Affiliated Records Inc. v. Taylor et al
Filing
61
MEMORANDUM OPINION & ORDER re: 44 CROSS MOTION for Summary Judgment filed by Affiliated Records Inc. For the reasons set forth above, both Moving Defendants' motion and plaintiff's partial cross-motion are GRANTED in part and DENIED in pa rt. This action shall now continue to a remedies-phase regarding defendant Goldtone's unlawful infringement of plaintiff's copyrights associated with the "Ghost Unit," "You Know What It Is" and "Stop Snitchin Stop L ying" albums. Plaintiff shall submit a letter the Court on or before May 21, 2012, setting forth which copyright remedy -actual damages and lost profits or statutory damages -it elects to pursue against defendant Goldtone. The Clerk of the Court is directed to terminate the motion at Docket Number 44 and to terminate defendants Taylor, Czar and BWS from this action. (Signed by Judge Katherine B. Forrest on 5/14/2012) (tro)
USDCSDNY
DOCUMENT
ELECTRONICALLY FILED
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
DOC #:--tJ~Y-++-m~"'1
-------------------------------------
X
DATE FILE
AFFILIATED RECORDS INC.,
09 Civ. 9938 (KEF)
Plaintiff,
MEMORANDUM OPINION
& ORDER
-v-
JAYCEON TAYLOR, p/k/a THE GAME, BLACK
WALL STREET RECORDS, INC., CZAR
ENTERTAINMENT, INC., 101 DISTRIBUTION,
LLC, and GOLDTONE ENTERTAINMENT, LLC,
Defendants.
X
KATHERINE B. FORREST, District Judge:
In 2009, Affiliated Records Inc.
("Affiliated") filed a
copyright infringement and unjust enrichment action against
Jayceon Taylor p/k/a "The Game"
Records,
("Taylor"), Black Wall Street
Inc. 1 ("BWS"), Czar Entertainment, Inc.
("Czar"), 101
Distribution, LLC ("101,,)2 and Goldtone Entertainment, LLC
("Goldtone")
(with the exception of 101, referred to herein as
1 Moving Defendants contend that the proper defendant is Black Wall Street
Records, LLC.
Defs.' Mem. at 2; see also Jekielek Decl. Ex. D.
("Taylor Dep.") at 8:24-9;22.)
2 101 is not a party to either of the instant motions.
On March 8, 2012, this
Court granted Koerner & Associates, LLC's motion to withdraw as counsel for
101 and directed 101 to obtain replacement counsel within 30 days or be
subject to an entry of default.
(Docket No. 48 (citing HCC, Inc. v. RH & M
Machine Co., 96 Civ. 4920 (PKL) , 1998 U.S. Dist. LEXIS 10977, at *4 (S.D.N.Y.
July 20, 1998».) To date, no replacement counsel has appeared in this
action on behalf of 101. On April 30, 2012, this Court issued an order
directing each of plaintiff and Goldtone - which has a cross-claim against
101 - to move for default judgment against 101 within 14 days or face
dismissal of its claim(s) against 101 for failure to prosecute.
(Docket No.
60. )
the "Moving Defendants").
The alleged infringement relates to
12 songs on four albums ("the songs!!) that plaintiff claims
Michael Dowell! a respected recording artist! wrote and
performed while under an exclusive recording agreement with
plaintiff.
(Am. Compl.
~~
13-23.)
Plaintiff has copyright
registrations for the lyrics of the Songs.
35! Ex. A.)
(See! e.g.! id. ~
Plaintiff claims that! without authorization,
defendants collectively used, produced! distributed and sold the
Songs in violation of plaintiff's exclusive rights and were
unjustly enriched as a result of such conduct.
Id. ~~ 18, 41,
70-76. )
The Moving Defendants have now moved for summary judgment
on all of plaintiffs! claimsi 3 plaintiff has crossed-moved for
partial summary judgment on Moving Defendants! liability for
copyright infringement.
