Kelley v. The Universal Music Group et al

Filing 101

REPORT AND RECOMMENDATION re: 78 Amended Complaint, filed by Bessie Banks, Herman Kelley. For the reasons discussed above, I recommend that this case be dismissed; the dismissal should be without prejudice as to DSR, Killa, and Fabolous. Pu rsuant to 28 U.S.C. § 636 (b)(1) and Rules 72, 6(a), and 6(d) of the Federal Rules of Civil Procedure, the parties shall have fourteen (14) days to file written objections to this Report and Recommendation. Such objection shall be filed with the Clerk of the Court, with extra copies delivered to the Chambers of the Honorable Paul A. Engelmayer, Room 2201, 40 Foley Square, New York, New York, 10007, and to the Chambers of the undersigned, Room 1960, 500 Pearl Street, New York, New York 10007. Failure to file timely objections will preclude appellate review. (Objections to R&R due by 7/19/2017.) (Signed by Magistrate Judge James C. Francis on 7/5/2017) Copies Mailed By Chambers. (anc)

companies involved in the alleged infringement.

For the reasons

set forth below, I recommend that the action be dismissed.
Background
It is the procedural history that is relevant here, rather
than the plaintiffs’ substantive allegations regarding copyright
infringement.

The plaintiffs filed their original Complaint on

April 22, 2014.

On August 27, 2014,

they filed an Amended

Complaint, alleging (1) copyright infringement of the “Try To Leave
Me If You Can” composition (the “Composition”), (2) violation of
plaintiffs’ “poetic license,” (3) “fraudulent deceit and conspiring
to swindle,” and (4) mental anguish.
Compl.”) at 2-9).

(Amended Complaint (“Amend.

Each claim was based on Fabolous’ alleged

sampling of “Try To Leave Me If You Can” in “For the Love.”

DSR

and Killa were included as defendants in the suit because they were
“affiliated

companies

plaintiff[s’] song.”

also

involved

in

(Amend. Compl. at 2).

wrongfully

using

The plaintiffs sued

UMG, IDJMG, and DJR as the alleged parent companies of DSR and
Killa.

(Amend. Compl. at 2).

On June 2, 2015, UMG filed a motion to dismiss the Amended
Complaint or, in the alternative, for summary judgment on behalf of
itself

and

its

unincorporated

divisions,

IDJMG

and

DJR.

(Memorandum of Law in Support of the Motion of UMG Recordings, Inc.
To Dismiss the Amended Complaint or, in the Alternative, for
2

Summary Judgment at 1 n.1).

UMG also submitted a declaration

stating that, contrary to the allegation made in the Amended
Complaint, DSR and Killa are neither subsidiaries nor affiliates of
UMG.

(Declaration of Nicole Wyskoarko dated June 2, 2015, ¶ 2).

To date, Fabolous, Killa, and DSR have not appeared in this action.
The Honorable Paul A. Engelmayer, U.S.D.J., granted UMG’s
motion to dismiss the Amended Complaint in its entirety on October
19, 2015.

See Kelley v. Universal Music Group, No. 14 Civ. 2968,

2015 WL 6143737, at *1 (S.D.N.Y. Oct. 19, 2015).

He dismissed the

copyright infringement claim for lack of standing because the
plaintiffs had not sufficiently established that they were either
the

legal

Composition.
and

or

beneficial

Id. at *3-5.

“fraudulent

deceit

owners

of

the

copyright

for

the

He also dismissed the “poetic license”

and

conspiring

preempted by the Copyright Act.

to

swindle”

Id. at *5-6.

claims

as

Finally, he

dismissed the “mental anguish” claim because such damages are
outside the scope of the Copyright Act.

Id. at *6-7.

Although

Judge Engelmayer dismissed the Amended Complaint in its entirety,
he nonetheless granted the plaintiffs leave to replead “one final
time,” but only with respect to the copyright infringement claim,
noting that they might be able to plead standing adequately “by
alleging concrete facts supporting either actual or beneficial

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ownership as to [the Composition].”
other three claims with prejudice.

Id. at *7.

He dismissed the

Id.

On February 23, 2016, the plaintiffs filed a Second Amended
Complaint repleading all four claims and bringing new claims for
(1) copyright infringement of the sound recording of “Try To Leave
Me

If

You

Can”

that

was

allegedly

sampled

by

Fabolous

(the

“Recording”) and (2) “violation of intellectual property.” (Second
Amended Complaint (“Second Amend. Compl.”) at 4-8, 10-14).

On

March 23, 2016, UMG moved, on behalf of itself, IDJMG, and DJR, to
dismiss the Second Amended Complaint.
On September 29, 2016, Judge Engelmayer granted UMG’s motion
in part and denied it in part.

See Kelley v. Universal Music

Group, No. 14 Civ. 2968, 2016 WL 5720766, at *1 (S.D.N.Y. Sept. 29,
2016).

He found that the plaintiffs had sufficiently established

their beneficial ownership of the Composition and therefore cured
the standing issue as to the copyright infringement claim for the
Composition.

