1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Michael J. Niborski (State Bar No. 192111) [email protected]Darius K.C. Zolnor (State Bar No. 248686) [email protected]PRYOR CASHMAN LLP 1801 Century Park East, 24th Floor Los Angeles, California 90067-2302 Tel: (310) 556-9608 / Fax: (310) 556-9670 Ilene S. Farkas (admitted pro hac vice) [email protected]PRYOR CASHMAN LLP 7 Times Square New York, New York 10036-6569 Tel: (212) 326-0108 / Fax: (212) 798-6306 Attorneys for Defendants KANYE WEST, UMG RECORDINGS, INC., ROC-A-FELLA RECORDS, LLC, THE ISLAND DEF JAM MUSIC GROUP; CAROLINE DISTRIBUTION, ELECTRONIC ARTS, INC.,WARNER BROS. ENTERTAINMENT INC., STONES THROW RECORDS, and NBCUNIVERSAL MEDIA, LLC UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA WESTERN DIVISION Case No. CV 13-02449 BRO (JCx) NOTICE OF MOTION AND MOTION FOR JUDGMENT ON THE PLEADINGS AS TO PLAINTIFFS’ FOURTH AMENDED COMPLAINT; MEMORANDUM OF POINTS AND AUTHORITIES Hearing: Date: July 14, 2014 Time: 1:30 p.m. Courtroom: 14 (Notice of Lodging, Request for Judicial Notice and Declaration of Ilene S. Farkas filed concurrently) Fourth Amended Complaint filed February 21, 2014 TRENA STEWARD, et al., Plaintiffs, v. KANYE WEST, et al., Defendants. ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) Case 2:13-cv-02449-BRO-JC Document 125 Filed 06/16/14 Page 1 of 36 Page ID #:1476
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Michael J. Niborski (State Bar No. 192111) [email protected] Darius K.C. Zolnor (State Bar No. 248686) [email protected] PRYOR CASHMAN LLP 1801 Century Park East, 24th Floor Los Angeles, California 90067-2302 Tel: (310) 556-9608 / Fax: (310) 556-9670 Ilene S. Farkas (admitted pro hac vice) [email protected] PRYOR CASHMAN LLP 7 Times Square New York, New York 10036-6569 Tel: (212) 326-0108 / Fax: (212) 798-6306 Attorneys for Defendants KANYE WEST, UMG RECORDINGS, INC., ROC-A-FELLA RECORDS, LLC, THE ISLAND DEF JAM MUSIC GROUP; CAROLINE DISTRIBUTION, ELECTRONIC ARTS, INC.,WARNER BROS. ENTERTAINMENT INC., STONES THROW RECORDS, and NBCUNIVERSAL MEDIA, LLC
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
WESTERN DIVISION
Case No. CV 13-02449 BRO (JCx) NOTICE OF MOTION AND MOTION FOR JUDGMENT ON THE PLEADINGS AS TO PLAINTIFFS’ FOURTH AMENDED COMPLAINT; MEMORANDUM OF POINTS AND AUTHORITIES Hearing: Date: July 14, 2014 Time: 1:30 p.m. Courtroom: 14 (Notice of Lodging, Request for Judicial Notice and Declaration of Ilene S. Farkas filed concurrently) Fourth Amended Complaint filed February 21, 2014
TRENA STEWARD, et al., Plaintiffs, v. KANYE WEST, et al., Defendants.
