Beastie Boys et al v. Monster Energy Corporation
Filing
51
OPINION & ORDER re: 36 MOTION for Summary Judgment. filed by Zack Sciacca. Third-party defendant Sciaccas motion for summary judgment is granted. The Clerk of Court is respectfully directed to dismiss him from this case and to terminate the motion pending at docket number 36. (Signed by Judge Paul A. Engelmayer on 11/4/2013) (djc)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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BEASTIE BOYS, et al.,
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Plaintiffs,
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-v:
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MONSTER ENERGY COMPANY,
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Defendant.
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12 Civ. 6065 (PAE)
OPINION & ORDER
PAUL A. ENGELMAYER, District Judge:
This case involves claims by the Beastie Boys, the hip-hop group, against Monster
Energy Company (“Monster”), the energy-drink company. Specifically, the Beastie Boys, along
with affiliated plaintiffs,1 bring claims of copyright infringement and of violations of the Lanham
Act, 15 U.S.C. § 1051 et seq., and the New York Civil Rights Law (NYCRL) § 51, arising out of
Monster’s allegedly unauthorized publication of a promotional video that used as its soundtrack
a remix including songs originally composed and recorded by the Beastie Boys.
At issue presently is a third-party Complaint which Monster, after it was sued by the
Beastie Boys, brought against Zach Sciacca, a/k/a “Z-Trip,” the disk jockey (“DJ”) who, with the
Beastie Boys’ permission, originally made the remix. Z-Trip furnished the remix to Monster.
Monster’s Complaint alleges that Z-Trip authorized Monster to make unrestricted use of the
remix, including the Beastie Boys’ original compositions and recordings contained in it, in its
promotional video. Monster sues Z-Trip for breach of contract and also for fraud, the latter
1
The Beastie Boys are a New York partnership. The other plaintiffs are Michael Diamond, a
Beastie Boys member known as “Mike D”; Adam Horovitz, a Beastie Boys member known as
“Ad-Rock”; Dechen Yauch, Executor of the Estate of Adam Yauch, a late Beastie Boys member
known as “MCA”; and Brooklyn Dust Music, an entity through which the Beastie Boys did
business. The Court refers to the plaintiffs collectively as the “Beastie Boys.”
based on the claim that Z-Trip falsely represented to a Monster employee that he had authority to
permit Monster to use the remix for its own purposes.
Discovery is now complete. Z-Trip moves for summary judgment on Monster’s claims
against him. For the reasons that follow, the Court grants his motion for summary judgment, and
dismisses Monster’s third-party complaint.
I.
Background
A. The Beastie Boys’ Claims against Monster2
The Beastie Boys are a famous hip-hop group “from the family tree of old school hip-
hop.” Beastie Boys, InterGalactic (Capitol Records 1998); see also Z-Trip Aff. ¶ 7; Levy Aff.
2
The Court’s account of the facts is derived from the parties’ submissions in support of and in
opposition to the instant motions, including the parties’ respective Local Rule 56.1 Statements
(Dkt. 38 (“Z-Trip. 56.1”) and Dkt. 47 (“Monster 56.1”)); the Affidavit of Zach Sciacca, a/k/a ZTrip (Dkt. 36) (“Z-Trip Aff.”); the Affidavit of Stuart L. Levy (Dkt. 36) (“Levy Aff.”) and the
exhibits attached thereto, including Exhibit A (“the Agreement”), Exhibit C (“the Video”),
Exhibit D (“Phillips Dep.”), and Exhibit I (“Silva Dep.”); the Affidavit of Nelson Phillips (Dkt.
46) (“Phillips Aff.”); and the Affidavit of Tanya C. Pohl (Dkt. 45) (“Pohl Aff.”) and the exhibits
attached thereto, including Exhibit D (“Z-Trip Dep.”). Citations to a party’s 56.1 Statement
incorporate by reference the documents cited therein. Where facts stated in a party’s 56.1
Statement are supported by testimonial or documentary evidence, and denied by a conclusory
statement by the other party without citation to conflicting testimonial or documentary evidence,
the Court finds such facts to be true. See S.D.N.Y. Local Rule 56.1(c) (“Each numbered
paragraph in the statement of material facts set forth in the statement required to be served by the
moving party will be deemed to be admitted for purposes of the motion unless specifically
controverted by a correspondingly numbered paragraph in the statement required to be served by
the opposing party.”); id. at 56.1(d) (“Each statement by the movant or opponent . . .
controverting any statement of material fact[ ] must be followed by citation to evidence which
would be admissible, set forth as required by Fed. R. Civ. P. 56(c).”).
The following abbreviations are used herein for the parties’ memoranda of law: (1) Third-Party
Defendant’s Motion for Summary Judgment (Dkt. 36) (“Z-Trip Br.”); (2) Memorandum of Law
of Plaintiffs in Support of the Third-Party Defendant’s Motion for Summary Judgment (Dkt. 39)
(“Beastie Br.”); (3) Opposition to Third Party Defendant Zach Sciacca’s Motion for Summary
Judgment Dismissing the Third-Party Complaint (Dkt. 44) (“Monster Br.”); and (4) Reply in
Further Support of Third-Party Defendant’s Motion for Summary Judgment (Dkt. 50) (“Z-Trip
Reply Br.”).
2
Ex. J. Monster is the maker of the eponymous “Monster” energy drinks. Monster 56.1 ¶ 44;
Philips Aff. ¶ 2.
The Beastie Boys’ claims against Monster arise out of events in 2012. As part of its
marketing efforts, Monster organizes and sponsors an annual snowboarding competition in
Canada called “Ruckus in the Rockies.” Phillips Aff. ¶¶ 3, 5. The competition “promote[s] the
Monster lifestyle and brand.” Id. ¶ 5. The 2012 event included an after-party, at which various
DJs, including Z-Trip, performed. Z-Trip Aff. ¶ 15.
