Case 2:15-cv-05642-CAS-JC Document 413 Filed 07/12/19 Page 1 of 7 Page ID #:7453

1 Michael A. Kahn (pro hac vice)

Kahn@capessokol.com
2 Lauren R. Cohen (pro hac vice)
lcohen@capessokol.com
3 CAPES SOKOL
7701 Forsyth Blvd. 12th Floor
4 St. Louis, MO 63015
(314) 721-7701
5
Eric. F. Kayira (pro hac vice)
6 eric.kayira@kayiralaw.com
KAYIRA LAW, LLC
7 200 S. Hanley Road, Suite 208
Clayton, Missouri 63105
8 (314) 899-9381
9 Daniel R. Blakey (SBN 143748)
blakey@capessokol.com
10 CAPES SOKOL
3601 Oak Avenue
11 Manhattan Beach, CA 90266
12
Attorneys for Plaintiffs
13 UNITED STATES DISTRICT COURT
14 CENTRAL DISTRICT OF CALIFORNIA
15 MARCUS GRAY, et al.,
16 Plaintiffs, CASE NO. 2:15-cv-05642-CAS (JCx )

17 v. Honorable Christina A. Snyder

18 KATHERYN ELIZABETH PLAINTIFFS’ RESPONSE TO

HUDSON, et al.,
DEFENDANTS’ NEW
19
Defendants. ALLEGATIONS REGARDING
20 PLAINTIFFS’ COPYRIGHT
REGISTRATION
21
Trial: July 17, 2019
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PLAINTIFFS’ RESPONSE TO DEFENDANTS NEW ALLEGATIONS REGARDING PLAINTIFFS’
COPYRIGHT REGISTRATION
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Introduction
2
In the Final Pretrial Order (Dkt. 398), Defendants stated they would challenge
3
the validity of Plaintiffs’ copyright registration in “Joyful Noise,” vaguely
4
asserting that Plaintiffs must prove that the registration “does not contain
5
materially false or inaccurate information related to the nature, ownership, or chain
6
of title to the work.” In response to the Court’s order (Dkt. 403 at 40) and just days
7
before trial, Defendants have now filed a Trial Brief (Dkt. 404) and a Proposed
8
Amended Pretrial Order (Dkt. 405-1) in which they reveal what they contend are
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three issues concerning the validity of the copyright registration:
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1. They claim “Joyful Noise” should have been described as a “derivative
11
work” of Plaintiff Ojukwu’s instrumental track (the “Beat”), which was
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not separately registered;
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2. They claim that the registration, dated June 3, 2014, fails to identify
14
Cross-Movement Records as an additional claimant because Cross-
15
Movement Records’ assignment of its interest is dated July 3, 2014—
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one month later than the registration effective date; and
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3. They claim the registration falsely identifies Mr. Ojukwu as an author of
18
the “lyrics and music” when he did not write any of the lyrics.
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As explained below, even assuming arguendo the inaccuracies Defendants
20
allege, each one is immaterial as a matter of law; moreover, Defendants have
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waived any such challenge for their failure to timely abide by the mandatory
22
procedure set forth in § 411(b) of the Copyright Act.
23
Finally, if the Court should elect to hear evidence on this issue, we request that
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any testimony should be presented outside the hearing of the jury. Defendants’
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contentions involve resolution of legal questions. Moreover, any such a hearing
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before a jury would unduly prejudice Plaintiffs because one on their trial
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28 PLAINTIFFS’ RESPONSE TO DEFENDANTS NEW ALLEGATIONS REGARDING PLAINTIFFS’
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attorneys—Eric Kayira—prepared and filed the copyright registration application
2
at issue and thus would have to testify.
3
Defendants Waived Their Right to Allege Errors in the Registration
4
Section 411(b) of the Copyright Act, 17 U.S.C. § 411(b), sets forth the
5
following legal standard and procedure governing alleged errors in a copyright
6
registration (emphasis added):
7 (b)(1) A certificate of registration satisfies the requirements of this
8 section and section 412, regardless of whether the certificate contains
any inaccurate information, unless—
9 (A) the inaccurate information was included on the application
for copyright registration with knowledge that it was inaccurate;
10 and
11 (B) the inaccuracy of the information, if known, would have
caused the Register of Copyrights to refuse registration.
12 (2) In any case in which inaccurate information described
under paragraph (1) is alleged, the court shall request the
13 Register of Copyrights to advise the court whether the inaccurate
information, if known, would have caused the Register of
14 Copyrights to refuse registration.
15 The courts are unanimous that Section 411(b)(2)’s referral to the Register of
16 Copyrights is mandatory. As Judge Kronstadt held in Gold Value Inter’l Textile v.
17 Sanctuary Clothing, LLC, 2017 WL 2903180 (C.D. Cal. 2017) (citations omitted):
18 The process of potential invalidation is also governed by 17 U.S.C. §
411(b)(2). That statute requires that “[i]n any case in which inaccurate
19 information described under paragraph (1) is alleged, the court shall
request the Register of Copyrights to advise the court whether the
20 inaccurate information, if known, would have caused the Register of
Copyrights to refuse registration.”
21
The use of the word “shall” in the statute has been held to make it a
22 mandatory action that must precede any final determination of
invalidity.
23
24 Given Defendants’ eleventh-hour attempt to raise allegations governed by
25 Section 411(b) of the Copyright Act and their failure to timely comply with the
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mandatory procedure required by Section 411(b)(2), Defendants have waived their
2
right to challenge any alleged inaccuracies in the registration.1
3
The Purported Inaccuracies Are Immaterial as a Matter of Law
4
Even if we assume arguendo that “Joyful Noise” is a derivative work or that
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the effective date of the registration is off by one month, the Ninth Circuit has
