Kelley v. The Universal Music Group et al

Filing 70

OPINION & ORDER: For the foregoing reasons, the Court grants UMG's motion to dismiss, without prejudice to plaintiffs' right to file a Second Amended Complaint ("SAC"). Plaintiffs are directed to file a SAC by November 2 3, 2015. In the event plaintiffs file such a pleading, defendants' response will be due two weeks later. In the event defendants respond with a motion to dismiss, plaintiffs' brief in opposition will be due two weeks later, and def endants' reply will be due one week after that. If plaintiffs elect not to file a SAC, the case will be closed with prejudice. The Clerk of Court is directed to terminate the motion pending at docket number 48. (As further set forth in this Order) (Amended Pleadings due by 11/23/2015.) (Signed by Judge Paul A. Engelmayer on 10/19/2015) (kl)

for summary judgment as to the copyright claim, arguing that UMG never released, or received
income from, the “Love” recording.
For the following reasons, the Court grants the motion to dismiss, but without prejudice
to plaintiffs’ right to replead.
I.

Background
A.

Factual Background 2

In or about 1974, plaintiffs and Frank Green, a non-party to this action, co-wrote and
produced “Try,” a musical composition. AC ¶¶ 1, 12. That same year, the “Try” composition
was registered with the United States Copyright Office, with the registration number Eu513738.
Id., Ex. F. Plaintiffs and Green are listed as the co-authors of “Try”; the New York Times Music
Corporation (“NYT”) and Eden Music Corp. (“Eden”) are listed as the copyright claimants. Id.
On April 18, 1994, plaintiff Kelley signed a Popular Songwriters Renewal Contract (the
“April 1994 contract”) with the Iza Music Corporation (“Iza”), allegedly now The Clyde Otis
Music Group (“Clyde Otis”). AC, Ex. L. Under the contract, Kelley—in exchange for licensing
royalties—transferred to Iza “any and all rights and interests whatsoever now or at any time or
times hereafter known or in existence which [Kelley] [then] possess[ed] or which he [might] at
any time or times [t]hereafter acquire or possess” in compositions he authored, including “Try.”
Id. at 1; id. at Schedule A.

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Except as otherwise noted, the Court’s account of the facts of this case are drawn from the
Amended Complaint and the exhibits attached thereto. Dkt. 10 (“AC”). In resolving the motions
to dismiss, the Court assumes all well-pled facts to be true and draws all reasonable inferences in
favor of the plaintiffs. See Koch v. Christie’s Int’l PLC, 699 F.3d 141, 145 (2d Cir. 2012). The
facts underlying the Court’s decision to dismiss is based solely on the FAC and documents
incorporated therein.

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On or about November 22, 2012, “Love” was commercially released on the IDJR record
label. AC ¶ 2. “Love” was also included in Fabolous’ “S.O.U.L. Tape 2” and “The Soul
Collection” compact discs, as well as a music video. Id. 3
In December 2012, plaintiffs allege, they discovered that “Try” had been sampled and
used in “Love.” Id. ¶ 1. “Love” was played “heavily” by nationally syndicated radio stations,
such as WBLS 107.5 and Power 105.1, between November 22, 2012 and March 2013. Id. ¶ 10.
Since January 2013, the “Love” music video also has been accessible on YouTube.com. Id. 4 On
May 4, 2013, The Soul Collection was released. AC ¶ 2.
On March 24, 2014, Deborah Evans, a representative of Clyde Otis, wrote a letter to Ian
Allen, a representative of IDJR and The Universal Music Group, notifying Allen that “Try” had
been sampled in “Love.” Id., Ex. K. The March 24 letter stated that Clyde Otis owned the rights
of the “Try” master recording, and requested a “non-recoupable fee” for Fabolous’ use of the
master recording in “Love.” Id.
On August 23, 2014, after this action had commenced, Isidro Otis, the president of Clyde
Otis, wrote Kelley a letter, notifying Kelley that Clyde Otis had decided not to pursue copyright
infringement claims against Fabolous for his alleged infringement of the master recording of
“Try.” Id., Ex. M. The letter also stated that Clyde Otis had “no objection to [plaintiffs] (the
writers) pursuing this matter independently.” Id.

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Plaintiffs claim that “Love” was not registered or licensed with Broadcast Music, Inc., a
performing rights organization, which collects licensing royalties for artists’ compositions.
AC ¶ 10.
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See also YouTube, “Fabolous – For The Love [video] (The Soul Tape 2),”
https://www.youtube.com/watch?v=nfQSqsQp2GI (last accessed October 19, 2015).
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B.

