Daboub v. Gibbons
| Decision Date | 12 January 1995 |
| Docket Number | No. 94-10129,94-10129 |
| Citation | 42 F.3d 285 |
| Parties | 1995 Copr.L.Dec. P 27,363, 33 U.S.P.Q.2d 1441 Mario A. DABOUB, d/b/a The Nightcaps, et al., Plaintiffs-Appellants, v. William Frederick GIBBONS, et al., Defendants-Appellees. |
| Court | U.S. Court of Appeals — Fifth Circuit |
Richard L. Jackson, Dallas, TX, for appellants.
Charles Allen Gall, Mary Lynne Murphy, James W. Bowen, Jenkens & Gilchrist, Dallas, TX, for appellees.
Appeal from the United States District Court for the Northern District of Texas.
Before POLITZ, Chief Judge, GOLDBERG and DUHE, Circuit Judges.
Imitation may be the sincerest form of flattery, but it may also lead to jealousy when the imitator succeeds where the imitated does not. In this case, the object of imitation is a rock and roll song.
The appellants, members of the rock and roll band the Nightcaps, claim that the appellees, members of the rock and roll band ZZ Top, are copycats and stole the song Thunderbird from them. The Nightcaps allege a number of state and federal law violations based on ZZ Top's version of Thunderbird. Before addressing these legal theories, we present a brief description of the cast of the contestants in this battle of the bands.
The members of the Nightcaps formed the band in the 1950's when they were teenagers. The band recorded and released Thunderbird as a single and on an LP entitled Wine, Wine, Wine. The Nightcaps performed the song and distributed the album, but never applied for a copyright. Apparently the song and the album did not shower the Nightcaps with fame and fortune, and the band broke up in the 1960's.
ZZ Top, in contrast, is currently a very successful band. The group, originally formed in 1969, also recorded and released a song entitled Thunderbird. ZZ Top's version of Thunderbird can be heard on its 1975 album Fandango!, its compilation set, and in concert. ZZ Top obtained a copyright on the song in 1975.
ZZ Top concedes, for the purposes of this appeal, that its version of the song Thunderbird is musically and lyrically identical to the version originally written and performed by the Nightcaps. 1
After the pleadings had been filed, the district court referred the case to a magistrate. The magistrate found that the Nightcaps' state and federal claims were either preempted by the Federal Copyright Statute, 17 U.S.C. Sec. 101, et seq., (the "Copyright Act"), or were barred by the applicable statutes of limitations. The magistrate issued a report which recommended that the Nightcaps' complaint be dismissed, or alternatively, that summary judgment be granted in ZZ Top's favor. The district court adopted the magistrate's report and recommendations, and granted summary judgment to ZZ Top. The Nightcaps appeal to this court.
The Nightcaps versify arguments urging us to reverse the district court's grant of summary judgment. They assert that summary judgment was improperly granted because they were not permitted adequate discovery. Second, the Nightcaps insist that the district court improperly determined that the federal copyright law preempted their state law causes of action. Finally, the Nightcaps argue that the relevant statutes of limitations do not silence the melodies of their claims.
The Nightcaps claim that they were denied sufficient discovery, and that therefore the district court prematurely considered ZZ Top's summary judgment motion. However, the Nightcaps have failed to specifically state what information they seek to obtain through discovery and how discovery would help their case. ZZ Top has accepted all of the Nightcaps' factual allegations for purposes of the motions to dismiss and for summary judgment. The record does not indicate that the district court was overly parsimonious in allowing time for discovery, and we cannot even find any bait for the Nightcaps to conduct a fishing expedition. The Nightcaps' simple request for additional time to compose additional discovery is not sufficient to meet the burden of articulating specific facts establishing a genuine dispute for trial. See Matsushita Electric Industrial Co. v. Zenith Radio Corp., 475 U.S. 574, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986); Leatherman v. Tarrant County Narcotics Intelligence & Coordination Unit, 28 F.3d 1388 (5th Cir.1994); Nowlin v. Resolution Trust Co., 33 F.3d 498 (5th Cir.1994). Therefore, the Nightcaps' silence as far as naming what they are looking for through discovery is fatal to their argument, and the district court's decision to rule on the summary judgment motion was proper.
The Nightcaps sing a chorus of state and federal law theories in their attempt to escape the grasp of the Copyright Act's preemption provision, 17 U.S.C. Sec. 301(a). The Copyright Act expressly preempts all causes of action falling within its scope, with a few exceptions. The Nightcaps' arguments against preemption fall into two categories. First, the Nightcaps argue that a statutory exception to the preemption provision applies to their claims. Second, the Nightcaps argue that their causes of action are not "equivalent" to a cause of action under the Copyright Act, and therefore Sec. 301(a) does not apply.
