Bryan Pringle v. William Adams Jr et al

Filing 91

REPLY in support of MOTION for Preliminary Injunction re: copyright infringement 73 filed by Plaintiff Bryan Pringle. (Holley, Colin)

1 Dean A. Dickie (appearing Pro Hac Vice)
[e-mail]
2 Kathleen E. Koppenhoefer (appearing Pro Hac Vice)
[e-mail]
3 MILLER, CANFIELD, PADDOCK AND STONE, P.L.C.
225 West Washington Street, Suite 2600
4 Chicago, IL 60606
Telephone: [phone]
5 Facsimile: 312.460.4288

LLP

HAMPTONHOLLEY

2101 East Coast Highway, Suite 260
Corona del Mar, California 92625

6 Ira Gould (appearing Pro Hac Vice)
[e-mail]
7 Ryan L. Greely (appearing Pro Hac Vice)
[e-mail]
8 GOULD LAW GROUP
120 North LaSalle Street, Suite 2750
9 Chicago, IL 60602
Telephone: [phone]
10 Facsimile: 312.726.1328
11 George L. Hampton IV (State Bar No. 144433)
[e-mail]
12 Colin C. Holley (State Bar No. 191999)
[e-mail]
13 HAMPTONHOLLEY LLP
2101 East Coast Highway, Suite 260
14 Corona del Mar, California 92625
Telephone: [phone]
15 Facsimile: 949.718.4580
16 Attorneys for Plaintiff
BRYAN PRINGLE
17
18

UNITED STATES DISTRICT COURT

19

CENTRAL DISTRICT OF CALIFORNIA

20

SOUTHERN DIVISION
)
)
)
Plaintiff,
)
)
v.
)
)
WILLIAM ADAMS, JR.; STACY
)
FERGUSON; ALLAN PINEDA; and
)
JAIME GOMEZ, all individually and
collectively as the music group The Black )
)
Eyed Peas, et al.
)
)
Defendants.
)

21 BRYAN PRINGLE, an individual,

Case No. SACV 10-1656 JST(RZx)

22

PLAINTIFF’S REPLY IN
FURTHER SUPPORT OF
MOTION FOR PRELIMINARY
INJUNCTION

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24
25
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DATE: January 31, 2011
TIME: 10:00 a.m.
CTRM: 10A

1

TABLE OF CONTENTS

2

Page

3
4

I.

INTRODUCTION......................................................................................... 1

5

II.

ARGUMENT ................................................................................................ 2
A.

6

Pringle Is Likely To Succeed On the Merits of His Claim................. 2

7

1.

Pringle Has a Valid Copyright Registration for His
Musical Composition................................................................ 2

8

2.

Pringle Has Established A Likelihood of Success on
the Merits of his Claim that Defendants Infringed the
Musical Composition in the Derivative Version of
“Take a Dive.” .......................................................................... 5

3.

Defendants’ Supposed “Independent Creation” of the
Guitar Twang Sequence............................................................ 6

9
10
11
12

B.

13

Pringle Has Established Irreparable Harm.......................................... 7
1.

Pringle Has Made A Showing of Irreparable Harm
Independent of His Likelihood of Succeeding on the
Merits ........................................................................................ 7

2.

Pringle Timely Sought Relief and There is No Delay
That Rebuts His Presumption of Irreparable Harm .................. 8

14
15
16
17

C.

The Weighing of Hardships Strongly Favors Entering
Injunctive Relief Against Defendants ................................................. 9

18

D.

Pringle Has Established Good Cause for The Court To Waive
A Bond, a Matter Within The Court’s Sound Discretion ................. 11

19
20

III.

CONCLUSION ........................................................................................... 11

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-i-

1

INDEX OF AUTHORITIES

2

Page(s)

3 CASES
4 A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001).....................................7, 9, 10
5 Candle Factory, Inc. v. Trade Assocs. Group, Ltd., 23 F. App'x 134 (4th Cir. 2001) ....................8
6 Control Data Sys., Inc. v. Infoware, Inc., 903 F. Supp. 1316 (D. Minn. 1995) ..............................9
7 Coquico, Inc. v. Rodriguez-Miranda, 2007 WL 3034259 (D.P.R. Oct. 15, 2007)..........................9
8 Cosmetic Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612 (9th Cir. 2010)....................................2
9 eBay Inv. v. MercExchange, LLC, 547 U.S. 388, 126 S. Ct. 1837 ..................................................7
10

LLP

HAMPTONHOLLEY

2101 East Coast Highway, Suite 260
Corona del Mar, California 92625

Exchange Intern., Inc. v. Vacation Ownership Relief, LLC, 2010 WL 4983669 (M.D.
Fla. Oct. 27, 2010) .....................................................................................................................8
11

12 Grocery Outlet Inc. v. Albertson’s, Inc., 497 F.3d 949 (9th Cir. 2007) ..........................................2
13 Gucci Timepieces America Inc. v. Yida Watch Co., 1998 WL 650078 (C.D. Cal.
14
15
16
17

1998) ..........................................................................................................................................4
Inst. for Motivational Living, Inc. v. Sylvan Learning Ctr., Inc., 2008 WL 379654
(W.D. Pa. Feb. 8, 2008) .............................................................................................................9
King v. Innovation Books, a Div. of Innovative Corp., 976 F.2d 824 (2d Cir. 1992)......................9
Mandrigues v. World Sav., Inc., 2008 WL 5221074 (N.D. Cal. Dec. 12, 2008).............................9

