Bryan Pringle v. William Adams Jr et al

Filing 99

MINUTES (IN CHAMBERS): by Judge Josephine Staton Tucker: denying 73 Motion for Preliminary Injunction (twdb)

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES – GENERAL
Case No. SACV 10-1656-JST (RZx)
Title: Bryan Pringle v. William Adams, Jr. et al.

Date: February 7, 2011

Present: Honorable JOSEPHINE STATON TUCKER, UNITED STATES DISTRICT JUDGE
Ellen Matheson
Deputy Clerk
ATTORNEYS PRESENT FOR PLAINTIFF:

Not Present

N/A
Court Reporter
ATTORNEYS PRESENT FOR DEFENDANT:

Not Present

PROCEEDINGS: (IN CHAMBERS) ORDER DENYING PLAINTIFF’S
MOTION FOR PRELIMINARY INJUNCTION (Doc. 73)

I. INTRODUCTION
Before the Court is Plaintiff’s Motion for Preliminary Injunction. (Doc. 73.)
Having considered the papers, heard oral argument, and taken the matter under
submission, the Court DENIES Plaintiff’s Motion for a Preliminary Injunction.
II. PROCEDURAL BACKGROUND
On October 28, 2010, Plaintiff Bryan Pringle filed suit for copyright infringement
against William Adams, Stacy Ferguson, Allan Pineda, and Jaime Gomez (individually
and collectively as the music group The Black Eyed Peas), David Guetta, Frederick
Riesterer, UMG Recordings, Inc., Interscope Records, EMI April Music, Inc., Headphone
Junkie Publishing, LLC, Will.I.Am Music, LLC, Jeepney Music, Inc., Tab Magnetic
Publishing, Cherry River Music Co., Square Rivoli Publishing, Rister Editions, and
Shapiro Bernstein & Co (collectively “Defendants”). Plaintiff alleges that Defendants
impermissibly and willfully infringed his statutory copyright in the derivative version of
the song “Take a Dive,” when they wrote and recorded The Black Eyed Peas’ song “I
Gotta Feeling.” (See generally First Amended Complaint, Doc. 9.)
On December 13, 2010, Defendants moved to dismiss the action, for a more
definite statement, and to strike portions of the First Amended Complaint (Docs. 52 &
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____________________________________________________________________________
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES – GENERAL
Case No. SACV 10-1656-JST (RZx)
Title: Bryan Pringle v. William Adams, Jr. et al.

Date: February 7, 2011

53), all of which the Court denied. (Doc. 95.) Plaintiff now moves for a preliminary
injunction pursuant to Federal Rule of Civil Procedure 65 enjoining Defendants from
making, distributing, and publicly performing “I Gotta Feeling.” (Pl.’s Not. of Mot.,
Doc. 73, at 1.) Defendants have filed multiple oppositions (Docs. 81, 83, 84), and
Plaintiff replied (Doc. 91).
III.

LEGAL STANDARD

“A preliminary injunction is an extraordinary and drastic remedy.” Munaf v.
Geren, 553 U.S. 674, 676 (2008). “The purpose of a preliminary injunction is merely to
preserve the relative positions of the parties until a trial on the merits can be held.” Univ.
of Tx v. Camenisch, 451 U.S. 390, 395 (1981). A district court should issue a preliminary
injunction only “upon a clear showing that the plaintiff is entitled to relief.” Winter v.
Natural Res. Def. Council, Inc., 555 U.S. 7, 129 S. Ct. 365, 376 (2008). This requires the
district court to making findings of fact and conclusions of law. Perfect 10, Inc. v.
Amazon.com, Inc., 508 F.3d 1146, 1157 (9th Cir. 2007); see LGS Architects, Inc. v.
Concordia Homes of Nev., 434 F.3d 1150, 1155 (9th Cir. 2006).
“[T]he party seeking the injunction . . . bear[s] the burden of demonstrating the
various factors justifying preliminary injunctive relief . . . .” Granny Good Foods, Inc. v.
Bhd. of Teamsters, 415 U.S. 423, 441 (1974). “A plaintiff seeking a preliminary
injunction must establish that he is likely to succeed on the merits, that he is likely to
suffer irreparable harm in the absence of preliminary relief, that the balance of equities
tips in his favor, and that an injunction is in the public interest.” Winter, 129 S. Ct. at
374. This “requires the plaintiff to make a showing on all four prongs.” Alliance for the
Wild Rockies v. Cottrell, --- F.3d ----, 2011 WL 208360, at *7 (9th Cir. Jan. 25, 2011). A
plaintiff must support such a showing with evidence. Camenisch, 451 U.S. at 395.
The Ninth Circuit employs the “serious questions” version of the “sliding scale”
approach when applying the four-element Winter test. Id at *4, *7. “That is, ‘serious
questions going to the merits’ and a balance of hardships that tips sharply towards the
plaintiff can support issuance of a preliminary injunction, so long as the plaintiff also
shows that there is a likelihood of irreparable injury and that the injunction is in the
public interest.” Id.

