Phoenix Entertainment Partners LLC v. Dr Fofo LLC et al

Filing 19

ORDER granting 9 Motion to Dismiss for Failure to State a Claim Signed by Honorable David C Norton on September 27, 2018.(kwhe, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF SOUTH CAROLINA
CHARLESTON DIVISION
PHOENIX ENTERTAINMENT
PARTNERS, LLC,

)
)
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Plaintiff,
)
)
v.
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DR FOFO, LLC d/b/a Planet
)
Follywood, and ELLIOT ASHLEY
)
KOHN d/b/a DJ E,
)
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Defendants.
)
____________________________________)

No. 2:17-cv-03327-DNC
ORDER

This matter is before the court on defendant Elliot Ashley Kohn’s (“Kohn”)
motion to dismiss, ECF No. 9. For the reasons set forth below, the court grants the
motion to dismiss.
I. BACKGROUND
This matter arises from Kohn’s allegedly infringing use of four of Phoenix
Entertainment Partners, LLC’s (“Phoenix”) copyrighted works. Phoenix is a North
Carolina limited liability company. ECF No. 1 ¶ 6. Planet Follywood is an
establishment operated by DR FOFO, LLC (“FOFO”), a South Carolina limited liability
company in Folly Beach, South Carolina. Id. ¶ 7. Kohn is a DJ and entertainer who
provides karaoke-related services. Id. ¶ 8.
Phoenix owns the copyright to four karaoke accompaniment tracks (the “Tracks”)
by virtue of an assignment instrument from Piracy Recovery, LLC. 1 Id. ¶ 27. These

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The four tracks are “New York State of Mind” in the style of Billy Joel, “From the
Window Up Above” in the style of Wanda Jackson, “Takin’ Care of Business” in the
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karaoke accompaniment tracks are audiovisual works that consist of re-recorded versions
of songs without lead vocals. Id. ¶ 11. The tracks also include visual components such
as lyric displays and cueing information. Id. Each of the Tracks is part of a compilation
of karaoke tracks that is registered as a sound recording with the United States Copyright
Office. Id. ¶ 29; ECF No. 10-1. 2 Two of the Tracks are registered under the same
compilation, SR0000365175, and the other two Tracks are each registered under different
compilations, SR0000375893 and SR0000367547 respectively. ECF No. 10 at 2. The
compilations are sold on compact discs plus graphics (CD+Gs). Id. at 4.
Phoenix alleges that FOFO contracted with Kohn to provide karaoke entertainment
services at Planet Follywood. ECF No. 1 ¶ 32. Phoenix then contends that Kohn copied
the Tracks and distributed the copies to FOFO’s patrons for karaoke performances
without Phoenix’s permission. Id. ¶¶ 35–38. In addition, Phoenix alleges that FOFO had
the right to control Kohn’s actions on its premises, knew about Kohn’s infringement of
the Tracks, and did nothing to stop Kohn, making FOFO secondarily liable for Kohn’s
infringement. Id. ¶¶ 60–61, 67–68.
Phoenix filed the instant suit on December 8, 2017, bringing a cause of action for
copyright infringement under 17 U.S.C § 501. Id. ¶¶ 74–86. Kohn filed a motion to
dismiss on January 24, 2018, ECF No. 9, and Phoenix filed its response on February 7,

