Opposition To Motion For Judgment On Pleadings

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LAW OFFICES OF COTJRTNEY M. COATES
COURTNEY M. COATE$, ESQ. (Bar No. 203448)
26201 Ynez Road, Ste. 103
Temecul a. CA 92591
Tel ephone: ( 95 1) 595- 8118
Facsi mi l e:
(95
l ) 296-2186
ccoateslaw@gmail.com
Attorneys for Plaintiffs TRENA STEWARD"
LORENZO PRYOR, ANd KARLA RAY
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
TRENA
PRYOR.
STEWARD,
and KARLA
LORENZO
RAY
Plaintiffs,
V.
KANYE WEST; IJMG
RECORDINGS, INC.; ROC-A-
FELLA RECORDS, LLC; THE
ISLAND DEF JAM MUSIC
GROUP; BAD BOY RECORDS
LLC; CAROLINE DISTRIBUTION;
STONES THROW RECORDS;
BOMB HIP HOP RECORDS:
ATJTUMN GAMES, LLC;
ACTIVIS ION BLIZZARD., INC.
;
ELECTRONIC ARTS, INC.;
KONAMI DIGITAL
ENTERTAINMENT, INC.,
TERMINAL REALITY, INC., FAT
BEATS RECORDS; PARAMOUNT
PICTURES CORPORATION;
NBCLINIVERSAL, INC. dbA
UNIVERSAL PICTURES; JAKE
RECORDS: WARNER BROS.
ENTERTAINMENT, INC.,
i ncl usi ve,
No. CVr3-02449 BRO (JCx)
[Rel ated
Case No. 14-01588 BRO (JCx)]
PLAINTIFFS' MEMORANDUM IN
OPPOSITION TO DEFENDANTSO
MOTION FORJUDGMENT ON THE
PLEADINGS
Acti on Fi l ed: Apri l 5,2013
Heari ng Date: Jul y 14,2014
Ti me: l : 30 p. m.
Courtroom: 14
lF
il ed contempqrangqys ly w ith P I q i4tffi
'
Request
for
Judicial lVotfce, Exs. I
-7;
"
De^claraTion of Courtney M. Coates; Written
Obj e c t ions to" Evidence]
Defendants.
PLAI NTI FFS' I UEMORANDUM I N OPPOSI TI ON TO DEFENDANTS' MOTI ON FOR JUDGMENT ON
THE PLEADI NGS
Case 2:13-cv-02449-BRO-JC Document 138 Filed 06/23/14 Page 1 of 31 Page ID #:1731
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TABLE OF CONTENTS
TABLE OF ATJTHORITIES
...... iii
I. PRELIMINARY STATEMENT
......2
i l . FACTUAL BACKGROLIND
......... )
III. LEGAL AI.JTHORITY .
..... )
A. Legal Standard.
....... 5
B. Plaintiffs State A Claim for Direct and Contributory Infringement
As A Mat t er of Law
. . . . . . . 6
1. An Artist's Original Vocal Performance
-
Whether Spoken,
Rapped, or Sung
-
Is Protected lJnder the Copyright Act, Once
Fi xed, If It Evi nces the Sl i ghtest Degree of Creati vi ty .....8
2. Di rect Copyi ng Is Suffi ci ent to Survi ve a Moti on to Di smi ss ...... 11
3. De Minimis Use is Not A Freestanding Defense But Subsumed
Wi thi n the Fai r l Jse Defense; Courts Hol d "Fai r l Jse" Is A
Mi xed
Quest i on
of Law and Fact . . . . . . . 13
4. Pryor's Vocal Performance Is Not De Minimis Because the
Copyright Act Guarantees Payment of Royalties for "Non-
Featured Vocalists" Performing on Sound Recordings .. 15
C. The Courl May Properly Declare that Plaintiffs Have A Beneficial
Ownership Interest In His Performances on the lJnauthorized Sound
Recordi ngs under the Copyri ght Act ...... 18
D. The Declaratory Relief Claims Are Not Time-Barred Because
There Could Be No "Open And Express" Repudiation Prior to
Plaintiffs Discovery of the Infringements and Before Plaintiffs
Had Standi ng to Sue as Benefi ci al Owners ..20
E. Plaintiffs May Recover Statutory Remedies Based on the Private
Stock Regi strati on, Whi ch Pri vate Stock Assi gned to Pl ai nti ffs .....22
PLAI NTI FFS' MEMORANDUM I N OPPOSI TI ON TO DEFENDANTS' MOTI ON FOR JUDGMENT ON
THE PLEADI NGS
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l .
TABLE OF CONTENTS
(conti nued)
The Private Stock Registration Is Not Invalid for Misattributions
of Authorshi p, Absent a Showi ng of Fraud or Prej udi ce .......22
Private Stock Assigned Its Valid Registration to Plaintiffs,,
Whi ch Reserved Pl ai nti ffs' Ri eht to Statutory Remedi es .....24
I V. CONCLI . JSI ON
. . . . . . . . 25
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TABLE OF AUTHORITIES
Cases
Aalmuhammed v. Lee,
202 F. 3d 1227
( 9t n
Ci r . 2000) . . . . 25
Amini Innovation Corp. v. McFerran Home Furnishings, Inc.,
No. CV 13- 6496 RSWL
( SSx) . . . . . . 16
, 19
Arnstein v. Porter,
154 F . 2d 464
(2d
Ci r. 1946) . . . . . . . 16
Bridgeport Music, Inc. v. Dimension Films,
410 F. 3d 792 (6t h
Ci r. 200s) . . . . . . . . 18
Broadcast Music, Inc. v. Hirsch,
104 F. 3d I 163
( 9' h
Ci r . t ggT) . . . . 27
Brocade Communications Systems, Inc. v. AI0lVetworks, Inc.,
No. C 10- 3 428 PSG, 2013 WL 83 1528, dt * 8
( N. D.
Cal . Jan. 10, 2013) . . . . . . . . 19
Cafasso v. General Dynamics C4 Sys., Inc.,
637 F. 3d 1047
( 9t n
Ci r . 2011) . . . . . . . . . . . . . 6
Campbell v. AcuffRose Music, Inc.,
s 10 u.s . s6e
(ree4) r 6, 17
Datastorm Technologies, Inc. v. Excalibur Communications, Inc.,
888 F. Supp . 112 ( N. D. Cal . 1995) . . . . . . . . . 28
Downing v. Abercrombie & Fitch,
26s F. 3d994 ( gt hCi r . 2001) . . . . . . . I 1
Effects Associates, Inc. v. Cohen,
908 F . 2d 555
( 9' n
Ci r . 1990) . . . . . . . 24
Elsmere Music, Inc. v. JVational Broadcasting Co.,
482 F. Supp . 7 41 ( S. D. N. Y. 1980) 11, 14
Feist Publications, Inc. v. Rural Telephone Service Co.,
499 r J. S . 340
( 1991) . . .
. 7
, 9
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Cases
-
conti nued
Fisher v. Dees,
794 F . 2d 432 (9' n Ci r. 1986) 17, 18
funlry Films, Inc. v. Time Warner Entertainment Co., L.P.,
462 F. 3d 1072 (9t h
Ci r. 2006) . . . . . . . 7
Garcia v. Google, Inc.,
743F. 3d 1258( 2014) . . . . . . 10, 11, 23
Hal Roach Studios, Inc. v. Richard Feiner & Co.,
896 F .2d 1542 (9th
Ci r. 1990)
Harris v. Emus Records,
734 F . 2d t 329
( 9' n
Ci r . 1984) . . . . . . 28, 30
Koerner v. Grigas,
328 F. 3d 1039 ( 9t h
Ci r . 2003) . . . . . . . . . . . . 18
Laws v. Sony Music Entertainment, Inc.,
448 F. 3d t t 34
( 9' h
Ci r . 2006) . . . . . . r 2
M.M. Business Forms Corp., v.
(Jarco,
Inc., Inc.
472F. 2d t t 37
( 6' h
Ci r . t g73) . . . . . . 10
Midler v. Ford Motor Co.,
849 F. 2d 460 ( 9' h Ci r . 1988) . . . . . . . . . 1 1
l{arell v. Freeman,
872 F . 2d 907 ( 9' n Ci r . I 989) . . . . . . . . 8
lr{ewton v. Diamond,
204 F. Supp . 2d at 1249-50. 10, 12, 17
l\lewton v. Diamond,
388 F. 3d 1189 ( g' n Ci r . 2003) . t 4, 19
lVorse v. Henry Holt & Co.,
991 F. 2d 563 ( 9' n Ci r . 1993) . . . . . . . 7, 8, 16, 19
PLAI NTI FFS' MEMORANDUM I N OPPOSI TI ON TO DEFENDANTS' MOTI ON F' OR JUDGMENT ON
THE PLEADI NGS
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Cases
-
conti nued
Pryor v. Jean,
CVI 3-02867 DDP
(AJWx). . . . . 5, 29
Pryor v. Warner/Chappel,
13- CV- 04344 RSWL
( AJWx) , ( C. D.
