 1997,
    granting summary judgment to the defendants. [FN6] In its brief, CGS argued:


    FN6. CGS was not officially substituted as new counsel for plaintiff in the
    Profile case until April 29, 1997.

    This grossly inequitable outcome is the direct result of a lack of competent
    counsel, as personified by disgruntled counsel Hy Shore, Esq., who is now in
    contempt of Court for his behavior towards Tuff, and who states that he is being
    sent to jail. In responding to Defendants' Motion for Summary Judgment, Hy Shore
    refused to utilize probative documents and testimony provided to him by Tuff (at
    the same time refusing to permit Tuff or any of its employees or agents to review
    the Opposition Memorandum and other papers). This evidence would have conclusively
    proven: (1) Tuff's copyright ownership in Impeach .... Because Hy Shore refused to
    advise this Court of the simple fact that Roy C. Hammond was the president and sole
    owner of Alaga, Tuff has been subjected to a grossly inequitable result.
    Tuff 'N' Rumble Brief at 1-2, Ex. 2 to Decl. of Oren J. Warshavsky dated Feb. 12,
    2002. [FN7]


    FN7. In the case at bar, this Court ordered plaintiff to submit copies of all
    documents that had been submitted in connection with the Profile motion for
    summary judgment and motion for reconsideration, along with a copy of the court
    order denying the motion for reconsideration. Order dated June 11, 2001. Counsel
    for plaintiff was unable to obtain copies of those documents, either from its
    own files or from federal archives. Eventually, counsel for plaintiff notified
    the Court that it had computer files of the final drafts of those documents, and
    the Court ordered plaintiff to submit printed copies of those files. Order dated
    Feb. 5, 2002. The Court obtained a copy of the court order denying the motion
    for reconsideration directly from the chambers of Judge Stein.


    The court denied plaintiff's motion for reconsideration in a two-page order filed
    May 1, 1997. The court's order concluded: "Since plaintiff, in its motion for
    reconsideration, has merely attempted to assert new legal theories in support of its
    original position and to introduce evidence that could have been adduced during the
    pendency of the original motion, the motion for reconsideration is hereby denied."
    That order did not specifically refer to plaintiff's allegations of misconduct by
    Shore. Then, on August 15, 1997, the court granted the defendants' motion for an
    award of attorneys' fees and costs. 1997 WL 470114. The court emphasized the
    "consistently obstreperous conduct" of both plaintiff and plaintiff's attorney
    during discovery and the failure of plaintiff's attorney "to research properly the
    law or facts involved in [plaintiff's] claims." Id. at *1. The court dismissed
    plaintiff's argument that his prior attorney was to blame, citing Link v. Wabash
    R.R. Co., 370 U.S. 626, 633-34 (1962) ("Petitioner voluntarily chose this attorney
    as his representative in the action, and he cannot now avoid the consequences of the
    acts or omissions of this freely selected agent."). Id. at *2.

    Plaintiff filed the present case for copyright infringement on October 8, 1999,
    naming as defendants Interscope Records (a music recording company), Songs of
    Universal (a music publishing company) and several other companies and persons in
    the music industry. Among the defendants named are Roy C. Hammond and Alaga Records.
    It appears that plaintiff has settled its dispute with Hammond and Alaga, although
    no stipulation of settlement or motion for voluntary dismissal has been submitted to
    the court. Plaintiff submits as exhibits an "Agreement" dated October 1, 1999, and
    signed October 21, 1999 by Aaron Fuchs on behalf of Tuff'n Rumble Management, Inc.
    and by Roy C. Hammond on behalf of himself, Alaga Records, and Johnson and Hammond
    Publishing [FN8] (the "1999 Agreement"); and a "Settlement Agreement" dated January
    1, 2001, and missing a signature page but identifying the same parties (the "2001
    Agreement"). Exs. 6, 7 to Gandel Decl. dated March 16, 2001. Under the 1999
    Agreement, Hammond and Alaga purport to transfer to plaintiff all rights to the
    composition and all rights to the sound recording of "Impeach the President,"
    effective as of March 22, 1988 and May 5, 1992 respectively. 1999 Agreement at 6.
    The 2001 Agreement provides that plaintiff shall have a fifty-percent ownership
    interest in the composition and sound recording copyrights for "Impeach the
    President" and shall be the exclusive administrator of all copyrights. 2001
    Agreement at 12, 14.


