The return of the C. Aguilera sample controversy
DJ_Enki
6,475 Posts
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
did they think no one would know on some secret squirellness
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?
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:
So I guess the lawsuit is saying that they cleared it with the wrong people.
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:
bb/w
http://www.spectropop.com/MoonPeople/index.htm
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.
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."
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.
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.
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...
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.
BMI data base
Something else is happening here, the hint is
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?
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
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
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.