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UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK
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TUFAMERICA, INC.,
Plaintiffs
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MICHAEL DIAMOND, et al.,
Defendants.
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Case No. 12 Civ. 3529 (AJN)
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MEMORANDUM OF LAW IN SUPPORT OF
UNIVERSALPOLYGRAM INTERNATIONAL PUBLISHING, INC. AND
CAPITOL RECORDS, LLCS MOTION FOR SUMMARY JUDGMENT
Case 1:12-cv-03529-AJN Document 75 Filed 06/09/14 Page 1 of 23
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TABLE OF CONTENTS
PRELIMINARY STATEMENT .....................................................................................................1
STATEMENT OF FACTS ..............................................................................................................3
A. Trouble Funk ............................................................................................................3
B. Trouble Funks Deal With Island ............................................................................4
C. Trouble Funks Composition Transfers ...................................................................9
D. Robert Reed and Tony Fishers Deal With TufAmerica .......................................10
E. James Averys Deal With TufAmerica ..................................................................11
F. TufAmericas Remaining Claims ..........................................................................12
ARGUMENT .................................................................................................................................12
I. TUFAMERICA HAS NO STANDING TO BRING THIS ACTION...............................13
A. Legal Standards ......................................................................................................13
B. Island Indisputably Owns the Lets Get Small and Say What
Recordings .............................................................................................................13
II. TUFAMERICA CANNOT MAINTAIN ITS COMPOSITION INFRINGEMENT
CLAIMS. ...........................................................................................................................18
A. Legal Standard .......................................................................................................18
B. UMG-Polygram is a Co-Owner of Copyrights in the Compositions Lets
Get Small and Say What ...................................................................................18
CONCLUSION ..............................................................................................................................20
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TABLE OF AUTHORITIES
Page(s)
CASES
Cafferty v. Scotti Bros. Records, Inc.,
969 F. Supp. 193 (S.D.N.Y. 1997)...........................................................................................19
Contractual Obligation Productions, LLC v. AMC Networks, Inc.,
No. 04 Civ. 2867(BSJ)(HBP), 2006 WL 6217754 (S.D.N.Y. Mar. 31, 2006) ..................13, 18
Cortner v. Israel,
732 F.2d 267 (2d Cir. 1984).....................................................................................................18
Eden Toys, Inc. v. Florelee Undergarment Co.,
697 F.2d 27 (2d Cir. 1982).......................................................................................................13
John Wiley & Sons, Inc. v. DRK Photo,
--- F. Supp. 2d ---, No. 11 Civ. 5454(KPF), 2014 WL 684829 (S.D.N.Y. Feb. 21,
2014) ........................................................................................................................................17
McDonald v. Brown,
No. 12 Civ. 7109(WHP), 2014 WL 116003 (S.D.N.Y. Jan. 13, 2014) .............................12, 13
Newsome v. Brown,
209 F. Appx 11 (2d Cir. 2008) ...............................................................................................17
Poindexter v. EMI Record Group Inc.,
No. 11 Civ. 559(LTS)(JLC), 2012 WL 1027639 (S.D.N.Y. Mar. 27, 2012) ..........................18
Robinson v. Double R Records,
No. 04 Civ. 4120(KMW), 2007 WL 2049724 (S.D.N.Y. July 16, 2007) ...............................18
Werbungs Und Commerz Union Austalt v. LeShufy,
No. 84 Civ. 7393(PNL), 1987 WL 33618 (S.D.N.Y. Dec. 24, 1987) .....................................19
STATUTES
17 U.S.C. 501(b) .........................................................................................................................13
OTHER AUTHORITIES
Fed. R. Civ. P. 56(a) ......................................................................................................................12
Case 1:12-cv-03529-AJN Document 75 Filed 06/09/14 Page 3 of 23
Defendants Universal-Polygram International Publishing, Inc. (UMG-Polygram;
incorrectly named as Universal Music Publishing, Inc. and Universal Music Publishing Group)
and Capitol Records, LLC (Capitol, together with UMG-Polygram, UMG Defendants), by
and through their attorneys, respectfully submit this Memorandum of Law in support of their
motion for summary judgment pursuant to Federal Rule of Civil Procedure 56 dismissing
Plaintiff TufAmerica, Inc.s (TufAmerica) complaint against them, and each and every claim
asserted therein, as a matter of law.