18
19
20

Reed Elsevier, Inc. v. Mucknick, 130 S.Ct. 1237 (2010) .................................................................4
Summit Entertainment, LLC v. Beckett Media, LLC, 2010 WL 147958 (C.D. Cal. Jan.
12, 2010) ....................................................................................................................................7

21 Taylor Corp. v. Four Seasons Greetings, LLC, 403 F.3d 958 (8th Cir. 2005)................................7
22
Three Boys Music v. Michael Bolton, 212 F.3d 477 (9th Cir. 2000)...............................................6

23
24

Topline Corp. v. 4273371 Can., Inc., 2007 WL 2332471 (W.D. Wash. Aug. 13, 2007)................9
Walt Disney Co. v. Powell, 897 F.2d 565 (D.C. Cir. 1990).............................................................8

25
26
27

Warner Bros. v. RDR, 575 F. Supp. 2d 513 (S.D.N.Y. 2008) .........................................................7
Warrior Sports, Inc. v. Nat'l Collegiate Athletic Ass'n, 2009 WL 230562 (E.D. Mich.
Jan. 30, 2009).............................................................................................................................9

28
ii

1 STATUTES
2 17 U.S.C. § 103(b)...........................................................................................................................2
3 17 U.S.C. § 411(a) .......................................................................................................................2, 4
4
5
6
7
8
9
10

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HAMPTONHOLLEY

2101 East Coast Highway, Suite 260
Corona del Mar, California 92625

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iii

1 I.

INTRODUCTION

2

The most critical piece of information the Court should take from Defendants’1

3 oppositions to Pringle’s Motion for Preliminary Injunction is this: nowhere in
4 either opposition does any Defendant deny that the derivative version of “Take
5 a Dive” and “I Gotta Feeling” are strikingly similar if not virtually identical.
6 None of the Defendants could provide an expert opinion to refute the stated opinions
7 of Pringle’s experts that the songs are substantially similar. Instead, Defendants
8 attempt to turn the Court’s attention away from the fact that “I Gotta Feeling” is
9 virtually identical to “Take a Dive” and fail to refute that Pringle has made a showing
10 of the following:

LLP

HAMPTONHOLLEY

2101 East Coast Highway, Suite 260
Corona del Mar, California 92625

11

 He created the derivative version of “Take a Dive,” including the

12

guitar twang sequence, many years before Defendants “created” “I

13

Gotta Feeling”;

14

 He submitted the derivative version of “Take a Dive” directly to record

15

labels and publishing companies with whom the respective alleged

16

songwriter Defendants are directly associated; and

17

 The two songs are virtually identical, such that “I Gotta Feeling” could

18

not have been independently created without copying the derivative

19

version of “Take a Dive.”

20

For all of their efforts to confuse the issues and create artificial ones, none of

21 Defendants’ arguments succeed in refuting that Pringle has established each of the
22 required elements necessary to obtain injunctive relief. The equities favor enjoining
23 Defendants from further intentional and willful infringement of Pringle’s copyright
24
1
For purposes
to each of the Defendants who
25 filed oppositions of this response, “Defendants” refersInjunction or joined in such
to Pringle’s Motion for Preliminary
Defendants William Adams, Stacy Ferguson, Allan Pineda,
26 oppositions includingEyed Peas, Tab Magnetic Publishing, Headphone Junkie
Jaime Gomez, Black
LLC,
Music, Inc., Cherry River
27 Publishing,Music,will.i.am. music, llc, Jeepney and Interscope Records. Music Co.,
EMI April
Inc., UMG Recordings, Inc.
28

1

1 and Pringle requests that the Court do just that: enjoin each of the Defendants from
2 further intentional and willful infringement of his copyright in “Take a Dive.”
3 II.

ARGUMENT

4

To obtain injunctive relief, Pringle must show either (1) a combination of

5 probable success on the merits and possibility of irreparable harm or (2) that serious
6 questions exist, and the balance of hardships tips in his favor. Grocery Outlet Inc. v.
7 Albertson’s, Inc., 497 F.3d 949, 951 (9th Cir. 2007). Pringle satisfies both ends of
8 this continuum and injunctive relief should be granted.
9
10

A.

Pringle Is Likely To Succeed On the Merits of His Claim.

Contrary to Defendants’ unfounded assertions, Pringle has made a showing

LLP

HAMPTONHOLLEY

2101 East Coast Highway, Suite 260
Corona del Mar, California 92625

11 that he will succeed on the merits of his copyright infringement claim.
12
13
14

1.

Pringle Has a Valid Copyright Registration for His Musical
Composition.