On May 9, 2012, Monster posted a promotional video (the “Video”) recapping that year’s
Ruckus in the Rockies, featuring the competition and the after-party, on its YouTube channel.
Phillips Aff. ¶ 20. The Video used as its soundtrack excerpts from a remix of Beastie Boys
songs (the “Megamix”) which had been created by Z-Trip. Z-Trip 56.1 ¶ 28; Monster 56.1 ¶ 28.
Z-Trip had previously created the Megamix, and posted it on his (Z-Trip’s) website, with the
Beastie Boys’ permission. The excerpt of the Megamix which Monster included in its Video
included portions of four Beastie Boys songs: “So Watcha Want,” “Sabotage,” “Looking Down
the Barrel of a Gun,” and “Make Some Noise.” Z-Trip 56.1 ¶ 28; Monster 56.1 ¶ 28.3 The
credits on Monster’s Video read, in pertinent part:
MUSIC
ALL-ACCESS BEASTIE BOYS MEGA MIX
COURTESY OF Z-TRIP
DOWNLOAD THE LINK FOR FREE AT
ZTRIP.BANDCAMP.COM
3
The promotional video may have also included a fifth Beastie Boys song, “Pass the Mic.” The
Beastie Boys state that, after filing the Complaint, they realized that the Video also included
excerpts of “Pass the Mic.” Beastie Br. 1 n.1. For clarity’s sake, this opinion refers to only the
four songs, without prejudice to the Beastie Boys’ right to pursue claims that its rights relating to
“Pass the Mic” were also infringed.
3
Video at 3:52. The next screen of the credits read, “RIP MCA.” Id. at 3:54. MCA was the stage
name of Beastie Boys member Adam Yauch, who died on May 4, 2012, after a three-year battle
with cancer.
It is undisputed that Monster never contacted the Beastie Boys, their management, or any
agent or representative to obtain permission to use the Beastie Boys’ music compositions, sound
recordings, or marks in the Video. Z-Trip 56.1 ¶ 40; Monster 56.1 ¶ 40; Phillips Dep. 185.
On June 13, 2012, Monster received a letter from counsel for the Beastie Boys, stating
that Monster did not have permission to use Z-Trip’s Megamix in the Video, presumably
because Monster lacked permission to use the underlying Beastie Boys music. Monster Br. 5,
Phillips Aff. ¶ 21. Monster thereupon removed the Video from its YouTube channel, and edited
the Video, replacing the Megamix excerpts with music from the band Swollen Members.
Phillips Aff. ¶¶ 22–23.
B. Procedural Background
On August 8, 2012, the Beastie Boys sued Monster. Dkt. 1. The Complaint alleges that
the Beastie Boys partnership co-owns the copyrights to the sound recordings of the four Beastie
Boys songs used in the Video and that plaintiff Brooklyn Dust Music co-owns the copyrights to
the musical compositions of those four songs; Compl. ¶¶ 12–19.; and that Brooklyn Dust Music
and the Beastie Boys partnership co-own the copyrights to other Beastie Boys songs used in the
Megamix. Id. ¶¶ 22–56.
The Complaint alleges that Monster, all without the Beastie Boys’ consent,
“synchronized and recorded” certain Beastie Boys songs and included them in the Video; that
Monster thereby sought to and did associate its products with the Beastie Boys’ original work;
that the Video text for the same purpose referenced the names “Beastie Boys” and “Adam
4
Yauch”; and that Monster posted links to the Megamix and the Video on various websites, so as
to advertise and promote Monster’s products, events, and corporate goodwill. Id. ¶¶ 58–68.
The Complaint asserts nine claims for copyright infringement, one claim for violation of
the Lanham Act, and one claim for violation of New York Civil Rights Law § 51. The copyright
claims consist of two for each of the four Beastie Boys songs used in the Video: one for
infringement of the Beastie Boys partnership’s sound recording copyright and one for
infringement of Brooklyn Dust’s musical work copyright. Compl. ¶¶ 70–100. Each of these
eight claims alleges an “unauthorized reproduction, preparation of a derivative work . . .
distribution to the public . . . and public performance” that was “intentional and willful.” Compl.
¶¶ 70–100. The ninth copyright claim asserts multiple copyright infringements arising from
Monster’s posting of the Megamix on multiple websites. Id. ¶¶ 101–108. The Lanham Act
claim alleges that Monster made unauthorized use of the mark “Beastie Boys” and “the marks
comprised of the legal and professional names” of the individual Beastie Boys. Id. ¶¶ 109–117.
The New York Civil Rights Law claim alleges that Monster made unauthorized use of the voices
of Mike D. and Ad-Rock in connection with its advertising. Id. ¶¶ 118–122.
On October 4, 2012, Monster answered. Dkt. 5. Overwhelmingly, Monster’s Answer
denied the Complaint’s factual allegations or denied knowledge sufficient to enable it to form a
belief as to the truth of those allegations. Answer ¶¶ 1–122. Monster raised 12 affirmative
defenses. Relevant here, several sought to deflect responsibility for any copyright infringement
to Z-Trip, the disk jockey who had made the Megamix. In this vein, the Answer stated that any
injury to the plaintiffs was due to Z-Trip’s negligence, fraud or breach of contract; that Monster
reasonably relied on Z-Trip’s apparent authority as an agent for the Beastie Boys; and that
Monster had received a license or permission, presumably from Z-Trip, to use the Beastie Boys’
5
music. Id. at 13. Monster also raised the defense of a failure to join a necessary party, again
presumably Z-Trip. Id. at 12.4
On October 5, 2012, Monster brought a third-party Complaint against Z-Trip. It alleged
that Z-Trip had caused any damage to plaintiffs for which Monster might be found liable, by
contracting with Monster to allow it to make unrestricted use of the Megamix, and/or by
fraudulently leading Monster to believe that he had authority to license Monster to use for its
own purposes the Beastie Boys’ recordings on the Megamix. Dkt. 9. Monster based these
claims on a brief set of interactions, during Ruckus in the Rockies, between Nelson Phillips, a
Monster employee, and Z-Trip. As relief, Monster sought, from Z-Trip, indemnification,
compensatory and punitive damages, costs, and fees.