    FN8. The first paragraph of the 1999 Agreement identifies the parties, somewhat
    differently, as TufAmerica, Inc. ("Tuff City"), Roy C. Hammond, and Alaga
    Records.


    *4 Defendants Interscope Records and Songs of Universal filed this motion to
    dismiss the complaint on February 13, 2001. On March 8, 2001, the Court granted
    defendants' motion as unopposed. At plaintiff's request, the Court vacated the order
    of dismissal on March 15, 2001, and granted plaintiff additional time to respond in
    accordance with a schedule agreed upon by the parties. On June 11, 2001, the Court
    gave notice to the parties that this motion would be treated as one for summary
    judgment pursuant to the last sentence of Rule 12(b)(6) and provided the parties
    with additional time to submit relevant material. The Court did not receive from
    plaintiff certain documents which it had directed plaintiff to produce until
    February 12, 2002. [FN9]


    FN9. See supra note 7.


    DISCUSSION

    Summary judgment is proper where all the evidence shows that "there is no genuine
    issue as to any material fact and that the moving party is entitled to a judgment as
    a matter of law." Fed.R.Civ.P. 56(c); see also Celtox Corp. v. Catrett, 477 U.S.
    317, 322-33 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986);
    Matshushita Electric Ind. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986).
    The Court may consider affidavits submitted by the parties to the extent that they
    are "made on personal knowledge [and] set forth such facts as would be admissible in
    evidence." Fed.R.Civ.P. 56(e); see also Celtox Corp. v. Catrett, 477 U.S. at 324;
    Santos v. Murdock, 243 F.3d 681, 683 (2d Cir.2001); Randell v. United States, 64
    F.3d 101, 109 (2d Cir.1995).

    The doctrine of issue preclusion, or collateral estoppel, bars a party from
    relitigating in a second proceeding an issue that was decided in a prior proceeding.
    Allen v. McCurry, 449 U.S. 90, 94 (1980); Metromedia Co. v. Fugazy, 983 F.2d 350,
    365 (2d Cir.1992); see generally 18 James Wm. Moore et al., Moore's Federal Practice
    132 (3d ed.2000); Restatement (Second) of Judgments 27 (1982).
    The doctrine represents a policy choice in favor of judicial efficiency sometimes at
    the expense of correctness. Gelb v. Royal Globe Ins. Co., 798 F.2d 38, 44 (2d
    Cir.1986); see also Montana v. United States, 440 U.S. 147, 153-54 (1979). This
    policy serves the interests of litigants and the judiciary. Montana v. United
    States, 440 U.S. at 154-55; Greene v. United States, 79 F.3d 1348, 1353 (2d
    Cir.1996).

    The doctrine of mutuality once limited issue preclusion to disputes between the
    parties to the first litigation, but now other parties may assert issue preclusion
    either offensively or defensively. Parklane Hosiery Co. v. Shore, 439 U.S. 322, 331
    (1979) (permitting nonmutual offensive issue preclusion); Blonder-Tongue Lab., Inc.
    v. University of Ill. Found. 402 U.S. 313, 350 (1971) (permitting nonmutual
    defensive issue preclusion). For example, a company that has failed to prove that it
    owns a valid patent in a litigation against one alleged infringer may be precluded
    from suing other entities for patent infringement. See, e.g., Blonder-Tongue, 402
    U.S. at 350; Stevenson v. Sears, Roebuck & Co., 713 F.2d 705, 709 (Fed.Cir.1983).

