George Clinton v. Will Adams et al

Filing 103

MEMORANDUM of CONTENTIONS of FACT and LAW filed by Plaintiff George Clinton. (Thennisch, Jeffrey)

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JEFFREY P. THENNISCH
(Michigan Bar Number P51499)
(appearing Pro Hac Vice)
[e-mail]
DOBRUSIN THENNISCH PC
29 West Lawrence Street, Suite 210
Pontiac, Michigan 48342
Telephone: [phone]
Facsimile: [phone]
Attorney for Plaintiff GEORGE CLINTON

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA
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GEORGE CLINTON, an individual,
Plaintiff,

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v.

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WILL ADAMS, p/k/a will,I,am
individually and d/b/a will.i.am music,
inc., et al.,

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Defendants.

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Memorandum of Contentions of Fact and Law

Case No.CV 10-09476-ODW-PLA
The Honorable Otis D. Wright II
PLAINTIFF’S MEMORANDUM OF
CONTENTIONS OF FACT AND
LAW
Pretrial Conference: May 22, 2012
Trial Date: June 5, 2012

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TABLE OF CONTENTS

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PRELIMINARY STATEMENT .............................................................................. 1
1. CLAIMS AND DEFENSES .................................................................................. 2
2. BIFURCATION OF ISSUES ............................................................................... 3

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3. JURY TRIAL ......................................................................................................... 4

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4. ATTORNEYS’ FEES ............................................................................................ 4

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5. ABANDONMENT OF ISSUES ............................................................................ 4

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Memorandum of Contentions of Fact and Law

PRELIMINARY STATEMENT
As a threshold matter, the parties jointly state and acknowledge
that the scope and content of the present Memoranda of Contentions of
Fact and Law of the parties may need to be substantially supplemented,
amended, and/or revised depending upon future rulings to be issued by
this Court regarding at least: Defendant’s Motion for Partial Summary
Judgment (Doc. # 75) filed March 7, 2012. It is respectfully submitted that
the disposition of this pending motion may result in either the addition or
removal of certain claims and defenses in this action as well as impact the
ultimate witness lists and exhibit lists to be submitted and relied upon by
the parties.
Accordingly, the parties jointly submit that the present memoranda
of Contentions of Fact and Law reflects the current status and nature of the
action as of this date, but that future rulings may impact both trial
preparation and trial strategy for all parties.
Following pretrial proceedings, pursuant to Rule 16, F.R.Civ.P. and L.R. 16,
IT IS ORDERED:
1. CLAIMS AND DEFENSES
Plaintiff:
(a) Plaintiff plans to pursue the following claims against Defendants:

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Memorandum of Contentions of Fact and Law

Claim 1: Defendants directly infringed Plaintiff’s copyright to the sound
recording relating to Knee Deep, 17 U.S.C. §§ 101 et seq.
Claim 2: Defendants vicariously infringed Plaintiff’s copyright to the sound
recording relating to Knee Deep, 17 U.S.C. §§ 101 et seq.
Claim 3: Defendants contributorily infringed Plaintiff’s copyright to the
sound recording relating to Knee Deep, 17 U.S.C. §§ 101 et seq.
Claim 4: Defendants innocently infringed Plaintiff’s copyright to the sound
recording relating to Knee Deep, 17 U.S.C. §§ 101 et seq.
Claim 5: Defendants willfully infringed Plaintiff’s copyright to the sound
recording relating to Knee Deep, 17 U.S.C. §§ 101 et seq.
(b) The elements required to establish Plaintiff’s claims are:
Claim 1:
Elements Required to Establish Plaintiff’s Claim for Direct Infringement
1. Plaintiff is the owner of a valid copyright in Knee Deep, and
2. Defendants copied original and protectable elements from the
copyrighted work beyond the scope of a valid license.
Ninth Circuit Manual of Model Jury Instructions: Civil § 17.4 (2007).
Claim 2:
Elements Required to Establish Plaintiff’s Claim for Derivative Liability –
Vicarious Infringement

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Memorandum of Contentions of Fact and Law