))))))))))))))))))))))))
Case 2:13-cv-02449-BRO-JC Document 125 Filed 06/16/14 Page 1 of 36 Page ID #:1476
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TO THE COURT, ALL PARTIES AND THEIR ATTORNEYS OF
RECORD:
PLEASE TAKE NOTICE that, on July 14, 2014, at 1:30 p.m., or as soon
thereafter as this matter may be heard before the Honorable Beverly Reid O’Connell of
the above-entitled Court, located at 312 N. Spring Street, Los Angeles, California
Records, LLC, The Island Def Jam Music Group, Caroline Distribution, Electronic
Arts, Inc., Warner Bros. Entertainment Inc., Stones Throw Records and NBCUniversal
Media, LLC (collectively, “Defendants”), will and hereby do move this Court for
Judgment in their favor on the pleadings in this action on the following grounds:
(a) Plaintiffs fail to state a claim for copyright infringement as a matter of law
because (i) the recording snippets at issue lack sufficient originality to be protectable,
and (ii) even assuming, arguendo, that the snippets are protectable, Defendants’
alleged uses were de minimis;
(b) Plaintiffs’ claim for secondary copyright infringement fails because they
cannot allege secondary liability without direct infringement;
(c) Plaintiffs’ claims for declaratory relief of co-authorship fail because
Plaintiffs fail to allege any of the requisite elements for the claims, and in any event the
claims are barred by the statute of limitations; and
(d) Plaintiffs’ demands for statutory damages and attorneys’ fees are barred as
a matter of law.
This Motion will be based on this Notice of Motion and Motion, the
Memorandum of Points and Authorities, the concurrently-filed Request for Judicial
Notice, Declaration of Ilene S. Farkas and Notice of Lodging, the pleadings and papers
on file herein, all other matters of which the Court may take judicial notice and upon
such other or further material as may be presented at or before the hearing on this
matter.
Case 2:13-cv-02449-BRO-JC Document 125 Filed 06/16/14 Page 2 of 36 Page ID #:1477
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This Motion is made following the conference of counsel pursuant to L.R. 7-3,
which took place on May 20, 2014.
PRYOR CASHMAN LLP
Dated: June 16, 2014 By: /s/ Michael J. Niborski Michael J. Niborski
[email protected] Attorneys for Defendants KANYE WEST, UMG RECORDINGS, INC., ROC-A-FELLA RECORDS, LLC, THE ISLAND DEF JAM MUSIC GROUP, CAROLINE DISTRIBUTION, ELECTRONIC ARTS, INC., WARNER BROS. ENTERTAINMENT INC., STONES THROW RECORDS, and NBCUNIVERSAL MEDIA, LLC
Case 2:13-cv-02449-BRO-JC Document 125 Filed 06/16/14 Page 3 of 36 Page ID #:1478
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TABLE OF CONTENTS
TABLE OF AUTHORITIES .................................................................................... iii
I. PRELIMINARY STATEMENT ............................................................................ 1
II. FACTUAL BACKGROUND ............................................................................... 4
A. Plaintiffs’ Song And The Gold Future And Private Stock Recordings ....... 4
B. Plaintiffs’ Claims Against The Defendants’ Recordings ............................. 5
III. ARGUMENT ....................................................................................................... 8
A. Legal Standard ............................................................................................. 8
1. A Motion For Judgment on the Pleadings Is Subject to
the Same Standard as a Rule 12(b)(6) Motion to Dismiss ................. 8
2. This Court Can Determine Non-Infringement
on This Motion for Judgment on the Pleadings ................................. 8
B. Plaintiffs Fail To State A Claim For
Infringement As A Matter of Law ............................................................. 10
1. The Snippets at Issue Lack
Sufficient Originality to be Protectable ............................................ 10
a. This Court Has Already Held that the
Short Phrases at Issue Are Unprotectable ................................... 10
b. The Recording of Pryor’s Recitation of
Unprotectable Lyrics Is Similarly Unprotectable ........................ 11
2. Even Assuming, Arguendo, that the Snippets of Plaintiffs’
Recordings Were Sufficiently Original to be Protectable,
Defendants’ Alleged Uses are De Minimis ....................................... 12
a. A De Minimis Sample Is One that Is Insubstantial
as Compared to Plaintiff’s Work as a Whole .............................. 13
b. The Alleged Samples of a Few
Spoken Words, Lasting Less Than
One Second Each Are De Minimis .............................................. 14
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C. Plaintiffs’ Claims For Secondary Copyright Infringement And
For Declarations Of Co-Authorship Should Also Be Dismissed .............. 16
1. Plaintiffs Cannot Allege Secondary Liability For
Copyright Infringement Without Direct Infringement........................ 16
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MEMORANDUM OF POINTS AND AUTHORITIES
Defendants Kanye West (“West”), UMG Recordings, Inc. (“UMG”), Roc-A-
Fella Records, LLC (“RAF”), The Island Def Jam Music Group (“IDJ”), Caroline
Distribution (“Caroline”), Electronic Arts, Inc. (“EA”), Warner Bros. Entertainment
Inc. (“Warner”), Stones Throw Records (“ST”), and NBCUniversal Media, LLC
(“NBC,” collectively the “Defendants”) respectfully submit this Memorandum of
Points and Authorities in support of their Motion for Judgment on the Pleadings
pursuant to Rule 12(c) of the Federal Rules of Civil Procedure for failure to state a
claim in the Fourth Amended Complaint (“4AC”) filed by Plaintiffs Trena Steward,
Lorenzo Pryor, and Karla Ray (collectively, “Plaintiffs”) in this action.