Cal . June 20, 2014) . . . . 5, 12, 13, 15
-
Range Road Music, Inc. v. East Coast Foods, Inc.,
668 F. 3d I 148
( 9t n
Ci r . 2012)
. . . . 7, 8
Ringgold v. Black Entertainment Television, Inc.,
126F. 3d70( 2dCi r . 1997)
. . . . . . . . 19
Rogers v. Koons,
960 F . 2d 30r
(2d
Ci r. 1992)
. . . . . . . . 1 0
S. O. 5.. Inc.,
886 F . 2d 1081
( 9' h
Ci r c. 1989) . . . . 28
Santrayll v. Burrell
39 I J. S. P. Q. 2d r0s2 (S. D. N. Y. I ee6). . . . . . . 10
Seltzer v. Green Day, Inc.,
725 F. 3d I t 70
( 9' n
Ci r . 20t 3) . . . . . . . 17
Seven Arts Filmed Entertainment v. Content Media Corp.
733 F. 3d 1251 (9t h
Ci r. 2013) . . . . . . 24, 25
SO7A Entertainment, Inc. v. Dodger Prods., Inc.,
709 F. 3d 1273
( 9t n
Ci r . 2013) . . . . . . . . . . . . 16
Sutter Home Wiryery, Inv v. Vintage Seclections, Ltd.,
971F. 2d 401
( 9' n
Ci r . 1992) . . . . . . . . . . 6
Swirslry v. Carey,
376 F. 3d 841
( 9t h
Ci r . 2004) . . . . . . . . 18
Three Boys Music Corp v. Bolton,
212 F. 3d 477
( 9t h
Ci r . 2000) . . . 8, 16
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Cases
-
conti nued
Tin Pan Apple, Inc. v. Miller Brewing Co., Inc.,
30 u. s. P. Q. 2d r 79l ( S. D. N. Y . 1994) . . . . . . . . I I
(Jrantia
Foundation v. Burton,
2010 U. S. P.
Q.
217 ( W. D Mi ch. 1980) . . . 28
(Jrantia
Foundation v. King,
I 94I J. S. P. Q. 17I (C. D. Cal . t e77)
I,Jrantia
Foundation v. Maaherra^
1 14 F. 3d 955
(g' h
Ci r . t ggl ) 28
VMG Valsoul, v. Madonna Louise Ciccone, et al.,
2: 12-I v-05967-BRO-CW,
*
4, f i l ed 1129114, Docket No. 29). . . . . 13
, 14
World Auxilliaryt Power Co.,
3 03 F. 3 d 1 t20
(9' n
Ci r . 2002\ .....27
Zuill v. Shanahan,
80 F. 3d 1366
(9' h
Ci r . 1996) . . . . . . . 25
Statutes
r 7r J. s. c.
$
10r . . . . . . . . . . 10
t 7t J. s. c.
$
102 9, 19, 20
17
r J. s. c.
$
107 . . . t 4
17
r J. s. c.
$
1 I 4. . . . . . . . . . . . 3
| 7r J. S. C.
$
r 18. . . . . . . . . . 16
17
r J
. S. C.
$20
1 . . . . 26
t 7
r J. s. c.
$20s
. . . . 26
H.R.Rep. No. 94-1476,94th Cong., 2d Sess. 56, repri nted i n 1976 u.S.
Code Cong. & Ad. News 5659, ..... 10
Other Authori ti es
2Howard B. Abrams, The Law of Copyri ght
$
14: 10 (2011). . . . . . 7
Mel vi l l e & Davi d Ni mmer , Ni mmer on Copyr i ght ( MB r ev. ed. 2011) . . . . 11
, 76, 23
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Plaintiffs Trena Steward, Lorenzo Pryor, and Karla Ray respectfully submit
their opposition to the motion for
judgment
filed by all moving and
joining
defendants. As demonstrated below, the motion should be denied on both
proceduralr and substantive grounds.
I. PRELIMINARY STATEMENT
Plaintiffs seek
justice
for their deceased father, David Pryor, who wrote and
recorded Bumpin' Bus Stop in 1974. Little did he know that the recording,
specifically his rap-style introductory performance, would become one of the most
sampled recordings in rap music history. In their motion, and distinguished from
the VMG and Duckhole cases upon which Defendants rely, Defendants concede
that they directly copied Pryor's recorded vocal performance and incorporated
Pryor's distinct voice into the hooks of unauthorized sound recordings, such as
"Gol d Di gger," sel l i ng mi l l i ons of copi es throughout the worl d.'
All of Defendants' arguments concerning non-infringement were argued and
likewise rejected by the Honorable Judge Ronald Lew in a recent decision, Pryor
v. Warner/Chappel Musi c,l 3-CV
-04344
RSWL (AJWx), (C.D.
Cal . June 20,
2014).) In response to a motion to dismiss, the district court compared the
i nfri ngi ng recordi ng, "Get Down," wi th Pryor' s
"Bumpi n'
Bus Stop," and
determi ned that Pryor' s performance of
"Get
down" i s suffi ci entl y ori gi nal . Al so,
the district court found that the defendants' alleged copying of Pryor's "Get down"
perf ormance was not de mi ni mi s. (RJN, Ex. 1, pp. l 3-I 7)
But there is an even more compelling reason to reject Defendants' de
minimis use argument. Even relatively minor, "non-featured vocalists" are
'Even
in the case of VMG, as a
procedural matter, the district court DENIED the
t
In "Gold Digger," Defendants^sampled Pryor's vocal performance of
'1Get
Down" and repeatedly used him as a background vocalist to create the hook: "Get
down gi rl , go' head get down." To create a ful l er sound, Pryor' s di sti nct voi ce and
i s cl earl y heard behi nd West' s l ead vocal , where Pryor excl ai ms: "Get down!"
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guaranteed statutory royalties for their individual performances on sound
recordi ngs. (17
TJ.S.C.
11a(g)(2)(C), (D).) Defendants now seek to establ i sh a
dangerous precedent within the record industry that, if permitted by this Court,
would enable major record companies to evade the mandatory compensation
scheme guaranteed to "non-featured" recording artists under the Copyright Act.
By digitally sampling recording artists' vocal performances from prior recordings
and, as here, looping their voices to create a hook and/or background vocal,
Defendants obtain a windfall by excluding non-featured recording artists, such as
Pryor, from their statutorily mandated royalty participation. This Court must
protect non-featured artists' copyright interests in their individual performances.
First, as rejected in Pryor v. Warner/Chappell,Defendants err as a matter of
law in arguing that Pryor's distinct voice and performance, once fixed, were not
sufficiently original to warrant copyright protection because, according to
Defendants, his performance of these words were spoken, as opposed to rapped or
sung. The Copyright Act certainly protects all forms of performances, once fixed
i n a tangi bl e medi um, i f they evi nce the sl i ghtest creati vi ty.
Second, even assuming the direct copying of Pryor's vocal performance on
these sound recordings were relatively minor (which they were not), as held in
Pryor v. Warner/Chappell and Ringgold they are not de minimis as a matter of law.
Again, the Copyright Act clearly protects even relatively minor performances by
non-featured recording artists who participate on sound recordings. (See 17
IJ.S.C.
$
l la(g)(2).) As in Ringgold,Defendants' de minimis use argument lack merits
because the Copyright Act recognizes the minor contributions of non-featured
recording artists and
recordi ngs.
mandatescompensation for their performance on sound
Third, the Ninth Circuit held in l/orse that de minimis use is not a
freestanding defense but rather subsumed within the doctrine of
"fair
use." The
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di stri ct court must consi der al l other el ements, not
j ust
de mi ni rui s use, to
determi ne whether the fai r use excepti on appl i es.3
Fourth, Defendants err in asking this Court to read too narrowly and
mi si nterpret the decl aratory rel i ef cl ai ms to onl y al l ege
j oi nt
authorshi p when, i n
fact, Plaintiffs plainly allege that they are
"beneficial
co-owners" of the works at
i ssue, thereby enti tl i ng them to an equi tabl e accounti ng and royal ti es. Both
featured and non-featured recording artists performing on sound recordings are
entitled to statutory royalties under the Copyright Act.
