Kamakazi Music Corp. v. Robbins Music Corp., 80 Civ. 2877 (RWS).

• Decision Date: 15 September 1981
• Docket Number: No. 80 Civ. 2877 (RWS).,80 Civ. 2877 (RWS).
• Citation: 534 F. Supp. 57
• Parties: KAMAKAZI MUSIC CORP., Barry Manilow and Warner Bros. Publications, Inc., Plaintiffs, v. ROBBINS MUSIC CORPORATION and Vicks Lithograph, Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

534 F. Supp. 57

KAMAKAZI MUSIC CORP., Barry Manilow and Warner Bros. Publications, Inc., Plaintiffs, v. ROBBINS MUSIC CORPORATION and Vicks Lithograph, Inc., Defendants.

No. 80 Civ. 2877 (RWS).

United States District Court, S. D. New York.

September 15, 1981.

COPYRIGHT MATERIAL OMITTED

Bender & Frankel, New York City, for plaintiffs; Sandor Frankel, New York City, of counsel.

Abeles, Clark & Osterberg, New York City, for defendant Robbins Music Corp.; Robert C. Osterberg, New York City, of counsel.

Evans, Severn, Bankert & Peet, Utica, N. Y., for defendant Vicks Lithograph Corp.; Philip A. Rayhill, Utica, N. Y., of counsel.

OPINION

SWEET, District Judge.

Currently before the court in this action for copyright infringement are several motions that will be dealt with in the order they were heard. First is the motion by Kamakazi Music Corporation ("Kamakazi") to confirm the arbitrator's award. This has been previously deemed by the court to be a motion for summary judgment by plaintiff Kamakazi on the issue of the validity of the Kamakazi copyrights found by the arbitrator to have been infringed. The second is the motion of plaintiff Warner Brothers Publications, Inc. ("Warner") to dismiss counterclaims asserted by defendant Robbins Music Corporation ("Robbins") and in the alternative seeking a separate trial of the issues. The third set of motions relate to the Kamakazi motion for a preliminary injunction argued on September 4, 1981 seeking to prevent further distribution of certain folios containing Kamakazi compositions. For the reasons stated below, the Kamakazi motion to confirm the arbitrator's award will be granted, the Warner motion to dismiss Robbins' counterclaim will be denied and the Kamakazi motion for a preliminary injunction will also be denied.¹

I. Motion for Summary Judgment

The motion regarding validity of the Kamakazi copyrights follows upon this court's opinion in this action dated August 3, 1981 which addressed a motion by Kamakazi to confirm and a cross-motion by Robbins to vacate the awards of the arbitrator. A detailed statement of the facts and the procedural history of this case is contained in the August 3 opinion, 522 F.Supp. 125, familiarity with which is assumed.² Briefly, in that opinion this court concluded that the arbitrator, in most essentials, properly disposed of the dispute placed before him by his determinations with regard to the Kamakazi-Robbins license agreement, his findings of infringements, and awards of damages and attorneys' fees with reference to the Copyright Act of 1976, 17 U.S.C. § 101 et seq. (the "Copyright Act"). However, as the arbitrator failed to expressly pass on the validity of the copyrights found to have been infringed (and perhaps lacked the power to do so, see opinion of August 3, 1981, 522 F.Supp. at 131), and did not give Robbins a full opportunity to rebut Kamakazi's prima facie showing of validity represented by certificates of registration placed in evidence, the parties were invited to make further submissions in support of and in opposition to what was deemed to be Kamakazi's motion for summary judgment on this issue. The parties were informed that the court would focus as well on the discrepancy between the consistent claim by Kamakazi of forty-five separate infringements and the finding of the arbitrator that twenty-five copyrights, comprising "twelve individual works and thirteen compilations or derivative works," had been infringed. Pending decision on this motion, the awards of the arbitrator have been held in abeyance.

Kamakazi has introduced, as exhibits to an affidavit in support of its motion, copies of the certificates of registration of copyrights on the forty-five musical compositions of Barry Manilow encompassed in the Kamakazi-Robbins agreement, which Kamakazi maintained were infringed. According to the copyright law, 17 U.S.C. § 410(c), each certificate constitutes "prima facie evidence of the validity of the copyright and of the facts stated in the certificate." Robbins, it appears, did not challenge the validity of these forty-five copyrights when the certificates were introduced during the arbitration proceedings and does not challenge them now. Their validity thus is established. Id.; Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905, 908 (2d Cir. 1980).

Rather, Robbins presses that the arbitrator, in finding twenty-five infringements, including thirteen of compilations or derivative works, necessarily found infringements of works which were uncopyrighted, since Kamakazi never had any copyrights in such compilations or derivative works. Robbins therefore urges specifically that the award with respect to those thirteen infringements be vacated, that the whole award be vacated because of the failure to specifically identify any infringed copyright, or, in the alternative, that further discovery be granted on this issue.