Procedural History

On April 22, 2014, plaintiffs filed an initial Complaint. Dkt. 2. On August 27, 2014,
they filed an amended complaint, bringing claims of (1) copyright infringement, (2) violation of
plaintiffs’ “poetic license,” (3) fraudulent deceit and conspiring to swindle, and (4) mental
anguish. Dkt. 10 (“AC”). Each claim is based on Fabolous’ alleged sampling in “Love” of
“Try,” and is brought against DSR and Kila because they were “affiliated companies also
involved in wrongfully using plaintiff[s’] song.” Id. at 2. UMG, IDJMG, and IDJR are sued as
the alleged parent companies of DSR and Kila. Id. Plaintiffs seek $600,000 in damages
($150,000 for each claim). Id. at 10–11.
On June 2, 2015, UMG moved to dismiss, or in the alternative for summary judgment,
Dkt. 48, along with a supporting memorandum of law, Dkt. 49 (“UMG Br.”), and a declaration
by Nicole Wyskoarko, a UMG senior vice president, Dkt. 51 (“Wyskoarko Decl.”). UMG
represented that IDJMG and IDJR are unincorporated divisions of UMG; thus, UMG’s motion to
dismiss is on behalf of itself, IDJMG, and IDJR. Dkt. 48, at 1 n.1. 5 On June 15 and 24, 2015,
plaintiffs filed an opposition to UMG’s motion to dismiss, Dkt. 56–57 (“Pls. Br.”), and attached
new exhibits, Dkt. 58–67. On July 14, 2014, UMG filed a reply. Dkt. 68 (“UMG Reply Br.”).
II.

Applicable Legal Standards
To survive a motion to dismiss under Rule 12(b)(6), a complaint must plead “enough

facts to state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S.
544, 570 (2007). A claim will only have “facial plausibility when the plaintiff pleads factual
content that allows the court to draw the reasonable inference that the defendant is liable for the

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In her declaration, Wyskoarko stated that, contrary to the allegation in the Amended Complaint,
DSR and Kila are not UMG subsidiaries or affiliates. Wyskoarko Decl. ¶ 2.

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misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). A complaint is properly
dismissed where, as a matter of law, “the allegations in a complaint, however true, could not
raise a claim of entitlement to relief.” Twombly, 550 U.S. at 558. Accordingly, a district court
must accept as true all well-pleaded factual allegations in the complaint, and draw all inferences
in the plaintiff’s favor. See ATSI Commc’ns, Inc. v. Shaar Fund, Ltd., 493 F.3d 87, 98 (2d Cir.
2007). However, that tenet “is inapplicable to legal conclusions.” Iqbal, 556 U.S. at 678. A
pleading that offers only “labels and conclusions” or “a formulaic recitation of the elements of a
cause of action will not do.” Twombly, 550 U.S. at 555.
District courts are “obligated to construe pro se complaint[s] liberally,” Harris v. Mills,
572 F.3d 66, 72 (2d Cir. 2009), interpreting them “to raise the strongest arguments that they
suggest,” Triestman v. Fed. Bureau of Prisons, 470 F.3d 471, 474 (2d Cir. 2006). Courts may
not, however, “read into pro se submissions claims that are not ‘consistent’ with the pro se
litigant’s allegations, or arguments that the submissions themselves do not ‘suggest.’” Id. at 477
(citations omitted). Pro se status “does not exempt a party from compliance with relevant rules
of procedural and substantive law.” Traguth v. Zuck, 710 F.2d 90, 95 (2d Cir. 1983) (quoting
Birl v. Estelle, 660 F.2d 592, 593 (5th Cir. 1981)) (internal quotation marks omitted).
III.

Discussion
UMG seeks to dismiss all four claims. It argues that (1) the copyright infringement claim

should be dismissed for lack of standing; (2) the second and third claims, involving a breach of
“poetic license” and for “deceit” and “swindle,” are preempted by the Copyright Act; and (3) the
claim for mental anguish is an impermissible attempt to expand the remedies available under the
Copyright Act. The Court addresses these claims in turn.

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A.