For the reasons set forth below, both
motions are GRANTED in part and DENIED in part.
STATEMENT OF FACTS
Michael Hentosh owns Affiliated (Defs.' Opposing Stmt. of
Material Facts ("OSMF") ~ 1) and is plaintiff's primary witness
In their motion papers, Moving Defendants indicate that they are moving for
summary judgment against the entirety of plaintiff's amended complaint (~,
Defs.' Mem. at 9) but do not make any particular arguments related to
plaintiffs' Counts V (for unjust enrichment) and VI (for an accounting). The
Court has assumed, however, that Moving Defendants intended their motion and
arguments to apply to those counts as well. On April 30, 2012, the Court
issued an order notifying the parties of that assumption and giving plaintiff
an opportunity, on or before May 4, 2012, to make additional arguments
opposing summary judgment on those counts.
(Docket No. 60.)
Plaintiff chose
not to take advantage of that opportunity.
2
regarding the events at issue in this lawsuit.
Moving
Defendants do not dispute that plaintiff had an exclusive
recording agreement with Michael Dowell (p/k/a/ Cyssero) during
the time period at issue in this action.
also Hentosh Aff. Ex. A.
(See id. ~~ 2, 4i see
(indicating that the term of that
agreement was from March 2004 to March 2006).)
Moving
Defendants also do not dispute that, pursuant to plaintiff's
recording agreement with Dowell, it possessed certain rights,
titles and interests in the copyright to any song composed by
Dowell and the exclusive right to record and to distribute
commercially any musical composition created by Dowell.
~
(OSMF
3.)
Sometime during the period between March 2004 and March
2006, twelve songs were created: "Old Gunz," "It's On," "Lyrical
Exercise Part II," "Stay Strapped," "Don't Cha"
album "Ghost Unit"),
"Poison Bananas," "Why You Smell Like Dat,"
and "Lyrical Exercise"
is"),
"AM to PM"
(included on the
(included on the album "You Know What it
(included on the album "Stop Snitchin Stop
Lying"), and "Hustla," "I'm a Rider," "Fire in Ya Eyes"
(included on the album "The Black Wall Street Journal, Volume
1").
{See id. ~~ 7-8; Am. Compl. ~ 20-24
album).)
(listing the Songs by
Plaintiff asserts that Dowell wrote the lyrics to each
of the Songs (PI.'s 56.1 Stmt. ~ 8), but Moving Defendants point
to testimony by Hentosh, owner of Affiliated, that he does not
3
know whether Dowell wrote all of the lyrics for each of the
Songs (OSMF
~
8) and whether Taylor wrote any of the lyrics
(id. ) .
Without citation to any admissible evidence, plaintiff
asserts that defendants Taylor, Czar and BWS produced,
distributed and sold the Songs through various third-party
retailers for commercial gain.
(See PI.'s 56.1 Stmt. ~~ 13-14.)
Moving Defendants deny that assertion and point to, inter alia,
testimony from Hentosh conceding that he had no evidence that
Taylor and Czar had distributed the Songs.
(OSMF ~~ 13-14.)
At
his deposition, Hentosh also testified that he had encouraged
distribution of the albums for promotional purposes.
(Defs. '
Mem. at 6j Jekielek Declo Ex. A (\\Hentosh Dep.lI) 75:2-76:3,
57:6-59:2j see also Hentosh Aff. ~~ 33-34.)
In addition,
Hentosh testified that he did not know of any evidence that
Taylor, Czar or BWS had received any money from the commercial
distribution or sale of the Songs.
(cited at Defs.' Mem. at 5).)
(Hentosh Dep. 37:7-39:5
Taylor also testified that he did
not distribute, sell or receive income from the commercial
exploitation of the Songs and did not authorize any third party
to distribute the Songs on his behalf.
(Defs.'56.1 Stmt.