C. Z-Trip’s Motion for Summary Judgment
On August 1, 2013, following discovery, Z-Trip moved for summary judgment against
Monster’s Complaint. Dkt. 36–38. (Neither the Beastie Boys nor Monster moved for summary
judgment on the Beastie Boys’ claims against Monster; Monster did not move for summary
judgment on its third-party claims against Z-Trip.)
In his motion, Z-Trip argues that, as a matter of law, he cannot have entered into a
contract with Monster authorizing Monster to make the use it did of the Beastie Boys recordings
on his Megamix, because (1) he lacked apparent authority to issue a license for the Beastie Boys’
music and (2) his perfunctory exchanges with Phillips cannot be read to reflect agreement on
material terms of such a license. As to Monster’s fraud claim, Z-Trip argues that summary
4
Monster’s other affirmative defenses were: lack of standing; lack of subject matter jurisdiction;
failure to state a claim; preemption of the Lanham Act and state law claims; good faith; that the
Beastie Boys could not recover for Monster’s distribution of the Megamix “because there cannot
be contributory infringement where there is no underlying direct infringement”; that statutory
damages, if any, are limited to once for each work; and that damages, if any, are limited to once
for each compilation in which the works are included. Id. at 12–14.
6
judgment must be granted in his favor, because, inter alia, a reasonable person could not have
believed that he had the authority to license the Beastie Boys’ music for use by Monster.
On August 1, 2013, the Beastie Boys filed a memorandum in support of Z-Trip’s motion.
Dkt. 39. On August 22, 2013, Monster filed its opposition, Dkt. 40–43, with an exhibit redacted
pursuant to a confidentiality order. On August 27, 2013, after obtaining the Beastie Boys’
consent, Dkt. 48, Monster filed unredacted opposition papers. Dkt. 43–47. On September 9,
2013, Z-Trip filed a reply. Dkt. 49–50.
D. Facts Relevant to the Motion for Summary Judgment
The following facts relevant to Z-Trip’s motion for summary judgment have been
adduced in discovery.
Zach Sciacca, who performs under the name Z-Trip, is “well-known and one of the best
remix DJs.” Phillips Aff. ¶ 7. In 2009, the Beastie Boys asked Z-Trip to create a remix of
Beastie Boys’ songs that fans could download for free to promote the Beastie Boys’ thenupcoming album, “Hot Sauce Committee Part II.” Z-Trip 56.1 ¶ 9; Z-Trip Aff. ¶ 10; Beastie Br.
2. In April 2011, Z-Trip released the 23-minute long “Megamix” on his website. Z-Trip 56.1 ¶
10; Z-Trip Aff. ¶ 11. The Megamix consists of more than a dozen Beastie Boys’ songs. Monster
Br. 4.
Nelson Phillips is director of marketing for Monster’s Canadian business unit. Phillips
Aff. ¶ 1. He is responsible for planning Ruckus in the Rockies. Id. ¶ 3. Phillips completed one
semester of college and worked in the forestry and ski industries before joining Monster.
Phillips Dep. 7–9.
In February 2012, Phillips decided to book Z-Trip for that year’s after-party. Phillips
Aff. ¶ 7. On February 28, 2012, Z-Trip contracted with Monster to DJ the after-party for
7
$15,000 plus accommodations and transportation. Z-Trip 56.1 ¶ 15; Z-Trip Aff. ¶¶ 13–14;
Agreement at 1.
On May 5, 2012, Ruckus in the Rockies was held. Phillips Aff. ¶ 9. Snowboarders
competed. Id. Z-Trip and other DJs performed. Z-Trip Aff. ¶ 15. Monster videotaped the
event, including Z-Trip’s performance. Z-Trip 56.1 ¶ 17; Z-Trip Aff. ¶ 19.
That night, before Z-Trip’s performance, Z-Trip and Phillips had a brief conversation in
the green room of the Lake Louise Lodge. Z-Trip Aff. ¶ 18; Phillips Aff. ¶ 11. Phillips testified
that the conversation lasted between four and five minutes, mostly devoted to the possibility of
collaboration on future projects, but also with a 30-second segment related to the Megamix.
Phillips Aff. ¶ 11. Phillips testified that he “asked Mr. Sciacca [Z-Trip] if he had any music that
Monster could use for a web edit of the Ruckus in the Rockies event. Mr. Sciacca told me yes.
He indicated that he had made a Megamix that was available on his website and it could be
downloaded for free.” Id.; see also Phillips Dep. 206 (“Q. How brief was the – how long is
‘brief’? A. As simple as what I told you. I asked him if he had any music that we could use.
He said there it is on my website, download it. Q. So we’re talking about 30 seconds? A. Ish,
yes.”).5
On either May 6 or May 7, 2012, Z-Trip and Phillips had breakfast together. Z-Trip Aff.
¶ 22; Phillips Aff. ¶ 12. They spent most of the time discussing future collaborations. Phillips
Aff. ¶ 12; Z-Trip Aff. ¶ 23. They also briefly discussed the Video. Phillips testified that the
conversation related to the Megamix: “I had a follow up conversation with Mr. Sciacca regarding
5
Z-Trip’s recollection is different. He testified that the conversation occurred moments before
Z-Trip went on stage, lasted only 30 seconds, and consisted entirely of his complaining to
Phillips that certain drinks that were supposed to be in the green room were not there. Z-Trip
Aff. ¶ 28. On Z-Trip’s motion for summary judgment, the Court considers the facts in the light
most favorable to Monster, i.e., the facts to which Phillips attested.
