Batiste v. Island Records Inc.

• Decision Date: 21 June 1999
• Docket Number: No. 98-30046,98-30046
• Parties: David BATISTE; Paul Batiste; Michael Batiste, Plaintiffs-Appellants-Cross-Appellees, v. ISLAND RECORDS, INC.; Island Records, Ltd.; MCA Music Publishing, A Division of MCA, Inc.; Attrell Cordes, also known as P.M. Dawn, doing business as P.M. Dawn; Wade Featherstone, Individually; Gee Street Records, Inc., Defendants-Appellees-Cross-Appellants, and Isaac Bolden, Defendant-Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

Page 217

179 F.3d 217

David BATISTE; Paul Batiste; Michael Batiste Plaintiffs-Appellants-Cross-Appellees, v. ISLAND RECORDS, INC.; Island Records, Ltd.; MCA Music Publishing, A Division of MCA, Inc.; Attrell Cordes, also known as P.M. Dawn, doing business as P.M. Dawn; Wade Featherstone, Individually; Gee Street Records, Inc. Defendants-Appellees-Cross-Appellants and Isaac Bolden, Defendant-Appellee.

No. 98-30046.

United States Court of Appeals Fifth Circuit.

June 21, 1999.

Joseph W. Looney, Michael McGrath Duran, Adams & Reese, New Orleans, LA, for Plaintiffs-Appellants-Cross-Appellees.

R. Patrick Vance, Timothy Scott Cragin, Jones, Walker, Waechter, Poitevent, Carrere & Denegre, New Orleans, LA, for Island Records, Inc., Island Records, Ltd., MCA Music Publishing, Attrell Cordes, Wade Featherstone and Gee Street Records, Inc.

Charles B. Ortner, Sandra A. Crawshaw, Paul, Hastings, Janofsky & Walker, New York City, for Island Records, Inc., Island Records, Ltd., MCA Music Publishing and Gee Street Records, Inc.

Ellis Jay Pailet, New Orleans, LA, for Isaac Bolden.

Appeal from the United States District Court for the Eastern District of Louisiana.

Before KING, Chief Judge, and REAVLEY and BENAVIDES, Circuit Judges.

KING, Chief Judge:

Attrell Cordes, a successful singer and songwriter who performs with his brother under the name "P.M. Dawn," used a digital sample of a musical composition that was originally written and recorded by David, Paul, and Michael Batiste. Cordes included the digital sample in a song on a highly successful album that was released by Island Records, Inc. and Gee Street Records, Inc., and the Batistes seek damages and injunctive relief for alleged copyright infringement and violations of the Lanham Act, 15 U.S.C. § 1125, the Louisiana Unfair Trade Practices Law, LA.REV.STAT. ANN. §§ 51:1401-1419, and Louisiana state laws regarding conversion and misappropriation. The district court dismissed the Batistes' claims against Wade Featherstone for lack of personal jurisdiction and granted all defendants except Isaac Bolden summary judgment on all claims, except Paul and Michael Batiste's allegations of conversion and misappropriation, which the court allowed Paul and Michael Batiste to voluntarily dismiss without prejudice. We affirm the judgment of the district court in all respects except that we determine the district court abused its discretion by allowing Paul and Michael Batiste to dismiss their surviving claims without prejudice, and we remand with instructions to enter judgment in favor of all defendants except Bolden on these claims as well.

I. FACTUAL BACKGROUND

David, Paul and Michael Batiste (collectively, the Batistes) are three brothers who, while performing together as a group known as "David Batiste & the Gladiators," wrote a musical composition called "Funky Soul" in 1968. The Batistes performed "Funky Soul" in New Orleans and recorded the song in 1970 with the assistance of Isaac Bolden, a local music publisher and record producer.

David Batiste, the eldest brother and leader and manager of the group, entered into two written contracts with Bolden: (1) a Songwriter's Contract governing rights to the "Funky Soul" musical composition, and (2) an Artist Contract governing rights to the "Funky Soul" physical master tape and sound recording. Under the Songwriter's Contract, David Batiste warranted that the "Funky Soul" musical composition was his "sole, exclusive and original work" and transferred that composition, including the title, words, music, and the exclusive right to secure copyright, to Bolden. Under the Artist Contract, David Batiste transferred to Bolden all rights to the physical master tape and the sound recording of "Funky Soul" embodied thereon, including the "exclusive, unlimited and perpetual right ... to manufacture, advertise, sell, lease, license or otherwise use or dispose of, in any or all fields of use, by any method now or hereafter known, throughout the world, records embodying the performances."

Shortly after the recording session for "Funky Soul," Bolden obtained a certificate of copyright registration for the musical composition identifying David Batiste as its sole writer. Bolden authorized the manufacture and release of two records containing "Funky Soul" in 1970, but neither record was a commercial success.

