Black And White Entertainment, Inc. v. Marvel Entertainment, LLC

Filing 92

CONSENT JUDGMENT AND ORDER: NOW, therefore, upon the consent of the parties hereto, it is hereby ORDERED, ADJUDGED AND DECREED that: 1. This Court has jurisdiction over the subject matter of this Action. 2. This Action is hereby dismissed in it s entirety, with prejudice, and without costs or fees to any party, the parties waiving all rights of appeal. All claims, counterclaims and cross-claims relating to the Motion Picture, the Song and/or any other musical works or sound recordings th at were or could have been asserted among the parties through the date of the entry of this Consent Judgment and Order are hereby terminated, released and discharged. Additionally, the parties hereby waive, release and discharge any and all claims and motions relating to or arising from this Action and/or this Consent Judgment and Order, except for any claims, proceedings or motions to enforce the terms of this Consent Judgment and Order or otherwise arising from the parties' fai lure to adhere to the provisions hereof. 3. It is hereby declared, adjudged and decreed as follows: i. Neither Plaintiff nor any of its principals, owners, officers, directors, employees or agents hold any copyright ownership, interest or license in or to the Song (inclusive of the sound recording thereof and the musical work embodied therein) or any elements thereof, and hold no other ownership or interest in or to the Song or any elements thereof; ii. neither of the Authors has ever signed or executed any agreement, note, memorandum or any other form of written instrument conveying, transferring or conferring copyright ownership over any sound recording or musical work to Plaintiff, or to any of Plaintiff's principals, owners, officers, directors, employees or agents; iii. neither of the Authors has ever been an employee of Plaintiff or any of its principals, owners, officers, directors, employees or agents for purposes of the Copyright Act, including, without limitati on, 17 U.S.C. § 101; and iv. Plaintiff's copyright registration to the sound recording of the Song (Reg. No. SR 869-190) (the B&W Registration) is null and void. 4. Plaintiff, together with its principals, owners, officers, directors, emp loyees and agents, are hereby ordered and directed to take all steps within their control as are necessary to effectuate the cancellation of any and all copyright registrations that Plaintiff has heretofore obtained with respect to the Song, inclu ding, without limitation, the B&W Registration. The Copyright Office is directed to cancel any such copyright registrations, including the B&W Registration (Reg. No. SR 869-190), upon receipt of such request and any documentation as may be neces sary to effectuate such cancellation. 5. Defendants are hereby deemed to be the prevailing parties in this Action for purposes of the Copyright Act. Notwithstanding the foregoing, all parties waive any and all rights to recover their attorneys' ; fees and costs incurred in connection with this Action, as well as any and all claims for sanctions. 6. The parties acknowledge that each of them has had a full and fair opportunity to litigate all issues and matters alleged in the Complaint and/ or the First Amended Complaint, and all other issues and matters otherwise raised in this Action, and agree to be bound by the terms hereof for any and all purposes. 7. This Court shall retain jurisdiction to enforce this Consent Judgment and Order. The parties consent to jurisdiction and venue in this Court for any related proceedings. (Signed by Judge J. Paul Oetken on 5/2/2022) (ate)

Case 1:20-cv-08384-JPO Document 92 Filed 05/02/22 Page 1 of 5

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
-------------------------------------------------------------BLACK AND WHITE ENTERTAINMENT, INC.,
d/b/a “RAH MUZIC” & “RAH RECORDS,”

X
:
:
:
Plaintiff,
: Case No. 20-cv-08384
:
-against:
:
MARVEL ENTERTAINMENT, LLC; COLUMBIA : CONSENT JUDGMENT
PICTURES INDUSTRIES, INC.; SONY
: AND ORDER
PICTURES ENTERTAINMENT INC.; SONY
:
PICTURES RELEASING CORPORATION; SONY :
PICTURES HOME ENTERTAINMENT INC.;
:
TENCENT PICTURES (USA) LLC; CHARLES K. :
WILLIAMS professionally known as, “KEAK DA
:
SNEAK”; and SULTAN BANKS, professionally
:
known as “TRAXAMILLION”,
:
:
Defendants.
:
-------------------------------------------------------------X
WHEREAS, Defendants Charles K. Williams p/k/a “Keak da Sneak” and Sultan H. Banks

p/k/a “Traxamillion” are the creators and authors (collectively, the “Authors”) of the musical work
and sound recording entitled Super Hyphy a/k/a Super Hyphie (the “Song”);
WHEREAS, the Authors have obtained a copyright registration for the Song (Reg. No. SR
889-304), and validly authorized and licensed the use of the Song in the motion picture Venom
released in or around October 2018 (the “Motion Picture”);
WHEREAS, on or about October 7, 2020, Plaintiff Black and White Entertainment, Inc.
d/b/a “Rah Muzic” and “Rah Records” (“Plaintiff”) commenced this action (the “Action”) against
Sony Pictures Entertainment Inc., Sony Pictures Releasing Corporation, Sony Pictures Home
Entertainment Inc., Columbia Pictures Industries, Inc., Marvel Entertainment, LLC and Tencent
Pictures (USA) LLC (collectively, the “Company Defendants”), asserting, inter alia, a claim for
copyright infringement based on the use of the Song in the Motion Picture;

