Kelley v. Universal Music Grp.
| Decision Date | 29 September 2016 |
| Docket Number | 14 Civ. 2968 (PAE) |
| Parties | HERMAN KELLEY and BESSIE BANKS, Plaintiffs, v. THE UNIVERSAL MUSIC GROUP, ISLAND DEF JAM MUSIC GROUP, ISLAND DEF JAM RECORDS, DESERT STORM RECORDS, KILA RECORDS, and JOHN DAVID JACKSON p/k/a FABOLOUS, Defendants. |
| Court | U.S. District Court — Southern District of New York |
In or about 1974, plaintiffs Herman Kelley and Bessie Banks co-wrote a song, "Try to Leave Me If You Can" ("Try" or the "Composition"). In 2012, they allege, "Try" was infringed when defendant John David Jackson (referred to here by his professional name, "Fabolous") recorded the song "For the Love" ("Love"), within which portions of "Try" were "sampled." On April 22, 2014, plaintiffs, proceeding pro se, brought this lawsuit against Fabolous, UMG Recordings, Inc. ("UMG"),1 Island Def Jam Music Group ("IDJMG"), Def Jam Recordings ("DJR"),2 Desert Storm Records ("DSR"), and Kila Records ("Kila"). The Amended Complaint brought claims for copyright infringement, under the Copyright Act of 1976, 17 U.S.C. §§ 101 et seq., and various state-law claims, based on Fabolous's alleged sampling of "Try."
On October 19, 2015, the Court dismissed the Amended Complaint in its entirety. It dismissed plaintiffs' copyright infringement claim for lack of standing, but granted plaintiffs leave to replead that claim, in the event they could allege specific facts to support ownership of the Composition. It dismissed plaintiffs' state-law claims with prejudice, because they were preempted by, or sought damages outside the scope of, the Copyright Act.
On February 23, 2016, plaintiffs filed a Second Amended Complaint ("SAC"). It repleads each of plaintiffs' previous claims, and brings new claims for copyright infringement of the master sound recording of "Try" (the "Recording") and unfair competition.
UMG now moves, on behalf of itself, IDJMG, and DJR, to dismiss the SAC in its entirety, under Federal Rule of Civil Procedure 12(b)(6). For the following reasons, that motion is granted in part and denied in part.
In or about 1974, plaintiffs and Frank Green, a non-party, co-wrote and produced "Try," a musical composition. SAC, at 2; AC, Ex. F. That year, the "Try" Recording was made, withBanks as artist, and Kelley and Argon Productions ("Argon") as co-producers. See SAC, at 7-8; id., Ex. P.4 It was released on Volt Records, a division of Stax Records. Id. at 2.
On June 14, 1974, plaintiffs and Green transferred to the New York Times Music Corporation ("NYT") and Eden Music Corp. ("Eden") all their legal rights in the Composition, in exchange for specified royalties. Pl. Opp. Br. 4-7; id., Exs. 7-8 (the "June 1974 Contract"). Later that year, the Composition was registered with the United States Copyright Office, with the registration number Eu513738. AC, Ex. F (the "1974 Registration"). Plaintiffs and Green are listed as the co-authors of the Composition; NYT and Eden are listed as the copyright claimants. Id. On August 1, 1974, Kelley entered into an agreement with Argon (the "August 1974 Agreement"), whereby Argon agreed to pay Kelley royalties based on sales of the Recording. See SAC, Ex. P.
The SAC alleges that NYT's and Eden's shared music catalogue was later "transferred from company to company[,] . . . but [i]n 1997, all rights to the catalogue which included ['Try'] [] legally reverted to Eden [] and its founder (Clyde Otis) who then transferred the catalogue to his other publishing company 'Iza Music [Corporation]', where [the Composition] resides to date." Id. at 10. Presently, the SAC alleges, Iza Music Corporation ("Iza") is administered by The Clyde Otis Music Group ("Clyde Otis"), id, which is affiliated with Argon, see AC, Ex. K.5 On April 18, 1994, Kelley entered into a "popular songwriters renewal contract" (the "1994 Contract") with Iza, which superseded the June 1974 Contract as to Kelley. Pl. Opp. Br. 5; see AC, Ex. L. Under that contract, Kelley transferred to Iza—in exchange for licensing royalties—"any and all rights and interests whatsoever" that he possessed or might acquire in the Composition. AC, Ex. L, at 1; id. at Schedule A. Banks remains bound by the June 1974 Contract. Pl. Opp. Br. 5.
Sometime before November 22, 2012, Fabolous, who the SAC claims is under an "exclusive contract" with DJR, recorded "Love." SAC, at 2, 8. The SAC alleges that, Id. at 2. On November 22, 2012, DJR and DSR released "Love" on a CD titled "Fabolous Soul Tape 2 Mix Tape." Id.6 On December 12, 2012, "Love" was featured in an "official music video," accessible on YouTube, Spotify, Pandora, and through other streaming services. Id. at 4; see http://www.youtube.com/watch?v=nfQSqsQp2GI. On May 4, 2013, "Love" was included on a CD titled "Fabolous Soul Collection." SAC, at 4. The Court refers collectively to these productions as the "Projects."
