Henley v. Devore

• Decision Date: 10 June 2010
• Docket Number: Case No. SACV 09-481 JVS (RNBx)
• Citation: 733 F.Supp.2d 1144
• Court: U.S. District Court — Central District of California
• Parties: Don HENLEY, et al., Plaintiff(s), v. Charles S. DeVORE, et al., Defendant(s).

733 F.Supp.2d 1144

Don HENLEY, et al., Plaintiff(s),

v.Charles S. DeVORE, et al., Defendant(s).

Case No. SACV 09-481 JVS (RNBx).

United States District Court, C.D. California.

June 10, 2010.

Jacqueline C. Charlesworth, Craig B. Whitney, Tania Magoon, Morrison & Foerster LLP, New York, NY, Paul Goldstein, Morrison & Foerster LLP, San Francisco, CA, for Plaintiffs.

Christopher W. Arledge, John Tehranian, Peter R. Afrasiabi, One LLP, Newport Beach, CA, for Defendants.

ORDER RE MOTIONS FOR SUMMARY JUDGMENT

JAMES V. SELNA, District Judge.

Musician Don Henley ("Henley") claims that politician Charles DeVore ("DeVore") infringed the copyrighted songs "The Boys of Summer" and "All She Wants to Do Is Dance" with two political advertisements featuring the songs "The Hope of November" and "All She Wants to Do Is Tax." DeVore claims fair use. The Court also considers whether DeVore's songs falsely suggest endorsement by Henley.

I. BACKGROUND

Plaintiff Henley is a world-famous, Grammy-winning, multi-platinum-album-selling songwriter and recording artist.¹ He is a founding member of the Eagles, credited with one of the best-selling albums of all time. He has also enjoyed a successful solo career, releasing the multi-platinum album Building the Perfect Beast in 1984. Two of the songs on the album, "The Boys of Summer" ("Summer") and "All She Wants to Do Is Dance" ("Dance"), were top-ten hits at the time.

"Summer" was written by Henley and Plaintiff Mike Campbell ("Campbell"), a founding member of Tom Petty and the Heartbreakers, and the two jointly own the copyright to the song. The main theme of the song is the singer's nostalgia for a past summer romance, though theDefendants contend that the song has a political theme, noting the line where the singer "saw a DEADHEAD ² sticker on a Cadillac," which they argue demonstrates nostalgia for the liberal politics of the 1960's. The lyrics to "Summer" are attached in Appendix A.

"Dance" was written by Plaintiff Danny Kortchmar ("Kortchmar"), a respected songwriter, producer, and recording artist. Kortchmar is the beneficial owner of the copyright to "Dance." The song depicts an American couple on a trip to an unspecified foreign country in the midst of violence and unrest. The woman is either oblivious to or ignores the tumult and simply wants to dance, party, and "get down." The Defendants interpret the song as being a comment on American foreign policy in Latin America and the American public's apathy towards the situation. The lyrics to "Dance" are attached in Appendix B.

DeVore is a California assemblyman currently seeking the Republican nomination for one of California's U.S. Senate seats. Justin Hart ("Hart") is the DeVore campaign's Director of Internet Strategies and New Media. His primary duty is to conduct online-based fundraising activities and otherwise get publicity for the DeVore campaign. He does this through various means, such as creating videos to be posted on DeVore's website and on YouTube.³ Hart's compensation is directly tied to the amount of funds he brings in.

This case arises from two online videos produced by DeVore and Hart for DeVore's campaign. The first contains the song "The Hope of November" ("November"), a play on "Summer." DeVore was inspired to create the song in March 2009 after seeing a Barack Obama ("Obama") sticker on a Toyota Prius, which reminded him of the "DEADHEAD sticker" lyric from "Summer." DeVore proceeded to revise the lyrics of "Summer" to create a song that pokes fun at Obama, House Speaker Nancy Pelosi ("Pelosi"), and Obama's supporters. The lyrics to "November" are attached in Appendix A.

Hart and DeVore decided to produce a campaign video using "November." Hart downloaded a karaoke version of "Summer" which simulates the song's instrumental track. Hart supplied the vocals for "November," attempting to emulate Henley's style. He then produced the video by compiling images of Obama, Pelosi, and a few others, and synchronized the "November" track with the video. This video was posted to YouTube and other online sites sometime in late March 2009.

Once Henley got wind of the Defendants' online video in early April 2009, he sent a notice to YouTube under the Digital Millennium Copyright Act ("DMCA"), 17 U.S.C. § 512, requesting that the video be removed, and YouTube promptly complied.⁴ A few days later, DeVore sent a DMCA counter notification to YouTube requesting that the video be reposted on the grounds that it constituted parody. Meanwhile,DeVore decided to use a second Henley song for his campaign. This time, DeVore and Hart created a campaign video featuring the song "All She Wants to Do is Tax" ("Tax"), their take on "Dance."