8
the use of his Megamix for the Video. I told Mr. Sciacca that I would send him the Video after
the first edit was complete. I also told him that we would not publish the Video until he was
completely satisfied with it and approved it. Mr. Sciacca indicated his agreement.” Phillips Aff.
¶ 12.6
After the breakfast, Phillips went to Z-Trip’s website and listened to the Megamix.
Phillips Aff. ¶ 13. Phillips testified that, based on Z-Trip’s having directed him to his website
and Z-Trip’s representation that the Megamix was available for free, Phillips “believed that Mr.
Sciacca had given me permission to use his Megamix as part of the soundtrack for the Video.”
Id. ¶ 14. On that understanding, Phillips and the videographer then selected the portions of the
Megamix to use in the video. Id. ¶ 15. Phillips testified that he did not believe he needed
anyone else’s approval to license the music on the Megamix for Monster’s promotional Video,
“[b]ecause Mr. Sciacca, who held himself out to be the creator of the Megamix, represented that
it was permissible for me to use his Megamix.” Id. ¶ 16. Indeed, Phillips testified, his view was
that, because Z-Trip’s remix was “available for free download on his website . . . it’s there for
use. For free.” Phillips Dep. at 181, 183. See also id. at 183–184 (“Q. For any use. By
anybody. A. Yes. Q. Whether it’s your home video or a video promoting Monster products.
A. Yes.”).
On May 8, 2012, at 11:47 p.m., Phillips sent Z-Trip the following email:
6
In his testimony, Z-Trip, who maintains that the act of recording his DJ performance on video
violated his contract with Monster, Z-Trip Aff. ¶ 20, Agreement ¶ 8, portrayed that conversation
as focused on this subject, not the use of the Megamix: “[T]he issue of the unauthorized
videotaping was briefly discussed. [Phillips] stated that his cameraman had captured good
footage of the concert and that I would like what was being prepared from the footage. He
promised to send me a tape for review. At that time I had no clue as to what he was planning on
sending me, but I told him to send whatever he wanted.” Z-Trip Aff. ¶¶ 22–23.
9
Hey Zach,
Please have a look at the video from this past weekend and let me know if you approve.
(I think we’ll remove the logo[]s at the end since they’re redundant and the rest will get
cleaned up just a little bit more.)
Thanks again for an amazing weekend!!
Once you approve, we’ll post on youtube and notify our 16M fans on fb [Facebook].
the password is: ruckus
http://vimeo.com/41825355
Levy Aff. Ex. B. On May 9, 2012, at 3:50 a.m., Z-Trip replied:
Dope!
Maybe at the end when you put up the info about my Beasties mix, you could post below
it “Download the mix for free at http://ztrip.bandcamp.com”
That way people can pause it and go get it if they want… Also maybe a proper link on
the description they can click thru once it’s posted proper?
Dope though… Love the can at the end.
No 45 footage?
And, btw [by the way]… Thanks again for everything… still high off the weekend!
Z
Id. (ellipses in original).
Phillips and Z-Trip testified to different understandings of the meaning of Phillips’s email
and Z-Trip’s response. Phillips testified that, “[b]ecause both [Z-Trip’s] Megamix and his image
were used in the Video, I believed that Monster needed [Z-Trip’s] approval to use his Megamix
in the Video in addition to using his image.” Phillips Aff. ¶ 18. Therefore, Phillips testified, his
purpose in sending the email was to get Z-Trip’s “approval that [he] appeared in the way that [he
is] comfortable with.” Phillips Dep. at 128; see also id. at 129 (“Q. And is that the e-mail that
you were just referring [to] where you wanted to get his approval as to his appearance in the
video? A. Yup.”). As to Z-Trip’s response, Phillips testified, he understood the word “Dope” to
“indicate[] [Z-Trip’s] approval of the entire Video and all elements, including the use of his
Megamix and his image.” Phillips Aff. ¶ 19. Further, Phillips testified, he viewed Z-Trip’s
suggestion that the Video include a link to his website as being “in exchange for the use of his
Megamix.” Id.
10
Z-Trip, by contrast, testified that, upon receiving the Video, he “was surprised that
excerpts of the Megamix were used as the soundtrack,” both because the Megamix had not
played at the Ruckus in the Rockies and because “no one from Monster Energy had ever asked
whether portions of the Megamix could be downloaded for use in a video.” Z-Trip Aff. ¶ 26. He
testified that he assumed that Phillips’ purpose in sending him the Video for review was merely
“to rectify his error in not having obtained my approval to videotape my performance prior to my
having begun my concert.” Id. ¶ 28. As for his email response, Z-Trip testified, he used the
word “Dope!” to “convey that I liked how I appeared in the Video.” Id. ¶ 29.
On May 9, 2012, Phillips emailed Z-Trip to tell him that the Video had been posted on
Monster’s YouTube channel. Pohl Aff. Ex. B. Z-Trip again replied, “Dope!!!” Id.
On June 5, 2012, Z-Trip emailed his manager, Lorrie Boula:
Lorrie,
I feel really, really bad about this whole thing. I would never do anything intentionally to
harm the Beasties, ever.
The dude asked me when we were boarding and hanging. I thought a promo video about
me was cool. I told him to reach out to you like always.
I don’t know what went down on the Monster side, but I figured they’d also reach out to
the Beasties to clear their tunes too. . . Didn’t know they didn’t.
I feel incredibly bad for having even the slightest bit of involvement in any of this.
Please apologize to the Beasties entire camp for me, I feel like shit.
Sorry,
Zach
Pohl Aff. Ex. C. (ellipses in original).
II.