PRELIMINARY STATEMENT
In 1999, two members of the group Trouble Funk purported to transfer specific rights in
certain sound recordings performed by the group Trouble Funk, as well as the musical
compositions embodied in those sound recordings to TufAmerica. Since that time, TufAmerica
has purported to act as the exclusive administrator and licensee of those properties. As
discovery in this case has revealed beyond dispute, TufAmericas rights in the Trouble Funk
sound recordings at issue are an empty letter. Nearly 20 years ago, Trouble Funk assigned the
copyright interests in the very same sound recordings that form the basis of the claims in this
case to Island Records, Inc. (Island), a record label affiliate of the UMG Defendants. Simply
put, the members of Trouble Funk had no rights in those recordings to convey to TufAmerica in
1999. Accordingly, TufAmerica lacks standing to bring any infringement claims related thereto.
Similarly, although the members of Trouble Funk may have retained some fractional
ownership interests in the copyrighted musical compositions that also form the basis for the
infringement claims asserted, the record evidence adduced demonstrates that defendant UMG-
Polygram is a co-owner of the copyrights in those same musical compositions. Therefore,
UMG-Polygram and its licensees are immune from TufAmericas claims here because it is
axiomatic that no claim for infringement can lie as between co-owners of a copyrighted work.
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In 1984, the members of Trouble Funk signed a series of agreements with a Washington,
D.C.-based concert promoter named Carl Maxx Kidd and Island (collectively, the Island
Agreements), which the members reaffirmed later that year and again in 1989 (the Termination
Agreement). Pursuant to these agreements, Island became the exclusive owner in and to the
copyrights of all Trouble Funk sound recordings delivered during the term of the agreements.
Moreover, the assignment provision in the initial Island Agreements is extremely broad,
including not only new recordings made during the term, but also all Trouble Funk recordings
that existed as of the date of the agreements. The recordings for Lets Get Small and Say
Whatthe two remaining recordings at issue hereindisputably existed as of the date of the
Island Agreements and, accordingly, were conveyed to Island decades ago pursuant to the Island
Agreements.
1
At their depositions in this case, the surviving members of Trouble FunkMr. Avery
and Mr. Fisherfreely admitted that the Island Agreements and Termination Agreement were
valid, testifying that they had signed all of the agreements and were represented by counsel at all
relevant times related thereto. Further, both Mr. Fisher and Mr. Avery testified that they signed
the Termination Agreement in 1989, ratifying, once again, their initial assignment of all rights in
the Trouble Funk sound recordings to Island. Thus, Islands ownership of all rights in and to the
recordings at issue cannot reasonably be disputed.
With regard to the musical compositions of the tracks at issue, the members of Trouble
Funk assigned portions of their copyright interests in the musical compositions Lets Get
1
Moreover, the track Say What was embodied on the album In Times of Trouble, which the
parties expressly agreed constituted the first master recording delivered to Island under the
agreements and in satisfaction of Trouble Funks contractual recording commitment; thus
providing Island with a second independent basis of ownership of the recording.
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Small and Say What on the same day that they entered into the Island Agreements. As the
result of a series of subsequent corporate acquisitions and asset transfers, all of which were
recorded with the Copyright Office (and have been undisputed matters of public record for
decades as well), UMG-Polygram also currently holds an undivided ownership interest in both
compositions. As a matter of well-established Copyright Act jurisprudence, TufAmerica cannot
pursue an infringement action against a co-owner of such compositions or its licensees.
Since there remains no genuine issue of material fact concerning the ownership of the
recordings and compositions at issue, TufAmerica cannot maintain this action as a matter of law
and summary judgment should be entered in favor of the UMG Defendants.
STATEMENT OF FACTS
A. Trouble Funk
The musical group Trouble Funk was formed in the mid-1970s. (Local 56.1 Statement
(56.1) 1.) Its original members included Tony Fisher and Robert Reed. (56.1 2.) James
Avery joined the group in 1979. (56.1 3.) The members of the group never formed a separate
legal entity to manage or control their performances or their rights in sound recordings
containing their performances, but instead operated as a group of individual artists. (56.1 4-
5.) Indeed, the artists never entered into any formal written agreements that addressed their
relationship. (56.1 5.)
In or around 1982, the members of Trouble Funk formed a corporate entity to
manufacture their sound recordingsa record label called D.E.T.T. Records, Inc. (D.E.T.T.).
(56.1 7.) The members of Trouble Funk did not have any written agreement with or relating to
D.E.T.T. nor did they grant D.E.T.T. any ownership interests in the Trouble Funk recordings.
(56.1 8.) The members of Trouble Funk and their manager distributed the groups records to
local record stores themselves. (56.1 9.)
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In 1982 and 1983, Trouble Funk released the singles entitled Lets Get Small and Say
What under the D.E.T.T. label. (56.1 11, 13.) Mr. Reed, Mr. Avery, and Mr. Fisher were
the authors and performers credited on both Lets Get Small and Say What. (56.1 12,
16.) The recording Say What also appeared on the album In Times of Trouble, released by
Trouble Funk in 1983 also under the D.E.T.T. label moniker. (56.1 14.)
B. Trouble Funks Deal With Island
During the early 1980s, the members of Trouble Funk worked with an individual named
Carl Maxx Kidd in various capacities, including as a promoter and record producer. (56.1
10, 15.) In or around 1984, Mr. Kidd began shopping Trouble Funk to various major labels
hoping to land a record deal. (56.1 17.) It was Mr. Kidds desire to have Trouble Funk sign
with his company, T.T.E.D. Records, Inc. (T.T.E.D.) as a so-called furnishing company that
would, in turn, sign a deal with a major label to provide the services of Trouble Funk. (Id.)
