Batiste v. Najm

• Citation: 28 F.Supp.3d 595
• Decision Date: 25 June 2014
• Docket Number: Civil Action No. 13–5463.
• Court: U.S. District Court — Eastern District of Louisiana
• Parties: Paul BATISTE d/b/a Artang Publishing LLC v. Faheem Rasheed NAJM p/k/a T–Pain, et al.

28 F.Supp.3d 595

Paul BATISTE d/b/a Artang Publishing LLC
v.
Faheem Rasheed NAJM p/k/a T–Pain, et al.

Civil Action No. 13–5463.

United States District Court, E.D. Louisiana.

Signed June 25, 2014

Motion granted in part and denied in part.

[28 F.Supp.3d 597]

Lena R. Hinton, Law Office of Lena Rachal Hinton, LLC, New Orleans, LA, for Paul Batiste d/b/a Artang Publishing LLC.

Gregory D. Latham, Gregory D. Latham, Attorney at Law, Ellis Jay Pailet, Law Office of Ellis Pailet, Lance Stephen Ostendorf, Ostendorf, Tate, Barnett & Wells, LLP, New Orleans, LA, Barry I. Slotnick, Attorney at Law, Thomas D. Nolan, Loeb & Loeb, LLP, New York, NY, for Faheem Rasheed Najm p/k/a T–Pain, et al.

ORDER AND REASONS
KURT D. ENGELHARDT, District Judge.

Before the Court is the Defendants' Motion to Dismiss (Rec. Doc. 58). Plaintiff has filed an opposition memoranda (Rec. Doc. 111), and the Defendants have filed a reply memoranda (Rec. Doc. 113).

I. BACKGROUND:

Plaintiff Paul Batiste, doing business as Artang Publishing LLC, is the founding member and owner of the Batiste Brothers Band, founded in New Orleans, Louisiana in 1976. Rec. Doc. 1 at 1. In this copyright infringement action, the plaintiff has sued dozens of defendants (including the Defendants

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¹ who are movants in the instant motion), alleging that 45 of his music compositions are infringed in 63 of the Defendants' songs. Plaintiff has alleged infringement of various beats, lyrics, chords, melodies, chants, hooks, horns, and “gliss” within his songs. See Rec. Doc. 1. On December 13, 2013, Defendants filed the instant motion as a Motion to Dismiss pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure. Rec. Doc. 58. Given that both parties submitted materials outside the pleadings, the Court gave notice pursuant to Rule 12(d) that it would treat the motion as one for summary judgment pursuant to Rule 56. See Rec. Doc. 116.

II. APPLICABLE LAW: A. Summary Judgment under Rule 56:

“The Court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). “When a party seeks summary judgment pursuant to an affirmative defense, such as a statute of limitation, the movant must establish all of the elements of the defense.” Citigroup Inc. v. Federal Ins. Co., 649 F.3d 367, 371 (5th Cir.2011). “If the movant does so, the burden shifts to the nonmovant to provide specific facts showing the existence of a genuine issue for trial.” Id. “[T]here is no issue for trial unless there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party.” Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 234 (5th Cir.2010) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). Although the Court must draw in favor of the nonmoving party all reasonable inferences that may be drawn from the evidence submitted, “a party cannot defeat summary judgment with conclusory allegations, unsubstantiated assertions, or ‘only a scintilla of evidence.’ ” Turner v. Baylor Richardson Medical Center, 476 F.3d 337, 343 (5th Cir.2007) (quoting Little v. Liquid Air Corp., 37 F.3d 1069, 1075 (5th Cir.1994)); Bellard v. Gautreaux, 675 F.3d 454, 460 (5th Cir.2012). The substantive law will determine the materiality of facts, and “[o]nly disputes over facts that might affect the outcome of the suit under governing law will properly preclude the entry of summary judgment.” Liberty Lobby, 477 U.S. at 248, 106 S.Ct. 2505.

B. Copyright Infringement:

To establish a claim for copyright infringement, a plaintiff must show: (1) that he owns a valid copyright (which is not challenged in the instant motion), and (2) that the defendant copied constituent elements of the plaintiff's work that are original and copyrightable. Positive Black Talk, Inc. v. Cash Money Records, 394 F.3d 357, 367 (5th Cir.2004), abrogated on other grds by Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 130 S.Ct. 1237, 176 L.Ed.2d 18 (2010); Engineering Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335, 1340 (5th Cir.1994), supplemented

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, 46 F.3d 408 (5th Cir.1995). “To establish actionable copying ( i.e. the second element), a plaintiff must prove: (1) factual copying and (2) substantial similarity.” Positive Black Talk, Inc., 394 F.3d at 367. This traditional two-step determination—known traditionally as the Arnstein test ²—continues to be employed and has also evolved into more elaborate formulations, as discussed below.