Fifth, Defendants err in arguing that it is apparent on the face of the
pleadings that declaratory relief is barred by the statute of limitations. Under Zuill
and Seven Arts, an
"open
and express repudiation" requires express notice and
direct communication to the claimed beneficial co-owner that their interests are
repudi ated. Thi s di d not occur.
Lastly, Defendants invite this Court to err in arguing that Plaintiffs cannot
avail themselves of statutory remedies because Private Stock registered the Private
Stock Record i n 1975, al bei t wi th i naccurate i nformati on.r But, absent i ntent to
defraud and prejudice, misattributions of authorship will not invalidate a
regi strati on. Mi sattri buti ons may be cured by assi gnment. Here, Pri vate Stock
properly cured the inaccurate registration when it validly assigned its copyright to
Plaintiffs in2012. Contrary to Defendants arguments, the district court in Pryor v.
Jean, CV13-02867 DDP (AJWx), di d not i nval i date the regi strati on. The moti on
shoul d, therefore, be deni ed.
t
l Jnder the fai r use doctri ne, the court must al so consi der (1) the purpose and
character of the use, including whether such use is of a commercial nature or is for
non-profit educational purposes; (2) the nature of the copyrighted work; (3) and the
effect of the use on the potential market for or value of the copyrighted work.
o
Plaintiffs concede they may only seek statutory remedies based on the Private
Stock registration. as tlie Gold Friture resistration was filed well after the
infringeffients.
4
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II. FACTUAL BACKGROUND
Plaintiffs are the current owners of the musical recording,Bumpin Bus Stop,
featuring their deceased father, David Pryor.
"It
is David Pryor's signature voice
on the A-Side (Part 1) of the Record, where he says:"Hey Gang, let me show you
something! It's the hottest thing and it's on its way to the top! Step upfront...you
dig! Get down with the Bus Stop!" (Emphasis added.) (Fourth Amended
Complaint ("FAC"),
'1T12)
The music, lyrics, vocal performance and other creative
elements of "Bumpin' Bus Stop" are wholly original and constitute copyrightable
subject matter under the Copyright Act. (FAC,
n24)
All of the alleged infringements were first discovered within three years of
fi l i ng the ori gi nal compl ai nt. (FAC,
n27,
50, 69,87, 105, l 12, I2L, 129, 145, 153,
160, 167
,
17 4, I 8 1, 197
,,
204, 215, 225, 232, 238,, 256) Pryor was i ncapaci tated i n
January 2004, hospitalized, and died in2006, without ever discovering the
infringements. (FAC,
1T1
8) In 201 I Plaintiffs first acquired rights in Bumpin' Bus
Stop pursuant to a
judgment
determining Pryor's heirs. (ld.,.|lTl9) Defendants
"never expressly and openly repudiated Plaintiffs' copyright interest." (FAC,
'1T'1T45,
100, 139, l 9l , 199, 283)
In a substantially identical sampling case, California district court in Pryor v.
Warner/Chappel took
judicial
notice of Pryor's "Get Down" performance and
rejected the same arguments that the performance was not sufficiently creative.
(RJN, Ex. l, pp. 14-17) Also, the court rejected the defendants' argument that the
copying of "Get Down" was de minimis. (ld.)
III. LEGAL AUTHORITY
A. Legal Standard
Judgments on the pleadings are subject to strict scrutiny or
"de
novo" review
on appeal . (Sutter Home Wi nery, Inv v. Vi ntage Secl ecti ons, Ltd.,97I F .2d 401 (9' h
Ci r. 1992).) A Rul e l 2(c) moti on i s "functi onal l y i denti cal " to a Rul e 12(bX6)
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motion to dismiss for failure to state a claim, and therefore the same legal standard
appl i es. (See
Cafasso v. General Dynami cs C4 Sys., 1nc.,637 F.3d 1047, 1055 n.4
(9th
Ci r. 2011).) A moti on for
j udgment
on the pl eadi ngs i s proper "when
the
moving party clearly establishes on the face of the pleadings that no material issue
of fact remains to be resolved and that it is entitled to
judgment
as a matter of law."
(Hal Roach Studi os,l nc.v. Ri chard Fei ner & Co.,896 F.2d 1542, 1550
(9ttr
Ci r . 1990) .
If matters outside the pleadings are presented to and not excluded by the
court, the moti on for
j udgment
on the pl eadi ngs i s converted i nto a Rul e 56
summary
j udgment
moti on. (Rul e Iz(d); Hal Roach Studi os,l nc., supra,896 F.2d
at 1550.) Here, Plaintiffs have obtained an expert report and declarations since the
filing of this action, each of which are relevant to matters set forth in this
opposition. Plaintiffs request, if necessary, leave to amend to present the matters
set forth in the expert report and declarations (See Declarations of Jack Morton,
Runnette Sl ack, Trena Steward, and Lorenzo Pryor, attached as Exs.4,5,6,7,
respecti vel y).) Al ternati vel y, the moti on shoul d be converted to a summary
j udgment
moti on pursuant to Rul e Iz(d), so such evi dence may be consi dered.
B. Plaintiffs State A Claim for Direct and Contributory
Infringement As A Matter of Law.
s
In order to state a claim of copyright infringement, a plaintiff must allege
that i t 1) owns a val i d copyri ght; and,2) that the defendant copi ed
"' consti tuent
elements of the work that are original."' (Funklt Films, Inc. v. Time Warner Entm't
Co., L.P.
,462
F.3d 1072, 1076 (9th Ci r. 2006) (quoti ng Fei st Pubs., Inc. v. Rural
Tel . Ser v. Co. , 499 U. S . 340, 361 ( 1991) ) .
'Defendants
solely challenge the contributory infringement claims on the ground
that the direct infringement claims are deficient. For the same reasons argued
herein, Plaintiffs oppose the motion to dismiss the secondary liability claims
because the direct infrinsement claims are sufficiently stated.
6
PLAI NTI FFS' MEMORANDUM I N OPPOSI TI ON TO DEFENDANTS' MOTI ON FOR JI . JDGMENT ON
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"Substanti al
si mi l ari ty' i s not an el ement of a cl ai m of copyri ght-
infringement. Rather, it is a doctrine that helps courts adjudicate whether copying
... actual l y occurred ...." (Range Road Musi c' , Inc. v. East Coast Foods, Inc., 668
F.3d 1148,1154 (gth Ci r. 2012).) It has no rel evance to cases where, as here,
di rect copyi ng i s conceded. (l d.; l ' ,l orse v. Henry Hol t & Co.,991 F. 2d563,566
(9' h
Ci r.1993); see Ni mmer, supre,
$
8.01tG1, at 8-26.) Absent evi dence of di rect
copying, "proof
of infringement involves fact-based showings that the defendant
had' access' to the pl ai nti ffs work and that the two works are' substanti al l y
si mi l ar.
"' (See, e.g. Three Boys Musi c' Corp. v. Bol ton, 2I2 F . 3d 477
,
48I (9' h Ci r.
2000); see al so l Yarel l v. Freeman, , 872F. 2d907, 910 (9' h
Ci r. 1989); 2 Howard B.
Abrams, The Law of Copyri ght
$
14: 10 (2011) ("Di rect proof
[of
copyi ng] can
consi st of ... testi mony of di rect observati on of the i nfri ngi ng act....").)
Accordi ngl y, under Rctnge Road Musi c:, "[s]ubstanti al
si mi l ari ty" . . . i s a red
herri ng: the proper questi on i s whether i nfri ngi ng performances occurred vel non."
(Range
Road Mu.si c' , supra, at 668 F. 3d at l l 54)
Further, the lYorse Court held:
As we said rn l',larell, a substantial similarity analysis may be useful in a
copyright case when the alleged infringer denies that he in fact copied the
pl ai nti ffs work. Id. at 910 ("Because i n most copyri ght cases di rect evi dence
of copyi ng i s not avai l abl e, a pl ai nti ff may establ i sh copyi ng by showi ng that
the infringer had access to the work and that the two works are substantially
similar."). But here the substantial similarity ctnalysis is inapposite to the
copying issue because appellees admit that they infact copied phrases
fro*
lYorse's letters.
