Opinion
00 Civ. 0279 (JGK)
March 22, 2002
OPINION AND ORDER
The plaintiff, Aiphonso T. Preta, Jr., alleges that he is one of the founding members of a doo-wop music group named the Dolphins, which was in existence from 1958 to 1961, and which composed the music and lyrics to two songs, "Your Kisses Tell Me" (sometimes referred to as "Tell Tale Kisses") and "I Found True Love" (the "Compositions"). In 1960, the Dolphins recorded performances of the songs (the "Master Recordings") at a session in a studio owned by Shad Records, the predecessor of the defendant Convertible Records. The plaintiff alleges that the defendants Tamara Shad and Robert Apatow, doing business as Convertible Records (collectively "Convertible"), and Collectibles, Inc., doing business as Collectables Records ("Collectibles"), infringed his copyright in the Compositions, engaged in common law misappropriation of the Master Recordings, and made false representations and designations of origin in violation of the Lanham Act, 15 U.S.C. § 1125 (a), by manufacturing and selling an oldies compact disc ("CD") compilation entitled "The Knockouts Meet the Genies," which contained reproductions of the Master Recordings and attributed the performances to the Knockouts. The plaintiff also seeks a declaratory judgment that he and the Dolphins are the sole owners of the Master Recordings.
It is undisputed among the parties that these two titles refer to the same song in the documents related to this case.
The defendants move for summary judgment dismissing all of the plaintiff's claims pursuant to Rule 56 of the Federal Rules of Civil Procedure. The defendant Collectibles moves for an award of attorneys' fees.
I.
The standard for granting summary judgment is well established. Summary judgment may not be granted unless "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving part[ies are] entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c); see also Celotex Corp. v. Catrett, 477 U.S. 317 (1986); Gallo v. Prudential Residential Servs. L.P., 22 F.3d 1219, 1223 (2d Cir. 1994); Local 819, Int'l Bhd. of Teamsters, AFL-CIO v. Textile Deliveries, Inc., No. 99 Civ. 1726, 2000 WL 1357494, at *1 (S.D.N.Y. Sep. 20, 2000). "The trial court's task at the summary judgment motion stage of the litigation is carefully limited to discerning whether there are genuine issues of material fact to be tried, not to deciding them. Its duty, in short, is confined at this point to issue-finding; it does not extend to issue resolution." Gallo, 22 F.3d at 1224. The moving parties, the defendants in this case, bear the initial burden of "informing the district court of the basis for [their] motion" and identifying the matters that they "believe demonstrate the absence of a genuine issue of material fact." Celotex, 477 U.S. at 323. The substantive law governing the case will determine those facts that are material and "only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)
In determining whether summary judgment is appropriate, the Court must resolve all ambiguities and draw all reasonable inferences against the moving parties. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986) (citing United States v. Diebold, Inc., 369 U.S. 654, 655 (1962)); see also Gallo, 22 F.3d at 1223. If the moving parties meet their burden, the burden shifts to the nonmoving party, Preta in this case, to come forward with "specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e). With respect to the issues on which summary judgment is sought, if there is any evidence in the record from any source from which a reasonable inference could be drawn in favor of the nonmoving party, summary judgment is improper. See Chambers v. TRM Copy Ctrs. Corp., 43 F.3d 29, 37 (2d Cir. 1994).
II.
Unless otherwise indicated, the following facts are either undisputed, are matters of public record or are established by the pleadings, affidavits and submissions on file.
A.
The first set of events relevant to this action took place more than forty years ago. From 1958 to 1961, the plaintiff was a member of a doo-wop music group named the Dolphins. See Preta Dep. Tr. at 7-8, attached as Ex. I to Affidavit of James E. Doherty sworn to June 15, 2001 ("Doherty Aff."). During that period, he composed the music and lyrics to two songs entitled "I Found True Love" and "Your Kisses Tell Me" (collectively, the "Compositions"). See Compl. ¶ 1; Doherty Aff. Exs. F G. The plaintiff and the other members of the Dolphins obtained copyright registrations on the Compositions on February 16, 1960 and March 31, 1960, respectively. See Compl. ¶ 13, 14; Doherty Aff. Exs. F G. On April 12, 1960, the members of the Dolphins executed separate Copyright Assignments for each Composition assigning all world-wide "right, title and interest in and to" the Compositions to Brent Music Corp. ("Brent") and Clifton Music Co. ("Clifton"), respectively. See Doherty Aff. Exs. F G.