Defendants argue that Plaintiff does not have a valid copyright in the musical

15 composition for the derivative version of “Take a Dive,” and therefore he cannot
16 bring suit in federal court, pursuant to 17 U.S.C. § 411(a). They are wrong.
17

First, Pringle has held a valid copyright registration for the musical

18 composition for the original version of “Take a Dive,” which does not contain the
19 guitar twang sequence, since 1999. That registration is prima facie evidence of the
20 validity of Pringle’s copyright in the original version of “Take a Dive.” Cosmetic
21 Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612, 619 (9th Cir. 2010). Pringle is
22 therefore entitled to a presumption of validity for the original version of “Take a
23 Dive,” given the 1999 copyright registration.
24

As for the derivative version of “Take a Dive,” a copyright in a derivative

25 work extends only to the new material – all preexisting material dates back to the
26 original copyright. See 17 U.S.C. § 103(b). Therefore, the only section of the
27 derivative version of “Take a Dive” as to which there may be an issue of
28 presumption of validity is the guitar twang sequence itself.
2

1

Even if the Court were to determine that there is no presumption of validity for

2 Pringle’s creation of the guitar twang sequence, there is no requirement, as
3 Defendants suggest, that Pringle must prove the components of his copyright claim
4 at the preliminary injunction stage. In support of this argument, Defendants
5 misquote – from a page that does not exist – the opinion in Ward v. National
6 Geographic Society opinion, 208 F. Supp. 2d 429, 445 (S.D.N.Y. 2002). But Ward
7 is not a preliminary injunction case, it is a summary judgment case, and it does not
8 hold that when seeking a preliminary injunction, in the absence of a presumption of
9 validity, a plaintiff must prove each of the components of a valid copyright. The
10 taken-out-of-context quote actually says:

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HAMPTONHOLLEY

2101 East Coast Highway, Suite 260
Corona del Mar, California 92625

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12
13
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17
18

Furthermore, contrary to defendant's suggestion, the
plaintiff need not demonstrate that the Copyright Office's
denial of registration was erroneous in order to survive the
defendants' motion for summary judgment on the
infringement claim, as the district court makes an
independent determination of copyright ownership when
the plaintiff sues under Section 411(a), just as in any other
infringement action. The Copyright Office's refusal to
register a work at most deprives the plaintiff in such an
action of Section 410(c)'s presumption of validity which
is not conclusive on the district court in any case.

19 Id. (Bolded portion represents Defendants’ quoted text).
Second, Pringle previously attempted to copyright the musical composition of
20
21 the derivative version of “Take a Dive” (i.e. the guitar twang sequence) with the
22 Copyright Office; however, the Copyright Office refused his registration. To be
23 copyrightable, a derivative work must … contain a substantial amount of new
24 material. Minor changes do not qualify the work as a new work for copyright
25 purposes. See U.S. Copyright Office Circular 14: Derivative Works, a copy of which
26
27
28
3

1 is attached as Exhibit 1.2 Since the only new material in the derivative version of
2 “Take a Dive” that is not included in the original 1999 registration was the guitar
3 twang sequence, the Copyright Office denied the application based on the fact that
4 the guitar twang sequence, by itself, was not a “substantial amount of new material”
5 for purposes of registration. That decision has no bearing on this case.
6

The fact that the Copyright Office refused Pringle’s registration for the

7 derivative version of “Take a Dive” does not prohibit Plaintiff from bringing suit in
8 federal court for a claim of infringement of said version. Section 411(a) expressly
9 allows courts to adjudicate infringement claims involving unregistered works in three
10 circumstances, one being where the holder attempted to register the work and

LLP

HAMPTONHOLLEY

2101 East Coast Highway, Suite 260
Corona del Mar, California 92625

11 registration was refused. Reed Elsevier, Inc. v. Mucknick, 130 S. Ct. 1237, 1246
12 (2010). Likewise, the Copyright Office’s refusal to copyright the musical
13 composition in the guitar twang sequence is not determinative of its copyrightability
14 or originality, because the Court makes an independent determination of copyright
15 ownership. See Ward, 208 F. Supp. 2d at 445.
16

Defendants’ position is further undermined by their reliance on Gucci

17 Timepieces America Inc. v. Yida Watch Co., 1998 WL 650078 at *1 (C.D. Cal.
18 1998). In Gucci, the Central District of California affirmed its prior granting of a
19 preliminary injunction in favor of the plaintiff even after the copyright registration
20 office cancelled the plaintiff’s registration. As such, Defendants’ reliance on this
21 case is puzzling.
22

It cannot be disputed here that Pringle is the registered copyright owner of the

23 musical composition for the original version “Take a Dive,” and that the Copyright
24 Office’s refusal to register the derivative version (i.e. the guitar twang sequence),
25 does not bar Pringle from bringing suit for infringement or obtaining injunctive
26
2
Pringle
27 publicationrequests that the Court take judicial notice of Exhibit 1, an official
of the United States Copyright Office.
28

4

1 relief. Pringle has made a very strong showing of his likelihood of prevailing on his
2 copyright infringement claim based on infringement of his musical composition.
3

2.

Pringle Has Established A Likelihood of Success on the

4

Merits of his Claim that Defendants Infringed the Musical

5

Composition in the Derivative Version of “Take a Dive.”
The narrow focus of Defendants’ opposition to Pringle’s Motion shows they

6

7 are unable to rebut the strong showing of infringement of his musical composition.
8 Indeed, perhaps the best evidence that Defendants cannot rebut the substantial, if not
9 striking, similarity between the songs is that Defendants do not address the central
10 issue of the copyright infringement of the musical composition anywhere in their

LLP

HAMPTONHOLLEY

2101 East Coast Highway, Suite 260
Corona del Mar, California 92625

11 brief. It speaks volumes that the musical composition of the two songs is so
12 strikingly similar that Defendants could not find any expert willing to opine they
13 are not substantially similar. Rather, Defendants focus their opposition on
14 challenging Pringle’s argument that Defendants sampled the sound recording of the
15 derivative version of “Take a Dive” by directly taking the guitar twang sequence
16 from Pringle’s recording and inserting it into “I Gotta Feeling.”
The guitar twang sequence in both “Take a Dive” and “I Gotta Feeling” is