"Tax" was written by DeVore, who modified the lyrics of "Dance" to lampoon Barbara Boxer ("Boxer"), one of California's U.S. Senators and Democratic Senatorial Candidate, and to criticize cap-and-trade and global-warming polices. The lyrics to "Tax" are attached in Appendix B. Just as with "November," Hart used an instrumental-only track of "Dance," supplied his own vocals using DeVore's lyrics, and paired the song with a video he created using a variety of online images and videos of, among others, Boxer, Al Gore, and Disney character Scrooge McDuck. The Defendants posted the video to YouTube on or about April 14, 2009. On April 17, 2009, this action was filed by Henley, Campbell, and Kortchmar, alleging copyright infringement and violation of the Lanham Act.

The parties have filed cross-motions for summary judgment, each seeking relief on Plaintiffs' First through Sixth Claims for Relief for direct, vicarious, and contributory copyright infringement of each song and Henley's Seventh Claim for Relief for false endorsement under the Lanham Act.⁵

II. LEGAL STANDARD

Summary judgment is appropriate only where the record, read in the light most favorable to the nonmoving party, indicates that "there is no genuine issue as to any material fact and ... the moving party is 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, 323-24, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Summary adjudication, or partial summary judgment "upon all or any part of a claim," is appropriate where there is no genuine issue of material fact as to that portion of the claim. Fed.R.Civ.P. 56(a), (b); see also Lies v. Farrell Lines, Inc., 641 F.2d 765, 769 n. 3 (9th Cir.1981) ("Rule 56 authorizes a summary adjudication that will often fall short of a final determination, even of a single claim ....") (internal quotation marks omitted).

Material facts are those necessary to the proof or defense of a claim, and are determined by reference to substantive law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). "[A] complete failure of proof concerning an essential element of the nonmoving party's case necessarily renders all other facts immaterial." Celotex, 477 U.S. at 323, 106 S.Ct. 2548. A fact issue is genuine "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson, 477 U.S. at 248, 106 S.Ct. 2505. To demonstrate a genuine issue, the opposing party "must do more than simply show that there is some metaphysical doubt as to the material facts.... [T]he nonmoving party must come forward with specific facts showing that there is a genuine issue for trial." Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586-87, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) (internal quotation marks and citations omitted). In deciding a motion for summary judgment, "[t]he evidence of the nonmovant is to be believed, and all justifiable inferences are to be drawn in his favor." Anderson, 477 U.S. at 255, 106 S.Ct. 2505. Nevertheless, inferences are not drawn out of the air, and it is the opposing party's obligation to produce a factual predicatefrom which the inference may be drawn. See Richards v. Nielsen Freight Lines, 602 F.Supp. 1224, 1244-45 (E.D.Cal.1985), aff'd, 810 F.2d 898, 902 (9th Cir.1987).

The burden initially is on the moving party to demonstrate an absence of a genuine issue of material fact. Celotex, 477 U.S. at 323, 106 S.Ct. 2548. If the moving party meets its burden, then the nonmoving party must produce enough evidence to rebut the moving party's claim and create a genuine issue of material fact. See id. at 322-23, 106 S.Ct. 2548. If the nonmoving party meets this burden, then the motion will be denied. Nissan Fire & Marine Ins. Co. v. Fritz Co., Inc., 210 F.3d 1099, 1103 (9th Cir.2000). Where the parties have made cross-motions for summary judgment, the Court must consider each motion on its own merits. Fair Hous. Council of Riverside County, Inc. v. Riverside Two, 249 F.3d 1132, 1136 (9th Cir.2001). The Court will consider each party's evidentiary showing, regardless of which motion the evidence was tendered under. See id. at 1137.

III. DISCUSSION

A. Copyright Infringement

To prevail on a claim of copyright infringement, Plaintiffs must show "(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, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). The parties do not dispute that the Plaintiffs own valid copyrights to "Summer" and "Dance," nor that "November" and "Tax" copy substantial portions of the originals. The parties only dispute whether the Defendants' use of the originals constitutes fair use.

1. Fair Use

Fair use is an exception to a copyright holder's right to exclusive use of the original work and its derivatives. It has been described as "a privilege in others than the owner of the copyright to use the copyrighted material in a reasonable manner without his consent." Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 549, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985) (quoting H. Ball, Law of Copyright & Literary Property 260 (1944)). The privilege reflects a...