Davis v. Blige

• Decision Date: 05 October 2007
• Docket Number: Docket No. 05-6844-cv.
• Citation: 505 F.3d 90
• Parties: Sharice DAVIS, Plaintiff-Appellant, v. Mary J. BLIGE, Bruce Miller, Ronald Lawrence, Kwame Holland, Dana Stinson, Ausar Music, Mary J. Blige Publishing, Bruce Miller Publishing, Kwame Holland Publishing, Mary J. Blige Music, Dayna S. Day Publishing, Warner-Tamerlane Music Publishing Corp., Universal Music Group, Inc., Universal Studios, Inc., Universal Music Publishing Group, Universal-MCA Music Publishing, Universal Music & Video Distribution Corp., Andmca Records, Inc., Defendants-Appellees.
• Court: U.S. Court of Appeals — Second Circuit

505 F.3d 90

Sharice DAVIS, Plaintiff-Appellant, v. Mary J. BLIGE, Bruce Miller, Ronald Lawrence, Kwame Holland, Dana Stinson, Ausar Music, Mary J. Blige Publishing, Bruce Miller Publishing, Kwame Holland Publishing, Mary J. Blige Music, Dayna S. Day Publishing, Warner-Tamerlane Music Publishing Corp., Universal Music Group, Inc., Universal Studios, Inc., Universal Music Publishing Group, Universal-MCA Music Publishing, Universal Music & Video Distribution Corp., Andmca Records, Inc., Defendants-Appellees.

Docket No. 05-6844-cv.

United States Court of Appeals, Second Circuit.

Argued: January 10, 2007.

Decided: October 5, 2007.

Richard J. J. Scarola (Alexander Zubatov, on the brief), Scarola Ellis LLP, New York, NY, for Plaintiff-Appellant.

Jonathan D. Davis, New York, NY, for Defendants-Appellees Mary J. Blige and Mary J. Blige Music.

Cynthia S. Arato, Gibson Dunn & Crutcher LLP, New York, NY, for Defendants-Appellees Warner-Tamerlane Publishing Corp., Dana Stinson, and Dayna's Day Publishing.

Andrew H. Bart, Jenner & Block LLP, New York, NY, for Defendants-Appellees Universal Music Group, Inc., Universal Studios, Inc., Universal Music Publishing, Inc., Universal-MCA Music Publishing, a division of Universal Studios, Inc., Universal Music & Video Distribution Corp., and MCA Records, a division of UMG Recordings, Inc.

Gregory J. Watford, New York, NY, for Defendants-Appellees Ronald Lawrence and Ausar Music Publishing, Ltd.

George T. Gilbert, New York, NY, for Defendant-Appellee Bruce Miller.

Before: WINTER and CABRANES, Circuit Judges, and KORMAN, District Judge.¹

JOSÉ A. CABRANES, Circuit Judge:

The question presented, one of first impression in the courts of appeals, is whether an action for infringement by one co-author of a song can be defeated by a "retroactive" transfer of copyright ownership from another co-author to an alleged infringer. This action arises under the current statute governing copyright law, the Copyright Act of 1976, 17 U.S.C. §§ 101 et seq. ("the Copyright Act"), because "the complaint is [in part] for a remedy expressly granted by [the Copyright Act], e.g., a suit for infringement . . ., [and] asserts a claim requiring construction of [the Copyright Act], . . . or, at the very least . . . presents a case where a distinctive policy of [the Copyright Act] requires that federal principles control the disposition of the claim." T.B. Harms Co. v. Eliscu, 339 F.2d 823, 828 (2d Cir.1964) (Friendly, J.).

Plaintiff Sharice Davis ("plaintiff" or "Davis") appeals from an order of the United States District Court for the Southern District of New York (Charles S. Haight, Jr., Judge) dismissing by summary judgment her claims under the Copyright Act, her claim for a declaratory judgment under 28 U.S.C. § 2201, and her state-law claims alleging unfair competition, unjust enrichment, and violations of New York's consumer protection statutes. See Davis v. Blige, 419 F.Supp.2d 493 (S.D.N.Y.2005). The District Court concluded that a "retroactive" written agreement between Bruce Chambliss, Davis's alleged co-author, and Bruce Miller, one of the defendants, purporting to assign Chambliss's rights in two disputed songs as of the time of their creation, was valid. Reasoning that "a co-owner has a legal right to grant a license without another co-owner's permission or transfer his rights in the copyright freely," id. at 500, the District Court held that the transfer of co-ownership rights by Chambliss to Miller— who had licensed the copyright to third parties also named as defendants (collectively the "third-party defendants") before the written agreement was executed—defeated Davis's claims not only against Miller but also against the third-party defendants, who were in privity with Miller.

We disagree, and therefore vacate the judgment and remand for further proceedings consistent with this opinion.

BACKGROUND

A. Facts

The facts of this case are laid out fully in Judge Haight's opinion. We recount here only those facts relevant to the issues on appeal. Unless otherwise noted, the facts are undisputed.