17

18 identical, and this is part of the reason why the songs sound virtually identical or at
19 least strikingly similar in terms of musical composition. The Court, however, need
20 not even reach the issue of whether Pringle has established a likelihood he will be
21 able to prove Defendants sampled his sound recording. The direct sampling issue,
22 which is highly technical and will be fleshed out further in discovery, 3 is just one
23 basis for a finding of infringement.
24
25

3

The Report of Pringle’s sound engineering expert, Mark Rubel, acknowledges
that further discovery will need to be taken in order to determine whether Defendants
26 definitively sampled Plaintiff’s song but concludes nonetheless that it is his opinion
that the two
27 Rubel Decl. songs8are substantially similar. See Exhibit A to Rubel Decl.; See also,
at ¶¶ and 10.
28
5

1

The Court also need not reach the issue of sampling to establish Defendants’

2 access to Plaintiff’s song. Given the very strong showing Pringle has made
3 regarding the striking similarity of the musical compositions of the two songs,
4 Pringle is likely to prevail even without a showing of direct access, or proof of
5 sampling, pursuant to the inverse ratio rule. See Three Boys Music v. Michael
6 Bolton, 212 F.3d 477, 485 (9th Cir. 2000) (a copyright plaintiff can make out a case
7 of infringement by showing that the songs were “strikingly similar” – a standard
8 higher than that of substantial similarity – even in the absence of any proof of direct
9 access). Nowhere in their Oppositions do the Defendants refute the applicability of
10 the inverse ratio rule, or its significance in light of the striking similarity between the

LLP

HAMPTONHOLLEY

2101 East Coast Highway, Suite 260
Corona del Mar, California 92625

11 songs.
12

Further, as set forth above, Pringle has submitted evidence showing that he

13 directly submitted his demo CDs, all of which contain the derivative version of
14 “Take a Dive,” to major record labels, publishing companies and radio DJs in over
15 ten countries, including Paris, France, where Frederick Riesterer, the supposed
16 author of the guitar twang sequence, lives. Such evidence of access, combined with
17 the very strong showing Pringle has made regarding the striking similarity of the
18 musical compositions, makes it very likely Pringle will prevail, even putting aside
19 the issue of direct sampling.
20

3.

21
22

Defendants’ Supposed “Independent Creation” of the Guitar
Twang Sequence

Nothing in the submitted declaration of Defendant Riesterer refutes any of the

23 facts presented by Pringle:
24

1.

Pringle created the guitar twang sequence in 1999, well before Riesterer

25

supposedly licensed the sound in 2004 and nearly a decade before he

26

“wrote” the guitar twang sequence in 2008. See Pringle Decl. at ¶ 4.

27
28

2.

Pringle traveled to Paris France, where Defendant Riesterer lives, in
1999 and heavily distributed the derivative version of “Take a Dive” to
6

1

major record labels, publishers and DJs, and had the song played on

2

French radio. Id. at ¶ 8.

3

3.

Both of Pringle’s musicologist experts have opined that the guitar twang

4

sequences are identical and that, as a result, Defendants could not have

5

independently created it without copying Plaintiff’s song. See Stewart

6

Decl. at ¶ 4 and Byrnes Decl. at ¶¶ 4 and 5.

7

B.

8

Pringle established irreparable harm in two ways, both by establishing a

Pringle Has Established Irreparable Harm

9 likelihood of success on the merits and by independently setting forth and
10 establishing the existence of irreparable harm in this case.

LLP

HAMPTONHOLLEY

2101 East Coast Highway, Suite 260
Corona del Mar, California 92625

11

Even in the aftermath of eBay Inv. v. MercExchange, LLC, 547 U.S. 388, 126

12 S. Ct. 1837; 164 L. Ed. 2d 641 (2006), this District has held that irreparable harm is
13 established in a copyright infringement case upon a showing of the likelihood of
14 success on the merits: “In copyright and trademark infringement actions, irreparable
15 injury is presumed upon a showing of likelihood of success on the merits.” Summit
16 Entertainment, LLC v. Beckett Media, LLC, 2010 WL 147958 at *4, CV 09-8161
17 (C.D. Cal. Jan. 12, 2010) (citing Marlyn Nutraceuticals, Inc. v. Mucos Pharma
18 GmbH & Co., 571 F.3d 873, 877 (9th Cir. 2009)). In Warner Bros. v. RDR, 575 F.
19 Supp. 2d 513 (S.D.N.Y. 2008), the Southern District of New York explicitly noted
20 that District courts (including the Central District of California) “have continued to
21 apply the presumption post-eBay.” Id. at 552.
22
23
24

1.

Pringle Has Made A Showing of Irreparable Harm
Independent of His Likelihood of Succeeding on the Merits.

