Tufamerica, Inc. v. Diamond

• Decision Date: 10 September 2013
• Docket Number: No. 12 Civ. 3529(AJN).,12 Civ. 3529(AJN).
• Citation: 968 F.Supp.2d 588
• Parties: TUFAMERICA, INC., Plaintiff, v. Michael DIAMOND, et al., Defendants.
• Court: U.S. District Court — Southern District of New York

968 F.Supp.2d 588

TUFAMERICA, INC., Plaintiff,

v.Michael DIAMOND, et al., Defendants.

No. 12 Civ. 3529(AJN).

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

Sept. 10, 2013.

Kelly Douglas Talcott, The Law Office of Kelly D. Talcott, Sea Cliff, NY, for Plaintiff.

Theodore Conrad Max, Valentina Shenderovich, Sheppard Mullin Richter & Hampton LLP, Carletta Flora Higginson, Jenner & Block LLP, New York, NY, for Defendants.

OPINION & ORDER

ALISON J. NATHAN, District Judge:

Plaintiff TufAmerica, Inc. (“TufAmerica”) brings this copyright infringement action against Defendants Michael Diamond (“Mike D”), Adam Horovitz (“Ad–Rock” or “King Ad–Rock”), Adam Yauch (“MCA”) (collectively, the “Beastie Boys”), Universal Music Publishing, Inc., Universal Music Publishing Group, Brooklyn Dust Music, and Capitol Records, LLC (collectively, “Defendants”). Plaintiff, the putative exclusive administrator and copyright-licensee of a number of copyrights to the compositions and sound recordings of the musical group Trouble Funk, alleges that the well-known musical group the Beastie Boys unlawfully sampled a number of Trouble Funk's songs on the Beastie Boys' hit albums Licensed to Ill and Paul's Boutique. Defendants move to dismiss the complaint, pursuant to Federal Rule of Civil Procedure 12(b)(6), for failure to state a claim upon which relief could be granted. For the reasons discussed below, Defendants' Motion to Dismiss is GRANTED in part and DENIED in part.

I. Legal Standard

When deciding a motion to dismiss for failure to state a claim pursuant to Federal Rule of Civil Procedure 12(b)(6), the Court must accept as true all well-pleaded facts and draw all reasonable inferences in the light most favorable to the non-moving party. See Kassner v. 2nd Ave. Delicatessen, Inc., 496 F.3d 229, 237 (2d Cir.2007). To survive a motion to dismiss, the plaintiff's pleading must contain sufficient factual matter, accepted as true, to “state a claim to relief that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007)). In addition to the allegations of the pleading itself, the Court may consider documents attached as exhibits or incorporated by reference. Halebian v. Berv, 644 F.3d 122, 131 n. 7 (2d Cir.2011); Chapman v. N.Y. State Div. for Youth, 546 F.3d 230, 234 (2d Cir.2008).

“If a document relied on in the complaint contradicts allegations in the complaint, the document, not the allegations, control, and the court need not accept the allegations in the complaint as true.” Poindexter v. EMI Record Grp. Inc., No. 11 Civ. 559(LTS), 2012 WL 1027639, at *2 (S.D.N.Y. Mar. 27, 2012) (citing Barnum v. Millbrook Care Ltd. P'ship, 850 F.Supp. 1227, 1232–33 (S.D.N.Y.1994)). “In copyright infringement actions, ‘the works themselves supersede and control contrary descriptions of them,’ including ‘any contrary allegations, conclusions or descriptions of the works contained in the pleadings.’ ” Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 64 (2d Cir.2010) (internal citation omitted) (quoting Walker v. Time Life Films, Inc., 784 F.2d 44, 52 (2d Cir.1986), and 3–12 Melville B. Nimmer and David Nimmer, Nimmer on Copyright § 14–01[B] (2012) ( “Nimmer”) § 12.10).

II. Background and Procedural History

Plaintiff commenced this suit on May 3, 2012, and timely effectuated service on August 6, 2013. Defendants initially moved to dismiss on November 21, 2012. In lieu of opposing Defendants' motion, on December 10, 2012, Plaintiff filed an Amended Complaint, which Defendants moved to dismiss on January 4, 2013. Unless otherwise noted, the following facts are taken from Plaintiff's Amended Complaint.

There are two musical groups whose works are involved in this dispute: Trouble Funk, which is not a party to the dispute, and the Beastie Boys, whose individual members are named Defendants. Trouble Funk, as the name partially implies, was a funk/R & B musical group, which registered copyrights for a number of recordings and musical compositions during the 1980s. In relevant part, the recordings and musical compositions for the Trouble Funk songs at issue were registered with the United States Copyright Office between 1982 and 1986, alone or as parts of larger albums. Am. Compl. ¶¶ 14–18. In 1999, TufAmerica, also the owner of the Tuff City Music Group, a rap and hip hop label founded in 1981, became the exclusive administrator and licensee of the copyrights to the relevant Trouble Funk recordings and compositions. Am. Compl. ¶¶ 12, 13, 19.