style of Bachman-Turner Overdrive, and “Blue Moon of Kentucky” in the style of Bill
Monroe. ECF No. 1 at 14.
2
If a compilation of work, such as karaoke tracks, is registered, the individual works
will also be registered. See Section III.B.
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2018, ECF No. 10. Phoenix subsequently filed a notice of additional non-binding
authority on April 11, 2018. ECF No 11. 3 The motion is ripe for the court’s review.
II. STANDARD
A Rule 12(b)(6) motion for failure to state a claim upon which relief can be granted
“challenges the legal sufficiency of a complaint.” Francis v. Giacomelli, 588 F.3d 186,
192 (4th Cir. 2009) (citations omitted); see also Republican Party of N.C. v. Martin, 980
F.2d 943, 952 (4th Cir. 1992) (“A motion to dismiss under Rule 12(b)(6) . . . does not
resolve contests surrounding the facts, the merits of a claim, or the applicability of
defenses.”). To be legally sufficient, a pleading must contain a “short and plain statement
of the claim showing that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2). A
Rule 12(b)(6) motion should not be granted unless it appears certain that the plaintiff can
prove no set of facts that would support his claim and would entitle him to relief. Mylan
Labs., Inc. v. Matkari, 7 F.3d 1130, 1134 (4th Cir. 1993). When considering a Rule
12(b)(6) motion, the court should accept all well-pleaded allegations as true and should
view the complaint in a light most favorable to the plaintiff. Ostrzenski v. Seigel, 177
F.3d 245, 251 (4th Cir.1999); Mylan Labs., Inc., 7 F.3d at 1134. “To survive a motion to
dismiss, a complaint must contain sufficient factual matter, accepted as true, to ‘state a

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This notice attached pleadings and a court order from a similar case filed by Phoenix
in the United States District Court for the District of Colorado. The attachments include
the defendants’ motion to dismiss, the defendants’ reply in support of their motion to
dismiss, and the District of Colorado’s order denying the motion to dismiss as to the
copyright infringement claim. ECF No. 11. Phoenix pointed to the copyright
infringement issue in the Colorado case, which is the same issue in the instant case. Id. at
1. The court acknowledges the District of Colorado’s opposite ruling in its motion but is
unable to discern the reasoning underpinning the District of Colorado’s decision from its
brief order denying the motion to dismiss as to the copyright infringement claim. Having
extensively researched the issues raised in this motion to dismiss, this court respectfully
reaches a different conclusion.
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claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)
(quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). “A claim has facial
plausibility when the plaintiff pleads factual content that allows the court to draw the
reasonable inference that the defendant is liable for the misconduct alleged.” Id.
III. DISCUSSION
Kohn alleges that the copyrights for the Tracks were not properly registered, and
as a result, Phoenix may not bring a copyright infringement action for use of the Tracks.
Kohn first argues that the Tracks were improperly registered as only sound recordings
and not also audiovisual works. He then argues that single work registration does not
exempt Phoenix from separately registering the Tracks as audiovisual works, because
audiovisual work is not a class of work for which single work registration is available.
A. Registration Class
Kohn’s first argument is that the Tracks are only registered as sound recordings
when they should also be registered as audiovisual works. ECF No. 9-1 at 4–5. He
claims that the fact that there are no copyright registrations for the audiovisual elements
of the Tracks is fatal to Phoenix’s claim because valid copyright registration is required
to bring a copyright infringement claim, and without copyright registrations for the
audiovisual elements, Phoenix’s copyrights for the Tracks are invalid. Id. at 4. Phoenix
does not respond directly to this argument but instead argues that the registrations are
valid as single work registrations, ECF No. 10 at 3–7, which is discussed in greater detail
in Section III.B.
Copyright infringement consists of two elements: (1) the ownership of a valid
copyright; and (2) the copying of the original elements of the copyrighted work. Feist