Even if the Court concludes that a separate showing of irreparable harm must

25 be made, Pringle has more than adequately done so. First, the loss of the right and
26 power to control one’s intellectual property establishes irreparable harm. See A&M
27 Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1029 (9th Cir. 2001) (in the absence of
28 injunctive relief, “plaintiffs would lose the power to control their intellectual
7

1 property”); Taylor Corp. v. Four Seasons Greetings, LLC, 403 F.3d 958, 968 (8th
2 Cir. 2005) (plaintiff “certainly has the right to control the use of its copyrighted
3 materials, and irreparable harm inescapably flows from the denial of that right”).
4 Here, it is beyond dispute that Defendants, through their virtually identical song,
5 have deprived Pringle of the right to control the use of the copyright he has in “Take
6 a Dive.” Defendants never denied the songs are identical. In his Motion for
7 Preliminary Injunction, Pringle identified this precise issue as one creating
8 irreparable harm. See ECF Doc. No. 73-1 at p. 21 (“Each time the song is played or
9 sold, Pringle is denied his exclusive right to copy, distribute, and perform the
10 song…”)

LLP

HAMPTONHOLLEY

2101 East Coast Highway, Suite 260
Corona del Mar, California 92625

11

Irreparable harm is also established by the risk of future infringement. Walt

12 Disney Co. v. Powell, 897 F.2d 565, 567-68 (D.C. Cir. 1990); Exchange Intern., Inc.
13 v. Vacation Ownership Relief, LLC, 2010 WL 4983669 (M.D. Fla. Oct. 27, 2010).
14 Here, as alleged in Pringle’s First Amended Complaint and discussed in detail in his
15 opposition to Defendants’ Motion to Dismiss (see ECF Doc. No. 74 at pp. 11-18),
16 Pringle has made a showing that Defendants have a business practice of intentional
17 infringement of the intellectual property of others. There is a strong likelihood of
18 future infringement here, which further bolsters the argument that Pringle will suffer
19 irreparable harm without injunctive relief.
20

2.

Pringle Timely Sought Relief and There is No Delay That

21

Rebuts His Presumption of Irreparable Harm.

22

Although Defendants argue that Pringle cannot establish irreparable harm

23 because he did not seek immediate injunctive relief, the case law makes clear that a
24 plaintiff is not required to race to the courthouse immediately or else be barred from
25 obtaining injunctive relief. In fact, courts have held that delays of even over one year
26 are reasonable. Courts have particularly noted that delay in seeking injunctive relief
27 caused by investigation into merits of claim and attempts to resolve dispute without
28 court intervention – a point noted in Defendants’ opposition – are reasonable and do
8

1 not rebut the presumption of irreparable harm. See Candle Factory, Inc. v. Trade
2 Assocs. Group, Ltd., 23 F. App'x 134, 137-39 (4th Cir. 2001) (1 year delay was
3 reasonable); King v. Innovation Books, a Div. of Innovative Corp., 976 F.2d 824, 831
4 (2d Cir. 1992) (8 month delay, during which the plaintiff made consistent objections
5 to the defendant, was reasonable); Warrior Sports, Inc. v. Nat'l Collegiate Athletic
6 Ass'n, 2009 WL 230562, at *5 (E.D. Mich. Jan. 30, 2009) (6 month delay was
7 reasonable); Mandrigues v. World Sav., Inc., 2008 WL 5221074, at *4 (N.D. Cal.
8 Dec. 12, 2008) (14 month delay was reasonable); Inst. for Motivational Living, Inc.
9 v. Sylvan Learning Ctr., Inc., 2008 WL 379654, at *4 (W.D. Pa. Feb. 8, 2008) (4 1/2
10 month delay to conduct good faith investigation of merits was reasonable); Coquico,

LLP

HAMPTONHOLLEY

2101 East Coast Highway, Suite 260
Corona del Mar, California 92625

11 Inc. v. Rodriguez-Miranda, 2007 WL 3034259, at *4-*5 (D.P.R. Oct. 15, 2007)
12 (delay of a little more than one year was reasonable); Topline Corp. v. 4273371 Can.,
13 Inc., 2007 WL 2332471, at *13 (W.D. Wash. Aug. 13, 2007) (10 month delay while
14 attempting to resolve dispute without court intervention was reasonable); Control
15 Data Sys., Inc. v. Infoware, Inc., 903 F. Supp. 1316, 1325 (D. Minn. 1995) (delay of
16 several months was reasonable in complex case).
17

Defendants’ argument regarding delay therefore does not hold up, given

18 Pringle’s due diligence and investigation into the ability to bring suit, his attempts to
19 notify Defendants of their infringement and his efforts to seek a reasonable out of
20 court settlement. His conduct and efforts were reasonable and Defendants cannot
21 rebut the presumption of irreparable harm that exists.
22
23
24

C.

The Weighing of Hardships Strongly Favors Entering Injunctive
Relief Against Defendants.

Pringle has made a strong showing of a likelihood of success on the merits,

25 and has established irreparable harm. This in and of itself establishes his right to
26 injunctive relief. Pringle has further established his right to injunctive relief because
27 he has made a showing that serious questions exist and the balance of hardships
28 weighs in his favor. Napster, 239 F.3d at 1013. In response to Pringle’s showing,
9

1 Defendants complain that because they were so successful at intentionally and
2 willfully stealing Pringle’s intellectual property, such that their infringing song has
3 become a worldwide hit, it would be patently unfair to prohibit them from continuing
4 to make money off of Pringle’s song, and further unfair to make them incur the cost
5 associated with remediating their intentional infringement. In doing so, Defendants
6 themselves praise “I Gotta Feeling” as being part of a “multi-platinum album” sold
7 worldwide. ECF Doc. No. 83 at p. 18.
8