It appears from the submission of the parties that, indeed, the only relevant copyrights held by Kamakazi are on the forty-five separate compositions. It appears further that twelve of the copyrighted works were published by Robbins in "individual works"—that is, individual sheets of music not combined with any other works. Thus, Robbins does not dispute the basis for the finding of these twelve infringements.

However, as alleged by Kamakazi in detail in affidavits with supporting exhibits and essentially unchallenged by Robbins, in addition to the infringements the arbitrator found in the twelve individual works, all forty-five of Kamakazi's copyrighted compositions were also published by Robbins in various groupings in "personality folios" after the expiration of its license. Personality folios were described as printed publications featuring musical compositions by a particular artist in the court's opinion of August 3, 1981. There were eighteen of these folios published by Robbins (examples of which were submitted both to the arbitrator and to this court as exhibits), seven of which matched a particular Barry Manilow Long Playing Record Album ("LP"), and eleven of which did not match any particular Manilow LP. Although in actuality Kamakazi held no separate copyrights on these personality folios qua folios, certain of these eighteen folios were referred to by the arbitrator in his finding of infringements of "thirteen compilations or derivative works." Any doubt on this score is extinguished by reference to Robbins' own argument in post-trial closing memorandum to the arbitrator, that:

Claimant's i.e., Kamakazi's suggestion that it should recover an award of statutory damages for the infringement of `45 separate' copyrights is a further attempt to unjustly compound its recovery. The Copyright Laws specifically treat compilations and derivative works such as the Manilow Folios as `one work' for purposes of an award of statutory damages (17 U.S.C. § 504(c)); Nimmer, Copyright § 14.04E, pp. 14-32, 14-33.

Kamakazi asserts, again without contradiction by Robbins, that the number thirteen was arrived at by eliminating from the total eighteen personality folios five nonmatching folios which comprised substantial duplication of compositions contained in other such folios. The record shows that Robbins had in fact argued to the arbitrator, on similar as well as other bases, that the total number of infringed folios—to be considered as compilations or derivative works—for statutory damages purposes was ten. Thus, the total of "twelve individual works and thirteen compilations or derivative works" were found by the arbitrator to have been infringed.

Of course, basic to the law of copyright is the proposition that proof of the existence and validity of a copyright is prerequisite to a finding of infringement thereof and an award of damages and attorney's fees. 17 U.S.C. §§ 411, 412; see Warner Bros., Inc. v. American Broadcasting Companies, Inc., 654 F.2d 204 (2d Cir. 1981). While a compilation or derivative work which is, essentially, an original collection and assembling, or rearrangement or adaptation of an existing work, 17 U.S.C. § 101, may under the right circumstances be copyrighted, 17 U.S.C. § 103; see Durham Industries, Inc. v. Tomy Corp., 630 F.2d at 909-10; see also 17 U.S.C. § 504(c)(1), it is undisputed that none of the Manilow personality folios qua folios were so copyrighted. Only the forty-five separate compositions contained therein, twelve of which were also printed individually, were copyrighted. In other words, the arbitrator committed an error of law to the extent that his assignment of specific infringements could be construed to cover entire personality folios, which were not covered by valid copyrights established or even claimed by Kamakazi.

In the circumstances of this case as established from the record, however, this is not a basis for vacation of all or even the pertinent part of the arbitration awards. Mere error in the application or interpretation of law, in a context such as this, is insufficient ground upon which to vacate, so long as the findings and conclusions of the arbitrator are rational, or barely colorable. John T. Brady & Co. v. Form-Eze Systems, Inc., 623 F.2d 261, 264 (2d Cir.), cert. denied, 449 U.S. 1062, 101 S.Ct. 786, 66 L.Ed.2d 605 (1980); Andros Compania Maritima S.A. v. Marc Rich & Co., A.G., 579 F.2d 691, 704 (2d Cir. 1978); Marcy Lee Mfg. Co. v. Cortley Fabrics Co., 354 F.2d 42, 43 (2d Cir. 1965); MCT Shipping Corp. v. Sabet, 497 F.Supp. 1078, 1082-83 (S.D.N.Y.1980). This is not a case of "manifest disregard of the law"—where the arbitrator understood and correctly stated the law, but proceeded to ignore it. Andros Compania Maritima, supra, 579 F.2d at 704; Drayer v. Krasner, 572 F.2d 348, 352 (2d Cir.), cert. denied, 436 U.S. 948, 98 S.Ct. 2855, 56 L.Ed.2d 791 (1978); Reynolds Sec. Inc. v. Macquown, 459 F.Supp. 943, 945 (W.D.Pa.1978); Amerada Hess Corp. v. Local 22026 Federal Labor Union, AFL-CIO, 385 F.Supp. 279, 284 (D.N.J.1974); see ...