Downey v. Downey

Filing 53

REPORT AND RECOMMENDATION that defendant's 48 MOTION for Summary Judgment be Granted and that this matter be Dismissed on the docket of the Court. Objections to R&R due by 12/31/2012. Signed by Magistrate Judge Karen L. Litkovitz on 12/11/2012. (art)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF OHIO
WESTERN DIVISION

Case No. 1:09-cv-634

CHRISTOPER VERNON DOWNEY,
Plaintiff,

Barrett, J.
Litkovitz, M.J.

vs.

REPORT AND
RECOMMENDATION

BLAISE A. DOWNEY
Defendant.

Plaintiff, Christopher Downey, proceeding pro se, brings this copyright infringement
action pursuant to the Copyright Act of 1976, as amended, 17 U.S.C. § 101, et seq. (the
Copyright Act), alleging that defendant, Blaise Downey, plaintiffs brother, infringed on his
copyrights by utilizing plaintiffs instrumental musical tracks in defendant's recordings. This
matter is before the court on defendant's motion for summary judgment (Doc. 47), plaintiffs
response in opposition (Doc. 48), and defendant's reply. (Doc. 51). For the reasons stated
below, the undersigned recommends that defendant's motion for summary judgment be granted.

I. Background
The following facts are undisputed. Plaintiff and defendant are brothers who, until
recently, cohabitated in the residence owned by defendant. (Doc. 47 at 9-11, Deposition of
Plaintiff). See also Doc. 52, Notification of Change of Address. For over twenty years, the
parties have created musical works together at defendant's residence. (Doc. 4 7 at 9-11 ).
Generally, plaintiff creates the instrumental score and defendant co-authors lyrics and provides
vocals. See generally Doc. 47. In 1994, plaintiff registered "Virtual Oblivion," a compilation of
29 sound recordings with the Office of Copyrights. "Virtual Oblivion" was assigned the
Copyright Registration Number SRu 287-757. (Doc. 47, Ex. 1, "Virtual Oblivion" Copyright

Certificate). Plaintiff listed himself as the "co-author of words" and as the "sole instrumental
musician" and listed defendant as "co-author of words" and "primary vocalist" for certain songs.

!d. Plaintiff alleges that in 2005 and 2006, defendant registered compilations of sound
recordings with the Office of Copyrights entitled "The Emperor and his Zombies" and "The
Emperor and his Zombies (revised)" listing both plaintiff and defendant as co-authors of the
registered works. (Doc. 10 at 1-2, Plaintiffs Complaint). Plaintiffthen brought suit against
defendant raising 38 counts of copyright infringement, alleging that defendant's copyright filings
infringed on plaintiffs prior copyright filing for "Virtual Oblivion." (Doc. 10). The Court
previously dismissed 27 ofplaintiffs 38 counts of copyright infringement. (Doc. 23).
Defendant now brings a motion for summary judgment on plaintiffs remaining claims in counts
1, 2, 4, 5, 7, 8, 10, and 17-20. (Doc. 23).
II. Summary Judgment Standard

A motion for summary judgment should be granted if the evidence submitted to the Court
demonstrates that there is no genuine issue as to any material fact, and that the movant is entitled
to judgment as a matter oflaw. Fed. R. Civ. P. 56(c). See Celotex Corp. v. Catrett, 477 U.S.
317, 322 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247 (1986). Under Federal Rule
of Civil Procedure 56(c), a grant of summary judgment is proper if "the pleadings, depositions,
answers to interrogatories, and admissions on file, together with the affidavits, if any, show that
there is no genuine issue of material fact and the moving party is entitled to judgment as a matter
oflaw." Satterfield v. Tennessee, 295 F.3d 611, 615 (6th Cir. 2002). The Court must evaluate
the evidence, and all inferences drawn therefrom, in the light most favorable to the non-moving
party. Satterfield, 295 F.3d at 615; Matsushita Elec. Industrial Co., Ltd v. Zenith Radio, 475

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U.S. 574, 587 (1986); Little Caesar Enterprises, Inc. v. OPPC, LLC, 219 F.3d 547, 551 (6th Cir.
2000).
The trial judge's function is not to weigh the evidence and determine the truth of the
matter, but to determine whether there is a genuine factual issue for trial. Anderson, 477 U.S. at
249-50. The trial court need not search the entire record for material issues of fact, Street v. J C.