Later that year, Mr. Kidd advised the members of Trouble Funk that Islanda major,
independent record label at the timewas willing to sign a deal with T.T.E.D. to provide the
recording services of Trouble Funk. (56.1 18.) Although Mr. Fisher was initially opposed to
such a deal and did not want Mr. Kidds company as an intermediary, at a meeting in New York
with Mr. Kidd and Chris Blackwell, the owner of Island, Mr. Blackwell made clear to the group
that Island was only interested in working with the group if they were furnished through
T.T.E.D. (56.1 19-20.) The members of the band, including Mr. Fisher, agreed to the deal.
(56.1 21.)
After the terms of the relationship were negotiated, the members of Trouble Funk,
T.T.E.D., and Island entered into three related agreements, all of which are dated as of October
11, 1984. (56.1 23.) First, Mr. Avery, Mr. Fisher, Mr. Reed, and Taylor Reed (Mr. Reeds
brother) signed an exclusive recording agreement (the Recording Agreement) with Mr. Kidds
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company T.T.E.D, giving T.T.E.D. the exclusive rights to the services and recordings of Trouble
Funk. (56.1 24.) Simultaneously, T.T.E.D. signed a Production Agreement with Island
promising to deliver sound recordings created by Trouble Funk (and other performers not
relevant here) under the Recording Agreement. (56.1 25.) Finally, to ensure the members of
Trouble Funks consent to, and compliance with, the Production Agreement, all of the band
members signed a so-called Letter of Inducement, acknowledging their review of both the
Recording Agreement and Production Agreement, and agreeing to be bound by each and every
provision of both. (56.1 43.) Significantly, the Production Agreement expressly provided that,
in the event of any inconsistency among the agreements, the terms of the Production Agreement
would prevail. (56.1 26.) The members of Trouble Funk were represented and advised by
separate counsel throughout this time period. (56.1 23.)
The express terms of the three agreements clearly and unambiguously prove that Island is
the owner of 100% of the copyright interests in all Trouble Funk recordings made before or
during the term of the Island Agreements, or otherwise delivered to Island. First, pursuant to the
terms of the Recording Agreement, T.T.E.D. became the owner of all master recordings
delivered pursuant to the Recording Agreement. (See 56.1 27-33.) Further, the members of
Trouble Funk granted T.T.E.D. the exclusive right to copyright any such recordings. (56.1 31.)
Under this agreement, the members of Trouble Funk agreed to deliver at least two albums to
T.T.E.D. to satisfy their minimum recording commitment. (56.1 29.) The Recording
Agreement expressly acknowledged that the album In Times of Trouble already had been
accepted by Island as the first album in fulfillment of the band members minimum recording
commitment. (56.1 32.)
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Thereafter, in the Production Agreement, T.T.E.D., in turn, conveyed the ownership and
other rights in the Trouble Funk recordings to Island that were created under the Recording
Agreement. (See 56.1 34-38.) Further, Island obtained its rights in Trouble Funk recordings
that pre-dated the agreements both by virtue of their delivery under the Recording Agreement, as
well as pursuant to the express terms of the Production Agreement. (56.1 35-36.) Paragraph
3 of the Terms and Conditions, annexed to and forming part of the Production Agreement,
defined the recordings to which Island was being granted rights. (56.1 36.) Pursuant to
Paragraph 3, Island was granted both ownership of and the rights to exploit each and every
master recording featuring an Artist existing at the date hereof (except as expressly provided
otherwise herein) or recorded during the applicable Artist Term. (Id. (emphasis added).)
Paragraph 8 of the Terms and Conditions went on to define the rights assigned to Island to
include, among other rights, the exclusive right to copyright the recordings described in
Paragraph 3, as well as other rights, including the right to release and re-release all recordings
made hereunder in all forms and sizes of records as it may in its absolute discretion determine.
(56.1 35.)
There is no question that Trouble Funk was (and remains) bound by this express transfer
of the copyright interests in and to its sound recordings. As noted above, the Recording
Agreement expressly referenced the Production Agreement, and even varied certain of its terms
if the Production Agreement was modified, amended, or terminated. (56.1 33.) Moreover, Mr.
Avery, Mr. Fisher, Mr. Reed, and Taylor Reed all signed the Letter of Inducement, attached as
Exhibit A to the Production Agreement, whereby they: (1) acknowledged they had reviewed the
Production Agreement and understood its terms; (2) represented, warranted, and agreed that
T.T.E.D. had the right to enter into the Production Agreement and that T.T.E.D.s warranties and
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representations concerning Trouble Funk were true and correct; (3) agreed to comply with and be
bound by the terms of the Production Agreement; and (4) agreed that in the event of an
inconsistency between the Production Agreement and Recording Agreement, they would be
bound by the terms of the Production Agreement. (56.1 39-43.)
