Saregama India Ltd. v. Mosley, Case No. 08-20373-Civ.

• Decision Date: 23 December 2009
• Docket Number: Case No. 08-20373-Civ.
• Citation: 687 F. Supp.2d 1325
• Parties: SAREGAMA INDIA LTD., Plaintiff, v. Timothy MOSLEY, et al., Defendants.
• Court: U.S. District Court — Southern District of Florida

687 F.Supp.2d 1325

SAREGAMA INDIA LTD., Plaintiff, v. Timothy MOSLEY, et al., Defendants.

Case No. 08-20373-Civ.

United States District Court, S.D. Florida.

December 23, 2009.

Michael Ingrassi Santucci, S. Tracy Long, Santucci Priore & Long LLP, Fort Lauderdale, FL, for Plaintiff.

Andrew Harrison Bart, Carletta F. Higginson, Jenner & Block LLP, Frank Christopher Salzano, Dewey & Leboeuf LLP, New York, NY, Karen Linda Stetson, Karen Linda Stetson, Grayrobinson P.A., Miami, FL, for Defendants.

ORDER: (1) GRANTING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT; (2) DENYING PLAINTIFF'S MOTION FOR SUMMARY JUDGMENT; AND (3) GRANTING IN PART PLAINTIFF'S MOTION FOR VOLUNTARY DISMISSAL

PATRIA A. SEITZ, District Judge.

THIS dispute arises from Defendants' sample of an Indian sound recording known as Bagor Mein Bahar Hai ("BMBH") in the song "Put You on the Game" ("PYOG") which appeared on Jayceon Taylor's 2005 album "The Documentary." At the November 10, 2009 hearing on the parties' motions for summary judgment DE 174, 176, 179, 181, Plaintiff ("Saregama") argued that it held a valid copyright in the BMBH sound recording pursuant to a 1967 agreement between the author Shakti and its predecessor in interest, Gramophone. Saregama also argued that it was entitled to summary judgment because Defendants admit that they sampled the BMBH sound recording. Defendants maintained that Saregama's 1967 agreement conveys no more than a license to exploit subject works and that there is no evidence that the BMBH sound recording was subject to the 1967 agreement. Defendants also argued that, irrespective of whether they sampled the BMBH sound recording, the BMBH sound recording and PYOG are not substantially similar.

After considering the arguments of counsel, the motions, the responses and replies thereto, the relevant legal authorities, and the record, the Court will grant Defendants' motion and deny Saregama's motion because the 1967 agreement confers, at most, an exclusive license for two years and a non-exclusive license thereafter, and Saregama proffers no proof that the BMBH sound recording was created during the term of the agreement or that it obtained the copyright through other means. Further, aside from the approximately one-second snippet sampled from the BMBH sound recording, the two works bear no similarities and no jury, properly instructed, could find that the songs are substantially similar.

I. Factual Background

A. Rights in the BMBH Sound Recording: The 1967 Agreement

1. The Assignment

On April 24, 1967, Shakti Films ("Shakti") and Gramophone Company of India, Ltd. ("Gramophone"), a predecessor in interest of Saregama, came to an agreement regarding the production and distribution of music soundtracks to Shakti's movies. (See DE 187, Ex. 3 "Agreement.") The Agreement provides two methods by which Shakti agreed to provide music to Gramophone. (See id. ¶¶ 2, 4.) First, Shakti may provide Gramophone with musicians who record songs at Gramophone's behest:

Shakti ... shall supply Gramophone at their own expense with artistes and musicians etc., to perform musical and/or other works from their films for the purpose of making gramophone records, and the artistes and musicians etc., shall attend at Gramohpone's studio or such other place ... and shall at such place and time record such works as Gramophone shall select ....

(See id. ¶ 2.)

As an alternative to providing musicians, Shakti agreed to provide Gramophone with pre-recorded songs, known conventionally as sound recordings, to be re-recorded:¹

Notwithstanding the provisions in clauses 2 and 3 hereof, Shakti shall at their own expense alternatively and subject to the consent of Gramophone supply Gramophone with sound tracks or recorded tapes of their musical and/or other works and Gramophone shall utilise such sound tracks or recorded tapes for the purpose of re-recording therefrom and the subsequent manufacture of gramophone records as referred to in the above-mentioned clauses provided they are in the opinion of Gramophone suitable for such purpose.

(See id. ¶ 4) (emphasis in original).

Whether by musician or pre-recorded song, the music Gramophone obtained from Shakti carried with it Shakti's rights to record and re-record the works: "Shakti hereby agrees that they assign their gramophone recording rights in all works to be recorded or re-recorded under the provisions of this Agreement to Gramophone...." (See id. ¶ 7.) Further, the Agreement provides that Gramophone shall own the "original plate" of all works "within the meaning of The Indian Copyright act of 1957."² (See id. ¶ 10.) By its terms, the Agreement took effect on January 15, 1967 and terminated on January 15, 1969.³ (See id. ¶ 2.) During this two-year term, Shakti was prohibited from providing any musicians or pre-existing recordings to other production companies. (See id. ¶ 5.) Finally, the Agreement provided that its terms were governed by Indian law. (See id. ¶ 15.)

