Walker v. Carter
| Decision Date | 26 September 2016 |
| Docket Number | 12-CV-5384 (ALC) (RLE) |
| Citation | 210 F.Supp.3d 487 |
| Parties | Dwayne D. WALKER, Jr., Plaintiff, v. Shawn CARTER ("Jay Z"), Damon "Dame" Dash, Kareem "Biggs" Burke, Universal Music Group, Inc., Island Def Jame Music Group, and Roc-A-Fella Records, LLC, Defendants. |
| Court | U.S. District Court — Southern District of New York |
Gregory Scot Berry, Gregory Berry, Esq., Lancaster, PA, Havona Madama, Madama Griffitts LLP, New York, NY, for Plaintiff.
Eleanor Martine Lackman, Scott Jonathan Sholder, Cowan, Debaets, Abrahams & Sheppard LLP, Dale Lionel Smith, Dale Lionel Smith, Esq., Chetan A. Patil, Shapiro Arato LLP, New York, NY, for Defendants.
This is a dispute over the creation, ownership, and use of the logo (the "Logo") used by Roc-a-Fella Records, a record label formed by Shawn Carter ("Jay Z"), Damon "Dame" Dash, and Kareem "Biggs" Burke. Plaintiff asserts ownership of the Logo and brings breach of contract and copyright claims against Carter, Dash, and Burke, as well as UMG Recordings, Inc. ("UMG"), Island Def Jam Music Group ("Island Def Jam") and Roc-A-Fella Records, LLC ("RAF LLC") (collectively, the "Corporate Defendants").1
Plaintiff casts himself as the creative mastermind of the Logo's design, though he admits that he neither came up with the idea for the Logo nor drew any part of it. Instead, he claims that nearly two decades ago, Dash described the Logo's concept to him, and he then arranged for three other men to draw elements of the Logo, directed their work, and combined the elements into the Logo. He alleges that Defendants owe him royalties for the use of the Logo, under the terms of a written contract he entered into with Dash; however, Plaintiff claims he has since lost the only copy of that contract to ever exist. Plaintiff also registered a copyright for the Logo in 2010, and he brings a claim that Defendants infringed upon his copyright, by displaying and selling items bearing the Logo in the cases of all Defendants, and by appearing in videos wearing necklaces bearing the Logo in the cases of Carter and Dash.
Defendants now move for summary judgment on all claims, and Plaintiff moves for partial summary judgment on three discrete issues. As set forth more fully below, Defendants' motion is granted in full and Plaintiff's is denied, as the contract claim is barred by the lack of evidence of a written contract and the copyright claim is time-barred.
Local Civil Rule 56.1 of the United States District Courts for the Southern and Eastern Districts of New York requires a party moving for summary judgment to submit a "separate, short and concise statement, in numbered paragraphs, of the material facts as to which the moving party contends there is no genuine issue to be tried." Local Civ. R. 56.1(a). The opposing party must then submit a counterstatement, and "[w]here plaintiff has not responded to defendants' factual assertions—all of which are established by documentary evidence and/or the deposition testimony of plaintiff or her counsel," a Court may deem those facts to be uncontroverted. Dunkin' Donuts Inc. v. Barr Donut, LLC., 242 F.Supp.2d 296, 298–99 (S.D.N.Y. 2003).
Here, Defendants filed a Rule 56.1 Statement, based in large part on the deposition testimony of Plaintiff and his witnesses. (Def.'s Joint 56.1 Statement ("Def.'s 56.1"), ECF No. 330.) In his Rule 56.1 Counterstatement, Plaintiff declined to specifically deny or respond to the majority of Defendants' statements, arguing that those statements recounting testimony "are descriptions of evidence on the record, to which no response is necessary." (See, e.g., Pl.'s 56.1 Counterstatement ("Pl.'s Counter 56.1"), ECF No. 348, ¶¶ 42-67.) This is a somewhat puzzling argument, considering that Defendants' 56.1 Statement in large part recites Plaintiff's own testimony. C.f. U.S. Underwriters Ins. Co. v. Allstate Ins. Co., No. 10 Civ. 2353, 2013 WL 3148636, at *6 (E.D.N.Y. June 19, 2013) (). Regardless, Plaintiff has failed to properly controvert these statements, as he does not controvert these statements with citations to admissible evidence. See Local Civ. R. 56.1(b).
Given Plaintiff's failure to properly respond, the Court could deem all uncontroverted statements admitted. See, e.g., Baity v. Kralik, 51 F.Supp.3d 414, 418 (S.D.N.Y. 2014) (collecting cases). But the Court has considerable discretion in deciding how to proceed where a party fails to comply with the Local Rules. See Emanuel v. Griffin, No. 13 Civ. 1806, 2015 WL 1379007, at *2 (S.D.N.Y. Mar. 25, 2015) (collecting cases). The Court will take a "practical approach," Jones v. Bay Shore Union Free Sch. Dist., 170 F.Supp.3d 420, (E.D.N.Y. 2016) (citation omitted), and examine the underlying deposition testimony where appropriate.