Bradford & Co., 886 F.2d 1472, 1479-80 (6th Cir. 1989), but must determine "whether the
evidence presents a sufficient disagreement to require submission to a jury or whether it is so
one-sided that one party must prevail as a matter oflaw." Anderson, 477 U.S. at 251-52.
If, after an appropriate time for discovery, the opposing party is unable to demonstrate a
prima facie case, summary judgment is warranted. Street, 886 F.2d at 1478 (citing Celotex and

Anderson). "Where the record taken as a whole could not lead a rational trier of fact to find for
the non-moving party, there is no 'genuine issue for trial."' Matsushita Electric Industrial Co. v.

Zenith Radio Corp., 475 U.S. 574, 587 (1986).

III. Resolution
Defendant raises three arguments in support of its motion for summary judgment on
plaintiffs remaining counts of copyright infringement: (1) plaintiff has not copyrighted the
materials he claims was infringed by defendant; (2) because defendant is listed as a co-author in
plaintiffs Copyright Registration, plaintiff may not maintain copyright infringement claims
against him; and (3) defendant's alleged conduct does not constitute infringement under relevant
copyright law. In support, defendant relies on plaintiffs testimony and the copyright registration
form which demonstrate that plaintiff did not register many of the songs at issue for copyright
protection. Defendant further cites to this evidence to demonstrate that he is a co-author of the
copyrighted work and, consequently, cannot be liable for infringement. Defendant contends that

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this evidence demonstrates that plaintiffs claims fails as a matter of law and that summary
judgment should be granted in his favor.
Plaintiffs response in opposition consists largely of unsupported accusations that
defendant, in collusion with several third parties, including unidentified cult members, is part of
a scheme designed to "exact revenge upon [p]laintiff." (Doc. 50 at 15). To the extent that
plaintiffs memorandum attempts to rebut the arguments raised in defendants summary judgment
motion, plaintiff asserts that although defendant was listed as a "co-author of words," defendant
did not author any of the instrumental tracks contained in the compilation and, thus, is liable for
infringement due to his use of these materials in sound recordings later copyrighted by
defendant.
In support, plaintiff cites to defendant's discovery responses in an attempt to demonstrate
that defendant was incapable of creating sound recordings and/or instrumental tracks. However,
the evidence proffered by plaintiff is inadmissible and not properly before the Court. Rather than
submitting the actual discovery responses as an exhibit in responding to defendant's motion,
plaintiff has merely typed the purported interrogatory responses into his memorandum. See Doc.
50 at 11-13. This method of presenting evidence does not comport with the requirements of Fed.
R. ofCiv. P. 56(c). Although the Court is mindful of plaintiffs prose status, he still bears the
burden of setting forth evidence demonstrating that a genuine issue of material fact exists. See

Torba v. JM Smucker Co., 888 F. Supp. 851, 853 (N.D. Ohio 1995) (prose plaintiff must
present evidence "setting forth specific facts demonstrating a genuine issue of material fact
where the opposing party has moved for summary judgment") (citing Black v. Parke, 4 F.3d 442,
448 (6th Cir. 1993) (same)). Here, plaintiff has failed to properly submit defendant's discovery
responses into evidence. See Fed. R. Civ. P. 56 (c)(1)(A) (at summary judgment a party

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"asserting that a fact cannot be or is genuinely disputed must support the assertion by ... citing
to particular parts of materials in the record') (emphasis added). Consequently, plaintiffhas
introduced no evidence whatsoever either to support his claims or rebut defendant's evidence.
Plaintiffs deficient response notwithstanding, the Court must still analyze whether defendant's
arguments merit a grant of summary judgment as they primarily involve determinations of law.