~~
4-5
(citing Taylor Dep. 27:4-6, 34:25-35:3, 35:20-22, 41:7-42:3).)
In an attempt to counteract Hentosh's and Taylor's
deposition testimony, plaintiff now submits an affidavit of
4
Hentosh, attaching screen shots from third-party websites that
purportedly show the Songs offered for sale.
Richard Hentosh
~
22, Exs. B, G.)
See Aff. of
Moving Defendants object that
such screen shots are not authenticated and, thus, are
inadmissible.
(See Reply Decl'n of Mark A. Samuel ~~ 6-7, 9.)
Moving Defendants do not, however, object to the
admissibility of the evidence plaintiff puts forth with respect
to defendant Goldtone.
To the contrary, Moving Defendants admit
that Goldtone manufactured three of the four albums (not uBlack
Wall Street, Volume I") in question and delivered them to 101
for distribution.
(OSMF ~ 37; PI.'s 56.1 ~ 37 (citing Jekielek
Decl. Ex. C (ftEvans Dep.") 30:14-24); see also Evans Dep. 30:9
13.)
They also admit that Goldtone and 101 entered two
distribution agreements with respect to the three albums, under
which 101 agreed to pay Goldtone a fee for each compact disc
sold.
(Id. ~~ 38-39.)
They further concede that Goldtone
actually received money Uas a direct result of the saleH of
those albums.
Id. ~~ 43-44: Defs.' Mem. at 6.)
At his
deposition, Damon Evans, the Executive Director of 101,
testified that Goldtone never gave 101 to sell, and 101 never
paid Goldtone for, any other albums.
also Defs.' Mem. at 8.)
5
(Evans Dep. 39:14-24; see
STANDARD OF REVIEW
Summary judgment is proper only "if the evidence, viewed in
the light most favorable to the party against whom it is
entered, demonstrates that there are no genuine issues of
material fact and that the judgment [is] warranted as a matter
of law.
II
Barkley v. Penn Yan Central School Dist., 442 Fed.
Appx. 581, 581 (2011)
(internal quotation marks omitted) .
"Although the burden is upon the moving party to demonstrate
that no genuine issue respecting any material fact exists, the
non-moving party nonetheless must come forward with specific
facts showing that there is a genuine issue of material fact for
trial."
Id.
(internal citation and quotation marks omitted) i
accord Caracciola v. City of New York, No 95 Civ. 3896 (CSH) ,
1999 WL 144481, at *3 (S.D.N.Y. Mar. 17, 1999)
("the non-movant
must offer 'concrete evidence from which a reasonable juror
could return a verdict in his favor'lI
(quoting Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 256 (1986))).
In order to defeat a properly supported motion, any
evidence proffered by the non-movant must be admissible.
Major
League Baseball Prop., Inc. v. Salvino, Inc., 542 F.3d 290, 310
(2d Cir. 2008).
It is well-settled that conclusory, speculative
or self-serving assertions, set forth without admissible
evidentiary support, are insufficient to create a genuine issue
of fact.
See, e.g., Barkley, 442 Fed. Appx. at 581, 585;
6
Clayborne v. OCE Bus. Servs., 381 Fed. Appx. 32, 34 (2d Cir.
2010); savitsky v. Mazzella, 210 Fed. Appx. 71, 73 (2d Cir.
2006).
Similarly, "a party may not create an issue of fact by
submitting an affidavit in opposition to a summary judgment
motion that, by omission or addition, contradicts the affiant's
previous deposition testimony."
Hayes v. New York City Dep't of
Corrs., 84 F.3d 614, 619 (2d Cir. 2010); accord Clayborne, 381
Fed. Appx. at 35.
RELEVANT PRINCIPLES OF COPYRIGHT LAW
To prove copyright infringement, a plaintiff must first
demonstrate ownerShip of a valid copyright in the allegedly
infringed work.
~,Island
Software and Computer Serv., Inc.
v. Microsoft Corp., 413 F.3d 257, 260 (2d Cir. 2005).
