Newton v. Diamond, CV 00-4909 NM(MANx).

• Citation: 204 F.Supp.2d 1244
• Decision Date: 21 May 2002
• Docket Number: No. CV 00-4909 NM(MANx).,CV 00-4909 NM(MANx).
• Court: U.S. District Court — Central District of California
• Parties: James W. NEWTON, Jr. dba Janew Music, Plaintiff, v. Michael DIAMOND, et al., Defendants

Page 1244

204 F.Supp.2d 1244

James W. NEWTON, Jr. dba Janew Music, Plaintiff, v. Michael DIAMOND, et al., Defendants

No. CV 00-4909 NM(MANx).

United States District Court, C.D. California.

May 21, 2002.

Jeffrey Alan Berchenko, Berchenko & Korn, San Francisco, CA, Alan Michael Korn, Alan M. Korn Law Offices, San Francisco, CA, for James W. Newton, Jr dba Janew Music.

Adam F. Streisand, Daniel J. Friedman, Joseph Geisman, Loeb & Loeb, Los Angeles, CA, for Michael Diamond, Adam Horowitz, Adam Yauch dba Beastie Boys, Capitol Records Inc, Grand Royal Records Inc, Universal Polygram International Publishing Inc, Brooklyn Dust Music, an entity of unknown origin, Mario Caldato, Jr.

Adam F. Streisand, Loeb & Loeb, Los Angeles, CA, Jeffrey D. Ullman, Ullman Furhman Broeman & Platt, Morristown, NJ, for Janus Films, LLC, Criterion Collection, Voyager Publishing Company Inc.

Barry E. Mallen, Manatt Phelps & Phillips, Los Angeles, CA, Steven M Hayes, David R. Baum, Parcher Hayes & Snyder, New York, NY, for Sony Music Ent Inc, BMG Direct Marking Inc., the Columbia House Company, an entity of unknown origin.

ORDER

MANELLA, District Judge.

1) GRANTING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT

2) DENYING PLAINTIFF'S MOTION FOR SUMMARY JUDGMENT

I. INTRODUCTION

The Beastie Boys, an alternative rock and hip-hop band, and their business associates ("Defendants") sampled a six-second, three-note sequence of a flute composition composed and performed by James W. Newton, Jr. ("Plaintiff"). Plaintiff concedes that Defendants licensed the sound recording of his work, but alleges that Defendants' use of the sample infringed upon the underlying musical composition. Both parties have filed motions for summary judgment.

II. FACTS

This case involves sampling. "The practice of sampling portions of pre-existing recordings and compositions into new songs is apparently common among performers of the genre known as rap.... Musicians sample pre-existing works either digitally, by lifting part of a song from a pre-existing master recording and feeding it through a digital sampler, or by hiring musicians who re-play or re-sing portions of the pre-existing composition." Williams v. Broadus, No. 99 Civ. 10957 MBM, 2001 WL 984714, at *1 n. 1 (S.D.N.Y. Aug.27, 2001).

Plaintiff, a flautist and composer, is the sole author of the musical composition Choir, which was registered with the Copyright Office in 1978. Defendants' Statement of Uncontroverted Facts ¶ 1; Plaintiff's Statement of Genuine Issues ¶ 1; Plaintiff's Statement of Uncontroverted Facts ¶ 1; Defendants' Statement of Genuine Issues ¶ 1. Defendants assert that Choir is one movement of a multi-movement musical composition titled The Change Suite, registered by Plaintiff with the U.S. Copyright Office. Defendants' Statement of Uncontroverted Facts ¶ 1. Plaintiff asserts that Choir is one of multiple songs permissibly covered by a single copyright registration. Plaintiff's Statement of Genuine Issues ¶ 1. It is undisputed that Plaintiff holds a valid copyright to the musical composition at issue in this case. Defendants' Reply Brief at 2. It is also undisputed that Plaintiff has no rights to the sound recording of his performance of Choir, having licensed it to ECM Records in 1981. First Amended Complaint ("FAC") ¶ 26, Ex. D.

On February 26, 1992, the Beastie Boys ("Defendants"), an alternative rock and hip-hop band, obtained a license from ECM Records to sample the copyrighted sound recording of Plaintiff's performance of Choir. Defendants' Statement of Uncontroverted Facts ¶ 3; Plaintiff's Statement of Genuine Issues ¶ 3.¹ Pursuant to their license, Defendants copied a three-note sequence with one background note, approximately six seconds long, from Choir and looped the passage throughout their song, Pass the Mic. Plaintiff's Statement of Uncontroverted Facts ¶ 4; Defendants' Statement of Genuine Issues ¶ 4; Korn Decl., Ex. 1, Track # 2 (Pass the Mic). Choir itself runs approximately four and a half minutes. See Korn Decl., Ex. 1, Track # 1 (Choir). It is undisputed that Choir and Pass the Mic "are substantially dissimilar in concept and feel, that is, in there [sic] overall thrust and meaning." Id., Ex. 3. (Dobrian Report) at 16.