Defendants Dash, Carter, and Burke are the co-founders of the Roc-A-Fella record label ("Roc-A-Fella"). (Def.'s 56.1 ¶ 1.) In 1996, the three formed a corporation called Roc-A-Fella Records, Inc. ("Roc Inc.") to operate the record label. (Id. ¶¶ 3-4.) In 1997, the three formed Roc-A-Fella Records, LLC ("RAF LLC"), as a joint venture with a predecessor of Defendant UMG. (Id. ¶¶ 161-62.) In 2004, UMG acquired the membership interests of the three individuals defendants in RAF LLC. (Id. ¶ 64.)
Plaintiff Walker is an individual who claims to have, in 1995, played a role in the creation of Roc-A-Fella's Logo. (Id. ¶ 5.) The Logo has gone through several iterations, but Plaintiff claims to have created the version below, used on the commercial release of Carter's 1996 single, Dead Presidents.
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.) In 2010, Plaintiff submitted a copyright application for the following logo:
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(Exh. 32, Arato Aff. ("Copyright App."), ECF No. 331-32.)
Starting with the commercial release of Carter's first full-length album, Reasonable Doubt in 1996, Roc-A-Fella began using the logo below, and it has continued to use essentially that same logo up to the present:
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Plaintiff gives the following account of the creation of the Logo. According to Plaintiff, he was introduced to Dash by a friend named David Sierra in 1994. (Walker Dep. 23:10-16.) He met with Dash on multiple occasions in February or March of 1995 to discuss ideas for a clothing line, and he took on a role as a consultant. (Id. 26:4-28:4, 30:16-31:10.) In this time period, Plaintiff also was introduced to Carter, but they never spoke beyond exchanging greetings. (Id. 44:19-45:7.)
Plaintiff claims that in October or November of 1995, he was at Dash's home on a social visit when he saw a draft of a logo on a piece of paper. (Walker Dep. 46:10-25.) That logo included the word "Roc-A-Fella," and depicted people dancing on top of the letters. (Id. 47:3-8.) Plaintiff had also previously seen a version of the logo, used on Carter's 1994 single, "In My Lifetime," that included a champagne bottle, the word, "Jay-Z," and two champagne bottles. (Id. 47:16-48:10.) Upon seeing the draft logo in Dash's home, Plaintiff said, "I could do something better than that, definitely." (Id. 46:23-25.) Dash also expressed dissatisfaction with the current design, and told Plaintiff that he wanted a logo incorporating an "R," an album, and a champagne glass. (Id. 49:18-25.) Dash asked Plaintiff how much Plaintiff would charge for the creation of a logo, and Plaintiff told him, "5 percent of everything that the logo is on and [$]3500." (Id. 50:2-6.) Dash said, "[A]ll right, get it done," and the two "shook on it." (Id. 50:12-18.)
Plaintiff himself was not a graphic designer and "wasn't a great illustrator." (Def.'s 56.1 ¶ 10.) But he eventually enlisted three individuals to work on the logo: Flavius Penchon, Freddie Mack, and Kenny Gonzalez.2 (Walker Dep. 50:21-51:13; 58:8-25.) He decided to "use everybody's talents and bring it together." (Id. 69:10-12.) For instance, he decided Mack would draw the circle, representing the album, because "his things come out straight, circles come out circular."3 (Id. 69:9-10) Plaintiff gathered Mack, Gonzalez, and Penchon together at Penchon's apartment in Brooklyn to "get this logo done." (Id. 61:5-15.) Plaintiff describes what happened there as follows:
I said, Flavi [Penchon], you do the R, Mack, you do the album, Kenny [Gonzalez], champagne bottle, but this is how we are going to do the champagne bottle. Abstract. So I need it to look like a bottle but not look like a bottle. It can't look so stiff. It has to have some type of flow to it. The position that we were doing before was semi-close, but with that bottle and the whole concept I had I was going to be able to put it all together.... I gave them a certain amount of time ...I said we are going to free style.... Told everyone to stop. I looked at everything. Flavi's R was right on point. Mack, the album was right on point and Kenny the champagne bottle was right on point.4 ,5
(Id. 61:15-13.) At that point, Plaintiff felt Gonzalez's champagne bottle was too "generic," and directed Gonzalez to add an upside down "question mark" in the champagne bottle, "to represent who Jay is, where Jay come from." (Id. 63:9-11, 68:19-23.) He also directed Gonzalez to add four bubbles over the champagne bottle. (Id. 63:9-11.) Plaintiff himself did not physically draw any part of the logo himself, but he "directed the whole thing" and it was his "vision." (Id. 62:23-25.)
Plaintiff then directed the compilation the three elements, as follows:
The album goes behind this, put the R right here, and drop the champagne bottle a little bit...
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