The dispute between the parties arises from the release in 2001 of an album entitled "No More Drama" ("the Album"). Defendant Mary J. Blige, the "Queen of Hip-Hop Soul," J.A. 325, was the performer on the Album, which achieved "triple platinum" status.² Davis alleges that two of the songs contained on the Album— "LOVE" and "Keep It Moving" (collectively, the "Album compositions")—infringe her copyright in two compositions (collectively, the "disputed compositions"). In particular, she claims that "LOVE" is virtually identical to her composition "L.O.V.E.," and that "Keep It Moving" bears substantial similarity to her composition "Don't Trade in My Love." Davis does not receive any song-writing credit on the Album; instead, the labels and packaging of the Album identify (1) Blige, Miller, and defendants Kwame Holland and Ronald Lawrence as the authors of "LOVE" and (2) Blige, Miller, Holland, and defendant Dana Stinson as the authors of "Keep It Moving." See id. at 495 n. 2.

Davis claims the disputed compositions were co-authored in 1998 by her and Chambliss, Miller's father; Chambliss is not a party to this action. According to one witness, Hunter College Professor Barbara Ottaviani, the disputed composition "L.O.V.E." was written in 1998 during jam sessions in the home of Ottaviani attended by, among others, Davis, Chambliss, and Miller. A tape recording of "L.O.V.E." was made during one of these jam sessions, but the tape disappeared shortly thereafter. At about this time Davis met Blige, who is Miller's sister and the step-daughter of Chambliss. Davis states that she had performed "L.O.V.E." for Blige and that Miller subsequently approached Davis on behalf of Blige, seeking to buy several of Davis's songs, including "L.O.V.E." Davis alleges that she declined the offer. She also alleges that she wrote "Don't Trade in My Love" with Chambliss in or around November 1998 at Ruff Riders Studio.

In August 2001, defendants Ausar Music, Mary J. Blige Publishing, Bruce Miller Publishing, and Kwame Holland Publishing registered "LOVE" and defendant Universal Music MCA Music Publishing, and Blige, Miller, and Stinson registered "Keep It Moving" with the United States Copyright Office ("Copyright Office"). On February 28, 2002, Miller contracted with Universal Tunes, a division of defendant Universal, Inc., to provide an exclusive license to exploit his copyright interest in the Album compositions as well as his copyright interests in any other compositions not previously assigned to other music publishing companies. On August 14, 2002, Davis registered the disputed compositions with the Copyright Office, listing Chambliss as a co-author. In December 2003, Davis filed suit, alleging infringement of her copyright in the two disputed compositions and a variety of related state claims.

Defendants' April 30, 2003 and August 11, 2003 answers to Davis's complaint denied that anyone other than the defendants listed as authors on the Album wrote the songs. But in depositions given in December 2003 and January 2004 (Miller), and June and August 2004 (Chambliss), both Miller and Chambliss testified that Chambliss had initially written the disputed compositions and that they formed the basis for the Album compositions;³ Chambliss denied ever collaborating on any songs with Davis.⁴ Chambliss and Miller also stated that they had orally agreed Chambliss would grant Miller certain rights in the compositions, although the existence and nature of the alleged oral agreement is in dispute.⁵ See Davis, 419 F.Supp.2d at 498 (noting that "a genuine issue exists as to whether Chambliss ever orally transferred his rights in the [disputed] compositions"). On June 23, 2004, one day before Chambliss's initial deposition, Chambliss and Miller allegedly reduced to a writing the transfer of Chambliss's interest in the disputed compositions.⁶ There were two written agreements (collectively, the "transfer agreements"), one for each of the disputed compositions. Each written agreement stated that Chambliss "does hereby sell, assign, transfer, and set over unto Bruce Miller . . . an undivided one hundred percent (100%) share in and to all the undersigned's right, title and interest" in the respective disputed compositions "and any and all universe-wide copyrights and all renewals, extensions and reversions thereof [and] any and all causes of action for infringement of the same past, present, and future; any and all proprietary rights; and all the proceeds from the foregoing accrued and unpaid and hereafter accruing." (emphasis added). According to the transfer agreements, the "instrument of transfer is effective as of the date [Chambliss] first create[d] the above-referenced Composition"—a date not otherwise specified. Defendants claimed that these written agreements merely served to confirm or ratify the prior oral agreement.

B. Procedural History

Davis's complaint alleges that defendants infringed her copyright to the disputed compositions by (1) recording and registering copyrights on "LOVE" and "Keep It Moving," which were substantially similar to her compositions, and (2) falsely attributing authorship to (a) Blige, Miller, Holland, and Lawrence on "LOVE" and (b) Blige, Miller, and Stinson on "Keep It Moving." Davis also alleges that defendants falsely designated the origin of their goods in violation of the Lanham Act § 43(a), 15 U.S.C. § 1125(a);⁷ engaged in unfair competition; and were unjustly enriched. Finally, she claims that defendants' acts were intentionally designed to mislead the public in violation of N.Y. Gen. Bus. Law §§ 349 and 350.⁸

Following the completion of discovery, defendants moved for summary judgment on the ground that Chambliss had transferred his rights in the disputed compositions to Miller through an oral agreement before the compositions were used by Miller, or, alternatively, on the ground...