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Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). In order to institute an
action for infringement, the copyright must be registered with the United States
Copyright Office. 17 U.S.C. § 411(a). While this requirement is not jurisdictional, Reed
Elsevier, Inc. v. Muchnick, 559 U.S. 154, 169 (2010), “[r]egistration is a prerequisite for
a copyright infringement action,” Darden v. Peters, 488 F.3d 277, 285 n.3 (4th Cir. 2007).
As a result, “[f]or plaintiffs to state a claim for which relief can be granted,” the copyright
that was allegedly infringed must be properly registered. Jefferson Airplane v. Berkeley
Sys., Inc., 886 F. Supp. 713, 715 (N.D. Cal. 1994).
Federal regulations divide copyrightable works into different classes for the
purpose of registration, include “Class PA” for audiovisual works and “Class SR” for
sound recordings. 37 C.F.R. § 202.3(b)(ii), (iv). The Copyright Act defines “audiovisual
works” as “works that consist of a series of related images which are intrinsically
intended to be shown by the use of machines . . . together with accompanying sounds, if
any, regardless of the nature of the material objects, such as films or tapes, in which the
works are embodied.” 17 U.S.C. § 101. Courts have found karaoke devices to be
audiovisual works for the purpose of copyright registration. Leadsinger, Inc., v. BMG
Music Pub., 512 F.3d 522, 527–28 (9th Cir. 2008); ABKCO Music, Inc. v. Stellar
Records, Inc., 96 F.3d 60, 65 (2d Cir. 1996), abrogation on other grounds recognized by
Salinger v. Colting, 607 F.3d 68 (2d Cir. 2010). The Ninth Circuit explained that “the
visual representation of successive portions of song lyrics that Leadsinger’s [karaoke]
device projects onto a television screen constitutes ‘a series of related images,’” and “its
images of successive portions of song lyrics are ‘intrinsically intended to be shown by the
use of machine . . . together with accompanying sounds.’” Leadsinger, Inc., 512 F.3d at

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528. In addition, “CD+G’s constitute ‘audiovisual works,’ since they ‘consist of a series
of related images’—the lyrics—‘together with accompanying sounds’—the music.”
ABKCO Music, Inc., 96 F.3d at 65 (quoting 17 U.S.C. § 101).
Because not all work neatly fits into just one class of work, copyright regulations
provide:
In cases where a work contains elements of authorship in which copyright
is claimed which fall into two or more classes, the application should be
submitted in the class most appropriate to the predominant type of
authorship in the work as a whole. However, in any case where registration
is sought for a work consisting of or including a sound recording in which
copyright is claimed, the application shall be submitted on Form SR.
37 C.F.R. § 202.3(b)(2)(ii)(C); see also 2 Nimmer on Copyright § 7.18 (2018) (“Given
the existence of multimedia forms of expression, the question arises as to registration of
works that span several categories. In such cases, the appropriate classification should be
chosen depending on which type of authorship predominates.”).
While 37 C.F.R. § 202.3(b)(2)(ii)(C) provides copyright registrants with some
flexibility in choosing the registration form for their multimedia works, courts have
indicated that when the United States Copyright Office provides additional guidance on
which form should be used, the registrant must follow the guidance. See Jefferson
Airplane, 886 F. Supp. at 716–17. Courts give deference to the Copyright Office’s
interpretation of the Copyright Act when courts find the interpretation to be persuasive.
EMI Christian Music Grp., Inc. v. MP3tunes, LLC, 844 F.3d 79, 97 (2d Cir. 2016); see
also Ala. Stock, LLC v. Houghton Mifflin Harcourt Pub. Co., 747 F.3d 673, 684–85 (9th
Cir. 2014) (“[W]here the Copyright Office has announced its interpretation primarily
through ‘internal agency manuals [and] opinion letters, we defer to the Copyright
Office’s views expressed in such materials only to the extent that those interpretations
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have the power to persuade.’” (citation omitted)). This interpretation exists in agency
manuals, opinion letters, and copyright forms. Ala. Stock, LLC, 747 F.3d at 684–85 &
685 n.52.
In EMI Christian Music Grp., Inc., the Second Circuit found persuasive a circular
issued by the Copyright Office discussing the use of a Form SR to register both sound
recordings and their associated images. 844 F.3d at 97. The copyright regulations only
permitted the use of a Form SR to register literary, dramatic, and musical works
associated with sound recordings, yet the plaintiff registered a sound recording and
associated images using Form SR. Id. at 96. The court explained that it was “persuaded
by the Copyright Office’s apparent view that there is no logical distinction between
‘literary’ works and ‘visual’ works associated with a sound recording such that the
former is properly registered on a Form SR but the latter is not.” Id. at 97. As a result,
the court held that the plaintiff’s registration using a Form SR was valid. Id.
Courts have used guidance from the Copyright Office when determining if
copyright claimants have properly classified their work during copyright registration. In
Jefferson Airplane, the defendant argued that the plaintiff’s copyright registration using
the form for Class N 4 for its musical album only covered the sound recording and not the
cover art, and as a result, the cover art was unregistered. 886 F. Supp. at 716. The court
examined “the language defining class n [sic] and subsequent pronouncements and
practices of the Copyright Office” and determined that a separate registration was
required for the artwork. Id. The court relied on the Copyright Office Examination
Practices, which at the time specified that “[r]egistration in Class N cannot extend