22063265

Case 1:20-cv-08384-JPO Document 92 Filed 05/02/22 Page 2 of 5

WHEREAS, on or about May 7, 2021, Plaintiff filed a First Amended Complaint [Dkt. No.
52] against the Company Defendants and the Authors (collectively, “Defendants”), asserting, inter
alia, a claim for declaratory judgment that Plaintiff is the owner of the sound recording to the Song
and for copyright infringement based on the use of the Song in the Motion Picture;
WHEREAS, Plaintiff based its claim of copyright ownership on allegations that the
Authors signed agreements conferring such ownership to Plaintiff, and has produced an unsigned
document that Plaintiff claims reflects an agreement between Plaintiff and Defendant Charles K.
Williams, the authenticity of which Defendants dispute;
WHEREAS, the parties have agreed to resolve this matter with the entry of this Consent
Judgment and Order providing, inter alia, for the dismissal of this Action in its entirety, with
prejudice, without the payment of any monies or compensation of any kind to Plaintiff, and without
entering into any settlement agreement other than this Consent Judgment and Order;
NOW, therefore, upon the consent of the parties hereto, it is hereby ORDERED,
ADJUDGED AND DECREED that:
1.

This Court has jurisdiction over the subject matter of this Action.

2.

This Action is hereby dismissed in its entirety, with prejudice, and without costs or

fees to any party, the parties waiving all rights of appeal. All claims, counterclaims and crossclaims relating to the Motion Picture, the Song and/or any other musical works or sound recordings
that were or could have been asserted among the parties through the date of the entry of this
Consent Judgment and Order are hereby terminated, released and discharged. Additionally, the
parties hereby waive, release and discharge any and all claims and motions relating to or arising
from this Action and/or this Consent Judgment and Order, except for any claims, proceedings or

2

Case 1:20-cv-08384-JPO Document 92 Filed 05/02/22 Page 3 of 5

motions to enforce the terms of this Consent Judgment and Order or otherwise arising from the
parties’ failure to adhere to the provisions hereof.
3.

It is hereby declared, adjudged and decreed as follows:
i.

Neither Plaintiff nor any of its principals, owners, officers, directors,
employees or agents hold any copyright ownership, interest or license in or
to the Song (inclusive of the sound recording thereof and the musical work
embodied therein) or any elements thereof, and hold no other ownership or
interest in or to the Song or any elements thereof;

ii.

neither of the Authors has ever signed or executed any agreement, note,
memorandum or any other form of written instrument conveying,
transferring or conferring copyright ownership over any sound recording or
musical work to Plaintiff, or to any of Plaintiff’s principals, owners,
officers, directors, employees or agents;

iii.

neither of the Authors has ever been an employee of Plaintiff or any of its
principals, owners, officers, directors, employees or agents for purposes of
the Copyright Act, including, without limitation, 17 U.S.C. § 101; and

iv.

Plaintiff’s copyright registration to the sound recording of the Song (Reg.
No. SR 869-190) (the “B&W Registration”) is null and void.

4.

Plaintiff, together with its principals, owners, officers, directors, employees and

agents, are hereby ordered and directed to take all steps within their control as are necessary to
effectuate the cancellation of any and all copyright registrations that Plaintiff has heretofore
obtained with respect to the Song, including, without limitation, the B&W Registration. The
Copyright Office is directed to cancel any such copyright registrations, including the B&W

3

Case 1:20-cv-08384-JPO Document 92 Filed 05/02/22 Page 4 of 5

Registration (Reg. No. SR 869-190), upon receipt of such request and any documentation as may
be necessary to effectuate such cancellation.
5.

Defendants are hereby deemed to be the prevailing parties in this Action for

purposes of the Copyright Act. Notwithstanding the foregoing, all parties waive any and all rights
to recover their attorneys’ fees and costs incurred in connection with this Action, as well as any
and all claims for sanctions.
6.

The parties acknowledge that each of them has had a full and fair opportunity to

litigate all issues and matters alleged in the Complaint and/or the First Amended Complaint, and
all other issues and matters otherwise raised in this Action, and agree to be bound by the terms
hereof for any and all purposes.
7.

This Court shall retain jurisdiction to enforce this Consent Judgment and Order.

The parties consent to jurisdiction and venue in this Court for any related proceedings.
May 2
Dated: _________________, 2022

ENTER:

____________________________
Hon. J. Paul Oetken
United States District Judge
STIPULATED AND AGREED:
GISKAN, SOLOTAROFF &
ANDERSON LLP

HARDMAN LAW

By:

By:
David Lawrence Feige
217 Centre Street, 6th Floor
New York, New York 10013
Tel: [phone]

Attorneys for Plaintiff Black and White
Entertainment, Inc.

Zev Hardman
2120 University Ave
Berkeley, CA 94704
Tel: [phone]
Attorneys for Defendants Charles K.
Williams and Sultan Banks

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Case 1:20-cv-08384-JPO Document 92 Filed 05/02/22 Page 5 of 5

LOEB & LOEB LLP

By:
Wook Hwang
345 Park Avenue
New York, New York 10154
Tel: [phone]
Attorneys for Defendants Sony Pictures
Entertainment Inc., Sony Pictures Releasing
Corporation, Sony Pictures Home
Entertainment Inc., Columbia Pictures
Industries, Inc., Marvel Entertainment, LLC
and Tencent Pictures (USA) LLC

5