1. Defendants profited directly from the infringing activity of Tercer Mundo,
Inc.,
2. Defendants had the right and ability to control the infringing activity of
Tercer Mundo, Inc. and
3. Defendants failed to exercise that right and ability.
Ninth Circuit Manual of Model Jury Instructions: Civil § 17.20 (2007).
Claim 3:
Elements Required to Establish Plaintiff’s Claim for Derivative Liability –
Contributory Infringement
1. Defendants knew or had reason to known of the infringing activity of
Tercer Mundo, Inc. and
2. Defendants intentionally materially contributed to Tercer Mundo, Inc.’s
infringing activity.
Ninth Circuit Manual of Model Jury Instructions: Civil § 17.21 (2007).
Claim 4:
Elements Required to Establish Plaintiff’s Claim for Innocent Infringement (17
U.S.C. § 504(c)(2))
1. Defendants were not aware that their acts constituted infringement of the
copyright; and
2. Defendants had no reason to believe that their acts constituted an
infringement of the copyright.
Ninth Circuit Manual of Model Jury Instructions: Civil § 17.26 (2007).
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Memorandum of Contentions of Fact and Law

Claim 5:
Elements Required to Establish Plaintiff’s Claim for Willful Infringement (17
U.S.C. § 504(c)(2))
1. Defendants engaged in acts that infringed the copyright; and
2. Defendants knew that those acts infringed the copyright.
Ninth Circuit Manual of Model Jury Instructions: Civil § 17.27 (2007).
(c) The key evidence Plaintiff relies on for each of the claims is:
Claim 1:
Exhibit 1.

Declaration of George Clinton (Doc. # 86) filed 3/19/2012

Exhibit 2.

Declaration of Eban Kelly (Doc. #87) filed 03/19/2012

Exhibit 4.

State of California corporate database record

Exhibit 5.

Judge Real’s Order from Case No. 03-cv-08955, issued
06/17/2005

Exhibits 9-12.

Copies of the Copyright Office registrations (Registration
Numbers: SR0000347870, PA0001677813, SR0000334398,
PA0001158944)

Exhibit 13-17.

Copies of the deposit material stored at Library of Congress

Exhibit 18-20.

Copies of the Copyright Office’s original registration for
George Clinton’s (Not Just) Knee Deep sound recording
registration (Registration Numbers: SR000011150,
SR000013919, SR000138279)

Exhibit 22-24.

Copies of the Defendants’ musical and DVD works containing
the Defendant’s Shut Up musical work.

Exhibit 25.

April 21, 2005 email correspondence involving the licensing of
the (Not Just) Knee Deep musical work.

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Memorandum of Contentions of Fact and Law

Claims 2 and 3 concerning derivative liability:
Exhibit 1.

Declaration of George Clinton (Doc. # 86) filed 3/19/2012

Exhibit 2.

Declaration of Eban Kelly (Doc. #87) filed 03/19/2012

Exhibit 5.

Judge Real’s Order from Case No. 03-cv-08955, issued
06/17/2005

Exhibit 21.

Internet websites selling Black Eyed Pea’s Shut Up Remixes

Claims 4 and 5 concerning damages:
Exhibit 1.

Declaration of George Clinton (Doc. # 86) filed 3/19/2012

Exhibit 3.

Declaration of Jeffrey P. Thennisch (Doc. #88) filed
03/19/2012

Exhibit 5.

Judge Real’s Order from Case No. 03-cv-08955, issued
06/17/2005

Exhibit 6.

Statement from the website of SoundScan service provider,
Neilson Data (Ex. C to Doc. #88)

Exhibit 7.

SoundScan data provided to Plaintiff by Defendant’s counsel
on 10/12/2011

Exhibit 8.

Defendants’ Discovery Response to Plaintiff by Defendant’s
counsel on 10/12/2011

Exhibit 21.

Internet websites selling Black Eyed Pea’s Shut Up Remixes

Exhibit 22-24.

Copies of the Defendants’ musical and DVD works containing
the Defendant’s Shut Up musical work.

Exhibit 25.

April 21, 2005 email correspondence involving the licensing of
the (Not Just) Knee Deep musical work.

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Memorandum of Contentions of Fact and Law

(d) Defendants’ affirmative defenses pleaded and plan to pursue
Affirmative Defense: Plaintiff’s claims are barred because Defendants had
valid license.
(e) The elements required to establish Defendants’ defenses are:
The existence of a valid license from the Copyright Owner.
(f) Key evidence Plaintiff relies on in opposition to each counterclaim:
Exhibit 1.