It is for precisely this reason that public policy strongly supports protecting a

9 plaintiff’s intellectual property and the balance of hardships weighs in Pringle’s
10 favor, not Defendants’ favor. Any hardship to Defendants in rectifying their

LLP

HAMPTONHOLLEY

2101 East Coast Highway, Suite 260
Corona del Mar, California 92625

11 intentional infringement is irrelevant here, where Pringle has made a sufficient
12 showing to warrant injunctive relief. This is particularly true where, as is the case in
13 this David and Goliath situation, an unknown artist is forced to take on powerful
14 Defendants with virtually unlimited resources. Defendants would not be in the
15 uncomfortable position of having to retract the ill-gotten gains of their infringement
16 had they not willfully stolen Pringle’s song – a song they do not even deny is
17 virtually identical to the derivative version of “Take a Dive.” Further, Pringle’s
18 requested relief is specifically set forth to effectively minimize any unnecessary costs
19 to the Defendants and protect them from potential financial loss in the event that
20 Pringle does not ultimately prevail on his claims. 4
21
22
23
4
Defendants previously filed a Declaration from Ike Youssef, CFO
24 Interscope, stating that Defendants face “incalculable cost” in pulling of Defendant
the infringing
material from the market. See ECF Doc. No. 28-3 at ¶ 5. Plaintiff’s requested relief
25 specifically states that any prohibition of physical sales or licensing would not entail
already
physical
prevent future
26 the collectionSee ECF distributed73 at p. 3.copies – it would onlyrelief also protects
distribution.
Doc. No.
Plaintiff’s requested
any financial loss, by
27 Defendants from in escrow pending the requesting that profits made from “I Gotta
Feeling” be held
outcome of the litigation. Id.

28
10

1

Defendants have not established and cannot reasonably establish that the

2 balance of hardships weighs in favor of permitting them to continue to infringe on
3 Pringle’s copyrighted material.
4

D.

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Pringle Has Established Good Cause for The Court To Waive A
Bond, a Matter Within The Court’s Sound Discretion.

As set forth in Pringle’s moving papers, the equities here favor either waiving

7 a bond, or else setting a nominal bond, given the following:
 Pringle has established a strong showing of likelihood of success on the

8

merits;

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 Pringle cannot afford to post a substantial bond given his status as an

10

LLP

HAMPTONHOLLEY

2101 East Coast Highway, Suite 260
Corona del Mar, California 92625

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unknown artist, in sharp contrast to the worldwide success of the Black

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Eyed Peas;

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 The public interest supports waiving or setting a nominal bond.

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Pringle requests that the Court exercise its broad discretion and waive the

15 bond, or else set a nominal bond in light of the balance of equities between the
16 parties.
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1 III.

CONCLUSION

2

For each of these reasons, Plaintiff Bryan Pringle requests that the Court grant

3 his motion and grant the relief as set forth in his moving papers, and for such further
4 and other relief the Court deems proper.
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LLP

HAMPTONHOLLEY

2101 East Coast Highway, Suite 260
Corona del Mar, California 92625

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Dated: January 14, 2011

Dean A. Dickie (appearing Pro Hac Vice)
Kathleen E. Koppenhoefer (appearing Pro Hac Vice)
MILLER, CANFIELD, PADDOCK AND STONE,
P.L.C.
Ira Gould (appearing Pro Hac Vice)
Ryan L. Greely (appearing Pro Hac Vice)
GOULD LAW GROUP
George L. Hampton IV (State Bar No. 144433)
Colin C. Holley (State Bar No. 191999)
HAMPTONHOLLEY LLP
By: /s/ Ira Gould
Ira Gould
Attorneys for Plaintiff
BRYAN PRINGLE

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Circular 14

w

Copyright Registration
for Derivative Works
A derivative work is a work based on or derived from one or more already existing works. Also known as a “new version,” a derivative work is copyrightable if
it includes what copyright law calls an “original work of authorship.” Any work
in which the editorial revisions, annotations, elaborations, or other modifications represent, as a whole, an original work of authorship is a derivative work
or a new version.
A typical derivative work registered in the Copyright Office is a primarily
new work but incorporates some previously published material. The previously
published material makes the work a derivative work under copyright law.
To be copyrightable, a derivative work must differ sufficiently from the original to be regarded as a new work or must contain a substantial amount of new
material. Making minor changes or additions of little substance to a preexisting
work will not qualify a work as a new version for copyright purposes. The new
material must be original and copyrightable in itself. Titles, short phrases, and
formatting are not copyrightable.
Examples of Derivative Works

The following are examples of the many different types of derivative works:
• Television documentary (that contains archival footage and photographs)
• Motion picture (based on a play)
• Novel in English (a translation of a book originally published in Russian)
• Sound recording (CD in which two of the ten selections were previously
published online)
• Sculpture (based on a drawing)
• Drawing (based on a photograph)
• Book of maps (based on public-domain maps with some new maps)
• Lithograph (based on a painting)
• Biography of John Doe (that contains journal entries and letters by John Doe)
• Drama about John Doe (based on the letters and journal entries of John Doe)
• Super Audio CD (in which all the tracks were previously released in a CD and
have been remixed)
• Words and music (that include words from the Bible)
• Words and musical arrangement (arrangement is based on a piece by Bach)
• Musical arrangement (based on a work by Bach)
Compilations and Abridgments