    *5 For issue preclusion to apply, the issues in the current proceeding and the
    prior proceeding must be identical, and the controlling facts or legal principles
    must not have changed significantly. Furthermore, the issue in the prior proceeding
    must have been actually litigated and decided and must have been necessary to
    support a valid and final judgment on the merits. Nevertheless, issue preclusion
    should not apply where a party lacked a full and fair opportunity to litigate the
    issue in the prior proceeding or where other special circumstances are present. See
    Montana, 440 U.S. at 155 (formulating three-part test for issue preclusion); Gelb,
    798 F.2d at 44 (formulating four-part test). Ultimately, the application of issue
    preclusion should "rest on the trial courts' sense of justice and equity."
    Blonder-Tongue, 402 U.S. at 334.

    Defendants assert that plaintiff actively litigated the issue of copyright
    ownership in the Profile case and that the court decided that plaintiff does not own
    valid copyrights in either the composition or the recording of "Impeach the
    President." Defendants argue that plaintiff therefore should be precluded from
    relitigating the same issue in this case.

    Plaintiff advances multiple reasons why issue preclusion should not apply in this
    case. Several of plaintiff's arguments are completely without merit and can be
    dismissed with little discussion.

    First, plaintiff argues that "given the improper legal standard applied, and the
    lack of evidentiary foundation for its finding, the Profile court improperly reached
    its finding." Pl. Brief at 10. This Court may not review the decision in the prior
    proceeding for error; such appellate-style review would completely nullify the
    doctrine of issue preclusion. See Stevenson, 713 F.2d at 709 ("[A]n in appropriate
    inquiry is whether the prior finding of invalidity was correct ....") (emphasis
    added); see also Gelb, 798 F.2d at 44 ("Reexamination of an issue may well
    demonstrate that its previous resolution was incorrect, as a result of such factors
    as better evidence, better advocacy, or better decision-making .... [but] judicial
    efficiency demands that there be an end to litigation at some point.").

    Second, plaintiff argues: "In Profile, the Court found that Tuff City was unable to
    sustain its burden of demonstrating that the copyright to Impeach was validly owned.
    However, the court did not hold that the copyright registration was invalid." Pl.
    Brief at 11 (emphasis in original). It is irrelevant for purposes of issue
    preclusion that the court in the prior case held that plaintiff did not prove that
    it was the owner of a valid copyright rather than holding that plaintiff was not in
    fact the owner of a valid copyright. The decision in the prior proceeding was on a
    motion for summary judgment and so dealt with the sufficiency of the proof offered
    by plaintiff. Decisions on summary judgment are entitled to full preclusive effect.
    Stevenson, 713 F.2d at 712; Scripps Clinic & Research Found. v. Baxter Travenol
    Lab., Inc., 729 F.Supp. 1473, 1475 (D.Del.1990); see also Moore, supra, at
    132.03[2][j].

    *6 Third, plaintiff argues:
    Although it did reach a determination on the issue of ownership, the Profile court
    based its decision on the fact that it found no substantial similarity between the
    copyright-in-suit and the accused works. Indeed, in granting summary judgment, the
    Profile court held: "Having carefully assessed the three musical works, the Court
    concludes that neither 'Back from Hell' nor 'Dana Dane with Fame' is substantially
    similar to 'Impeach the President.' Therefore, summary judgment is granted in favor
    of defendants." At no point did the Profile court indicate that the grant of
    summary judgment was based upon the ownership findings.
    Pl. Brief at 11-12. Contrary to plaintiff's assertion, the court in Profile did
    base its decision on plaintiff's failure to prove copyright ownership. At the outset
    of the court's discussion, the court stated: "In the context of copyright
    infringement, courts have regularly granted summary judgment where it is 'clear'
    that the plaintiff cannot make out the essential elements of the claim.... In this
    case, plaintiff has demonstrated neither that it owns a valid copyright nor that
    defendants engaged in unauthorized copying." 1997 WL 158364, at *2. The court then
    proceeded to analyze the issues of copyright ownership and unauthorized copying in
    separate sections. Plaintiff misrepresents the court's holding by quoting only from
    the latter section. Where a court's decision is based on alternate holdings, each
    separate holding is considered to be necessary to the judgment for purposes of issue
    preclusion. Gelb, 798 F.2d at 45 (stating general rule in Second Circuit), citing
    Irving National Bank v. Law, 10 F.2d 721, 724 (2d Cir.1926) (L.Hand, J.). Exceptions
    to this general rule have been strictly limited. See Winters v. Lavine, 574 F.2d 46,
    67 (2d Cir.1978) (limiting exception to bankruptcy context).