Defendants represent that the sample consists of a six-second segment in which the performer fingers a "C" above middle "C" on the flute, while singing the same "C," ascending one-half step to a "D-flat," and descending again to the "C." Defendants Statement of Uncontroverted Facts ¶ 6. Plaintiff concedes that Defendants sampled "melody and harmony created by interaction of the underlying flute note of C and the simultaneous vocalization of the notes C, D-flat, and C." Korn Decl., Ex. 5 Plaintiff's Response to Defendants' Interrogatory No. 1.² However, Plaintiff alleges that Defendants also sampled the unique musical sound and characteristics created by his distinctive performance techniques. Id.

It is undisputed that Defendants' license allowed them to sample the sound recording of Plaintiff's performance of Choir. FAC ¶ 26; Korn Decl., Ex. 15; Defendants' Statement of Uncontroverted Facts ¶¶ 3-4; Plaintiff's Statement of Genuine Issues ¶¶ 3-4; Plaintiff's Statement of Uncontroverted Facts ¶ 3; Defendants' Statement of Genuine Issues ¶ 3; Plaintiff's Motion at 3. However, Plaintiff contends that Defendants were required to obtain a separate license for derivative use of the copyrighted musical composition of Choir. Defendants' Statement of Uncontroverted Facts ¶ 3; Plaintiff's Statement of Genuine Issues ¶ 3; Plaintiff's Statement of Uncontroverted Facts ¶ 3; Defendants' Statement of Genuine Issues ¶ 3; Plaintiff's Motion at 3.

Plaintiff filed suit May 9, 2000, asserting claims for: 1) copyright infringement in violation of the Copyright Act, 17 U.S.C. § 101 et seq.; 2) international copyright infringement in violation of the Universal Copyright Convention; 3) reverse passing-off in violation of the Lanham Act, 15 U.S.C. § 1125, et seq.; and 4) misappropriation of identity in violation of the Lanham Act. The court dismissed Plaintiff's third and fourth claims pursuant to Fed.R.Civ.P. 12(b)(6). See Court's Order Granting Defendants' Motion to Dismiss, September 12, 2000.

Defendants filed their motion for summary judgment on Plaintiff's remaining two claims for copyright infringement February 28, 2002. Defendants argue that the portion of the musical composition Choir they sampled cannot be protected as a matter of law. In the alternative, Defendants argue that any misappropriation is de minimis, and thus not actionable as copyright infringement. Defendants also contend that Plaintiff cannot seek extraterritorial damages because he cannot establish that Defendants infringed upon his copyright. Finally, Defendants argue that any infringement claim and damages Plaintiff may have are limited by the three-year statute of limitations.

Plaintiff filed a motion for summary judgment March 12, 2000. Plaintiff argues that the portion of Choir Defendants sampled is legally protectable, and that Defendants' alleged infringement is not de minimis. Plaintiff also argues that he is entitled to injunctive relief.

III. LEGAL STANDARD

Summary judgment is appropriate when "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 party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). Summary judgment is "properly regarded not as a disfavored procedural shortcut, but rather as an integral part of the Federal Rules as a whole, which are designed `to secure the just, speedy and inexpensive determination of every action.'" Celotex Corporation v Catrett, 477 U.S. 317, 327, 106 S.Ct. 2548, 2555, 91 L.Ed.2d 265 (1986) (quoting Fed. R.Civ.P. 1). Determinations of credibility, however, should be left to the trier of fact. See Hanon v. Dataproducts Corp., 976 F.2d 497, 507 (9th Cir.1992). Accordingly, issues that turn on such determinations should not be resolved at the summary judgment stage. See id.; see also Palacios v. City of Oakland, 970 F.Supp. 732, 738 (N.D.Ca.1997) ("In judging evidence at the summary judgment stage, the Court does not make credibility determinations or weigh conflicting evidence[.]").

In a trio of 1986 cases, the Supreme Court clarified the applicable standards for summary judgment. See Celotex, supra; Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Matsushita Electric Industrial Co. v. Zenith Radio Corp., 475 U.S. 574, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The moving party bears the initial burden of demonstrating the absence of a genuine issue of material fact. See Anderson, 477 U.S. at 256, 106 S.Ct. at 2514. The governing substantive law dictates whether a fact is material; if the fact may affect the outcome, it is material. See id. at 248, 106 S.Ct. at 2510. If the moving party seeks summary adjudication with respect to a claim or defense upon which it bears the burden of proof at trial, it must satisfy its burden with affirmative, admissible evidence. By contrast, when the non-moving party bears the burden of proving the claim or defense, the moving party can meet its burden by pointing out the absence of evidence submitted by the non-moving party. The moving party need not disprove the other party's case. See Celotex, 477 U.S. at 325, 106 S.Ct. at 2554.

If the moving party meets its initial burden, the "adverse party may not rest upon the mere allegations or denials of the adverse party's pleadings, but the adverse party's response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e). When assessing whether the non-moving party has raised a genuine issue, the court must believe the evidence and draw all justifiable inferences in the non-movant's...