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ruled that such inadvertent mistakes on registration certificates are immaterial as a
7
matter of law. As the Court explained in L.A. Printext Industries, Inc. v.
8
Aeropostale, Inc., 676 F.3d 841, 852-53 (9th Cir. 2012):
9
Thus we have held that “inadvertent mistakes on registration
10 certificates do not invalidate a copyright and thus do not bar
infringement actions, unless the alleged infringer has relied to its
11 detriment on the mistake, or the claimant intended to defraud the
Copyright Office by making the misstatement.” Urantia Found. v.
12 Maaherra, 114 F.3d 955, 963 (9th Cir.1997); see also, e.g., Jules
Jordan Video, Inc. v. 144942 Canada, Inc., 617 F.3d 1146, 1156 (9th
13 Cir.2010); Lamps Plus, 345 F.3d at 1145; 2 Nimmer on Copyright §
7.20[B][1] (“[A] misstatement or clerical error in the registration
14 application, if unaccompanied by fraud, should neither invalidate the
copyright nor render the registration certificate incapable of
15 supporting an infringement action.”).
16
Indeed, the Lamps Plus case involved a challenge to the registration based
17
upon a failure to disclose the existence of a preexisting work that would
18
render the work at issue a “derivative work.” The Ninth Circuit rejected that
19
challenge, quoting the language quoted above by the L.A. Printext court and
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concluding there was no intent to defraud the Copyright Office by failing to
21
disclose the “derivative work” issue. Lamps Plus v. Seattle Lighting Fixture
22
Co., 345 F.3d 1140, 1145 (9th Cir. 2003). The same is also true with the
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failure to include the record label as a claimant (of a portion of Plaintiff
24
1
As the Court may recall, at the July 1 pretrial conference we pointed out that three years ago Plaintiffs had asked
25 the Defendants in Interrogatory No. 20 to identify all facts and documents supporting this allegation (as set forth in
Affirmative Defense 13) and Defendants replied by, among other things, objecting that the information sought “is
26 not relevant to any party’s claim or defense” and further stating that the Interrogatory was “premature” because
Defendants’ investigation was ongoing. Defendants have never withdrawn that relevance objection and have never
27 updated their response (as required by Rule 26). Accordingly, their response to that interrogatory and their failure to
update it and withdraw their relevance objection are further grounds to find waiver of that defense.
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Gray’s copyright interest). That error of omission had been eliminated
2
within a month of the June 3, 2014 effective date upon receipt of the signed
3
assignment of copyright from the record label.
4
Finally, under the standard announced in L.A. Printex, there is no contention by
5
defendants that they in anyway relied to their detriment on the alleged inaccuracies
6
or that Plaintiffs intended to defraud the Copyright Office.
7
“Joyful Noise” Is a Joint Work
8
Two of the alleged inaccuracies in the registration stem from Defendants’
9
misunderstanding of what constitutes a “joint work,” which Section 101 of the
10
Copyright Act defines as “ a work prepared by two or more authors with the
11
intention that their contributions be merged into inseparable or interdependent
12
parts of a unitary whole.” 17 U.S.C. § 101.
13
That precisely describes the creation of “Joyful Noise.” That Mr. Ojukwu
14
created the Beat a few months before Plaintiff Gray contacted him to incorporate
15
that Beat in a rap song does not affect the finished product’s status as a “joint
16
work.” Since it is undisputed that Mr. Ojukwu (1) made the Beat (and others) to be
17
incorporated into rap songs, and (2) retained a 50% ownership in any song created
18
with his Beat, the mere fact that he created the Beat before the other authors
19
created the lyrics is immaterial as a matter of law. As the District Court explained
20
in Siegel v. Time Warner Inc., 496 F. Supp. 2d 1111, 1145–46 (C.D. Cal. 2007):
21 [C]ontemporaneous and coordinated action between [the creators] is
22 not required. As Judge Learned Hand explained, “it makes no
difference whether the authors work in concert, or even whether they
23 know each other; it is enough that they mean their contributions to be
complimentary in the sense that they are to be embodied in a single
24 work....” Edward B. Marks Music Corp. v. Jerry Vogel Music
Co., 140 F.2d 266, 267 (2nd Cir.1944).
25
That is precisely the case here.
26
Moreover, as joint authors of “Joyful Noise,” the four authors identified in the
27
registration are all deemed authors of the entire song, not just their portion. As
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stated in Section 201(a) of the Copyright Act, “The authors of a joint work are co-
2
owners of copyright in the work.” Thus it is proper and accurate to list each of the
3
authors of the joint work as an author—and owner—of the music and the lyrics.
4
Ironically, that is precisely what the individual defendants did with their
5
registration of “Dark Horse,” namely, identifying each as an author of the music
6
and the lyrics even though, for example, Mr. Walter had no involvement in
7
creation of the lyrics and Mr. Jordan had not involvement in the creation of the
8
music. See Trial Exhibit 80.
9
But even if it was somehow inaccurate to list Mr. Ojukwu as an author of the
10
music and the lyrics, that inaccuracy is (a) immaterial as a matter of law, and (b)
11
should have been raised long ago in accordance with Section 411(b) of the
12
Copyright Act. Moreover, there is no contention that Defendants relied on that
13
alleged mistake to their detriment.
14
Testimony Regarding the Purported Inaccuracies
15
Should Be Heard by the Court and not the Jury
16
17 Resolution of the effect of the purported inaccuracies involves application of
18 legal principles to somewhat obscure facts over which we believe there will be no
19 dispute. Indeed, there will be no evidence of an intent to defraud by Plaintiffs or
20 any detrimental reliance by Defendants. Any such inaccuracies were inadvertent—
21 and thus immaterial under the holdings by the Ninth Circuit in L.A. Printext.
22 Lamps Plus, and Three Boys Music Corp. v. Bolton, 212 F.3d 477, 486 (9 Cir.
th