(Emphasis
added.) (lVorse, supra,99l F.2d at 566)
Based on the foregoi ng, as a matter of l aw,
"substanti al
si mi l ari ty" i s not an
el ement to a copyri ght i nfri ngement cl ai m. Moreover, si nce di rect copyi ng i s
conceded, the only proper question is whether infringing performances occurred or
not. (Range Road Musi c, supra, at 668 F. 3d at l l 54) Accordi ngl y, the moti on
shoul d be deni ed.
PLAI NTI FFS' MEMORANDI . JM I N OPPOSI TI ON TO DEFENDANTS, MOTI ON FOR JUDGMENT ON
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l . An Arti st' s Ori gi nal Vocal Performance- Whether Spoken,
Rapped, or Sung- Is Protected Under the Copyright Act, Once
Fi xed, If It Evi nces the Sl i ghtest Degree of Creati vi ty.
Defendants seem fixated on a false distinction that Prvor's words were
spoken as opposed to sung-the false distinction being that a sung performance is
entitled to copyright protection, whereas a spoken performance is not.
Actually, as can be heard from the recording, and as explained in Dr.
Alexander Stewart's expert report, Pryor rapped these words with a level of
musi cal i ty, usi ng hi s di sti nct voi ce, ti mbre, and qual i ty, and by usi ng a musi cal
techni que known as "word pai nti ng."6 But whether the words were spoken,
rapped,or sung- a performance i s worthy of copyri ght protecti on i f i t evi nces
even the sl i ghtest degree of creati vi ty, "no
matter how crude, humbl e or obvi ous."
(Fei . st Publ i cat i ons, I nc. , v. RLt ral Tel ephone Servi c: e Co. , 499 u. S. 340 (1991). )
"That i s true whether the actor speaks, i s dubbed over or, l i ke Buster Keaton,
performs without any words at all ." (Emphasis added.)(Garcia v. Google, Inc.,
743 F.3d 1258,1263 (2014);
Cf. 17
IJ.S.C.
$
102(a)@) (noti ng "pantomi mes and
o
On summary
judgment,
Plaintiffs will present direct evidence of copying.
Also, Pryor's expert, Dr. Alexander Stewart, will opine that Pryor's lead vocal
performance of the phrases, "Get down," "lt's the hottest thing," "Step up" and
"Step up front," albeit short in duration, were qualitatively significant to the work
as a whole. Indeed, Pryor's rap-style introduction was designed to immediately
captivate the listener to want to hear the song, which highlighted a new dance craze
sweeping across the St. Louis area, fittingly titled, "The Bus Stop." Pryor, in his
lead vocal introduction, wanted to introduce the dance as "the hottest thing," and
get the listener to "step up," and "get down
fwith
the Bus Stop]." Pryor's
performance technique of "word painting" involved using his vocal pitch as a
means of communicating and demonstrating the lyric's meaning. For example,
"Step Up" involved Pryor ascending in keynote and pitch, while "Get down"
involved Pryor's voice descending in keynote and pitch as the lyric progressed.
These introductory phrases, "Get Down," "It' s the hottest thing," and "Step [Jp,"
when performed by Pryor, were ahead of his time and laid the foundation for future
rap music as we know it. (Coates Decl., Ex. 8, Dr. Alexander Stewart's Expert
Report)(di scussi ng "Gol d Di gger" onl y).)
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choreographic works" are eligible for copyright protection). Accordingly, whether
the l yri cs themsel ves,
"Get
down,"
"Step
up," or "It' s
the hottest thi ng," are
original is wholly irrelevant to whether Pryor's own distinct voice and technical
perJormance of those words, once fixed in a tangible medium
,
are minimally
creati ve, i n the sl i ghtest, to warrant copyri ght protecti on.
Defendants' infringement of Plaintiffs' sound recording does not turn on the
ori gi nal i ty of the generi c l yri cs, "Get Down," "Step up," or "It' s the hottest thi ng."
Rather, the infringement turns on the use of and the aural effect produced by
Pryor' s di sti ncti ve voi ce and hi s arti sti c i nterpretati on of those l yri cs i n the
recordi ng. (l Vewton v. Di amond,204 F. Supp .2d at 1249-50) (expl ai ni ng
di fferences between musi cal composi ti on and sound recordi ng); see M.M. Busi ness
Forms Corp. , v.
(Jarco,
I nc. , I nc. 472F. 2d I I 31, 1139
16' h
Ci r. 1973) ("any
' di sti ngui shabl e
vari ati on' resul ti ng from an author' s i ndependent creati ve
endeavor wi l l consti tute suffi ci ent ori gi nal i ty"); see al so Santrayl l v. Burrel l 39
U.S.P.Q.2d 1052 (S.D.N.Y.1996) (one measure "hook" and repeti ti on of word
"uh-oh" may be di sti ncti ve; stati ng "the quanti ty of ori gi nal i ty that need be shown
i s modest
--
onl y a dash wi l l do.") (quoti ng Rogers v. Koons,960F.2d 301,307
(2dCi r.) (ci tati ons omi tte$, cert. deni ed,506 l J.S.934 (1992); El smere Musi c,
Inc. v. l \' l ati onal Broadc:asti ng Co.,482 F. Supp .741
,7M
(S.D.N.Y. 1980) (four
notes and phrase "l Love" at heart of copyri ghted song may be di sti ncti ve); Ti n
Pan Appl e, Inc. v. Mi l l er Brew' i ng, Co., Inc., 30 U.S.P.Q.2d 1791,1793-94
(S.D.N.Y . 1991)(sounds "hugga-hugga" and "brrr" i n Pl ai nti ffs composi ti on
suffi ci ent to warrant copyri ght protecti on).
In Garcia,the Ninth Circuit found that a performer could validly assert a
copyright interest in a five-second snippet of an earlier vocal and dramatic
performance that the filmmaker substantially altered, dubbed over, and later
incorporated into an unauthorized fourteen-minute film. The Court re-affirmed
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that
"[a]
performer' s voi ce i s anal ogous to her i mage, whi ch we' ve sai d
"i s
not a
work of authorship" under the Copyright Act." (Garcia,
supra, at 1264) (quoting
Mi dl er v. Ford Motor Co.,849 F.2d 46019' h Ci r. 1988) (quoti ng Downi ng v.
Abercrombi e & Fi tch,265 F.3d 994., 1004 (9rh Ci r. 2001).
"But
rhat doesn' ,t
answer the questi on of whether the arti st' s creati vi ty, expressed through her voi ce
or image, is protected by copyright.
Just
because someone's voice-its particular
timber and qual@-can't be copyrighted, doesn't mesn that a performance
made using that voice can never be protected. In
fact,
many vocal performances
ure copyrighted." (Emphasis added)(See, e.g., Laws v. Sony Music Entm't, Inc.,,
448 F.3d 1134,1141
(9' n
Ci r. 2006) (hol di ng that a l 0-second sampl e of a
recordi ng arti st' s voi ce, when fi xed i n a sound recordi ng, ari ses under the
Copyri ght Act whi ch preempts a common l aw cl ai m for mi sappropri ati on).)
As recently held by the Central District of California in Pryor v.
Warner/Chappell,this "extreme
low" threshold of creativity is clearly met here.
Pryor' s di sti nct vocal i zati on, ti mbre and qual i ty of voi ce, together wi th hi s
exuberant, high-pitched tenor performance, and
"word painting" is protectable
under copyright. Pryor was performing these lyrics in his own unique way and in
his own distinctive voice that was fixed in a copyrighted sound recording. Sound
recordings are
"works
that result from the fixation of a series of musical, spoken,
or other sounds[.1" (Emphasi s
addefi (| 1
IJ.S.C.
S
101)
"The
sound recordi ng i s
the aggregati on of sounds captured i n the recordi ng whi l e the song or tangi bl e
medi um of expressi on embodi ed i n the recordi ng i s the musi cal
composi ti on." (l Yewton v. Di amond,204 F. Supp.2d 1244,1250)(ci ti ng H.R.Rep.
No. 94-1416, 94t h Cong. , 2d Sess. 56, repri nt ed i n 1976 u. S. Code Cong. & Ad.
News 5659
,
5669); see al so BTE, 43 F . Supp .2d at 621-28; Jarvi s, 827 F. Supp. at
292\.)
As a matter of l aw, a
j ury
coul d reasonabl y concl ude that Pryor' s di sti ncti ve
10
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a a
/.)