As further confirmation of the fact that the members of Trouble Funk were fully aware of
the Island Agreements, on December 10, 1984, Mr. Avery, Mr. Fisher, Mr. Reed, and Taylor
Reed signed an additional agreement directly with Island (the Letter of Direction). (56.1
44-47.) In this agreement, the members of Trouble Funk ratified the Recording Agreement and
Production Agreement, and directed Island to pay a proportionate share of the royalties due
under the agreements directly to the members of Trouble Funk, as opposed to T.T.E.D. or Mr.
Kidd. (Id.)
Taken together, the Island Agreements made Island the exclusive owner in and to the
copyrights in: (i) all Trouble Funk master recordings that existed as of October 11, 1984, (ii) any
recordings that were delivered to Island thereunder, and (iii) any others that were recorded
during the term of the Island Agreements. In particular, Island became the owner of and
exclusive copyright holder for the recordings Lets Get Small and Say What, both of which
existed as of October 11, 1984 and were delivered to Island.
Although Islands exclusive ownership is evident from the clear and unambiguous
language of the Production Agreement, granting Island rights to each and every master
recording featuring [Trouble Funk] existing at the date hereof, it is corroborated by the multiple,
subsequent releases of these recordings by Island. (See 56.1 48-60.) Indeed, the members of
Trouble Funk were fully aware, and never objected to any, of Islands re-releases of Trouble
Funk singles and albums pursuant to the Island Agreements, which included both new recordings
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and recordings that were made prior to October 11, 1984, such as Lets Get Small and Say
What. (56.1 48-49.) For example, Island released Lets Get Small as a single in 1985 and
registered a copyright in that single recording. (56.1 51-52.) It also released Lets Get
Small on a compilation album and on an EP. (56.1 53-54.) Importantly, Mr. Fisher admitted
at his deposition that the band did not record a new version of Lets Get Small for Island;
instead, the band delivered to Island the same recording that they had released as a single in
1982 under the D.E.T.T. label. (56.1 56.) Thus, there is no doubt that the very recording on
which TufAmerica bases its claims here was conveyed to Island in 1984.
Similarly, Island re-released the studio disc of the album In Times of Trouble that
contains the recording of Say What, and which Island had expressly accepted as the first album
delivered in satisfaction of the groups recording commitment under the Island Agreements.
(56.1 57.) Island also released the Say What recording on a compilation album. (56.1 58.)
Again, the band delivered to Island the same recording of Say What that previously had been
released. (56.1 59.)
The transfer of ownership of all Trouble Funk recordings was the primary consideration
to Island for its significant investment in the band. In addition to recording and marketing costs,
Island provided extensive economic support to the members of Trouble Funk, including by
paying for multiple international tours, producing a TV program featuring Trouble Funk,
providing a producer, arranging for studio time, providing musicians, featuring Trouble Funk in
a film about Go-Go music, and even flying the members of Trouble Funk to Mr. Blackwells
recording compound in Jamaica. (56.1 50.)
By 1989, the relationship between Island and the group had run its course. To confirm
the rights of the parties to all of Trouble Funks recorded output created prior to that time, Mr.
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Avery, Mr. Fisher, Mr. Reed, and Taylor Reed signed the Termination Agreement with Island.
(56.1 61-62.) Pursuant to the express terms of the Termination Agreement, the members of
Trouble Funk reaffirmed all of the previous grants of rights in the Island Agreements, as well as
the representations and warranties contained therein. (56.1 62.)
C. Trouble Funks Composition Transfers
At some point in the early 1980s, Mr. Fisher, Mr. Avery, and Mr. Reed created a music
publishing company called Farr Music Company (Farr Music). (56.1 63.) On October 11,
1984, the same day as the Island Agreements, Mr. Avery and Mr. Reed signed an agreement on
behalf of Farr Music, assigning a portion of the musical composition copyrights for Lets Get
Small and Say What to Z-Kidd Music Company (Z-Kidd Music), a company affiliated with
Mr. Kidd. (56.1 64.) As Mr. Fisher testified, Mr. Reed was authorized to act with regard to the
business affairs on his behalf. (56.1 6.)
By agreement dated January 5, 1985 and recorded with the Copyright Office, Z-Kidd
Music
2
transferred 50% of its previously-acquired interest in the copyrights in the musical
compositions Lets Get Small and Say What to Island Music, Inc. (Island Music.), a
company that was affiliated at the time with Island. (56.1 65.) The fact that ownership was
shared by Farr Music, Z-Kidd Music, and Island Music is reflected on the credits for the album
Go Go Crankin, which was released by Island in 1985, and lists these three same entities as
the music publishers for both Lets Get Small and Say What. (56.1 66.)
By agreement dated September 17, 1986, also recorded with the Copyright Office, Island
Music and Z-Kidd Music transferred to Ackee Music and Maxx Kidd Music, respectively, their
2
The 1984 assignment involved Z-Kidd Music with Mr. Kidd signing on its behalf. Although
the 1985 assignment referred to Zee-Kidd Music, the company appears to be the same as Z-
Kidd Music, as it is described as a division of T.T.E.D. Records, Inc., which was also Mr.