The SAC alleges that "Love," and the Projects featuring it, quickly achieved "widespread popularity." Id. at 3. "Love" "enjoyed repeated radio play . . . on several notable radio stations," such as WBLS 107.5 and Power 105.1. Id. The "Fabolous Soul Tape 2 Mix Tape" "reached 'double platinum' status and was recognized as one of the 'Top Mixtapes of 2012', having beenviewed more than 2.3 million times, downloaded nearly one million times, and streamed nearly 600,000 times." Id. And the "Love" music video received more than 140,000 views. Id. at 4.
On March 24, 2014, Deborah Evans, a representative of Clyde Otis, sent a letter to Ian Allen, a representative of DJR and UMG, notifying him that "Try" had been sampled in "Love." AC, Ex. K. The letter stated that Clyde Otis/Argon owned all rights in the Recording, and requested a "non-recoupable fee" for Fabolous's use of it in "Love." Id. In response, the SAC alleges, DJR "refused to obtain a license." SAC, at 3. This refusal, plaintiffs claim, evinces defendants' "willful infringement" of plaintiffs' copyright. Id. at 2.
On August 23, 2014, after this action had commenced, Isidro Otis sent Kelley a letter, notifying him that Clyde Otis had decided not to pursue copyright infringement claims against Fabolous for his alleged infringement of the Composition. AC, Ex. M. The letter also stated that Clyde Otis had "no objection to [plaintiffs] pursuing this matter independently." Id.; see SAC, at 4. Sometime thereafter, Otis submitted a declaration to the Court attesting that Argon is the "sole owner" of the Recording and "endorse[s]" plaintiffs' infringement claim regarding both the Composition and the Recording. Pl. Opp. Br., Ex. 20.
On April 22, 2014, plaintiffs filed the original Complaint. Dkt. 2. On August 27, 2014, they filed the Amended Complaint. Dkt. 10. It brought claims for (1) copyright infringement of the "Try" Composition, (2) violation of plaintiffs' "poetic license," (3) "fraudulent deceit and conspiring to swindle," and (4) mental anguish. Id. at 2-9. Each claim was based on Fabolous's alleged sampling of "Try" in "Love." Id. Plaintiffs sued, in addition to Fabolous, DSR and Kila,as "affiliated companies also involved in wrongfully using plaintiff[s'] song." Id. at 2. They sued UMG, IDJMG, and DJR, as the alleged parent companies of DSR and Kila. Id.
On June 2, 2015, UMG filed a motion to dismiss the Amended Complaint, or, alternatively, for summary judgment. Dkt. 48. It represented that IDJMG and DJR are unincorporated divisions of UMG; accordingly, its motion was also on behalf of those entities. Id. at 1 n.1.7 The Court thereafter received briefing on UMG's motion. See Dkts. 49, 56-69.
On October 19, 2015, the Court granted UMG's motion to dismiss the Amended Complaint in its entirety. Dkt. 70 (the "October 19 Decision" or "Decision"), reported at Kelley v. Universal Music Grp., No. 14 Civ. 2968 (PAE), 2015 WL 6143737 (S.D.N.Y. Oct. 19, 2015).8 The Court dismissed the copyright infringement claim for lack of standing, because plaintiffs had not adequately alleged that they are either the legal or beneficial owners of the copyright in the Composition. Decision, at 6-9. The Court dismissed plaintiffs' "violation of poetic license" and "fraudulent deceit and conspiring to swindle" claims as preempted by the Copyright Act. Id. at 10-11. Finally, the Court dismissed plaintiffs' "mental anguish" claim because it sought damages outside the scope of the Copyright Act. Id. at 11-12.
The Court granted plaintiffs leave to replead "one final time, but only as to their copyright infringement claim under the Copyright Act." Id. at 12. It noted that, "guided by [the Court's] decision, plaintiffs may be able . . . to adequately plead standing to bring such a claim, by alleging concrete facts supporting either actual or beneficial ownership as to [the Composition]." Id. The Court did not, however, grant plaintiffs leave to replead their other three claims, which it dismissed with prejudice. Id.
On February 23, 2016, plaintiffs filed the SAC. Dkt. 78. It repleads each claim in the Amended Complaint, and brings new claims for (1) copyright infringement of the Recording, and (2) "violation of intellectual property." Id. at 4-8, 10-14.
On March 23, 2016, UMG moved, on behalf of itself, IDJMG, and DJR, to dismiss the SAC, Dkt. 81, and filed a memorandum of law, Dkt. 82 ("Def. Br."), and a declaration by its counsel, Dkt. 83 ("Bart Decl."), in support. On May 26, 2016, plaintiffs filed an opposition brief, Pl. Opp. Br., and attached exhibits. On June 16, 2016, UMG replied. Dkt. 90 ("Def. Reply Br.").
To survive a motion to dismiss pursuant to Rule 12(b)(6), a plaintiff must plead sufficient factual allegations "to state a claim to relief that is plausible on...
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