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voi ce and techni cal performance of "Get Down," "Step up," and
"It' s
the hottest
thi ng" i s mi ni mal l y creati ve; therefore, enti tl ed to copyri ght protecti on. Thus
Defendants' moti on to di smi ss on the basi s of l ack of ori gi nal i ty i s not
warranted. (Cf
. lVewton v. Diamond, 204 F. Supp . 2d at 1256) (holding
that any
originality of sample came from plaintiffs particular performance techniques as
captured on sound recording, to which plaintiff did not own copyright).) The
moti on shoul d. therefore. be deni ed.
2. Direct Copying Is Sufficient to Survive a Motion to Dismiss.
The Central District of California in Prynr v. Wnrner/Chappell compared the
works at issue, applied the "substantial
similarity" analysis, and concluded that the
al l eged sampl i ng of Pryor' s
"Get
Down" performance was not de mi ni mi s. (RJN,
Ex. 1, p. 16, l i nes 17-19)(stati ng,
"the
Court fi nds that, at thi s
j uncture,
Pl ai nti ff has
sufficiently alleged that the copying can be substantial enough to constitute
i nfri ngement.")
In accord with lVorse and Range Road Music, this Court in VMG denied the
defendants moti on to di smi ss where, as here, they conceded di rect copyi ng. (RJN,
Ex.2,,VMG Val soul , v. Madonna Loui se Ci ccone, et a|.,2:12-cv-05967-BRO-CW,
*
4, fi l ed 1129114, Docket No.29)(stati ng:
"Here,
Pl ai nti ff asserts that i t has di rect
evidence of copying. This allegation is sufficient to survive a motion to dismiss
for failure to state a claim.")
When the VMG defendants argued, at the pleading stage, that their copying
was de minimis, the Court denied the motion to dismiss on the ground that
adjudication of the issue was premature, properly deferring its ruling until the
summary
j udgment
stage:
[t]he
Court finds that this argument is better suited for summary
judgment:
in the context of a musical composition and/or sound, the cases identified by
the parties and the Court have ruled on a de minimis defense on a motion for
summary
j udgment,
rather than a moti on to di smi ss. See, e.g. Newton,388
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F.3d at 1195) (affi rmi ng
a di stri ct court' s grant of summary
j udgment
on a
defendant's de minimis defense where"[o]n the undisputed facts of this
record, no reasonable
juror
could find the sample portion of the composition
to be qualitatively or quantitatively significant portion of the composition of
t he whol e"); El smere Musi c, l nc. v. l l at ' l Broad. Co. , l nc. , 482 F. Supp. 74L,
744 (S.D.N.Y. 1980) affd sub nom. El smere Musi c,l nc.v.l t' l at' l Broad.Co.,
623 F .2d 252 (2d Cir. 1980) (ruling
on a de minimis defense at the summary
judgment
stage) (VMG
Salsoul,, supra, at p. 4)
Thi s case i s whol l y di sti ngui shed from the factsi n Newton v. Di amond,388
F. 3d 1189,1192-93 (9' n Ci r. 2003). In l {ewton,the Court onl y consi dered a si x-
second, three-note sni ppet of a musi cal composi ti on and fi l tered out the
performance elements of the sound recording because defendants had obtained a
license to use the recording. The Court here is not required to
"filter
out" the
recorded performance el ements embodi ed i n Pryor' s hi ghl y energeti c vocal s,
i ncl udi ng hi s di sti nct sound, qual i ty, ti mbre and creati ve use of
"word pai nti ng" to
demonstrate the text' s meani ng. (Coates Decl ., Ex. 8)
In the same vein, Defendants can find no solace in VMG where the court
consi dered the copyi ng of a si ngl e-chord horn stab. Whol l y di sti ngui shed from
thi s case, a generi c horn stab i s far l ess ori gi nal than the di sti nct sounds of a human
bei ng creati vel y performi ng l yri cal phrases uti l i zi ng a di sti nct tone, pi tch, and
delivery to captivate the listener and introduce the very subject matter of the
song-i .e.,
o' Get
down
[wi th
the bus stop]." (Coates Decl .,8)
unlike in VMG and lVewton, it is undisputed that Plaintiffs have evidence of
di rect copyi ngfor eachof the i nfri ngi ng sound recordi ngs. Pl ai nti ffs' voi ce i s
repeatedl y heard i n the unauthori zed recordi ngs. As
j ust
a few exampl es, Pryor' s
"si gnature voi ce" i s heard i n Kanye West' s
"Gol d
Di gger" throughout the song' s
enti re
"Get
down" hook, usi ng Pryor to repeatedl y excl ai m,
"Get
down." (FAC,
l l \Jl z,28-29)
Pryor' s voi ce i s al so heard repeatedl y excl ai mi ng,
"Get
Down,"
throughout the work, ti tl ed "Get Down." (FAC,,1J281) That same voi ce i s heard
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repeatedl y excl ai mi ng "Step
up," throughout the works, ti tl ed
"I
Get Around"
(FAC,
JI88)
and "Sunny
Hours" (FAC,
t198)
Pryor' s voi ce i s heard repeatedl y
excl ai mi ng "l t' s
the hottest thi ng" throughout the work, ti tl ed "Dance on the
Gl ass." (FAC
,
12,168) In the song, "Venti l ati on," Defendants di rectl y copy
Pryor' s vocal performance of
"Step
Up Front!" (FAC,1257) Lastl y, i n
"super
Duck Breaks," UMG sampl ed Pryor' s enti re i ntroducti on to Bumpi n' Bus Stop,
usi ng Pryor' s voi ce to excl ai m:
"Hey
gang,l et me show you somethi ng. It' s the
hottest thing and it's on its way to the top. Step Up Front! You Dig! Get down
wi th the Bus Stop." (3:15 seconds) (FAC,!265) Because di rect copyi ng i s not
disputed as to any of the infringing recordings by any of the moving and
joining
defendants, the moti on shoul d be deni ed.
3. De Minimis Use is Not A Freestanding Defense But Subsumed
Within the Fair Use Defense; Courts Hold
"Fair
Use" Is A
Mixed
Question
of Law and Fact.
The Ninth Circuit holds that de miniruis use is not a separate defense but one
of several considerations subsumed within the fair use analysis . (lVorse v. Henry
Hol t and Co.,991 F. 2d563,566 (9' h
Ci r.1993); see al so Ami ni Innovati on Corp.
v. McFerran Home Furni shi ngs,l nc., No. CV 13-6496 RSWL (SSx) (January 31,
201a)(striking de minimis as affirmative defense without leave to amend because
it is not a freestanding defense but rather subsumed within the
"fair
use" defense)
Questi ons
surroundi ng fai r use are mi xed questi ons of l aw and fact. (SOFA
Entm' t, In{:. v. Dodger Prods., | nc.,709 F.3d I2l 3,IZ77 (9th Ci r. 2013).)
Moreover, facts surrounding copying and improper appropriation are issues of fact
f or t hej ur y. ( SeeThr ee Boy, s Musi cCor pv. Bol t on, 2l 2F. 3d477, 481- 82( 9t hCi r .
2000) (citing Arnstein v . Porter,, 154 F .2d 464, 469 (2d Cir . 1946).)
The fair use doctrine
"permits
and requires courts to avoid rigid application
of the copyri ght statute when, on occasi on, i t woul d sti fl e the very creati vi ty whi ch
that l aw i s desi gned to foster." (Campbel l v. Acuft-Rose Musi c,l nc.,510 u.S.569,
13
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577 (1994) (internal quotation marks omitted).
Consequentl y,17
IJ.S.C.
S
107 establ i shes that fai r use of a copyri ghted
work is not an infringement of copyright and lays out four factors to apply when
consi deri ng whether the use of a work i s
"fai r[.1" "These
four factors must al l
be explored, and all the results evaluated together, in light of the purposes of
copyri ght." (Emphasi s added.) (Sel tzer v. Green Day,l nc' .,725 F.3d II70 (9' h
Ci r.
2013) (ci t i ng
Campbel l , suprut , 510 U. S. at 578. ) Accordi ngl y, de mi ni mi s use i s
not a freestanding defense separate from the other fair use considerations.
Defendants improperly rely upon a procedural error made tn lYewton v.