Plaintiff
must then prove that the defendants "copied" the work without
permission.
1992).
~,Rogers
v. Koons, 960 F.2d 301, 306 (2d Cir.
The term "copy" has a broad meaning, defined by the
Copyright Act and case law to include violation of any of the
exclusive rights in the bundle conferred on the copyright
holder.
~,17
U.S.C.
Serv., 413 F.3d at 260.
§
SOli Island Software and Computer
The bundle of exclusive rights includes
the rights to make reproductions (what most people refer to
colloquially as "copying") i to prepare derivative works; to
distribute copies by sale, other transfer of ownership or by
7
rental lease or lending; and to perform or display the copyright
work publicly.
See 17 U.S.C.
§
106.
Consent is a defense to copyright infringement.
See, e.g.,
Love v. Kwitney, 706 F. Supp. 1123, 1131 (S.D.N.Y. 1989).
consent may be express or
~'implied
Such
from long acquiescence with
knowledge of the infringement'" and will estop a plaintiff from
pursuing an infringement claim.
Id.
{quoting Wiegand Co. v. E.
Trent Co., 122 F.2d 920, 925 (3d Cir. 1941)).
In this case, it is undisputed that plaintiff has a valid
copyright in the Songs.
(OSMF ~~ 16-19.)
Rather, the
infringement dispute is over plaintiff's "copying" allegations
that defendants are engaged in continued and unauthorized
distribution and sale of the Songs.
(Am. Compl. at ~~ 18, 41.)
As to defendants Taylor, Czar and BWS, the Court finds that
plaintiff has failed to raise a genuine issue of material fact
to support such allegations in the face of defendants' motion.
As to defendant Goldtone, the Court finds the opposite, except
with regard to the "Black Wall Street, Volume I" album.
DISCUSSION
Alleged Copyright Infringement by Taylor, Czar and BWS
Plaintiff is unable to create a triable issue of fact as to
an unlawful act of "copyingtl by Moving Defendants Taylor, Czar
and BWS.
At his deposition, Hentosh, the owner of Affiliated,
candidly testified that he had no evidence that Taylor and Czar
8
had distributed the Songs and that he did not know of any
evidence that Taylor, BWS or Czar had received any money from
the sale or commercial exploitation of the Songs.
14; Hentosh Dep. 36:13-39:5.)
(OSMF ~~ 13
Taylor confirmed that he did not
distribute, sell, collect income from, or authorize any third
party to distribute, the Songs on his behalf (Defs.'56.1 Stmt.
~~
4-5 (citing "Taylor Dep." 27:4-6, 34:25-35:3, 35:20-22, 41:7
42:3)).
Yet, in opposition to Moving Defendants' motion,
Hentosh affirms that "[t]he Songs were being sold from 2005
through the commencement of this litigation and are even being
sold by some of the Defendants today."
(Hentosh Aff. at ~ 23.)
He also attaches to his affidavit unauthenticated copies of
screen shots (some obtained through an Internet archival site),
purporting to show that the Songs were offered for sale by
various third-party retailers.
Id. Exs. B, G.)
Neither the unauthenticated screen shots nor Hentosh's
affidavit, however, is competent evidence to create a triable
issue of fact with respect to Taylor, Czar or BWS's alleged
commercial distribution.
See Barkley, 442 Fed. Appx. at 581,
585; Hayes, 84 F.3d at 619; Clayborne, 381 Fed Appx. at 73;
Salvino, 542 F.3d at 310.
Plaintiff has also failed to raise a triable issue of fact
with respect to any claim for non-commercial distribution
against those defendants.
In addition to the evidence - and
9
inadmissible counter-evidence - just recited, Hentosh also
testified that he had encouraged free distribution of the albums
for promotional purposes.
(See Hentosh Dep. 75:2-12 ("When I
first heard about these albums, I promoted them as strictly mix
tapes that the Game was putting out that featured my artist.