A. Plaintiff's failure to copyright songs which form the basis of Counts 1, 2, 5, 7, 17,
and 20 of his complaint preclude his claims of copyright infringement.
A copyright infringement claim under 17 U.S.C. § 411 has two elements: "(1) ownership
of a valid copyright; and (2) copying of constituent elements of the work that are original."
Bridgeport Music, Inc. v. WM Music Corp., 508 F.3d 394,398 (6th Cir. 2007) (quoting
Stromback v. New Line Cinema, 384 F.3d 283, 293 (6th Cir. 2004)). Subject to the requirements
of§ 411, the legal or beneficial owner of an exclusive right under a copyright is entitled to
institute an action for any infringement of that right committed during its ownership. 17 U.S.C.
§ 501(b). Section 411(a) requires that no civil action for infringement of a copyright can be
instituted until preregistration or registration of the copyright claim has been made in accordance
with that title. 17 U.S.C. § § 411(a).
Section 411(a)'s registration requirement is not jurisdictional. Reed Elsevier, Inc. v.
Muchnick,-- U.S.--, 130 S.Ct. 1237 (2010). Accordingly, a plaintiffs failure to comply with the
registration requirement does not divest the federal courts of subject matter jurisdiction over a
copyright infringement claim. /d. at 1241. However, the requirement is a precondition to filing
a claim. /d. "[Section 411(a)] establishes a condition- copyright registration- that plaintiffs
must ordinarily satisfy before filing an infringement claim and invoking the Act's remedial
provisions." /d. at 1242. The registration precondition is not satisfied where a plaintiff files a

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copyright action before registering its copyright claim. Treadmilldoctor.com v. Johnson, No. 082877,2011 WL 1256601, at *4 (W.D. Tenn. Mar. 31, 2011) (citing Reed Elsevier, 130 S.Ct. at
1241; Coles v. Wonder, 283 F.3d 798, 801 (6th Cir. 2002); Murray Hill Publ'ns, Inc. v. ABC
Communications, Inc., 264 F.3d 622 (6th Cir. 2001), abrogated on other grounds, Reed Elsevier,
130 S.Ct. 1237) (and other cases)).
Where the plaintiff has failed to satisfy the registration precondition to suit, and a
defendant timely raises the plaintiffs failure, the plaintiffs claim must be dismissed. See
Treadmilldoctor.com, 2011 WL 1256601, at *5 (and cases cited therein) (although the district
court has jurisdiction over the claim where the defendant does not obtain a copyright registration
prior to filing suit, the action is subject to dismissal when a defendant moves to dismiss the
action for failure to state a claim). See also Peters v. West, 692 F.3d 629, 632 (7th Cir. 2012)
("copyright registration, while not jurisdictional, is a substantive requirement of infringement
litigation"); Real Estate Innovations, Inc. v. Houston Ass 'n of Realtors, Inc., 422 F. App'x 344
(5th Cir. 2011) (where "a plaintiff does not have a copyright registration, [his] claim may be
dismissed for failure to state a claim"). Cf. Hoogerheide v. IRS, 637 F.3d 634, 637, 639 (6th Cir.
2011) (analogizing nonjurisdictional, mandatory exhaustion requirement under IRS requirement
scheme to copyright registration requirement).
Plaintiff testified at his deposition that he did not register copyrights for the songs
forming the basis of Counts 1, 2, 5, 7, 17, and 20 of his complaint as of its filing date. 1 See Doc.
47 at 11-12; 15-16; 25-27; 33-35; 64-66; 76-78.Z Plaintiffhas submitted no evidence that

