Opinion
99 Civ. 10656 (GEL)
November 8, 2002
Marsha G. Ajhar, Esq., Abelman Frayne Schwab. New York, N.Y. for Plaintiff Vapac Music Publishing, Inc.
Oren J. Warshavsky, Esq., Gibbons, Del Deo, Dolan, Griffinger Vecchione, P.C., New York, NY, for Defendant Andre Williams.
OPINION AND ORDER
Vapac Music Publishing, Inc., brought this suit for an injunction and damages against songwriter Andre Williams and Williams's representative. Tuff'n'Rumble Management, Inc., alleging infringement of Vapac's copyright to the song "Shake a Tail Feather," written by Williams along with Otis (or Otha) Hayes and Verlie Rice. Defendants counterclaimed for, inter alia, copyright infringement, alleging that Williams was the true and exclusive owner of the copyright and seeking a declaratory judgment to that effect. Following submissions of cross-motions for summary judgment. Tuff'n'Rumble settled with Vapac. conceding that Vapac was the sole owner of the copyright and agreeing to pay damages relating to the interruption of royalty stream arising from its infringing acts. In a supplemental memorandum filed after the settlement, Vapac has essentially withdrawn all its claims against Williams, but continues to seek summary judgment on his three counterclaims as a means of resolving the dispute between Vapac and Williams as to ownership of the copyright. Despite a number of factual disputes between the parties, a relatively small number of now undisputed facts establish that Vapac is the true owner of the copyright to "Shake a Tail Feather" as a matter of law. Plaintiff's motion for summary judgment will therefore be granted.
BACKGROUND
Vapac Music Publishing, Inc. ("New Vapac") bases its claim of copyright ownership upon a Songwriters Agreement executed on January 20, 1963 (the "Agreement") granting all rights to "Shake a Tail Feather" to Vapac's predecessor, Vapac Music Publishing Company ("Old Vapac"). The Agreement lists three co-authors — Williams, Otis (or Otha) Hayes, and Verlie Rice. It is a standard form, with blanks filled in by typewriter. At least one carbon copy of the Agreement was imprinted at the time of execution, and it was apparently Vapac's practice to have the signers sign the "ribbon" original and each carbon copy separately. Throughout discovery in this matter, neither Vapac nor Williams was able to produce these original documents; each side relied on photocopies in its possession. While briefing for this motion was in progress, Vapac discovered both the ribbon original and the carbon copy in the tool shed of a house once belonging to the late Ernie Leaner, the last surviving officer and shareholder of Old Vapac. Both the original and the carbon copy, color digital reproductions of which were made part of the record, appear to be signed by Williams, Hayes, and witness Jeanne Leaner. Strangely, but irrelevantly in a suit concerning Williams's rights, the ribbon original lacks the signatures of Rice and of Vapac's representative Milton Bland, and the carbon has obviously been doctored by cutting and pasting those individuals' signatures from some other document. The Agreement transferred all rights in the song, including any renewal rights, from the three authors to Vapac in return for a 50% share of any royalties. Royalties were to be split equally among the three authors (resulting in a 1/6 share for each).
Williams contends that he was, in fact, the sole author of the song, citing evidence that it was the practice of George Leaner, one of Vapac's principals, to "place his wife's maiden name, Verlie Rice, on many of the songs" his company published, a practice allegedly "[t]ypical of many [song publishers] of the day." Robert Pruter, Chicago Soul 212 (1991). While this could give some moral force to Williams's claims, it cannot endow it with any legal force, at least at this late date. Otha Hayes, at any rate, denies that Williams was the sole author of the song. Declaration of Otha M. Hayes ¶ 9.