2. Royalties

In exchange for the right of recording, re-recording, and selling these records, Gramophone agreed to pay Shakti royalties. The royalty payments are arranged according to the origin of the work (whether the work is created by Shakti musicians or reproduced from Shakti recordings) and whether the final soundtrack commingles Shakti-owned songs with songs owned by others.

For soundtracks produced from works recorded by Shakti's musicians, the Agreement provides royalties at the following rates:

(a) In the case of a double-sided disc record:

(i) Performance by Shakti's artistes of any work or works owned by Shakti on any one side of a record: 2.5% per side

(ii) Performance by Shakti's artistes of any work or works owned by Shakti along with performance by other artistes of a work or works not owned by Shakti, on any one side of a record a share proportional to the number of works : 2.5 % per side

(b) In the case of any other record, the same shall be deemed to consist of Sections, each Section comprising the equivalent of a double-sided 78 rpm record and royalty shall be calculated on the same basis as provided under (a)(i) and (ii) above on each such Section reproducing performances of Shakti's artistes.

(See id. ¶ 6.)

However, if, after the Agreement's two-year term, Shakti allowed another production company to record or re-record any songs obtained by Gramophone under the Agreement, Gramophone is no longer bound to pay Shakti a royalty for works recorded by Shakti's musicians. (See id. ¶ 6.)

By contrast, soundtracks produced from Shakti's pre-recorded songs are governed by similar royalty rates, albeit in a different section of the Agreement:

(a) In the case of a double-sided disc record:

(i) A work or works owned by Shakti and reproduced on any one side of a record: 2.5 percent per side

(ii) A work or works owned by Shakti and reproduced along with one or more other works not owned by Shakti on any one side of a record, a share proportional to the number of works : 2.5 percent per side

(b) In the case of any other record, the same shall be deemed to consist of Sections, each Section comprising the equivalent of a double-sided 78 rpm record and royalty shall be calculated on the same basis as provided under (a)(i) and (ii) above on each such Section reproducing the works owned by Shakti.

(See id. ¶ 8.)

When royalties "shall become payable to Shakti" for soundtracks produced both from Shakti's artists and pre-recorded songs, Gramophone is entitled to confer manufacturing and sales rights to other parties. (See id. ¶ 10.)

B. Saregama's Evidence Demonstrating Ownership of BMBH

The production dates for the BMBH sound recording and the Bollywood film Aradhana in which it played are unclear. On August 7, 1968, Shakti sent a letter to Gramophone regarding royalty payments for Aradhana, which reads:

We hereby irrevocably authorise you to pay 2.1/2% (two and half percent) per record, out of our share of royalty payable by you to us on the sale of the gramophone records of our above film, direct to Shri S.D. Burman, Music Director of the film "AARADHANA" (Production No. 8.)."

(See DE 187, Ex. 1 "Letter 1".)

Similarly, on May 2, 1968, Shakti directed Gramophone to pay royalties to a singer:

We hereby irrevocably authorise you to pay royalty amount ... directly to Miss LATA MANGESHKAR on all the songs sung by her for Aradhana out of the royalties becoming payable by you to us on sale of Gramophone Records of the said film ....

(See DE 187, Ex. 8 "Letter 2".)

According to Saregama's corporate representative's declaration, BMBH was recorded in 1968. (See DE 183 "Ramji Decl." ¶ 7.) However, at his deposition, Ramji conceded that he did not know when BMBH was recorded. (See DE 178, Ex. 1 "Ramji Depo." at 84-85.) Indeed, he speculated that it could have been produced in 1969 or 1968. (See id.)

According to Ashim Samanta, a principal at Shakti, the film Aradhana was released in October or November of 1969. (See DE 195, Ex. 1 "Samanta Depo." at 70-72.) However, Samanta admits that he has no personal knowledge as to when the film was produced. (See id.) Further, although Samanta speculates that Aradhana's soundtrack was released three to six months prior to the movie, he concedes that he does not know when the soundtrack featuring BMBH was released. (See id. at 17-18.)

Samanta wrote a May 2009 letter on behalf of Shakti which states that Saregama owns the copyrights in BMBH pursuant to the 1967 Agreement. (See DE 187, Ex. 1 "Samanta Letter.") However, in his deposition, Samanta admits that: (1) he knows nothing about copyright law and cannot distinguish an assignment from a license; (2) although he signed the letter, it was drafted by Adel Churamani, a Saregama representative; and (3) he hadn't read the Agreement until he signed the May 2009 letter. (See Samanta Depo. at 74-78, 81.) Samanta states that, upon review of the letter and the Agreement, he believes that Saregama owns the copyright. (See id.)

As further...