Ulloa v. Universal Music and Video Distribution

• Decision Date: 14 January 2004
• Docket Number: No. 01 Civ. 9583(BSJ).,01 Civ. 9583(BSJ).
• Citation: 303 F.Supp.2d 409
• Parties: Demme ULLOA, Plaintiff, v. UNIVERSAL MUSIC AND VIDEO DISTRIBUTION CORP.; Island Def Jam Music Group; Roc-A-Fella Records, LLC; Shawn Carter d/b/a "Jay Z;" John/Jane Doe; and Doe Entity, Defendants.
• Court: U.S. District Court — Southern District of New York

303 F.Supp.2d 409

Demme ULLOA, Plaintiff, v. UNIVERSAL MUSIC AND VIDEO DISTRIBUTION CORP.; Island Def Jam Music Group; Roc-A-Fella Records, LLC; Shawn Carter d/b/a "Jay Z;" John/Jane Doe; and Doe Entity, Defendants.

No. 01 Civ. 9583(BSJ).

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

January 14, 2004.

COPYRIGHT MATERIAL OMITTED

John P. Bostany, Bostany Law Firm, New York City, for plaintiff.

Andrew H. Bart, Pryor Cashman Sherman & Flynn, Christine Lepera, Sonnenschein Nath & Rosenthatl, New York City, for defendants.

Opinion

JONES, District. Judge.

Plaintiff Demme Ulloa brings this action against Defendants Universal Music and Video Distribution Corp., Island Def Jam Music Group, Roc-A-Fella Records, LLC, and Shawn Carter (collectively "Defendants") for copyright infringement, false designation of origin under the Lanham Act, unjust enrichment, a declaration of joint authorship, and an accounting of all relevant sales. On April 15, 2002, Defendants moved for summary judgment, or, in the alternative, to bifurcate the case. Plaintiff opposed Defendants' motion and made a cross motion for summary judgment. As explained below, the Court grants Defendant's motion for summary judgment, in part, and denies Plaintiffs motion for partial summary judgment.

FACTS

The following facts are either undisputed or as alleged by Plaintiff. In April 2001, Plaintiff Demme Ulloa was invited to Base-Line Recording Studios by Samuel Barnes. Mr. Barnes is a friend and colleague of Defendant Shawn Carter, who is professionally known as "Jay Z." At the time Ms. Ulloa arrived at the recording studio, Mr. Carter was recording a song, which was ultimately released on Mr. Carter's album Blueprint, titled "Izzo (H.O.V.A.)" ("the Izzo song"). Mr. Barnes produced another song on the Blueprint album, (Barnes Decl. ¶ 4), and although he did not produce the Izzo song, Mr. Barnes told Ms. Ulloa that he was producing the Izzo song. (Ulloa Dep. at 209-10).

The Izzo song consisted of rapped lyrics by Mr. Carter, and an instrumental riff,¹ which previously appeared in the Jackson Five song, "I Want You Back" ("the Instrumental Phrase"). While at the studio listening to the unfinished version of the Izzo song, Ms. Ulloa created a countermelody to the Instrumental Phrase and spontaneously began singing this countermelody with the words from the rapped portion of the song. (Ulloa Aff. ¶ 2.) Mr. Barnes heard Ms. Ulloa singing this countermelody ("the Vocal Phrase"), and suggested that she sing the Vocal Phrase for Mr. Carter. Mr. Carter liked the Vocal Phrase and asked Ms. Ulloa to record the Vocal Phrase for possible inclusion in the Izzo song. (Hearing Tr. at 89).

While she was at the recording studio, Ms. Ulloa did not discuss any terms for the possible use of the Vocal Phrase; however, she later discussed the possibility of receiving credit as a vocalist and appearing on the music video with Mr. Barnes. (Hearing Tr. at 51-52, 55).² It was not decided at the time that Ms. Ulloa recorded the Vocal Phrase whether her recording would be included in the Izzo song. (Hearing Tr. at 13, 52).

Ms. Ulloa spoke to Mr. Barnes on several occasions after she recorded the Vocal Phrase. Mr. Barnes assured Ms. Ulloa that she would receive credit as a vocalist on the album if her recording was used, (Hearing Tr. at 81), but on another occasion informed her that her recording might not be used, and a more established performer might be asked to record the Vocal Phrase. (Hearing Tr. at 11). After the recording session, Ms. Ulloa continued to contact Mr. Barnes to negotiate terms for the use of her recording. (Ulloa Aff. ¶ 6). When Mr. Barnes stopped returning Ms. Ulloa's telephone calls, Ms. Ulloa contacted the American Federation of Television and Radio Artists ("AFTRA") in an attempt to establish communication with the Defendants. (Ulloa Dep. at 188). AFTRA is a national labor union that negotiates collective bargaining agreements, provides benefits to its members, and resolves disputes between its members and their employers. See www.aftra.com/whatis.html. Although Ms. Ulloa was not a member of AFTRA, (Ulloa Aff. ¶ 7), and therefore presumed that AFTRA was not entitled to collect payments on her behalf, (Ulloa Dep. at 237), an AFTRA employee requested payment for Ms. Ulloa's work on the Izzo song from Defendants.