Williams offers no evidence casting doubt on the authenticity of these documents. His only response to their submission is that they are "improperly before the Court" because, notwithstanding earlier discovery requests, plaintiff failed to produce them until they filed their response to defendants' motion for summary judgment, and because "no individuals can verify . . . these documents." The Court finds no merit in these objections. Vapac has sufficiently verified the finding of the documents, and the circumstances of their discovery and the fact, apparent on inspection of the documents, that the newly-discovered documents are the source of the various photocopies that both sides had earlier relied upon, are sufficient to support a finding of authenticity. Fed.R.Evid. 901(a). In any event, Williams has had ample time and opportunity, during the period of supplemental briefing following Vapac's settlement with Tuff'n'Rumble, to move for further discovery relating to the timing of Vapac's production of these documents, and so is in no position now to complain of prejudice resulting from their belated emergence.
Williams has challenged this evidence of Vapac's ownership on three grounds: First, he claims that although he signed the Agreement (along with many other similar forms), he never returned this signed original to Vapac because it did not credit him as the sole author. Therefore, Williams contends, the agreement was never executed. Second, Williams contends that whatever rights Old Vapac might have had in the song in 1963, those rights were never transferred to New Vapac after dissolution of Old Vapac in 1984. Finally, Williams contends that even if Old Vapac's rights survived its dissolution, they were terminated upon Williams's application for a renewal of the copyright in his own name on August 9, 1993, which operated to give him exclusive ownership.
Vapac's belated discovery of the original Agreement refutes Williams's claim that he never returned the Agreement to Vapac, and strikes at the foundation of his claim of any rights in the song beyond those contained in the Agreement. In addition, Vapac argues that Williams's claim of ownership is time-barred, presenting voluminous evidence, in the form of royalty payments expressly representing the 1/6 share dictated by the Agreement, that Williams has had knowledge of Vapac's adverse claim for far longer than three years prior to his counterclaim asserting ownership. To buttress its own claim of ownership, Vapac traces a "chain of title" in the copyright, starting with evidence that Old Vapac had a single shareholder, Ernie Leaner, at the time it dissolved, and concluding with a 1999 written grant of all of Old Vapac's Songwriters Agreements by Leaner's four children to New Vapac. Finally, Vapac argues that Williams's application for the renewal does not, as a matter of law. affect ownership of the copyright.
DISCUSSION
A. Summary Judgment Standard
When adjudicating a motion for summary judgment, a court must resolve all ambiguities in favor of the nonmoving party, although "the nonmoving party may not rely on conclusory allegations or unsubstantiated speculation." Scotto v. Almenas, 143 F.3d 105, 114 (2d Cir. 1998). The court "is not to weigh the evidence but is instead required to view the evidence in the light most favorable to the party opposing summary judgment, to draw all reasonable inferences in favor of that party, and to eschew credibility assessments." Weyant v. Okst, 101 F.3d 845, 854 (2d Cir. 1996). Summary judgment is then appropriate if "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits . . . show 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).
To establish a genuine issue of material fact, the opposing party "`must produce specific facts indicating' that a genuine factual issue exists." Scotto, 143 F.3d at 114 (quoting Wright v. Coughlin, 132 F.3d 133, 137 (2d Cir. 1998)); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). "If the evidence [produced by the nonmoving party] is merely colorable, or is not significantly probative, summary judgment may be granted." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249-50 (1986) (internal citations omitted). "The mere existence of a scintilla of evidence in support of the [non-movant's] position will be insufficient: there must be evidence on which the jury could reasonably find for the [non-movant]." Pocchia v. NYNEX Corp., 81 F.3d 275, 277 (2d Cir. 1996) (quoting Liberty Lobby, 477 U.S. at 252.
B. Williams's Counterclaims
Williams's first and third counterclaims, for unfair competition and copyright infringement, respectively, depend entirely on his second counterclaim, which seeks a declaratory judgment that "defendants own one hundred percent . . . of the copyright in and/or to the SONG." That claim will be addressed first.
Neither party disputes that they have acted adversely to the other's claim of ownership of the copyright. The only material factual issue disputed in this litigation, upon which each party's claim of infringement turns, is who owns the copyright. Thus, if either side establishes that there is no genuine issue of fact as to its ownership of a valid copyright, that side must prevail in its motion for summary judgment.