Applicable Legal Standards
A. As to Summary Judgment
To prevail on a motion for summary judgment, the movant must “show[] that there is no
genuine dispute as to any material fact and the movant is entitled to judgment as a matter of
law.” Fed. R. Civ. P. 56(a). The movant bears the burden of demonstrating the absence of a
11
question of material fact. In making this determination, the Court must view all facts “in the
light most favorable” to the non-moving party. Celotex Corp. v. Catrett, 477 U.S. 317, 323
(1986); see also Holcomb v. Iona Coll., 521 F.3d 130, 132 (2d Cir. 2008). To survive a
summary judgment motion, the opposing party must establish a genuine issue of fact by “citing
to particular parts of materials in the record.” Fed. R. Civ. P. 56(c)(1); see also Wright v. Goord,
554 F.3d 255, 266 (2d Cir. 2009). Only disputes over “facts that might affect the outcome of the
suit under the governing law” will preclude a grant of summary judgment. Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 248 (1986). In determining whether there are genuine issues of
material fact, the Court is “required to resolve all ambiguities and draw all permissible factual
inferences in favor of the party against whom summary judgment is sought.” Johnson v. Killian,
680 F.3d 234, 236 (2d Cir. 2012) (citing Terry v. Ashcroft, 336 F.3d 128, 137 (2d Cir. 2003)).
B. As to Copyright
The copyright statute represents “a federal grant of a property interest in the production,
replication, publication, and distribution of certain classes of ‘original works of authorship fixed
in any tangible medium of expression,’ including musical compositions.” Davis v. Blige, 505
F.3d 90, 98 (2d Cir. 2007) (quoting 17 U.S.C. § 102(a)). “Copyright in a work protected under
[the Copyright Act] thus initially vests in the author or authors of the work.” Id. (quoting 17
U.S.C. § 201(a)). “Like other forms of property ownership, copyright ownership is a bundle of
discrete rights regarding the owner’s ability to use his property . . . each of which may be
transferred and owned separately.” Id. (citations omitted). “These rights include
‘reproduc[ing,]’ ‘prepar[ing] derivative works,’ ‘distribut[ing,]’ ‘perform[ing,]’ or ‘display[ing]’
a creative work.” Id. (quoting 17 U.S.C. § 106). “[A]n owner may sue for infringement those
who exploit the creative work without permission or assignment.” Id.
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Copyright owners “may license others to exercise these rights or assign the rights to
others.” Id. “There are two general categories of licenses: non-exclusive licenses, which permit
licensees to use the copyrighted material and may be granted to multiple licensees; and exclusive
licenses, which grant to the licensee the exclusive right—superior even to copyright owners’
rights—to use the copyrighted material in a manner as specified by the license agreement.” Id. at
99. Important here, when a copyright owner grants a non-exclusive license, the owner retains the
ownership over his copyright, and may still sue unauthorized users for infringement. See id. at
101 (“A non-exclusive license conveys no ownership interest.”). A copyright owner’s exclusive
right to reproduce his work includes the exclusive right to authorize synchronization of a
copyrighted sound recording with an audiovisual work, e.g., to authorize the use of a song in a
movie or commercial soundtrack. ABKCO Music, Inc. v. Stellar Records, Inc., 96 F.3d 60, 62
n.4 (2d Cir. 1996). “Incorporation of [a] sound recording without permission violate[s] [the
copyright owners’] reproduction right.” Agee v. Paramount Commc’ns, Inc., 59 F.3d 317, 324
(2d Cir. 1995).
III.
Discussion
As noted, Monster brings claims against Z-Trip of both contract breach and fraud. Z-Trip
moves for summary judgment on both.
A. Contract
“To form a valid contract under New York law, there must be an offer, acceptance,
consideration, mutual assent and intent to be bound.”7 Peterson v. Regina, 935 F. Supp. 2d 628
(S.D.N.Y. 2013) (quoting Register.com, Inc. v. Verio, Inc., 356 F.3d 393, 427 (2d Cir. 2004)).
7
Both parties apply New York law in their submissions. Such law applies to all claims here:
Where “[t]he parties’ briefs assume that New York law controls . . . such ‘implied consent . . . is
13
Monster argues that “the oral conversations and emails between Phillips and [Z-Trip]
formed a contract.” Monster Br. 8. The terms of the contract, according to Monster, were that
“[i]n exchange for promotion on the Video and Monster’s placement of a link, to his website
containing the Megamix, on its website, [Z-Trip] provided that Monster could use his Megamix
for free.” Id. at 16. And, because Monster’s use of the Megamix (containing as it did original
recordings and songs of the Beastie Boys) implicated the copyright rights of the Beastie Boys,
Monster argues that Z-Trip represented to Monster that he had the authority to license third
parties such as Monster to themselves use the Beastie Boys’ original recordings that were
contained on the Megamix. Monster argues that Z-Trip breached this agreement because Z-Trip
did not, in fact, convey to it a valid license.
In moving for summary judgment, Z-Trip argues that the admissible evidence would not
permit a trier of fact to find a binding contract on these terms between him and Monster. The
Court agrees with Z-Trip. The only relevant evidence is (1) the testimony by Phillips and Z-Trip
about their fleeting oral communications during “Ruckus in the Rockies” and (2) their ensuing
email exchange. Even viewing this evidence in the light most favorable to Monster, a reasonable
juror could not find an offer, sufficiently clear acceptance, or consideration, e.g., a legal duty
which Monster incurred to Z-Trip, let alone all three. See Restatement (Second) of Contracts §
1 (1981) (“A contract is a promise or a set of promises for the breach of which the law gives a
remedy, or the performance of which the law in some way recognizes as a duty.”).
1. Offer
An offer is “[a] promise to do or refrain from doing some specified thing in the future,
conditioned on an act, forbearance, or return promise being given in exchange for the promise or
sufficient to establish choice of law.’” Wolfson v. Bruno, 844 F. Supp. 2d 348, 354 (S.D.N.Y.