. I was telling [people] to download [the albums]
for free
because that/s what mixes tapes [sic] officially were.")
76:3; see also id. 57:6-59:2.)
I
75:16
SimilarlYI in his affidavit,
Hentosh states that he "was informed that the recordings were to
be for promotional purposes onlyll and that "[t]he benefit teo]
Affiliated of allowing the limited scope of promotion and use of
the Songs is clear . . . Cyssero's association with Taylor and
BWS would help [him].11
added).)
(Hentosh Aff.
At his deposition
l
~~
33-34 (emphasis
Hentosh also testified that upon
hearing the Songs on the Internet, he did not send any cease
and-desist letters to third-parties.
(Defs.' Mem. at 6; Hentosh
Dep. 47:9-48:16; see also PI.'s Opposing Stmt. Material Facts
~ 3.)
Such evidence establishes that plaintiff acquiesced or
implicitly (at least) consented to any free distribution by
defendants.
See Love, 706 F. Supp. at 1131.
Accordingly, plaintiff has failed to raise a triable issue
of fact with respect to its claim for copyright infringement
against Taylor, Czar and BWS.
10
Alleged Copyright Infringement by Goldtone
As set forth in the statement of facts above, Moving
Defendants do not dispute that Goldtone arranged for 101 to
distribute the "Ghost Unit," "You Know What It Is" and "Stop
Snitchin Stop Lying" albums and then profited from their
distribution.
(OSMF ~~ 37-44; Defs.' Mem. at 6; see also
Jekielek Aff. Exs. E, F.)
Such admissions, alone, entitle
plaintiff to judgment on its copyright infringement claim
against Goldtone with respect to those albums.
106(3).
See 17 U.S.C.
§
To the extent that Moving Defendants purport to argue
that plaintiff acquiesced to Goldtone's sale of the Songs
through 101, the Court is not convinced.
See Defs.' Mem. at 6
7.) Hentosh's testimony is clearly limited to distribution for
promotional purposes, not exploitation for commercial gain.
(See Hentosh Dep. 75:2-76:3; Hentosh Aff.
~,
33-34.)
Plaintiff has failed to create a genuine issue of material
fact, however, with regard to Goldtone's alleged infringement of
the copyrights associated with the "Black Wall Street, Volume I"
album.
Moving Defendants have put forth uncontroverted,
competent evidence that Goldtone never provided that album to
101 for distribution and, in turn, never received payment
11
therefor from 101.
(Defs.' Mem. at 8 (citing Evans Dep. at
39:14-24).)
Accordingly, with respect to Goldtone's alleged "copying,1I
plaintiff's motion is granted as to the "Ghost Unit," "You Know
What It Is" and "Stop Snitchin Stop Lying" albums, but Moving
Defendants' motion is granted as to the "Black Wall Street,
Volume 111 album.
Alleged Unjust Enrichment
All Moving Defendants prevail with respect to Count V,
despite there being ample evidence that defendant Goldtone
commercially distributed three of the four albums in question.
The Court sua sponte dismisses that count for a reason unrelated
to its merits,4 namely it is preempted by the Copyright Act.
In Section 301, Congress laid out a test for determining
when the Copyright Act exclusively governs a claim:
(1) when the
work is of the type protected by Section 102 or 103i and (2)
when the claim "seeks to vindicate (a] legal or equitable right
that (is] equivalent" to one of the exclusive rights protected
by Section 106.
See 17 U.S.C.
§
301(a)
i
Briarpatch Ltd. v.
Phoenix Pictures, Inc., 373 F.3d 296, 305-06 (2d Cir. 2004).
Here, there is no question that the lyrics in the Songs
4 If the Court were to consider the merits, it would also grant Moving
Defendants' motion with respect to defendants Taylor, Czar and BWS because
plaintiff's unjust enrichment claim is based on commercial exploitation of
the copyrighted materials. As set forth above, plaintiff has failed to
establish such commercial distribution with respect to those defendants.