The Beastie Boys are an American hip-hop group, founded by three MCs: ¹ Defendants Mike D, Ad–Rock, and MCA. The Beastie Boys' debut album, Licensed to Ill, which has since gone on to sell over nine million copies, was released in 1986 and featured, inter alia, the hit songs Car Thief and Hold It Now Hit It. Am. Compl. ¶ 49; Def. Op. 1. Their second album, Paul's Boutique, which has also gone on to sell millions of copies, was released in 1989 and featured, inter alia, the songs Shadrach, The New Style, and B–Boy Bouillabaisse/A.W.O.L. Am Compl. ¶¶ 20, 35, 85; Def. Op. 1.

The case itself involves music “sampling,” which the Oxford Dictionary defines as “the technique of digitally encoding music or sound and reusing it as part of a composition or recording.” ² Specifically, Plaintiffs allege that these five Beastie Boys songs illegally incorporate six separate samples from four Trouble Funk songs, as shown in the following chart:

In the initial complaint, Plaintiff alleged four claims of copyright infringement, pursuant to 17 U.S.C. §§ 501 et seq., as well as claims for unjust enrichment and misappropriation, in violation of New York State common law. These four claims were for the alleged use of the Say What sample, in Shadrach, and the three Drop the Bomb samples, in Car Thief, Hold It Now Hit It, and The New Style, respectively. In the amended complaint, Plaintiff no longer asserted the common law violations, but included two additional copyright violations, for the alleged use of the Let's Get Small sample, in Hold It Now Hit It, and the Good to Go sample, in B–Boy Bouillabaisse/A.W.O.L. Am. Compl. ¶¶ 104–107. As to each sample, Plaintiff alleges that the Beastie Boys' use of that sample infringed both the musical composition and the sound recording of the sampled Trouble Funk songs.

III. Discussion

Defendants move to dismiss Plaintiff's Amended Complaint, pursuant to Rule 12(b)(6), for failure to state a claim upon which relief can be granted. SeeFed.R.Civ.P. 12(b)(6). They argue that Plaintiff's allegations, in conjunction with the works themselves, cannot support a finding of actionable copyright infringement. In addition, they argue that, to the extent any of Plaintiff's claims survive the motion to dismiss, the Court should apply the injury rule rather than the discovery rule for statute of limitations purposes, and that, pursuant to the injury rule, Plaintiff's claims should be limited to alleged acts of infringement that occurred after May 12, 2009, a date three years prior to Plaintiff's filing of this action.

Below, the Court will: (1) discuss the relevant methods for determining whether actionable copyright infringement has occurred; (2) address Defendants' argument as to why certain statements from Plaintiff's original complaint can and should be used to defeat Plaintiff's claims in the amended complaint; (3) analyze the alleged acts of infringement in the above-listed songs; and (4) determine whether Plaintiff's remaining claims should be statutorily limited, as Defendants propose. For the reasons discussed herein, Defendants' Motion to Dismiss is granted in part, denied in part, and the Court will apply the injury rule to the remaining claims.

A. Prima Facie Copyright Infringement

“To establish a prima facie case of copyright infringement, a plaintiff must demonstrate ‘(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.’ ” Warner Bros. Entm't, Inc. v. RDR Books, 575 F.Supp.2d 513, 533 (S.D.N.Y.2008) (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991)); see also Peter F. Gaito, 602 F.3d at 63. Because copyright ownership is not contested at this stage in the proceedings, the Court's inquiry will turn on the second prong of the prima facie requirement. See Gottwald v. Jones, No. 11 Civ. 1432(CM), 2011 WL 4344038, at *3, 2011 U.S. Dist. LEXIS 103414, at *9 (S.D.N.Y. Sept. 12, 2011).

To satisfy the second prong, a plaintiff must demonstrate that: “(1) the defendant has actually copied the plaintiff's work; and (2) the copying is illegal because a substantial similarity exists between the defendant's work and the protectible elements of plaintiff's.” Hamil Am., Inc. v. GFI, 193 F.3d 92, 99 (2d Cir.1999) (internal quotations omitted) (emphasis in original); Poindexter, 2012 WL 1027639, at *4. As with copyright ownership, the parties agree that for the purposes of this motion, the facts alleged are sufficient to demonstrate that Defendants “actually copied” Plaintiff's works. Def. Br. 11; Pl. Opp. 8. Because the Court assumes actual copying (a.k.a., “probative similarity”), only the second element, “substantial similarity” (a.k.a., “unlawful” or “improper” appropriation), is at issue. Because substantial similarity is “always a required element of actionable copying,” “it is more properly used after the fact of copying has been established, as the threshold for determining that the degree of similarity suffices to demonstrate actionable infringement.” Ringgold v. Black Entm't Television, Inc., 126 F.3d 70, 74 (2d Cir.1997). “That this case involves the practice of sampling prior music into a new composition does not alter this analysis.” Williams v. Broadus, No. 99 Civ. 10957(MBM), 2001 WL 984714, at *3 (S.D.N.Y. Aug. 27, 2001) ...