    Fourth, plaintiff asserts that issue preclusion should not apply because plaintiff
    clearly owns the copyrights to "Impeach the President" and defendants have clearly
    infringed on those copyrights. Pl. Brief at 21-22. These issues are by no means
    uncontested. Regardless, a party may not avoid the application of issue preclusion
    merely by arguing that it expects to succeed on the merits.

    The remaining arguments advanced by plaintiff require more discussion. Plaintiff
    contends that the 1999 and 2001 Agreements establish a new chain of title and
    therefore that the factual issues in this case are not identical to the factual
    issues decided in Profile. The existence of new facts may sometimes prevent the
    application of issue preclusion. Montana, 440 U.S. at 159 ("[C]hanges in facts
    essential to a judgment will render collateral estoppel inapplicable in a subsequent
    action raising the same issues ."); see also Greene, 79 F.3d at 1353 ("[D]etermining
    the scope of an issue previously litigated is '[o]ne of the most difficult problems
    in the application' of issue preclusion ....") (quoting Restatement (Second) of
    Judgments 27 cmt. c (1980)). In this case, however, the new agreements do
    not raise any issues of fact that were not decided in Profile.

    *7 The court in Profile noted that plaintiff had offered evidence of a transfer of
    copyright from Hammond to plaintiff:
    Tuff has produced copies of two written agreements, both signed by Hammond as
    licensor. The first agreement, dated March 22, 1988, licenses Tuffs [sic]
    predecessor to use "Impeach the President" in exchange for $100.... The second
    agreement, dated July 24, 1990, purports to make Tuff the exclusive licensee of
    "Impeach the President."
    1997 WL 158364, at *2. What plaintiff failed to prove in Profile was that Alaga
    Records was the original copyright holder and that Hammond, as founder and sole
    owner of Alaga Records, had authority to transfer the copyright to plaintiff. In
    fact, plaintiff argued to the court in Profile that Alaga Records was not the
    original copyright holder. The court explained plaintiff's failure of proof as
    follows:
    Tuff has produced no evidence affirming that Hammond himself had any rights to
    convey the work....
    However, there is evidence available on the record itself as to who possessed the
    original copyright in "Impeach the President"-the sound recording contains the
    letter "P" in a circle, the date "1973," and the name "Alaga." ... Thus, the only
    sound evidence before this Court that indicates who owned the original copyright in
    "Impeach the President" is that "Alaga" was that owner.... Tuff offers no proof
    explaining how, when, or if Alaga transferred copyright ownership to Hammond, which
    would have had to occur by written instrument memorializing such a transfer....
    ... Tuff argues that there is no proof that Alaga owned the copyright in the song.
    In support of this argument, Tuff relies on a 1982 agreement that Fuchs purportedly
    entered into with Hammond .... the agreement does not provide any evidence that the
    copyright in "Impeach the President" did not belong to Alaga or did belong to
    Hammond.
    Because Tuff has no direct knowledge of who owned the original copyright in
    "Impeach the President," cannot explain why the copyright notice on the 1973 single
    states Alaga is the owner, and produces no contrary evidence from any person
    qualified to testify about these matters, the Court concludes that Tuff has not met
    its burden of proving it is the owner of a valid copyright.
    1997 WL 158364, at *2-3, 3 n. 3.

