Johnson v. Berry

• Decision Date: 11 June 2001
• Docket Number: No. 4:00CV1891-DJS.,4:00CV1891-DJS.
• Citation: 171 F.Supp.2d 985
• Parties: Johnnie JOHNSON, Plaintiff, v. Charles E. BERRY and Isalee Music Company, Defendants.
• Court: U.S. District Court — Eastern District of Missouri

171 F.Supp.2d 985

Johnnie JOHNSON, Plaintiff, v. Charles E. BERRY and Isalee Music Company, Defendants.

No. 4:00CV1891-DJS.

United States District Court, E.D. Missouri, Eastern Division.

June 11, 2001.

Mitchell A. Margo, Curtis and Oetting, St. Louis, MO, Scott J. Orr, Orr Law Firm, Sacramento, CA, for plaintiff.

Martin M. Green, Joe D. Jacobson, Fernando Bermudez, Green and Schaaf, St. Louis, MO, for defendants.

ORDER

STOHR, District Judge.

Defendant Charles E. Berry is the famed singer and guitarist popularly known as Chuck Berry. In 1953, plaintiff Johnnie Johnson, a pianist, invited Berry to join his musical group, which was later renamed the Chuck Berry Trio. Defendant Isalee Music Company is alleged to be a publishing company wholly owned by Berry. Johnson brings the instant action alleging that he is owed an accounting and compensation for some 50 songs first performed and recorded by the parties' band between 1955 and 1966. The seven-count complaint asserts a right to various species of relief under theories including copyright infringement, breach of fiduciary duty and fraud. Now before the Court is defendants' motion to dismiss urging various arguments for the dismissal of each of plaintiff's claims as a matter of law. Defendants have also filed a motion for reconsideration of the Court's order of May 30, 2001, requiring defendants to produce to plaintiff copies of all documents identified in their Rule 26 disclosure.

MOTION TO DISMISS

Count I — Copyright Infringement — "Wee Wee Hours"

Count I of the complaint asserts a claim of copyright infringement against both defendants as to the song "Wee Wee Hours," alleging that the song resulted from a May 1955 recording session in which Berry wrote words to a previously untitled instrumental blues song that Johnson had created in the late 1940's. In their motion to dismiss, defendants contend that the claim is not legally viable because there can be no infringement by a co-author under the Copyright Act.¹ The parties do not disagree on this legal principle, which appears to be well-established.

"A co-owner of a copyright cannot be liable to another co-owner for infringement of the copyright." Oddo v. Ries, 743 F.2d 630, 632-33 (9th Cir.1984). Because a co-owner is an owner, he has a right to use or license the use of the copyright, and cannot be an infringer: his duty to account to other co-owners for profits arises from equitable doctrines relating unjust enrichment and general principles of co-ownership, and does not amount to an infringement claim. Id. at 633. An infringement claim can be brought only against one who violates "the exclusive rights of the copyright owner," see 17 U.S.C. § 501(a), (b), and an owner does not have rights exclusive of a co-owner's, so an infringement claim cannot lie against a co-owner.

Zuill v. Shanahan, 80 F.3d 1366, 1369 (9th Cir.1996). Plaintiff argues, however, that this principle does not apply to defeat Count I because Count I does not allege co-ownership of the copyright in question.

Co-ownership is a legal concept, however, not merely a factual assertion, and the Court must therefore examine the factual allegations of the complaint to determine whether they, if true, inherently yield the conclusion of joint ownership.

The Copyright Act defines a "joint work" as a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole. 17 U.S.C. § 101 (1988 & Supp.1993). The parts of a work are "interdependent" when they have some meaning standing alone but achieve their primary significance because of their combined effect, as in the case of the words and music of a song... The requisite intent to create a joint work exists when the putative joint authors intend to regard themselves as joint authors ... It is not enough that they intend to merge their contributions into one unitary work.

Papa's-June Music, Inc. v. McLean, 921 F.Supp. 1154, 1157 (S.D.N.Y.1996), citing Childress v. Taylor, 945 F.2d 500, 505 (2d. Cir.1991). Plaintiff correctly points out that the complaint does not expressly allege that Johnson and Berry "collaborated" on "Wee Wee Hours," the song that is the subject of Count I.

In this respect, the complaint's allegations are different concerning the catalogue of 50-plus songs specifically named and categorically designated as the "Berry/Johnson Songs." The complaint explicitly alleges that "Mr. Johnson and Mr. Berry together created" and "in collaboration, created" these songs. Complaint, ¶ 8; see also Complaint, ¶ 9 ("Mr. Johnson collaborated with Mr. Berry to write the music for the Berry/Johnson songs."). Plaintiff acknowledges that, based on these allegations, Berry cannot be liable to him for copyright infringement, and so concedes defendants' motion as to Count IV, which asserts a claim of copyright infringement as to all the Berry/Johnson songs.