2011) (quoting Krumme v. WestPoint Stevens Inc., 238 F.3d 133, 138 (2d Cir. 2000)).
14
its performance; a display of willingness to enter into a contract on specified terms, made in a
way that would lead a reasonable person to understand that an acceptance, having been sought,
will result in a binding contract.” Black’s Law Dictionary (9th ed. 2009).
There are four communications between Phillips and Z-Trip during which, conceivably,
an offer could have been made: the green room conversation, the breakfast conversation, and the
emails of May 8 and 9, 2012. Monster is, tellingly, noncommittal as to at which one of these the
supposed offer was made. But the events at none could be plausibly read to involve an offer.
In the green room, Phillips testified, he “asked [Z-Trip] if he had any music that Monster
could use for a web edit of the Ruckus in the Rockies event.” Phillips Aff. ¶ 11. That, however,
was a question; it was not an offer. In response, Phillips testified, “[Z-Trip] told me yes. He
indicated that he had made a Megamix that was available on his website and it could be
downloaded for free.” Id. Z-Trip’s response, at most, could be taken as a factual representation
as to Monster’s ability to download the Megamix. In no sense was it an offer to engage in a
contract, let alone the one posited by Monster. It did not specify any legal duty that Monster
took on in consideration for permitting the download. And, even if it had, the right ostensibly
offered to Monster, to download the Megamix, is a far cry from the rights that Monster claimed
it obtained from Z-Trip: to reproduce, for its own commercial purposes, including on various
websites, the original recordings and songs of the Beastie Boys contained on the Megamix.
Quite the contrary, the exchange in the green room is devoid of any discussion or
acknowledgment of such rights.
At breakfast, Phillips testified, he “had a follow up conversation with [Z-Trip] regarding
the use of his Megamix for the Video. I told [Z-Trip] that I would send him the Video after the
first edit was complete. I also told him that we would not publish the Video until he was
15
completely satisfied with it and approved it. [Z-Trip] indicated his agreement.” Id. ¶ 12. This
conversation, too, however, does not propose a bilateral exchange, let alone one in which
Monster offered consideration in exchange for a license to use, in the manner it ultimately did,
the Beastie Boys’ recordings on the Megamix.
On May 8, 2012, Phillips emailed Z-Trip:
Hey Zach,
Please have a look at the video from this past weekend and let me know if you approve.
(I think we’ll remove the logo[]s at the end since they’re redundant and the rest will get
cleaned up just a little bit more.)
Thanks again for an amazing weekend!!
Once you approve, we’ll post on youtube and notify our 16M fans on fb [Facebook].
the password is: ruckus
http://vimeo.com/41825355
Levy Aff. Ex. B. This, too, was not an offer of contractual terms: It did not specify the legal
duties that Monster was offering to undertake. Nor did it use language remotely sufficient to
support a finding that Phillips was proposing to acquire, from Z-Trip, the right to use the
underlying copyrighted material owned by the Beastie Boys. And, contrary to Monster’s claim
in opposition to summary judgment, no reasonable jury could find, in Phillips’ statement that he
would post the remix on YouTube, an offer of an exchange of promises. Read naturally,
Phillips’ email was instead merely describing his intended conduct.
Finally, there is Z-Trip’s response to Phillips’s email, sent on May 9, 2012, at 3:50 a.m.:
Dope!
Maybe at the end when you put up the info about my Beasties mix, you could post below
it “Download the mix for free at http://ztrip.bandcamp.com”
That way people can pause it and go get it if they want… Also maybe a proper link on
the description they can click thru once it’s posted proper?
Dope though… Love the can at the end.
No 45 footage?
And, btw [by the way]… Thanks again for everything… still high off the weekend!
Z
16
Id. (ellipses in original). But Z-Trip’s email response did not constitute the offer that was a
necessary predicate for contract formation. A reasonable jury could not read it to propose mutual
promises in consideration for each other. Rather, Z-Trip’s suggestion that Phillips include a link
to his website—prefaced and qualified with the word “maybe”—cannot fairly be read as any
more than that, a suggestion. The exchange of emails would not have imposed on Monster, in
return for posting the video, a legal duty to Z-Trip to post a link to his website.
2. Acceptance
There is, in any event, no evidence on which a reasonable juror could find acceptance of
contractual terms. Monster appears to argue that Z-Trip’s use of the exclamation “Dope!” at the
beginning of the May 9, 2012 email reflected his acceptance. Monster Br. 13. But that argument
fails for at least two reasons. First, as noted, there was no clear and reasonably specific offer that
preceded it. There was, therefore, nothing for Z-Trip to accept. Second, viewed in context, the
word “Dope!” as used by Z-Trip was not “‘clear, unambiguous and unequivocal,’” as required
under New York law. Transition Investments, Inc. v. The Allen O. Dragge, Jr. Family Trust, No.
11 Civ. 04775 (AJN), 2012 WL 1848875, at *6 (S.D.N.Y. May 21, 2012) (quoting Krumme v.
WestPoint Stevens Inc., 143 F.3d 71, 83 (2d Cir. 1998)). In proper context, the word “Dope!”
could certainly be taken as an expression, albeit unorthodox, of approval and acceptance of
another’s antecedent offer. But here, Z-Trip’s exclamation, “Dope!” was in response to
Phillips’s query, “Please have a look at the video from this past weekend and let me know if you
approve.” Levy Aff. Ex. B. Viewed in this context, Z-Trip’s response of “Dope!” plainly
communicated that, in some sense, he “approve[d]” of “the video.” But such approval is quite
distinct from conveying assent to a mutual exchange of promises or other consideration. And it
certainly did not convey that Z-Trip had authority to approve, on behalf of the Beastie Boys, a
17
free license to Monster to use the Beastie Boys’ recordings and songs. There is no fair reading
of the facts under which Z-Trip, by exclaiming “Dope!,” accepted such a contractual offer. ZTrip’s locution, although memorable, was entirely too enigmatic and elliptical to constitute the
“clear [and] unambiguous” acceptance necessary for contract formation.