Any party seeking a remedy under the Copyright Act based on claim of copyright ownership is subject to the Act's three-year statute of limitations, measured from the time the claim accrued. 17 U.S.C. § 507 (b); Merchant v. Levy, 92 F.3d 51, 56 (2d Cir. 1996) (statute of limitations applies to "declaration of copyright co-ownership rights and any remedies that would flow from such a declaration"). A claim accrues when the claimant "knows or has reason to know of the injury upon which the claim is premised." Id.
Williams's counterclaim asserting ownership of the copyright was first asserted on August 24, 2000. It is undisputed, however, that in 1981, Williams entered a settlement agreement in an infringement lawsuit brought by Williams and Vapac against the producers of the film "The Blues Brothers" for unauthorized use of "Shake a Tail Feather" in the film. In that settlement, signed by his attorney, Williams accepted "one-sixth . . . of the net amount estimated payable to Vapac Music Publishing Company." Williams himself also points out that, in the copyright renewal application which he personally signed and filed in 1993, he listed "Vapac Music" as the "Original Copyright Claimant." Thus, Williams admits that he had knowledge of Vapac's claim of ownership for many years prior to filing his answer and counterclaims, and it is virtually certain that he had been aware of it for much longer than that. His claim to ownership based on nonexecution of the Agreement is therefore time-barred.
As to Vapac's claim of continued ownership, Williams has not presented a scintilla of evidence challenging New Vapac's claim of succession to Old Vapac's rights in the song. Under Illinois law (both Old and New Vapac were incorporated in Illinois), the shareholders of a dissolved corporation have a right to its assets after payment of corporate debts.Sterling-Midland Coal Co. v. Chicago-Williamsville Coal Co., 168 N.E. 655, 657 (Ill. 1929). The record contains uncontroverted evidence that the sole shareholder of Old Vapac at its dissolution was Ernie Leaner. Williams cannot avoid summary judgment by simply asserting that this does not constitute `proof' of Leaner's ownership; he must "produce specific facts indicating that a genuine factual issue exists." Scotto, 143 F.3d at 114. This he has not done. Williams does not even attempt to dispute any later link in the chain of succession: Ernie Leaner's continuation of the Vapac business as a sole proprietorship, the inheritance by his four children of the assets of that business, and the children's transfer of those assets to New Vapac in return for stock. Vapac need not supply written proof of either Leaner's succession to the copyright following dissolution of Old Vapac or his children's inheritance of the copyright following his death, since "the ownership of a copyright may be transferred . . . by any means of conveyance or by operation of law." 17 U.S.C. § 201(d)(1).
Nor, as a matter of law, can Williams claim that he obtained ownership of the copyright by virtue of his filing of the renewal application in 1993. The 1963 Songwriter's Agreement provided that Williams transferred "all rights of any kind whatsoever in and to the renewal copyright." That grant gave Vapac and its successors a contingent interest in the copyright, one that vested at the beginning of the renewal period. Capano Music v. Myers Music, Inc., 605 F. Supp. 692, 695 (S.D.N.Y. 1985) (vesting of renewal rights in assignee is contingent upon author's surviving to the beginning of the renewal period). The fact that the renewal was applied for in Williams's name does not affect ownership of the renewed copyright. Rose v. Bourne, Inc., 176 F. Supp. 605, 610 (S.D.N.Y. 1959), aff'd, 279 F.2d 79 (2d Cir. 1960) ("[T]he renewal belongs to the assignee even though the application has not been made in the assignee's name." (citing Fisher Music Co. v. M. Witmark Sons, 318 U.S. 643 (1943))).
Because plaintiff succeeds with respect to the second counterclaim, it necessarily succeeds with respect to the first and the third.
CONCLUSION
Plaintiff's motion for summary judgment as to defendant Williams's counterclaims is granted, and Williams's motion for summary judgment is denied. Plaintiff's complaint is dismissed as to Williams are dismissed without prejudice. The Clerk of the Court is respectfully directed to enter judgment accordingly.