Kidds company.
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entire combined interests in the Lets Get Small and Say What composition copyrights.
(56.1 67.)
By agreement dated July 1, 1992, recorded with the Copyright Office, Ackee Music then
assigned its entire interest in the composition copyrights for Lets Get Small and Say What
to Polygram International Publishing, Inc (Polygram). (56.1 68.) Through this series of
transfers and assignments, UMG-Polygrama defendant in this action and successor
corporation to Polygram (56.1 69)is, therefore, a co-owner of the composition copyrights for
Lets Get Small and Say What.
D. Robert Reed and Tony Fishers Deal With TufAmerica
In or around 1999, TufAmerica approached certain members of Trouble Funk, proposing
a deal whereby TufAmerica would negotiate licenses for, and bring infringement actions against,
parties that were allegedly using or exploiting Trouble Funk compositions and sound recordings
without authorization in exchange for a substantial percentage of the revenues generated
therefrom. (56.1 71.) On or around December 23, 1999, TufAmerica entered into two
exclusive administration agreements with Mr. Reed and Mr. Fisher; one agreement governing
master recordings (the Master Administration Agreement) and the other governing
compositions (the Composition Administration Agreement, together with the Master
Administration Agreement, the 1999 TufAmerica Agreements). (56.1 72-73.)
Mr. Reed and Mr. Fisher were represented and advised by counsel in connection with the
1999 TufAmerica Agreements. (56.1 74.) In the agreements, Mr. Fisher and Mr. Reed
represented that they owned or were the sole controller of the master recordings and
compositions created before 1990, including but not limited to those listed in Schedule A.
(56.1 75.) Notably, the 1999 TufAmerica Agreements expressly reference the Island
Agreements, thus putting TufAmerica on notice that Island had rights in certain Trouble Funk
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recordings. (56.1 79.) The Master Administration Agreement and Composition
Administration Agreement purport to govern the same 60 Trouble Funk songs, as listed in the
attached Schedule A to each agreement. (56.1 76.) Mr. Reed and Mr. Fisher then purported to
sell, assign, transfer, and set over to TufAmerica the exclusive right to administer all of
Troubles rights in both the master recordings and compositions. (56.1 77-78.)
Given the express reference to the groups deal with Island, Schedule A includes many
songs that should not have been included, as Mr. Fisher himself admitted. (56.1 81.) Among
many other recordings and compositions that were erroneously included, Schedule A for both
agreements includes Say What and Lets Get Small. (56.1 82.) At the time Mr. Reed and
Mr. Fisher entered into the 1999 TufAmerica Agreements, they no longer had any ownership
interests in the copyrights to the recordings Say What and Lets Get Small, nor were they the
sole controller of those compositions.
3
E. James Averys Deal With TufAmerica
TufAmerica entered into a separate agreement with Mr. Avery on January 1, 2012 (2012
Avery-TufAmerica Agreement). (56.1 87.) The 2012 Avery-TufAmerica Agreement does
not specify the songs or copyrights it purports to govern. (56.1 89.) However, Mr. Avery
purported to grant TufAmerica an exclusive license to sue and recover on all accrued and future
causes of action in connection with all of the Trouble Funk Copyrights, in order to provide
TufAmerica with standing. (56.1 88.) As with Mr. Reed and Mr. Fisher, however, Mr.
Avery was no longer the owner of the recordings for Lets Get Small and Say What, nor was
he a sole controller of those compositions.
3
While Mr. Avery was a composer and performer on both tracks, he never signed the 1999
TufAmerica Agreements, nor did Mr. Reed or Mr. Fisher have Averys authorization to enter
into the agreements on his behalf. (56.1 84-86.)
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F. TufAmericas Remaining Claims
TufAmerica brought this action alleging that it is the exclusive administrator and licensee
of certain master recordings and compositions written and performed by members of the musical
group Trouble Funk. (56.1 90-91.) In the Amended Complaint, TufAmerica asserted six
claims of copyright infringement based on four Trouble Funk songs. (56.1 92.) In ruling on
Defendants Motion to Dismiss, the Court dismissed four of the claims, allowing Claims 1 and 5
to proceed. (56.1 93.) Claim 1 is premised on the recording and composition for the Trouble
Funk song Say What as allegedly sampled in the Beastie Boys song Shadrach. (Id.) Claim
5 is premised on the recording and composition for the Trouble Funk song Lets Get Small as
allegedly sampled in the Beastie Boys song Hold It Now Hit It. (Id.)
ARGUMENT
The court shall grant summary judgment if the movant shows that there is no genuine
dispute as to any material fact and the movant is entitled to judgment as a matter of law. Fed.