On April 19, 1960, the plaintiff, along with the other members of the Dolphins, entered into a separate Songwriter Agreement for each Composition with Brent and Clifton, respectively, agreeing to:
sell, assign, transfer and set over unto the Publisher, its successors and assigns, that said musical composition (lyrics, music and title) and each and every arrangement thereof, together with the world-wide copyright thereof, and the right to secure copyright therein for the entire world, with all of their right, title and interest, both legal and equitable therein, including but not limited to the sole and exclusive world-wide publications, mechanical, electrical reproducing, transcription and motion picture rights and the right of public performance by radio, television and other means, and all other rights now known or hereafter to come into existence.See Songwriter Agreements at ¶ 2, attached as Exs. F G to Doherty Aff. In return, Brent and Clifton agreed to pay the plaintiff and the other members of the group royalties in accordance with a specified formula. See Songwriter Agreements ¶ 3(a)-(e). The Agreements also stated that "[t]he Composers hereby consent to the assignment of this contract or the said composition, or the copyright thereof, or any and all of the rights therein by the Publisher to any person, firm or corporation whatsoever, subject, however, to the payment of the royalties herein specified." Id. ¶ 7.
The Assignment Agreement lists the Composition as "Your Kisses Tell Me," but neither party disputes that the Composition in question is the one referred to in this action as "Tell Tale Kisses." The plaintiff indicated in his deposition that the two names were interchangeably used for the same song. See Deposition of Alphonso T. Preta, Jr., at 10, attached at Ex. I to Doherty Aff.
Brent and Clifton, in turn, executed Recording Licenses for the respective Compositions on August 11, 1960, granting Shad Records ("Shad") "the nonexclusive right, privilege and license, during the term of [the] copyright and all renewals and extensions thereof, to use the Composition and to make and/or use arrangement thereof, in the manufacture and sale of parts of instruments serving to reproduce the Composition . . . for the . . . WORLD." Doherty Aff., Exs. F G.
On or about August 11, 1960, the Dolphins recorded the two songs at a recording session at a studio owned by Shad. See Compl. ¶ 16; Declaration of Alphonso T. Preta, Jr. dated July 16, 2001 ("Preta Decl.") ¶ 5-6. The parties have not produced any evidence of a written agreement directed at the parties' respective rights or understandings with regard to the performances at this specific recording session. However, Shad indisputedly maintained physical ownership of the recordings (the "Master Recordings") and indisputedly released them in phonograph form to the public for commercial sale in 1960, under the Shad record label. See Compl. ¶ 16; Doherty Aff. ¶ 18. The plaintiff alleges that the Dolphins were to obtain royalties from this release, and that they have not received those royalties to date.
B.
Twenty-eight years later, in 1988, the original copyrights in the Compositions were set to expire. Shortly before their expiration, the plaintiff filed copyright renewal forms for the Compositions with the United States Copyright Office. See Preta Decl. ¶ 11.
C.
Much more recently, as of February 10, 1998, the defendants Tamara Shad and Robert Agatow, on behalf of Convertible, the successor-in-interest of Shad, entered into a License Agreement with Collectibles granting Collectibles "the non-exclusive right and license to manufacture, advertise, promote, sell, distribute, and otherwise exploit records, in all formats and configurations . . . made from the masters set forth in Schedule `A' (`licensed masters'). . . ." Doherty Aff Ex. D at 1. The final Schedule A does not explicitly name the songs in the Master Recordings, but it does identify "all available songs by [the Knockouts] from the Shad subsidiary labels," and neither Convertible nor Collectibles disputes that the Master Recordings were intended to be covered. See id. at 5. On June 14, 2001, Tamara Shad, on behalf of a successor of Convertible, executed a License reaffirming the February 10, 1998 License Agreement and licensing Collectibles to use recordings of the Compositions in making and distributing phonorecords and CDs reproducing the Compositions. See Reply Affidavit of Dames E. Doherty sworn to August 3, 2001 ("Doherty Reply Aff."), Ex. A.