12
constitute copyrightable subject matter under Section 102 of the
Act.
See 17 U.S.C.
§
102(a) (2).
Additionally, plaintiff's
unjust enrichment claim, like its copyright claim, seeks to
vindicate plaintiff's exclusive right to distribute the Songs
for sale.
76).
See 17 U.S.C.
§
106(3)i
(see also Am. Compl. ~~ 70
It is well-settled that the extra element of "enrichment"
does not make that claim qualitatively different from a
copyright infringement claim.
305-07 (2d Cir. 2004)
See Briarpatch Ltd., 373 F.3d at
(finding the Copyright Act to preempt an
unjust enrichment claim).
Thus, the Copyright Act exclusively
governs plaintiff's allegations, and Count V is dismissed.
Accounting Claim
All Moving Defendants also prevail with regard to Count VI.
That count requires plaintiff to establish commercial gain by
the Moving Defendants.
As set forth above, plaintiff has failed
to create a triable issue of fact that Taylor, Czar or BWS has
sold, or even offered for sale, the Songs in question.
Accordingly, those defendants' motion is granted with respect to
Count VI.
Moving Defendants' motion is also granted as to Goldtone.
To the extent that plaintiff seeks an accounting of profits
attributable to defendant Goldtone's infringement, such relief
is properly pursued as a remedy, not a separate claim, under the
Copyright Act.
See 17 U.S.C.
§
504(b) i
13
(see also Am. Compl.
Request for Relief V, VIII}.
Additionally, to the extent that
plaintiff seeks an accounting of profits under New York state
law, the Court sua sponte dismisses that claim as the record is
devoid of any evidence that plaintiff and defendant Goldtone had
a confidential or fiduciary relationship (nor does plaintiff
allege as much in its complaint
see Am. Compl. "
77-80)}.
See, e.g., Gersten-Hillman Agency, Inc. v. Heyman, 68 A.D.3d
1284, 1286 (3d Dep't 2009)
("It is well settled that an
equitable action for an accounting will not lie in the absence
of a fiduciary relationship between the parties.") i Simons v.
Ross, 765 N.Y.S.2d 859, 860 (1st Dep't 2003)
("In the absence of
an existing partnership or other fiduciary relationship,
plaintiff was not entitled to an equitable accounting.,,).5
CONCLUSION
For the reasons set forth above, both Moving Defendants'
motion and plaintiff's partial cross-motion are GRANTED in part
and DENIED in part.
This action shall now continue to a
remedies-phase regarding defendant Goldtone's unlawful
infringement of plaintiff's copyrights associated with the
5 As set forth,
supra, in footnote 3, the Court has notified plaintiff that it
has construed Moving Defendants' motion to apply to plaintiff's Counts V and
VI and has given plaintiff an opportunity to make any additional arguments
opposing summary judgment on those counts.
(Docket No. 60.) While the Court
did not specifically notify plaintiff about the bases on which it now
dismisses Counts V and VI (id.), plaintiff had ample opportunity to put forth
any evidence, or make any arguments, it wished in opposition to summary
judgment on such counts and chose not to do so, see, e.g., Webadviso v. Bank
of America Corp., 448 F. Appx. 95, 96 (2d Cir. 2011).
14
"Ghost Unit," "You Know What It Is" and "Stop Snitchin Stop
Lying" albums.
Plaintiff shall submit a letter the Court on or before May
21, 2012, setting forth which copyright remedy - actual damages
and lost profits or statutory damages - it elects to pursue
against defendant Goldtone.
The Clerk of the Court is directed to terminate the motion
at Docket Number 44 and to terminate defendants Taylor, Czar and
BWS from this action.
So ORDERED
Dated:
New York, New York
May l!:ll 2012
KATHERINE B. FORREST
United States District Judge
15
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