R. Civ. P. 56(a). Once the movant has made an initial showing that there is no genuine issue of
material fact, the non-movant cannot rely on the mere existence of a scintilla of evidence to
defeat summary judgment but must set forth specific facts showing there is a genuine issue for
trial. McDonald v. Brown, No. 12 Civ. 7109(WHP), 2014 WL 116003, at *2 (S.D.N.Y. Jan.
13, 2014) (emphasis in original) (quoting Matsushita Elec. Co. v. Zenith Radio Corp., 475 U.S.
574, 587 (1986)) (internal quotation marks omitted). Where the record taken as a whole could
not lead a rational trier of fact to find for the nonmoving party, there is no genuine issue for
trial. McDonald, 2014 WL 116003, at *2 (quoting Scott v. Harris, 550 U.S. 372, 380 (2007))
(internal quotation marks omitted).
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I. TUFAMERICA HAS NO STANDING TO BRING THIS ACTION.
A. Legal Standards
The Copyright Act provides that only the legal or beneficial owner of an exclusive right
under a copyright has standing to pursue an infringement action. See 17 U.S.C. 501(b). As
explained by the Second Circuit, this provision means that only (1) owners of copyrights and
(2) persons who have been granted exclusive licenses by owners of copyrights have standing to
sue for copyright infringement. Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27, 32
(2d Cir. 1982) (emphasis added).
An assignor of a copyright has no standing to sue for acts of infringement which
occurred after execution of the assignment. Contractual Obligation Productions, LLC v. AMC
Networks, Inc., No. 04 Civ. 2867(BSJ)(HBP), 2006 WL 6217754, at *4-5 (S.D.N.Y. Mar. 31,
2006) (quoting Skor-Mor Prods., Inc. v. Sears, Roebuck & Co., 81 Civ. 1286-CSH, 1982 WL
1264, at *3 (S.D.N.Y. May 12, 1982)). Where a plaintiff has conveyed its ownership of
copyrights to another party, plaintiff does not have standing to bring a claim for copyright
infringement because plaintiff was not the owner of the work when the alleged copyright
infringement took place. Contractual Obligations, 2006 WL 6217754, at *5.
B. Island Indisputably Owns the Lets Get Small and Say What Recordings
The uncontroverted evidence establishes that Island is the owner of all rights in and to the
copyrights of the remaining two sound recordings at issue. During the negotiation of the Island
Agreements, Island made clear to the members of Trouble Funk that Island was not going to
contract directly with them and that they therefore needed to sign with T.T.E.D. if they wanted to
enter the Island Agreements. (56.1 19-20.) Accordingly, Mr. Avery, Mr. Fisher, and Mr.
Reed signed the Recording Agreement, making T.T.E.D. the owner of the master recordings
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delivered thereunder, and granting T.T.E.D. the exclusive right to copyright such recordings.
(56.1 24, 27-33.)
In turn, T.T.E.D. entered into the Production Agreement with Island, which granted
Island ownership of all Trouble Funk master recordings, and gave Island the exclusive right to
copyright any such recordings. (56.1 25, 34-38.) The Production Agreement made clear that
Island became the owner not just of the new recordings made during the term of the agreement,
but also of each and every master recording featuring an Artist existing at the date hereof . . . .
(56.1 35-36 (emphasis added).)
Mr. Avery, Mr. Fisher, and Mr. Reed ratified this grant by executing the Letter of
Inducement and agreeing, among other things, to be bound by the terms of the Production
Agreement and that in the event of an inconsistency with the Recording Agreement, the
Production Agreement would control. (56.1 26, 39-43.)
Two months later, Mr. Avery, Mr. Reed, and Mr. Fisher signed the Letter of Direction,
further ratifying the Island Agreements, and directing Island to pay royalties to the band
members directly, instead of through T.T.E.D. (56.1 44-47.)
When the parties agreed to end their relationship in 1989, Mr. Avery, Mr. Reed, and Mr.
Fisher again confirmed Islands previously-acquired ownership rights in the Trouble Funk
recordings, and further agreed that all of Islands rights would survive the termination of the term
of the Island Agreements. (56.1 61-62.)
In depositions, Mr. Avery and Mr. Fisher confirmed that they entered into the Island
Agreements and Termination Agreement, and that their signatures appear on the Recording
Agreement, Letter of Inducement, Letter of Direction, and Termination Agreement. (56.1 22,
Case 1:12-cv-03529-AJN Document 75 Filed 06/09/14 Page 17 of 23
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24-26, 39, 45, 48-50, 61.) Mr. Avery and Mr. Fisher testified that they were represented and
advised by counsel throughout these negotiations. (56.1 23.)
Mr. Avery and Mr. Fisher also confirmed that, pursuant to the grant of rights in the Island
Agreements, Island released numerous Trouble Funk recordingsincluding songs that had been
recorded prior to the date of the Island Agreementsand that the members never objected to any
of Islands releases of Trouble Funk recordings. (56.1 48-49.) Indeed, the members of
Trouble Funk received valuable support from Island during this period, including support for
multiple international tours and were even featured in a movie and TV program. (56.1 50.)
