Opinion
01 Civ. 9583 (BSJ)
April 19, 2004
OPINION
Before the Court is Defendants' motion for reconsideration of this Court's January 13, 2004 Opinion, in which the Court denied Defendants' motion for summary judgment on Plaintiff's copyright infringement and unjust enrichment claims. See Ulloa v. Universal Music and Video Distribution Corp., No. 01 Civ. 9583, 2004 U.S. Dist. LEXIS 364 (S.D.N.Y. Jan. 13, 2004). For the reasons stated below, Defendants' motion is denied.
All citations to the January 13, 2004 are to the slip op. and will appear (Op. at ___).
At issue in this action is Defendants' use of Plaintiff's recording in the song "Izzo (H.O.V.A.)" ("the Izzo song"). Plaintiff was present at the studio when the Izzo song was being recorded; she was recorded singing some of the lyrics of the Izzo song, and that recording was ultimately included in the final version of the song. Plaintiff claims a copyright interest in the sound recording of her voice as well as the melody that she sang (the "Vocal Phrase").
I. Copyright Infringement
In their motion for summary judgment, Defendants argued,inter alia, that Plaintiff has no protectable copyright interest in the Vocal Phrase because it was not sufficiently original. Specifically, Defendants argued that the lack of originality had been established by their expert's uncontradicted testimony that the melody of the Vocal Phrase had occurred in various prior musical works,i.e. prior art. The Court rejected this argument and found that whether the melody occurred in prior art was not relevant to the originality inquiry in this action. Defendants now argue that this holding was erroneous and that the Court "overlooked and failed to consider a host of cases in this Circuit and elsewhere holding directly to the contrary." (Pl. Recon. Mem. at 6). Defendants are incorrect.
The Court's original opinion stated that "Defendants' arguments regarding the similarity of the Vocal Phrase to other musical works in the public domain are not relevant in an originality inquiry where, as here, copying is conceded." (Op. at 8 n. 6). Upon reviewing the cases presented by Defendants, the Court recognizes that its statement regarding the applicability of the prior art inquiry in cases where copying is conceded may have been overbroad. Nonetheless, the Court's prior conclusion that whether the melody of the Vocal Phrase also appears in prior art is not relevant in this action is sound.
Originality — i.e., "distinguishable variation" and the presence of a "minimal element of creativity" — is a prerequisite to copyright protection. L. Batlin Son, Inc. v. Snyder, 536 F.2d 486, 490 (2d Cir. 1976) (internal quotations and citations omitted). As the Supreme Court explained in Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991):
"The sine qua non of copyright is originality. To qualify for copyright protection, a work must be original to the author. Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity."Id. at 345 (citation omitted).
The contention of Defendants' expert that the melody of the Vocal Phrase appeared in fourteen examples of prior musical works, including pieces by Mozart and Beethoven (Def. Mem. Recon. At 11), is not relevant in assessing whether the Vocal Phrase is sufficiently original to warrant copyright protection in this action because Defendants do not contend that Plaintiff copied the Vocal Phrase from those prior works. "Originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying." Feist, 499 U.S. 345; see also Alfred Bell Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 103 (2d Cir. 1951) ("[t]he author is entitled to a copyright if he independently contrived a work completely identical with what went before").
Indeed, even if Defendants were to argue that Plaintiff had copied the Vocal Phrase from prior works, Plaintiff has clearly asserted that she developed the Vocal Phrase independently, and thus summary judgment would still be inappropriate. To the extent Defendants argued that the Vocal Phrase is not sufficiently different from the instrumental melody, which plays in the Izzo song, the Court dealt with this argument in the original opinion. (Op. at 7-8).
Indeed, the very cases relied upon by Defendants in support of their motion for reconsideration make this distinction clear. For example, inAcuff-Rose Music v. Jostens, Inc., 155 F.3d 140 (2d Cir. 1998), the Second Circuit upheld a district court's decision granting summary judgment, stating that the district court's conclusion that the lines in plaintiff's song lacked the requisite originality to warrant protection was in effect a finding that, given the widespread popular usage of the phrase, plaintiff most likely did not independently create the lyric lines of the song. Id. at 144; see also Jean v. Bug Music, Inc., 2002 WL 287786, at *6 (S.D.N.Y. Feb. 27, 2002) ("a reasonable jury could only find that the [plaintiff] did not create the musical excerpt, and, therefore, this musical phrase is not susceptible to copyright protection") (emphasis added).
Here, the prior art offered by Defendants' expert does not establish, as a matter of law, that Plaintiff did not independently create the Vocal Phrase. Nor have Defendants established that the Vocal Phrase was so common or trite as to be unprotectable as a matter of law. Therefore, Defendants' motion to reconsider is denied with respect to the copyright infringement claim.
Indeed, those cases on which Defendants rely to establish that a short sequence of notes may be unprotectable involved small pieces of longer protected works. While, in some instances, small portions of a larger copyrighted work may not be protected, see, e.g., Rogers v. Koons, 960 F.2d 301, 307 (2d Cir.), cert. denied, 506 U.S. 934 (1992), as Defendants copied the entire Vocal Phrase alleged to have been created by Plaintiff, the Court does not find those cases helpful in analyzing the originality question in this action.See Newton v. Diamond, 204 F. Supp.2d 1244, 1257 (C.D. Cal. 2002) ("Courts also consider whether the sample is qualitatively important to the plaintiff's entire song.") (emphasis in original) (collecting cases).