The Defendants have assumed for purposes of the instant motion that the element of factual copying can be met and ask the Court to dismiss the plaintiff's claims on grounds that the second element of copying— i.e., the test for substantial similarity—cannot be met as a matter of law. Thus, the standards for proving the element of factual copying are not directly relevant to the task at hand. Nevertheless, because components of the factual copying inquiry are sometimes confused and conflated with those for determining substantial similarity ( i.e., the actionability of the copying), the Court will summarize the factual copying inquiry. Also, because copying is actionable only where the defendant has copied aspects of the plaintiff's work that are original and subject to copyright,³ the actionability inquiry ( i.e., substantial similarity) necessarily entails determination as to whether certain elements of the plaintiff's work are non-original or otherwise unprotectable. Therefore, the Court will also address briefly the requirements of originality and protectability as well.

1. Factual Copying—“Probative Similarity”

In some cases, the plaintiff has direct evidence of copying. Indeed, it is not unusual for a defendant to admit copying a small element of the plaintiff's work and defend the suit solely on grounds that the copied element is unprotectable or that the portion copied was not substantial. Where copying is contested and direct evidence of copying is unavailable, “factual copying may be inferred from (1) proof that the defendant had access to the copyrighted work and (2) probative similarity.” Positive Black Talk, 394 F.3d at 368 (quoting Peel & Co. v. Rug Mkt., 238 F.3d 391, 394 (5th Cir.2001)). Although courts once used the term “substantial similarity” to apply to both inquiries, the test for “probative similarity” differs in both purpose and substance from that for determining “substantial similarity” ( i.e. whether the copying is legally actionable). In determining probative similarity, the plaintiff's entire work is considered—“including both copyrightable and non-copyrightable parts”—and compared with the defendant's work, “looking for any similarities between their constituent parts.” Positive Black Talk, 394 F.3d at 369–70. “[T]he fact that non-protectable elements were copied, although not a basis for liability, can be probative of whether protected elements were copied ( i.e., help establish probative similarity).” Id. (quoting O.P. Solutions, Inc. v. Intellectual Prop. Network, Ltd., 1999 WL 47191 *3 (S.D.N.Y.1999)). A finding of probative similarity may be supported by a finding of “any similarities between the two works (whether substantial or not) that, in the normal course of events, would not be expected to arise independently in the two works and that therefore might suggest that the defendant

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copied part of the plaintiff's work.” Positive Black Talk, 394 F.3d at 370.⁴

2. Originality and Protectability:

“[T]he mere fact that [a plaintiff's works] are copyrighted does not mean that all aspects of those [works] are automatically protected.” Kepner–Tregoe, Inc. v. Leadership Software, Inc., 12 F.3d 527, 533 (5th Cir.1994). Although the work itself may be original and subject to copyright, it may contain constituent elements that are not subject to copyright because they are not original or because they are otherwise unprotectable, e.g., because they constitute a concept, method, or idea or fall under the doctrine of public domain or scènes à faire. In such a case, the copyright does not extend to the unprotectable element. With some caveat,⁵ similarity deriving from such unprotectable elements is not actionable.

“The sine qua non of copyright is originality.” Feist Publications v. Rural Tel. Service, 499 U.S. 340, 345, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). Originality requires “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 358, 111 S.Ct. 1282. Thus, “the copyright is limited to those aspects of the work—termed ‘expression’—that display the stamp of the author's originality.” Kepner–Tregoe, 12 F.3d at 533 (quoting Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985)). In other words, though the work may be original and copyrightable, the copyright does not extend to the non-original elements of the work, and the author has no right to prevent others from copying those elements that are not original.

“Some material is unprotectible because it is in the public domain, which means that it is free for the taking and cannot be appropriated by a single author even though it is included in a copyrighted work.” Boisson v. Banian, Ltd., 273 F.3d 262, 268–69 (2nd Cir.2001) (quoting Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 710 (2nd Cir.1992) (internal quotations omitted)). “[A] work may be protected by copyright even though it is based on ... something already in the public domain if the author, through his skill and effort, has contributed a distinguishable variation from the older works.” ⁶ Norma Ribbon & Trimming, Inc. v. Little, 51 F.3d 45, 47 (5th Cir.1995) (quoting Donald v. Zack Meyer's T.V. Sales & Serv., 426 F.2d 1027, 1029 (5th...