I. PRELIMINARY STATEMENT
Plaintiffs claim to be the owners of a musical composition entitled “Bumpin’
Bus Stop” (“Plaintiffs’ Song”). Plaintiffs are heirs of David Pryor, who is alleged to
have composed Plaintiffs’ Song. The 4AC asserts infringement claims against various
defendants, claiming that 18 different musical sound recordings (collectively,
“Defendants’ Recordings”) infringe their purported rights in a 1974 sound recording of
Plaintiffs’ Song, referred to herein as the “Gold Future Recording,” and possibly also
infringe a 1975 sound recording of Plaintiffs’ Song, referred to as the “Private Stock
Recording” (the Gold Future Recording and Private Stock Recording are collectively
referred to herein as “Plaintiffs’ Recordings”). Plaintiffs’ Fourth Amended Complaint
(the “4AC”) – their fifth complaint in this action – does not specify exactly which of
Plaintiffs’ Recordings was infringed by any of the Defendants’ Recordings at issue.
Plaintiffs’ claims should be dismissed regardless of which of the Plaintiffs’
Recordings was allegedly infringed.1 First, the allegedly infringed material is simply
1 When this action began, Plaintiffs asserted claims against 56 different works,
claiming, inter alia, that these works infringed the musical composition (Plaintiffs’
Song) and/or the Private Stock Recording, as well as asserting a RICO claim based on
a supposed vast “criminal conspiracy.” Now, after five different Complaints, and after
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not protectable. Plaintiffs’ claims are based on the alleged copying of particular, brief
snippets from the spoken introduction of Plaintiffs’ Recordings. Each of the
Defendants’ Recordings is alleged to have copied only one of these snippets, consisting
of a mere 1 to 5 words, e.g., “step,” “get down,” “step up” and “it’s the hottest thing.”
Each of the allegedly infringed snippets lasts for less than a second in Plaintiffs’
Recording(s), and none of them is repeated in either of Plaintiffs’ Recordings.
The allegedly infringed material at issue is simply not protectable. This Court is
well aware of the separate copyrights that exist in musical compositions and in sound
recordings, because it already parsed out and dismissed the compositional infringement
claims based on Plaintiffs’ Song, holding that the precise words and short phrases at
issue on this motion are not protectable as a matter of law. Now, Defendants ask that
this Court take the next logical step: if the words David Pryor speaks on Plaintiffs’
Recordings are not sufficiently original to be protected by copyright, then the sound
recording(s) embodying his recitation – each lasting less than a second – also cannot
possess the minimal degree of creativity necessary to warrant copyright protection.2
As discussed in detail below, this Court has recently decided a case virtually
indistinguishable from this one: VMG Salsoul, LLC v. Ciccone, 2013 U.S. Dist.
this Court’s decision on Defendants’ prior motion to dismiss, Plaintiffs’ claims are
whittled down to the alleged infringement of one of Plaintiffs’ Recordings. However,
Plaintiffs have taken great pains not to specify whether the Gold Future Recording or
the Private Stock Recording was allegedly infringed, and instead use the generic term
“the Record.” Given that the allegedly infringed portions are unprotectable (or,
alternatively, any use was de minimis), this “glossing over” might be overlooked. If,
however, any claims survive dismissal, Plaintiffs will have to take a position on which
of Plaintiffs’ Recordings was allegedly infringed, particularly given 17 U.S.C.