    The 1999 and 2001 Agreements, which plaintiff offers as new evidence, simply
    reexecute the transfer to plaintiff from Hammond. The court in Profile did not find
    that plaintiff failed to offer evidence of a transfer to it of a purported copyright
    in "Impeach the President." What the court found was that plaintiff failed to offer
    evidence concerning the original copyright ownership of "Impeach the President" and
    the right of Hammond to transfer copyright. The new evidence obtained by plaintiff
    does not create new issues of fact relating to the original copyright ownership of
    "Impeach the President" or the right of Hammond to transfer copyright, and
    application of issue preclusion properly prevents plaintiff from relitigating these
    issues.

    *8 It should be noted that plaintiff's reliance on the 1999 and 2001 Agreements is
    problematic in other respects as well. First, the 2001 Agreement is missing a
    signature page. Rule 56(e) of the Federal Rules of Civil Procedure requires that
    affidavits supporting or opposing a motion for summary judgment "shall set forth
    such facts as would be admissible in evidence...." See also Santos, 243 F .3d at
    683. Second, both the 1999 Agreement and the 2001 Agreement were executed subsequent
    to the filing of this case on October 8, 1999. See Delacroix v. Lublin Graphics,
    Inc., 993 F.Supp. 74, 83 (D.Conn.1997) ("The one remaining problem with plaintiff's
    assignment theory is that it is based upon an agreement entered into two years after
    this lawsuit was filed. To the extent that plaintiff seeks to establish his standing
    to bring this lawsuit based upon this assignment, it was too late to confer standing
    that did not already exist. Plaintiff must show standing at the time he filed his
    complaint."), citing Lujan v. Defenders of Wildlife, 504 U.S. 555, 569 n. 4 (1992)
    and Newman-Green, Inc. v. Alfonzo-Larrain, 490 U.S. 826, 830 (1989).

    Plaintiff's final and strongest argument is that special circumstances at the time
    of the Profile proceeding, particularly the incompetence of its former attorney, Hy
    Shore, deprived it of a full and fair opportunity to litigate the summary judgment
    motion in Profile.

    When the Supreme Court in Blonder-Tongue first abrogated the mutuality requirement
    for issue preclusion, it adopted, as "a most significant safeguard," "the
    requirement of determining whether the party against whom an estoppel is asserted
    had a full and fair opportunity to litigate." 402 U.S. at 328. The Court permitted
    the defendant in that case to invoke issue preclusion to prevent the plaintiff from
    relitigating the validity of its patent where that patent had been found invalid in
    a prior proceeding involving a different defendant. The Court concluded that
    patentees should not be permitted to "relitigat[e] validity issues as long as new
    defendants are available. This is especially true if the court in the second
    litgation must decide in a principled way whether or not it is just and equitable to
    allow the plea of estoppel in the case before it." Id. at 334.

    "Determining whether a [plaintiff] has had a full and fair chance to litigate the
    validity of his [claim] in an earlier case is of necessity not a simple matter....
    In the end, decision will necessarily rest on the trial courts' sense of justice and
    equity." Blonder-Tongue, 402 U.S. at 333-34. Some appropriate considerations are the
    plaintiff's incentive to litigate vigorously the first action, the presence of
    procedural opportunities in the second action that were unavailable in the first
    action, and the existence of inconsistent judgments. Blonder-Tongue, 402 U.S. at
    333-34; Parklane Hosiery, 439 U.S. at 330-331. Another recognized factor is "whether
    without fault of his own the [plaintiff] was deprived of crucial evidence or
    witnesses in the first litigation." Blonder-Tongue, 402 U.S. at 333. [FN10]


    FN10. Under New York law, one of the factors to be taken into account in
    determining whether a party had a full and fair opportunity to litigate in a
    prior proceeding is "the competence and expertise of counsel." Hickerson v. City
    of New York, 146 F .3d 99, 109 (2d Cir.1998) (internal quotation marks and
    citation omitted). The parties have not brought to the Court's attention any
    case holding that attorney incompetence is a factor that may appropriately be
    considered in applying the doctrine of issue preclusion under federal law.