23 2000) (“Absent intent to defraud and prejudice, inaccuracies in copyright

24 registrations do not bar actions for infringement.”).
25 However, relevant testimony on the issue of intent would likely require Eric
26 Kayira, one of Plaintiffs’ trial attorneys, to take the witness stand because he is the
27 one who prepared the registration application. Forcing Mr. Kayira to testify before
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the jury in the middle of trial will be unfairly prejudicial to the Plaintiffs. Thus if
2
the Court should decide it needs to hear some testimony on this issue, we request
3
that it be done at the outset of the case and outside the hearing of the jury.
4
Conclusion
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For any one or more of the foregoing reasons, any claim by Defendants that the
6
copyright registration is invalid due to inaccurate information “related to the
7
nature, ownership, or chain of title to the work” is without merit, has long since
8
been waived, cannot meet the threshold for such a claim (namely, detrimental
9
reliance or intentional fraud), and should be dismissed. However, if there is to be
10
any evidentiary proceeding regarding those claims, that proceeding should be held
11
outside the presence of the jury.
12
13 Respectfully submitted,
14 /s/ Michael A. Kahn
Michael A. Kahn (pro hac vice)
15 Kahn@capessokol.com
Lauren R. Cohen (pro hac vice)
16 lcohen@capessokol.com
Capes Sokol Goodman Sarachan PC
17 7701 Forsyth Blvd., 12th Floor
St. Louis, MO 63105
18 Telephone: (314) 721-7701
19 Eric F. Kayira (pro hac vice)
Kayira Law, LLC
20
Daniel R. Blakey (SBN 143748)
21 blakey@capessokol.com
CAPES SOKOL
22 3601 Oak Avenue
Manhattan Beach, CA 90266
23
Attorneys for Plaintiffs
24
25
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PLAINTIFFS’ RESPONSE TO DEFENDANTS NEW ALLEGATIONS REGARDING PLAINTIFFS’
COPYRIGHT REGISTRATION