Diamonrl upon considering the de minimis use factor, separate from the fair use
analysis. The lVewton Court did not cite but completely ignored precedent
establ i shed by a pri or Ni nth Ci rcui t panel i n l Yorse,and i nstead rel i ed upon a
footnote in, what lr,lewton referred to as, the
"leading
case in our circuit on de
mi ni mi s use, " Fi sher v. Dees, 794 F . 2d 43219' h Ci r. 1986). )
A closer look at Fisher, however, reveals that it was indisputably a fair use
case, wherei n the Ni nth Ci rcui t pl ai nl y consi dered de mi ni mi s use, together wi th
the other enumerated.factors within the fair use analysis. The Court plainly states:
"Dees
urges affirmance of summary
judgment
on the claim for copyright
infringement on the ground that the copying of the song for purposes of parody
consti tuted a fai r use. We agree for the reasons di scussed bel ow." (Fi sher, supre,
194 F .2d at 434)
The Fisher Court's procedural approach to the de minimis use analysis is
consistent with the more recent precedent established in lVorse, from which
l,,lewton erroneously departed since IVewton fails to distinguish or expressly
overrul e lr{orse. As an earlier decided panel decision whose holding is directly on
poi nt,l Yorse i s bi ndi ng here . (Koerner v. Gri gas,328 F.3d 1039, 1050 (9th Ci r.
2003) ("one three-judge panel of this court
[generally]
cannot reconsider or
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/ )
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overrul e the deci si on of a pri or panel ." (ci tati on omi tted).)
Moreover, subsequent sampl i ng and other copyri ght cases i n the Ni nth
Circuit have not followed [Yewton to carve out a de minimis defense separate from
the substanti al si mi l ari ty anal ysi s, see, !.g.,, Swi rsky r. Carev,376 F.3d 841 (9th
Cir. 2004) (analyzing
sampling claim under rubric of sufficient original
expressi on), and Newton has been rej ected el sewhere, see, e.g.,, Bri dgeport Musi c,
Inc . v. Di mensi on Fi l ms, 410 F.3d 792,802 (6th Ci r. 2005) (expressl y rej ecti ng
"mental
gymnasti cs" of de mi ni mi s defense).)7
And even more recent California district courts have critictzed fr{ewton as
being
"unclear." (Amini
Innovation Corp. v. Mc'Ferran Home Furnishings, Inc.,
No. CV l 3-6496 RSWL (SSx) (granti ng moti on to stri ke de mi ni mi suse defense as
not a freestandi ng defense, ci ti ng l Yorse)(quoti ng Broc:ade Commc' ns. Sys. v. Al 0
l Vet works, l nc' . , No. C 10-3428 PSG, 2013 WL 831528, ot
*8
(N. D.
Cal . Jan. 10,
2013) (ci ti ng l tl ewton v. Di amond,388 F.3d I189, 1193 (9' h Ci r. 2003); IYorse v.
Henrl - Hol t & Co. , 991 F. 2d 563, 56619' h Ci r. 1993); . see al so 2 Mel vi l l e B.
Ni mmer & Davi d Ni mmer, Ni mmer on Copyri ght
$
8.01[Gl (Matthew Bender rev.
ed.201 l ).) Based on the foregoi ng, the moti on shoul d be deni ed as premature.
4, Pryor's Vocal Performance Is Not De Minimis Because the
Copyright Act Guarantees Payment of Royalties for
"Non-
Featured Vocalists" Performing on Sound Recordings.
The Xlewton Court repeatedly cited Ringgold v. Black Entertainment
Tel evi si on, I nc. , 126 F. 3d 70, 17
(2dCi r. l 99l )
as i nst ruct i ve on de mi ni mi s
t
[Jnder Bridgeport, it is the unauthorized physical taking of a sound
recording to make a derivative recording that infringes the copyright, not the
degree to whi ch a deri vati ve recordi ng sounds "substanti al l y si mi l ar" to the
ori gi nal . Accordi ngl y, si nce Defendants concede that thei r unauthonzed
recordi ngs i s not an
"enti rel y
i ndependent fi xati on of other sounds" under Secti on
114(b), a court cannot permi t them to escape l i abi l i ty by argui ng that those sounds
taken were rearranged,remi xed, or otherwi se al tered i n sequence or qual i ty.
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copyi ng. (Newton,388
F. 3d at II92-1993).) There, the Second Ci rcui t reversed
summary
judgment
upon considering de minimis copying of a poster that was
fl eeti ngl y used as a set decorati on i n scenes for a tel evi si on program. The
segments of the program i n whi ch the poster was vi si bl e to any degree l asted
between 1.86 and 4.16 seconds. (l d.,at76' ) The aggregate durati on of al l ni ne
segments was 26.75 seconds. (l d.)
The Ringgold CourI analyzed the statutory compensation scheme
promulgated under the Copyright Act guaranteeing royalty payments for the use of
publ i shed pi ctori al , graphi c, and scul ptural works by publ i c broadcasti ng enti ti es.
(See
37 C. F. R. 253. 8) (1996) (i mpl ement i ng 11 I J. S. C. 118(b)). Reversi ng
summary
j udgment,
the Court reasoned:
The Li brari an' s regul ati on di sti ngui shes between a "featured" and a
"background" di spl ay, setti ng a hi gher royal ty rate for the former. Id.S
253.8(b)( I
Xi XA),
(B). Obvi ousl y the Li brari an has concl uded that use of a
copyri ghted vi sual work even as "background" i n a tel evi si on program
normal l y requi res payment of a l i cense fee. Moreover, the Li brari an has
defi ned a "featured" di spl ay as "a ful l -screen or substanti al l y ful l screen
di spl ay for more than three seconds," i d.
$
253.8(bX2), and a "background"
di spl ay as "[al ny di spl ay l ess than ful l -screen or substanti al l y ful l -screen, or
ful l -screen for three seconds or l ess
l '
i cl .If defendants' program were to be
shown on publ i c tel evi si on, pl ai nti ff woul d appear to be enti tl ed to a
"background" l i cense fee for a "l ess than ful l -screen" di spl ay.
Si mi l ar to Ri nggol d, the Copyri ght Act has a comprehensi ve compensati on
scheme appl i cabl e to
"copyri ght
owners," "featured" vocal i sts, "musi ci ans
,"
and,
most importantly,
"non-featured
vocalists" who perform on sound recordings
l i censed for di gi tal audi o transmi ssi ons. Speci fi cal l y
,l J
l J.S.C. 11a(g)(2(C)
provides: "2
l12 percent of the receipts shall be deposited in an escrow account
managed by an independent administrator
jointly
appointed by copyright owners of
sound recordings and the American Federation of Television and Radio Artists (or
any successor entity) to be distributed to nonfeatured vocalists
(whether
or not
PLAI NTI FFS' MEMORANDUM I N OPPOSI TI ON TO DEFENDANTS' MOTI ON FOR JUDGMENT Ot . r -
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members of the American Federation of Television and Radio Artists who
have performed on sound recordings." (Emphctsis added.)
"The
American Federation of Musicians ("AFM") and the Screen Actors
Gui l d- Ameri can Federati on of Tel evi si on and Radi o Arti sts
("SAG-AF"[RA")
have designated the AFM & SAG-AFTRA Intellectual Property Rights
Di stri buti on Fund ("Fund") as thei r agent for the di stri buti on of remunerati on
resulting from the DPRA (Digital Performance Rights Amendment), DMCA
(Di gi tal Mi l l enni um Copyri ght Act), and the Audi o Home Recordi ng Act of 1992
(AHRA). " (RJN, Ex. 3, p. 1)t
According to SAG-AFTRA, "lal
non-featured performer for purposes of
di stri buti ons under these gui del i nes shal l be a musi ci an or vocal i st who i s not one
of the performers most prominently identified in print or otherwise with
respect to the specific sound recording for which distributions from the Fund
are made, and/or a performer who has not directly received a distribution
from SoundExchange or from AARC
(Alliance
of Artists and Record
Companies) respectively for that recording." (Emphasis addefi
Ud.)
lJnder Ringgold,Pryor's non-featured vocal performances are not de
minimis, as a matter of law, because had Defendants hired Pryor to perform these
background vocals in the studio, such performances would plainly qualify for
statutory license fees under the Act. Specifically, like the comprehensive royalty
scheme for visual works analyzed in Ringgold.,the Copyright Act and regulations
promulgated for sound recordings expressly distinguish between
"featured"
and
o
"The
American Federation of Musicians ("AFM") and the Screen Actors
Gui l d- Ameri can Federati on of Tel evi si on and Radi o Arti sts ("SAG-AFTRA")
have designated the AFM & SAG-AFTRA Intellectual Property Rights
Di stri buti on Fund ("Fund") as thei r agent for the di stri buti on of remunerati on
resulting from the DPRA (Digital Performance Rights Amendment), DMCA
(Di gi tal Mi l l enni um Copyri ght Act), and the Audi o Home Recordi ng Act of 1992
(AHRA)." (Id.)