When her attempts to contact Defendants through AFTRA failed, Plaintiff retained counsel. After receiving several communications from Plaintiff's counsel regarding their alleged copyright infringement, (Pl.Exs.5-6), Defendants remitted payment to AFTRA for Plaintiff's work on the Izzo song. Plaintiff's counsel returned these checks to AFTRA and filed this suit.

DISCUSSION

Defendants seek summary judgment with respect to Plaintiff's copyright infringement, joint authorship, Lanham Act and Unjust Enrichment claims. Defendants also move to bifurcate the trial into liability and damages phases. Plaintiff cross-moves for summary judgment with respect to certain aspects of her copyright infringement claim. Defendants' motion for summary judgment is GRANTED with respect to Plaintiffs joint authorship and Lanham Act claims. All other motions are DENIED.

A. Copyright Infringement

Plaintiff alleges the infringement of two separate copyrights: her copyright in the sound recording of her performance of the Vocal Phrase and her copyright in the musical composition of the Vocal Phrase.³ (Compl. ¶ 1). "Copyright protection extends to two distinct aspects of music: (1) the musical composition, which is itself usually composed of two distinct aspects — music and lyrics; and (2) the physical embodiment of a particular performance of the musical composition, usually in the form of a master recording." Staggers v. Real Authentic Sound, 77 F.Supp.2d 57, 61 (D.D.C.1999); see also 6 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 30.03 (2003) ("Copyright ownership of the physical embodiment of the performance of a musical composition (e.g., a master recording) is distinct from the ownership of the copyright in the musical composition itself").

Defendants claim that they are entitled to summary judgment on Plaintiff's copyright infringement claim based upon three alternative theories: (1) the melody of the Vocal Phrase is unoriginal and therefore unprotectable as a matter of copyright law (2) any copyright in the sound recording of the Vocal Phrase belongs to Defendant Roc-A-Fella Records as the author of a work for hire, and (3) Plaintiff licensed her interests in the composition and the sound recording of the Vocal Phrase to Defendants. The Court is not persuaded by any of these arguments.

In response, Plaintiff moves for partial summary judgment with respect to "(1) copyright infringement of [Plaintiffs] voice and (2) copyright originality of the subject melody." (Pl. Mem. at 1). Because there are disputed issues of fact regarding the employment status of the Plaintiff and the originality of the Vocal Phrase, Plaintiffs cross motion for partial summary judgment is denied.⁴

1. Originality

Originality — i.e., "distinguishable variation" and the presence of a "minimal element of creativity" — is a prerequisite to copyright protection. L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486, 490 (2d Cir. 1976) (internal quotations and citations omitted). The Second Circuit has characterized the test of originality as "modest, minimal," and "a low threshold." Durham Indust., Inc. v. Tomy Corp., 630 F.2d 905, 910 (2d Cir.1980) (internal quotations and citations omitted). Here, Plaintiff created the Vocal Phrase as a "counter-melody" to the Instrumental Phrase. (Hearing Tr. at 4). Defendants argue that the Vocal Phrase is not entitled to copyright protection because it is derived from the Instrumental Phrase and contains no distinct protectable expression. (Def. Mem. at 8). That the Vocal Phrase was derived from the Instrumental Phrase is no bar to copyrightability, as derivative works are explicitly protected in the Copyright Act. See 17 U.S.C. § 103. Just as courts in this district have found that a harmony added to a preexisting melody is not unoriginal as a matter of law, Tempo Music, Inc. v. Famous Music Corp., 838 F.Supp. 162, 167-69 (S.D.N.Y.1993), this Court declines to find that a countermelody is unoriginal as a matter of law.⁵

The parties have submitted reports of experts as well as musical and written renditions of the specific tones in the Vocal and Instrumental Phrases in support of their respective arguments regarding the originality of the Vocal Phrase. It would be improper for this Court, on a motion for summary judgment, to draw its own conclusions from this competing evidence regarding the originality of the Vocal Phrase.⁶ See Repp v. Webber, 132 F.3d 882 (2d Cir.1997). A reasonable factfinder, presented with these materials, could find either the presence or absence of the degree of originality required to confer copyrightability.

2. Work for Hire

The Copyright Act carves out an exception for "works made for hire." 17 U.S.C. § 201(b). Generally, copyright ownership vests in the author of a work; however, where a work is made for hire, the author's employer is considered the author and owns the copyright in the work, unless there is a written agreement to the contrary. Community for Creative Non-Violence v. Reid, 490 U.S. 730, 737, 109 S.Ct. 2166, 104 L.Ed.2d 811 (1989). Defendants claim that the sound recording of the Vocal Phrase was a work for hire, as Ms. Ulloa was an employee of the Defendants and the Vocal Phrase was recorded within the scope of her employment.

In determining whether Ms. Ulloa was an employee of the Defendants when she recorded the Vocal Phrase, this Court must look to the general common law of agency, as well as the factors identified in Reid.⁷ However,

A court must disregard those factors that, in light of the facts of a particular case, are (1) irrelevant or (2) of `indeterminate' weight — that is, those factors...