Saregama India Ltd. v. Mosley

Citation635 F.3d 1284
Decision Date25 March 2011
Docket NumberNo. 10–10626.,10–10626.
PartiesSAREGAMA INDIA LTD., Plaintiff–Appellant,v.Timothy MOSLEY, a.k.a. Timbaland, Aftermath Entertainment, G Unit Records, Inc., name amended per DE # 66 Amended Complaint, Interscope Records, Universal Music Group, et al., Defendants–Appellees.
CourtUnited States Courts of Appeals. United States Court of Appeals (11th Circuit)

OPINION TEXT STARTS HERE

Bruce S. Rogow, Bruce S. Rogow, PA, Michael I. Santucci, Santucci, Priore & Long, LLP, Ft. Lauderdale, FL, for PlaintiffAppellant.Jonathan L. Gaines, Karen L. Stetson, Gray Robinson, PA, Miami, FL, Andrew Harrison Bart, Carletta F. Higginson, Jenner & Block, LLP, New York City, for DefendantsAppellees.Appeal from the United States District Court for the Southern District of Florida.Before BARKETT and MARCUS, Circuit Judges, and RESTANI,* Judge.MARCUS, Circuit Judge:

This case concerns a copyright infringement action brought by Saregama India Ltd. (Saregama) against the Defendants for copying, or digitally sampling, a portion of the Indian song, “Baghor Mein Bahar Hai (“BMBH”), in the hip-hop song, “Put You on the Game” (“PYOG”). Saregama, an Indian music production and distribution company, claims that it owns a copyright in the sound recording of BMBH pursuant to a 1967 agreement (the “Agreement”) between the Indian film producer, Shakti Films (“Shakti”), and Saregama's predecessor in interest, Gramophone Company of India, Ltd. (“Gramophone”). At the core of its claim, Saregama says that the Defendants' digital sampling of BMBH infringed on its alleged sound recording copyright. Saregama appeals the district court's grant of final summary judgment in the Defendants' favor.

The single question before us is whether the Agreement conferred on Saregama a copyright in the sound recording of BMBH that Saregama continues to own today. After closely examining the Agreement, we hold that the Agreement unambiguously conferred on Saregama only a two-year exclusive right, or copyright, to re-record any pre-recorded song covered by the Agreement—a right that became non-exclusive, and thus ceased being a copyright, at the conclusion of the Agreement's two-year term. Thus, even if BMBH were covered by the Agreement (a question we need not decide), Saregama would not currently own a copyright in the BMBH sound recording and thus lacks statutory standing to bring this copyright infringement action. We, therefore, affirm the district court's order granting summary judgment for the Defendants.

I.

The essential facts surrounding this copyright dispute are these. Since the resolution of this lawsuit turns on the interpretation of the Agreement, we detail its provisions at some length.

On April 24, 1967, Shakti and Gramophone, Saregama's predecessor in interest, entered into an agreement regarding the production and distribution of the musical soundtracks accompanying Shakti's films.1 By its terms, the Agreement took effect on January 15, 1967 and was to last for two years, until January 15, 1969. (DE 187–2 ¶ 2.) Before the Agreement's termination and upon written notice, however, Gramophone could extend the term of the Agreement for an additional year, until January 15, 1970.2 ( Id. ¶ 12.) The Agreement also provides that its terms are governed by Indian law.3 ( Id. ¶ 15.)

According to the Agreement, there are two means by which Shakti would supply music to Gramophone. Under the first, Shakti would supply Gramophone with artists and musicians who would render new performances of the musical works from Shakti's films for the purpose of creating new sound recordings.4 The Agreement provides that Gramophone retained creative control over these new recordings.5

Under the second means, Shakti would provide Gramophone with pre-recorded songs, or sound recordings, which Gramophone could then re-record to manufacture records.6 Unlike with the new recordings, Gramophone was not given creative control over the pre-recorded songs. Shakti, therefore, agreed to indemnify Gramophone against any subsequent actions by third parties claiming rights in the pre-recorded songs.7

Pursuant to Clause 7, Shakti assigned to Gramophone its recording rights in both the new recordings and pre-recorded songs.8 As Clause 5 describes, these recordings rights were to be exclusive from January 15, 1967 to January 15, 1969. Specifically, Clause 5 provides that, during the Agreement's two-year term, Shakti was prohibited from allowing any third party to record the new recordings or to re-record the pre-recorded songs—that is, Shakti was barred from granting recording rights to any third party.9

The Agreement also provides Gramophone with a broad set of rights but only with respect to new recordings. Specifically, Clause 10 confers on Gramophone the sole right to produce, reproduce, sell, use, and perform the new recordings.10 Notably, Shakti did not confer on Gramophone these expansive rights with respect to pre-recorded songs.