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"non-featured" vocal i sts, setti ng a hi gher royal ty rate for the former. (17
US.C.
114(gX2XC), (D).)
Obvi ousl y, Congress, SAG-AFTRA, and the speci al l y-
appointed decision makers, have determined that even relatively minor, non-
featured or background vocal performances are entitled to protection under Section
114(gXZ)(C). In l i ne wi th Ri nggol d,"the de mi ni mi s threshol d for acti onabl e
copyi ng of protected expressi on has been crossed." (l d. at77) The moti on shoul d,
therefore, be deni ed.
C. The Court May Properl y Decl are that Pl ai nti ffs Have A Benefi ci al
Ownershi p Interest In Hi s Performances on the Unauthori zed
Sound Recordi ngs under the Copyri ght Act.
Defendants err in narrowly interpreting the declaratory relief claim to one
simply of
joint
authorship when, in fact, the claim seeks a declaration of a myriad
of rights, in the alternative, including that Plaintiffs are "beneficial co-owners" in
the unauthori zed sound recordi ngs. (FAC,
1T' 1T46,
48, 101, 103, 140, 142, 192, 194,
200,202) Speci fi cal l y, under the Copyri ght Act, "copyri ght owners" and "non-
featured recording artists" (as well as musicians) are guaranteed statutory royalties
for their individual performance contributions on sound recordings. (17 lJ.S.C.
114(g)(2XA), (B), (C), (D).) Pl ai nti ffs, thus, have a benefi ci al ownershi p i nterest
in the unauthorized sound recordings, embodying Pryor's vocal performance
contributions, even if those non-featured perfbrmances are deemed relatively
mi nor. Pl ai nti ffs are enti tl ed to royal ti es under the statute because Pryor' s vocal
performances on these recordings are covered under the statute.
lJnder Garcia,
'Just
because
[a
performer] isn't a
joint
author of
fthe
work]
doesn't mean she doesn't have a copyright interest in her own performance within
the
[work]."
(1d., at 1259-60) Moreover, the Court held that "nothing in the
Copyright Act suggests that a copyright interest in a creative contribution to a work
simply disappears because the contributor doesn't qualif,, as ajoint author of the
enti re work." (f d.)(ci ti ng 17
IJ.S.C.
102(a)("Copyri ght protecti on subsi sts . . . i n
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original works of authorship fixed in a tangible medium[.]")
Defendants correctly observe that Plaintiffs do not allege that Pryor intended
to merge his vocal performance into the infringing sound recordiflgs, at the time of
their creation. Accordingly, the gravamen of Plaintiffs' claim is that Pryor was a
"beneficial
owner" in the Defendants' unauthorized sound recordiflgs, thus,
enti tl i ng them to parti ci pate i n profi ts, royal ti es, and accounti ngs. (FAC,l n46, 48,
101, 103, 140, , 142, l g2, l g4, 200, 202)
The Ninth Circuit tn Garcia v. Google, Inc., addressed whether an actress
who appeared for five seconds in an amateur film could claim a copyright interest
in her individual performance where she did not intend such performance to be
made part of that
joint
work. The Ninth Circuit framed the question as follows:
"whether an individual who makes an independently copyrightable contribution to
a
joint
work can retain a copyright interest in that contribution." (Garcia v.
Googl e,l nc., supra, at 1258.) The Court answered: "Yes."
The Ninth Circuit held that individual perforrners have an independent
copyright interest in their own sampled perforrnances, separate and apart from the
copyri ghts i n a
j oi nt
work as whol e. "U]ust because
[a
performer] i sn' t a
j oi nt
author of
fthe
work] doesn't mean she doesn't have a copyright interest in her own
performance within the
[work]."
(1d., at 1259-60) Moreover, the Court held that
"nothing in the Copyright Act suggests that a copyright interest in a creative
contribution to a work simply disappears because the contributor doesn't qualiS, as
a
joint
author of the entire work." (Id.)(citing 17
tJ.S.C.
102(a)("Copyright
protection subsists . . . in original works of authorship fixed in a tangible
medi um[ . ] "; . see al so EJf ect s Associ at es, I nc' . v. Cohen, 908F. 2d 555, 557
19' h
Ci r.
l eeo).)
Here, under Garcia, the Plaintiffs can validly assert an independent
copyright interest in Pryor's sampled vocal performances in the unauthoized
f
oint
PLAI NTI FFS' MEMORANDLI M I N OPPOSI TI ON TO DEFENDANTS' MOTI ON FOR JTJDGMENT ON
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works. Pryor's creative contribution did not disappear because he was not a
joint
author of the entire
joint
work. Accordingly, the motion should be denied.
D. The Decl aratory Rel i ef Cl ai ms Are Not Ti me-Barred Because
There Coul d Be No
' oOpen
And Express" Repudi ati on Pri or to
Plaintiffs Discovery of the Infringements and Before Plaintiffs
Had Standi ng to Sue as Benefi ci al Owners.
When a copyright claim accrues turns on the nature of the claim. When
"creation rather than infringement is the gravamen of an authorship claim, the
claim accrues on account of creation, not subsequent infringement, and is barred
three years from
'plain
and express repudiation' of authorship."). (Seven Arts
Filmed Entertainment, Inc., supra,733 F.3d at 1252-53).) The Ninth Circuit holds
that the limitations period begins to run "when plain and express repudiation of co-
ownership is commLtnicated to the claimant, and are barred three years from the
time of repudiation." (Emphasis added) (Seven Arts Filmed Entertainment v.
Content Medi a Corp. ("Seven Arts"),733 F.3d 1251,1252-53 (9th Ci r.
2013)(quoting Zuill v. Shanahan, S0 F.3d I 366,, 1369 (9th Cir. 1996); see also
Aal muhammed v. Lee, 202 F.3d 1227
,
1230-31 (9th Ci r. 2000).)
Defendants ci te the case of Zui tt v. Shanahan,80 F. 3d 1366, l 37l 19th Ci r.
1996), for the proposition that "a claim for copyright ownership must be
commenced within three years after repudiation of such claim." In so doing,
Defendants suggest that the limitations should run from the date that Defendants
first registered and published the derivative sound recordings and failed to pay
royalties. But note the distinguishable facts in Zuill, wherein a co-owner failed to
file a declaratory relief action against one who had claimed "expressly and
repeatedly" through various writings and direct notices to the co-claimant that he
was the "sol e owner" of a
j oi nt
work. (l d. at l 37l -1372) The court hel d that these
direct notices and "plain and express" written repudiations of plaintiff s claim of
co-ownership triggered the statute of limitation to assert ownership rights. (ld. at
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1372) Thi s case, however, i s much di fferent.
ln Seven Arts, at pp.1252-53, the Ninth Circuit held that the defendants'
failure and refusal to comply with the plaintiff's demands for payment was a clear
and express repudiation of the plaintiff's copyright ownership. Since this occurred
i n 2005 and pl ai nti ff' s cl ai m was fi l ed i n201 1, the Court hel d that the defendant' s
repudiation occurred in excess of three years prior to plaintiff's suit and was time
barred .
(ld.)
Here, the gravamen of Plaintiffs' declaratory relief claim is based on
infringement, not "creation." Plaintiffs do not allege that Pryor intended to merge
his creative contribution into a
joint
work. Instead, Plaintiffs claim that (l) they
hold a beneficial ownership interest (i.e., right to artist royalties, profits, and
accountings) in those unauthorrzed works that infringe upon his copyright (FAC,
fl n46,48,
101, 140, 142;192, 194,200,202.); and (2) "the copyri ght regi strati on
omits Pryor's contribution to the
finfringing
recordings] and repeatedly
incorporates a sample of Pryor's recorded vocal performance . . . at various time
i nterval s." (FAC,
1l \44,99,
139, 190, 198,282)
Plaintiffs allege they first discovered the infringements within three years of
fi l i ng the compl ai nt. (FAC,
1n27,
50,69,,87, 105, 1 12,, I2l , 129, 145, 153, 160,
167
,
17 4, 17 4, 1 81
,
197
,
204, 215, 225, 232, 238, and 256) Indeed, Pryor was
incapacitated in January 2004, hospitalized, and died in2006 without ever
di scoveri ng the i nfri ngements. (1d.,1T18.) No express and open repudi ati on was,
therefore, made. (FAC,
'1T'1T45,
100, 139, l9l, 199, 283) (alleging that Defendants
"never expressly and openly repudiated Plaintiffs' copyright interest.")