3. Consideration
The supposed contract also fails for lack of consideration. Conceivably, as Monster
argues, Z-Trip stood to benefit from Monster’s linking its Video to his website. Monster Br. 13–
14. But a fair reading of the email exchange between Phillips and Z-Trip is that any such benefit
was incidental. The sparse communications between the two cannot be read to imply a binding
promise by Monster in exchange for Z-Trip’s approval of its proposed use of the Megamix. Had
Monster decided not to post the Video, or to post it but not include a link to Z-Trip’s website, ZTrip would not have been able to claim a breach of an actionable agreement. Indeed, although
Monster emphasizes that “consideration can consist of an exchange of promises,” id. at 14,
tellingly, it never argues that Monster made an actual promise to Z-Trip.
4. Terms
Finally, even if an offer and acceptance of an exchange of promises constituting
consideration could be found in Phillips’ sparse communications with Z-Trip, no reasonable
person could understand Z-Trip to have granted Monster the rights necessary here—to wit, a
license on behalf of the Beastie Boys to use the underlying copyrighted material owned by the
Beastie Boys, or, as Monster alternatively appears to posit, indemnification against a future suit
by the Beastie Boys for violating such copyrights. The two men’s communications could not
remotely support such a conclusion. It would take an heroic effort of explication to derive such a
conclusion from their words and informal email exchanges. And to read Phillips’s or Z-Trip’s
18
words to convey a contract to cede Monster such rights would flout common sense. Phillips, a
former forestry and ski-industry worker with no evident legal expertise, never raised any such
questions with Z-Trip, or reflected any awareness of the copyright interests that Monster would
need to acquire or license to bring the promotional Video it contemplated into compliance with
copyright law. It is implausible to imbue his statements with appreciation of the relevant
copyright concepts and an intent to acquire, from the Beastie Boys, the necessary license.
Further, the Beastie Boys, as owners of the copyrights to the underlying songs, see Z-Trip
56.1 ¶ 3, Levy Aff. Ex. I (Silva Dep.) 34–56, held the exclusive right to authorize Monster to
“reproduce,” “prepare derivative works,” “distribute,” and publicly perform the music, 17 U.S.C.
§ 106, including by synchronizing it with an audiovisual work such as the Video. ABKCO
Music, Inc. v. Stellar Records, Inc., 96 F.3d 60, 62 n.4 (2d Cir. 1996). Z-Trip was never a
member of the Beastie Boys, Z-Trip 56.1 ¶ 6, Z-Trip Aff. ¶ 9, Phillips Dep. 205, and did not hold
any Beastie Boys copyrights, Z-Trip 56.1 ¶ 7, Z-Trip Aff. ¶ 9. And the summary judgment
record does not supply any credible basis on which Phillips, even had he been savvy to his
employer’s necessary licensing needs, could reasonably conclude that Z-Trip had the right to
license third parties such as Monster to use the underlying copyrighted material owned by the
Beastie Boys.
The evidence thus, in multiple respects, precludes finding a contract between Monster
and Z-Trip. On Monster’s third-party claim of a breach of such a contract, summary judgment
thus must be granted for Z-Trip.
B. Fraud
“Proof of fraud under New York law requires a showing that (1) the defendant made a
material false representation, (2) the defendant intended to defraud the plaintiff thereby, (3) the
19
plaintiff reasonably relied upon the representation, and (4) the plaintiff suffered damage as a
result of such reliance.” Matana v. Merkin, No. 13 Civ. 1534 (PAE), 2013 WL 3940825 at *12
(S.D.N.Y. July 30, 2013) (quoting Wall v. CSX Transp., Inc., 471 F.3d 410, 415–16 (2d Cir.
2006)). Here, Monster asserts that Z-Trip defrauded it when, after Phillips asked Z-Trip “if he
had any music that Monster could use as the soundtrack to the Video,” Z-Trip “told Phillips that
Monster could use his Megamix.” Monster Br. 17. Monster faults Z-Trip for failing to disclose
the fact, known to him during the relevant time “that he did not have permission to license his
Megamix because it contains Beastie Boys music.” Id.
Viewed in light of the factual record assembled in discovery, Monster’s claim of fraud is
risible. First, Monster has not adduced any evidence tending to show that Z-Trip acted with
fraudulent intent. Monster argues that a fact-finder could infer fraudulent intent because (1) ZTrip knew that he lacked permission to authorize the synchronization of his Megamix but did not
volunteer this to Phillips; and (2) Z-Trip’s general practice, when asked about music to
accompany a video, is to refer people “to music that is … stuff I own,” but he did not do so here.
Id. at 17–18 (quoting Z-Trip Dep. 113).8 But no reasonable fact-finder could possibly infer
fraudulent intent on Z-Trip’s part from his silence on these points.
Viewed charitably to Phillips, his assembled communications with Z-Trip are instead
consistent at best with a miscommunication. Phillips did not make at all clear to Z-Trip, and ZTrip plainly did not appreciate that Phillips might not be aware, that Monster needed certain
licenses in connection with its creation and intended use of the promotional video. Nor did
8
Z-Trip testified: “If anybody ever asks me about music to accompany with a video, I usually
refer them to music that is either stuff I own or stuff that—well, basically that’s it, only stuff I
own. . . . if somebody comes asking for anything that I worked on that I don’t own the copyright
to, I’m distinctive in telling them that’s great, but I don’t own the copyright. You would have to
get that cleared.” Z-Trip Dep. 113.