Copyright Infringement

UMG challenges the copyright infringement claim for lack of standing because plaintiffs
have not alleged facts sufficient to show that they own the “Try” copyright. UMG Br. 5–7.
Under the Copyright Act, “[t]he legal or beneficial owner of an exclusive right under a copyright
is entitled . . . to institute an action for any infringement of that particular right committed while
he or she is the owner of it.” 17 U.S.C. § 501(b); see also Russian Entm’t Wholesale, Inc. v.
Close-Up Int’l, Inc., 482 F. App’x 602, 604 (2d Cir. 2012) (summary order); Eden Toys, Inc. v.
Florelee Undergarment Co., 697 F.2d 27, 32 (2d Cir. 1982) (“The Copyright Act authorizes only
two types of claimants to sue for copyright infringement: (1) owners of copyrights, and (2)
persons who have been granted exclusive licenses by owners of copyrights.”), superseded on
other grounds by Fed. R. Civ. P. 52(a). “In any judicial proceedings the certificate of a
registration made before or within 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.” 17
U.S.C. § 410(c).
Here, the Amended Complaint attaches a copy of the copyright registration certificate. It
identifies NYT and Eden, but not plaintiffs, as the copyright claimants of the “Try” composition.
AC, Ex. F. It lists plaintiffs only as the co-authors of that work, id., not as owners of it. On the
basis of the certificate, plaintiffs therefore do “not have standing to bring a claim for copyright
infringement because plaintiff[s] [were] not the owner[s] of the work when the alleged copyright
infringement took place.” Contractual Obligation Prods., LLC v. AMC Networks, Inc., No. 04
Civ. 2867 (BSJ) (HBP), 2006 WL 6217754, at *5 (S.D.N.Y. Mar. 31, 2006); see also Arthur A.
Kaplan Co., Inc. v. Panaria Int’l, Inc., No. 96 Civ. 7973 (HB), 1998 WL 603225, at *2

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(S.D.N.Y. Sept. 11, 1998); Skor-Mor Prods., Inc. v. Sears, Roebuck & Co., No. 81 Civ. 1286
(CSH), 1982 WL 1264, at *3 (S.D.N.Y. May 12, 1982).
In opposing dismissal, plaintiffs make two arguments.
First, plaintiffs argue, for the first time, that they are beneficial owners of the “Try”
composition copyright. A beneficial owner is “the original author who transfer[s] [an exclusive
copyright] to another, but . . . [is] entitled to receive royalties from that new owner for the
exploitation of the author’s work.” Poindexter v. Cash Money Records, No. 13 Civ. 1155
(RWS), 2014 WL 818955, at *5 (S.D.N.Y. March 3, 2014); see also Cortner v. Israel, 732 F.2d
267, 271 (2d Cir. 1984) (“When a composer assigns copyright title to a publisher in exchange for
the payment of royalties, an equitable trust relationship is established between the two parties
which gives the composer standing to sue for infringement of that copyright.”); Harris v. Simon
& Schuster, Inc., 646 F. Supp. 2d 622, 632 (S.D.N.Y. 2009) (“author and sole copyright holder”
who “granted S&S limited rights in the Work in exchange for the payment of royalties” is a
“beneficial owner”); id. (collecting cases).
On the pleadings and attached and incorporated materials, however, there is no basis to
treat plaintiffs as the beneficial owners of the “Try” composition copyright. The 1974 copyright
registration certificate identifies NYT and Eden as the owners of that copyright. The Amended
Complaint does not allege that, let alone explain by what means, plaintiffs retained a beneficial
interest in that copyright. It therefore is necessary for plaintiffs to plead that they subsequently
became such owners. To support the claim of beneficial ownership, plaintiffs rely on Kelley’s
April 1994 contract with Clyde Otis. Under it, Kelley transferred to Clyde Otis all rights he held
to all compositions he wrote, including “Try,” in exchange for licensing royalties. AC, Ex. L.
But this agreement does not establish that, or explain how, plaintiffs by then had acquired rights