Defendants essentially argue that by omitting David Pryor from the liner
notes and by not paying Pryor royalties, they "openly and expressly" repudiated
any potential claim of beneficial ownership he might have made if he actually
discovered the infrineements. That is not consistent with Zuill' s holdins and flies
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in the face of Seven Arts. Defendants do not claim that they communicated openly
and directly to Plaintiffs, after Plaintiff made claims andlor demands for payment,
as in Zuill and Seven Arts. It logically follows under Seven Arts and Zuill that
Defendants could not openly and expressly repudiate Pryor's claims until such
claims were discovered by Plaintiffs, demands were made, and expressly
repudiated.
As to the erroneous copyright registrations omitting Pryor's pre-existing
sound recording, the purpose of copyright registration is not to "squat" on the
rights of unwary copyright claimants in the hopes of seizing these rights by adverse
possession. Rather,, the purpose is to establish priority in the event of disputes, in
bankruptcy court or elsewhere, over creditor's rights. (ln re World Auxilliary
Power Co.,303 F. 3d 1120, 1125-27
19' h
Ci r.2002); Broadcast Musi c, Inc. v.
Hi rsch, 104 F. 3d 1163,1165-67 (g' n Ci r. 1997);3 Ni mmer & Ni mmer,l {i mmer on
Copyri ghl
$
10.07 (2003).) For these reasons, i n construi ng the statute of
limitations, courts have held that an author has no duty, general or otherwise, to
read, let alone scour through copyright registrations or published copyright notices
for works potentially bearing their copyrighted materials. (Gaiman v. McFarlane,
360 F. 3d 644, 65517' h Ci r . 2004). )
Based on the foregoing, the motion should be denied.
E. Plaintiffs May Recover Statutory Remedies Based on the Private
Stock Registration, Which Private Stock Assigned to Plaintiffs.
l. The Private Stock Registration Is Not Invalid for
Misattributions of Authorship, Absent a Showing of Fraud or
Prejudice.
Absent a showing of an intent to defraud and prejudice, misattributions of
authorship and other erroneous information contained in a copyright registration do
not bar i nfri ngement acti ons.
(Harri s
v. Emus Records,734F.2d 132919' h Ci r.
1984) (correcting misattribution of authorship); Urantia Foundation v. Maaherra,
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28
Il 4F.3d 955
,963
(9' h Ci r . Lgg7)(correcti ng an erroneous "work
for hi re"
description); Datastorm Technologies, Inc. v. Excalibur Communications, Inc., 888
F. Supp. I l 2 ( N. D.
Cal . 1995) ; S. O. S. , I nc. , 886 F. 2d 1081 ( 9' h Ci r c. 1989) ( ci t i ng
Urant i a Foundat i on v. Burt on, 2010 u. S. P.
Q. 217, 220
(W. D Mi ch. 1980;
Urant i a Foundat i on v. Ki ng, I 94 U. S. P. Q. 171, 174-175 (C. D.
Cal . 1977). )
The Copyright Act makes clear that even an inaccurate registration satisfies
the pre-filing registration requirement for purpose of statutory remedies. Section
al l (a)(1) provi des: (1) A certi fi cate of regi strati on sati sfi es the requi rements of
this section and section 4I2, regardless of whether the certfficate contains any
inacc urate information, unless
-
(A) the inaccurate information was included on the application for copyright
registration with knowledg, that it was inaccurate; and
(B) the i naccuracy of the i nformati on, i f known, woul d have caused the
Regi ster of Copyri ghts to refuse regi strati on.e
In other words, Secti on 4I1(a) does not requi re that a copyri ght regi strati on
be 100%o accurate in order to preserve the copyright claimant's (or, here, its
assi gnees' ) cl ai m to statutory remedi es. [Jnder the statute' s pl ai n l anguage, the
converse i s true.
Here, Defendants neither argue that Private Stock committed fraud, resulting
in prejudice; nor do they argue that the Copyright Office would have refused
Private Stock's registration. Instead, they erroneously argue that a prior district
court has i nval i dated the regi strati on. That i s enti rel y fal se.
The district court in Pryor v. Jean did not find Private Stock's registration
invalid for inaccuracy. Rather, the district court simply stated that the inaccurate
" "In any case in which inaccurate information described under paragraph
(1) i s al l eged, the court shal l request the Regi ster of Copyri ghts to advi se the court
whether the inaccurate information, if known, would have caused the Register of
Copyri ghts to refuse regi strati on." (17 l J.S.C . 4l I(aX2))
PLAI NTI FFS' MEMORANDUM I N OPPOSI TI ON TO DEFENDANTS' MOTI ON FOR JI . JDGMENT ON
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registration could not be the basis for an infringement action due to the claimed
prejudice. Specifically,Zomba Records argued that it detrimentally relied upon
the Private Stock registration upon obtaining a sample license from Private Stock
for whi chZomba pai d
$15,000 to use Pryor' s "Step
Up" vocal sampl e i n a fi l m
and soundtrack.
"'
Distinguished from Zomba, Defendants had no license
whatsoever to repeatedl y use wi th i mpuni ty vocal sampl es of "Step Up,"
"Get
Down," or
"It' s
the hottest thi ng" from Bumpi n' Bus Stop. Accordi ngl y,
Defendants can make no legitimate argument of prejudice caused by
misattributions of authorship in the original registration. The motion should,
therefore, be deni ed.
2. Private Stock Assigned Its Valid Registration to Plaintiffs,
Which Reserved Plaintiffs' Right to Statutory Remedies.
Defendants err in relying on other circuits to argue that the initial
registration must be in the name of the original author to be valid. (Def. Motion, p.
22,line 22) The Ninth Circuit has expressly held that a plaintiff may effectuate
necessary corrections to a copyright registration through an assignment of interest.
(Harris
,
supre, T 34 F . 2d at I 335) (correcting misattribution of authorship).)
"Whi l e
the 1909 Copyri ght Act makes no provi si on for correcti ng mi stakes i n
copyright registrations, plaintiffs did in fact effectuate the necessary correction
through tran sfers of i nterest." (l
d .)
Here, Pryor died in 2006. In 2011, a Missouri probate court entered
judgment
determining that Plaintiffs were the rightful heirs of Pryor. (FAC, 19) In
2012, Plaintiffs confronted Private Stock upon discovering the misattributions of
authorship in the registration. Plaintiffs demanded that Private Stock cure the
i naccuraci es i n the regi strati on, whi ch i t accompl i shed through a val i d assi gnment
' uThe
fact that Zombawas wi l l i ng to
pay
Pri vate Stock $15,000 for the use of
Pryor' s."Step [-l p" vocal sampl e i i a fi l m and soundtrack demonstrates i ts
qual rtatrve srgnrfrcance
21
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2012, Plaintiffs confronted Private Stock upon discovering the misattributions of
authorship in the registration. Plaintiffs demanded that Private Stock cure the
i naccuraci es i n the regi strati on, whi ch i t accompl i shed through a val i d assi gnment
of i nterest. (FAC
,21)
In l i ne wi th Harri s, the assi gnment curedi l the i naccuraci es
i n the regi strati on . (11 u.S.C.
9205)
Pri vate Stock' s ori gi nal regi strati on i n 1975 reserved Pl ai nti ffs' ri ght to
recover statutory damages, i n the event of l ater i nfri ngement . (I7
U.S.C.
$201(d)
(assigning
has "all of the protection and remedies accorded to the copyright owner
by thi s ti tl e.") Pri vate Stock executed an assi gnment of al l cl ai med ri ghts, whi ch
Plaintiffs recorded. There has been no determination by the Copyright Office that
the copyri ght regi strati on was i nval i d. The moti on shoul d, therefore, be deni ed.
IV. CONCLUSION
For al l of the foregoi ng reasons, the moti on shoul d deni ed i n i ts enti rety.
LAW OFFI CES OF COURTNEY M. COATE
June 23. 2014 /s/ Courtnev M. Coates
Courtney M. Coates
ccoateslaw@gmail.com
A tto r n ev s
foiT
t a i n t iffs
TRENA STEWARD; LORENZO PRYOR, and
KARLA RAY
"
Although Defendants argue Plaintiffs should have filed a supplemental
registration to correct the inaccuracy, this is not correct. Supplemental
registrations are not appropriate to reflect a change in ownership after Pryor died
i ntestate after the date of basi c regi strati on . (37 C.F.R .201 .5) Pryor' s hei rs were
required to obtain an assignment to reflect the change in ownership from Private
Stock to Plaintiffs. The assisnment was dulv recorded.
25
THE PLEADI NGS

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