    *9 Ordinarily, parties are bound by the acts of their freely-chosen attorneys. Link
    v. Wabash R.R. Co., 370 U.S. 626, 633-34 (1962) ("Petitioner voluntarily chose this
    attorney as his representative in the action, and he cannot now avoid the
    consequences of the acts or omissions of this freely selected agent."); accord Davis
    v. United Fruit Co., 402 F.2d 328, 331 (2d Cir.1968). The circumstances of this
    case, however, rise above misconduct or incompetence. Plaintiff was first denied
    access to its files by Shore during the same month, July of 1996, that the motion
    for summary judgment in Profile was filed, and Shore terminated his relationship
    with plaintiff in September of 1996, seven months before the court decided the
    motion. Plaintiff was unable to gain access to any of its legal files until
    September of 2000, well after the Profile case was closed. It is apparent that Shore
    was no longer acting as the freely-chosen agent of plaintiff during the pendency of
    the summary judgment motion in Profile. The termination of plaintiff's relationship
    with Shore, and particularly Shore's refusal to allow plaintiff access to legal
    files and his complete disregard of important evidence provided to him by the
    plaintiff, deprived plaintiff of the opportunity to present crucial evidence to the
    court.

    The question arises, however, whether plaintiff had a fair opportunity to challenge
    the summary judgment decision in Profile through new counsel, CGS, which plaintiff
    hired prior to the close of the Profile case. [FN11] See United States Postal Serv.
    v. Gregory, 534 U.S. 1, 122 S.Ct. 431, 439 n. 2 (2001) (Ginsburg, J., concurring)
    ("It is well settled that one who fails timely to appeal an adverse decision is
    bound by that decision in later proceedings."); Irish Lesbian and Gay Org. v.
    Giuliani, 143 F.3d 638, 646 (2d Cir.1998) ("ILGO did have a full and fair
    opportunity to litigate the issue in that it could have appealed the district
    court's dismissal of the facial challenge."); Gelb, 798 F.2d at 44 ("[F]ailure to
    appeal does not prevent preclusion...."). Plaintiff unsuccessfully moved for
    reconsideration of the summary judgment decision and had the opportunity to move for
    relief from the judgment or appeal the judgment. The availability of these options,
    however, did not substantially restore plaintiff's "full and fair opportunity" to
    litigate the summary judgment motion.


    FN11. Plaintiff makes no mention in its brief of the fact that it obtained the
    representation of CGS in the Profile case or the fact that CGS filed a motion
    for reconsideration, which was denied.


    CGS made a timely motion on behalf of plaintiff for reconsideration of the Profile
    court's decision on summary judgment. CGS brought to the court's attention the fact
    that Shore had failed to present evidence provided to him by plaintiff on the issue
    of copyright ownership and that Shore had been held in contempt of court due to his
    misconduct in his representation of plaintiff. Motions for reconsideration should be
    limited, however, to "matters or controlling decisions which counsel believes the
    court has overlooked." S.D.N.Y. Local Civ. R. 6.3. Accordingly, the court denied
    plaintiff's motion for reconsideration on the ground that plaintiff "merely
    attempted to assert new legal theories in support of its original position and to
    introduce evidence that could have been adduced during the pendency of the original
    motion." Order filed May 1, 1997, at 2. Thus, plaintiff was unable, through a motion
    for reconsideration, to present to the court evidence which Shore had failed to
    offer in opposing the motion for summary judgment.