1

Plaintiff testified that he registered a copyright for the song which forms the basis of Count 10, "Secret
Agent Andy," subsequent to the filing of his complaint. (Doc. 47 at 60).
2
The titles of the songs that are the subject of these counts are, respectively, "White Castles in Africa";
"Visions of Captain Space"; "Goldfinger" and "Voodoo Goldfmger"; "Mean Woman Blues"; "South Park"; and

6

copyright registrations exist for these songs to create a genuine issue of fact on the registration
issue. As plaintiff has failed to provide any evidence that he has registered copyrights for these
works, defendant's motion for summary judgment should be granted with respect to Counts 1, 2,
5, 7, 17, and 20 of plaintiffs complaint for lack of copyright registration under 17 U.S.C. §
411(a). 3

B. Summary judgment is appropriate in light of defendant's co-author status.
Defendant further argues that plaintiff cannot maintain his infringement action against
defendant because defendant is listed as a co-author of the allegedly infringed works. In support,
defendant cites to the copyright registration4 for "Virtual Oblivion," which lists defendant as one
of four co-authors of the work. (Doc. 17, Ex. 1). In light of defendant's co-authorship status, he
contends that plaintiff may not maintain an infringement suit against defendant for any
subsequent use of the "Virtual Oblivion" material. In opposition, plaintiff argues the copyright
registration identifies defendant as a co-author of words only and therefore the infringement
claims involving defendant's use of the "Virtual Oblivion" music and instrumental tracks are still
viable. For the following reasons, defendant's argument is well-taken and the undersigned
recommends that the instant motion for summary judgment be granted.
"The Copyright Act of 1976 provides that copyright ownership 'vests initially in the

"Cannibal Women." !d.
3
As the Court fmds that summary judgment is appropriate on all of plaintiff's claims in light of
defendant's co-authorship argument, discussed infra in Section III (B), the undersigned declines to reach
defendant's remaining arguments as to plaintiff's failure to individually register copyrights for each song in the
"Virtual Oblivion" compilation.
4
The copyright information for "Virtual Oblivion" is found at: http://cocatalog.loc.gov/ cgibin!Pwebrecon.cgi?Search_Arg=SRu0002877 57 &Search_Code=REGS&PID=5RLb 1b-g7 5Z2xcLnPypmezv
OWHa6&SEQ=20121207132411&CNT= 25&HIST=1 (last visited December 7, 2012). The Court takes judicial
notice of the fact that plaintiff's copyright registration for "Virtual Oblivion" lists defendant as a co-author. See
Idema v. Dreamworks, Inc., 90 F. App'x 496, 498 (9th Cir. 2003) (noting appropriateness of taking judicial notice of
copyright registrations under Fed. R. Evid. 201(b)(2)).

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author or authors of the work."' Cmt'y for Creative Non-Violence v. Reid, 490 U.S. 730, 737
(1989) (quoting 17 U.S.C. § 201(a)). "In a joint work, the joint authors hold undivided interests
in a work, despite any differences in each author's contribution." Erickson v. Trinity Theatre,

Inc., 13 F.3d 1061, 1068 (7th Cir. 1994) (citing 17 U.S.C. § 201). Under the Copyright Act, a
"joint work" is defined as "a work prepared by two or more authors with the intention that their
contributions be merged into inseparable or interdependent parts of a unitary whole." 17 U.S.C.

§ 101. "Joint authorship entitles the co-authors to equal undivided interests in the whole work-in other words, each joint author has the right to use or to license the work as he or she wishes,
subject only to the obligation to account to the other joint owner any profits that are made."