§ 114(b)’s requirement that, for sound recording claims, the “actual sounds fixed in the
recording” must be copied. 2 Solely for purposes of this motion, the moving Defendants are not disputing whether
either of Plaintiffs’ Recordings was copied in Defendants’ Recordings at issue, as
dismissal is appropriate even if copying is assumed. Should any of Plaintiffs’ claims
survive dismissal, however, Defendants intend to vigorously dispute copying.
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LEXIS 184127 (C.D. Cal. Nov. 18, 2013). In VMG, the plaintiffs alleged copyright
infringement of both the musical composition and sound recording of a single horn
“stab” or “hit.” This Court found that the alleged appropriation consisted of a single
chord (and the recording thereof) lasting only a quarter second. This Court held that
the musical composition was not infringed by the alleged use of this brief
compositional element, and that the plaintiff’s sound recording was also not
infringed, finding specifically – as Defendants ask the Court to do here – that the
allegedly sampled snippet of the recording also was not sufficiently original to warrant
copyright protection and, even if it were, that the alleged sampling was de minimis.
Here, this Court already properly determined that the lyrics at issue are not
original enough to warrant copyright protection. As in VMG, the sound recording of
David Pryor’s saying these unprotectable lyrics is similarly unprotectable and, even if
it were protectable, the alleged sampling is de minimis. Defendants respectfully submit
that the issues presented on this motion are ripe for adjudication and appropriate for
resolution now, as a matter of law, before the parties are forced to spend inordinate
amounts of money on massive (and irrelevant) fact discovery. Indeed, no amount of
discovery is going to change the quantum of the allegedly infringed snippets of
Plaintiffs’ Recordings at issue, or the protectability of those snippets. Accordingly,
Plaintiffs’ claims for infringement based on either of Plaintiffs’ Recordings can, and
should, be dismissed as a matter of law.
Similarly, Plaintiffs’ claims for contributory infringement all depend on
Plaintiffs’ direct infringement claims and should also be dismissed. Plaintiffs’ claims
for a declaration of co-authorship also can and should be dismissed as time barred
under the Copyright Act’s applicable three-year statute of limitations.
Finally, this Court should dismiss Plaintiffs’ statutory damages and attorneys’
fees demands because Plaintiffs cannot satisfy the requirements of 17 U.S.C. § 412,
which precludes such relief where a plaintiff fails to register its work with the
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Copyright Office prior to the commencement of the claimed infringement, unless such
registration occurs within three months of the first publication of the allegedly
infringed work. David Pryor never filed for copyright registration for either of
Plaintiffs’ Recordings, nor did Plaintiffs file for copyright registration in either until
December 2013, when they registered only the Gold Future Recording. Further, to the
extent that any of Plaintiffs’ claims depends on the alleged infringement of the Private
Stock Recording, all of their claims must be dismissed, because, as has already been
held in a related case, Plaintiffs do not own a valid registration for that work.
II. FACTUAL BACKGROUND
A. Plaintiffs’ Song And The Gold Future And Private Stock Recordings
According to the 4AC, Plaintiffs’ father, David Pryor, wrote Plaintiffs’ Song in
or about 1974. Plaintiffs allege that two recordings of Plaintiffs’ Song were created.
Plaintiffs allege that the first recording (the “Gold Future Recording”) was created at
Gold Future Recording Studio in 1974. (4AC at ¶ 10.) Plaintiffs further allege that
“[a]ll creative elements to the Composition [Plaintiffs’ Song] were made at the
instance, direction, control, and expense of David Pryor.” (Id. at ¶ 11.)