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____________________________________________________________________________
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES – GENERAL
Case No. SACV 10-1656-JST (RZx)
Title: Bryan Pringle v. William Adams, Jr. et al.

Date: February 7, 2011

IV. DISCUSSION
Because the Court finds that Plaintiff has failed to demonstrate a likelihood of
success on the merits, or alternatively to raise serious questions as to the merits, the Court
need only consider that prong in denying Plaintiff’s Motion. Alliance, 2011 WL 208360
at *7 (requiring a plaintiff to make a showing on all four prongs).
To be successful on the merits of his copyright infringement claim, Plaintiff must
prove “(1) ownership of a valid copyright, and (2) copying of constituent elements of the
work that are original.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340,
361 (1991). Here, Plaintiff alleges that he owns a valid copyright in both the original and
derivative versions of “Take a Dive,” and that Defendants have copied elements of the
latter in “I Gotta Feeling.” The Court considers each version of the song in turn.
A. Original Version
Plaintiff has submitted a declaration stating:
In 1998, I wrote and recorded the song “Take a Dive,” an
original work . . . I registered a claim for “Take a Dive,” and
other songs, contained on a CD entitled Dead Beat Club:
1998, with the United States Copyright Office. The Register
of Copyrights issued a Certificate of Registration for Dead
Beat Club: 1998 on April 29, 1998, identified as SRu 387433 (“Take a Dive” is referred to on the Certificate as merely
“Dive”).
(Pringle Decl., Doc. 76, ¶ 3.) Plaintiff provided a CD – not the Dead Beat Club: 1998
CD – containing the original version of “Take a Dive” along with a copy of the
Certificate of Registration for Dead Beat Club: 1998. (Id. Exhs. B, C.)
Plaintiff’s Certificate of Registration serves as prima facie evidence of his valid
ownership over Dead Beat Club: 1998 and the individual songs contained therein. 17
U.S.C. § 410(c); Cosmetic Idea, Inc. v. IAC/Interactivecorp, 606 F.3d 612, 619 (9th Cir.
2010) (“[I]f a copyright holder secures a registration certificate within five years after
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____________________________________________________________________________
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES – GENERAL
Case No. SACV 10-1656-JST (RZx)
Title: Bryan Pringle v. William Adams, Jr. et al.

Date: February 7, 2011

first publication, such certificate will constitute prima facie evidence of both the validity
of the copyright and the facts stated in the certificate.”). However, Plaintiff has not
provided evidence that Dead Beat Club: 1998 actually contains the original version of
“Take a Dive.” As Plaintiff acknowledges, the Certificate lists “Dive,” not “Take a
Dive” as material in which the copyright is claimed. (Id. Exh. C, sec. 6.a.) This alone is
not problematic. See Szabo v. Errisson, 68 F.3d 940, 944 (5th Cir. 1995) (“[A] copyright
of a collection of unpublished works protects the individual works that are copyrightable,
regardless of whether they are individually listed on the copyright certificate.”),
abrogated on other grounds by Reed Elsevier, Inc. v. Muchnick, 130 S. Ct. 1237 (2010);
see United Fabrics Int’l, --- F.3d ----, 2011 WL 222996, at *3 (9th Cir. Jan. 26, 2011)
(agreeing with Szabo’s approach in considering the “unpublished-collection-of-works
category of copyright registrations”). But, Plaintiff has not provided a copy of Dead Beat
Club: 1998 to allow the Court to verify that, despite the song’s title being absent from the
Certificate, the song nonetheless appears in the CD and is therefore subject to the
copyright.
For a collection unpublished works, like Dead Beat Club: 1998, 37 C.F.R. §
202.3(b)(4) holds that:
[T]he following shall be considered a single work: . . .
(B) In the case of unpublished works: all copyrightable elements
that are otherwise recognizable as self contained works, and are
combined in a single unpublished “collection.” For these
purposes, a combination of such elements shall be considered a
“collection” if:
(1) The elements are assembled in an orderly form;
(2) The combined elements bear a single title identifying
the collection as a whole;
(3) The copyright claimant in all of the elements, and in
the collection as a whole, is the same; and