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in “Try” from the owners of such rights (i.e., NYT and Eden), such that plaintiff could transfer
such rights to Clyde Otis. Put differently, the 1994 agreement presupposes, but does not
establish, that plaintiffs owned such rights.
This omission from the pleadings is pivotal. Under the Copyright Act, ownership of a
copyright may be transferred in two ways. The first is by operation of law (e.g., dissolution of
the corporate entity owning the copyright); the second is by “an instrument of conveyance, or a
note or memorandum of the transfer . . . in writing and signed by the owner of the rights
conveyed or such owner’s duly authorized agent.” 17 U.S.C. § 204(a); see also Dallal v. N.Y.
Times Co., 352 F. App’x 508, 511 (2d Cir. 2009) (summary order) (citing Davis v. Blige, 505
F.3d 90, 100 n.10 (2d Cir. 2007)). Plaintiffs do not claim a transfer by operation of law. And the
Amended Complaint does not allege that there was ever a written instrument of conveyance or
other signed writing conveying these rights in “Try” to plaintiffs from the copyright owner.
Second, plaintiffs note that in two previous copyright infringement cases brought by
Kelley “ownership of copyright was disregarded based on the evidence presented.” Pls. Br. 2
(citing Kelley v. EMI Music Publishing, 11 Civ. 7781 (KBF); Kelley v. Am. Society of
Composers, Authors & Publishers, 10 Civ. 4130 (PGG) [hereinafter “ASCAP”]). And, citing
Williams v. Bridgeport Music, Inc., No. 13 Civ. 6004 (JAK), 2015 WL 4479500 (C.D. Cal. July
14, 2015), they argue that copyright ownership is not required to bring a copyright infringement
claim. Pls. Br. 3.
The two earlier cases brought by Kelley do not assist plaintiffs. In EMI, defendants, in
their answer, had asserted that Kelley lacked standing, Dkt. 11, at 8; the case was dismissed with
prejudice before discovery commenced, Dkt. 43. In ASCAP, Kelley voluntarily dismissed that

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case with prejudice before a response to the complaint was filed. Dkt. 10. Far from showing
that the standing requirement is met here, these cases reflect early, pre-merits dismissals.
Nor does Williams avail plaintiffs. In Williams, Pharrell Williams, Robin Thicke, and
Clifford Harris, Jr., who together composed the song “Blurred Lines,” filed a complaint seeking
declaratory relief. The complaint alleged that the children of singer Marvin Gaye—who wrote,
composed, and sang “Got to Give It Up”—had contended that “Blurred Lines” infringed a “Got
to Give It Up” copyright. 2015 WL 4479500, at *1. Williams, Thicke, and Harris sought a
declaration that “Blurred Lines” did not so infringe. Id. Gaye’s children claimed that ownership
of the “Got to Give It Up” copyright had reverted to the Gaye family by operation of law after
Gaye’s 1984 death. Williams v. Bridgeport Music, Inc., No. 13 Civ. 6004 (JAK), 2014 WL
7877773, at *2 (C.D. Cal. Oct. 30, 2014). The jury found that the Gaye children indeed owned
the copyright, and that Williams and Thick had infringed it in composing “Blurred Lines.” 2015
WL 4479500, at *1. The jury awarded the Gaye children $4 million in actual damages. Id. The
salient point here, however, is that the Gaye children were required to prove copyright ownership
in order to assert their copyright infringement claim. The Amended Complaint here does not
supply a factual basis on which plaintiffs’ ownership could be found.
Accordingly, the Court dismisses plaintiffs’ copyright infringement claim. 6

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UMG alternatively moves for summary judgment as to this claim, on the ground that “UMG []
never manufactured, released, exploited, or received income from the sound recording entitled
‘For the Love’ or the Projects on which Fabolous allegedly performed ‘For the Love.’” UMG
Br. 4. As support for this point, UMG relies on the Wyskoarko declaration. Id. Because it has
granted the motion to dismiss, the Court need not reach the merits of this claim. Further,
granting summary judgment on this ground would not be appropriate where the pro se plaintiffs
have not had an opportunity to conduct discovery as to this point. See Miller v. Wolpoff &
Abramson, L.L.P., 321 F.3d 292, 307 (2d Cir. 2003); Hellstrom v. U.S. Dep’t of Veterans Affairs,
201 F.3d 94, 98 (2d Cir. 2000); Perkins v. Bronx Lebanon Hosp., No. 14 Civ. 1681 (PAE), 2015
WL 3649330, at *7 (S.D.N.Y. June 11, 2015). The Court therefore denies the motion for
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B.