In or about 1975, Plaintiffs allege that Pryor “desired to release, manufacture,
distribute and promote the Record on a larger scale.” (Id. at ¶ 14.) He allegedly took
the Gold Future Recording to a different studio, Private Stock Records. Plaintiffs
specifically allege that “[n]o creative elements were added to the Record by Private
Stock; the sound recording is a literal copy of the Record made by Pryor at Gold
Future.” (Id., emphasis added) However, Plaintiffs also allege that Private Stock “used
equipment to enhance the mix and sound quality” and “shortened the playing length”
of the Gold Future Recording to create the new Private Stock Recording. (Id.)
Despite Plaintiffs’ conclusory allegations of Pryor’s authorship and ownership
of Plaintiffs’ Song, the Gold Future Recording and the Private Stock Recording, no
copyright registrations were filed by Pryor as the copyright owner or claimant for any
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of these works. Instead, Plaintiffs’ Song was “registered by Private Stock Record’s
Music Publisher, Caesar’s Music Library, in January 1975” and the Private Stock
Recording was registered by Private Stock with Private Stock as copyright “claimant.”
(Id. at ¶ 15; Ex. B to Declaration of Ilene S. Farkas In Support of Defendants’ Motion
For Judgment on the Pleadings As To Plaintiffs’ Fourth Amended Complaint (“Farkas
Dec.”)) There is no mention in this registration of Pryor’s ownership or authorship of
the Private Stock Recording, and there is no mention of the Gold Future Recording,
which was not registered at that time (indeed, it was not registered until December
2013). While Plaintiffs allege that “Private Stock’s application inadvertently omits
that it was based on Pryor’s pre-existing material,” Plaintiffs have never sought to
correct or supplement the Private Stock registration in any way. (Id. at ¶ 15; Private
Stock registration, Ex. B to Farkas Dec.) Plaintiffs’ pleadings appear to concede that
Private Stock is the owner of the Private Stock Recording. (Id. at ¶¶ 15-17.)
Neither Pryor nor anyone else registered the Gold Future Recording with the
Copyright Office for almost 4 decades after its alleged creation.3 In fact, neither
Plaintiffs’ Original or First Amended Complaint mentioned this original recording at
all, and all claims of infringement were based on the Private Stock Recording. The
Gold Future Recording was not even mentioned in this case until September 2013 and
was not registered with the Copyright Office until December 23, 2013, shortly before
Plaintiffs filed the 4AC. (Id. at ¶ 22; Gold Future Registration Ex. A to Farkas Dec.)
B. Plaintiffs’ Claims Against The Defendants’ Recordings
Plaintiffs’ current claims derive solely from short words and phrases found only
in the introduction to Plaintiffs’ Recordings. According to Plaintiffs, David Pryor
“says” the following introduction: “Hey Gang, let me show you something! It’s the
hottest thing and it’s on its way to the top! Step up front…you dig! Get down with the
Bus Stop!” (Id. at ¶ 12.) Plaintiffs allege that the Gold Future Recording “was
3 David Pryor died in May 2006 in a skilled nursing facility. (4AC at ¶ 18.)
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approximately 3:4842 minutes in length on the A-Side (Part 1) and approximately
3:1582 on the B-Side (Part 2),” for a total of 7:0424 minutes.4
The entire introduction lasts approximately 12 seconds in Plaintiffs’ Recordings
and is not repeated in either of them. But Plaintiffs’ claims are not based on the entire
introduction. Rather, each of the claims at issue on this motion is based on some
alleged use of some small portion of this introduction. No musical elements are
alleged to be copied.5
This motion addresses 12 of the 18 Defendants’ Recordings at issue. (See Ex. C
to Farkas Dec.)6 Each of the Defendants’ Recordings subject to this motion and the
word or words allegedly copied from the Plaintiffs’ Recordings are set forth below.