On or about August 1998, Collectibles released a CD entitled "The Knockouts Meet the Genies," which contained sixteen tracks, two of which were reproductions made from the Master Recordings of "Tell Tale Kisses" and "I Found True Love" performed by the Dolphins in 1960. The CD lists these two tracks as performed by the Knockouts and does not attribute authorship of the Compositions to either the plaintiff or any members of the Dolphins. See Doherty Aff. Ex. E. The defendants represent that only seven hundred fifty (750) copies of the CD were sold through November 1999, when Collectibles stopped selling the album. See Doherty Aff. ¶ 11.
On January 14, 2000, the plaintiff filed the present action.
III.
The defendants argue that they are entitled to summary judgment on the plaintiff's copyright infringement claims because the plaintiff lacks a valid copyright interest in the Compositions and in the Master Recordings. In order to state a claim for copyright infringement, a plaintiff must assert "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publ'ns Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).
With regard to the Compositions, the plaintiff assigned any copyright interests he had to Brent and Clifton in 1960, both by executing the Copyright Assignments dated April 12, 1960, and by entering into the Songwriter Agreements, which assigned "the world-wide copyright" to "said musical composition[s]" to Brent and Clifton on April 19, 1960. Doherty Aff. Exs. F G. Under the plain terms of the Recording Licenses dated August 11, 1960, Brent and Clifton granted Shad, the predecessor of Convertible, the non-exclusive right to reproduce and sell recordings of the Compositions, and, under the plain terms of the License Agreements dated February 10, 1998, Convertible granted Collectibles the right to sell these reproductions. Convertible does not allege that Collectibles has violated the License Agreement between them in any way, and neither Brent nor Clinton, nor any of their successors in interests, are parties to this action.
The plaintiff makes two arguments in support of the contention that he nevertheless maintains a copyright interest in the Compositions. First, he argues that although the Songwriter Agreements purported to transfer his copyright interests in the Compositions to Brent and Clifton, these Agreements were invalid for lack of consideration. The plaintiff bases this argument on the allegation that he never received any of the royalties he was due under the Songwriter Agreements beginning in 1960, or any of the notices of sales he was due. However, the Songwriter Agreements clearly specified the payment of royalties and notices of sales in consideration for the transfer of the plaintiff's copyright interests, and, hence, the Agreements are not invalid for failure to specify any consideration. The Agreements constituted contracts in which the plaintiff transferred his copyright interests in return for, among other things, the promise of these royalties to be paid in the future and these notices. Hence, while the plaintiff's allegations may indicate nonperformance on the part of Brent or Clifton under the Agreements, the plaintiff's allegations fall short of a claim that the Agreements by which he transferred his copyright interests in the Compositions were invalid for lack of consideration.
In any event, the plaintiff has not brought a breach of contract action against either Brent or Clifton and has never rescinded the Agreements. It is plain that such an action would be barred by any conceivable statute of limitations. The plaintiff was aware that he was not receiving any royalties or sales reports decades ago, and he could have sued for breach of contract if and when the royalties were due and were not paid, or if and when he did not receive the sales reports. Hence, there is no merit to the plaintiff's first argument.
