Mitchell v. Capitol Records, LLC

• Citation: 287 F.Supp.3d 673
• Decision Date: 18 December 2017
• Docket Number: CIVIL ACTION NO. 3:15–CV–00174–JHM
• Court: U.S. District Court — Western District of Kentucky
• Parties: Leroy Phillip MITCHELL p/k/a Prince Phillip Mitchell and d/b/a Hot Stuff Publishing Co., Plaintiff v. CAPITOL RECORDS, LLC, et al., Defendants

287 F.Supp.3d 673

Leroy Phillip MITCHELL p/k/a Prince Phillip Mitchell and d/b/a Hot Stuff Publishing Co., Plaintiff

v.CAPITOL RECORDS, LLC, et al., Defendants

CIVIL ACTION NO. 3:15–CV–00174–JHM

United States District Court, W.D. Kentucky, Louisville Division.

Signed December 18, 2017

David Lawrence Haney, Michael F. Sutton, Tracey Clemmons Smith, Caitlin L. McQueen, Gwin, Steinmetz & Baird, PLLC, Louisville, KY, for Plaintiff.

James Dimos, Andre J. Correale, Frost Brown Todd LLC, Indianapolis, IN, Miles Harrison, Steven M. Crawford, Cory J. Skolnick, Frost Brown Todd LLC, Louisville, KY, for Defendants.

MEMORANDUM OPINION & ORDER

Joseph H. McKinley, Jr., Chief Judge

This matter is before the Court on two motions for partial summary judgment by defendants Capitol Records, LLC ("Capitol") and Andre Romelle Young p/k/a Dr. Dre d/b/a N.W.A. ("Young") (DN 88, 91), as well as a motion by the same defendants for leave to file supplemental authority. (DN 113.) These motions are ripe for decision.

I. BACKGROUND

Plaintiff Leroy Mitchell is a singer, songwriter, and record producer who has performed under the name "Prince Phillip Mitchell." (Pl.'s Second Amend. Compl. [DN 116] ¶ 1.) Mitchell is the sole proprietor of Hot Stuff Publishing Co. (Id. ¶ 10.) On July 5, 1977, the United States Copyright Office issued a certificate of copyright for the musical composition titled "Star in the Ghetto." (Copyright Certificate [DN 91–1] at 2.) The claimant of the copyright is listed as Hot Stuff Publishing Co., and the author of both the words and music is listed as Phillip Mitchell. (Id. ) A recording of this composition was made by Ben E. King and the Average White Band under the title "A Star in the Ghetto." (Pl.'s Second Amend. Compl. [DN 116] ¶ 1.)

At issue in this case is the alleged unauthorized use of this composition and sound recording in "If It Ain't Ruff," a song by the hip-hop group N.W.A. and included on the album "Straight Outta Compton." The musical composition for this song was published on February 15, 1989, and the copyright was registered on June 10, 1992, with this copyright now allegedly owned by defendant Capitol.¹ (Id. ¶ 16.) Capitol also allegedly owns various copyrights associated with different sound recordings of "If It Ain't Ruff." (Id. ¶¶ 17–20.) Mitchell filed the present action on February 26, 2015, alleging that the use of the musical composition "Star in the Ghetto" and sound recording of "A Star in the Ghetto" in "If It Ain't Ruff" infringed upon his protected interest in these works under the Copyright Act. (Id. ¶ 15.) He has asserted this claim for copyright infringement against Capitol, see supra note 1, Young, and defendant Lorenzo Jerald Patterson, p/k/a MC Ren d/b/a N.W.A. ("Patterson"), as these defendants are alleged to be "the writers, composers, producers, record labels, distributors, and publishers ... of the infringing composition and sound recording[.]" (Id. ¶ 14.) An entry of default was made against Patterson on October 6, 2015, due to his failure to respond to the complaint or otherwise appear. (DN 36.)

Capitol and Young have filed two motions for partial summary judgment. The first motion seeks to preclude Mitchell from recovering any damages for infringements that are alleged to have occurred more than three years prior to his filing of the present action, as such infringements would fall outside of the Copyright Act's three-year statute of limitations. (DN 88.) The second argues that Mitchell may not recover for any infringement of the sound recording of "A Star in the Ghetto," as he does not actually own the copyright to the sound recording. (DN 91.) Mitchell opposes both motions. (DN 90, 94.)