Mr. Fisher also confirmed that the band expressly delivered to Island the recordings of Lets
Get Small and Say What, since the Island recordings are the same recordings that were
released by D.E.T.T. in 1982 and 1983 (56.1 56, 59.)
4
Thus, the evidence in the record establishes what was clear from the language of the
Island Agreements: that the parties intended for Island to become the exclusive owner of existing
Trouble Funk recordings in addition to those recordings created during the term of the Island
Agreements. Island became the owner of the Lets Get Small and Say What recordings
under the Recording Agreement, as those recordings were delivered to Island thereunder, as well
as the Production Agreement, since those recordings existed as of October 11, 1984. Island
became the owner of Say What for the additional reason that it appeared on the album In
4
This fact has also been further corroborated by TufAmerica in this action. In its requests for
admission, signed by counsel, TufAmerica defined the recording at issue for Lets Get Small
as embodied on both the 1982 D.E.T.T. single and an EP released by Island in 1985. (56.1 55.)
Similarly, TufAmerica defined Say What as embodied on both the 1983 D.E.T.T. single and
the In Times of Trouble album, which was delivered to and re-released by Island. (56.1 60.)
Thus, TufAmerica has admitted that Island released the same recordings of Lets Get Small
and Say What that D.E.T.T. released.
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Times of Trouble which was a delivered product under the Recording Agreement and
Production Agreement.
TufAmerica has no colorable retort. The fact that the band previously released Lets
Get Small and Say What in 1982 and 1983, respectively, on its own label does not alter the
clear and unambiguous conveyance of all ownership rights in those recordings set forth in the
Island Agreements, and confirmed by the Termination Agreement. The fact that the band
members submitted copyright applications for these tracks also has no relevance. First, the 1983
registration for Lets Get Small predates the Island Agreements. Thus any ownership rights
were transferred to Island in those later agreements. The 1985 registration for In Times of
Trouble is manifestly baseless since Mr. Avery, Mr. Reed, and Mr. Fisher had no ownership
interests in that recording in 1985, having granted Island the exclusive right to copyright that
album in the Island Agreements.
Counsel for TufAmerica intimated at the April 25, 2014 status conference that Trouble
Funks existing recordings were somehow carved out of the Island Agreements pursuant to
Paragraph 1.05 of the Recording Agreement. However, such an argument cannot be squared
with the actual language of that provision which reads: Only Master Recordings consisting of
Compositions not previously recorded by the Artist shall apply in reduction of the Recording
Commitment, except as otherwise provided herein. (56.1 30 (emphasis supplied).)
Manifestly, this provision does not address ownership of recordings but rather addresses
the satisfaction of the groups minimum recording commitment. (See 56.1 29-30.) The
ownership of recordings and a bands obligation to make further recordings are two wholly
unrelated concepts. Moreover, even if this provision somehow excluded existing recordings
from the deal, which it does not, the Recording Agreement would then contradict the express
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term in the Production Agreement that gave Island ownership of each and every master
recording featuring an Artist existing at the date hereof . . . . (56.1 35-36 (emphasis
added).) Mr. Avery, Mr. Fisher, and Mr. Reed all agreed that they would comply with and be
bound by the terms of the Production Agreement. (56.1 40.) Critically, they further agreed
that in the event of an inconsistency, the terms of the Production Agreement would control.
(56.1 43.) In the Termination Agreement, Mr. Avery, Mr. Fisher, and Mr. Reed expressly
reaffirmed the grant of rights in the Production Agreement. (56.1 62.)
In sum, TufAmerica cannot raise any genuine issue of material fact that could preclude
entry of summary judgment. The clear and unambiguous terms of the Island Agreements and
Termination Agreement confirm that Island is the exclusive owner of the recordings at issue, a
fact that has only been corroborated and strengthened by deposition testimony. Moreover, the
express reference to the Island Agreements in the 1999 TufAmerica Agreements demonstrates
that TufAmerica was on notice of the groups deal with Island, but failed to perform the
necessary due diligence to determine whether it had valid rights in any the recordings at issue
before bringing suit. In fact, TufAmerica performed that simple task of checking to see which
recordings had been released previously by Island only a few weeks ago, and only after the
UMG Defendants urged TufAmerica to withdraw its claims once these dispositive agreements
were discovered. (56.1 80.)
Since Island became the owner of the Lets Get Small and Say What recordings in
1984, Mr. Reed and Mr. Fisher had no ability to convey any rights to TufAmerica in 1999, let
alone exclusive rights sufficient to confer standing under the Copyright Act. Therefore,
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TufAmerica lacks standing to pursue its infringement claims based on these recordings.