Thomson v. Larson, 147 F.3d 195, 199 (2d Cir. 1998); Childress v. Taylor, 945 F.2d 500, 505
(2d Cir. 1991 ); Weinstein v. University ofIllinois, 811 F .2d 1091, 1095 (7th Cir. 1987); 1 M. &
D. Nimmer, Nimmer on Copyright,§ 6.02 at 6-7 to 6-8)). Further, the owner ofajoint
copyright "cannot sue his co-owner ... for infringement ... because a copyright owner cannot
infringe his own copyright." McCants v. Tolliver, No. 11 CV 0664, 2011 WL 2893058, at *4
(N.D. Ohio July 15, 2011) (citations omitted).
Here, there is no question that defendant is a co-author and, thus, a joint owner of the
copyrighted work "Virtual Oblivion." Plaintiffs copyright registration specifically lists
defendant as a co-author. (Doc. 47, Ex. 1). As instructed by the Copyright Act, "[i]n 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). Consequently, the Court finds that
defendant has presented prima facie evidence that he is a co-author of the work "Virtual
Oblivion"- the work forming the basis of plaintiffs copyright infringement claims. Further,

8

plaintiff testified that defendant was a co-author of words and/or the primary vocalist of the
songs for the remaining claims. Doc. 17 at 11-12, 15-16,21-27,33-38, 55-61,64-74,76-78.
The uncontested facts of this case, as well as the copyright registration itself, confirm that
defendant is a co-author and joint owner of the "Virtual Oblivion" compilation.
While plaintiff asserts that defendant is the co-author ofwords only, he cites to no
authority supporting the proposition that this distinction permits an infringement action for
defendant's subsequent use of the music and instrumental tracks. In any event, the Copyright
Act's definition of "joint work" as a combination of "interdependent parts of a unitary whole[,]"
17 U.S.C. § 101, reveals Congress' intent that even where a co-author's contribution to the joint
work could exist independently, once it is combined with another's contribution it is to be treated
as a "joint work" subject to joint ownership. See Jane C. Ginsburg and Robert A. Gorman,
Copyright Law, 65 (2012) ("For example, if a popular song is created collaboratively by
composer and lyricist, they are both regarded as co-owners of the copyright, even though the
composer's melody and the lyricist's words could have constituted separate works."). Here, the
songs contained in "Virtual Oblivion" were created as a joint work by plaintiff, as composer, and
defendant, as lyricist, to which defendant has rights as a co-author. Accordingly, the
undersigned finds that all of plaintiffs remaining copyright infringement claims against
defendant fail because, as a co-author, defendant cannot be charged with infringement.

McCants, 2011 WL 2893058, at *5.
In light of this finding, the Court declines to reach defendant's remaining argument that
summary judgment is appropriate for plaintiffs failure to present evidence that defendant
infringed the copyright at issue.

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V. Conclusion
For these reasons, the Court hereby RECOMMENDS that defendant's motion for
summary judgment (Doc. 48) be GRANTED and that this matter be DISMISSED on the docket
of the Court.

Date: /Ahr

~~ ~_.d__,__ ~

jz_

Karen L. Litkovitz ~d
United States Magistrate Judge

10

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF OHIO
WESTERN DIVISION

Case No. 1:09-cv-634

CHRISTOPER VERNON DOWNEY,
Plaintiff,

Barrett, J.
Litkovitz, M.J.

vs.
BLAISE A. DOWNEY
Defendant.

NOTICE
Pursuant to Fed. R. Civ. P. 72(b), WITHIN 14 DAYS after being served with a copy of
the recommended disposition, a party may serve and file specific written objections to the
proposed findings and recommendations. This period may be extended further by the Court on
timely motion for an extension. Such objections shall specify the portions of the Report objected
to and shall be accompanied by a memorandum of law in support of the objections. If the Report
and Recommendation is based in whole or in part upon matters occurring on the record at an oral
hearing, the objecting party shall promptly arrange for the transcription of the record, or such
portions of it as all parties may agree upon, or the Magistrate Judge deems sufficient, unless the
assigned District Judge otherwise directs. A party may respond to another party's objections

WITHIN 14 DAYS after being served with a copy thereof. Failure to make objections in
accordance with this procedure may forfeit rights on appeal. See Thomas v. Arn, 474 U.S. 140
(1985); United States v. Walters, 638 F.2d 947 (6th Cir. 1981).

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