II. STANDARD OF REVIEW

Before the Court may grant a motion for summary judgment, it must find that there is no genuine dispute as to any material fact and that the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). The moving party bears the initial burden of specifying the basis for its motion and identifying that portion of the record that demonstrates the absence of a genuine issue of material fact. Celotex Corp. v. Catrett , 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Once the moving party satisfies this burden, the non-moving party thereafter must produce specific facts demonstrating a genuine issue of fact for trial. Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 252, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

Although the Court must review the evidence in the light most favorable to the non-moving party, the non-moving party must do more than merely show that there is some "metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp. , 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). Instead, the Federal Rules of Civil Procedure require the non-moving party to present specific facts showing that a genuine factual issue exists by "citing to particular parts of materials in the record" or by "showing that the materials cited do not establish the absence ... of a genuine dispute[.]" Fed. R. Civ. P. 56(c)(1). "The mere existence of a scintilla of evidence in support of the [non-moving party's] position will be insufficient; there must be evidence on which the jury could reasonably find for the [non-moving party]." Anderson , 477 U.S. at 252, 106 S.Ct. 2505.

III. DISCUSSION

A. STATUTE OF LIMITATIONS

The first motion for partial summary judgment seeks to limit Mitchell's recovery to only those damages that arose from infringing acts that occurred within three years of the initiation of this suit. The defendants have moved for leave to file supplemental authority on this issue (DN 113), which the Court will GRANT .²

The Copyright Act imposes a three-year statute of limitations on claims of copyright infringement from the date the claims accrued. 17 U.S.C. § 507(b). The Sixth Circuit recognizes two important rules in relation to this statute of limitations. First, "each new infringing act causes a new three year statutory period to begin," as "each infringement is a distinct harm." Roger Miller Music, Inc. v. Sony/ATV Publ'g, LLC , 477 F.3d 383, 390 (6th Cir. 2007) (quoting Ritchie v. Williams , 395 F.3d 283, 288 n. 5 (6th Cir. 2005) ). See also Petrella v. Metro–Goldwyn–Mayer , ––– U.S. ––––, 134 S.Ct. 1962, 1969, 188 L.Ed.2d 979 (2014) ("Each time an infringing work is reproduced or distributed, the infringer commits a new wrong"). And second, while "the statute of limitations bars infringement claims that accrued more than three years before suit was filed," a claim only "accrues when a plaintiff knows of the potential violation or is chargeable with such knowledge." Roger Miller , 477 F.3d at 390 (quoting Bridgeport Music, Inc. v. Rhyme Syndicate Music , 376 F.3d 615, 621 (6th Cir. 2004) ). This is the so-called "discovery rule."

Here, Mitchell has pled that the Defendants have infringed on his copyrights since the late 1980's, but he claims that he did not know, and could not have known, of the alleged infringement until May 2014. (Pl.'s Second Amend. Compl. [DN 116] ¶ 28; Decl. Mitchell [DN 90–1] ¶ 6; Decl. Christopher [DN 90–2] ¶¶ 5–7.) The defendants do not contest these facts at this stage.³ Thus, for purposes of this motion, and consistent with the discovery rule, it will be deemed that Mitchell's infringement claims accrued in May 2014. He filed suit on those claims within the three-year time period by filing the present action in February 2015.

The argument put forth by the defendants focuses on whether the Supreme Court's opinion in Petrella requires the use of a different accrual rule for copyright infringement cases, rather than the discovery rule. In Petrella , the Supreme Court was tasked with deciding "whether the equitable defense of laches ... may bar relief on a copyright infringement claim brought within § 507(b)'s three-year limitations period." Petrella , 134 S.Ct. at 1967. The Petrella Court concluded that laches was inapplicable to a copyright infringement case, but in laying the groundwork for its opinion, it made certain observations about the Copyright Act. One of these observations is that "[a] copyright claim thus arises or accrues when an infringing act occurs." Id. at 1969 (quotations omitted). It further noted that "a successful plaintiff can gain retrospective relief only three years back from the time of suit." Id. at 1970. The defendants argue that these statements equating the accrual of a claim with the occurrence of the infringement, rather than its discovery, preclude Mitchell from recovering damages for any infringement that occurred more than three years prior to the initiation of his suit. Mitchell responds by arguing that Petrella does not abrogate Sixth Circuit precedent on the discovery rule in copyright infringement cases, as the Supreme Court made clear it was not passing judgment on the validity of the discovery rule.

The Court agrees with Mitchell that Petrella does not require the Court to ignore Sixth Circuit precedent that clearly defines accrual of a copyright claim as occurring when the plaintiff "knew of the potential violation or is chargeable with such knowledge." Roger Miller , 477 F.3d at 390. In Petrella , the Court's statement equating accrual with the occurrence of the infringing act is accompanied by a footnote, which reads as follows:

Although we have not passed on the question, nine Courts of Appeals have adopted, as an alternative to the incident of injury rule, a "discovery rule," which starts the limitations period when "the plaintiff discovers, or with due diligence should have discovered, the injury that forms the basis for the claim." William A. Graham Co. v. Haughey , 568 F.3d 425, 433 (C. A. 3 2009) (internal quotation marks omitted) ...

Petrella , 134 S.Ct. at 1969 n. 4. Thus, the Court acknowledged that the "incident of injury" rule it described in the main text of the case is not the only rule that federal courts apply in...