Violation of Plaintiffs’ Poetic License

Plaintiffs’ second claim is that defendants violated plaintiffs’ state-law “Poetic License
rights” by “wrongfully and willfully act[ing] as though they were the writers of plaintiffs’ song
by extracting a specific section of it (sample) from the original master and in doing so, made
unauthorized alterations that speeded up the tempo, [and] distorted and damaged the musical and
vocal characteristics of plaintiffs’ song.” AC ¶¶ 13–14. Plaintiffs claim that only plaintiffs, their
co-writer Green, and the publisher of the “Try” composition have the “right under the rule of
poetic license to make creative changes in their copyrighted work.” Id. ¶ 15.
UMG argues that this claim effectively presumes to define plaintiffs’ copyright interests
and is preempted by the Copyright Act. UMG is correct.
“A state cause of action is preempted by federal copyright laws if the subject matter of
the state-law right falls within the subject matter of the copyright laws and the state-law right
asserted is equivalent to the exclusive rights protected by federal copyright law.” Kregos v.
Associated Press, 3 F.3d 656, 666 (2d Cir. 1993) (citing Harper & Row, Publishers, Inc. v.
Nation Enters., 723 F.2d 195, 200 (2d Cir. 1983), rev’d on other grounds, 471 U.S. 539 (1985));
see also 17 U.S.C. § 301(a). Under the Copyright Act, the “owner of copyright . . . has the
exclusive rights to do and to authorize any of the following: (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 . . . .” 17 U.S.C. § 106. “Whether a
state law claim is preempted depends on whether it is derivative of a copyright claim or is based

summary judgment, without prejudice to UMG’s right to renew such a motion in the event this
litigation continues.
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on an ‘extra element’ beyond those of a copyright claim.” Weber v. Geffen Records, Inc., 63 F.
Supp. 2d 458, 462 (S.D.N.Y. 1999); see also Kregos, 3 F.3d at 666.
Here, the gravamen of plaintiffs’ poetic license claim is that defendants have violated
plaintiffs’ exclusive right to prepare derivative works of the “Try” composition, which is a right
conferred under the Copyright Act. See 17 U.S.C. § 106(2). The Copyright Act therefore
preempts plaintiffs’ violation of their poetic license claim. Plaintiffs’ claim that their rights were
violated by defendants’ alleged preparation of a derivative or altered version of “Try” therefore
is to be judged solely under the Copyright Act.
C.

Fraudulent Deceit and Conspiracy to Swindle

In another state-law claim, plaintiffs claim that defendants distributed “Love” for free on
the Internet, thereby “swindl[ing] and depriv[ing] [plaintiffs] of any income generated from the
exploitation of” “Love.” AC ¶ 18. The Copyright Act preempts this claim, too. That is because
the Copyright Act is the sole source of the copyright owner’s distribution rights—it gives the
owner the exclusive right “to distribute copies or phonorecords of the copyrighted work to the
public by sale or other transfer of ownership.” 17 U.S.C. § 106(3). Here, plaintiffs’ claim of
deceit and swindling is ultimately that defendants breached plaintiffs’ purportedly exclusive
distribution rights. Plaintiffs’ claim of such a breach may not be pursued under these alleged
state-law causes of action, but under the Copyright Act only.
D.

Mental Anguish

Finally, Kelley alleges that since January 2013, he has “suffered from feelings of distress,
anxiety and depression, which interferes with his creative ability, hinders his inspiration to write
and consequently stagnates his income” because of defendants’ alleged infringement in “Love.”

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AC ¶ 19. The Court understands this allegation, although presented as a claim of liability, to
describe a category of alleged damages which plaintiffs seek.
UMG claims that such damages fall outside the remedies statutorily authorized for
copyright infringement. UMG Br. 12. The Court agrees. In Stern v. Does, the plaintiff similarly
sought “emotional distress and stress-related ailments arising from” the alleged infringement.
978 F. Supp. 2d 1031, 1050 (C.D. Cal. 2011). The district court held that none of these claims
are compensable under the Copyright Act. Id. (citing Mackie v. Riser, 296 F.3d 909, 917 (9th
Cir. 2002) (holding that “‘hurt feelings’ over the nature of the infringement [have] no place in
[the damages] calculus”)). This Court is unaware of any contrary authority. This damages claim
is therefore dismissed.
E.

Right to Replead

The Court grants plaintiffs leave to replead one final time, but only as to their copyright
infringement claim under the Copyright Act. Guided by this decision, plaintiffs may be able, in
a Second Amended Complaint, to adequately plead standing to bring such a claim, by alleging
concrete facts supporting either actual or beneficial copyright ownership as to “Try.” The Court
does not, however, give plaintiffs the right to replead the AC’s other three claims, which are
either preempted by or seek damages outside the scope of the Copyright Act.
CONCLUSION
For the foregoing reasons, the Court grants UMG’s motion to dismiss, without prejudice
to plaintiffs’ right to file a Second Amended Complaint (“SAC”). Plaintiffs are directed to file a
SAC by November 23, 2015. In the event plaintiffs file such a pleading, defendants’ response
will be due two weeks later. In the event defendants respond with a motion to dismiss, plaintiffs’

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