Compilations and abridgments may also be copyrightable if they contain new
works of authorship. When the collecting of the preexisting material that makes
up the compilation is a purely mechanical task with no element of editorial
2  14.0510

EXHIBIT 1
PAGE 000013

Copyright Registration for Derivative Works  ·  2

selection, or when only a few minor deletions constitute an
abridgment, copyright protection for the compilation or
abridgment as a new version is not available.
Some examples of copyrightable compilations are:
• Book of best short stories of 2006 (selected from stories
published in magazines and literary journals in 2006)
• Sound recording of biggest pop hits of 2004 (selected
from recordings released in 2004)
• Book of great news photos of 2002 (selected from
newspapers and newsmagazines published in 2002)
In the above examples, original authorship was involved
in deciding which were the best stories, the biggest hits, or
greatest photos and in what order to present the respective
works within the compilation.

Copyright Protection in Derivative Work
The copyright in a derivative work covers only the additions,
changes, or other new material appearing for the first time in
the work. It does not extend to any preexisting material and
does not imply a copyright in that material.
One cannot extend the length of protection for a copyrighted work by creating a derivative work. A work that has
fallen into the public domain, that is, a work that is no longer
protected by copyright, can be used for a derivative work,
but the copyright in the derivative work will not restore the
copyright of the public-domain material. Neither will it prevent anyone else from using the same public-domain work
for another derivative work.
In any case where a protected work is used unlawfully,
that is, without the permission of the copyright owner, copyright will not be extended to the illegally used part.

Right to Prepare Derivative Work
Only the owner of copyright in a work has the right to prepare, or to authorize someone else to create, a new version
of that work. The owner is generally the author or someone
who has obtained rights from the author. Anyone interested
in a work who does not know the copyright owner can
search the records of the Copyright Office or ask the Office
to conduct a search for an hourly fee. For details, see Circular
22, How to Investigate the Copyright Status of a Work.

Notice of Copyright
Before March 1, 1989, the use of copyright notice was mandatory on all published works, and any work first published
before that date should have carried a notice. For works published on and after March 1, 1989, use of copyright notice is
optional.
Although not required by law, it is perfectly acceptable
(and often helpful) for a work to contain a notice for the
original material as well as for the new material. For example,
if a previously registered book contains only a new introduction, the notice might be © 1941 John Doe; introduction ©
2008 Mary Smith. For information about copyright notice,
see Circular 3, Copyright Notice.

Copyright Registration
There are several ways to register a copyright with the U.S.
Copyright Office. Online registration through the electronic
Copyright Office (eCO) is the preferred way to register basic
claims for literary works; visual arts works; performing arts
works, including motion pictures; sound recordings; and
single serials. Advantages of online filing include a lower
filing fee; the fastest processing time; online status tracking;
secure payment by credit or debit card, electronic check, or
Copyright Office deposit account; and the ability to upload
certain categories of deposits directly into eCO as electronic
files. For details about eCO and other options for registering
a copyright, see Circular 1, Copyright Basics, or sl 35, Online
Copyright Registration.
Unfortunately, registration is often delayed because of
mistakes or omissions in completing copyright applications.
The following points should be helpful for those registering
derivative works. The categories specified appear on copyright applications.
Author • Name the author(s) of the copyrightable material

being claimed. Ordinarily, the author is the person who actually created the work. (Where the work or any contribution
to it is a work made for hire, the employer is considered the
author.) Do not name the author of previously published or
registered work(s) or public-domain material incorporated
into the derivative work, unless that person is also the author
of the new material. The application should name only the
author(s) of the new material in which copyright is claimed.
Author Created • Specify what the author(s) created. Examples

include “text,” “translation,” “editing,” “music,” “lyrics,” “musical arrangement,” “photographs,” “artwork,” “compilation.”

EXHIBIT 1
PAGE 000014

Copyright Registration for Derivative Works  ·  3

Year of Completion • The year of completion is the year

• is not included in the claim.

in which the new work—the particular version for which
registration is sought—was fixed in a copy or phonorecord
for the first time, even if other versions exist or if further
changes or additions are planned. Do not confuse completion with publication.

Material excluded · Briefly, in general terms, describe the
preexisting material that has been recast, transformed, or
adapted. See examples below. Do not complete this space for
compilations.

Publication · Copyright law defines “publication” as “the dis-

tribution of copies or phonorecords of a work to the public
by sale or other transfer of ownership, or by rental, lease, or
lending. The offering to distribute copies or phonorecords
to a group of persons for purposes of further distribution,
public performance, or public display, constitutes publication. A public performance or display of a work does not of
itself constitute publication.”
The following do not constitute publication: performing
the work, preparing phonorecords, or sending the work to
the Copyright Office.
The date of publication is the month, day, and year when
the work for which registration is sought was first published.
If the work has not been published, no date of publication
should be given on the application.
Copyright claimant · The copyright claimant is either the

author of the work or a person or organization who has
obtained from the author all the rights the author initially
owned. When the claimant named is not the author, a brief
transfer statement is required to show how the claimant
acquired the copyright. Examples are “by written agreement”
and “by inheritance.” Do not send copies of documents of
transfer with the application.
When the name of the claimant is not the name of the
author, but the two names identify one person, the relationship between the names should be explained. Examples are
“Doe Publishing Company, solely owned by John Doe” or
“John Doe doing business as Doe Recording Company.”
Previous registration · If no registration has been made for
this version or an earlier version of this work, leave this portion of the application blank.
If a previous registration for this work or another version of it was completed and a certificate of registration was
issued, give the requested information about the previous
registration, if known.
Limitation of claim · Complete this portion of the application if the work being registered contains a substantial
amount of material that