20
Phillips make clear to Z-Trip that Monster believed that Z-Trip had authority to convey such
licenses on the Beastie Boys’ behalf, and that he had done so by his idiomatic shorthand “Dope!”
Alternatively viewed, Monster’s decision to delegate to Phillips alone the responsibility by
which Monster was to acquire, for commercial exploitation, various intellectual rights
presumptively belonging to an iconic band was reckless. On the record before the Court,
Monster had no business entrusting such matters to Phillips. It is, in fact, quite unseemly for
Monster, rather than taking responsibility for its own lack of care, to argue now that any liability
it may have to the Beastie Boys in copyright was somehow a product of a fraud perpetrated by a
disk jockey, Z-Trip.
Further undermining Monster’s claim of fraud, Monster has not adduced any evidence of
any motive for Z-Trip to defraud Monster. Quite the contrary, the evidence on the summary
judgment record is that Z-Trip and Monster were developing a business relationship, Phillips
Aff. ¶ 12; Z-Trip Aff. ¶ 23, which could only be undermined by an ostensible deliberate attempt
by Z-Trip to defraud Monster. Z-Trip had every incentive to keep Monster and the Beastie Boys
happy. And Z-Trip’s later conduct, ruing his failure to prevent Monster’s misuse of the Beastie
Boys’ original recordings from occurring, is not easily consistent with fraud. Pohl Aff. Ex. C
(“Please apologize to the Beasties entire camp for me, I feel like shit.”). To be sure, Z-Trip did
stand to benefit from the exposure he would get from the Video. But any such exposure would
have been much greater had Monster had obtained the lawful rights it, apparently, needed to the
Beastie Boys songs, so as to prevent the circumstance in which Monster would have to hurriedly
take down the Video upon detection by the Beastie Boys.
21
Separately, viewing the evidence in the light most favorable to Monster, a reasonable
juror could not find that Monster reasonably relied on Z-Trip’s allegedly fraudulent statements.9
Phillips, being apparently uninformed about copyright and the need for appropriate licensure,
conceivably may have believed, after his brief exchanges with Z-Trip, that all was well. But that
is not the pertinent inquiry. The standard for reasonable reliance is not measured by the effect on
an employee with no apparent qualifications to negotiate complex matters of licensing and
copyright law. The two conversations and one email exchange between the two men—short,
casual, and vague—did not supply a reasonable basis on which Monster, a major corporation,
could conclude that it had obtained the necessary license to make use for its own purposes of the
Beastie Boys’ original recordings. See Schlaifer Nance & Co. v. Estate of Warhol, 119 F.3d 91,
98 (2d Cir. 1997) (“[I]f the plaintiff has the means of knowing, by the exercise of ordinary
intelligence, the truth, or the real quality of the subject of the representation, he must make use of
those means, or he will not be heard to complain that he was induced to enter into the transaction
by misrepresentations.”) (citation omitted). Monster has not made any credible argument why it
was reasonable to rely on Z-Trip’s colloquialisms as a basis to conclude it had obtained from him
the necessary licenses.
Further, the summary judgment record is devoid of evidence that Monster undertook any
effort to investigate these matters. Phillips did not inquire of Z-Trip whether he had any
authority from the Beastie Boys to license their original works, including to authorize use of their
9
Monster attempts to argue that reasonable reliance is an issue of fact that cannot be determined
on summary judgment, but there is no rule of law to this effect. The case Monster cites, JP
Morgan Chase Bank v. Winnick, 350 F. Supp. 2d 393 (S.D.N.Y. 2004), states only that, “[w]here
the reasonableness of reliance depends upon factual determinations that . . . remain in dispute
after discovery, the fraud claim should not be summarily dismissed on that ground.” Id. at 413
(citation omitted). But whether the issue “remain[s] in dispute after discovery” is a case-specific
question. Here, the issue does not so remain.
22
music in a video. Phillips Dep. at 179. Indeed, Phillips testified that he was not even thinking
about licensing during his interactions with Z-Trip. Id. at 181. Rather, Phillips testified, he
believed that, because Z-Trip’s remix was “available for free download on his website . . . it’s
there for use. For free.” Phillips Dep. at 181, 183. See also id. at 183–184 (“Q. For any use.
By anybody. A. Yes. Q. Whether it’s your home video or a video promoting Monster
products. A. Yes.”). That is not the law. Monster’s reliance on Phillips to protect its interests
in these matters was perforce unreasonable.
In sum, if Monster is liable to the Beastie Boys, it may not shift legal responsibility for
such lapses to Z-Trip.10 Any such liability on Monster’s part would arise instead because
Monster left these matters in the hands of an employee insensitive to the legal issues presented
by making derivative use of, and commercially exploiting, the Beastie Boys’ original work. In
musical terms, Z-Trip can now, therefore, rest at least “as cool as a cucumber in a bowl of hot
sauce,” because Monster’s Third-Party Complaint against him has “got the rhyme and reason but
no cause.” Beastie Boys, So Watcha Want (Capitol Records 1992). It is therefore dismissed,
with prejudice.
CONCLUSION
Third-party defendant Sciacca’s motion for summary judgment is granted. The Clerk of
Court is respectfully directed to dismiss him from this case and to terminate the motion pending
at docket number 36.
10
This does not necessarily mean, of course, that Phillips’s interactions with Z-Trip are legally
irrelevant to the dispute between the Beastie Boys and Monster. The Beastie Boys have alleged,
for example, that Monster’s alleged infringements were “willful.” Compl. ¶¶ 70–100. If
established, this would increase the available statutory penalties for infringement. 17 U.S.C. §
504(c)(2). Monster disputes that any infringement was willful. Answer at 13. The interactions
between Phillips and Z-Trip may well be relevant to proof of willfulness.
23
SO ORDERED.
~gel~~yer~
paf
United States District Judge
Dated: November 4,2013
New York, New York
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