In addition to delineating the rights conferred, the Agreement also describes the royalty payments Gramophone was to make to Shakti from the sales of the records Gramophone manufactured. The royalty payments for new recordings and those for pre-recorded songs are laid out in separate provisions—Clause 6 describing the royalty payments for new recordings,11 and Clause 8 describing those for pre-recorded songs.12 Clause 6 further provides that, if after the Agreement's two-year term, Shakti were to grant recording rights to any third party, Gramophone would no longer be bound to pay royalties on the new recordings.13 In addition, Clause 10 says that, when these royalty payments on both new recordings and pre-recorded songs were to become due, Gramophone was entitled to confer on third parties the ability to manufacture and sell the records Gramophone recorded or re-recorded under the Agreement.14

After the parties entered into the Agreement, in either 1969 or 1970, Shakti released the Indian film, “Aradhana,” which featured the romantic duet, BMBH. 15 In 2005, Jayceon Taylor (a.k.a. “The Game”) released an album entitled “The Documentary,” which featured the song, PYOG. As the producer of PYOG, Defendant Timothy Mosley (a.k.a.“Timbaland”) included in this song an approximately one-second looped snippet16 from the sound recording of BMBH.

The sampled portion of BMBH is performed by a female vocalist (DE 182–2 at 2) and consists of three notes—D, B flat, and G—which form a descending chord known as a G minor arpeggio (DE 178–4 ¶ 11). In BMBH, this snippet is looped four times in four separate sections of the song—at 0:21, 0:38, 1:49, and 2:52. (DE 178–4 ¶ 12–13; DE 182–2 at 2.) In PYOG, this snippet is looped three times and, after an intervening D note, is looped twice again, and this loop appears in four separate sections of the song—at 1:08, 2:03, 3:08, and 3:47. (DE 178–4 ¶ 14–15.)

On August 27, 2007, Saregama commenced this lawsuit against the Defendants 17 in the United States District Court for the Southern District of New York, alleging copyright infringement in violation of state and federal law and seeking damages and injunctive relief. Soon thereafter, on the Defendants' motion, the case was transferred to the United States District Court for the Southern District of Florida, where the district court granted the Defendants' motion to dismiss with leave for Saregama to re-plead.

On November 4, 2008, Saregama filed an amended complaint, alleging this time that it owned the copyright in the musical composition and sound recording of BMBH and that the Defendants had infringed on both copyrights by digitally sampling a portion of BMBH in PYOG.18 Saregama also sued for common law copyright infringement, unfair competition, and a violation of the Florida Deceptive and Unfair Trade Practices Act (“FDUTPA”), Fla. Stat. § 501.201, et seq. The Defendants again moved to dismiss, which the district court granted in part, disposing of Saregama's common law copyright infringement and unfair competition claims on preemption grounds. Saregama then voluntarily dismissed its FDUTPA claim and its musical composition copyright infringement claim, leaving the sound recording copyright infringement claim as Saregama's only cause of action.

Saregama and the Defendants then filed cross-motions for summary judgment, and on December 23, 2009, the district court denied Saregama's motion and granted the Defendants' on two independent grounds. First, the court found that the Agreement conferred, at most, a two-year exclusive license, which became non-exclusive thereafter, to exploit Shakti's pre-recorded songs, and that Saregama had not offered any proof either that the BMBH sound recording had been created during the Agreement's two-year term or that Saregama had obtained the sound recording copyright through other means. Saregama India Ltd. v. Mosley, 687 F.Supp.2d 1325, 1326–27 (S.D.Fla.2009). The district court also found that BMBH and PYOG were not substantially similar and that the Defendants' digital sampling of BMBH in PYOG was not, therefore, legally actionable. Id. at 1327.

Since we affirm the district court's summary judgment order because the Agreement did not confer on Saregama a sound recording copyright that Saregama continues to own today, we have no occasion to address the issue of substantial similarity. In other words, because we hold that Saregama does not own a copyright in the first instance, we need not face the question of whether this copyright has been infringed.

II.

We review the district court's order granting summary judgment de novo. Acevedo v. First Union Nat'l Bank, 476 F.3d 861, 865 (11th Cir.2007). “In conducting our review, we apply the same legal standards as the district court .... [and thus] review the facts in the light most favorable to the non-moving party and draw all reasonable inferences in his favor.” Id. Summary judgment is only proper when “the pleadings, depositions, answers to interrogatories, and...

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