• was previously published,
• was previously registered in the U.  S. Copyright Office,
• is in the public domain, or

New material included · Briefly, in general terms, describe
all new copyrightable authorship covered by the copyright
claim for which registration is sought. See examples below.
All elements of authorship described in “author created”
should be accounted for in “new material included.”
If the claim is in the compilation only, state “compilation”
in “new material included.” If the claim is in the compilation
and any other material, state both “compilation” and the
material that has been compiled—for example, “compilation and foreword”; “compilation of photographs, additional
photography, and foreword”; “compilation of recordings and
liner notes”; “compilation of gospel songs, additional music,
and foreword”; “compilation of 19th-century political cartoons, new foreword, and index.”

Examples for “Material Excluded” and “New Material
Included” entries for derivative works:
• Motion picture based on the novel Little Women:
Material Excluded:
Text
New Material Included:
Entire Motion Picture
• New arrangement of preexisting music for piano:
Material Excluded:
Music
New Material Included:
Musical Arrangement
• Two-act play expanded to a three-act play with editing
throughout:
Material Excluded:
Text
New Material Included:
Text, Editing
• A new edition of Shakespeare’s Romeo and Juliet with a
new introduction:
Material Excluded:
Text
New Material Included:
Text
• A 1989 catalog that has been revised and to which new
text and photographs have been added:
Material Excluded:
Text, Photographs
New Material Included:
Text, Photographs, Editing
• Lithographic print of a 19th-century oil painting:
Material Excluded:
Artwork
New Material Included:
Reproduction by phot0-

lithography [in “other” space]
• U.S. Geological Survey map of southern Virginia with
additional maps and text added:
Material Excluded:
Map
New Material Included:
Map, Text

EXHIBIT 1
PAGE 000015

Copyright Registration for Derivative Works  ·  4

• A CD containing previously published sound recordings
on some tracks and new sound recordings on other tracks:
Material Excluded:
Sound Recording
New Material Included:
Sound Recording
• A new release of a sound recording first published in the
1980s with new photographs and text included in the CD
package:
Material Excluded:
Sound Recording
New Material Included:
Photograph(s), Text of liner

notes
• Remixed sounds from a 1970 recording by Sperryville
Symphony of Bach Double Concerto
Material Excluded:
Sound Recording
New Material Included:
Remix

By Telephone

For general information about copyright, call the Copyright
Public Information Office at [phone]. Staff members
are on duty from 8:30 am to 5:00 pm, Monday through Friday,
eastern time, except federal holidays. Recorded information
is available 24 hours a day. To request paper application
forms or circulars, call the Forms and Publications Hotline at
[phone] and leave a recorded message.
By Regular Mail

Write to:
Library of Congress
Copyright Office–COPUBS
101 Independence Avenue SE
Washington, DC 20559-6304

For Further Information
By Internet

Circulars, announcements, regulations, certain application forms, and other related materials are available from
the Copyright Office website at www.copyright.gov. To send
an email message, click on Contact Us at the bottom of the
homepage.

U. S. Copyright Office · Library of Congress · 101 Independence Avenue SE · Washington, DC 20559-6000 · www.copyright.gov
circular 14  rev: 05 ⁄ 2010  print: 05 ⁄ 2010 – xx,000  Printed on recycled paper

EXHIBIT 1
PAGE 000016

u.s. government printing office: 2010-xxx-xxx ⁄  x x,xxx

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CERTIFICATE OF SERVICE
On January 14, 2011, I electronically filed the foregoing PLAINTIFF’S
REPLY IN FURTHER SUPPORT OF MOTION FOR PRELIMINARY
INJUNCTION using the CM/ECF system which will send notification of such filing
to the following registered CM/ECF Users:

Mariangela Seale
6 Karen R. Thorland
7 Barry I. Slotnick
Ira P. Gould
8
Tal Efriam Dickstein
9 Linda M. Burrow
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[e-mail]
[e-mail], [e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail], [e-mail],
[e-mail],
Ryan Christopher Williams [e-mail]
Kara E. F. Cenar
[e-mail]
Ryan L. Greely
[e-mail]
Robert C. Levels
[e-mail]
Kathleen E. Koppenhoefer [e-mail]
Rachel Aleeza Rappaport [e-mail]
Jonathan S. Pink
[e-mail],
[e-mail],
[e-mail]
Dean A. Dickie
[e-mail], [e-mail],
[e-mail], [e-mail],
[e-mail], [e-mail]
Heather L. Pearson
[e-mail]

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I am unaware of any attorneys of record in this action who are not registered
for the CM/ECF system or who did not consent to electronic service.
I certify under penalty of perjury under the laws of the United States of
America that the foregoing statements are true and correct.

24 Dated: January 14, 2011

/s/Colin C. Holley

25

George L. Hampton IV (State Bar No. 144433)
Colin C. Holley (State Bar No. 191999)
HAMPTONHOLLEY LLP
2101 East Coast Highway, Suite 260
Corona del Mar, California 92625
Telephone: [phone]
Facsimile: 949.718.4580

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