What is alleged concerning "Wee Wee Hours" is that in a 1955 recording session, plaintiff suggested that the parties' band record a previously untitled instrumental song plaintiff had composed in the 1940's, and that the recording was made, with defendant Berry singing lyrics he added at that time. That Johnson participated voluntarily in the recording, including the addition of the new lyrics created by Berry, can be inferred from these allegations. In opposition to the motion, plaintiff does not argue the legal implications of the pled facts and does not assert additional facts; he stands instead on the assertion that the complaint "contains no allegation that there was an agreement between Mr. Johnson and Mr. Berry to collaborate on this song." Pltf. Response in Opp., p. 4.

Intentional collaboration is inherent in the facts which plaintiff has pled. The song was allegedly created in a recording session in which Johnson and Berry both willingly participated in the marriage of Johnson's pre-existing tune with Berry's newly-created lyrics. These facts demonstrate an intention that their respective contributions be merged into interdependent parts of a unitary whole, as described in Childress, 945 F.2d at 505, in which the Second Circuit cites the combination of words and music to create a song as a paradigm example of joint authorship. Because the joint authorship necessarily implied by the facts pled in Count I would, in the absence of any transfers of interest, yield co-ownership of the copyright, Count I is susceptible to the same defect as plaintiff has acknowledged as to Count IV, namely that there can be no infringement by a co-owner of the copyright. Defendants' motion will be granted as to Count I.²

Count II — Declaratory Judgment of Co-Ownership in Copyrights

Count II seeks a declaratory judgment against both defendants that Johnson was a partner in the creation of, and is therefore a co-owner of the copyrights to, the Berry/Johnson songs, and that Johnson has an interest in the renewal copyrights. Defendants contend that this claim is time-barred, citing the three-year statute of limitations found in the Copyright Act, 17 U.S.C. § 507(b). In response, Johnson cites two theories for tolling the statute of limitations, facts supporting which are pled in his complaint. The first is in the nature of fraudulent concealment by Berry, based on Johnson's allegations that Berry "repeatedly led Mr. Johnson to believe that he was not entitled to compensation for the Berry/Johnson Songs over and above the fee he received as a musician during the various recording sessions." Complaint, ¶ 10. The second theory is that of plaintiff's incapacity due to alcoholism:

Mr. Johnson experienced the onset of alcoholism in the late 1940's. For decades thereafter Mr. Johnson suffered the physical, emotional and mental symptoms and consequences of this disease which rendered him unable to comprehend the magnitude of his musical contributions or the ownership rights to the music that he created with Mr. Berry.

Complaint, ¶ 11.

The cases cited by the parties yield the following legal principles pertinent to the Court's determination. First, in 1996 the Ninth Circuit observed: "There is a surprising lack of precedent on the question of when a cause of action claiming co-ownership of a copyright accrues." Zuill, 80 F.3d at 1370. Nonetheless, "[a] claim for a declaratory judgment of co-ownership and the relief ancillary to such a claim is a civil action, and `[n]o civil action shall be maintained...unless it is commenced within three years after the claim accrued.'" Id. at 1371, quoting 17 U.S.C. § 507(b). In a copyright accrual context, the Second Circuit has held that "[a] cause of action accrues when a plaintiff knows or has reason to know of the injury upon which the claim is premised." Stone v. Williams, 970 F.2d 1043, 1048 (2nd Cir. 1992); Merchant v. Levy, 92 F.3d 51, 56 (2nd Cir.1996). "A cause of action accrues when a reasonably diligent plaintiff would have been put on inquiry as to the existence of a right." Netzer v. Continuity Graphic Associates, Inc., 963 F.Supp. 1308, 1315 (S.D.N.Y.1997). Adopting by analogy a principle from tenancy in common in real property, the Zuill court noted that "[a]n express or implicit ouster of a cotenant by an unequivocal act of ownership starts the adverse possession statute of limitations running."

Legislative history quoted in Zuill indicates Congress' intent that "[e]quitable considerations are available to prolong the time for bringing suit in such cases where there exist the disabilities of insanity or infancy, absence of the defendant from the jurisdiction, fraudulent concealment, etc." S.Rep. 85-1014, p.1963 (1957), quoted in Zuill, 80 F.3d at 1369, n. 1. In Merchant, the jury appears to have concluded that the plaintiffs' minority tolled the running of the statute of limitations until they reached the age of majority, and on appeal "duress" was argued to toll the statute of limitations. Merchant, 92 F.3d at 56. The...