Second, the plaintiff argues that he filed copyright renewal forms with the United States Copyright Office in 1988. However, neither the Songwriter Agreements nor the Copyright Assignments were limited to one copyright term, and the Songwriter Agreements explicitly transferred not only the plaintiff's contemporaneous rights in the Compositions but also "all other rights now known or hereafter to come into existence." Doherty Aff. Exs. F G, at 1. The plaintiff did not own any valid copyright in the Compositions in 1988, when he filed the copyright renewal forms, and an original author cannot regain ownership of a copyright by filing a renewal certificate with the United States Copyright Office. See Vapac Music Pub., Inc. v. Tuff'N'Rumble Mgmt., 55 U.S.P.Q.2d (BNA) 1763, 1765-66 (S.D.N Y July 11, 2000); Tobias v. Joy Music, Inc., 204 F. Supp. 556 559-60 (S.D.N.Y. 1962). Hence, given the undisputed facts and the documentary record, the plaintiff does not own a valid copyright in the Compositions. Accordingly, the plaintiff's copyright infringement claims relating to the Compositions should be dismissed.
Turning to the Master Recordings, the Supreme Court has explained that "Congress did not extend federal copyright protection to sound recordings until the Sound Recording Act of 1971, Pub.L. 92-140, Stat. 391, and then only to sound recordings fixed after February 15, 1972." Dowling v. United States, 473 U.S. 207, 211 n. 4 (1985); see also Goldstein v. California, 415 U.S. 546, 551-52 (1973). The Master Recordings were indisputedly recorded on or about August 11, 1960 and are therefore not subject to federal statutory copyright protection. To the extent that the plaintiff's statutory copyright infringement claims are based on allegedly illicit uses of the Master Recordings, these claims must also be dismissed.
IV.
The defendants argue that the plaintiff's common law claims for misappropriation should be dismissed because there is no evidence in the record to support the plaintiff's claim that he maintains an ownership interest in either the Compositions or the Master Recordings.
It is well settled that common law claims for misappropriation based solely on the allegation that a party has reproduced copyrighted materials are pre-empted by the Federal Copyright Act. See 17 U.S.C. § 301; see also National Basketball Assoc. v. Motorola, Inc., 105 F.3d 841, 848 (2d Cir. 1997). To the degree that the plaintiff asserts a common law claim for misappropriation based on the use or reproduction of the Compositions, the claim must be dismissed.
With regard to the Master Recordings, none of the parties has produced any documents that reduce to writing the understanding among the plaintiff, the other members of the Dolphins and Shad, concerning ownership of the Master Recordings produced on or about August 11, 1960. However, all parties agree that the Master Recordings embody performances of the songs "Tell Tale Kisses" and "I Found True Love," and the record clearly establishes that Brent and Clifton owned the respective copyrights in the underlying Compositions at the time. There is no evidence in the record that the plaintiff had the right to sell reproductions of the Master Recordings, or that the plaintiff would have that right now. Under the plain terms of the Recording Licenses, which were entered into at about the time the Master Recordings were made, Brent and Clifton granted Shad, the precessor-in-interest of Convertible, the right to sell reproductions of the Compositions.
Moreover, the plaintiff does not dispute that he and the other members of the Dolphins performed the works at a recording studio owned by Shad, knowing that they were being recorded by Shad, and there is no dispute that Shad maintained physical ownership of the Master Recordings and released reproductions of them to the public on phonograph records in 1960. The plaintiff claims that he was due royalties for the sales of these records, but the plaintiff never challenged Shad's ownership of the Master Recordings themselves, or its right to reproduce them before bringing this action. The plaintiff has also pointed to no authority for the proposition that sound recordings, as opposed to compositions, were subject to independent ownership interests prior to passage of the Sound Recording Act of 1971. See generally Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 473 (Blackmun, J., dissenting). In these circumstances, the plaintiff has produced no basis for the claim that he or the Dolphins own the Master Recordings.
These facts do not settle whether the plaintiff's common law claim for misappropriation should be dismissed, however, because the New York common law allows for misappropriation claims for reverse palming off, or reproducing a product and passing it off as having been authored or created by a person other than the true author or creator. See Kaplan v. The Stock Market Photo Agency, Inc., 133 F. Supp.2d 317, 328-39 (S.D.N.Y. 2001); see also Towle Mfg. Co. v. Godinger Silver Art Co., 612 F. Supp. 986 (S.D.N.Y. 1985) (explaining that New York common law misappropriation claims based on allegations of passing off are not preempted by the federal copyright laws to the extent they go beyond or are not equivalent to rights protected by copyright). The album label for "The Knockouts Meet the Genies" clearly attributes the performances of "Tell Tale Kisses" and "I Found True Love" to the Knockouts, and therefore the claim of misappropriation based on reverse passing off or reverse palming off cannot be dismissed on a motion for summary judgment.