Defendants’ Recording Alleged Words Copied
Gold Digger “Get down” (4AC at ¶¶ 29, 70)
Step In the Arena “Step up” (Id. at ¶¶ 123, 130)
Official “It’s the” (Id. at ¶ 161)
Dance on the Glass “It’s the hottest thing” (Id. at ¶ 168)
The Payback Gotta “Step up” (Id. at ¶ 175)
Cold Cutz “Step up” (Id. at ¶ 182)
Sunny Hours “Step up” (Id. at ¶ 205)
All Caps Drumbeat and “step” (Id. at ¶¶ 233-34, 239)
Ventilation “Step up front” (Id. at ¶ 257)
4 Plaintiffs only allege that this introduction appears on the A-Side of the Gold Future
Recording (4AC at ¶ 12), although it appears that the introduction appears in the
Private Stock Recording as well. (Ex. C to Farkas Dec. at Track 2.) 5 Plaintiffs do allege that one song, “All Caps,” uses a “drum beat musical phrase”
from one of Plaintiffs’ Recordings. (4AC at ¶ 232-33, Twenty-Sixth Claim for relief.)
As discussed below, this claim should also be dismissed. 6 Of the claims pertaining to the remaining 6 songs at issue, 4 are addressed to
defendants other than the moving Defendants.
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Defendants’ Recording Alleged Words Copied
Step Up Breaks – Super Duck Breaks “Step up” (Id. at ¶ 273)
I Get Around (Contributory
infringement only) “Step up” (Id. at ¶ 88)
Get Down (Contributory
infringement only)
“Get,” “Get down” and “Get down with the”
(Id. at ¶ 146)
Each one of these alleged infringements lasts less than a second in both of
Plaintiffs’ Recordings.
This Court has already decided that the very words and short phrases from
Plaintiffs’ Song are unprotectable. Plaintiffs’ original and First Amended Complaint
contained infringement claims against 56 different allegedly infringing works,
claiming infringement of both the underlying composition (Plaintiffs’ Song), and of the
Private Stock Recording (the Gold Future Recording was not mentioned until
Plaintiffs’ Second Amended Complaint). In June 2013, Defendants moved to dismiss,
inter alia, any claim based on infringement of Plaintiffs’ Song. Defendants argued that
the words and short phrases at issue were simply unprotectable as a matter of law.
In granting Defendants’ motion to dismiss in its entirety, this Court agreed,
recognizing the “short phrases doctrine”:
Here, the Court finds that there is no originality in such
words and short phrases as “Get Down,” “Step Up,” “It’s the
Hottest Thing,” or “Step Up Front.” See Narell v. Freeman,
a registering party is not the owner at the time of
registration, the registration is invalid.”
Sony Action, Order Granting Defendants’ Motion to Dismiss (Docket 30).
Accordingly, to the extent that Plaintiffs are claiming that David Pryor owned
the Private Stock Recording, then the Private Stock registration is – and always has
been – invalid and cannot provide the basis of a claim infringement, much less a claim
for statutory damages and attorneys’ fees under § 412. To the extent that Plaintiffs
claim ownership and infringement of the Private Stock Recording, this Court should
dismiss all infringement claims based thereon pursuant to 17 U.S.C. § 411.
Plaintiffs may attempt to use the Private Stock registration as a bootstrap,
realizing the 2013 Gold Future registration was filed too late to entitle them to seek
statutory damages and attorneys’ fees. Plaintiffs may argue that the Private Stock
Recording is a derivative work of the Gold Future Recording, that Private Stock simply
owned the derivative work (i.e., the work derived from the Gold Future Recording,
which was created by using “equipment to enhance the mix and sound quality of the
original master recordings,” and “shorten[ing]the playing length”) and that, therefore,
the Private Stock registration “covers” the Gold Future Recording for § 411 purposes
under the effective registration doctrine. However, in order to benefit from this
doctrine, the owners of both works must be the same. Nimmer & Nimmer, supra, §
7.16[B][2][c] (“[W]hen the same party owns the derivative or collective work plus the
underlying elements incorporated therein, its registration of the former is ‘sufficient to
permit an infringement action on the underlying parts, whether they be new or
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preexisting.’”); Salestraq Am., LLC v. Zyskowski, 635 F. Supp. 2d 1178, 1181 (D.