Id. at *5-7.

However, he dismissed the copyright

infringement claim as to the Recording for lack of standing because
the

plaintiffs

had

not

adequately

ownership of the Recording.

pled

Id. at *7.

legal

or

beneficial

Construing the “violation

of intellectual property” claim as a state-law unfair competition
claim, Judge Engelmayer found it was preempted by the Copyright
Act.

Id. at *8.

Finally, he again dismissed the claims for
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violation of “poetic license,” “fraudulent deceit and conspiring to
swindle,” and “mental anguish” because they had previously been
dismissed with prejudice and, in any case, were “either preempted
by or [sought] damages outside the scope of the Copyright Act.”
Id. at *9-10 (quoting Kelley, 2015 WL 6143737, at *7).

The Court

then referred the case to me for general pretrial supervision. Id.
at *10.
After the pretrial conference on November 3, 2016, I issued an
Order directing that all discovery be completed by January 31,
2017, and that the pretrial order or any dispositive motion be
submitted by February 28, 2017.

(Order dated Nov. 3, 2016).

Seeing no evidence of any activity in the case, I issued an Order
on April 3, 2017, directing the plaintiffs to show cause, by April
21, 2017, why the action should not be dismissed for failure to
prosecute.

(Order to Show Cause dated April 3, 2017).

On April 5,

2017, the parties filed a stipulation voluntarily dismissing the
action with prejudice as to UMG, IDJMG, and DJR.
Voluntary

Dismissal

(“Stipulation”)

dated

(Stipulation of

April

5,

2017).

Subsequently, on April 10, 2017, the plaintiffs submitted a letter
informing the Court of the “fully executed settlement agreement”
between the “[d]efendants and [] plaintiffs,” and stating that they
accordingly “ha[d] no reason to show cause as to why this action
should not be dismissed.” (Letter of Herman Kelley dated April 10,
5

2017 (“4/10/17 Kelley Ltr.”)).

I received no other communication

from the plaintiffs in the two months thereafter.

Then, in a

letter dated June 20, 2017, the plaintiffs stated that they were
seeking legal counsel to assist them in this action.

(Letter from

Herman Kelley dated June 20, 2017).
Discussion
A.

UMG, IDJMG, and DJR

The plaintiffs settled their claims with UMG, and therefore
also with IDJMG and DJR.

The plaintiffs’ letter to the Court

expressly referred to the settlement agreement and Stipulation of
Voluntary Dismissal as to UMG, IDJMG, and DJR and explicitly stated
that the plaintiffs “ha[d] no reason to show cause as to why this
action

should

not

be

dismissed.”

(4/10/17

Kellet

Ltr.).

Consequently, the claims against UMG, IDJMG, and DJR should be
dismissed with prejudice.
B.

DSR, Killa, and Fabolous

Rule 4(m) of the Federal Rules of Civil Procedure requires
dismissal without prejudice if service of the complaint and summons
is not made within 90 days2 after those documents are filed.

2

Fed.

The Complaint and Amended Complaint were filed before the
2015 Amendment to the Federal Rules of Civil Procedure took effect
on December 1, 2015. As such, those filings were subject to the
120 day time period for service. The Second Amended Complaint,
however, was filed on February 23, 2016 and therefore was subject
to the 90 day time period for service.
See, e.g., George v.
6

R. Civ. P. 4(m).

Although “it is well settled that a plaintiff’s

pro se status entitles him or her to a certain degree of leniency
insofar as service of process is concerned,”

Ketchuck v. Ferris,

No. 3:10-CV-0870, 2011 WL 3666594, at *2 (N.D.N.Y. March 31, 2011),
pro se litigants are still “required to attempt to comply with
procedural rules, especially when they can be understood without
legal

training

and

experience,”

Yadav

v.

Brookhaven

National

Laboratory, 487 F. App’x 671, 672 (2d Cir. 2012).
In this case, the plaintiffs failed to properly serve the
Amended Complaint on defendants DSR, Killa, and Fabolous. (ECF 45,
46, 47). Nor is there any indication on the docket suggesting they
ever served the Second Amended Complaint on those defendants. None
of those parties has appeared in this action.

Therefore, the

claims against DSR, Killa, and Fabolous should be dismissed without
prejudice for failure to effect service.

See Terry v. Village of

Ossining, No. 12 Civ. 5855, 2013 WL 5952834, at *4-6 (S.D.N.Y. Nov.
5, 2013); Zapata v. Isabella Geriatric Center, No. 12 Civ. 738,
2013 WL 1762900, at *2 (S.D.N.Y. April 1, 2013) (collecting cases),
report and recommendation adopted, 2013 WL 1762168 (S.D.N.Y. April
24, 2013).

Professional Disposables International, Inc., 221 F.3d 428, 432 n.1
(S.D.N.Y. 2016) (applying 90-day time limit where Amended Complaint
was filed three weeks after effective date of the 2015 Amendment).
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