V.
The defendants argue that they are entitled to summary judgment on the plaintiff's Lanham Act claim on the ground that the plaintiff allegedly has produced no evidence of actual consumer confusion or damages arising from the fact that the "Knockouts Meet the Genies" album misidentified the two Dolphins songs as Knockouts songs. Section 43(a) of the Lanham Act states:
(1) Any person who, on or in connection with any goods or services . . ., uses in commerce any word, term, name, symbol or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities or geographic origin of his or her or another person's goods services or commercial activities,
shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such act.15 U.S.C. § 1125 (a). This provision of the Lanham extends to claims for reverse palming off, or "the reproduction of a work with a false representation as to its creator." Waldman Pub. Corp. v. Landoll, Inc., 43 F.3d 775, 781 (2d Cir. 1994).
In this case, the album and the album label for "the Knockouts Meet the Genies" suggest that the Knockouts are the performers of the tracks "Tell Tale Kisses" and "I Found True Love," whereas it is undisputed that the Dolphins are the authors and performers. The album was sold commercially, and there is nothing in the record to suggest that it was accompanied by any materials that would have prevented consumers who read the album label from drawing the natural conclusion that the Knockouts performed those songs. In these circumstances, the album label and the commercial sales are themselves evidence of consumer confusion. See. e.g., PPX Enters., Inc. v. Audiofidelity Enters., Inc., 818 F.2d 266, 270 (2d Cir. 1987); cf. J. D'Addario Co. v. Dronge Rappoport Assocs., 42 U.S.P.Q.2d 1688, 1693 (S.D.N.Y. 1997). Although the defendants argue that the plaintiff cannot establish any substantial damages in this case, the measure of damages cannot be decided on this motion.
In sum, the defendants' motion for summary judgment dismissing the plaintiff's Lanham Act claim should be denied.
VI.
The defendant Convertible also seeks an award of costs and attorneys' fees under 17 U.S.C. § 505. While Convertible has prevailed on its defense against the copyright infringement claims, those claims are intertwined with claims of misappropriation and violations of the Lanham Act that cannot be dismissed on this motion. The award of attorneys' fees rests within the sound discretion of the Court, and Convertible has not even attempted to marshal reasons why, in the exercise of the Court's discretion, an award of attorneys' fees would be appropriate. See, e.g., Foqerty v. Fantasy, Inc., 510 U.S. 517, 534 n. 19 (1994) (the factors that may guide the exercise of that discretion include "frivolousness, motivation, objective unreasonableness (both in the factual and in the legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence"). In view of the lack of such arguments and the continuation of this case, the application for costs and attorneys' fees is denied without prejudice to renewal at the conclusion of this case.
CONCLUSION
For the foregoing reasons:
1. The defendants' motions for summary judgment dismissing the plaintiff's claims for copyright infringement against Collectibles and Convertible (counts one and four, respectively) are granted.
2. The defendants' motions for summary judgment dismissing the plaintiff's claims for common law misappropriation against Collectibles and Convertible (counts two and six, respectively) are granted insofar as they relate to allegedly improper reproduction of the Master Recordings and are denied insofar as they relate to allegedly improper identification of authorship of the performances.
3. The defendant Collectibles' motion for summary judgment dismissing the plaintiff's claim against Collectibles under the Lanham Act for false representation, false designation of origin and unfair competition (count three) is denied.
4. The defendant Convertible's motion for summary judgment dismissing the plaintiff's claim for a declaratory judgment that the plaintiff and the other members of the Dolphins are the sole owners of the Master Recordings (count five) is granted.
5. The defendant Collectibles' motion for costs and attorneys' fees under 17 U.S.C. § 505 is denied without prejudice to renewal at the conclusion of this case.SO ORDERED.