Declaration of George Clinton (Doc. # 86) filed 3/19/2012

Exhibit 2.

Declaration of Eban Kelly (Doc. #87) filed 03/19/2012

Exhibit 5.

Judge Real’s Order from Case No. 03-cv-08955, issued
06/17/2005

(g) Anticipated evidentiary issues and opposition to the issues:
Plaintiff anticipates that Defendants will object to Plaintiff’s presentation of
Exhibit 7. SoundScan data under Rule 408. But Rule 408 should not bar this
Exhibit because of the following reasons:
(a) Rule 408 does not apply to factual material which is otherwise discoverable.
The SoundScan data can be and was ordered from a third party Nielsen who
states on their website: “Nielsen’s tracking of music sales data is used by all
major and most independent record companies as well as distribution
companies, artists managers, booking agents, concert promoters, performing

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Memorandum of Contentions of Fact and Law

rights organizations, government agencies, venue owners, traditional
retailers, online retailers, and digital delivery companies.” This statement
confirms that this third party “music sales data” are objective facts.
(b) The SoundScan data was provided to Plaintiff’s counsel by Defendants’
counsel on October 12, 2011. This was before Defendants articulated their
request to place this data under protective order November 7, 2011. This
data was created and was provided to Plaintiff’s counsel before settlement
negotiations started.
(h) Issues of law:
Plaintiff does not anticipate any issues of law, such as the proper interpretation of a
governing statute, which are germane to the case.
2. BIFURCATION
Plaintiff does not request bifurcation of any issues.

3. JURY TRIAL
Plaintiff made a timely demand for a jury trial. (Doc #1).
The following is triable to a jury as a matter of right: Issue of damages in copyright
infringement - 17 U.S.C.A. § 504, see also Feltner v. Columbia Pictures TV, Inc.,
523 U.S. 340 (1998) (Seventh Amendment provides right to jury trial on all issues
pertinent to award of statutory damages in copyright infringement action, including
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Memorandum of Contentions of Fact and Law

amount itself).
4. ATTORNEYS’ FEES
Plaintiff’s attorney may recover attorneys’ fees in a civil action for copyright
infringement in the following manner:
§ 505. Remedies for infringement: Costs and attorney's fees
In any civil action under this title, the court in its discretion may allow
the recovery of full costs by or against any party other than the United
States or an officer thereof. Except as otherwise provided by this title,
the court may also award a reasonable attorney's fee to the prevailing
party as part of the costs.
17 U.S.C.A. § 505 (West). See also Milton H. Greene Archives, Inc. v. Julien's
Auction House LLC, 345 Fed.Appx. 244, 249 (9th Cir. 2009)(unpublished) (an
award of $340,000 in attorney fees to copyright holder as prevailing party was not
abuse of discretion); Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994) (nonexclusive
factors court is to consider in determining whether to award prevailing party
attorney fees under Copyright Act include frivolousness, motivation, objective
unreasonableness (both in factual and in legal components of case) and need in
particular circumstances to advance considerations of compensation and
deterrence.).
5. ABANDONMENT OF ISSUES
Plaintiff has not abandoned any claims.

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Memorandum of Contentions of Fact and Law

Dated: April 30, 2012

Respectfully submitted,
/s/Jeffrey P. Thennisch
Dobrusin & Thennisch PC
29 W. Lawrence Street
Suite 210
Pontiac, Michigan 48342
[phone]
[phone]

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Memorandum of Contentions of Fact and Law

CERTIFICATE OF SERVICE
I, hereby certify that on April 30, 2012, I electronically filed the
foregoing:
PLAINTIFF’S MEMORANDUM OF CONTENTIONS OF FACT AND LAW
with the Clerk of the Court using the ECF System which will send notification of
such filing to all counsel of record.
/s/ Jeffrey P. Thennisch_
Jeffrey P. Thennisch (Pro Hac Vice)
Attorneys for Plaintiff
Dobrusin & Thennisch, PC
29 W. Lawrence Street, Suite 210
Pontiac, Michigan 48342
Ph: [phone]
Fx: [phone]
[e-mail] 

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Memorandum of Contentions of Fact and Law