    *10 Plaintiff did not move for relief from the judgment under Rule 60 of the
    Federal Rules of Civil Procedure. It is possible that had plaintiff made such a
    motion, the court, in its discretion, would have found it equitable to vacate the
    judgment to allow plaintiff to submit additional evidence in opposition to the
    motion for summary judgment. There is a strong possibility, however, that the court
    would have denied such a motion in fairness to the defendants in that case. The
    defendants had expended time and effort in litigating the motion for summary
    judgment. Additionally, the defendants had been prejudiced by Shore's misconduct,
    and the plaintiff's misconduct, during litigation. In its order dated August 15,
    1997, granting the defendants' motion for an award of attorneys' fees and costs, the
    court noted the "consistently obstreperous conduct" of both plaintiff and
    plaintiff's attorney during discovery and failure of plaintiff's attorney "to
    research properly the law or facts involved in [plaintiff's] claims." 1997 WL
    470114, at *1. Therefore, there was a slim possibility that a motion for relief from
    the judgment would have been successful, but that slim possibility did not restore
    to plaintiff a "full and fair opportunity" to litigate the summary judgment motion.

    Plaintiff also chose not to appeal the summary judgment decision. However, an
    appeal would also not likely have given plaintiff the opportunity to introduce
    evidence which Shore had failed to offer in opposing the motion for summary
    judgment. "Because the function of the circuit court is to review district court
    decisions, the record is, with minor exceptions ..., limited to material that was
    presented to the district court." 20 Moore's Federal Practice 310 . 02[1]
    (3d ed.2001).

    In sum, the appearance of CGS on behalf of plaintiff in the Profile case happened
    after the damage, irreparable as a practical matter, had already been done. The
    termination of the relationship between plaintiff and Shore denied plaintiff a "full
    and fair opportunity" to litigate the summary judgment motion, and the presence of
    new counsel did not substantially restore that opportunity. While plaintiff's
    decision not to move for relief from the judgment or appeal the judgment may
    preclude plaintiff from collaterally attacking the judgment, it does not preclude
    plaintiff from avoiding the preclusive effect of that judgment in an action with
    different parties.

    It is worth emphasizing the difference between avoiding the effect of a judgment as
    between the parties to the original case and avoiding the preclusive effect of the
    judgment in a subsequent action involving different parties. The defendants in
    Profile fully litigated the issue of copyright ownership and endured the additional
    hardship imposed on them by the misconduct and unprofessionalism of Shore. On the
    other hand, the defendants in the present case have not yet litigated the issue of
    plaintiff's copyright ownership and were not prejudiced by the conduct of
    plaintiff's attorney in Profile. Different concerns are implicated by nonmutual
    issue preclusion than by mutual issue preclusion. A party seeking nonmutual issue
    preclusion is not seeking to be protected from "the expense and vexation attending
    multiple lawsuits." Montana, 440 U.S. at 154-55. Therefore, in the context of
    nonmutual issue preclusion, courts give greater consideration to the party against
    whom issue preclusion is sought by examining whether that party had "a full and fair
    opportunity to litigate." Id. at 328. In this case, plaintiff was unfairly deprived
    of the opportunity to submit crucial evidence to the court in Profile, and it is not
    unfair to the present defendants to decline to apply issue preclusion under such
    circumstances.

    CONCLUSION

    *11 For the reasons discussed above, I conclude that the doctrine of issue
    preclusion does not prevent plaintiff from relitigating the issues relating to
    copyright ownership that were decided by the court in Tuff 'N' Rumble Management,
    Inc. v. Profile Records, Inc., No. 95 Civ. 0246, 1997 WL 158364 (S.D.N.Y. Apr. 2,
    1997). Therefore, defendants' motion for summary judgment is denied.

    Defendants are directed to file and serve their answer to the Complaint not later
    than June 21, 2002.

    The parties are directed to hold a Rule 26(f) conference within twenty-one (21)
    days after service of the answer and to comply fully with the requirements of that
    rule.

    It is SO ORDERED.

    2002 WL 1058059 (S.D.N.Y.), 2002 Copr.L.Dec. P 28,445

    END OF DOCUMENT

  • LaserWolfLaserWolf Portland Oregon 11,517 Posts
    From the above it seems, not only are the melody and lyrics copyrighted, but the sound recording is as well.

    My guess is that most vintage sound recordings are owned by the label, not the artist.
    Thus, I assume, the horn part, keyboard loop, or drum pattern, are owned by the label.
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