Nev. 2009). Here, that is not the case as shown by Plaintiffs’ allegations and the
registrations themselves.
Judge Pregerson rejected this argument in the Sony Action where Plaintiffs
alleged that Private Stock, and not Pryor, owned the Private Stock registration:
“[U]nder the effective registration doctrine, the registration
of a derivative work satisfies the registration requirement for
an infringement action based on preexisting work not
separately registered. However, the registration of a
derivative work suffices for a prior, unregistered work only
when the same party owns both works. Here, it was Private
Stock, not Pryor, who registered an allegedly derivative work
containing elements allegedly owned by Pryor. Even
accepting Plaintiffs’ assertion … that the 1975 Private Stock
record is a derivative work, Private Stock’s 1975 registration
cannot satisfy 17 U.S.C. § 411(a)’s requirement that Pryor or
his successors in interest register the 1974 Gold Future
record prior to suit.” Lorenzo Pryor, et al. v. Wyclef Jean, et
al., Case No. 13-02867 DDP, Order Granting Defendants’
Motion to Dismiss (C.D. Cal. October 28, 2013) (Docket 30)
(citations omitted, emphasis added).
Accordingly, the Private Stock registration is either invalid (if Pryor is claimed
to be the owner of the Private Stock Recordings) or simply registers the Private Stock
Recording as a derivative work. If the Private Stock Recording is a derivative work,
then it is black-letter copyright law that the ownership in a derivative work (and the
registration therefor) only extends to the new, original and copyrightable material
added to the Gold Future Recording, which is the original work. 17 U.S.C. § 101
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(2010) (“The aspects of a derivative work added by the derivative author are that
author’s property, but the element drawn from the pre-existing work remains on grant
from the owner of the pre-existing work.”); see also Stewart v. Abend, 495 U.S. 207,
223, 110 S. Ct. 1750, 109 L. Ed. 2d 184 (1990); VMG, 2013 U.S. Dist. Lexis 184127,
at *FN 5. It does not extend to the original work, which remains the property of the
original owner. Id. The only new “material” arguably added to the Private Stock
Record included the “enhancing” the “mix” and “sound quality” and “shortening the
playing length” – nothing that is alleged to be infringed in this action. Accordingly,
Plaintiffs are still required to have a valid registration for the underlying and allegedly
infringed Gold Future Recording in order to sue for infringement of that work and that
valid registration needed to be filed before any infringement commenced in order to
seek statutory damages and attorneys’ fees under the Copyright Act.
As Plaintiffs did not have a valid registration in the Gold Future Recording at the
time of the alleged infringements – and the Private Stock registration cannot satisfy
Section 411(a)’s requirement – Plaintiffs’ claims for statutory damages and attorneys’
fees are barred as a matter of law for both of Plaintiffs’ Recordings.
IV. CONCLUSION
For the foregoing reasons, it is respectfully submitted that Defendants’ motion
be granted in its entirety.
PRYOR CASHMAN LLP
Dated: June 16, 2014 By: /s/ Michael J. Niborski Michael J. Niborski
[email protected] Attorneys for Defendants KANYE WEST, UMG RECORDINGS, INC., ROC-A-FELLA RECORDS, LLC, THE ISLAND DEF JAM MUSIC GROUP, CAROLINE DISTRIBUTION, ELECTRONIC ARTS, INC., WARNER BROS. ENTERTAINMENT INC., STONES THROW RECORDS, and NBCUNIVERSAL MEDIA, LLC
Case 2:13-cv-02449-BRO-JC Document 125 Filed 06/16/14 Page 36 of 36 Page ID #:1511
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