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____________________________________________________________________________
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES – GENERAL
Case No. SACV 10-1656-JST (RZx)
Title: Bryan Pringle v. William Adams, Jr. et al.

Date: February 7, 2011

(4) All of the elements are by the same author, or, if they
are by different authors, at least one of the authors has
contributed copyrightable authorship to each element.
Registration of an unpublished “collection” extends to each
copyrightable element in the collection and to the authorship, if
any, involved in selecting and assembling the collection.
37 C.F.R. § 202.3(b)(4); see United Fabrics, 2011 WL 222996 at *3.
Thus, inherent in determining whether an “element” within a collection is
copyrightable is verifying that the element in question appears in the collection. Absent
such presumably available evidence, the Court retains only Plaintiff’s declaration, i.e. his
word, to support a finding that he owns a valid copyright in the original version of “Take
a Dive.” (Pringle Decl., ¶ 3.) Standing alone, this is insufficient to create a presumption
of valid copyright ownership and, moreover, to support an “extraordinary and drastic
remedy” such as injunctive relief. Thus, Plaintiff cannot establish a likelihood of success
for his copyright infringement claim based on copyright ownership in the original version
of “Take a Dive.”
B. Derivative Version
1. Valid Copyright
Plaintiff claims to own a valid copyright in the derivative version of “Take a
Dive.” (Pl.’s Mot. at 15; Pl.’s Reply, Doc. 91, at 2-4.) Plaintiff relies on two pieces of
evidence in support of his alleged ownership: the Certificate of Registration and his own
declaration. Defendants argue that Plaintiff cannot establish valid ownership because his
Certificate of Registration does not establish ownership and Plaintiff has failed to provide
any other evidence as to copyright validity. (Shapiro Opp. 4-8; Adams Opp. 4-10.) The
Court agrees.
Here, because Plaintiff registered his Certificate of Registration over ten years
after the alleged first publication of the derivative version (see Pringle Decl., Exh. D), the
Certificate does not serve as prima facie evidence of ownership or create a presumption
of validity. 17 U.S.C. § 410(c) (“the certificate of a registration made before or within
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____________________________________________________________________________
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES – GENERAL
Case No. SACV 10-1656-JST (RZx)
Title: Bryan Pringle v. William Adams, Jr. et al.

Date: February 7, 2011

five years after first publication of the work shall constitute prima facie evidence of the
validity of the copyright and of the facts stated in the certificate.” (emphasis added)); see
Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1075-76 (9th Cir. 2000). “When a
plaintiff does not possess a copyright certificate, she must provide evidence of
copyrightability and originality, and compliance with statutory formalities.” Kimbell v.
Rock, No. CV09-7249, 2009 WL 3248208, at *3 (C.D. Cal. Oct. 8, 2009); Montgomery v.
Noga, 168 F.3d 1282, 1289 (11th Cir. 1999); see 4 Melville B. Nimmer and David
Nimmer, Nimmer on Copyright § 13.01 (2010) (“Plaintiff’s ownership, in turn, breaks
down into the following constituent parts: (1) originality in the author; (2)
copyrightability of the subject matter; . . . [and] [3] compliance with applicable statutory
formalities . . . .”). Defendants argue that Plaintiff has not provided sufficient evidence of
originality, i.e. that he authored the derivative version. (Adams Opp. at 8-10.) The Court
agrees.
Plaintiff devotes just two sentences in his Motion to his alleged copyright in the
derivative version. Plaintiff states:
In addition, Pringle owns a valid copyright for the sound recording of the
derivative version of “Take a Dive,” as shown by the Certificate of Registration
for the song, entitled “Take a Dive (Dance Version)[.]” (See Exhibit D to Pringle
Decl.) His copyright registration certificates constitute evidence of the validity of
the copyrights and Pringle’s ownership in the copyrights.
(Pl.’s Mot. at 14-15.) Thus, Plaintiff seems to rely solely on the Certificate of
Registration to establish copyright ownership. As the Court noted above, however, the
Certificate cannot serve as prima facie evidence of a valid copyright in the derivative
version. Plaintiff asserts that “[e]ven if the Court were to determine that there is no
presumption of validity for Pringle’s creation of the guitar twang sequence, there is no
requirement . . . that Pringle must prove the components of his copyright claim.” (Pl.’s
Reply at 3.) To be clear, for the Court to issue a preliminary injunction, Plaintiff must
show a likelihood of success or raise serious questions as to the merits of his copyright
infringement claim. This requires, at minimum, providing evidence, i.e. proof, as to valid
copyright ownership.
In his declaration, Plaintiff states, inter alia, that:
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____________________________________________________________________________
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES – GENERAL
Case No. SACV 10-1656-JST (RZx)
Title: Bryan Pringle v. William Adams, Jr. et al.