II. Unjust Enrichment
Defendants argue that Plaintiff's unjust enrichment claim must be dismissed because it is preempted by her copyright claim. The Court denied Defendants' motion for summary judgment on this claim because: "If a jury finds that Plaintiff has no copyright in the composition or sound recording of the Vocal Phrase or that she licensed her copyrights to Defendants, then her claim of unjust enrichment is not preempted by the Copyright Act." (Op. at 22). Defendants, in their motion for reconsideration, have not provided any case law or analysis to the contrary. Because Plaintiff is entitled to bring a claim (in the factual alternative) for unjust enrichment in the event Defendants prevail at trial in establishing that the Vocal Phrase was either created as a work for hire (and thus Plaintiff has no copyright in the work) or licensed to Defendants, the motion for reconsideration is denied.
In their motion for summary judgment, Defendants argued that Plaintiff was not entitled to recover for copyright infringement because either she recorded the Vocal Phrase as a work for hire or because she impliedly licensed the Vocal Phrase recording to Defendants. In the event Defendants prevail under either theory, Plaintiff will not be entitled to collect any damages for copyright infringement. However, the evidence presented to this Court on summary judgment, when viewed in a light most favorable to the Plaintiff, indicates that Defendants failed to provide Plaintiff with any compensation or credit — or to even offer it — until litigation in this matter was threatened. Thus, even if Defendants convince a jury that Plaintiff created and sang the Vocal Phrase as a work for hire, Plaintiff may still have a claim of unjust enrichment, under which she may attempt to persuade the jury that Defendants have failed to compensate her for her time and labor. Similarly, if Defendants establish that Plaintiff licensed her copyright interests in the composition and recording of the Vocal Phrase to Defendants, then Plaintiff may have a claim for breach of contract, under which she may attempt to persuade a jury that Defendants have failed to perform their obligations under the licensing agreement.
Under a work for hire theory, the copyright belongs to the employer. 17 U.S.C. § 201(b).
A copyright owner who grants a license to use her copyrighted material waives her right to sue the licensee for copyright infringement, rather she must bring a breach of contract claim against the licensee for breach of the license agreement. Graham v. James, 144 F.3d 229, 236 (2d Cir. 1998).
Defendants argue that Plaintiff's unjust enrichment claim is preempted by copyright law because the claim, as pled in the Complaint, is predicated upon Defendants' use of the Vocal Phrase "without proper authorization." (Compl. ¶ 62). Presumably, Defendants believe this language is dispositive because authorization would only be required if Plaintiff owned the copyright (thus it was not a work for hire) and had not licensed the work to Defendants. If Plaintiff's unjust enrichment claim were predicated solely on Defendants' "unauthorized use" of the Vocal Phrase, then it would not be an alternative claim made only in the event that the jury finds a work for hire or an implied license.
Where, as here, claims are not specifically pleaded as "in the alternative," the Second Circuit has ruled that Federal Rule of Civil Procedure 8(e)(2) "offers sufficient latitude to construe separate allegations in a complaint as alternative theories, at least when drawing all inferences in favor of the nonmoving party as we must do in reviewing orders granting motions to dismiss or for summary judgment." Adler v. Pataki, 185 F.3d 35, 41 (2d Cir. 1999). Therefore, when drawing all inferences in Plaintiff's favor, this Court construes Plaintiff's unjust enrichment claim as a claim made in the factual alternative in the event that Defendants prevail on their work for hire or implied license theories — a construction clearly permitted under Adler.
Moreover, even if we were to assume that Plaintiff had intended to plead the unjust enrichment claim as a "legal or equitable right that [is] equivalent to one of the bundle of exclusive rights already protected by copyright under 17 U.S.C. § 106," and thus preempted by the Copyright Act, Archie Comic Pubs., Inc. v. DeCarlo, 141 F. Supp.2d 428, 431 (S.D.N.Y. 2001), the Court would still permit Plaintiff to argue that she is entitled to recover in the event that the jury makes a factual determination that the Vocal Phrase was a work for hire or that Plaintiff had granted Defendants an implied license. In United States Naval Institute v. Charter Communications, Inc., 936 F.2d 692 (2d Cir. 1991), the Second Circuit found that a copyright author had failed in its copyright infringement claim because the allegedly infringing defendant had a valid license. The Second Circuit nonetheless allowed the plaintiff to recover contract damages — even though the plaintiff had not pled a contract claim — because, as is the case here, the plaintiff's complaint included a request for "such other and further relief as to the Court seem just and proper." The Second Circuit based this ruling on the requirement of Fed.R.Civ.P. 54(c), that "except as to a party against whom a judgment is entered by default, every final judgment shall grant the relief to which the party in whose favor it is rendered is entitled, even if the party has not demanded such relief in the party's pleadings." 936 F.2d at 696.
It was with these principles in mind that this Court denied Defendants' motion for summary judgment as to Plaintiff's unjust enrichment claim. Defendants, in their motion for reconsideration, have reiterated their previous preemption arguments, which are simply not applicable to this factual scenario. Although Plaintiff is not entitled to bring an unjust enrichment claim that is identical to her copyright infringement claim, the Court's previous opinion explicitly stated that the unjust enrichment claim was construed as a claim in the alternative to the copyright claim and further stated that the unjust enrichment claim was not preempted "[i]f a jury finds' that Plaintiff has no copyright in the composition or sound recording of the Vocal Phrase" — because, as an employee under the work for hire doctrine, the employer would be the copyright author — "or that she licensed her copyrights to Defendants." (Op. at 22). Defendants have not demonstrated that the Court has overlooked controlling decisions or factual matters that were put before it on the underlying motion that had they been considered, might have reasonably altered the result before the Court. Therefore, the motion for reconsideration is denied.
Although not specified in the Court's prior opinion, in the event Defendants prevail on their implied license theory, then it appears that Plaintiff must argue for damages under a claim for breach of contract rather than unjust enrichment. That her Complaint does not include a claim for breach of contract is, according to Naval Institute, not relevant.