5
Newsome v. Brown, 209 F. Appx 11, 13 (2d Cir. 2008) (holding plaintiff lacked standing to
assert an infringement claim where plaintiff had assigned copyright interest to a third party);
Contractual Obligations, 2006 WL 6217754, at *5 (holding plaintiff had no standing where clear
and unambiguous terms of agreement indicated a third party had become the owner of the work
at issue); Poindexter v. EMI Record Group Inc., No. 11 Civ. 559(LTS)(JLC), 2012 WL 1027639,
at *3 (S.D.N.Y. Mar. 27, 2012) (holding plaintiff lacked standing in sampling infringement
action where agreement conveyed plaintiffs ownership rights to a third-party record company).
II. TUFAMERICA CANNOT MAINTAIN ITS COMPOSITION INFRINGEMENT
CLAIMS.
A. Legal Standard
It is elementary that the lawful owner of a copyright is incapable of infringing a
copyright interest that is owned by him; nor can a joint owner of a copyright sue his co-owner for
infringement. Cortner v. Israel, 732 F.2d 267, 271 (2d Cir. 1984); see also Robinson v. Double
R Records, No. 04 Civ. 4120(KMW), 2007 WL 2049724, at *2 (S.D.N.Y. July 16, 2007)
(imposing Rule 11 sanctions on plaintiff for pursuing infringement claim against co-owner).
B. UMG-Polygram is a Co-Owner of Copyrights in the Compositions Lets
Get Small and Say What
The uncontroverted evidence establishes that UMG-Polygrama defendant in this
actionis a co-owner of the compositions for Lets Get Small and Say What.
5
For these same reasons, James Avery had no ownership rights in the Lets Get Small and
Say What recordings to transfer to TufAmerica when he signed the 2012 Avery-TufAmerica
Agreement. Even ignoring Islands uncontroverted ownership, the 2012 Avery-TufAmerica
Agreement fails to provide sufficient standing to TufAmerica since an agreement [that]
transfers nothing more than a bare right to sue . . . cannot be the basis for standing under the
Copyright Act. John Wiley & Sons, Inc. v. DRK Photo, --- F. Supp. 2d ---, No. 11 Civ.
5454(KPF), 2014 WL 684829, *14 (S.D.N.Y. Feb. 21, 2014) (internal quotation marks and
citation omitted).
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On October 11, 1984, the same day that the parties entered into the Island Agreements,
Mr. Avery and Mr. Reed, acting on behalf of the bands music publishing entity, Farr Music,
assigned a portion of the musical composition copyrights for Lets Get Small and Say What
to Z-Kidd Music, a company run by Mr. Kidd. (56.1 64.) A few months thereafter, on January
5, 1985, Z-Kidd Music transferred 50% of its interest in the compositions for Lets Get Small
and Say What to Island Music. (56.1 65.) This co-ownership is reflected on a compilation
album released by Island, that includes Lets Get Small and Say What, and that lists Island
Music, Z-Kidd Music, and Farr Music as the publishers for the compositions.
6
(56.1 66.) On
September 17, 1986, Island Music and Z-Kidd Music transferred their entire combined interests
in the compositions at issue to their respective related entities, Ackee Music and Maxx Kidd
Music. (56.1 67.) Finally, on June 30, 1992, pursuant to a separate corporate acquisition,
Ackee Music assigned its interest in the composition copyrights for Lets Get Small and Say
What to Polygram International Publishing, Inc. (56.1 68.) Polygram International
Publishing, Inc. is the predecessor corporation to UMG-Polygram, the defendant music publisher
in this action. (56.1 69.)
This uncontroverted evidence establishes conclusively that UMG-Polygram became a co-
owner of the compositions at issue as early as 1992years before Mr. Reed and Mr. Fisher
purported to convey exclusive administration and licensee rights to TufAmerica in 1999.
Summary judgment should therefore be entered in favor of the UMG Defendants since
TufAmerica cannot pursue an infringement action against a co-owner of the copyrighted works
at issue. See Cafferty v. Scotti Bros. Records, Inc., 969 F. Supp. 193, 199 (S.D.N.Y. 1997)
6
Mr. Fisher also confirmed that he does not receive a portion of the publishers share of
compositions that he wrote. (56.1 70.)
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(granting summary judgment and holding that defendant had been made co-owner of copyrights
at issue by prior agreements and could not be sued for infringement); Werbungs Und Commerz
Union Austalt v. LeShufy, No. 84 Civ. 7393(PNL), 1987 WL 33618, at *2-3 (S.D.N.Y. Dec. 24,
1987) (same).
CONCLUSION
For the reasons set forth above, the UMG Defendants respectfully submit that summary
judgment should be entered in their favor. First, Island owns the recordings at issue and
TufAmerica has no standing to pursue its infringement claims on those recordings. Second,
UMG-Polygram is a co-owner of the compositions at issue and neither it nor its licensees can be
sued for infringement.
Dated: New York, New York
June 9, 2014
JENNER & BLOCK LLP
/s Andrew H. Bart
Andrew H. Bart
Nathaniel H. Benforado
919 Third Avenue
New York, New York 10022-3908
(212) 891-1645
Attorneys for Defendants Universal
Polygram International Publishing, Inc.
and Capitol Records, LLC
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