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At the time, a sound recording was registered under Class N.
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protection to copyrightable matter appearing on a jacket, liner notes, or container, etc.,
even though such items form a part of the deposit for registration in Class N.” Id. The
court also examined a circular from the Copyright Office that explained that a separate
registration must be made for sound recordings and copyrightable material on disc
jackets. Id. at 716-17. After considering these two pieces of evidence along with a
declaration from the Register of Copyrights, the court found that the Class N registration
did not cover the artwork, and as such, the artwork was not properly registered. Id. at
717.
In contrast, in South Beach Skin Care, Inc. v. Dermaset, Inc., 2014 WL 11958623
(S.D. Fla. Aug. 18, 2014), the defendant argued that the only material on the plaintiff’s
website with a registered copyright was the text because the copyright was registered in
the TX (textual work) classification. Id. at *4. The court held that there was “no reason
to preclude protection beyond the textual content” because 37 C.F.R. § 202.3(b)(2)(ii)(C)
allowed for claiming copyright in two or more classes, and the defendant did not provide
any authority to suggest that a limitation like the one in Jefferson Airplane existed for
textual works. Id. The court distinguished Jefferson Airplane because, at the time of
Jefferson Airplane, the Copyright Office Examination Practices provided an explicit rule
that registration in Class N does not protect copyrightable material on an album jacket, so
Class N registration did not cover an album’s cover art. Id. In contrast, there was no
such explicit rule in South Beach Skin Care, Inc. that stated Class TX registrations do not
include other copyrightable works contained within the textual work. Id. Thus, the court
in South Beach Skin Care, Inc. held that the copyright for the plaintiff’s website covered
all of the content on the plaintiff’s website, including the non-text content, and was valid.

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Id. Therefore, while courts will generally allow for flexibility in class registration when a
work may fall into two or more classes, that flexibility will be tempered when there is
additional Copyright Office guidance on registering a particular class of work.
Here, the copyrights for the compilations containing the Tracks were registered as
sound recordings on March 4, 2005 by Tennessee Production Center, Inc., the original
copyright claimant. 5 In its complaint, Phoenix characterizes the Tracks as audiovisual
works. ECF No. 1 ¶¶ 11, 27– 30, 35–39, 55–58, 63, 75, 84. Moreover, Phoenix
describes a karaoke accompaniment track as “a re-recorded version of a popular song
without the lead vocals synchronized to a graphical component containing a lyric display,
cueing information, and other information.” Id. ¶ 11. This description comports with the
description of audiovisual works provided in the Copyright Act as well as the description
of karaoke devices found to be audiovisual works. Leadsinger, Inc., 512 F.3d at 528;
ABKCO Music, Inc., 96 F.3d at 65. Moreover, the compilations containing the Tracks
are sold on CD+Gs, which are audiovisual works. ABKCO Music, Inc., 96 F.3d at 65.
As a result, both the compilations containing the Tracks and the Tracks individually are
properly classified as audiovisual works, and they should have been registered as such.
Even assuming that the compilations containing the Tracks were registered
pursuant to 37 C.F.R. § 202.3(b)(2)(ii)(C), the compilations were still improperly
registered. At the time Tennessee Production Center, Inc. applied for copyright
protection of the compilations, there was explicit guidance from the Copyright Office that