The Nightcaps argue that the exception found in Sec. 301(c) 2 applies to this case, because Thunderbird is a "sound recording" that was "fixed" prior to 1972. ZZ Top argues, and the lower court held, that the exception does not apply to the case at bar.
Section 301(c) was intended to apply to "pirated" recordings of performances, rather than to the lyrics alone. One commentator analyzing the exception stated:
The distinction may be summed up as the difference between a copyright in a Cole Porter song and a copyright in Frank Sinatra's performance of that song. The former would be a musical work copyright and the latter would be a sound recording copyright, although both may be embodied in the same phonorecord.
1 M. Nimmer, Copyright Sec. 4.06, p. 4-34 n. 1. See also Jarvis v. A & M Records, 827 F.Supp. 282, 292 (D.N.J.1993). In the case before us, the Nightcaps do not allege that ZZ Top presented a recorded version of the Nightcaps' rendition of Thunderbird as if it were performed by ZZ Top. Instead, the Nightcaps simply claim that ZZ Top wrongfully took the words of the song and recorded its own version. 3 In Nimmer's analogy, the Nightcaps are like Cole Porter, not Frank Sinatra. Thus, the Sec. 301(c) exception does not apply to this case.
The next verse of the Nightcaps' argument is that Sec. 301(a) does not preempt the Nightcaps' suggested causes of action. Section 301(a) accomplishes the general federal policy of creating a uniform method for protecting and enforcing certain rights in intellectual property by preempting other claims. 4 The courts have interpreted the provision to contain a two-step test. First, the cause of action is examined to determine if it falls "within the subject matter of copyright." Second, the cause of action is examined to determine if it protects rights that are "equivalent" to any of the exclusive rights of a federal copyright, as provided in 17 U.S.C. Sec. 106. Gemcraft Homes, Inc. v. Sumurdy, 688 F.Supp. 289, 294 (E.D.Tex.1988) (citing Crow v. Wainwright, 720 F.2d 1224, 1226 (11th Cir.1983), cert. denied, 469 U.S. 819, 105 S.Ct. 89, 83 L.Ed.2d 35 (1984)). Section 106 grants the holder of a copyright the exclusive right to reproduce, distribute, perform, and display the copyrighted work. 5
The Nightcaps' argument focuses on the "equivalency" step. 6 The Nightcaps attempt to demonstrate how their state law claims are not "equivalent" to a cause of action under the Copyright Act by focussing on the specific elements of the causes of action they allege. ZZ Top argues, and the district court held, that these state law causes of action are "equivalent" to the exclusive rights contained in the Copyright Act, and therefore these causes of action are preempted.
The Nightcaps primarily rely on G.S. Rasmussen & Assoc., Inc. v. Kalitta Flying Service, 958 F.2d 896 (9th Cir.1992), cert. denied, --- U.S. ----, 113 S.Ct. 2927, 124 L.Ed.2d 678 (1993), to support their interpretation of the equivalency step and their contention that their state law claims are not preempted. However, that case is distinguishable from the case at hand. In G.S. Rasmussen, the court held that the Copyright Act did not preempt the plaintiff's claims, because those claims addressed interests that were not equivalent to interests protected by the Copyright Act. Id. at 904. The plaintiff in that case complained about the use of copyrighted material in order to obtain a regulatory permit. Id. The plaintiff was not simply complaining about the improper copying of the copyrighted material. G.S. Rasmussen is distinguishable from the case before us, because the Nightcaps' state claims center on the improper copying of the song, an interest clearly protected by the Copyright Act. The Nightcaps' state law claims include conversion, misappropriation, plagiarism, a violation of the Texas Free Enterprise and Antitrust Act of 1983, disparagement, and defamation. The core of each of these state law theories of recovery in this case, without detailing the specific elements comprising each claim, is the same: the wrongful copying, distribution, and performance of the lyrics of Thunderbird. The similitude of tunes with respect to the state and copyright causes of action is a most harmonious one. The Nightcaps have failed to allege or produce evidence of "any element, such as an invasion of personal rights or a breach of fiduciary duty, which render [their claims] different in kind from copyright infringement." P.I.T.S. Films v. Laconis, 88 F.Supp. 1383 (E.D.Mich.1984). As another court stated:
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