Date: February 7, 2011

Approximately a year after [“Take a Dive”]’s creation, I made
several slightly different derivative versions of “Take a Dive,” one
of which consisted of my removing the lyrics from the original
version, and adding what can be described as a repeating eight-bar
melody, using a “guitar twang” instrument, utilizing a total of four
notes (D4, C4, B3, and G3), in the following progression: D4-C4B3-C4-B3-C4, in the key G3 (the “guitar twang sequence”). I
modeled this “guitar twang sequence” after “Take a Dive’s”
progression of notes in the chorus vocals of the original version,
which I sang . . . .
I saved the creation file for the derivative version of “Take a Dive,”
which contains the guitar twang sequence, on my personal computer
as an NRG. Image File, entitled “Disk05.NRG,” on or around 1999.
Since 1998, I have been and I remain the owner and proprietor of the
statutory copyright in the musical composition and sound recording
for “Take a Dive,” and its derivative work.
(Pringle Decl. ¶¶ 4-6.) However, Plaintiff has failed to substantiate his declaration with
other facts or documentary evidence. Further, Plaintiff’s declaration is so vague that it
fails to show that he independently authored the “guitar twang” sequence. Plaintiff
merely states that he “add[ed]” the guitar twang sequence using a “guitar twang
instrument,” and that he “modeled” the sequence after the chorus in the original version.
(Id. ¶ 4.) Plaintiff’s bald declaration and the minimal statements therein do not meet
Plaintiff’s burden of demonstrating originality, and therefore a valid copyright, and
certainly fall short of showing a likelihood of success or raising serious questions as to
the merits of his copyright infringement claim.
2. Copying
Plaintiff’s failure to establish ownership over a valid copyright is sufficient to
deny his Motion. However, Plaintiff also has failed to show a likelihood of success or
raise serious questions as to whether Defendants copied the derivative version in “I Gotta
Feeling.” The Court notes that Plaintiff’s Copyright Registration in derivative version
only covers the sound recording of the song and not the musical composition. (Pringle
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____________________________________________________________________________
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES – GENERAL
Case No. SACV 10-1656-JST (RZx)
Title: Bryan Pringle v. William Adams, Jr. et al.