Attrell Cordes and his brother perform together in the highly successful musical group "P.M. Dawn." In 1992, Cordes purchased a copy of the "Funky Soul" record and decided to sample it for use in a song of his own entitled "So On and So On" ("So On"). Cordes recorded a six and one-half second portion of "Funky Soul" from the record he purchased and used digital technology to modify the recording. Cordes used this digital sample in his song "So On" that was included on "the Bliss Album," which Island Records, Inc. ¹ and its affiliate, Gee Street Records, Inc. (Gee Street), released on March 15, 1993.

Prior to "the Bliss Album" release, Gee Street determined that Bolden held all rights to the "Funky Soul" musical composition and sound recording and entered into three contracts with him: (1) a Master Recording Sampling License, on January 26, 1993; (2) a Mechanical License Agreement, on March 3, 1993; and (3) an Administration Agreement, on April 27, 1993. Under the Master Recording Sampling License, Bolden granted Gee Street "the non-exclusive right to manufacture [r]ecords embodying that certain Master Recording, entitled 'So On & So On' ... [which] contains an interpolation of [Bolden's] master recording, entitled 'Funky Soul.' " Under the Mechanical License Agreement, Bolden consented to Gee Street's release of "So On," which "interpolates a portion of the musical composition entitled 'Funky Soul.' " Finally, under the Administration Agreement, Bolden and MCA Music Publishing (MCA) agreed that Bolden owns a forty percent share of "So On," and that Bolden "grants licenses and assigns to [MCA] exclusively the copyright and all other rights ... in and to ['So On']." In exchange for his allowing the use of the "Funky Soul" sample, Gee Street paid Bolden a $15,000 advance against record royalties in February 1993.

The liner notes accompanying "the Bliss Album" credit "D. Batiste" as a co-writer of "So On" and state that " 'Funky Soul' performed by David Batiste & The Gladiators [is] used under license by Isaac Bolden." The Batistes admit that they learned that a portion of "Funky Soul" was used in "So On" no later than July 1993, and that they prepared and submitted an application to register as co-writers of "So On" with Broadcast Music, Inc., a well-known performing rights society.

II. PROCEDURAL HISTORY

The Batistes filed this suit in the United States District Court for the Eastern District of Louisiana on March 10, 1995, alleging that Island Records, Gee Street, MCA, Cordes, Bolden, and Wade Featherstone violated federal copyright laws, 17 U.S.C. §§ 101-603; the Lanham Act, 15 U.S.C. § 1125; the Louisiana Unfair Trade Practices Law, LA.REV.STAT. ANN. §§ 51:1401-1419 (LUTPL), and Louisiana state laws regarding conversion and misappropriation. In addition, the Batistes allege in their complaint that Bolden breached his fiduciary duty and contractual obligation by failing to account for income that he has received from the sale or distribution of records containing "Funky Soul" and by participating in the misappropriation of the Batistes' property and infringement of their copyrights. The Batistes seek injunctive and declaratory relief, an accounting of all amounts received from transactions relating to "the Bliss Album" and "Funky Soul," and damages.

Wade Featherstone filed a motion on October 15, 1996 to dismiss the Batistes' claims for lack of personal jurisdiction and failure to state a claim upon which relief may be granted. Featherstone asserted that he is a citizen and resident of England and lacked sufficient jurisdictional contacts with the state of Louisiana. Island Records, MCA, Gee Street, and Cordes (collectively, defendants) filed a motion on December 6, 1996 to dismiss the Batistes' claims of copyright infringement for lack of subject matter jurisdiction, arguing that the Batistes could not demonstrate that they had obtained or applied to obtain a valid copyright registration for "Funky Soul." ² Defendants also filed a motion for summary judgment on all claims, and the Batistes filed a motion seeking summary judgment in their favor on their copyright, Lanham Act, and misappropriation claims against defendants and Bolden.

The district court granted defendants summary judgment on all of David Batiste's claims, and on all of Paul and Michael Batiste's claims except conversion and misappropriation. ³ The court found that the Songwriter's Contract effectively transferred any interest David Batiste had in "Funky Soul" to Bolden, that Bolden had authorized defendants to use the composition, and that therefore the Batistes had failed to raise a genuine issue of material fact on their copyright infringement claims. The district court also determined that the Batistes failed to raise an issue of material fact that defendants had violated the Lanham Act because "Funky Soul" was attributed to "David Batiste & The Gladiators" in the liner notes accompanying the album, and that defendants' actions were not unfair or deceptive under the LUTPL because David Batiste transferred any interest he had in the "Funky Soul" composition to Bolden in exchange for royalties and the Batistes failed to produce any evidence indicating that defendants knew or should have known of any interest in "Funky Soul" held by Paul and Michael Batiste. Finally, the district court granted summary judgment on David Batiste's conversion and misappropriation claims because he had transferred any ownership rights he held to Bolden in 1970, but the court refused to grant summary judgment on similar claims raised by Paul and Michael Batiste because they ...