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It appears that at some point, Tennessee Production Center, Inc. assigned its copyrights
for the Tracks to Piracy Recovery, LLC, who then assigned the copyrights to Phoenix.
See ECF No. 1 ¶ 27; ECF No. 10 at 6. However, Phoenix does not make the history of
the copyrights’ ownership clear.
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explained that the compilations containing the Tracks needed to be registered as
audiovisual works. The second edition of the Compendium of Copyright Office
Practices—the operative edition when Tennessee Production Center, Inc. applied for
copyright protection for the compilations—instructed that sound recordings should be
registered under the SR classification. 2 Compendium of Copyright Office Practices §
604 at 600-3 (1998). By contrast, the Compendium instructed that “other audiovisual
works” should be registered under the PA classification. Id. It further stated that “[t]he
audio portions of audiovisual works, such as a motion picture soundtrack or an audio
cassette accompanying a filmstrip, are considered an integral part of the audiovisual work
and are registrable in Class PA rather than Class SR.” Id. § 702.05 at 700-3. The
guidance also clearly stated that “[s]ounds accompanying audiovisual works, whether
physically integrated with the audiovisual work (such as a soundtrack on a motion
picture) or fixed on a separate tape, disk, or other such object, are not sound recordings
under the statute.” Id. § 492 at 400-33. The example the Compendium gave of work that
should be registered as an audiovisual work, not a sound recording, is a multimedia kit
containing a filmstrip and an accompanying cassette tape. Id.
Here, the sound recording portions of the Tracks are the sounds accompanying the
audiovisual components, so pursuant to the Copyright Act and the Copyright Office’s
interpretation of it, the compilations and the Tracks are audiovisual works, not sound
recordings. Moreover, the Compendium’s example of an audiovisual work is analogous
to the Tracks. The Tracks consist of visual display components, like a filmstrip, and
accompanying sounds, like an accompanying cassette tape. Given the explicit guidance
for registering work that contains both sound recordings and audiovisual works, it is clear

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that the compilations containing the Tracks should have been registered as audiovisual
works.
B. Single Work Registration
Kohn alternatively argues that the Tracks could not have been registered as a
single work as permitted by 37 C.F.R. § 202.3(b)(4) because sound recordings and
audiovisual works are not eligible to be registered together under a single registration.
ECF No. 9-1 at 5. Section 202.3(b)(4) allows all of the copyrightable elements of a
single published work to be registered on a single copyright application when the
elements of the work are (1) recognizable as self-contained works; (2) included in a
single unit of publication; and (3) claimed by the same copyright claimant. 37 C.F.R. §
202.3(b)(4)(i)(A); see also Kay Berry, Inc. v. Taylor Gifts, Inc., 421 F.3d 199, 205 (3d
Cir. 2005) (explaining when single work registration applies). In other words, single
work registration may be used when a claimant wants to register a group of selfcontained works under one copyright registration as long as the group is published in a
single unit and each work is claimed by the same claimant. While the copyright
regulations permit this type of registration, they provide no further guidance on how it
applies in conjunction with the classification of works. As such, Kohn interprets the
regulations to mean that, per the regulation providing instructions about registering sound
recordings, a single sound recording copyright may also apply only to “literary, dramatic,
and musical works embodied in phonorecords,” and as such, “[a]udiovisual works are
effectively excluded” from being registered with sound recordings as a single work. Id.
(citing 37 C.F.R. § 202.3(b)(iv)). Phoenix responds that this is a misinterpretation of the
regulations because classifications of work were created solely for administrative