Date: February 7, 2011

Decl., Exh. D.) “Sound recordings” are defined as “works that result from the fixation of
a series of musical, spoken, or other sounds . . . .” 17 U.S.C. § 101. “Sound recordings
and their underlying musical compositions are separate works with their own distinct
copyrights.” Newton v. Diamond, 204 F. Supp. 2d 1244, 1248-49 (C.D. Cal. 2002); see
17 U.S.C. §§ 102(a)(2) & (7). While “[a] musical composition’s copyright protects the
generic sound that would necessarily result from any performance of the piece,” in
contrast “the sound recording is the sound produced by the performer’s rendition of the
musical work.” Id. at 1249-50.
Because Plaintiff’s copyright only covers the sound recording, 17 U.S.C. § 114
controls the extent to which Plaintiff can bring a copyright infringement claim. Under 17
U.S.C. § 114(a), “[t]he exclusive rights of the owner of copyright in a sound recording
are limited to the rights specified by clauses (1), (2), (3) and (6) of section 106, and do
not include any right of performance under section 106 (4).” 17 U.S.C. § 114(a). Under
17 U.S.C. § 106, the owner of copyright has the exclusive right:
(1) to reproduce the copyrighted work in copies or phonorecords; (2)
to prepare derivative works based upon the copyrighted work; (3) to
distribute copies or phonorecords of the copyrighted work to the
public by sale or other transfer of ownership, or by rental, lease, or
lending; . . . (6) in the case of sound recordings, to perform the
copyrighted work publicly by means of a digital audio transmission.
17 U.S.C. § 106. Furthermore, 17 U.S.C. § 114(b) provides in relevant part:
The exclusive right of the owner of copyright in a sound recording
under clause (1) of section 106 is limited to the right to duplicate the
sound recording in the form of phonorecords or copies that directly or
indirectly recapture the actual sounds fixed in the recording. The
exclusive right of the owner of copyright in a sound recording under
clause (2) of section 106 is limited to the right to prepare a derivative
work in which the actual sounds fixed in the sound recording are
rearranged, remixed, or otherwise altered in sequence or quality. The
exclusive rights of the owner of copyright in a sound recording under
clauses (1) and (2) of section 106 do not extend to the making or
duplication of another sound recording that consists entirely of an
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES – GENERAL
Case No. SACV 10-1656-JST (RZx)
Title: Bryan Pringle v. William Adams, Jr. et al.

Date: February 7, 2011

independent fixation of other sounds, even though such sounds imitate
or simulate those in the copyrighted sound recording.
17 U.S.C. § 114(b). Thus, to show copying, Plaintiff must establish that Defendants, in
duplicating the derivate version or creating a derivative thereof, either “directly or
indirectly recaptured the actual sounds fixed in the recording” or “rearranged, remixed, or
otherwise altered in sequence or quality” the “actual sounds fixed in the sound
recording.” Id. (emphasis added).
Plaintiff alleges that Defendants “directly sampled” the sound recording of the
derivative version, and defines “sampling” as “the practice of directly lifting a portion of
an existing sound recording and using it as a component of a new song.” (Pl.’s Mot. at
16.) In support, Plaintiff offers a declaration and an expert report from Mark Rubel, a
sound engineer. (Doc. 78.) Based on his own “listening” and a computer waveform
analysis, Rubel concluded that Defendants sampled parts of the derivative version in “I
Gotta Feeling.” (Rubel Decl., Exh. A, Rubel Report at 9, 19.)
Defendants have provided refuting evidence, however, showing that it would be
technologically impossible for Defendants to have sampled the guitar twang from the
derivative version. Paul Geluso, a professor and Chief Recording Engineer in the
Department of Music and Performing Arts Professions at the Steinhardt School of
Education at New York University, found that the guitar twang sequence in the derivative
version could not have been sampled because it is layered with other musical elements,
while the guitar twang in “I Gotta Feeling” in a number of instances have no other sound
elements. (Geluso Decl., Doc. 81-1, ¶ 7.) Based on this observation, Geluso explains
that “it would not have been technologically possible to obtain a ‘clean’ guitar twang
sequence that appears in ‘I Gotta Feeling’ from the sequence that appears in the
derivative version . . . .” (Id.) Indeed, when Geluso attempted to isolate the guitar twang
sequence in the derivative version using an “exhaustive” list of techniques, “none of them
yielded an even remotely artifact-free isolated guitar twang sequence, as was present in ‘I
Gotta Feeling.’” (Id. ¶ 10.) Geluso further explains that this finding was not inconsistent
with Rubel’s testimony, as Rubel did not independently confirm whether the isolated
guitar twang sequence he analyzed originated from the derivative version and
acknowledged on several occasions that the guitar twang in the derivative version is
layered with other sound elements not present in “I Gotta Feeling.” (Id. ¶¶ 11-12 (citing
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____________________________________________________________________________
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES – GENERAL
Case No. SACV 10-1656-JST (RZx)
Title: Bryan Pringle v. William Adams, Jr. et al.

Date: February 7, 2011

Rubel Decl. ¶ 4 and id., Rubel Report at 17-19.).) Plaintiff did not respond to this
evidence in his reply.
In light of Defendant’s evidence, Plaintiff fails to meet its burden of showing a
likelihood of success or raising serious questions as to his claim that Defendants copied
the derivative version.
V. CONCLUSION
For the reasons stated above, the Court DENIES Plaintiff’s Motion for a
Preliminary Injunction.
Initials of Preparer: nkb

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