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registration purposes and “do[] not dictate whether multiple copyrightable elements
contained within a single work may be considered registered” as a single work. ECF No.
10 at 6. Moreover, Phoenix argues that under single work registration, each Track is
individually registered because the karaoke compilations as a whole were registered. Id.
at 4. Then Phoenix separately argues that because the compilations containing the Tracks
are published on CD+G discs and contain multiple copyrightable elements, namely
audiovisual works and sound recordings, both the audiovisual works and sound
recordings within the compilation containing the Tracks are properly registered as a
single work. Id. at 6–7.
A review of the relatively sparse case law discussing single work registration
suggests that this type of registration is only applicable when the copyrightable elements
within a single work all fall within the same type of work; for example, when all of the
elements within a single work are sound recordings. See United Fabrics Intern., Inc. v.
C&J Wear, Inc., 630 F.3d 1255, 1295 (9th Cir. 2011) (allowing registration of a group of
fabric designs as single registration); Kay Berry, Inc., 421 F.3d at 206 (allowing single
work registration for garden accent rocks published in the same catalog); Yurman Studio,
Inc. v. Castaneda, 591 F. Supp. 2d 471, 492 (S.D.N.Y. 2008) (holding that single work
registration of a jewelry collection results in each piece of jewelry also being registered);
Ocasio v. Alfano, 592 F. Supp. 2d 242, 244–45 (D.P.R. 2008) (holding that in a
collection of songs registered as a single work, each song within the collection was also
validly registered); Idearc Media Corp. v. Nw. Directories, Inc., 623 F. Supp. 2d 1223,
1230–31 (D. Or. 2008) (holding that because a directory with individual display ads was
properly registered, each ad was also registered).

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Phoenix first argues that registering each karaoke track compilation as a single
work also registers each individual track within the compilations, including the Tracks.
ECF No. 10 at 4. The court agrees with this interpretation of single work registration.
The compilations include multiple self-contained works, which are the individual karaoke
tracks; each compilation is sold as a unit; and the copyright claimant, Tennessee
Production Center, Inc., is the same for each karaoke track. However, as discussed in
Section III.A, karaoke tracks are audiovisual works, regardless of whether they are
registered individually or as a compilation. Here, the compilations were registered as
sound recordings. As such, the compilations were not properly registered, meaning the
individual karaoke tracks, including the Tracks, were not properly registered.
Next, Phoenix asserts another interpretation of single work registration. Phoenix
argues that registering the sound recording elements of the compilations also registered
the audiovisual elements of the compilations. ECF No. 10 at 6. This argument is
incompatible with the case law interpreting single work registration. As discussed above,
single work registration is permissible when a copyright claimant wishes to register a
group of the same type of work, e.g., audiovisual work, to avoid individually registering
each work. For example, if a CD consisting of several sound recordings is registered as a
sound recording, copyright protection will exist for both the CD and the individual sound
recordings contained within the CD. Or in the instant case, if the karaoke track
compilations were properly registered as audiovisual works, each individual karaoke
track would also be registered as an audiovisual work using single work registration. By
contrast, Phoenix incorrectly claims that by registering its compilations as sound
recordings, single work registration protects both the sound recordings and the

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audiovisual works within the compilations. This does not comport with the court’s
understanding of single work registration. Furthermore, the parties point to no case law
to suggest that single work registration applies when a single work has multiple
copyrightable elements that belong in different classes of work, such as sound recording
and audiovisual work, as is the case in the Tracks.
Phoenix cannot rely on single work registration to avoid the fact that the Tracks
were incorrectly registered as only sound recordings, even though they contain both
audiovisual and sound recording elements and should have been registered as audiovisual
works. Therefore, the audiovisual components and sound recording components of the
Tracks are not properly registered together as a single work. Without valid copyright
registration of the Tracks, Phoenix may not bring an action alleging infringement of the
Tracks’ copyright.
IV. CONCLUSION
For the foregoing reasons the court GRANTS Kohn’s motion to dismiss.
AND IT IS SO ORDERED.

DAVID C. NORTON
UNITED STATES DISTRICT JUDGE
September 27, 2018
Charleston, South Carolina

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